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Law Outlines Patent Law Outlines

Infringement §271 Outline

Updated Infringement §271 Notes

Patent Law Outlines

Patent Law

Approximately 33 pages

Typical US Patent Law outline, contains a checklist of key issues to spot (patentability requirements, infringement, defenses, and so forth), as well as details on key cases and provisions of the patent law about all the main patent law topics. Course also emphasized policy rationales underlying patent law, which is interspersed throughout....

The following is a more accessible plain text extract of the PDF sample above, taken from our Patent Law Outlines. Due to the challenges of extracting text from PDFs, it will have odd formatting:

§271 Infringement

Direct Infringement: Claim Construction

Claim Construction Interpretive Checklist (Philips)

  1. Identify Ambiguity (DO THIS EXPLICITLY ON EXAM; e.g., “right angle border piece” – does that have to be a single piece?

  2. INTERNAL: Words of claims should be given their ordinary meaning in the context of patent documents, as interpreted by PWHOSITA (well, as judge playing that role). Maybe the ordinary meaning of the words is mere surplusage.

  3. Read the specification

    1. Check for definition (Lexicographer)

    2. Check how the term is used, check the example-usage as well

    3. Don’t import limitations from the specification to the claims

    4. Look at the purpose of the invention (the problem being solved) as described in the specification

    5. Disclaim subject matter in a claim (rare)

  4. Prosecution history and file wrapper also can provide important information for interpretation, but less important than claim language itself

    1. Doctrine of prosecution history estoppel. Prevents people from asserting doctrine of equivalence to have a broader claim scope than they filed with PTO.

    2. Doctrine of Equivalence DOES NOT APPLY HERE.

  5. Extrinsic evidence, such as journals, expert testimony, and technical dictionaries

Canons of Construction:

  • Usual statutory interpretation techniques

  • Claim Differentiation

  • Narrow construction to save the patent from invalidity

  • Philips v. AWH (Fed Cir. En Banc 2005)

    • Interpretive Checklist; see above

  • Unique Concepts v. Brown (Fed Cir 1991)

    • Invention: Build-your-own frame with border piece

    • Apply the things, above.

Direct Infringement: Doctrine of Equivalents

STEPS TO GO THROUGH:

  1. Which one, or multiple, claims are not met literally. What portions of the claim language is the defendant escaping?

  2. For that element —Triple Identity Test: substantially the same function in substantially the same way to obtain substantially the same result

  3. Could claim have been drafted at time of drafting expansively enough to cause literal infringement (prior art, be nonobvious or non-novel, etc.)

  4. Is the patentee barred from raising this argument because of patent prosecution estoppel?

    1. Was the language changed/amended because of PTO action?

      1. IF YES, Presumption of no Doctrine of Equivalents.

      2. To Rebut: have to show that the new application was unforeseeable, tangential, or unreasonable to expect the patentee to draft a claim that would include this equivalent (i.e., if there’s language that wouldn’t properly cover it).

Apply to each and every separate element of the patent. Not the claim as a whole, but to each element. Does the alleged infringing product literally infringe or DoE infringe.

  • Wilson Sporting Goods v. David Geoffrey (Fed Cir 1990)

    • Invention: Golf ball dimple structure

    • Triple identity test: performing substantially the same function in substantially the same way to obtain substantially the same result

    • Hypothetical claim test:

      • Formulate claims which are just barely sufficient in scope to literally cover the accused product (this is essentially where you presume your equivalent would reach)

      • If PTO wouldn’t have allowed hypothetical claims over the prior art, allowing coverage under the doctrine of equivalents would be improper (since why would we grant greater breadth under doctrine of equivalents than the doctrine of equivalents allows?)

      • If PTO would have allowed hypothetical claims, prior art isn’t a bar to doctrine-of-equivalents infringement

  • Festo (US 2002, Kennedy)

    • Prosecution History Estoppel: use of doctrine of equivalents to reach things which were earlier disclaimed raises a presumption of invalidity, which may be overcome:

      • If unforeseeable at the time you disclaimed the language and wasn’t something a competent practitioner should have spotted (after-rising technolog); or

      • If the amendment is tangential (read: entirely unrelated) in relation to the equivalents; or

      • If, at time of amendment, PHOSITA could not reasonably have been expected to draft a claim that would literally encompass the equivalent in question.

Direct Infringement: Means-Plus-Function Claims

  • Basics:

    • Basically doctrine of equivalents for a given element.

    • Apply only to purely functional limitations that do not provide structural limitations; made on an element-by-element basis.

    • Construed to cover corresponding structure, material, or acts described in the specification (and equivalents thereof at time of filing).

    • Single means claims (that claim all ways of doing a specified function) are invalid.

  • Al-Site Corp v. VSI (Fed Cir 1999)

    • HOLD: Using the word “means” leads to a presumption that it’s M+F claim.

    • M+F confines infringement to known interchangeables of the disclosure at the time of filing.

    • After arising technology counts under DoE but not M+F

    • §112 restricts M+F claims, DoE expands enforceability of claim terms

    • For M+F it has to perform exactly (not substantially) the same function.

    • Slight difference: M+F can’t reach after-rising technology; DoE can.

Indirect Infringement

§ 271(b): Inducing Infringement:

  • (1) someone else is directly infringing.

  • (2) Defendant actively induced the act of infringement

    • Not really talk about what actively induce mean – advertising, instructions, etc.

  • (3) Had to have known about the patent AND known that the direct infringement would result

§ 271(c): Contributory infringement:

  • (1) Show direct infringement

  • (2) Supplied a component that is a material part of the invention

  • (3) Doesn’t have substantial noninfringing uses

  • (4) Knowledge of the Patent and the capability of underlying infringing act

  • STATUTE: § 271

    • 271(a): Standard patent infringement. Literal claim infringement

    • 271(b) – (d): Added later because courts...

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