What are the two categories of strategic disclosure in the old law? What happens and why under each?
- In a race toward inventing something, and you were losing: Wouldn’t want to disclose stuff (create prior art):
a. Because if you’re trailing, then you and the other haven’t conceived yet, you might be the winner, because you conceive first.
b. May make them look better; failure of others - you failed (KSR objective factors of obviousness) - In a race toward inventing something, and you were winning:
Situations where you might want to create prior art:
a. You want the other guy to realize how far ahead you are, so they drop out. However, you are creating prior art that might hurt you (102(b)); 1 year starts, but, you could scare away competition (don’t worry about them; slow down to work more efficiently)
b. Changing the value of the patent: Disclose some information, creating prior art, narrowing the patent that we could get: now, the patent isn’t worth as much, so people might not invest to do the narrower patent.
How does keeping a secret change in the new law?
used to punish you if you kept secrets: ASC wipes away your conception date
ASC doesn’t make you vulnerable anymore; only disclosure and filing now
273 says if you were using it as a trade secret, you are protected
What was Phillips v. AWH Corp.?
Tells us how you read the language of the claims
* In light of the specification, the drawings, and the prosecution history (intrinsic sources, i.e. documentation for this very patent) * Stuff that didn't get created as a part of the patent; e.g., techinical dictionaries, articles, expert declarations (extrinsic sources)
The patent concerned modular, steel-shell panels that could be welded together to form vandalism-resistant walls. The patent holder made an agreement with the competitors to market and sell the panels. After that arrangement had ended, the patent holder discovered the competitors were continuing to use his trade secrets and patented technology without his consent. The en banc panel affirmed the dismissal of the trade secret misappropriation claim. However, it found that, the term “baffles” was not subject to 35 U.S.C.S. § 112, para. 6. Thus, the district court erred by limiting the term to corresponding structures disclosed in the specification and their equivalents. The fact that the written description of the patent set forth multiple objectives to be served by the baffles in the claims confirmed that the term should not have been read restrictively to require that the baffles serve all of the recited functions. A person of ordinary skill in the art would not have interpreted the disclosure and claims to mean that a structure extending inward from one of the wall faces was a “baffle” if disposed at an acute or obtuse angle, but was not a “baffle” if disposed at a right angle.
What about Merges and Duffy and 273?
It may show that they are right, because wouldn’t need half of 273 if third party secret sales raised the bar
What is “infringement” about?
you have a patent, now what are you going to do with it?
If I have a US patent, who can I sue?
people in the US
What if it’s a third party; can i sue them?
yeah
What is the Markman case?
it sets up how courts go through the process of claim construction; they do it that way because it was historically done that way
What is a Markman hearing?
hearing where they just determine what the patents mean, as a matter of law; judge only
Do Markman hearings get deference on appeal?
No
What are the canons of claim construction? (5)
- Rule: applicant can make up his own words (applicant can act as his own lexicographer) Footnote: can’t be intentionally and ridiculously misleading, e.g., rough means smooth, and v.v.
- Rule: the preamble (beginning in the claim) can be limiting, if it “breathes life and meaning into the claims,” but typically is not
- Rule: a term in the claim should be accorded consistent meaning; if a word is used in two different claims, it means the same thing; across claims and against legal arguments (e.g., for anticipation and infringement)
- Rule: claim differentiation; don’t read them as redundancy; presumption toward non-redundancy
- Rule: claims should be interpreted such that the preferred embodiment (or a number of detailed examples) is (are) claimed
What is a pair with literal claim interpretation?
anticipaiton
What is a pair with the doctrine of equivalents?
obviousness
What is the Doctrine of Equivalents?
The effective scope of a patent claim is greater than that described by the literal language
Does the DOE change scope? What are some ways people argue that DOE can be accomplished in other ways?
Lichtman thinks it does, and where scope does not change, he’s skeptical that these other approaches are better in terms of costs, notice, and administrability.
Other ways (people say) to get the DOE broadening:
- Reissue (go back to patent office to reissue patent after patent is issued)
- Broader claim language
- Continuations (where you add more stuff to the same application)
- Additional claims
If you argue that the DOE doesn’t change scope, what should the DOE turn on?
- Relative costs to the applicant
- Relative benefits to others/infringers
- Costs to administer, including clarity of the rule
What difficult questions does DOE raise if it does broaden scope?
about patentee incentives, add-on innovation, coordination, and so on. Also, in play are certainty (for others and the applicant) and the opportunity for PTO review.
What is Festo?
USSC
After Festo, people don’t really use DOE.
Prosecution history estoppel: when you can’t invoke DOE for something you have changed during prosecution history. Brings down two presumptions:
1. In the absence of evidence to the contrary, you made a change in the claim because you had to.
2. Rebuttable presumption: once you trigger estoppel, we presume that what you gave up is exactly what you’re asking for in this case (Fed. Cir. said it was an absolute bar - unrebuttable presumption)
What are the two questions to ask about scope?
Is it about the scope of the patent? Does scope change?
If not, then it’s about procedure or something else changing: clarity, administrability
What are Lichtman’s arguments that the DOE does/should change scope? (4)
Scope matters/DOE matters
- Technologies that you cannot specify ahead of time, but know to fear. (the guy who invented the tennis shoe shouldn’t lose his patent because velcro defies all previous categories)
- Different outputs from courts and adversarial interactions in DOE, rather than patent examiners and ex parte interactions.
- Only for patents in litigation, which is a tiny percentage of all patents. Self-selected group of patents, later in time
- Limitations on rights given through the other mechanisms. For instance, reissue can only broaden your claims within two years, and it allows intervening rights.
What is Lichtman’s arguments against those that argue that DOE doesn’t/shouldn’t change scope?
Costly/wasteful to nickel and dime change: DOE says don’t bother fixing the problem
How can you rebut the first/second presumption in Festo? We are locking you in to your literal language, unless…
- at the time of the amendment, one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent (couldn’t have drafted velcro at the time)
- The rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question (can’t change from plastic to styrofoam, but from plastic of strength 7 to strength 7.1 might be OK)
- There may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question - invites an honest story
What do people do know post-Festo?
write stuff in the intrinsic evidence that makes clear why changes happen
What is means plus function claiming? What is the black letter law?
“A head, a hammer, and a means for attaching said head and said hammer.”
Will be translated to include any means that will perform the identical function, has an equivalent structure, so long as it existed at the time you wrote the phrase. E.g., “means for fastening”; will describe in spec. as nail, screw, glue, etc., but this won’t cover velcro if it didn’t exist at the time
