Intellectual Property Law

Chapter 20 Discussion Answers

1. Mark has made ten exact copies of Jim’s patented invention. Mark has not sold
the inventions and says he has no plans to do so. Has Mark infringed Jim’s
patent? Discuss.
Yes. Under 35 U.S.C. § 271(a), any person who, without authority,
makes, uses, offers to sell, or sells any patented invention within the
United States during the term of the patent infringes the patent. Jim
has the right to exclude others from making his invention. (It is
possible that Mark could allege this is de minimis use, done for purely
idle curiosity, or philosophical inquiry, but such defenses are
narrowly construed, and in this case, making ten copies may well be
more than de minimis use. By making ten copies, it seems as if Mark
might plan to sell or perhaps license the invention at some point in the
future.)

2. Kyle sold his patented Widget to Allissa. May Allissa sell the Widget to another
or would such sale violate Kyle’s right to sell the Widget? Discuss.
Although Kyle has the exclusive right to sell his invention, he has
already done so, which first sale exhausted his patent rights. Allissa
has the right to use or resell the invention under this doctrine.

3. Laura purchased a patented coffee maker. Because it has not been operating as
well as it did when it was new, Laura has replaced a few of its parts. Is this an
infringement? Discuss.
A buyer has the right to repair a patented item to prolong its use,
which is what it appears Laura has done. Laura may restore and
repair the coffee maker, but she may not reconstruct it so as to make
a copy of the patented invention.

4. Angie has begun selling her very common patented plug, which consumers have
discovered can be inserted into Chris’s patented tire to re-create Chris’s invention
for stopping tire leaks. Has Angie committed contributory infringement? Discuss.
It is unlikely Angie has committed contributory patent
infringement. The plug appears to be a “staple” item, which
can be used for purposes other than in the invention. Because
courts have stated that the item supplied must be “good for
nothing else but infringement,” and Angie’s plug has
noninfringing uses, Angie should not be liable for
infringement. Of course, if the plug is not a staple item and has
no substantial use other than its use in Chris’s invention, then
Angie could be liable for contributory infringement.

5. Jackson infringed Liam’s patent on February 1, 2010. May Liam bring an action
for patent infringement against Jackson? Discuss.
Although there is no statute of limitations in the Patent Act, 35
U.S.C. § 286 provides that no monetary recovery may be had
for any infringement committed more than six years prior to
the filing of a complaint for infringement. Thus, Liam may be
able to bring a suit to obtain an injunction, but after February
1, 2016, he may not recover monetary damages. Moreover,
Jackson could allege that the action for injunctive relief is
barred by laches—that Liam’s delay in bringing the suit
materially prejudiced Jackson, who has been investing money
and building up his business over the past several years.

6. Kate infringed one component of Tessa’s patented invention, which includes 20
components. Can Tessa receive a reasonable royalty on the value of the entire
invention? Discuss.
Tessa can receive a reasonable royalty based on the entire
market value of the invention only if the one component Kate
has infringed is the “driver” or basis for consumer demand for
the invention. Otherwise, Tessa must apportion the damages
attributable to the one component to the exclusion of any
damages attributable to the other 19 components.

7. In what way might a post-grant review be an alternative to litigation?
A post-grant review can be used to challenge a patent on a variety
of bases (not just prior art). The petitioner can request this
review of the PTAB, and it will be granted if it is more likely than
not that a claim is invalid. The proceeding is a trial-like
proceeding at the PTAB, which can confirm claims or conclude
they are not patentable. It will be concluded within 12 months.

Thus, such a proceeding will be quicker than litigation and may
give the parties an impetus to settle their case because highly
experienced patent judges will be determining validity of claims.