1.    What is patent infringement?

Making, using or selling an invention claimed in a patent during the term of that patent. 

There are several types of patent infringement: Direct (by the infringer itself), Contributory (helping someone else to infringe), Inducement (getting someone else to infringe), and importation of infringing items (importing items made by a process patented in the US)

Different Types of Patent Infringement

There are different ways another party may infringe on your patent, including:

·         Direct Infringement: This occurs when a product covered by a patent is manufactured without permission.

·         Indirect Infringement: An indirect infringer may induce infringement by encouraging or aiding another in infringing a patent.

·         Contributory Infringement: This occurs when a party supplies a direct infringer with a part that has no substantial non-infringing use.

·         Literal Infringement: This exists if there is a direct correspondence between the words in the patent claims and the infringing device.

Even if an invention does not literally infringe the patent, it may still infringe under the doctrine of equivalents. A device that performs the substantially same task in substantially the same way to achieve substantially the same result infringes the patent under this doctrine. If the court finds infringement, it must still determine whether the infringement was willful.

Willful Infringement

Willful infrigement involves intentional disregard for another's patent rights and encompasses both direct and intentional copying and continued infringement after notice. Patent users and inventors should employ patent attorneys to ensure that the use of a patent is valid and noninfringing. Even if infringement is later found, the attempt to secure a legal opinion is evidence that the infringement was not willful.

If the court finds that the infringement was willful, the infringer faces a substantial financial penalty; a willful infringer may end up paying triple the amount of actual damages suffered by the patent holder, as well as the plaintiff's attorneys' fees.

Patent Infringement: Penalties

When a court finds infringement, the infringer usually must pay damages to the patent holder, either in the form of actual damages or a reasonable royalty for the unauthorized use. Actual damages include lost profits the patent holder would have realized but for the infringement, while a reasonable royalty depends on the type of product, other royalty arrangements, time remaining on the patent, and other issues. In addition to damages, the prevailing party is also entitled to costs. Costs include court filing fees and related litigation expenses.

In addition to infringement damages, a patent owner may stop the infringer from continuing to produce infringing products. The court typically, as a matter of course, issues a permanent injunction after the infringer is held liable for violating the patent.

In some instances, the patent holder will seek a preliminary injunction at the outset of the lawsuit where he or she can show no detriment to the public interest if the injunction is granted, a substantial likelihood of success on the merits of the case, and more compelling hardship for the patent holder if the infringer continues his or her activities while the case proceeds. The patent holder will find it difficult to get a preliminary injunction unless a prior adjudication proved the validity of the patent.

2.    What is the penalty?

Damages can be measured various ways, usually by what a Judge thinks would put the patent owner in the same position as if the infringement had not occurred. One measure is a reasonable royalty, where the patent owner is not a producer and would have to license the invention anyway to make any money. Another measure is the profits lost by the patent owner as a result of the infringement. Another measure is the profits of the infringer (disgorgement). Another remedy in appropriate situations is an injunction shutting down the infringement, although recent case law limits the situations in which injunctions can be issued. Where the Government is the infringer no injunction is possible and only a reasonable royalty can be recovered for unauthorized use (28 USC 1498)

3.    What court hears patent infringement cases?

Since patents are issued by the US Government pursuant to Federal law authorized by the US Constitution, the US District Courts have exclusive original jurisdiction. State courts cannot hear patent cases. Appeal from the US District Court is only to the Court of Appeals for the Federal Circuit, as that court was established with special expertise in patent law since patent law is such a specialized area of law. Appeal from the Federal Circuit is only to the US Supreme Court, which has discretion to accept or not accept the appeal (the Supreme Court is very selective and tends to only take patent cases of widespread importance beyond just the specific parties.)

4.    Do you have to have an issued patent to sue for patent infringement, or is an application enough?

Before you can sue you must have an issued patent with a patent claim that you can accuse the defendant of infringing. However, under certain circumstances you can collect a reasonable royalty retroactively from the time your patent application was published until the time the patent issued.

5.    Do I need a patent attorney to sue for patent infringement?

Absolutely. It is not a legal requirement but most assuredly if you act as your own lawyer in a patent infringement case you have a fool for a client and will be lucky to avoid getting sanctioned for mistakes during trial. Patent infringement is one of the most specialized of all legal trials and you simply must have competent legal help as you can be very sure the other side will do so.

6.    Do attorneys take patent infringement cases on contingency?

It used to be NEVER. However, the judgments are so huge that in a big dollar case, some lawyers will do it on contingency. The lawyers who do that are very, very selective in taking cases. Patent litigation is extremely expensive because technical experts are almost always needed and the issues are not only legal but scientific. It takes a highly skilled presentation to simplify the issues so they are properly understood by judges and juries without a technical background. There is no shortcut. Taking shortcuts almost guarantees failure in a patent suit unless both sides take the same shortcuts.

7.    How much does a patent infringement case typically cost?

About $5,000,000 for a full trial is a good average. Simple inventions with straightforward issues might take less as they will nearly always settle. Complex cases between giant companies can cost much much more as such battles may be a life or death matter for the company. Fortunately more than 90% settle before a trial is complete, as usually when all the evidence is known it is reasonably clear who is most likely to prevail.