USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
Appeals from all patent cases at the district courts, ITC or USPTO go to the US Court of Appeals for the Federal Circuit. The judges in the Federal Circuit have significant patent law expe- rience from the many patent-related appeals, but do not necessarily have a technical background. 5.3 Settling the Case Settlement of patent disputes is quite common (except in certain types of pharmaceutical patent cases, where antitrust consideration can make settlement difficult or impossible). Parties may reach a settlement through a variety of possibili- ties, such as negotiation, alternative dispute res- olution or mediation. Some courts require parties to attempt a resolution before proceeding with a trial. Settlement agreements can terminate the proceedings in a district court, usually without disclosure of the settlement details to the court. The ITC has a non-mandatory mediation pro- gramme to aid resolution of disputes before pur- suing a full investigation. After the investigation begins, parties may request termination of the investigation upon reaching a settlement, but a copy of any agreement will be submitted to the ITC in the process. Procedures are available to protect information within the settlement from public disclosure. Post-grant proceedings before the USPTO fol- low similar settlement disclosure procedures as the ITC when seeking termination of a trial. The USPTO may continue a proceeding despite the parties’ settlement agreement. This is more likely if the proceeding is nearly completed when the settlement occurs. 5.4 Other Court Proceedings Federal courts have inherent authority to con- trol their dockets, including the power to stay proceedings when there are co-pending mat-
ters in another forum. The courts may consider several factors when deciding to stay, including the progress of the court proceeding, whether the stay will simplify issues before the court or whether a stay would unduly prejudice a party. When there is a co-pending post-grant proceed- ing (such as an IPR), courts are more likely to stay proceedings if the USPTO proceeding has been instituted. Generally, decisions reached in different fora are not binding on each other, except when a patent has been cancelled by the PTO in a post-grant proceeding or where a final, non-appealable judgment of invalidity has been entered in the district court litigation. This means a district court is not obliged to agree with a USPTO deci- sion on patent validity, but the court may find the USPTO decision very persuasive because of its perceived expertise on patents. Similarly, the USPTO may consider the progress and find- ings of district court litigation or ITC investiga- tions in its own proceedings. The law regarding the effect of a foreign anti-suit injunction is still unsettled and the decision in a particular case is likely to turn on the particular facts (and timing) involved. In federal district courts, the patent holder may seek damages for patent infringement and injunctions to prevent ongoing infringement. By statute, damages for infringement should be adequate to compensate for the infringe- ment, but not less than a reasonable royalty. A jury verdict will typically include a damages award, which is then reviewed by the district court judge (if a party files a motion requesting such a review) for compliance with certain legal 6. Remedies 6.1 Remedies for the Patentee
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