July 2007

Patents and Patent Defenses

A patent is a federal statutory right that allows an inventor to exclude others from making, using, selling, offering for sale, or importing the patented invention without the inventor’s permission for the limited period specified by the patent statute. If a person or other entity makes, uses, sells, offers for sale, or imports the invention covered by the patent, they have infringed the patent, and the patent owner may bring a lawsuit to seek relief. There are several defenses to allegations of patent infringement available to someone who is sued for patent infringement. Two of the available patent defenses are that the allegedly infringing activity is not an infringement of the patent and that the patent is not valid and cannot be enforced.


A patent consists of one or more claims that define the rights and the extent of the patent protection. The actual invention that is the subject of the patent may contain several elements that are not eligible for patent protection and thus will not be part of the patent claims. If the allegedly infringing item is not covered by any of the patent’s claims, there is no patent infringement. For more information about patent claims see our other story about patent claims covered in this month’s newsletter.

Patent Invalidity

There are several technical requirements for a valid patent. If one or more of those requirements has not been properly met, the patent might be found to be invalid. An invalid patent confers no protection and thus cannot be infringed. Although it is presumed that a patent issued by the United States Patent and Trademark Office is valid, if the validity of a patent is challenged either in defense of a patent infringement action or in an original action challenging the validity of a patent, evidence might be produced in court that demonstrates that the patent should never have issued.

A patented invention must be new; thus, a demonstration that the invention was known, used or even already patented before the patent in question was issued might lead a court to conclude that the patent is invalid. A patent also must not be obvious in light of the existing patents and other literature pertaining to the field in which the invention is classified. If a court finds a patented invention to be an obvious extension or evolution of existing inventions in that field, it might invalidate the patent.

The purpose of patent law is to encourage the disclosure of new inventions and technologies. The incentive that patent law provides to inventors to disclose their inventions to others is the right to exclude others from making, using, or selling the invention for the term of the patent. As a condition of that the grant of exclusive right, an inventor’s disclosure must be complete. An inventor is required to disclose enough information to enable another party skilled in the field in which the invention is classified to build the invention. In addition, the inventor must describe the best way to build the invention. For example, if the invention works with copper wires but works much better with fiber optic strands, the inventor must disclose that fact. If a patent is found not to fully enable another to build or make the invention or does not disclose the best mode of making the patented invention, the patent can be found to be invalid.

Interpreting Patent Claims

Patent claim interpretation is the process of giving proper meaning to the claim language. 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 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.

Trademarking Nicknames

Disclosure of Confidential Information by a Former Employee

A trademark is occasionally varied by the public in both speech and written usage to an abbreviation of or a nickname for a company’s name or trademark. A company can claim trademark ownership of such a name even if the company neither created it nor publicized it. This protection coincides with the rationale behind trademark law, which is protecting against consumer confusion. Sometimes the public modifies recognized names and marks either by shortening a longer mark for purposes of convenience, such as the use of “Coke” for a Coca-Cola beverage or by adopting a nickname because of the appearance of a product and/or a desire to colloquialize a trademark, such as “Bug” for the Volkswagen Beetle automobile. A company can secure trademark protection for an abbreviation, acronym, or nickname conferred by the public if it can show that the purchasing public associates that nickname with the company or identifies the company as the source of products bearing that nickname. The company may prevent another entity from using a mark that is confusingly similar to the new term even though the company itself has not made public use of it.

Secondary Meaning and Unfair Competition Law

When a nickname has attained secondary meaning so that the purchasing public associates it with the source of the product or with the business and its use by another would be likely to cause confusion, it becomes protectable under the law of unfair competition in the same manner as a trademark. In many instances where legal protection has been granted, the nickname has carried components of the original mark or trade name and there is an obvious association between the two. This association, as well as the nickname secondary meaning, may create a clear likelihood of confusion.

Concurrent Use of Original Mark and Nickname

Protection of nicknames where the nickname itself is neither used nor registered as a trademark, is a well-established facet of unfair competition law. However, a nickname not used on products as a trademark is not eligible for federal trademark registration. For this reason, the trademark owner who finds that a variant of his or her mark is becoming widely used as a nickname by the public frequently begins to use the variant as a trademark on his or her products in order to qualify for registration. When this level of popularity is reached, the value of the nickname is ordinarily considerable and maximum legal protection for it is usually desirable. Also, failure to make actual trademark use of a nickname may result in a competitor obtaining rights in the variant or an inability to obtain injunctive relief in those few jurisdictions where the nickname principle may not be fully embraced. Making trademark use of and registering a nickname also simplifies problems of proof and may even eliminate the need to establish secondary meaning if and when trademark litigation arises. Inasmuch as there is no legal prohibition against the use of two or more trademarks on a single product, both the original mark and the nickname may be used concurrently and legal rights claimed in both as separate trademarks.

Trademark Infringement

Trademark law seeks to proactively prevent consumer confusion, and thus it does not require proof of actual consumer confusion in order for infringement of another company’s trademark to occur. All that is necessary is that the trademark owner prove that a hypothetical, “reasonably prudent” consumer would likely be confused by the use of the same or a similar trademark on potentially competing products. The hypothetical purchaser is not expected to make detailed, side-by-side comparisons or to have perfect recall.

Infringement Includes Consumer Confusion of any Kind

Infringement is not limited to confusion of consumers as to source, but includes confusion of any kind with respect to consumers or potential consumers. Courts have even found a likelihood of confusion to exist where the public at large could be confused, even though the actual purchasers themselves were not confused.

Factors Used to Determine Likelihood of Confusion

In determining likelihood of confusion, courts evaluate several factors. No one factor is determinative in and of itself, and how important one factor is over another is case specific. The factors are as follows:

  • Whether or not the goods or services using the same mark compete with one another. Marks that are used on similar or related goods or services are more likely to confuse consumers as to the source of those goods or services. Even where the plaintiff’s products are not exactly similar, the court may in some cases consider how likely the plaintiff is in the future to sell similar products.
  • Whether or not the goods or services are so closely related that they are being marketed through the same stores or channels of distribution.
  • Whether or not the alleged infringer intended to trick consumers in order to “cash in” on the plaintiff’s business good will.
  • Whether the marks are similar in appearance, phonetic sound, or meaning.
  • How careful the consumer is likely to be prior to purchasing. The more sophisticated the consumer or the more expensive the product,the more discriminating the consumer is expected to be and the less likely confusion will be attributed to them.
  • Whether or not the companies are accessing overlapping customer bases. If the companies both sell mainly to the same groups, there is more likely to be consumer confusion.
  • The legal strength of each of the marks. The greater the public recognition of a mark as a source identifier, the more likely that similar uses will be confusing.
  • Whether there has been any actual confusion. The fact that there has been actual confusion is not conclusive evidence of likelihood of confusion, but it must be weighed together with the other factors.

Control Over Quality of Products

Trademark law frequently refers to the confusion of consumers or the probable confusion of consumers. The reason for this is that trademark law is not as much about protecting business interests as it is about protecting consumers. By providing a business with the incentive of increased profits by the grant of exclusive rights in a mark and imposing a duty upon that owner to stop others from using that same mark on competing products, trademark law gives consumers some amount of control over the quality of products they buy. If one brand satisfied the customer more than another, that customer could easily find the brand they liked without having to read ingredient labels or scrutinize packaging, materials, and workmanship. This saves the consumer time and allows him or her to make informed purchase decisions. For this reason, the standard of when a trademark right is being infringed has entirely to do with whether or not a consumer is going to be confused, and thus deprived of making informed purchasing decisions.

Obligation to Police Trademark

It is because of the focus on consumer protection that businesses are not allowed to ignore infringing uses of their mark. Companies who tolerate infringing uses of their mark risk losing all their rights in the mark if a third-party challenger claims the company abandoned the mark by not enforcing it.

Copyrighting Architectural Works

The owner of a copyright has several exclusive rights to the copyrighted work, including the exclusive right to prepare derivative works from the original, the right to make or distribute copies, and the right to publish the work. A violation of the copyright owner’s exclusive rights constitutes an infringement entitling the owner to injunctive relief to stop the infringement and to monetary damages. Under the Architectural Works Copyright Protection Act of 1990, a design professional may invoke copyright remedies not only for a “copycat building” but also for other unauthorized uses of the protected design.

Architectural Works

The 1990 Act defines “architectural work” as “the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings.” The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but it does not include individual standard features. Under the 1990 Act, a “building” encompasses habitable structures as well as structures that are used but not inhabited by human beings. Interior design is included in the definition of “building.” Bridges, cloverleafs, dams, highways or walkways are not “buildings” under the definition of architectural works.

Two Separate Copyrights

The 1990 Act enhances rather than supersedes prior copyright law. A design professional now has two separate copyrights in his or her work, one in the design embodied in the drawings or building as “architectural work” and the other in the drawings themselves, as “graphic” or “pictorial” works.

Two-Step Copyrightability Analysis

The copyrightability of a given architectural work involves a two-step analysis: (1) determine whether original design elements are present, including the overall shape and interior architecture and (2) determine whether such design elements are functionally required. If none of the design elements are functionally required, the work is protectable. If functional considerations determine only particular design elements, separate protection will be afforded for the nonfunctionally determined elements. Original combinations of standard features may be protectable even if the particular features themselves are not original.

Limitations on Exclusive Rights


There are two limitations on the exclusive rights of owners of copyrights in architectural works. First, the “public place” limitation permits the unauthorized publication of pictures or other pictorial representations of buildings located in or visible from a public place. Second, the “building owners” limitation permits a building owner to alter or destroy the building without the copyright owner’s consent. These limitations acknowledge the need to protect authors of architectural works while recognizing architecture as a public art form and real estate investment as an important component of the economy. The 1990 Act also expressly permits the enforcement of state and local zoning, building, landmark, and historic preservation codes that might otherwise impinge on a copyright owner’s exclusive rights in architectural works.


Although traditional copyright law prohibits copying for publication, limited copying and distribution of construction documents for permit or bid purposes does not constitute an infringement. Copying the architectural work by duplicating the original drawing or constructing a duplicate building from the original drawing or from the original building are examples of infringement. If direct copying cannot be proven, it may be inferred where the copyright owner proves that the infringer had access to the original work and substantial similarities exist between the original and the copy. A perfect replica is not required, nor is expert testimony. The test is whether or not the average lay observer would recognize that the copy was appropriated from the original work. For a strikingly similar copy, access is presumed.


Federal Courts have Exclusive Jurisdiction in Infringement Actions

The federal courts have exclusive jurisdiction to determine copyright infringement.


Registration of Architectural Works

Registration of the architectural work with the U.S. Copyright Office is not required for copyright protection, but it is a prerequisite to filing an infringement lawsuit. If the copyright is not registered before the act of infringement, the damages recoverable are limited to actual damages suffered by the copyright owner plus profits derived by the infringer. If the copyright is registered before the infringement occurs, the copyright owner may elect to recover statutory damages and is also entitled to recover his or her attorney’s fees.

Copyright Notice

Copyright notice, while no longer a prerequisite for protection, is necessary to preclude the defense of “innocent infringement.” If an infringer proves reliance on lack of copyright notice on the work, statutory damages and attorney’s fees are not recoverable, but the infringer is still subject to injunction and is liable for actual profits derived from the infringement.