Patent Infringement

The patent application process is too lengthy, costly, and complex to not protect your patent after issuance. A patent is a legal document issued by the United States Patent and Trademark Office (USPTO) that grants the applicant/inventor exclusive rights to their innovation. These exclusive rights allow inventors to control the making, selling, and using of their invention and must be actively protected by applicants/inventors. Issued patents are protected by owners practicing enforcement.

Patent enforcement is typically protecting against infringement by multiple different methods. Infringement is the violation of a right or privilege, in the case of patents it is the unauthorized making, using, and/or selling of a patent protected invention. Infringement does not always occur in the same manner. There are six different angles of patent infringement:

Direct Infringement

Direct infringement occurs when a party directly violates patent rights by either making, using, selling, offering to sell, or importing a patent protected invention. These violations are explicitly covered by the claims of a valid and enforceable patent, therefore are subject to the consequences of willful infringement.

Common defenses against allegations of direct infringement include the lack of literal infringement, meaning the accused entity does not meet each and every element as specified in the patent claims. Another defense is the Doctrine of Equivalents, which argues that even if there are similarities, the accused entity's elements are not equivalent to those specified in the patent claims. Defendants may even challenge the validity of the issued patent, arguing that the patent should not have been granted due to issues such as prior art or obviousness.

Indirect Infringement 

Indirect infringement occurs when a party contributes to or facilitates the infringement of a patent by another entity. This umbrella term encompasses two primary forms: contributory infringement and inducement of infringement.

Induced Infringement is the aiding or facilitating the use of an infringing product or process.

Contributory Infringement is defined as knowingly encouraging or causing another party to infringe a patent.

To prove indirect infringement, the plaintiff must demonstrate that the accused party had knowledge of the patent and the fact that their actions would contribute to or induce infringement. It falls on the plaintiff to prove the defend acted with intent.

The lack of knowledge is a common defense of indirect infringement. The accused can argue that they were unaware the patent existed or lacked the necessary knowledge necessary to establish indirect infringement. Defendants can also argue that the accused product or process has legitimate and substantial uses that do not infringe on the patent at hand. Another defense is to simply challenge the evidence presented that suggests the accused party actively induced infringement.

Literal Infringement

Literal infringement occurs when an accused product or process embodies each and every element as expressed in the claims of a valid and enforceable patent. It involves a direct, one-to-one correspondence between the language of the patent claims and the features of the accused entity.

In litigation or lawsuits where alleged infringers are accused of literal infringement, the defenses used are typically the lack of elements or challenging the claim construction. When arguing about the lack of elements, defendants assert that the accused innovation does not embody each and every element specified in the patent claims. By challenging the claim construction, defendants argue that the interpretation of the patent claims provided by the patent holder is overly broad or inaccurate.

Equivalent Infringement

Equivalent infringement may occur when the corresponding pieces of the accused product or process are not substantially different from the corresponding limitation in the claim of the patent. This type of infringement is often referred to as infringement under the Doctrine of Equivalents.

The Doctrine of Equivalents enables courts to extend patent protection beyond the literal language of the claims. It recognizes that variations in accused products or processes, though not precisely matching the claim language, may still infringe if they perform substantially the same function in substantially the same way to achieve substantially the same result. The purpose of the doctrine is to prevent infringers from stealing the benefits of a patented invention by changing only minor details of the claimed invention while retaining the same functionality.

There are only really two defenses to an allegation of infringement under the Doctrine of Equivalents: lack of substantial similarity or prosecution history estoppel. Alleged infringers can argue that the accused innovation is not substantially similar to the patented invention, emphasizing differences in function, design, or result. They can also defend themselves by invoking the doctrine of prosecution history estoppel, asserting that certain equivalents were surrendered during patent prosecution and cannot be reclaimed.

The doctrine of prosecution history estoppel limits the scope of patent protection based on the amendments made and arguments presented during the prosecution of a patent application. It’s purpose is to prevent patentees from later asserting a broader interpretation of their claims that would contradict statements or amendments made to overcome prior challenges.

Steps in Dealing with Patent Infringement

Owning a patent in itself does not necessarily protect against infringement, patent owners must enforce their rights. When protecting against infringement, it is ideal to avoid a lawsuit through litigation. Patent litigation aims to resolve disputes that involves patents through several means including licensing agreements, take down notices, cease and desist letters, or alternative dispute resolutions.

The most ideal situation for both parties would be a licensing agreement. There are different licensing agreement types, but all types have the same purpose: they contractually authorize the licensee to make, sell, or use the protected invention owned by the licensor. In exclusive licensing agreements, a licensor gives the exclusive rights to make, use, and/or sell their owned piece of intellectual property to a licensee. In this type of licensing contract, a licensor is allowed to sign multiple exclusive licensing agreements with multiple licensees, however a licensee must remain exclusive with one licensor. On the other hand, in a sole licensing agreement a licensee is the sole receiver of the exclusive rights to make, use, and/or sell a piece of intellectual property owned by a licensor. In this type of licensing agreement, both the licensor and licensee must remain exclusive to each other. In a non-exclusive licensing agreement, a licensee grants a licensor permission to make, use, and sell their intellectual property. Licensors are able to sign as many non-exclusive licensing contracts as they wish to maximize their innovation’s availability the the public and different regions.

If a licensing agreement is not an option, some notice to the infringer must occur before filing a lawsuit. In the case of patent infringement, a take down notice is the formal communication sent to an alleged infringer, notifying them of the violation and requesting the immediate termination of the infringing activity. If a take down notice was not threatening enough to the alleged infringer to pressure them into complying, a cease and desist letter can be sent as a last resort before filing a lawsuit. Cease and desist letters are similar to take down notices, however they differ in the fact that they threaten legal action, informing the alleged infringer that an infringement suit will be filed if they do not stop making, using, and selling the protected innovation.

There exists alternative dispute resolutions that can be utilized before or rather instead of a patent lawsuit, such as `negotiation or mediation. Negotiation is a litigation method where two parties take part in a strategic discussion in an attempt to settle a dispute with a resolution both parties are content with. Mediation is a type of negotiation method that requires an impartial third party (mediator) to facilitate and control the direction of the negotiations between the parties. Mediators cannot provide advice to either party as they are neutral.

If infringement continues to occur, it may be time to file a patent infringement lawsuit. Arbitration and conciliation are both dispute resolution methods that can be utilized prior to filing a lawsuit but are generally used afterwards. Arbitration is the process in which a neutral party (arbitrator) listens to both sides’ arguments and renders a binding decision both parties are required to follow. Conciliation differs from arbitration as it is used once a conflict has already occurred to avoid further escalation. In conciliation, the neutral third party (conciliator) does not have the power to enforce their decision. Each alternative dispute resolution method is subject to their own policies and regulations depending on the involved jurisdictions the parties in a dispute.