1. Vandana Mamidanna

2.  Patent is a sovereign right to exclude others from:  making, using or selling the patented invention in the patented country.  offering the patented invention for sale  importing the patented invention into the patented country.  Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder* *Wikipedia

3.  Direct Infringement ◦ Literal Infringement ◦ Infringement under Doctrine of Equivalents  Contributory Infringement

4.  (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 therefore, infringes the patent.

5.  Steps to determine Infringement ◦ Determine the meaning and scope of the patent claims asserted to be infringed ◦ Compare the properly construed claims to the device accused of infringing.  For literal infringement, each limitation of the claim must be met by the accused device exactly; any deviation from the claim precludes a finding of literal infringement

6.  Doctrine of Equivalents – Two inventions are the same for purposes of patent infringement if they achieve essentially the same result, in the same manner, despite trivial differences.

7.  Warner-Jenkinson v. Hilton Davis ◦ P and D made dyes for food. P had a patent on a filtration method using osmosis to separate impurities from dye. Patent referred to a membrane with pore sizes of 5-15 Angstroms, a hydrostatic pressure of 200-400 psi, and pH of 6 to 9. D developed a process independently and was sued. D’s process operated at 200-500psi, and pH < 5.0. Court found equivalence. ◦ RULE – the determination of equivalence should be applied as an objective inquiry on each individual element of the claim, rather than the process as a whole.

8.  All Elements Rule  Prior Art Limitations  Prosecution History Estoppel

9.  The all elements rule says that the doctrine of equivalents can only apply to an accused product or process that contains each limitation of a claim, either literally or equivalently

10.  A range of equivalents may not embrace inventions already disclosed by prior art  A Patentee cannot extrapolate his invention through DOE to embodiments already disclosed in prior art.

11.  Surrender of subject matter during patent prosecution precludes recapturing any part of that subject matter, unless the patent-holder demonstrates that an amendment required during prosecution had a purpose unrelated to patentability

12.  Johnson & Johnston v. RE Service: ◦ Patent covered printer circuit board with aluminum backing; spec. mentioned that steel could also be used, but steel is not claimed; ◦ Accused infringer uses steel backing ◦ Question was if patentee could use DOE to cover unclaimed subject matter disclosed in the spec.; court ruled that Johnston abandoned the subject matter it mentioned the steel in the spec. yet failed to claim the steel

13. 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.

14.  The requirements of § 271(b) are: ◦ Knowing inducement ◦ Culminating in direct infringement within the patent term

15. Latches: Unreasonable and inexcusable delay Had to have suffered a material prejudice due to Economic – you invest monetarily and incur damages which could have likely been prevented by an earlier suit Evidentiary – due to the significant delay in suit – infringer is unable to produce evidence, fire, material witness died, etc… 6 years delay becomes a presumption which can be rebutted. Other litigation kept you busy Negotiations with the accused Possible poverty and illness under limited circumstances Wartime conditions Extent of infringement Dispute over ownership of the patent

16. Equitable Defenses: No presumption in equitable Estoppel – burden remains on the person seeking the defense. Patentee communicates something in a misleading way, either by words, conduct or silence Patentee’s conduct must have supported an inference that the patentee did not intend to press an infringement claim against the alleged infringer. Reliance – the infringer must have had a relationship or communication with the P which lulls the infringer into a sense of security. The other would be harmed materially if the patentee is later permitted to assert any claim inconsistent with his earlier conduct.

17. Aukerman v Chaides P sent a letter to D telling them that they’re infringing. D said “if you want to sue us for $2-300 per year, go ahead.” P did not sue and after several years, when D’s infringement grows to a sizable amount, P sued D argued that they are estopped since they didn’t continue the earlier suit – and D relied on it to grow their business. (8 year delay) Court held that principles of laches and equitable estoppel are legitimate defenses to patent infringement suits.

18.  Injunctions ◦ Preliminary ◦ Permanent  Damages ◦ Loss of Profits ◦ Royalty  Attorney Costs