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Patent Law Overview
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Patent Policy Encourage Innovation Disclose Inventions Limited Time Only a Right to Exclude
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Judicial Construction Prejudice in Favor of Protection of
Patent Rights More Protection for Pioneer Patents More Slack for Major
Improvements Clotting Factor Case
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Patent Law Concepts Patentability Infringement Defenses to Infringement Remedies for Infringement Design and Plant Patents
Not really the same
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Patentability
Can You Get A Patent?
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Patentable Subject Matter Process, machine, manufacture,
composition of matter, or improvement therefore
No Abstract Ideas No Natural Products
Tree bark Mushrooms
No Printed Matter
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Utility Must Have Utility "A patent is not a hunting license.“ Must Actually Work
No Perpetual Motion Machines No More Moral Utility Issue
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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.
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Novelty and Statutory Bars
35 U.S.C. §102
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(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
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(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
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(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
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(f) [derivation] he did not himself invent the
subject matter sought to be patented
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(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
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Infringement Can You Exclude A Competitor?
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Interpretive Sources Claim Language Patent Specification Prosecution History Extrinsic Evidence
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Claim Language What are claims?
See Super Soaker Patent What do the claims claim?
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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.
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Patent Specification Are the claims consistent with the written
description and/or drawings?
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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
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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?
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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?
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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
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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
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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
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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
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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
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The Doctrine of Equivalents
Is it functionally the same, but literally different?
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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
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Warner-Jenkinson Ultra-filtration
Ph >6 < 9 Infringer
Ph < 6 Why was > 9 Excluded?
Prior Art Why was < 6 excluded?
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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?
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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
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“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
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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
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Improvement Patents Jepson Claims (n38/p284)
Special form Not always necessary
PTO will allow improvement patents Generates a blocking patent
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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