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The Waging of Patent Infringment War

Apple and Samsung are fighting a patent infringement war over the galaxy tablet, and social game company Zynga (maker of Farmville and Mafia Wars) has been hit with a patent infringement action. With the huge financial stakes involved in the technology and gaming industries, we’ll likely see many more of these actions being filed.  Before you head into battle, here’s what you need to know about how to bring a patent infringement action.

First off, patent infringement suits are filed in the United States District Court, not state court.

In a straightforward infringement case, i.e., one that isn’t joined with any related or ancillary claims for non-patent relief, the complaint loosely follows the standard sample form of Complaint for Patent Infringement in the Fed R Civ P, Appendix of Forms, Form 18.

The complaint caption must include basic information (i.e., case name, name of the court, title of the action, file number, and names of all the parties) and must be signed by an attorney of record. Fed R Civ P 10(a), 11. Of course, always check the relevant local rules for additional requirements.

The complaint must also include a statement of jurisdiction and a statement of claim for relief. A copy of the asserted patent is usually attached as an exhibit, but just providing the patent number and issue date is enough for the complaint.

The claim for relief typically includes allegations relating to:

  • The plaintiff’s ownership of the patent and that it was validly issued;
  • The plaintiff’s right to sue if it is not the patentee;
  • The defendant’s acts of infringement of the patent and the plaintiff’s right to damages;
  • The defendant’s actual or constructive notice of infringement;
  • That the infringement was willful such that the damages should be increased; and
  • A demand for judgment (e.g., injunction or damages).

A key decision in a patent infringement complaint is whether to make a jury demand. Many plaintiffs’ patent trial lawyers believe that jurors are less willing than district judges to overturn the validity of a United States patent and inclined to grant patent damages to a patent owner more generously. But jurors may be drawn from where the defendant is a major presence and the patent owner is an outsider. Basically, there’s no rule of thumb and you’ll have to look at your particular case.

After the complaint is filed, it is served on the defendant in the same way as any other type of federal court action. Because patent cases often involve defendant companies incorporated in states other than the place of suit, it is quite common to effect service on the defendant’s designated agent for service of process in the state. Also, because service is seldom challenged when sophisticated businesses are involved, it is common to serve process by mail under Fed R Civ P 4(d).

For everything you need to know about patents and bringing patent infringement actions, turn to CEB’s California Business Litigation, chapter 8.  Also check out CEB’s Internet Law and Practice in California, chapter 2.

© The Regents of the University of California, 2011. Unauthorized use and/or duplication of this material without express and written permission from this blog’s author and/or owner is strictly prohibited.

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