Mandour & Associates handles patent infringement and patent litigation matters. We also assist with patent registration. To consult with a patent attorney at our law firm, please feel free to contact us.
Once you obtain a patent, you are entitled to all legal protections associated with patent ownership. No person or business other than you or a licensee has the right to use or benefit from your invention.
Patent infringement can be harmful in different ways. First, you may lose the ability to license your patent. Patent licensing can result in significant income in the form of royalties. You can also lose revenue if you are selling your product or process, and an infringer also begins doing so. This creates competition for your invention that should not exist based on your patent.
What is Patent Infringement?
Patents are infringed if a third party manufactures, uses, or sells a device that utilizes one or more claims of a patent. If you find your patent rights being infringed, you have the right to sue the offender for damages in the appropriate federal court. Additionally, you may ask the court for an injunction to prevent continuation of the infringement.
The claims of your patent define your rights as the patent owner. You must examine the infringer’s product or process to determine whether it utilizes all elements of one or more claims of the patent. If it does, the party’s acts constitute patent infringement. Even if the new product is slightly different or better in some way than the patent, it can still constitute infringement under the legal “Doctrine of Equivalents.”
Doctrine of Equivalents
This doctrine dictates that patent violations don’t need to be literal or exact to be infringing. If an invention essentially performs the same process and achieves the same results as a patented technology, a judge will likely consider it to be an infringement. This grants patent holders additional protection while making it more difficult for would be infringers to profit from existing inventions.
Imagine that a creator invented a product that fixed a common problem that had no previous solution. Once this technology is public, without the doctrine of equivalents, another company could make minor or insignificant alterations to the invention to create their own device that functions similarly to achieve the same result. To prevent this, in the case of Graver Tank & Mfg. v. Linde Air Products Co., the U.S. Supreme Court created the “triple identity” test which asks:
- Are the performed functions substantially the same?
- Are these functions performed in substantially the same way?
- Are the results substantially the same?
If a product is similar enough to a patented idea to meet all these requirements, it’s likely that patent infringement has occurred.
Patent Cease and Desist Letter
Harm from patent infringement can often increase over time, and it may be more and more difficult to stop an infringer easily. If you suspect someone is infringing on your patent, you should have a patent lawyer take immediate action. In the event of an infringement, the first step is typically a cease and desist letter. A cease and desist letter notifies a third party that they are infringing on patent rights and that they should immediately stop the infringing activity. This letter can vary from case to case, but it generally will include the following elements:
- Notice of your rights as the owner of the patent
- A clear description of how the party is violating those rights
- A clear request for the party to stop its unauthorized actions immediately
- A request for confirmation they ceased the unauthorized actions
- Notice that a failure to cease and desist will result in a lawsuit or similar legal action
While this letter does not have the authority of a court order, it is often the most effective tool in ending a patent infringement. Provided that the letter comes from a patent litigation law firm, the receiving party will take it very seriously due to the threat of legal action. Defending against a patent claim can be expensive, and most infringers will want to avoid any legal costs. Some infringers do not even realize they are infringing until they receive notice in a cease and desist letter.
Receiving a Cease and Desist Letter
If you receive a cease and desist letter from a patent owner accusing you of patent infringement, you should immediately contact an experienced patent attorney. A patent attorney will examine the claims of the patent and product at issue to determine your exposure to a lawsuit. In this situation we typically draft a response informing the patent holder why there is no infringement by citing to specific facts and law. It is important never to ignore a cease and desist letter, as that will almost certainly lead to a lawsuit and potentially a default judgment against you.
Types of Patent Infringement
There are several different types of patent infringement.
- Direct infringement: The easiest way to describe this patent violation is by calling it first-hand infringement. Taking advantage of rights exclusive to the patent holder by creating the same product or one that’s substantially similar constitutes direct infringement.
- Indirect infringement: This form of violation typically occurs through third parties that assist others in directly infringing a patent. It can also occur when a party licenses an invention that is already covered under an existing patent. Selling parts or instructions that serve no realistic commercial purpose other than to serve a patented concept falls under this type of infringement.
- Contributory Infringement. This occurs when a party distributes a part or supply that aids in creating a patented product.
- Induced Infringement. This occurs when a party provides direction and instruction on how to make a patented product.
- Willful infringement. This occurs when a person knowingly infringes on a patent. This typically results in larger damages when proven.
- Literal Infringement. This occurs when there is exact duplication between the words in the patent claims and the infringing device in question.
Patent Pending Infringement
Generally, a patent lawsuit cannot be filed until the patent registers. However, inventors are provided with some pre-grant protections. If certain requirements are met, reasonable damages could be awarded even if infringing activities ceased prior to a patent’s approval. These requirements are as follows:
- The patent application had been published prior to infringing activities
- There are substantial similarities to the claims made in the application
- “Actual notice” of the application was received by the patent infringer
Patent Assertion Entities and Patent Trolls
Patent trolls stifle innovation and have been shown to reduce research and development spending along with capital investments. In fact, the practice results in a $29 billion loss to the U.S. economy yearly. Here are just a few of the ways that patent trolls work:
- Enforcement with no intent: Patent trolls generally enforce patents with no intent of ever providing a service, manufacturing a product, or conducting research related to the patent
- Patent purchasing solely for litigation: Companies or individuals may purchase a patent – oftentimes from a bankrupt company – with the intent to sue another organization.
- Pursuing questionable claims: Patent trolls will often pursue questionable infringement claims simply because they know it’s cheaper for a company to settle than fight the issue in court.
- Use of venue shopping: Patent trolls will often “venue shop” to find courts that are more likely to rule in their favor. This is done by reviewing previous decisions to find a judge that may be more sympathetic to the infringement claim.
A successful plaintiff in a patent infringement case may be entitled to an injunction, lost profits or reasonable royalties. If a plaintiff can prove actual financial loss, courts will award this amount. If it’s difficult to prove financial damages, though, the judge may instead award reasonable royalties.
The damages awarded in instances of patent litigation can vary by case. Potentially the biggest consideration by a judge is whether the violation was willful or not. Most cases of infringement will result in compensatory relief and – at times – injunctions.
A finding of willful infringement, on the other hand, will almost always lead to larger damages including treble damages. In exceptional case, attorney fees may be awarded.
Defending Your Patent
It is a good idea to actively monitor your patents for infringement. While it may sound difficult to police potential patent infringements, there are several ways to do so.
- Monitor competitors: Whether direct or indirect, competitors can be tempted to utilize inventions they don’t own to make it easier for them to compete.
- Stay on top of your industry: If an accidental or intentional infringement on your patent is going to occur, it will likely be within your own trade. Becoming a consummate consumer of your industry’s news will help you identify potential violations.
- Keep tabs on emerging tech: Technological trends change when new concepts arise. Emerging trends could lead to the infringement of your patent.
Patent Infringement Defenses
Some of the most common patent infringement defenses include:
- Non-infringement: This is the most common defense. The defendant asserts that its process or device does not utilize all elements of any claim in the patent at issue.
- Prior art invalidity: A discovery of prior art containing elements of a patent can invalidate the patent.
- Inequitable conduct: If it’s proven that a patent was obtained through deceptive means, a court may invalidate a patent. Failing to disclose prior art is an example of inequitable conduct.
- Authorization to use: Defendants can claim express or implied consent to use a patent.
Mandour & Associates – Patent Infringement Attorneys
If you are involved in a patent infringement or patent litigation matter‚ we highly recommend that you seek the advice of a patent lawyer at your earliest opportunity. We have offices in San Diego‚ Orange County and Los Angeles serve clients throughout California and those that have issues here. In the event of a patent infringement, we will aggressively defend your rights.
If you are interested in having our law firm assist you with a patent infringement issue‚ please contact us.