SMALL PATENT CLAIMS
T e Patents County Court in the UK has limit of £500,000 (excluding certain interest and costs). An appropriate damage limit for a US small claims court must be even greater, perhaps $1 to $2 million.
The doctrine of proportional discovery must be respected
Every good trial lawyer understands that only a few key documents are used at
trial and
RENEWED ENERGY FOR A SMALL CLAIMS PATENT COURT
A small claims court must be designed as a forum for all lawsuits that are not suitable for a US district court or the ITC, says David Cornwell, who has some proposals of his own to present.
T e second option is to do nothing. T is plan of inaction allows the patentee to save resources, but means that an infringer may continue to infringe. T e third option is to engage in a communication campaign designed to have the infringer settle the dispute. T is third option generally leads to an amicable resolution only if the infringer is either honourable or is in fear of being sued.
In simple terms, a patent lawsuit is simply not practical unless the potential damages (or value
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of an injunction) outweigh the legal fees. Why would a patent owner invest $2 million or more in legal fees for a recovery of $2 million even if the chances of success are high?
A small claims court must be designed as a forum for all lawsuits that are not suitable for a US district court or the ITC. If a small claims court is to have value, it must be able to issue an enforceable injunction and it must be able to award signifi cant damages. It must also issue its remedy in a timely fashion.
are useful in constructing a case. Rarely do those documents include a written confession outlining the details of nefarious behavior. Despite knowing this, litigation in the US has become a hunt for an elusive and non-existent smoking gun. Discovery consists of a persistent hunt for more documents as if the last back-up hard-drive of the temporary secretary of a tertiary actor will be the residence of the decisive piece of evidence.
In reality, document discovery is more costly and less productive than is warranted. Patent litigation has always been considered a ‘game of kings’ because of the high cost of prosecuting and defending a patent lawsuit. With the added burden of electronic discovery and a general lack of judicial supervision, patent cases are becoming a game even kings are reluctant to play.
For a small claims court to work properly, discovery must be controlled. Although US courts have the power to limit discovery based on the value of a case, judges rarely limit discovery to the extent that is necessary for justice to be adequately realised. Instead, judges tend to allow the parties to engage in virtually unlimited document discovery. A small claims court must have specifi c discovery rules that include limited document discovery. Additional discovery should be allowed only by application to the judge and should be granted only in the interest of justice. In addition, the cost of such additional discovery should be shiſt ed to the party requesting the discovery, if it is later deemed to have been unnecessary.
There must be a deterrent for bad cases
In many countries, the loser of a lawsuit
reimburses the winner for its reasonable attorney fees. Under US law, each party generally pays its own attorney fees. Although the US patent law provides that “the court in exceptional cases may award reasonable attorney fees to the prevailing party”, attorney fees are rarely awarded in patent cases. T e patent
statute is not particularly
eff ective precisely because it is the exception when attorney fees are awarded to the victor. If
World Intellectual Property Review Annual 2013 21
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