Venue

United States District Court

The United States district court system consists of 94 courts. Each state, including the District of Columbia, has at least one district court. See 28 U.S. Code § 133. The 94 district courts are further organized into thirteen circuits. See 28 U.S. Code § 41. District courts have jurisdiction over civil actions that arise out of matters of federal law.

The district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States.

— 28 U.S. Code § 1331.

A patent owner may enforce their patent rights by bringing suit in federal district court.

The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents, plant variety protection, or copyrights.

— 28 U.S. Code § 1338.

An action must be brought in a judicial district with proper jurisdiction. Jurisdiction is governed by 28 U.S. Code § 1400(b) and § 1391(c) for infringement actions, and by 28 U.S. Code § 1391(b) and (c) for declaratory judgment actions.

It has long been held that a declaratory judgment action alleging that a patent is invalid and not infringed — the mirror image of a suit for patent infringement — is governed by the general venue statutes, not by § 1400(b).

— VE Holding Corp. v. Johnson Gas Appliance Co., 917 F. 2d 1574, 1583 (Fed. Cir. 1990).

Potential remedies for infringement include damages, enhanced damages and a court injunction barring infringing conduct. A patentee may also file a motion for preliminary injunction that bars allegedly infringing conduct while a lawsuit is underway.

Challengers may sue to request relief for restraint of trade or seek declaratory judgment that a patent is invalid or not infringed. Challengers may also seek to enforce RAND commitments that arise out of a patentee's participation in standard setting organizations.

International Trade Commission

The International Trade Commission (“ITC”) is a quasi-judicial federal agency. The conduct of the ITC is governed by 19 U.S. Code Part II and 19 CFR Chapter II. The ITC is distinct from district court in that, at the ITC, Administrative Law Judges are the triers of facts and decision makers in all cases.

Section 337 cases can be exceedingly complex and technical, and the Administrative Law Judges ("ALJ") are the initial triers of fact, administrators, and decision makers in every case.

— Carl Charneski, "The Role Of The Office Of The Administrative Law Judges Within The United States International Trade Commission", The John Marshall Review of Intellectual Property Law, 2016 (2009), at 1.

The ITC has jurisdiction over imported goods rather than parties.

An exclusion order operates against goods, not parties. … The Tariff Act of 1930 (Act) and its predecessor, the Tariff Act of 1922, were intended to provide an adequate remedy for domestic industries against unfair methods of competition and unfair acts instigated by foreign concerns operating beyond the in personam jurisdiction of domestic courts.

— Sealed Air Corp. v. US Intern. Trade Com'n, 645 F. 2d 976, 985 (C.C.P.A. 1981).

The ITC has the authority to enforce violations of 19 U.S. Code, including the importation of patented goods.

[T]he following are unlawful, and when found by the Commission to exist shall be dealt with, in addition to any other provision of law, as provided in this section: … (B) The importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee, of articles that— (i) infringe a valid and enforceable United States patent or a valid and enforceable United States copyright registered under title 17; or (ii) are made, produced, processed, or mined under, or by means of, a process covered by the claims of a valid and enforceable United States patent.

— 19 U.S. Code § 1337 (a) (1).

If the ITC finds a violation it may impose a ban on the importation of the accused goods.

If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States[.] ...

— 19 U.S. Code § 1337 (d) (1)

The ITC may abstain from imposing a ban that would harm the public or the economy.

[U]nless, after considering the effect of such exclusion upon the public health and welfare, competitive conditions in the United States economy, the production of like or directly competitive articles in the United States, and United States consumers, it finds that such articles should not be excluded from entry.

— 19 U.S. Code § 1337 (d) (1).

Patent Trial and Appeal Board

The Patent Trial and Appeal Board (“PTAB”) was established in September of 2012 to review patent grants under the Leahy-Smith America Invents Act.

Section 6 of title 35, United States Code, is amended to read as follows: Sec. 6. Patent Trial and Appeal Board (a) In General.--There shall be in the Office a Patent Trial and Appeal Board.

— Leahy-Smith America Invents Act, Section 7.

The PTAB reviews adverse decisions and appeals of reexaminations. It also conducts derivation proceedings, inter partes reviews, post-grant reviews and covered business method reviews.

The Patent Trial and Appeal Board shall— (1) on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a); (2) review appeals of reexaminations pursuant to section 134(b); (3) conduct derivation proceedings pursuant to section 135; and (4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32.

— 35 U.S. Code § 6(b).

Each review is conducted by a three-member panel of the board including administrative patent judges.

There shall be in the Office a Patent Trial and Appeal Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board. … Each appeal, derivation proceeding, post-grant review, and inter partes review shall be heard by at least 3 members of the Patent Trial and Appeal Board.

— 35 U.S. Code § 6(a) and (c).

Parties may challenge the validity of a patent by bring actions in the form of post-grant, inter partes, or covered business method patent reviews. 37 CFR Part 42. Parties that bring a civil action challenging the validity of a patent in federal court are generally barred from later petitioning for a review with the PTAB.

A party may challenge patentability under 35 U.S. Code § 282(b)(2) or (3) using a post-grant review.

[A petition must identify t]he specific statutory grounds permitted under 35 U.S.C. 282(b)(2) or (3) on which the challenge to the claim is based.

— 37 CFR 42.204 (b).

Any person that does not own the patent may bring a petition for a post-grant review.

A person who is not the owner of a patent may file with the Office a petition to institute a post-grant review of the patent unless: (a) Before the date on which the petition for review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent; or (b) The petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.

— 37 CFR 42.201.

Petitions for post-grant review must be filed no longer than 9 months after the grant of a patent.

A petition for a post-grant review of a patent must be filed no later than the date that is nine months after the date of the grant of a patent or of the issuance of a reissue patent. A petition, however, may not request a post-grant review for a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued unless the petition is filed not later than the date that is nine months after the date of the grant of the original patent.

— 37 CFR 42.202.

A party may challenge patentability under 35 U.S. Code § 102 or §103 using an inter partes review.

[A petition must identify t]he specific statutory grounds under 35 U.S.C. 102 or 103 on which the challenge to the claim is based and the patents or printed publications relied upon for each ground.

— 37 CFR 42.104 (b).

Any party that does not own the patent may bring a petition for inter partes review.

A person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent unless: (a) Before the date on which the petition for review is filed, the petitioner or real party-in-interest filed a civil action challenging the validity of a claim of the patent; (b) The petition requesting the proceeding is filed more than one year after the date on which the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent; or (c) The petitioner, the petitioner's real party-in-interest, or a privy of the petitioner is estopped from challenging the claims on the grounds identified in the petition.

— 37 CFR 42.101.

Petitions for inter partes review must be brought at least 9 months after a patent issues, or after post-grant proceeding concludes, whichever comes first.

(a) A petition for inter partes review of a patent must be filed after the later of the following dates, where applicable: (1) If the patent is a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act, the date that is nine months after the date of the grant of the patent; (2) If the patent is a patent that is not described in section 3(n)(1) of the Leahy-Smith American Invents Act, the date of the grant of the patent; or (3) If a post-grant review is instituted as set forth in subpart C of this part, the date of the termination of such post-grant review.

— 37 CFR 42.102.

A party may challenge patentability of a covered business method patent by petitioning for a covered business method review.

[A petition must identify t]he specific statutory grounds permitted under paragraph (2) or (3) of 35 U.S.C. 282(b), except as modified by section 18(a)(1)(C) of the Leahy-Smith America Invents Act (Pub. L. 112-29, 125 Stat. 284 (2011)), on which the challenge to the claim is based.

— 37 CFR 42.304 (b).

A covered business method patent is a patent that claims a method for performing data processing or the operation of a financial product or service.

Covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.

— 37 CFR 42.301.

A party must have standing to sue for declaratory judgment in federal court in order to bring a petition for covered business method review.

A petitioner may not file with the Office a petition to institute a covered business method patent review of the patent unless the petitioner, the petitioner's real party-in-interest, or a privy of the petitioner has been sued for infringement of the patent or has been charged with infringement under that patent. Charged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court.

— 37 CFR 42.302(a)

Petitions for covered business method review must be brought at least 9 months after a patent issues, or after post-grant proceeding concludes, whichever comes first.

A petition requesting a covered business method patent review may be filed any time except during the period in which a petition for a post-grant review of the patent would satisfy the requirements of 35 U.S.C. 321(c).

— 37 CFR 42.303.

United States Courts Of Appeals

There are 13 appellate courts that comprise the United States Courts of Appeals, one for each of the 12 regional circuits plus one for the federal circuit. See 28 U.S. Code § 41. The courts of appeals have jurisdiction over appeals from final decisions in district courts.

The courts of appeals (other than the United States Court of Appeals for the Federal Circuit) shall have jurisdiction of appeals from all final decisions of the district courts of the United States, the United States District Court for the District of the Canal Zone, the District Court of Guam, and the District Court of the Virgin Islands, except where a direct review may be had in the Supreme Court.

— 28 U.S. Code § 1291.

Appeals from final decisions at district court are generally taken up at the court of appeals for the circuit embracing the district.

Except as provided in sections 1292(c), 1292(d), and 1295 of this title, appeals from reviewable decisions of the district and territorial courts shall be taken to the courts of appeals as follows: (1) From a district court of the United States to the court of appeals for the circuit embracing the district; (2) From the United States District Court for the District of the Canal Zone, to the Court of Appeals for the Fifth Circuit; (3) From the District Court of the Virgin Islands, to the Court of Appeals for the Third Circuit; (4) From the District Court of Guam, to the Court of Appeals for the Ninth Circuit.

— 28 U.S. Code § 1294.

Appeals are heard by panels of up to three judges except when a rehearing en banc is granted.

Cases and controversies shall be heard and determined by a court or panel of not more than three judges (except that the United States Court of Appeals for the Federal Circuit may sit in panels of more than three judges if its rules so provide), unless a hearing or rehearing before the court in banc is ordered by a majority of the circuit judges of the circuit who are in regular active service.

— 28 U.S. Code § 46 (c).

The United States Court of Appeals for the Federal Circuit has jurisdiction over appeals from decisions arising under any Act of Congress relating to patents including final decisions of the United States District Court, the International Trade Commission, and the Patent Trial and Appeal Board.

The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction—(1) of an appeal from a final decision of a district court of the United States, the District Court of Guam, the District Court of the Virgin Islands, or the District Court of the Northern Mariana Islands, in any civil action arising under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents or plant variety protection.

— 28 U.S. Code § 1295 (a).

A party must have standing to bring an appeal at the Federal Circuit by establishing that it has suffered an injury in fact. That means a party may be able to request and inter partes review at the PTAB and yet not have standing to appeal the PTAB’s decisions.

Because Phigenix has not offered sufficient proof establishing that it has suffered an injury in fact, it lacks standing to bring suit in federal court. We dismiss.

— Phigenix, Inc. v. Immunogen, Inc., No. 16-1544 at 2.

Not all cases involving a patent fall to the Federal Circuit’s jurisdiction.

As we explained in the interlocutory appeal opinion in this case, not all cases involving a patent-law claim fall within the Federal Circuit's jurisdiction.

— Microsoft Corp. v. Motorola, Inc., 795 F. 3d 1024, 1035 (9th Cir. 2015).

For example, in Microsoft Corp. v. Motorola, Inc., 795 F. 3d 1024, the Federal Circuit transferred an appeal to the Court of Appeals for the 9th Circuit. The case involved the calculation of a RAND royalty.

On Microsoft's motion, the Federal Circuit transferred the appeal to this court. … [B]ecause our jurisdictional determination on the interlocutory appeal was made knowing the RAND bench trial would occur and the Federal Circuit's decision to transfer the case was made after the bench trial, we conclude that no changed circumstances are present. As the earlier jurisdictional determinations were not clearly erroneous, we have jurisdiction.

— Microsoft Corp. v. Motorola, Inc., 795 F. 3d 1024, 1034-35 (9th Cir. 2015).