Problems On Patent Infringement:

[Note: In each of the following problems, if a question says a customer is being urged to do something, or that a shipper intends something, assume that customer complies.]

Problem Set 1: X Co. holds a U.S. patent with one claim that reads: “A well tool comprising a tubular housing, a rotatable shaft mounted in said housing, and a gripper device connected to one end of said shaft.”

  1. Y, located in Kentucky, makes a housing, rotatable shaft, and gripper, all as recited in the claim, but does not assemble them. Y ships them unassembled to customers in the U.S., intending that the parts be assembled on site by customer personnel.
  1. Same facts as in #1, but now Y sales people tell the customer how to assemble the parts.
  1. Same facts as in #1, but now Y includes printed instructions with the components, describing how to assemble them.
  1. Same facts as in #2, but now the customer is located in France; the parts and the printed instructions are shipped to France.
  1. Same facts as in #1, except that Y is located in China.

Problem Set 2: X Co. has a U.S. patent containing the following claim: “A method of painting plastic parts, comprising the steps of roughening the surfaces to be painted; applying a thin pre-coating of agent X to the surfaces to be painted; and spraying a selected water-based paint on said surfaces.” Agent X was known before in terms of its chemical structure, but it had no known use except in the method claimed in the patent.

  1. J, located in New Jersey, sells agent X to customers in the U.S.; no instructions are given.
  1. J, located in New Jersey, sells ordinary water-based paint to customers in the U.S., knowing that these customers are planning to use the paint in the patented method.
  1. J, located in New Jersey, ships ordinary water-based paint to customers in Germany, with instructions recommending that the customers can advantageously use the U.S.-patented method with this paint.
  1. J, located in New Jersey, imports painted plastic parts made and painted in the Czech Republic using the method recited in the U.S. patent’s claim.
  1. R located in Florida, sells paint-spraying equipment to customers in the U.S. The equipment has many other uses, but R knows at least half of its customers intend to use the patented method to paint parts in the United States.
  1. T, a laptop computer maker, uses the patented method to paint plastic parts, which T then assembles into its computers and sells the computers. What is the liability of (a) T, who knows nothing about any patent; and (b) T’s customers, who buy the laptop computers and know nothing about any patent.

1