Patent Law
Spring 2008
Class 1: 1.14.08
Professor Merges
Logistics
• Office hours: Mondays, 1:15 – 2:30, or
by appt.
• 438 North Addition
• rmerges@law.berkeley.edu – x 3-6199
Logistics II
• Course mailing list
• Posting selections from PowerPoint
slides
• Website:
http://www.law.berkeley.edu/institutes/
bclt/students/2008_patent_law.htm
Cases to watch – Supreme Court
• (1) Quanta Computer, Inc. v. LG Electronics,
Inc., No. 06-937
• Supreme Court oral argument 1/16/08
• Patent “exhaustion” and 1st sale doctrine
(2) Section 101 cases at the
Federal Circuit
• In re Bilski (SN 08/833,892);
• In re Ferguson (SN 09/387,823)
2 Main Topics Today
• Introduction patent system
• Claims, patent document: how to read
(and write) a patent
Patents in Britain
• Association of patents with corrupt
crown privileges
• End of these abusive practices: the
Statute of Monopolies, 1623
R. Kent Newmyer, Supreme Court Justice
Joseph Story: Statesman of the Old
Republic (UNC Press 1986)
“In these [patent] cases [Story] moved away
from undue reliance on English law in the
direction of an American patent law that
would favor inventors and, following the
spirit of the Constitution, serve national
interest by promoting technological
progress. . . . Story’s authority . . . was of
immense importance in giving legitimacy
to the new position. [H]e was identified by
contemporaries as the pioneer in the
liberalization of American patent law.”
AMES
v.
HOWARD
1 F.Cas. 755 (CCD Mass. 1833)
“The constitution of the United States, in giving authority to
congress to grant such patents for a limited period,
declares the object to be to promote the progress of
science and useful arts, an object as truly national, and
meritorious, and well founded in public policy, as any
which can possibly be within the scope of national
protection. Hence it has always been the course of the
American courts . . . to construe these patents fairly and
liberally, and not to subject them to any over-nice and
critical refinements. . . .; and when the nature and extent of
that claim are apparent, not to fritter away his rights upon
formal or subtle objections of a purely technical
character.”
Historical development of US
patent law
WHO CARES WHAT THOMAS
JEFFERSON THOUGHT ABOUT
PATENTS? REEVALUATING THE
PATENT "PRIVILEGE" IN HISTORICAL
CONTEXT, 92 Cornell L. Rev. 953 (2007)
Adam Mossoff
In canvassing primary historical sources,
… this Article explains how patent rights
were defined and enforced using the
social contract doctrine and the labor
theory of property of natural rights
philosophy. In the antebellum years,
patents were civil rights securing
important property rights--what naturalrights-influenced politicians and jurists
called "privileges."
Patent Document: Main Features
• CLAIMS!
– Very important now, Sup Ct, Federal Circuit
jurisprudence
• Specification
– Key: relationship to claims
– Timing issues
Claim Scope 101
• What is the goal?
– Maximize “SHELF SPACE” you own
• How do you get there?
– By drafting broadest claim(s) possible
Dealing with Prior Art
• Multiple claims
– More variations in scope, more chances to own the
key piece of shelf space
– More chances that at least one claim will end up valid
and valuable
• Disclosure, searches, prosecution
– A complex calculus governs searching for and
including prior art
– Willfull infringement/inequitable conduct
Special case: dependent
claim
“the ____ of claim 1, wherein the _____
[element] comprises ______.”
Dependent claims define subsets of the
claims form which they depend
1. A cupholder comprising a band of
insulating material.
• United States Patent 5,425,497 Sorensen June 20,
1995 Cup holder
• Abstract
• A cup holder is disclosed in the form of a sheet with
distal ends. A web is formed in one of the ends, and a
corresponding slot is formed in the other end such that
the ends interlock. Thus the cup holder is assembled by
rolling the sheet and interlocking the ends. The sheet
can be an elongate band of pressed material, preferably
pressed paper pulp, and is preferably formed with
multiple nubbins and depressions. In one embodiment,
the sheet has a top and bottom that are arcuate and
concentric, and matching webs and cuts are formed in
each end of the sheet, with the cuts being perpendicular
to the top of the sheet.
• Inventors: Sorensen; Jay (3616 NE. Alberta Ct.,
Portland, OR 97211) Appl. No.: 150682Filed: November
9, 1993
“prior Art Chart”
• P. 45
• Multiple features, compared to claim
United States Court of Appeals for the Federal
Circuit
04-1097
INNOVA/PURE WATER, INC.,
Plaintiff-Appellant,
v.
SAFARI WATER FILTRATION SYSTEMS, INC.
(doing business as Safari Outdoor Products),
Defendant-Appellee.
Safari's accused product is a water bottle with a
tube of filtering material, a bottle cap, and a
valve. In operation, the tube of filtering material
is suspended in the mouth of the bottle by
means of an annular flange that rests on the
mouth of the bottle. The tube of filtering material
is mechanically sealed in position when the
bottle cap is screwed over the mouth of the
bottle, thereby contacting the annular flange and
fixing the tube of filtering material in position to
filter water before it exits the bottle.
In part, the independent claims at issue in the '759 patent
state:
1. A filter assembly for use with a bottle having a
circular cross-section neck or open end to
simultaneously cap the neck or open end and filter
liquid poured out of the bottle through the neck or
open end, comprising:
a tube of filtering material . . . a cap . . . said cap having
first and second substantially opposite surfaces . . . a
manual valve operatively associated with said cap, in
fluid communication with said tube of filtering material
and manually movable between a position defining
means for allowing liquid flow through said tube and a
position defining means not allowing liquid flow through
said tube; and
said tube operatively connected to said cap second
surface at said tube second open end . . . .
The district court construed the
claim term "operatively connected"
to require that the tube of filtering
material be affixed to the cap, i.e.,
"not merely adjoining or abutting,
but affixing the tube to the cap by
some tenacious means of physical
engagement that results in a
unitary structure."
Concluding that the annular flange
arrangement of Safari's accused
product is such that the filter tube
is "never affixed to the cap by
some tenacious means of physical
engagement as required by claims
1 and 15," the district court denied
Innova's motion for summary
judgment and granted Safari's
motion for summary judgment of
noninfringement.
The district court erred. The
asserted claims do not require
that the filter tube and cap be
affixed to one another in a
manner that results in the two
components forming a unitary
structure.
[T]he district court was correct to look to
the ordinary meaning of the terms
"operatively" and "connected" and we
discern no error in the district court's
initial understanding that "the ordinary
and customary meaning of 'operatively
connected' requires the . . . linking
together of the tube and the cap to
produce the intended or proper effect."
But the district court erred when it
proceeded beyond this plain meaning
based on the "[e]xamples of means for
connecting the tube to the cap
disclosed in the '759 patent," all of
which reflect a "physical engagement
[between the tube and the cap] that
results in a unitary structure."
International Harmonization
• 1880s
• 1990s
• Future – consolidation? Worksharing
among Big 3 patent offices?