USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
5.2 Decision-Makers With respect to federal district court litigation, beyond choosing the particular forum in which to file suit, parties have little ability to influence who will be the decision-maker – unless they agree to waive their rights to a jury trial (which patentees almost never do). In a district court, unless a judge decides an issue in a pre-trial (eg, a summary judgment) or post-trial motion, issues of infringement, invalidity and damages are decided by a jury. Juries do not have tech- nical expertise. There is no requirement that a judge have a technical background to preside over a patent case in district court, and most district court judges do not have technical back- grounds. In 2011, 14 district courts began a ten-year Pat- ent Pilot Program to enhance expertise in patent cases. New patent cases in those districts were assigned to a random judge. If the randomly assigned judge was not a designated judge in the Program, the judge could transfer the case to a participating judge in the district. The Patent Pilot Program concluded in July 2021. ITC investigations proceed before an adminis- trative law judge. Because a large proportion of ITC investigations involve patents, many admin- istrative law judges have developed substantial experience with patent cases, and many also have technical expertise. The ITC randomly assigns an administrative law judge to new investigations, and assignment is not based on any particular technical background of the administrative law judge. The USPTO has administrative patent judges. These judges are typically experienced patent lawyers with technical backgrounds. If possible, the USPTO assigns cases to judges based on their technical background.
proceedings, with trial-like evidentiary hearings taking place within nine to twelve months from the filing of a complaint. Witnesses at an ITC trial are subject to cross-examination by the oppos- ing party, and by the judge. IPR IPR proceedings are quicker than district court litigation and follow a more regimented sched- ule. The process begins with the filing of an IPR petition that includes the patent claims chal- lenged and the supporting evidence. Following this, the patent owner may optionally provide a preliminary response within three months. No more than three months following the patent owner preliminary response, the PTAB will make an institution decision on the IPR petition. If insti- tuted, the IPR proceeds and the patent owner has three months to file its response and any motion to amend the patent claims. The petition- er has three months to reply to the patent owner response and oppose the claim amendments. The patent owner has an additional month to file a sur-reply. After the completion of brief- ing, an oral hearing is scheduled and the PTAB issues a final written decision no more than 12 months after the institution decision (except the PTAB may extend the time up to an additional six months for good cause). In an IPR proceeding, direct witness testimony, including expert testimony, is presented in the form of an affidavit or declaration. The party presenting the witness will need to make the witness available for cross-examination by the opposing side, usually in the form of a deposi- tion. Live testimony during the oral hearing is exceedingly rare, but the PTAB may permit it when the demeanour of the witness is critical to assessing credibility.
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