Patent Bar Exam Patent Infringement 5 — Questions and Answers
Question 1: Under the doctrine of equivalents, the 'function-way-result' test finds infringement when the accused element performs substantially the same function in substantially the same way to achieve substantially the same result. Which case established this test?
- Graver Tank & Manufacturing Co. v. Linde Air Products Co. (Correct answer)
- Warner-Jenkinson Co. v. Hilton Davis Chemical Co.
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.
- Pennwalt Corp. v. Durand-Wayland, Inc.
Correct answer: Graver Tank & Manufacturing Co. v. Linde Air Products Co.
Graver Tank (1950) established the function-way-result test as the principal formulation for the doctrine of equivalents.
Question 2: A patent covers a composition containing 'about 5% to about 10% compound X.' An accused product contains 4.8% compound X. The alleged infringer argues no literal infringement. The patentee responds by arguing 4.8% falls within 'about 5%.' Under claim construction principles, this dispute turns primarily on:
- Whether the specification discloses that 4.8% is an operative embodiment
- The ordinary meaning of 'about' as understood by a person of ordinary skill and supported by the intrinsic record (Correct answer)
- Whether the accused infringer intentionally chose 4.8% to avoid the claim
- Whether the accused product achieves the same result as the patented composition
Correct answer: The ordinary meaning of 'about' as understood by a person of ordinary skill and supported by the intrinsic record
The term 'about' is construed according to its meaning to a POSITA as supported by intrinsic evidence, which determines the numerical tolerance around the stated value.
Question 3: Which of the following is a correct statement regarding design patent infringement under Egyptian Goddess, Inc. v. Swisa, Inc.?
- An accused design infringes if it copies the point of novelty of the patented design
- An accused design infringes if, in the eye of an ordinary observer familiar with the prior art, it is substantially the same as the patented design (Correct answer)
- An accused design infringes only if it is identical to every element depicted in the patent drawings
- An accused design infringes if a consumer would confuse it with the patented design in a retail setting
Correct answer: An accused design infringes if, in the eye of an ordinary observer familiar with the prior art, it is substantially the same as the patented design
Egyptian Goddess eliminated the 'point of novelty' test and held that design patent infringement is judged solely by the ordinary observer test: whether an ordinary observer, familiar with the prior art, would find the designs substantially the same.
Question 4: A patentee sues for infringement of a process patent. The accused infringer manufactured the product in the United States using a different process. Under 35 U.S.C. § 295, when can a court impose a burden-shifting presumption against the accused infringer?
- Whenever the accused product is identical to the patented product
- When the product made by the patented process is new and not obvious, and the patentee has made a reasonable effort to determine the process used by the accused infringer but cannot do so (Correct answer)
- Whenever the accused infringer refuses to produce its manufacturing records during discovery
- When the accused process is practiced outside the United States and the product is imported
Correct answer: When the product made by the patented process is new and not obvious, and the patentee has made a reasonable effort to determine the process used by the accused infringer but cannot do so
Section 295 shifts the burden to the defendant to prove its process differs when the patented process produces a new product and the patentee shows a reasonable effort to determine the accused process was used.
Question 5: Under 35 U.S.C. § 271(a), which of the following acts by a U.S. company does NOT constitute direct infringement of a U.S. patent?
- Making the patented article in the United States
- Using the patented process in the United States
- Selling the patented article in the United States to a U.S. buyer
- Manufacturing all components of the patented device in the United States for export and combining them abroad (Correct answer)
Correct answer: Manufacturing all components of the patented device in the United States for export and combining them abroad
Section 271(a) covers making, using, selling, offering for sale within the U.S., or importing into the U.S.; assembly of components outside the U.S. is not direct infringement under 271(a) (though it may trigger § 271(f)).
Question 6: When calculating lost profits as patent infringement damages, which of the following is NOT one of the four Panduit factors a patent owner must establish?
- Demand for the patented product
- Absence of acceptable non-infringing substitutes
- Manufacturing and marketing capability to exploit the demand
- That the infringing product was sold at a higher price than the patent owner's product (Correct answer)
Correct answer: That the infringing product was sold at a higher price than the patent owner's product
The Panduit test requires: (1) demand for the product, (2) absence of non-infringing substitutes, (3) capacity to meet demand, and (4) amount of profits that would have been made — price comparison is not a Panduit factor.
Question 7: A product is sold under a patent license that contains a field-of-use restriction limiting sales to the medical industry. A customer purchases the product and uses it in an automotive application. Under Impression Products v. Lexmark International (2017), is the customer's use infringing?
- No, because the authorized first sale exhausts the patent owner's rights regardless of post-sale restrictions imposed on the buyer (Correct answer)
- Yes, because the field-of-use restriction in the license preserved the patentee's rights outside the medical field
- No, but only if the customer purchased the product without knowledge of the restriction
- Yes, because field-of-use restrictions survive the first authorized sale under patent law
Correct answer: No, because the authorized first sale exhausts the patent owner's rights regardless of post-sale restrictions imposed on the buyer
Impression Products held that an authorized sale exhausts patent rights in the article sold, and post-sale restrictions cannot be enforced through patent law regardless of licensing conditions imposed upstream.
Patent Bar Exam Patent Infringement 5
Under the doctrine of equivalents, the 'function-way-result' test finds infringement when the accused element performs substantially the same function in substantially the same way to achieve substantially the same result.
Which case established this test?