INFRINGEMENT DETERMINATIONS AND

DESIGNING AROUND EXISTING PATENTS

The Concept of Infringement. A patent contains one or more claims, which

constitute the scope of the invention. If someone has an application that uses each
and every element of any claim in a patent, then that application literally and
directly infringes on the patent.
How Can a Patent Be Infringed? A patent can be infringed either directly
or contributorily.

1) Direct patent infringement is covered under 35 USC 271(a) and applies when:

The claim language is legally defined and interpreted by a judge.

Then, a jury (or a judge when a jury is not requested) determines whether
the legally- defined and interpreted claims cover the accused device or process.

Note that there is no intent or knowledge element required to prove direct infringement.
Direct infringement is analogous to a strict-liability offense because it requires no
more than the unauthorized use of a patented invention: knowledge or intent is
legally irrelevant. However, direct infringement is only available against those who
practice each and every element of the claimed invention.

2) Contributory patent infringement is covered under 35 USC 271(c) and applies when
someone encourages someone else to directly infringe a patent plus two other
conditions are present:

that the allegedly infringing device is not a staple article or commodity of

commerce suitable for a substantial non-infringing use; and,

that the alleged contributory infringer knew of the asserted patent and that
its activities would cause infringement of that patent.

3) Induced infringement is covered under 35 USC 271(b) and speaks to process

(method) claims. Induced patent infringement can be found only when there is a
finding that every element of the patent has been practiced. Under the rule
in Muniauction Inc. v. Thompson Corp., 532 F.3d 1318 (Fed. Cir. 2008), performance of
the steps in a method claim must be attributable to the same defendant or others that
he directed or controlled. The Supreme Court invalidated a holding of induced
infringement in Limelight Networks, Inc. v. Akamai Technologies, Inc., No. 12786 (S.Ct.
02-JUN-2014), and held:

"Assuming without deciding that the Federal Circuits holding

in Muniauction is correct, there has simply been no infringement of the method in
which respondents have staked out an interest, because the performance of all the
patents steps is not attributable to any one person."

To be liable for induced infringement, the accused infringer must

have knowingly induced the infringement. The accused infringer must have
knowledge that the steps being encouraged are covered by the patent. One can defeat
a charge of induced infringement if the alleged infringer has "a good-faith belief of invalidity
[of the patent because such belief may negate the requisite intent for induced
infringement." Commil USA v. Cisco Systems Inc., Fed. Cir., No. 2012-1042, 25-JUN-2013.

Statutory Law. Section 271(a) of title 35 of the United States Code defines 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."

Equivalents. In addition, the doctrine of equivalents expands the scope of a

patent beyond its literal terms to equivalents of what was claimed. The notion of the
doctrine of equivalents in patent law is that unimportant substitutes for certain
elements will not evade the protection offered by a patent because otherwise such
substitutions would unfairly destroy the value of a patent.

The Federal Circuit explains in its now famous 2002 Festo decision, "The doctrine of
equivalents allows the patentee to claim those insubstantial alterations that were not captured
in drafting the original patent claim but which could be created through trivial changes."

The Federal Judicial Center publishes a 17-minute video (QuickTime, Real Media
and Windows Media Player formats) "designed to be shown to jurors in patent jury
trials. It contains important background information intended to help jurors
understand what patents are, why they are needed, how inventors get them, the role
of the Patent and Trademark Office, and why disputes over patents arise." It is about
65 megabytes in file size.

Applying the Doctrine of Equivalents. In applying the doctrine, the invention as

a whole is not the focus of an equivalents determination. Rather, this doctrine is
applied by examining each element contained in a patent claim to determine
equivalency of an element or part of the invention with the one that is substituted in
the accused product or process. This is important because a focus on the elements of
a claim ensures that the application of the doctrine does not result in the vitiation or
elimination of any such element. The important thing to remember is that the
doctrine of equivalents extends protection beyond the literal terms in a patent and
no matter how careful one is, such expansion can create uncertainty about what the
patent protects.

Court Decisions Narrow Doctrine of Equivalents. The doctrine of equivalents has

been scaled back in recent times. Legal principles of "prosecution history estoppel"
and "file wrapper estoppel" can eliminate the doctrine when amendments to a patent
application were made to avoid prior art, or otherwise to address a specific concern--
such as obviousness--that arguably would have rendered the claimed subject matter
unpatentable. The legal concept is that if the applicant responds to patent office
action on his application by narrowing the claims, then this prosecution history
precludes the applicant from later reclaiming the subject matter by arguing it is an
equivalent.
Nonetheless, one must be careful when attempting to design around a patent so as to
avoid both literal patent infringement and infringement under the doctrine of
equivalents. The Supreme Court said in its 2002 Festo decision, "Though prosecution
history estoppel can bar challenges to a wide range of equivalents, its reach requires an
examination of the subject matter surrendered by the narrowing amendment." Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 737, 122 S.Ct. 1831, 1840,
62 USPQ2d 1705 (2002),

Designing Around, A Good Thing? Designing around a patent is considered an

important public benefit of the patent system. A competitor's designing around a
patent's claims "is the stuff of which competition is made and is supposed to benefit the
consumer." State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236, 224 USPQ 418,
424 (Fed. Cir. 1985). In a trial for infringement, the "fact-finder may infer that the
competitor, presumably one of skill in the art, has designed substantial changes into the new
product to avoid infringement. . . .Evidence of designing around therefore weighs against
finding infringement under the doctrine of equivalents." Hilton Davis Chemical Co v.
Warner-Jenkinson Company, Inc., 93-1088 (Fed. Cir. 1995).

Conclusions.

Designing around an existing patent may require a review of more than the
literal terms of a patent.

An infringement determination should be made only after considering the

law that is applicable.

If you think someone has infringed your patent, Attorney Louis Ventre, Jr.
would be pleased to discuss legal representation with you on an hourly or fixed-
price, fixed-tasking retainer basis. Please contact Attorney Louis Ventre, Jr. to
discuss this in a free initial consultation.

If you are worried about whether your existing design around was adequate,
it is not too late to get a second opinion.

If you have received a letter demanding you cease and desist

infringement, read on.

Other related pages that may be of interest are patent infringement

opinions | infringement damages | and pharmaceutical importation and
infringement.