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[Joefyffe]

***A MUST READ - Patent Infringement Litigation Process***

This is for those who know nothing about the patent infringement litigation process and for those pc lawyers (aka bar stool lawyers) that think they know what they are talking about.

A few of you are spot on in what you are talking about; most of the other's; not so much!!

https://www.fr.com/wp-content/uploads/2016/04/A-Guide-to-Patent-Litigation-in-Fed-Court-2016.pdf

Read the whole booklet. Below are a couple of key points from it...

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Post-Grant Patent Office Proceedings

Although patent litigation trials take place in federal district courts, it is commonplace for defendants in patent lawsuits to also initiate parallel proceedings in the USPTO, challenging the validity of the asserted patents. These are generally referred to as “post-grant” proceedings because they take place in the USPTO after the patent has already been granted.

The most common post-grant proceeding is called inter partes review (IPR) and involves a challenge to the validity of a patent based on patents or printed publications that predate the patent’s filing date. IPRs may be filed by the defendant no later than one year after being served with the patent infringement complaint. A successful IPR can invalidate one or more patent claims. Once an IPR has been completed, it precludes the defendant from continuing to assert in the lawsuit any invalidity defenses that were or could have been brought in the IPR. This is called “estoppel.

”Another common type of litigation-related proceeding is called a covered business method (CBM) patent review. CBM proceedings apply only to “business method” patents and generally allow a broader range of challenges to the validity of the patent. Unlike IPRs, they are not subject to a one-year filing limitation and do not preclude the defendant from using defenses at a later trial that could have been, but were not, asserted in the CBM.

Once an IPR or CBM has been filed, it is common for the defendant to ask the district court to stay (i.e., temporarily halt) the underlying patent suit pending the outcome of the proceeding at the USPTO. By statute, IPRs and CBMs must be completed within 18 months of the challenger’s initial request (with rare exceptions), and because the result of the IPR or CBM may substantially simplify the case, many judges will agree to issue such stays. If the IPR or CBM invalidates all of the asserted patent claims, this effectively ends the lawsuit.

Other types of post-grant proceedings available at the USPTO include post-grant review, ex parte reexamination, supplemental examination, and derivation proceedings. However, these are rarely used in connection with litigation. The following chart summarizes the differences between the types of post-grant proceedings.


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Case Management Conference

After the complaint has been served on the defendant, the presiding judge will schedule a meeting with the lawyers for the parties, which is called the case management conference (or sometimes the initial pre-trial conference or scheduling conference). The purpose of this conference is to lay out the framework that will govern how the case will go forward. To that end, the lawyers for the plaintiff and defendant are required to “meet and confer” prior to the conference to try to narrow down any disputes about that framework that might need to be resolved by the judge. While a variety of issues may be discussed and decided at the Case Management Conference, the most common include the following:

Scheduling
The primary purpose of the Case Management Conference is setting the case schedule. The case schedule will determine how long the parties have to engage in discovery and when certain types of disclosures (such as a detailed explanation of infringement or invalidity contentions) must be provided. Depending on the judge and court, the case schedule may also include a specific date or range of dates when the trial will occur. Some judges will wait until discovery has been completed to schedule the trial date. The time it takes for a case to get to trial can vary dramatically—typically from one to three years—depending on the complexity of the case and the court’s own schedule.

Discovery Limits
Discovery is the process by which the parties to a lawsuit investigate the facts of the case, primarily by asking the opposing party to provide copies of documents (including electronically stored information); answer written questions called interrogatories; and give sworn testimony in depositions. While the court rules provide some default limits on the amount of discovery that each party can take, it is common for one or both parties to request that the court modify or supplement those limitations. The most significant discovery limit at issue is usually the maximum number of depositions (or hours of deposition) that each party can require witnesses for the other party to provide.

Electronically Stored Information
Another issue sometimes addressed at the Case Management Conference is how to conduct discovery of electronically stored information (ESI), which includes e-mails, electronic files, and databases, among other things. Each party may ask the opposing party to provide ESI that relates to the issues in the case. However, given the enormous volume of ESI that most companies maintain, it is often not practical for parties to review all of the potentially relevant ESI in their possession. Instead, the parties will usually negotiate limits on what types of ESI must be searched and produced, and how the searching should be conducted. For example, the parties may agree, or the court may order, that documents from only a limited number of employees, or from a limited time frame, need to be searched, or that searching may be done using keywords negotiated by the parties. Practically speaking, the issue that is most frequently disputed is how to handle the search for and production of e-mail.

Protective Order
In addition to a case scheduling order, the court in a patent case will usually issue a “protective order” that safeguards the parties’ confidential information that must be provided to opposing counsel during discovery by limiting who may have access to that information, and by prohibiting those with access from further disclosing it. As with discovery limits, the terms of this order are usually negotiated by the parties in advance of the Case Management Conference, with the judge resolving any issues for which there is disagreement. Three issues are most often debated when negotiating a protective order:

Access: Some parties may want their in-house attorneys and employees to have access to the opposing parties’ information in order to assess the merits of the case, while other litigants may want to ensure that their own confidential information does not make it into the hands of employees of the opposing party. One way to handle this issue is to create tiers of confidentiality such that the most sensitive documents can be viewed only by outside counsel, while other less sensitive documents may also be viewed by certain in-house personnel.

Source Code: Because computer program source code can be particularly sensitive, certain procedures are sometimes specified for the inspection and production of source code. For example, restrictions such as the location of any inspection, what can and cannot be brought into the inspection room, and limits on printing the code can be included in a protective order.

Prosecution Bars: A patent “prosecution bar” is a provision that bars individuals who have received confidential information from prosecuting patent claims at the USPTO concerning the same subject matter. Defendants often seek prosecution bars to prevent the plaintiff from using the defendant’s confidential information to obtain patent claims that specifically target the defendant’s products. The precise scope of the subject matter covered by the prosecution bar, and whether or not it should apply to post-grant proceedings, is often contested.

Stipulations to Simplify Case
Beyond limits on discovery, litigants may negotiate the scope of the issues that will be considered in the case. For example, litigants may limit the number of asserted patent claims, the volume of prior art that will be considered for a validity challenge, or the number of claim terms to be construed.

Mediation
Many judges will explore the possibility of mediating the parties’ dispute at the Case Management Conference. Frequently, the court will ask the parties if they are prepared to mediate the case and may propose a mediator associated with the court (e.g., a magistrate judge). In some courts, the parties are required to participate in some form of mediation—whether before a judge, magistrate, or third-party mediator—prior to trial, and the court will set a deadline for this mediation to occur.

IMPORTANT TO NOTE:

Settlement

The foregoing sections described the steps that parties to a patent infringement lawsuit typically go through to obtain a final adjudication of their dispute in federal court. In practice, however, less than 10 percent of patent infringement suits are litigated to final judgment. In the vast majority of cases, the parties agree to resolve their dispute by entering into a settlement agreement: a written contract in which the parties mutually agree to take or forego certain actions in order to end the lawsuit. While settlement does not provide the parties with the satisfaction of a definitive ruling on whether the defendant’s activities infringe a valid patent, and typically gives each party less than it believes it deserves, it is often a rational choice for both parties since it avoids both the expense and uncertainty associated with taking a case to trial and through appeal. Settlement may be facilitated through the court by means of alternative dispute resolution (ADR), such as mediation, early neutral evaluation, or arbitration.

This booklet stated that the judicial process typically takes 1-3 years and a lot of money. Another booklet that explains the appeals process for patent infringement states if appealed, it can take another several years and be very costly!

I put my money on a settlement in the very near future!!