Patent Infringement: Protect Your Invention

February 8, 2022 | Bill Henry

Coloradans are known for their innovative streak. Patents allow them to reap the benefits of that innovation. If someone sells, imports, uses, or makes a product that you invented without your permission, patent infringement has occurred.

Patent infringement can have disastrous consequences for inventors. In this article, you will learn about your legal recourse if someone has illegally profited from your patented work.

Table of Contents

Talk to a Patent Infringement Attorney
What is a Patent?
What Rights Does a Patent Grant?
What Can Be Patented?
What’s Not Eligible for a Patent?
Parts of a Patent
Proving Patent Infringement Claims
Analyzing a Patent Infringement Claim
Determining Patent Infringement
Types of Patent Infringement
Available Legal Remedies for Patent Infringement
How are Patent Rights Enforced?
Steps of a Patent Infringement Claim
Call a Patent Infringement Attorney Today

Talk to a Patent Infringement Attorney

Patent infringement lawsuits are often convoluted endeavors with many moving parts. Fortunately, our patent infringement attorneys at Robinson & Henry are well versed in the complexities of intellectual property law. We will aggressively advocate for your exclusive right to enjoy the fruits of your labor. Call 303-688-0944 today to schedule your free case assessment.

patent infringement

What is a Patent?

A United States patent is a document issued by a federal agency called the United States Patent and Trademark Office (USPTO). That document grants an exclusive right to a product or a method that generally provides a new way of doing something or offers a new technical solution to a problem.

What Rights Does a Patent Grant?

A patent owner has the right to decide who may — or may not — use the patented invention for the period in which the invention is protected.

In other words, patent protection means that the invention cannot be commercially made, used, distributed, imported, or sold without the patent owner’s consent:

“The inventor of a novel process may elect to keep that process confidential, but runs the risk of others discovering it independently and exploiting it. The patent system allows the inventor the opportunity to publicly disclose the process, surrendering the confidentiality of that information to the public, but rewards the inventor for doing so by granting the inventor an exclusive, limited time right to commercially exploit the invention.”
Animal Care Sys. v. Hydropac/Lab Prods. (D. Colo. Jan. 10, 2014)

What Can Be Patented?

For a brief overview, check out this infographic: What Can Be Patented

To get a patent, your invention must meet four requirements:

  • The invention must have a useful purpose.
  • The invention must meet the legal definition of “novel.”
  • The invention cannot be obvious.
  • The invention must have patentable subject matter.
The Invention Must Be Useful

Per 35 USCS § 101, an invention is “useful” if it provides some identifiable benefit and is capable of use. Otherwise, it is quite literally “useless.”

Additionally, the patent’s subject matter must be immediately useful. It cannot merely be theoretically useful.

The Invention Must Be Novel

To be patentable, an invention must be new or novel. An invention cannot be patented if it has been publicly disclosed.

The Invention Cannot Be Obvious

Essentially, “non-obvious” means something that is not readily apparent. An invention is usually considered obvious if someone of ordinary skill in a relevant field could easily make the invention based on prior art. 35 U.S.C. § 103(a)

Prior art is generally defined as anything made available to the public that might be relevant to a patent’s claim before the effective filing date of a patent application.

The Subject Matter Must Be Patentable

The government has a group of subjects that it names as “patentable subject matter.” These items include:

  • a new plant type that exists through asexual reproduction
  • a new composition or formula
  • a machine, usually one with moving parts or circuitry
  • a process or method, like a new way of doing something better and/or more efficiently
  • a simple tool that can do something, such as pencils, hammers, or screwdrivers
Examples of Patentable Items
The following are examples of patentable items:
  • Business methods
  • Computer software
  • Computer hardware
  • Computer accessories
  • Games
  • Internet advances
  • Jewelry
  • Machines
  • Magic tricks
  • Makeup
  • Musical instruments
  • Perfumes
  • Plants
  • Sporting goods

What’s Not Eligible for a Patent?

Renderings of patents from the 19th century.

The government will not patent an idea, regardless of how revolutionary and creative that idea is. Instead, you must get your idea down on paper. Sometimes, all you need to do is describe a process in words. Other times, you’ll have to use drawings or computer renderings to prove your concept.

The government doesn’t consider these writings and illustrations “ideas.” Instead, it sees them as visual or verbal proof of concept. A prototype isn’t necessary, but you must relay enough information about your idea to make it understandable to others.

Some things still aren’t eligible for a patent. Examples include:
  • Mathematical formulas
  • Laws of nature
  • Substances found in nature
  • Scientific principles (even Einstein couldn’t patent his!)
  • Processes involving only physical activity
  • Surgical methods and procedures
  • Drugs that place the user’s safety at risk
  • Inventions with a criminal purpose
  • Inventions that violate existing scientific laws

While you cannot patent a mathematical formula itself, you can get a patent for a specific usage of that formula. This is an example of not patenting an idea while still being able to patent an explainable concept.

How Long Does Patent Protection Last?

Patent protection is only granted for a limited time. In most cases, the term of a U.S. patent is 20 years from its effective filing date. The effective filing date of a patent is the date it was applied for.

Where Is a Patent Valid?

Patents are territorial rights. Generally, the exclusive rights only apply in the country or region where a patent has been filed and granted.

Therefore, U.S. patent law usually does not affect activities outside of the U.S.

Parts of a Patent

A patent typically has three main parts:
  • a cover page
  • a specification
  • a set of numbered sentences called “claims”

Cover Page

The cover page provides basic information about the patent. It usually includes the following:

  • the patent number
  • a short summary called the “abstract”
  • the name(s) of the inventor(s)
  • the patent’s application date
  • the date the patent went into effect

Specification

The specification provides a detailed description of how to make and use the invention(s) covered by the patent. This typically includes what is referred to as embodiments. In U.S. patent law, an embodiment is essentially the physical form of an invention.

Claims

The claims are legal descriptions of the invention covered by the patent. Each claim recites a set of features or “limitations” that define the essential elements of the invention.

Proving Patent Infringement Claims

Proving patent infringement in court requires proving two broad elements:

  1. ownership and validity of the patent
  2. infringement of the patent by the opposing party

Ownership of a Valid Patent

Unlike some other forms of intellectual property, no common-law protection exists for patents in the U.S. Therefore, registration with the U.S. Patent and Trademark Office is the only way to prove ownership.

Generally, the patent applicant is presumed to be the initial owner. However, the applicant can be a sole inventor or:
  • a joint inventor
  • another individual
  • a company
  • an educational institution

Regardless of initial ownership, a patent can be assigned to a new owner at any time. Employers typically own any patents developed by their employees within the scope of their duties. Likewise, if an independent contractor is hired to work on a particular invention, the company typically owns any resulting patent.

Validity of the Patent

Under federal law, patent protection is available for machines, processes, and other inventions that are new and useful, novel, and non-obvious.

Registration with the USPTO involves an extensive review process before approval. Therefore, all issued patents are presumed to be valid. 35 U.S. Code § 282

Still, the opposing party can challenge the patent on a variety of grounds. You should be prepared to show that the patent is valid.

Grounds for Challenging Patent Validity

Possible grounds for challenging the validity of a patent may include:

  • The patented invention is not novel because of prior art.
  • The patented invention consists of obvious subject matter based on prior art.
  • The patent claims are unclear or ambiguous.
  • The patent holder omitted information or provided inaccurate information when applying to the USPTO.

Once you have established that you are the owner of a valid patent, the court can examine your patent infringement claims.

Analyzing a Patent Infringement Claim

A patent infringement analysis entails two steps:

  1. Determine the meaning and scope of the patent claims asserted to have been infringed. This is known in patent law cases as claim construction.
  2. Compare the properly construed claims to the device accused of infringing.

Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1578 (Fed. Cir. 1996)

Claim Construction

Claim construction generally involves interpreting the meaning of the words in the patent claim. It is decided as a matter of law by the court.

Construction of a patent claim typically requires a review of the patent’s intrinsic evidence and, where appropriate, extrinsic evidence.

Reviewing Intrinsic Evidence

Claim construction begins with an examination of the intrinsic evidence. Intrinsic evidence includes the patent claims, the specification, and the prosecution history if the history is in evidence. Potter Voice Techs. LLC v. Google, Inc., Civil Action No. 12-cv-01096-REB-CBS (D. Colo. May 12, 2015)

The language of a claim is especially important. Courts typically use the plain-language meanings of the terms used in a patent claim unless the patent provides more specific definitions.

Reviewing Extrinsic Evidence

Extrinsic evidence is any evidence outside the patent itself and its enforcement history. Examples include expert witnesses, inventory testimony, and dictionary definitions.

Extrinsic evidence may be consulted only when the claim language is still ambiguous after courts consider the intrinsic evidence. Wyers Prods. Grp., Inc. v. Cequent Performance Prods., Civil Action No. 12-cv-02640-REB-KIT (D. Colo. Mar. 30, 2015)

Determining Patent Infringement

After the court has properly interpreted the claims within your patent, it can move on to comparing those claims to the accused device.

To prove patent infringement, you must show that the device meets each claim limitation, either literally or under the doctrine of equivalents. This means that a party can be liable for infringement even though the party does not literally or precisely infringe every limitation of a patent claim.

Now let’s examine the types of patent infringement.

Types of Patent Infringement

35 USCS § 271 establishes three types of patent infringement:
  1. direct infringement
  2. induced infringement
  3. contributory infringement

Direct Infringement

Direct patent infringement occurs when an unauthorized person makes, uses, sells, or offers to sell any patented invention within the United States. Direct patent infringement also occurs when an unauthorized person imports a patented invention to the United States. 35 U.S.C. § 271

A direct patent infringement claim requires the following:

  1. an allegation of jurisdiction
  2. a statement that you own the patent
  3. a statement that the opposing party has been infringing the patent by making, selling, and using the device embodying the patent
  4. a statement that you have given the defendant notice of the infringement
  5. a demand for injunctive relief and damages

Kanga Care LLC v. GoGreen Enters. LLC (D. Colo. Nov. 12, 2014)

Indirect Infringement

Indirect infringement arises when a patent is infringed but the defendant is not directly involved with the ultimate infringing conduct.

There are two types of indirect infringement:

  1. induced infringement
  2. contributory infringement
Induced Infringement

Induced infringement means the opposing party did not directly infringe on your patent. Instead, he or she actively encouraged another party to infringe on your patent:

In order to succeed on a claim of inducement, the patentee must show, first that there has been direct infringement, and second, that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement. Therefore, there can be no inducement of infringement in the absence of an underlying direct infringement.
City of Aurora v. PS Sys., 720 F. Supp. 2d 1243, 1246 (D. Colo. 2010)

Contributory Infringement

This type of patent infringement occurs when a person manufactures or sells a product knowing that the product is a material part of a greater patented invention. This person must be aware that others may use the product to complete the assembly of the patented invention. Animal Care Sys. v. Hydropac/Lab Prods.

Golight, Inc. v. Walmart

In this 2002 case, a landscape lighting manufacturer sued retail giant Walmart for infringing on its patent of a remote-controlled searchlight.

A Colorado district court found that “in some cases the replication was so exact that small parts from the two products were interchangeable.” Golight, Inc. v. Wal-Mart Stores, Inc., 216 F. Supp. 2d 1175, 1180 (D. Colo. 2002)

This finding prompted the court to rule in favor of Golight, Inc. A Colorado district judge ordered Walmart to pay $464,280 in damages and attorneys’ fees, “plus prejudgment interest to be calculated at the applicable United States Treasury Bill rates for the years in question, compounded annually.”

Available Legal Remedies for Patent Infringement

Patent infringement can deal a heavy blow to your finances and your credibility. Fortunately, you can pursue monetary damages if someone has illegally profited from your invention.

Lost Profits

Lost profit damages are the profits you would have made had the opposing party not infringed on your patent.

To establish lost profits, you must prove:
  1. a demand for the patented product during the period in question
  2. the absence of acceptable non-infringing substitutes
  3. your own manufacturing and marketing capability to meet or exploit the demand
  4. a detailed computation of the profit you would have made

Accordingly, you must show that you would have made money from the sales if not for the infringement. Serpentix Conveyor Corp. v. Roth, 726 F. Supp. 282, 283 (D. Colo. 1989)

Reasonable Royalty

A reasonable royalty is defined as the amount that a willing licensor and willing licensee would have agreed upon if both had been reasonably and voluntarily trying to reach an agreement. Micro Chem., Inc. v. Lextron, Inc., 161 F. Supp. 2d 1187, 1189 (D. Colo. 2001)

Calculating Reasonable Royalties

The Federal Circuit has adopted the Georgia-Pacific factors as the benchmark for reasonable royalty determinations.

Some of those factors include:
  • established licensing royalties
  • licensing rates for comparable patents
  • the nature and scope of the license
  • the duration of the patent and the term of the license
  • the extent to which the infringer has made use of the invention
  • expert testimony

All Plastic v. Samdan Llc, Civil Action No. 20-cv-01318-NYW (D. Colo. Feb. 15, 2021)

Not all factors may apply in any given case. Additionally, some factors may lower the damages royalty rather than increase it.

Enhanced Damages

35 USCS § 284 allows patent holders to receive additional monetary damages if the infringement is especially egregious. The court allows a plaintiff to receive up to three times the amount awarded by the jury. Three times the award is called treble damages.

Enhanced damages are only available in exceptional patent infringement cases. Additionally, enhanced damages are entirely at the court’s discretion.

Factors considered for enhanced damages include :
  1. whether the infringing party deliberately copied your ideas or design
  2. whether the infringing party genuinely believed that your patent was invalid or that their conduct did not constitute patent infringement
  3. the infringing party’s behavior during litigation
  4. the infringing party’s size and financial condition
  5. the closeness of the case
  6. the duration of the infringing conduct
  7. remedial action taken by the infringing party
  8. the infringing party’s motivation for harm
  9. whether the infringing party attempted to conceal his or her misconduct

Nat’l Oilwell Varco, L.P. v. Pason Sys. USA Corp. (D. Colo. Apr. 30, 2009)

In one 1972 case, an inventor sued a small Colorado town for patent infringement. He claimed the town’s recently installed sewage treatment system had been patterned on his own patented method.

The court awarded treble damages to the inventor after concluding that the town had “willfully and deliberately” copied his invention:

“The evidence establishing that the design of the installation originated with plaintiffs and that the installation conforms to them is almost overwhelming.”
Hinde v. Hot Sulphur Springs, 359 F. Supp. 987, 999 (D. Colo. 1972)

Reasonable Attorneys’ Fees

Courts may also award reasonable attorneys’ fees to the prevailing party in “exceptional” patent infringement cases:

Entitlement to attorney fees comes from such misconduct upon the part of the losing party as to constitute fraud on the Patent Office or so unfair and reckless as to make it unconscionable for the prevailing party to sustain the expense of counsel.
Halliburton Co. v. Dow Chem. Co., 514 F.2d 377, 378 (10th Cir. 1975)

How are Patent Rights Enforced?

Although a government agency grants patents, they are enforced only through the private efforts of their owners.

What if Someone Infringes on Your Patent? 

If you believe another party is infringing on your patent, you may file a patent infringement lawsuit in a Colorado district court. Your first step should be to call an intellectual property attorney who has experience with patent infringement cases.

If you successfully prove your patent infringement claim, you may ask the court to award monetary damages to compensate you for the infringement. In some cases, you may also obtain a court order, called an injunction, to prevent the other party from continuing to infringe on your patent.

Steps of a Patent Infringement Claim

Step One: The Pre-Filing Inquiry

All cases should be thoroughly investigated before filing a civil lawsuit. However, this is especially important in patent infringement cases. If you fail to conduct a proper investigation of the alleged infringement before filing a lawsuit, a Colorado federal court will likely dismiss your case. Additionally, if your case is dismissed the court could order you to pay the opposing party’s attorneys’ fees.

This exact scenario became reality for ThermoLife International, an Arizona-based dietary supplement manufacturer. Let’s take a look at this case.

ThermoLife Int’l LLC v. GNC Corp.

In 2013, ThermoLife filed 81 lawsuits for patent infringement against multiple defendants, including Hi-Tech Pharmaceuticals, Inc., Vital Pharmaceuticals, Inc., and several GNC entities.

At trial, a California district court concluded that all ThermoLife’s patent infringement claims were invalid. The issue of infringement was never addressed.

After trial, Hi-Tech and Vital filed motions to recover their attorneys’ fees under 35 U.C.S. §285. The companies claimed that ThermoLife would have known no infringement existed if only it had conducted a sufficient pre-filing investigation.

The district court granted these motions upon finding that ThermoLife had not read the defendants’ labels or conducted a basic test. A judge ordered ThermoLife to pay a combined $1.3 million in attorneys’ fees:

Plaintiffs’ pre-filing investigation was severely lacking, thus resulting in frivolous claims and the objective unreasonableness of certain infringement contentions; Plaintiffs’ motivation was seemingly to extract nuisance-value settlements from a large number of defendants; and awarding fees here will advance compensation- and deterrence-oriented goals.
Thermolife Int’l, LLC v. Myogenix Corp., No. 13cv651 JLS (MDD) (S.D. Cal. Apr. 4, 2017)

Step Two: Filing the Complaint

Once a thorough investigation into your complaint is concluded, it’s time to file a patent infringement complaint in Colorado federal district court.

The complaint will identify the patent owner, the accused infringer, and the patent being infringed.

Typically, a complaint will include a high-level description of the alleged infringing activities. It should also specify which remedies you will seek from the court.

Once you file the patent infringement complaint, you must deliver a copy of the complaint to the defendant. Once served, the opposing party has 21 days to respond to your patent infringement complaint.

Call a Patent Infringement Attorney Today

If you have been granted a patent, it is your responsibility to enforce it. There is no government agency to do it for you. The patent infringement attorneys at Robinson & Henry will use every available legal avenue to stop any infringing action and recover the profits you are rightfully owed. Call 303-688-0944 today to schedule your free case assessment.

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