Intellectual Property
Patent – Infringement
Infringement
1. Literal Infringement
2. The Doctrine of Equivalents
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35 U.S.C. § 271
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“(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.”
Literal Infringement
Basic rules of literal infringement
1. All elements of the claim must be
(identically) present in the accused device;
2. Additional elements in the accused device
are (generally) not relevant to
infringement
Literal Infringement
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For next slide, consider:
What is the key claim element?
What does the accused device have instead?
Why does the court find no infringement as
a matter of law?
• How might Plaintiff have drafted the claim
to cover the Supersoaker?
Larami v. Amron, (ED Pa 1993)
SuperSoaker 200
‘129 Patent
Claim 1: “[a] toy comprising an elongated housing [case] having
a chamber therein for a liquid [tank], a pump including a piston
having an exposed rod [piston rod] … facilitating manual
operation for building up an appreciable amount of pressure
in said chamber for ejecting a stream of liquid therefrom …”
Doctrine of Equivalents
Test:
– Substantially same function, way, result
– Insubstantial differences
• Allows elements in an accused device to be
“substantially equivalent” and still be
‘present’ for purposes of infringement
Doctrine of Equivalents
• Warner-Jenkinson v Hilton Davis (1997)
- key limitation: “a pH of approximately 6.0 to
9.0
- accused process: pH of 5.0
• The court reaffirms the DOE, though it notes an
important limit on the doctrine – prosecution
history estoppel
Festo v. Shoketsu (2002)
• Two issues
– What kinds of amendments trigger estoppel?
– Does estoppel apply to all equivalents based on
the amendment?
Festo (2002)
• The Federal Circuit rule: amendment = no
equivalents for that element
• The Supreme Court: “presumption” that an
amendment = no equivalents for that
element. Exceptions:
– Only give up protection for those things that
were foreseeable by those skilled in art
– Rationale for the amendment is unrelated to the
equivalent in question
Contributory Infringement
• Elements
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(1) Sale of a product
(2) Material part of patented invention/process
(3) Knowledge
(4) Specially made or adapted for infr. use
(5) Not a staple article of commerce
(6) No substantial non-infringing use
Defenses
• Defenses to infringement action
– Experimental Use
– Inequitable Conduct (Fraud): Such conduct
may consist of omissions or material
misrepresentations during the patent application
process.
– Patent Misuse: Patent owner has abused his
position to exploit a patent improperly.
Patent Misuse
• Types of activity implicating patent misuse
– Extension beyond patent term; may try to
require licensee to pay license fees after
expiration of patent (impermissible)
– Tying or conditioning the sale of a patented
item to the sale of another staple article
(impermissible)
– Tying to non-staple article; i.e. article has no
commercial use except in connection with the
patented invention or process (permissible)
Patent Law - Remedies
• Injunctions
– Preliminary
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Reasonable probability of success
Irreparable harm if no injunction (presumed)
Possibility of harm to third parties
Public interest
– Permanent
Patent Law - Remedies
• Damages
– Lost Profits
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Demand for patented product
Absence of noninfringing substitutes
Capability to meet demand
Profits that would have been made
– Reasonable Royalty
International Patent Law
• Governed by each country’s domestic patent
laws
• Major differences
– Most have first to file systems
– No one-year grace period after public use, ...
Treaties
• Paris Convention
– Once file in a member country, get priority date
– Have one year to file in other country
– Shielded from consequences of publication, etc.
• Patent Cooperation Treaty
– File separate document with domestic agency
– Gives additional 20 months to file
– Up to 30 months if file earlier