Klarquist – Intellectual Property Law – Patent Defenses

Coverage and Caveats

Substantive defenses to assertions of infringement of a U.S. utility patent. Hyperlinks to hundreds of S. Ct., Fed. Cir. (mostly since 2004), CCPA, and BPAI/PTAB decisions. Developments since July 1, 2017, can be found in the Recent Updates section. “FITF” = applies only to first-inventor-to-file regime patents. For other impacts of 2011 Leahy-Smith America Invents Act, search “AIA”. This training document is a running commentary since 2004 on new decisions as they issue, with limited later editing. It is not designed to be complete, balanced, or even fully reliable. (“REDACTED” replaces internal training tips.) Feedback to [email protected].

Sample Tips

1. TIPS: Argue That Uncertainty Over Whether Element Triggers Sec. 112(6/f) Or Over What Structure, Etc. Corresponds To Function, Violates Nautilus: It often is unclear whether an element triggers Sec. 112(6/f) and/or what structure, material or acts correspond to the element’s function. Consider arguing that this uncertainty violates Nautilus. Cf. HZNP Medicines (Fed. Cir. 10/10/19) (2-1) (successfully making similar argument against a “consisting essentially of” claim).
2. TIPS: Do Not Assume “Continuation” Or Non-Provisional Claims Can Be Backdated: Do not assume that claims can be backdated to filing date of parent or provisional app. under Secs. 119/120, Research Corp. Tech. (Fed. Cir. 12/08/10), e.g., when conducting FITF analysis.
3. TIPS: Do More In Markman: Seek construction that “claim as a whole” is directed to abstract idea, Bilski v. Kappos (U.S. 06/28/2010) (101); claim covers multiple techniques (where Spec. enables or adequately describes only one), Eli Lilly (Fed. Cir. 09/01/10) (112(1/a)); claim language limits claimed method, etc. not just claimed environment, Advanced Software (Fed. Cir. 06/02/11) (271); claim language has no “patentable weight,” AstraZeneca (Fed. Cir. 11/01/10) (102/103); and/or is “indefinite,” Interval (Fed. Cir. 09/10/14) (112(2/b)).
4. TIPS: Consider Early Disclosure Of “No Direct Infringement” Grounds In View Of Commil USA and Octane Fitness: Consider early, non-settlement letter to Plaintiff explaining why there is no direct infringement (to help negate scienter element of indirect infringement and/or willful infringement) and other defenses (to support attorney fees award).
5. TIPS: Seek Admissions To Trigger i4i Jury Instruction: Seek admissions in RFAs, expert depositions, etc., that our lead invalidity evidence “differs from that evaluated by the PTO” and/or “is materially new”—all issues the jury may be asked to consider, per i4i (U.S. 06/09/2011).
6. TIPS: Take Advantage Of Skeletal Spec.: Failure of Spec. to describe particular implementation of a claim-recited element or result can be used as admission that element or result was conventional, for a Sec. 101, 102 or 103 defense. Cf. In re Fox (CCPA 02/01/73) (claim elements not described in detail in the Spec. are presumed to be known to those of ordinary skill in the art).
7. TIPS: Explore Immediate Redesign: Promptly adopting safe redesign stops damages period, may cap past damages amount, and may defeat inducement intent under Ricoh (Fed. Cir. 12/23/08). Instructing customers how to avoid infringement also may avoid inducement intent. Id.
8. FITF TIPS: Docket 9-Month-From-Issuance Deadline To File PGR Against Potential FITF Patent: Petition for PGR of a FITF patent (e.g., child of asserted patent) must be filed within 9 months of issuance/re-issuance. 35 U.S.C. § 321(c). Any patent filed after March 15, 2013, might be an FITF patent.
9. TIPS: Cite 140 Years Of S. Ct. Warnings Of Risk Of Patents Impeding Innovation: Balance presumption of validity with explanation of PUBLIC POLICIES LIMITING PATENTS.