Patents Ownership Inventor default owner of patent right Assignment of patent right must be in writing. 35 U.S.C. 261 However, [a] person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. 35 U.S.C. 118 Joint inventorship Like a tenancy in common (35 U.S.C. 262)
Patents Literal Infringement [W]hoever 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. 35 U.S.C. 271(a) must have every element to infringe extra elements are irrelevant if use comprising language No intent/mens rea
Patents Literal Infringement
Patents Literal Infringement [W]hoever 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. 35 U.S.C. 271(a) must have every element to infringe extra elements are irrelevant if use comprising language No intent/mens rea
Nassau Precision v. Acushnet
Nassau Precision v. Acushnet Claim 2 Cobra S9 removing construction material from central of said top surface bottom areas... of said club head said removed construction material having said determined weight, where the weight... whereby the weight is distributed... without any increase in the overall weight of the club head.
Nassau Precision v. Acushnet Claim 2 removing construction material from central of said top surface bottom areas... of said club head said removed construction material having said determined weight, where the weight...? whereby the weight is distributed... without any increase in the overall weight of the club head. Cobra S9 Material removed from back, top of club Extra material on bottom of back of club
Nassau Precision v. Acushnet
Patents Literal Infringement
Patents Doctrine of Equivalents Even if no literal infringement, can still infringed under DOE Nassau Cobra S9 did not literally have said determined weight Under DOE, is metal/graphite plus polymer material equivalent?
Cadence Pharm. v. Exela PharmSci
Cadence Pharm. v. Exela PharmSci Claim 1 (a) aqueous solution Cadence 1 (b) deoxygenation of the solution
Cadence Pharm. v. Exela PharmSci Claim Cadence 1 (a) aqueous solution aqueous solution 1 (b) deoxygenation of the solution Insubstantial difference All Elements Rule deoxygenation of a solvent, then add active Substantially Similar Function/Way/Result
Patents Indirect Infringement Two Types: 35 U.S.C. 271(b) Whoever actively induces infringement of a patent shall be liable as an infringer. Inducement of Infringement
Patents Indirect Infringement 35 U.S.C. 271(c) Whoever offers to sell or sells... a component... or a material... for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. Contributory Infringement
Teashot LLC v. Green Mountain
Patents Design Patents Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. 35 U.S.C. 171 14-year term Now 15 year
Patents Design Patents Requirements for patentability must meet all requirements except 101 requirements Disclosure under 112 need sufficient number of views to completely disclose the appearance of the claimed design
Patents Design Patents Two new patentability requirements Ornamentality must be the product of aesthetic skill and artistic conception Functionality cannot be primarily functional rather than ornamental or dictated by functional considerations
Patents Design Patents Claiming only one claim per patent protection is defined by solid lines
Wallace v. Ideavillage
Wallace v. Ideavillage
Wallace v. Ideavillage
Wallace v. Ideavillage
Wallace v. Ideavillage Infringement Egyptian Goddess Two stages: substantially the same to the ordinary observer Benefit from comparison of the claimed and accused designs with the prior art Can find no infringement at stage 1
OraLabs v. Kind Group
OraLabs v. Kind Group
OraLabs v. Kind Group Novelty no prior art shows claimed design Using relevant 35 U.S.C. 102 to define art Determined from ordinary observer perspective Substantially similar?
What about infringe ment?
MRC Innovations v. Hunter
MRC Innovations v. Hunter
MRC Innovations v. Hunter Nonobviousness Differences from utility under Graham #3 -- a designer of ordinary capability who designs articles of the type presented in the claim #4 Two step process Primary reference basically the same Secondary reference so related to primary What about missing differences?»can be more than de minimis and still obvious
Patents Remedies Damages Injunction Date of Preliminary Injunction/Judgment
Patents 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. 35 U.S.C. 273
Patents Injunction ebay v. MercExchange Four Factors: Irreparable Harm No Adequate Remedy at Law Balance of the Hardships Public Interest
Patents Injunction Hypo 1 Patent covering gene sequence for early-on set alzheimers Patent holder is a university Using patented technology for internal research Actively looking for an exclusive licensee
Patents Injunction Hypo 2 Patent covering small component essential to hybrid car engines Invention by small company who attempted to provide technology to big car manufacturers Small company failed, went into bankruptcy, and patents purchased by investment group
Patents Injunction Hypo 3 Patent covering various input methods for smartphone Patent held by major smartphone-maker and infringer is a major competitor Evidence indicates that while patented input methods are important to consumers, many other aspects of smartphone are more important to purchase decisions
Patents 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.... 35 U.S.C. 274 Lost Profits Reasonable Royalties is the floor
Patents Enchanced Damages and Attorney Fees... [T]he court may increase the damages up to three times the amount found or assessed. 35 U.S.C. 284 direct infringement requires no intent to infringe/copy The court in exceptional cases may award reasonable attorney fees to the prevailing party. 35 U.S.C. 285
Patents Remedies Compare to Trade Secret Similarities Injunction on front end Lost profits or reasonable royalty on back end Differences No head start injunction in patents No unjust enrichment/infringer s profits in patents