challenges associated with, and strategies for, u.s. patent litigation
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Challenges Associated With, And Strategies For, U.S. Patent Litigation. Russell E. Levine, P.C. Kirkland & Ellis LLP [email protected] LES Asia Pacific Regional Conference Hangzhou, China October 16, 2013. Disclaimer. - PowerPoint PPT PresentationTRANSCRIPT
Challenges Associated With, And Strategies For, U.S. Patent Litigation
Russell E. Levine, P.C.Kirkland & Ellis LLP
LES Asia Pacific Regional ConferenceHangzhou, China
October 16, 2013
Disclaimer
The views expressed herein are mypersonal views and are not those of
Kirkland & Ellis LLP or any of its clients
Slide 2
There’s A Jury
Slide 3
A Challenge
Jury Decides
Infringement
Validity
Damages
Slide 4
Average Jury Profile - Age
Slide 5
Average Jury Profile - Education
Slide 6
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Slide 15
U.S. Patent Litigation CanBe A Lengthy Process
Slide 16
Another Challenge
Typical Litigation Time Line
Slide 17
ITC Time Line
Slide 18
U.S. Patent Litigation Is Expensive
Slide 19
Yet Another Challenge
Why Is U.S. Patent Litigation Expensive?
Numerous experts needed Extensive discovery
Documents Interrogatories Depositions
Claim construction hearings Can be like a mini-trial Often combined with technology tutorial Often combined with hearing on summary judgment motions
There’s a need for demonstratives and animations
Slide 20
The Loser Doesn’t Have to Pay Your Attorney Fees
Section 285 of the Patent Act states: “The Court in exceptional cases may award reasonable attorney fees to the prevailing party.”
“Exceptional cases usually feature some material, inappropriate conduct related to the matter in litigation, such as willful infringement, fraud or inequitable conduct in procuring the patent, misconduct during litigation, vexatious or unjustified litigation, conduct that violates Federal Rule of Civil Procedure 11, or like infractions.”
Serio-US Industries, Inc. v. Plastic Recovery Technologies Corp., 459 F.3d 1311, 1321-1322 (Fed. Cir. 2006)
“Absent misconduct in the litigation or in securing the patent, a trial court may only sanction the patentee if both the litigation is brought in subjective bad faith and the litigation is objectively baseless.
Id. at 1322
An award of attorneys’ fees under Section 285 is available in “limited circumstances” and “is an exception to the American Rule.”
Forest Labs., Inc. v. Abbott Labs., 339 F.3d 1324, 1329 (Fed. Cir. 2003); Id. at 1322
Slide 21
Utilize A Post Grant Challenge Under the AIA
Slide 22
A Strategic Option
Background of the America Invents Act (AIA)
Signed into law on September 16, 2011.
Many provisions took effect right away.
Others became effective on September 16, 2012.
All provisions effective by March 16, 2013.
Slide 23
Post-Grant Challenges under the AIA
Three primary types of post-grant challenges:A. Post Grant Review (“PGR”)B. Inter Partes Review (“IPR”)C. Covered Business Method Patent Review (“CBM”)
PGR, IPR, and CBM are “trials” before the PTAB.
The PTAB is staffed by Administrative Patent Judges (“APJ”). Employs 163 APJs as of January 28, 2013. Plans to hire another 60 APJs during FY2013. New hires are coming from PTO Examining Corp, ITC, DOJ. Each AIA challenge is decided by a 3-APJ panel.
Trials allow for limited discovery, not available in ex parte or former inter partes reexaminations.
Slide 24
Benefits
Lower burden of proof for invalidity “Preponderance of the evidence” vs. “clear and convincing”
“Broadest reasonable” claim construction standard
Complicated issues handled by “expert” APJ panel
Possibility of two bites at the apple
PTAB’s constructions may influence district court
Generally faster than district court
Lower cost
Slide 25
Drawbacks
Estoppel
IPR is limited to §§ 102, 103 grounds on patents & printed publications
Patent Owner may amend or present new claims
Fact discovery much narrower than civil litigation
Timing and limits (e.g., page limit) per petition
If challenge is unsuccessful, increased risk before the jury and enhanced presumption of validity
Slide 26
Use an Alternate Dispute Resolution (“ADR”) Mechanism
Slide 27
Another Strategic Option
ADR Mechanisms
Mediation
Non-Binding Expert Determination
Arbitration
Slide 28