Patents: literal infringement

1
Patents literal infringement

• Prof. Loren
• Fall 2005

2
Common sense?

• Novelty
• prior art in any field is permitted
• All elements of claim must be contained in a
  single prior art reference
• Nonobviousness
• Fields of prior art are limited (scope inquiry)
• Can combine elements from different references,
  if there is suggestion or motivation to combine
• In the references themselves
• Perhaps from knowledge of one of ordinary skill
  in the art
• Perhaps from the nature of the problem to be
  solved

3
Patent Infringement

• Two key distinctions
• Literal v. Equivalent Infringement
• Literal ? Every element is literally present in
  the accused item
• Equivalent ? One or more elements is present only
  equivalently, not literally
• Direct v. Indirect Infringement
• Direct ? The accused is infringing
• Indirect ? The accused is causing or inducing
  anothers direct infringement

4
35 U.S.C. 271(a)

• Whoever without authority
• 1 makes, uses, offers to sell, or
  sells any patented invention, within the United
  States or
• 2 imports into the United States any
  patented invention
• during the term of the patent therefor, infringes
  the patent.

5
Direct Infringement Analysis

• Step 1 Construe the claim
• Question of law for the court (Markman case,
  leads to Markman hearings)
• Step 2 Apply the claim
• Question of fact for the fact-finder
• Looking for each claim element/ limitation in
  accused item
• (literally or equivalently)

6
The 036 Patent
7
Exercising the Cats

• Claim 1 A method of inducing aerobic exercise
  in an unrestrained cat comprising the steps of

• Possible Defendants
• A Uses hand held laser to exercise pet ferret
• B Uses machine operated laser to exercise cat
  while at work
• C Uses hand held laser to exercise leopards at
  the zoo
• D Daves Pet Shop sell hand held laser pointers

8
Sources to aid in claim construction

• Perspective POSITA
• Intrinsic Evidence
• Claim language, both asserted claim(s)
  unasserted claim(s)
• Specification -- has a special meaning been
  given?
• Prosecution History -- did the applicant refine
  the terms meaning when dealing with the PTO?
• Extrinsic evidence
• Expert testimony
• Dictionaries
• Technical Treatises

9
35 U.S.C. 271(c)

• Whoever offers to sell or sells within the US or
  imports into the US
• a component of patented product or a material
  or apparatus for use in practicing a patented
  process,
• constituting a material part of the invention,
• knowing the same to be especially made or
  especially adapted for use in an infringement of
  such patent,
• and not a staple article or commodity of commerce
  suitable for substantial noninfringing uses,
• shall be liable as a contributory infringer.

10
35 U.S.C. 271(b)

• Whoever actively induces infringe-ment of a
  patent shall be liable as an infringer.

11
Larami Corp. v. Amron (1993)

• Amron owns the 129 patent to toy water gun
• Larami Corp. (alleged infringer) makes Super
  Soaker toy guns
• Larami has patents too is that relevant?
• Claim language

Toy comprising an elongated housing case having
a chamber therein for a liquid tank, a pump
including a piston having an exposed rod piston
rod and extending rearwardly of said toy
facilitating manual operation for building up an
appreciable amount of pressure in said chamber
for ejecting a stream of liquid therefrom an
appreciable distance substantially forwardly of
said toy, and means for controlling the ejection.
12
Toy comprising an elongated housing case having
a chamber therein for a liquid tank,