How to Ask the Right Questions About Utility Patent Infringement
Utility patent infringement is complex, to say the least. Beyond the technical analysis which can be quite nuanced, there are practical considerations such as cost and timing. Would the amount of money and time spent arguing the case be worth the results? Do you have the resources to reach a final decision? It’s not just about whether the products infringe the utility patent. You need to ask practical questions that go beyond infringement.
Need to enforce or defend a utility patent infringement claim? Contact US patent attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to explore how we can help protect your rights.
What is utility patent infringement?
What does it mean to infringe a utility patent? In layman’s terms, it means that a product or service has everything written in at least one independent claim of the utility patent. If a particular utility patent has three independent claims, for example, then infringement means that a product has everything written in one of those three independent claims. A product might avoid the first two out of three independent claims, for example, but would still infringe if it included everything in the third independent.
Conversely, noninfringement means that a product or service avoids all the independent claims in the patent. With each independent claim, there must be at least one thing missing in the product. To keep things simple, we will not get into the doctrine of equivalents in this post.
The meaning of utility patent infringement is not about comparing drawings or pictures. You cannot simply compare the visual appearance of a product to the patent drawings and conclude that there is infringement because they all look similar. We are not talking about design patent infringement.
Patent Owners: First Do This Before Contacting Infringers
At the outset, do your due diligence and make sure your utility patent covers your competitors. Do not do this analysis on your own. Use a patent attorney experienced in infringement to do a thorough review. The patent attorney should conduct a sufficiently thorough comparison of each independent claim and the competitive products.
You might be surprised to find out that a product you thought was infringing actually does not infringe your patent at all. Move forward with enforcement only after confirming that your utility patent is infringed.
Patent Owners: What are your options to enforce your utility patents?
In the past, the conventional route was to file a patent infringement lawsuit in federal court or seek a Section 337 exclusion order from the International Trade Commission to block the import of infringing goods.
Of course, patent owners have always had the option of sending cease-and-desist letters. The effectiveness of that approach depends on several factors, such as the credibility of the patent owner and the respective financial resources of the patent owner and accused infringer. Do not underestimate the risk that a C&D letter could expose you to the jurisdiction of the courts in the alleged infringer’s state.
Nowadays, owners of utility patents covering consumer goods have a cost-effective option for stopping e-commerce sales. Amazon APEX is a patent evaluation program that provides a platform for utility patent owners to stop the sales of infringing goods by Amazon sellers.
Non-patent Competitors: How do you sell products without infringing patents?
A Freedom-To-Operate (FTO) patent search can help identify potential infringement risks. FTO searches, however, can be quite costly. Consider more targeted approaches.
For example, is there a leading manufacturer or seller of the type of product you would to sell? Do they identify any patent numbers on their products or packaging? If so, start by having your patent attorney study those patents first. Perhaps, your patent attorney may come up with creative ways to design around those patents.
Have certain patents expired? Patent expiration may be a good sign, but not necessarily a guarantee that you can sell your product. There might still be other unexpired utility patents that could potentially cover your product.
Accused Infringers: How do you defend a utility patent case?
The two most common defenses to utility patent infringement are:
- Noninfringement; and
- Invalidity.
Noninfringement means that your product or service omits at least one feature, or limitation, in every independent claim of the utility patent. Invalidity means that the patent is invalid because the claims cover what had already existed in the prior art. In other words, the patent covers nothing new and, therefore, should not have been granted in the first place.
Noninfringement would be specific to each particular product. Product A can be infringing while Product B can be noninfringing. Invalidity would universally apply to all products and competitors. An invalid patent would mean that it could not be enforced against any competitors regardless of any differences in the accused products.
These defenses are not mutually exclusive so you might be able to make both arguments depending upon the circumstances. Patent owners bear the burden of proving infringement while accused infringers bear the burden of proving invalidity. Invalidity, therefore, is typically a tougher argument to win for those accused of infringement.
What are infringement strategies for patent owners?
The goal of patent owners is to protect their innovation from copycats. Often times, one patent may not be enough. Patent owners should consider filing child applications to pursue new claims that differ in scope from those of the parent patent. Remember that a child application must be filed before the parent application is granted or abandoned.
What are noninfringement strategies for competitors and non-patent sellers?
For sellers of me-too products, do your homework. Find the relevant patents by the bigger players and hire an experienced patent attorney to see if there are ways to avoid infringement.
If your product or concept has issues, can your product be modified to omit certain features required by the patent?
How much do patent cases cost?
Legal costs can vary widely in each of the following patent cases. That is partly due to the adversarial nature of these disputes, meaning that the costs will depend upon how much each side is willing to fight. Nevertheless, let me provide some ballpark costs so that you’ll have a rough approximation of what you might getting yourself into:
- Amazon neutral patent evaluation costs (e.g., APEX, design patent evaluation): $10,000 to $20,000
- Patent reexamination costs (ex parte request filed by third parties with USPTO regarding invalidity): $20,000 to $40,000 for requestor
- Patent litigation costs (when under $6M at stake)
- Initial case assessment: $15,000 to $30,000
- Initial pleadings, early motions and settlement discussions: $25,000 to $50,000
- Discovery: $75,000 to $300,000
- Claim construction: $75,000 to $150,000
- Summary Judgment motions: $50,000 to $150,000
- Expert witnesses and miscellaneous costs: $50,000 to $100,000
- Trial prep: variable (less than 2% of patent cases go to trial)
Amazon neutral patent evaluations are primarily about infringement as invalidity challenges are quite limited unless the prior sales were made by the accused infringer. There are no monetary rewards or recovery of attorney’s fees in Amazon patent evaluations. However, the winning party will get their $4,000 evaluator deposit returned.
A USPTO patent reexamination challenges the validity of a patent. If a third party’s ex parte request is granted, the remaining proceedings will be conducted between the USPTO and the patent owner. The third party requestor is no longer involved after filing the request for reexamination. No costs or attorney’s fees are recoverable in USPTO patent reexaminations.
In patent litigation, both infringement and invalidity issues may be argued. In a federal court patent lawsuit, parties can seek monetary damages, injunctions and attorney’s fees and costs.
