Patent Infringement & Validity OpinionsPatent Infringement & Validity Opinions

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What recourse does a patent holder have against patent infringement?

A patent holder has the legal right to exclude any persons or businesses from making, using, selling or importing technology that infringes the patent. A patent owner can seek an injunction to have an infringer stop infringing activity. The patent owner may also seek monetary damages for infringement of those patent rights, which typically take the form of lost profits or a reasonable royalty.

Where do patent owners litigate cases of patent infringement?

Most patent infringement litigation occurs in United States federal courts, however, litigation also can occur in arbitration proceedings as well as at the International Trade Commission, through what are known as Section 337 investigations. Our firm is based in San Diego and we handle cases in San Diego federal courts, but we also handle patent litigation across the country.

What are the major issues that are dealt with in a case of patent infringement?

The plaintiff in a patent infringement suit must always start off with the allegation that the products or services of the defendant fall within the scope of the patent holders claims. To prove a case of patent infringement the plaintiff must show that the defendant’s technology has all the elements found in the plaintiff’s claims. For example if claim one has elements: (1), (2) and (3), then the plaintiff must prove that the defendant’s product has each of those elements. If this is the case, a case of literal infringement exists. The language used to define the elements of the claims is scrutinized carefully and interpretation of the claim language can be hotly contested. Courts will have Markman proceedings to assess ambiguities in the meaning of claim language. The outcome of a Markman hearing can often dictate who will win and who will lose a patent infringement dispute. Of course, if liability in shown, the other major issues in a patent case will be damages available to the plaintiff, if any, as well is the scope of any injunction that may issue.

How does the Doctrine of Equivalents come into play?

It is not always possible to show that a case of literal infringement exists. In some cases a defendant may not be practicing every literal element of a patent claim, but may instead be substituting something similar for one or more of the elements of a claim. Asserting infringement under the Doctrine of Equivalents is essentially saying that what the defendant is doing is not exactly infringing, but that it is so close to what was intended by the plaintiff’s patent that it counts as an infringement. This doctrine has been severely limited by the courts; however, it is still an important tool for patent plaintiffs.