Actor Analysis for Patent Infringement

Due Diligence for Patents – Actor Analysis tells who is the likely infringer.

Actor analysis is often overlooked when valuing inventions for patenting, or for valuing patents once they are issued. With actor analysis, we want to know who is the actual actor that infringes the invention. This analysis often identifies patents that you would not want to have – such as patents that only your customers would infringe. Why would you ever sue your customer? That is usually not a good way to sell your product.

The best way to use actor analysis is to reform your invention so that it focuses products/services/actions that your competitors will produce/provide/perform. For example, an invention may be described as something that your customer may perform using your product. Rather than having claims that only your customer may do, the invention may be reformed to focus on the *features of the product* that the customer may use in the way you describe. By focusing on the features of the product, the actor will be shifted from the customer to the competitor, because the competitor will have to provide that same feature on their product to give the same value to the customer.

Two actor claims are those that require two different people to perform the invention. One actor may be a supplier of a non-reusable part (e.g. a razor) while another may be a supplier of the resusable part (e.g., the razor blades). These types of patents are notoriously hard to enforce, and therefore tend to be worthless.

A better way to focus the claims in the razor example would be to focus on the mechanism that attaches the razor blades to the razor. Two patents (or at least two sets of claims) would be written: one describing only the mechanism on the razor side, and a second describing only the mechanism on the razor blade side. In this way, the two patents could be used to license razor blade manufacturers to provide compatible blades, or to license razor manufacturers when you wish to provide the blades.

A qualitative way to evaluate actors is as follows. The analysis is not a linear analysis with equal differences between each step.

    5. One actor who is a direct competitor and has deep pockets.
    4. One actor who does not compete, but has deep pockets.
    3. One actor who is a customer but has deep pockets.
    2. Two actors, one is a deep pocket competitor.
    1. Two or more actors, all of which are customers or a single actor who does not have deep pockets.

Check out our other posts on Patent Due Diligence.