Chapter 11 covers issues relating to litigation. Part A first addresses the right of exclusive licensees of patents, copyrights, trademarks and trade secrets to sue to enforce licensed IP against third party infringers, and the rules requiring licensors to be joined in such suits. The chapter next moves to contractual clauses that allocate responsibilty for litigation among the licensor and licensee (Ryan v. Graco). It next addresses contractual provisions relating to domestic and international choice of law and dispute resolution, including required arbitration and mediation (alternate dispute resolution). The shifting of fees and litigation expenses is covered next. The chapter concludes by considering special provisions germane to licenses that are entered into in settlement of litigation.

This chapter discusses the law and policy of monetary awards — including exemplary damages and litigation cost recoveries — that go beyond the compensatory damages to which prevailing parties in patent litigation are normally entitled. Up to treble damages are authorized in the United States for knowing infringement, but attorney fees are awarded only in exceptional cases. The rest of the world tends toward the opposite: Attorney fees are awarded as a matter of course, but punitive damages are generally prohibited as against public policy.This chapter discusses the theory, law, and policy of enhanced damages and attorney fee awards in the United States, Europe, and Asia. While the availability of enhanced damages and fees can bring accused infringers that might otherwise “hold out” to the table, care must also be taken to ensure that it does not discourage productive learning from patents or challenges to overbroad and vague patents. Rather than endorse any single set of doctrinal rules, there is a recommendation for further research into a number of unanswered questions about current and potential future configurations, in order to inform future policymaking.