The Infringement Continuum

For many years, patent law has struggled with the issue of permissible claim scope. A patent's specification and its claims often suffer from a surprising disconnect. The specification generally describes an invention in terms of one or more specific implementations, suggesting a relatively narrow invention. But claims are drafted far more broadly. They frequently encompass unforeseen variations and even cover after-arising technology. Although there are numerous existing doctrines that try to prevent claims from straying too far from their specification, these doctrines offer binary outcomes ill suited for patent law. Under these doctrines, as a claim encompasses subject matter further and further away from what the specification describes, there is a point where the inventor suddenly loses all rights. These outcomes make sense when all trespasses are considered equal wrongs. However, in reality, there is an infringement continuum. At one end of the continuum, infringement can look exactly like the invention described by a patent. That infringement should be treated far more seriously than infringement that resides at the other end of the continuum and looks very different from the invention. Consequently, I propose a new theoretical framework that ties patent disclosure doctrine to the remedies the law provides. Although I would continue to use the claims to determine infringement, I suggest that the specification be used to assess the remedy. Specifically, I suggest replacing the current lost profits/reasonable royalty framework with one based on royalties that consider disclosure principles. The size of the royalty would be determined by comparing the infringement to the patent specification and adjusting the royalty based on the degree of similarity. The proposal improves on existing doctrines in two fundamental ways. First, instead of offering binary outcomes, the proposed remedies are highly adjustable. Therefore, they are well suited for addressing the full infringement continuum. Second, this proposal does not just focus on the patentee's injury, as does the current law. Rather, it advances the public interest by optimizing incentives for both initial and follow-on innovators.