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Patents: Infringement

    Before discussing infringement, we should first discuss what it is that the patent monopoly enables in the form of the inventor's intellectual property rights. The monopoly is exclusionary. A patent owner has the right to exclude others from using, making and selling the invention. The inventor is not required to proactively make, use or sell the invention in order to obtain these rights. Furthermore, a patent gives the inventor the right to sue not only those that “steal” his invention, but those who reverse engineer it and even those who develop the same invention independently. This protection is quite broad. But what is it that legally defines the invention and therefore defines that which is infringed upon? That has to do with what is claimed in the patent. It is the "claims" that define the "metes and bounds" of the property right. It is the claims where a court's inquiry focuses during an infringement action.

    Claim Construction & Interpretation

    One of the primary reasons that patents are expensive to obtain is that patent drafting (especially drafting claims) is complex, tedious and exacting work. All attorneys work with language on a daily basis, but the use of language in drafting patents is arguably an order of magnitude more challenging technically. Not only must patent attorneys have a solid working knowledge (if not in depth knowledge) of the various sciences that they draft patents in, but they must also have a technical command of the English language (or any other language they happen to draft in) that approaches mastery. Here minor variations in phrases and meaning often are the difference between winning and losing an infringement action. Words always matter with respect to legal drafting, here they tend matter even more. The challenge for the claims drafter is to claim as broadly as possible while still representing the specifics of the invention. That is, a inventor cannot claim all forms of communication if all they invented was the telegraph. It is simply too broad a claim.

    Patent attorneys draft the claims but the courts are the ones that ultimately interpret them. Claim interpretation is a matter of law. This is not something that is turned over to the jury to decide. It is too technical an exercise for juries. In fact, many judges probably find it daunting. This has several implications, one of which is that the Federal Circuit (the special appeals court that hears appeals in patent litigation) will review a district court's findings de novo. De novo is simply legalese for "all over again."  You may win at the district court level but the Federal Circuit is going to take a second bite at the apple, always. This also means that where a substantial amount of money is at stake (a near certainty in patent litigation) there is a very high probability (again near certainty) that an appeal will follow, unless of course the parties settle. In short, patent litigation is (for many reasons appeals being one) an expensive proposition.

    Infringement & Other Causes of Action

    It should be clear, at least from a big picture perspective, that in an infringement action, the plaintiff will allege that the defendant's action (making, selling or using) intrudes upon the scope of what was claimed. If, through the analysis briefly described above, a court finds that this is true, then the plaintiff prevails (also see The Doctrine of Equivalents discussed below). The defendant will assert a number of standard defenses (see Defenses) in counter argument. Section 271 (excerpted below) provides the statutory grounds for an infringement action. Since there are no state or common law patent actions, this section defines how liability is triggered.

    § 271. Infringement of patent

    (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

    (b) Whoever actively induces infringement of a patent shall be liable as an infringer.

    (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

    Section 271 covers both infringement and contributory infringement. The right to bring an infringement action runs from the date the patent is issued to the end of the patent term (i.e. twenty years). Anyone familiar with technology life cycles, which now certainly includes nearly everyone online, is aware of the power inherent in such a monopoly right. Twenty years in a technology life cycle is an eternity. The patent holder will essentially own, or otherwise be compensated for (e.g. through licensing), any market into which the invention is sold. That is, given that they possess the financial resources necessary to enforce it.

    In addition to an infringement action, there are other actions that may be brought, depending on the specific facts of the case. These include: (1) an interference action, in which a party may assert that they in fact were the "first to invent" (a U.S. specific allegation because the rest of the world uses a "first to file" system). (2) an action for a declaratory judgment that the patent issued is not valid (usually a preemptive strike by a party in fear of suit); and (3) an action with the International Trade Commission to prevent infringing items from being imported. There are also some specialized procedures that may be brought with the USPTO (e.g. a reexamination procedure) that are not law suits per se, but may have legal consequences in subsequent litigation.

    The Doctrine of Equivalents

    To make things more complex "literal" infringement of the claims is not required in order for infringement liability to trigger. The judicially created doctrine of equivalents prevents inventors from making minor changes to a prior invention in order to avoid the literal language of the claims. A leading case here is Graver Tank & Mfg. v. Linde Air Prods (USSC 1950). The Court in Graver stated the issue as follows:

    In determining whether an accused device or composition infringes a valid patent, resort must be had in the first instance to the words of the claim. If accused matter falls clearly within the claim, infringement is made out and that is the end of it.

    But courts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for - indeed encourage - the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law. One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication is a dull and very rare type of infringement. To prohibit no other would place the inventor at the mercy of verbalism and would be subordinating substance to form. It would deprive him of the benefit of his invention and would foster concealment rather than disclosure of inventions, which is one of the primary purposes of the patent system

    Like so much in patent law, this doctrine is complex to apply, and has led to much confusion and controversy. It exemplifies (yet again) why patent law, much more so than other areas of intellectual property, is the domain of legal specialists.

    Comments: Reality check. Yes patents are expensive to obtain and to enforce, that much should be painfully clear. But it should also be clear that patents are economically powerful. Despite all the bad press, patents remain an intellectual property reality especially where innovation is rapidly occurring as is the case online. We help clients rationalize this maze with respect to software and business method patents. In most cases a patent strategy will not be recommended for all the aforementioned reasons, but that does not imply that they are strategically always out of the question either.

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