USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
standards regarding damages. Patent damag- es are limited to no more than six years before commencement of the lawsuit. In cases of wilful infringement, the courts may award three times the damages. Generally, each party pays its own lawyers’ fees, but in “exceptional” cases, courts may impose fee-shifting to the losing party. In addition to monetary damages, a party may seek an injunction to prevent continued infringement. Primary responsibility for enforcing a district court judgment lies with the patent owner, who has at its disposal a wide array of enforcement mechanisms, including seeking to execute the judgment against the debtor’s assets. If a party fails to comply with an injunction, the other party may seek sanctions from the district court origi- nally ordering the injunction. The ITC cannot impose monetary damages for infringement, but can issue exclusion and cease- and-desist orders. The exclusion orders direct US Customs and Border Protection to exclude infringing articles from entry into the US. The ITC cease-and-desist orders can direct infring- ers to stop importing infringing articles and to stop sales of infringing articles in US inventory. The ITC retains broad authority to enforce any of its orders and a complainant in the original investigation can request a formal enforcement proceeding. 6.2 Rights of Prevailing Defendants In the US legal system, each party typically pays its own lawyers’ fees and costs. Similar to the description in 6.1 Remedies for the Patentee for successful patent holders, a prevailing defend- ant may request lawyers’ fees and costs if the case is determined to be “exceptional”. Under US Supreme Court precedent, “an ‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of a
party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was liti- gated”. 6.3 Types of Remedies The available remedies do not vary based on the technical area of a patent. 6.4 Injunctions Pending Appeal A successful patent holder in an infringement proceeding does not automatically get an injunc- tion against the infringing party. Similarly, if the district court issues an injunction, its effect is not automatically stayed during appeal. Ordi- narily, a permanent injunction is effective upon issue, but a court has broad equitable authority to modify relief. The defendant may seek a stay of the injunction by filing a motion with the issu- ing court or the appellate court – the US Court of Appeals for the Federal Circuit. In the absence of a stay, the injunction is enforceable pending appeal. When deciding to stay an injunction, the courts balance the likelihood of success on the merits against the equities of the parties and the public. 7. Appeal 7.1 Special Provisions for Intellectual Property Proceedings The appellate procedure for patent litigation is the same as for other civil litigation, except that all appeals in patent cases go to the US Court of Appeals for the Federal Circuit. This includes patent cases from district courts, ITC investiga- tions and USPTO proceedings. 7.2 Type of Review The Federal Circuit can review factual and legal determinations of the proceedings in a lower
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