What are the Elements of Patent Infringement?
There are two general elements to a patent infringement claim: (1) the plaintiff’s ownership of a valid patent; (2) infringement of the patent by the defendant.
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Ownership of a Valid Patent
An inventor acquires rights in a patent through a filing with the United States Patent and Trademark Office (USPTO). However, an assignment or license agreement could also transfer rights in a patent to a subsequent owner.
This threshold element to a patent infringement claim is often where much of the fight takes place. Challengers can undermine the validity of a patent by claiming Information was withheld from the patent application, information in the patent application was false or misleading, claims in the application are contemplated by prior art, and many other reasons.
Infringement of the Patent
The two broad categories of patent infringement are direct and indirect infringement. Indirect infringement cover bother induced and contributory infringement, and both sub-types require proving direct infringement as an element.
Direct infringement is the making using, offering to sell, or selling of a patented invention. While direct infringement sounds simple, it requires showing the infringing product or process incorporates all the material features of at least one independent patent claim. This is proven either through literal infringement or the doctrine of equivalents.
The Doctrine of Equivalents
The doctrine of equivalents allows liability for infringement even where the comparable elements between a patent and the infringing invention are not identical. In other words, where the infringing invention or process is not within the literal scope of a patent claim but is nevertheless ‘equivalent’ to the claimed invention.
Application of the doctrine requires showing the invention performs substantially the same function as the patented invention, in substantially the same manner, to achieve the same result. Reliance on the doctrine, however, can be risky as there are many limitations. For example, the plaintiff must prove the infringing claim was not foreseeable to a person having ordinary skill in the art (a “PHOSITA”). This can be difficult as courts have interpreted the foreseeability requirement broadly.
Businesses with valuable patents should be vigilant of others’ infringing products or processes and understand the nuances of an infringement claim.
For more information on patents and intellectual property in general, see our patent services and intellectual property practices pages.
Klemchuk PLLC is a leading IP law firm based in Dallas, Texas, focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. Our experienced attorneys assist clients in safeguarding innovation and expanding market share through strategic investments in intellectual property.
This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.
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