Patent Testing: Tech Use An Infringement?

Patent infringement is a complex issue that varies across jurisdictions. In the United States, a valid patent grants its owner the right to exclude others from practising the invention claimed in the patent. This means that competitors cannot make, use, sell, or offer the invention without the patent holder's permission. If a competitor's product infringes on a patented device, it is considered infringement if a person skilled in the art would view the elements as reasonably interchangeable. This is determined through a specific test that varies by country but typically involves reading a claim onto the technology of interest. If all elements of the claim are found in the technology, it is said to read on the technology, and infringement has likely occurred. Testing the technology used in a patent may constitute infringement if it meets the criteria for direct or indirect infringement, which includes making, using, offering to sell, selling, or importing the patented invention without authorization.

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Direct vs. indirect infringement

Direct infringement of a patent occurs when a party makes, uses, offers to sell, sells, or imports a patented invention without the permission of the patent holder. This constitutes an unauthorized or prohibited act with respect to a patented invention. Direct infringement does not require knowledge of the patent or any intent to infringe.

In the United States, direct infringement is typically described as infringement under 35 U.S.C. § 271(a). This means that a single entity's product or service meets all the limitations of at least one independent claim in the patent. Direct infringement involves producing, utilizing, selling, or importing a protected idea or invention without obtaining authorization from the rightful owner. It is considered the most obvious form of unauthorized use.

On the other hand, indirect infringement of a patent occurs when a person or company supplies or offers to supply, without the consent of the proprietor, any means relating to an essential element of the invention that is suitable for putting the invention into effect. Indirect infringement can also occur when a party causes or assists another entity to create a product or provide a service that meets all the limitations of at least one independent claim in the patent. This can be through induced infringement or contributory infringement. Indirect infringement requires at least some knowledge and intent regarding the patent and the infringement.

In the United States, indirect infringement is typically described as infringement under 35 U.S.C. § 271(b) and 35 U.S.C. § 271(c). 35 U.S.C. § 271(b) covers situations of active inducement of infringement, where a potential inducer is aware of the patent and intends for their actions to result in a third party infringing the patent. 35 U.S.C. § 271(c) addresses contributory infringement, where a seller provides a part or component that has a particular use as part of a patented machine or composition. Both types of indirect infringement can only occur when there has been at least one instance of direct infringement.

Contributory infringement

To be held liable for contributory infringement, the defendant must have actual or constructive knowledge of the infringement. This means that the defendant has reason to believe that an infringement is taking place. The defendant must also materially contribute to the infringement. For example, providing the site or machinery for an infringement may amount to material contribution.

In the context of patent infringement, contributory infringement occurs when a person knowingly provides a component or product that helps another party directly infringe a patent. The component or product must not have any substantial non-infringing use. For instance, the sale of an article adapted to both an infringing use and other lawful uses is typically not sufficient for a finding of contributory infringement.

In the United States, 35 U.S.C. § 271(c) outlines contributory infringement in relation to patents:

> "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 an 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 non-infringing use, shall be liable as a contributory infringer."

To prove contributory infringement, there must be a showing that the alleged infringer knew of the patent and that their actions would lead to infringement. Additionally, there must be an underlying act of direct infringement.

Induced infringement

In the context of patent infringement, induced infringement occurs when a party knowingly causes another party to infringe a patent. This means that the infringer must have knowledge of the patent and intentionally cause the other party to infringe it.

To prove induced infringement, a patent owner must demonstrate that the accused infringer:

• Actively encouraged infringement;
• Knew that the acts they induced constituted patent infringement; and
• Actuated direct patent infringement by those encouraging acts.

In some cases, it may be difficult to establish that the accused infringer had explicit knowledge of the patent infringement. In such cases, the concept of "willful blindness" may be applied. Willful blindness occurs when the accused infringer subjectively believes that there is a high probability that their actions constitute patent infringement, but they deliberately avoid confirming this fact.

It is important to note that the definition of patent infringement and the specific requirements for proving induced infringement may vary depending on the jurisdiction. For example, in the United States, the standard for proving induced infringement is established by the Global-Tech case, which requires actual knowledge of the patent infringement.

To avoid induced infringement, it is essential for companies to conduct thorough due diligence and seek legal advice when developing and commercializing new products or technologies. By understanding the patent landscape and respecting the intellectual property rights of others, companies can mitigate the risk of infringing patents and potentially costly litigation.

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Clearance opinions

Patent infringement occurs when a patented invention is used without authorization. This includes making, using, offering to sell, selling, or importing a patented invention without the patent holder's permission. Infringement can be direct or indirect, with direct infringement not requiring knowledge of the patent or intent to infringe, whereas indirect infringement requires at least some knowledge and intent. Testing a patented technology without permission from the patentee or licensee may constitute infringement, depending on the specific circumstances and the laws of the relevant country.

To determine if a patent has been infringed, a specific test is used, which varies from country to country. In general, the test requires that the infringing party's product or method falls within one or more of the independent claims of the patent. If all the elements of a claim are found in the technology, the claim is said to "read on" the technology, indicating potential infringement.

A clearance search, also known as a freedom-to-operate (FTO) search, is a precautionary measure to identify potential patent infringement before launching a product. It involves searching issued patents and pending patent applications to determine if a product or process infringes any claims. A clearance opinion is a legal opinion provided by a patent attorney following a clearance search. It assesses whether a given product or process infringes the claims of issued patents or pending patent applications. Clearance opinions can be combined with "validity and enforceability" opinions, which analyse the validity and enforceability of a patent and provide an opinion on how a court might rule.

The cost of clearance opinions can vary depending on factors such as the complexity of the technology and the number of prior art references. According to a 2007 survey, the average cost of a validity opinion, which can be combined with a clearance opinion, is over $15,000, with an infringement analysis adding $13,000.

Markman hearings

A Markman hearing is a judicial proceeding held in the United States District Court for claims dealing with patent infringement. It is also known as a claim construction hearing, where a judge determines the interpretation and scope of disputed terms in the patent claims asserted by the plaintiff. The hearing usually defines the scope of the patent either for or against the inventor.

During a Markman hearing, the judge considers intrinsic evidence, including the patent claims, specification, and prosecution history, as well as extrinsic evidence such as dictionaries and expert testimony. The words themselves are the most important source of evidence, and the court must analyse the language's plain meaning to determine the intended scope of protection of the patent.

The timing of a Markman hearing is up to the trial court, and it can occur during pre-discovery, at summary judgment, or at trial but before jury instructions. Most courts conduct Markman hearings at summary judgment prior to trial, as it helps identify which claims are important to the claim at issue and allows the court to use discovery to interpret the claim. However, one of the disadvantages of conducting a hearing at this stage is the likelihood of reversal on appeal.

One of the main effects of Markman hearings is the de novo review of claim interpretation, where the higher court will not consider the lower court's decision in interpreting a claim. Studies have shown that reversal rates for patent claim construction increased after the Federal Circuit affirmed that the standard of review would be de novo.

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