Patent Law
Fall 2010
Class 1: 8.17.2010
Professor Merges
Logistics
• Office hours: Tuesdays, 1:30 – 2:40, 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/courses_html
www.law.berkeley.edu/instit
utes/bclt
Logistics III
• bSpace course page
– Syllabus
– Email archive
– Seating Chart
• Note the schedule
Developments to watch –
legislation
• Patent Reform Bill, may
pass this fall after
election; will probably be
st
modest (possibly 1 to file
priority, reexam reform,
other detailed provisions)
Where to follow cases,
developments
• Patently-O Blog
• BNA Patent Trademark Copyright
Journal Daily
• US Patent Quarterly (BNA)
2 Main Topics Today
• Introduction patent
system
• Claims, patent document:
how to read (and write) a
patent
Venetian Patents
Glassmaking Tools
Patents in Britain
• Association of patents with
corrupt crown privileges
• End of these abusive
practices: the Statute of
Monopolies, 1623
Opposing principles in US
Patent Law
• Technology as a force for good in a
wild, untamed wilderness where labor
is scarce
• Patents as the remnants of royal
privilege; vestige of discredited
monarchy and vested power
Thomas Jefferson v.
Alexander Hamilton
If nature has made any one thing less
susceptible than all others of exclusive
property, it is the action of the thinking
power called an idea, which an
individual may exclusively possess as
long as he keeps it to himself; but the
moment it is divulged, it forces itself
into the possession of every one, and
the receiver cannot dispossess himself
of it. Its peculiar character, too, is that
no one possesses the less, because
every other possesses the whole of it.
He who receives an idea from me, receives
instruction himself without lessening mine;
as he who lights his taper at mine receives
light without darkening me. That ideas
should freely spread from one to another …
for the moral and mutual instruction of man,
and improvement of his condition, seems to
have been peculiarly and benevolently
designed by nature, when she made them,
like fire, expansible over all space, without
lessening their density at any point, and like
the air . . . incapable of confinement or
exclusive appropriation. Invention, then,
cannot be a subject of property.
Letter from Thomas Jefferson
to Isaac MacPherson, Aug.
13, 1813, reprinted in The
Portable Thomas Jefferson
531 (Merrill D. Peterson ed.
Penguin Books 1977)
“Jeffersonian Moments” in
US Patent Law
• Early federal period (17901800); Jacksonian era
(1830s); Progressive era
(1895-1915); New Deal
period (1932-1945); 1960s
and 1970s
William O. Douglas
Alexander Hamilton
Technology and the primeval
forest
“Dark forests from the view recede,
and herds and flocks in safety
feed, and plenty crown a cheerful
home where prowling wolves were
wont to roam.”
-- Sturbridge, Massachusetts
Centennial, July 4, 1838
Hamiltonian moments in US
Patent Law
• Federalist period (18001830); Mid-nineteenth
century (1865-1890);
1920s; 1950s; 1980-?
Justice
Joseph Story
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.”
Patent Document: Main Features
• CLAIMS!
– Very important now, Sup Ct, Federal
Circuit jurisprudence
• Specification
– Key: relationship to claims
– Timing issues
Cupholder – claim 1
Dependent Claims
Claim Scope 101
• What is the goal?
–Maximize “SHELF
SPACE” you own
• How do you get there?
– By drafting broadest claim(s) possible
More space,
more $$!
P. 36: “A cup holder
comprising a band of
insulating material.”
Claim Breadth
Short, broad
claim
“Band of
insulating
material”
Band
withOUT
interlocking ends
Band
with
interlocking ends
NO
INFRINGEMENT
OF NARROW
CLAIM
The “Noon” Patent – p. 44
P. 46: “A cupholder comprising a strip of
insulating material, said strip having two
ends capable of interlocking to form a
band for receiving a cup.”
P. 36: “A cup holder
comprising a band of
insulating material.”
“Less is More”
Narrower,
longer claim
Insulating
Band,
interlocking
ends
Band
without
interlock
-ing
ends
Claim 2): All
Shirts
3) “All
red
shirts”
Broadest
Claim (Claim
1): All
Clothing
Cupholder – claim 1
Dependent Claims
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
“picture
claim”
Broadest
Claim (Claim
1)
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.
Claim 1
‘473 Coffin
Sr. –
tubular
preformed
Claim 1
Claim 1
Noon
prior
art
holder
Claim 1
‘473 Coffin
Sr. –
tubular
preformed
Noon
prior
art
holder
“Less is More” (Enforceable)
‘473 Coffin
Sr. –
tubular
preformed
Narrower,
longer claim
Corrugated
paper strip
w/ “slotted”
closure
Noon
prior
art
holder
• 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
Narrowing
Amendment
“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."
More space,
more $$!
International Harmonization
• 1880s
• 1990s
• Future – consolidation? Worksharing
among Big 3 (soon – Big 4?) patent
offices?