Wegner on Global Patent Forum Shopping

According to a new paper by Hall Wegner, vast disparities exist in practical terms for patent infringement determinations in the United States, Germany, the United Kingdom and Japan:

Patent scope may be broadened far beyond the literal wording of claims in Germany whereas the United Kingdom has no room for expansion of scope under a doctrine of equivalents; both the United States and Japan lead the world in doctrines to narrow the effective scope of protection by exclusion from infringement of embodiments within the ordinary meaning of patent claim terms. Prosecution history usage for claim construction is virtually nonexistent in the United Kingdom and Germany.

Strategic advantages – and disadvantages – also arise from language and cultural factors:

The three foreign fora all deny a jury trial, while all three have highly specialized patent tribunals that provide a predictable brand of patent jurisprudence. Reminiscent of the American patent landscape before Blonder-Tongue where the same patent could be held invalid west of the Mississippi in the Eighth Circuit and then held valid just across the river in Illinois within the Seventh Circuit, today there are vast disparities in the rigors of applying patent validity standards amongst the four fora. Adverse rulings or inconsistent pleadings in foreign fora are coming back to bite the patentee in parallel American litigation.

He also points out that many patent attorneys fail to appreciate that U.S. trial courts have the discretion to hear a parallel foreign patent infringement suit concurrently with a domestic suit. In his view, "it is perhaps time to rethink what one scholar has deemed the 'parochial attitude' of Mars Inc. v. Kabushiki-Kaisha Nippon Conlux," 24 F.3d 1368, 1375 (Fed. Cir. 1994) and consider the intoduction a "cross-border" Blonder-Tongue estoppel.