Patent Infringement Flashcards

Under 35 U.S.C. § 271(f)(1), exporting components from the United States that are combined abroad to infringe a patent can give rise to liability. This provision was enacted primarily to address which Supreme Court decision?

Answer: Deepsouth Packing Co. v. Laitram Corp., which held that assembly abroad of U.S.-made components did not constitute infringement

Congress enacted § 271(f) in response to Deepsouth Packing, which had found no infringement when all components were made in the U.S. but assembled into the patented combination abroad.

The doctrine of patent exhaustion (first sale doctrine) holds that:

Answer: An authorized sale of a patented article exhausts the patent owner's rights to control or restrict the use or resale of that article

Under Quanta Computer v. LG Electronics and Impression Products v. Lexmark, an authorized first sale exhausts patent rights in the article sold, preventing the patentee from asserting infringement for downstream use or resale.

In claim construction for infringement analysis, the primary source for interpreting claim terms is:

Answer: The intrinsic record, including the claims, specification, and prosecution history

Phillips v. AWH Corp. established that courts give primacy to the intrinsic record—claims, specification, and prosecution history—for construing claim terms.

A patentee seeks a permanent injunction after prevailing in an infringement suit. Under eBay Inc. v. MercExchange, the patentee must demonstrate all of the following EXCEPT:

Answer: That the patent is valid and infringed

eBay's four-factor test for permanent injunctions requires: (1) irreparable harm, (2) inadequacy of monetary damages, (3) balance of hardships, and (4) public interest — validity and infringement are prerequisites to reaching the test, not factors within it.

Which of the following scenarios best illustrates 'repair' (non-infringing) rather than 'reconstruction' (infringing) of a patented combination?

Answer: Replacing a spent, unpatented component of a patented combination to restore its useful life

Repair involves replacing unpatented, spent parts of a lawfully purchased patented combination to restore function, while reconstruction—rebuilding the entire patented entity—constitutes infringement.

Under 35 U.S.C. § 287(a), the marking requirement affects patent damages by:

Answer: Requiring the patentee to mark products or provide actual notice before recovering damages for any infringement

Section 287(a) limits damages to acts occurring after the infringer received actual notice of infringement when the patentee or licensee fails to mark patented products.

A method claim covers a process performed entirely within a server located in the United States. A foreign company remotely executes that process by sending instructions from abroad but all processing occurs on U.S. servers. Under current law, where does the infringement occur?

Answer: In the United States, because all steps of the method are performed on U.S. servers

Infringement of a U.S. method claim occurs where the steps of the method are actually performed; if all steps execute on U.S. servers, infringement occurs in the United States regardless of where instructions originate.