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