If someone is directly infringing a patent by importing, making, using, offering for sale, or selling the patented invention, or if someone is inducing or contributing to another’s infringement, the patent owner can bring suit in federal court for patent infringement.[1] The accused infringer typically raises one of two defenses: (1) the patent is not valid; and/or (2) the patent is not infringed. A patent is presumed valid,[2] and thus the accused infringer must come forward with clear and convincing evidence that the patent is invalid. In contrast, the patent owner need only prove infringement by a mere preponderance of the evidence.
If the patent owner prevails, the infringer is usually enjoined from further infringement.[3] The patent owner is usually awarded damages for past infringement.[4] The damage award may be made on the basis of the profit lost by the patent owner on account of the infringement, or other provable damages. However, in no event should the award be less than a reasonable royalty for use of the invention. Where the infringement is willful, the award may be increased up to threefold.[5] Moreover, where circumstances warrant, the court may award the patent owner the costs and attorneys’ fees in enforcing the patent.[6] The owner of a design patent can also recover the infringer’s profits from the infringement. Because patent litigation can be costly, a patentee typically does not file suit until after making a demand that the infringement cease. In many cases, because of the exposure to liability for damages, the accused infringer will accede to the patent owner’s demand, or attempt to negotiate a license under the patent. However, in some cases the accused infringer will continue the accused conduct. Moreover, the accused infringer may even bring a declaratory judgment action against the patent owner, asking a court to declare the patent invalid or to declare that the accused conduct is not an infringement. Filing a declaratory judgment action gives the accused infringer the position as the plaintiff in the suit, which some regard as a tactical advantage. It also allows the accused infringer to select the court, often a different court than the patent owner would have selected. Despite the risk of a declaratory judgment action, it is usually prudent to make a cease and desist demand before plunging into patent litigation.
[1] 35 U.S.C. §281 provides that “A patentee shall have remedy by civil action for infringement of his patent.“
[2] 35 U.S.C. §282 provides that “A patent shall be presumed valid.”
[3] 35 U.S.C. §283 provides that “The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”
[4] 35U.S.C. §284 provides in part: “Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.”
[5] 35 U.S.C. §284 provides in part that “the court may increase the damages up to three times the amount found or assessed.”
[6] 35 U.S.C. §285 provides “The court in exceptional cases may award reasonable attorney fees to the prevailing party.”