1. Who enforces a patent?

The U.S. Patent and Trademark Office grants a patent. Contrary to popular belief, a patent does not give its holder the right to practice the invention, but the right to preclude others from practicing it. A patent holder can enforce such right by filing suit in a federal district court or, where the infringement includes importing a product into the United States that affects a domestic industry, the patent holder can ask that the International Trade Commission institute a proceeding to enforce the patent. A request to the ITC is often accompanied by a district court action because the ITC cannot award damages; its remedy is an exclusion order.

2. Where can a district court patent case be filed?

A patent infringement case can be filed in any district in the United States that has personal jurisdiction over the defendant, which may include those states or districts where the defendant’s products are sold but where the defendant may not have offices. The likelihood of one party or the other prevailing in the litigation can depend on the district in which the action is filed. The venue for a district court patent case impacts how quickly the case moves, the likelihood that it will be resolved prior to trial, and the jury composition at trial. Patent holders thus often choose the place of the litigation based on a belief that one forum or another is generally more favorable to patent holders.

Parties accused of infringement may seek transfer of a district court patent case to their “home” district, although the success rate for such transfers varies. In addition, if a patent holder has threatened a company or its customers with an infringement action, that company may be able to preemptively file suit for “declaratory judgment,” namely a judgment from the court declaring the patent invalid, unenforceable, or not infringed. Such a suit can be filed if there has been an actual or implicit charge of infringement that puts the declaratory judgment plaintiff (the would-be accused infringer) under a reasonable apprehension that the patent owner will enforce its patent rights. The declaratory judgment plaintiff must also be either engaging in or have the immediate intention and ability to engage in the alleged infringing activity, or have some other interest that would be adversely affected by enforcement by the patent owner.

An action for declaratory judgment may be brought in any district where there is personal jurisdiction over the patent holder. Personal jurisdiction over the patent holder is not found in the district where the declaratory judgment plaintiff resides or has a principal place of business simply because the patent holder has sent a letter there about the patent. Rather, personal jurisdiction only exists where the defendant has established “minimum contacts,” which can be established by selling products or conducting business in the forum.

3. What are the roles of the judge and the jury in a federal district court action?

If either party makes a timely jury trial request, the patent infringement case is largely tried to a jury, which decides such things as whether the patent is valid and infringed, whether infringement was willful, and what damages to award. A judge will usually decide prior to trial what the patent claims mean (this is often called a Markman ruling, after the core case that clarified that claims construction is a matter of law for the court rather than a fact question for the jury) and instruct the jury on their meaning. The judge will also hear any challenge that the patent is indefinite or unenforceable, and consider any equitable defenses such as laches or estoppel. The judge will also determine whether to enhance damages or assess attorneys’ fees upon a jury finding of willful infringement, or a finding that the case is otherwise an “exceptional” one (the general rule is that the parties bear their own attorneys’ fees). The judge will also determine whether to award preliminary or permanent injunctive relief.

4. What is different about an ITC proceeding?

The International Trade Commission hears patent cases involving the import of products into the United States. It is an arm of the Department of Commerce, and its proceedings conform to various international treaties, most notably the General Agreement on Trade and Tariffs (GATT). Proceedings before the ITC are similar to, but often faster than, proceedings in the federal district courts. They follow rules for administrative proceedings instead of the Federal Rules of Civil Procedure applicable to district court cases, and there is no jury.

Another key difference between a case in district court versus before the ITC is that the ITC has discretion regarding whether to institute a formal investigation based upon a complaint that there has been infringement. A further difference is that once the ITC initiates a formal proceeding, an administrative law judge makes the initial determination about whether the imported goods infringe the patent and recommends a remedy. The initial determination becomes a final determination of the ITC unless it is revised or reversed on administrative or judicial appeal.

Another key distinction is that damages are not recoverable in an action before the ITC. The ITC can issue either a general or limited exclusion order, which is enforced by Customs; a temporary exclusion order; and/or a cease-and-desist order, which can be enforced in federal district court and which can be the basis for civil penalties. ITC complainants often initiate a parallel district court case for damages.

5. Who hears appeals in patent cases?

Appeals from decisions of the federal district courts are taken to the Court of Appeals for the Federal Circuit, located in Washington, D.C. Appeals from International Trade Commission proceedings are also heard by the Federal Circuit, but only after further interim administrative action.

The United States Supreme Court is the court of final appeal on patent matters. However, it has discretion whether to review patent-related appellate court decisions and takes very few cases.

6. What are a defendant’s responses to a patent infringement suit?

A defendant may raise a number of defenses permitted under patent law, including that it does not infringe the patent, that the patent is invalid, or that the patent office was materially misled during the patent prosecution process. (These defenses are discussed in more detail in FAQs 10 and 11, below.)

A defendant may also raise other claims, such as antitrust claims and claims of unfair competition, based on the assertion of the patent. Certain antitrust claims require proof that the assertion of the patent was objectively baseless, and may be stayed pending resolution of the underlying patent action.

The Federal Trade Commission (“FTC”) may also decide to institute action when a patent holder runs afoul of the antitrust laws, such as with its actions before a standards organization relating to a patented technology or in negotiating patent licenses or settlements.

An increasing number of defendants are taking advantage of reexamination proceedings in the Patent and Trademark Office, where a party can, on either an ex parte or inter partes basis, ask that the patent office reconsider whether the patent should have been granted. (Reexam is discussed in more detail in FAQ 7, below.) A district court has discretion to stay the action before it where there is a reexamination proceeding ongoing.

7. What is reexamination?

By law, any member of the public can request that the Patent and Trademark Office reexamine an issued patent. Typically, such reexamination is based on prior art that the patent examiner did not consider during the initial examination that makes the patent claims invalid. There are two types of reexamination: ex parte and inter partes. Ex parte reexamination does not permit the party seeking reexamination to do much more than submit the prior art with an explanation of the reference. By contrast, inter partes reexamination gives the requesting party more involvement in the process, but the trade-off is that it conclusively bars them from re-arguing the same issues later in court.

8. How can a company be sued if it does not do exactly what is described in the patent?

The background section of a patent (the “specification”) may describe specific devices or processes in detail. However, the actual boundaries of the patent holder’s rights are spelled out in the claims – the numbered paragraphs at the end of the patent. They may be broader than or describe alternatives to what is discussed in detail in the specification. Any disputes about the scope of these claims is decided by the judge or administrative law judge during the case. (See Patent FAQs and FAQ 3, above.)

9. What does the patent holder have to prove to win an infringement suit?

The patent holder must prove by a preponderance of the evidence – that it is more likely than not – that the defendant either directly infringed a claim of the patent, contributed to another’s infringement, or induced another to infringe. In a district court case, the patent holder must also prove the amount of damages that should be assessed for the infringement.

To prove direct infringement, the patent holder must prove that the defendant made, used, sold, offered for sale or imported the claimed invention. Direct infringement may occur literally, meaning that a claim of the patent, when compared to the accused device or process, is an exact match. Alternatively, under a theory known as the doctrine of equivalents, infringement may be found where an element of the accused device, while not literally identical to what is described in a claim of the patent, is interchangeable with what is claimed. An accused product or process infringes under the doctrine of equivalents if the equivalent element does the same work in substantially the same way to accomplish substantially the same result as the patented product or process. This doctrine prevents would-be infringers from avoiding liability by making only trivial changes to their product.

Contributory infringement arises where a defendant supplies only a portion of the infringing product or process. To establish liability for contributory infringement, the patent holder must prove that the defendant sold, offered for sale, imported or exported a component that is a material part of a patented invention, and that the defendant knew that the component was especially made or adapted for use in the infringing product. An exception is made for sale of “staple” products – those that have a substantial noninfringing use or uses.

To prove inducement, the patent holder must prove that the defendant actively induced another to directly infringe the patent holder’s patent. This requires that the defendant knew of the patent.

10. What are the statutory defenses to a claim of patent infringement?

A defendant can argue one or more of the following defenses: that the patent has not been infringed, that the patent is invalid, or that the patent is unenforceable. (See FAQ 9, above). Because patents are presumed to be valid, a defendant must establish the invalidity or unenforceability of a patent by “clear and convincing evidence,” i.e., as many districts view this, that it is “highly probable” that the patent is invalid or unenforceable. This is a more rigorous standard than the “preponderance of the evidence” standard that applies to infringement and most civil claims and defenses, but not as rigorous as the criminal law standard of “beyond a reasonable doubt.”

There are a number of statutory bases for invalidity of U.S. patents. The most common are the following:

(a) Anticipation: The same invention was first made by another or was known or used by others or publicized before the invention date. For a claim of a patent to be anticipated, each limitation of the claim must be found in a single prior art reference.

(b) Obviousness: The invention was obvious to one of “ordinary skill in the art” given the state of the art at the time that the patent application was filed, as shown by one or more prior art references.

(c) Statutory Bars: An “on sale” or “public use” bar occurs if, more than a year before the patent application was filed, the inventor, or someone other than the inventor, offered for sale or publicly used the invention. Prior art that establishes an “on sale” or “public use” bar can also be used to establish obviousness.

(d) Enablement: The patent does not describe the invention well enough to enable a person of ordinary skill in the art to make and use the patent.

(e) Best Mode: The inventor had a way of practicing the invention that he or she believed was the best way to carry out the invention – the “best mode” – and did not disclose it to the Patent and Trademark Office during prosecution.

Indefiniteness: The terms of the claim are not sufficiently definite.

11. What are the equitable defenses to a claim of patent infringement?

Three equitable defenses are among those most commonly asserted. First, a patent is unenforceable if the patent applicant or their counsel intentionally failed to disclose material information to the Patent and Trademark Office during prosecution of the patent. Second, a patent may also be unenforceable if there is an equitable estoppel. Equitable estoppel applies where a patent holder has misled the alleged infringer into reasonably believing that the patentee no longer intends to enforce the patent against the alleged infringer, who then relies on that misleading conduct to his or her detriment.

Third, laches, which requires a showing that a patent holder unreasonably delayed in bringing a lawsuit, to the material prejudice of the alleged infringer, will bar past damages.

12. It looks like the patent is about something that has been known in the industry for a long time; why was it issued?

The United States Patent Office has access to information about other patents and about publications. The patent examiners have limited time to examine any application, and locate the most relevant prior art. In addition, the patent examiners generally do not have information about products in the marketplace. The patent’s validity may be challenged in litigation (see FAQ 10, above), or in a reexamination proceeding.

13. What damages are available for patent infringement?

Where a valid and enforceable patent has been infringed, the patent holder is entitled to recover at least a reasonable royalty. Where the patent holder can prove that it lost profits, it can recover profits on the sales that it would have made, and a reasonable royalty for the remainder of the infringer’s sales. It may also be able to recover up to treble damages and attorneys’ fees for willful infringement.

14. Can U.S. patents reach overseas?

In some instances, yes. As a general rule, a patent is specific to the country where the patent is granted. A patent granted in the United States only prevents parties from selling, making or using the patented technology in the United States, or importing or exporting it or a substantial component of it into or out of the United States. Actions that take place entirely in a different country are typically not covered. However, there are some exceptions to this, such as if the alleged infringement involves a system, aspects of which take place in multiple countries but a significant part of the control and benefit of that activity takes place in the United States; or if the overseas activities induce infringement by another in the United States. (See FAQ 9 re inducement.)

15. What is a reasonable royalty?

A reasonable royalty is a calculation of how much the patent holder would have received from the defendant in a hypothetical license negotiation taking place at the time the infringement began. In making this determination, the court will assume that the parties would have entered into the hypothetical negotiations as a willing buyer and a willing seller, and that the patent is assumed to be valid, enforceable and infringed. The amount of the reasonable royalty is determined by analyzing a number of different factors, including whether there are other licenses by the patent holder, or other comparable licenses, which would tend to prove an established royalty; the established licensing policies of the patent holder; the nature and scope of the license; the commercial relationship between the licensor and licensee; the profitability of the product using the license; and the portion of the profits of the product that is due to infringing the patent versus profits from noninfringing elements of the product.

16. What are lost profits?

Lost profits are the profits the patent holder would have made but for the defendant’s infringement of the patent. To recover lost profits, a patent holder must show its profit margin; market demand for the patented feature; the absence of non-infringing substitutes for the invention; and that it had capacity to meet the needs of the defendant’s customers. In a multi-player market, the patent holder can instead recover its lost profits as determined by applying its share of the market to the sales of the defendant.

Additionally, depending on the sensitivity of the market to price competition, a patent holder may be able to recover an additional amount for any price erosion that occurred as a result of the infringer pushing prices down where the patent holder made the sale.

17. How does patent notice or marking affect damages?

If the patent holder sells, or licenses another to sell a physical embodiment of the invention, no damages start running until the patent holder has given notice of its patent. One way to do so is to give constructive notice by marking the patent number on the physical device or thing. Another is to send actual notice to the alleged infringer, either by letter or by filing a complaint. The earlier of actual notice or marking of substantially all of the devices at issue will start damages accruing for infringement.

There is no notice or marking requirement for patent holders whose patents are not practiced, or for patents covering purely methods.

18. How can the patent holder get treble damages?

The Court may order the infringer to pay up to three times the actual money damages (for lost profits or reasonable royalties) if the patent holder can show that the defendant’s infringement was “willful.” To determine whether the infringement was willful, the jury is allowed to consider a number of factors, including whether the defendant knew of the patent and either copied it or tried to design around it, whether the defendant has substantial defenses to the lawsuit, and whether it engaged in any litigation misconduct.

Businesses accused of patent infringement will often seek advice from an independent patent attorney as to whether the accused products infringe the patent and whether the patent is invalid or unenforceable. The patent counsel’s opinion can be introduced into evidence and may aid the accused infringer in arguing that it was not willful because it had a good faith belief that its product did not infringe the patent or that the patent was invalid or unenforceable. Using counsel’s opinion in this way usually results in a waiver of the attorney-client privilege that might otherwise exist between the accused infringer and their patent counsel rendering the opinion.

19. Can injunctions be granted in patent cases?

Yes. A patent holder who prevails at trial can ask the court to enter a permanent injunction to prevent the defendant from continuing to infringe the patent. Until recently, such post-trial injunctions were granted almost automatically. New standards for when permanent injunctions should be entered are now being developed. In some cases, a patent owner may obtain a preliminary injunction prohibiting infringing activity by the accused infringer during the time the law suit is pending prior to trial. Recent decisions have found that in order to be granted a preliminary injunction, the plaintiff must, in addition to showing “irreparable harm” by the infringement, make a “clear showing” or one that is “beyond question” that it is likely to succeed at trial in proving infringement and survive any validity challenges. In deciding whether to issue a preliminary injunction, the court will then weigh the evidence of irreparable harm, the balance of the hardships to the parties if the injunction is granted or denied, and the public interest.

20. Can either party be awarded attorneys’ fees?

Generally each party bears its own attorneys’ fees. Attorneys’ fees, however, may be assessed in favor of the prevailing party in extraordinary cases, usually where either the defendant has willfully infringed the patent or has litigated in bad faith, or the patent holder brought or prosecuted the lawsuit in bad faith or after having committed inequitable conduct before the Patent and Trademark Office during patent prosecution.