Intellectual Property

1
Intellectual Property

• Patent Infringement

2
Infringement

• Literal Infringement
• The Doctrine of Equivalents
• 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.

3
Literal Infringement

• Basic rules of literal infringement
• All elements of the claim must be (identically)
  present in the accused device
• Additional elements in the accused device are
  (generally) not relevant to infringement

4
Literal Infringement

• For next slide, consider
• What is the key claim element?
• What does the accused device have instead?
• Why does the court find no infringement as a
  matter of law?
• How might Plaintiff have drafted the claim to
  cover the Supersoaker?

5
Larami v. Amron, (ED Pa 1993)
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
6
Doctrine of Equivalents

• Test
• Substantially same function, way, result
• Insubstantial differences
• Allows elements in an accused device to be
  substantially equivalent and still be present
  for purposes of infringement

7
Doctrine of Equivalents

• Warner-Jenkinson v Hilton Davis (1997)
• - key limitation a pH of approximately 6.0 to
  9.0
• - accused process pH of 5.0
• The court reaffirms the DOE, though it notes an
  important limit on the doctrine prosecution
  history estoppel

8
Festo v. Shoketsu (2002)

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

9
Festo (2002)

• The Federal Circuit rule amendment no
  equivalents for that element
• The Supreme Court presumption that an
  amendment no equivalents for that element.
  Exceptions
• Only give up protection for those things that
  were foreseeable by those skilled in art
• Rationale for the amendment is unrelated to the
  equivalent in question

10
Contributory Infringement

• Elements
• (1) Sale of a product
• (2) Material part of patented invention/process
• (3) Knowledge
• (4) Specially made or adapted for infr. use
• (5) Not a staple article of commerce
• (6) No substantial non-infringing use

11
Defenses

• Defenses to infringement action
• Experimental Use
• Inequitable Conduct (Fraud) Such conduct may
  consist of omissions or material
  misrepresentations during the patent application
  process.
• Patent Misuse Patent owner has abused his
  position to exploit a patent improperly.

12
Patent Misuse

• Types of activity implicating patent misuse
• Extension beyond patent term may try to require
  licensee to pay license fees after expiration of
  patent (impermissible)
• Tying or conditioning the sale of a patented item
  to the sale of another staple article
  (impermissible)
• Tying to non-staple article i.e. article has no
  commercial use except in connection with the
  patented invention or process (permissible)

13
Patent Law - Remedies

• Injunctions
• Preliminary
• Reasonable probability of success
• Irreparable harm if no injunction (presumed)
• Possibility of harm to third parties
• Public interest
• Permanent

14
Patent Law - Remedies

• Damages
• Lost Profits
• Demand for patented product
• Absence of noninfringing substitutes
• Capability to meet demand
• Profits that would have been made
• Reasonable Royalty

15
International Patent Law

• Governed by each countrys domestic patent laws
• Major differences
• Most have first to file systems
• No one-year grace period after public use, ...

16
Treaties

• Paris Convention
• Once file in a member country, get priority date
• Have one year to file in other country
• Shielded from consequences of publication, etc.
• Patent Cooperation Treaty
• File separate document with domestic agency
• Gives additional 20 months to file
• Up to 30 months if file earlier