Also known as: break a patent · breaks a patent · broke a patent · broken a patent · patent infringement
Written by attorneys — see sources below.
2 senses
The act of demonstrating that a patent is invalid or unenforceable because it was improperly issued by the U.S. Patent and Trademark Office because of fraud, the existence of prior art, or any other barrier to proper issuance.
The act of demonstrating that a patent is unenforceable because it was used unlawfully by the patentee.
The act of demonstrating that a patent is invalid or unenforceable because it was improperly issued by the U.S. Patent and Trademark Office because of fraud, the existence of prior art, or any other barrier to proper issuance.
Blake Butler sued Beacon Bank for patent infringement over a data compression method. The district court entered judgment finding infringement but deferred the accounting of damages. Beacon Bank appealed immediately by breaking the patent with evidence of prior art that the patentee had concealed.
Brenda Booth sued Bay Area Systems alleging infringement of a medical device patent. During Markman proceedings the court construed the key term broadly. Bay Area Systems broke the patent by proving the construction rendered the claims invalid over prior art.
The act of demonstrating that a patent is unenforceable because it was used unlawfully by the patentee.
Each sense below has its own examples, sources, and questions.
Markman owns United States Reissue Patent No. 33,054 for his Inventory Control and Reporting System for Drycleaning Stores. The patent describes a system that can monitor and report the status, location, and movement of clothing in a dry-cleaning establishment. The Markman system consists of a keyboard and data processor to generate written records for each transaction, including a bar code readable by optical detectors operated by employees, who log the progress of clothing through the dry-cleaning process. Respondent Westview's product also includes a keyboard and processor, and it lists charges for the dry-cleaning services on bar-coded tickets that can be read by portable optical detectors. Markman brought an infringement suit against Westview and Althon Enterprises, an operator of dry-cleaning establishments using Westview’s products. Part of the dispute hinged upon the meaning of the word inventory, a term found in Markman’s independent claim 1, which states that Markman’s product can maintain an inventory total and detect and localize spurious additions to inventory. The case was tried before a jury, which heard, among others, a witness produced by Markman who testified about the meaning of the claim language. After the jury compared the patent to Westview’s device, it found an infringement of Markman’s independent claim 1 and dependent claim 10. The District Court for the Eastern District of Pennsylvania granted Westview’s deferred motion for judgment as a matter of law. One of its reasons was that the term inventory in Markman’s patent encompasses both cash inventory and the actual physical inventory of articles of clothing. The court directed a verdict on the ground that Westview’s device does not have the means to maintain an inventory total. Markman appealed to the United States Court of Appeals for the Federal Circuit, which affirmed the district court’s judgment. Markman sought review, and the Supreme Court granted certiorari.
View caseBobby Brady sued Bristol Steel for selling machines that allegedly contributed to patent infringement. Bristol Steel broke the patent by showing the machines had substantial noninfringing uses that defeated the contributory claim.
In 1976, Universal City Studios, Inc., and Walt Disney Productions, owners of copyrights in motion pictures and other audiovisual works, commenced a copyright infringement action in the United States District Court for the Central District of California against Sony Corporation of America and related entities that manufacture and sell Betamax video tape recorders. The Betamax consists of a tuner that receives signals from the public airwaves, a recorder that places those signals on magnetic tape, and an adapter that converts the signals for playback on a television set. It includes a timer for unattended recording, a pause button to omit commercials, and a fast-forward control. Surveys of several hundred Betamax owners conducted by both parties in 1978 showed that the primary use for most owners was time-shifting, recording a program for single later viewing and then erasing it. Sony's survey indicated that over 80 percent of interviewees watched at least as much regular television as before owning a Betamax. Seven point three percent of use was to record sports events whose professional leagues had no objection to home recording, and representatives of religious and educational broadcasters also testified they had no objection. After a lengthy trial, the District Court in 1979 denied all relief to the respondents, finding that time-shifting was fair use, that Sony had no direct involvement with any infringing activity, and that the Betamax was a staple article of commerce capable of substantial noninfringing uses. The court noted Sony's instruction booklet warned that unauthorized recording of copyrighted material may violate copyright laws. The Ninth Circuit in 1981 reversed the District Court's judgment on the copyright claim, holding petitioners liable for contributory infringement without setting aside any findings of fact, and remanded for consideration of damages or a continuing royalty. The Supreme Court granted certiorari in 1982, ordered reargument in 1983, and issued its decision in January 1984.
View caseBenjamin Brooks sued Blackwood Technologies over a patent claiming isolated DNA sequences. Blackwood Technologies broke the patent by demonstrating the claims covered a product of nature ineligible for patent protection.
Respondent Myriad Genetics, Inc. discovered the precise location and sequence of the BRCA1 and BRCA2 genes. Mutations in these genes can dramatically increase an individual's risk of developing breast and ovarian cancer. Myriad obtained several patents after its discovery. These included U.S. Patent 5,747,282, U.S. Patent 5,693,473, and U.S. Patent 5,837,492. The average American woman has a 12- to 13-percent risk of developing breast cancer. For women with BRCA mutations the risk can range between 50 and 80 percent for breast cancer and between 20 and 50 percent for ovarian cancer. Myriad identified the exact location of the BRCA1 and BRCA2 genes on chromosomes 17 and 13. Chromosome 17 has approximately 80 million nucleotides and chromosome 13 has approximately 114 million nucleotides. Within those chromosomes the BRCA1 and BRCA2 genes are each about 80,000 nucleotides long. If just exons are counted the BRCA1 gene is only about 5,500 nucleotides long and the BRCA2 gene is about 10,200 nucleotides long. Claims 1, 2, 5, and 6 from the '282 patent are representative. Claim 1 asserts a patent on an isolated DNA coding for a BRCA1 polypeptide with the amino acid sequence set forth in SEQ ID NO:2. Claim 2 asserts a patent on the isolated DNA with the nucleotide sequence set forth in SEQ ID NO:1. SEQ ID NO:1 lists only the cDNA exons in the BRCA1 gene. Claims 5 and 6 assert patents on any isolated DNA having at least 15 nucleotides of the sequences in claims 1 and 2 respectively. After obtaining the patents Myriad sent letters asserting infringement to the University of Pennsylvania's Genetic Diagnostic Laboratory and to petitioner Dr. Harry Ostrer. Ostrer had been sending patient DNA samples to the laboratory for testing. The laboratory agreed to stop testing. Myriad filed patent infringement suits against other entities performing BRCA testing. Those suits resulted in settlements requiring the defendants to cease the allegedly infringing activity. Petitioner Ostrer along with medical patients advocacy groups and other doctors filed suit in the Southern District of New York. They sought a declaration that Myriad's patents are invalid under 35 U.S.C. §101. The district court denied Myriad's motion to dismiss for lack of standing. It granted summary judgment to petitioners on the composition claims concluding they covered products of nature. The Federal Circuit initially reversed. After this Court decided Mayo Collaborative Services v. Prometheus Laboratories Inc. the case was remanded. On remand the Federal Circuit affirmed in part and reversed in part holding both isolated DNA and cDNA patent eligible under §101 with each panel member writing separately on the rationale for isolated DNA. The Supreme Court granted certiorari.
View caseBrian Bailey obtained a patent and sued Bay Area Systems for infringement. After Bay Area Systems broke the patent with prior art evidence the court denied an injunction because no valid patent remained to enforce.
eBay Inc. operates a popular Internet Web site that allows private sellers to list goods they wish to sell, either through an auction or at a fixed price. Petitioner Half.com, now a wholly owned subsidiary of eBay, operates a similar Web site. Respondent MercExchange, L.L.C., holds several patents, including a business method patent for an electronic market designed to facilitate the sale of goods between private individuals by establishing a central authority to promote trust among participants. See U.S. Patent No. 5,845,265. MercExchange sought to license its patent to eBay and Half.com, as it had previously done with other companies, but the parties failed to reach an agreement. MercExchange subsequently filed a patent infringement suit against eBay and Half.com in the United States District Court for the Eastern District of Virginia. A jury found that MercExchange's patent was valid, that eBay and Half.com had infringed that patent, and that an award of damages was appropriate. eBay and Half.com continue to challenge the validity of MercExchange's patent in proceedings pending before the United States Patent and Trademark Office. Following the jury verdict, the District Court denied MercExchange's motion for permanent injunctive relief, 275 F. Supp. 2d 695 (2003). The Court of Appeals for the Federal Circuit reversed, applying its general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances, 401 F.3d 1323, 1339 (2005). The Supreme Court granted certiorari to determine the appropriateness of this general rule, 546 U.S. 1029 (2005).
View caseBethany Boyd sued Beacon Bank over a patent on a hedging method. Beacon Bank broke the patent by proving the claims were directed to an abstract idea ineligible for patent protection under the machine-or-transformation test.
Bernard L. Bilski and Rand A. Warsaw submitted a patent application to the Patent and Trademark Office seeking protection for a method allowing buyers and sellers of commodities in the energy market to hedge against the risk of price changes. Claim 1 describes a series of steps for initiating transactions between a commodity provider and consumers at a fixed rate based on historical averages, identifying market participants with a counter-risk position, and initiating transactions with those participants at a second fixed rate to balance the risk. Claim 4 reduces the hedging concept to a simple mathematical formula. Additional claims apply the method to energy markets and suggest the use of statistical techniques such as random analysis to determine inputs. The patent examiner rejected the application on the ground that it was not implemented on a specific apparatus and merely manipulated an abstract idea while solving a purely mathematical problem without any limitation to a practical application. The Board of Patent Appeals and Interferences affirmed the examiner’s rejection, concluding that the application involved only mental steps that do not transform physical matter and was directed to an abstract idea. Petitioners appealed to the United States Court of Appeals for the Federal Circuit, which heard the case en banc and affirmed the rejection. The Supreme Court granted certiorari to review the Federal Circuit’s judgment.
View case3 common questions
A defendant must prove the patent is invalid because it was improperly issued due to fraud, prior art, or another barrier, or that the patentee misused the patent in violation of antitrust laws. Either showing renders the patent unenforceable against that defendant.
A noninfringement defense accepts the patent's validity but shows the accused product or process falls outside the claims. Breaking a patent attacks the patent itself by establishing invalidity or unenforceability, which defeats the claim regardless of whether the accused conduct would otherwise infringe.
Yes. Evidence of prior art that anticipates or renders obvious the claimed invention can be used to break the patent even if the art was not before the examiner during prosecution.
…collateral estoppel. In Blonder-Tongue , this Court approved the defensive use of collateral estoppel by a patent licensee in a patent infringement suit. We held that a defendant could preclude a patentee from relitigating the validity of a patent that had been held invalid in a prior suit against another defendant. The present case…