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.
STS 389/2019 and STS 598/2014.