How to Prove Unorthodox Infringement?
Generally, the Infringement searches start with understanding the claims of a subject patent for which the infringement search is to be performed. The file wrapper of the subject patent is read and analyzed thoroughly to understand the novel and key elements (most limiting) of the claims of the subject patent. After understanding the novel and key elements of the claims of the subject patent, a conventional infringement search is performed to search for the products or services which overlap all the novel and key elements of at least one independent claim of the subject patent. Any product or service, utilizing or having all the novel and key elements of at least one independent claim of the subject patent is said to be infringing, and are mapped in a color-coded format corresponding to at least one independent claim of the subject patent. This type of infringement searches can be regarded as orthodox infringement searches since they follow a standardized/conventional way of searching for the infringing products or services.
The ubiquity of infringement can sometimes be challenging and tricky, leading to the adoption of uncommon methods to prove the case. There are situations, where one can witness trespassing, but such types of cases are not that easy to prove with the existing procedures. Thus, one needs to challenge the status-quo and explore unconventional methods to do the inevitable.
At times, it is observed that no product or service is identified as directly infringing on the most limiting claim elements just because the detailed information of the technicality of the product or service is not available. Such cases need some unorthodox infringement search approaches to be followed.
We, at TT Consultants, believe in doing whatever it takes to provide solutions that cater to our clients and their individual and specific needs what our client desires. And, with this thought in mind, we prefer going out of the way to follow unorthodox approaches in such cases. Herein, listing two such cases that we did successfully for our USA based clients very recently.
Case Study 1
Recently we came forth a complicated situation on our hands while proving a case of infringement. The situation was related to the mobile phone imaging apparatus and methods. As per the claims, we could witness the things happening in the same way, but it was tough to prove the same via only web searching. We found leads from here and there, but a strong case could not be built with just the web searching leads.
Thus, we thought of going a level higher in three steps:
One, we bought the phone.
Yes, you heard it right! We bought the trespassing phone. But, buying the phone was just not enough as it had to capture and present the images in a certain way. That led to buying other apparatuses, such as the body to be captured, a proper background, and devices to record the misdemeanor. As a result, we ended up getting a complete lab in-house!
Further, here we experienced another challenge, as to how to actually prove the things happening at the back-end while processing the captured images. One out of three searchers must know this headache, of proving things happening at the back-end, in the claims. We started thinking as if it all went in vain.
But as they say, where there’s a will, there’s always a way! So, secondly, looked through the API library functions.
So the thing is, there are certain functions at the backend of each processor that lead to outcomes in a particular way. We thought if we can’t beat the processor as a whole, why not go after its heart and brain. Hence, we dug the underlying APIs leading to the results. Though APIs alone cannot serve the purpose but along with the other evidence, it indeed turned the tables.
Hence, blending all the above (unorthodox) steps along with the web search, we pushed each & every envelope to make the case strong, which initially seemed unachievable.
The subject patent provided by the client was having claims on a few telecommunication technologies. The client had also provided us with a set of target companies that could be potential infringers. Starting with the conventional search approach, we could find some devices/products which seemed to have infringed the claimed technology.
However, the problem we were facing was that we were not able to prove it in writing based on the limited information available on the internet regarding these identified devices.
Now what we did – we brought all the intelligent brains together to brainstorm on this by arranging a team meeting. During the team meeting, we discussed all the aspects of the technologies, products & proofs we found, approaches followed so far, and the challenges we had. Suddenly one of our team members said: ”We have limited our search with the provided target companies. We also have some of the products for the target companies which seem to potentially infringe the claimed technologies but with very limited information to prove the infringement. We could not find any telecommunication standards for these target companies, but there can be some standards by other companies on the claimed technologies. Why not search for such standards, and see if the identified products comply with those standards?!”. These words brought new rays of hope to all of us. The increased level of brightness and energy could be seen in the eyes of all the team members.
We went back and did exactly the same. And, as expected we were able to identify one such telecommunication standard disclosing all the elements of the claimed technology. Also, the products we identified were in compliance with the telecommunication standard we just found. Further, we did two things: (1) We mapped the identified telecommunication standard along with providing the reference to the identified products in compliance with the standard. (2) We suggested that the client should contact the SSO (Standards Setting Organizations) of the identified telecommunication standard to declare the subject patent as SEP (Standard Essential Patent).
We received highly commendable feedback for both cases. The clients got more than what they had initially expected. They not only got the infringing products of the target companies but were presented with an opportunity to declare the subject patent as an SEP for the identified telecommunication standard, which earned great profits for him.
What else do we wish for, other than happy and satisfied clients!
Client satisfaction is of utmost concern to us and such case studies demonstrate a perfect example as to how desired results can be achieved if one thinks out of the box.