District Court v. USPTO v. ITC: Strategic Considerations in Choosing a Patent Litigation Venue

Posted on 10-28-2013 by
Tags: Real Law

Brought to you by the Real Law Editorial Team

“Location, location, location.” That familiar mantra is usually associated with real estate agents, but those in the legal profession could just as easily claim it. Choice of venue, when that’s possible, can influence the outcome of a case.

Take patent litigation, for example. In the past, attorneys often have had the option of going before either the U.S. International Trade Commission (ITC) or a district court. One venue might be preferable to the other for a variety of reasons.

Now another option is available to prepare for, launch or respond to litigation. As a result of the third and final wave of provisions of the Leahy-Smith America Invents Act (AIA) coming into effect in March 2013, newly expanded or revised proceedings in the U.S. Patent and Trademark Office (USPTO) may provide valuable alternative forums for determining the validity of patents in a dispute.

Litigators and others involved in patent disputes will certainly want to be aware of how the USPTO provides a number of viable choices. Both the patent owner and the accused infringer need to calculate what is the best available venue for their case. To that end, weighing the factors that are most important in a specific case and choosing the venue that offers the best possible outcome for that case will be one theme in an upcoming Webinar featuring a leading authority in U.S. and international intellectual property law.

More Art Than Science

Ethan Horwitz is a partner at King & Spalding, an international law firm that represents a broad array of clients, including half of the Fortune® Global 100. With over 25 years of experience in the full range of intellectual property law, Horwitz maintains a diverse practice in the firm’s New York office.

He is also the author and/or editor of several prominent treatises in the IP field, including Horwitz on Patent Litigation (originally published in 1971 as Patent Litigation: Procedure & Tactics), Intellectual Property Counseling and Litigation and World Trademark Law and Practice, all published by Matthew Bender & Co., a member of LexisNexis®. His articles appear in such publications as The National Law Journal®, the New York Law Journal®, Managing Intellectual Property™ and Metropolitan Corporate Counsel®.

According to Horwitz, the decision regarding where to file in patent disputes will be relatively easy in some cases (for example, facts may exist that preclude going before the ITC). “But in a lot of cases,” he adds, “it’s going to be difficult. What I will be concentrating on in the Webinar is how the AIA opens up new options and adds more factors to consider in the decision-making process. In many ways, the decision regarding venue has become more of an art than a science.”

Insights and Strategies

Indeed, sifting through dozens of important factors in a case to settle on an appropriate venue will be a new creative exercise, just as regarding the USPTO as a more viable option in the mix might be unfamiliar territory to many in the legal profession who are involved in patent disputes.

So where to start?

One of the factors that Horwitz says may dictate a preferred venue is a patent’s complexity. “If you’ve got a really good validity case but it’s difficult to understand, you may want the issue of validity to be in front of the Patent Office, where you’ve got a sophisticated patent audience, compared with a district court jury that might have difficulty grasping the technology or legal argument at the heart of your matter.”

“On the other hand,” he adds, “if you have a really good case—a really good story that you’re confident a jury will get—you might want to file in district court, after all. Then again, if your witnesses are technical geeks, you may wish to be at the USPTO or the ITC without a jury.”

Other considerations ultimately involved in deciding on a venue reflect the value that clients and attorneys attach to cost, timing, discovery (which is limited in USPTO proceedings), whether a stay in an infringement suit is desired (that rules out the ITC), and the importance of a pretrial Markman hearing to examine a patent claim.

“There really is a lot to balance,” Horwitz declares. “Which factors in a case are the most important, and which venue best serves your client’s interests and goals? A lot of judgment in weighing the specific issues in your case will be involved, rather than simply adding up columns and coming to a conclusion. What I hope to convey is that this decision is an art―an art that needs information and judgment.”

For those who need to stay current in their field, the Webinar appearance by Horwitz is a rare opportunity to glean informed insights and practical strategies from a leading expert in U.S. IP law.

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