The following article appears in the journal JOM,
44 (1) (1992), p. 46.

JOM is a publication of The Minerals, Metals & Materials Society

Patent Infringement and Relief for the Patent Owner

Richard V. Westerhoff

In the United States, there are several forms of relief available to the patent owner who has successfully proven patent infringement. Such relief can include protection from future infringement; compensation for past infringement; certain of the costs of litigation; and, in exceptional cases, attorney's fees and increased money damages. As each of these forms of relief, or remedies, addresses a different injury, several or all may be applied in a single case.

Remedies for patent infringement are obtained through suit in federal court. Alternatively, the patent owner and accused infringer can agree to settle their dispute through arbitration, or arbitration may be required by a contract under which the dispute arises. The court action is quite formal and provides for appeals. Arbitration, while following the general rules of court proceedings, is less formal, and the decision of the arbitrator is binding. Generally, arbitration is less costly and faster than litigation in federal court, if the parties are willing to trust the outcome to the judgement and wisdom of the arbitrator. In either forum, the same basic remedies mentioned above are available.

An alternative source of limited relief is available through the International Trade Commission (ITC) when the source of the infringing products is outside of the United States. The ITC can exclude from importation products that infringe a valid U.S. patent and cause injury to a domestic business. However, no compensation for past infringement or attorney's fees are available in an ITC proceeding.

At the outset, it should be noted that remedies are only available for infringements that occur during the life of the patent. No relief is accorded for acts that occur while the patent is pending in the Patent and Trademark Office. However, there is a procedure for expediting issuance of a patent that would be infringed if issued.

The remedy against continued infringement of a patent is an injunction. In a patent infringement suit, an injunction is a court order prohibiting the manufacture, use, or sale of the patented invention. This can include prohibition of the continued use of articles made prior to the issuance of the patent.

Violation of an injunction is considered contempt of court and is dealt with by contempt proceedings. In such a proceeding, only violation of the injunction need be proven. This may, however, require proof of infringement, as when a prior infringer attempts to avoid the claims of the patent by modification of the article or process.

Typically, an injunction is issued at the conclusion of the case after all of the evidence and arguments have been heard. However, under appropriate circumstances (e.g., a high likelihood of ultimate success by the patent owner and the inadequacy of money damages to compensate for harm done to the patent owner), a preliminary injunction may be issued at the outset, thereby suspending the contested conduct while the case is being decided.

The remedy for past infringement is the award of damages. While the subject of damages will be explored more fully in a future article, damages are monies ordered to be paid to the patent owner in an amount adequate to compensate for the infringement but not less than a reasonable royalty. Damages may be increased up to three times at the discretion of the court or arbitrator in exceptional cases. Such exceptional cases include the willful, wanton infringement of the patent.

Damages can only be awarded if proper notice of the patent was given. Notice is given by the patent owner by marking the patented product with the designation "patented," or the abbreviation "pat.," followed by the patent number. Such notice should be applied to the patented article or articles made by a patented process. If this is not possible, labels bearing the notice should be applied to the packaging for the articles. In the absence of this marking, actual notice of the specific patent must be given to an infringer, and damages can then only be obtained for infringements after notice. It is important to note that the infringer does not have to have actual knowledge of the patent in the case of marking; however, very specific notice must be given if the patent owner does not mark, or is not making articles and, therefore, has nothing to mark.

There are special provisions for damages which can be recovered for infringement of a design patent. In addition to the other remedies, the patent owner can recover the total profit from the infringement with a minimum of $250. However, the award of profits and compensation for infringement cannot overlap and provide a double recovery.

Under the U.S. legal system, each side pays their own attorney's fees, win or lose, unless there is a specific statutory provision for the recovery of such fees. The patent law includes such a provision, but it only authorizes the award at the discretion of the court or arbitrator in exceptional circumstances of the type which justify an increase in damages.

On the other hand, the patent law also provides that the accused infringer may be entitled to attorney's fees under exceptional circumstances, such as when the patent was procured by fraud or the infringement suit was brought or prosecuted in bad faith.

Costs which can be recovered in a patent infringement suit include such expenses as filing fees, cost of deposition transcripts, witness fees (including payments to expert witnesses), and investigation fees.

Interest payable at the legal rate can be assessed on damages and may accrue from the time the wrong occurred. This can significantly increase the amount recovered.

Only one valid claim of a patent need be infringed to entitle the patent owner to relief. This is true even if other claims in the patent are found to be invalid, as long as there was no deceptive intent on the part of the patent owner which led to invalidity. However, no costs can be recovered if there are claims in the patent which have been previously held invalid unless a disclaimer of the invalid claims is filed in the Patent and Trademark Office before commencing the infringement action.

As can be appreciated, the patent law offers a range of remedies which provide meaningful relief to a patent owner, and serve as a powerful deterrent to potential infringers.

Richard V. Westerhoff is an attorney in the law firm Eckert Seamans Cherin & Mellott, 600 Grant Street, 42nd Floor, Pittsburgh, PA 15219; telephone (412) 566-6000; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.

Copyright © 1992 by The Minerals, Metals & Materials Society.

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