May 05, 2006

By Greg Duff

Last month, a bill was introduced in the U.S. House of Representatives that would change various aspects of how patents are obtained and litigated. The bill, called the Patents Depend on Quality Act of 2006 (H.R. 5096), includes measures addressing some frequently discussed patent reform topics, such as the availability of injunctive relief and post-grant patent review. However, another noteworthy measure would alter the rules for asserting claims of willful infringement against an alleged infringer. The question is, just how much would the process of litigating such claims change?

Under current law, parties to a patent infringement suit routinely spend substantial time and money litigating issues related to willful infringement before it is determined whether any asserted claim has been infringed. The new bill would require major changes to the usual approach by preventing the patentee from pleading, and the court from deciding, a claim of willfulness "[b]efore the date on which a determination has been made that the patent in suit is not invalid, is enforceable, and has been infringed by the infringer." PDQ Act of 2006, H.R. 5096, 109th Cong. § 6 (2006).

Although the proposed act seems to require a bifurcation of the trial on the issue of willful infringement, its effect on other aspects of future litigation is somewhat unclear. For example, after the issues of infringement, validity, and enforceability are decided, the court will be required to decide any remaining issue of willfulness. Will the parties have an opportunity to address willfulness through additional motion practice, only reaching a further bench trial if necessary? Additionally, the provision's effect on willfulness discovery is not clear. By delaying the pleading of willfulness until after a decision on infringement, is the provision intended to preclude willfulness discovery prior to a decision on infringement?

In the absence of clear language addressing willfulness discovery, the bill's limitation on pleading may not per se impose a limitation on discovery. Indeed, one could argue that, pursuant to the Federal Rules of Civil Procedure, courts have the discretion to allow discovery related to claims not identified in the pleadings so long as the discovery is relevant to the subject matter involved in the suit, the discovery is admissible or appears reasonably calculated to lead to the discovery of admissible evidence, and "good cause" is shown. See Fed. R. Civ. P. 26(b)(1) and advisory committee notes (2000).

Thus, there may be an open question about whether the bill would prohibit discovery of facts solely related to willfulness until after infringement is decided. If the bill is passed as it currently reads, the courts would likely be faced with such questions. Perhaps any version of the bill that may emerge from Congress will clearly speak to the issue.

House of Representatives Press Release: LINK
Text of the Bill (H.R. 5096): LINK

Greg Duff is an attorney with Ice Miller focusing his efforts on patent litigation.


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Mark Reichel
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I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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