How is infringement evaluated?

Following my last post about a patent protected product being infringing, several people have asked me to clarify the difference between patent infringement and patentability, or the ability to protect a product or process by a patent.

Since the previous post was about infringement, I will continue in that trajectory, and will address patentability, and requirements for patentability, in a separate post. Also, this post will relate to direct infringement, and not to more complex forms of infringement, which I will address in future posts.

In order to understand the definition of patent infringement, we must first address the meaning, or purpose, of a patent.

Consider a situation in which Abby has invented a wooden chair, and has obtained (and owns) a registered patent for that chair in Israel. Effectively, Abby has made a “deal” with the Israeli government. Abby’s side of the deal is describing the chair and how it is constructed. Stated more broadly, the inventor’s side of the deal is disclosing the invention and how it is reached. The rationale behind this is that hopefully this knowledge would help technological advancement because other inventors can move ahead from that point, without the need to rediscover things already discovered, or reinvent existing inventions. Abby fulfills her side of the deal by providing an enabling specification – a description of the chair which allows a person of average skill in the art to build that chair.

Now that Abby has taught the world how to build her chair, the Israeli government returns the favor by granting Abby a monopoly for the invention. The scope of this monopoly is defined in the claims of the patent. Specifically, Abby can prevent anyone, for example Max from “Chairing is Caring”, from selling, importing, or marketing, a chair which fulfills every requirement of the claims in Abby’s the patent, in Israel (or any other country in which the patent is registered).

So, say Max wants to evaluate whether or not his chair infringes Abby’s rights. The following flowchart provides a high-level guide for Max.

The first step of the evaluation determines whether what Max has is merely an idea, or a description of the idea, or something more tangible such as an actual working prototype or product. In our example, if Max has a chair that is ready to go on the market, it may infringe Abby’s patent. However, if all Max has is an idea, or even a document describing his chair, that alone does not constitute infringement. I’ve had clients convinced that they could sue a competitor for filing a patent application describing a similar invention, not realizing that only an actual product can be infringing. In sum, Max’s only concern with respect to infringement is whether the chairs he markets are infringing.

The second and third steps of the evaluation focus on checking if Abby indeed has a patent that she can use in a court of law. Specifically, this means that her patent application has been granted and has completed all registration steps, and that Abby has paid all the required maintenance fees since the beginning of the process, to keep her patent in force. I have often seen cases in which inventors have given up on patents for various reasons, leaving the field open for competitors to market the patented invention, unhindered by a monopoly.

Finally, when evaluating whether Max’s chair infringes Abby’s patent, the significant part of the patent to address is the claims. Specifically, Max’s chair would infringe Abby’s patent, if and only if Max’s chair fulfills every requirement in at least one claim of that patent.

Let’s make this clearer with an example. Consider Abby’s wooden chair – it has various features, and the patent defines the chair by multiple claims:

Claim 1:

A seating device, including:

a. a horizontal seat portion; and

b. many poles separated by gaps, which together form a back support.

Claim 2:

A seating device, including:

a. a seat portion;

b. a back support;

c. at least one leg extending downwardly from the seat portion.

Would Max’s swivel chair infringe one or both of these claims?

Often, in order to evaluate this question, patent practitioners construct a claim chart, evaluating each of the claim elements, making it easier to see if the claim is infringed. Let’s look at such a table for our example:

	Abby's Claim	Max's chair
Claim 1	A seating device, including:	Max’s chair is indeed a seating device
	A horizontal seat portion	It includes a horizontal seat portion
	Many poles, separated by gaps, which together form a back support	In Max’s chair, the back support is a single surface, and is not formed of many poles separated by gaps
Claim 2	A seating device, including:	Max’s chair is indeed a seating device
	A seat portion;	It includes a seat portion
	A back support;	It includes a back support
	At least one leg extending downwardly from the seat portion	It has a single leg extending downwardly from the seat portion (and that leg splits into four legs)

In the chart above, red text indicates claim requirements that exist in Max’s swivel chair. Green text indicates claim requirements that are absent from Max’s chair – the more green in the claim chart – the better for Max!

As becomes evident from our chart, Max’s swivel chair does not include “many poles separated by gaps”, and does not meet every requirement of claim 1. For this reason, the swivel chair does not infringe claim 1.

However, the swivel chair meets every requirement of claim 2, and DOES infringe claim 2.

Because one or more claims of Abby’s patent are infringed by Max’s chair, Max can be sued for patent infringement, and Abby can stop him from selling and manufacturing his chair in Israel, and from importing his chair to Israel. Alternately, Abby can give Max a license to use her patent for marketing his chairs, and earn royalties for chairs Max sells.

Even if all of the above leads to the conclusion that Max’s chair infringes Abby’s patent, Max may still have some recourse. For example, Max may attempt to demonstrate that Abby’s patent was improperly registered. However, this is a longer and more complex process that requires professional assistance.

Of course, all of the above describes the basic process of evaluating infringement – but the devil is in the details. While this is great for getting a good “gut feeling” about your chances, before making any major decisions it is always best to consult with a professional patent practitioner or lawyer to ensure that your actions align with your patent and marketing strategies.

So, I hope this clarifies the idea of infringement, and reduces the number of questions you have. Feel free to contact me here or on LinkedIn with any additional questions or comments. Of course, if you have any important clarifications or nuances you’d like to share, I am here.