USA Law and Practice Contributed by: Jim Hurst, Jeanna Wacker, Sam Kwon and Ashley Ross, Kirkland & Ellis
Requests for re-examination can be filed at any time (35 USC Section 302). However, if a pat - ent is involved in an ex parte or inter partes re- examination or becomes involved in litigation, the director of the USPTO can decide whether to suspend the ex parte (37 CFR Section 1.565) or inter partes re-examination proceeding (37 CFR Section 1.987). Patentees may also seek certificates of correc - tion, for instance, to correct mistakes. However, the Federal Circuit has held in one case, which involved a certificate of correction from the USPTO over an issued claim that was missing a limitation, that a “certificate of correction is only effective for causes of action arising after it was issued”. (H-W Tech, LC v Overstock.com, Inc, 758 F.3d 1329, 1334 (Fed Cir 2014).) 1.18 Court Arbiter In the US, recent court decisions have made forum shopping substantially more difficult. As in any US case, courts must have personal jurisdiction over defendants. Patent litigation has the same common-law principles and proce - dural rules as other types of civil litigation (SCA Hygiene Products Aktiebolag v First Quality Baby Products, LLC, 137 S Ct 954, 964 (2017)). Defendants must have minimum contacts with a forum state for personal jurisdiction to apply (Int’l Shoe Co v Washington, 326 US 310, 316 (1945)). Courts also analyse whether application of personal jurisdiction comports with due pro - cess by deciding whether: • the defendant purposefully directed activities at residents of the forum state; • the litigation results from those activities; and • assertion of personal jurisdiction is reason - able and fair (New World Int’l, Inc v Ford Glob Techs, LLC, 859 F.3d 1032, 1037 (Fed Cir 2017)).
In addition to establishing personal jurisdiction, patentees must also satisfy the venue require - ment. For the purposes of identifying a prop - er venue, patent infringement actions may be brought where the defendant either: • resides or is incorporated; or • has committed acts of infringement and has a principal place of business (TC Heartland LLC v Kraft Foods Grp Brands LLC, 137 S Ct 1514, 1518–19 (2017)). Hatch-Waxman cases are typically tried before Federal District court judges. However, Hatch- Waxman cases may be tried before a jury if the accused product has been approved and has been launched at risk, thereby having harmed patentee(s). BPCIA litigation may proceed before a jury on request. The FD&C Act holds that it “shall be an act of infringement to submit” an ANDA under Section 505(j) or a “paper” NDA as described in Section 505(b)(2) for a drug (or its use), which is claimed in a patent, if the purpose of the submission “is to obtain approval... to engage in the commer - cial manufacture, use, or sale of a drug... claimed in a patent or the use of which is claimed in a patent” before the patent’s expiration (35 USC Section 271(e)(2)). Some courts have thus held that submission of the application is itself an act of technical infringement sufficient to establish jurisdiction for initiating an action. Under the Hatch-Waxman framework, suits can be brought before the accused product has been approved or marketed. Given that an actu - al accused product may not exist at the time of 2. Generic Market Entry 2.1 Infringing Acts
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