Enforcing Your Rights

• Author: Alexander I. Poltorak/Paul J. Lerner
• Profession: Is the founder, Chairman, and CEO of General Patent Corporation (GPC), an intellectual property (IP) firm focusing on intellectual property strategy and valuation, IP licensing, and enforcement/Is the Senior Vice President and General Counsel of General Patent Corporation (GPC)
• Pages: 104-166

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CHAPTER 8

Enforcing Your Rights

After reading this chapter you will be able to:

Understand the types of infringement (literal and under

the doctrine of equivalents).

Know the importance of having the broadest possible claims

coverage when drafting a patent application.

Understand the ramifications of the Festo case for patentees.

Choose the best venue for your litigation.

Communicate with patent infringers in the most effective

(and least self-defeating) way.

Anticipate an infringer’s preemptive strike—the declaratory

judgment action.

Understand the two kinds of damages (lost profits and

reasonable royalty) that may be awarded in a patent

infringement case and the requirements for each.

Understand the role of convoyed sales in assessing a

reasonable royalty.

Understand the usual path of patent litigation and some

factors that con tribute to the individuality of each

particular case.

Understand two common defenses, laches and estoppel,

and the differences between them.

Prepare a quantitative analysis of litigation risk.

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Choose a law firm to represent you in litigation matters.

Protect yourself against overbilling by your law firm.

Identify which infringer(s) to sue first and which defendants

will be the most aggressive.

Determine if pendant claims are also involved in a company’s

infringement of your patent.

Present a positive image of your company to a jury.

Understand reexamination and the issues regarding its use.

Understand the advantages of settlement as opposed to

litigation.

Understand the forms of alter nate dispute resolution, along

with their benefits and drawbacks.

Patent Infringement

When a patent is infringed, it’s never just a simple case of telling the

infringer to cease and desist. (Indeed, doing so could give the infringer

grounds to sue you.) From knowing what constitutes patent infringe-

ment at the most basic level, to identifying contributory or induced

infringement—that is, when a direct infringer leads other companies

and individuals to infr inge the patent—there’s a lot to consider before

embarking on a patent enforcement campaign.

Patent Claims—Where Less Is More

The scope of a patent is determined by its claims. If each and every

limitation of a claim is found in an accused device or process, the claim

is said to read on that device or process and is infringed thereby. If

a single limitation is missing from the accused structure, there is no

infringement (this requirement is known as the all elements rule). How-

ever, the presence of additional features in the accused structure does

not negate infringement.

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It Ain’t Kosher

Basically there are two kinds of patent claims: article claims and method

or process claims. (For any nitpickers among our readers, article claims

include the more esoteric product by process and composition of matter sub-

classes.) Article claims are composed of multiple article limitations, and

method claims are composed of multiple steps or process limitations.

Both types of limitations are fine but, just as those who keep kosher are

forbidden to mix milk and meat, so too we are di rected—albeit by a

different author ity—not to mix article l imitations and process steps in

a single patent claim.

This was demonstrated in Rembrandt Data Technologies, LP v.

AOL LLC et al. The patent claim in question was directed to a ‘‘data

transmitting device’’ comprising (1) first and second buffer means,

(2) fractional encoding means, (3) trellis encoding means for trellis

encoding frames (whatever that means), and (4) transmitting the trellis

encoded frames.

The defendant moved for summary judgment of invalidity, asserting

that the patent claim was ‘‘fatally flawed.’’ The plaintiff, accepting the

undeniable, conceded that the claim contained a n error and sought to

invoke the court’s power to correct such an error in a patent. The plain-

tiff argued that ‘‘the error is so plain and known by anyone in the field

there can be no question that the claim as written includes an obvious

error’’ and that the claim element ‘‘transmitting the trellis encoded

frames’’ should be edited to ‘‘a transmitter section for transmitting

the trellis encoded frames.’’

The defendants, as would be expected, argued that the proposed

correction ‘‘would significantly alter the meaning of one element,

changing it from a method step to an apparatus step.’’ They further

argued that ‘‘there is no evidence to support Rembrandt’s assertion that

a ‘typographical’ error occurred.’’ (Typographical—was Rembrandt

serious? This sort of argument could g ive patent trolls a bad name.)

106 Essentials of Intellectual Property