Answer ... The Patent Act (35 USC § 271(a)) provides that “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, [directly] infringes the patent”.
Additional acts – such as inducing or contributing to infringement; supplying or causing to be supplied all or a substantial portion of the components of a patented invention; or importing products, made overseas, which are made by a process patented in the United States – may also constitute infringement (35 USC §§ 271(b)-(g)).
Patent infringement requires only that a single valid and enforceable claim of the patent be infringed (Grober v Mako Prods, Inc, 686 F3d 1335, 1344 (Fed Cir 2012)).
Answer ... Yes, US courts generally recognise two types of infringement: literal infringement and infringement under the doctrine of equivalents. Literal infringement requires that the accused product meet every limitation of the infringed claim exactly (General Mills, Inc v Hunt-Wesson, Inc, 103 F3d 978, 981 (Fed Cir 1997)).
Infringement under the doctrine of equivalents generally occurs where the accused product does not infringe every literal detail or limitation of the infringed claim, but nevertheless contains elements that are insubstantially different from one or more elements of the claimed invention and retain the essential functionality (Warner-Jenkinson Co v Hilton Davis Chem Co, 520 US 17, 29-30 (1997)).
Answer ... The territorial reach of Section 271(a) of the Patent Act is limited. It provides that direct infringement occurs only when someone “makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention” (35 USC § 271(a) (emphases added)). Thus, “[i]t is the general rule under United States patent law that no [direct] infringement occurs when a patented product is made and sold in another country” (Microsoft Corp v AT & T Corp, 127 S Ct 1746, 1747 (2007)).
Unlike 35 USC § 271(a), however, Section 271(b) does not contain a territorial restriction. “[L]iability for induced infringement under § 271(b) can be imposed based on extraterritorial acts, provided that the patentee proves the defendant possessed the requisite knowledge and specific intent to induce direct infringement in the United States” (Enplas Display Device Corp v Seoul Semiconductor Co, Ltd, 909 F3d 398, 408 (Fed Cir 2018)).
The US International Trade Commission (ITC), however, will consider extraterritorial activity when determining whether a violation of Section 337 has occurred because its jurisdiction lies with respect to an imported article, and not necessarily with an accused infringer. Therefore, the ITC will investigate when an act of unfair competition occurs outside the United States relating to an infringing article sold for importation into the United States, imported into the United States or sold in the United States after importation.
Answer ... The Patent Act (35 USC § 284) provides district courts with the discretion to “increase the damages up to three times the amount found or assessed”. The Supreme Court held that, while district courts are given discretion to award enhanced damages, such damages “should generally be reserved for egregious cases typified by willful misconduct” (Halo Elecs, Inc v Pulse Elecs, Inc, 136 S Ct 1923, 1934 (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” (id).
After Halo, egregiousness is the touchstone of the wilfulness inquiry. Some courts have turned for guidance to the Federal Circuit’s enumerated factors in Read Corp v Portec, Inc to determine the egregiousness of a defendant’s conduct (970 F2d 816, 827 (Fed Cir 1992)). These factors include:
- whether the infringer deliberately copied the ideas or design of another;
- whether the infringer, when it knew of the other’s patent protection, investigated the scope of the patent and formed a good-faith belief that it was invalid or that it was not infringed;
- the infringer’s behaviour as a party to the litigation;
- the defendant’s size and financial condition;
- the closeness of the case;
- the duration of the defendant’s misconduct;
- remedial action by the defendant;
- the defendant’s motivation for harm; and
- whether the defendant attempted to conceal its misconduct.
A patentee need only show by a preponderance of the evidence the facts that support a finding of wilful infringement (Halo, 136 S Ct at 1934).
Answer ... Standing to sue is a threshold requirement in every federal action (Sicom Sys, Ltd v Agilent Techs, Inc, 427 F3d 971, 975-76 (Fed Cir 2005)). This applies to patent infringement actions under Section 281 of the Patent Act.
In general, only a patentee can sue for patent infringement (35 USC § 281). The Patent Act defines ‘patentee’ to include not only the patentee to which the patent was issued, but also its successors in interest (ie, an assignee) (35 USC § 100(d)). Thus, an assignee as the successor in interest can sue for infringement alone. An exclusive licensee, on the other hand, may have the ability to enforce the patent, but will need to do so jointly with the patent owner. A non-exclusive licensee does not have constitutional standing to bring an infringement suit (Mars, Inc v Coin Acceptors, Inc, 527 F3d 1359, 1367 (Fed Cir 2008)).
Answer ... Section 286 of the Patent Act provides: “Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action” (35 USC § 286). The Supreme Court has inferred that “this provision represents a judgment by Congress that a patentee may recover damages for any infringement committed within six years of the filing of a claim” (SCA Hygiene Prod Aktiebolag v First Quality Baby Prod, LLC, 137 S Ct 954, 961 (2017)).
Answer ... A pleading that states a claim for relief must contain:
- a short and plain statement of the grounds for the court’s jurisdiction, unless the court already has jurisdiction and the claim needs no new jurisdictional support;
- a short and plain statement of the claim showing that the pleader is entitled to relief; and
- a demand for the relief sought, which may include relief in the alternative or different types of relief (Federal Rule of Civil Procedure 8).
To successfully plead patent infringement, a party’s complaint must contain enough factual matter to state a plausible claim to relief. While a party need not prove its case at the pleading stage, the complaint must put the alleged infringer on notice as to what activity is being accused of infringement. If fraud or mistake is alleged, the pleading standards are slightly higher, as a party must state with particularity the circumstances constituting fraud or mistake (Federal Rule of Civil Procedure 9(b)).
Answer ... Federal district courts, located throughout the United States, retain original jurisdiction for civil actions alleging patent infringement (28 USC § 1331; 28 USC § 1338(a)).
Parties may also enforce their patent rights at the ITC. The ITC is a federal administrative agency that hears claims of patent infringement for imported goods accused of infringing US patent rights, among other things. In the ITC, however, the only remedy available is an exclusion order limiting the importation of infringing goods. Damages are not available.
Answer ... In federal district court, there are three issues related to jurisdiction:
- The court must have subject-matter jurisdiction, which is not waivable as a defence;
- The court must have personal jurisdiction over the parties, which is waivable as a defence; and
- The court must be the appropriate venue, which is waivable as a defence.
First, because patent cases are considered cases “arising under the Constitution”, federal district courts have subject-matter jurisdiction to adjudicate those cases (28 USC §§ 1331, 1338).
Second, as to personal jurisdiction, there are two kinds – general and specific jurisdiction. Generally speaking, individuals and organisations are subject to the general jurisdiction of their ‘home’ state. A district court can also exercise personal jurisdiction over an out-of-state defendant pursuant to either general or specific jurisdiction. Under general jurisdiction, a district court can hear all claims against out-of-state defendants when their affiliations with the state are so “continuous and systematic” as to render them essentially at home in the forum state. Specific jurisdiction instead focuses on the relationship among the defendant, the forum and the litigation. To comport with due process, the out-of-state defendant must have “minimum contacts” with the forum state “such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice” (Int’l Shoe Co v Washington, 326 US 310, 316 (1945)). To determine whether specific jurisdiction exists, courts apply a three-part test, determining whether:
- the defendant purposefully directed its activities to the forum state;
- the claim arises out of or relates to those activities; and
- the assertion of jurisdiction is reasonable and fair.
Third, as to appropriateness of venue, an action for patent infringement may be “brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business” (28 USC § 1400(b)). A corporate defendant ‘resides’ only in the state of incorporation for purposes of the patent venue statute (TC Heartland LLC v Kraft Foods Grp Brands LLC, 137 S Ct 1514, 1517 (2017)). Three inquiries govern where a corporation has a ‘regular and established place of business’:
- There must be a physical place in the district;
- It must be a regular and established place of business; and
- It must be the place of the defendant (In re Cray Inc, 871 F3d 1355, 1360 (Fed Cir 2017)).
In the ITC, jurisdiction is premised on the ITC’s ability to exclude infringing items from entry into the country. Accordingly, owners of US IP rights may file complaints against foreign importers. A complainant at the ITC must, however, demonstrate that there is a domestic industry protected by the IP rights at issue in order to secure relief at the ITC.
Answer ... In district court, in a traditional patent infringement action seeking monetary damages, the parties have a right to a jury to determine the factual question of infringement. The parties can waive the right to a jury and request that a judge act as the fact finder. In types of cases where only injunctive relief is being sought – for example, certain cases brought under Hatch-Waxman Act (see 35 USC § 271(1)(2)) – the parties do not have a right to a jury trial and the presiding judge is automatically the fact finder.
In the ITC, an administrative law judge acts as the fact finder.
Answer ... The options as to who can act as a fact finder (jury or judge) will not change from district court to district court, but the jury pool will be selected from residents of the district in which a court sits.
There is only one venue for the ITC.
Answer ... Pre-trial procedure specifics can vary from court to court and from judge to judge. Some courts and judges have specific rules and procedures governing patent cases. Generally, the first phase includes an exchange of pleadings (eg, complaint, answer and counterclaims). A scheduling order is then issued.
The parties next engage in fact discovery, which includes, among other disclosures, the production of relevant documents and the deposition of witnesses. Some courts may also require that infringement, invalidity or unenforceability contentions be exchanged. Often, the scope of discovery is disputed, requiring the court to resolve disputes; and, if necessary, a party may move to compel the production of documents and information and witness testimony. Generally, fact discovery is followed by expert discovery on technical and/or damages issues; this period includes exchange of expert reports and deposition of expert witnesses.
Federal district courts are required, as a matter of law, to resolve the meaning of disputed patent claim terms. Claim construction proceedings often include significant briefing and a hearing (‘Markman hearing’) before the judge. This practice is not required at the ITC, though it does occur in some investigations.
Once discovery ends, summary judgment motions and motions to limit the evidence available at trial, including motions to exclude expert witnesses, may be filed.
Before trial, litigants exchange pre-trial statements that identify witnesses and exhibits to be introduced at trial, and objections to the same. Failure to disclose an exhibit or objection may waive a party’s right to use or object to the exhibit or witness at trial. Proposed jury instructions for the court to consider may also be submitted.
Answer ... In district courts, parties may request monetary damages as well as injunctive relief.
Regarding monetary damages, a party is entitled to adequate damages for infringement, which at a minimum would account for a reasonable royalty for the use of invention (35 USC § 284). In certain cases, district courts have discretionary power to award enhanced damages (35 USC § 284).
In district court, the ability to obtain injunctive relief is narrower than monetary damages. In order to obtain injunctive relief (ie, stop an infringer from continuing its infringing behaviour), a party must satisfy a four-factor test, as follows:
- 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 (eBay Inc v MercExchange, LLC, 547 US 388, 391 (2006)).
At the ITC, only injunctive relief in the form of an order excluding articles from importation or cease and desist order preventing a party from selling the excluded goods in the United States is allowed.
Answer ... The US Court of Appeals for the Federal Circuit has exclusive jurisdiction over all patent-related appeals (28 USC § 1295). If a party raised an issue during proceedings at the district court or ITC, the judgment of that decision may generally be appealed to the Federal Circuit. Parties dissatisfied with the Federal Circuit’s opinion may petition for the full Federal Circuit to hear the case (called an en banc rehearing), which the Federal Circuit grants on a discretionary basis. Additionally, parties may petition the US Supreme Court for a writ of certiorari to hear a case.