Utility Patent Infringement Demand

Process, Machine, Manufacture & Composition of Matter Claims

Understanding Utility Patents
35 U.S.C. § 101: Utility patents protect "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." This is the broadest category of patent protection and covers functional aspects of inventions.
The Four Statutory Categories
Category Definition Examples
Process/Method Series of steps or acts to achieve a result Manufacturing method, software algorithm, chemical process, business method
Machine Apparatus with moving parts or circuitry that performs a function Engine, computer, robotic arm, electronic device
Article of Manufacture Tangible item without moving parts Tool, container, textile, semiconductor chip
Composition of Matter Chemical compound, mixture, or material Pharmaceutical drug, alloy, polymer, genetically modified organism
Utility Patent Requirements
  • Novelty (§ 102): Invention not anticipated by prior art—no single reference discloses all elements
  • Non-obviousness (§ 103): Invention not obvious to person of ordinary skill in the art (POSITA) based on prior art
  • Utility (§ 101): Invention has specific, substantial, and credible use
  • Written Description (§ 112): Specification shows inventor possessed the claimed invention
  • Enablement (§ 112): Specification teaches how to make and use invention without undue experimentation
  • Definiteness (§ 112): Claims particularly point out and distinctly claim the invention
Utility vs. Design Patents
Aspect Utility Patent Design Patent
Protects How it works (function) How it looks (appearance)
Claims Written claims with elements Drawings define scope
Term 20 years from filing 15 years from grant
Infringement Test All-elements rule; claim chart Ordinary observer test
Prosecution Substantive examination (novelty, obviousness) Limited examination (primarily novelty)
Cost $10,000-$20,000+ $2,000-$5,000
Software/Business Method Patents: After Alice Corp. v. CLS Bank (2014), software patents face additional scrutiny. Claims must do more than recite an abstract idea implemented on generic computer hardware. Focus on technical improvements, not just automating manual processes.
Types of Utility Patent Claims
Independent vs. Dependent Claims
  • Independent claims: Stand alone; define the invention without reference to other claims; broadest scope
  • Dependent claims: Incorporate all limitations of referenced claim plus additional limitations; narrower scope
  • Strategy: Assert broadest independent claims first; dependent claims provide fallback if independent claim is invalid
Apparatus/Device Claims
Format: "A device comprising: [element 1]; [element 2]; wherein [relationship]." Apparatus claims protect the physical structure. To infringe, the accused product must have all claimed structural elements arranged as claimed.

Example Apparatus Claim:

1. A portable electronic device comprising: a display screen; a processor coupled to the display screen; a memory storing instructions executable by the processor; a touch-sensitive surface overlaying the display screen; wherein the processor, upon execution of the instructions, causes the display screen to render a graphical user interface responsive to touch inputs detected by the touch-sensitive surface.
Method/Process Claims
Format: "A method comprising: [step 1]; [step 2]; [step 3]." Method claims protect the steps performed. To infringe, the accused must perform all claimed steps. Joint infringement requires single entity to perform or direct all steps.

Example Method Claim:

1. A method of authenticating a user, comprising: receiving biometric data from a sensor; comparing the biometric data to stored templates; generating a confidence score based on the comparison; granting access if the confidence score exceeds a threshold; denying access and logging the attempt if the confidence score does not exceed the threshold.
System Claims
Format: "A system comprising: [component 1] configured to [function]; [component 2] in communication with [component 1]." System claims protect combinations of components working together. Often overlap with apparatus claims but may include distributed elements.
Means-Plus-Function Claims
35 U.S.C. § 112(f): Claims using "means for [function]" language are construed to cover only the specific structure disclosed in the specification and equivalents. This limits scope but can be useful when structure is hard to describe. Risk: If specification doesn't disclose structure for the function, claim may be invalid for indefiniteness.
Claim Strategies in Enforcement
  • Apparatus over method: Easier to prove—product exists with structure; no need to show accused performs steps
  • Method claims for software: Often necessary because software functionality is step-based
  • Multiple claim types: Assert both apparatus and method claims to cover product and its use
  • Independent claim priority: Start with broadest independent claims; narrower claims are backup
Building Utility Patent Claim Charts
Purpose: A claim chart is the foundation of any patent infringement analysis. It systematically maps each element of a patent claim to corresponding features in the accused product, demonstrating how the product meets every limitation.
Claim Chart Structure
Column 1 Column 2 Column 3
Claim Element
Identify each element/limitation of the claim
Patent Claim Language
Exact words from the patent claim
Accused Product
How the product meets this element with evidence
Example: Device Claim Chart
Element Claim 1 of U.S. Patent No. 10,XXX,XXX [Accused Product Name]
Preamble "A wireless charging device comprising:" The [Product] is a wireless charging device as shown in the product manual (Exhibit A, p.1) and marketed on Defendant's website as "wireless charging pad."
1[a] "a housing having a charging surface;" The [Product] includes a plastic housing with a flat charging surface where devices are placed. See photograph (Exhibit B).
1[b] "an inductive coil disposed within the housing beneath the charging surface;" Teardown analysis reveals a copper inductive coil positioned directly beneath the charging surface. See teardown photographs (Exhibit C).
1[c] "a power supply circuit coupled to the inductive coil;" The PCB includes a power management IC (Model XYZ123) connected to the inductive coil via traces visible in Exhibit D.
1[d] "wherein the inductive coil generates an electromagnetic field sufficient to charge a device placed on the charging surface." The [Product] charges Qi-compatible devices placed on its surface, generating the required electromagnetic field. Testing confirmed charging of iPhone and Samsung devices.
Example: Method Claim Chart
Step Claim 5 of U.S. Patent No. 10,XXX,XXX [Accused Process/Software]
Preamble "A method of processing payment transactions comprising:" Defendant's mobile app ("PayQuick") processes payment transactions as advertised on the App Store listing (Exhibit A).
5[a] "receiving payment credentials from a user device;" PayQuick receives credit card numbers and CVV codes entered by users in the "Add Card" screen. See app screenshots (Exhibit B).
5[b] "tokenizing the payment credentials to generate a payment token;" PayQuick's privacy policy states it "converts your card details into secure tokens." Network traffic analysis shows tokenized data transmitted to servers (Exhibit C).
5[c] "storing the payment token in a secure element of the user device;" PayQuick documentation confirms tokens are "stored in your phone's secure enclave." iOS security logs confirm Secure Enclave access (Exhibit D).
5[d] "transmitting the payment token to a merchant point-of-sale system via near-field communication." PayQuick uses NFC to transmit tokens at checkout. Apple Pay integration confirms NFC transmission (Exhibit E).
Evidence Sources for Claim Charts
  • Product documentation: User manuals, spec sheets, datasheets
  • Marketing materials: Website, advertisements, press releases
  • Product teardown: Physical disassembly with photographs
  • Testing/operation: Actual use demonstrating claimed functionality
  • Source code: For software (typically obtained in discovery)
  • Expert analysis: Technical expert report interpreting evidence
  • Standards compliance: If product complies with standard that requires claim elements
Claim Construction Matters: Your claim chart is only as good as your claim construction. If key terms are construed narrowly by the court, elements you thought were met may not be. Consider potential constructions when building your chart.
Sample Utility Patent Demand Letters
Sample 1: Hardware/Device Patent Demand
[Patent Owner / Law Firm] [Address] [Email / Phone] [Date] VIA CERTIFIED MAIL AND EMAIL [Defendant Company] [Address] Attn: General Counsel Re: Infringement of U.S. Patent No. [X,XXX,XXX] – [Accused Product] Dear [Recipient]: We represent [Patent Owner], owner of United States Patent No. [X,XXX,XXX] (the "'XXX Patent"), entitled "[Title of Invention]." A copy of the patent is enclosed. THE PATENT The 'XXX Patent was issued on [Date] and covers [brief description of technology—e.g., "a novel wireless charging system with improved efficiency through optimized coil geometry"]. [Patent Owner] spent years developing this technology and holds [X] related patents in this field. INFRINGEMENT We have analyzed [Defendant]'s [Product Name] and determined it infringes at least claims 1, 5, and 12 of the 'XXX Patent. Attached as Exhibit A is a claim chart demonstrating how the [Product Name] practices each element of independent claim 1. In summary: • The [Product] includes [claim element 1 summary] • The [Product] contains [claim element 2 summary] • The [Product] performs [claim element 3 summary] Our analysis is based on review of [Defendant]'s product documentation, a teardown analysis of a [Product] unit purchased on [Date] from [retailer], and testing of its functionality. Claims 5 and 12, which depend from claim 1, are also infringed because the [Product] additionally includes [features corresponding to dependent claim limitations]. LEGAL CONSEQUENCES This letter provides [Defendant] with actual notice of the 'XXX Patent. Continued manufacture and sale of the [Product] after this notice may constitute willful infringement, exposing [Defendant] to: • Compensatory damages (lost profits or reasonable royalty) under 35 U.S.C. § 284 • Enhanced damages up to 3x for willful infringement • Attorney fees in this exceptional case (35 U.S.C. § 285) • Injunctive relief (35 U.S.C. § 283) DEMAND [Patent Owner] demands that [Defendant]: 1. Immediately cease manufacture, sale, offer for sale, and importation of the [Product] and any other products infringing the 'XXX Patent; 2. Provide a complete accounting of [Product] units manufactured, sold, and in inventory, and all revenue and profits derived therefrom; 3. Contact undersigned within twenty-one (21) days to discuss resolution, including potential licensing. We are prepared to discuss a licensing arrangement that would permit [Defendant] to continue sales of a modified, licensed product. However, if we do not receive a substantive response within the deadline, [Patent Owner] will pursue all available remedies without further notice. Please direct all communications to the undersigned. Sincerely, [Attorney Name] Counsel for [Patent Owner] Enclosures: - U.S. Patent No. X,XXX,XXX - Exhibit A: Claim Chart
Sample 2: Method/Software Patent Demand
[Patent Owner] [Address] [Email / Phone] [Date] [Defendant Company] [Address] Attn: Legal Department Re: Infringement of U.S. Patent No. [X,XXX,XXX] – [Software Product/Service] Dear [Recipient]: [Patent Owner] owns U.S. Patent No. [X,XXX,XXX] (the "'XXX Patent"), covering [description of method/process—e.g., "methods for real-time language translation using neural network models"]. The patent is valid and enforceable. BACKGROUND The 'XXX Patent claims a novel [method/process] that [describe the innovation]. [Patent Owner] developed this technology through [years of R&D / significant investment] and the patent has survived [IPR challenge / reexamination / note if applicable]. INFRINGEMENT ANALYSIS [Defendant]'s [Product/Service Name] infringes method claim [X] of the 'XXX Patent. Based on our review of [Defendant]'s public documentation, API specifications, and testing of the service, the [Product/Service]: Step 1: [How product performs claimed step 1] Step 2: [How product performs claimed step 2] Step 3: [How product performs claimed step 3] Step 4: [How product performs claimed step 4] A detailed claim chart is available upon request. We are confident that discovery would confirm our infringement analysis based on [Defendant]'s internal source code and architecture. In addition, [Defendant] induces infringement by its customers under 35 U.S.C. § 271(b). [Defendant]'s user documentation and tutorials instruct customers to use the [Product/Service] in a manner that performs the claimed method. NOTICE AND WILLFULNESS This letter constitutes actual notice of the 'XXX Patent and [Defendant]'s infringement. Continued operation of the [Product/Service] after receipt of this letter will be deemed willful, subject to enhanced damages up to three times compensatory damages under Halo v. Pulse. PROPOSED RESOLUTION We propose a meeting within the next 30 days to: 1. Present our complete infringement analysis 2. Discuss [Defendant]'s position on validity and infringement 3. Explore licensing terms [Patent Owner] has licensed this technology to [X] companies at commercially reasonable rates. A license would allow [Defendant] to continue its business while fairly compensating [Patent Owner] for use of its innovation. Alternatively, if [Defendant] believes it does not infringe or that the patent is invalid, please provide your analysis so we can evaluate before proceeding. Please respond by [Date – 21 days] to arrange a meeting or provide a substantive response. Sincerely, [Name] [Title] [Contact] Enclosure: U.S. Patent No. X,XXX,XXX
Sample 3: Manufacturing Process Patent Demand
[Patent Owner / Law Firm] [Address] [Date] VIA CERTIFIED MAIL [Defendant Company] [Address] Attn: President / General Counsel Re: Infringement of U.S. Patent No. [X,XXX,XXX] – Manufacturing Process Dear [Recipient]: We represent [Patent Owner], owner of U.S. Patent No. [X,XXX,XXX] covering [manufacturing process description]. We have reason to believe [Defendant] is using a process that infringes this patent to manufacture [Product]. THE PATENTED PROCESS The 'XXX Patent claims an improved method of [manufacturing process] that achieves [benefits—e.g., "30% reduction in material waste while improving tensile strength"]. This process was developed over [X] years at a cost of $[X] million. EVIDENCE OF INFRINGEMENT Based on our investigation, we believe [Defendant] practices the claimed process: • [Defendant]'s products exhibit characteristics consistent with use of the patented process, including [specific observable features] • Industry sources indicate [Defendant] implemented a new manufacturing line in [Year] consistent with our patented approach • [Defendant]'s job postings and publications reference [terminology/techniques] described in our patent • Testing of [Defendant]'s finished products reveals [characteristics indicating use of claimed process] Under 35 U.S.C. § 295, if a patented process is used to make a new product, and there is a substantial likelihood the product was made by the patented process and the patent owner cannot determine the actual process used after reasonable efforts, the product is presumed to have been made by the patented process. DEMAND We demand: 1. Written confirmation of the manufacturing process used for [Product]; 2. Cessation of any infringing process; 3. Discussion of licensing for past and future use. We are prepared to enter into confidential discussions regarding your manufacturing methods and to negotiate a reasonable license if our patent is being used. Please respond within twenty-one (21) days. Failure to respond will be interpreted as unwillingness to resolve this matter, and we will advise our client to pursue federal court litigation. Sincerely, [Attorney Name] Counsel for [Patent Owner]

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