USA Law and Practice Contributed by: Steven Lieberman, Joseph A Hynds and Jennifer P Nock, Rothwell, Figg, Ernst & Manbeck PC
court, if the errors were properly preserved in its record. The level of deference given to the decision-maker in a lower court varies depend- ing on the type of error. For purely legal issues, such as statutory interpretations and judgments as a matter of law, the Federal Circuit applies a “de novo” standard where the court examines the record to form its own opinion, with no def- erence to the previous decision-maker. Factual determinations receive more deference, either “clearly erroneous” if the judge made factual determinations, or “substantial evidence” if the jury was the fact-finder. Equitable determina- tions, such as inequitable conduct, injunctions, or lawyers’ fees, are left to the discretion of the trial court judge, so a review of these decisions gets the highest deference, only being reversed for “abuse of discretion”. Pre-litigation costs vary depending on the com- plexity of the issues and the amount in contro- versy between the parties. A patent holder may require legal and technical research for claim charts, warning letters to potential infringers and analysis of potential enforcement options. An accused infringer may accrue legal fees to weigh its options for challenging the alleged infringement through an affirmative defence in a lawsuit, a declaratory judgment of invalidity or non-infringement, or a USPTO proceeding chal- lenging patent validity. 8.2 Calculation of Court Fees 8. Costs 8.1 Costs Before Filing a Lawsuit In district courts, the fee for filing a federal civil complaint is fixed by statute, but the Judicial Conference of the United States may pre- scribe additional fees. Currently, the filing fee is USD350, plus a USD52 administrative fee.
The fee to file an IPR (including up to 20 claims) at the USPTO is USD41,500, and a PGR or CBM request (including up to 20 claims) is USD47,500. 8.3 Responsibility for Paying the Costs of Litigation The traditional rule in the USA is that each party bears its own costs, but there are limited excep- tions to this default rule. The Federal Rules of Civil Procedure allow a party to seek reason- able expenses, including lawyers’ fees, incurred when an opposing party makes improper rep- resentations to the court or commits discovery misconduct. These sanctions do not award all costs and lawyers’ fees, only the expenses associated with the violation. In patent litiga- tion, a court may award all costs and reasonable lawyers’ fees to the prevailing party if the case is determined to be “exceptional”, that is “one that stands out from others with respect to the substantive strength of a party’s litigating posi- tion (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” 9. Alternative Dispute Resolution 9.1 Type of Actions for Intellectual Property Alternative dispute resolution is common in civil cases, and its use in intellectual property dis- putes is becoming increasingly common. Par- ties may use alternative dispute resolution as an alternative to litigation either by mutual agree- ment, contractual agreement or court order (although a court cannot force the parties to agree to a mediator’s ruling). Some courts offer mediation or special masters for settlement purposes. Parties may prefer alternative dis- pute resolution to take advantage of its greater flexibility, confidentiality and cost effectiveness.
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