Patent Infringement Examples
What are some examples of patent infringement and what do those cases tell us
Patent infringement is the unauthorized creation or sale of a product that matches one or more claims in an active patent. A patent owner has the legal right to exclude others from making, using, selling, or offering to sell the invention – the exclusive rights one receives because of patent protection. Competitors cannot make, use, sell, or offer the invention described in a patent’s claims without the patent owner’s permission.
If a patent owner discovers that a product is infringing the patent, the patent owner can claim monetary damages in federal court, and in some cases the patent owner can even get an injunction to stop the infringing behavior.
Under U.S. law, there are a few different legal theories for different types of patent infringement:
- Direct infringement: A single entity’s product or service meets all the limitations of at least one independent claim in an active patent. The defendant has created a literal infringement of this dependent claim of the utility patent. The party in question does not need to know that the patent exists in order to be held liable.
- Indirect infringement: One entity causes or assists another entity to create a product or provide a service that meets all the limitations of at least one independent claim in your patent. There are two types:
- Induced infringement: The infringer knows about the patent, and knowingly causes the other party to directly infringe the patent.
- Contributory infringement: The infringer knowingly provides a component or product that helps the other party directly infringe the patent, and the component or product doesn’t have any substantial non-infringing use.
How does a patent owner prove patent infringement:
- The patent owner or plaintiff has an active, valid patent.
- The alleged infringer or defendant has engaged in an act of infringement (as stated above – making, using, selling, or offering to sell the invention as described in the patent).
- That the allegedly infringing product incorporates the features of at least one independent claim of the patent.
Proving Ownership
- Written Assignment: Typically, ownership is shown through a written assignment from the inventors to the current patent holder.
- Execution Issues: If a written assignment was not properly executed or if there’s a dispute among inventors, proving ownership can become difficult.
- Documentation: Proper documentation from the outset is critical to avoid ownership issues later.
Proving Validity
- Presumption of Validity: U.S. patents are presumed valid, but defendants in infringement cases will often challenge this.
- Common Invalidity Arguments:
- Prior Art: Claims are obvious or anticipated by prior art.
- Patent Eligibility: The subject matter is not eligible for a patent (e.g., abstract ideas).
- Application Issues: Incorrect or misleading information in the application or withheld material information.
- Specification Issues: Insufficient description or enabling detail in the patent specification.
- Claim Ambiguity: Claims are too ambiguous to be understood.
Proving an Act of Infringement
To prove infringement, you must show that someone has made, used, sold, or offered to sell your patented invention without permission. Key points include:
- Act of Infringement: Generally, the act must occur in the U.S., though there are exceptions for certain activities outside the U.S.
- Definitive Proof: Identify the legal entity responsible using sales data, SEC filings, advertisements, product catalogs, or the infringer’s website.
Proving That the Product or Process Infringes on an Active Patent
Federal standards for proving infringement require specificity. You’ll need to:
- Detailed Claims Analysis: Explain the contents of your patent claims and compare them to the infringing product or process.
- Claim Chart: Use a claim chart to show that the infringer’s product or process includes each element of at least one independent claim.
- Claim Interpretation: Interpret claims in light of the patent’s specification and prosecution history.
What If My Patent is Pending?
With a pending patent, enforcement options are limited. You can hold an infringer liable only after the patent is issued if the application was published with substantially the same claims. However, “patent pending” status can deter competitors.
Drafting a High-Quality Patent That Can Be Enforced
- Thorough Prior Art Search: Conduct a prior art search to avoid unexpected invalidation.
- Detectable Acts of Infringement: Craft claims to cover inventions where infringement is easily detectable using public information.
- Well-Constructed Claims: Engage a patent attorney with the right technical expertise. Use a mix of broad and narrow claims to balance enforceability and resistance to invalidation.
The best way to review patent infringement is to look at examples in case law. (Please note that all these cases are about utility patents. Design patents are rarely infringed because they can easily be avoided by a slight change to the design.) A patent infringement case is a civil lawsuit asking for monetary and injunctive damages. Here are some patent cases to review:
Eli Lilly and Company v. Teva Parenteral Medicines, Inc.
Court: United States Court of Appeals for the Federal Circuit
Date: January 12, 2017
Citation: 845 F.3d 1357; 121 U.S.P.Q.2d 1277
Summary:
Background:Eli Lilly and Company (“Lilly”) filed a lawsuit against Teva Parenteral Medicines, Inc. (“Teva”), alleging patent infringement related to Lilly’s patent for a method of administering a chemotherapy drug, pemetrexed disodium, marketed as Alimta. The patents in question were U.S. Patent Nos. 7,772,209 and 8,927,592, which covered a method of administering pemetrexed with folic acid and vitamin B12 to reduce the toxic effects of the chemotherapy.
District Court Proceedings:The district court found in favor of Lilly, holding that Teva’s proposed generic version of the drug would infringe on Lilly’s patents. The court issued an injunction preventing Teva from marketing its generic product before the expiration of Lilly’s patents and its patented products. Teva appealed the decision, challenging both the district court’s claim construction and the finding of infringement.
Federal Circuit Decision:
- Claim Construction:
- The Federal Circuit reviewed the district court’s construction of the claims de novo (anew) and affirmed the district court’s interpretation. The court agreed that the claims should be interpreted to cover the administration of pemetrexed disodium with folic acid and vitamin B12, which was essential to the patented method.
- Infringement:
- The Federal Circuit upheld the district court’s finding of infringement. The court determined that Teva’s proposed label for its generic product instructed doctors to follow the same administration method covered by Lilly’s patents. Therefore, the label induced infringement under 35 U.S.C. § 271(b).
- Doctrine of Equivalents:
- The court also addressed the doctrine of equivalents, which allows for a finding of infringement even if the accused product or method does not literally infringe on the patent claims but performs substantially the same function in substantially the same way to achieve the same result. The court concluded that Teva’s product would infringe under the doctrine of equivalents.
Conclusion:The Federal Circuit affirmed the district court’s judgment in favor of Eli Lilly and Company, confirming that Teva Parenteral Medicines, Inc.’s proposed generic version of pemetrexed disodium would infringe on Lilly’s patents. The decision reinforced the protection of Lilly’s patented method for administering the chemotherapy drug with folic acid and vitamin B12 to mitigate its toxic effects.
Key Takeaways:
- Proper claim construction is crucial in patent infringement cases, as it determines the scope of the patent rights.
- Induced infringement can occur when a product’s labeling instructs users to follow a patented method.
- The doctrine of equivalents provides a basis for finding infringement even when the accused product or method does not literally infringe on the patent claims.
Akamai Technologies, Inc. v. Limelight Networks, Inc.
Court: United States Court of Appeals for the Federal Circuit
Date: August 13, 2015
Citation: 797 F.3d 1020; 116 U.S.P.Q.2d 1344
Summary:
Background:Akamai Technologies, Inc. (“Akamai”) filed a patent infringement lawsuit against Limelight Networks, Inc. (“Limelight”), alleging that Limelight infringed on Akamai’s patent, U.S. Patent No. 6,108,703. The patent relates to a method of delivering electronic data using a content delivery network (CDN), specifically a system for delivering web content by having the content stored on a network of servers and then delivering the content from the server closest to the end user.
District Court Proceedings:A jury initially found that Limelight infringed on Akamai’s patent and awarded Akamai significant damages. However, the district court set aside the jury’s verdict on the grounds that Limelight did not directly infringe the patent because not all steps of the claimed method were performed by Limelight or controlled by a single entity.
Federal Circuit Decision:
- Joint Infringement Doctrine:
- The case initially went through multiple appeals, with the key issue being the concept of “divided” or “joint” infringement. Under U.S. patent law, direct infringement requires that all steps of a claimed method be performed by or attributable to a single entity.
- Involvement of U.S. Supreme Court:
- The case reached the United States Supreme Court, which reversed a previous Federal Circuit ruling, holding that Limelight could not be held liable for inducement of infringement without direct infringement by a single entity. The case was sent back to the Federal Circuit to reconsider the issue of direct infringement.
- En Banc Federal Circuit Decision:
- On remand, an en banc panel of the Federal Circuit revisited the standards for direct infringement in cases of divided performance of method claims. The court held that a party could be liable for direct infringement if it performs some steps of a claimed method and directs or controls others to perform the remaining steps.
- Application to Limelight:
- Applying this standard, the Federal Circuit found that Limelight did indeed direct or control its customers in performing the steps of the claimed method that it did not perform itself. Specifically, Limelight instructed its customers on how to tag their content, a crucial step in the patented method.
- Final Judgment:
- The Federal Circuit concluded that Limelight was liable for direct infringement of Akamai’s patent under the new joint infringement standard. This decision reinstated the jury’s original finding of infringement and the damages awarded to Akamai.
Conclusion:The United States Court of Appeals for the Federal Circuit held that Limelight Networks, Inc. directly infringed Akamai Technologies, Inc.’s patent by performing some steps of the claimed method and directing or controlling its customers to perform the remaining steps. This decision was significant in clarifying the law around joint infringement and the responsibilities of entities in performing steps of a patented method.
Key Takeaways:
- Direct infringement can occur even when multiple parties perform the steps of a patented method, provided one party directs or controls the others.
- The concept of “direction or control” is critical in determining joint infringement liability.
- The case underscores the complexity of patent law in the context of modern technological methods, such as content delivery networks.
Voter Verified, Inc. v. Premier Election Solutions, Inc.
Court: United States Court of Appeals for the Federal Circuit
Date: November 5, 2012
Citation: 698 F.3d 1374; 104 U.S.P.Q.2d 1553
Summary:
Background:Voter Verified, Inc. (“Voter Verified”) filed a patent infringement lawsuit against Premier Election Solutions, Inc. (formerly known as Diebold Election Systems, Inc.) and other defendants, alleging infringement of its patent, U.S. Patent No. 6,769,613. The patent in question relates to an automated voting system that provides a printed confirmation of a voter’s ballot.
District Court Proceedings:The district court initially ruled in favor of Voter Verified, granting summary judgment of infringement against Premier Election Solutions. The district court found that the accused voting systems used by Premier Election Solutions met all the limitations of the asserted claims of Voter Verified’s patent.
Federal Circuit Decision:
- Patent Validity and Prior Art:
- Premier Election Solutions argued that the asserted claims were invalid because they were anticipated by prior art or obvious in view of prior art. The Federal Circuit reviewed the district court’s determination of validity, considering whether the prior art disclosed all the limitations of the claimed invention or rendered it obvious.
- Anticipation:
- The court found that the prior art references did not disclose all the limitations of the asserted claims. Specifically, none of the prior art references disclosed the combination of features claimed in Voter Verified’s patent, including the specific method of providing a printed confirmation of a voter’s ballot.
- Obviousness:
- The Federal Circuit also examined the obviousness argument and concluded that the combination of prior art references did not render the claimed invention obvious. The court held that there was no motivation to combine the prior art references in the manner claimed by the patent, and the combination would not have been obvious to a person of ordinary skill in the art.
- Direct and Indirect Infringement:
- The court analyzed both direct and indirect infringement. The Federal Circuit agreed with the district court that the accused voting systems directly infringed the asserted claims. Additionally, the court found that Premier Election Solutions induced and contributed to the infringement by its customers.
- Final Judgment:
- The Federal Circuit affirmed the district court’s judgment of infringement and upheld the validity of the asserted claims of Voter Verified’s patent. The court agreed with the lower court that Premier Election Solutions’ voting systems met all the claim limitations and that the patent was neither anticipated nor obvious in light of the prior art.
Conclusion:The United States Court of Appeals for the Federal Circuit upheld the district court’s findings that Premier Election Solutions infringed Voter Verified, Inc.’s patent. The court also affirmed the validity of the patent, rejecting the arguments of anticipation and obviousness based on prior art.
Key Takeaways:
- Validity challenges based on anticipation and obviousness require detailed analysis of prior art and claim limitations.
- A combination of prior art references must have a clear motivation and not be obvious to a person of ordinary skill in the art to invalidate a patent.
- Direct and indirect infringement can both be found when an entity’s product meets all the limitations of a patented claim and the entity encourages or contributes to others’ use of the infringing product instead of the patented product.
Ottah v. Bracewell LLP
Court: United States Court of Appeals for the Federal Circuit
Date: November 8, 2022
Citation: 2022 WL 16754378
Summary:
Background:
In this case, Samson O. Ottah filed a patent infringement lawsuit against Bracewell LLP. Ottah claimed that Bracewell LLP infringed on his patent, U.S. Patent No. 7,152,840, which relates to a “book holder.” The book holder is designed to be mounted on a vehicle steering wheel to allow for hands-free reading.
District Court Proceedings:
The district court dismissed Ottah’s complaint, finding that Ottah failed to state a plausible claim of patent infringement. The court concluded that Ottah did not adequately allege how Bracewell LLP’s actions directly infringed on his patent. Additionally, the district court found that Bracewell LLP was not the correct party to sue, as it did not manufacture, use, sell, or offer to sell the allegedly infringing product. Ottah’s patented product also did not match the accused product.
Federal Circuit Appeal:
Ottah appealed the district court’s dismissal to the United States Court of Appeals for the Federal Circuit. The Federal Circuit reviewed the district court’s decision de novo, which means they considered the matter anew without deference to the lower court’s ruling.
Federal Circuit Decision:
- Failure to State a Claim:
- The Federal Circuit agreed with the district court that Ottah failed to state a plausible claim for patent infringement. The complaint did not sufficiently describe how Bracewell LLP engaged in activities that would constitute infringement under 35 U.S.C. § 271.
- Incorrect Defendant:
- The court noted that Ottah did not provide any evidence or allegations that Bracewell LLP was involved in making, using, selling, or offering for sale any product that could infringe his patent. Since Bracewell LLP is a law firm, it is not a manufacturer or seller of the accused product, making them an inappropriate defendant in this case.
- No Amendments:
- The court also observed that Ottah did not propose any amendments to his complaint that could potentially cure the deficiencies identified by the district court. Thus, dismissing the case was appropriate.
Conclusion:The Federal Circuit affirmed the district court’s dismissal of Ottah’s complaint for failure to state a claim upon which relief could be granted and for suing the incorrect defendant. The dismissal was upheld without the opportunity to amend the complaint.
Key Takeaways:
- A patent infringement complaint must clearly articulate how the defendant’s actions constitute infringement.
- The correct defendant in a patent infringement case must be one who is directly involved in infringing activities, such as manufacturing or selling the infringing product.
- Without a viable amendment to cure the complaint’s deficiencies, dismissal is likely to be upheld on appeal.
Lyda v. CBS Corporation
Court: United States Court of Appeals for the Federal Circuit
Date: September 30, 2016
Citation: 838 F.3d 1331; 120 U.S.P.Q.2d 1310
Summary:
Background:Richard Lyda filed a patent infringement lawsuit against CBS Corporation, asserting that CBS had infringed on his patents, U.S. Patent Nos. 7,434,243 and 7,730,506, which cover a system and method for enhancing television viewing by incorporating interactive features. Lyda alleged that CBS’s use of certain interactive features during broadcasts, such as allowing viewers to vote on outcomes or participate in polls, infringed his patents.
District Court Proceedings:The district court dismissed Lyda’s complaint, finding that Lyda had failed to meet the pleading standards required to state a claim for patent infringement. Specifically, the court found that Lyda did not adequately allege direct infringement by CBS, nor did he properly address the requirements for joint infringement.
Federal Circuit Decision:
- Pleading Standards:
- The Federal Circuit affirmed the district court’s dismissal, emphasizing the importance of meeting the pleading standards set forth in the U.S. Supreme Court’s decisions in Twombly and Iqbal. The court explained that a complaint must include sufficient factual allegations to make a claim of patent infringement plausible.
- Direct Infringement:
- The court held that Lyda failed to plausibly allege direct infringement by CBS. Direct infringement under 35 U.S.C. § 271(a) requires that all steps of a claimed method are performed by or attributable to a single entity. Lyda’s complaint did not sufficiently allege that CBS performed all the steps of the claimed methods or that the steps were attributable to CBS.
- Joint Infringement:
- The court also addressed the issue of joint infringement, where multiple parties collectively perform all the steps of a patented method. For joint infringement to be viable, there must be an allegation of direction or control by one party over the entire process. Lyda’s complaint did not provide adequate factual allegations to support a theory of joint infringement, as it did not show how CBS directed or controlled the actions of other parties involved.
- Amendment of Complaint:
- The Federal Circuit noted that Lyda did not seek to amend his complaint to address the deficiencies identified by the district court. The court observed that an opportunity to amend might have been appropriate if Lyda had proposed any amendments that could potentially cure the defects in his original complaint.
Conclusion:The Federal Circuit affirmed the district court’s dismissal of Richard Lyda’s patent infringement lawsuit against CBS Corporation. The court agreed that Lyda’s complaint did not meet the necessary pleading standards to state a plausible claim of direct or joint infringement.
Key Takeaways:
- Patent infringement complaints must meet specific pleading standards, including detailed factual allegations to support the claim.
- Direct infringement requires that all steps of a patented method be performed by or attributable to a single entity.
- Joint infringement requires allegations of direction or control by one party over the entire infringing process.
- Plaintiffs should seek to amend their complaints if they can address identified deficiencies to potentially cure defects in the original filing.
Uni-Systems, LLC v. United States Tennis Association, Inc.
Court: United States District Court for the Eastern District of New York
Date: October 5, 2018
Citation: 350 F. Supp. 3d 143
Summary:
Background:Uni-Systems, LLC (“Uni-Systems”) filed a patent infringement lawsuit against the United States Tennis Association, Inc. (“USTA”) and other defendants, alleging infringement of multiple patents related to mechanized roof systems used in sports stadiums. The patents in question included U.S. Patent Nos. 6,789,360; 7,594,360; and 8,616,967, which cover various aspects of retractable roof technology. The dispute centered around the retractable roof installed at the Arthur Ashe Stadium in Flushing Meadows, New York.
District Court Proceedings:The defendants, including USTA, moved for summary judgment, arguing that they did not infringe the asserted patents and that some of the patents were invalid. Uni-Systems countered, asserting that there were genuine issues of material fact that warranted a trial.
District Court Decision:
- Patent Infringement:
- The court examined the claims of the patents and compared them to the retractable roof system installed at Arthur Ashe Stadium. The court analyzed the claim language and the functionality of the accused roof system.
- The court granted summary judgment in favor of USTA on some of the infringement claims, finding that certain elements of the accused roof system did not meet the specific claim limitations of Uni-Systems’ patents.
- Doctrine of Equivalents:
- Uni-Systems argued that even if the accused roof system did not literally infringe the patents, it still infringed under the doctrine of equivalents. The court found that Uni-Systems failed to provide sufficient evidence to support this argument, particularly in demonstrating that the differences between the accused system and the claimed invention were insubstantial.
- Invalidity:
- The defendants challenged the validity of some of the asserted patents, arguing that they were obvious in light of prior art. The court denied summary judgment on the issue of invalidity, finding that there were genuine issues of material fact regarding whether the prior art rendered the patents obvious.
- Willful Infringement:
- Uni-Systems alleged willful infringement, which requires proof that the defendants acted with knowledge of the patent and with reckless disregard for infringing it. The court found that Uni-Systems did not provide sufficient evidence to support a claim of willful infringement.
- Remaining Issues:
- While the court granted summary judgment on some infringement claims, it found that genuine issues of material fact remained on other claims, precluding a complete summary judgment for the defendants. The case was set to proceed to trial on these remaining issues.
Conclusion:The United States District Court for the Eastern District of New York granted in part and denied in part the defendants’ motions for summary judgment. The court found that some of Uni-Systems’ patent infringement claims could not be supported based on the evidence presented, but other claims presented genuine issues of material fact that required a trial. The case highlighted the complexities of patent infringement litigation, particularly in the context of advanced mechanical systems like retractable roofs.
Key Takeaways:
- Detailed claim construction and comparison with the accused product are critical in patent infringement cases.
- The doctrine of equivalents requires substantial evidence to show that differences between the patented invention and the accused product are insubstantial.
- Summary judgment can be granted on specific claims when there is no genuine issue of material fact, but cases may proceed to trial on unresolved issues.
- Allegations of willful infringement require clear evidence of knowledge and reckless disregard by the defendant.
Recent Noteworthy Cases
- Huawei Technologies Co. Ltd. v. Verizon Communications, Inc.
- Decision Date: January 15, 2021
- Court: United States District Court for the Eastern District of Texas, Marshall Division
- Summary: This case involved Huawei alleging that Verizon used its patented network technologies without permission. The court examined complex technical aspects and the validity of Huawei’s patents.
- Maxell, Ltd. v. Amperex Technology Limited
- Decision Date: March 6, 2024
- Court: United States Court of Appeals for the Federal Circuit
- Summary: Maxell claimed that Amperex infringed on its battery technology patents. The court’s decision highlighted the intricacies of patent claims and their interpretations.
- Mantissa Corporation v. First Financial Corporation
- Decision Date: February 14, 2024
- Court: United States Court of Appeals for the Federal Circuit
- Summary: Mantissa sued First Financial for using its patented check processing technology. The court delved into the specifics of software patent claims.
- BBK Tobacco & Foods LLP v. Central Coast Agriculture, Inc.
- Decision Date: April 1, 2024
- Court: United States Court of Appeals for the Ninth Circuit
- Summary: This case involved patents related to tobacco and agricultural products. The court’s ruling focused on patent validity and the scope of patent claims.
Avoiding Patent Infringement
To avoid infringing on a patent, companies and individuals should conduct thorough patent searches before developing new products or technologies. It’s also wise to seek legal advice from a patent attorney who can help navigate the complexities of patent law and ensure that innovations are protected without infringing on existing patents.
Do you have questions about your new invention or a competitor’s product as compared to your patent? Call us at Verna Law, P.C. at 914-908-6757 or send us an e-mail at anthony@vernalaw.com
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