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Patent Enforcement
Wayne State University Law School
White, Katherine E.

Patent Enforcement
I)      Standards of Appellate Review
A)    Findings of Fact
1)      Court/Court review: 
(a)    FRCP 52(a): appellate court shall set aside findings of trial court that are clearly erroneous
(i)      Deferential standard, but not as deferential as court/agency – appellate judge must have a “definite and firm conviction” that error was made
2)      Court/Agency review:
(a)    Administrative Procedure Act (APA): 5 U.S.C. §706: app. ct shall set aside findings found to be
(i)     Arbitrary, capricious, or an abuse of discretion; or
(ii)    Unsupported by substantial evidence
·        Substantial evidence standard is very deferential – whether a reasonable mind could find…
(b)   Chevron Deference
(i)      where legislative delegation to agency on a particular question is implicit, rather than explicit, court may not substitute its own construction of statutory provision for reasonable interpretation made by administrator of agency
(ii)    Considerable weight should be given to executive dept.’s construction of statutory scheme it is entrusted to administer
B)    Standards of review:
1)      De novo (no deference) – std of rev. for questions of law
2)      Abuse of discretion – applicable to discovery issues, equitable determinations, other discretionary rulings
3)      Clearly erroneous – applicable to findings of fact (see above)
4)      Substanital evidence – applicable to administractive findings of fact (see above)
C)    In patent case, must exhaust agency remedies before adjudication in Article III court (e.g., must exhaust remedies within PTO (including appeal to BPAI) before seeking judicial review)
II) Infringers
A)    §271 – defines who is an infringer:
1)      §271(a) – direct infringer – whoever, w/o authority, makes, uses, or sells the patented invention
2)      §271(b) – induced infringer – whoever actively induces infringement shall be liable as an infringer
(i)      ∆ must have had actual/specific intent to cause the acts which constitute the infringement
·        Intent requirement means the party must actually know and intend that acts constitute infringement
(ii)    π must show that ∆ knew or should have known his actions would induce actual infringement
(iii)   π must allege a direct infringement
(iv) An indemnification agreement may indicate actual intent, but is not dispositive. Ct will look at the circumstances.   (HP v. Bausch & Lomb – ct found no intent despite indemnification clause because HP clearly had no interest in inducing infringement)
(v)    Active steps to encourage/induce infringement may

71(f), but it is not considered to be “supplied” from the U.S. if copies of the software are made outside the U.S. and are installed on computers abroad
(a)    Focus of §271(f) analysis is on what constitutes the patented invention, as defined by claims
8)      §271(g): infringement of process patents – whoever imports or makes/uses/sells in the U.S. a product made by a patented process shall be liable as an infringer. See statutory language for analysis under this section. 
B)    Personal Liability of Corporate Officers
1)      Officers’ personal liability for infringement under 271(a) (direct infringement) must include evidence to justify piercing the corporate veil
2)      Under 271(b), a corporate officer who actively assists (knowingly, with specific intent) with his company’s infringement may be personally liable for inducing infringement regardless of whether the circumstances justify veil piercing
willful infringement is not a requirement for personal liability on corp. officers (willfulness is only a damages analysis)