USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
good expert can explain complicated informa- tion in a clear and understandable fashion. Under the Federal Rules of Evidence, the court has authority to appoint an expert witness. However, this rule is rarely invoked. Generally, a party relying on expert testimony chooses and retains its own expert. In rare cases a district court judge faced with a technology with which they are unfamiliar, may appoint their own expert (the cost of which is typically split between the parties) to assist the court in understanding the technology. When this happens, it is often in the context of claim construction proceedings. 3.7 Procedure for Construing the Terms of the Patent’s Claim Courts use specialised claim construction hear- ings called “Markman” hearings to examine evi- dence from the parties on the appropriate mean- ing of the relevant terms in a patent claim. In a district court, patent claim interpretation is per- formed by the judge, even if there is a jury trial. 3.8 Procedure for Third-Party Opinions Amicus briefs are very rarely (almost never) sub- mitted at the trial court (district court) level. It is extraordinarily rare for a district court judge to solicit amicus participation in a patent case. Amicus participation at the Federal Circuit lev- el is more common. A third party (typically an industry organisation, public interest group or group of academics) may seek permission from the court to submit an amicus brief, and such permission is typically granted. Once a patent case reaches the US Supreme Court, amicus participation is the rule rather than the excep- tion. In addition, the Supreme Court will often ask the Office of the Solicitor General (which represents the interests of the US government before the Supreme Court) to file a brief with its views either as to whether the Supreme Court
should hear the appeal at all or, if the Supreme Court has already accepted the case for appeal, on the merits.
4. Revocation/Cancellation 4.1 Reasons and Remedies for Revocation/Cancellation
In the federal court system, a final judgment of invalidity effectively revokes the invalidated claims of the patent. A decision that the patent holder committed some other actions that pre- vents liability for patent infringement, such as equitable estoppel or antitrust violations, may make a patent unenforceable. The ITC makes similar decisions about patents, but its decisions are not binding on district courts. For example, an ITC decision of patent invalidity does not require a district court to treat the patent as invalid, but the district court may reach the same decision based on the persua- sive influence of the ITC decision. In post-grant proceedings, the USPTO may can- cel some or all of the claims of a patent. A party challenging a patent in a post-grant proceeding does not need to have the standing necessary in a federal court. However, the ability to appeal the USPTO’s decision to the Federal Circuit may be limited by a lack of standing. 4.2 Partial Revocation/Cancellation Patent invalidity is examined on a claim-by-claim basis. The remaining claims of a patent remain valid, even if some claims are found invalid. 4.3 Amendments in Revocation/ Cancellation Proceedings During some post-grant proceedings before the USPTO, the patent holder can amend claims but
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