Are We Infringing a Patent?
A common question for businesses is whether a product, system, or method of theirs infringes on another party’s patent. This question may be a general one, or you may have identified one or more patents as relevant. In the former case, a patent search1 can be undertaken, and may identify one or more patents as relevant. In either case, any patents of concern should be analyzed against the prior work in the field and the company’s subject matter to determine whether there’s a problem. As explained below, this patent infringement analysis is best performed by a skilled patent attorney.
Supreme Court precedent from 20162 increased the impetus for obtaining the opinion of a patent attorney. Infringing a patent that you have reason to believe covers your subject matter can subject you to a charge of willful infringement, which if established would expose you to damages up to triple the actual damages plus the other side’s attorneys’ fees.3 Having an opinion in advance from a patent attorney that your subject matter is not validly infringed is a potent antidote to any charge of willful infringement.
There are two main issues that a patent opinion typically addresses: validity, and infringement.
Though technically presumed valid, an issued patent may not actually be valid. Most patents currently in force were issued before the Supreme Court narrowed the kinds of subject matter that qualify for patenting, and a large portion of them were issued before the Court raised the bar for what qualifies as a patentable advance over prior work in the field. The courts have also recently heightened the requirements for the description of the invention and for the clarity of patent claims. As a result of these changes and the advent of a new system of challenging patents, the majority of issued patent claims challenged in the past few years have been held invalid.
The other main issue in assessing the threat posed by a patent is infringement. A variety of considerations go into interpreting the scope of a patent claim, and a claim’s coverage can sometimes extend beyond the scope of its actual words.4
To determine whether a patent claim covers something, it must be analyzed exactingly in light of the patent’s specification and the history of interactions with the Patent Office that led to the patent’s issuance. Except in cases where a patent is clearly inapplicable, even a lay person experienced with patents generally can’t confidently determine whether a patent’s claims cover the subject matter of concern. The same goes as to determining whether a patent’s claims are valid. A skilled patent attorney is needed to analyze these matters, particularly in cases where it appears that your subject matter is or may be covered.
An opinion may be rendered verbally or otherwise informally in cases where the issues are clear and simple, or it may be rendered in writing. The appropriate level of formality and thoroughness depends on factors including the closeness of the case, the complexity of the issues, the sophistication of the client, the likelihood of assertion of the patent, and the client’s budget. An opinion is most useful when rendered thoroughly, and in writing.
Patent attorney opinions are also useful in identifying ways of “designing around” the claims of a patent. In the course of analyzing the validity and infringement of a patent’s claims, the attorney may find that a specific element could be eliminated or changed such that the valid scope of the claims would not be infringed. When such an opportunity is available and commercially palatable, undertaking a design-around early can save untold time and resources down the road.
If there is reason to believe that relevant claims of a patent are invalid (see Opinions, above), you can challenge the patent under one of the newly-created quasi-judicial proceedings in the Patent Office. The most commonly-used proceeding is the inter partes review. These proceedings are highly expedited and abbreviated and significantly less costly compared to court litigation.
If a patent is likely valid but not infringed and other considerations support the choice, you may want to file a declaratory judgement action in an appropriate federal district court seeking a judgment of non-infringement. A skilled patent litigator should guide your decisions in that case, and you should obtain a second opinion (at least) on substance and strategy as early as possible from a skilled, disinterested patent attorney.
- This kind of patent search is known as a “freedom to operate” search.
- Halo Electronics v. Pulse Electronics, 579 U.S. __, 136 S.Ct. 1923.
- Just in the year following Halo, juries found willful infringement in at least nine cases where the infringers failed to investigate the patents or seek timely advice of counsel. The court awarded enhanced damages in seven of those cases.
- Infringement under the “doctrine of equivalents” can be found when an element of the subject matter accused of infringing does not meet a claim limitation but performs substantially the same function, in substantially the same way, with substantially the same results.