Infringement I
February 12, 2015
Brandon Baum
James Pistorino
Netcraft v. eBay (from last week)
Trial judge: “providing a communications link through
equipment of the third party,” means “providing
customers with internet access.”
eBay (PayPal) does not do that so summary judgment of
non-infringement granted.
“providing a communications link through equipment of
the third party”
Appeal to the Federal Circuit
“Communications link” is broader than providing
internet access
But the Summary of the Invention repeatedly describes
“the present invention” as providing secure internet
access.
Therefore, in light of the specification, this term must
mean “providing internet access.”
“providing a communications link through equipment of
the third party”
Stool Patent
1. An apparatus comprising:
a substantially planar surface with a first and a second surface; and
at least three elongate members, the members each having a first end
and a second end,
the first ends connected to the first surface of the planar surface and
oriented with respect to the planar surface such that the elongate
members are substantially perpendicular to the planar surface and
the elongate members are substantially parallel to each other.
Literal Infringement
Literal Infringement
To decide whether alleged infringer’s product/method literally infringes a claim of the patent, you must
compare that product/method with the patent claim and determine whether every requirement of the claim
is included in that product/method. If so, alleged infringer’s product/method literally infringes that claim.
Literal Infringement
Direct Infringement
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. 35 USC § 271(a)
Terminology: Direct Infringement and Literal Infringement
Direct infringement vs. indirect infringement (inducement or contributory infringement)
Literal infringement vs. infringement under the doctrine of equivalents
Literal Infringement
Direct infringement
Direct vs. Indirect Infringers
Direct infringement = defendant itself makes, uses, sells, offers to sell or imports an infringing product or
method.
Indirect infringement = defendant contributes to, or actively induces the direct infringement of the patent
by someone else.
Direct infringement
A fixation device for stabilization of the spine,
comprising:
at least two anchors and an anchor seat,
interface operatively joined to one said bone segment,
securing means which attaches to said anchor seat
interface.
Based on Cross Med. Prods. v. Medtronic, 424 F.3d 1293 (Fed. Cir. 2005)
Literal Infringement
NTP v. RIM
The asserted claims included a system comprising multiple components and methods involving multiple
steps.
Section 271(a) reads “whoever without authority makes, uses, offers to sell, or sells any patented
invention, within the United States … infringes the patent.”
Direct infringement = defendant itself makes, uses, sells, offers to sell or imports an infringing product or
method.
Indirect infringement = defendant contributes to, or actively induces the direct infringement of the patent
by someone else.
Direct infringement does not require knowledge of the patent while indirect infringement does.
Extra credit: does direct infringement require a single infringer? Currently, yes.
But see pre-Federal Circuit cases like Mobil Oil Corp. v. W.R. Grace & Co., 367 F. Supp. 207, 253 (D. Conn. 1973), where the
district court found that defendant liable for infringement of several patent claims related to catalyst preparation where the
defendant’s customers performed several of the claimed steps. See Ralston Purina Co. v. Far-Mar-Co., Inc., 586 F. Supp. 1176,
1226 (D. Kan. 1984) (“It is well settled that a party cannot avoid infringement merely by having a third party practice one or
more of the required steps”); E. I du Pont de Nemours & Co. v. Monsanto Co., 903 F. Supp. 680, 735 (D. Del. 1995), aff’d, 1996
U.S. App. LEXIS 17512 (Fed. Cir. July 17, 1996) (The “cases establish that a party cannot avoid liability for infringement by
having someone else perform one or more of the steps of a patented process for them.”).
Inducement of Infringement
A party induces patent infringement if it causes, urges or encourages another to infringe a claim of the
patent which it is aware of or of which it is willfully blind. Inducement to infringe a claim cannot occur
unintentionally. This is different from direct infringement, which can occur unintentionally.
Willful blindness exists where an alleged inducer believed there was a high probability that its acts, if
taken, would constitute infringement, but the alleged inducer deliberately avoided confirming that belief.
Induced Infringement (req’ts)
1. The acts actually carried out by the third party directly infringed the claim;
2. the party accused of inducement took action intending to cause the infringing acts by the third party;
and
3. The party accused of inducement was aware of the patent and: (i) knew that the acts, if taken, would
constitute infringement of the patent; or (ii) believed there was a high probability that the acts, if taken,
would constitute infringement of the patent but deliberately avoided confirming that belief.
Induced Infringement
E.g., providing instructions, labels, directions, advertising or other sales methods promoting the act of
infringement.
E.g., selling ingredients or components used in infringement, with knowledge and intent that customer
use in infringing manner.
Induced Infringement
Instructions on how to make a stool?
Instructions on how to align the legs of furniture?
A do-it-yourself stool kit?
Contributory Infringement
Contributory infringement occurs when a party with knowledge of the patent supplies a part, or a
component, to another for use in a product, machine, or process that infringes a patent claim. Contributory
infringement arises only if one who received the component actually infringes a patent claim.
Contributory Infringement (req’ts)
1. The party accused of contributory infringement sells, offer to sell, or imports within the United States a
component for use in a product or process that infringes a claim of the patent;
2. The component is a significant part of at least one claim of the patent, and the party accused of
contributory infringement knew that the component was especially made to be used in a manner which
infringed one or more of the claims of the patent and that such use would cause infringement; and
3. The component does not have a significant non-infringing use.
Contributory Infringement
Custom table legs?
Nails?
Nails with instructions on how to avoid splitting the leg?
Legs with instructions that say “NOT FOR USE WITH TABLES”?
Burden of proof
Law or fact
What must be proved
Burden of Proof
“To prove infringement of any claim, the patent holder must persuade you that it is more likely than not
that the defendant has infringed that claim.”
N.D. Cal. Model Patent Jury Instruction 3.1
How much infringement is enough?
U.S. 4,952,046: Claim 1
“a sharp cut-on orange dye incorporated into said material that allows the lens to transmit at least 90% of
the visible sunlight with wavelengths longer than 636 nm and block more than 99% of all sunlight with
wavelengths shorter than 515 nm.”
“If a claim reads merely on a part of an accused device, that is enough for infringement.” SunTiger, Inc. v.
Scientific Research Funding Group
Dippin Dots
Method patent includes a step calling for “beads”
Court construes “beads” to mean “smooth round droplets” and excluding “irregular or odd shaped
particles such as popcorn.”
In other words, patent limited to a process that produces “beads and only beads”
Accused product occasionally produces smooth round spheres but also produces irregular shaped blobs.
But claim is a “comprising” claim
Held: patent properly limited to “beads and only beads.”
“Comprising is not a weasel word with which to abrogate claim limitations.”
Where claim term (“beads”) was narrowed during prosecution, claim scope that excludes process that
produces non-beads is correct.
Commil v. Cisco
Trial court instructed the jury that it could find inducement if “Cisco actually intended to cause the acts
that constitute direct infringement and that Cisco knew or should have known that its actions would
induce actual infringement.”
Supreme Court in Global-Tech held that negligence not enough.
Global-Tech held that “willful blindness” could substitute for knowledge
“Therefore, to the extent our prior case law allowed the finding of induced infringement based on
recklessness or negligence, such case law is inconsistent with Global-Tech and no longer good law.”
Are they saying that negligence alone is not enough or that neither recklessness nor negligence is
enough?
Delete the words “recklessness or” and the opinion makes sense.
Cisco also proffered evidence that it believed in good-faith that the patent was invalid.
Held: A good-faith belief held by the accused infringer that 1) there is no infringement, or 2) the patent is
invalid is relevant and admissible to negate the intent required for induced infringement.
Commil v. Cisco
Means plus function – 112(6)
“An element in a claim for a combination may be expressed as a means or step for performing a specified
function without the recital of structure, material, or acts in support thereof, and such claim shall be
construed to cover the corresponding structure, material or acts described in the specification and
equivalents thereof.” 35 USC §112(6)
Literal infringement under 112(6)
In order to prove that a structure in the accused product is equivalent to the structure in the patent, the
Plaintiff must show that a person of ordinary skill in the field would have considered that the differences
between the structure described in the patent and the structure in the accused product are not substantial.
The patent holder must also show that the structure was available on the date the patent was granted.
[N.D. Cal. Model Instruction 3.5]
“Equivalents thereof”
Don’t confuse “doctrine of equivalents” with “means plus function” or “112(6)” equivalents. Warner
Jenkinson v. Hilton Davis.
More next week … read Festo
112(6) -- means plus function (partial review)
E.g.: One way to claim the table is to recite the tabletop, four legs and nails securing the legs to the
tabletop.
Under 112(6), the claim can recite the tabletop and the legs, but, rather than recite “nails,” recite a
“fastening means for securing said legs to the tabletop”.
What are “fastening means”?
The specification states “The legs may be securely attached to the table top using a common fastening
device such as a nail.”
Means plus function limitations
Is it a means plus function element?
Does it recite the word “means”?
If yes, does it nevertheless provide structure in the claim limitation that would perform the function?
E.g., “nail means” or “screw means.”
If no, is there inadequate structure recited such that it should be treated as a 112(6) limitation anyway?
E.g., a fastener. A circuit.
A verb masquerading as a noun.
Means plus function limitations
Identify function (usually a verb)
Identify corresponding structure
I.e., there must be a link in the specification between the recited function (e.g., “fastening”) and the
structure disclosed in the specification. Can’t just borrow from description of another aspect of the
invention and say “see, there’s a nail mentioned in this passage.”
Means plus function limitations
Once you’ve identified the means and the function, is the structure in the accused device the same as the
one “described in the specification” or an “equivalent[] thereof”?
To be “equivalent thereof” it must perform the identical function recited in the claim in substantially
same way to achieve substantially same result.
If it does, it literally meets the limitation.
Means plus function limitations
One special rule to remember – joint inventorship in the 112(6) context.
The contributor of any of the disclosed “means” of a means-plus-function element is a joint inventor,
unless one asserting sole inventorship can prove otherwise. Ethicon vs. United States Surgical (1998).
Joint inventors of even a single claim can independently license the entire patent.
Infringement: Gathering your proof
Direct proof from the accused infringer
Product documentation
Look for words that match the claim terms
Admissions in discovery
Q: Are your tables fastened with metal nails?
A: Yes.
Marketing materials
“Our Model XL100 table has a smoothly planed surface for your dining needs.”
Internal emails/memos/documents
Infringement: Gathering your proof
Indirect proof from the accused infringer
No independent development
No R&D. No development budget.
Copying
Product group has purchased a table to reverse engineer it.
Game-playing and obfuscation
Q: Are your tables fastened with metal nails?
A: Define ‘nail’ for me please.
Infringement: Gathering proof
Direct proof by the patentee
Employees
Expert testimony
Direct proof from third parties
Treating defendant’s products as equivalent in quality or features to patentee’s
Price competition
Infringement: Presenting your proof
Ask witnesses to work with and display devices, models, or mock-ups of infringing instrumentality
Intersperse infringer’s own documents, brochures, sales videos to demonstrate each element
Bolster each element with excerpts of testimony of defendant’s witnesses
Finish with expert to confirm infringement
Infringement: Presenting your proof
Infringement: Presenting your proof
Infringement: Presenting your proof