1 / 12

Indirect Infringement Defenses & Counterclaims

Indirect Infringement Defenses & Counterclaims. Class Notes: March 20, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner. Today’s Agenda. Indirect Infringement Defenses & Counterclaims. Indirect Infringement. 35 U.S.C. § 271

lupita
Download Presentation

Indirect Infringement Defenses & Counterclaims

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. Indirect InfringementDefenses & Counterclaims Class Notes: March 20, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner

  2. Today’s Agenda • Indirect Infringement • Defenses & Counterclaims Law 677 | Spring 2003

  3. Law 677 | Spring 2003

  4. Law 677 | Spring 2003

  5. Indirect Infringement • 35 U.S.C. § 271 • (b) Whoever actively induces infringement of a patent shall be liable as an infringer. • (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. Law 677 | Spring 2003

  6. Indirect Infringement • Contributory Infringement • CR Bard v Advanced Cardio. Sys. (Fed. Cir. 1990) • Patent claim: a method of using a catheter for coronary angioplasty • ACS: sold a catheter suitable for use in angioplasty procedures • The court notes three separate factual possibilities for use of the ACS catheter. (Why is this important?) • Why does the court suggest summary judgment of infringement is inappropriate? • What do you make of the ‘public interest’ discussion? Law 677 | Spring 2003

  7. Indirect Infringement • Contributory Infringement • 35 USC 271(c): elements of CI . . . • “offer[] to sell or [sale]” (Why not ‘use’?) • “component of a patented [invention]” • “constituting a material part of the invention” • “knowing [the component] to be especially made or especially adapted for use in an infringement” • “and not a staple article or commerce or commodity … suitable for substantial noninfringing use” Law 677 | Spring 2003

  8. Indirect Infringement • Inducement Infringement • Hewlett-Packard v Bausch & Lomb (Fed. Cir. 1990) • What acts create the allegation of indirect infringement? • Inducement infringement: • Direct infringement • Active intent to spur infringement • Why does the court determine that there is no infringement? • Why does the indemnification clause suggest inducement? Law 677 | Spring 2003

  9. Defenses & Counterclaims • Defenses / Counterclaims to patent infringement (35 USC § 282): • Noninfringement • Patent invalidity • Patent unenforceability: • Inequitable conduct • Patent misuse / antitrust • Limits on patent rights: • First sale and implied license • First inventor defense • Experimental use exception Law 677 | Spring 2003

  10. Defenses & Counterclaims • The Importance of Declaratory Judgments • 28 USC § 2201: The Declaratory Judgment Act • Requires ‘actual controversy’ to create jurisdiction (‘reasonable apprehension of suit’) • Requires ‘sufficient interest’ in the outcome • Consider the relationship between the defenses to infringement and the availability of DJ actions • What does this suggest about the strategic aspects of the relationship between patentees and infringers? Law 677 | Spring 2003

  11. Defenses & Counterclaims • The Importance of Declaratory Judgments • The traditional model for litigation: • Expected gains from litigation > Expected costs • [% chance of win] x [rewards] > [litigation costs] • In the patent context, the potential for patent invalidity/unenforceability adds a factor to the equation: • For patentee: • [% chance of win] x [rewards] > [litigation costs] + [% chance of invalidity] x [costs of invalidity] • For infringer: • [% chance of invalidity] x [rewards from invalidity] > [% chance of loss] x [costs] + [litigation costs] Law 677 | Spring 2003

  12. Next Class • Defenses & Counterclaims II • Inequitable Conduct • Patent Misuse & Antitrust • First Sale & Implied Licenses Law 677 | Spring 2003

More Related