The Elements of A Patent Infringement Claim
Protections for people’s inventions and original works are guaranteed in the Patent and Copyright Clause of the U.S. Constitution, which empowers Congress to “promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Specifically, the Constitution of the United States gives Congress the power to enact laws relating to patents, in Article I, section 8, which reads “Congress shall have power . . . to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Under this power Congress has from time to time enacted various laws relating to patents. The first patent law was enacted in 1790. The patent laws underwent a general revision which was enacted on July 19, 1952, and which came into effect on January 1, 1953. It is codified in Title 35, United States Code. 35 U.S. Code Section 100, et seq. Additionally, on November 29, 1999, Congress enacted the American Inventors Protection Act of 1999 (AIPA), which further revised the patent laws. See Public Law 106-113, 113 Stat. 1501 (1999). See The Value of Your Idea$, page 25 by Emmanuel Coffy, Esq. and Albert Decady, Esq.
In 2011, President Obama signed the Leahy-Smith America Invents Act (AIA) to modernize the U.S. patent system and strengthen America’s competitiveness in the global economy. The law made sweeping changes to the U.S. patent system. The most significant changes were implemented over a period of eighteen (18) months. The AIA switched the U.S. patent system from a “first-to-invent” to a “first-to-file” system on March 16, 2013, harmonizing the United States patent regime more closely with existing patent regimes around the world. Under the new system, the effective filing date of a patent application determines who wins the race to patent rather than the date of the invention.
The patent law specifies the subject matter for which a patent may be obtained and the conditions for patentability. The law establishes the United States Patent and Trademark Office to administer the law relating to the granting of patents and contains various other provisions relating to patents.
The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent without the aid of the USPTO (United States Patent & Trademark Office).
Using someone’s patent, or sometimes even elements of someone’s patent, is called patent infringement, and the holder of the patent, known as the patentee, has the right to seek redress in federal court. Patent law is the exclusive province of federal jurisdiction.
If you feel your patent is being infringed upon—or you feel unfairly accused of infringing on someone else’s patent—you need to take action quickly, wherever you are in the U.S., COFFYLAW, LLC, with offices in New York and New Jersey, stands ready to help you fight back and protect your business.
Attorney Emmanuel Coffy is a former patent examiner whose broad engineering and legal experience enables him to pursue favorable results in patent infringement cases and mount a solid legal strategy.
What Is a Patent?
When most people think of a patent, they most likely think of inventions in the form of machines or devices that perform unique functions. That type of patent is one of three that the U.S. Patent and Trademark Office (USPTO) issues. It is known as a utility patent, which is granted to anyone who “invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.”
The other types are called design patents and plant patents. A design patent is granted to anyone who invents a new, original and ornamental design for an article of manufacture. A plant patent is granted to anyone who invents, discovers, or asexually reproduces a distinct and new variety of plant.
The “term” of an issued U.S. patent, the period during which it is enforceable, is twenty (20) years from the earliest effective filing date, but even during the first two decades, the owner of the patent must make required maintenance payments to the USPTO, or the protections will be lost. Maintenance fees are payable to the USPTO in three (3) different windows, which open at three (3) years, seven (7) years, and eleven (11) years after the issue date. Each window allows six (6) months to pay the maintenance fee, but an additional grace period of six (6) months is permitted with the payment of a surcharge.
What Is Patent Infringement?
A patent granted by the USPTO bestows on the patentee “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States, as 35 U.S. Code clarifies.
An infringer, therefore, is anyone who, with or without knowledge of the patent, commits one or more of the prohibited acts of making, selling, using, offering to sell, or importing into the US a product or process that is covered by a patent.
There are two (2) types of infringers: direct and indirect. A direct infringer is someone who copies the patent in each of its elements, or the equivalent of those elements. An indirect infringer is someone who contributes to the direct infringement by another party, or who induces another party to directly infringe.
For example, if you invent and patent a handheld device that warns of the presence of a particular virus, and someone comes out with a similar device that uses the technology you patented—or its equivalent—that is infringement. Under the legal “doctrine of equivalents,” if the elements of the alleged infringing device function in the same way as your patented elements, then that is considered infringement.
Prevailing in a Patent Infringement Lawsuit
Typically, the alleged infringer(s), when confronted with a lawsuit or other action, will assert that the contested patent does not meet the legal requirement of being “new and useful,” “novel,” or “non-obvious,” or that the patent is not valid for other reasons.
The first step, then, is to prove that there exists a valid patent issued by the USPTO.
The next step is to prove that infringement has taken place, which involves three (3) elements: (1) identifying the infringer(s), (2) showing what the infringement consisted of, and (3) showing the similarity of the infringement to an invention, product, or process, which implicates a process often referred to as claims construction.
Judges are not technical or scientific experts and will typically rely on the plain language of the supporting documents. You must be careful that what is claimed there can be readily understood. You will need to provide specific definitions when technical details may not be crystal clear. This is where a patent attorney can help you and your business.
The Kessler Doctrine
and Patent Infringement
The Kessler Doctrine derives from a 1907 U.S. Supreme Court ruling namely, Kessler v. Eldred, 206 U.S. 285 (1907). That ruling essentially gave accused infringers who are acquitted in a lawsuit the right “to avoid repeated harassment for continuing business as usual post final judgment….” For example, Company A is sued for infringing on Company B’s utility patent and is acquitted in trial. Company A can continue with the alleged infringement and not be sued again.
Note that in the 1907 Kessler Doctrine ruling, the alleged infringing party had to be acquitted in a full trial to earn the right to continue doing what it was doing that brought on the legal action.
In 2020, a company known as Personal Web Technologies sued dozens of Amazon’s customers whom it claimed were infringing on its patents. The action followed an earlier lawsuit against Amazon for its infringement on the same patents. That case was dismissed with prejudice; in other words, there was not a full trial with acquittal.
Additionally, dismissed with prejudice meant that the case against Amazon could not be brought up before the court again. It was over and done with.
When Personal Web later decided to sue Amazon customers who were using the same patents in their products, the issue of the Kessler Doctrine came up. This time, the Court of Appeals for the Federal Circuit (CAFC) ruled that the Kessler Doctrine is not limited to cases involving a finding of non-infringement, but also to cases that are dismissed with prejudice, as the one with Amazon was. Personal Web appealed the decision, but the court affirmed its ruling.
Reach Out to Experienced Counsel
Patent infringement cases can be long and costly to both parties involved. If you suspect your utility or design patent is being infringed upon—or you have been accused of patent infringement—don’t hesitate. Reach out to COFFYLAW, LLC immediately, wherever you’re located in the U.S. An attorney is ready to assess your situation, advise you of the best path forward, and then fight aggressively for your rights.