Skip to main content

Patent Infringement

Patent application claims are determined by either the product itself or its process, not both. For example, a patent claim recites the product itself or functionality, and a method takes into account the steps taken to achieve the specific result. But there are instances where both the product and its method need to be considered to determine patent infringement. This is where the product by process claim is applied. 

A product by process claim is a hybrid claim where both the product and its invention process are analyzed to determine the validity of the claim. Such claims are used when the apparatus claims cannot be defined using structure and functionality. Therefore the patent claim is examined by reciting the process by which the product was made. 

The product by process claims can be understood further by looking at the following patent infringement cases below. 

Atlantic Thermoplastics Co. v. Faytex Corp. (Fed. Cir. 1992)

Atlantic accused Faytex of infringing on their patent # 204 process for Shock Absorbing Innersole. Faytex had two different manufacturers (Surge and Sorbothane) for their Innersole product. Upon evaluation, it was discovered that one Surge’s process was the same as Atlantic’s, whereas Sorbothane’s method differed from the patent in question. The Federal Court gave a two-part ruling, affirming patent process infringement for the product manufactured by Surge and non-infringement for innersoles by Sorbothane, stating, “process terms in product-by-process claims serve as limitations in determining infringement.” (emphasis added)

Scripps Clinic & Research Foundation v. Genentech, Inc. (Fed. Cir. 1991)

The case concerns the method of isolating human Factor VIII: C, a complex protein that occurs naturally in normal blood and is essential to the clotting of blood. Scripps Clinic sued Genetech for infringement, whereby the Courts granted summary judgment in favor of Genetech. The Federal Court stated, “process terms in product-by-process claims serve as limitations in determining infringement.” (emphasis added). And “product-by-process claim is not limited to the use of the process expressly mentioned in the claim.”

Abbott Laboratories v. Sandoz (Fed. Cir. 2009)

Abbott Sued Sandoz and several other pharmaceutical companies for infringement of their Patent#504 for drug names Omnicef. The courts gave summary judgment, ruling in Sandoz favor. They held that different processes did not infringe on Abbot’s patent since they had not patented all the processes for producing the drug in question. Abbott had stated a specific process in their patent claim, thus failing to protect their patent claim against different processes to manufacture the same product. The Federal Court further stated that reciting the process serves as a limitation in the evaluation of patent infringement claims. 

Conclusion

While product by process claims can serve as a method to determine infringement, the claim must be worded correctly, outlining all the processes to qualify for protection against infringement as observed in the Abbott case. Furthermore, the claims cannot be open-ended as it can be detrimental to determining processes (Scripps vs Genetech). Lastly, the same process used to deliver the same product, as seen in the Atlantic vs Faytex, is taken as patent infringement, while a different process used to produce the same product is not infringement. 

Leave a Reply