Deck 20: Patent Infringement

Question 1

To obtain a patent, Mark amended his application and narrowed his Claim 2. Jack's accused device falls within the scope of Mark's original Claim 2 but not the amended Claim 2. Jack's device does not infringe the patent.

Answer 1

True

Question 2

A court may award attorney fees to the prevailing party in a patent infringement case.

Answer 2

True

Question 3

Tech Vision, Inc. has purchased several copies of a patented cell phone. It instructed its engineering team to take the phones apart, figure out how they work, and then make identical cell phones for Tech Vision. Have any parties committed infringement? Discuss.

Answer 3

Yes. The engineers have committed direct infringement by making a patented item; although they may have acted innocently, infringement has still occurred. Such innocence may serve to reduce damages but it does not excuse infringement. Tech Vision (and its officers and directors) has committed indirect infringement. It has encouraged and induced infringement (similar to "aiding and abetting" a criminal act) by instructing its engineers to infringe the patented cell phone.

Question 4

Harris Corp. has begun selling metal links to people who use the links to infringe the links on a patented watch band. Has Harris committed infringement? Fully discuss.

Question 5

Fraud or inequitable conduct by a patentee in the process of obtaining a patent will render a patent resulting therefrom unenforceable.

Question 6

You purchased a patented ice maker. Over time, it has stopped working as well as it did originally, and you would like to replace a few parts in the item so that it will work better. May you do this, or would such acts constitute infringement? Discuss.

Question 7

Ted has made two copies of Trina's patented invention. He has no plans to sell or offer to sell the invention. Has Ted infringed Trina's patent? Discuss.

Question 8

Once a patent application is filed, it may be enforced through an infringement action.

Question 9

If there is no direct infringement, there can be no indirect infringement.

Question 10

Generally, a patentee who amends a patent and narrows a claim gives up protection only for those things that were foreseeable by those skilled in the art covered by the patent.

Question 11

In what way does the International Trade Commission help enforce a patentee's rights?

Question 12

Robin's patented invention includes Claim 4, with elements A, B, C, and D.
a.Marissa's item includes elements A, B, and D.
b.Fiona's item includes elements A, B, D, and X, with X substituting forelement C.
Discuss whether Marissa and Fiona have infringed Robin's patent. Identify the names of any doctrines or principles that govern your answer.

Question 13

Generally, there is no infringement when a product patented in the United States is made and sold in another country.

Question 14

If device Number 2 is equivalent overall to patented device Number 1, device Number 2 will infringe the patented device even if every element of a claim in the patented item (or its equivalent) is not present in device Number 2.

Question 15

There is no statute of limitations for bringing an action for patent infringement.

Question 16

Distinguish between direct and indirect infringement.

Question 17

A patent has four claims. To be liable for infringement, a defendant must infringe all four claims.

Question 18

For indirect infringement to occur, the defendant must know that his or her acts will cause infringement.

Question 19

Why is careful drafting of the claims in a patent application so important?

Question 20

You purchased a patented juicer. May you sell it to another or would such be an act of infringement? Discus and identify the names of any doctrines or principles that govern your answer.

Question 21

Wyatt infringed Alex's patented invention in 2011. May Alex bring an action for infringement in 2018? Discuss fully and indicate what Wyatt's response might be if Alex files a lawsuit.

Question 22

A _____ patent is one that represents an important breakthrough or advance in the art and is thus often given a broad scope of protection.

Question 23

The losing party in a patent infringement case may appeal the decision. In which court is the appeal filed?

Question 24

The Patent Act provides that upon finding infringement, a court shall award a claimant damages adequate to compensate for infringement, but in no event less than a ______ for the use made of the invention by the infringer.

Question 25

When might a court award enhanced or punitive damages in a patent infringement action?

Question 26

What is the entire market value rule and discuss when a court might award damages are awarded under this rule.

Question 27

Under the ______ rule, for infringement to exist, the accused device must contain each limitation of the claim, either literally or by an equivalent.

Question 28

What is a "Markman hearing"?

Question 29

Typically, before filing a lawsuit for patent infringement, the owner of a patent will send the other party a ______   letter asking the other party to stop infringing the patentee's patent.

Question 30

Under the America Invents Act, patent owners may request a ______ of their own patents to cleanse or cure their own errors or omissions during their patent's examination process (other than fraudulent acts).

Question 31

Kevin has been accused of patent infringement and has asserted an invalidity defense. What does this mean? Discuss fully.

Question 32

The principle that an inventor/patentee is bound by his or her statements made during the process of obtaining a patent in a later action alleging infringement under the doctrine of equivalents and is precluded from later asserting a position inconsistent with one taken earlier is referred to as ______.

Question 33

Why was the doctrine of equivalents developed-what is the policy reason underlying this doctrine?

Question 34

In what way do the new post-grant proceedings authorized under the America Invents Act provide an alternative to patent litigation in federal courts?

Question 35

Companies or individuals who do not practice or commercialize patents themselves, and whose sole business is pursuing potential infringers to obtain money through making claims of infringement, are called ______.