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Training Your IP Police Force to Catch Infringement

The idea for this article came to me as I sat on a bench at the recent AAOS meeting in Las Vegas, across the aisle from one of the large manufacturers. I watched two gentlemen walking slowly around the booth, pointing at various product display counters while writing notes. Both were careful not to step over the imaginary line and violate the unspoken rule of entering a competitor’s booth without permission. This longstanding cat and mouse game of checking out the competition has not changed; however, the intel one is able to collect has. Gone are the days of being able to obtain design brochures and surgical techniques. From an intellectual property (IP) policing standpoint, the elimination of readily accessible product information does impact a company’s ability to monitor and evaluate whether a competitor is knocking off technology and infringing IP.

Due to the rapidly changing product development landscape and the need to protect one’s own IP, as well as the increased difficulty in monitoring competitive product information, it is critical for all companies to establish and properly train their own IP police force if they want to enforce their own protected inventive designs. This article will provide a general overview of the infringement standards that a company’s police force must understand and the possible remedies/damages that may be available if they are successful with their enforcement efforts.

Patents
There are three types of patents: utility, design and plant (think genetically engineered flowers, beans, corn, etc.). Patent law states that every patent contains “a grant to the patentee…of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.” (See 35 U.S.C. 154(a)(1) (emphasis added). What is important with this granted patent right is that you have the ability to enforce your patent against others if those others are infringing your patent. The burden rests with you or your company to stop your competitors from using your patent.

Clients frequently claim that “this company is infringing my patent with this product and I need you to get them to stop.” Before any action can be taken, your IP police must first determine whether actual infringement of your utility patent is occurring. The best practice is to obtain the actual suspected infringing device that the competitor is selling. Don’t base claims on a brochure or a description from a sales rep, because that evidence is insufficient to make such an important assertion. With the assistance of a patent attorney, your IP police should carefully examine the potentially infringing device and compare its structure to the claims of your patent. For your patent to be infringed, every element or structural limitation in the claim must exist in the accused product. The IP police’s initial review should focus on independent claims only as these provided the broadest coverage. Courts when adjudicating a patent infringement case will follow a two-step process to determine whether a claim is infringed (and you should, too).

The first step is determining what the claim means (i.e., “constructing” or “construing”). The second step is to then determine if the claim actually describes the suspected competitive product. (e.g., does the suspected product have all of the elements in the patent claim?) Diving deeper, the IP police when constructing the claim will need to: 1) read the plain language of the claim itself; 2) read the specification of the patent, because claims and their words must be interpreted within the context of the entire patent; 3) review the patent’s prosecution history to determine whether meanings of certain words/terms within the claim should be interpreted or understood in a different manner as evidence by communication between the patent office and the inventor and 4) if necessary, consult extrinsic evidence (i.e., dictionaries, textbooks, etc.).

Once this first step is completed, the second step of comparing the “constructed” claim to the competitive product is usually straightforward. Utility patent claims may be directly infringed in two ways (contributory infringement will not be discussed in this is article). The first is literal infringement. One determines if this occurs by the above two-step process, constructing the claim and comparing it to the suspected device. Even if the suspected device has more features than what is required by the claim, it does not matter for the purpose of literal infringement. It only matters whether the features in the claim are present.

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