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department of patent infringement

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Infringement is not a judgment about whether two products are similar. It is a question about whether one specific thing contains every element of one specific sentence.

begin here

What is being asserted, and how far along is it?

Start a conversation with the IP Concierge, already scoped to patent infringement. Select a subject area to prompt it, or describe the matter directly.

IP Conciergepatent infringement · orientation, not an opinion on your patent
Tell me roughly what is asserted, against what product or process, and what stage the matter has reached. I will help you see what the technical analysis examines. I will not tell you whether the patent is infringed or valid — that is the expert opinion this site helps you obtain.

Patent cases are decided by the meaning of a small number of sentences, and the parties usually arrive with very different readings of them. That is not obstinacy. Claim language is drafted years before the accused product exists, by people trying to describe an invention broadly enough to be valuable and narrowly enough to be granted, and the result is genuinely capable of bearing more than one reading. Everything downstream depends on which reading prevails: whether the accused product infringes, whether the prior art invalidates, and what the technical predicate for damages looks like. A case that treats claim construction as a procedural step and the technical analysis as an afterthought is a case that has already conceded the ground where it would have been decided.

specialization areas

The three questions in the technical case

They run in order, and each one constrains the next. A construction broad enough to capture the accused product is frequently broad enough to read on the prior art.

methodology

How this department investigates.

What a technical expert is actually asked to do, and what each task requires.

Claim construction supportHow a person of ordinary skill would read the terms, grounded in the specification and the prosecution history.
Element-by-element mappingEvery limitation of every asserted claim, located in the accused product or shown to be absent.
Technical tear-downSource code review, circuit and materials analysis, testing, and documentation review as the technology requires.
Prior art analysisWhat existed before, what it taught, and what a skilled artisan would have found obvious to combine.
Skill in the artDefining the ordinary artisan, which quietly determines both construction and obviousness.
Prosecution historyWhat was said to obtain the patent, and what that surrendered.
common questions

Patent infringement — common questions

Does a product infringe if it does the same thing a different way?

Not necessarily, and this is the most common misunderstanding among people new to patent disputes. Infringement is assessed against the claims, not against the product the inventor built or the problem the patent solves. If the accused product lacks even one element of a claim, it does not literally infringe that claim regardless of how similar the two things look in use. There is a separate route — the doctrine of equivalents — for differences that are insubstantial, but it is narrower than people expect and is constrained by what was given up during prosecution.

Who decides what the claims mean?

The court, as a matter of law, in a proceeding usually called a Markman hearing. Experts do not construe claims. What a technical expert can do is explain how a person of ordinary skill in the art would have understood the terms at the relevant time, and that testimony can matter a great deal — but the construction itself belongs to the judge, and once it issues both sides live with it.

Why do infringement and validity get argued together?

Because they are constrained by the same construction, and the constraint runs in opposite directions. A patent owner wants terms read broadly enough to cover the accused product; the accused infringer wants them read narrowly enough to avoid it. But a broad construction also reaches further back into the prior art, which is why a construction won at the Markman stage can create an invalidity problem that was not there before. Practitioners describe this as the vice, and it is why the two analyses are best run together rather than in sequence.

Is a granted patent presumed valid?

In district court litigation an issued patent carries a presumption of validity, and a challenger bears a heightened burden to overcome it. Proceedings at the Patent Office operate under their own standards, which is one reason parallel challenges there are so common. What the presumption does not mean is that the examiner considered everything: the most effective invalidity cases are usually built on art that was never before the examiner at all.

How far back can a patent owner recover?

That is a legal question with a technical and factual predicate, and it is worth asking early because the answer is often not what a client assumes. Recovery is bounded by a statutory look-back period, and where a patented article is sold, marking and actual notice can determine when damages begin to accrue at all. These are decisions frequently made years before anyone contemplates litigation, and they cannot be repaired afterward. The Institute can say what the analysis examines; what it yields in a particular matter is for counsel.

Test the technical case before the construction is fixed.

Describe what is asserted and against what. The Institute will help you see what the analysis needs.

IP conciergeorientation · not an opinion on your patent
Tell me roughly what is asserted, against what product or process, and what stage the matter has reached. I will help you see what the technical analysis examines. I will not tell you whether the patent is infringed or valid — that is the expert opinion this site helps you obtain.