Because patents are complex documents defining legal rights to an often abstract invention and frequently relate to “cutting edge” technology, they are subject to a wide disparity of interpretations. Interpreting what a patent covers (a “claimed invention”) and whether under that interpretation it covers an alleged infringing device or method challenges the intellect even in relatively simple circumstances. In patent litigation, that challenge is often immensely complicated by the intricacies of litigation generally and by the contentiousness of parties vying for a significant commercial advantage. Whether that challenge is put to judge or jury, and it may be either, the time, cost and unpredictability of result often exceeds all expectations.
Typically, patent litigation starts with a Complaint, in which an owner or exclusive licensee of a patent accuses another party of infringing the patent. This leads to an Answer and often counterclaims, which set up the issues to be decided. In some circumstances, the accused infringer can actually initiate the litigation with a Declaratory Judgment action if it has reason to believe that it may be sued. In a Declaratory Judgment action, the accused infringer is asking the court to rule that they do not infringe. This type of action proceeds the same as a patent infringement action.
More often than not, the accused infringer’s defense is that the accused product or method does not infringe (i.e. is not within the scope of a claim of the patent) and also alleges that the patent is invalid and/or is unenforceable. A
claim of invalidity may be based on one or more specific defects, such as failing to meet the requisite patentablity standards of
novelty,
unobviousness,
sufficiency of disclosure, and
definiteness of claims.
Unenforceablity is often alleged when a party contends that in obtaining the patent, the patent applicant violated its
duty of disclosure with respect to information which should have been disclosed to the patent examiner (sometimes referred to as
inequitable conduct or fraud on the patent office).
This is followed by a variety of pre-trial activities, most notably including all forms of
discovery, invalidity and infringement contentions, exchange of expert witness statements, depositions of expert and factual witnesses, and motion practice. Some motions may ask the court for a Summary Judgment, i.e. to decide the case, or certain parts of it, without further proceedings.
Another unique aspect of patent litigation is the claim construction process, commonly referred to as “Markman.” In the claim construction process, the court will construe the claim terms at issue in the case. Depending on the judge or the court, claim construction can occur at different times during the litigation (but always before trial), may be limited to a certain number of claim terms, may involve a hearing or may be done entirely on the papers. Experts may be consulted during this process, depending on the nature of the technology, and may issue reports to be submitted with the briefs. If the court holds a claim construction hearing, sometimes a party will submit a tutorial to teach the court the technology while advocating its position. In some cases, the court’s construction of a particular claim term may be dispositive of one or sometimes all the claims in the case, thus leading to an early settlement or judgment in the case.
Otherwise the case proceeds to trial, which may last from a few days to several weeks, depending on the court, the complexity of the case, etc. If either of the parties has requested a jury trial, this is where a jury enters the picture and decides the factual issues, often rendering a verdict concluding the legal issues as well.
Typically, the trial is not the end of the case, as there are post-trial motions, and the opportunity to appeal to the U.S. Court of Appeals for the Federal Circuit.
Patent litigation often never reaches the trial stage but is settled, at critical points in the litigation, such as at its inception, or just after a claim interpretation ruling or just before trial. Once litigation has started, it can only be settled with an agreement between the parties, and that settlement agreement is subject to court approval. If one party wants to terminate the litigation unilaterally, it cannot do so after an Answer to the Complaint has been filed unless it abandons its case, concedes to the other’s party’s position and pays court costs.
©RatnerPrestia 2010, all rights reserved. Copying for individual use authorized, with acknowledgement of source.
