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Under US law — specifically, under 35 USC § 271 — it is unlawful to infringe a patent during its term. A patent is granted by the US Patent and Trademark Office and, once granted, it entitles the owner of the patent to the exclusive right to manufacture, sell, distribute, and/or license the patented invention. Violating this exclusive right is patent infringement. More specifically, under the provisions of 35 USC § 271, a patent can be infringed as follows:
If the owner of a patent believes that their patent is being infringed, a civil lawsuit can be brought in federal court against the alleged infringer. In general, to prove infringement, a patent owner must show three legal elements:
Element number three is often the most difficult to prove, particularly if the patented invention is complex. The reason is that the patent owner must prove that the allegedly infringing invention incorporates or contains all the distinguishing aspects of the claim made in the patent. As the courts phrase it, a patentee must demonstrate that an accused device contains an element corresponding to each and every limitation of an asserted claim.
To make a decision, courts conduct a detailed analysis of the claims and elements contained in the patent and compare them to the claims and elements in the accused invention. As an example, consider a simple wooden pencil with this purposely simplified patent claim description:
Now, suppose a competitor begins selling a similar device, but the competing device is square, rather than round. The competitor markets its pencil as an improvement since the pencil will not roll away while being used.
Assume that the Round Pencil Company sues the Square Pencil Company for patent infringement. In evaluating whether the square pencil is infringing, the court will conduct a “claims analysis.” The court will closely examine the patent application, any and all claim descriptions, drawings, and the prosecution history at the Patent Office. In our hypothetical, the court will note that the claim description clearly states that the wooden tube is “round” and will also note that the patent file contains drawings depicting only round wooden tubes. In the final analysis, whether the square pencil infringes on the patent for the round pencil is a close question with solid legal arguments to be made in each direction.
For an easier analysis, let’s imagine a different hypothetical. Rather than a square wooden pencil, a competitor begins selling a mechanical pencil with this overly-simplified claim description:
As can be seen, the elements of this invention are not comparable to the claim elements of the patent for the wooden pencil. There would be no infringement under 35 USC § 271.
For more information or if you have an invention that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.
Under 35 U.S.C. § 271(a), direct patent infringement is a strict liability offense—the infringer’s intent is irrelevant. A party who makes, uses, offers to sell, or sells a patented invention within the United States (or imports it into the U.S.) during the patent term infringes the patent regardless of whether they knew the patent existed. The Supreme Court confirmed this in Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011). Because intent is not an element of direct infringement, patent holders can assert claims against manufacturers, retailers, end users, and anyone in the distribution chain.
Induced infringement under § 271(b) requires proof that: (1) a third party directly infringed the patent; (2) the defendant actively induced that infringement; and (3) the defendant knew of the patent and knew that the induced acts constituted infringement. Contributory infringement under § 271(c) imposes liability on a party who sells a component of a patented machine knowing it is especially made for use in an infringement and has no substantial non-infringing use. The “no substantial non-infringing use” element is crucial: a component with multiple uses cannot support contributory infringement liability merely because some customers infringe with it.
No infringement analysis is possible without first construing the patent claims. Courts apply the framework from Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), instructing that claim terms are given their ordinary and customary meaning as understood by a person of ordinary skill in the art. Intrinsic evidence—the claims, specification, and prosecution history—takes priority over extrinsic evidence such as expert testimony. Claim construction is decided by the judge as a matter of law under Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).
Even if an accused product does not literally satisfy every element of a patent claim, it may still infringe under the doctrine of equivalents. Established in Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605 (1950), and refined in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), this doctrine holds that an element is equivalent if it performs substantially the same function, in substantially the same way, to achieve substantially the same result.
The doctrine is subject to prosecution history estoppel: patentees cannot use it to recapture subject matter they surrendered during prosecution to overcome prior art rejections. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), created a rebuttable presumption that any narrowing amendment surrenders equivalent territory.
Successful patent infringement plaintiffs may seek the following remedies under 35 U.S.C. §§ 281–285:
A party accused of patent infringement frequently challenges the validity of the asserted patent through Inter Partes Review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). IPR proceedings under 35 U.S.C. § 311 allow third parties to petition PTAB to review the patentability of issued claims based on prior art patents and publications. IPR has become a critical defensive tool: institution rates and claim cancellation rates are historically high, and many defendants use IPR petitions to apply leverage in litigation settlement negotiations.
Contact the patent lawyers at Revision Legal at 231-714-0100 to discuss your patent infringement matter.
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