This document discusses intellectual property rights relating to patents, including patent infringement. It covers the following key points:
- Patents confer the right to exclude others from using the patented invention, but do not allow the patent owner to automatically exploit the invention.
- There are three types of patent infringement: direct, contributory, and induced. Determining infringement involves a two-step test of claim construction and comparing the accused product to the claims.
- Defenses against infringement include proving a patent is invalid. Potential remedies for infringement include injunctions, damages, and in some cases enhanced damages for willful infringement.
2. 2
Rights of Patent Ownership
Patents confer the right to exclude others from making, using,
selling, and offering for sale within the United States, and
importing into the United States, any patented invention
during the term of the patent
Patents do not affirmatively allow their owners to exploit the
invention in the marketplace
A patent can only be enforced in the country in which it is
granted.
3. 3
What is patent infringement?
Direct infringement - making, using, selling, or offering for
sale a patented invention within the United States, or
importing into the United States, any patented invention
during the term of the patent
Contributory infringement - supplying any material component
of a patented invention with knowledge that the component is
especially adapted for infringing use
Induced infringement - supplying individual components of a
patented invention in such a manner to actively induce the
combination of such components for infringing use
4. 4
Determining Infringement
Two-step Test
1. Claim construction - determine the meanings
of the claim terms
2. Compare the accused device/process to the
properly construed claims
Literal infringement
Doctrine of Equivalents
5. 5
Claim Construction
Claim interpretation is a matter of law
The meaning of a claim term is determined
according to a person of ordinary skill in the art on
the patent’s filing date
Interpret claim terms based on intrinsic evidece,
e.g., the claim terms, written description, and file
history, and certain extrinsic evidence
6. 6
Doctrine of Equivalents
Infringement under the doctrine of equivalents
requires that any difference between the claims and
the accused product/process be insubstantial
Courts may use the “function-way-result-test” for
assessing equivalents: whether the accused
product/process: (i) performs substantially the same
function (ii) operating in substantially the same way
(iii) to achieve substantially the same result
7. 7
Prosecution History Estoppel
Limits the doctrine of equivalents
Subject matter surrendered during prosecution
cannot be recaptured under the doctrine of
equivalents
Includes amendment-based and argument-based
estoppel
8. 8
Defenses
Prove that the patent is invalid
Based on any of the conditions for patentability
Presumption of validity
Claims must be construed the same way for
infringement as for validity determinations
That which infringes if later, anticipates if earlier
9. 9
Damages and Other Remedies
Settlement - cease and desist letters
Declaratory judgment
Injunctive relief
Court order preventing use or sale of infringing products
Possible criminal penalties for violating court order
Money damages
Lost profits
Reasonable royalty
Enhanced damages
10. 10
Willful Infringement
Infringement with knowledge of another’s existing
patent rights
Patent owner must show by clear and convincing
evidence that an accused infringer acted with
“objective recklessness”
Enhanced damages
Up to three times actual damages
Attorney fees
11. 11
How do you avoid willful infringement?
Duty to act reasonably with knowledge of another’s
existing patent rights
Form a good-faith belief based upon due inquiry
that either (i) no infringement or (ii) the patent is
invalid
Opinions from counsel
12. 12
Opinions from Counsel
Most important factor in deciding whether
infringement is willful
In order to provide a shield against charges of
willfulness, an exculpatory opinion of counsel must:
Indicate a likelihood of non-liability, and be:
Thorough;
Competent; and
Objective
13. 13
Product Clearance
Identify and analyze relevant patents
Conduct clearance search
Based on competitors and key word searches
Develop alternatives if necessary
Obtain license if necessary
Take steps to invalidate patent if necessary
14. 14
Reporting Potential Problems
If you know of relevant patents, report to:
Director or manager
Attorney
How do you report potential problems?