An International Guide to
Patent Case Management for Judges

12.5 Patent infringement

The patent system offers legal certainty to inventors operating in a given technology sector. Those who register their inventions enjoy the exclusive right to exploit them for a determined period of time. Patents are also a way to make public an innovation that might otherwise remain unknown. A patent title determines what constitutes an invention protected by exclusive rights while also enriching the corpus of human knowledge and contributing to social progress. A patent delineates what must be respected during its period of duration so that actors in the market can avoid infringing the protected rights of others. Those interested in using protected technology can seek authorization to do so from its inventor, in exchange, as the case may be, for the price of licensing it. Or alternatively, they can opt to solve the same technical problem using means already available in the public domain or attempt through their own research and using their own resources to devise a different creative solution. Conversely, using a patented solution without permission from the patent owner constitutes infringement, subject to legal prosecution.

If a patent right holder or legitimate licensee detects the presence in a market of competing products or services they consider to be infringing their exclusive rights, they can deploy legal mechanisms in defense of their legitimate interests. Disputes not resolved by alternative means can then lead to litigation in the courts.

12.5.1 Claim construction

The subject matter of a patent is a crucial starting point in understanding the scope of protection provided by public authorities for an exclusive right to the invention concerned. This is part of what makes the claims made in a patent so important.

The protected content of a patent consists of one or more claims, which define the subject matter of the patent for which exclusive rights are sought. These claims take concrete form in an invention’s technical features (structural and functional). They consist of one or more elements, the interrelationship between them and the technical effect they produce as the purpose of the invention.

There are various kinds of claims. They may relate to a physical entity (a product, substance or mixture), a device (an apparatus or machine) or even a system (a series of devices working together). A claim can also consist of an activity (procedures or methods for the manufacture of a product or even new uses for a product, such as previously known substances or compositions used as a medicine or for new therapeutic applications) (see Articles 6(4) and 6(5) of LP-2015). Claims relating to a physical entity protect the product or device in its entirety, and therefore convey the right for their owners to prevent third parties from exploiting them without the owner’s consent. The owners can thus prohibit others from manufacturing, offering, commercializing (using, importing or possessing for those purposes) the patented product (mechanical, electrical, nutritional, chemical, pharmaceutical, phytosanitary, microbiological, biological, genetic) irrespective of the procedure used to obtain it (since the claims relate to a physical object). Claims made for a procedure protect the operations used to transform one or more initial substances into one or more final products, enabling their holders to prevent only use of the patented procedure and offers thereof for use. Also, a claim for a procedure to obtain a product protects only the product obtained directly from that procedure – not manufacture of the product using a different procedure.

A claim is expressed as an explanation of positive features. Exceptionally, however, the scope of a claim may be limited in a negative manner by means of a disclaimer, so that one element is explicitly excluded from the claimed protection.

All patents must contain at least one independent claim – the claim that defines the entity or activity that constitutes a solution to a technical problem as identified in the application. The independent claim must clearly specify each and every one of the features necessary to define the invention – unless such features are implicit in the generic terms used.

The patent may include more than one independent claim in the same category (product, procedure, device or use), but must comply with the requirement of “unity of invention”. That means that the claims must have subject matter in common forming a single general inventive concept. It must otherwise be divided among different patents.

The independent claim can (optionally) then be followed by one or more dependent claims, structured so as to add one or more technical features. This results in a scope more limited than the claim on which they depend but without altering the essential nature of the invention. Dependent claims can embody different, more specific versions of the invention.

The claims must be clear, concise and based on the description.⁵⁰ They provide the basis for determining whether the patentability requirements (novelty, inventive step and industrial applicability) have been met. The content and form of claims is regulated precisely (see Article 7 of the Implementing Regulations for the Law on Patents, approved by Royal Decree No. 316/2017, of March 31, 2017 (Implementing Regulations for the Law on Patents)⁵¹, regarding the national patents and the Implementing Regulations to the Convention on the Grant of European Patents, with reference to national patents). Under these regulations, claims must include, first of all, a preamble indicating the subject matter of the invention and the precise technical features used to define the elements claimed, which combine to constitute the state of the art. Claims must then include a section explaining the technical features (characterization section), which combined with the content of the preamble represents what the patent is intended to protect. Whereas the preamble provides the context and characterizes the invention, it is the characterization section that contains the actual inventive elements.⁵² That is where the technical features to be protected, presented as novel, are explained.

Patents are not the only industrial property instruments for protecting inventions under Spanish law. LP-2015 provides for two others. The first, utility models, require novelty, inventive step and industrial applicability but are considered “minor” inventions. They offer a configuration, structure or composition to give an object or product some practically appreciable advantage for use or manufacture (Articles 2 and 137 of LP-2015). The second, supplementary protection certificates, are for medicines and plant protection products. For a maximum duration of five years they provide the same protection as a patent for the active ingredients or combinations of active ingredients of medicines or plant protection products after patent protection expires, to compensate for the time required to complete the formalities entailed in obtaining marketing approval (Articles 2 to 6 of Regulation (EC) 469/2009 of the European Parliament and of the Council of 6 May 2009,⁵³ in conjunction with Articles 45 to 47 of LP-2015). The general analysis of what constitutes an infringement of exclusive rights also applies to these titles, albeit with certain particularities in each case.

12.5.2 Patent infringement disputes

Patent owners considering legal action to defend their rights must first clearly identify which of their claims may have been infringed. An error sometimes committed in this regard is losing sight of what the plaintiff’s patent actually protects and what rights it actually confers. A strategy to avoid is focusing on the properties of the object, product or substance the plaintiff is commercializing, as it should not be assumed that they all correspond to the features of the invention as registered. It is important to bear in mind that in patent litigation, the latter and not the former is what matters. what needs to be perfectly clear in the complaint is what the plaintiff has registered specifically and how it has been unduly affected by the activities of a third party. Cases are lost when this basic point is forgotten.

A second important point in filing these complaints is to identify the features of what the defendant has been manufacturing or commercializing. This is precisely what should be compared with what is claimed in the patent. What the defendant may have subsequently registered is not relevant in this context, as infringement disputes are not about comparing titles according to legal priority. What matters is to verify whether the actions of the defendant constitute an infringement of the priority right registered by the plaintiff.

The best approach to these disputes is to accompany the complaint with an expert opinion⁵⁴ on related technical issues, with which the judge – however specialized the court may be in the subject matter concerned – may well be unfamiliar.⁵⁵ The opinion should focus first on the scope of the claims allegedly infringed, and then on how the defendant’s activities infringed them.

To clearly assess whether the conduct of the defendant constitutes an infringement of the plaintiff’s patent, the protected subject matter of the patent must be determined according to the patent’s definition of the exclusive right.⁵⁶ This means delving into a legal analysis that must be based on properly structured technical information. The plaintiff’s legal position will not otherwise be sufficiently robust.

Precise specification of what constitutes the patent’s subject matter will be of fundamental importance in deciding whether infringement has occurred. It must be remembered here that protected subject matter is defined by a patent’s claims as informed by the description and drawings accompanying them. In bringing action against an infringement, the first step is to determine the scope of patent protection.⁵⁷ This is because, as stressed by the Spanish Supreme Court, patent claims perform two functions. First, they define the subject matter to be protected by indicating the technical features of the invention necessary to execute the procedure or define the product concerned and thereby solve the technical problem identified in the specifications. And second, they determine the extent of protection conferred by the patent or patent application, taking into account the accompanying description and drawings.

The subject matter of the invention must be determined based on an analysis of the technical features in the characterization section, which must relate to the content of the preamble that introduces and contextualizes the invention. That permits what is novel about the invention to be identified, and thus for the extent and limits of the patent protection to be outlined. But to delineate more precisely where that protection is relevant to the case, it must be determined where the patent is exclusive and interpret the claims infringed to ascertain their technical and legal meaning in the context of the case. It is important to maintain the right legal balance in performing this analysis. The interpretation of claims should be neither too exorbitant nor too literal. The key is to find the right balance between equitable protection for the applicant and a reasonable degree of certainty for third parties (as described in the Protocol on the Interpretation of Article 69 EPC). Spanish case law in this area⁵⁸ admits no need for a strictly literal interpretation, allowing for a more intuitive approach, to find the true meaning behind the content of a claim. In determining the scope of patent protection, Spanish rulings have also tended to admit and factor in arguments based on the history behind patent applications and grants, including disclaimers, limitations and other steps taken by applicants in their interactions with patent offices.

12.5.3 Opposition by defendants

It is obviously not infrequent for patent owners bringing actions against infringement of their rights to encounter defendants mounting an offensive strategy against those rights. They may for instance file counterclaims for the patent to be declared invalid or subject to exceptions.⁵⁹ This shifts the argument to an issue prior to the alleged infringement: whether the requirements for patentability of the invention were initially met or there are any other legal causes of invalidity that may be alleged.⁶⁰ The decision process for handling those kinds of disputes has been covered above, so we turn next to the alleged infringement.

An argument the defendant may raise in that connection is that of having been authorized to use the patent, which calls for an analysis of the origin and scope of such authorization to determine whether the defendant’s conduct was in fact justified. The defendant might also argue that their conduct was not an infringement because it did not encroach on the scope of the exclusive right conferred by the patent.

12.5.4 Literal infringement

The defendant’s conduct can be considered infringement if the technical solution addressed by the products and services they offer is precisely the same as what has been included in the characterization section of the patent owner’s claims. Only if that can be demonstrated can the defendant’s conduct be considered a literal infringement of the plaintiff’s exclusive rights. If the patent includes multiple claims, such encroachment on any constitutes infringement, since each claim represents a legally protected invention (which must nonetheless comply with the principle of inventive unity). If the claims are structured more broadly, with various dependent claims, encroachment on any of those can also be successfully impugned as infringement.

For the court to rule that infringement has occurred, a wealth of carefully structured technical information must be provided to the judge to demonstrate that each and every one of the technical features registered in the patent are present in the defendant’s product or service. It is up to the plaintiff to provide that information and meet a burden of proof appropriate for the circumstances with sufficient supporting evidence. That effort may well fail, however, if the expert opinion provided to the court does not meticulously compare the registered claims with the specific characteristics of the object manufactured, commercialized or used by the defendant. The same is true if the opinion neglects to cite the text of the patent and concentrates instead on comparing the objects, materials or products manufactured or commercialized by each party, rather than the content registered for the invention. That is not the right approach to analyzing potential patent infringement. It does not provide the judge with the technical criteria needed to determine whether exclusive rights have been infringed. Mere intuition does not suffice.

A finding that an exclusive patent right has been infringed can be obtained only by means of a legal effort to rigorously compare registered claims with the object manufactured, commercialized or used by the defendant, and only if the defendant’s actions fit within the scope of protection for any of the claims.⁶¹ It will be concluded that the defendant has infringed the plaintiff’s exclusive rights if the defendant’s products or services simultaneously embody all of the elements contained in one of the patent’s claims and each and every one of the technical features protected by the registered claims under the patent. The manufacture, sale or use of objects considered to be a reproduction of technical features registered by the plaintiff will permit the protection legally afforded by patents to be invoked.⁶²

A finding of patent infringement requires more than a general comparison between the invention claimed and a competing version of that invention. A much more rigorous element-by-element comparison must be made between the two. Only when all the technical features of the patented invention have been reproduced by the impugned activities can it be considered that the rights conferred by the patent have been infringed (the rule of the simultaneity of all elements must have been satisfied). Courts in Spain may not invoke the “essentiality” doctrine, now considered obsolete, to rule that a patent has been infringed. Dating back to LP-1986, the relevant comparison has not been between the “essence” of the patent and the product or service at issue, but between each element, one by one, to demonstrate that each and every one of the technical features of the object protected by the patent have been reproduced identically or equivalently by the allegedly infringing object.

The mere fact that someone has acted in the light of another person’s patent does not constitute infringement, unless the technical features claimed in the patent have been reproduced element by element. If a different solution is offered for the problem the patent is intended to solve, such that any of the elements of the invention claimed has not been reproduced, either because use has been made of an innovative method – or an alternative method within the state of the art but not protected by patent – then no exclusive right has been infringed and the infringement action must fail.

12.5.5 Infringement by equivalence

In following the approach described above, it is important to prevent infringement from going unpenalized through a subterfuge: that of introducing irrelevant variations in a product or process to avoid the appearance that patent claims have been duplicated.⁶³ It is therefore important to bear in mind what was mentioned earlier about the interpretation and scope of claims. Infringement by equivalence is where an opposing party avoids identically reproducing every element of a patent claim by replacing one of its characterizing elements with another that is clearly equivalent. Spanish legislation makes it explicitly clear that patents also protect inventions where apparent discrepancies in an element are found in reality to be equivalent.⁶⁴ Such equivalence means that infringement has in fact occurred, carrying the same legal consequences as literal infringement.

When the comparison of elements is performed as described earlier, attention must be paid to whether a variation in an element that initially appears not to reproduce an element in a patent claim is not in reality a substantial variation from the perspective of a person skilled in the art. It is infringement – not literally but by equivalence (although the legal effect is the same) – if a function, the way it is performed, and the results obtained in solving a problem targeted by a patented claim are essentially replicated. Hence the crucial importance of patent descriptions. The proviso in all of this is that it must be obvious to the skilled person that the variation observed in the element concerned falls within the patent’s scope of protection, based on its claims as interpreted in the overall context of the patent, including its accompanying description and drawings.

As a general rule, an element must be considered equivalent to an element of a claim if in its context it performs the same function to produce the same results from the perspective of a person skilled in the art. However, some additional factors must be considered in reaching that judgment. These include whether the skilled person – from the perspective of the priority date (if earlier, so as to avoid ex post facto judgments) – would have considered the element as falling outside the patent’s scope of protection based on its description, drawings and claims. Consideration must also be given to whether the element would correspond to the prior art or be obvious from the perspective of the prior art. And yet another point to consider is whether the patent owner expressly and unequivocally excluded the element from the claim during the application process to avoid an objection from the examiner based on the prior art.

An approach frequently used to determine this issue of equivalence is the so-called triple identity test, which consists of analyzing whether the element performs the same function, uses the same modus operandi and produces the same result. While particularly useful for mechanical patents, this method may prove inadequate for other types of patents (for chemicals, medicines, etc.) which must be assessed based on a concrete case and an objective application of the rules described above – and from the perspective of a person skilled in the art. It is especially important in this context not to confuse this hypothetical “person” with an expert trial witness, the former being a legal concept and a function of the technical sector concerned, such that the point of reference must be determined according to the particularities of the case.

Another method used in assessing equivalence or non-equivalence comes from British case law (the “Catnic” and “Improver” cases) and is now also used in Spanish forensic practice. It consists of asking and answering up to three questions in sequential order until the situation is clarified. First, does the variant used by the defendant substantially alter the functioning of the invention described in the plaintiff’s patent? If it does, there is no equivalence. If it does not, the process continues with the second question: would the proposed alternative have appeared obvious to the skilled person reading the patent at the time of its publication? If it entails inventive step, there is no equivalence. If it would have appeared obvious, the third question is asked: in the opinion of the skilled person, having read the text of the claims and the patent description, did the patent owner intend to adhere strictly to the terms of the claim, as essential to the invention?

In any case – and this cannot be stressed too often – it is indispensable to methodically analyze, through element-by-element comparison between the patent and the good or service at issue, whether infringement by equivalence has been committed. To be rigorous, it is not acceptable to settle for general considerations about the overall invention. It is necessary to determine precisely what specific element is being substituted by equivalence for an element specified in the patent claim.

On the other hand, an element cannot be considered equivalent if the patent owner made the corresponding element in the patent claim subject to a disclaimer or limitation during the application process.

12.5.6 Indirect infringement

Patent protection can extend even beyond the areas discussed above. Patent owners also have the right to prevent third parties from delivering or offering to deliver to persons not authorized to exploit it, without the owner’s consent, means of exploiting a patented invention relating to an essential element thereof, knowing, or under circumstances making it obvious, that those means can effectively serve, and are intended to serve, that purpose. This is what is known as indirect or contributory infringement.⁶⁵

Three requirements must be met for an act to be considered indirect infringement:

1. 1. the alleged infringer must have provided means necessary to put an essential element of the patent into practice;
2. 2. the person acquiring those means must not be legally authorized to exploit the patent; and
3. 3. the infringer must have known, or circumstances must have made it obvious, that the means provided would permit, and were intended to permit, the invention to be put into practice by someone not authorized to do so.

The circumstances prevailing in the case can be assessed by analyzing various factors. Such an analysis might reveal, for example, that the means offered had no other use than for infringement; that a given volume of sales could be generated using the means offered to work the invention; or that information or instructions were provided to the defendant on how to operate the invention and any other data that may prove relevant in practice.

Such means need not be intended for use in the same country from which they are offered for their provision to constitute indirect infringement.

In some cases, the provision of such means may not provide a sufficient basis for a finding that indirect infringement has been committed. One such case is where the means provided consist of products purchasable for purposes other than patent infringement – unless the party providing them induces the receiving party to use them for such infringement.⁶⁶ Where such products are currently available on the market it will be necessary to show that the indirect infringer has induced direct patent infringement for their conduct to be considered unlawful. This line of argument is an example of how a patent can be defended without expanding its scope of protection. It should not, however, have the effect of preventing such products from being supplied for legal uses, unrelated to patent infringement.