美国BIR律师事务所讲座课件2

Pace of Litigation
Varies significantly across the various districts in the U.S. Depends on many factors: discovery, complexity and number of issues and motions
First Actions To Take
Preserve Evidence: Retain all relevant documents and things – paper and electronic Do not destroy anything that may be relevant (helpful or harmful)
Noninfringement
Easier to show noninfringement Burden is on plaintiff (patent owner)
Pleading Phase
The Complaint – “Notice Pleading” Responding to the Complaint by Motion Responding to the Complaint by Answer, Affirmative Defenses, and Counterclaims
Thank you!
Live testimony Deposition testimony Exhibits Documents Things Demonstrative Evidence (Graphics to explain evidence)
Damages
Reasonable royalty or lost profits Treble damages for willful infringement Attorney’s fess in an exceptional case Limitation on damages if patented product is not properly marked with notice of patent
Appeals
Patent cases have exclusive appellate jurisdiction with the Court of Appeals for the Federal Circuit Oral Argument Decision by the Court of Appeals for the Federal Circuit Appeal or Petition to the Supreme Court of the United States
Jury Trials
Jury selection process Jurors & alternate jurors Jury instructions Jury deliberation process Jury verdict
Types of Admissible Evidence at Trial
Expert Witness Discovery
Types of Expert Witnesses (legal and technical) Reports by Experts Depositions of Expert Witnesses
The Discovery Phase (continued)
Scheduling Phase
Parties prepare proposed schedule for the Court Initial Pretrial Conference with judge Scheduling Order is issued after the Pretrial Conference
Patent Infringement Litigation
Only in: United States District Courts United States International Trade Commission (ITC)
ITC (337) cases
Recent increase in ITC (337) cases being filed against Chinese companies
The Judge sits alone (no jury), hears all the evidence, and acts as the sole trier of fact. The Judge's decision is rendered as "Findings of Fact and Conclusions of Law"
Patent Validity
A United States Patent is presumed to be valid Burden is on defendant to prove that a patent is invalid by "clear and convincing evidence."
Direct Infringement
Making Using Selling Offering for sale Importing into the USA …any patented invention
Indirect Infringement
Induced Infringement:
Selling a product to a customer who uses it in performing a patented process Customer directly infringes the patent
Differences Between ITC and District Court Remedies
ITC - prevents the importation of infringing products District court: injunction, monetary damages, other relief deemed just and appropriate
Discovery Phase
Mandatory Initຫໍສະໝຸດ Baidual Disclosures by All Parties Protective Orders Fact Discovery Expert Discovery
Fact Discovery
Production of Documents and Things Interrogatories Depositions Requests for Admission Attorney-Client Privilege and Attorney-Work Product
Discovery of Nonparties Discovery Motions
Compel Protective Orders Sanctions
Markman Hearings
Construction of the claims:
Determine which claim terms are in dispute Hearing Before the judge Written decision from the judge on claim construction
Indirect Infringement
Contributory Infringement: Sells or imports into the United States A material part of the invention Knowing the same to be especially made for use in infringement of patent Not an article suitable for substantial noninfringing use
Pretrial Motions
Summary Judgment Motions Motion for Separate Trials (Bifurcation) Motions to Limit or Exclude the Testimony of Individual Experts
Bench Trials
First Actions To Take
Promptly identify issues involved in dispute
Potential Issues
Ownership of IP Infringement Patent Validity Enforceability Other Defenses Counterclaims?