Chapter 2: Assessment Questions

1. 

Responsibility for legally enforcing patents rests with which of the following bodies? 

1. The U.S. Patent and Trademark Office (USPTO)
2. The U.S. Department of Justice.
3. The owner of the patent, suing in a federal civil lawsuit.

Answer

C. The owner of the patent, suing in a federal civil lawsuit.

2. 

Patent owners have which of the following rights under the law?

1. The exclusive right to “practice” the patent—meaning the exclusive right to make or sell products based on the patent.
2. The right to exclude others from making, using, offering for sale, selling, or importing the invention covered by the patent throughout the United States.
3. Both of these.

Answer

B. The right to exclude others from making, using, offering for sale, selling, or importing the invention covered by the patent throughout the United States.

3. 

Which of the following is required in order to infringe a patent?

1. Intending to infringe the patent.
2. Making, using, or selling the patented invention without authorization.
3. Knowing that the patent exists.

Answer

B. Making, using, or selling the patented invention without authorization.

4. 

Which of the following is the legal definition of patent infringement?

1. One or more of a patent’s claims match (or “read on”) the features and functions of a device or process.
2. A device or process that performs a “substantially similar” functions to those described in a patent’s claims.
3. Both of the above are correct.

Answer

A. One or more of a patent’s claims match (or “read on”) the features and functions of a device or process.

5. 

Which of the following illustrates the “doctrine of equivalents”?

1. If a device performs substantially the same function in substantially the same way as your patent claim, infringement exists if any differences are insignificant.
2. A patent calling for an “adhesive” connection (describing glue as the preferred adhesive) may be infringed by a device using a Velcro® fastener.
3. Both of the above are correct.

Answer

C. Both of the above are correct.

6. 

If you believe your patent is being infringed, you have how many options for recourse?

1. Two. You can sue the infringer in federal court, or ignore the infringement.
2. Three. Besides the two above, you can simply demand he stop infringing.
3. Four. You can sue the infringer, demand he stop infringing and pay monetary damages, offer the infringer a license in return for royalties, or ignore it.

Answer

C. Four. You can sue the infringer, demand he stop infringing and pay monetary damages, offer the infringer a license in return for royalties, or ignore it.

7. 

Patent infringement suits can take years and cost millions of dollars. Which of the following is another option patent owners have in seeking redress for infringement?

1. Litigation financing in exchange for a share of any damages.
2. Out-of-court license and royalty settlements.
3. Contingency lawyers take the case for a share of any damages.
4. All of the above.

Answer

D. All of the above.

8. 

If you think multiple parties are infringing, what is your best strategy?

1. Sue them one at a time, so they don’t gang up on you.
2. Pick the one with the biggest pockets, as the settlement will likely be larger.
3. Sue them all simultaneously, and let them sort out their differences.

Answer

C. Sue them all simultaneously, and let them sort out their differences.

9. 

Should you alert an infringer beforehand that you intend to file suit?

1. Always. This gives them the opportunity to settle prior to you filing a costly suit.
2. Never. They can then sue you preemptively, giving them the vital initiative in seeking a venue of their choice and a declaratory judgement of noninfringement.
3. Yes, but only if you file suit simultaneously or shortly afterwards.

Answer

C. Yes, but only if you file suit simultaneously or shortly afterwards.

10. 

How often do plaintiffs win at trial?

1. 60 to 75 percent of the time.
2. 80 to 90 percent of the time.
3. 40 to 50 percent of the time.

Answer

A. 60 to 75 percent of the time.

11. 

Which of the following is NOT a valid reason for filing a motion to dismiss once a suit is filed in a federal court?

1. Improper jurisdiction.
2. Improper venue.
3. Improper (or invalid) patent.
4. Failure to state a proper claim.

Answer

C. Improper (or invalid) patent.

12. 

Which of the following is NOT a possible defense in a defendant’s answer to a claim?

1. The patent is invalid.
2. The patent is not infringed.
3. The plaintiff waited too long to file suit.
4. The patent covers a nonessential part of the allegedly infringing product.

Answer

C. The plaintiff waited too long to file suit.

13. 

Why have defendants increasingly turned to post-grant review proceedings at the PTO, such as inter partes review, since the America Invents Act was passed in 2011?

1. The PTO is less likely to judge that a patent has been infringed.
2. It's quicker than waiting for a trial.
3. The PTO has shown a strong likelihood of finding challenged patents invalid.

Answer

C. The PTO has shown a strong likelihood of finding challenged patents invalid.

14. 

What role does discovery play in an infringement case?

1. Through production of documents and interrogatories, either side may discover information that may be decisive in confirming or rebutting infringement claims.
2. Discovery is often an endless fishing expedition that escalates the costs to both parties exponentially.
3. Both of these describe the role of discovery in an infringement case.

Answer

C. Both of these describe the role of discovery in an infringement case.

15. 

What is the most critical pretrial phase of every patent infringement case?

1. Discovery.
2. Summary Judgment.
3. Claims construction (or Markman) hearings.
4. The Verdict.

Answer

C. Claims construction (or Markman) hearings.

16. 

Why do courts usually seat seven to nine jurors rather than six or twelve in most patent cases?

1. You need an odd number of jurors to break a tie vote on the verdict.
2. Six jurors won’t be enough for a legal verdict if one is excused during trial, and twelve jurors will likely take too long to decide the case.

Answer

B. Six jurors won’t be enough for a legal verdict if one is excused during trial, and twelve jurors will likely take too long to decide the case.

17. 

Why are patent trials often thought of as morality plays?

1. The facts of the case, not each party’s moral views, are all that matters to a jury.
2. It is immoral to spend $3 million to $10 million on a patent suit.
3. Each party casts itself as in the right and its opponent as doing them wrong.

Answer

C. Each party casts itself as in the right and its opponent as doing them wrong.

18. 

Which of the following is the definition of inequitable conduct?

1. Deceiving or misleading the patent office to grant a patent.
2. Deceiving or misleading a jury during opening arguments.
3. Deceiving or misleading the opposing party during the discovery phase.

Answer

A. Deceiving or misleading the patent office to grant a patent.

19. 

What’s the standard for proving willful infringement, leading to enhanced damages?

1. Selling a product despite knowing that a patent exists that the product might be infringing.
2. Selling a product despite an objectively high likelihood that it infringed a valid patent and that this risk was known or should have been known to the infringer.
3. Deliberately not conducting a prior art search to determine if a patent exists that your product might be infringing.

Answer

B. Selling a product despite an objectively high likelihood that it infringed a valid patent and that this risk was known or should have been known to the infringer.

20. 

What is the standard for imposing attorneys’ fees on the losing party to a patent suit?

1. Convincing evidence of bad faith or gross negligence by the losing party.
2. A case that “stands out from others” in the weakness of the plaintiff’s case or the unreasonable or abusive manner in which it was litigated.

Answer

B. A case that “stands out from others” in the weakness of the plaintiff’s case or the unreasonable or abusive manner in which it was litigated.

21. 

What is often the most serious damage that a court can impose upon an infringer?

1. A very large award for monetary damages.
2. Pre- and post judgment interest payments on the damage award.
3. Injunctive relief barring further sales of the infringer’s products.

Answer

C. Injunctive relief barring further sales of the infringer’s products.

22. 

Which of the following explain why patent infringement verdicts are almost always appealed?

1. The cost of an appeal is orders of magnitude less than the cost of the trial itself.
2. Legal issues such as claim construction are reviewed de novo - meaning, without regard to the previous trial’s rulings.
3. The U.S. Court for the Federal Circuit, the appeals court, affirms in full less than 60 percent of the patent cases it decides on the merits.
4. All of the above.

Answer

D. All of the above.

23. 

As an alternative to litigation, mediation is different from arbitration in what way?

1. Mediations result in settlements only if both parties agree.
2. In arbitrations, the parties are bound by the decision of the arbitrator.
3. Both of these are accurate.

Answer

C. Both of these are accurate.

24. 

Which of the following is the definition of a “patent troll”?

1. A patent owner who licenses their patents rather than makes or sells products.
2. A patent owner whose main source of revenue is patent litigation.
3. A patent owner whose main source of revenue is “nuisance settlements” for less than the cost of litigation.

Answer

C. A patent owner whose main source of revenue is “nuisance settlements” for less than the cost of litigation.