美国专利诉讼指引，来自美国顶级律所 | 每日IP英文038

每日IP英文第38天：Fish＆Richardson是一家美国顶级的知识产权律师事务所，该所创立于1878年，一直专注于知识产权领域，曾代理过许多历史上最杰出的发明家，例如，1895年，帮助爱迪生在美国联邦最高法院赢得了关于白炽灯专利有效性的诉讼；1913年，帮助莱特兄弟赢得了1906年“飞行器”专利的侵权诉讼等。近年来，Fish代理微软，Bose，三星，LG，Allergan，Gilead和Halo Electronics等客户赢得了专利诉讼，连续12年被评为美国排名第一的专利诉讼律所。2016年，Fish总营业额高达3.96亿美元，成为全球专利律所之冠。

今天我们分享的视频是2016年Fish律所举办的一次关于美国专利诉讼的普及性介绍的网络研讨会，研讨会主要分为三部分：专利及专利诉讼基本概念简介；美国专利诉讼程序；专利诉讼的一些要诀和技巧。

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为了便于大家了解视频内容，我们再提供一些美国专利诉讼制度的介绍。

美国专利诉讼程序主要包括诉前警告、提起诉讼请求、证据开示、权利要求解释听证（马克曼听证）、审前动议、审理等主要程序，大家熟知的证据开示制度是美国专利诉讼程序的特色，实际上每个程序都有其特点。

Fish律所分别提供了中文和英文版的美国联邦法院专利诉讼指引，对各个主要程序和注意事项进行了介绍，以下为主要内容摘录，获取PDF版中文和英文的指引，可以关注本公众号后，回复 “fish” 获取。

1The Complaint 起诉状

A patent lawsuit begins when the patent owner (or “plaintiff”) files a document called a “complaint” in a federal district court. The complaint identifies the patent owner and the accused infringer(s), as well as the patents that are alleged to be infringed. Typically, the complaint includes a high-level description of the activities of the accused infringer (e.g., making or selling a certain product) that are alleged to infringe the patents. It also specifies, in general terms, what type of remedy for the alleged infringement is being sought from the court. The complaint is not required to contain any proof that the allegations are true or to reveal the plaintiff’s evidence of infringement. It only needs to put the defendant on notice of the nature of the legal claims being asserted and the general factual basis for those claims. Once the complaint is filed, the plaintiff must deliver to the defendant (or “serve”) a copy of the complaint.

2Response to Complaint 对起诉状的答复

Generally, a defendant has 21 days to respond to a plaintiff’s complaint after it has been served, although this deadline is often extended by agreement. This response usually takes one of two forms: an “answer” or a motion to dismiss the complaint.

3Post-Grant Patent Office Proceedings 授权后的专利局复审程序

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.

4Case Management Conference 案件管理会议或首次庭前会议

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.

5Fact Discovery 事实证据开示

After the Case Management Conference, the period for fact discovery begins. Fact discovery is the process through which each party may obtain evidence and information from the opposing party, or from third parties, that is relevant to the case. This process is an opportunity for each party to obtain evidence supporting its case, while at the same time learning about the positions and supporting evidence of the opposing party. In a patent case, the fact discovery period may last from six months to several years, depending on the complexity of the case and the court’s schedule. In general, the parties may seek discovery on any matter that is relevant to any claim or defense in the case and not protected by attorney-client privilege.

6Expert Discovery 专家证据开示

Because of their complex subject matter, patent trials almost always involve testimony by paid expert witnesses, who are hired by each party to explain the facts of the case to the jury and provide opinions based on their expertise concerning the issues of infringement, validity, and damages that the jury must decide. Because expert testimony is usually the centerpiece of each party’s case, it is essential for a party to hire well-qualified and capable experts who will be able to understand the subject matter of the case and effectively explain the party’s position to a jury.

7Claim Construction 权利要求解释

The numbered sentences called “claims” listed at the end of a patent define the scope of the legal protection that the patent confers. For that reason, the precise meaning attributed to the language in a patent’s claims will often have a significant impact on whether a patent is found to be infringed or invalid. Not surprisingly, the parties in a patent case will usually disagree about the meaning of key terms in the claims, and this disagreement must be resolved by the judge prior to trial. The process by which the judge resolves disagreements about the meaning of claim language is called “claim construction.” The outcome of this process will often have a significant impact on the outcome of the case and in some cases may entirely resolve all issues of liability in the case.

8Summary Judgment Motions 即决判决动议

In a patent case, as in any civil litigation, the role of the jury is to resolve disputed facts in order to determine which party should prevail in the dispute. Sometimes, however, at the close of the discovery period, a party may conclude that there are no genuine and material factual disputes and that, based on the undisputed facts, it is entitled to judgment as a matter of law. In such a case, the party may file a motion asking the court for what is called “summary judgment” with respect to all or part of the case. For example, the defendant may argue that there is no genuine dispute about how its product works, and that it objectively does not fall within the scope of any of the asserted claims. Alternatively, a summary judgment motion may address only a subsidiary issue in the case—for example, whether a particular document is prior art to the patent-in-suit or whether a particular invalidity defense should be presented to the jury.

9Trial Preparation and Pre-Trial Motions 庭审准备和审前动议

Usually about a month or two before the scheduled trial date, the parties will begin an intense period of trial preparation and filing of pre-trial motions. Trial preparation includes everything from preparing witnesses and trial exhibits to arranging logistics for the trial site. During this process, the parties will typically file many pre-trial motions that ask the judge to resolve issues relating to the conduct of the trial.

10Trial 庭审

Patent trials are, in almost all cases, jury trials. Both parties have a constitutional right to a jury trial if the trial involves a claim for monetary damages against the defendant. A typical patent trial will last between one and two weeks, before a jury of six to eight citizens from the district in which the trial is being held. Because jurors typically do not have expertise with the patented technology, much of a patent trial involves educating the jury about the relevant technology, the patented invention, the product or method that is accused of infringement, and any prior art that allegedly invalidates the patent. One of the biggest challenges in a patent case is to present the technical issues in a way that keeps the jury’s interest and that the jury can understand.

11Appeal 上诉

Once the district court has entered judgment and has ruled on all post-trial motions challenging the verdict, the losing party may appeal the judgment. The appeal is commenced by filing a short notice with the district court. In most cases, this notice must be filed within 30 days of the entry of judgment, or within 30 days of the resolution by district court of any requests by either party to modify the judgment, whichever is later.

12Settlement 和解

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.

视频大家慢慢看，以后我会为大家发送更多相关内容，大家看的多了，自然会更加熟悉。

今天中美贸易战正式开打，知识产权也是贸易规则的重要一部分。希望我们都可以掌握规则，捍卫自己的正当权益。

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