Chapter §19.02 Noninfringement

• Jurisdiction: United States

§19.02 Noninfringement

In accordance with 35 U.S.C. §282(b)(1), an accused infringer may assert that it does not infringe the patent in suit either literally or under the doctrine of equivalents. The alleged noninfringement may be based on the failure of the accused product or process to satisfy one or more limitations of the asserted claims, either literally or equivalently, or the accused infringer may raise a legal limitation to the patentee's reliance on the doctrine of equivalents, such as prosecution history estoppel. The substance of these theories of infringement and their limitations are discussed elsewhere in this treatise.⁵

Procedurally, the patent owner bears the burden of proof on infringement.⁶ The quantum of evidence required to carry that burden is a preponderance of the evidence (i.e., greater than half of the weight of the evidence of record).⁷ If a preponderance of the evidence does not establish infringement, then the patentee has failed to carry its burden and the accused infringer will prevail on the ground of noninfringement.

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Notes:

^[5] See supra Chapter 14 ("Analytical Framework for Patent Infringement"); Chapter 16 ("Comparing the Properly Interpreted Claims to the Accused Device").

^[6] See Medtronic Inc. v. Boston Scientific Corp., 695 F.3d 1266, 1272 (Fed. Cir. 2012) ("it is, of course, well settled that a patentee who files a complaint or counterclaim alleging patent infringement bears the burden of proving that infringement") (citing Under Sea Indus., Inc. v. Dacor Corp., 833 F.2d 1551, 1557 (Fed. Cir. 1987); In re Tech. Licensing Corp., 423 F.3d 1286, 1288–1289 (Fed. Cir. 2005); Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed. Cir. 2008); Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991)), reversed on other grounds, Medtronic, Inc. v. Mirowski Family Ventures, 134 S. Ct. 843 (2014)).

^[7] See Siemens Med. Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc., 637 F.3d 1269, 1279 (Fed. Cir. 2011) ("Patent infringement, whether literal or by equivalence, is an issue of fact, which the patentee must prove by a...