USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
tors described above for granting a preliminary injunction – most particularly that monetary relief at the end of the case will adequately compensate the plaintiff for any injury it incurs. Alternatively, a potential infringer could seek a declaratory judgment of patent invalidity or non-infringement in a federal district court. A party could also seek to challenge patent valid- ity through one of the post-grant proceedings available through the USPTO. 2.9 Special Limitation Provisions US law limits patent infringement damages to six years prior to the filing of the complaint or coun- terclaim for infringement. Additionally, the pat- ent holder cannot recover damages for infringe- ment prior to the point the infringer had notice of the infringement. Filing the lawsuit is notice of infringement, but the infringer could have ear- lier notice based on communications from the patent holder detailing the infringement, or from constructive notice by marking the patented arti- cles with their patent numbers. Injunctive relief is available for any period the court finds appropri- ate up to the expiration of the patent rights. 2.10 Mechanisms to Obtain Evidence and Information In general, a party cannot obtain relevant infor- mation and evidence from another party or any third parties before commencing a proceeding in a district court. However, once a lawsuit has commenced, the Federal Rules of Civil Proce- dure require the parties to exchange initial dis- closures of information, including: • the identity of each individual likely to have discoverable information; • copies of all documents a party may use to support its case; • a computation of claimed damages; and
• any insurance agreement that may satisfy all or part of a judgment. Parties may then obtain non-privileged infor- mation that is relevant to any party’s claim or defence and is proportional to the needs of the case, considering: • the importance of the issues at stake in the action; • the amount in controversy; • the parties’ relative access to relevant infor- mation; • the parties’ resources; • the importance of the discovery in resolving the issues; and • whether the burden or expense of the pro- posed discovery outweighs its likely benefit. Parties may obtain discoverable information through depositions, requests for production of documents, written interrogatories or requests for admission. Parties may subpoena third parties to provide discoverable information in the form of deposi- tions or production of documents. Procedures are also available to obtain discovery from third parties located outside the USA through appli- cable treaties or letters rogatory (formal requests for assistance sent to foreign courts). A party or any person from whom discoverable information is sought may seek a protective order from the court to limit the scope or use of the information. 2.11 Initial Pleading Standards Patent litigation follows the same pleading stand- ards as other civil cases. A complaint filed in district court must allege facts that state a claim to relief that is plausible on its face. At a mini-
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