Comparative Guides
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Results: 4 Answers
Patents
9.
Remedies
9.1
Are injunctions available?
 
United States
Under 35 USC § 283, courts “may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by a patent, on such terms as the court deems reasonable”. The Patent Act provides courts with “broad discretion in determining whether the facts of a situation warrant an injunction” (Amstar Corp v Envirotech Corp, 823 F2d 1538, 1548 (Fed Cir 1987)). A patent injunction preserves the right of the patentee to exclusive use of the patented invention and can compel a patent infringer to stop making, using or selling infringing products. “[P]ersons subject to an injunctive order issued by a court with jurisdiction are expected to obey that decree until it is modified or reversed, even if they have proper grounds to object to the order” (GTE Sylvania, Inc v Consumers Union of US, Inc, 445 US 375, 386–87 (1980)). Generally, there are two types of injunctions available in patent infringement litigation: preliminary injunctions and permanent injunctions. A preliminary injunction is requested during the pendency of a case to prevent further infringement of the patent during the litigation. A permanent injunction, on the other hand, is sought after patent infringement and validity have been adjudicated.

At the US International Trade Commission (ITC), a complainant may argue for a limited exclusion order or a general exclusion order. A limited exclusion order only applies to the named respondents, and their agents, in an investigation. A general exclusion order applies to all products found to violate Section 337, regardless of whether the party that sells for importation, imports or sells after importation is a named respondent.

For more information about this answer please contact: Anthony Del Monaco from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
9.2
What is the standard to obtain an injunction?
 
United States
In eBay Inc v MercExchange, LLC, 547 US 388 (2006), the Supreme Court found that injunctive relief in patent cases is similar to injunctive relief awarded in non-patent cases, and that to obtain a permanent injunction, a patentee must demonstrate the traditional four factors:

  • It has suffered an irreparable injury;
  • Remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
  • Considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and
  • The public interest would not be disserved by a permanent injunction.

All factors must be considered. A patent injunction is not automatically issued following a finding of patent infringement and, at the same time, an injunction is not automatically denied where the patentee does not use the patented invention (id at 391-94). District courts retain broad discretion in issuing injunctive relief and appellate review of the grant or denial of an injunction is conducted under the abuse of discretion standard (Presidio Components, Inc v Am Tech Ceramics Corp, 875 F3d 1369, 1383 (Fed Cir 2017)).

At the ITC, a finding of a violation of Section 337 will invoke a limited exclusion order or a general exclusion order.

For more information about this answer please contact: Anthony Del Monaco from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
9.3
Are damages available?
 
United States
“Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer” (35 USC § 284 (emphasis added)). Damages accrue for infringement occurring after a patent has issued from the US Patent and Trademark Office until the date the patent expires. However, damages cannot be recovered for infringement that occurred more than six years prior to the filing of a complaint or counterclaim initiating a patent infringement claim (35 USC § 286). In addition, if a patentee makes, offers for sale, sells or imports in the United States a product covered by a patent, the patentee is required to mark the product with the patent number (35 USC § 287). Failure to mark a product covered by a patent can bar the patentee from recovering infringement damages unless the patentee can prove the infringer was notified of the infringement and continued to infringe thereafter (id).

Damages are not available at the ITC.

For more information about this answer please contact: Anthony Del Monaco from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
9.4
What types of damages are available?
 
United States
The Patent Act describes recoverable damages broadly as “damages adequate to compensate for the infringement” (35 USC § 284). There are primarily two methods used to calculate the amount of damages in most cases: reasonable royalty or lost profits. To determine a reasonable royalty, a court will commonly consider the outcome of a “hypothetical negotiation” between a “willing licensor” (the patentee) and a “willing licensee” (the accused infringer) on the eve of infringement. The Federal Circuit has approved of the methodology explained in Georgia-Pacific Corp v United States Plywood Corp, 318 F. Supp. 1116 (SDNY 1970), which describes 15 factors to be considered in this hypothetical negotiation.

Alternatively, a patentee may be able to recover lost profit damages. A “useful, but non-exclusive” method to establish an entitlement to lost profit damages is the test articulated in Panduit Corp v Stahlin Bros Fibre Works, Inc, 575 F2d 1152 (6th Cir 1978), where a patentee is entitled to lost profit damages if it can establish:

  • demand for the patented product;
  • absence of acceptable non-infringing alternatives;
  • manufacturing and marketing capability to exploit the demand; and
  • the amount of profit it would have made.

A patentee cannot recover both lost profits and a reasonable royalty for the same acts of infringement.

For more information about this answer please contact: Anthony Del Monaco from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
9.5
What is the standard to obtain certain types of injunctions?
 
United States
The purpose of a preliminary injunction is to preserve the status quo during the pendency of litigation (Cordis Corp v Medtronic, Inc, 780 F2d 991, 994 (Fed Cir 1985) (“It is well settled that the purpose of an interlocutory injunction is to preserve the status quo and to protect the respective rights of the parties pending a determination on the merits”). Accordingly, courts focus on the patentee’s ability to demonstrate the likelihood of success on the merits in the litigation to determine whether a preliminary injunction is appropriate. Courts require demonstration of four factors:

  • The patentee is likely to succeed on the merits;
  • The patentee is likely to suffer irreparable harm in the absence of preliminary relief;
  • The balance of equities tips in favour of the patentee; and
  • An injunction is in the public interest (see Titan Tire Corp v Case New Holland, Inc, 566 F3d 1372, 1375–76 (Fed Cir 2009) (citing Winter v Nat Res Def Council, Inc, 555 US 7 (2008)).

All four factors must be considered and no one factor is dispositive (Chrysler Motors Corp. v. Auto Body Panels of Ohio, Inc,908 F2d 951, 953 (Fed Cir 1990) (“Our rule regarding whether a preliminary injunction should be granted or denied is that the trial court should weigh and measure each of the four factors against the other factors and against the magnitude of the relief requested… Under this rule, no one factor, taken individually, is necessarily dispositive”). District courts carefully consider the effect of a preliminary injunction on both parties (Doran v Salem Inn, Inc, 422 US 922, 931 (1975) (“[A] district court must weigh carefully the interests on both sides”). Additionally, Federal Rule of Civil Procedure 65(c) requires a security bond when a preliminary injunction is entered in the event that the enjoined ultimately prevails in the litigation.

For more information about this answer please contact: Anthony Del Monaco from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
9.6
Is it possible to increase or multiply damages due to a party’s actions?
 
United States
The Patent Act permits enhanced damages in cases where the infringer has committed willful infringement. Under 35 USC § 284, “the court may increase the damages up to three times the amount found or assessed”. Thus, the maximum amount of damages available is three times the basic compensatory damages award (eg, the determined lost profits or reasonable royalty) (Signtech USA, Ltd v Vutek, Inc, 174 F3d 1352, 1358 (Fed Cir 1999)). “When willful infringement or bad faith has been found, the remedy of enhancement of damages not only serves its primary punitive/deterrent role, but in so doing it has the secondary benefit of quantifying the equities as between patentee and infringer” (SRI Int’l, Inc v Advanced Tech Labs, Inc, 127 F3d 1462, 1468 (Fed Cir 1997)). However, because willful infringement depends on the bad-faith actions of the infringer, damages cannot be enhanced where the court simply finds that the compensatory award was insufficient (Beatrice Foods Co v New England Printing & Lithographing Co, 923 F2d 1576, 1579 (Fed Cir 1991)). The Supreme Court has established a flexible standard for determining what circumstances give rise to enhanced damages employed by district courts exercising their sound discretion (Halo Elecs, Inc v Pulse Elecs, Inc, 136 S Ct 1923, 1933 (2016)). “The sort of conduct warranting enhanced damages has been variously described in our cases as willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—indeed—characteristic of a pirate…. District courts enjoy discretion in deciding whether to award enhanced damages, and in what amount” (id).

For more information about this answer please contact: Anthony Del Monaco from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
9.7
Are sanctions available?
 
United States
Although there are no sanctions that are specific to patent law, many of the same types of sanctions that arise under the Federal Rules of Civil Procedure (FRCP) – including sanctions under Rule 11 and Rule 37 – are equally applicable in patent cases and can arise during patent litigation.

For more information about this answer please contact: Anthony Del Monaco from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
9.8
What kinds of sanctions are available?
 
United States
The FRCP provide that “whether by signing, filing, submitting, or later advocating” a pleading, written motion, or other paper to the court, the attorney certifies that to the best of the person’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances:

  • it is not being presented for any improper purpose;
  • the claims, defences and other legal contentions therein are warranted by law;
  • the allegations and other factual contentions have evidentiary support; and
  • the denials of factual contentions are warranted on the evidence (FRCP Rule 11(b)).

In patent cases, FRCP Rule 11 requires that counsel for the patentee conduct a reasonable investigation into the merits of the claim of infringement, including examination of the accused product, analysis of the patent claims and claim constructions, and a comparison of the claims to the accused product (View Eng’g, Inc v Robotic Vision Sys, Inc, 208 F3d 981, 986 (Fed Cir 2000)). A Rule 11 violation based on inadequate pre-suit investigation may result in sanctions against that patentee, its counsel or both (Phonometrics, Inc v Econ Inns of Am, 349 F3d 1356 (Fed Cir 2003)).

Another sanction that may arise during patent litigation is exclusion of infringement or invalidity theories not disclosed during discovery. Many district courts have adopted ‘Patent Local Rules’, which often require parties to exchange patent infringement and invalidity contentions early in the case. Failure to disclose infringement or invalidity theories in those disclosures can result in the undisclosed theories being excluded at trial (O2 Micro Int’l Ltd v Monolithic Power Sys, Inc, 467 F3d 1355, 1365 (Fed Cir 2006)).

Additionally, under Rule 37, a court may sanction a party if the party fails to comply with a discovery court order. Rule 37 sanctions may include, for example:

  • directing that the matters embraced in the order or other designed facts be taken as established as the prevailing party claims;
  • preventing the disobedient party from introducing evidence;
  • striking pleadings in whole or part; or
  • dismissing the action in whole or part (FRCP Rule 37(b)(2)(A)(i)-(vii)).
For more information about this answer please contact: Anthony Del Monaco from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
9.9
Can a party obtain attorneys’ fees?
 
United States
“The court in exceptional cases may award reasonable attorney fees to the prevailing party” (35 USC § 285). “[T]he award of attorney fees is not automatic, even for the extraordinary case” (Nat’l Presto Indus, Inc v W Bend Co, 76 F3d 1185, 1197 (Fed Cir 1996)). Appellate review of attorneys’ fees awarded under Section 285 are considered under the abuse of discretion standard (Highmark Inc v Allcare Health Mgmt Sys, Inc, 572 US 559, 563 (2014)).

For more information about this answer please contact: Anthony Del Monaco from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
9.10
What is the standard to obtain attorneys’ fees?
 
United States
The Supreme Court has explained that “[A]n ‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of a party's litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated. District courts may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the circumstances” (Octane Fitness, LLC v ICON Health & Fitness, Inc, 572 US 545, 554 (2014).

Accordingly, district courts are afforded discretion in determining the availability or amount of attorneys’ fees under the exceptional case standard.

For more information about this answer please contact: Anthony Del Monaco from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP