Patent Bar Exam Patent Infringement 2 — Questions and Answers
Question 1: Under 35 U.S.C. § 271(b), which of the following best describes 'inducement of infringement'?
- Directly making or using a patented invention without authorization
- Actively encouraging another party to directly infringe a patent with knowledge of the patent (Correct answer)
- Selling a staple article of commerce that has non-infringing uses
- Manufacturing a component in the U.S. for export and assembly abroad
Correct answer: Actively encouraging another party to directly infringe a patent with knowledge of the patent
Section 271(b) imposes liability on anyone who actively induces infringement by another, requiring knowledge of the patent and intent that infringement occur.
Question 2: The doctrine of equivalents cannot be used to recapture claim scope that was surrendered during prosecution. This limitation is known as:
- Prosecution history laches
- Prosecution history estoppel (Correct answer)
- Disclaimer by omission
- Claim differentiation estoppel
Correct answer: Prosecution history estoppel
Prosecution history estoppel bars a patentee from using the doctrine of equivalents to recapture subject matter surrendered during prosecution to obtain allowance.
Question 3: Which test does a court apply to determine whether an accused device infringes a patent claim literally?
- The substantial similarity test
- The all-elements (all-limitations) test (Correct answer)
- The point of novelty test
- The reverse doctrine of equivalents test
Correct answer: The all-elements (all-limitations) test
Literal infringement requires that every element (limitation) recited in the claim be present in the accused device exactly as claimed.
Question 4: A company sells a component that has no substantial non-infringing use and knows the component will be combined by customers to infringe a patent. Under 35 U.S.C. § 271(c), this company is liable for:
- Literal infringement
- Contributory infringement (Correct answer)
- Induced infringement
- Willful infringement
Correct answer: Contributory infringement
Section 271(c) imposes contributory infringement liability on sellers of components especially made or adapted for use in an infringement with no substantial non-infringing use.
Question 5: Under the 'reverse doctrine of equivalents,' a device that literally meets all claim limitations may nevertheless not infringe if:
- The device was invented after the patent filed
- The device performs the same function in a substantially different way (Correct answer)
- The patent was obtained through inequitable conduct
- The claim was amended during prosecution
Correct answer: The device performs the same function in a substantially different way
The reverse doctrine of equivalents permits a finding of non-infringement even for literal claim reads when the accused device achieves the result in a fundamentally different way.
Question 6: In a method claim infringement analysis under Akamai Technologies v. Limelight Networks, direct infringement of a multi-step method claim by multiple parties requires:
- Each party to perform at least one step independently
- One party to direct or control the other parties performing the remaining steps, or all parties act as a joint enterprise (Correct answer)
- All parties to be named as defendants in the same action
- The patent owner to identify a single entity performing all steps commercially
Correct answer: One party to direct or control the other parties performing the remaining steps, or all parties act as a joint enterprise
After Akamai, direct infringement of a method claim by multiple actors requires that one party direct or control the others, or that the parties act as a joint enterprise, such that their combined performance is attributed to a single entity.
Question 7: Which of the following acts is explicitly exempted from patent infringement liability under 35 U.S.C. § 271(e)(1) (the 'safe harbor')?
- Commercial sale of a generic drug before patent expiration
- Research and development activities solely for uses reasonably related to FDA submissions (Correct answer)
- Importing patented research tools for basic scientific research
- Manufacturing a patented compound for export to countries where it is not patented
Correct answer: Research and development activities solely for uses reasonably related to FDA submissions
The Hatch-Waxman safe harbor exempts activities reasonably related to developing information for submission to the FDA, enabling generic drug makers to conduct pre-approval studies.
Patent Bar Exam Patent Infringement 2
Under 35 U.S.C. § 271(b), which of the following best describes 'inducement of infringement'?