Intellectual Property Patent – Infringement

Infringement 1.Literal Infringement 2.The Doctrine of Equivalents 35 U.S.C. § 271 –“(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 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 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 –(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 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 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