5 Steps to Determining Whether Your Patent Is Being Infringed

With thousands of patent infringement lawsuits filed in the United States each year, allegations of infringement have become quite common. So too have large jury verdicts against infringers. This provides significant incentive for patent owners to review their patent portfolios and search for evidence of infringement.

Although it sounds straightforward, identifying patent infringement is often a complex undertaking. These five steps can streamline the process and help you determine whether someone is infringing your patent.

Step 1: Gather Evidence of Use

For some inventions, gathering evidence of infringement involves little more than obtaining and inspecting a product. But that's not possible for many other inventions, such as those that have been implemented in software or that require features that cannot be detected from a simple inspection. In these situations, patent owners can look to a variety of other sources, including company websites, user manuals, product specifications, product tests, white papers, and even the suspected infringer's patents.

Gathering evidence of use sufficient to establish infringement can be an iterative process. Rarely will you be able to identify all of the necessary information on the first attempt.

Step 2: Determine the Meaning of the Claim Terms

It sounds simple. Before comparing the evidence to the patent claims, you need to determine the meaning of the relevant claim terms. This process, called claim construction, occurs in every patent litigation and is guided by an extensive (and often confusing) body of rules developed through legal precedent.

Fortunately, courts apply a general legal framework when construing claims that you can follow in your infringement analysis. Claim terms are generally given their ordinary and customary meaning (i.e., the meaning that the term would have had to someone of ordinary skill in the art at the time of the invention). But there are two well-known exceptions to this general rule. A claim term will not be given its ordinary meaning where:

1. The patent includes a clear definition in the specification, or
2. The patentee "disavows" the full scope of the claim term in either the specification or during prosecution.

Most claim construction disputes in litigation involve alleged disavowals. These arguments are based on the idea that the public is entitled to rely on an inventor's statements in the patent or to the patent office about what the invention covers and what it does not. But these statements must be clear and unmistakable to limit the scope of a claim term. While it may not be possible to predict whether a statement made in the patent specification or during prosecution will rise to the level of a disavowal, it is important to identify and consider them in the infringement analysis. Disavowals can, and often do, result in a finding of no infringement during litigation.

Step 3: Compare the Construed Patent Claims to the Evidence

There are many ways to prove infringement under U.S. patent law. But they all require evidence that an infringing product or method includes every single element of at least one patent claim. If even one claimed element is missing, there is no infringement.

After you have gathered evidence and construed the claims, the next step is to determine whether the evidence satisfies every claim requirement. Importantly, the analysis must account for each and every word in the claim.

Although any format will do, lawyers often create "claim charts" to provide a side-by-side comparison of the claim language and the evidence of infringement. These claim charts often capture all of your analysis and evidence on the issue of infringement. They should be kept confidential and shared only with your lawyer.

Step 4: Identify the Infringers

Although the existence of a product or method that satisfies every claim requirement is necessary to establish infringement, that is not the end of the analysis. Under U.S. patent law, there are many different types of patent infringement and each requires that a party perform specific actions with respect to a patented invention.

Direct infringement is the most straightforward type of infringement and easiest to prove. It requires that the infringer either makes, uses, offers to sell, sells, or imports the patented invention in the United States. Direct infringement does not require prior knowledge of the patent. Nor does it require intent.

Occasionally, the direct infringer is not the party actually responsible for the "accused" product or method. For example, the direct infringer could be consumers who use a product in a specific way that satisfies the requirements of the patent claims. In these situations, all is not lost. There are two "indirect" theories of infringement you can pursue:

• Induced infringement, which occurs when the infringer encourages or instructs another party to infringe.
• Contributory infringement, which occurs when the infringer provides a component of a patented invention that can only be used for infringement.

Both indirect infringement theories require that the infringer had prior knowledge of your patent.

Step 5: Develop an Enforcement Strategy

If you have made it this far, the next step is to develop an enforcement strategy. Keep in mind, the best approach for enforcing an infringement claim can vary based on your goals, the nature of the infringement, and the value of the patented invention. A misstep at this stage could weaken your ability to seek just compensation.

Find Out if Your Patent Has Been Infringed

We have analyzed thousands of patents for infringement on behalf of innovators looking to protect their intellectual property rights. If you think your patent has been infringed, drop us a note. We can help you through every step of the process so you can stop others from profiting from your invention.