Enforcement Outline

Patents

Infringement

- Literal infringement

Larami

- Non Literal infringement: Doctrine of Equivalents

• Limiting Principles

  • All Elements (All-Limitations) Rule

  • Prosecution History Estoppel

    • Festo Corp Presumption

    • Overcoming the Presumption

      • 1. Unforseeable equivalents

      • 2. Tangential amendments

      • 3. Amendments for “other reasons”

  • Prior art rule

    • Wilson Sporting Goods

  • Public dedication rule (Johnson & Johnson Associated Inc. v. RE Service Co)

    • Subject matter – Disclosed but not claimed

• Means + Function Claims

• After Arising Technologies

• Reverse doctrine of equivalents

- Direct infringement

1. Definition:

35 U.S.C. 271 Infringement of patent.

(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.

• i. Without authority

  • Without a license

• ii. Infringing conduct

  • a. Makes

  • b. Uses

  • c. Offers to sell

    • Sale will occur before the expiration term of the patent (§ 271 (i))

  • d. Sell

  • e. Import into the United States

• iii. Regarding a patented invention

  • a. During the term of the patent

  • b. Must meet each and every element of the claims, or its equivalents

    • eg. A -A

      • B –B

      • C –C

      • D –D’ (equivalent)

    • Absence of one element = no infringement

• 2. Product by process (Process patents and infringement with products)

35 U.S.C. 271 (g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use or retail sale of a product unless there is no adequate remedy under this title for infringement on account of the importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will, for purposes of this title, not be considered to be so made after —

(1) it is materially changed by subsequent processes; or

(2) it becomes a trivial and nonessential component of

another product.

• i. Infringing conduct does include uses, offers to sell, sells, and imports

  • Does not include gathering information (using the patented method) abroad, and sending results to the US by email (Bayer AG v. Housey Pharmaceutical 2003)

    • The infringing conduct is importing a physical product, not information

• ii. Of a product made by a patented process, excluding:

  • (1) Products materially changed by subsequent processes

    • Covers importing a product which only use is for an infringing product, if it was materially changed

      • Eg. Chemical Cefaclor made with patented process for compound 6 (Eli Lilly v. American Cyanamid, 1996)

      • Not plasmid into hGH: a real difference must exist between the product imported, offered for sale, sold or used in the United States, and the products produced by the patented process (Bio-technology General Corp. v. Genentech, 1996)

or

• (2) Products that became trivial and nonessential component of another product.

• iii. No remedy may be granted for noncommercial use or retail sale of the product unless there is no other adequate remedy under this title

• (§295) Burden of proof

• 3. International direct infringement

  • Finding the locus of the infringement:

    • Problematic for network inventions, where steps are performed in different countries (NTPV v. Research in Motion, 2005)

      • Canada: Brains, process method

        • USA: system –user presses the button

      • H: No infringement if parts of the claim are not performed in the US

      • Try to draft to get it all in one country

    • Problems if not all the countries have the same criteria for locus

  • No infringement if it’s in temporary presence (§ 272, Brown v. Duchesne 1856)

  • If sent outside the US:

35 U.S.C. 271 (f)(1) Whoever without authority supplies or causes to be

supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

• i. Without authority

  • Without a license or exhaustion

• ii. Infringing conduct

  • a. Supply or Cause to be supplied, in or from the United States

+

• b. In such manner as to actively induce combination of components outside the US

  • In a manner that would infringe if combination occurred within the US

• iii. Regarding all or a substantial portion of the components of a patented invention

  • Where the components are uncombined in whole or in part

  • Se presume knowledge!

  • Problem: Encourages outsourcing – manufacturing abroad!

• In response to Deepsouth

- Indirect infringement

• Can be done abroad, as long as the direct infringement takes part in the US.

• Contributory

1. Definition

35 U.S.C. 271 (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

• i. Without authority

  • Without a license

• ii. Infringing conduct

  • (Not a. makes)

  • (Not b. uses)

  • c. Offers to sell

  • d. Sell

  • e. Import into the United States

• iii. Regarding a component of a patented:

  • i. Machine

  • ii....

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