Patent infringement cases arise when patent owners, or entities holding sufficient interest in a patent, file claims against a party they allege to be using their creation without permission. Patent claims can create challenges for individuals and businesses that defend themselves, can consume time and money, and create exposure to more significant problems. That’s true whether they’ve been filed by patent trolls, or parties with potential merit or resources to support their claims.
Because intellectual property is such a valuable asset, and because defending against claims creates exposure to potential loss, expenses, and other repercussions, it is important to understand your available options for defense. Experienced business litigation and patent infringement defense attorneys like those at Hendershot, Cannon & Hisey, P.C. can help you evaluate any threatened allegation of infringement, explore defenses, and implement strategies specifically tailored to your situation.
Breaking Down the Claim.
While personalized legal representation is important to defending against the patent infringement claim, there are some general points worth knowing if you face such claims. This includes evaluating what type of patent infringement is being claimed. Under Title 35 of the U.S. Code § 271, there are three general types of claims:
(1) Direct infringement – This infringement claim involves the importation of patented creations or equivalents into the U.S., or the use, sale / offer to sell, or manufacturing of patented creations during the patent term. Direct infringement is a strict liability tort, which means it does not require intent or knowledge. They can also become challenging when two parties or more are involved, such as when questions arise over liability, and may be used to address a seller’s internal infringement of an apparatus, system, or method, such as internal testing or sales demonstrations where products using a patented method are exhibited.
(2) Indirect Infringement – There are two types of indirect infringement recognized under patent law, both of which require the accused to have had at least some knowledge and intent. Indirect infringement claims are common when parties look to hold sellers and / or manufacturers liable for infringement performed by end-users, such as consumers.
- Contributory infringement – Contributory infringement involves a direct infringement by an accused party which knows components are a material part of a patented combination that has no significant non-infringing use. Federal courts have ruled that contributory infringement is limited to contributory acts which occur in the U.S.
- Inducement – Inducement involves actively inducing infringement of a patent. This claim requires proof that another party actually infringed, the alleged inducer knew of the patent, and that despite this knowledge induced the infringing acts with the specific intent to encourage the other party’s infringement.
Evaluating the type of patent claim and understanding their principles is important to assessing potential damages, and identifying ways to mitigate those damages.
Exploring Defense & Response Options
Whether infringement claims are brought by legitimate parties or non-practicing entities (patent trolls) which purchase patent rights as a means of extorting nuisance settlements, they can create exposure to costs, time-consumption, and potentially larger problems. For these reasons, working with skilled and insight-driven attorneys can help you fully evaluate the merits and intent behind a claim, and begin to explore your available defense options after being threatened with infringement.
Examples of defense strategies against patent infringement cases are dependent on the unique facts and circumstances of a case, but may generally focus on three main concepts:
- Patent validity – Meticulous assessments of patents invoked in an infringement claim can provide direction for the defense, as well as options for challenging a patent’s validity in a case’s early stages. This may be the case when a patent has lapsed, fails to comply with patent law requirements, or contains subtle but important flaws that were previously overlooked. An invalidity defense is a type of counter-attack against the patent itself, and may involve the filing of a motion to dismiss the claim.
- Non-infringement – The defense of non-infringement is one of the most common defense strategies, and it generally claims infringement did not occur because the process or product in question is not the same as what’s protected by patent in the case.
- Prior art – The defense of prior art claims that you received a patent when you shouldn’t have because someone else has already been using the trademark publicly.
There are many specific types of defenses to patent infringement cases that may be made in accordance to the individual facts of a case, such as citing prior use, patent misuse, first sale or repair, inequitable conduct, or limitation on rights. There are also various strategies for raising such defenses and generally mitigating damages to the defendant, including:
- Summary judgment – By structuring arguments which focus on an absence of evidence and no genuine issue of material fact, defendants can seek summary judgment of non-infringement and a dismissal of the case. Motions for summary judgment can spare defendants from litigation.
- Motion to Dismiss – Motions to dismiss a patent claim are developed according to the issues involved a case and available options for arguing validity, which may range from invalidity based on prior art, lack of novelty / obviousness, failures to meet statutory requirements, and un-patentable subject matter, such as abstract ideas.
- Declaratory judgment – Parties threatened with patent infringement claims may have the ability to pre-emptively bring declaratory judgement actions against the plaintiff in order to challenge an actual or possible claim. This approach requires immediate action following threatened litigation or a 30-day written notice prior to the patent holder actually filing suit (i.e. attacking infringement contentions), as well as the existence of an actual “controversy” between the parties relating to the patent, and tailored arguments which allege a lack of specificity in claims and validity, enforceability, or infringement.
- Markman process / claims construction– The Markman process, named after a 1996 SCOTUS ruing, is the process by which a dispute to a patent claim is constructed, and usually occurs before discovery. Generally, it provides judges with the ability to identify and define material terms in the claim. This allows defense attorneys to argue on the court’s narrow or broad definition of terms and the construction of claims in the best interests of clients and their defense. Evaluating terms within a claim requires careful consideration of context, any differences among claim in a single patent, and the use of similar terms in different claims.
- Re-examination / motion to stay – Even when defendants prevail in a motion to dismiss, the plaintiff may amend their complaint to include more factual allegation. The additional for these amendments may provide opportunities to request re-examination of the patent by the U.S. patent office during the case, as well as a motion to stay (or put the case on hold) pending the outcome of that re-examination.
Questions? Call Our Houston Patent Infringement Defense Lawyers.
Patent infringement defense is a difficult and high stakes practice area. As a firm that has represented numerous individuals and legitimate businesses across Texas in matters of intellectual property litigation and patent infringement, our team at Hendershot, Cannon & Hisey, P.C. has the experience to help you take the most appropriate steps in your defense and response. Call (713) 909-7323 or contact us online to speak with an attorney.