Patent Infringement

Disclaimer

This website is intended to provide general information on the protection of intellectual property, and not legal advice for any specific situation. Every situation is unique, and no website can possibly consider the unique aspects of every situation, or provide the proper advice for each situation. I therefore encourage you to contact me to evaluate your specific situation and goals, and to determine the best way to enforce your patents or to avoid liability.

Literal Infringement of a Patent

A patent is infringed when the accused product or process includes each and every element listed within any one claim. Even if the accused product or process has additional elements, if every element recited in at least one claim is present, then the patent is infringed unless the claim uses a closed end preamble (which is uncommon). If any element listed in the claim is missing from the accused product or process, then the product does not infringe that claim.

Infringement of Means Plus Function Claims

Claims are sometimes drafted in means plus function language. To infringe a portion of a claim written in means plus function language, the accused device must perform an identical function to the function recited in the claim.

Infringement Under The Doctrine of Equivalents

Even if a claim is not literally infringed, infringement can still be proven under the Doctrine of Equivalents if there are insubstantial differences between the claimed and accused products or processes. Under the Doctrine of Equivalents, claimed elements can be found to be present in the accused product if these elements perform the same function, in the same way, to achieve the same result as the elements listed in the claim.

The scope of equivalents available under the Doctrine of Equivalents can be limited by amendments made to the claims during prosecution of the patent as well as statements and arguments made within the patent or during prosecution of the patent. This is known as prosecution history estoppel.

Design Patent Infringement

The scope of a design patent is limited to the ornamental aspects of the design shown in the drawings. Design patent protection does not extend to any of the functional elements of the product.

Design patents are infringed by a product design which is substantially the same in appearance to the product shown in the drawings of the design patent. If the appearance of the accused product is sufficiently similar to the patented design so that an ordinary observer would be deceived into believing that the accused product is the product depicted in the design patent drawings, then the design patent is infringed.

Acts Which Result In Patent Infringement

A patent is infringed by the unauthorized manufacture, sale, offer for sale, use or importation into the United States of the claimed invention. 35 U.S.C. §271(a).

Actively inducing infringement of a patent results in liability for patent infringement. 35 U.S.C. §271(b).

Providing a component of a patented invention which is especially adapted for use in the invention and not a staple article of commerce suitable for substantial noninfringing use is contributory patent infringement. 35 U.S.C. §271(c). Supplying such a component from within the United States with the intention that it be used to make the patented invention outside the United States is also infringement. 35 U.S.C. §271(f)(2).

Supplying the uncombined components of a patented invention in a manner which actively induces the combination of the components outside the United States in a manner which would infringe the patent if the combination occurred inside the United States is patent infringement. 35 U.S.C. §271(f)(1).

Importing a product into the United States after the product is made by a process which is patented in the United States is patent infringement. 35 U.S.C. §271(g).

Marking Patented Products with the Patent Number

Patented products should be marked with the word "patent" or the abbreviation "pat." followed by the patent number.  The patent information should be placed on the product itself.  If marking the product itself is not practicable, then the packaging of the product should be marked with the patent information.  Alternatively, the product may be marked with the word "patent" or abbreviation "pat." along with an Internet address of a web page displaying the patent number or numbers associated with that product.  The requirement to mark patented products with the patent information is explained in 35 U.S.C. §287(a).

If the product or the packaging for the product has not been marked with the patent information, then monetary damages for patent infringement are limited to infringement which occurs after the defendant received actual notice of the infringement.

If you are a patent owner, marking your products with the patent number is important to enforcing your patent. If licensees make your products under license, the license agreement should require marking products with the patent number, and you should check to be sure that your licensees are doing so.

If you have been accused of patent infringement, then checking to see if the accuser has marked their products with the patent number can potentially improve your settlement position.  If the accuser has failed to mark their products with the patent number, then liability for monetary damages can be avoided by discontinuing the allegedly infringing activities once notice of infringement is received.

Patent Infringement Defenses

If you have been accused of patent infringement, the following potential defenses should be examined.

The claims of the patent should be compared to the allegedly infringing article to determine whether the article includes each and every feature listed within at least one claim, either literally or under the doctrine of equivalents.

The prosecution history of the patent should be examined to determine whether statements made by the applicant during prosecution of the patent affect the manner in which the claims are construed or limit the scope of the doctrine of equivalents.

Although patents are presumed to be valid, an invalidity search can be performed, attempting to locate prior art references which were not considered during prosecution of the patent and which would have affected the patentability of the claims if they had been considered.  If any such references are found, then a finding of invalidity of the affected claims can be sought.  These arguments can be presented in court or during an Inter Parties Review before the Patent Trial and Appeal Board of the US Patent and Trademark Office.

Marking of the patented products with patent information, or the lack of such marking, should be examined.

If you are accused of contributory infringement, then the extent to which the allegedly infringing component is especially adapted for use in the invention or is a staple article of commerce with substantial noninfringing uses should be examined.

Any statements, conduct, or failures to act on the part of the patent owner should be examined to see if such statements or conduct would have reasonably led to a belief that the allegedly infringing actions were acceptable to the patent owner, and whether reasonable reliance on such statements and conduct led to the present situation.  This is known as estoppel.

The above explanation is a simplified explanation of a complex, specialized topic. If you have a patent that you believe is being infringed, or if you have been accused of infringement, please contact me to discuss your specific situation.