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Get Off My Lawn: Patent Litigation and the Right to Exclude

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Get Off My Lawn: Patent Litigation and the Right to Exclude

Own a patent, now what? Only patent owners can enforce their right to exclude others from making, using, selling, or offering to sell their invention. In this introduction to patent litigation, we breakdown the major steps necessary to file and pursue a patent infringement complaint in U.S. district court. We also discuss the importance of claim construction and selecting the right forum. Participants in this course will gain a general understanding of the key step when enforcing a patent owner’s right to exclude.

Presenters

P. Andrew Riley
Head of Litigation
Mei & Mark

Transcript

Andrew Riley - Get off my lawn. Hello, and thanks for tuning into this course to learn more about patent litigation and the right to exclude. My name is Andrew Riley and my trial practice since 2003 has focused on patent and other intellectual property litigation in Federal District Court at the patent office and before the U.S. International Trade Commission. I'm also an adjunct professor at American Universities Washington College of Law, where I teach a seminar on intellectual property practice at the U.S. International Trade Commission. And yes, there has been significant patent litigation about grass.

Well, fake grass, also known as artificial turf. If you look at the example patent that's in your course materials, this patent is titled 'Synthetic Turf.' And we would call this patent the 412 patent because of the last three numbers in the overall patent number. Now this patent, the 412 patent has been involved in 10 different patent litigations in Federal District Court at the time of this recording. And we're going to talk a little bit more about this patent and these turf wars, these patent litigations, as we proceed today. From this course, you will gain a general understanding of the complexities of patent infringement litigation in district court. Now, I mentioned two other possible forums for patent litigation, the US Patent and Trademark Office and the U.S. International Trade Commission. If you are interested in learning more about intellectual property litigation at the U.S. International Trade Commission. Please look for my course on that topic also here on Quimbee. Adverse proceedings at the patent office take place before the Patent Trial and Appeal Board, or PTAB. The PTAB conducts administrative proceedings when someone files a detailed petition, challenging the validity of a patent. Quimbee will also offer a course on this unique aspect of patent law. And I should mention that invalidity is an argument where you say that this invention was known in the prior art. Before we get too far, let me give you an outline of where we're gonna be going today in the course.

First, we will start with a discussion of what a patent is, the constitutional origins of patents and the statutory framework. The heart of the course we'll discuss patent litigation from beginning to end. To do this, we will first discuss filing a complaint, asserting patent infringement. Next, we will discuss the critical and often case dispositive step of construing the claims that are found at the end of every patent. After claim construction, we will discuss discovery, experts, and trial. And finally, we will discuss the possible remedies, including damages and injunctions. Along the way, this course will highlight some recent trends in patent litigation. And I will offer some practical tips from my years of trial practice in this area.

So first, let's talk about what a patent is and where it comes from. The significance of patents in the United States comes directly from our founding fathers. Article one, section eight clause eight of the United States constitution states, "To promote the progress of science and useful arts by securing for limited times to authors and inventors, the exclusive right to their respective writings and discoveries." So, the bargain between the government and inventors is this. If the inventors disclose their invention to the public, the inventor gets the right to exclude others from making, using, selling, or offering for sale that patented invention for a set period of time. After that time expires, the public can freely use the invention. And once the pub invention is public and other inventors are free to make improvements to that invention. The time period today for a patent is generally 20 years. The patent act of 1790 was one of the first laws Congress passed after the ratification of the constitution. Today, the patent act is found entitled 35 of the U.S. code. And there are three types of patents that you should be generally familiar with, plant, design, and utility patents.

This course we focus on utility patents, but it's important to have a general understanding of all three types. Plant patents cover newly discovered, or invented an asexually reproduce plants, excluding a tuber propagated plant, or a plant found in an uncultivated state. You can find out more about this entitled 35 of the U.S. code at section 161, where the basic law covering plant patents can be found. If you look at section 171 of title 35 of the U.S. code that describes design patents, "Whoever invents any new original and ornamental design for an article of manufacture may obtain a patent, therefore, subject to the conditions and requirements of this title." Some classic examples of design patents include the glass Coca-Cola bottle. Often jewelry has designed patents covering the ornamental designs, or automobiles, or recently companies in the tech space have been using design patents to cover graphical user interfaces and icons that appear on smartphones or computers. Apple asserted several design patents against Samsung during their Epic Global Patent War several years ago. Section 101 of the patent act defines utility patents. That's the most litigated type of patent, and again, the subject of this course. Utility patents cover, "any new and useful machine manufacturer or composition of mater, or any new and useful improvement thereof.

Okay, with that overview of the three types of patents, you should also know that the United States patent and trademark office is where inventors go to file their inventions and negotiate for an issued patent. That process is called patent prosecution, but that's beyond the scope of this course today. And if you're interested in that area, I would, again, urge you to look for a course here on Quimbee. Before we get into the nuts and bolts of patent litigation, you need to know a bit more about the parts of a utility patent. Now let's look back at the synthetic turf patent, the 412 patent that's in your course materials. So, we can get a little oriented to some of the major parts of a utility patent. And there are three major parts that I want to highlight for you. If you look at the first page of the 412 patent, this page includes a lot of information, including an abstract for the invention, the patent number, the names of the inventors and the filing date. Now there's a lot of other information on this page, but for today's course, these basics are gonna be all you need. The second part of a utility patent you should understand is what is known as the specification. This includes the drawings and the written description. In our example patent, the drawings are figures one through nine found on pages two through five of the patent. The written description includes the abstract on the first page, and then the columns labeled one through nine found on pages six through 10. The written specification has numbered columns, and numbered lines so that anyone could easily identify a specific passage in the written description by identifying the column and line numbers. For example, the section in the patent that's titled the background of the invention that is found in column one from lines 10 through 20. The third key part of a utility patent you should know about are the claims at the end of the patent. In our synthetic turf patent, again, that's the 412 patent in your course materials, there are 28 numbered claims starting in column nine and continuing to column 10. Patent claims are critical. Patent claims actually define the scope of the invention. If we were talking about the property that your house sits, we would talk about the meets and bounds, as defining the property, near the property boundaries. For a patent, you look at the claims to understand the same thing. The claims define the invention. These claims are important because in order to prove that someone is infringing your patent, you must show that the infringing product meets every part called the limitation of one claim. We will talk a bit more about claims when we discuss clean construction in a few minutes. Now, let's turn to excluding others and filing a complaint in district court.

Once you have a patent, it is up to you to enforce your rights. The patent office, the federal government, they're not gonna help you enforce your patents without you stepping in and seeking their attention. You must look for and identify any infringement of your patent. And if you want to exclude others from using your patent, you must file a civil complaint in Federal District Court. To file a complaint alleging patent infringement, there are several key requirements. For purposes of this course, we will discuss some of the key requirements. Let's start with where you can file a patent infringement complaint. In other words, which district court will have jurisdiction. You may recall from your civil procedure course that you need subject matter jurisdiction and personal jurisdiction to proceed in federal court. Patent infringement is a federal question. The patent act is a federal law, so you have subject matter jurisdiction. For personal jurisdiction, it is usually safe to file a patent infringement case where the defendant is headquartered, or in the state where the defendant is incorporated. Those facts also generally satisfy the venue requirement. For this reason, the district court for the District of Delaware is regularly near the top of the list of courts with the most patent cases every year, that's because Delaware has laws favorable to corporations, and many companies are incorporated in Delaware, and have a registered agent who can be served with a patent infringement complaint. Another popular district court is the Northern District of California because of its proximity to Silicon Valley and the tech industry between San Francisco and San Jose.

From the mid two thousands until a few years ago, the district court for the Eastern District of Texas received a disproportionate number of patent cases. The Eastern District of Texas created local patent rules that governed how patent cases proceeded with discovery and trial. Local rules are typical to every district court, no matter where it is in the country. However, not every court has local patent rules that specify certain key steps and processes along the way to get from filing of a complaint through trial and a final decision. In addition to these local patent rules that are perceived to be favorable to patent owners, many patent owners also believe that this rural district favors American companies over foreign company. And these perceptions persist today, and many patent cases are still filed in the Eastern District of Texas. More recently, Judge Albright was appointed to the Western District of Texas in 2018. Judge Albright is the only sitting district court judge who was also a patent attorney, at least as the time of this recording. Because of judge Albright's patent background and the local patent rules in the Western District of Texas, his court is now the most popular place for patent owners to file their infringement complaints. The most recent statistics put roughly 20% of all patent infringement cases filed in the United States in Judge Albright's court in the Western District of Texas. In recent years, patent owners have pushed the envelope on the venue and personal jurisdiction requirements by filing their patent infringement complaints in one of these popular district courts. As I mentioned, these courts are perceived by plaintiffs as friendly to patent owners.

If we look at the complaint that's in your course materials, this complaint was filed in November of 2021 by Brock USA against Fieldturf USA. This complaint alleges patent infringement related to artificial turf. If we look on page seven of the Brock complaint, the personal jurisdiction section starts in paragraph 26. Here, the complaint alleges that the accused infringer has transacted business and engaged in torturous acts of patent infringement by offering to sell, selling, importing, and supplying the infringing product in that district here that's in the Northern District of Georgia. And these types of allegations are typical of a patent infringement complaint where the defendant does not have its headquarters, or is not incorporated in that district. If we look at paragraph 31, it states venue is proper under the general venue statute, which has found entitled 29 of the U.S. Code in section 1391. And patent venue has a unique statute itself that needs to be satisfied, and that can be found in title 28 of the U.S. Code in section 1400. In the past few years, there's been a fascinating back and forth between judge Albright in the Western District of Texas and the court of appeals for the Federal Circuit about whether his court is the proper place for many of these patent disputes that have been filed there. We could spend more than an hour that we have for this course, just discussing that back and forth between judge Albright and the Federal Circuit. So, I will leave our discussion on that now where it is, but I would encourage you if you're interested in filing in the Western District of Texas, to look at that back and forth. I should also explain a little bit about the court of appeals for the Federal Circuit. This court was created to hear all appeals from patent infringement decisions, no matter where that district court decision was made. And this is quite different from normal appellate practice, where appeals are heard in one of the 12 regional circuit courts of appeals, where that district court is located. For example, a contract dispute that is decided in the Western District of Texas is appealed to the fifth circuit court of appeals. In contrast a patent infringement case in that same court, the Western District of Texas in our example, that is appealed to the Federal Circuit. The federal circuit was created to try to bring some uniformity in patent decisions across the country.

We've talked about jurisdiction and venue. Let's look at a couple of other parts of a patent infringement complaint. If we look starting at page 20 of the Brock USA complaint that's in your course materials, Brock here describes Fieldturfs acts of patent infringement with specificity. In fact, Brock identifies Fieldturf's Shock Bass Pro Shockpad as the infringing product. And if you read the paragraphs under this section, there is an interesting and compelling story that the patent owner Brock is trying to present. According to Brock, the asserted patents relate to shockpads for use with artificial turf, and these shock pads provide impact protection for anyone who might fall on an artificial athletic field. So, for example, a football player who was tackled hard to the turf, ideally would be cushioned by this shock pad. Now Brock alleges that Fieldturf initially was marketing it's artificial turf products for use with Brock's patented shockpads. But now according to Brock, Fieldturf has found a supplier of competing shockpads that Fieldturf is now selling in the United States for use with Fieldturf's artificial fields. In other words, instead of marketing its products for use with Brock's shockpads, Fieldturf is now offering a competing product. Despite this being a straightforward competitor versus competitor case, Brock has created a narrative in its complaint, a narrative where Brock is the innovator and that Fieldturf recognized that innovation before Fieldturf decided to make and infringing product, or offer for sale an infringing product. And this narrative that Brock has created here in the complaint, Brock will likely carry that through the entire patent litigation as a way to tell a compelling story to connect with the judge and the jury. The challenge for Fieldturf is to find an equally, or more compelling response to present to the judge and the jury, so that it can adequately defend itself against these allegations. And there are two other elements of a patent infringement complaint that I want to highlight for you. If you turn to page 49 of the Brock complaint, Brock discusses the remedies it wants because of Fieldturf's alleged infringement. In a patent case, you can seek monetary damages for past infringement for up to six years. And where the facts support it, a patent owner can seek up to triple damages for willful infringement. Willful infringement is where the defendant knew its actions infringed the patent, but it continued to do those actions. Patent owners can also seek attorney's fees after proving infringement, but those are awarded at the court's discretion.

So far we've looked at patent litigation from the patent owners perspective. Before we move to the next topic, I need to tell you about declaratory judgment action. A declaratory judgment action is filed by an alleged infringer under title 28 of the U.S. Code sections, 2201 and 2202. A declaratory judgment complaint, seeks to prove that a patent is invalid and or pursue a finding of non-infringement. In order to file a declaratory judgment action, however, there must be an actual controversy between the patent owner and the party that is filing the declaratory judgment complaint. Often, a cease-and-desist letter sent by the patent owner will create sufficient controversy for the party to file a declaratory judgment complaint.

Now, the discussion we just had about a patent owner's patent infringement complaint applies to a declaratory judgment, but with certain obvious changes. Instead of pleading pat infringement, the declaratory judgment complaint would plead non-infringement and invalidity of the patent. The declaratory judgment complaint still must satisfy the venue and personal jurisdiction requirements that are necessary for any complaint filed in federal district court. Choosing the specific district court that will try the patent litigation is one key factor that drives the decision to file a declaratory judgment action. If the patent owner sends the cease and desist letter before filing a complaint, they risk letting the accused infringer pick the appropriate district court. As we discussed earlier, some patent owners perceive certain district courts as being more friendly to their claims. On the other side, accused infringers may want to pick the district court that they believe would be more friendly to their side of the case, and likely would want to avoid one of the more popular patent venues.

After the complaint is served, the defendants must answer the complaint or file a motion that tolls the time for answering the complaint. In the answer to a complaint, the accused infringer will admit, or deny each allegation made in the complaint. If you do not deny an allegation in the complaint, it is assumed true in the litigation. If the defendant has affirmative defenses, they must explain those defenses in their answer. For example, if the defendant believes the asserted patents are invalid, they must provide notice of that defense in their answer to the infringement complaint. An answer can also include counterclaims and requested relief against the plaintiff. The allegations in any counterclaims are treated as if they are actually part of a complaint against the other party and require an answer by the plaintiff in this circumstance. This could include patent infringement allegations by the defendant against the plaintiff. Let me briefly explain the main invalidity defenses that incudes infringers can bring in their answer, or in a declaratory judgment complaint. If the accused infringer believes that the invention claimed in the asserted patent was disclosed in a single prior patent, or a singer single printed publication, the defendant can assert that the prior patent anticipates the asserted patent under section 102 of the patent. If it would have been obvious to a person of skill in the art to combine one or more prior patents, or printed publications to come up with the asserted patent, the defendant can argue that the asserted patent was obvious under section 103 of the patent act. These are two of the main affirmative defenses you typically see an accused infringer raise in an answer, or the typical attacks that are found in a declaratory judgment complaint that alleges the patent is invalid. A trend in the last several years are four defendants accused of infringement to challenge the sufficiency of the patent owners allegations in the complaint, specifically defendants file a federal rule of civil procedure, 12B6 motion before answering the complaint. A 12B6 motion argues that the patent owner failed to state a claim upon which relief can be granted. In other words, the defendant argues that the complaint does not contain sufficient facts to support the infringement allegations. The court will then examine whether the patent owner provided enough facts to support the infringement claims in the complaint.

Now, when I started practicing, it was sufficient for patent owners to identify the asserted patent and at least one claim without much other support in a complaint, this was referred to as notice pleading, but that has changed significantly since 2003, and patent owners now must provide more detail about how the defendant's products infringe in the complaint, or they face an adverse ruling from the judge on a motion to dismiss. I should note that no matter which side of a patent dispute you were on, the party filing a complaint does have a duty under federal rule of civil procedure 11 to not file a frivolous complaint or to file a complaint for an improper purpose. This means that any attorney filing a patent infringement complaint must conduct a pre-suit investigation to ensure compliance with rule 11. That means determining that there is a good faith basis that the defendant infringes all limitations of at least one asserted claim per patent asserted, if you're asserting patent infringement. When the attorney signs the complaint, he or she is certifying that they performed this rule 11 due diligence. After the answer is filed and all motions have been ruled, and the case proceeds, it would then proceed with fact and expert discovery, like any civil case proceeding in federal court. However, there is one very unique and very important difference in patent cases, and that is the claim construction process.

As I mentioned earlier, patent claims are what define the invention. The claim construction hearing that occurs is also called a Marchman Hearing because of the Supreme Court's decision in Marchman versus Westview from 1996. In that decision, the Supreme Court declared that claim construction in patent cases is an issue of law for the court decide, it is not an issue for the jury to decide. I often explain the claim construction is like when a court interprets the meaning of a contract between two parties, even though the patent claims are written statements. Just like a written contract, the parties dispute the meaning of the patent claims, just like they might dispute the meaning of a clause in a written contract. In both circumstances, the court must step in and make a decision on the meaning of that disputed language. Let's first discuss the procedure used for claim construction, and then we will discuss the types of evidence and arguments presented. The district court will set a schedule for the whole claim construction process that ends with a Marchman hearing, and then sometime later a claim construction decision from the judge. Typically, the first step is for the parties to identify what claim terms they think need to be construed from the asserted patent or patents. The parties then work to narrow that list down to whatever number the judge has indicated they will entertain, some courts limit the total number of claim terms they will construe to, for example, 10. Once the parties determine which terms are in dispute, the parties will then submit briefs to the court, setting forth their arguments and evidence. In some courts, the parties submit brief simultaneously and then submit reply briefs simultaneously.

In other courts, one party submits an opening brief and the second party submits a response, then the first party gets to submit a reply, potentially followed by a reply from the second. After the briefing concludes, the court usually holds a Marchman hearing where the parties can present attorney argument. Some courts also allow expert witness testimony at these hearings. And in very, very rare circumstances, fact testimony. Marchman hearings usually lasts less than a day, but you will want to find out ahead of time how your judge typically proceeds with a Marchman Hearing. Some judges ask a lot of questions and some only want to hear certain terms argued. So, if there are 10 terms in dispute, the court may say I've reviewed the briefs, but I only want to hear argument on six of the 10 terms, for example. Again, it's best to find out ahead of time how your judge proceeds with Marchman. After the hearing, the judge will issue a decision construing the claims in dispute. Now you may be wondering, I think we saw 28 claims in that sample patent at the beginning of today's course. What happens to all those other terms that are not construed? What meaning do those terms have? Well in patent litigation, those terms are typically given they're plain and ordinary meaning.

Let's look at a sample Marchman decision from a Turf war case in the Eastern District of Michigan. This can be found in your course materials and it's Fieldturf USA versus Astroturf. On the second page of this decision, Judge Murphy uses a table to summarize his claim construction decision. As you can see, five terms were in dispute. For the first term, synthetic grass surface, the judge indicates in parentheses that he picked the proposal submitted by the patent owner Fieldturf. And in fact, if you look further down the chart, he picked four of the five terms and he sided with the patent owner for those four terms. For that first term, again, he picked the plain and ordinary meaning instead of the more detailed proposal submitted by the defendant. For the fourth term listed in the chart, the judge agreed with the defendant's proposed construction. This one term where Judge Murphy agreed with the defendant could be very significant. The defendant may have a non-infringement argument that requires this exact interpretation of the claim. In fact, parties generally propose claim constructions that support their theory of the case provided there is evidentiary support in the record for that proposed construction. Now, in this example, the patent owner would likely want a broad interpretation or the plain and ordinary meaning to capture as many infringers as possible. But the patent owner does not want the interpretation to be so broad that the invention does what the prior art teaches, because that would lead to the claim being found invalid. On the other side of the coin, the accused infringer is in a similar position. They look to narrow certain claim terms so they can avoid infringement, but they also likely want to present in validity arguements. In other words, both sides have this tension between narrow and broad interpretations, and must make significant strategic choices at the Marchman stage of any patent litigation. And again, Marchman often occurs very early in patent litigation.

So, it's very critical that you put the time and effort, and have the right strategic discussions with your clients and the members of your team to present the right strategy for claim construction. And once the judge issues, the Marchman decision, this critical point can be when many parties settle, because if it does not go their way, many parties see the writing on the wall and come to terms, or in some rare circumstances, they look to accelerate and appeal to the court of appeals for the Federal Circuit. In this example, that's in your course materials, Judge Murphy selected either the defendant, or the patent owners propose constructions. However, judges are not limited by the constructions proposed by the parties in the litigation. Judges are free to choose their own interpretation and provide their rationale for why they came to that conclusion. When claim construction is appealed to the court of appeals for the Federal Circuit, they do not give any deference to the district court's interpretation, and that's because claim construction is a matter of law and it is reviewed de novo, or for the first time on appeal. Now that we've talked about the procedural parts of the claim construction process, let's turn to the evidence and the guiding precedent for claim construction. The Federal Circuits in bug decision in Phillips versus AWH Corporation from 2005 is the most recent decision to provide a clear explanation of the patent claim construction process. In bug in this circumstance means that the full court of appeals decided the case instead of just the normal three judge panel.

Now, as the Phillip's decision states, "The words of a patent claim are generally given their ordinary and customary meaning." And this can be found on page 13, 12 of the Phillips decision, but this isn't your average groundskeeper who is looking at the claim terms. Instead, any patent claim must be looked at from the perspective of a person of ordinary skill in the art. That's a phrase that you will hear quite often in any patent litigation. And often, the parties dispute the qualifications and education of this hypothetical person of ordinary skill in the art, and the court sometimes has to make that determination. For example, a PhD in computer science is not likely to be a person of ordinary skill in the yard for the artificial grass technology, for the patent that we saw earlier in the course, the 412 patent. Instead, you are likely looking for someone with a material science background and possibly with some work in that field, sorry, work experience with artificial grass. This is about what you would expect for the skill and education of the inventor of this patent. The Phillips decision sets forth the framework for how to construe patent claims. According to Phillips, courts first look at what is called the intrinsic evidence, the words of the claims themselves, the specification, and the prosecution history of the patent. In the beginning of the course, I mentioned patent prosecution, which is the process where the patent applicants negotiate with the patent office for the scope of the claims that they want from the issued patent. This back and forth between the applicant, and the patent office is a public record, and it's called the prosecution history, or sometimes the file history. Statements made by the applicant during the file history, during the negotiation with the patent office can be used to help understand the meaning of the terms in the claims that end up at the end of the patent.

Also, some of the rejections and arguments that are presented either by the patent office in the rejection process or by the applicant in the negotiation process can also be used to help understand the meaning of the terms at issue. So, from this intrinsic evidence, again, that's the claims themselves, the patent specification and the prosecution history. From that intrinsic evidence, courts can often determine the meaning of any disputed claim term and not have to look at any other evidence. The other category of evidence courts will sometimes look at is called extrinsic evidence. Extrinsic evidence is often dictionary definitions, or technical definitions for terms found in the claims. And typically, those definitions are from the time period from when the patent was filed. It can also include more broadly the state-of-the-art and general scientific principles that were known at the time of the invention. Extrinsic evidence, however, is not as persuasive as intrinsic evidence.

If we look at page eight of the Marchman decision from the Fieldturf case that's in your course materials, you can see how the judge used both intrinsic, and extrinsic evidence to construe a claim term. In the second paragraph on page eight, Judge Murphy uses intrinsic evidence first, and you can see this where he states, "The patent specification proposes methods of joining the adjacent edges of surface sections, which suggests that an installation is not necessarily comprised of a single surface, but a composite of multiple smaller surfaces that cover less than the area of an entire facility. And he cites to the 412 patent at pages, sorry. At column eight lines 41 to 43. So here, Judge Murphy is using the intrinsic record to support his interpretation, his claim construction. In the very next sentence, Judge Murphy continues. And here he states, this accords with the plain meaning of the word surface, which is imposes primarily vertical limits rather than horizontal ones. And here Judge Murphy sites to Webster's third new international dictionary from 1961. And that dictionary says, that the exterior or outside of a object, or body the outer most or upper most boundary, or a plain of a solid is the meaning of surface. So here in the first sentence, Judge Murphy used intrinsic evidence, and then the second sentence, Judge Murphy is using extrinsic evidence, a dictionary definition to support their support, his claim construct.

Before we move on, I want to emphasize the importance of claim construction. Many patent infringement cases rise, or fall when the judge decides the meaning of disputed claim terms. So, with that background on claim construction, let's move forward in time. If both sides still believe they have viable arguments after the Marchman decision, and the judge does not rule for one party on summary judgment, a patent litigation will proceed to a trial before a judge or a jury. The parties can waive their right to trial by jury and have a bench trial with the judge. Instead, in my experience, however, bench trials are rare. Most parties want to take their case to the jury.

Now, before I tell you about the trial, we should briefly discuss discovery in patent litigation. Like any civil case, the parties can exchange discovery requests, including requests for the production of documents and things, interrogatories requests for admission, conduct depositions, and subpoena non-parties for additional information. What I would highlight about discovery in patent litigation is that the schedule issued by the judge usually requires a specific date for when the parties exchange contentions. In these contentions, each side sets forth their arguments on the issues on which they bear the burden of proof. For the patent owner, they bear the burden of proving infringement and any damages. For the accused infringer, they bear the burden of proving that the patent is invalid. These contentions typically contain what are called clean charts. The patent owner might use a claim chart to show how the accused product includes each and every limitation found in the asserted patent. And in the asserted claims in particular, in contrast, the accused infringer could use a clean chart to map how the prior art discloses each and every limitation of the asserted claims. Moving forward in the case, courts typically limit the parties to the disclosures in these contentions so that no party is surprised by any contention presented at trial, and each party has an opportunity to conduct full discovery on the other parties contentions.

Now with discovery and claim construction behind us, that brings us up to trial. Like other civil litigations in federal court, the parties can file pre-trial motions to exclude evidence and testimony they believe is irrelevant or prejudicial. The motion most often filed are motions eliminate, and then motions to limit expert testimony, often called Daubert motions after the Supreme Court case with that name. Some typical motions eliminate in a patent case, our motions to exclude evidence of the asserted patent being involved in other litigations or proceedings at the patent office, motions to exclude the use of loaded terms like patent troll, or monopoly, and motions to exclude unrelated facts that might paint one side in a negative light. Some example, Daubert motions to exclude expert testimony in a patent case can include prohibiting testimony on contentions that was not presented in the party's original burden contention responses, or in the experts initial expert report. Some parties also seek to exclude testimony by experts that they believe is irrelevant to the issues in the case. According to the Supreme court's Daubert decisions, such motions should target expert opinions that are not reliable or were obtained from an reliable methodology. In a patent case, experts often test accused products for certain functionality and the methodology of those tests, whether it is scientifically valid test, for example, often become contentious in the subject of Daubert motions.

With those motions behind us, let's describe the procedure for a patent infringement trial, and then we will talk a bit about the challenges, both parties face and some strategies. First, the parties must pick the jury, in my experience this procedure varies from court to court and sometimes from judge to judge. Get to know your judge's preferences ahead of time so you can prepare. For example, will you get to conduct any part of the voir dire of the jury pool? Voir dire is the process where the judge and the parties select the jury from the pool of potential jurors that appeared in response to the court's jury summons. If you get to ask questions during Voir dire come prepared, because this is your first opportunity to present yourself and your client to the jury. Once the judge and or the parties complete their questions to the jury, the parties can then use a limited number of strikes to remove a potential juror for no reason. Jurors can also be removed for cause where they may have expressed a bias, or have personal knowledge of the facts at issue.

In all patent cases, the jury verdict must be unanimous. So, take care to prepare and select the best jury that you can. A typical patent trial begins with both sides making opening statements. Opening statements should not contain argument, but rather describe the evidence and witnesses that the jury will hear and see during the trial. Often, the parties try to take their narratives, the story that they've created for their side of the case, ideally from the beginning, as we saw in the Brock complaint that we looked at, and include that narrative as part of the opening statement. Then after opening statements, the patent owner will present their infringement and damages parts of the case. This can include one or more in vendors testifying about their inventions, and a company witness to talk about the patent owners business and how the patent fits into that business.

Again, if we look back at that Brock complaint, you're likely going to see some testimony from the inventor to talk about how their pad protects athletes who may fall on an athletic field that's an artificial turf field. And then you may also hear from a company witness that talks about how that revolutionized the business in some way. In addition to these fact witnesses, the patent owner will usually have two experts testify at patent trial. One to testify about the patent owners damages and a technical expert to address infringement. To prove infringement, the patent owner will have its technical expert testifying on how the accused product meets every limitation of the asserted patent. If you recall, when we talked about clean charts with the contentions, that's the same idea here. Each and every limitation that's in dispute, and even those ones that are not necessarily in dispute, the patent owner bears the burden of proving that those are met in the accused product. Now in your course materials, there is a second patent, this one has the number that ends in 752.

This 752 patent on page part 12, you'll see claim one. And you can see how this is broken down into several sub paragraphs. The first sub paragraph starts with a pile of fabric and the second starts with an infill layer. We refer to these sub paragraphs as limitations because each sub paragraph adds more detail to the broad invention described in the opening clause of a patent claim. To prove infringement, the patent owner will need to prove that each one of these limitations is found in the accused device. Now after the patent owner rests their case, both their infringement and their damages side of the cases, the accused infringer presents their side of the story to the jury. The accused infringers witnesses might include a fact witness to testify about their company, as well as rebuttal damages and rebuttal technical experts. In addition to presenting the accused infringers non-infringement arguments, these experts will likely present their patent invalidity arguments as well. With most patent trials presented to a jury, both sides spend significant time educating the jury on the technology and the patents at issue. I can't stress enough the significance of the experts in patent infringement litigation. The jury is looking to see which expert they find more credible, more believable. If the jury doesn't like your expert, you must have very, very strong facts to win. After the presentation of evidence, both sides conclude a patent trial with closing arguments. This is the opportunity, the last opportunity to present your story and to collect and synthesize all of the evidence, and exhibits, and testimony that the jury has heard, and combine that with your narrative to tell that compelling story, to try to convince the jury, to rule in your client's favor.

The jury, then deliberates and will return a verdict. I should note that some courts will bifurcate a patent infringement case. In other words, the jury first determines whether there is infringement and whether the patent is valid. If there is infringement and the patent is valid, the court will then hold a second trial just on the appropriate amount of damage. This can save everyone some time and effort if the jury finds no infringement at the end of the first trial, or if they find the patent invalid, because the parties did not also present their damages side of the case and present expert testimony on damages. After the jury verdict, the judge must then enter judgment, many losing parties file post-trial motions that ask the judge to overturn the jury's decision. These motions typically argue that there was insufficient evidence for the jury to reach the conclusion that they did. Often, patent owners who proved infringement also file a motion with the court asking for an injunction to prevent future infringement by the defendant. Once the judge rules on all post-trial motions and enters judgment, the losing party can appeal to the court of appeals for the Federal Circuit. Now we just discussed the procedure for a patent infringement trial, let's discuss some of the challenges and strategies. As I just outlined patent trials can involve many witnesses and often involve complex testimony. With all these moving parts and issues, preparing ahead of time is very important.

This can include preparing witnesses for their testimony days ahead of time, preparing cross examination outlines and rehearsing opening statements and closing arguments among other pre-trial activities. Like any jury trial, selecting the best jury you can for a patent infringement case is important. Most jurors do not have any expertise with the technology and the case, presenting a unique challenges for both sides. Explaining the complex issues in a way the jury will understand and find interesting is critical, and most trial lawyers look to start educating the jury from the very beginning of possible. Starting with jury selection as I mentioned, certainly with opening statements and the most critically during the testimony of your expert witnesses, and then during closing arguments. Patent infringement cases can also involve a lot of documents and often physical exhibits.

Again, the jury may not know much about the technology, and explaining what this evidence shows, and how it supports your theory of the case is very important. Even though your case may involve complex patent law principles and cutting-edge technology, a good story will still appeal to a jury. For many patent owners, they present themselves as the innovators whose inventions are being stolen by unscrupulous infringers. And we can look back to the Brock complaint to see some of that type of story. The patent owner will likely use the evidence to explain how they put in the blood, sweat, and tears to create the invention. In contrast, the accused infringer may argue that the invention is nothing new and that they are simply using technology known before the invention was patented. However, you present your case, work hard to make it understandable and compelling.

Now, what if the patent owner wins? What kind of relief can the patent owner get? Well, the jury can award monetary damages for past infringement, either lost profits or a reasonable royalty. The jury can award the patent owner lost profits because of the infringer's activities. This requires the patent owner to make a product that also uses the patented technology. The patent owner argues to the jury that it would have made sales and profits, but for the infringement of the defendant. If we think back to the patent infringement complaint in your course materials, the Brock complaint against Fieldturf, Brock may argue, but for the sales of Fieldturfs infringing products, Brock would have sold its patented products to those customers. This is how Brock could ask the jury to award lost profit damages. If the patent owner doesn't make a competing product or any products at all, for that matter, the patent act says, that the patent owners should be awarded a reasonable royalty at a minimum. The patent owner under the reasonable royalty damages theory, asked the jury to determine what royalty and infringer would have paid to the patent owner if the two sides had engaged in a hypothetical arms length negotiation, when the infringement first started.

In other words, what business deal would these two sides have made if negotiations had concluded with a royalty deal, instead of litigation. Explaining either damages theory, lost profits or a reasonable royalty can be quite complicated. This is why so many patent infringement cases have damages experts to do the math and present the damages evidence to the jury. If the patent owner wins, they can also seek an injunction. If the court awards an injunction, the injunction is a court order, prohibiting the infringer from taking certain actions in the future. In the patent litigation contact, that usually means the injunction prohibits the accused infringer from selling or making the infringing product. The court is more likely to grant an injunction where the two parties directly compete in the marketplace. A patent owner who does not make products sometimes referred to as a non-practicing entity or NPE is unlikely to get an injunction. A winning patent owner can also ask the court to award enhanced damages up to triple the amount awarded where the defendant conduct was willful, or where the defendant engaged in other egregious behavior, such as litigation misconduct. Enhanced damages are a penalty for blameworthy behavior.

Finally, a winning patent owner can seek reasonable attorney's fees where the court finds the case exceptional. Just like with enhanced damages, a court is likely to award attorney's fees where the defendant's infringement was willful or engaged in litigation in misconduct. If the defendant wins, if the defendant isn't found not to infringe and or the patent is found invalid, the defendant can ask the court to award attorney's fees to the defendant. Courts, often award attorney's fees to defend where the patent owners case was particularly weak, or where the patent owner engaged in litigation misconduct. Like many aspects of patent litigation, we could spend several hours discussing the nuances of the remedies available, and how best to present a damages case in a patent infringement litigation. For this overview course, let me point you to the patent act at title 35, U.S. Code sections 283 to 2 87 for the governing law.

We're just about out of time, and I want you to take away two key points from today's course. The first key is claim construction, whether you are the patent owner or the accused infringer, spend the time at the beginning of the case to find the right approach, to prove your side of the case, and defend against the other side's arguments. It's that balancing act that we discussed earlier. If you are the patent owner, your claim construction must be broad enough to capture the infringing product, but narrow enough to avoid the prior art that the defendant will argue invalidates the patent. The second key takeaway is that jury trials required telling a story of your side of the case to the jury, but typically requires making the complex patented technology issues, easily understood by the jury.

Thanks for your time and attention today. I hope you learned something from this overview, and that you are more interested in patent litigation.

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