USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
may not enlarge the scope of the claims. Dur- ing ex parte re-examination, the patent holder may amend claims to respond to the USPTO’s findings of substantial new questions of patent- ability. In the adversarial proceedings – IPR, PGR and CBM – the patent-owner may file a motion to amend claims. 4.4 Revocation/Cancellation and Infringement In district court actions, patent infringement claims and defences may be heard together. Courts have broad discretion to control pro- ceedings to promote judicial efficiency and avoid prejudice to the parties, so some issues may be “stayed”. Typically, a judge rather than a jury will determine equitable defences such as inequita- ble conduct or laches. ITC investigations hear all infringement and defences together. The ITC has a shorter time- line than district courts and no juries to consider. Proceedings challenging patent validity must be heard separately from infringement claims at the USPTO because the USPTO does not determine infringement. Often, there is a related district court case claiming infringement during post-grant proceedings at the USPTO. The dis- trict court may stay its proceeding to await the patent invalidity decision of the USPTO. 5. Trial and Settlement 5.1 Special Procedural Provisions for Intellectual Property Rights In district court proceedings, patent litigation is subject to the same rules as other civil litiga- tion: the Federal Rules of Civil Procedure and the Federal Rules of Evidence. Most district courts (and some individual judges) that hear a large
number of patent cases, such as the District of Delaware or the Northern District of California, have their own supplemental procedures that apply in patent cases. The time to resolve patent litigation in district court varies widely and may take several years. Courts that are unusually efficient in getting cases to trial are often referred to as having “rocket dockets”. Examples of such courts are the Eastern and Western Districts of Texas, the Eastern District of Virginia, and the Western Dis- trict of Wisconsin. Courts have broad discretion to control proceedings to promote judicial effi- ciency and avoid prejudice to the parties, and a case may be presented as a single trial or be bifurcated or staged to have successive trials on issues such as infringement, wilfulness or dam- ages. However, it is extremely rare for a patent case in front of a jury (almost all patent cases involving claims for money damages) to be bifur- cated. Witnesses (fact and expert) presenting testimony in a hearing (eg, on claim construction or preliminary injunction motions) are subject to questioning by the judge and cross-examination by the opposing party. Unless the issue of damages has been bifur- cated by the court (which is rare), infringement, validity and damages are typically decided at the end of a single trial by the jury or by the judge (in a bench trial). Injunctive relief is typically deter- mined later, and that issue is always decided by the judge. ITC ITC investigations have their own procedures, but many of the rules are similar to those in dis - trict courts. One notable exception is the right to a jury. Unlike district court proceedings, there is no jury at the ITC or the USPTO. ITC investiga- tions are almost always faster than district court
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