Patentability vs Infringement

00:02
Samar Shah
Hello, and welcome to the Patent Pending Made Simple Podcast. I'm your host Samar Shah, and with me is Jamie Brophy. Jamie, how are you?

00:10
Jamie Brophy
Hi. I'm good Samar. How are you?

00:13
Samar Shah
I am doing well. I'm glad to be able to record with you again. I think we had a little bit of a time out as I was on vacation and spending some time with my family.

00:23
Jamie Brophy
Yeah, I was busy over here too. One of my kids graduated, and my kids are now on summer break, so it's been a little busy, so yeah, good to talk to you again. It's been a couple of weeks.

00:34
Samar Shah
Yes, it's been a couple of weeks. I'm happy to hear that. Happy graduation. Sounds like you guys all had fun.

00:40
Jamie Brophy
We sure did. Yeah, it's a big celebration here, so we're glad that it's over.

00:50
Samar Shah
Yeah. Very good. Well, today's topic is differences between patent ability and patent infringement. When a lot of clients talk to us about these things, they just kind of think about them as the same thing that, oh, if I can get a patent, then I definitely don't infringe somebody else's patent, or if I get a patentability opinion, then I don't need a non infringement opinion. It all sounds kind of like the same thing. Right, Jamie? How would you distinguish them?

01:19
Jamie Brophy
Yeah, there's definitely some confusion between the two. So the patentability question is totally different than the infringement question. Patentability is basically whether your invention or specifically your claims would be allowable over what is already out there. Infringement. The question of infringement is whether your invention has the same features as something that's already patented, specifically the claims. So if you're practicing every element in the claims of somebody's patent, then you are infringing. Patentability is not so dependent on claims that already exist and is more dependent on what's disclosed in general, so not necessarily what's in the claims. I think that's probably the biggest difference. For infringement, we're looking specifically at the claims and determining whether the invention has all the features in those claims of an already existing patent. For patentability, we're looking at what's disclosed, and it could be something that's disclosed elsewhere in a patent or a patent application.

02:31
Jamie Brophy
It could be something that's disclosed on the internet or on a published paper or something like that.

02:41
Samar Shah
Yeah, Jamie, I really like that articulation of it. Patentability is all about your patent, right? And whether it is novel and non obvious over everything else that's out there and not just other patents out there, but other products that are out there. Infringement is all about your product, not about your patent, but about your product that you're selling and whether that infringes other patents that are out there. So you had to flip them. From analysis perspective, they sound like the same thing, I think, to inventors, because patents and products are pretty synonymous to most inventors, right? Or they seem synonymous, like, if you have a product and you get a patent on it, then certainly the same rules would apply to the patent and to the product. But that's not always the case, right. Your patent that you get may be slightly different than the product that you're selling in the marketplace.

03:32
Samar Shah
Hopefully not, but it happens sometimes where the product is slightly different or has changed somewhat since the patent application was written and drafted. Is that how you think about it as well, Jamie?

03:43
Jamie Brophy
Yeah, that's right. And I also think it's important to point out that just because you get a patent on something does not mean that you're not infringing on something. So you could get a patent and if you produce that product, it could still be infringing on somebody else's patent.

04:01
Samar Shah
That's right. That is a really good distinction as well. I have seen this happen several times, where a client has a patent and they still infringe on somebody else's patent. Both of those things can happen simultaneously. And clients often ask me, hey, Samar, is having a patent a good defense to patent infringement? And the answer is generally no. In fact, it is not a defense at all. The courts will often not even allow you to present that kind of evidence to a jury. If you're in a patent infringement trial, let's say somebody sued you on their patent for your product, you go in there to defend yourself in the lawsuit and you try to present evidence of your patent as a defense against it, the judge is going to say, no, that's not allowed. You can't present that. That is prejudicial and not probative to the question at hand.

04:48
Samar Shah
So they're in fact going to exclude information about your patent in a litigation scenario. But I do find that having a patent, if you can get it included in the trial for some other reason other than defense against infringement, it does play a role in persuading jurors. Right. It's a hearts and minds type of an argument. You're trying to present a story to the jury that, hey, I have tried to do all the right things. I have got a patent, I followed all the rules. I think my product is different and inventive. Certainly I'm not an infringer and certainly I am not a willful infringer. Right. So you can try to persuade juries through indirect means with your patents, but if you try to use it as a defense or a shield in a lawsuit, you're going to get shut down pretty quickly.

05:39
Jamie Brophy
Interesting. Yeah. I didn't know that. About not being able to use it as a defense. That's interesting.

05:45
Samar Shah
Yeah. This is where some finesse as a litigator is important, because if you go in guns blazing and try to oversell that evidence, it's going to get shot down. So there is a dance that happens at the litigation stage, and it's critical that you finesse that in order to get it included at the trial stage.

06:03
Jamie Brophy
Okay, good to know. I don't deal with the trial stage. So I'm glad we have you here to explain that.

06:12
Samar Shah
I am hopeful that none of our listeners or inventors have to go through the litigation stage either.

06:17
Jamie Brophy
It's painful, and yeah, definitely.

06:22
Samar Shah
Okay. So, Jamie, could you talk a little bit about the two different types of opinions that practitioners can draft, the patentability opinion and then the non infringement and the freedom to operate opinion?

06:34
Jamie Brophy
Yeah, so for patentability, what we generally do is we would perform a searching the key features of your invention and then review those search results and determine what are your chances of being able to get a patent on your product, on your invention. And that's just based on, like we said before, anything that's disclosed anywhere. So that's what the patentability opinion is based on. For infringement, it's a little more complicated because, like we discussed, it depends on the claims that are in an existing patent. So we have to go through the claims feature by feature and determine whether your product includes those features. So the infringement opinion is a lot more expensive, it takes a lot more time, it's a lot more detailed. So I think those are kind of the general differences. What do you think, Samar?

07:32
Samar Shah
Yeah, that's about right. Penability opinions are pretty straightforward. You have to do a two tiered analysis, in my opinion. One, you have to do analysis of whether this is in the statutory subject matter, of patent eligible subject matter. And then two, you have to do a novelty and a non obviousness analysis in the patentability opinion. And that one, I think it's fairly reliable. Right. It gives you a good idea of whether you're going to get rejected if you file a pan application on that thing. But often it also gives you an idea as to what elements you need to feature or focus on in your pan application to get this thing allowed. It's not perfect by any means. I often have to tell clients that, hey, don't get a false sense of security just because you got a good pan ability opinion. You still have a lot of work to do at the patent office, so it's not definitive by any means.

08:24
Samar Shah
And to give you some context, when we do a patentability analysis and a search, we charge a couple of $1,000 for that analysis and opinion. But when we're in litigation, and let's say another side sued us on a patent, we'll go in and we'll do a search from a litigation perspective, and we'll hire experts in the field who provide opinions on these things. And every litigation that I've been a part of will spend upwards of $100,000 on the search itself. So that search can get very extensive and very complicated if you are in that context. But it's not worth doing such an extensive search when you are just trying to get a patent allowed, typically because the patent itself will cost less than $100,000, ideally, right? So you have to make some choices and some trade offs here, between 100% certainty and between cost, right?

09:15
Samar Shah
So the more certain you want to be, the more expensive that report becomes and the more cost effective you want to be, the less reliable that report becomes. So there's that balance that you have to strike in a patentability opinion, but it can be very simple. It can be very complex if you want it to be. We don't do this type of work, Jamie, but pharmaceutical companies, they'll spend often millions of dollars in R and D research before they release a drug, and they will very often spend $100,000 plus on their searches before they decide to invest money on a molecule research. So it's all contextual and it can vary depending on what the invention is and what the R and D costs are going to be. The more expensive it is to develop something, the more you want to spend on your prior art search to get as much certainty as possible.

10:03
Samar Shah
So that's the patentability opinion piece of this, the infringement piece of this, like you said, is very different. We're looking at the claims of the invention in particular, and we're trying to interpret what those claims mean, right? So anybody listening, you guys have probably looked at a patent before. You probably looked at the claims of the patent application, and they may seem like a foreign language to you sometimes. So it is not easy to figure out how a judge or a court is going to interpret these terms in each claim element of a claim. So we have to look at the patent application very carefully to figure out if the inventor has given this special meaning or definition to any of these terms. And we also have to look at the broader art sometimes to figure out what the commonly accepted or well known definition of some of these terms would be.

10:54
Samar Shah
And then we have to look at the prosecution history of the patent. So when you file a patent, you often have to negotiate with the patent office before it's allowed. And we often look at what kind of statements were made during this negotiation process or the prosecution process as a way of helping us understand what some of these terms mean. There is this legal doctrine, or a legal axiom, if you will, that which does not invalidate cannot infringe. Right? So often if an applicant made arguments to get around a piece of prior art, then we can reliably say that piece of prior art, if it was later in time, would not infringe the bad application. So there are some rules of construction, as they're called, for interpreting these terms, and we had to dig through a lot of different things to get to those rules and get a better understanding of the patent and how it maps onto the product.

11:44
Samar Shah
So this is a complicated answer. Sorry for that, but it's a complicated analysis.

11:48
Jamie Brophy
Yeah, definitely. No, I'm glad you brought that up. So infringement, not only are we going through the claims feature by feature, but yeah, I mean, we have to interpret the claim language and determine what is meant by each of those terms in the claims. And that does get kind of complicated.

12:06
Samar Shah
Yeah, very complicated. And the inventors may not care about this or the folks listening may not care about this, but from our perspective, the practitioner perspective, often when you're writing a non infringement opinion, most likely if that case goes into trial, will be called as witnesses, as fact witnesses in that opinion letter. So often the quality of that opinion letter becomes very important, and the level of analysis that's been done becomes very important because you'll have motivated lawyers on the other side who are going to try to break that analysis down, and they're going to try to make you look bad. And it's a potential problem for the practitioner with their malpractice insurance carrier and things like that. So often practitioners are super careful as they should be about writing that opinion letter. And certainly we do take extra effort to cross all of our T's and dot all of our I's on those opinion letters because if we ever do get dragged into court on that opinion letter, we have good answers for everything.

13:04
Samar Shah
So we'll have sometimes clients who will say, hey, can you do this on the cheap or can you do this for less money? And the answer is always no. Right? I mean, if you're going to get a non infringement opinion letter, you better make sure it's good and that it stands up in court. Otherwise you're just kind of throwing money to waste, I think.

13:22
Jamie Brophy
Yeah, absolutely. So what do you recommend to our clients that are more budget conscious, but they want to know if they're infringing on something? Do you recommend that they get an infringement opinion or how do you recommend that they handle that?

13:39
Samar Shah
Yeah, it's a tough one and it is kind of a case by case determination. But I would say that if somebody has made you aware of a patent, let's say your competitor sent you a letter in the mail saying that, hey, we think you infringe our patent. Please stop infringing or please pay us some royalties. That's a great time to start thinking about a non infringement opinion letter, because most likely that letter is the seed or the start of a dispute between the two parties. And you need to start creating some defenses or barriers from getting taken to the court and getting called out as a willful infringer. So that's a great time to start talking to your attorney about a non infringement opinion letter.

14:20
Jamie Brophy
Okay, and what about the clients that come to us and say, hey, I have this product, I want to start making it and selling it. But first I need to know if I'm infringing on anything. What do you recommend in those kinds of situations?

14:35
Samar Shah
Yeah, there is this other opinion letter called a Freedom to Operate opinion letter, which will give you analysis of all the patents that are out there or most of the patents that are out there that are relevant to your particular product. That Freedom to Operate analysis may be interesting and helpful to you as you try to assess your go to market strategy or assess whether you should enter a market or not. And I think the more expensive it is for you to enter the market, the more important that Freedom to Operate opinion letter becomes. Like, if you're going to spend $500 to get to market, maybe you don't need a Freedom to Operate opinion letter because you're going to spend way more than that just to get the letter. But if you're going to spend, let's say, a million dollars before you get to market on R D expenses and production costs and things like that, then, yeah, I think it's worthwhile to get the Freedom to Operate opinion Letter.

15:25
Samar Shah
It really depends on what that product is and how expensive it is to get to market. But, yeah, I think that's my general rule of thought here. Do you think differently about this, Jamie?

15:36
Jamie Brophy
No, I think that's good advice. Yeah. I mean, outside of the patentability question, the infringement and things like that are more your domain. So, yeah, I think that sounds like good advice.

15:48
Samar Shah
Yeah. What would you tell Jamie to folks who are like, let me just go and do a search to see if I infringe somebody else's patent before I launch something? What would you tell them?

16:00
Jamie Brophy
I would tell them not to rely on that heavily. I mean, it's good to initially do kind of an initial search, but if you're really concerned about it, you probably want to get some kind of patent professional or a patent attorney involved, because it is, as we've discussed here, such a complicated analysis and there is so much that goes into it. It's definitely good to look on your own. But also patent professionals have search tools that I think the general public doesn't use, and so we can do a more involved search and definitely a more involved analysis.

16:37
Samar Shah
Yeah. I tend to get kind of nervous as soon as clients doing searches on their own in the software space. I tell clients, don't do any searches, talk to your attorney, or have your attorney do the searches before you even go down that road, because software patents are written often in a way that's indecipherable to clients. Right. And it's really hard for the client to make a decision on whether that disclosure is relevant to their invention or not. And there are these rules called the Information Disclosure Statement, where you have an ethical obligation to tell the patent Office about all the references that are relevant to your invention when you do file your patent application. And so you better have a really good record of the things that you searched for and the search results that are relevant to your invention and then you need to submit them to the patent office during the application process.

17:26
Samar Shah
So what I get nervous about is if the inventors are doing searches, often they're not as good about keeping records of what they searched for and what is relevant, or they may just forget to do it and that's grounds for invalidating the patents down the road in a litigation. I can prove that you knew of a reference, but you did not disclose it to the patent office. That's a for sure way to invalidate the patent. So I would tell clients, take really good notes, be limited and specific in your searches, just don't go around searching the whole world because you will have to eventually disclose that whole world to the patent office when you do file your patent application. So it's a careful dance that you'd have to think about before you go down that path.

18:09
Jamie Brophy
Yeah, I think that's a really good point. We had this happen recently, right, Samar, where we hadn't talked to our client yet about their duty to disclose, and they sent us a whole bunch of things that they had found online. And now we have to track down all of those websites and links and find dates. And it's going to be a lot of effort for us to file an information disclosure statement on all of these things that the client sent us. So yeah, that's a great point.

18:38
Samar Shah
Yeah, and it's expensive, right? I mean, having your attorney kind of comb through all the websites and print those websites out along with their data access and data publication, putting it into an IDs statement, that's expensive. So be ready to incur that cost if you're going to do extensive searches online. I think it's probably human nature to want to be curious about whether something exists or not. But beyond finding four or five references, I think you need to start talking to an attorney about it. Who can, if nothing else can help put guardrails around what you look for or help you tabulate and keep track. Of the references that you find and the searches that you make so that we can submit it to the patent office down the road.

19:19
Jamie Brophy
Yeah, excellent point.

19:23
Samar Shah
Yes. I get nervous basically anytime a client does anything patent related without us getting involved because there is potential for things to go wrong and we do not like things going wrong.

19:36
Jamie Brophy
Yeah, definitely.

19:40
Samar Shah
Let's see, I think we've covered pretty much everything about infringement and patentability opinions. They're not the same thing for those keeping track at home. Is there anything else that we need to talk about, Jamie?

19:52
Jamie Brophy
I can't think of anything. I think we pretty much covered it all.

19:57
Samar Shah
Okay, very good. Well, this was a great podcast. Thanks everyone for listening and we'll hope to see you on the next episode.

20:03
Jamie Brophy
Thank you.

20:05
Samar Shah
Thank you for joining us on the patent pending Made Simple podcast. I hope you enjoyed our show. If you'd like to receive updates, view the show notes, or access a direct link to any resource, go to the Episodes page on patentpendingmatesimple.com to help others find our podcast, please like share and subscribe. Thanks again for tuning in. I look forward to having you with us. Next time on Patent Pending made Simple this podcast has been hosted by outlier patent attorneys and is not intended to nor does it create the attorney client privilege between our hosts, guests, or any listener for any reason. The content of this podcast should not be interpreted as legal advice. All thoughts and opinions expressed herein are only those from which they came.