Profs. Baum and Pistorino – Patent Litigation – Hastings Spring 2014
Introduction and Patent Law Refresh
· Patent process
o Applicant
o Patent Lawyers
o U.S. patent office – usually just 1 guy; ivory tower
· Disparity of resources:
Resource
Company
PTO
Personnel
The best and the brightest
One examiner
Industry background
Specialized
General
Attention
Lots of attention
Working on tons of things at once
Time commitment
Lots of time
Maybe online 12 hours
o Issued claims
o Business world
· Does the real world actually care?
· Possible outcomes: license agreement, do nothing, lawsuit
o Legal system
· Judge decides for the first what the claims actually mean (Markman hearings)
· Jury assess for the first time: whether the claims are valid or invalid and whether the accused product infringe the patent claims
· Arc of a typical patent case
o Complaint
o Answer
o Discovery
o Motion practice
o Claim construction
o Trial
· Jurors (six to twelve) decide on issues of fact
§ Infringement
§ Validity
§ Damages
§ Willfulness
· Judge decides on issues of procedure and law and matters arising in equity
§ Claim construction
§ Obviousness
§ Enablement
§ Enhanced damages
§ Injunction
Bringing Suit & Declaratory Judgment Actions
· Some patent notes
o patft.uspto.gov
o When suit is filed, first step is to go to the website and review the file wrapper for notable items/defects
· Bringing Suit
o Statutory Framework for Venue
· 28 USC §§ 1391, 1400(b)
§ Multiple venues are likely proper
· Where D resides (1400(b)) (wherever subject to personal jx)
· Where D committed acts of infringement and has regular and established place of business
· Where a substantial part of the events giving rise to the claim occurred (1391)
§ Generally a low threshold for patent cases, b/c products sold everywhere
o Patentee's Preferred Venue
· Where jurors are unsympathetic to “big business”
· Fast pace: speed favors the P
§ P already did the research and knows the facts, D has to scour the globe for prior art AND defend litigation
· Historically P friendly
§ 72% win rate at trial in ED Texas
o Strategy for resident venues
· work to become an integral part of the community in the venue you get sued a lot in (positive reputation in jury pool)
o Patents issue every Tuesday
· Can pull from website on Tuesday, or be tricky and pull Monday night
o Complaint
· Form 18 is for Direct Infringement
§ Very bare bones, very low standard, and impervious to MTD as matter of law (FRCP 84?)
§ Widely regarded as not satisfying Iqbal/Twombly, so may be changed by Congress/SCOTUS (open debate)
· The shaky ground is the claims for indirect infringement, willful negligence
§ These are fact heavy, and there is no form, so would be subject to Iqbal/Twombly pleading standard
§ Defendant: weigh the cost of filing the MTD with what can be gained
· Could delay litigation, provide time to dig up prior art/validity questions
· May offend the judge, wasting time
· Better to go straight to MSJ, or wait for discovery to kill the allegations?
o Answer
· Affirmative defenses. 35 U.S.C. 282(b).
§ Noninfringement, absence of liability for infringement, or unenforceability
§ Invalidity
§ Any other fact or act made a defense by Title 35 (e.g., inequitable conduct like a patent procured by fraud)
· Assert counterclaims
§ DJ that patent was invalid and unenforceable
· Motions (e.g., motion to dismiss for lack of personal jurisdiction or failure to state a claim)
o Advising Patentee Client
· Avoid Declaratory Judgment
· Alternatives to litigation
· Pre-filing analysis
· Understand your client's desires
§ What strategic objectives are available and should be discussed?
§ What is the desired outcome? What is a win?
· Damages? Injunction?
· Prep for Litigation (young associate's work)
§ Analyze patent/prosecution history
§ Conduct infringement analysis
§ Validity analysis
· Better to find out early than find out late
§ Damages analysis
· Will the damages pay the bills
· Really need to have financial understanding, can be helpful to take Damages class
· Assess Opponent's Responses
§ Potential counterclaims
§ Review opponent's issued patents/apps
§ Opponent's litigation history
· Scorched earth or folding chair?
· Notice of Infringement
§ Benefits of notice
· Will start the damages clock (35 USC §287)
· To get roll back damages (for pre-filing damages), can use notice letter
· Possible treble damages for willful infringement (35 USC §284)
· They know about infringement from then on, so willful
· Get opponent's attention
§ But, risk
· Can result in Declaratory Judgment
· Counterclaim of unfair competition
§ Alternative – sue first
§ Contents of notice
· Identify patent; and
· Identify infringing activity; and
· Proposal to abate the infringement
· Must come from the patentee (Lans v Computer Companies: bad mistake)
· How much of the patent right was assigned? Is it more like a license, so notice from assignee would not be sufficient? Or is it enough for the assignee to be patentee?
· FRCP 11: preparing to file
§ “Special” obligation on patentees to conduct pretrial investigation before filing suit (due diligence)
· Cannot just take the inventors word for it, need to do more
· Requires reasonable infringement analysis prior to filing (claim construction and comparison of alleged infringing products with interpreted claim)
· Can be wrong, but still satisfied due diligence
§ Can be expensive
§ Requirements for a reasonable infringement analysis:
· A claim construction that applies Federal Circuit precedent (i.e., the canons of claim construction), and
· A “reasonable” effort to compare the allegedly infringing products with the interpreted claims
· Need to analyze one claim per patent per accused product
§ Factors that reasonableness of infringement analysis may turn on:
· Access to the accused device (i.e., availability, cost)
· Cost and time required to test and/or reverse engineer the accused device
· Requests for information made to the accused infringer
· If you can’t get access, at least attempt
· Whether testing and/or reverse engineering the device would be futile
· Cf. Q-Pharma v. Jergens, Fed. Cir. 2004: reliance on advertising okay, even though Q-Pharma could have tested the product
§ Practice tip: be aware that there may be another way that something may work. A patentee usually thinks that the only way to do something is their way.
§ If you don't, can have sanctions brought against the filing attorneys
o Advising Defense Client
· Responding to notice letters
Do nothing, wait for them to act
Design around the patent
Open negotiations
Dec
on) are considered secondarily and not inconsistently with intrinsic sources (not leaned on heavily nowadays)
· Though dictionaries still used, not as highly regarded as when Markman was new concept
· Canons of Claim Construction
o Every canon of construction has an equal and opposite canon
Canon
Opposite Canon
Claims are not limited to the disclosed embodiments. Just because something is the only thing discussed in the patent doesn’t mean that that’s all the patent covers; it may merely be exemplary.
Claims are not necessarily entitled to a scope broader than the disclosed embodiments. You can’t claim your patent covers something that you never talked about in the patent
Preamble is generally not a claim limitation
A preamble will limit the claimed invention if it recites essential structure or steps, or if necessary to give life, meaning, and vitality to the claims.
Claims are construed to preserve validity
Claims should not be rewritten to preserve validity. A judge isn’t going to ix your claim. If you didn’t write it correctly, then tough luck.
Claims (and dependent claims) should not be read in a manner that would render other claims superfluous
Claims are sometimes of equivalent scope
· Party objectives
o D is trying to expand the claim to include the prior art, and invalidate the claim
· Also trying to construe the claim to avoid the accused product
· The choice between the two is balancing of strategy for D
o P is trying to expand the claim to include the accused product, w/o including the prior art
· Phillips v AWH Corp: used to be most cited case in litigation for claim construction
o Pre-fab prison walls for buildings (bullet deflecting)
o Does the baffle have to be at some angle other than 90
o Rely on the claims, the spec
· Thorner v Sony: nowadays used more prevalently for claim construction
o Flexible pad
· Construed by trial court as noticeably flexed with ease
o Actuators attached to said pad
· Construed by trial court as attached to outside of the pad
o CAFC sets clear step-by-step analysis
· Words have ordinary meaning to OSA, UNLESS:
§ Patentee acts a lexicographer and defines the words; OR
· Can be express (flexible means X elasticity)
· Can be implied: by the way the term is used in the patent, it has been limited (flexible material, such as rubber or silicone)
· Patent prosecution strategy: preferable made of X, but any other suitable flexible material may be used w/o deviating
§ Patentee disavows the full scope of the term in the specification or during prosecution
· Ex from Spec: the present invention is made of X
· Ex from prosecution history: present invention is different from prior art Y because made flexibly and not rigidly
· Mere criticism is not enough, must be clear and explicit
