Alternatives to district court patent litigation: Reform by enhancing the existing administrative options

Southern California Law Review

Volumn 83, Issue 5, 2010, Pages 1135-1176

  Cheng, Eric B ^a  

^a UNIVERSITY OF SOUTHERN CALIFORNIA   (United States)

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EID: 77958546077     PISSN: 00383910     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (312)

1. See infra Part 111.A.
2. See infra Part W.BA
3. See infra Part I V.C.1
4. See infra Part IV.C.2
5. See infra Part III.C.1
6. See infra PartII A.I
7. See infra Parts II.A.2, III.C.4
8. See infra Parts II.B, III.B.
9. See JANICE M. MUELLER, AN INTRODUCTION TO PATENT LAW 5-7 (2d ed. 2006)
10. ROBERT PATRICK MERGES & JOHN FITZGERALD DUFFY, PATENT LAW AND POLICY: CASES AND MATERIALS 1046 (4th ed. 2007)
11. MUELLER, supra note 9, at 241 n.1 (citing 35 U.S.C. § 282 (2000)) ("Based on clear and convincing evidence, a federal court may hold a patent invalid for failure to comply with the statutory requirements for patentability⋯ or for failure to satisfy the disclosure and/or claim definiteness requirements ⋯." (citations omitted))
12. Id. at 241. See also id. at 348 ("Invalidity⋯ is determined on a claim-by-claim basis; some claims of a patent may be held invalid while others are sustained and may still be asserted as the basis for infringement.")
13. Id. at 348 (citing Blonder-Tongue Labs., Inc. v. Univ. of 111. Found., 402 U.S. 313 (1971))
14. Betsy Johnson, Comment, Plugging the Holes in the Ex Parte Reexamination Statute: Preventing a Second Bite at the Apple for a Patent Infringer, 55 CATH. U. L. REV. 305, 321 (2005) (citing Blonder-Tongue Labs., 402 U.S. at 329). This estoppel effect is sustained as long as the patent owner was given a "full and fair opportunity to litigate" in the first action. Id. at 321 n.98
15. Id. at 321 (citing Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 699 n.9 (Fed. Cir. 1983)).
16. See also Amy J. Tindell, Final Adjudication of Patent Validity in PTO Reexamination and Article III Courts: Whose Job Is It Anyway?, 89 J. PAT. & TRADEMARK OFF. Soc'Y 787, 796 (2007) ("Collateral estoppel thus does not prevent the same patent from being challenged repeatedly in the PTO or courts; conversely, collateral estoppel does apply once a patent has been declared invalid.")
17. MUELLER, supra note 9, at 386 n.24 (citing Hybritech, Inc. v. Abbott Labs., 849 F.2d 1446, 1452 (Fed. Cir. 1988))
18. Id. at 386
19. Id. at 257
20. Id. at 241, 256.
21. See Katharine M. Zandy, Note, Too Much, Too Little, or Just Right? A Goldilocks Approach to Patent Reexamination Reform, 61 N.Y.U. ANN. SURV. AM. L. 865, 865-866 (2006) ("Moreover, because of the time and cost necessary to challenge patents in litigation, the vast majority of these 'bad patents' are left unchallenged. The patent system currently lacks a viable and widely used method of challenging issued patents, which stifles innovation and introduces confusion into investment decisions, resulting in tension and uncertainty for patent-holders, their competitors, and the public")
22. See Mark A. Lemley, Ten Things to Do About Patent Holdup of Standards (and One Not To), 48 B.C. L. REV. 149, 151-152 (2007)
23. See Mark D. Janis, Essay, Reforming Patent Validity Litigation: The "Dubious Preponderance," 19 BERKELEY TECH. L.J. 923, 939 (2004) (noting that federal courts "are more expensive fora for both parties" and criticizing a "proposal to discard the clear and convincing standard [that] may encourage patent challengers to resolve validity disputes in court and correlatively discourage use of any newly-created administrative revocation scheme")
24. Mark A. Lemley, Essay, Rational Ignorance at the Patent Office, 95 Nw. U. L. REV. 1495, 1497, 1531-1532 (2001) ("For the PTO to gather all the information it needs to make real validity decisions would take an enormous investment of time and resources. Those decisions can be made much more efficiently in litigation, because only a tiny percentage of patents are ever litigated or even licensed to others. Thus, we should resign ourselves to living with a system in which 'bad' patents do slip through the PTO undetected.")
25. See Janis, supra note 22, at 939
26. Fish & Richardson, Patent Reexamination, http://www.fr.com/patent- reexamination (last visited July 24,2010)
27. MUELLER, supra note 9, at 256 ("Reexamination's purpose was to provide a lower-cost alternative to federal court litigation in which to resolve certain questions of validity.")
28. Allan M. Soobert, Breaking New Grounds in Administrative Revocation of U.S. Patents: A Proposition for Opposition-and Beyond, 14 SANTA CLARA COMPUTER & HIGH TECH. L.J. 63, 184 (1998)
29. MUELLER, supra note 9, at 256-257
30. 35 U.S.C. § 303(a) (2006)
31. MUELLER, supra note 9, at 258
32. Id. at 257
33. See, e.g., N. Thane Bauz, Reanimating U.S. Patent Reexamination: Recommendations for Change Based upon a Comparative Study of German Law, 27 CREIGHTON L. REV. 945, 957 (1994)
34. See, e.g., Fish & Richardson, supra note 25 ("[Because of] the fact that ex parte reexaminations ⋯ are no longer performed by the same examiner who allowed the patent in the first place, the numbers are starting to favor defendants or would-be defendants in patent litigation. As of 2001, 88% of patents survived ex parte reexamination in some form. By contrast, today, all claims are confirmed in only 26% of ex parte reexaminations.")
35. Kenneth L. Cage & Lawrence T. Cullen, An Overview of Inter Partes Reexamination Procedures, 85 J. PAT. & TRADEMARK OFF. SoC'Y 931, 955 (2003)
36. 35 U.S.C. §314(2006)
37. See Mark D. Janis, Essay, Inter Partes Patent Reexamination, 10 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 481,482 n.7 (2000)
38. See id. at 492 ("Combined with the severe restrictions on the substantive scope of reexamination and the draconian estoppel provisions, the price to a third-party initiating an inter partes reexamination will be far too dear in most cases." (footnotes omitted));
39. Posting of Dennis Crouch to Patent Law Blog (Patently-O), Inter Partes Reexaminations on the Rise, Becoming Popular Amongst Potential Defendants, http://www.patentlyo.com/patent/2005/07/inter-partes-re.html (July 12, 2005, 04:40) ("The USPTO's inter partes reexamination procedure has been questioned for its failings, and many potential requesters fear the associated estoppel provisions.")
40. MUELLER, supra note 9, at 264 (citing 35 U.S.C. § 315(c))
41. Lemley, supra note 23, at 1500 n.17 ("However, virtually no one is expected to use this system because doing so precludes you from challenging the validity of a patent in later litigation.")
42. MUELLER, supra note 9, at 264
43. See, e.g., Joseph D. Cohen, What's Really Happening in Inter Partes Reexamination, 87 J. PAT. & TRADEMARK OFF. SOC'Y 207, 207-208 (2005) ("Some say that the inter partes procedures are a recipe for disaster⋯. Others maintain that the recipe is superior⋯.")
44. Id. at 218
45. Crouch, supra note 37
46. Posting of Robert Greene Sterne to Patent Law Blog (Patently-O), Guest Post: Hot Topics in US Patent Reexamination, http://www.patentlyo.com/patent/ 2009/03/guest-post-hot-topics-in-us-patent-reexamination.html (Mar. 10,2009,07:49)
47. Andrew S. Baluch & Stephen B. Maebius, The Surprising Efficacy of Inter Partes Reexaminations: An Analysis of the Factors Responsible for Its 73% Patent Kill Rate and How to Properly Defend Against It 1, 1 (2008), http://www.foley.com/fiIes/tbl-s31Publications/FileUploadl37/5234/ InterPartesReexam.pdf ("[The] inter partes reexaminations completed as of August 2008⋯ displayed a high 73% 'kill' rate (complete elimination of all claims targeted by the requesters)-a rate which is far above that in litigation (33%) and ex parte reexamination (12%)." (footnotes omitted))
48. See id.
49. Sterne, supra note 44 ("Our current best estimate is that it takes approximately two to four years for the CRU to complete a reexam, typically a little faster for ex parte reexams, and two to four years for the BPAI to complete a reexam appeal. Thus, the reexam process could take four to eight years before it arrives at the US Court of Appeals for the Federal Circuit on appeal. This is a significant amount of time and requires additional strategy and tactical decisions by the parties.")
50. See, e.g., Kristen Jakobsen Osenga, Rethinking Reexamination Reform: Is It Time for Corrective Surgery, or Is It Time to Amputate?, 14 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 217, 230 (2003)
51. GUY TRITTON ET AL., INTELLECTUAL PROPERTY IN EUROPE 169 (3d ed. 2008). The EPC includes the states of the European Union and other European nations. Jordan K. Paradise, Lessons from the European Union: The Need for a Post-Grant Mechanism for Third-Party Challenge to U.S. Patents, 7 MINN. J.L. SCI. & TECH. 315,317 (2005)
52. TRITTON ET AL., supra note 49, at 169
53. See Soobert, supra note 27, at 150-151
54. See Dale L. Carlson, Don't Adopt Oppositions, NAT'L L.J., Sept. 17,2007, at 23
55. TRITTON ET AL., supra note 49, at 171
56. Paradise, supra note 49, at 317. The grounds for bringing an opposition proceeding include (a) the subject-matter of the patent is not patentable under the EPC;
57. (b) the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
58. (c) the subject-matter of the European patent extends beyond the content of the application as filed. TRITTON ET AL., supra note 49, at 169 (footnotes omitted). Oppositions may not be "on the basis of lack of unity of invention, that the claims are not clear and concise or supported by description or that the patentee is not entitled to the patent." Id. at 170
59. TRITTON ET AL., supra note 49, at 170
60. Id.
61. Dale L. Carlson & Robert A. Migliorini, Patent Reform at the Crossroads: Experience in the Far East with Oppositions Suggests an Alternative Approach for the United States, 7 N.C. J.L. & TECH. 261,281(2006).
62. Id. at 279-280
63. Id. at 281
64. Id. at 280
65. M. Trinidad Arriola, Key Features of the European Patent Office (EPO) Opposition Procedures, CASRIP NEWSL. (Ctr. for Advanced Study & Research on Intellectual Prop., Seattle, Wash.), Spring/Summer 1997, http://www.law. washington.edu/Casrip/Newslefter/default.aspx7yeaF 1997&article=newsv4i2eul ("Perhaps the most common criticism of the EPO opposition procedure is the length of time it takes for an ultimate decision to be issued. By some estimates, the entire opposition procedure, including appeals, may take up to five years or more before reaching a final decision.").
66. See Bauz, supra note 32, at 968 ("The opposition proceeding is considered a reasonable, fair, and legitimate administrative exercise for ascertaining the validity and scope of newly issued patents. As a result, the opposition proceeding typically is not a heated conflict between parties.")
67. See Arriola, supra note 61 ("[Different attitudes regarding the use of the opposition procedure may affect its eventual use by a third party. On the one hand, companies based in countries which have long been familiar with opposition procedures, e.g. Germany, view opposition as an extension of examination in order to limit a competitor's right while involving only a reasonable amount of effort. Consequently, the procedure is viewed not as an act of aggression but rather as a method of defining a competitor's territory⋯. On the other hand, a different attitude is evident by companies based in other countries where oppositions were not the norm prior to joining the EPC. Because such parties view opposition as tantamount to legal action or an act of aggression against the patentee, their use of the opposition procedure is minimal.");
68. Bauz, supra note 32, at 984 & n.204
69. Albrecht V. Menges, Uexkull & Stolberg, International Patent Webinar at American University, Washington College of Law: Patent Litigation in Germany (Oct. 2, 2008), http://www.wcl.american.edu/ipw/presentations/20081002-menges. pdf
70. Volker Hamm, Tips on Filing Patent Validity Actions (Sept. 1, 2004), http://www.managingip.com/Article.aspx? ArticleID=l 321595
71. Bauz, supra note 32, at 970
72. See, e.g., James F. Holderman & Halley Guren, The Patent Litigation Predicament in the United States, 2007 U. 111. J.L. TECH. & POL'Y 1, 5-6 (2007) ("Additionally, judges without a technical background must learn the rudiments of technological analysis and the advances in technology that form the basis of a patent dispute on the job, without the assistance of unbiased tutors⋯. Without a technical background to help us parse the respective parties' arguments, we judges are sometimes drawn to the wrong conclusion more than we otherwise would be if the factual premises underlying the factual basis of the dispute had a familiar ring based upon our prior experience or education.").
73. See Carlson, supra note 52
74. Menges, supra note 64
75. Bauz, supra note 32, at 977
76. Id.
77. Id.
78. Carlson & Migliorini, supra note 57, at 281-82;
79. Haitao Sun, Note, Post-Grant Patent Invalidation in China and in the United States, Europe, and Japan: A Comparative Study, 15 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 273, 296 (2004) ("[T]he pre-grant opposition procedure caused delays in the issuance of patents and resulted in undue harassment of the applicant⋯.");
80. Elizabeth A. Richardson, Administrative Patent Invalidity Proceedings: Comparing Recent Reform Efforts in Japan and the United States, CASR1P NEWSL. (Ctr. for Advanced Study & Research on Intellectual Prop., Seattle, Wash.), Winter 2006, http://www.law.washington.edu/Casrip/Newsletter/default.aspx?year= 2006&article=newsvl3ilRichardson ("Japan ⋯ jettison[ed] its old pre-grant review system in an effort to further harmonize its intellectual property regime with those of other nations.")
81. Sun, supra note 73, at 297
82. Richardson, supra note 73 ("In addition to post-grant opposition, the validity of patents could also be challenged through invalidation trials. Also overseen by the JPO, invalidation trials differed in several ways from opposition proceedings. First, a trial could be demanded at any time, but only by an interested party involved in a dispute regarding the patent in question. Also, the trial was conducted inter partes, involving both the patentee and the requesting party. After final disposition, either party could appeal, regardless of the outcome." (footnotes omitted))
83. Carlson & Migliorini, supra note 57, at 282
84. See id. at 284; Sun, supra note 73, at 297
85. See Sun, supra note 73, at 297
86. Id. at 297-98
87. Richardson, supra note 73 ("Once filed, however, the opposition proceeded only between the JPO and the patentee. This ex parte structure meant that the party filing the opposition had virtually no control beyond the act of filing itself." (footnotes omitted))
88. Carlson & Migliorini, supra note 57, at 284.
89. Sun, supra note 73, at 298 ("Consequently, the total number of oppositions declined from 6000 in 1998 to about 3500 in 2001, representing approximately three percent of all granted patents.")
90. Id. at 327 ("[O]ne might expect that the same EPO opposition system would be used less frequently in China and Japan, where people have been considered to be traditionally less litigious than Western people.")
91. See id. at 298.
92. See Carlson & Migliorini, supra note 57, at 290 (noting that the reform "helps avoid subjecting the patentee to multiple attacks via different procedural systems, draining patent office resources burdened by oversight of multiple systems, and effectively simplifying invalidity disputes"); Richardson, supra note 73
93. See Sun, supra note 73, at 298
94. See id. at 298-99
95. Richardson, supra note 73
96. See Richardson, supra note 73
97. See Carlson & Migliorini, supra note 57, at 262, 299
98. See ALAN L. DURHAM, PATENT LAW ESSENTIALS: A CONCISE GUIDE 135 (2d ed. 2004).
99. MERGES & DUFFY, supra note 10, at 1047
100. See, e.g., ROBERT L. HARMON, PATENTS AND THE FEDERAL CIRCUIT 759 (6th ed. 2003)
101. U.S. CONST, amend. VII ("In Suits at common law, where the value in controversy shall exceed twenty dollars, the right of trial by jury shall be preserved, and no fact tried by a jury, shall be otherwise reexamined in any Court of the United States, than according to the rules of the common law.").
102. See also Philippe Signore, On the Role of Juries in Patent Litigation (Part I), 83 J. PAT. & TRADEMARK OFF. SOC'Y 791, 795 (2001) ("Because patent cases were decided in the courts of common law by juries in 18th century England, juries are available in American patent cases, as required by the Seventh Amendment." (citing Markman v. Westview Instruments, Inc., 517 U.S. 370, 377(1996)))
103. Signore, supra note 92, at 797.
104. MERGES & DUFFY, supra note 10, at 1047.
105. Id.
106. Signore, supra note 92, at 794-795 ("Many non-Americans, especially if they are accused of infringing a U.S. patent, are astonished to leam that U.S. patent cases can be decided by juries. The U.S. may be the only country in the world that uses juries to decide patent disputes.").
107. See id. at 796.
108. MERGES & DUFFY, supra note 10, at 1047.
109. See United States Court of Appeals for the Federal Circuit, About the Court, http://www.cafc.uscourts.gov/about.html (last visited May 5,2010).
110. Id.
111. See John B. Pegram, Should There Be a U.S. Trial Court with a Specialization in Patent Litigation?, 82 J. PAT. & TRADEMARK OFF. SOC'Y 765, 790 (2000) ("One of the principal reasons for assigning all patent appeals to a single appellate court, the Federal Circuit, was to achieve greater predictability through uniformity of decisions and doctrinal stability.")
112. Id.
113. Markman v. Westview Instruments, Inc., 517 U.S. 370, 373-374 (1996).
114. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc);
115. Markman v. Westview Instruments, Inc., 52 F.3d 967,976 (Fed. Cir. 1995) (en banc), ajfd, 517 U.S. 370 (1996).
116. Arti K. Rai, Specialized Trial Courts: Concentrating Expertise on Fact, 17 BERKELEY TECH. L.J. 877,884-86 (2002). Rai notes a "domino effect" from the de novo review of claim construction: [T]he Federal Circuit's plenary review of claim construction can have something of a domino effect[:]⋯ because claim construction bears heavily on the question of infringement, a decision to overturn the district court's claim construction often means that a new determination regarding infringement must be made⋯. [And because] the Federal Circuit is often reluctant to remand for a new trial on infringement⋯ de novo review of claim construction effectively becomes de novo review of infringement.
117. Id. at 884-885
118. Id. at 879.
119. Holderman & Guren, supra note 67, at 4-5.
120. Pegram, supra note 101, at 788
121. See Holderman & Guren, supra note 67, at 5-6.
122. See. e.g., id. at 9-10.
123. See Press Release, U.S. Senate, Specter, Issa, Schiff Introduce Legislation to Improve Patent Litigation in District Courts (Jan. 22, 2009), available at http://specter.senate.gov/public/index.cfm? FuseAction=NewsRoom. NewsReleases&ContentRecord-id=ffe2cb49-dbd6-ael3-5759-3fb54a7fael4.
124. See m/hi Part III.B.1
125. See infra Part III.B.2
126. Wolfgang von Meibom & Matthias F. Meyer, Bird & Bird, Germany: The Ins and Outs of Patent Litigation (Sept. 1,2004), http://www.managingip.com/ Article.aspx?ArticleID=1321624
127. See supra notes 65-68 and accompanying text
128. Meibom & Meyer, supra note 114.
129. Menges, supra note 64. See also Thomas Bopp & Michael Trimbom, Gleiss Lutz, Patent Litigation in Germany (2004), at 3, http://www.gleisslutz.com/ media.php/Ver%C3%B6ffentlichungen/Downloads/GleissLutz-BoppTrimborn- PatentLitigation-2004.pdf ("The time it takes until a judgment is issued by the court of first instance, namely approximately 9 to 12 months (assuming that the scope and complexity of the case are average), is relatively short compared to other countries.")
130. Meibom & Meyer, supra note 114.
131. See Bauz, supra note 32, at 964;
132. Bopp & Trimborn, supra note 117, at 4
133. Meibom & Meyer, supra note 114.
134. Menges, supra note 64.
135. Id. ("Judges have technical and legal expertise due to a high number of cases: 600-800 per year in Germany ⋯.")
136. Id.
137. Bauz, supra note 32, at 971, 976.
138. Id. at 973
139. See Posting of Gary Odom to the Patent Prospector, U.S. Patent Court, http://www.patenthawk.corn/blog/2006/02/us-patent-court.html (Feb. 6,2006, 12:04).
140. Id. ("Rep. Darrell Issa (R-Ca) is mulling a patent trial court for the United States. Britain established its Patent County Court in 1988, and Japan set up its Intellectual Property High Court in April 2005 ⋯. Should the U.S. follow suit?")
141. See id. ("The European Commission is contemplating a continent-wide patent court system."); Managing Intellectual Property, Judge Leads Push for Specialized IP Courts (Oct. 3, 2005), http://www.managingip.eom/Article/ 1258180/Judge-leads-push-for-specialized-IP-courts.html [herinafter Managing Intellectual Property]
142. Michael Burdon, UK Patents County Court-Phoenix Risen?, PAT. WORLD, July/Aug. 2003, at 1, available at http://www.olswang.com/pdfs/phoenix-risen. pdf. The court was established under authority from the 1988 Copyright Designs and Patent Act.
143. Id. at 3.
144. Id. at 1.
145. Michael Fysh, The Work of the Patents County Court, OXFORD INTELL. PROP. RES. CENTRE E-JOURNAL OF INTELL. PROP. RIGHTS, Feb. 11, 2003, at 2, http://www.oiprc.ox.ac.uk/EJWP0303.pdf.
146. Burdon, supra note 129, at 2.
147. Id.
148. See, e.g., id. at 1-2 ("Patents County Court has been revitalised under the leadership of Judge Michael Fysh. The Court is very much 'back in business' and it is commanding attention and respect from clients and practitioners alike ⋯.");
149. Neil Jenkins, Bird & Bird, UK Patent Litigation in 2004: A Review of Some Procedural Developments (Mar. 3, 2005), http://www.twobirds.com/English/ News/Articles/Pages/UK-patent-litigation-in-2004.aspx ("Under Fysh HH's control, the Patents County Court (PCC) is now well and truly rehabilitated.")
150. Fysh, supra note 132, at 1.
151. Managing Intellectual Property, supra note 128 ("Judge Michael Fysh of the Patents County Court for England and Wales has called for the creation of more dedicated IP courts around the world to provide for better and quicker litigation.").
152. Id. ("Fysh said the length and cost of litigation in non-specialized courts meant countries that fail to set up an IP court system will lose money: 'If inward investment is to be attracted into a country then the efficient enforcement of IP rights is hugely important.'").
153. See, e.g., ROBERT L. HARMON, HARMON ON PATENTS: BLACK-LETTER LAW AND COMMENTARY 227 (2007).
154. Id. at 227-228
155. 19 U.S.C.§ 1337(a) (2006).
156. Id. § 1337(d). Exclusion orders are "limited to persons determined by the Commission to be violating this section unless" a general exclusion order is needed by meeting one of two criteria: either it is necessary "to prevent circumvention of an exclusion order limited to products of named persons" or "there is a pattern of violation of this section and it is difficult to identify the source of infringing products." Id.
157. See id. § 1337(b)-(f).
158. See, e.g., Robert W. Hahn & Hal J. Singer, Assessing Bias in Patent Infringement Cases: A Review of International Trade Commission Decisions, 21 HARV. J. LAW & TECH. 457, 458 (2008).
159. See id. at 461.
160. Id. at 471-472
161. HARMON, supra note 139, at 226.
162. U.S. INT'L TRADE COMM'N, SECTION 337 INVESTIGATIONS: ANSWERS TO FREQUENTLY ASKED QUESTIONS 2 (2009), available at http://www.usitc.gov/ intellectual-property/documents/337-faqs.pdf.
163. See generally 19 C.F.R. §§ 210.1-.79 (2009) (rules governing section 337 investigations).
164. U.S. INT'L TRADE COMM'N, supra note 148, at 2.
165. Id. at 2-3.
166. 19 U.S.C. § 1337(b) (2006).
167. U.S. INT'LTRADE COMM'N, supra note 148, at 24.
168. HARMON, supra note 139, at 225.
169. Douglas P. Martin, Comment, Preclusive Effect of Factual Determinations of the International Trade Commission with Regard to Patent Matters, 62 U. CHI. L. REV. 885, 910 & n.128 (1995).
170. See, e.g., Hahn & Singer, supra note 144, at 461.
171. HARMON, supra note 139, at 224.
172. Id. (noting the Federal Circuit's determination that "§1337 is a valid delegation of the broad congressional power for the public purpose of providing an adequate remedy for domestic industries against unfair practices beginning abroad and culminating in importation" and "the thrust of the statute is directed toward the protection of the public interest from unfair trade practices in international commerce" (citing Akzo N.V. v. ITC, 808 F.2d 1471, 1488 (Fed. Cir. 1986))).
173. In re Princo Corp., 486 F.3d 1365, 1368 (Fed. Cir. 2007)
174. 28 U.S.C. § 1659 (2006). This request must be made within thirty days of the party being named a respondent or thirty days of the filing of the district court action, whichever is later. Id. A determination does not "become final" for purposes of § 1659 until all appeals have been exhausted. Princo, 486 F.3d at 1369.
175. Sapna Kumar, The Other Patent Agency: Congressional Regulation of the ITC, 61 FLA. L. REV. 529, 558 (2009) (citing Young Eng'rs, Inc. v. ITC, 721 F.2d 1305 (Fed. Cir. 1983)).
176. Id. at 559 (citing Bio-Tech. Gen. Corp. v. Genentech, Inc., 80 F.3d 1563 (Fed. Cir. 1996);
177. Tex. Instruments, Inc. v. ITC, 851 F.2d 342, 343 (Fed. Cir. 1988)).
178. Id. ("[T]he Federal Circuit maintains that federal district courts have original and exclusive jurisdiction over patent cases under 28 U.S.C. § 1338, and that the ITC's authority under §337 is limited to investigating unfair practices in import trade⋯. [T]he legislative history for the Trade Act of 1974 states that ITC decisions are not entitled to preclusive effect." (footnote omitted)).
179. Id.
180. See infra Part III.C.3
181. Kumar, supra note 160, at 559 ("[A]ppellate treatment of decisions of the Commission does not estop fresh consideration by other tribunals." (quoting Tandon Corp. v. ITC, 831 F.2d 1017, 1019 (Fed. Cir. 1987))).
182. Douglas Gilbert, Ropes & Gray, Presentation at Intellectual Property Owners Association Seminar: After the Stay-What Happens Next in Federal District Court and Does Anyone Care What the ITC or the Federal Circuit Had to Say? (July 10, 2006), available at http://www.ipo.org/AM/Template.cfm?Section= Home&Template=/CM/ContentDisplay.cfTn&ContentF ileID=55171 ("However, prior ITC decisions can still be considered: 'TI also argues that by our denying preclusive effect to ITC determinations and to our decisions in appeals from ITC decisions, district courts would be free to ignore our decisions. That is not correct. District courts are not free to ignore holdings of this court that bear on cases before them.'" (quoting Tex. Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 (Fed. Cir. 1996))).
183. Kumar, supra note 160, at 559 ("[T]he stare decisis effect of a Federal Circuit claim construction will bind all lower tribunals regardless of whether collateral estoppel is appropriate, making the holding of Tandon moot in this context." (citing Terril G. Lewis, Collateral Estoppel as Applied to the Construction of Patent Claims, 83 J. PAT. & TRADEMARK OFF. SOC'Y 851, 877 (2001))).
184. See also Gilbert, supra note 166, at 7 ("However, if there is appellate review of the ITC's claim construction in this dispute, that will certainly have a pronounced effect, and in practical terms the stare decisis effect of appellate review of the ITC construction would have near-preclusive effect with respect to any review of this Court's construction." (quoting Thomson Consumer Elecs., Inc. v. Innovation, SA, 3 F. Supp. 2d 49, 51 (D.D.C. 1998)))
185. See Gilbert, supra note 166, at 8-9.
186. Compare Fuji Photo Film Ltd. v. Jazz Photo Corp., Inc., 173 F. Supp. 2d 268, 274 (D.N.J. 2001) (noting that while "the findings and opinions rendered by the ⋯ ITC, as well as ⋯ by the Federal Circuit on appeal from the ITC ⋯ serve a persuasive value, they do not receive any deferential treatment nor do they have a preclusive effect on any findings and opinions rendered" and "[t]his Court therefore render[ed] its opinion based on an independent review of the facts and law" (citations omitted)), with Minn. Mining & Mfg. Co., Inc. v. Beautone Specialties Co., 117 F. Supp. 2d 72, 83 (D. Mass. 1999) ("[W]hile the Commission's determination and subsequent affirmance by the Federal Circuit do not have collateral estoppel effect, Texas Instruments also makes clear that this Court cannot simply ignore the Federal Circuit's decision affirming the ITC finding of no infringement in this case.")
187. Tex. Instruments, 90 F.3d at 1569 ("The district court can attribute whatever persuasive value to the prior ITC decision that it considers justified.").
188. See also Guy W. Chambers, Partner, Townsend and Townsend and Crew LLP, Remarks at the Santa Clara Computer & High Technology Law Journal Symposium: Shifting Strategies in Patent Law, at 11:47 (Jan. 30, 2009), available at http://www.chtlj.org/symposiums/v25 ("The ITC decision is quite persuasive on district court judges ⋯ [They] appreciate that the ITC judges are very knowledgeable about patent law. The initial determinations which come out of the ITC are often hundreds of pages and quite impressive and intimidating, almost. It's not literally res judicata, but quite persuasive.").
189. Kali N. Murray, The Cooperation of Many Minds: Domestic Patent Reform in a Heterogeneous Regime, 48 IDEA 289, 298, 300 (2008) ("[T]he International Trade Commission (ITC) replicates the role of district court decision-maker within the narrower context of import controls The ITC's replicative role appears to result from two legislative developments."). These legislative developments include the Trade Act of 1974 and the Omnibus Trade and Competitiveness Act of 1988.
190. Kumar, supra note 160, at 542-543
191. 19 U.S.C. § 1337(b)-(f)(2006).
192. Murray, supra note 170, at 300-301
193. Kumar, supra note 160, at 540-544
194. Id. at 544.
195. 35 U.S.C. § 271(g) (2006) (declaring that a product made by a patented process is not infringing if "(1) it is materially changed by subsequent processes;
196. (2) it becomes a trivial and nonessential component of another product"). See also Murray, supra note 170, at 301-302 (citing Kinik Co. v. ITC, 362 F.3d 1359 (Fed. Cir. 2004)).
197. eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006). In eBay, the Supreme Court held that to obtain a permanent injunction, a patent owner must demonstrate (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.
198. Id.
199. See id. at 392 (citing 35 U.S.C. § 283).
200. Benjamin Petersen, Note, Injunctive Relief in the Post-eBay World, 23 BERKELEY TECH. L.J. 193, 215 (2008) ("The ITC is not obligated to adhere to the Court's reasoning because patent infringement suits adjudicated at the ITC are governed by an entirely different statute, 19 U.S.C. § 1337.").
201. See id. at 213.
202. Murray, supra note 170, at 303.
203. V. James Adduci II, Adduci, Mastriani and Schaumberg LLP, Former Chairman of the International Trade Committee of the Federal Circuit Bar, Former Counsel for the ITC, Remarks at the Santa Clara Computer & High Technology Law Journal Symposium: Shifting Strategies in Patent Law, at 6:10 (Jan. 30, 2009), available at http://www.chtlj.org/symposiums/v25 ("Patent infringement is the unfair act that dominates at the ITC. Nearly 90 percent of the cases involve allegations of patent infringement⋯. [O]f the forty-eight cases that are currently pending at the ITC, all but three involve patent infringement.") .
204. Hahn & Singer, supra note 144, at 459-460 ("The average number of patent cases filed at the ITC was ten per year in the 1990s; since 2000, the number of cases has doubled to an average of twenty-three per year.")
205. Adduci II, supra note 182, at 6:30 ("In recent years, the number of patent cases in district court has been declining somewhat. For instance, during the period 2007 to [2008], the number of patent cases in district court cases declined 11 percent.")
206. Id. at 6:45 ("During⋯ the last four to five years, the number of filings at the ITC has nearly tripled. Last year, 2008, forty-three cases were instituted at the ITC. That is a new record ⋯ we're on track to exceed last year's record pace.").
207. Id. at 7:13 ("Last year, there were ninety-nine patent trials in
208. Id. at 13:37 ("There has been a decided shift ⋯ to very high-tech products today ⋯ on the current docket, two-thirds of all the cases involved high-tech products: semiconductor chips, computers, and telecommunication equipment.").
209. See also Hahn & Singer, supra note 144, at 460.
210. See, e.g., Colleen V. Chien, Patently Protectionist? An Empirical Analysis of Patent Cases at the International Trade Commission, 50 WM. & MARY L. REV. 63, 68 & n. 18 (2008) (pointing to the increase in imports over the past decade).
211. Id. at 92-93 ("[A]t least 65 percent (143 out of 219) of ITC cases involved patents that were also the subject of district court litigation between the same parties⋯. [T]he overwhelming majority of these cases were litigated at the same time.")
212. Id. at 100 ("ITC investigations were nearly six times more likely to be adjudicated ⋯ than their district court counterparts⋯. [T]he greater disparity in adjudication is likely due to the ability of defendants to stay district court cases when a parallel ITC case is pending⋯.").
213. Id. at 104 ("Even though, theoretically, a plaintiff could litigate both cases to completion, I identified only two instances in which both the ITC and district court case were litigated to an adjudicated outcome, both in agreement.").
214. David L. Schwartz, Courting Specialization: An Empirical Study of Claim Construction Comparing Patent Litigation Before Federal District Courts and the International Trade Commission, 50 WM. & MARY L. REV. 1699, 1702 & n. 13 (2009) (footnote omitted).
215. Id. at 1733 ("Using reversal rates as the metric, however, the ALJs of the ITC perform no better than district court judges on the essential issue of claim construction.")
216. Hahn & Singer, supra note 144, at 477-481
217. See Chien, supra note 188, at 71 ("Taken together, the data fail to support two major criticisms that have been levied against the ITC-that it is anti-defendant and that it is anti-foreigner.").
218. Gray Cary Ware & Freidenrich LLP, Patent Litigation Before the U.S. International Trade Commission from the Patent Holder's Perspective (Jan. 13, 2002), http://www.dlapiper.com/global/publications/detail.aspx?pub=412 [hereinafter Gray Cary].
219. Petersen, supra note 179, at 215.
220. See supra text accompanying notes 160-164
221. Gray Cary, supra note 196. The domestic industry requirement, however, may be satisfied by licensing, such as by foreign or nonpracticing entities.
222. Hahn & Singer, supra note 144, at 471 (citing Jay P. Kesan & Gwendolyn G. Ball, How Are Patent Cases Resolved? An Empirical Examination of the Adjudication and Settlement of Patent Disputes, 84 WASH. U. L.R. 237, 288 (2006)) (comparing the ITC's typical investigation duration of twelve to eighteen months to district court case's typical length often to twenty-three months).
223. Adduci II, supra note 182, at 11:04.
224. Id. at 12:24 ("[L]ook at some of the more popular patent venues in district court: it takes almost twice as long and in some cases more than twice as long to get to trial. For example, in the Eastern District of Texas it's 1.79 years to get to trial; the Northern District of California averages 2.87 years for a case filed to actually get to trial.")
225. Id. at 12:21, 12:57.
226. See supra Part III. C .2.
227. Hahn & Singer, supra note 144, at 471.
228. Tindell, supra note 15, at 807-808
229. Soobert, supra note 27, at 169.
230. See supra Part II.A.2
231. See, e.g., Mark D. Janis, Rethinking Examination: Toward a Viable Administrative Revocation System for U.S. Patent Law, 11 HARV. J.L. & TECH. 1,99 (1997).
232. See, e.g., Patent Reform Act of 2010, S. 515, 111th Cong. (2010);
233. Patent Reform Act of 2009, S. 515, 111th Cong. (2009);
234. Patent Reform Act of 2009, H.R. 1260, 111th Cong. (2009);
235. Patent Reform Act of 2007, H.R. 1908, S. 1145, 110th Cong. (2007);
236. Patent Reform Act of 2006, S. 3818, 109th Cong. (2006);
237. Patent Reform Act of 2005, H.R. 2795, 109th Cong. (2005).
238. See, e.g., Paradise, supra note 49, at 317. One commentator finds it "imperative" to introduce an opposition procedure, especially in the context of patents covering genetic material. Id. at 316-317
239. See, e.g., id. at 317.
240. Bauz, supra note 32, at 982.
241. Patent Reform Act of 2009, S. 515;
242. H.R. 1260. The Senate and House legislation is "largely similar"; thus, for simplicity, this Note will only examine the Senate bill. The legislation is also substantially similar to the patent reform legislation proposed in previous years (for example, 2007), with some minor revisions such as allowing "public use or sale in the US to be reasons for challenging patents" in reexamination. Posting of Dennis Crouch to Patent Law Blog (Patently-O), Patent Reform Act of 2009, http://www.patentlyo.com/ patent/2009/03/patent-reform-act-of-2009.html (Mar. 3, 2009, 02:58).
243. Crouch, supra note 214.
244. Patent Reform Act of 2009, S. 515 § 5(h)(1).
245. See Richardson, supra note 73 ("The bill would also separate the reexamination and opposition systems temporally. Requests for ex parte or inter partes reexaminations made during the period of time in which an opposition could be filed (except for ex parte reexamination requests by the patent owner) would be treated as opposition requests. Also, requests for ex parte or inter partes reexaminations made after the time when an opposition could be filed (as well as ex parte reexamination requests by the patent owner made at any time) would be stayed in the event of a pending opposition proceeding." (footnotes omitted)).
246. Patent Reform Act of 2009, S. 515 § 6.
247. Crouch, supra note 214. The Act would adjust the preclusive effect of inter partes reexamination by removing the "could have raised" language from its estoppel provision. Patent Reform Act of 2009, S. 515 § 5(d).
248. Patent Reform Act of 2009, S. 515 § 5(d), (h)(1) ("Part III of title 35, United States Code, is amended by adding⋯ 'If a final decision is entered against a party in a civil action arising in whole or in part under section 1338 of title 28 establishing that the party has not sustained its burden of proving the invalidity of any patent claim ⋯ that party to the civil action and the privies of that party may not thereafter request a post-grant review proceeding on that patent claim on the basis of any grounds,under the provisions of section 321, which that party or the privies of that party raised or could have raised ⋯.'").
249. See Carlson & Migliorini, supra note 57, at 308.0
250. See supra Part II.B.2.
251. See supra text accompanying note 82.
252. See Carlson, supra note 52, at 23 ("Any success that the European opposition system has enjoyed is largely attributable to unique features of the European patent system that are not present in the patent systems of the United States, Japan, China and South Korea.")
253. See Carlson & Migliorini, supra note 57, at 308-09.0
254. See supra Part II.B.2
255. A similar reform is proposed in Carlson & Migliorini, supra note 57, at 310-317
256. Patent Reform Act of 2009, S. 610, 111th Cong. (2009);
257. Patent Reform Act of 2008, S. 3600, 110th Cong. (2008).
258. See supra text accompanying notes 44-48.
259. Patent Reform Act of 2010, S. 515, 111 th Cong. (2010). See also Posting of Dennis Crouch to Patent Law Blog (Patently-O), Patent Reform Act of 2010: An Overview, http://www.patentlyo.com/patent/2010/03/patent-reform-act-of-2010-an- overview.html (Mar. 8, 2010, 02:50) (noting that the Patent Reform Act of 2010 is "very similar to its predecessor, the Patent Reform Act of 2009")
260. Press Release, U.S. Senate, supra note 111.
261. Posting of Stephen Albainy-Jenei to Patent Baristas, http://www. patentbaristas.com/archives/ 2010/03/05/the-patent-reform-act-of-2010-a- substitute-s-515 (Mar. 5, 2010).
262. Press Release, U.S. Senate, supra note 111. See also Patterson, Thuente, Skaar & Christensen, The "Changes" in the "New and Improved" Version of S. 515 (Mar. 5, 2010), http://www.ptslaw.com/news/ Patent-Reform-Bills-Comparison.pdf.
263. Posting of William New to Intellectual Property Watch, http://www.ip-watch.org/weblog/2010/03/04/new-senate-patent-reform-bill-details- released/ (Mar. 4, 2010, 10:29). For first-window post-grant review, it "raises the threshold for instituting a proceeding to a showing that it is 'more likely than not' that at least one claim is unpatentable"; for inter partes review, it "[sjlightly raises the threshold for instituting an IPR to a 'reasonable likelihood' that the challenger would prevail in invalidating a claim of the patent." Id.
264. See, e.g., Janis, supra note 209, at 118 (stating that proposals to further refine the reexamination system should be "discarded" because they "spring[] from an anachronistic conceptual model," and that such "reform legislation is notable primarily for its timidity and should not be enacted");
265. Osenga, supra note 48, at 218 ("Over the years, Congress has repeatedly introduced legislation to perform corrective surgery by adding to or cosmetically altering the existing reexamination laws. Instead of merely seeking to correct the existing problems, a more sound course of treatment would be to amputate the current reexamination proceedings in total.").
266. Bauz, supra note 32, at 982.
267. H.R. 34, 110th Cong. § 1(a) (2007). The bill proposes to [e]stablish[] a program, in [certain U.S. district courts]⋯ under which: (A) those district judges of that district court who request to hear cases under which one or more issues arising under any Act of Congress relating to patent or plant variety protection must be decided, are designated by the chief judge of the court to hear those cases; (B) cases described in subparagraph (A) are randomly assigned to the judges of the district court, regardless of whether the judges are designated under subparagraph (A); (C) a judge not designated under subparagraph (A) to whom such a case is assigned under subparagraph (B) may decline to accept the case; and (D) a case declined under subparagraph (C) is randomly reassigned to one of those judges designated under subparagraph (A).
268. Id.
269. See Press Release, U.S. Senate, supra note 111.
270. Holderman & Guren, supra note 67, at 1, 18.
271. See 153 CONG. REC. HI430-33 (daily ed. Feb. 12, 2007) (statement of Rep. Berman) ("Appeals from district courts to the Court of Appeals for the Federal Circuit are frequent. This is caused, in part, by the general perception within the patent community that most district court judges are not sufficiently prepared to hear patent cases. I drafted this legislation in an attempt to decrease the cost of litigation by increasing the success of district court judges.")
272. Id.
273. Id.
274. H.R. 34, 110th Cong. § 1 (b) (2007)
275. Nancy Olson, Comment, Does Practice Make Perfect? An Examination of Congress's Proposed District Court Pilot Program, 55 UCLA L. REV. 745, 760 (2008).
276. Cono A. Carrano, Cecil E. Key & Brian Su, Patent Rocket Dockets: Coming Soon to a Venue Near You?, INTELL. PROP. TODAY, Dec. 2006, at 11, available at http://www.iptoday.com/pdf72006/12/ Carrano-Dec2006.pdf.
277. Jeffrey Peabody, Under Construction: Towards a More Deferential Standard of Review in Claim Construction Cases, 17 FED. CIR. B.J. 505,518-519 (2008)
278. Olson, supra note 244, at 756, 780.
279. Id. at 761-768
280. Cal. Inst, for Fed. Policy Research, House Passes Pilot Program for Patent Law Judges, CAL. CAPITAL HILL BULL.. Feb. 16, 2007, at 1, available at http://www.calinst.org/bul2/bl407.pdf ("Rep. Howard Berman, Chair of the Judiciary Subcommittee on Courts, the Internet, and Intellectual Property supported H.R. 34, but noted 'This bill does not substitute for comprehensive patent overhaul.' His Subcommittee will begin hearings this week on comprehensive patent reform.").
281. See supra Part III.B.1.
282. Pegrara, supra note 101, at 767.
283. See supra text accompanying notes 127-130
284. See, e.g., Rai, supra note 105, at 895-897 (proposing to address the complicated scientific fact-finding in patent law with the creation of a specialized trial court provided with expert consultants);
285. Gregory J. Wallace, Note, Toward Certainty and Uniformity in Patent Infringement Cases After Festo and Markman: A Proposal for a Specialized Patent Trial Court with a Rule of Greater Deference, 11 S. CAL. L. REV 1383, 1410-1415 (2004) (proposing to establish a uniform national patent trial court).
286. See, e.g., Peabody, supra note 246, at 517-18. Rather, Peabody recommends that the Federal Circuit "adopt a more deferential standard of review," which would make the "benefits associated with developing a specialized trial court likely ⋯ [to] not outweigh the substantial costs." Id. at 517.
287. See, e.g., Rai, supra note 105, at 880. For example, certain courts, such as the Northern District of California, already have great experience handling a large volume of patent cases.
288. Holderman & Guren, supra note 67, at 17-18.
289. See Signore, supra note 92, at 812-13; supra text accompanying notes 92-96. To reduce the role of juries in patent cases, both parties may waive the right to a jury. Signore, supra note 92, at 812-813 Alternatively, a patentee may seek only an injunction (in which the Seventh Amendment does not apply); yet, the defendant may overcome this strategy by raising a patent invalidity defense, which includes factual issues for a jury. Id.
290. Bankruptcy Reform Act of 1978, Pub. L. No.95-598, 92 Stat. 2549 (codified in scattered sections of 11 U.S.C.). The legislation conferred original bankruptcy jurisdiction on the district courts and established a bankruptcy court in each judicial district to exercise bankruptcy jurisdiction. The act provided that the new bankruptcy courts would be considered adjuncts of the district courts but would be presided over by bankruptcy judges appointed by the president and confirmed by the Senate for fourteen-year terms, beginning in 1984. In the meantime the incumbent referees would serve as bankruptcy judges.
291. Federal Judicial History, Bankruptcy Courts, http://www.fjc.gov/history/ home.nsf/page/courts-special-bank.html (last visited Aug. 9,2010).
292. N. Pipeline Constr. Co. v. Marathon Pipe Line Co., 458 U.S. 50, 87-88 (1982). The Supreme Court "declared unconstitutional the grant of bankruptcy jurisdiction to independent courts composed of judges who did not have life tenure and the other protections of Article III of the Constitution"; it also recommended "that Congress restructure the bankruptcy courts." Federal Judicial History, supra note 258.
293. See Susan Block-Lieb, The Costs of a Non-Article III Bankruptcy Court System, 72 AM. BANKR.LJ. 529,529 (1998).
294. See id. at 563 ("The costs of maintaining a non-Article III bankruptcy court system - delay and uncertainty - outweigh the cost of facing the issue politically and creating an Article III bankruptcy court system. In part, this follows because the doctrinal and unconstitutional issues are substantial⋯. The significant costs of a non-Article III bankruptcy court system exceed the limited costs of creating an Article III system-a system which would differ only in that bankruptcy judges would be granted tenure and salary protections.").
295. Alternatively, one commentator has proposed a similar "doable" reform of simply implementing parallel patent case jurisdiction in an existing national Article III trial court, the United States Court of International Trade ("CIT"). See Pegram, supra note 101, at 767. This would increase favorable competition between court systems and give CIT judges the opportunity to "develop expertise in patent law through greater exposure to patent cases" while avoiding the expense of establishing new judgeships and courthouses.
296. See id. at 783. While this potential reform is argued and proposed convincingly, the CIT currently hears no patent cases and lacks the experience of an existing forum like the ITC that currently hears a great number of patent litigation disputes. Thus, the ITC provides a better option to avoid the time and expense to train a new set of judges on the intricacies of patent law.
297. See supra Part III.C.2.
298. See Rai, supra note 105, at 896-97 (comparing the roles of trial courts and appellate courts in considering the issue of capture and judicial vision). A similar proposal is suggested by one commentator, who suggests that if accuracy of ITC decisions⋯ could be resolved,⋯ the application of res judicata to the ITC's factual findings, and perhaps to its legal findings as well, would benefit parties and the public at large in that party exposure to inconsistent decisions and duplicative litigation would be reduced and patents invalidated at the ITC could not be reasserted. Chien, supra note 188, at 110-111
299. The ITC could be enhanced to offer monetary damages, as it may already compel civil penalties on respondents who violate consent orders restricting infringement in the future. Id. at 108. This practice could raise Seventh Amendment issues as to a litigant's right to a jury trial when seeking damages, although the Supreme Court has actually found the Seventh Amendment inapplicable in administrative proceedings. Id. (citing Atlas Roofing Co. v. Occupational Safety & Health Review Comm'n, 430 U.S. 442,455 (1977)).
300. Id.
301. See supra notes 165-167 and accompanying text.
302. Murray, supra note 170, at 326 ("[T]he Federal Circuit suggested that its refusal to accord a preclusive effect to the decisions of the ITC served the greater purpose of preserving the Seventh Amendment right to a jury trial enjoyed by patent owners." (citing Tex. Instruments, Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1569 n.10 (Fed. Cir. 1996))).
303. Tex. Instruments, 90 F.3d at 1569 n.10 ("[Amplication of collateral estoppel to a legal action based on an equitable determination does not violate Seventh Amendment right to a jury trial." (citing Parklane Hosiery Co. v. Shore, 439 U.S. 322, 335-337 (1979))).
304. See supra text accompanying notes 160-163
305. Timothy J. Malloy & Gregory J. Vogler, Think Locally, Act Globally: A Strategy for IP Litigation (2003), http://www.mhmlaw.com/article/think- locallyglobally.pdf.
306. Id.
307. See id. Compare Medtronic, Inc. v. Daig Corp., 789 F.2d 903, 907-08 (Fed. Cir. 1986) ("As a final effort to prove obviousness of the '501 invention, Daig urges this court to adopt the conclusion of a German tribunal holding the '501 German counterpart patent obvious. This argument is specious. The patent laws of the United States are the laws governing a determination of obviousness/nonobviousness of a United States patent in a federal court."), with Vas-Cath Inc. v. Mahurkar, 745 F. Supp. 517, 524-527 (N.D. 111. 1990) ("Patent litigation is costly, and the Canadian case was hard fought. Why begin from scratch? Conservation of resources is the principal objective of the law of preclusion, and that is a vital objective when costs are high, the more so when similar patents have been secured in many of the industrial countries. Patent litigation should not be allowed to become a war of attrition, in which after the conclusion of one battle parties move on to another and duplicate the engagement⋯. The judgment of the Federal Court of Canada accordingly receives the same weight it would have if it had been rendered by a federal court in the United States."), rev'd on other grounds, 935 F.2d 1555 (Fed. Cir. 1991)
308. See supra text accompanying notes 175-180
309. See supra text accompanying note 176.
310. See supra text accompanying notes 177-178
311. See Hahn & Singer, supra note 144, at 489.
312. See supra text accompanying notes 182-187