The AIA s Impact on Patent Litigation. Prepared by Christopher Dillon

Transcription

1 The AIA s Impact n Patent Litigatin Prepared by Christpher Dilln May 10, 2012

2 AIA s Litigatin Prvisins Virtual patent number marking allwed N mre jinder f unrelated defendants Failure t btain advice f cunsel nt admissible t prve willfulness & inducement False marking suits vaprized Best mde defense eliminated Prir user defense created (U.S. nly) Litigatin changes are imprtant but unlikely t have significant impact verall n the number f cases, wh wins, r the amunt f damages 2

3 Patent Refrm Was Originally Mre Cmprehensive 2007 Cngress began cnsidering patent refrm Cngress cnsidered additinal refrms: Venue: curts shall transfer patent cases when the prpsed new venue is clearly mre cnvenient Damages: Trial judge as damages gatekeeper Sequenced trials fr liability and damages Redefining methdlgy fr determining damages Willfulness: mere knwledge willfulness 3

4 Many f the early litigatin refrm prpsals in Cngress became mt r less imprtant because f changes in the Curts Venue In re TS Tech USA Crp. (2008) (Texas) In re Link_A_Media Devices (2011) (Delaware) Damages Lucent v. Gateway (2009) Unilc USA, Inc. v. Micrsft Crp. (2011) 4

5 Patent marking Pequignt v. Sl Cup C. (2010) Willfulness In re Seagate Technlgy, LLC (2007) Inequitable cnduct & unenfrceability Levitn Mfg. C., Inc. v. Universal Sec. Instruments, Inc. (2010) Therasense, Inc. v. Bectn Dickinsn and C. (2011) 5

6 What Impact Will the AIA and Judicial Patent Refrms Have n U.S. Patent Litigatin? 6

7 Prir Art Mre Certain, Mre Abundant What cnstitutes prir art will be mre certain Prir art will be determined by the effective filing date nt the inventin date Inventin date is ften unknwn Ptentially mre prir art available Pririty dates will be later in time (filing vs. inventin) Freign uses and sales Freign patents get benefit f freign filing date

8 AIA s anti-jinder rules make it difficult t file ne lawsuit naming multiple defendants Nthing prevents a plaintiff frm filing multiple lawsuits n the same day in the same curt The cases will likely be jined fr pre-trial activities: Status cnferences, discvery, claim cnstructin But defendants shuld get separate trials Unless liability arises ut f the same transactin r ccurrence 8

9 AIA s anti-jinder rules requiring separate lawsuits fr separate defendants makes it easier fr a defendant t transfer a lawsuit Federal Circuit venue decisins are making parties think hard abut filing suit in jurisdictins with n relatin t the case 9

10 Mre ITC Investigatins AIA s jinder prvisins d nt apply t Internatinal Trade Cmmissin (ITC) investigatins Advantages f ITC investigatins: Injunctive relief Trial in 8-10 mnths Difficult fr respndent t assert cunterclaims 1 0

11 Virtual marking makes it easier fr patent wners t prvide ntice f their patents and get pre-suit damages Patent hlder may prvide web address n prduct List all patents that cver the prduct The web page shuld be publicly available Update the web page regularly Keep a lg f web page mdificatins Keep the URL alive Mark the URL n the prduct itself nt just n packaging r user manuals 1 1

12 The accused infringer may rely n a legal pinin defensively Use pinin t tell the jury that it did nt think it was infringing, Useful t shw: N willful infringement N inducing infringement The patentee cannt tell the jury that the accused infringer did nt get (r present at trial) a legal pinin Legal pinins can nly help the accused infringer: If the pinin is negative, dn t disclse it If it is psitive, use it at trial t shw n willfulness and n inducement 1 2

13 Federal Circuit Mdel E-Discvery Order Will Reduce Litigatin Csts Federal Circuit Advisry Cuncil s mdel e-discvery rder reduces the amunt f and electrnic dcuments that need t be prduced in litigatin Five recrd keepers Five search terms Adptin f mdel rule is incremental and subject t change East Texas: eight recrd keepers and ten search terms Ediscvery_Mdel_Order.pdf 1 3

14 Priritized Examinatin Will Becme a Valuable Litigatin Tl Parties can use AIA s priritized examinatin t btain additinal patents within ne year Plaintiffs can quickly get additinal patents that vercme defendants best prir art Defendants can quickly btain patents fr cuntersuits directed tward plaintiffs prducts

15 Mre Patent Litigatin Will Invlve Bth the Curts and the PTO Plaintiffs can use supplemental examinatin t clean up prblems identified during pre suit investigatin Defendants can use inter partes review and ex parte reexaminatin t challenge invalidity in the PTO Bth parties can use priritized examinatin t increase their patent arsenals Cmpanies and law firms wh are adept in bth frums will thrive 1 5

16 Danke! Christpher Dilln Principal