Patent It Yourself - PDF Archive

ChaPter 15 | After Your PATENT ISSUES: Use, MAINTENANCE, and INFRINGEMENT | 421
If you haven’t yet licensed or manufactured your invention,
you may find some solace in an infringement of your patent,
since it shows that your invention has at least made it in the
marketplace. Keep in mind that well over 90% of patents
never attain commercial success. Here, viewed broadly, are
the steps you can take to complete the last step and get the
remuneration you deserve:
• Ask the infringer to stop infringing and pay you
compensation for the past infringement.
• Ask the infringer to pay you compensation for past
infringement and royalties for future activity.
• Ask the infringer to buy your patent for a sum that
will cover past infringement and the present value of
future activity.
• If you’re a manufacturer and the infringer has a patent
of interest to you, exchange licenses with the infringer.
• Sue the infringer in federal court in the district where
the infringer resides or has committed infringement
(in the event your request is unsuccessful). If your
suit is successful, you will be awarded damages and
will also get an injunction, precluding the infringer
from using your invention in the future, during the
remaining term of the patent.
How much can you recover if you successfully sue for
infringement? Section 284 of the patent statutes states that
the court shall award damages adequate to compensate for
the infringement, but in no event less than a reasonable
royalty for the infringer’s activity, plus interest and costs.
Sometimes the court will award an infringer the profits that
the infringer made if it’s difficult to determine a reasonable
royalty.
In addition to the above “regular” damages, Section
284 also states that the court may treble the damages and
Section 285 states that in exceptional cases the court may
also award attorney fees. Until the In re Seagate Technology
case (2007 August), the standard for obtaining these
enhanced damages was relatively low—the infringer had
to violate a “duty of due care” when they instituted the
infringing activity. In line with its recent antipatentee
holdings, the CAFC in Seagate increased the difficulty of
obtaining enhanced damages by holding that the infringer
had to be “objectively reckless.” A patent owner now must
prove the infringer knew or should have known that they
were probably infringing and continued anyway; it’s no
longer enough to show they knew of the patent and did
nothing about it.
Patent infringement damages and fees sometimes can
even exceed the infringer’s gross sales. In addition to
monetary damages, the court can issue an injunction—an
order signed by a federal court ordering the infringer not to
infringe any more. If the infringer violates the injunction,
they can be subject to contempt-of-court sanctions, including
imprisonment and fines.
Unfortunately our legal system, especially in the
field of patent enforcement, is mainly accessible to (and
manipulated primarily by) organizations and individuals
with deep pockets—those companies that can afford to hire
expensive patent litigators and pay the costs of litigation.
One disgruntled client who got a patent and found an
infringement recently said to me bitterly, “Even if it infringes,
I can’t afford to sue the company anyway. The patent system
is mostly useless for small inventors.” While this is often true,
it is also often possible for little folk to obtain relief by using a
contingent-fee litigator or by just implying that they will sue
as described below. However, a contingent-fee litigator will
not take your case unless (1) you have a fairly strong patent,
(2) the infringement is relatively easy to prove or clear, (3)
the damages would be substantial, and (4) the infringer has
deep pockets. Nevertheless, the value of the patent system
would be far more valuable if it provided a way for those with
shallow pockets to enforce their patents.
J. What to Do About Patent Infringement
Let’s now take a closer look at what to do if your patent is
infringed.
Step 1: Obtain Details of the Infringement
If you discover what you believe to be an infringement of
your patent, obtain as many details and particulars about
the infringing device or process and infringer as possible.
To do this, procure service manuals, photographs, actual
samples of the infringing device, advertisements, productcatalog
sheets, etc., plus details of the individual or company
that is committing the infringement.
Step 2: Compare Your Broadest Claim With the
Infringing Device
I have encountered many inventors, who, after being
awarded a patent, somehow get the notion that it covers
everything in the field, no matter what the claims recite.
Of course, you’ll know this isn’t true if you understood the
purpose of claims, discussed at the beginning of Chapter
9. A patent covers only what the claims recite, plus their
equivalents and contributory components (see Steps 3 and
4, below). Thus you must compare your patent’s claims with
the physical nature of the infringing device or process.
To infringe your patent, the device in question must
physically have or perform all of the elements contained
in the main or broadest claims of your patent. Even if the
infringing device has additional elements, it will still infringe.
For example, if your claim recites three elements, A, B, and