Q: Can you tell me if this is considered a breach of contract or a new patent infringement case? (see below)
I granted a company a "covenant not to sue" for using my valve on beds (and only beds). Now I've discovered they are using my valve on pool toys and balloons. Is this a breach of contract or new patent infringement?
A: It is both, but it is easier to bring an action as a breach of contract. It depends where the covenant was made, i.e. a court order or an agreement.
A:
Sounds to me like pure patent infringement as they do not have protection from the earlier agreement for using the valve on products not covered by the agreement. It would be wise to take the current situation back to the law firm that negotiated the covenant not to sue to examine the precise language defining what was covered. There may have been additional promises made to not use the valve in other products which could give you grounds for breach of contract but your brief statement of the fact pattern does not guarantee that breach of contract exists.
It is possible that the company has found additional prior art and now believes that your patent claims won't be upheld as valid so they feel free to ignore the patent claims. It is possible that they made a small tweak to the design and feel that they are outside the precise language of your claims. You need to have lawyers go through the details of your situation as the details matter.
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