Only a Right to Exclude
Prejudice in Favor of Protection of Patent Rights
More Protection for Pioneer Patents
More Slack for Major Improvements
Clotting Factor Case
Patent Law Concepts
Defenses to Infringement
Remedies for Infringement
Design and Plant Patents
Not really the same
Can You Get A Patent?
Patentable Subject Matter
Process, machine, manufacture, composition of matter, or improvement therefore
No Abstract Ideas
No Natural Products
No Printed Matter
Must Have Utility
"A patent is not a hunting license."
Must Actually Work
No Perpetual Motion Machines
No More Moral Utility Issue
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
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
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
Can You Exclude A Competitor?
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.
Are the claims consistent with the written description and/or drawings?
The patent case file
Were terms clarified during prosecution?
Were claims narrowed during prosecution?
Just a Picky Examiner
(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
Super Soaker case
Must infringe all elements
If there 5 and you have 4, then no infringement
What was the SS missing?
Internal water chamber
Why Require All Elements to be Infringed?
Usually an improvement to reduce elements
If you infringe all the elements, but add more, you infringe
How do You Avoid This?
Claim for the basic design
Then Basic + Lights
Basic + Water
Basic + Water + Lights
Limited by Prior Art and Enablement
The Doctrine of Equivalents
Is it functionally the same, but literally different?
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
Ph >6 < 9
Ph < 6
Why was > 9 Excluded?
Why was < 6 excluded?
When Do You Judge Equivalence?
At the time of infringement
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
Reward innovation in improving a patent
Scripps Clinic Case
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
Jepson Claims (n38/p284)
Not always necessary
PTO will allow improvement patents
Generates a blocking patent
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
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