PATENT

LITIGATION
BY
V. S U K I RT H A
181442101006
 PATENT LITIGATION
• Patent litigation refers to patent infringement lawsuits or revocation proceedings.
• Infringement is the act of making, using, selling, or offering to sell a patented
invention without the permission of the patent owner.
• Revocation proceedings refer to the claim on patent validity before civil courts
that may be carried out by firms interested not to be sued for infringing “wrongly”
granted patents.
• Patent litigation –
– Substantive aspects of patent litigation.
– Procedural aspects of patent litigation.
 SUBSTANTIVE ASPECTS OF PATENT
LITIGATION
• A company that pursues patent protection on an innovative product must protect its
investment in the research that led to that product.
• The company introducing a new product must seek the broadest possible patent protection
available for that product because competitors will explore all possible weaknesses in that
patent position.
• If a competitor believes the patent position on the innovative product is strong, it may seek
to introduce a completely different competitive product.
• If the competitor believes the patent position on the innovative product is weak, it may try
to introduce a similar or identical product.
• Finally, in extremely lucrative markets, competitors may view the cost of an infringement suit
as justified simply on the odds that the patent might be held invalid or significantly narrowed
as a result of the lawsuit. Thus, patents on commercially significant products are frequently
litigated.
• Two major substantive issues: Patent infringement and Patent validity.
 SUBSTANTIVE ASPECTS OF PATENT
LITIGATION
PATENT INFRINGEMENT:
• To violate the exclusive right of the patent holder without permission is an
infringement of the patent.
• An issued patent typically contains numerous claims.
• In an infringement trial, some of the claims may be held valid while others are
held invalid;
• some of the claims may be held infringed while others are held noninfringed.
• If at least one claim is both valid and infringed, patent infringement has
occurred.
 SUBSTANTIVE ASPECTS OF PATENT
LITIGATION
REMEDIES FOR INFRINGEMENT :
• In the event of infringement, a patent holder may bring a civil action in federal court
against the infringer.
• A patent holder who establishes that infringement has occurred is entitled to
injunctive relief preventing the infringer from practicing the invention in the United
States and to a monetary award "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.“
• If the patent holder has proven willful or intentional infringement or that there are
other circumstances suggesting bad faith or intentional misconduct, the patent
holder is entitled to an increased monetary award equal to three times the
calculated damages, the costs of the action, and reimbursement of its attorney fees .
 SUBSTANTIVE ASPECTS OF PATENT
LITIGATION
Literal Infringement and Claim Interpretation :
• Claims define the scope of the exclusive right, a question of patent infringement must
start with an analysis of the claims.
• If accused matter falls within the claim, infringement is made out and that is the end of
it.
• As summarized by the Federal Circuit, the "patented invention as indicated by the
language of the claims must first be defined and then the trier must judge whether the
claims cover the accused device. "If the accused matter falls clearly within the terms of
the claim, infringement is normally made out.
• The sole duty of the claims is to define the invention and, thus, what will constitute an
infringement.
 Contd…

• Properly interpreting claims is fundamental to deciding literal infringement.

• Words in a claim are given their ordinary and accustomed meaning unless it appears that the
inventor used them differently.
• Once a claim has been properly interpreted, it must be asked whether the disputed product falls
within that claim.
• For a properly interpreted claim to read on a disputed product, the product must possess all the
elements recited in the asserted claim.
• That is, since every element listed in the claim is a limitation that defines the scope of the
invention, it necessarily follows that all of those elements must be found in the disputed product.
This is the so-called "all - elements" rule.
• The rule is most frequently applied in the analysis of method or combination claims . Thus, to
directly infringe a patent claim, the disputed product must include all of the elements recited in
the claim
 SUBSTANTIVE ASPECTS OF PATENT
LITIGATION
Contributory Infringement :
• The patent statute imposes liability on anyone who aids or abets direct infringement by others.
• Section 271 imposes liability for inducement of infringement and contributory infringement,
respectively.
• Whoever actively induces infringement of a patent shall be liable as an infringer.
• Whoever sells a component of a patented machine, manufacture, combination or composition, or a
material or apparatus for use in practicing a patented process, constituting a material part of the
invention, knowing the same to be especially made or especially adapted for use in an infringement
of such patent, shall be liable as a contributory infringer.
• Thus, someone may incur liability as an infringer not only by directly infringing; that is, by making,
using, or selling patented subject matter, but also by encouraging others to do so or purposely
providing them with the means to do so.
 SUBSTANTIVE ASPECTS OF PATENT
LITIGATION
The Process Patent Amendment Act of 1988 :
• Whoever without authority imports into the United States or sells or uses within
the United States a product which is made by a process patented in the United
States shall be liable as an infringer, if the importation, sale, or use of the product
occurs during the term of such process patent.
• Some people in the biotechnology industry believe that the Process Patent
Amendment Act contains loopholes prejudicial to their industry.
• EXAMPLE : This belief stems from the Federal Circuit's decision in Amgen Inc. v.
U.C., in which it was decided that A m g e n ' s U . S . Patent No . 4,703,008,
which contained claims directed to host cells used to produce recombinant
erythropoietin, was not infringed by Chugai Pharmaceutical's importation of
recombinant E P O made from host cells covered by those claims.
 2.PROCEDURAL ASPECTS OF PATENT
LITIGATION

• The procedural issues that arise in the course of a patent infringement suit, from the first steps
in initiating the suit through appeal .
• All the parties involved in patent litigation, no matter what side they are on, should have a
basic understanding of the procedural rules well before taking any steps even remotely related
to a potential lawsuit.
• Otherwise, they may find they are hurting their own cause.
 2.PROCEDURAL ASPECTS OF PATENT
LITIGATION

STEPS TAKEN PRIOR TO A LAWSUIT

• Reviewing and confirming the scope and validity of the patent
• Performing a factual investigation of the potentially infringing conduct
• Obtaining the opinion of counsel on the position to be taken
• Approaching the other side in an effort to settle the matter without the need for a law-suit.
 2.PROCEDURAL ASPECTS OF PATENT
LITIGATION
INITIATING THE SUIT
• How, where, and when a lawsuit is initiated can have a lasting influence on the cost and
convenience of carrying it out, among other things.
• The party on the side of the patent typically brings a patent infringement suit, while the party
opposed to the patent may initiate a declaratory judgment action.
• Each party wants the suit carried out in the forum it prefers.
• For example, in the dispute over recombinant erythropoietin, A m g e n first brought an action
against Genetics Institute and Chugai in Boston for infringement of its recombinant D N A
patent; the next day Genetics Institute and Chugai brought suit against Amgen and Kirin - Amgen
in Los Angeles for infringement of their purified erythropoietin patent.
 2.PROCEDURAL ASPECTS OF PATENT
LITIGATION

The Patent Infringement Action:

• Patent disputes most commonly are brought into court by a patent holder who
is filing a patent infringement suit.
• In this situation, the first question to determine is which court is the proper
location for filing the suit.
• Three requirements determine what court will (or can) hear an action:
(1) subject-matter jurisdiction,
(2) personal jurisdiction, and
(3) venue.
Contd..

• Federal court has subject-matter jurisdiction over only those matters Congress has given it the
authority to decide.
• To establish personal jurisdiction, the defendant must have certain "minimum contacts" with
the district.
• Venue is proper in a patent case when either of two tests is met : the defendant resides in the
district, or (2) the defendant has committed acts of infringement and has a regular and
established place of business in the district.
 2.PROCEDURAL ASPECTS OF PATENT
LITIGATION

The Declaratory Judgment Action :

• Under some circumstances, infringement litigation may be initiated by an accused infringer
rather than by the patent holder.
• Such an action is known as a declaratory judgement action.
• For example, in the dispute over the polymerase chain reaction patents Dupont brought a
declaratory j u d g m e n t action against Cetus rather than await suit against it by C e t us.
• A potential defendant in a patent dispute may sue for a declaratory judgement that it does not
infringe the patent at issue or that the patent is invalid or unenforceable.
 REFERENCE

• Kenneth D. Sibley, The law and strategy of biotechnology patents. 1st edition.
Massachusetts: Butterworth -Heinemann 1994, pages 200-240.
THANK YOU