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20 PATENTLAWor adapted for an infringing use. As with active induce-
ment to infringe, there cannot be any contributory in-
fringement unless there is direct infringement by some
party. Note that because use must occur within the United
States, in an Internet-related patent, there may be no in-
fringement when either a server or a client outside the
United States performs some of the elements of a patent
claim.Doctrine of Equivalents andFesto
To infringe a patent, a device must have all of the pieces
recited in at least one claim. If the device matches the
claim’s limitations exactly, it is said to “literally” infringe
the patent claim. For method patents, if a process matches
all of the steps recited by at least one claim, the method is
literally infringed. Even if the accused device or process
does not match the claims exactly, the judicially created
doctrine of equivalents provides that a device that does
not literally infringe may still infringe if the differences
are “insubstantial.” Arguments made by an applicant to
overcome an examiner’s rejection during prosecution of a
patent application may limit the breadth of equivalents.
This principle is known asprosecution estoppel.Inthe
past, application of prosecution estoppel was somewhat
flexible, depending on many variables. More recently, in a
1999 decision, the CAFC, inFesto Corporation v. Shoketsu
Kinzoku Kogyo Kabushiki Co., Ltd., drastically limited the
scope of the doctrine of equivalents, such that any change
to a claim limitation made for patentability acts as a com-
plete bar to the application of the doctrine, as to that limi-
tation.
Even more recently, however, in May 2002, the U.S.
Supreme Court overturned the CAFC’s complete bar.
Instead, the Supreme Court has held that when a claim
is narrowed, equivalence may be barred, but the paten-
tee can overcome this bar by showing that “at the time
of the amendment one skilled in the art could not rea-
sonably be expected to have drafted a claim that would
have literally encompassed the alleged equivalent” (Festo,
535 U.S. (2002), slip opinion available at http://www.
supremecourtus.gov/opinions/01pdf/00–1543.pdf ).What Are the Remedies?
When the owner of a patent believes another party is in-
fringing, the owner typically seeks one of two things: to
have the accused party cease from engaging in the infring-
ing acts or to license the invention to the accused party in
order to collect royalties. An owner typically files a lawsuit
seeking one or more remedies if the owner does not wish
to license the invention or if license negotiations break
down or to “persuade” the accused party to obtain a li-
cense. The patent owner can seek an injunction against
the accused party in which the court can order a cessa-
tion of the infringing act. A court can also award monetary
damages to compensate the owner for the infringement.
These damages can include a reasonable royalty for the
use of the invention, as well as interest and other costs on
which the court may decide. A court may increase these
monetary damages up to three times. In exceptional cases,
a court may award attorney fees. (This can be for either
party, whichever prevails.)Defending Against an Accusation of Infringement
Several defenses are available to a party being accused
of infringement. This is beyond the scope of this chap-
ter, but a list of possible defenses includes noninfringe-
ment, absence of liability, unenforceability, and invalidity
of the patent based on numerous reasons. Issuance of a
patent by the USPTO creates a presumption of validity
of the patent. Nonetheless, a court may rule, based on
the patent itself, the prosecution history of the patent ap-
plication, or new evidence, that the patent is not valid.
Generally speaking, damages cannot be obtained for in-
fringements that occurred earlier than 6 years before the
filing of the suit. Independent of the statutory time frame,
an infringement suit may be barred bylaches,for exam-
ple, if the patent owner deliberately delayed bringing the
suit for an unreasonable time, knowing that the delay
will work to the detriment of the accused infringer. Re-
cently, the CAFC confirmed the existence ofprosecution
laches,in which an unreasonable delay during prosecu-
tion of the application, together with harm to the other
party caused by the delay, can result in unenforceability
of a patentSymbol Technologies, Inc. et al. v. Lemelson
Medical, Education & Research Foundation, Limited Part-
nership,2002).Court Jurisdiction in Patent Cases
Because patent law is federal law (as opposed to state
law), federal courts have jurisdiction over all patent-
related cases. Furthermore, although there are many fed-
eral courts of appeal, Congress, in seeking to establish
a single interpretation of the patent laws, established
the Court of Appeals for the Federal Circuit to hear all
patent-related appeals (but see below, reHolmes Group,
Inc.).
Typically, a three-judge panel hears and decides an ap-
pealed case. On occasion, that decision may be appealed.
One of the parties may ask for anen bancrehearing in
which all or most of the judges from the CAFC rehear the
case. If a party is still not satisfied with the final ruling,
they may appeal to the U.S. Supreme Court. Few patent
cases are ever heard by the Supreme Court, however, typ-
ically one or two a year, if that.
One case that was heard by the Supreme Court re-
cently wasHolmes Group, Inc. v. Vornado Air Circula-
tion Systems, Inc.(2002), (slip opinion at http://www.
supremecourtus.gov/opinions/01pdf/01– 408.pdf ). In this
case, Holmes filed a complaint seeking a declaratory judg-
ment that their products did not infringe Vornado’strade
dress. Trade dress is another form of protection that does
not involve patents. Although the original complaint did
not involve patents, Vornado filed a counterclaim alleging
patent infringement.
On appeal (after an appeal to and decision by the
CAFC), the Supreme Court ruled that the CAFC does not
have jurisdiction over a case that involves questions of
patent law in which the party bringing the suit did not,
in its complaint, assert any patent law issues. Thus, al-
though the CAFC was created in part to form a uniform
interpretation of patent law across the country, where the
original complaint does not assert any patent law issues,
the CAFC does not have jurisdiction, even where patent
issues are later asserted in a counterclaim.