Non-Infringement

  • Patent Owner Has Burden Of Proving “Infringement” When DJ Licensee Challenges Coverage Of Claim: Rev’g Fed. Cir.: patent owner bears burden of persuasion where “a patent licensee paying royalties into an escrow account under a patent licensing agreement seeks a declaratory judgment that some of its products are not covered by or do not infringe the patent, and that it therefore does not owe royalties for those products.” Medtronic (U.S. 01/22/2014), rev’g, Medtronic (Fed. Cir. 09/18/12).
  • Marking Patent Number Or Paying Royalties Is Evidence of Infringement: Marking a product with a patent number or paying patent-license royalties on a product does not estop party (e.g., former licensee) from denying infringement, but is a non-binding “extrajudicial admission that the product falls within the patent claims.” Frolow (Fed. Cir. 03/15/13).
  • Part Foreign: All Steps Of Claimed Method Must Be Performed In U.S. But Part Of Claimed System May Be Outside U.S.: If some steps of a claimed method are performed outside the U.S., there is no infringement. However, use of a system that is partially located in a foreign country might infringe a system claim. NTP (Fed. Cir. 08/02/05).
  • TIPS: