General issues related to basic patent infringement

 

The legal rights that exist with an issued or published patent application are to exclude others from making, using, selling, offering to sell, or importing the infringing device in the territory (country) that the patent is valid in.  Pay close attention to the words above, the patentee does not have the right to make, use, sell, offer to sell, or import their own invention, only the right to exclude others from doing so.  The effect of this to prevent the patentee from making their own invention, if say the government has regulations against selling the patented device, or another patent’s claims dominate the invention.  Another patent’s claims could dominate the invention if for instance your invention was an improvement of an existing patented device, wherein your patented device would encompass or “read on” the other patents claims.  Similarly, the other patent holder may not be able to make your improvement as they would “read on” your patents claims. 

 

This brings up an important distinction in patent law, the U.S. Patent Office (USPTO) is not concerned with infringement, as the tests for patentability, primarily being novelty and non-obviousness are not the same legal standard as exists for infringement.  Even though your invention was deemed novel and not obvious over a particular patent, that patent’s claims may still read on your patented invention.   

 

Note that a pending patent application prior to either issue or publication is not eligible for bringing a patent infringement suit.   A patent’s exclusionary rights are in the claims with supporting interpretation in the patent description, its file history, and outside experts, in that priority.   

 

Also, the patent’s exclusionary rights only exist for the patent term (currently 20 years from the file date) assuming the three maintenance fees are timely paid, after which the technology is free for anyone to use. 

 

Breadth of the infringement net

The make, use, sell, offer to sell, and import exclusionary rights are all independent, wherein an infringer only has to do one of these things to be infringing.  Thus, even if you only had a United States (US) patent, but your infringer is manufacturing knock offs in Asia and trying to sell in the US they have committed infringement.   The knock off manufacturer can only escape infringement if they perform all of their activities outside of the US, i.e. make, use, sell, and offer to sell.   Note that the US also includes US territories and possessions such as Puerto Rico.  Also, the U.S. government itself can be liable for infringement. 

 

Aiding in infringement, is another type of infringement which is termed either contributory infringement or inducement of infringement.  Contributory infringement requires that the individual have a knowing intent to infringe by knowing of the patent and to knowingly engage in activities that support a portion of the infringing device, such as producing a part that goes into an infringing assembly.  An exception would be if the part were considered a commodity or a staple article of commerce i.e. a very commonly used item that could be used in many types of different assembled parts.  Thus, as a corollary to this if the part is specialized for the use in a particular assembly then the case for contributory infringement is stronger. Inducement of infringement also requires that the individual have a knowing intent to infringe by knowing of the patent and to knowingly engage in activities that support a portion of the infringing device, such as inducing others to infringe by advertising or sending operating instructions related to the infringing device, etc.    

  

Sale of the patented product

Once the patented product is sold the patent owners exclusionary rights are terminated, this is termed the “first sale exhaustion” in other words the purchaser may thereafter use, repair and resell the product without fear of infringement.  

 

Interpretation of patent claim language

There are two types of infringement of a patent claim, one is “literal” infringement and the other is the “doctrine of equivalents”.  Literal infringement requires looking to the claims elements, which are the components that make up the invention in its minimal functional form.  If the infringing device literally infringes it means that the patent claim “reads on” the infringing device, if the infringing device has every element or limitation of the claim.  Note that omissions defeat infringement i.e. if the infringing device has fewer elements that the claim there is no infringement, however, if the infringing device has additional elements to the claim and also has the claim elements then literal infringement exists.   

 

The doctrine of equivalents allows the claim to be interpreted somewhat outside of its literal boundaries and evolved from courts wanting to find infringement for the sake of justice and originally stemmed from the mid 1800’s when patents did not have claims and only had a description of the invention.  The doctrine of equivalents is defined as applying if the infringing device performs substantially the same function in substantially the same way to obtain the same result as the claimed invention.  The differences between the claimed invention and the infringing device must be insubstantial in nature and are compared on an element-by-element basis.  The doctrine of equivalents has a number of limitations to prevent the patentee from expanding their claim coverage excessively.  The insubstantial differences cannot encompass the prior art such that the patent should not of been issued in the first place by the USPTO.  

 

Another limitation is prosecution history estoppel, wherein if the patentee amended claims to narrow their coverage to gain allowance of the patent during the prosecution phase of the application, the patentee is precluded from applying the doctrine of equivalents for that particular amended claim element, in going with the logic, you can’t get back what you gave up.    

 

Prosecution history estoppel is rebuttable by the patentee if the insubstantial difference was not foreseeable at the time of claim amendment, or had a tangential relation to the insubstantial difference, or some other reason that the patentee could not have earlier claimed the insubstantial difference.  

 

Note, however, that if the insubstantial difference in question was amended out of the claim to obtain the patent in the prosecution history, then the insubstantial difference would have been foreseeable and prosecution history would apply.  

 

Infringer defenses against patent infringement

An infringer can attack the validity of the patent that is asserted against the infringer through finding previously unknown prior art to show that the patent should not of been issued in the first place, either through novelty, obviousness, or a statutory bar.  Additionally, any lack of candor on the part of the patentee during the prosecution phase or otherwise in front of the USPTO could be cause for invalidity of the patent, this would cover non disclosure of prior art, deceptions as to Inventorship, or misrepresentations as to enablement of the description for the make and use requirement of the patent.   

 

Other defenses include, non-enforcement of patent rights by the patentee over time i.e. sleeping on one’s rights or latches, or misuse of the patent by the patentee i.e. antitrust violations.  Note that, there is no statute of limitations in bringing a patent infringement suit, however, damage recovery is limited to the prior 6 years before filing the suit, resulting in an implied 6 year statute of limitations for damages, with injunctions available in any case.     

 

Another defense can be the experimental use exception, there is no infringement if the patented device is used solely for research or experimentation, however, the infringer cannot adapt this experimentation towards his or her own patent.

 

The infringer can always claim that there was permission to infringe or that an implied license was granted through sale of the machine from the patent owner.  

 

Damages available against the infringer

Permanent injunctions i.e. forcing the infringer to stop making the product, money damages from lost profits, imputing a reasonable royalty rate, and in cases of intentional or willful infringement the possibility of treble damages and attorneys fees.   

 

One caveat on lost profits damages, the court will only award this if the patent owner was in fact also manufacturing, using, selling, or importing the invention themselves (or an exclusive licensee).  This corresponds to the “but for” test, i.e. but for the infringement would the patent owner have made greater sales.  What this means is that if the patent owner was manufacturing in a limited quantity and the infringer was manufacturing in a much greater quantity, the amount of lost profits awarded would be limited by the patent owners capacity to support a greater manufacturing quantity.    

 

Thus, for a patent owner who does not manufacture, or manufactures in a limited manor, a reasonable royalty rate will be the damages awarded.  However, willful infringement may increase the damage award as mentioned above. 

 

Failure to mark the patented device properly i.e. no patent number can cause an infringer to claim innocence, however, the only effect is to reduce damages in that damages do not accrue until the infringer has knowledge of the infringement. 

 

Note that, this marking requirement applies to products only; a patented machine or process has no duty to mark.