Okay, let’s dive in! Let’s talk about patent infringement. Because the absolute best way to understand a patent…your rights with a patent…your competitors’ rights with a patent…the strength of a patent. The best way to understand a patent is to understand how a patent is infringed.

So, we know the power of the patent is in the claims. This is where the inventor defines his or her patent rights; his or her ENFORCEMENT rights. So, let’s try to infringe some claims.
We’ll use a simple example. Let’s imagine we can get a patent on anything. Let’s get a patent on a basic chair. Imagine a world without chairs…pretty scary…all we can do is sit on rocks. Not comfortable. Hard to move around. So, we invent the first chair. And we know we’re on to something. Everyone will want to buy this. So, we go to a patent lawyer and get a patent.
Here is the claim. (Visually display the elements) • An apparatus for sitting comprised of
• a seat,
• a back, and
• four legs.

All of these elements make up one independent claim. And this would be a great claim. It would come at the end of a patent document which could be a few or even dozens of pages of text and drawings describing how to make it and how to use it. (Patent visual running through page after page of drawings then text…then narrow in on a claim). What can we do with this patent… with this claim?

Well, first, in our scenario, let’s pick a country. We need to do that because each patent is only useful and enforceable in the country that issued it. So, for simplicity, let’s say this is a US patent, and it wasn’t filed in any other country. Which means it’s only useful and enforceable in the US. (Visual of a globe broadly then slowly focusing in on the US)

So, again, what can we do with it? Well, we can prevent everyone in the world from making, using, and selling, in the US, any products with a back, a seat, and four legs.
If anyone does make, use, or sell a chair with a back, a seat, and four legs, in the US, they would infringe our patent claim. To consider or analyze infringement, we would look at the chair and compare it with our claim, element by element. (PUT UP A VISUAL WITH THEIR CHAIR SIDE BY SIDE WITH OUR ELEMENTS. THEN, AS I MENTION EACH ELEMENT, SOMEHOW POINT IT OUT ON THE CHAIR GRAPHIC)

o Yes, it has a back, o Yes it has a seat, and o Yes, it has 4 legs.
Yes, this is an infringing product. What can we do about it? Well, we can sue them. We can demand that they stop making, using, and selling these chairs in the US. We can’t stop them in other countries…since we only have a US patent…but we can stop them in the US. Maybe we should have filed patent applications in other countries as well, but we didn’t, and that’s a discussion for another day. So, we can sue this infringer and get a verdict or judgment against them and prevent them making or selling any more chairs. Or we can make a deal with them and get royalties on all their US sales.

Let’s look at another example. We have another chair maker who comes along in the US with their own version of a chair. This chair has armrests. (SHOW THE VISUAL). So, does it infringe? Let’s go through the basic analysis. (PUT UP THE CLAIM AGAIN, SIDE BY SIDE, THEN SHOW THE SPOTS ON THE CHAIR THAT MATCH THE CLAIM ELEMENTS AS YOU ARE CHECKING THEM OFF THE LIST) o Yes, it has a back o Yes, it has a seat o Yes, it has four legs
Yes, it infringes. But it’s clearly different. It has extra features. Why does it infringe? Because it doesn’t’ matter that it has extra features. As long as the product has each and every element of the claim, it infringes.

Let’s look at another example. We have another chair maker who comes along in the US with THEIR own version of a chair. It’s much taller. Looks very different. Does it infringe? (SAME TYPE OF VISUAL). o Yes, it has a back o Yes, it has a seat o Yes, it has four legs
Yes, it infringes. It doesn’t’ matter that it’s bigger. As long as the product has each and every element of the claim, it infringes.

Let’s look at another example. We have another chair maker who comes along in the US with THEIR own version of a chair. It’s a stool. (VISUAL) Does it infringe? (Visual analysis) o Yes, it has a seat o Yes, it has four legs o But, it does not have a back
So, no, it does not infringe. Because it doesn’t have each and every element of the claim.

Let’s look at another example. Another chair maker makes a chair with sliders on the bottom of each leg. This makes it easier to slide the chair on the floor. (VISUAL).
Does it infringe? (SAME ANALYSIS VISUAL) o Yes, it has a back o Yes, it has a seat o Yes, it has four legs
Yes, it infringes. It doesn’t matter that it has sliders. It doesn’t matter that the chair with sliders might itself be patentable because it’s so new. It still infringes OUR patent.

Let’s look at another example. This chair maker makes a chair with two legs that bend around the bottom for support. (VISUAL). This is a two-legged chair. Does it infringe? (VISUAL ANALYSIS). o Yes, it has a back o Yes, it has a seat o No, it only has two legs
So, no, it does not infringe. It must have each and every element and one of the elements of our chair claim is four legs. So, they can make and sell the two-legged chairs in the US all day long.

Let’s look at another example. This chair maker makes a folding chair. (Visual) It’s new. It’s a huge change. It’s probably patentable. But, even though it could also be patentable, as a product it could still infringe OUR patent. Does it? (VISUAL ANALYSIS)

o Yes, it has a back o Yes, it has a seat o Yes, it has four legs
Yes, it infringes because it has all the elements of our claim.

Let’s look at another example. There’s a chair-maker that makes chairs in China and sells them all over the world…except in the US. They copied our patented chair to the finest detail. (Visual…create chair) Are they infringing us? (Visual analysis) o Yes, it has a back o Yes, it has a seat o Yes, it has four legs
But no, it doesn’t infringe because even though it has all the right features, it’s not made or sold in the US…and we only have a US patent. They can make them and sell their chairs outside of the US all day long.

I had this client come to me once. He had a patent application filed and prosecuted by another patent lawyer. He showed me his patent. He opened it to the claims and showed me the broadest claim. It was a long one. Many, many paragraphs. He held it out for me to see…carefully like it was a valuable jewel. He beamed with pride. He said, “A lot of protection here…huh!”

No! I thought. This claim is terrible. For someone to infringe it they would have to make a product that contains each and every element in that claim. Competitors can get around it, avoid infringing it, by eliminating JUST ONE ELEMENT. It would take REAL EFFORT to infringe this claim. He thought it had a lot of protection because he thought that if you practice ANY of the elements in the claim, you would infringe the claim. He didn’t appreciate that infringement requires copying ALL of the elements in the claim. He could not have been more wrong. As a general rule, the fewer the elements in a claim, the better.

Let’s do one final crazy example:

Take a look at this claim:
• An apparatus for sitting comprised of
• a back,
• a seat,
• two arm rests,
• a footrest,
• 4 legs,
• wheels on the bottom of each leg,
• a butt warmer, and
• a cup holder on each arm rest.

(Visual…build the chair as I am saying it). Is this a good claim? Probably not. Too many elements. To infringe that claim, you would need to make a chair with each and every element. Take out just one cup holder and you don’t infringe. Keep the cup holders and take the wheels off and you don’t infringe. (A good visual here would be to first make one cup holder disappear. Then, add the cup holder back and make the wheels disappear…as I’m saying it of course)

Okay, it’s true that the real world gets a lot more complicated than chairs, but this creates a nice mental framework as you consider infringement.

Thank you!