Grading Patent Remedies: Dependent Claims and Relative Infringement

44 Pages Posted: 10 Oct 2018 Last revised: 10 Nov 2018

See all articles by Daniel Harris Brean

Daniel Harris Brean

The University of Akron School of Law; The Webb Law Firm

Date Written: September 20, 2018

Abstract

Patents define an inventor’s exclusive rights by reciting essential aspects of the invention in sentences called claims. The claims are drafted in varying degrees of technical specificity, such that each claim is legally distinct—some may be valid or infringed while others are not. Most commonly, this variation is accomplished by using a combination of “independent” and “dependent” claims. Independent claims stand alone, while dependent claims incorporate by reference all the features recited in the independent claims but go on to add further features or details. The result is a range of potential infringing activity that triggers liability, from the broadest, most conceptual claims to the narrowest, most concrete claims.

Yet when it comes time to remedy infringement, this range of infringement is too often treated as meaningless. Parties rarely bother to distinguish between claims when assessing damages or injunctive relief. And courts hold, for example, that damages owed for infringing one claim is no different than the damages for infringement of any other claim in the patent. This is not consistent with the law or common sense. Not every claim is of equal technological or societal value, nor is infringement of every claim equally harmful to the patent owner. Parties and courts should start paying more attention to the relative significance of the patent claims involved.

This article focuses on dependent claims as a particularly useful vehicle for evaluating relative patent remedies between claims. Any two patent claims can be compared, though their relative scopes can be debatable when, for example, two claims are directed to alternative embodiments. But dependent claims are, by definition, narrower in scope than their base independent claims. Dependent claims also are commonly employed to expressly cover commercial products or preferred embodiments of inventions. As a result, dependent claims often protect the core and most detailed disclosures of the patent specification, occupying the most important competitive space to the patent owner. The relative value of those claims to patent owners, infringers, and the public, should be evaluated as part of any sound patent remedies assessment.

Keywords: patent, infringement, claims, dependent, remedies, damages, injunctions, willfulness, enhanced damages

JEL Classification: K19, K39, K49

Suggested Citation

Brean, Daniel Harris, Grading Patent Remedies: Dependent Claims and Relative Infringement (September 20, 2018). Brooklyn Law Review , Vol. 84, No. 4, 2019, Forthcoming. Available at SSRN: https://ssrn.com/abstract=3252487

Daniel Harris Brean (Contact Author)

The University of Akron School of Law ( email )

150 University Ave.
Akron, OH 44325-2901
United States

The Webb Law Firm ( email )

One Gateway Center
420 Fort Duquesne Blvd., Suite 1200
Pittsburgh, PA 15222
United States
(412) 471-8815 (Phone)

HOME PAGE: http://www.webblaw.com

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