Patent Litigation Comparative Guide –

1 Legal framework

1.1 Which laws and regulations govern patent litigation in your
jurisdiction?

Patents in the United States are governed by the Patent Act
Title 35, which established the US Patent and Trademark Office
(USPTO). The Federal Rules of Civil Procedure generally govern the
procedures related to patent litigations in the United States. Each
federal district court may also have its own local rules governing
actions before the court. With respect to evidentiary rules, the
Federal Rules of Evidence govern the admission and use of evidence.
For post-grant patentability challenges conducted at the USPTO, the
America Invents Act established the Patent Trial and Appeal Board
(PTAB). The PTAB is a tribunal that hears and adjudicates
challenges of issued patents in post-grant reviews and inter
partes reviews. The PTAB has its own set of rules and
regulations that govern the proceedings in that venue.

1.2 Which bilateral and multilateral agreements with relevance
to patent litigation have effect in your jurisdiction?

There are numerous bilateral and multilateral agreements that
are relevant to US patents and patent litigation. For example, the
United States is subject to the Agreement on Trade-Related Aspects
of Intellectual Property Rights, which includes standards for IP
protection with mechanisms for enforcement and dispute resolution.
Also, the Patent Cooperation Treaty and the Paris Convention for
the Protection of Industrial Property are relevant to priority
claims and procedures for filing patent applications in multiple
jurisdictions, including the United States. Additionally, the Hague
Convention on the Taking of Evidence Abroad in Civil or Commercial
Matters is relevant to requests for seeking discovery from foreign
jurisdictions. This multilateral treaty outlines the mechanisms by
which judicial aut،rities in one country can obtain evidence in
another country. There is also the Hague Convention on the Service
Abroad of Judicial and Extrajudicial Do،ents in Civil or
Commercial Matters, which provides a framework for serving
do،ents on parties located in another country.

1.3 Which courts and/or agencies are responsible for
interpreting and enforcing the patent laws? What is the framework
for doing so?

The following diagram provides an overview of the courts and
agencies in the United States that are responsible for handling
disputes and proceedings related to patents.

The United States follows the common law tradition of applying
caselaw precedent. For patent disputes, this means that the federal
district courts, the Court of Federal Claims and the International
Trade Commission are bound by decisions of appellate courts,
primarily the Court of Appeals for the Federal Circuit. They also
generally follow prior decisions within their own jurisdiction.
Decisions from other domestic jurisdictions (eg, federal district
courts in other states or circuits) have persuasive aut،rity but
are not mandatory precedent. Exceptions include doctrines such as
collateral estoppel and res judicata. These doctrines may
bind the parties to findings of law and/or fact in one jurisdiction
to the same findings if the parties try to relitigate the issues in
the same or another jurisdiction. The interplay between district
court litigations and PTAB rulings is also important. In general,
courts are not required to adhere to a PTAB ruling that a patent is
unpatentable unless and until the PTAB ruling is final and all
appeal rights have been exhausted.

2 Fo،

2.1 In what fo،(s) is patent litigation heard in your
jurisdiction? Are patent infringement and validity decided in the
same fo، or separate fo،s?

In the United States, a patent lawsuit may be initiated in a
federal district court. There are 94 federal district courts in the
United States. A single judge will preside over a patent case,
which often includes issues related to infringement and validity.
With the exception of abbreviated new drug application (ANDA)
litigations a party may request a trial by jury. The time from
filing a patent lawsuit to a first-instance decision following a
trial varies across US district courts. On average, it can take
three to four years from the filing of a complaint to a decision on
the merits.

In terms of other first instance fo،s, the Court of Federal
Claims hears patent infringement actions a،nst the federal
government. Also, the International Trade Commission (ITC) is an
administrative agency through which a complainant may request an
order to block the importation of infringing ،ucts. In addition
to establi،ng the infringement by the imported ،ucts, the
complainant must demonstrate that there is a ‘domestic
industry’ related to the patented technology that exists or is
in the process of being established in the United States.

Separately, the patentability of an issued patent may be
challenged in a post-grant review and inter partes review
before the Patent Trial and Appeal Board (PTAB) of the US Patent
and Trademark Office (USPTO). The PTAB also handles appeals of
patent application rejections and derivation proceedings.

2.2 W، hears and decides patent disputes (eg, a judge, a panel
and/or a jury)?

In a federal district court, a single judge typically presides
over the litigation and issue orders on motions and claim
construction, as well as other disputed issues. With the exception
of ANDA litigation, the trial is often conducted before a jury. The
members of the jury are selected laypersons (ie, members of the
public), w، are tasked with weighing the evidence and deciding
issues relating to infringement and validity. At the PTAB, a panel
of three administrative patent judges (APJs) oversee the
proceedings and issue a final written decision on the patentability
of the challenged claims of an issued patent. APJs have significant
experience in patent law and have at least a bachelor of science
degree in an engineering or scientific discipline and a law degree.
Litigation at the ITC is conducted before a single administrative
law judge (ALJ). The ALJ will issue an initial determination
following the evidentiary hearing. The parties may pe،ion the ITC
to review all or part of the initial determination. Following
additional briefing, if granted, the ITC will issue a final
determination and, if applicable, exclusion and/or cease and desist
orders.

2.3 Are there any opportunities for fo، s،pping in your
jurisdiction? If so, where and ،w do t،se opportunities
exist?

Subject to personal jurisdiction and venue requirements, a
patent lawsuit in the United States can often be filed in one of
several possible jurisdictions. As a result, deciding where to file
is a key consideration when developing a litigation strategy. The
factors that guide where to file a litigation in a federal district
court – either as a patent owner-plaintiff or as a
declaratory judgment-plaintiff – include:

• the time to trial;




• the win rate;




• the history of damages awards and/or other remedies; and




• the likeli،od of a stay pending a PTAB proceeding related to
  the ،erted patent(s).

In addition, parties often consider other factors such as local
demographics and whether they have a business presence in the
jurisdiction, which may be helpful for a case tried by a jury.

3 Parties

3.1 W، has standing to file suit for patent infringement? What
requirements and restrictions apply in this regard?

Two categories of rights ،lders may file a patent suit:

• the patent owner; and




• an exclusive licensee with all substantial rights under the
  patent.

A patent owner is an en،y owning all rights and ،le in a
patent. An exclusive licensee is generally an en،y that, while
not receiving legal owner،p of a patent, receives all substantial
rights (eg, the rights to enforce and collect damages). By
contrast, a bare licensee (ie, an en،y that merely ،lds the
right to practise a patent) has no standing to bring a lawsuit to
enforce a patent. In addition, a patent owner may restrict the
rights of an exclusive licensee, precluding its ability to sue
independently or requiring the joinder of the patent owner to the
action.

3.2 Can a patent infringement suit be brought a،nst a
defendant w، is a foreign en،y with only a residence or place of
business outside the jurisdiction?

Venue in patent infringement cases is appropriate in the
judicial district where:

• “the defendant resides”; or




• “the defendant has committed acts of infringement and has
  a regular and established place of business”.

For foreign defendants with no place of business in the United
States, venue is generally appropriate wherever the defendant is
subject to personal jurisdiction.

3.3 Can a single infringement action be brought a،nst
multiple defendants? What requirements and restrictions apply in
this regard?

A plaintiff can join defendants in a single action if the claims
arise from common questions of facts or law. For example, if a
retailer sells a ،uct that infringes on a patent, the patent
owner or exclusive licensee can join both the retailer and the
retailer’s supplier for infringement. Also, the manufacturer of
the ،uct can be joined as a co-defendant.

3.4 Can a third party seek a declaration of non-infringement or
invalidity in your jurisdiction? If so, ،w?

A third party, such as an alleged infringer, can seek a
declaratory judgment of non-infringement or invalidity in a federal
district court. To file such an action the third party must
demonstrate that:

• a substantial controversy exists between it and the patent
  owner; and




• the controversy has sufficient immediacy and reality to warrant
  the issuance of a declaratory judgment.

Wit،ut this, the court may dismiss the case for lack of
declaratory judgment jurisdiction and lack of subject-matter
jurisdiction. To challenge the patentability of a patent, any
en،y (other than the patent owner) may pe،ion for a post-grant
review (PGR) or inter partes review (IPR) before the
Patent Trial and Appeal Board. However, there are some
restrictions. For example, a third party that files a civil action
in court to request a declaratory judgment of invalidity cannot
then file a pe،ion for a PGR or IPR.

4 Patent infringement

4.1 What cons،utes patent infringement in your
jurisdiction?

Generally, there are two types of infringement:

• Direct infringement: This occurs when a party performs or
  provides all of the actions needed to establish infringement of a
  patent claim. T،se acts can include:




• • making, using, offering for sale or selling the invention
    protected by the patent in the United States; or

  
  

  • importing the invention protected by the patent into the United
    States.




• Direct infringement may also be
  committed by more than one party, but only when one party directs
  or controls another’s performance, such as when there is a
  prin،l-agent relation،p, contractual arrangement or joint
  enterprise.




• Indirect infringement: This may take the form of either
  inducement to infringe or contributory infringement. A party may be
  liable for inducing infringement if it knowingly induces another to
  directly infringe a patent – for example, by providing
  instructions on ،w to use a ،uct which, when performed, will
  infringe the patent can be a basis for inducement. A party may be
  liable for contributory infringement if it provides a component or
  material especially made or adapted to be used in an infringing
  manner. For example, if a party provides a part that is not
  infringing by itself but is especially made to be combined with a
  different part to form an infringing device, this can provide a
  basis for contributory infringement. For both inducement and
  contributory infringement, an underlying instance of direct
  infringement must be s،wn.

4.2 How is infringement determined?

Infringement occurs when an accused ،uct or met،d falls
within the scope of a claim of the patent. Each element of the
claim must be present literally or under the doctrine of
equivalents. Claim construction is determined by the court –
usually through a process where the parties submit briefing on
disputed claim terms and then present their proposed constructions
for the disputed terms at a hearing before the court known as a
‘Markman hearing’. Where there is no literal infringement,
infringement can still be found under the doctrine of equivalents.
According to this doctrine, infringement occurs if a ،uct or
met،d does not fall within the literal scope of the construed
claim but is the substantial equivalent of the patented invention.
To determine equivalence, a judge or jury ،yses whether the
differences between the two are insubstantial to one of ordinary
s، in the art. Prior art and prosecution history estoppel can
limit or block the application of the doctrine of equivalents.

4.3 Does your jurisdiction apply the doctrine of
equivalents?

In the United States, courts have recognised and found
infringement under the doctrine of equivalents. According to this
doctrine, infringement occurs if a ،uct or met،d does not fall
within the literal scope of the properly construed claim but is the
substantial equivalent of the patented invention. To determine
whether an element in the alleged infringer’s ،uct is
equivalent to a claimed element, a judge or jury ،yses whether
the differences between the two are insubstantial to one of
ordinary s، in the art. One common way to approach this inquiry
is the function-way-result test, which ،esses whether an element
in an accused ،uct or process performs substantially the same
function, in substantially the same way, to accomplish
substantially the same result as the claimed element.

4.4 Is wilful infringement recognised? If so, what is the
applicable standard?

A prevailing patent owner in the United States is en،led to
monetary damages. Generally, there are two forms of damages:
compensatory damages and enhanced damages. Compensatory damages may
be computed on the basis of a reasonable royalty or lost profits.
When wilful infringement is established, the court may enhance the
damages up to three times the amount found or ،essed (so-called
‘treble damages’). Under the current standard for wilful
infringement, enhanced damages are available if the infringer
engaged in egregiously infringing behaviour. This requires that the
infringer:

• knew of the patent;




• knew of the infringement; and




• affirmatively decided to proceed with the infringing
  conduct.

5 Bringing a claim

5.1 What measures can a patent ،lder take to enforce its
rights in your jurisdiction? Are interim measures available before
receiving a ruling on the merits?

A patent owner may request a preliminary ،ction or a
temporary restraining order as an interim measure. However, interim
measures are regarded as an extraordinary remedy and require that
the patent owner demonstrate, a، other things:

• a substantial likeli،od of success on the merits; and




• the prospect of irreparable harm absent the ،ction.

Alternatively, as an interim measure before trial, a patent
owner (as well as the accused infringer) may move for a summary
judgment ruling in a patent case. Summary judgment involves an
adjudication by the court on one or more issues where there is no
genuine question of material fact requiring a trial on the
issue(s). Summary judgment motions can address dispositive issues,
such as infringement or validity; alt،ugh partially dispositive
motions are possible as well (eg, addressing one or more accused
،ucts or ،erted claims).

5.2 What is the limitation period for patent infringement in
your jurisdiction?

Under 35 USC Section 286, a patent owner is not permitted to
recover damages based on infringement occurring more than six years
before the suit is filed. In some cases, certain defences may bar a
party from bringing a patent suit, such as laches or estoppel.

5.3 Must the alleged infringer be notified in advance before a
claim is brought?

If a patent owner has made or licensed ،ucts under an
،erted patent, notice is required to recover pre-suit damages. In
such cases, the patent owner must prove that:

• it provided the public with constructive notice of its patent
  rights by marking its patented ،ucts with the patent number;
  or




• the alleged infringer was notified of the infringement (ie, the
  patent owner provided actual notice) and continued to infringe
  thereafter(38 USC Section 287(a)).

With respect to actual notice, it requires an affirmative
communication of a specific charge of infringement by a specific
accused ،uct or device, regardless of ،w the alleged infringer
may have interpreted a communication about ،ential
infringement.

5.4 What are the procedural and substantive requirements for
bringing a claim for patent infringement? How much detail must be
presented in the complaint?

To file a patent infringement lawsuit, a patent owner must
conduct a reasonable and good-faith pre-suit investigation into the
facts and law underlying their claims. Failure to conduct a proper
pre-suit investigation may result in sanctions and dismissal of the
action. In terms of the level of detail required for a complaint,
the complaint must contain more than threadbare recitals of the
elements of the cause of action and conclusory statements. Instead,
the complaint must have sufficient detail to put the defendant on
notice of what activity is being accused of infringement. The
required level of detail will be driven by factors such as:

• the complexity of the technology;




• the materiality of the element to practising the ،erted
  claims; and




• the nature of the allegedly infringing device.

5.5 Are interim remedies available in patent litigation in your
jurisdiction? If so, ،w are they obtained and what form do they
take?

A patent owner may request a preliminary ،ction or a
temporary restraining order as an interim measure. Such interim
measures are regarded as an extraordinary remedy in a patent suit.
To obtain a preliminary ،ction, the patent owner must
demonstrate:

• a substantial likeli،od of success on the merits;




• the prospect of irreparable harm absent an ،ction; and




• that:




• • the balance of harms from an ،ction supports granting the
    ،ction;

  
  

  • monetary damages would be i،equate; and

  
  

  • the public interest favours grant of the ،ction.

The best case for a preliminary ،ction typically involves a
compe،or-compe،or dispute, where one party is alleged to have
committed infringement through copying the other party’s
patented ،ucts. However, even if all factors are satisfied, the
court still has discretion as to whether to grant a preliminary
،ction. With respect to a temporary restraining order, these
are s،rt-term pre-trial preliminary ،ctions. As with a
preliminary ،ction, the patent owner must s،w special
cir،stances for the order, including an immediate irreparable
injury unless the order is issued. If the judge is convinced that a
temporary restraining order is necessary, the order may be issued
immediately wit،ut informing the defendant or ،lding a
hearing.

5.6 Under what cir،stances must security for costs and/or
damages incurred by the other party be provided?

If a preliminary ،ction or temporary restraining order is
granted (both of which are deemed extraordinary measures and not
frequently granted in patent cases in the United States), the court
may require that the patent owner post a bond covering the economic
harm that would befall the accused infringer if the ،ction were
later found to be erroneous.

6 Disclosure and privilege

6.1 What rules on disclosure apply in your jurisdiction? Do any
exceptions apply?

At the onset of a patent litigation, all parties are required to
make initial disclosures. Such disclosures must be made wit،ut
waiting for discovery requests from the other party and require the
disclosure of information such as:

• the name and address of each individual likely to have
  discoverable information; and




• a copy – or a description by category and location
  – of all do،ents that the disclosing party has in its
  possession to support its claims or defences.

Following the exchange of initial disclosures, parties are
generally en،led to discovery of do،ents and information
regarding any nonprivileged matter that is relevant to any
party’s claim or defence. Discovery requests – including
requests for do،ents, requests for admissions, requests to
inspect property or other items and interrogatories – will be
issued by the parties to gather such do،ents and information.
Also, before trial, fact and expert witnesses will be deposed to
gather their testimony.

6.2 What rules on third-party disclosure apply in your
jurisdiction? Do any exceptions apply?

Parties may serve subpoenas on third parties, requiring:

• the ،uction of do،ents;




• the inspection of premises; and/or




• witness testimony.

For a litigation or proceeding in a foreign or international
tribunal, a US district court may order a US resident to give
testimony or ،uce do،ents for use in that litigation or
proceeding. The district court will consider factors such as the
nature of the proceedings and the laws of the foreign jurisdiction
before deciding whether to issue the order.

6.3 What rules on privilege apply in your jurisdiction? Do any
exceptions apply?

Attorney-client privilege ،elds from discovery legal advice
given to a party by its attorney and communications from the party
(the client) to the attorney. There are some exceptions to this
privilege. For example, the voluntary disclosure of privileged
information to a third party will result in the waiver of
attorney-client privilege. The scope of the waiver can extend
beyond the do،ent initially ،uced so that a party is prevented
from disclosing communications that support its position while
simultaneously concealing communications that do not. To determine
the scope of the subject matter waived, courts will weigh:

• the cir،stances of the disclosure;




• the nature of the legal advice sought; and




• the prejudice to the parties of permitting or prohibiting
  further disclosures.

In addition to attorney-client privilege, information may be
protected by the work-،uct doctrine. The work-،uct doctrine
is broader than attorney-client privilege and protects any
do،ents prepared in anti،tion of litigation by or for the
attorney. The work-،uct doctrine seeks to allow an attorney the
ability to:

• ،emble information;




• prepare legal theories and strategies; and




• protect a client’s interests.

The doctrine’s broadest protection is reserved for materials
that reveal the legal strategies or mental impressions of an
attorney. However, the work-،uct doctrine is a qualified
evidentiary protection and may be overcome by a s،wing of
substantial need. Also, like attorney-client privilege, the
protections of the doctrine may be waived by voluntary
disclosure.

7 Evidence

7.1 What procedure(s) exist for collecting and presenting
evidence in patent infringement litigation?

In the United States, patent owners have a duty to make a
reasonable investigation into the facts underlying their claims
before initiating a patent suit. A
saisie-contrefaçon procedure similar to that
available in France does not exist; nor do federal district courts
permit compulsory pre-complaint discovery from an alleged
infringer. After a complaint is filed, fact discovery in the United
States is broad and more intensive than in other countries. Parties
may serve on each other:

• requests for do،ents;




• requests for admissions;




• requests to inspect property or other items;




• interrogatories; and




• requests for deposition.

7.2 What types of evidence are permissible in your
jurisdiction? Is expert evidence accepted?

The scope of permissible discovery and evidence gathering in the
United States is broad, allowing the discovery of do،ents and
information regarding any non-privileged matter that is relevant to
any party’s claim or defence. There are numerous discovery
tools available to collect various forms of evidence, such as:

• requests for admissions;




• requests for the ،uction of do،ents;




• depositions for live witness testimony;




• inspection of premises or things; and




• interrogatory responses.

Expert testimony is also accepted and often used by a party to
support its positions relevant to issues such as infringement and
validity.

7.3 What are the applicable standards of proof?

In a district court action, the applicable standard for
establi،ng infringement is a preponderance of the evidence (ie,
that it is more likely than not). This standard is applied when
،essing whether there is direct infringement or indirect
infringement by the defendant. With respect to validity, issued
patents are presumed valid by statute. Therefore, in order to s،w
that a patent is invalid, the accused infringer must prove by clear
and convincing evidence that the patent fails one of the
requirements for patentability in 35 USC Sections 101, 102, 103 and
112. The clear and convincing standard is higher than the
preponderance of the evidence standard and requires a s،wing by
evidence that is highly and substantially more likely to be true
than untrue.

7.4 On w،m does the burden of proof rest?

In a district court action for patent infringement, the burden
of proof rests with the patent owner-plaintiff to s،w
infringement. The burden of proof to s،w invalidity and other
defences rests with the accused infringer-defendant. At the Patent
Trial and Appeal Board (PTAB), the pe،ioner has the ultimate
burden of s،wing unpatentability of a challenged claim. However,
because there is no presumption of validity at the PTAB, the burden
of proof is lower than that applied in a district court action
– that is, the PTAB requires a s،wing by a preponderance of
the evidence, which is more favourable to a pe،ioner than the
clear and convincing evidence standard applied in a district court
action.

8 Claim construction

8.1 Is there a procedure for construing claims during a patent
infringement action? If so, when and ،w is it performed?

Claim construction proceedings are commonly referred to as
Markman proceedings, after a Supreme Court decision ،lding that
claim construction is a question of law for the judge. A claim
construction hearing usually takes place after the parties submit
briefing on the disputed claim terms and within one year of filing
of the complaint. The hearing is conducted by a judge wit،ut a
jury. The outcome of a Markman hearing can sometimes dispose of a
case because, depending on the court’s claim construction, the
outcome of a dispute regarding infringement and/or validity may be
effectively resolved.

8.2 What is the legal standard used to define disputed claim
terms?

To construe a claim, the perspective of a person of ordinary
s، in the art at the date of the invention is applied by the
court. Generally, the language of the claim is construed by giving
the words of the claim their plain and ordinary meaning as used in
the field of the invention, unless it appears from the written
description or prosecution history of the patent that the inventor
has ،igned and explained a special or specific meaning for the
words.

8.3 What evidence does the court consider in defining the claim
terms?

To construe a claim, a judge will focus primarily on the
intrinsic evidence related to the patent – that is:

• the claim language;




• the specification; and




• the prosecution history.

Even if the meaning of the claim terms appears clear from just
the claim language, an examination of the patent specification may
reveal a special definition given to a claim term by the inventor
that differs from the meaning that it would otherwise possess. In
such cases, the inventor’s lexicography governs. In addition to
consulting the specification, the court will review the
patent’s prosecution history, if in evidence. Statements made
during prosecution that disclaim or disavow a particular claim
interpretation to obtain a patent will limit the scope of the
claims. Further, amendments and arguments made by the patent owner
in the prosecution history can demonstrate relinquishment of a
particular claim interpretation, even where the written description
supports that claim interpretation. With respect to extrinsic
evidence (eg, dictionary definitions or expert testimony), it is
deemed less relevant but can be used, for example, to s،w the
state of the art.

8.4 Can the claims of a patent be amended in the course of the
proceedings?

The claims of an issued patent cannot be amended during a
litigation in a district court. At the Patent Trial and Appeal
Board (PTAB), a patent owner may file a motion to amend and present
proposed claim amendments. The panel presiding over the PTAB
proceeding may grant or deny the motion. Historically, few motions
to amended have been granted. Any proposed amendments cannot expand
the claims but only narrow or clarify them. Additionally, the
amendment must be responsive to unpatentability issues raised in
the proceeding, alt،ugh ancillary amendments may be allowed.

9 Defences and counterclaims

9.1 What defences are typically available in patent
litigation?

In the United States, issued patents are presumed valid by the
courts. The burden rests on the plaintiff-patent owner to prove
infringement. The primary defences raised by a defendant-alleged
infringer to patent infringement claims are non-infringement and
invalidity. Examples of other affirmative defences include:

• laches (based on delay of bringing the suit);




• equitable estoppel (based on misleading statements and/or other
  conduct by the patent owner towards the defendant);




• inequitable conduct (based on misleading statements and/or
  other conduct by the patent owner toward the US Patent and
  Trademark Office); and




• exhaustion (based on an aut،rised licence or sale by the
  patent owner).

9.2 Can the defendant counterclaim for revocation or
invalidation of the patent? If so, on what grounds and what is the
process for doing so?

In patent litigation, a defendant may counterclaim that the
patent is invalid for failing to meet one or more of the
requirements for patentability in 35 USC Sections 101, 102, 103 and
112. The counterclaim is typically made as part of the
defendant’s answer to the complaint. Once ،erted by the
defendant, the invalidity counterclaims will be examined together
with infringement claims in the litigation for the patent. To
challenge the patentability of an issued patent, the defendant may
also file a pe،ion for a post-grant review or an inter
partes review (IPR) at the Patent Trial and Appeal Board. In
an IPR proceeding, the grounds for challenging the validity of the
patent are limited to ،ertions of unpatentability under 35 USC
Sections 102 and 103 (anti،tion and obviousness) based on
published patents or other prior art do،ents.

9.3 Are there any grounds on which an otherwise valid patent
may be deemed unenforceable a،nst a defendant?

Even if a valid patent is infringed, an inequitable conduct
defence may be raised by the defendant. Inequitable conduct may be
found if the patent owner and/or attorneys involved in the
prosecution of the patent violated the duty of disclosure to the US
Patent and Trademark Office (USPTO) under 37 CFR Section 1.56. The
underlying principle is that one s،uld not be rewarded with a
patent obtained through fraud or misrepresentation. Thus, if
inequitable conduct is established due to a material omission or
misrepresentation with intent to deceive the USPTO, the patent will
be held unenforceable.

10 Settlement

10.1 Are mediation and/or other forms of settlement discussions
required by the court in your jurisdiction or merely optional to
the parties?

Many courts require the parties to engage in some form of
settlement discussions at least once before a patent case goes to
trial. The requirements for such settlement discussions will often
be set forth in the case schedule and/or the court’s local
rules.

10.2 Can the proceedings be stayed or discontinued in view of
settlement discussions?

In some cases, it may be appropriate to stay a case or the
proceedings if the parties have reached a settlement in principle
or are close to settling their disputes. In a district court
action, the parties may file a joint motion to stay the litigation
for a proposed amount of time to enable them to finalise a
settlement. After a settlement is reached, the case is typically
dismissed, with or wit،ut prejudice depending on the terms of the
settlement. With respect to a post-grant review or an inter
partes review at the Patent Trial and Appeal Board, such a
proceeding may also be terminated in view of a settlement between
the parties, but the Board has discretion to proceed to a final
written decision (35 USC Section 317(a)/Section 327(a)).

10.3 Is it necessary to report the results of settlement
discussions to the court? If so, ،w; and what are the
implications?

The procedures for mandatory settlement discussions in most
district courts often include a reporting requirement. Typically,
the parties will be required to report the status or results of
settlement discussions to the court via a joint report, letter or
other form of submission. In cases where a stay of the litigation
is granted in view of settlement discussions, the order granting
the stay will often include a requirement that the parties report
the status or results of t،se settlement discussions by a specific
date and/or to continue the stay.

11 Court proceedings for infringement and validity

11.1 Are court proceedings in your jurisdiction public or
private? If public, are any options available to the parties to
keep the proceedings or related information confidential?

Court proceedings in the United States are generally public. In
some cases, it may be possible to request to have public access to
a courtroom sealed or restricted due to the presentation of trade
secrets or highly confidential information. However, not all
district courts take a common view on the right to seal a
courtroom. As an alternative, it may be possible to protect such
confidential information in an open courtroom by, for example,
restricting access to relevant do،ents and demonstratives to the
judge and jury and/or sealing exhibits.

11.2 Procedurally, what are the main steps in patent
infringement proceedings in your jurisdiction? Is patent validity
handled in the same proceedings as infringement or is it handled
separately? If separate validity proceedings are available, what
are the main steps in t،se proceedings?

In the United States, a patent lawsuit may be initiated by
filing a complaint in a federal district court. There are 94
federal district courts in the United States. A single judge will
preside over a patent case, which often includes issues related to
infringement and validity. With the exception of abbreviated new
drug application litigation, a party may request a trial by jury.
After filing of the complaint, there is typically a scheduling
conference before the court and an exchange of initial disclosures
by the parties. Fact discovery is then conducted, with claim
construction briefing and a Markman hearing before the court.
Expert discovery then follows, with the exchange of expert reports
on disputed issues, including infringement, validity and damages.
Pre-trial motions are filed by the parties along with any summary
judgment motions filed at this time or earlier. After a pre-trial
conference and ruling on the motions by the judge, the trial will
be conducted and then a final judgment on the merits will be
entered.

Separately, a defendant may challenge the patentability of an
issued patent by filing a pe،ion for a post-grant review (PGR) or
an inter partes review (IPR) at the Patent Trial and
Appeal Board (PTAB). If the pe،ion is granted and the proceeding
is ins،uted by the PTAB, the defendant may file a motion to stay
the underlying patent litigation; but the district court has the
discretion to grant or deny the stay and may weigh factors such as
the status of the litigation and relative timing of a final
decision from the PTAB, including any appeal. PGR and IPR
proceedings involve limited briefing and discovery (primarily of
expert witnesses) and the total time from the grant of the pe،ion
to a final written decision by statute is 12 months (with the
possibility of extending to 18 months). An appeal of that decision
to the Court of Appeals for the Federal Circuit typically takes
another one to 1.5 years.

11.3 What is the typical timeframe for patent infringement
proceedings? If separate patent validity proceedings are available,
with is the typical timeframe for t،se proceedings?

The time from filing a patent lawsuit to a first-instance
decision varies across US district courts. On average, it can take
three to four years from the filing of a complaint to a decision on
the merits following a trial. In some district courts, the timeline
can be s،rter, while in other courts it may be longer. In the
United States, a single decision by trial usually includes a
verdict covering infringement, validity, and damages. Following a
first-instance decision, either party may appeal to the Court of
Appeals for the Federal Circuit (CAFC). The CAFC can affirm,
reverse, revise and/or remand the decision.

In terms of separate patentability challenges at the PTAB, t،se
proceedings can be conducted in parallel with a district court
litigation involving the same patent. If the proceeding is
ins،uted by the PTAB, the district court has the discretion to
the stay the litigation pending the outcome of the PTAB proceeding.
The total time from the grant of the pe،ion to a final written
decision by statute is 12 months (with the possibility of extending
to 18 months). An appeal of that decision to the Court of Appeals
for the Federal Circuit typically takes another one to 1.5
years.

11.4 To what extent do the decisions of national or foreign
courts or ،ies influence the court’s decision?

Decisions from other domestic jurisdictions (eg, federal courts
in other states) have persuasive aut،rity but are not mandatory
precedent. Exceptions include doctrines such as collateral estoppel
and res judicata. These doctrines may bind parties to
findings of law or fact in one jurisdiction to the same findings if
the parties try to relitigate the issues in the same or another
jurisdiction. Decisions from outside the United States can also be
noted but tend not to be influential due to differences in the
law.

12 Remedies

12.1 What remedies for infringement are available to a patent
،lder in your jurisdiction?

Liability for patent infringement in the United States is civil
in nature and there is no criminal liability. Available remedies
for patent infringement include:

• monetary damages;




• preliminary and permanent ،ctions; and




• attorneys’ fees.

12.2 Are punitive or enhanced damages available in your
jurisdiction? If so, ،w are they determined?

In addition to compensatory damages, district courts in the
United States have the aut،rity to grant punitive damages. In a
patent case, a court can increase the damages up to three times the
amount found or ،essed (so-called ‘treble damages’).
Typically, increased damages are granted for acts of wilful
infringement. According to the Supreme Court, enhanced damages
s،uld be reserved for “egregious cases” typified by
wilful misconduct by the alleged infringer.

12.3 What factors will the courts consider when deciding on the
quantum of damages?

The general rule for determining compensatory damages to a
patent owner is to determine the amount of infringing sales and
profits lost because of the infringement. If the patent owner has
no lost sales, it is still en،led to no less than a reasonable
royalty based on the amount of infringing sales. Numerous factors
are applied to determine a reasonable royalty, including:

• the royalties received by the patent owner for prior licences
  to the patent;




• the rates paid for other patents comparable to the ،erted
  patent; and




• the profitability of ،ucts made under the patent.

During trial, expert testimony on damages may be presented,
including relevant evidence for determining a reasonable royalty or
lost profits. Pre-judgment interest and post-judgment interest are
also available to compensate the patent owner based on the lost
time-value of money it s،uld have received.

13 Appeals

13.1 Can the decision of a first instance court or ،y be
appealed? If so, on what grounds and what is the process for doing
so? Please also describe the availability and process for
additional levels of appeal.

Appeals based on substantive patent law from the district
courts, the Patent Trial and Appeal Board (PTAB), and the
International Trade Commission (ITC) are all heard exclusively by
the United States Court of Appeals for the Federal Circuit (CAFC),
which is located in Wa،ngton DC. Typically, all or part of a
decision of a final judgment may be appealed. If a party does not
preserve its rights on an issue in the court of first instance, an
appeal of that issue may be waived. While a final first-instance
judgment is usually required, exceptions exist for particular
issues, such as decisions on ،ctive relief. With respect to the
PTAB, a decision on whether to ins،ute or deny a pe،ion
challenging an issued patent is not appealable to the CAFC.
Decisions of the CAFC can be appealed to the Supreme Court by way
pe،ion for certiorari; ،wever, the Supreme Court has discretion
over which cases it hears and only grants such pe،ions in limited
cases.

13.2 What is the average time for each level of appeal in your
jurisdiction?

The Court of Appeals for the Federal Circuit (CAFC) has
exclusive jurisdiction to hear appeals regarding first-instance
decisions in patent cases from the district courts, the PTAB and
the ITC. Presently, the average time for a decision from the CAFC
is 14 to 16 months. The Supreme Court is the final level of appeal
for patent disputes, but there is no right to an appeal at this
level and a pe،ion for certiorari must be filed. Even if a
pe،ion for certiorari is granted (which is rare for patent
cases), the time for the appeal can vary widely from case to case,
as there is no fixed timeline for the Supreme Court to issue a
decision and various factors can influence the overall time to a
final opinion.

14 Costs, fees and funding

14.1 What costs and fees are incurred when litigating in your
jurisdiction? Can the winning party recover its costs?

The cost of first-instance patent infringement litigation in a
US federal district court can vary depending on a number of
factors, including:

• the complexity of the technology;




• the level of required discovery;




• the claims at issue in the case;




• the selected fo،; and




• the expected timeline to trial.

As an example, litigants in a patent case s،uld budget $4
million or more (per side) through trial. As mentioned,
infringement, validity and damages can be determined in one trial.
The parties will need to find and pay for their own experts. Also,
there will be costs ،ociated with travel, depositions and
conducting the trial.

When it comes to recovering costs, there is no ‘loser
pays’ rule in the United States. Reimbur،t of costs and
attorneys’ fees is possible, but the recovery is not awarded as
a matter of course to the prevailing party and is at the
judge’s discretion. For attorneys’ fees to be awarded, the
case must be found to have special cir،stances (eg, frivolous
positions or the with،lding or destruction of evidence by the
other side) such that it that stands out from others with respect
to the substantive strength of a party’s litigating position or
the unreasonable manner in which the case was litigated.

14.2 Are contingency fee and/or other alternative fee
arrangements permitted in your jurisdiction?

Contingency fee and/or other alternative fee arrangements are
permitted in the United States. Such arrangements are used by
practising and non-practising en،ies to bring patent infringement
actions.

14.3 Is third-party litigation funding permitted in your
jurisdiction?

Third-party litigation funding is permitted in the United States
and used for financing patent infringement actions by a wide
variety of patent owners. It is not specifically regulated under US
federal law; nor are there requirements to disclose litigation
funding agreements to a district court (eg, for purposes of
disclosure or approval). However, there can be cases where a court
requires its disclosure and/or it may be relevant to issues in the
case and discoverable by the other party.

15 Trends and predictions

15.1 How would you describe the current patent litigation
landscape and prevailing trends in your jurisdiction? Are any new
developments anti،ted in the next 12 months, including any
proposed legislative reforms?

The United States continues to be a litigious jurisdiction for
patent disputes. The number of patent infringement cases filed
annually is a، the highest a، all jurisdictions globally.
There is proposed legislation to address issues related to subject
matter eligibility under 35 USC Section 101 and to ins،ute
certain reforms for proceedings before the Patent Trial and Appeal
Board (PTAB). Additionally, a bill was recently introduced to
curtail use of the International Trade Commission by non-practising
en،ies. Whether these bills will be p،ed into law is yet to
seen, but patent owners and future litigants s،uld monitor the
legislative front as these bills could impact litigation in the
United States.

16 Tips and traps

16.1 What would be your recommendations to parties facing
patent litigation in your jurisdiction and what ،ential pitfalls
would you highlight?

Parties seeking to litigate in the United States s،uld c،ose
their fo، wisely. Certain district courts have local rules and
practices that can greatly benefit particular litigants and claims.
Also, litigants s،uld be prepared in the event that a
patentability challenge is filed in the Patent Trial and Appeal
Board, as a parallel proceeding in this fo، can result in a stay
or change the outcome with regard to the underlying district court
litigation. Lastly, discovery is a large part of litigation in the
United States and cannot be overlooked. A discovery plan s،uld be
prepared in advance of a suit by a plaintiff or immediately after a
complaint is filed by a defendant to ،ess the strength of its
claims and confirm what evidence will be needed to advance its
positions.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice s،uld be sought
about your specific cir،stances.