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The AIA’s Impact on Patent Litigation
Prepared by Christopher Dillon
May 10, 2012
o Virtual patent number marking allowed
o No more joinder of unrelated defendants
o Failure to obtain advice of counsel not admissible to prove
willfulness & inducement
o False marking suits vaporized
o Best mode defense eliminated
o Prior user defense created (U.S. only)
Litigation changes are important but unlikely to have significant impact overall on the number of cases, who wins, or the amount of damages
AIA’s Litigation Provisions
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• 2007 – Congress began considering patent reform
• Congress considered additional reforms:• Venue: courts “shall” transfer patent cases when the proposed
new venue is “clearly more convenient”
• Damages:• Trial judge as damages “gatekeeper”
• Sequenced trials for liability and damages
• Redefining methodology for determining damages
• Willfulness: mere knowledge ≠ willfulness
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Patent Reform Was Originally More Comprehensive
Many of the early litigation reform proposals in Congress became moot or less important because of changes in the Courts
o Venue• In re TS Tech USA Corp. (2008) (Texas)• In re Link_A_Media Devices (2011) (Delaware)
o Damages • Lucent v. Gateway (2009)• Uniloc USA, Inc. v. Microsoft Corp. (2011)
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o Patent marking • Pequignot v. Solo Cup Co. (2010)
o Willfulness• In re Seagate Technology, LLC (2007)
o Inequitable conduct & unenforceability• Leviton Mfg. Co., Inc. v. Universal Sec. Instruments, Inc. (2010)• Therasense, Inc. v. Becton Dickinson and Co. (2011)
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What Impact Will the AIA and Judicial Patent
Reforms Have on U.S. Patent Litigation?
Prior Art – More Certain, More Abundant
• What constitutes prior art will be more certain• Prior art will be determined by the effective filing date
not the invention date• Invention date is often unknown
• Potentially more prior art available• Priority dates will be later in time (filing vs. invention)• Foreign uses and sales• Foreign patents get benefit of foreign filing date
o AIA’s anti-joinder rules make it difficult to file one lawsuit naming multiple defendants
o Nothing prevents a plaintiff from filing multiple lawsuits on the same day in the same court
• The cases will likely be joined for pre-trial activities: • Status conferences, discovery, claim construction
• But defendants should get separate trials • Unless liability arises out of the same transaction or
occurrence
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o AIA’s anti-joinder rules requiring separate lawsuits for separate defendants makes it easier for a defendant to transfer a lawsuit
o Federal Circuit venue decisions are making parties think hard about filing suit in jurisdictions with no relation to the case
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o AIA’s joinder provisions do not apply to International Trade Commission (ITC) investigations
o Advantages of ITC investigations:o Injunctive relief
o Trial in 8-10 months
o Difficult for respondent to assert counterclaims
More ITC Investigations
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Virtual marking makes it easier for patent owners to provide notice of their patents and get pre-suit damages
o Patent holder may provide web address on product• List all patents that cover the product
o The web page should be publicly available
o Update the web page regularly
o Keep a log of web page modifications
o Keep the URL alive
o Mark the URL on the product itself not just on packaging or user manuals
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o The accused infringer may rely on a legal opinion defensivelyo Use opinion to tell the jury that it did not think it was infringing, o Useful to show:
• No willful infringement• No inducing infringement
o The patentee cannot tell the jury that the accused infringer did not get (or present at trial) a legal opinion
o Legal opinions can only help the accused infringer:• If the opinion is negative, don’t disclose it • If it is positive, use it at trial to show no willfulness and no inducement
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• Federal Circuit Advisory Council’s model e-discovery order reduces the amount of e-mail and electronic documents that need to be produced in litigation• Five record keepers• Five search terms
• Adoption of model rule is incremental and subject to change• East Texas: eight record keepers and ten search terms
• http://www.cafc.uscourts.gov/images/stories/announcements/Ediscovery_Model_Order.pdf
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Federal Circuit Model E-Discovery Order Will Reduce Litigation Costs
Prioritized Examination Will Become a Valuable Litigation Tool
• Parties can use AIA’s prioritized examination to obtain additional patents within one year
• Plaintiffs can quickly get additional patents that overcome defendants’ best prior art
• Defendants can quickly obtain patents for countersuits directed toward plaintiffs’ products
• Plaintiffs can use supplemental examination to clean up problems identified during pre‐suit investigation
• Defendants can use inter‐partes review and ex parte reexamination to challenge invalidity in the PTO
• Both parties can use prioritized examination to increase their patent arsenals
Companies and law firms who are adept in both forums will thrive
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More Patent Litigation Will Involve Both the Courts and the PTO
