Infringement Attack1

  1. Direct Infringement

1)Is there literal infringement, meaning is the accused device novel?

(1)Claim Construction: in order to determine a product to infringe a patent claim, each claim must be construed. The court will give each word of the claims their ordinary and customary meaning according to a PHOSITA at the time of the invention. During construction, a court will take into consideration the claims, written description, and the prosecution history. If extrinsic evidence, such as expert testimony, is required, it should be considered in the context of the intrinsic evidence.

(2)Does the product literally infringe? In this determination, apply the “all-elements rule”: does the accused infringing device contain every element of that inventionarranged as in the claim.”

(3)Is the accused invention a genus and does patent claim a species?

  • A species anticipates a genus – is the patent/prior art a species that would be covered by the genus?
  • If yes, the accused device infringes (or the patent application is anticipated).

(4)Is the accused invention a species and the patent/prior art a genus?

  • Does the claimed (or prior art) genus expressly or inherently disclose the species of the accused invention?
  • If yes, the accused invention is anticipated by the prior art genus.
  • Note: the species may not be expressly or inherently covered but look to obviousness or the doctrine of equivalents as a way to find infringement.

2)Is the patent infringed as a result of the doctrine of equivalents? [Warner-Jenkinson Co. v. Hilton Davis Chem. Co.and Festo Corp.]

-Note that this is applied to individual claim limitations, not the invention as a whole

(1)Is the difference between the limitation in the accused device and the limitation literally recited in the patent claim insubstantial?

(2)In order to determine whether the difference is insubstantial, ask:

  • Does the accused device perform substantially the same function as the patent?
  • Is the function performed in substantially the same way? and
  • Does the accused device yield substantially the same result as the patent?

3)Is the Doctrine of Equivalents limited by prosecution history estoppel?

-[Anytime there is an amendment (even antecedent basis problems) triggers this presumption – rebut it if just fixing typos, antecedent basis issues, expanding amendments, etc.]

(1)Did the patentee abandon, through an amendment to the patent application’s claims or an applicant’s arguments in response to a rejection, certain literal claim coverage (e.g., by narrowing the literal scope of the patent claim)?

  • If so, the patentee is estopped from later arguing that the surrendered coverage is insubstantially different from the literally claimed limitation.

(2)If PHE applies, we must determine the scope of the estoppel – does the patentee still retain some scope of equivalents beyond the literal scope of the amended claims?

  • There is a rebuttable presumption that a narrowing amendment surrenders the particular equivalent in question [Festo Corp.]. Can the patentee overcome the presumption? In order to do so, answer 1 of the following affirmatively:
  • Was the equivalent unforeseeable at the time of the application?
  • Does the rationale underlying the amendment bear no more than a tangential relation to the equivalent in question? Or
  • (Biagro Western v. Grow More) compared to (Primos, Inc. v. Hunter’s Specialties)
  • Is there some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question?
  1. Indirect Infringement

1)Does the accused infringer actively and knowingly aid and abet another’s direct infringement?[Inducing infringement – §271(b)]

  • Proving inducement requires proving two elements:

(1)Direct infringement under §271(a); and

(2)The requisite intent of the alleged infringer – that they knew or should have known that their actions would induce actual infringement.

  • In inducement cases, circumstantial evidence is sufficient to establish the direct infringement– a patentee need not show actual infringement by a consumer only that there was no other viable option but infringement.
  • Induced infringement does not have to occur in the US as long as the direct infringement does so.

2)Does the accused infringer supply a nonstaple component of the claimed invention to another entity that makes, uses, or sells the entire invention? [Contributory infringe – §271(c)]

  • A nonstaple component is a component part of the invention that is not suitable for any substantial use other than in the patented invention.
  • Does the component part supplied to the consumer constitute a permissible repair?

-Does the part commonly wear faster than the rest of the invention? (Aro Mfg. v. Convertible Top Replacement)

  1. Defenses to Patent Infringement

1)Laches

  • Laches is an equitable doctrine that, if accepted, allows the accused infringer to limit or negate liability when a patentee has unfairly brought suit after an unreasonable amount of delay.
  • This defense does not bar the patentee’s action but rather prevents the recovery of any damages that accrued prior to the filing of the action.
  • Can the accused infringer prove two elements:

(1)Unreasonable and inexcusable delay by the plaintiff in bringing suit; and

(2)That the defendant was materially prejudiced due to the plaintiff’s delay.

  • Did the patentee bring suit within 6 years of learning of the alleged infringement?

-If yes, the defendant must prove both of the elements.

-If no, a presumption of laches arises in the defendant’s favor. The patentee must create a genuine issue of fact to either of the elements by showing either that the delay was in fact reasonable or that the accused infringer may still contest validity/noninfringement or that the accused infringer suffered no substantial economic change during the delay.

2)Inequitable conduct

  • Was the patent procured through improper conduct before the USPTO?

-Did the any person substantially involved in the patent application have knowledge of any relevant prior art and not disclose?

  • The accused infringer must prove two elements:

(1)Materiality;

-Failure to disclose, submission of false information, or affirmative misrepresentations

(2)Intent to deceive the USPTO (after Therasense)

-Clear and convincing evidence must be shown that the applicant made a deliberate decision to withhold a known material reference.