Patent Infringement II

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Patent Infringement II

• Intro to IP Prof Merges
• 2.2.09

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Topics Today

• Recap Doctrine of Equivalents prosecution
  history estoppel
• Briefly review contributory infringement
• Foreign infringement

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Equivalents/Literal Claim Scope
Range of Equivalents
Literal Claim Scope
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Doctrinal Sequence

• FIRST What is the literal meaning of the claim
  language?
• THEN If the accused product falls outside that
  language, is it an equivalent of the claimed
  invention?

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What is the test for equivalence?

• Is the accused product an insubstantial
  alteration under Warner-Jenkinson and Festo?
• Even if so, was this trivial variation on the
  claim given up during patent prosecution in
  which case, equivalents are estopped

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Equivalents/Literal Claim Scope
Range of Equivalents
Literal Claim Scope
What is a baffle? Is the tank thereon?
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Equivalents/Literal Claim Scope
Range of Equivalents
Literal Claim Scope
Is a single sealing ring equivalent to a pair
of them?
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Prosecution History Estoppel

• Warner-Jenkinson presumption that part of claim
  coverage is surrendered when applicant amends
  claim
• Festo case 3 Ways to beat the presumption
• Post-Festo developments disclosed but not
  claimed/dedicated to the public

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Range of Equivalents
Literal Claim Scope
Infringement under DOE ?
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Warner-Jenkinson

• DOE Survives challenge
• Presumption in cases of claim amendment
  amendment made for reasons related to
  patentability prosecution history estoppel
  applies
• ? SO Presumption of no DOE, you are limited to
  your literal claim language

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Original Claim Scope
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Original Claim Scope
Narrowed Scope, after amend-ment
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RE Service v. Johnson Johnston

• What was disclosed?
• What was claimed?

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(No Transcript)
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(No Transcript)
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Disclosed

• Aluminum and steel plates, for use as backing
  to protect copper sheets in manufacture of
  circuit boards

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Claimed

• Use of alumunim plates only

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Held

• Subject matter (i.e., embodiments of the
  inventive concept) disclosed but not claimed is
  dedicated to the public
• Cannot be recaptured through doctrine of
  equivalents

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Contributory Infringement

• Can you be held liable for patent infringement
  when you do something less than a complete act of
  infringement?

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CR Bard v. Advanced Cardiovascular Systems, Inc.

• Claim Method for using a catheter in coronary
  angiolasty
• Who infringes this claim? The surgeon

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Why does Bard sue ACS?

• Sue where the money is
• Dont sue your customers

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CR Bard
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How can Bard sue ACS?

• Must argue that ACS does something essential to
  infringement aids and abets the infringement
• Two labels for this in patent law, and IP law
  generally

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Contributory infringement inducement

• Two labels, conceptually similar acts

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Indirect infringement Inducement and
contributory infringement

• 35 USC 271 (b)
• Whoever actively induces infringement of a
  patent shall be liable as an infringer.

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35 USC 271(c)

• (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.

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Substantial noninfringing uses?

• Claim specifies catheter opening location
• Are there noninfringing uses of the defendants
  catheter?

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(No Transcript)
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• MICROSOFT CORP. V. AT T CORP.
• Title 35 U.S.C. 271(f)(1) provides that it is
  an act of direct patent infringement to
• supply. . . from the United States . . .
  components of a patented invention . . . In such
  manner as to actively induce the combination of
  such components outside of the United States.

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• The questions presented are
• (1) Whether digital software codean intangible
  sequence of 1s and 0smay be considered a
  component of a patented invention within the
  meaning of Section 271(f)(1) and, if so,
• (2) Whether copies of such a component made
  in a foreign country are supplied . . . from
  the United States.

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The Statute 35 USC 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.

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Section 271(f)(2)

• (2) Whoever without authority supplies or causes
  to be supplied in or from the United States any
  component of a patented invention that is
  especially made or especially adapted for use in
  the invention and not a staple article or
  commodity of commerce suitable for substantial
  noninfringing use, where such component is
  uncombined in whole or in part, knowing that such
  component is so made or adapted and intending
  that such component will be combined 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.

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Schematic 271(f)(1)

• 1 Whoever without authority
• a supplies or causes to be supplied
• b in or from the United States
• c all or a substantial portion of the
  components of a patented invention,
• 2 where such components are uncombined in whole
  or in part,
• 3 in such manner as to actively induce the
  combination of such components outside of the
  United States
• 4 in a manner that would infringe the patent if
  such combination occurred within the United
  States,
• shall be liable as an infringer.

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• 1Whoever without authority
• a supplies or causes to be supplied
• b in or from the United States
• c any component of a patented invention
• i that is especially made or especially
  adapted for use in the invention and
• ii not a staple article or commodity of
  commerce suitable for substantial noninfringing
  use,
• 2 where such component is uncombined in whole
  or in part,
• 3 knowing that such component is so made or
  adapted and
• 4 intending that such will be combined
• a outside of the United States
• b in a manner that would infringe the patent
  if such combination occurred within the United
  States,
• shall be liable as an infringer.

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History

• 271(f) Enacted to overturn Supreme Court opinion
  in Deep South Packing v. Laitram, 406 U.S. 518
  (1972) (accused infringer sold and shipped three
  separate boxes which, when opened and assembled
  according to provided instructions in less than
  an hour, resulted in fully operable infringing
  device under machine combination patent).

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Deepsouth (1972)

• We cannot endorse the view that the substantial
  manufacture of the constituent parts of a
  machine constitutes direct infringement when we
  have so often held that a combination patent
  protects only against the operable assembly of
  the whole and not the manufacture of its parts.
  406 U.S. at 528.

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• The questions presented are
• (1) Whether digital software codean intangible
  sequence of 1s and 0smay be considered a
  component of a patented invention within the
  meaning of Section 271(f)(1) and, if so,
• (2) Whether copies of such a component made
  in a foreign country are supplied . . . from
  the United States.

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• 271(f) enacted to close a loophole in patent
  law. The legislative history indicates that the
  provision's primary purpose is to prevent
  copiers from avoiding U.S. patents by supplying
  components of a patented product in this country
  so that the assembly of the components may be
  completed abroad. -- Patent Law Amendments Act
  of 1984, Pub. L. No. 98-622, 101, 98 Stat. 3383
  at 5828

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ATT v. Microsoft

• ATT owns Atal et al., US Patent Re 32,580
  (originally 4,472,832), Digital Speech Coder,
  Jan. 19, 1988. This patent covers speech
  compression and decompression techniques
  developed at Bell Labs. ATT claimed a portion of
  Microsofts Windows product infringed the patent.

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Procedural History

• Trial court held that liability could be
  established under 271(f) for export of golden
  master disks containing Windows. The golden
  masters were used by Microsoft licensees to
  install Windows on personal computers
  manufactured and sold in overseas countries,
  e.g., Germany and Japan. Microsoft appealed to
  the Federal Circuit.

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Federal Circuit Holding

• Export of golden master disks was a violation of
  271(f). Software on the disks is a component,
  and the sending of the disks overseas was
  supply of such a component under 271(f).

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Component

• Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d
  1325 (Fed. Cir. 2005), issued while the instant
  appeal was pending, held that software could
  very well be a component of a patented
  invention for the purposes of 271(f). Id. at
  1339.

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Supplied

• It is inherent in the nature of software that
  one can supply only a single disk that may be
  replicated saving material, shipping, and
  storage costs instead of supplying a separate
  disk for each copy of the software to be sold
  abroad. All of such resulting copies have
  essentially been supplied from the United
  States. 414 F.3d at 1370.

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• Supreme Court held that software may constitute a
  component under 271(f)(2), at some point but
  that sending the golden master as in the
  Microsoft case was NOT supply of a software
  component under the statute.
• See page 320 when does software become a
  component? (When embodied on a medium)

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Policy

• The Federal Circuits holding extended United
  States patent law to foreign markets
• Said to put United States software companies at a
  competitive disadvantage vis-a-vis their foreign
  competitors in foreign markets.
• ATT Should seek independent foreign patents to
  cover the acts alleged here