The following article appears in the journal JOM, 48 (3) (1996), p. 72. JOM is a publication of The Minerals, Metals & Materials Society

Making a Federal Case Out of It: U.S. Patent Infringement

A patent allows an inventor to prevent others from making, using, offering for sale, or selling a patented invention in the United States or importing the patented product into the United States. Depending on the factual and legal issues involved in any particular case, numerous complexities may be introduced during the litigation; for purposes of this article, a simple example will be employed to provide a general overview of what occurs in patent litigation.

To begin, the patent owner will typically have the alleged infringer's practices and the patent evaluated. An opinion is obtained as to whether there is infringement of the patent as well as if there is any meaningful question of the validity of the patent.

In cases of alleged infringement, dialogue with an alleged infringer may begin informally, as by means of a cease-and-desist letter. This informal discussion may resolve the dispute by having the alleged infringer terminate the objected-to conduct or by the granting of a license to the alleged infringer. In other cases, however, the first notification the infringer has that the patentee feels there is a violation of his or her patent rights is the initiation of a suit by the filing of a complaint in a federal district court.

The complaint, in general, identifies the parties, establishes the basis by which the chosen district court is the proper court to hear the case, and sets forth facts and related law that are alleged to establish the infringement. In addition, the complaint will ask for certain remedies (e.g., a request for preliminary and permanent injunctions requiring the defendant to terminate all infringing activity, a request for damages suffered by the patentee, and, where the infringement is deemed willful, a request that the damages be trebled and the defendant ordered to pay the plaintiff's attorney fees by the court deeming the case exceptional).

The defendant is required to respond to the complaint in an answer that responds to the complaint item for item by either agreeing with the same, denying the same, or indicating inadequate knowledge to respond. The answer may also contain counterclaims such as an allegation that the plaintiff has employed the patent to violate the antitrust laws or a request for a ruling that the patent is invalid or not infringed.

Each party in a patent suit is entitled to engage in discovery. This means that each is entitled to request information in order to obtain additional information regarding the case before the trial. The discovery requested may include interrogatories—a series of written questions to which the other party must respond in writing. There may also be requests for the production of documents that are relevant to the issues or that are likely to lead to information that is relevant. Further, one party can request that the other side admit certain facts.

In addition, parties and witnesses may have their depositions taken before trial. Depositions involve a person being sworn in and interrogated orally with his or her counsel having an opportunity to object to certain questions and to cross-examine. Written transcripts of the depositions are used in trial preparation and for certain purposes at trial.

Frequently one or both sides in a patent case will engage the services of expert witnesses in addition to fact witnesses. Expert witnesses, while generally not previously involved in the events leading up to the litigation, have particular expertise in a field and may provide opinions. For example, it is common in a patent case for each party to have a technical expert who is familiar with the technology involved in the case, a patent expert who has expertise in patent law, and a financial expert who may be of value in determining a proper measure of damages. The experts are required to issue an expert report stating the areas within which their testimony will be provided and may also have their depositions taken.

At many phases during litigation, one party or the other may make a motion seeking a particular ruling from the court. One motion commonly considered in appropriate patent cases is a motion for summary judgment. This motion states that since there are no material facts in dispute there is no need for a trial and the court is requested to rule on the case as a matter of law. For example, a summary judgment motion can be made regarding validity or infringement of the patent.

During the trial portion of the case, witnesses will be presented by each side; the plaintiff presents witnesses first, and the defendant has an opportunity to cross-examine the witnesses within the scope of their testimony. The judge will rule on legal questions and the trier of fact, which may be a jury or the judge, makes factual determinations. At the end of the trial, a judgment is entered.

A party dissatisfied with the result of the trial can file an appeal to a higher federal court, which in the case of patent litigation would be the U.S. Court of Appeals for Federal Circuit in Washington, D.C. The appeal is considered on the basis of the record created in the lower court and legal briefs submitted by both parties as well as oral argument by the attorneys before a panel of judges.

A party dissatisfied with the decision of the Court of Appeals for Federal Circuit cannot appeal to the U.S. Supreme Court as of right, but can enter a request that the court agree to hear the case. This request is called a Petition for Certiorari. A large number of petitions to the Supreme Court involving all types of cases are filed, but only one or two patent cases are heard each term.