(1)Pre litigation investigation

Before filing a lawsuit, the plaintiff (patentee) or their lawyer needs to investigate whether the defendant has infringed their valid patent, and may also investigate and preserve evidence of intentional infringement. If potential infringement is discovered, a warning letter can be issued; The defendant may negotiate based on the warning and retain relevant evidence. If the defendant confirms infringement, they may negotiate with the plaintiff to obtain permission or actively respond to the lawsuit.

(II)indictment

The plaintiff's submission of a complaint to a court with jurisdiction is the beginning of a patent civil lawsuit. The main information of the lawsuit includes the patent holder, the accused infringer, and the basic information of the infringed patent; It also needs to include specific infringement behaviors, such as the defendant manufacturing or selling a specific product, the specific infringing components in the product. The lawsuit request is also an important component of the lawsuit, and specific lawsuit requests include prohibition of sale, prohibition of export, and compensation.

(3)Reply to the complaint

The defendant must respond within 21 days after receiving the plaintiff's complaint, and in practice, this deadline may be extended due to mutual agreement. There are usually three ways for the defendant to handle the plaintiff's lawsuit:

1) Submit the defense statement

The defense statement is mainly a response to the plaintiff's allegations, admitting or denying them one by one. In addition to responding to the allegations, the defendant also needs to handle the plaintiff's relief requests, while presenting positive defense statements (such as patent invalidity), and assuming the burden of proof by providing evidence. Similar to a lawsuit, the purpose of a defense is to explain the nature of the defense and does not require detailed supporting evidence.

Patent invalidity in the United States can be filed in litigation, and the court will determine whether the patent is valid; It is also possible to initiate post authorization procedures at the United States Patent and Trademark Office, with a common post authorization procedure being Inter Parte Review (IPR). The defendant may submit an application to initiate IPR within one year after being served with the patent infringement complaint. It is also possible to proactively submit such applications before initiating any legal proceedings.

2) Propose a motion to withdraw

The defendant may file a motion for revocation, allowing the court to dismiss the complaint without considering the plaintiff's evidence. The reasons include: ① jurisdictional objection, that is, the court has no jurisdiction; ② The subject of the lawsuit is not qualified, and the plaintiff is not the patent owner and is not eligible to bring a lawsuit; ③ The patent is invalid, if it has expired; ④ The description of the facts in the complaint is extremely unreliable.

If the defendant files a motion for revocation within the deadline, the defendant does not need to submit a defense statement before the court makes a ruling on the motion; If the court rejects the motion to revoke, the defendant still needs to submit a defense within 14 days.

3) Counterclaim

The defendant has the right to file a counterclaim against the plaintiff's claims in the defense. The counterclaim is essentially equivalent to the defendant filing a new lawsuit against the plaintiff. Therefore, in the litigation process, the defendant is also considered as the "plaintiff of the counterclaim". Similarly, the plaintiff (defendant in the counterclaim) has 21 days to respond to the counterclaim raised by the defendant. Defendants often resort to counterclaims, including claiming that they have not infringed on the plaintiff's patent rights or filing patent invalidation requests. In rare cases, the defendant may also file a counterclaim claiming that the plaintiff has infringed their own patent.

(IV)First Pre Trial Meeting

After the defendant receives the complaint, the judge will organize a "first pre-trial meeting" with the lawyers of both parties, also known as a case management meeting or scheduling meeting. The judge has strong discretion in arranging the meeting and can decide whether to hold it and the specific time of holding it. Generally speaking, the court will hold the meeting within 90 days of the defendant's appearance. The main content of the meeting includes scheduling, limitations on the evidence discovery process (also known as "discovery"), etc., in order to narrow down the scope of the dispute between the two parties.

Generally speaking, the judge will also explore the possibility of reconciliation between the two parties at this stage and provide a mediator. In the process of some district courts, mediation is even a necessary link.

(V)Evidence search program

This procedure is a very important pre-trial process, with the aim of having both parties submit evidence to make the case clear and facilitate the later stages of the trial. The opening time of this stage is usually determined by the "first pre-trial meeting", and the specific period depends on the complexity of the case, usually lasting for one or even several years. Due to the obligation of the parties involved in the lawsuit to submit all relevant evidence to each other, both parties will engage in a significant process of mutual evidence collection, which consumes a lot of time and cost. Therefore, in practice, both parties tend to end the lawsuit through settlement. In addition, due to the sufficient exchange of evidence between both parties, they need to be extremely cautious in their daily research and operation to prevent the retention of evidence that is unfavorable to the lawsuit. In this stage, both parties must collect evidence that is favorable to themselves, and understand each other's position and the evidence they have. Evidence must not be concealed during this process. If intentionally concealed and discovered, there will be severe punishment or recognition of the other party's motion. Generally speaking, the program includes the following main contents:

1) Interrogatory: Each party shall list their own questions and ask the other party to provide written answers, such as sales data of the product in question, research and development process of the patent in question, patent application process, and modification of patent application documents. The party receiving the inquiry must provide a written response to the inquiry within 30 days of receiving it.

2) Document request: Request the other party to provide document materials and items, including product sales advertisements, accounting statements, contracts, shipping customs declarations and invoices, patent research and development materials, design drawings, application files, etc. for copying and viewing samples. The requested party must provide a written response within 30 days, stating whether they have provided the requested information or refused due to the request being too broad.

3) Request for admission: such as acknowledging receipt of a warning letter (intentional infringement) and making modifications to existing technology during the patent application process. The respondent must acknowledge or deny the authenticity of each statement, or explain that they lack sufficient evidence or knowledge to acknowledge or deny the statement.

4) Deposit: Obtaining sworn testimony from the other party through oral questioning.

In addition, the following points should be noted in this program.

1) The specific loss evidence of the plaintiff can be postponed for submission: as most of the loss evidence and data of patent infringement are in the hands of the defendant, only the type of loss can be submitted at this stage (even without providing a rough calculation of the loss).

2) The questioning limit for the other party is 25 times. In addition, as patent cases often involve multiple co plaintiffs and defendants, courts usually limit the number of questioning for both parties, rather than each plaintiff or defendant having 25 questioning opportunities.

3) The admission testimony is limited to 10 pieces, with a video recording time limit of 7 hours per piece. Admission testimony is a document in which a lawyer questions a witness and is recorded by a clerk and/or video recording.

(VI)Markman hearing

The Markman hearing 32, also known as the Claim Construction hearing, mainly involves the judge clarifying the scope of key terms in the claims. Claims are the legal scope limited by text in patent application documents. Usually, claims are composed of concise key words and sentences, so the exact meaning of the key words is crucial in infringement issues. In the trial, both parties will argue about the meaning of keywords, and the judge needs to resolve the dispute. Therefore, it is necessary to define the accurate meaning of keywords and the whole in the claims, that is, "claim interpretation". Judges usually conduct Markman hearings during the investigation and evidence collection phase, but it is also possible to do so after the investigation is completed or even after the trial begins.

The specific start and duration of this process will be determined by the complexity of the case and the level of cooperation between the parties involved in the litigation. Both parties can also negotiate with the judge regarding the specific start time. In addition, due to the fact that both parties have a relatively certain understanding of the specific infringement situation in this stage, the proportion of cases settled through settlement in this stage has further increased.

(7)pre-trial motions

Motions run through the entire process of patent litigation, especially before the court hearing, where both parties submit a relatively large number of motions. Among these motions, Daubert Motion and Motions in Limine are two important ones.

1) Daubert Motion: refers to a motion proposed by one party to exclude the testimony of the other party's experts, which was determined by the High Court in the Daubert case.

The specific evaluation criteria are: ① Whether the expert's technology or theory can or has been tested; ② Whether the technology or theory is publicly available or peer-reviewed; ③ The known or potential error rate when applying technology or theory; ④ Is there a maintenance standard or control measure in place; ⑤ Is the technology or theory widely accepted by the scientific community.

2) Motions in limine: This motion provides the court with an opportunity to establish procedural and substantive limitations, thereby simplifying evidence, shortening trial time, and reducing jury confusion. Although to some extent substantive, these motions largely involve procedural requirements and the evidential basis of expert testimony.

This type of motion involves a wide range of content, such as:

A motion to prohibit comparing the accused product with the implemented product sold by the patent holder (out of concern that the jury may focus on the patent holder's product rather than the disputed invention);

A motion to prohibit undisclosed prior art;

Prohibit motions for claims or defenses based on insufficient evidence;

A motion to prohibit experts from testifying on issues not specified in their reports;

A motion to prohibit reference to relevant litigation proceedings of the United States Trademark and Patent Office;

A motion to prohibit the use of "patent trolls" or other derogatory terms when referring to non implementing entities.

(8)trial

Both parties can choose to have the case tried by a judge, but in recent years, almost all have chosen to have the case tried by a jury.

1) Jury selection:

Like any other civil case, patent jury trials consist of 6-12 jurors. Due to the relatively complex and time-consuming nature of patent trials, it is difficult to form a jury consisting of 12 members. However, judges usually arrange at least six or more jurors to ensure that a verdict can be made when one or two jurors are unable to serve during the trial. In the process of selecting a jury (voir dire process), similar to other civil lawsuits, both parties can remove jurors, but the number of times jurors can be removed without reason is limited.

2) Trial order:

Firstly, the plaintiff bears the burden of proof and first presents the case. Even in patent cases, it is common for both parties to share the burden of proof, such as the plaintiff bearing infringement liability and the defendant bearing invalidity liability, and the plaintiff still presents the case first. If the compensation for damages is not separated into separate trials, the plaintiff (patentee) also needs to present the content of their compensation for damages. The defendant responded to the evidence of infringement, presented its invalid evidence, and responded to the evidence of damages compensation. Then, the plaintiff refutes the defendant's statement and responds to invalid evidence and doubts. Then, the defendant has the opportunity to refute the plaintiff's response to invalid evidence and questioning.

3) Legal judgment in the trial procedure:

Both parties can negotiate to have certain disputes decided by the judge during the trial process to improve trial efficiency, while other matters that must be judged by the jury will be decided by the jury. In addition, when the judge believes that there are insufficient legal reasons to support the argument of the party, and the other party requests a lawful judgment, the judge may rule in favor of the case; If the judge rejects the request for a lawful judgment, the trial shall continue in the usual manner.

4) Post trial motion:

After a jury trial, it is usually accompanied by a series of post trial motions. If infringement is found, the plaintiff (patentee) almost always seeks a permanent injunction. In cases of intentional infringement, patent owners usually also demand an increase in damages compensation. Due to patent regulations authorizing the payment of attorney fees in special circumstances, post trial motions typically require attorney fees. In addition, the parties may propose legal judgment motions, new trial motions regarding liability issues, or a combination of both. If the motion of the parties is supported, the court will make a new judgment or a retrial decision in accordance with the law.

(9)summary judgment

After the start of the lawsuit, if the plaintiff or defendant believes that there is no dispute over important facts, they can request the judge to close the case in a simplified judgment according to law. A summary judgment must be made within 30 days after the end of the evidence search procedure. This method can save a lot of time and litigation costs, but in reality, the possibility of closing the case through this method is relatively small. Due to the lack of sufficient evidence from both parties, and the fact that once the judgment is made, it means the end of the litigation process, judges are more cautious in adopting this procedure.

(10)appeal

If both parties are dissatisfied with the verdict, they may appeal and must submit an appeal within 30 days of receiving the judgment to the only federal circuit appellate court. In this court, only legal issues are tried without factual determination. If you are still dissatisfied with the judgment of the Federal Court of Appeals, you can continue to appeal to the High Court, but the High Court usually accepts fewer cases.

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