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Global Patent Litigation Strategy
Practical Law Legal Update 5-523-0319 (Approx. 4 pages)
Global Patent Litigation Strategy
by PLC Intellectual Property & Technology
| Published on 11 Dec 2012 • USA (National/Federal) |
A discussion of key considerations for parties engaged in global patent litigation.
Last month, Apple and HTC announced the settlement of their worldwide patent dispute over smartphones and tablets and a related cross-licensing arrangement. Meanwhile, post-trial proceedings began last week following Apple and Samsung's jury trial in the US District Court for the Northern District of California. While the parties contested motions relating to Apple's $1.049 billion jury verdict, Judge Lucy Koh urged the parties to come to a "global peace" in their multi-jurisdictional dispute.
These high-profile clashes exemplify the trend of global patent litigation. Patent infringement suits and countersuits are no longer being initiated solely in US district courts or the US International Trade Commission. Instead, they are also simultaneously being brought in forums across Europe and Asia.
Patent litigation, even for large multinational, non-US based companies, historically focused on the US federal courts, in particular, because:
- The US market is large, so a US victory would have a significant impact on the litigants.
- The US courts and patent law provide patentees with potentially significant damages awards, the possibility of treble damages for willful infringement, as well as injunctions. For more on patent infringement claims and defenses in the US, see Practice Note, Patent Infringement Claims and Defenses.
- The US procedural rules provide:
- easy access to US federal courts, for example, because notice pleading sets a low burden on the plaintiff for filing a complaint;
- the ability to develop claims through broad discovery; and
- the general rule that each party pays its own attorneys' fees and costs.
- Patent claims and defenses in the US may be decided by a jury
- The US Court of Appeals for the Federal Circuit, the appellate court for all patent cases, has well-developed procedural rules and patent law precedent.
However, if a patentee has strong patent rights in multiple jurisdictions, filing suits in more than one jurisdiction has become a favored approach. This trend is driven by:
- A desire to diversify the risk of relying solely on the US as a forum.
- An increased familiarity with non-US forums.
- The opportunity for the patentee to present its case multiple times and target the opposing party's business on multiple fronts, which:
- expands the exposure base for damages and the geographic reach of remedies; and
- provides multiple opportunities to obtain injunctions in key markets.
- The strategic advantages of:
- using an early decision obtained in one forum to pressure the opposing party into a favorable settlement; and
- increasing the pressure on the opposing party by increasing the number of disputes between the parties and the overall risk.
A patentee's decision to sue in one or multiple jurisdictions, and the selection of the specific jurisdictions and forum or forums, is shaped by various strategic considerations, including:
- The expected time to resolution in each forum.
- The goals of the litigation, factoring in the extent of the alleged infringement.
- The patentee's exposure to a countersuit.
- The anticipated costs.
- The strength and nature of the patents at issue.
- The benefits of the patentee's own forum or the forum of the alleged infringer.
- The need to coordinate a litigation strategy on multiple fronts.
For a deeper review of these strategic considerations and more, see PLC Intellectual Property & Technology’s Practice Note with Joseph M. Casino and Michael J. Kasdan of Amster, Rothstein & Ebenstein LLP, Practice Note, Mapping a Global Patent Litigation Strategy.