We’re so sorry to announce that our status as Patent-Pending will no longer be binding come July 12, 2011. After several long, difficult and expensive years, we are officially now - PatentED (US patent #7,976,360 B2).
We Make Fire Cool!
Moderustic® is proud to have been issued 4 U.S. Patent Numbers
and Patent pending status!
Covering our method of creating tumbled tempered glass for use in fireplaces and fire pits.
Patent Applications Published 2005, 2006 and 2014.
Examples of what a simple patent is! (a must read)
What is PatentED?
It’s what happens after Patent-Pending
It is when a product is distributed by one with exclusive rights
So with great glee, pleasure, ecstatic exuberance and a deep resounding sense of satisfaction we’d like our competitors to know that you are ScrewED.
Knock, Knock. Who’s There? The process servers are on their way. We will leave no stone unturned.
ED Jaunzemis and staff of Moderustic Inc
07 12 2011
Beware! We posted this information for you to read and fully understand. If you don't understand the big words, get an attorney to read them to you.
Here is a poem we wrote for you:
It was quiet through the night, not a sound in sight. There arose such a clatter, it was only a process server helping you find the light...Boogie Man!!!
I did not write the laws below, I just merely copied them for you to read. I even posted the source pages.
Tom Hanks portrayed it best when he played Forest Gump and was told: Run Forest, Run!
WE INVENTED FIREGLASS!
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"Patent Claims Against Retailers"
We were just given this document ("CLICK HERE") to post to better help educate the possibility the status of any given retailer stores selling "Boot Leg" products.
Document from www.MorganLewis.com Morgan, Lewis & Bockius LLP
"CLICK HERE" to see the PDF document
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We just found some very fun facts and interesting YouTube videos on Patents!
Bring Pop Corn! As excited as I was, this may depress you, so be warned!
www.PatentExpress.com
http://www.PatentExpress.com/patent-videos/patent-litigation_4.html
Litigation Patent Videos - Patent Express
Does it matter about the type of infringement?
How do you stop patent infringement?
How to defend against infringement of patents?
How to make a patent settlement out of court?
How to stop others pursuing an abandoned application?
What are the consequences of infringement?
What are the remedies to patent infringement?
What are the steps in a patent litigation?
What can be infringed in a patent?
What do you do when you cannot stop infringement?
What does it mean to infringe a Patent?
What is inadvertent infringement?
Who can sue and be sued for Patent infringement?
This is a public service announcement! 02 12 2013
USPTO Links have recently been changed we apologize for any broken links
35 U.S.C. 271 Infringement of patent. - Patent Laws
35 U.S.C. 271 Infringement of patent.
(a) Except as otherwise provided in this title, 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.
(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
(c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, 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 non infringing use, shall be liable as a contributory infringer.
(d) No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1) derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent; (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent; (3) sought to enforce his patent rights against infringement or contributory infringement; (4) refused to license or use any rights to the patent; or (5) conditioned the license of any rights to the patent or the sale of the patented product on the acquisition of a license to rights in another patent or purchase of a separate product, unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned.
(e)
(1) It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention (other than a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Act of March 4, 1913) which is primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques) solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.
(2) It shall be an act of infringement to submit -
(A) an application under section 505(j) of the Federal Food, Drug, and Cosmetic Act or described in section 505(b)(2) of such Act for a drug claimed in a patent or the use of which is claimed in a patent, or
(B) an application under section 512 of such Act or under the Act of March 4, 1913 (21 U.S.C. 151 - 158) for a drug or veterinary biological product which is not primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques and which is claimed in a patent or the use of which is claimed in a patent, if the purpose of such submission is to obtain approval under such Act to engage in the commercial manufacture, use, or sale of a drug or veterinary biological product claimed in a patent or the use of which is claimed in a patent before the expiration of such patent.
(3) In any action for patent infringement brought under this section, no injunctive or other relief may be granted which would prohibit the making, using, offering to sell, or selling within the United States or importing into the United States of a patented invention under paragraph (1).
(4) For an act of infringement described in paragraph (2)-
(A) the court shall order the effective date of any approval of the drug or veterinary biological product involved in the infringement to be a date which is not earlier than the date of the expiration of the patent which has been infringed,
(B) injunctive relief may be granted against an infringer to prevent the commercial manufacture, use, offer to sell, or sale within the United States or importation into the United States of an approved drug or veterinary biological product, and
(C) damages or other monetary relief may be awarded against an infringer only if there has been commercial manufacture, use, offer to sell, or sale within the United States or importation into the United States of an approved drug or veterinary biological product. The remedies prescribed by sub paragraphs (A), (B), and (C) are the only remedies which may be granted by a court for an act of infringement described in paragraph (2), except that a court may award attorney fees under section 285.
(5) Where a person has filed an application described in paragraph (2) that includes a certification under subsection (b)(2)(A)(iv) or (j)(2)(A)(vii)(IV) of section 505 of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355), and neither the owner of the patent that is the subject of the certification nor the holder of the approved application under subsection (b) of such section for the drug that is claimed by the patent or a use of which is claimed by the patent brought an action for infringement of such patent before the expiration of 45 days after the date on which the notice given under subsection (b)(3) or (j)(2)(B) of such section was received, the courts of the United States shall, to the extent consistent with the Constitution, have subject matter jurisdiction in any action brought by such person under section 2201 of title 28 for a declaratory judgment that such patent is invalid or not infringed.
(f)
(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial non infringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
(g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use or retail sale of a product unless there is no adequate remedy under this title for infringement on account of the importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will, for purposes of this title, not be considered to be so made after -
(1) it is materially changed by subsequent processes; or
(2) it becomes a trivial and nonessential component of another product.
(h) As used in this section, the term "whoever" includes any State, any instrumentality of a State, any officer or employee of a State or instrumentality of a State acting in his official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this title in the same manner and to the same extent as any nongovernmental entity.
(i) As used in this section, an "offer for sale" or an "offer to sell" by a person other than the patentee or any assignee of the patentee, is that in which the sale will occur before the expiration of the term of the patent.
http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_271.htm
35 U.S.C. 283 Injunction. - Patent Laws
35 U.S.C. 283 Injunction.
The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.
http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_283.htm
35 U.S.C. 284 Damages. - Patent Laws
35 U.S.C. 284 Damages.
Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.
When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d) of this title.
The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec. 4507(9)).)
http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_284.htm
INFRINGEMENT OF PATENTS (Excerpted from General Information Concerning Patents print brochure)
Infringement of a patent consists of the unauthorized making, using, offering for sale or selling any patented invention within the United States or United States Territories, or importing into the United States of any patented invention during the term of the patent. If a patent is infringed, the patentee may sue for relief in the appropriate Federal court. The patentee may ask the court for an injunction to prevent the continuation of the infringement and may also ask the court for an award of damages because of the infringement. In such an infringement suit, the defendant may raise the question of the validity of the patent, which is then decided by the court. The defendant may also aver that what is being done does not constitute infringement. Infringement is determined primarily by the language of the claims of the patent and, if what the defendant is making does not fall within the language of any of the claims of the patent, there is no literal infringement.
Suits for infringement of patents follow the rules of procedure of the Federal courts. From the decision of the district court, there is an appeal to the Court of Appeals for the Federal Circuit. The Supreme Court may thereafter take a case by writ of certiorari. If the United States Government infringes a patent, the patentee has a remedy for damages in the United States Court of Federal Claims. The Government may use any patented invention without permission of the patentee, but the patentee is entitled to obtain compensation for the use by or for the Government.
The Office has no jurisdiction over questions relating to infringement of patents. In examining applications for patent, no determination is made as to whether the invention sought to be patented infringes any prior patent. An improvement invention may be patentable, but it might infringe a prior unexpired patent for the invention improved upon, if there is one.
http://www.uspto.gov/web/offices/pac/doc/general/infringe.htm
Appendix L Patent Laws
Good reading….
http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf -
35 U.S.C. 289 Additional remedy for infringement of design patent. - Patent Laws
35 U.S.C. 289 Additional remedy for infringement of design patent.
Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.
Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement.
http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_289.htm
Patent Laws
UNITED STATES PATENT AND TRADEMARK OFFICE
1 ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS
http://www.uspto.gov/web/offices/pac/mpep/documents/appxl.htm
Patent Laws and Regulations
UNITED STATES CODE TITLE 35 – PATENTS
http://www.uspto.gov/web/offices/dcom/olia/35amend2.pdf
35 U.S.C. 284 Damages. - Patent Laws
35 U.S.C. 284 Damages.
Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.
When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d) of this title.
The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.
http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_284.htm
Patent Infringement
Patent infringement consists of the unauthorized making, using, offering for sale or selling any patented invention within the United States or United States Territories, or importing into the United States of any patented invention during the term of the patent.
When patent infringement happens, the patentee may sue for relief in the appropriate Federal court. The patentee may ask the court for an injunction to prevent the continuation of the patent infringement and may also ask the court for an award of damages because of the patent infringement.
http://inventors.about.com/od/patentinfringement/a/Infringement.htm
Patent Infringement and Claims
In such an infringement suit, the defendant may raise the question of the validity of the patent, which is then decided by the court. The defendant may also try to say that what is being done does not constitute infringement. Infringement is determined primarily by the language of the claims of the patent and, if what the defendant is making does not fall within the language of any of the claims of the patent, there is no literal infringement.
Suits for infringement of patents follow the rules of procedure of the Federal courts. From the decision of the district court, there is an appeal to the Court of Appeals for the Federal Circuit. The Supreme Court may thereafter take a case by writ of certiorari. If the United States Government infringes a patent, the patentee has a remedy for damages in the United States Court of Federal Claims. The Government may use any patented invention without permission of the patentee, but the patentee is entitled to obtain compensation for the use by or for the Government.
The US Patent Office has no jurisdiction over questions relating to infringement of patents. In examining applications for patent, no determination is made as to whether the invention sought to be patented infringes any prior patent. An improvement invention may be patentable, but it might infringe a prior unexpired patent for the invention improved upon, if there is one.
http://www.tms.org/pubs/journals/jom/matters/matters-9512.html
Understanding Patent Infringement Legal Opinions
David V. Radack
The amount of patent infringement litigation has undergone a substantial increase in the United States in the last decade. In addition, it is not uncommon to see significant damages awarded to owners of patents for infringement by competitors. In one famous case, Polaroid obtained a huge damage award from Kodak for Kodak's infringement of Polaroid's patents in the instant photography field. The potential for large damage awards and other consequences that flow from patent infringement means that it is advisable to understand one of the most important aspects of evaluating the risks associated with patent infringement. This aspect is the patent infringement opinion.
Although patent infringement opinions can be obtained for many different reasons, this article focuses on the situation where another company (e.g., a competitor) has charged you or your company with selling a product that infringes one of the competitor's patents. This charge of patent infringement can be made in different ways, but most commonly it is made in a cease and desist letter that sets forth some very basic facts such as the competitor's patent (often with a copy of the patent attached to the letter) and your company's allegedly infringing product.
There are several strategic issues that must be considered carefully as soon as the charge of infringement is made. In almost every situation, a patent infringement study that leads to a patent infringement opinion should be commenced immediately in order to evaluate the risk of the patent infringement charge and also to provide a basis for avoiding a willful infringement charge by the competitor in the event of a patent infringement lawsuit. If willful infringement is found, damages can be increased by as much as three times the actual damages. It should be mentioned that patent infringement opinions often include a discussion of the validity of the allegedly infringed patent.
There are several items needed in order to produce a competent patent infringement opinion. Most obviously, a copy of the allegedly infringed patent must be obtained if not already provided by the competitor in the cease and desist letter. U.S. patents are public documents that are available from several sources, including public libraries, commercial services, and the U.S. Patent and Trademark Office.
The next item is the file history of the patent, sometimes called the file wrapper. The file history is the entire written correspondence made between the applicant for the patent and the U.S. Patent and Trademark Office. This file history includes, at a minimum, a copy of the patent application as filed, communication from the patent examiner in charge of the application, and communication from the applicant to the patent examiner. The file history remains confidential and unavailable to the public during pendency of the application, but becomes publicly available once the patent is issued. The file histories are kept at the U.S. Patent and Trademark Office and can be copied by the public.
The third main item is a copy of the prior art references cited during the prosecution of the patent application. These references are listed on the face page of the U.S. patent.
The last item is the allegedly infringing product or device itself. Preferably, a commercially sold device is best. Bear in mind that the device, during the patent infringement study, may be taken apart or otherwise rendered unsalable.
Once the information is assembled, an analysis is undertaken by first interpreting the scope of the claims. The claims of the patent are the numbered paragraphs appended to the description of the invention. The claims define the patentee's invention. If there are ambiguities, the description of the invention in the patent can be resorted in order to clarify the ambiguity or to further define a term found in the claim. Finally, the file history must be reviewed in order to determine what the patentee intends to cover by the claims.
After the scope of the claims is interpreted, each claim of the patent is compared to the allegedly infringing device. Only one claim of the patent needs to be infringed in order to have infringement of the entire patent. In analyzing each claim, each element of the claim must be contained in the infringing device in order to show literal patent infringement. If even one element of the claim is missing from the allegedly infringing device, there is no literal infringement.
The analysis, however, does not end there. Even if an element is missing, there may be another element in the allegedly infringing product that operates in the same way to produce the same result as the missing element. In this case, there is no literal infringement, but there may be infringement under the Doctrine of Equivalents.
The actual patent infringement opinion is contained in a letter. The letter will have an introduction to identify the purpose of the opinion, the patent number of the allegedly infringed patent, and an identification of the allegedly infringing product. A summary of the opinion (i.e., whether the allegedly infringing product infringes the patent) is then set forth.
After the introduction, the current law of patent infringement should be stated, with appropriate legal authority cited. The main portion of the opinion follows, which includes the analysis of the claims and possibly a table for comparing the elements of the claim to the features of the allegedly infringing product. In this main portion of the opinion, both literal and equivalency infringement should be discussed. References to the file history and other important items such as, possibly, an expert's report may also be included. The opinion will end with a closing paragraph that restates the conclusion and may also include some limitations and disclaimers.
The patent infringement opinion serves several purposes and has some important benefits. First, and most obviously, the patent infringement opinion answers the question of whether the competitor's patent is infringed by your product. If infringement is found, the patent infringement opinion may also suggest ways to minimize or eliminate the infringement risk by modifying the allegedly infringing product. Second, the patent infringement opinion can be used in devising strategies for responding to the competitor's cease and desist letter. Third, the patent infringement opinion can be used in subsequent litigation to rebut a charge of willful infringement.
David V. Radack is a partner in the law firm Eckert Seamans Cherin & Mellott, 600 Grant Street, 42nd Floor, Pittsburgh, PA 15219; telephone (412) 566-6000; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.
http://en.wikipedia.org/wiki/Declaratory_judgment
Declaratory judgment
A declaratory judgment is a judgment of a court in a civil case which declares the rights, duties, or obligations of one or more parties in a dispute. A declaratory judgment is legally binding, but it does not order any action by a party. In this way the declaratory judgment is like an action to quiet title, a paternity petition, or any other form of preventive adjudication.[1] The declaratory judgment is generally distinguished from an advisory opinion because the latter does not resolve an actual case or controversy. A court may issue a declaratory judgment by itself or along with some other relief (such as an award of damages or an injunction). A declaratory judgment is sometimes called a declaratory ruling, a term which also includes decisions of regulatory agencies.
A declaratory judgment is typically requested when a party is threatened with a lawsuit but the lawsuit has not yet been filed; or when it is thought by one of two (or more) parties that their rights under law and/or contract might conflict; or as part of a counterclaim to prevent further, similar lawsuits from the same plaintiff (for example, when only a contract claim is filed, but a copyright claim might also be applicable). It may also be sought in administrative law instead of prerogative writs such as certiorari or prohibitions. In some instances a declaratory judgment is filed because the statute of limitations against a potential defendant may pass before the plaintiff incurs damage (for example, a malpractice statute applicable to a certified public accountant may be shorter than the time period the IRS has to assess a taxpayer for additional tax due to bad advice given by the C.P.A.).
Declaratory judgments are authorized by statute in most common law jurisdictions. In the United States, the federal government and most states enacted statutes in the 1920s and 1930s authorizing their courts to issue declaratory judgments. Although the declaratory judgment is generally a statutory remedy, it resembles remedies historically associated with equity.[1] As a result, the declaratory judgment has sometimes been described as a form of equitable relief.
Cease and desist
The filing of a declaratory judgment lawsuit can follow one party sending a cease and desist letter to another. A party contemplating the sending of such a letter risks that the recipient, or a party related to the recipient, such as a customer or supplier of the recipient, may file for a declaratory judgment in their own jurisdiction. This may require the sender to appear in a distant court, at their own expense. Thus the sending of a cease and desist letter presents a dilemma to the sender, as it would be desirable to be able to address the issues at hand in a candid manner without the need for litigation, but upon sending a candid letter, the recipient may seek a tactical advantage by instituting declaratory judgment litigation in a more favorable jurisdiction. Sometimes the parties agree in advance of discussions that no declaratory judgment lawsuit will be filed while the negotiations are continuing. Sometimes a lawsuit is filed, but not served, prior to sending such a notice, to preserve a jurisdiction advantage without engaging the judicial process fully. Some parties send cease and desist letters that make "an oblique suggestion of possible infringement" to lower the risk that the recipient files a declaratory judgment lawsuit.
[edit]
Declaratory judgment actions in patent litigation
Declaratory judgments are common in patent litigation - as well as in other areas of intellectual property litigation - because declaratory judgments allow an alleged infringer to "clear the air" with regard to a product or service which may be the focal point of a business. Take for example a typical claim of patent infringement. When a patent owner becomes aware of an infringer, the owner can simply wait until he pleases to bring a suit for infringement. Meanwhile, the monetary damages continuously accrue - with no effort expended by the patent owner, apart from marking the patent number on products the patent owner sold or licensed. On the other hand, the alleged infringer could do nothing to rectify the situation if no declaratory judgment existed. The alleged infringer would be forced to continue to operate his business with the cloud of a lawsuit over his head. Fortunately, the declaratory judgment procedure allows the alleged infringer to proactively bring suit to resolve the situation and eliminate the cloud of uncertainty looming overhead.
Common claims for declaratory judgment in patent cases are non-infringement, patent invalidity, and unenforceability. In order to bring a claim for declaratory judgment in a situation where a patent dispute may exist or develop, the claimant must (1) have a basis in federal subject matter jurisdiction in the claim and (2) establish that an actual controversy exists. In patent infringement cases, as opposed to disagreements about a patent license, it is clear that federal subject matter exists, because patent infringement cases are exclusively determined by the federal court system. If there is a substantial controversy of sufficient immediacy and reality, the court will generally proceed with the declaratory judgment action. The standard for subject matter jurisdiction was most recently addressed by the Supreme Court in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). However, even if subject matter exists, because the declaratory judgment statute is permissive—a district court, in its discretion, may decline to hear a declaratory judgment action.
Usually the claimant is actually making, using, selling, offering to sell or importing or is prepared to actually make, use or sell, offer to sell or import an allegedly infringing device or method, and usually the patent owner has claimed that such activities by claimant will result in patent infringement. An express threat of litigation is not needed, nor is it a guarantee that jurisdiction will be granted. Some factors courts have considered in this analysis are whether a patent owner has asserted its rights against an alleged infringer in a royalty dispute, whether the owner has sued a customer of an alleged infringer, or whether an owner has made statements regarding its patents in trade magazines.
Patent pitfalls and strategy
The patent owner must be very careful when communicating with possible infringers. If a patent owner does suggest that there is patent coverage of what an alleged infringer is doing or planning to do, the alleged infringer may bring suit. The alleged infringer - as plaintiff in the suit - can choose the venue of the suit subject to constitutional restrictions and the state long-arm statute of the forum in question. The suit can be brought in any forum in which the local federal district court can properly obtain personal jurisdiction over the alleged infringer. The patent owner who has been sued for a declaratory judgment has created a situation where he has lost the "home field advantage." Travel costs to a distant courthouse can be substantial, and a party that is litigating in a distant forum may have to hire a local attorney, if required by the local rules, in addition to its regular patent litigation counsel. Further, distant juries sometimes prefer the "home town" guy over the foreigner.
Defendants in infringement cases should also not forget the utility of a declaratory judgment as a counterclaim. If a defendant brings a declaratory judgment counterclaim, plaintiff may not be able to so easily drop the suit if the outcome begins to look dismal. By bringing a counterclaim of non-infringement - as well as the affirmative defense - the defendant is assured that the issue of infringement, although perhaps not patent validity, will be resolved in the process. The fees expended on the defense are now guaranteed to be of value towards a final resolution with respect to infringement.
Patent owners should also be aware that a counterclaim of infringement is a compulsory counterclaim to a claim for declaratory judgment of non-infringement. C.f. Vivid Techs., Inc. v. Am. Sci. & Eng'g Inc., 200 F.3d 795, 802 (Fed. Cir. 1999). If a patent owner fails to assert an infringement counterclaim in a declaratory judgment non-infringement suit, the patent infringement claim will be deemed waived.
References
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1483859
http://www.new-inventions-success.com/Patent-Lawsuit.html
http://www.ehow.com/about_6128910_patent-infringement-lawsuit-information.html
Patent Infringement Lawsuit Information
By Scott Yoder, eHow Contributor
updated: January 31, 2011
Patent infringement is an encroachment on the domain belonging to the legal owner of the patent. If someone else uses or copies the property claimed on your patent, you may have grounds for a lawsuit, injunction or other legal remedy
Identification
Patent infringement is a governed by federal law. Infringement is defined as a situation in which someone unlawfully makes, uses or sells a patented invention in the United States during the term of the patent.
Determining Patent Infringement
Prior to filing a lawsuit, you will have to determine that infringement is taking place. Your patent will be examined to outline the described infringement. Three areas will be considered: Direct infringement is when someone makes, uses or sells the patented invention. Indirect infringement occurs if someone encouraged someone else to make, use or sell the patented invention. Contributory infringement proves someone knowingly supplied or sold an item in which the only use is directly connected to the patented item. Good-faith ignorance can be used as a defense for indirect or contributory infringement but not for direct.
Information Requirements
Infringement will be determined for the most part by the language of the claims of the patent, and an investigation may be required to corroborate the claims of the suit. You will need details about the competing product's structure as well as how and when it is being marketed. You will need the location of the competitor and evidence of any direct or indirect communication between your organization and the competitor.
Courts
A patent infringement lawsuit will be processed through federal court. The first decision comes from the district court, and if there is an appeal it goes to the Court of Appeals for the Federal Circuit. Ultimately, the case can be taken to the Supreme Court.
Government Infringement
If the U.S. government infringes on your patent, you can seek remedy for damages in the United States Court of Federal Claims. The U.S. government can use any patented invention without your permission, but you are entitled to receive compensation for the use by or for the government.
http://www.new-inventions-success.com/Patent-Lawsuit.html
Who can start a patent lawsuit?
A patent owner can certainly file a patent lawsuit against an alleged infringer. In some cases a license holder can file a patent suit if they have the proper rights spelled out in their license agreement. However, most people don't know that the infringer can file intellectual property litigation against the patent owner, but only if the patent owner first threatens to sue. This can be a terrible surprise if the patent owner is not ready to go to court. Even worse, the infringer may choose a court that is inconvenient, expensive, or perhaps even hostile to the patent owner.
What happens in a patent lawsuit?
Patent litigation follows the typical course of a regular lawsuit. There is a complaint filed by one side and an answer by the other. Both sides work on discovery, which is the chance to gather facts that help their cases. Patent cases also have a special hearing called a Markman hearing where the claims of the patent are discussed in great detail. Claims are the part of a patent that lay out the property rights of the patent owner. They can be very technical and complicated, so the courts have the Markman hearing to help everyone agree on what the claims mean. Often, the case is won or lost in the Markman hearing. Often the Markman hearing comes down to the meaning of just one word or phrase. Millions of dollars can be riding on what that one word means.
What other issues come up with patent infringement lawsuits?
Patent lawsuits are all about patent infringement, but other issues can come up, too. Often there are arguments about contracts or licenses. Sometimes the patent owner is attacked for monopolistic behavior. The honesty of the patent owner, the inventors, and their patent attorneys is almost always put to question. Finally, a patent suit might include claims of trade secret abuse or violations of confidentiality rights, especially if an inventor of the technology goes to another company and that company infringes.
Some of the biggest patent infringement payouts
Here are some examples of some of the biggest patent infringement awards and settlements. You can see that the meaning of a word can sometimes really matter:
1. Kodak paid Polaroid $925 million to settle a patent infringement lawsuit on Polaroid's instant camera technology.
2. Blackberry (Research in Motion) paid NTP a $612 million settlement over technology covering the Blackberry phones.
3. An award of $537 million was issued against Microsoft to Ric Richardson who invented software designed to deter copying of software.
Summary
Lawsuits in general are to be avoided. They are the final remedy when your rights are violated. Patent infringement lawsuits can be very expensive, but the above settlements show that the solitary inventor can protect his rights, when the chips are down.
http://www.ehow.com/how_6816322_file-patent-infringement.html
How to File a Patent Infringement
Filing a patent infringement complaint may serve as your only recourse if someone copied your patent, especially when taking action against large corporations. United States courts allows individuals to represent themselves in federal court cases, so you don't need an attorney to file a patent infringement complaint. However, make sure the alleged perpetrator copied your invention to prevent avoidable fines because Rule 11 of the Federal Rules of Civil Procedure enforces penalties for filing
Instructions
Collect a visual of the infringing device for future reference. Take pictures, obtain schematics, technical specification sheets, diagrams or a product sample.
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Search for a copy of the infringing product's patent at the U.S. Patent and Trademark Office's (USPTO) on line database. You can also access patent documents from public libraries and commercial patent services in addition to the USPTO.
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Obtain a copy of the patent's file history, also termed the file wrapper, from the USPTO database. Patent file histories include a copy of the patent application, along with dialog between the patent examiner and applicant, all necessary information for filing a patent infringement complaint.
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Locate a district court to file your complaint. Since the federal government issues patents, patent infringement cases commence in federal district court. The United States divides the federal court system into 11 districts with district courts in various cities. If the alleged violator resides in a different state, the judge decides the appropriate U.S. District Court, or venue, to hear your case.
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Obtain a complaint form from the clerk's office of your chosen district court. Provide as much detail as possible in the complaint because failure to do so could result in your case being dismissed. Include a statement detailing each plaintiff's name and location, the defendant's identity and location, the reason for suing the defendant, why the court has jurisdiction and monetary or injunctive remedies required from each defendant . Include copies of the infringing product's photographs, patent and file history for the judge's reference.
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Sign the complaint and include your address, telephone number and email address. Each plaintiff must include his name, address, telephone number, email address and signature in the complaint. Make two copies of the complaint for the court and one copy for each defendant .
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Print two copies of a Civil Coversheet, a JS 044 form, at the U.S. Courts website to summarize basic details of your case. Complete these forms and attach one to each copy of the complaint.
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Obtain two summons forms from the clerk's office to notify the defendants of your complaint. A summons form requires the name and address of one defendant. If your complaint identifies more than one defendant, each individual gets his own separate summons form. Indicate "20" as the number of days a defendant has to respond to your summons, which is the standard amount of response days.
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Pay the federal filing fee, which as of August, 2010, was $350. If you cannot pay the filing fee, ask the clerk for a proceed in forma pauperis application to waive the filing fee. The clerk then signs her signature and places a seal on the summons before she assigns a case number and gives a copy of your file to the appointed judge.
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Mail a copy of the summons, Civil Coversheet and the complaint to each defendant.
http://library.findlaw.com/2003/Jun/5/132787.html
Your Product's Patent Has Been Infringed -- Now What?
By James J. Foster of Wolf, Greenfield & Sacks, P.C.
If you have patents covering your products (and these days, you probably have a bunch), you know how important it is to protect them to maintain your competitive position.
Thus, if you hear through the grapevine that a competitor is poised to come out with a product that might infringe on one of your patents, or even worse, that your customers have already started buying his product, your gut instinct might be to quickly fire off a letter or a phone call threatening him with a ruinous lawsuit.
Though your eagerness to put a halt to his activity is understandable, sending such a letter or making such a call could be a big mistake if you haven't taken a number of crucial strategic steps first.
Your first step should be to thoroughly discuss this situation with your patent counsel. One reason for this is that many of the competitors of New England high tech companies are in California, which means that as soon as the offending party gets wind that your are planning to sue for patent infringement, he will likely first sue you in his home district to gain a tactical advantage. His suit will request a declaratory judgment that your patents are invalid or not infringed on or both.
Although you could then respond by filing a suit, it's the federal courts that hear all patent cases and they have historically followed a general policy of allowing only the first suit filed to go forward. Thus, even if you file your own infringement suit as early as the day after your competitor filed his suit, your action will be stayed because his was the first filed. The few narrow exceptions to this rule cannot be counted on.
You may be thinking that you do not want to go to all the trouble and expense of having a lawyer draft and file a lawsuit if the competitor is just going to withdraw his product as soon as he is notified of a patent conflict. Such total surrender, however, is difficult to predict, and even if initially it appears your offender has no obvious defense, he may file his own suit simply to gain time to investigate your infringement allegations or the validity of your patent.
He may also file an action in an attempt to win leverage in any negotiations for licensing of patent rights. The bottom line is that in most cases it is worth the investment to file a preemptive complaint.
Here's another compelling reason to contact your patent lawyer first: Patent lawsuits are expensive. Before charging infringement, which would bring on a lawsuit, a thorough investigation must be conducted to ascertain that the competitor's product or method actually infringes your patent.
After a detailed inspection of the product, you may find, for example, that it does not meet one or more limitations required by your patent. Thus a case too hastily brought not only saddles you with substantial and unnecessary expenses but in certain situations a court may order you to pay your competitor's legal costs as well.
This pre-suit investigation can usually be done quickly and easily if the offending product can be obtained in the marketplace. Where the product is not available, however, or when the patent is drawn not to a product but to a chemical process or to a method of manufacturing, and the information available to you is thus incomplete or needs verification, you must take special care to obtain as much reliable information as possible.
When you do talk to your patent counselor, be prepared to supply whatever information he or she might need. Such information would normally include any available details about the structure of the competitor's product, dates and places where it has been marketed, location of the competitor's offices, and a history of any communications, direct or indirect, between your company and the competitor that might be relevant to this brewing dispute. You will want to ask your counsel for an opinion on the strength of your allegations, where and when to file an action, and whether your counsel feels you should file an action.
Patent infringement is a serious offense, but responding to it may be tricky. Emotionally, you may feel entitled to blast away at your competitor for the wrong he has done you but this may end up as a mistake in judgment. Call your patent counselor and carefully review all your options. The result of such an action will more likely be a favorable outcome for you.
© 2003 Wolf, Greenfield & Sacks, P.C.
http://www.bannerwitcoff.com/_docs/library/articles/riskbeingsued1.pdf
Providing Notice of Patent Infringement While Avoiding the Risk of Being Sued Spring 1998
by Jon O. Nelson and Binal J. Patel
Imagine the following scenario: Your New York company has just found a competitor in California selling products that infringe your prized patent. You realize that your competitor's infringement has taken away a lot of your business and you have had to lower prices as a result.
You want monetary relief from the infringer's sales, but you learn that you may not have been properly marking your products with your patent number. You know that the Patent Act requires that you provide actual notice to the infringer of the infringing activity to start your right to damages.
You decide to write a letter to the infringer to put the infringer on notice, but you do not want to give the infringer notice of the possibility of being sued because this may give rise to a declaratory judgment action by the infringer. You do not want to resort to a lawsuit without first trying to resolve the matter amicably. More importantly, you do not want to fight this case in California, the likely place in which your infringer would file a declaratory judgment action.
What do you do? How do you preserve your rights to damages without being sued by the infringer?
Despite the different standards for notice under the marking statute, 35 U.S.C. § 287(a), and subject matter jurisdiction for a declaratory judgment action, 28 U.S.C. § 2201, a patent owner must tread carefully to satisfy the former rules, while avoiding the latter. A patent owner can easily fall into the trap of establishing a basis for declaratory judgment action, while trying to provide actual notice to satisfy the marking requirement.
Many practitioners believe that the actual notice requirement is satisfied only if the requirements for declaratory judgment are satisfied. Indeed, it could be argued that no communication should be made that could be seen as an infringement notice if it would not have caused the recipient the reasonable apprehension of being sued and established the predicate for bringing an action for a declaratory judgment. Further, it may be unfair for an alleged infringer to become liable for patent infringement damages by virtue of an affirmative communication from the patentee, while not being able to come into court to contest the patent's validity or infringement. See, e.g., Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 186-87 (Fed. Cir. 1994) (Informational letters of the type that are insufficient to establish declaratory judgment jurisdiction are not notice of infringement for purposes of the marking statute.)
This position was recently argued by the appellants in SRI Int'l Inc. v. Advanced Tech. Labs, Inc. 127 F.3d 1462 (Fed. Cir. 1997). In that case, the Court of Appeals for the Federal Circuit, which hears all appeals arising under the patent laws, recognized that there is a difference between the marking statute and the declaratory judgment act. The patentee sent the defendant a letter which included a copy of the patent-in- suit, identified two of defendant's products that the patentee stated may infringe the patent-in-suit, and offered a nonexclusive license. The letter stated, in part:
We have noted from your advertising literature that [defendant] products Models Ultramark 4 and 8 may infringe one or more claims of U.S. Patent No. 4,016,750, Philip S. Green, ULTRASONIC IMAGING METHOD AND APPARATUS. A copy of the patent and its associated reexamination certificate are enclosed. The patent is assigned to [plaintiff] and nonexclusive licenses are extant.
[Plaintiff] would be pleased to provide [defendant] with a nonexclusive license under the patent. For your information, counterpart applications are on file in a number of countries outside the United States. If you are of the opinion that you do not need a license from [plaintiff], it would be helpful if you could give us some insight into your reasons.
1The defendant argued that the letter did not satisfy the notice requirement of § 287(a) because it did not meet the requirements of creating an actual controversy under the Declaratory Judgment Act. The court rejected this argument stating that "[a]ctual notice [for the marking statute] may be achieved without creating a case of actual controversy [for a declaratory judgment action]." SRI Int'l, 127 F.3d at 1470.
The court, however, failed to address whether the letter in that case was sufficient to give rise to a declaratory judgment action. But, see, Scholle Corp. v. Blackhawk Molding Co., Inc., 133 F.3d 1469, 1472 (Fed. Cir. 1998) (citing SRI Int'l).
As a result, the Federal Circuit has not provided clear guidance as to the distinction between actual notice under the marking statute and reasonable apprehension giving rise to declaratory judgment jurisdiction. To best understand how these two concepts differ, we must look to the language of the marking statute and the declaratory judgment act.
THE DECLARATORY JUDGMENT ACT
The Declaratory Judgment Act provides: In a case of actual controversy within its jurisdiction ... any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought. 28 U.S.C. § 2201. An action for declaratory judgment for noninfringement by an accused infringer is proper if (1) the patent owner's conduct created on the part of the plaintiff a reasonable apprehension of being sued if it continues the allegedly infringing activity, and (2) the plaintiff has either produced the device or prepared to produce it. West Interactive Corp. v. First Data Resources, Inc., 972 F.2d 1295, 1297 (Fed. Cir. 1992). "When a patentee has explicitly charged that a current activity of the declaratory plaintiff is an infringement, — certainty has rendered apprehension irrelevant, and one need say no more." Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 936-37 (Fed. Cir. 1993), cert. denied, 510 U.S. 1140 (1994) (quoting Arrowhead Indus. Water, Inc. v. Ecolochem, Inc., 846 F.2d 731, 736 (Fed. Cir. 1986)).
THE MARKING STATUTE
To be entitled to damages, the patentee must comply with the patent marking statute. This statute requires: Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice.
35 U.S.C. § 287(a). The marking statute serves the purpose of allowing the public to readily identify the intellectual property status of articles in commerce and to prevent innocent infringement. If a party fails to comply with this provision, it may still be entitled to recover money damages if it provides actual notice to the infringing party. The notice requirement under the marking statute provides:
In the event of failure to so mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.
35 U.S.C. § 287(a). Since the Federal Circuit's decision, in Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 178 (Fed. Cir. 1994), courts have strictly construed the actual notice requirement to require a specific charge or accusation of infringement in a letter or other communication. Courts have also required identification of the patent number and the particular accused product. In SRI Int'l, the Federal Circuit held that the "actual notice requirement of § 287(a) is satisfied when the recipient is informed of the identity of the patent and the activity that is believed to be an infringement, accompanied by a proposal to abate the infringement, whether license or otherwise." 127 F.3d at 1470.
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Given the strict requirements of the actual notice requirements, and the relatively less stringent requirements to sustain a declaratory judgment action, a patent owner must proceed cautiously to ensure that the actual notice requirements have been satisfied without falling into declaratory judgment jurisdiction. The patent owner may send a letter, similar to that in SRI Int'l, and offer the infringer a license as a pretense to put the infringer on actual notice. This option may not be feasible, however, if the patent owner does not wish to offer a license to the infringer. Moreover, it is not clear whether this letter is sufficient to avoid a declaratory judgment action.
It may be more desirable, on the other hand, to simply write a stern "cease and desist" letter, alerting the infringer of the infringing activity and of the infringed patent. Although it likely would give rise to declaratory judgment jurisdiction, such a letter has the advantage of clearly alerting the infringer that the patent owner considers the infringement a serious matter. This may help resolve the matter more expeditiously. Such a letter may also eliminate the possibility that the infringer will challenge whether the actual notice requirement was satisfied. The fact that the letter gives rise to a potential declaratory judgment action does not mean that the infringer will actually file such a lawsuit. Even if the accused infringer brings a declaratory judgment action, the district court still has the discretion not to entertain the declaratory judgment action, even if the "reasonable apprehension" requirement is met for jurisdiction. See Minnesota Mining & Mfg. Co. v. Norton Co., 929 F.2d 670, 672 (Fed. Cir. 1991) (Dismissal reversed for abuse of discretion). Alternatively, the patent owner may file an infringement action in another forum and seek to transfer, dismiss or stay the declaratory judgment action to a more convenient forum under 28 U.S.C. § 1404(a).
Another option is simply to file a patent infringement action in addition to or in leu of sending a notice letter. The filing and service of the lawsuit on the infringer provides the requisite notice requirement to start tolling the patent owner's right to damages. See 35 U.S.C. § 287(a) ("Filing of an action for infringement shall constitute such notice"). This option will likely maintain the litigation between the patent owner and the infringer in the patent owner's chosen forum while the parties try to resolve with the matter.
The infringer may try to transfer the action. This, however, may not be successful if the transfer merely shifts the burden from one party to the other. Alternatively, the infringer may file a declaratory judgment action in another forum. Under the "first-to-file" rule, however, the patent owner is likely to dismiss or transfer the declaratory judgment action. The "first-to-file" rule allows a district court to transfer, stay, or dismiss a subsequently filed action when a similar complaint has already been filed in another federal court. Ward v. Follett Corp., 158 F.R.D. 645, 648 (N.D. Cal. 1994); Cardiovascular Imaging Sys. v. Boston Scientific Corp., 1994 U.S. Dist. LEXIS 6722, at *6 (N.D. Cal. Apr. 26, 1994) (The first-to-file rule is generally followed by both the Ninth and Federal Circuits.) In deciding whether the first to file rule is applicable, the court must consider three threshold factors: 1) the chronology of the two actions, 2) the similarity of the parties, and 3) the similarity of the issues. Alltrade, Inc. v. Uniweld Products, Inc., 946 F.2d 622, 625 (9th Cir. 1991); Ward, 158 F.R.D. at 648.
Yet another option is to caution the infringer, in the letter, that the patent owner will file a lawsuit on a certain date if the infringement has not ceased. See, e.g., Serco Servs. Co., L.P. v. Kelley Co., Inc., 51 F.3d 1037 (Fed. Cir. 1995). In this case, if the infringer files a declaratory judgment action, the patent owner may file a patent infringement action and have a basis for transferring, dismissing, staying and even enjoining the declaratory judgment action.
Exceptions to the first-to-file rule arise when the first-filed suit is anticipatory or involves bad faith or forum shopping on the part of the plaintiff. Alltrade, 946 F.2d at 628. A declaratory judgment suit may be deemed anticipatory when "the plaintiff filed its suit upon receipt of specific, concrete indications that a suit by the defendant was imminent." Ward, 158 F.R.D. at 648; see also, Factors Etc., Inc. v. Pro Arts, Inc., 579 F.2d 215, 219 (2d Cir. 1978), cert. denied, 440 U.S. 908 (1979) ("A federal declaratory judgment is not a prize to the winner of the race to the courthouse.") (quoting Perez v. Ledesma, 401 U.S. 82, 119 n.12 (1971)). In particular, "[w]hen the declaratory judgment action has been triggered by a notice letter, this equitable consideration may be a factor in the decision to allow the later filed action to proceed to judgment in the plaintiff's chosen forum." Factors, 579 F.2d at 219 (Holding that the lower court did not abuse its
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discretion in allowing the later-filed action to proceed in part since the first-filed declaratory judgment action was filed in apparent anticipation of plaintiff's suit.) The patent owner should ensure that the notice of suit in the infringement letter expressly mentions a lawsuit, a tentative filing date or a forum. See Employers Ins. of Wausau v. Prudential Ins. Co.of Am., 763 F. Supp. 46, 49 (S.D.N.Y. 1991).
Another more interesting option would be a notice letter expressly referencing the marking statute and the declaratory judgment act. For example the letter may read:
Dear Sir: Please be advised that ABC Corporation is the legal owner of U.S. Patent No. 5,555,555 and that your products, identified by Model No. XYZ, infringe this patent. At this point, we have not assessed whether we intend to enforce this patent and, therefore, you should not be concerned that a lawsuit may be filed against you.
This letter is strictly for purposes of providing notice of infringement pursuant to 35 U.S.C. § 287(a) and that it does not give rise to a cause of action pursuant to 28 U.S.C. § 2201.
This letter also seems to meet the requirements of the marking statute while avoiding a potential cause of action for declaratory judgment. The letter provides adequate notice of infringement under the marking statute and expressly states that the patent owner does not have an intention of enforcing the patent against the infringing party. Although the patent owner has started tolling its rights for damages, this letter does not help in getting the infringer to stop the infringing activity. Any subsequent conduct by the patent owner in getting the infringer to stop the infringing, then may give rise to a declaratory judgment action. Furthermore, any delay in enforcing the patent at a later date may be met with a latches argument.
Whatever the approach, before a notice of infringement letter is sent to the infringer, the patent owner should be willing and prepared to either file a patent infringement action or defend a declaratory judgment action. The patent owner should also recognize that while it may be desirable to avoid giving rise to a declaratory judgment action, the purpose of the letter is to provide actual notice to toll the patent owner's rights to collect damages from the infringement. The patent owner should, therefore, first ensure that the notice of infringement letter clearly satisfies the actual notice requirements. Avoiding the risk of a declaratory judgment action should be a secondary consideration.
More importantly, the primary purpose of communicating with the infringer may often be to get the infringer to stop the infringing activity. In this case, there may be little that the patent owner can do to avoid giving rise to a declaratory judgment action. The patent owner, therefore, is left with either filing a lawsuit and preserving its chosen forum, or communicating with the infringer to resolve the infringement issue and risking a declaratory judgment action by the infringer. In either case, the patent owner should also take into account the possibility that either action may be transferred, dismissed or stayed.
Jon O. Nelson has practiced in the Chicago office of Banner &Witcoff, Ltd., for more than thirty years. Throughout that time he has been involved in the procurement of patents, trademarks and copyrights, advisory counseling, opinion preparation, contract negotiation and preparation, and extensive litigation related to patents, trademarks and copyrights. Mr. Nelson is known for his innovative approach to intellectual property problems.
Binal J. Patel has experience in a variety of intellectual property areas including patent, trade secret, antitrust, copyright and trademark. In addition, he has experience in preparing patentability, validity, and infringement opinions relating to inventions in these fields.
This article is reprinted with permission from the Spring, 1998 issue of CC IP Outlook © 1998 NLP IP Company.
http://www.davidmoorelegal.com/articles/protect-your-invention-part6.html
Part 6: Infringement
Congratulations, your hard work and effort has paid off and you have received a patent on your invention from the U.S. Patent Office. After admiring the ribbon copy of your patent, you notice an advertisement in a magazine for an exact replica of your invention being sold by a company other than yours. After you have recovered from aspirating your morning cup of coffee, what should you do? Call the police? Nope. Call the Patent Office? Nope. Call the President ? Nope. Call your lawyer? Yes. The patent which has been issued grants you the right to exclude others from making, using or selling your invention in the United States for approximately 20 years. If your patent is infringed, the Patent Office, police and the President are not going to help you. You have to go to a United States District Court and file a lawsuit asking for relief if an amicable resolution cannot be reached with the infringer. The relief that you may obtain may be an injunction in some cases, ordering the infringer to stop making, using or selling your invention in the United States. The relief obtained may be in the form of money damages for lost profits related to the infringer’s sale of your invention which presumably would have been your profits had the infringer not come along and sold your invention. In some cases where the infringement is found to be “willful” your relief may include attorney’s fees and a multiple of your actual damages. However, it is the patent owner’s burden to prove that the infringer is actually infringing the patent.
There are a couple of types of infringement. The first type is direct infringement which as the term implies, the infringer simply makes, uses or sells the invention in the United States. Another type of infringement is infringement by inducement. In infringement by inducement, the infringer causes someone else to infringe a patent. As an example of infringement by inducement, a clinical laboratory offers a particular laboratory test and markets the test to physicians as a method for diagnosis of a disease condition. The clinical laboratory knows that the physician’s use of the laboratory test for diagnosis of the disease condition will infringe upon a medical method patent issued to a physician/inventor. When a doctor uses the laboratory test for the purpose of diagnosis of the disease condition, the clinical lab may be liable to the inventor for infringement by inducement. However, the physician who uses the test for the indicated reason is not liable to the inventor for infringement according to Federal law.
The principal defenses to an infringement suit other than showing that the infringer's product is substantially different than the invention disclosed in the patent is to show that the patent itself is invalid. In court, the patent will be presumed to be valid. However, there are a number of ways that the alleged infringing party may attempt to show that the patent is invalid. Anyone who has jumped through the fiery hoops thrown out by the Patent Office Examiner during the prosecution of a patent application might think that the issuance of a patent would effectively preclude somebody from being able to challenge the validity of the patent at some later time. Such is clearly not the case because a patent can be found to be invalid on any number of grounds which were not considered during prosecution of the patent application. For example, a patent may be found to be invalid because all of the inventors were not properly named as inventors in the patent application. A patent may be invalid if the court finds that there was willful misconduct on the part of the inventor during prosecution of the patent application. This willful misconduct occurs in circumstances such as when an inventor fails to disclose an article of prior art or other critical information of which the inventor is aware and which might preclude the issuance of a patent. Invalidity of a patent may also be found if a publication comprising prior art is found in some obscure journal which literally describes the invention. A patent may also be found to be invalid if there is evidence that the inventor offered to sell the invention more than one year prior to filing the patent application. In litigation the party accused of infringement will assemble a team of lawyers who will scour the literature, patent application file and the patent looking for anything which will render the patent invalid. A finding that the patent is invalid negates any claim of infringement by the inventor.
Rather than going to the court house and litigating the infringement lawsuit, including the validity of the underlying patent, sometimes the infringer is asked to take a license which permits the infringer to sell the invention with payment of royalties to the inventor. In the past, if the infringer wanted to challenge the invalidity of the patent after entering into a license agreement, the infringer had to breach the license agreement and file suit against the inventor alleging invalidity of the patent. This inevitably lead to a breach of contract suit by the inventor against the infringer for breach of the license agreement. Recently, the Supreme Court of the United States has resolved this dilemma for those potential infringers forced to take a license by holding that the infringer did not have to breach the license in order to challenge the validity of the patent. In this way, the infringer would not be subject to additional litigation for breach of the license while asking the court to determine the validity of the patent.
Infringement lawsuits which result in a finding of invalidity of the patent due to incorrect inventorship or willful misconduct during prosecution of the patent application can be avoided. At the very beginning the identity of all inventors should be determined as well as the role that each inventor played in the conception of the invention. The correct inventors should be disclosed in a timely fashion to the Patent Office. If a mistake in inventorship is made, such mistake should be corrected as soon as possible. Each inventor and the lawyers representing them owe a duty of candor to the Patent Office. This duty of candor requires that each inventor and their lawyers should act honestly in their dealings with the Patent Office and disclose, to the extent of which they are aware, all relevant information, potential prior art publications and other material information to the examiner during prosecution. By full and prompt disclosure of the facts to the examiner, one can successfully defend a challenge of incorrect inventorship and/or willful misconduct during the infringement lawsuit.
http://www.intellectualpropertylawfirms.com/resources/intellectual-property/patents/enforcing-patent-rights.htm
Enforcing Patent Rights
In instances where a business or individual feels their patent rights are being infringed upon, legal action exercising their patent protection rights must be taken with the assistance of an intellectual property lawyer. Patent litigation regarding infringement can be utilized by patent holders to place an injunction against infringing entities, or in some instances, even obtain fiscal damages. In its most basic form, patent infringements happens when another entity produces, utilizes, commercializes, or distributes a previously patented item without express permission from existing patent holders.
Through civil suit in the appropriate federal district court, a patent holder can exercise their legal recourse to stop the activities of infringers, as well as receive monetary compensation for unlawful use, among other items. For individuals or entities seeking to take legal action against infringing companies, patent law specifies that legal action must be initiated within a period of six (6) years since the beginning of the infringement. If not done within this time period, patent laws state that patent holders are time-barred from pursuing further infringement actions. For this reason, acting swiftly with the assistance of a patent law attorney is essential.
Process of Patent Infringement Suits
Patents are granted at a federal level, and therefore, any disputes regarding patent infringement will have to be heard within federal district courts. Typically, a patent holder will file suit against an infringer, which in turn may countersue contesting the validity of the patent itself. Common points of contention over patent validity may attempt to disparage the following vital points, including:
4. Accurate and valid information in the patent application itself
5. Non-obviousness of an invention
6. Novelty, or distinctly new nature of an inventions
During the course of a patent infringement trial, plaintiffs, or the patent holders, must provide the burden of proof against defendant infringers. This burden of proof, or preponderance of evidence, must provide that a valid patent was held, an infringement of this patent occurred, and the infringement occurred at a commercial or public level.
Types of Patent Infringement
In the court system, there are several types of recognized patent infringement that judges and in some instances, juries may find occurred. The most commonly recognized forms of patent infringement include:
• Direct patent infringement
• Indirect patent infringement
• Contributory patent infringement
• Literal patent infringement
• Willful patent infringement
• Infringement under the doctrine of equivalents
Generally speaking, direct patent infringement occurs when a third party makes, produces, commercializes, or utilizes a patent without permission from a valid patent holder. Indirect patent infringement, a derivative of direct patent infringement, occurs when another individual or entity aids, encourages, or abets another party infringe upon patent rights.
Contributory infringement, which is more technical in definition, occurs when an individual or entity provides the materials necessary for production that can only be used in an infringing manner by a third party infringer. Literal infringement, on the other hand, is a form of more direct infringement that uses similar or verbatim language from patent claims on the infringing device. The doctrine of equivalents infringement case would entail a device, design, or plan that provides for the substantially same process, result, and same methods as an invention previously patented.
Within the realm of patent infringement, the courts must also determine whether or not the infringement was a willing, or willful, infringement on behalf of the defendants. Willful infringement actions may include ceasing to end potentially infringing actions or productions when notified or for infringements that can be proven as known violations of patent rights. Defendants found in violation of patent rights may face financial damage punishments treble the specified amounts requested in some instances.
Patent Infringement Damages
For defendants found in infringement of the plaintiff’s patent rights, the courts will issue a judgment and order financial damages be paid to the plaintiff, or patent holder. These damages and other judgments may include:
• Financial royalty payments
• Actual damage payments, such as lost profits and other detrimental factors
• Legal and court fees incurred by patent holders
• Permanent injunction against future infringing actions
