Patent Bar Exam Patent Infringement 4 — Questions and Answers
Question 1: 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?
- Deepsouth Packing Co. v. Laitram Corp., which held that assembly abroad of U.S.-made components did not constitute infringement (Correct answer)
- Aro Mfg. Co. v. Convertible Top Replacement Co., which addressed repair versus reconstruction
- Mallinckrodt, Inc. v. Medipart, Inc., which addressed post-sale restrictions
- Quanta Computer, Inc. v. LG Electronics, which established patent exhaustion
Correct 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.
Question 2: The doctrine of patent exhaustion (first sale doctrine) holds that:
- A patentee exhausts infringement remedies after suing once for the same act of infringement
- An authorized sale of a patented article exhausts the patent owner's rights to control or restrict the use or resale of that article (Correct answer)
- A patent expires when the patentee fails to collect royalties for three consecutive years
- A patentee cannot enforce a patent that was licensed exclusively to a third party
Correct 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.
Question 3: In claim construction for infringement analysis, the primary source for interpreting claim terms is:
- Expert testimony about the meaning in the art at the time of suit
- The intrinsic record, including the claims, specification, and prosecution history (Correct answer)
- Dictionary definitions from the time of infringement
- The accused infringer's own product documentation
Correct 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.
Question 4: 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:
- Irreparable harm
- Adequacy of monetary damages as a remedy
- The balance of hardships favoring an injunction
- That the patent is valid and infringed (Correct answer)
Correct 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.
Question 5: Which of the following scenarios best illustrates 'repair' (non-infringing) rather than 'reconstruction' (infringing) of a patented combination?
- Purchasing an entirely new patented article to replace one that broke
- Replacing a spent, unpatented component of a patented combination to restore its useful life (Correct answer)
- Remanufacturing a used patented article by rebuilding all of its essential elements
- Selling used patented articles after acquiring them from a source that was not authorized by the patentee
Correct 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.
Question 6: Under 35 U.S.C. § 287(a), the marking requirement affects patent damages by:
- Requiring the patentee to mark products or provide actual notice before recovering damages for any infringement (Correct answer)
- Doubling the damages if the patentee fails to mark its products
- Requiring the accused infringer to prove lack of marking as an affirmative defense
- Limiting damages to post-judgment infringement if products are not marked
Correct 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.
Question 7: 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?
- Abroad, because the instructions originated outside the U.S.
- In the United States, because all steps of the method are performed on U.S. servers (Correct answer)
- Jointly in both countries under § 271(f)
- Nowhere, because divided infringement requires all parties to be domestic
Correct 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.
Patent Bar Exam Patent Infringement 4
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?