Agenda for 5th Class

1
Agenda for 5th Class

• Voice Recorder on
• Infringement
• Literal Infringement
• Doctrine of Equivalents
• Prosecution History Estoppel
• Defenses
• Invalidity
• Experimental Use
• Inequitable Conduct
• Implied License and First Sale
• Laches
• Patent Misuse

2
Administrative Stuff I

• Sign-in sheet
• If you think you are the last person to sign,
  bring sheet up to me
• Even in middle of class
• If doesnt get to you, stay after class
• Do not wait to email me
• New email address for papers
• klermanpapers_at_law.usc.edu
• Handouts
• Slide handouts
• Festo assignment
• Model Egbert answer to web
• Bonus points if you find non-trivial errors

3
Review

• Statutory Bars
• Applicant barred from receiving patent if
  invention used publicly, on sale, or described in
  printed publication more than one year before
  application for patent
• public use means used by others without secrecy
  and not for testing purposes
• May include secret commercial use
• printed publication means anything accessible
  to the public
• Nonobviousness
• Invention patentable only if not obvious to those
  skilled in the relevant field (art)
• Note assume person of ordinary skill is
  omniscient about prior art
• Helps ensures patent monopoly issues only to
  inventions that would not be made anyway
• Objective factors commercial success, long felt
  unsolved need, failure of others

4
Homework Questions I

• 1) Find the patent at issue in Amazon.com v.
  Barnesandnoble.com.
• Hyperlink
• a) How many claims does the patent have?
• b) Did anything surprise you about the patent?
• 2) Which court do you think wrote the more
  persuasive opinion, the district court or the
  appellate court? Which is better as a matter of
  policy?
• 3) Do you think business patents are a good idea?
  What special problems do they present?

5
Homework Questions II

• 4) Do you think Jeff Bezoss suggestions are
  good?
• 5) Can you think of other improvements to the law
  relating to business patents?
• 6) Why do you think Bezos made these suggestions?
  Arent they contrary to his interest?
• 7) Priceline has a patent on a web-based reverse
  auction. Do you think it meets the
  non-obviousness requirement? If you are
  unfamiliar with reverse auctions, go to
  www.priceline.com and click on New to priceline?
  Find out more.

6
Infringement

• Activities which infringe
• Making, using, offering to sell, or selling
  patented invention
• Infringement is strict liability
• Ignorance of patent is not a defense
• Independent invention is not a defense
• 2 kinds of infringement
• Literal infringement
• Infringement by doctrine of equivalents

7
Claims Elements I

• Patent must contain at least one claim
• Usually contains several claims
• Claims are numbered and clearly distinct
• Infringement of single claim is sufficient for
  infringement
• Need not infringe two or all claims
• Each claim usually contains several elements
• Infringement requires correspondence between each
  element of a claim and an element of the
  allegedly infringing product or process
• In literal infringement, the correspondence is
  exact
• Accused device or process has element exactly
  matching description in a patent claim
• In doctrine of equivalents infringement,
  correspondence is not exact, but elements are
  similar and equivalent
• Elements in patent and accused device or process
  perform the same function in the same way to
  achieve the same result

8
Elements of Amazon Patent, Claim 1

• 1. A method of placing an order for an item
  comprising
• under control of a client system,
• displaying information
  identifying the item and in response to only a
  single action being performed, sending a request
  to order the item along with an identifier of a
  purchaser of the item to a server system under
  control of a single-action ordering component of
  the server system, receiving the request
  retrieving additional information previously
  stored for the purchaser identified by the
  identifier in the received request and
  generating an order to purchase the requested
  item for the purchaser identified by the
  identifier in the received request using the
  retrieved additional information and
  fulfilling the generated order to complete
  purchase of the item whereby the item is
  ordered without using a shopping cart ordering
  model.

9
Doctrine of Equivalents

• Patent drafting is extremely difficult
• Nearly impossible to described invention in a way
  the does not leave room for inventor of ordinary
  skill to copy invention with insubstantial
  differences that would avoid literal
  infringement
• If patent infringement were so easy to avoid,
  patents would be nearly worthless and would fail
  to provide incentive for invention
• Doctrine of equivalents intended to ensure that
  patents cannot be easily evaded

10
After Arising Technology

• Original application for patent on personal
  computer
• An digital electronic processing device,
  keyboard, tape-storage device, and video display,
  connected together in such a way as to enable a
  variety of computing tasks, such as
  word-processing, spreadsheets, and presentations.
• Tape storage was only known mass storage at time
  of application
• Sometime later, hard drive is invented
• Does PC with hard drive infringe patent?
• Not literally
• But would infringe under doctrine of equivalents
• because person of ordinary skill at the time of
  infringement would know that was possible to
  substitute a hard drive for a tape storage device
• Of course, maker of PC with hard drive would have
  to get a license from person holding patent on
  hard drive as well

11
Claim Prosecution

• Patent applicant submits patent application to
  Patent and Trademark Office (PTO)
• Application is reviewed by a patent examiner
• Review process involves back-and-forth between
  applicant and examiner
• Examiner may disallow one or more claims
• Applicant may amend claims in response to
  examiner disallowance
• If application rejected, applicant can appeal to
  Board of Patent Appeals and Interferences
• If Board upholds rejection, application can
  appeal to federal district court in the District
  of Columbia
• Or appeal directly to US Court of Appeals for
  Federal Circuit

12
Prosecution History Estoppel

• If, during claim prosecution, patent applicant
  amends and narrows claim in response to patent
  examiner objection, patentee is sometimes
  estopped from using the doctrine of equivalents
  for that claim against a device or process that
  would have literally infringed the claim as
  originally drafted but would not literally
  infringe the claim as amended.
• Basic idea
• If the patent examiner told the applicant she
  could not get a broad patent
• Patentee cannot use the doctrine of equivalents
  to get the broad patents that the patent examiner
  thoughts she was not entitled to
• Also called file wrapper estoppel
• b/c correspondence describing amendments and
  correspondence btw applicant and examiner is
  called file wrapper

13
Warner-Jenkinson, 520 US 17 (1997)

• Hilton Davis applied for a patent on
  ultra-filtration process
• Original application did not specify pH levels at
  which process worked
• Patent examiner rejected application, because of
  prior art of similar process at pH9
• So applicant amended application restricting
  application to ultrafiltration process using pH
  levels between 6 and 9
• not clear why included lower bound of 6
• Warner-Jenkinson independently invented
  ultrafiltration process similar to Hilton-Daviss
  using pH of 5
• Hilton Davis sued

14
Warner-Jenkinson II

• Clear that no literal infringement
• Very plausible claim for infringement under
  doctrine of equivalents
• Because processes very similar, except for pH
  level
• Warner-Jenkinson argued for prosecution history
  estoppel
• Hilton Davis had amended claim in response to
  patent examiner disallowance
• Cannot now use DOE to get broad claim rejected by
  examiner
• Hilton Davis argued that prosecution history
  estoppel would prevent use of DOE for process at
  pH 9
• Because that was prior art that examiner was
  concerned to protect
• But that prosecution history estoppel was
  irrelevant for DOE for process at pH

15
Warner-Jenkinson III

• Did not clearly resolve case
• Left issues relating to prosecution history
  estoppel to be resolved later in Festo (case for
  next class)
• But did clarify many issues relating to doctrine
  of equivalents
• Intent irrelevant
• Since main point of DOE is to unscrupulous
  copiers
• Might have thought that intent was requirement
• Or at least a factor
• BUT Supreme Court says intent irrelevant
• keeps bright line rule
• Like rest of patent law, intent/knowledge is
  unnecessary for infringementy
• simplifies litigation
• strengthens patent owner's rights

16
Warner-Jenkinson IV

• Time for determining equivalents is time of
  infringement
• 2 possible times for determining equivalents
• Equivalents disclosed or known at time of patent
• Equivalents known to person skilled in art at
  time of infringement
• Supreme Court chooses latter interpretation
• After arising technologies can be equivalents
• See hypothetical about tape drive / hard disk
  drive
• 2 different tests for doctrine of equivalents
• 3-part test -- function, way, result
• doctrine of equivalents applies when accused
  device or process performs same function, in same
  way, to achieve same result as patented invention
• Insubstantial differences test
• doctrine of equivalents if there are
  insubstantial differences between patent and
  accused device or process
• Supreme Court refuses to choose
• Both approaches correct, useful in different
  circumstances

17
Warner-Jenkinson V

• Element by element approach
• 2 possible ways of applying 3-part test
• look to function, way, and result of whole
  invention
• DOE applies if accused device or process performs
  same function in same way to achieve same result
  as patented invention
• Look to function, way and result of each element
• DOE applies if aspect of accused device or
  process performs same function in same way to
  achieve same result as each element of patented
  invention
• Similarly, 2 possible ways of applying
  insubstantial diffences test
• Ct endorses element-by-element approach to both
  tests

18
Defenses I

• Invalidity
• When someone is sued for patent infringement,
  defendant always has option of arguing that a
  patent is invalid
• Invention not proper subject matter, obvious,
  fails statutory bars, etc
• Patent is accorded presumption of validity
• A defendant can rebut the presumption by clear
  and convincing evidence
• Experimental Use
• Very narrow
• Protects only actions performed for amusement,
  to satisfy idle curiosity, or for strictly
  philosophical inquiry
• Does not apply to academic research. Madey v.
  Duke (Fed. Cir. 2002)
• Certainly does not apply to R D by for-profit
  firm
• Except for statutory exemption relating to some
  kinds of pharmaceutical research

19
Defenses II

• Inequitable Conduct
• Patent may be unenforceable if applicant
  submitted false information, made
  misrepresentations or failed to disclose
  important information during prosecution of
  patent.
• Implied license and first sale
• Sale of patented device implies license to use,
  repair, and sell device
• But not make copies of it or otherwise use
  patented invention
• Subsequent buyers also may use, repair and sell
  article
• These rights may be altered by contract

20
Defenses III

• Laches
• If patentee unreasonably delays bringing
  infringement action, patentee may lose rights
• Especially relevant where defendant has made
  investments which would be made worthless by
  successful infringement suit
• Patent misuse
• Use of patent to violate antitrust laws or
  otherwise stifle competition may bar enforcement
• Some forms of tying may be misuse
• Requiring purchasers of patented product to
  purchase unpatented products from patentee