USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
mum, a patent infringement complaint should identify the patent holder, the relevant patent(s), the accused infringer and the requested relief sought. For claims of indirect infringement, more details are typically required. Preferably, the complaint will provide additional information about the accused infringement, including the claims and elements infringed. The Federal Rules of Civil Procedure govern amended and supplemental pleadings. A party may amend its pleadings once as a matter of course within 21 days of serving. Other amend- ments require the opposing party’s written con- sent or the court’s permission. To account for occurrences after a pleading, a party may sup- plement its pleadings with the court’s permis- sion. 2.12 Representative or Collective Action There are no class actions available in intellec- tual property cases. However, a patent holder may join multiple accused infringers in a sin- gle federal lawsuit if the actions arise out of the same transaction, occurrence or series of transactions. It is not sufficient to have unrelated defendants infringe the same patent. In situations where joining all defendants in a sin- gle case is not possible, there are other options to gain the advantages of consolidated actions. Cases across several districts that share a com- mon question of fact may be co-ordinated for pre-trial proceedings before a Judicial Panel on Multidistrict Litigation. Similarly, multiple cases in the same district may be consolidated to pro- mote judicial efficiency when there is a common question of law or fact. ITC investigations of patent-infringing articles often involve multiple respondents. Because the ITC only needs jurisdiction over the imported
articles and not the infringers, it can be easier for a patent holder to proceed against multiple infringers simultaneously. 2.13 Restrictions on Assertion of an Intellectual Property Right Some patent holder actions can limit the ability to enforce a patent against others. Under pat- ent exhaustion – also referred to as the first-sale doctrine – the patent holder’s right to control an individual article ends after an authorised sale. If the patent was procured through improper con- duct before the USPTO, it could be unenforce- able under the doctrine of inequitable conduct. A patent holder that expands its rights beyond the statutory patent grant may commit patent misuse. Finally, when the patent holder uses its patent impermissibly to gain market share or engages in other anti-competitive behaviour, antitrust laws may limit the enforceability of the patent. 3. Infringement 3.1 Necessary Parties to an Action for Infringement Generally, the party bringing an infringement action must be the patent holder, although an exclusive licensee that owns “all substantial rights” in the patent may bring an infringement action in its own name without joining the patent holder. An ITC investigation requires the party fil- ing the petition to have an interest in the patent and an injury to a domestic industry. 3.2 Direct and Indirect Infringement Direct infringement occurs when a person makes, uses, offers to sell, sells or imports in the USA a patented invention without authority. Usually, the patent holder demonstrates this by showing every claim element, or its equivalent, is
577 CHAMBERS.COM
Powered by FlippingBook