June 2005

How to Enforce or Challenge a Patent

A patent gives the patent owner an exclusive right in the subject matter of the patent. If another person or company makes, uses, sells, offers for sale, or imports the subject matter of the patent, that other person or company is said to be infringing on the patent rights of the patent owner. The patent owner in such a situation may wish to have the infringing conduct stop or may be entitled to monetary compensation for the infringing conduct. Because the United States Patent and Trademark Office (USPTO) has no jurisdiction over a patent once it issues it does not have any enforcement powers with regard to patent rights, the ordinary course of action to take against an act of patent infringement is to bring a lawsuit in court. In addition, a non-patent owner who believes that a patent issued by the USPTO is not valid may bring a lawsuit to challenge the validity of that patent.



By federal statute, federal district courts have exclusive jurisdiction over all lawsuits “arising under any Act of Congress relating to patents.” Not all cases involving patents arise under the patent statute, however; thus, depending upon the exact nature of the dispute, certain cases involving patent questions may be brought in state courts. For example, a lawsuit alleging the breach of a contract that involved a determination of the validity of a patent would be properly brought in a state court because contracts are governed by state law and the question of the validity of the patent is considered a side issue to the main question of whether a contract was breached.


Someone bringing a patent lawsuit must also choose the proper geographical area in which to file the suit. The patent venue statute provides that a patent infringement action may be brought in the federal judicial district in which the alleged infringer resides or where the alleged infringer has committed the alleged acts of infringement and has a regular and established place of business. If the alleged infringer is an alien, an infringement lawsuit may be brought in any federal district court. For actions that involve patents in some way but are not infringement actions, the general venue statutes, whether state or federal, would apply.

In patent cases brought in federal district courts, the unsuccessful party may appeal the decision of the district court. All appeals of federal district court decisions in cases arising under federal patent laws are heard by the United States Court of Appeals for the Federal Circuit. The United States Supreme Court hears appeals of the decisions of the Court of Appeals, although it has complete discretion as to whether to hear any particular appeal and in fact declines to hear most appeals.

How to Read a Patent

A patent is a complex, legal and technical document. A patent can define your legal rights, therefore assistance of a knowledgable and skilled attorney can be invaluable when evaluating your patent rights. However, reviewing patents can be useful when considering patent protection. It is often helpful when considering whether to patent something to determine what the current state of the art, i.e. what published applications or issued patents may relate to your invention. Before, reading a patent, it is helpful to understand them. The most important part of a patent is the claim section. Reading the claim section, is referred to as Patent Claim Interpretation. It helps understand what the breadth of the patent. The claim language defines claim scope. Therefore, the language of the claim frames and ultimately resolves all issues of claim interpretation. In determining the meaning of disputed claim terms, however; a construing court considers the written description, the drawings, the prosecution history, and extrinsic evidence. These additional sources provide a context to illuminate the meaning of claim terms. Nonetheless, throughout the interpretation process, the focus must and does remain on the meaning of the claim language itself. The construction of all of the disputed terms of the claim will govern the court’s validity and infringement analysis at all stages of the case, including trial.

Two-Step Process Used to Analyze Patent Infringement Claims

A two-step process is used to analyze patent infringement claims. First, the asserted claims must be properly construed to determine their meaning and scope, and second, there must be a determination as to whether the claims as construed encompass the accused product or process.

Claim Construction

The first step, claim construction, is within the province of the court. The language of the claim or claims in the specification of a patent is the measure of the exclusive rights conferred by that patent. Thus, infringement involves construction and interpretation of the language of the claim and determination whether the claim so construed ”reads on” the accused product or process. In construing the claim, the courts consider not only the literal meaning of its terms but also the prior art and the prosecution history of the patent in the United States Patent and Trademark Office (USPTO).

Objective Test

The focus in construing disputed terms of a patent claim is on an objective test of what one of ordinary skill in the art at the time of the invention would have understood the terms to mean.

Giving Terms A Meaning Different from their Ordinary and Customary Meaning

Terms in a claim are generally given their ordinary and customary meaning. However, a patentee may give terms a different meaning, so long as the meaning is stated clearly in the patent specification or file history. The court may also refer to other claims in the same patent to ascertain the intended meaning of a disputed term in a claim, but may not read limitations from other claims into an independent claim. The concept of claim differentiation provides that each claim of a patent constitutes a separate invention and gives rise to separate rights. Claims should also be read in light of the patent’s prosecution history and the patent specification. The specification contains a written description of the invention and includes a best mode or preferred embodiment of the invention.

Prior Art

Prior art may be defined very broadly as the entire body of knowledge from the beginning of time to the present. A person is not entitled to a patent if the invention was known or used by others in this country, or was patented or described in a printed publication in this or a foreign country before the date of invention by the applicant for the patent.

Prosecution History

Prosecution history encompasses the negotiations between the patent applicant and examiner at the USPTO during which the scope of the patent is clarified.

Application of Claim as Construed to Accused Product or Process

After the meaning of the claims in issue is determined by a study of all relevant patent documents, the claims must be compared to the accused structures. What is crucial is that the structures must do the same work, in substantially the same way, and accomplish substantially the same result to constitute infringement. This is the general approach used to determine the infringement of all the patent claims.

Doctrine of Equivalents and Doctrine of File Wrapper

In determining infringement, the courts enlist the assistance of two traditional doctrines. Under the doctrine of equivalents, an accused product or process will infringe, though outside the literal terms of the claim, if it does the same work in substantially the same way to accomplish substantially the same result as the patented product or process.

Under the doctrine of ”file wrapper” or ”prosecution history” estoppel, a patent owner may not expand the claim through the doctrine of equivalents so as to recapture subject matter deliberately surrendered during the course of the proceedings in the Patent and Trademark Office to obtain the patent. The burden of proof on factual issues relevant to infringement usually rests on the patent owner.

Is Someone Diluting Your Brand Identity

A trademark (or service mark) is infringed when the mark or a similar mark is used in a way that is likely to confuse the public into believing that the trademark owner was the source or sponsor of a product that it did not actually make or endorse. Trademark anti-dilution laws are intended to enable trademark owners to prevent the gradual weakening or whittling away of the strength of their marks, through blurring or tarnishment, even if the public is not likely to be confused. Until 1996, trademark dilution laws consisted of a patchwork of non-uniform state statutes and common law. In early 1996, Congress enacted the Federal Trademark Dilution Act (FTDA) to provide nationwide injunctive relief for diluting uses of nationally famous trademarks.



Federal Trademark Dilution Act

The Federal Trademark Dilution Act (FTDA) became law in 1995. The new statute amends the Lanham Act to provide a federal remedy for dilution. State law is not preempted. In fact, the laws of many states go farther in granting more protection than that provided in the federal statute. Although many states had enacted laws that prohibited trademark dilution, the FTDA was intended to provide uniform and nationwide protection for famous marks. “Dilution” is defined in the FTDA as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.” Prior to the enactment of the FTDA, courts found that dilution could occur as a result of either “blurring” or “tarnishment.” Both of these concepts are encompassed within the FTDA. The FTDA applies only to famous marks.

Famous Marks

In determining whether a mark is famous a court may consider the following non-exclusive factors:

  • the degree of inherent or acquired distinctiveness of the mark;
  • the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
  • the duration and extent of advertising and publicity of the mark;
  • the geographical extent of the trading area in which the mark is used;
  • the channels of trade for the goods or services with which the mark is used;
  • the degree of recognition of the mark in the trading areas and channels of trade used by the marks’ owner and the person against whom the injunction is sought;
  • the nature and extent of use of the same or similar marks by third parties; and
  • whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.


“Blurring” typically refers to the “whittling away” of distinctiveness caused by the unauthorized use of a mark on dissimilar products. Dilution by blurring can occur when a trademark is used by someone other than the trademark owner on products that are very different from those normally produced by the trademark owner


“Tarnishment” involves the unauthorized use of a mark which links it to products that are of poor quality or which are portrayed in an unwholesome or unsavory context that is likely to reflect adversely upon the owner’s product. .

Remedy – Injunctive Relief

Generally, only injunctive relief is available under the FTDA. However, if the defendant willfully intended to trade on the owner’s reputation or to cause dilution of the famous mark, the owner of that mark may also be entitled to other remedies, including defendant’s profits, damages, attorneys’ fees and destruction of the infringing goods. The availability of monetary relief is a striking departure from state dilution laws, which have typically provided only for injunctive relief. Additionally, the FTDA provides that the ownership of a valid federal registration is a complete bar to the assertion of a dilution claim under state law.

The FTDA allows injunctive relief to owners of famous marks against another’s use of the mark if:

  1. the use of the mark is commercial,
  2. the use began after the senior mark became famous, and
  3. the use dilutes the distinctive quality of the mark.

Nonactionable Use of a Famous Mark

The following are not actionable under the FTDA:

  • fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark
  • noncommercial use of a mark
  • all forms of news reporting and news commentary

State Dilution Laws

More than half of the states afford protection from trademark dilution through statutory or case law. The FTDA expressly states that the federal statute does not preempt state dilution laws. Where the federal statute provides protection for dilution of nationally famous marks, state statutes seek to protect interests of a more local nature. Courts have acknowledged that trademarks need not be nationally famous for a mark to be strong in a particular geographic region or industry segments. In addition, whereas the FTDA requires actual dilution, state laws sometimes require only a showing of likelihood of dilution to grant injunctive relief.

Dilution in the United States Patent and Trademark Office

Although the FTDA became effective in 1996, it was not until 1999 that dilution became a basis on which an application or registration of a mark could be challenged in a U.S. Patent and Trademark Office opposition or cancellation proceeding. It still is not a basis on which an examiner can reject an application during an ex parte examination.

Intellectual Property and the World Wide Web

The internet is a great resource of information as well as images, documents, programs and web pages. Various types of intellectual property protection are available to protect these owners of these works. For example, Copyright protects original authorship fixed in tangible form. For works transmitted online, the copyrightable authorship may consist of text, artwork, music, audiovisual material, sound recordings, etc. Copyright does not protect ideas, procedures, systems, or methods of operation. Under U.S. law, copyright protection subsists from the time the work is fixed. Copyright registration is not mandatory, but it has important benefits. The vast majority of the images that are online are copyrighted to someone. Only works with an expired copyright, works created by the government, or works specifically dedicated by the copyright holder as “public domain” are considered public domain.

Copyright Registration of Online Works

Although the Copyright Act affords protection just for creating a work and reducing it to a tangible form, that protection is somewhat illusory without registration. A Web site must be registered in order to sue anybody else for infringement. Also, if a work is registered within three months from the date of first publication, or at least prior to the date of infringement, an owner can collect statutory damages from the infringer.

For all online works other than computer programs and databases, the registration will extend only to the copyrightable content of the work as received in the Copyright Office and identified as the subject of the claim. The application for registration should exclude any material that has been previously registered or published or that is in the public domain. For published works, the registration should be limited to the content of the work asserted to be published on the date given on the application.

Revisions and Updates

Many works transmitted online are revised or updated frequently. For individual works, there is no blanket registration available to cover revisions published on multiple dates. A revised version for each daily revision may be registered separately, provided the revisions constitute copyrightable authorship. A separate application and filing fee are required for each separately published update.


In some cases, a frequently updated online work may constitute an automated database. A group of updates, published or unpublished, to a database, covering up to a three-month period within the same calendar year, may be combined in a single registration. All updates from a three-month period may be registered with a single application and filing fee.

Serials and Newsletters

Group registration, which covers a single registration covering multiple issues published on different dates, is available for serials, which are published weekly or less often, and daily newsletters, which are published more often than weekly,including those published online. Group registration for serials is available only if the claim is in a “collective work.” Thus, group registration is not available for electronic journals published one article at a time because such works are not collective works.

Unauthorized Posting of Copyrighted Material

Unauthorized posting of material protected by copyright on the Internet constitute a copyright violation. In addition, although copyright infringement through the posting of protected material on the Internet is often accomplished anonymously, a copyright owner can obtain the identity of an anonymous unauthorized poster by serving a subpoena on the poster’s Internet Service Provider (ISP) under the Digital Millennium Copyright Act. A prima facie case of copyright infringement requires proof of ownership of a valid copyright and defendant’s violation of the copyright owner’s statutory rights by an act such as copying.

Owners of Copyrighted Musical Compositions

The rights of owners of copyrighted musical compositions have been recognized in the Internet context. Once a musical composition has been publicly distributed with the copyright owner’s authorization, the Copyright Act requires the copyright owner, under certain circumstances, to grant others a compulsory mechanical license to make and distribute recordings of the work, subject to the payment of royalties at statutory or negotiated rates.

Potential Copyright Liability of Service Provider

The Digital Millennium Copyright Act significantly limits the liability of an ISP for copyright infringement by creating four ”safe harbor” categories of activity for which ISPs may not be held liable for monetary damages and for which the scope of any injunctive relief is limited. The four categories are (1) transitory digital network communications, (2) system caching, (3) information residing on systems or networks at the direction of users, and (4) information location tools.


Every item on a Web site needs to have been created for that Website or there must be a mechanism to transfer the ownership before a copyright notice is put on the Website. There are many elements to a Website that must be considered, including text, graphics, script, data, and code.


It is generally a good idea to include a copyright notice on a Web site because it allows the copyright owner to be eligible for certain types of damages. The copyright notice consists of at least elements that include the copyright symbol and/or the term “Copyright,” the year of copyright, and the name of the copyright holder.

Computer Software a Hybrid Approach

All computer programs, fixed in any form by any method, performing any function for any purpose, are entitled to copyright protection. In addition, software may be entitled to patent protection when it meets the statutory requirements for patentability. This dual level of protection has confused many people as to when and what types of protection should be used to protect Software programs. Software programs consist of code, graphics, screen displays, menu navigation and specialized function routines. Different aspects of software applications are entitled to different types of protection. In general, however, patent protection is the strongest but one of the shorter types of protection while copyright protection is longer, but generally not as strong.

The Copyright Office began registering copyrights on computer software in 1964, but registration only raised a presumption in favor of copyright validity. Any doubts as to whether software could be the subject of copyright were dispelled by the passage of the Computer Copyright Act of 1980.

Copyright protection has been held to subsist in both source code and object code. Furthermore, copyright has been held to extend to application programs, operating systems programs and computer code. Copyright protection is also available for video games and other programs with complicated and creative audiovisual displays.

Copyright Protection of Screen Displays

Protection of the programs contained in the silicon chips is not in itself sufficient for video game authors because video game audiovisual displays can often be replicated by means of computer programs which are markedly dissimilar and, therefore, non infringing. Thus, the courts have permitted authors of video games to independently register the sights and sounds of their games as audiovisual works. Where stylistic creativity constitutes a minor aspect of an audiovisual display, the Copyright Office considers the creative aspects of the screen display to be covered by the underlying computer program and will not require separate registration.

Utility Patent Protection of Computer Programs

The United States Supreme Court has held that otherwise patentable processes implemented via computer software constitute patentable subject matter. Thus, computer algorithms, when associated with a computer to accomplish specific purposes, have been held to be protectable by utility patents as long as they do not recite or preempt mathematical equations. Also, media such as ROMs, tapes or diskettes embodying computer programs may be patentable as falling within the statutory subject matter of patentable articles of manufacture.

Design Patent Protection of Software Screen Displays

While utility patents protect the functional aspects of technology, design patents protect their ornamental aspects. Thus, companies have sought and obtained design patents on ornamental designs used in their graphical screen displays.

Patents Provide a Stronger Form of Protection then Copyrights

Neither the U.S. Constitution nor federal statutory law provides that patent and copyright protection should be an either/or proposition. Patents and copyrights are very different forms of protection with patent protection clearly the stronger form of protection. Unlike copyrights, patents protect against infringement even if the infringing program was not copied from the patented program but was independently created. In addition, while neither patents nor copyrights protect ideas, patents protect embodiments of ideas. Thus, patent protection extends not only to the coding of computer programs which qualify for protection but to equivalents of such coding, the underlying computer algorithms, equivalents of those algorithms, and particular applications of those algorithms. The scope of copyright protection will probably not be extended beyond a computer program’s underlying algorithm.

The Idea/Expression Merger Limits Copyright Scope

The scope of copyright protection is limited by a doctrine known as the idea/expression merger. This doctrine provides that where an idea can be expressed in only a narrow variety of ways, copyright protection should protect only against identical copying. The doctrine of idea/expression merger may have an impact over the scope of copyright protection for certain operating systems programs. A similar issue is the appropriate scope of copyrights on computer code. It has been held that the idea/expression merger requires a very narrow scope of copyright protection for short computer code sequences because the coding of the sequences may be dictated by rigid constraints. On the other hand, the idea/expression merger is not available as a defense to a patent infringement action.


The Copyright Office Regulations

The Copyright Office has created a direct obstacle to obtaining copyright protection for design patented computer software. Copyright regulations provide that while the eligibility of a work for design patent protection and the application of a work for design patent protection will not affect the availability of copyright registration, copyright registration for a work will be denied after a design patent has been issued. This regulation has a direct effect upon the protectability of computer screen displays. The application of this regulation may block any screen display icons previously protected by design patent from eligibility for copyright registration.

The Patent Office Regulation

A regulation enacted by the United States Patent and Trademark Office allows previously copyrighted screen display icons to be included with a copyright notice on design patent applications and on granted design patents. Thus, while the Copyright Office regulations probably prohibit previously design patented icons from being registered for copyright, one can obtain joint copyright and design patent protection by obtaining the copyright registration first.

Joint Copyright and Patent Protection

While the Copyright Office regulations may create an obstacle to obtaining copyright protection for previously design-patented icons in computer screen displays, the Patent and Trademark Office regulations expressly permit items which are previously copyrighted to later be the subject of design patents. While the case law and federal regulations do not directly address the availability of joint copyright and utility patent protection for computer software, the same considerations apply as in the design patent context. Joint copyright and patent protection for software, regardless of whether the patent is a design or utility patent, does not constitute an illegal extension of the patent grant.