|•||Is the patent valid and enforceable?|
|•||Are the claims infringed?|
|•||If the claims are infringed, what relief should be awarded?|
The patent owner can prevail only if the patent is valid and infringed. On occasion, the defendant2 will concede that the patent is valid and challenge only the charge of infringement, or it will concede infringement and argue invalidity, but it is more common for the defendant to make war on both fronts. A patent suit may also involve other related claims (e.g., breach of contract, unfair competition, or antitrust claims) if they arise from the same factual situation.
1 A suit for patent infringement cannot be filed in a state court, because the federal courts have
exclusive jurisdiction. See 28 U.S.C. § 1338(a). If the infringing goods are being imported, it
is possible to initiate a proceeding in the International Trade Commission in lieu of, or in
addition to, a suit in a district court. See Section 11.9. Infringement suits against the U.S. gov-
ernment must be brought in the Court of Claims. See 28 U.S.C. § 1498.
2 It is convenient to use the term defendant interchangeably with accused infringer, but in a de-
claratory judgment action (see Section 11.2) the accused infringer may technically be the