Trent West v. Jewelry Innovations Inc. (PDF) 2007 U.S. Dist. LEXIS 54720 Decided July 17, 2007 Judge Fogel Plaintiff is a jeweler who owns a patent on a method for making a ring consisting essentially of tungsten carbide. Plaintiff asserts that the Defendants are importing tungsten carbide rings from China, where the rings are made in violation of the patent. Plaintiffâ��s profits were suffering so he sued and moved for a preliminary injunction. The theory of infringement relies upon 35 USC �§ 295, which states:

In actions alleging infringement of a process patent based on importation, sale, offer for sale, or use of a product which is made from a process patented in the United States, if the court finds ââ?¬â??

(1) that a substantial likelihood exists that the product was made by the patented process; and (2) that the plaintiff has made a reasonable effort to determine the process actually used in the production of the product and was unable so to determine,

the product shall be presumed to have been so made, and the burden of establishing that the product that the product was not so made by the process, shall be on the party asserting that it was not so made.

Although Defendants may very well be infringing Plaintiffâ��s patent rights, Judge Fogel denied the motion for a preliminary injunction due to a lack of evidence. For example, Plaintiff argued that he made a sufficient showing under �§ 295 because Defendant rings are made essentially of tungsten carbide and his patent covers any rings made with tungsten carbide. However, Plaintiff never submitted any evidence that the rings sold by the Defendants in fact consist essentially of tungsten carbide. The legislative history of �§ 295 sheds some light on what showing is necessary to shift the burden to the defendant.

A patentee might show that the patented process was the only known method, or the only commercially practical method, for producing the product, or that the physical evidence, such as the exact chemical composition of the product, indicates the use of the patent process.

Furthermore, Judge Fogel found that Plaintiff�s efforts to determine the alleged infringing process were insufficient. Essentially, Plaintiff sent Defendants written inquiries as to whether the rings are infringing. Plaintiff should have tested the Defendant�s rings and should have invoked some discovery processes. Although the alleged infringement is occurring in China, all the Defendants are located in the United States and subject to the court�s jurisdiction.

Sending a letter of inquiry to each of the Defendants simply is not enough to satisfy the requirements of section 295.