Patent Law Overview
Patent Policy
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Encourage Innovation
Disclose Inventions
Limited Time
Only a Right to Exclude
Judicial Construction
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Prejudice in Favor of Protection of
Patent Rights
More Protection for Pioneer Patents
More Slack for Major Improvements
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Clotting Factor Case
Patent Law Concepts
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Patentability
Infringement
Defenses to Infringement
Remedies for Infringement
Design and Plant Patents
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Not really the same
Patentability
Can You Get A Patent?
Patentable Subject Matter
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Process, machine, manufacture,
composition of matter, or improvement
therefore
No Abstract Ideas
No Natural Products
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Tree bark
Mushrooms
No Printed Matter
Utility
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Must Have Utility
"A patent is not a hunting license.“
Must Actually Work
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No Perpetual Motion Machines
No More Moral Utility Issue
6,293,874
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User-operated amusement apparatus for
kicking the user's buttocks
An amusement apparatus including a useroperated and controlled apparatus for selfinfliction 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]
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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]
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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]
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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]
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he did not himself invent the subject
matter sought to be patented
(g) [priority; first to
invent]
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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
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Can You Exclude A Competitor?
Interpretive Sources
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Claim Language
Patent Specification
Prosecution History
Extrinsic Evidence
Claim Language
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What are claims?
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See Super Soaker Patent
What do the claims claim?
Patentee as Lexicographer
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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
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Are the claims consistent with the written
description and/or drawings?
Prosecution History
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File Wrapper
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The patent case file
Were terms clarified during prosecution?
Were claims narrowed during
prosecution?
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Prior Art?
Enablement?
Just a Picky Examiner
Extrinsic Evidence
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(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
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Facts – Jury
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Law – Judges
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Great deference to jury finding on appeal
Little deference to trial judge on appeal
What is claim interpretation?
Claims as Law
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What was the rule when the constitution
was ratified?
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Infringement was tried to a jury
There were no claims
Claims Interpretation is Law - Markman
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Judges are skilled in figuring out complex
documents
Impact of Markman
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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
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Super Soaker case
Must infringe all elements
If there 5 and you have 4, then no
infringement
What was the SS missing?
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Lights, noise
Internal water chamber
Why Require All Elements to
be Infringed?
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Encourages innovation
Usually an improvement to reduce
elements
If you infringe all the elements, but add
more, you infringe
How do You Avoid This?
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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
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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
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Ultra-filtration
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Infringer
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Ph < 6
Why was > 9 Excluded?
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Ph >6 < 9
Prior Art
Why was < 6 excluded?
When Do You Judge
Equivalence?
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At the time of infringement
Why?
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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
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Why does equivalence threaten the
elements rule?
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Can blur the function of individual elements
How does the court deal with this?
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Requires that each element be equivalent
“Reverse” Doctrine of
Equivalents
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(Almost never accepted)
Equivalence is used to broad a claim for
infringement analysis
Reverse Equivalence is used to narrow a
claim
Why?
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Reward innovation in improving a patent
Scripps Clinic Case
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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
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Jepson Claims (n38/p284)
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Special form
Not always necessary
PTO will allow improvement patents
Generates a blocking patent
Contributory Infringement
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It is also illegal to “aid and abet“
infringement
Bard v. ACS
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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