Getting Started Quiz

PDF page 79: the clerks’ office of the selected federal court and served in due course on the defendant(s). The defendant(s) must then decide whether to move to dismiss or transfer the case to a different venue, or file an

PDF page 79: answer (a response to the infringement claim). The defendant(s) can also file a counterclaim, asserting

PDF page 79: answer (a response to the infringement claim). The defendant(s) can also file a counterclaim, asserting

PDF page 79: claims back against the plaintiff. Motions to dismiss may be based on any number of issues—improper jurisdiction (e.g., the court does not have power over the defendant because it does not reside or do business within the geographic jurisdiction of that court), improper venue (e.g., the defendant does not reside or did

PDF page 79: not commit any act of infringement in the jurisdiction of the court), failure to state a proper claim, etc. Such a motion must be accompanied by a legal brief explaining the reasons for the motion, to which the plaintiff can file an opposing brief. The defendant who filed the motion usually has an opportunity to file a reply brief. After the briefing is completed, which can take one to two months, the court will decide the motion with an order, either granting or denying it.

PDF page 79: not commit any act of infringement in the jurisdiction of the court), failure to state a proper claim, etc. Such a motion must be accompanied by a legal brief explaining the reasons for the motion, to which the plaintiff can file an opposing brief. The defendant who filed the motion usually has an opportunity to file a reply brief. After the briefing is completed, which can take one to two months, the court will decide the motion with an order, either granting or denying it.

PDF page 80: Motions to transfer can be filed by a defendant who believes another court would be a “better” place to

PDF page 80: proceed with the case. The factors considered by the court as to whether it or another court is “better” include which court is most convenient in terms of the location of necessary witnesses and/or documents, and whether another court already has experience with the subject matter because a related case is pending or was handled there and it can handle the new case more efficiently. Such motions usually fail, but can delay the progress of the case by several months, sometimes longer, while the court considers how to rule on the motion. The parties must present detailed arguments about why the case should be moved, or not, and often the court will order oral argument during which each party can present its position and answer questions the court may have.

PDF page 80: proceed with the case. The factors considered by the court as to whether it or another court is “better” include which court is most convenient in terms of the location of necessary witnesses and/or documents, and whether another court already has experience with the subject matter because a related case is pending or was handled there and it can handle the new case more efficiently. Such motions usually fail, but can delay the progress of the case by several months, sometimes longer, while the court considers how to rule on the motion. The parties must present detailed arguments about why the case should be moved, or not, and often the court will order oral argument during which each party can present its position and answer questions the court may have.

PDF page 80: If no motions are filed by the defendant(s), or if they are denied, the defendant(s) must file an answer, which

PDF page 80: responds to the allegations in the complaint and sets forth any defenses the defendant(s) may have. Such defenses can include that the patent is not infringed, that the patent is invalid, that the defendant has a license, that the plaintiff waited too long to file suit (laches) or misled the defendant into believing he or she would not complain about the alleged infringement (estoppel), that the alleged infringer is entitled to prior

PDF page 80: plaintiff. If such counterclaims are related to the subject matter of the initial case, they may be tried at the same time. If not, they may be severed and tried separately, either before or after the initial case.