Patent Bar Exam Patent Infringement 3 — Questions and Answers
Question 1: When a patent claim uses the transitional phrase 'consisting of,' what is the infringement significance?
- The claim is open-ended and encompasses additional unlisted elements
- The claim is closed and excludes any elements not expressly recited (Correct answer)
- The claim allows trace amounts of unlisted elements
- The claim is limited to the preferred embodiment only
Correct answer: The claim is closed and excludes any elements not expressly recited
'Consisting of' is a closed transitional phrase that excludes any element, step, or ingredient not recited in the claim, making literal infringement impossible if an accused product contains additional components.
Question 2: Under 35 U.S.C. § 284, what is the minimum damages award a patent owner is entitled to upon a finding of infringement?
- Actual lost profits
- A reasonable royalty for use of the invention (Correct answer)
- Statutory damages of $10,000 per infringement
- The infringer's total profits from the infringing product
Correct answer: A reasonable royalty for use of the invention
Section 284 mandates damages 'adequate to compensate for the infringement,' but in no event less than a reasonable royalty for the use made of the invention.
Question 3: The 'entire market value rule' allows a patentee to base a reasonable royalty on the entire value of a multi-component product when:
- The patent covers a component that represents the largest portion of the product's cost
- The patented feature drives consumer demand for the entire product (Correct answer)
- The accused infringer sells the entire product commercially
- The royalty base is easier to calculate for the whole product
Correct answer: The patented feature drives consumer demand for the entire product
The entire market value rule permits using the entire product as the royalty base only when the patented feature is the basis for consumer demand for the whole product.
Question 4: A patent owner discovers that a competitor began infringing 8 years ago but waited 7 years to sue. The competitor raises which defense?
- Prosecution history estoppel
- Inequitable conduct
- Laches (Correct answer)
- Experimental use
Correct answer: Laches
Laches is an equitable defense that can bar or limit pre-suit damages when a patentee unreasonably delays in bringing suit and the delay prejudices the defendant.
Question 5: Under the Georgia-Pacific factors, which of the following is one of the factors courts consider in setting a reasonable royalty?
- Whether the infringer had actual notice of the patent before infringement began
- The royalties received by the patentee for licensing the patent in suit to others (Correct answer)
- The number of countries where the patent is in force
- The total number of claims in the patent
Correct answer: The royalties received by the patentee for licensing the patent in suit to others
The Georgia-Pacific framework includes, as one of 15 factors, royalties the patentee has received for licensing the patent, providing a market benchmark.
Question 6: An inventor discloses an invention to a licensee under a confidentiality agreement. The licensee begins using the invention without a license. Can the licensee assert a prior user rights defense under 35 U.S.C. § 273?
- Yes, because the licensee used the invention commercially before the patent issued
- No, because prior user rights require commercial use at least one year before the effective filing date, and use under confidentiality does not automatically qualify if it did not begin before that threshold (Correct answer)
- Yes, as long as any commercial use preceded the patent grant date
- No, because prior user rights are only available to the original inventor
Correct answer: No, because prior user rights require commercial use at least one year before the effective filing date, and use under confidentiality does not automatically qualify if it did not begin before that threshold
Section 273 requires the prior user to have commercially used the subject matter at least 1 year before the effective filing date of the claimed invention; a licensee receiving a disclosure after that date cannot establish the defense.
Question 7: Which Supreme Court case established that courts may award enhanced damages up to three times actual damages for willful patent infringement?
- eBay Inc. v. MercExchange, L.L.C.
- Halo Electronics, Inc. v. Pulse Electronics, Inc. (Correct answer)
- Alice Corp. v. CLS Bank International
- KSR International Co. v. Teleflex Inc.
Correct answer: Halo Electronics, Inc. v. Pulse Electronics, Inc.
Halo Electronics v. Pulse Electronics (2016) reaffirmed that § 284 permits up to treble damages for willful infringement and rejected the rigid Seagate two-part test in favor of district court discretion.
Patent Bar Exam Patent Infringement 3
When a patent claim uses the transitional phrase 'consisting of,' what is the infringement significance?