Bifurcation of Validity and Infringement Determinations

Bifurcation of Validity and Infringement Determinations

Janice Kwon and Mark Vallone

A large majority of jurisdictions have adopted a “unified” (or “combined”) patent litigation system, wherein the same court adjudicates the validity and infringement of a patent. For example, prior to the implementation of the America Invents Act (“AIA”), in the United States, the same court would adjudicate both an infringement claim and an invalidity defense thereto. However, a handful of other jurisdictions, such as Germany and China, have adopted a bifurcated system wherein one court supported by technical experts adjudicates patent validity and a separate court or agency adjudicates patent infringement. Infringement proceedings are quickly completed under the assumption that the patent is valid, and the judgment can be enforced before the validity of the patent is determined. Other countries, such as Belgium, Japan, and now the United States, are de facto or “optional” bifurcated systems—while the patent litigation system on its face is a “unified” system, wherein the same court adjudicating infringement can also review validity issues, patent infringement proceedings may be suspended until parallel validity proceedings in the Patent Office are completed.

Courts in both bifurcated and unified systems have been effectively adjudicating infringement and validity issues for decades. Despite the success in both systems, bifurcation has been hotly debated, particularly in Europe with the implementation of the new Unitary European Patent System, and now in the United States with the implementation of Inter Partes Review under the AIA. Critics often claim that bifurcated systems result in an overtly patentee friendly environment and create uncertainty in patent litigation because infringement judgments can be enforced provisionally before validity determinations are completed. Proponents, on the other hand, laud the advantages of having specialized courts and the quick adjudication of infringement cases.

Part I of this article provides an overview of the advantages and disadvantages of current bifurcated systems, focusing particularly on Germany and China. Part II then recommends principles on which bifurcated systems should be based, taking those advantages and disadvantages into consideration. Part III concludes with some final thoughts on the implications of the principles outlined in Part II and adopting bifurcated systems.

98 J. Pat. & Trademark Off. Soc’y 956(2016)

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