Infringement Analysis: What To Expect

Imagine you are a patent holder, and you suspect a competitor may be infringing on your exclusive rights related to your invention.  You ask your patent attorney to help you stop the infringing behavior.  Your attorney (hopefully) responds by recommending an infringement analysis.  You may think, “Analysis?!?  What’s to think about?  I just want to stop this guy!”

Perhaps a few notes on some deliverables commonly included in an infringement analysis opinion letter or report might help you appreciate the importance of such an effort:

Claim Chart

An infringement claim chart provides a straightforward mapping of the language of one or more (preferably all) independent claims of a patent to the infringing behavior of the competitor.  Claim charts are typically formatted as a table, with the language of a patent claim broken down element-by-element in the first column and a description of the infringing activity in the second column.  A given patent claim is only infringed if each row of the table shows an element in the first column that is matched by a competitor act (or competing product characteristic) in the second column.

Infringing Material

Even though a claim chart may summarize a competitor’s infringing activity, your attorney likely will seek to capture as many details about the infringing process, system, and/or device as reasonably possible within time and budget constraints.  Artifacts from a competitor’s business operation that may be useful in supporting an assertion of infringement may include samples of an allegedly infringing device, diagrams and/or photographs, user and maintenance manuals, and sales literature and advertisements.

Validity Reassessment

You may think, “Of course my patent is valid.  My invention disclosure was examined by the USPTO, and my claims were allowed.”  And you would be right that a patent is presumed valid.  However, your attorney may warn you to expect an accused infringer, as part of a routine defense strategy, to attack your patent at its foundation (i.e., invalidity, unenforceability).  To get in front of such a defense, your patent attorney may recommend a review of the patent with an eye toward assessing the likelihood of the patent surviving an attack.

Damages Analysis

Your attorney’s opinion letter or report may include a comparison of the potential damages available for the alleged infringement:  lost profits and reasonable royalties.  Remember that  it may be a possible to successfully claim interest on the damages, and that enhanced or punitive damages may be available if you can prove willful infringement by the competitor.  Your patent attorney also would be wise to warn you of the possibility of winning a case, but losing on damages.  Would you really want to spend, say, $45,000 in legal fees to prevail in litigation, only to be awarded $22,000 in damages from the losing party?  Or how about suing an infringer who has no financial means to pay a potential damage award?

Legal and Business Options

Lastly, the infringement analysis may include a presentation of possible actions the patent holder may choose to take next (e.g., cease and desist letter, propose licensing to the competitor, propose sale/assignment of the patent to a deep-pockets competitor, propose a cross-licensing of technology or some other collaborative arrangement with the competitor).