USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
the Federal Circuit. Decisions of the Federal Cir- cuit are subject to discretionary appeal to the US Supreme Court through a petition for certiorari. In certain circumstances involving importation of patent-infringing articles, the ITC may have jurisdiction. In an ITC investigation, an adminis- trative law judge makes an initial determination on liability. A party may petition the ITC to review the administrative law judge’s initial determina- tion. After the ITC’s final decision, a party may appeal the decision to the Federal Circuit, with further discretionary appeal to the US Supreme Court. 2.4 Specialised Bodies/Organisations for the Resolution of Disputes Two administrative agencies provide a review of patents before administrative law judges. The USPTO has the PTAB, which provides a review of patent application rejections and several post-grant proceedings discussed above. The ITC conducts investigations related to importa- tion of patent-infringing articles. Both PTAB and ITC decisions may be appealed to the US Court of Appeals for the Federal Circuit, with further review available from the US Supreme Court. 2.5 Prerequisites to Filing a Lawsuit There are no prerequisites to filing a lawsuit in a district court, unless the parties’ contract pro- vides otherwise. Lack of pre-filing notice may, however, limit recovery of monetary damages in certain instances. 2.6 Legal Representation While individuals are not required to be repre- sented by a lawyer, all federal courts require corporations to have legal representation. It is generally viewed as exceedingly unwise for an individual to pursue patent litigation without experienced counsel. In proceedings before the
PTAB, at least one representative of each party must be a registered practitioner of the USPTO. 2.7 Interim Injunctions A patent holder may seek a preliminary injunc- tion to protect the rights of the parties while liti- gation is pending. Preliminary injunctions require a demonstration: • of a reasonable likelihood of success on the merits; • of irreparable harm to the party if the prelimi- nary injunction is denied; • that the balance of the hardships favours issuing a preliminary injunction; and • that the impact on the public interest favours the party bringing the motion. If a court determines that a preliminary injunction is appropriate, such an order will only be issued if the party seeking it posts a bond in an amount that the court considers proper to compensate the other party should the injunction be deter- mined to have been improperly granted. Although rarely granted, a patent holder could seek earlier relief through a temporary restraining order. In addition to meeting the requirements for a preliminary injunction, the patent holder must demonstrate that immediate and irrepa- rable injury will result to the movant before the adverse party can be heard in opposition, and certify in writing any efforts made to give notice and the reasons why it should not be required. An ex parte temporary restraining order may be granted only in the very limited circumstances where providing notice will itself prevent, or interfere with, the ability to obtain relief. 2.8 Protection for Potential Opponents The potential opponent may oppose the pre- liminary injunction by arguing against the fac-
575 CHAMBERS.COM
Powered by FlippingBook