Patent Infringement 101

by Bruce E. Burdick, JD

The BURDICK LAW FIRM

© 1998, 1999, 2000, 2001, 2002, 2003, 2004 Bruce E. Burdick, JD

St. Louis, Missouri

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PATENT INFRINGEMENT 101 (an outline)

TYPES of Infringement

A patent can be infringed in several ways:

bullet Direct Infringement (the accused party makes, uses or sells an infringing item.)
bullet Contributory Infringement (the accused party was aiding or abetting infringement);
bulletProviding manufacturing equipment specially known to be designed to produce infringing product;
bulletProducing a portion of the patented invention which has no significant non-infringing use; or
bulletDeliberately facilitating production of a patented invention .
bullet Inducing Infringement (the accused party was luring others into infringement);
bullet Imputed Infringement (the accused party did something the law implies to be infringement)
bulletImporting, selling or using a product made abroad through a process which would have infringed a US process patent if made in the USA; or
bulletManufacturing or selling certain components of a patented invention to be assembled abroad.

DEFENSES to Infringement

There are several defenses to a claim of patent infringement.

bullet Non-Infringement (Not covered by claims of patent)
bullet Experimental Use (An exception to infringement because people should be encouraged to improve on patented inventions)
bullet No literal infringement (The accused device does not have all the identical elements of the patent claims.)
bullet No infringement under doctrine of equivalents (The accused device has the same means, way and result as the claimed invention.)
bulletFile wrapper estoppel (Something was said to or by the United States Patent and Trademark Office that limits the claim.)
bulletDedication (The accused invention was disclosed but not claimed.)
bulletSeparate Patentability (The accused device is patented, indicating it my well be different enough not to infringe.)
bullet Invalidity (Patent should not have been granted.)
bullet Anticipation (because the identical invention was already public)
bullet Obviousness (because the invention was obvious from what the public already knew)
bullet Inequitable Conduct (because fraud was committed on the Patent Office)
bullet Antitrust Violations (because the patent was misused )
bullet De Minimis (no damages - or minimal damages not worth litigating - a practical rather than legal defense)
bullet Experimental use

 

REMEDIES for patent infringement

bullet Injunctions
bulletPreliminary
bulletPermanent
bullet Monetary Damages
bulletLost Profits
bulletReasonable Royalty

 

COSTS of Patent Infringement Litigation (estimated averages)

bullet Infringement or Non-infringement Opinion - $5000-20,000
bulletMust be well reasoned
bulletMust be thorough (must touch on key legal issues like doctrine of equivalence)
bullet Cease and Desist Letters - $1000 each
bulletShould usually be worded to avoid Declaratory Judgement action
bulletCan be more forceful if
bulletinfringement is a knock-off product, or
bulletstrong opinion of infringement, or
bulletprior unproductive communications
bullet File Complaint or Answer Complaint - $5,000 - 10,000
bulletExperienced trial counsel can save money here
bullet Discovery Phase - $100,000+ (typically much higher if large monetary value involved)
bulletCase usually won or lost at this stage
bulletEarly discovery depositions are critical to pin down opponents
bulletUsually want to delay your witnesses depositions until other side is deposed
bullet Trial - $300,000+ (much higher if high profile case or very large monetary value)
bulletExpert witnesses
bulletTechnical
bulletLegal
bullet Enforcement - $10,000+ (much higher if recalcitrant opponent)

 

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