Austin Patent Attorneys: Venue and Patent Law

In most cases, patent litigation proceeds in federal court. Venue is often one of the first concerns where litigation is concerned. The choice of venue is important, particularly as it relates to the convenience of the parties involved in the case, and the expertise of the particular courts.

Also, with the changes of the Patent Reform Act, there are alternative venues for resolving patent disputes, but most notably the Patent Trial & Appeal Board or “PTAB” as it is commonly known. Most patent disputes will find their way into this forum. The PTAB provides an administrative avenue to challenge the validity of patents. Much deference is now given to this board, so that that lawsuits filed in federal court are often “stayed” as the boards decide matters of patent validity on a claim-by-claim basis. There are a variety of procedures available for litigants at the PTAB including inter partes review (“IPR”), post grant review (“PGR”), and ex parte challenge mechanisms. At The Buche Law Firm, PC we have successfully deployed all of these procedural mechanisms to achieve good results for our clients. We are licensed at the Patent Office and are comfortable with these challenges and balancing them with the nuances of litigation in federal courts across the country.

In other cases, patent disputes will proceed by arbitration, where private judges decide matters of infringement, or they can involve proceedings at the International Trade Commission, which will consider proceedings to obtain exclusion orders.

What Is the Procedure for Patent Infringement?

Patent litigation in federal court typically concerns several major focuses. We will elaborate upon them here:

Claim Construction

During the claim construction phase of litigation (which can occur at various times), the court will examine the language used in the claims to define the case’s scope. Each term in the claim is significant, and some more than others. At the beginning of this process, the court will assess the patent description and also evaluate the paperwork and file history that preceded the patent’s issuance. In some cases, the court may choose to employ an expert to decipher the claim as patents can be highly complex. The conclusion of this phase often ends with a Markman hearing, which may involve testimony from witnesses. Our attorneys have seen cases where the Markman construction nearly concludes the patent infringement case with a summary judgement. In these cases, a party might seek to elevate the case to the Court of Appeals for the Federal Circuit, which has a history of considerable reversal rates. Claim construction is also an important phase of cases that proceed at the Patent Trial & Appeal Board (“PTAB”) because interpretation of patent claims will have a bearing of patent validity.

Patent Validity

If a patent claim is invalid, it can’t be infringed. For this reason, many patent disputes focus on patent validity. Patent validity challenges can occur in federal court, but increasingly, litigants are moving disputes on the validity of patent into the Patent Trial & Appeal Board (“PTAB”), due to the perceived lower costs, expert judges at the PTAB, and statistically higher success rates of killing patents in that forum. Patent validity challenges proceed on a claim-by-claim basis, and the challenger will typically try to show that the claims were invalid because of issues of lack of novelty under 35 USC §102, for being “obvious” under 35 USC §103, for not being “enabled” under 35 USC §112, or sometimes for issues of “fraud on the patent office” by reason of knowing failures to disclose critical references to technologies that pre-date or “anticipate” the patent claims.

Infringement Liability

Assuming a patent survives validity challenges, Markman construction, and summary judgment defenses of non-infringement, then infringement liability will come into play. Infringement liability may or may not include damage evaluations. Some litigants care more about an injunction that will stop infringements than monetary damages. But, it’s during this phase that plaintiffs will attempt to prove that their patent has been violated by providing evidence, reports, and witnesses who attempt to prove that the defendant’s products or services have all the elements of the plaintiff’s patent claims. During this part of a trial, a defendant will argue that they did not infringe upon the patent claims. Frequently, experts will be called in to opine on whether the elements of the claims are met when compared to the Defendant’s products.

Damages

Arguing about damages is a particularly intensive part of the process as one might imagine. The plaintiff will want to achieve compensation for lost profits or sales, or to find a reasonable royalty. It’s common for both the plaintiff and defendant to call in forensic economists or accountants to review the case and present damage models. Sometimes the court will decide to separate phases of the case depending on the interests of justice.

Enhanced Damages in Patent Cases

If the plaintiff proves that the defendant willfully infringed on the patent owner’s rights, they can be liable for increased damages. If the defendant knew that the patent was valid and continued to infringe upon the owner’s rights, they are liable.

Declaratory Judgment Actions

A party accused of patent infringement may be entitled to a Declaratory Judgment Action under federal law. This action is effectively a request for the court to decide if an activity is infringing upon the owner’s patent or if the patent is valid. Declaratory Judgment actions are often the first filings in a venue battle, and to determine in which jurisdiction a patent case will be heard. Some jurisdictions, such as the legendary Eastern District of Texas, have become known across the country for their roles in resolving patent disputes, and spawning patent reform legislation.