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Patent Litigation Still Brings in Huge Awards

IBM’s intellectual-property licensing business, which owns over 45,000 patents, and which brought in nearly $1.2 billion in revenue last year put one more feather in its cap last Friday. The jury in IBM v. Groupon Inc., 16-cv-122 awarded IBM $83 million in damages. In what may turn out to be even worse news for Groupon, the jury also found Groupon’s infringement to be willful, allowing the judge to triple the damage award and order Groupon to pay IBM’s attorney fees.

Despite securing more U.S. patents over the past 25 years than any other company, and investing nearly $6 billion annually in research and development, IBM v. Groupon Inc. is the first patent infringement case IBM has brought to a jury in over two decades. Why has IBM been so reticent to bring patent infringement cases to a jury? It is important to note that IBM is not alone. Between 2013 and 2015 there was a 26% drop in the number of patent infringement lawsuits filed. And there was another 22% drop in cases filed between 2015 and 2016.

One reason for the recent drop in the number of patent lawsuits filed may include the new higher pleading standards required for patent infringement lawsuits. Another reason might be the high rate at which appellate courts overturn lower court patent infringement decisions. Since 1997, the Court of Appeals for the Federal Circuit has overturned at least some aspect of lower court’s patent infringement rulings 75% of the time it reviews such cases. Another reason may be the United States Supreme Court restricting the jurisdiction of courts over patent infringers, holding that an accused infringer’s residence for purposes of jurisdiction, is the state in which the accused infringer is incorporated. Still another reason for the drop in the number of patent infringement lawsuits may be the United States Supreme Court’s ruling in Octance Fitness v. Icon Health, in which the Court held that a court can force a patent holder to pay the attorney fees of a successful accused infringer if the patent infringement lawsuit stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.

While 2018 does not appear to be on track to surpass the record-breaking number of patent lawsuits filed in 2013, this massive jury award in IBM v. Groupon Inc. may signal the start of a turnaround in the recent trend of declining patent litigation.

Brett Trout

Posted in Patent Law.

By Brett Trout
July 31, 2018

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Good Patents vs. Bad Patents

Are all Patents the Same?
You see it often on business investment shows like Shark Tank, “Do you have a patent on your product?” To properly value the company, the investors need to know whether or not the company has any patents. The answer to the question is typically “Yes,” “No,” or “We have a patent pending” and the discussion ends there. But does a “Yes” tell you everything you need to know? Are all patents created equal?

Unfortunately they are not. Not by a long shot. If you had one hundred patent lawyers each draft a patent on your invention it is very unlikely that any two of those patents would be the same. They would all be different, some better, some worse, each having a different scope of protection and enforcability based on the language each patent lawyer decided to use. Most people tend to think of a patent as a form a lawyer simply fills out and files with the Patent Office. In actuality, patent drafting is a mixture of art and science designed to explain how the invention works and define the metes and bounds of the protection afforded by your patent.

Defensibility
So what makes a patent “good” or “bad”? A good patent is a patent that is: 1) defensible; and 2) broad in scope. Conversely, a bad patent is a patent that is: 1) indefensible; and/or 2) narrow in scope. What makes a patent defensible? A defensible patent is a patent that is valid. Validity relates to whether there is something intrinsically wrong with the patent that makes it unenforceable against an accused infringer, regardless of whether the patent otherwise covers what the accused infringer is doing. A patent can be invalidated on many grounds. Some of the most popular ways that accused infringers invalidate patents is to show that there are items in the public domain (typically referred to as “prior art”) that the Patent Office did not have an opportunity to consider when granting the patent.

The Patent Office may not have considered the prior art in question because no one was aware of the prior art at the time. Alternatively, the Patent Office may not have considered the prior art in question because the inventor or the inventor’s patent lawyer withheld the prior art from the Patent Office. This is an important distinction. If no one was aware of the prior art at the time, the court presiding over the patent infringement lawsuit can consider whether the patent should have been granted over the newly discovered prior art and: 1) leave the patent as it is; 2) invalidate the patent; or 3) eliminate some of the broader coverage of the patent, thereby leaving a valid, albeit narrower, patent. However, if the inventor or the inventor’s patent lawyer withheld some prior art from the Patent Office, the court may invalidate the patent, as a result of the fraud committed on the Patent Office. In this case, the court can invalidate the patent even if everyone agrees the Patent Office would have granted the patent even if it had been aware of the hidden prior art.

Broad Versus Narrow Patents
Once you determine whether a patent is valid and defensible, the question becomes how broad is the patent. Everything else being equal, a broad patent is better than a narrow patent. Both a broad patent and narrow patent would stop an infringer from selling an exact knock-off of the invention. But with a narrow patent, a potential infringer may only have to change or eliminate one minor part of the invention to avoid infringement.

A broad patent, however, carves out a much larger scope of alternatives that a potential competitor must avoid to avoid infringing the patent. To avoid infringement, the potential competitor has to eliminate several critical elements of the invention to avoid infringement, making the resulting non-infringing product more expensive, less efficient, heavier, more durable, harder to maintain, and/or generally less desirable. The broader the scope of the patent, the less desirable it is for a potential competitor to make a competing product. Keeping competitors out of the market increases the price the inventor can charge for the invention covered by the patent. It may be extremely difficult for a lay person, a business owner, or even a regular lawyer to determine whether a patent is broad or narrow. A skilled patent lawyer,however, can often quickly review a patent and determine flaws that make the patent narrower than it should be and therefore susceptible to a competitor legally “designing around” the patent.

The Devil is in the Details
So why not make all patents broad? Therein lies the rub. The scope of a patent is determined by one or more “claims” of the patent. A patent claim is a one sentence description of the invention. This sentence can be short or several pages long and typically includes a list of essential elements of the invention.

Inventors are often eager to include every feature of the invention in the claim. However, by including everything and the kitchen sink in the claim, that makes the claim narrower, rather than broader. To avoid infringing the patent, a competitor need only eliminate one element from the claim. If a patent claim covered a chair, defined as a seat, some legs, a back, arms, a rocker, and a footrest, you would only have eliminate the footrest to avoid infringement.

If a patent claim has 25 elements, your competitive product that includes 24 of those 25 elements does not infringe that claim as long as you do not include that 25th element. And you can pick whichever element you want to eliminate. Therefore a good, broad patent claim includes a short list of only those elements absolutely necessary for the invention to function.

So why not just draft a very short patent claim? The problem with short patent claims is that they must not be so broad as to cover the prior art. If any prior art would infringe the patent claim, then that patent claim is invalid. The perfect patent claim therefore strikes that difficult balance between being as broad as possible without covering anything in the prior art.


Good vs. Bad Patent Lawyers
Drafting a broad defensible patent claim can take even a seasoned patent lawyer eight hours or more. That is eight hours to draft a single sentence. Drafting a good patent claim is both a science and an art. You want to include the fewest number of elements, but not so few that the claim is invalid for covering the prior art.

To strike the perfect balance, you need a skilled patent attorney. While you do not need the most expensive patent lawyer to get you the best patent, choosing the least expensive patent lawyer is a recipe for disaster. Bad patent lawyers can cut costs and speed through the patent approval process by drafting very narrow claims. Narrow claims are much easier to draft and, because narrow claims are less likely to cover the prior art, the Patent Office grants narrow claims much more quickly. Unfortunately, the client often does not realize that their patent is nearly worthless until they try to sue and competitor for selling a similar product and realize the competitor simply “designed around” the patent by eliminating one of the many elements of the narrow patent claim.

Your patent will only be as good as the patent lawyer who drafted it. Choosing a good patent lawyer can be difficult. Many of the best patent lawyers spend little or nothing on advertising their services. They instead rely on word-of-mouth and attorney referrals to find high quality clients. Finding a good patent lawyer takes more than a simple Google search. Ask around about the patent lawyer’s reputation. Ask other attorneys and inventors who have worked with the patent lawyer in the past. Finding a good patent lawyer takes a little time, but the dividends will pay off for decades.

And the next time you hear someone say they have a patent on something, just remember that all patents are not created equal. If the patent was drafted by a bad patent lawyer, it may not be worth the paper it is printed on.

Brett Trout

Posted in General, Iowa Law, Patent Law.

By Brett Trout
July 30, 2018

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Board Game Patents – Monopoly

I have seen a lot of people writing online that it is not possible to obtain a patent on a board game. That is simply not true. So in the interest of correcting this widespread misconception, I have compiled a collection of ten of the most interesting board game patents:

Number 10 – Monopoly

Monopoly is the board game so nice they patented it twice, or three times, at least. While you cannot obtain a patent on an invention that has already been patented, you can get a patent on improvement to that invention which, in the case of Monopoly, happened more than once. In 1904, Elizabeth Magie Phillips patented The Landlord’s Game, which was a very early version of the board game Monopoly. Ms. Phillips’ patent expired in 1921, so she pursued and, in 1924 was awarded, a new patent on a new version of The Landlord’s Game.

Ms. Phillips’ continued to hold the patent on The Landlord’s Game until 1935. She continued to publish the game through her publisher until she sold the rights in her game to Parker Brothers in 1935 for a mere $500. Parker Brothers had no intention of selling Ms. Phillips’ game, only purchasing the rights to avoid Ms. Phillips, or any other potential purchaser of her patent, from suing Parker Brothers for selling a similar game it was much more interested in promoting. That game is the board game we know today as Monopoly. Charles Darrow patented Monopoly in 1935. Mr. Darrow’s patent covers a board game with spaces servings as rentals subject to increase by the acquisition of an additional space or spaces of the same type. Within a year, Parker Brothers was selling 20,000 Monopoly games a week, leading to Mr. Darrow becoming the first board game designer millionaire in history.

Brett Trout

Posted in General, Patent Law.

By Brett Trout
July 9, 2018

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United States Patent and Trademark Office Issues 10 Millionth Patent

One Tuesday, June 19, 2018, President Trump personally signed United States Letters Patent No. 10,000,000, awarded to Raytheon Co. employee Joseph Marron for a system using “coherent ladar using intra-pixel quadrature detection.” The patented system shoots lasers at an object, determining relative speed and distance, and 3D position, based on the laser light reflected from the object.

To give you an idea of how many inventors are currently filing patents, it took over two hundred years to go from United States Letters Patent No. 1, issued in 1790 to Samuel Hopkins for a method of making potash, to United States Letters Patent No. 5,000,000, issued in 1991 to Lonnie O. Ingram, Tyrell Conway, and Flavio Alterthum, for a genetically modified strain of E. coli capable of producing ethanol from wood. It then took less than twenty years to go from United States Letters Patent No. 5,000,000 to United States Letters Patent No. 10,000,000. With about 300,000 new patents issuing annually, we may not even have to wait seventeen years to reach the next 5,000,000 patent milestone.

For more history of patent in the United States, visit the United States Patent Office.

Brett Trout

Posted in Patent Law.

By Brett Trout
June 20, 2018

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Someone Stole My Board Game! (Part IV)

Part IV of a four-part series of blog posts covering intellectual property and board games.

Okay I have my patent and my intellectual property clearance, am I good to go?

In cases where a board gamer designer steals intellectual property from another designer, they need to be taken to task, held financially responsible for their theft, and enjoined from continued infringement. Patents, as well as copyright and trademark registrations make it easier to determine the exact scope of intellectual property protection a board game has. This makes it easier for other game designers to gain inspiration while avoiding infringement and for owners of the intellectual property to stop infringers. But here are more things to consider than just patents, copyrights, and trademarks.

What is protectable and what is not?

Intellectual property laws define the metes and bounds of what parts of new board games developers are allowed to protect and which parts they are not allowed to protect. Some elements that are not protectable include: items in the public domain, bare ideas, broad themes, obvious concepts, and simple phrases. One benefit of obtaining intellectual property protection on a board game is that it clearly lays out the scope of what is protected, like a specific game mechanic. It lets competitors know how far away from your board game design they have to be to avoid intellectual property infringement. The more ground-breaking your board game, the greater the intellectual property protection you have available.

Beyond the law

So you have protected the intellectual property in your board game with patents, copyrights, trademarks, etc. And you have taken steps to avoid infringing the intellectual property rights of any other board game developers. Are you in the clear? No. Even if you have crossed all of the “t”s and dotted all of the “i”s on your board game from a legal standpoint, that does not mean you no longer need to keep your eyes and ears open for theft issues. Just because you and your patent lawyer have a solid understanding of intellectual property issues as applied to board games does not mean the rest of the intent does as well. Failure to quickly address allegations of intellectual property infringement, even if unfounded, may lead to catastrophic consequences. The same social media that makes it easier for board game developers to introduce new games and reach new markets also makes it easier for misguided third-parties to rally millions of angry board gamers against you over even the smallest perceived slight, regardless of whether that slight is real or imagined.

Being right may not be enough

Part of the problem is that many board game developers do not understand the scope and limitations of intellectual property protection. Just because another board game make look like your game, or use a similar mechanic or theme does not mean that the developers of that game stole anything from you or infringe any of your intellectual property. A board game developer may see a similar board game online and claim that the second developer stole the board game idea, when in reality the designer of the similar board game may never have even have seen the first board game. It may just be a case of parallel thinking. Even if the second board game developer did obtain inspiration from the first game, nearly every board game is inspired to some extent by games that have gone before. Unfortunately, online reporters may pick up the story, and put it in front of millions of eyeballs without ever checking to see whether the second board game developer has even done anything wrong, either legally or morally. Other situations might involve a beloved co-developer of board game being dropped from a re-release of the game without a detailed explanation of why. This may lead to a needless boycott of the re-release, when the dropped co-developer actually supports the re-release.

The three-step strategy

The key is to not only get your legal ducks in a row, but to be sensitive and responsive to online issues, many of which involve social media. Even if you are right, and you did not steal anyone else’s intellectual property, taking a hard line approach toward disgruntled game board players may not be the best approach. A better approach is often to: 1) present the facts as fairly as possible; 2) encourage dialogue; and 3) be receptive to undertaking changes that, while not legally required, may eliminate the need for costly and time-consuming litigation. With this three-step strategy in hand, you may even turn a public relations nightmare into a public relations windfall. The key is to react with speed, honesty, earnest, and sympathy.

Brett Trout

Posted in Patent Law, social media, Trademark Law.

By Brett Trout
May 25, 2018

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Someone Stole My Board Game! (Part III)

Part III of a four-part series of blog posts covering intellectual property and board games.

I have protected all of my intellectual property. Am I in the clear now?

You have just protected the intellectual property in your new board game, with patents, trademarks, and copyright. Are you all set? Possibly, but you still run the risk of infringing the intellectual property in someone else’s board game. Even getting a patent on your board game does not mean that your board game does not infringe a patent someone else might have on their board game. Patents do not give you the right to make the patented article. They only give you the right to stop someone else from making, using, or selling the patented article in the country covered by the patent. For instance, if there was a patent on a chair, the United States Patent Office could grant you a patent on a rocking chair, even though to make the rocking chair would infringe the older chair patent. That is because the United States Patent Office does not care if your rocking chair infringes a pre-existing patent. The United States Patent Office only cares that the invention you want to patent meets the three criteria of new, useful, and non-obvious.

What about Patent Infringement?

So even after you protect your own intellectual property, it is important to check to see if there is any other intellectual property you may be infringing. Unless your board game only has a generic name and includes only intellectual property that existed prior to 1923, you could have an infringing game on your hands. To avoid patent infringement, you can search on Google Patents and/or hire a patent lawyer to conduct a patent search for you. Although the patent lawyer’s search is probably better than a mere Google Patent search, even a patent lawyer search is no guarantee you are in the clear. Even a patent lawyer cannot search patents that were filed less than 18 months ago. This means that even if your patent lawyer finds no patents that you infringe, a patent could issue tomorrow covering one or more aspects of your board game. Even if your game uses mechanics that are decades old, there is a theoretical, albeit ridiculously small, chance that a patent application filed years ago could issue at any time and stop you from making, using, or selling your game. Since patents filed after June 8th, 1995 expire twenty years after the date they were filed, if your board game only uses obvious combinations of twenty-year-old mechanics, you are probably not going to end up infringing anyone’s patents.


Avoiding Trademark Infringement

Using someone else’s trademark on, or in connection with, a board game in a manner that is likely to cause confusion, deception, or mistake about who put out that board game generally constitutes trademark infringement. Being found liable for trademark infringement may subject you to a payment of damages for the infringement, an injunction stopping you from using the same or a similar trademark, and potentially triple damages, and the payment of the attorney’s fees the trademark owner had to spend to get you to stop. As with vetting existing patents, unless you are using a nonprotectable generic or descriptive name for your board game (in which case you cannot stop someone else from using the same name), it is very difficult to ensure there is no possibility that you will not get sued for trademark infringement based on the name of your game. While it is a relatively simple matter to check the United States Patent and Trademark Office (USPTO) database for federally registered trademarks on other board games, even if the exact name of your board game does not show up on that database, there are still a few ways you may end up getting sued for trademark infringement. One way is that even if a competitor does not have the exact same name registered, they may have a similar name registered. As long as there is a likelihood consumers might be confused that your board game came from that trademark owner, you may still be liable for trademark infringement. Another way that you may be found liable for trademark infringement even if the trademark does not show up on the USPTO database is if the trademark owner did not register the trademark. As long as the trademark owner is using the trademark on similar goods they may have common law rights in the trademark, which they can assert against you. For this reason, modern trademark searches investigate not only the USPTO database, but state trademark databases, business name databases, websites, and other uses. While a full trademark search is still no guarantee you will never get sued for trademark infringement, having such a search performed gives you a pretty good idea of how likely or unlikely it is you will run into trouble.

Copyright Infringement

Copyright is a little different than patents and trademarks. With patents and trademarks whoever protects them first owns them. Also, both patents and trademarks require ongoing maintenance to prevent losing those rights. With copyright, as long as you created the work yourself, and did not steal any part of it from anyone else, you are the owner. Even if someone else, unbeknownst to you, created the exact same work before you, as long as you can prove you had no access to that prior work, you would both be entitled to copyright in the work. Now obviously if the two works are complex and identical it will be very difficult to prove lack of access, but by the same token if the works are relatively different and the prior work is relatively unknown, it may be difficult for the prior copyright owner to demonstrate the access necessary to prove infringement. One thing to be aware of with copyright is that even if you pay someone, such as a graphic designer, to produce copyrightable work for you, you still do not own the copyright in that work. To own the copyright in that work, you will need to have the author sign a copyright assignment over to you. If you negotiate this up front, it may not even add to the cost of the project. If you overlook this very important issue however, it could cost you thousands of dollars when you have to go back and get the assignment from the author when your board game publisher demands to see that you actually own all of the intellectual property associated with your board game.

An Ounce of Prevention

As you can see, taking a few small steps early on in your game development process to avoid infringing anyone else’s intellectual property may stave off a catastrophic disaster down the road. Defending an intellectual property infringement lawsuit can cost $50,000 to $3,000,000 or more, even if you win. Given the size and scope of your new board game, it may not make sense to spend tens of thousands of dollars vetting every piece of existing intellectual property your patent lawyer can find. What does make sense is to find out: 1) exactly what your options are for avoiding infringement; 2) what the costs are for each option; 3) what are the advantages of each option; and 4) what are the limitations of each option. Most patent attorneys should be able to go over this information in an initial free consultation. Once you have this information, you can then make a business decision as to which options, if any, you want to pursue. Regardless of whether you pursue all of the available options or none of them, if you receive a cease and desist letter regarding your new board game, you need to contact your intellectual property lawyer immediately. Failure to do so may escalate a relatively simple and easily addressed matter into one a case of willful infringement, potentially subjecting you to tens of thousands to hundreds of thousands of dollars or more in damages.

Next up: Part IV
Okay I have my patent and my intellectual property clearance, am I good to go?

Brett Trout

Posted in Copyright Law, Patent Law, Trademark Law.

By Brett Trout
May 3, 2018

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Someone Stole My Board Game! (Part II)

Part II of a four-part series of blog posts covering intellectual property and board games.

So I invented a new game. Now what?

In the past, game inventors had a difficult time getting their games to market. They often had to invest in expensive prototyping and playtesting only to come up with a proposal that the main board publishers felt were not mainstream enough to justify a production contract. Today, crowdfunding websites like Kickstarter have given any board game developer with a great idea and an ardent following the means to bring their game to market. But there is always the worry “What if I tell someone about my great new game and a big publisher steals my idea?” Fortunately, there are several steps you can take to protect your board game. These include non-disclosure agreements, trademark protection, copyright protection and, in some instances, even patents.

Whether you choose all or none of these protection strategies will depend on the type of board game you created, your business strategy, how various types of intellectual property protection fit into this business strategy, and the amount of money you have to devote to intellectual propriety protection. Whether you have a lot or a little money to spend, it is a good idea to contact a patent attorney early on for a free consultation. This early meeting will give you an idea of the various protection strategies available and the time and money involved with each. Meeting with an attorney early allows you to make longer term plans for raising money and protecting your board game down the road.

So what are the benefits of protecting the intellectual property in your board game? First, while non-disclosure agreements, patents, trademarks, and copyrights may not protect all of the mechanics in your new board game, or even the general concept of your new game, they will allow you to take legal action against anyone infringing the intellectual property you have protected, including anyone marketing a direct knock-off of your new game. Second, protecting your intellectual property will reduce the likelihood a competitor or a large board game publisher will steal your board game out from under you in the first place. Third, if you eventually decide to sell or license the rights to your board game, it will be easier to get a buyer interested, and likely increase the purchase or license fee, if the buyer knows they are buying a well-protected board game.

Next up: Part III
I have protected all of my intellectual property. Am I in the clear now?

Brett Trout

Posted in Copyright Law, Patent Law, Trademark Law.

By Brett Trout
April 30, 2018

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Someone Stole My Board Game! (Part I)

Part I of a four-part series of blog posts covering intellectual property and board games.

Board games are hot.

The new board games flooding the market are not your grandfather’s board games. These new games cover everything form zombies to giant dieselpunk war machines to exploding kittens. Others have hundreds of pieces, take hours to play, and/or cost hundreds of dollars apiece. The hobby is attracting new fans every day, with even Wall Street executives getting in on the action. The developers of this latest incarnation of board games are raising millions of dollars in investments, often before even a single copy of the game hits the shelves.

As these new board games generate more consumer demand, from a rapidly growing board game fanbase, more inventors enter the market and invent even more new board games, which leads to even more demand. This snowball effect of more demand leading to more games has grown the board game industry into a nearly ten billion dollar annual market. Unfortunately, despite almost all of these new board games containing protectable intellectual property, very few board game developers fully understand what intellectual property is, what intellectual property they have, and how to go about protecting it. Even worse is that many of these board game developers do not understand that their new board game may actually infringe someone else’s board game, which may lead them into an expensive and time-consuming legal battle.

Next up: Part II So I invented a new board game. Now what?

Brett Trout

Posted in Copyright Law, Patent Law, Trademark Law.

By Brett Trout
April 27, 2018

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BlawgIT Named One of the Top Patent Blogs for 2018

James Yang, writing for Gene Quinn’s IPWatchdog has scoured the globe for all of the top patent blogs for 2018. Yang based his rankings on weighted visitor traffic numbers from three different source: www.similarweb.com, www.alexa.com, and www.spyfu.com.

As the author of BlawgIT, it is an honor to be a member of this august eloquence of some of the best patent lawyers on the planet. Thank you to all of our readers. Without you, none of this would have been possible.

Brett Trout

Posted in Patent Law.

By Brett Trout
February 21, 2018

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Does My Product Infringe This Patent?

The Deceptively Simple Rule

Determining whether or not a product infringes a particular patent is simple in theory, but quite complicated in practice. To avoid infringing a patent all you have to do is avoid doing at least ONE thing (and its equivalent) in every claim of the patent. A patent claim is a one sentence description of the invention covered by the patent. A claim is typically a list of items, or elements of the core invention, and a description as to how they are related to one another. So to avoid infringement of a claim, you just have to look at all of the items in the claim and eliminate at least one of these items from your product. To avoid infringing the entire patent, you have to avoid infringement of EVERY claim in the patent. If the patent has twenty claims, and you only infringe one of those claims, the amount of money you will have to pay for the infringement is often the same as it would be had you infringed all twenty claims.

To determine infringement of a claim, you first have to examine the claim. For instance, assume a patent issued with claim 1 reading as follows:

A sitting device comprising:
a seat;
a leg coupled to the seat; and
a back coupled to the seat.

Applying the Rule

To avoid infringement of this patent claim, your product would have to NOT have one of those items. So if your product was a stool, and had no back at all, your stool would not infringe this patent claim. If your product had a seat and a back and four legs, your product would still infringe this patent claim, because your product does have at least “a” leg. Even if your product eliminates one of the elements of a patent claim, if the element your product has instead of the eliminated item performs substantially the same function, in substantially the same way, to yield substantially the same result, your product may still infringe the patent claim under the “Doctrine of Equivalents.” As you can see, the determination of infringement can get complicated very quickly. Once you determine that you do not infringe claim 1, you would then repeat the process for every other claim in the patent.

Never Make a Determination of Infringement Yourself

Unfortunately, determining whether a product infringes a patent claim is harder than it first appears. There is a reason patent infringement lawsuits take years to litigate and cost millions of dollars in attorney fees. The legal determination of what or what does not infringe a patent claim is an extremely complex process, involving the analysis of the claims, the specification, the drawings, the proceedings before the Patent and Trademark Office, and mountains of other patents and documents. It is imperative that no entrepreneur move forward on the assumption that their product does or does not infringe a patent without obtaining a formal written legal opinion from a patent lawyer well-versed in drafting patent infringement opinions.

Brett Trout

Posted in Patent Law.

By Brett Trout
February 9, 2018

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