7 Defenses to Patent Infringement
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- Опубліковано 20 жов 2021
- (21) What happens when someone suddenly accuses you of patent infringement? Don’t let your day be ruined by an infringement letter. In this video, I provide 7 effective defenses against patent infringement. Let me guide you into the world of patents and patent litigation.
#infringement #patentinfringement #patentlitigation #ip #patentattorney
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This Channel provides ideas and education for Entrepreneurs and other Creative Visionaries. Topics in these videos include intellectual property, patents, trademarks, copyrights, trade secrets, licensing, and general business practices.
John Ferrell is a founder and patent attorney at the Silicon Valley law firm of Carr & Ferrell. The author of two books and a growing UA-cam channel on Intellectual Property, John’s passion for creating and protecting intellectual property is reflected in his representation of many of the world’s most important companies and inventors - some 5,000 so far. Founded in 1992, Carr & Ferrell has filed more than 10,000 patent applications covering nearly every imaginable technology.
Representative clients have included: 3Com, A10 Networks, Analogix, Apple Computer, Ariat, ASG Technologies, Atmel, Autodesk, Bank of America, Broadcom, Cadence, Canon, Caterpillar, Charles Schwab, Cirrus Logic, Cisco Systems, CSX, Dreamworks, Elasticsearch, Epson, Facebook, FireEye, Fonality, Fujitsu, Hewlett Packard, Hitachi, Icon Aircraft, IDEO, Intuit, Intuitive Surgical, KLA-Tencor, Knowles, Kodak, Lam Research, Lockheed, LSI Logic, Lucent, Marvell Technology, Mitsumi, Netgear, Olivetti, Oracle, PeopleSoft, Polycom, Philips, Plantronics, Princess Cruise Lines, Proofpoint, Rambus, Raytheon, Ricoh, Rohm Semiconductor, Ruckus Wireless, SDL, Seagate, Sega, Seiko Systems, Silver Peak, Sonos, Sony, Sun Microsystems, Sutter Health, Swagelok, Synnex, Synthetic Genomics, Technogym, The Ferrero Group, Trend Micro, Urban Outfitters, VIA Technologies, vArmour, Veritas, VMware, Wells Fargo, Western Digital, and Xilinx.
Distinguished by his demonstrated technical and legal expertise, John has been noted in the Silicon Valley Business Journal list of Who's Who in Silicon Valley and Northern California's Super Lawyers. He was also listed by the Los Angeles Daily Journal as one of California's top Rainmakers, by San Jose Magazine as one of Silicon Valley's top Legal Eagles, and by San Francisco Magazine as one of Northern California's top lawyers. Additionally, under his leadership, the firm has been recognized by Corporate Counsel Magazine as a Go to Law Firm for Intellectual Property. John has received an AV® Peer Review Rating from Martindale-Hubbell® (a representation of the highest level of professional excellence). Over the past three decades, John has presented on and spoken about patent and intellectual property issues, both legal and technology business forums around the globe.
In addition to practicing law, John is an active technology investor and member of The Band of Angels, Silicon Valley's oldest seed fund organization.
Please note that this Channel provides general legal and business information for education purposes only and is not intended to provide legal advice or create an Attorney-Client relationship. John Ferrell is admitted to practice law in California, before the USPTO (U.S. Patent and Trademark Office), before various U.S. Federal District and Appeals Courts and before the Supreme Court of the United States.
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If you wish to speak with an attorney about patents, call: 650 - 812 - 3408 or send an email to johnferrellesq.news@carrferrell.com.
John Ferrell, Esq.
jsferrell@carrferrell.com
Monopoly Architect, Patent Strategist, Attorney
Carr & Ferrell LLP
411 Borel Ave., Ste. 603
San Mateo, CA 94402 - Навчання та стиль
Speak With an Attorney: call 650 - 812 - 3408 or email info@carrferrell.com
Send an email to johnferrellesq.news@carrferrell.com to subscribe to our newsletter!
Thank you so much for the awesome information.
Thank you so much for watching my video and leaving your comment. I am very grateful to have you here 😊 -john
Very clear explanation 👌
Thank you Karthiga. I am so grateful to have you as a viewer. Warm wishes for your personal success. -john
Thank you for the video 👍
@williamremuso6193 Thank you so much for watching my video and leaving your comment. I am very grateful to have you here 😊 -john
Your welcome 👍
In regards to number 5 about prior publication, what exactly has to be published for the patent to not be justified?
Say you patented a product you invented that isn’t on the market yet. Than someone copies it. You send them a cease and desist but they say your patent isn’t valid because someone talked about the idea of your product on a forum a few years ago.
BUT no specifics about the product design or its manufacturing process were clearly stated.
Can that invalidate your patent?
If the patent claim that you are accused of infringing has been taught in a printed publication more than one year prior to the filing date of the filing of that patent application, then the patent claim is invalid. For example, if you are accused of infringing a patent claim of a recent patent that relates to a colorful bike handle bar streamer, and you find a 20 year old catalog showing detailed pictures of the same colorful streamers, then the patent claim would be invalid and could not be enforced against you. 'Hope this helps. 😊 -john
So as long as there is no details or pictures about the specifics of the product then it is still valid?
Example:
Company invents, and patents, a product that allows you to mount a water bottle to your bike.
Another company rips it off and sites a forum from 2 years ago where bike riders were talking about how they simply mounted their water bottle to their bike by their own means (no specifics on design or pictures involved).
That wouldn’t count as useable prior art right?
@@xrjake2955 Hi Jake, for a prior invention to act as prior art or invalidating anticipation of your invention, there needs to be clear evidence that the claimed invention was in the public prior to your patenting. For example, a general discussion of a water bottle holder in an old bike forum would not be enough. The discussion would need to clearly describe your inventive elements or better yet show in a drawing or photograph the claimed elements that you patented. The publication needs to meet the burden in court of showing clear and convincing evidence that the invention previously existed, prior to the date of your patent filing. 'Hope this helps. Warmest wishes, -john
Great
Steven A., thank you so much for watching my video and leaving your comment. I am very grateful to have you here 😊 -john
What happens when it is found that a manger took the work of the original inventor and filed a patent and did not include the orginal inventors name but did include manager and two others names as inventor that had nothing to do with the work?
@Michael Parks, it is really frustrating to omitted inventors when this happens, and can create witness tension and evidentiary problems when/if the patent is ever litigated. It's illegal and just stupid to leave a true inventor's name off a patent. Although it is possible to correct this omission later when the omission was accidental, intentionally misnaming inventors can render the patent invalid. For more information, see my video ua-cam.com/video/9iAo1_AG-HM/v-deo.html.
Thank you for this question. I hope you were not one of the inventors omitted. Warm wishes, -john
Is the Prior Public Use defense based on a worldwide standard or just limited to usage it the United States? In other words, if a product has been in public use for over a year in Japan but never made a debut in the United States, can a defendant still use the Public Use defense?
@David M.
I. Since 2012: 35 USC § 102(a) Novelty; Prior Art.-A person shall be entitled to a patent unless-
"(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention;"
Currently, public use means anywhere in the world.
II. Prior to 2012, the rule stated
35 U.S.C. 102 (PRE‑AIA)
"A person shall be entitled to a patent unless -
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or"
So Prior to 2012 there was a one year bar only for "use" in this country, but not foreign countries.
Hope this helps.
Question on the fourth patent infringement.
Is Amazon in violation for the advertisement of a patent infringement ad?
Please respond as soon as possible.
Thank you,
Al
Hi AI,
I did receive the additional facts in your voice message and am addressing this here in a very general way. If you would like to hire one of our patent attorneys for a short litigation, please let me know at jsferrell@carrferrell.com.
There is limited case law specifically addressing the liability of publishers for patent infringement due to advertisements. Most courts are likely to be reluctant to impose liability on a publication for advertisements unless there is clear evidence of knowledge and intent to induce infringement.
Establishing that your magazine had the requisite knowledge and intent to induce or contribute to infringement will be challenging. Generally, magazines do not scrutinize the legal status of the products advertised. Magazines typically include disclaimers and require advertisers to warrant that their products do not infringe any third-party rights. This practice can provide a degree of protection against liability. If a patent holder provides notice to a magazine that an advertisement is promoting an infringing product, the magazine may need to take action to avoid potential liability.
While it is theoretically possible for your magazine to be held liable for patent infringement due to carrying advertisements for infringing products, the burden of proving contributory or induced infringement is high. Such cases would depend heavily on specific facts, particularly the knowledge and intent of the publication.
One notable case that addresses the issue of a publication's liability for advertisements that allegedly induced patent infringement is "C.R. Bard, Inc. v. Advanced Cardiovascular Systems, Inc.", 911 F.2d 670 (Fed. Cir. 1990). In this case, the court discussed the potential liability of a third party, such as a publisher, in the context of inducing patent infringement.
C.R. Bard, Inc. v. Advanced Cardiovascular Systems, Inc.
C.R. Bard, Inc. owned patents related to angioplasty catheters.
Advanced Cardiovascular Systems, Inc. (ACS) was accused of infringing these patents.
ACS distributed a brochure that provided detailed instructions on how to use their catheter in a manner that was alleged to infringe Bard's patents.
Whether ACS induced infringement by distributing brochures and providing instructions on the use of the accused product.
The court needed to determine if the actions of ACS, through their promotional materials, constituted inducement of infringement.
Holding:
The Federal Circuit held that there was sufficient evidence to support a finding of inducement of infringement by ACS. The court found that the brochures and promotional materials provided detailed instructions that encouraged users to perform acts that would infringe the patents.
Reasoning:
The court stated that inducement requires evidence of active steps taken to encourage direct infringement, such as advertising an infringing use or instructing how to engage in an infringing use.
The intent to induce infringement could be inferred from the distribution of materials that had no substantial non-infringing use.
Implications for Publications:
While the C.R. Bard case directly involved the manufacturer of the infringing product, the principles outlined could apply to publishers or magazines if they were shown to actively promote or instruct on infringing uses of a patented invention.
If a publication knowingly distributes advertisements or instructional materials that encourage infringement, it could potentially be held liable for inducement of infringement.
The key factors would be knowledge of the patent, the intent to induce infringement, and the content of the advertisements or materials in question.
Conclusion:
The C.R. Bard case illustrates the broader principle that parties who play a role in promoting or facilitating patent infringement can be held liable for inducement. For a magazine to be similarly liable, there would need to be clear evidence that the publication had knowledge of the infringement and intended to induce such infringement through its advertisements.
This case seems different than typically just running paid advertising in a magazine, but serves as a reminder of the importance for publishers to exercise due diligence in reviewing advertisements and to include appropriate disclaimers and warranties from advertise
I hope this helps. -john
Hello I live in the UK and want to sell online. I am aware that you can go prison if you infringe on someones patent even if its accidental. Do you recommend me still trying to go about my e-commerce business with out worrying about infringing on someones patent and possibly going to jail?
@Koray Hill, thank you for watching and for commenting. Patent infringement is not a criminal offense in the U.S. although counterfeiting of commercial products can be. Although many European countries criminalize egregious patent infringement, my guess is that accidental infringement is nearly always treated as a civil rather than a criminal matter. As for the U.K., the patent code appears to be silent on criminalizing patent infringement, so I am guessing that patent infringement is a civil and not a criminal wrong. Note that I am a U.S. patent attorney, and not an expert in any other foreign jurisdiction.
That said, conduct an ethical and above-board e-commerce business and you will avoid legal problems. We all make mistakes in business, but normally an apology and a commitment to improve will be all you need to avoid serious trouble.
What kind of business are you thinking of?
-john
Get an FTO (freedom to operate) search done for your product before selling it
sir if someone put a utility patent strike on out list on amazon and we don't have any patent of our product or don't file a trademark as well as..........is there is any solution for this situation?????
@mentalyt5546, thank you for your message. From your comment, I gather that you are a seller on Amazon and that Amazon sent you a letter that you have been accused of patent infringement? Is this correct? Can you provide a little more detail without disclosing your identity or your specific products being sold?
Also, if you have not done so already, you should watch my video titled, Patent Troubles on Amazon? ua-cam.com/video/fQhNqGLxwZw/v-deo.html
@@johnferrellesq. can i get any social media of yours for connecting with you and for sharing more details to understand the matter for guidance?
@@johnferrellesq. Yes Hello Sir First of all I am very glad that you have commented me and secondly I want to tell you that recently i list a product without filing product patent on amazon And after a while I find out that a big brand of that specific product has filed a utility bill on it and now the brand put strike on our list can we do something? need your kind suggestions please
Mentalyt5546, if you would like me or one of our attorneys to discuss this matter with you in more detail, you can reach me at jsferrell@carrferrell.com. Warmest regards, -john
What’s your fees for advice?
Does digital dated pictures help protect an invention?
@robertblackshear8963, thank you for the question. Prior to the American Invents Act of 2012, the first inventor received credit and the patent for the invention, and thus keeping a record such as inventor's notebook was important. Now, however, the U.S. grants to the first inventor to file a patent and thus invention records are less important. The one exception is when someone steals your idea and files their patent before you. Having a record such as a dated photograph could be strong evidence of prior invention ownership. Hope this helps. -john
@@johnferrellesq. Thank you. It helps a lot.
@@robertblackshear8963 Thanks again for being part of my community. 🙂 -john