What Is Patent Infringement Analysis?

Patent infringement analysis involves determining if a claim of patent infringement falls under the category of literal infringement or infringement under doctrine of equivalents. Patent infringement refers to a case when another party inappropriately uses, sells, or makes a patented item without obtaining permission from the patent holder.

What Is Literal Infringement?

Literal infringement is when the accused device is completely encompassed by the jurisdiction of the properly interpreted claims.

Usually, the specification and the drawings are more general. The examination process usually involves narrowing the claims. In some cases, there are drawings that depict a whole product but only a small aspect is claimed. The filed application may depict something that possesses many similarities with your patented product. However, at some point in the process of getting a patent, the patentee may have changed the claims to surrender coverage of your patented product.

Frequently, a patentee will interpret their patent by considering what they're selling. A product may not actually be defined by the patent's claims. Products often develop away from the issued patent's claims. Therefore, you should not make the mistake of comparing your product to the product of the patentee. You also shouldn't allow the patentee to focus on the similarities between their product and your product.

The accused device needs to violate all of the claim's limitations literally or via the doctrine of equivalents for the claim to qualify as infringement. A claim is not considered literal infringement if even a single claimed element is absent.

If a claim possesses a "means plus function" element, the following must be true for the element to be met under literal infringement:

  • The accused product possesses the function described in the element.
  • The accused product is similar in terms of material, structure, or acts delineated.

Under 35 U.S.C. §271, an individual is guilty of direct infringement if they use, make, sell, or offer to sell a patented invention in the United States without authorization during the patent's term. Importing a patented invention into the United States without proper authorization is also considered direct infringement.

Contributory infringement, under 35 U.S.C. §271, is when an individual sells a part of a manufactured, patented machine, apparatus, material, combination, or composition that constitutes a part of a patented invention. This is particularly true if the part was adapted or made for the patented invention.

Under 35 U.S.C. §271, process patent infringement is when an individual uses, sells, or offers to sell a product within the United States without authorization and the product is made by a patented process. Process patent infringement also applies to products imported into the United States without permission from the holder of the patent for the process.

Two-Step Process

In the United States, determining infringement in court involves two major steps:

  1. Claim construction, or the determination of the claim's scope.
  2. The court rules whether the accused product infringes the patented invention.

What Is Claim Construction?

Claim construction refers to when a court determines the meaning and scope of the claims of a patent. During the process of claim construction, terms are interpreted based on their plain or literal meaning. The only exception to this rule is if the patent holder has given a term a new, special meaning. Whether the inventor has given a term a new meaning can be determined by referring to the specification.

Under 35 U.S.C. §112, the "means plus function" form can apply to claim language. Section 112, 16 allows an element within a claim to be interpreted as a step or as a means for completing a certain function. The scope of these claims is not infinite. Rather, the scope is limited to structures described explicitly in the specification as well as corresponding equivalents. The statutory provision requires the use of the specification as a reference to prevent an excessively broad or narrow claim construction.

When it comes to claim construction, if the claim's meaning for technical terms is not clear, the court may rely on other evidence in the form of textbooks, expert witness testimony, etc. It is solely under the jurisdiction of the court to decide claim construction. The parties possess the right to have a jury trial when it comes to whether the accused product is patent infringement under the interpretation of the judge.

If you need help with patent infringement analysis, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Stripe, and Twilio.