Intellectual Property - Winter 2002

Patent Law Overview

Patent Policy

Encourage Innovation

Disclose Inventions

Limited Time

Only a Right to Exclude

Judicial Construction

Prejudice in Favor of Protection of Patent Rights

More Protection for Pioneer Patents

More Slack for Major Improvements

Clotting Factor Case

Patent Law Concepts

Patentability

Infringement

Defenses to Infringement

Remedies for Infringement

Design and Plant Patents

Not really the same

Patentability

Can You Get A Patent?

Patentable Subject Matter

Process, machine, manufacture, composition of matter, or improvement therefore

No Abstract Ideas

No Natural Products

Tree bark

Mushrooms

No Printed Matter

Utility

Must Have Utility

"A patent is not a hunting license."

Must Actually Work

No Perpetual Motion Machines

No More Moral Utility Issue

6,293,874

User-operated amusement apparatus for kicking the user's buttocks

An amusement apparatus including a user-operated and controlled apparatus for self-infliction of repetitive blows to the user's buttocks by a plurality of elongated arms bearing flexible extensions that rotate under the user's control.

Novelty and Statutory Bars

35 U.S.C. §102

(a) [novelty]

the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent

(b) [statutory bar]

the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States

(e) [secret prior art]

The invention was described in a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent

(f) [derivation]

he did not himself invent the subject matter sought to be patented

(g) [priority; first to invent]

before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other

Infringement

Can You Exclude A Competitor?

Interpretive Sources

Claim Language

Patent Specification

Prosecution History

Extrinsic Evidence

Claim Language

What are claims?

See Super Soaker Patent

What do the claims claim?

Patentee as Lexicographer

Has the Patentee defined terms so they do not have their ordinary dictionary meaning?

This is allowed, but you are stuck with it if you do it.

Patent Specification

Are the claims consistent with the written description and/or drawings?

Prosecution History

File Wrapper

The patent case file

Were terms clarified during prosecution?

Were claims narrowed during prosecution?

Prior Art?

Enablement?

Just a Picky Examiner

Extrinsic Evidence

(Only for figuring out the patent)

Should experts be allowed to testify about the meaning of claims and terms?

Should documents other than the patent and the file wrapper be allowed as evidence?

The Role of the Courts

Facts - Jury

Great deference to jury finding on appeal

Law - Judges

Little deference to trial judge on appeal

What is claim interpretation?

Claims as Law

What was the rule when the constitution was ratified?

Infringement was tried to a jury

There were no claims

Claims Interpretation is Law - Markman

Judges are skilled in figuring out complex documents

Impact of Markman

Infringement depends on meaning of the claims

Trial judge instructs on the meaning of the claims

Jury decides infringement

Appeals court reinterprets claims, which nullifies the verdict

Literal Infringement

Super Soaker case

Must infringe all elements

If there 5 and you have 4, then no infringement

What was the SS missing?

Lights, noise

Internal water chamber

Why Require All Elements to be Infringed?

Encourages innovation

Usually an improvement to reduce elements

If you infringe all the elements, but add more, you infringe

How do You Avoid This?

Nested claims

Claim for the basic design

Then Basic + Lights

Basic + Water

Basic + Water + Lights

Etc.

Limited by Prior Art and Enablement

The Doctrine of Equivalents

Is it functionally the same, but literally different?

Graver Tank

Prior art teaches alkaline metals and manganese can be used as flux

Patent is a mix

Infringing product substitutes a different metal in the mix

Court said it was equivalent

Warner-Jenkinson

Ultra-filtration

Ph >6 < 9

Infringer

Ph < 6

Why was > 9 Excluded?

Prior Art

Why was < 6 excluded?

When Do You Judge Equivalence?

At the time of infringement

Why?

If you knew at the time of the patent, you would have included it

What if you did know and did not include it?

What if you include stuff you do not claim?

Equivalence and Elements

Why does equivalence threaten the elements rule?

Can blur the function of individual elements

How does the court deal with this?

Requires that each element be equivalent

"Reverse" Doctrine of Equivalents

(Almost never accepted)

Equivalence is used to broad a claim for infringement analysis

Reverse Equivalence is used to narrow a claim

Why?

Reward innovation in improving a patent

Scripps Clinic Case

Clotting factor

Scripps had a patent on the product from blood

Genetech wanted a patent on a genetically engineered version

Product patents are usually independent of the source

This was so much purer and more effective that court found it patentable

Improvement Patents

Jepson Claims (n38/p284)

Special form

Not always necessary

PTO will allow improvement patents

Generates a blocking patent

Contributory Infringement

It is also illegal to "aid and abet" infringement

Bard v. ACS

ACS told docs to use its catheter in ways infringed Bard's patent

Defense is non-infringing use for defense

Congress let the docs off the hook

VCR - no / DAT - yes