Intellectual Property

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Intellectual Property

• Boston College Law School
• February 23, 2009
• Patent Infringement

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Infringement

• 35 U.S.C. 271
• (a) Except as otherwise provided in this title,
  whoever without authority makes, uses, offers to
  sell, or sells any patented invention, within the
  United States or imports into the United States
  any patented invention during the term of the
  patent therefor, infringes the patent.

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Patent No. 5,205,473
4
Patent No. 5,205,473

• What is claimed is
• 1. A recyclable, insulating beverage container
  holder, comprising
• a corrugated tubular member comprising
• cellulosic material and at least a first opening
  therein for receiving and retaining a beverage
  container, said corrugated tubular member
  comprising
• fluting means for containing insulating air said
  fluting means comprising fluting adhesively
  attached to a liner with a recylable adhesive

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Phillips v. AWH

• We claim
• 1. Building modules comprising in combination,
• an outer shell ,
• sealant means and
• further means disposed inside the shell for
  increasing its load bearing capacity comprising
  internal steel baffles extending inwardly from
  the steel wall shells

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Sources of Interpretation

• Claim language
• Patent specification
• Prosecution history
• Extrinsic evidence
• Expert testimony
• Dictionaries
• Treatises

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Canons of Construction

• Relationship of claims to specification
• Can refer to specification for express definition
• Can refer to specification where ambiguity
• Claim differentiation
• Interpret so as to avoid redundant claims
• Presumptions about breadth
• Interpret to preserve validity
• Where two equally valid, adopt narrower one

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Larami v. Amron
SuperSoaker 200
129 Patent
Claim 1 a toy comprising an elongated housing
case having a chamber therein for a liquid
tank, a pump including a piston having an
exposed rod piston rod facilitating manual
operation for building up an appreciable amount
of pressure in said chamber for ejecting a stream
of liquid therefrom
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Doctrine of Equivalents

• Tests
• Substantially same function, way, result
• Insubstantial differences
• Evidence
• Circumstances, purpose, prior art
• Would PHOSITA have viewed interchangeable?
• Details
• All-elements rule
• Measured at time of infringement

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Patent No. 5,205,473
11
Patent No. 5,205,473

• What is claimed is
• 1. A recyclable, insulating beverage container
  holder, comprising
• a corrugated tubular member comprising
• cellulosic material and at least a first opening
  therein for receiving and retaining a beverage
  container, said corrugated tubular member
  comprising
• fluting means for containing insulating air said
  fluting means comprising fluting adhesively
  attached to a liner with a recylable adhesive

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Patent No. 5,425,497
13
Doctrine of Equivalents

• Limitations
• Claim on prior art
• Prosecution history estoppel
• Disclosed but not claimed

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Warner Jenkinson
Hilton Original
Hilton Amended
Booth
Warner
pH
9.0 8.0 7.0 6.0 5.0
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Festo

• Two issues
• What kinds of amendments trigger estoppel?
• Does estoppel apply to all equivalents based on
  the amendment?

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Doctrine of Equivalents
Claims
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Patent No. 5,205,473
18
Patent No. 5,205,473

• What is claimed is
• 1. A recyclable, insulating beverage container
  holder, comprising
• a corrugated tubular member comprising
• cellulosic material and at least a first opening
  therein for receiving and retaining a beverage
  container, said corrugated tubular member
  comprising
• fluting means for containing insulating air said
  fluting means comprising fluting adhesively
  attached to a liner with a recylable adhesive

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Patent No. 5,425,497
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Administrative

• Assignment for next class
• Finish IV
• In IV.C.3, skip
• Subject Matter Disclosed But Not Claimed
• Johnson Johnson