Bill Goodwine's Wiki - User contributions [en]

EB: Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008)

2011-04-29T16:03:56Z

Ebingle: Created page with "==Issue== Patent exhaustion - if a patentee makes an authorized sale, than he forfeits the right to dictate further use of the sold product. His ownership of the patent (right to..."

==Issue==
Patent exhaustion - if a patentee makes an authorized sale, than he forfeits the right to dictate further use of the sold product. His ownership of the patent (right to make, use, sell) are exhausted. He has already reaped the rewards of his patent through the initial sale.
*For most types of property it makes sense to give all rights in a sale - if you sell with restrictions it is very difficult to keep track of specific allowed usages when further downstream sales are made.

==The Situation==
*LGE has patents ('641, '379, '733), all computer memory related - they sell to Intel who manufactures the inventions - Intel sells to Quanta
**Contract between LGE and Intel required that Intel notify its customers that the products could not be combined with any non-Intel components

User:Ebingle

2011-04-29T15:52:06Z

Ebingle:

=My Selected US Patent=
*Patent 4417745: Folding Bicycle
**Date issued: November 29, 1983
*The idea behind this invention was to create a bicycle that could be easily folded into a compact shape, and thus carried easily onto a bus or train. The invention is a 10 speed, large-wheeled bicycle which can be compacted to 36"x36"x12" in size. The bike can be easily folded in approximately thirty seconds without the use of any tools. I found this patent interesting because I like to bike, and the mechanics behind successfully folding a bicycle are intriguing. Also, I think it will be interesting to explore other inventions involving compact bicycles to compare the differences. I found the patent while searching the "Patentstorm" website; here is the link: [http://www.patentstorm.us/patents/4417745/fulltext.html]. The patent can also be found on Google Patents: [http://www.google.com/patents?id=7X0-AAAAEBAJ&printsec=abstract&zoom=4#v=onepage&q&f=false].

=Case Notes=

==Non-obvious Subject Matter: Section 102==
[[BONITO BOATS V. THUNDER CRAFT, 489 U.S. 141 (1989)]]

[[HOTCHKISS v. GREENWOOD, 52 U.S. 11 (1850)]]

[[A. & P. TEA CO. v. SUPERMARKET CORP., 340 U.S. 147 (1950)]]

[[LYON v. BAUSCH & LOMB, 224 F.2d 530 (1955)]]

[[EB: GRAHAM v. JOHN DEERE, 383 U.S. 1 (1966)]]

[[EB: US v. ADAMS, 383 U.S. 39 (1966)]]

[[EB: ANDERSON'S BLACK ROCK, INC. v. PAVEMENT CO., 396 U.S. 57 (1969)]]

[[EB: KSR INTERNATIONAL CO. v. TELEFLEX, INC., 550 U.S. 398 (2007)]]

==Patentable Subject Matter: Section 101==
[[EB: GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[EB: DIAMOND v. DIEHR, 450 U.S. 175 (1981)]]

[[EB:ARRHYTHMIA RESEARCH TECHNOLOGY, INC. v. CORAZONIX CORP., 958 F.2d 1053 (1992)]]

[[EB: STATE STREET BANK & TRUST CS. v. SIGNATURE FINANCIAL GROUP, INC., 149 F.3d 1368 (1998)]]

[[EB: BILSKI v. KAPPOS, 130 S.Ct. 3218 (2010)]]

==Statutory Bars==

[[EB: EGBERT v. LIPPMANN, 104 U.S. 333 (1881)]]

[[EB: Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

==Infringement/Doc. of Equivalents==

[[EB:Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]

[[In Class Clarification of Doc. of Equivalents]]

[[EB: My Example for Doctrine of Equivalents]]

[[EB: Patent Prosecution Process: Notes Wednesday, April 6th]]

[[EB: Patent Prosecution Process (Part II): Notes Friday, April 8th]]

==Written Documentation/New Matter==
[[EB: Vas-Cath Inc. v. Mahurkar (1991)]]

[[EB: TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111 (2001)]]

==Patent Exhaustion==

[[EB: Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008)]]

==Miscellaneous ==

[[EB: i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (2010)]]

[[EB: Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (1978)]]

[[EB: H.H. Robertson, Co. v. United Steel Deck, Inc., 820 F.2d 384 (1987)]]

=Homework=
[[EB: Friday, January 28: Non-obvious Analysis of My Patent (The Folding Bicycle)]]

[[EB: Friday, February 4: Obviousness v. Non-obviousness of Adams Battery]]

[[EB: Wednesday, February 9: Edit of Nonobvious Wikipage]]

[[EB: Wednesday, March 23: "Printed Publication"]]

[[EB: Friday, April 29: Quanta v. LGE Brief Summary]]

901419437 Quanta v. LGE Brief Summary

2011-04-29T03:35:50Z

Ebingle: Created page with "==Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners== Background: Motorola, a telecommunications and electronics company, has rights to hundreds of third-party pat..."

==Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners==
Background:

Motorola, a telecommunications and electronics company, has rights to hundreds of third-party patents subject to various licensing agreements, "covenants not to sell," and releases. In addition, Motorola also purchases components from licensed suppliers which are then used in combination with other electronic components to create Motorola product. Like Quanta, Motorola is often accused of infringement based on their use of these purchased supplies. Thus, a ruling in Quanta's favor in this case will benefit Motorola in any similar cases with which it may be involved.

Arguments:

*The court's reliance on the decision in United States v. Univis Lens Co., 316 U.S. 241 (1942) is correct; if a product "embodies essential features" of a patent, and has no other "substantial noninfringing use" then as a part of a combination which infringes the patent, than the doctrine of exhaustion can be applied.

*In cases such as Mitchell v. Hawley, 83 U.S. (16 Wall.) 544 (1872) the issue is not whether a sale triggers the doctrine of exhaustion, but rather that the seller did not have the authority to sell in the first place. Thus, a ruling against exhaustion is related to the sellers unauthorized action, not any inherent issue of the sale itself.

*The basis for the doctrine of exhaustion is that the patentee receives ample reward in the original sale of his invention, and any undue extension of patent rights after the sale only inhibits "use and enjoyment" of the thing sold. When a patentee sells his invention he forfeits his right to the buyer, and the buyer should not be subject to any further licence. LGE's attempt to limit the right of Intel's customers (via the notice of warning) was an "impermissible" attempt to "double-dip" and extract additional payment.

*It is unclear whether pre-licence sales made by Intel were unauthorized, and whether those sales would trigger the doctrine of exhaustion. This matter of pre-license sales is beyond the scope of the current appeal and would require more analysis of facts.

*Finally, the decision made in this case should only apply to licenses because other forms of agreements (such as covenants not to sue) are very different.
**Licenses are used when assertion of infringement exists; covenants not to sue are used when parts of a business or product line are sold.

Here in list of arguments in Quanta

2011-04-29T03:34:50Z

Ebingle:

Post a link to your summary of the brief you read here.

[[Quanta Brief Summary 901330223]]

[[901349446 Quanta Brief]]

[[Quanta Brief Summary 901471466]]

[[Quanta Brief Summary 901422128]]

[[Quanta Brief Summary Jacob Marmolejo]]

[[Homework 8 (due Friday 28)~jnosal | Quanta Brief Summary 901438174]]

[[Mitros: Quanta Brief]]

[[Zahm Homework 31: Quanta Brief]]

[[901419437 Quanta v. LGE Brief Summary]]

EB: Friday, April 29: Quanta v. LGE Brief Summary

2011-04-29T03:33:25Z

Ebingle:

EB: Friday, April 29: Quanta v. LGE Brief Summary

2011-04-29T03:33:04Z

Ebingle:

EB: Friday, April 29: Quanta v. LGE Brief Summary

2011-04-29T03:28:32Z

Ebingle:

2011-04-15T15:53:08Z

Ebingle:

==Situation==
*TurboCare has a patent for a "shaft sealing system for fluid turbines," sues GE for infringement
**At high loads, a spring is compressed and a seal is made at small clearance position, but when the load is small (not in operation) the spring depresses and the device shifts to a large clearance position, eliminating any rubbing damage problem

*District court granted summary judgement of noninfringement of the claims 1, 5, 6, and 7. They also ruled claim 2 invalid for failing to meet written description criteria.
*Appellate court affirms invalidity of claim 2, but remands decisions regarding infringement of other claims. They also ruled that 2 of the 4 allegedly infringing devices were not infringing, but that the others could be infringing based on doctrine of equivalents (remanded in regards to those devices)

==Issue==
*TurboCare originally claimed "flat, s-shaped springs" but stated that "a considerable variety of springs can be employed" - he amends this during prosecution to say that "flat springs and others can be employed," because GE's machines used flat springs.
**Is this new matter, or simply a clarification of original claims?
**Appellate court says that there is an "issue of fact" as to whether new matter was added - so they remand back to the trial court

*Next issue of case is "between" v. "adjacent to" location of the spring
**Patent was "lacking in any description of an embodiment in which the spring is located between the casing shoulders" - his disclose of "spring located...adjacent to said springs" is way to vague to constitute sufficient disclosure.
**Thus, claim 2 was rejected based on failing to meet requirements of Section 112.
**Note: patent was written in vague terms so as to avoid conflict with Warth prior art patent.

==Concept: Means, Function Claim Language==
*Section 112 - you can express claims "as a means or step for performing a specified function without the recital of structure, material or acts in support thereof.."
**These claims will be construed "to cover the corresponding structure, material or acts described in the specification and the equivalents thereof"

EB: TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111 (2001)

2011-04-13T16:25:08Z

Ebingle:

EB: TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111 (2001)

2011-04-13T16:17:38Z

Ebingle:

2011-04-11T16:19:06Z

Ebingle:

==The Situation==
*Mahurkar invents new catheter that created less puncture area than those of the prior art.
*Vas-Cath sued Mahurkar claiming his patent is invalid as anticipated under 102 - Mahurkar had (more than one year prior) filed a Canadian patent describing the invention

==Discussion==
*Time line:
**US Design Application (1981)
**Canadian Application (1982) - problem (because 1 year prior to US utility filing)
**US Utility Application (19984)
*Mahurkar wants the design application filing date to represent his date of invention, but in order for that to happen he must have had adequate "written description" of the patent. Section 112 requires full disclosure - do drawings count? Is the design application good enough to meet requirements of 112?
**District court says no, design patent with drawings only is not good enough of a "written description" - on summary judgement
**CAFC says there are issues that need to be tried, so they remanded the summary judgement

*Main concept: type of disclosure is required by 112
*Another concept: Did the US utility patent add "new matter" to the design patent? If so, then that is not allowed.

Declaratory judgement: preemptive decision on whether a device infringes or not (Vas-Cath, the alleged infringer, wants a declaratory judgement that they are not infringing on Mahurkar's patent)

*Mahurkar concedes that if his original US Design Application date (1981) was not honored, his patent would be invalid
*Vas-Cath concedes that the design application drawing allow someone of ordinary skill in the art to understand the invention (but, that does not mean it qualifies under 112 - district court decided otherwise)

Final result: Sometimes drawing are good enough - they have to "reasonably convey" that the invention was possessed by inventor at the time, and enable a person of ordinary skill the art to understand the invention

Disclosures:
*Claim supporting
*Claim anticipating
**There is a difference in what each of these types of disclosure involve - see court case for detailed discussionn

EB: Vas-Cath Inc. v. Mahurkar (1991)

2011-04-11T16:10:31Z

Ebingle:

EB: Vas-Cath Inc. v. Mahurkar (1991)

2011-04-11T16:04:11Z

Ebingle:

EB: Vas-Cath Inc. v. Mahurkar (1991)

2011-04-11T16:01:23Z

Ebingle: Created page with "==The Situation== *Mahurkar invents new catheter that created less puncture area than those of the prior art. *Vas-Cath sued Mahurkar claiming his patent is invalid as anticipat..."

User:Ebingle

2011-04-11T15:52:53Z

Ebingle:

=My Selected US Patent=
*Patent 4417745: Folding Bicycle
**Date issued: November 29, 1983
*The idea behind this invention was to create a bicycle that could be easily folded into a compact shape, and thus carried easily onto a bus or train. The invention is a 10 speed, large-wheeled bicycle which can be compacted to 36"x36"x12" in size. The bike can be easily folded in approximately thirty seconds without the use of any tools. I found this patent interesting because I like to bike, and the mechanics behind successfully folding a bicycle are intriguing. Also, I think it will be interesting to explore other inventions involving compact bicycles to compare the differences. I found the patent while searching the "Patentstorm" website; here is the link: [http://www.patentstorm.us/patents/4417745/fulltext.html]. The patent can also be found on Google Patents: [http://www.google.com/patents?id=7X0-AAAAEBAJ&printsec=abstract&zoom=4#v=onepage&q&f=false].

=Case Notes=

==Non-obvious Subject Matter: Section 102==
[[BONITO BOATS V. THUNDER CRAFT, 489 U.S. 141 (1989)]]

[[HOTCHKISS v. GREENWOOD, 52 U.S. 11 (1850)]]

[[A. & P. TEA CO. v. SUPERMARKET CORP., 340 U.S. 147 (1950)]]

[[LYON v. BAUSCH & LOMB, 224 F.2d 530 (1955)]]

[[EB: GRAHAM v. JOHN DEERE, 383 U.S. 1 (1966)]]

[[EB: US v. ADAMS, 383 U.S. 39 (1966)]]

[[EB: ANDERSON'S BLACK ROCK, INC. v. PAVEMENT CO., 396 U.S. 57 (1969)]]

[[EB: KSR INTERNATIONAL CO. v. TELEFLEX, INC., 550 U.S. 398 (2007)]]

==Patentable Subject Matter: Section 101==
[[EB: GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[EB: DIAMOND v. DIEHR, 450 U.S. 175 (1981)]]

[[EB:ARRHYTHMIA RESEARCH TECHNOLOGY, INC. v. CORAZONIX CORP., 958 F.2d 1053 (1992)]]

[[EB: STATE STREET BANK & TRUST CS. v. SIGNATURE FINANCIAL GROUP, INC., 149 F.3d 1368 (1998)]]

[[EB: BILSKI v. KAPPOS, 130 S.Ct. 3218 (2010)]]

==Statutory Bars==

[[EB: EGBERT v. LIPPMANN, 104 U.S. 333 (1881)]]

[[EB: Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

==Infringement/Doc. of Equivalents==

[[EB:Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]

[[In Class Clarification of Doc. of Equivalents]]

[[EB: My Example for Doctrine of Equivalents]]

[[EB: Patent Prosecution Process: Notes Wednesday, April 6th]]

[[EB: Patent Prosecution Process (Part II): Notes Friday, April 8th]]

==Written Documentation==
[[EB: Vas-Cath Inc. v. Mahurkar (1991)]]

=Homework=
[[EB: Friday, January 28: Non-obvious Analysis of My Patent (The Folding Bicycle)]]

[[EB: Friday, February 4: Obviousness v. Non-obviousness of Adams Battery]]

[[EB: Wednesday, February 9: Edit of Nonobvious Wikipage]]

[[EB: Wednesday, March 23: "Printed Publication"]]

EB: Patent Prosecution Process (Part II): Notes Friday, April 8th

2011-04-08T16:33:51Z

Ebingle: Created page with "Examination of Applications *Examiner searches the prior art *Can send back to the inventor for more information *Determine if invention is "useful, novel, nonobvious, and...clea..."

Examination of Applications
*Examiner searches the prior art
*Can send back to the inventor for more information
*Determine if invention is "useful, novel, nonobvious, and...clearly described in the specification."
*Burden on the examiner: must "clearly articulate" reasoning for rejection, giving the inventor the ability to respond to the accusations

New Matter: Section 132
"No amendment shall introduce new matter into the disclosure of the invention." Cannot expand your claims when you reissue, you can only narrow.

Final Rejection: You usually only get one chance to amend your application, after that it is rejected for good. Usually only get 1-6 months to respond (almost always have 3 months).

User:Ebingle

2011-04-08T15:52:52Z

Ebingle: /* Infringement/Doc. of Equivalents */

=My Selected US Patent=
*Patent 4417745: Folding Bicycle
**Date issued: November 29, 1983
*The idea behind this invention was to create a bicycle that could be easily folded into a compact shape, and thus carried easily onto a bus or train. The invention is a 10 speed, large-wheeled bicycle which can be compacted to 36"x36"x12" in size. The bike can be easily folded in approximately thirty seconds without the use of any tools. I found this patent interesting because I like to bike, and the mechanics behind successfully folding a bicycle are intriguing. Also, I think it will be interesting to explore other inventions involving compact bicycles to compare the differences. I found the patent while searching the "Patentstorm" website; here is the link: [http://www.patentstorm.us/patents/4417745/fulltext.html]. The patent can also be found on Google Patents: [http://www.google.com/patents?id=7X0-AAAAEBAJ&printsec=abstract&zoom=4#v=onepage&q&f=false].

=Case Notes=

==Non-obvious Subject Matter: Section 102==
[[BONITO BOATS V. THUNDER CRAFT, 489 U.S. 141 (1989)]]

[[HOTCHKISS v. GREENWOOD, 52 U.S. 11 (1850)]]

[[A. & P. TEA CO. v. SUPERMARKET CORP., 340 U.S. 147 (1950)]]

[[LYON v. BAUSCH & LOMB, 224 F.2d 530 (1955)]]

[[EB: GRAHAM v. JOHN DEERE, 383 U.S. 1 (1966)]]

[[EB: US v. ADAMS, 383 U.S. 39 (1966)]]

[[EB: ANDERSON'S BLACK ROCK, INC. v. PAVEMENT CO., 396 U.S. 57 (1969)]]

[[EB: KSR INTERNATIONAL CO. v. TELEFLEX, INC., 550 U.S. 398 (2007)]]

==Patentable Subject Matter: Section 101==
[[EB: GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[EB: DIAMOND v. DIEHR, 450 U.S. 175 (1981)]]

[[EB:ARRHYTHMIA RESEARCH TECHNOLOGY, INC. v. CORAZONIX CORP., 958 F.2d 1053 (1992)]]

[[EB: STATE STREET BANK & TRUST CS. v. SIGNATURE FINANCIAL GROUP, INC., 149 F.3d 1368 (1998)]]

[[EB: BILSKI v. KAPPOS, 130 S.Ct. 3218 (2010)]]

==Statutory Bars==

[[EB: EGBERT v. LIPPMANN, 104 U.S. 333 (1881)]]

[[EB: Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

==Infringement/Doc. of Equivalents==

[[EB:Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]

[[In Class Clarification of Doc. of Equivalents]]

[[EB: My Example for Doctrine of Equivalents]]

[[EB: Patent Prosecution Process: Notes Wednesday, April 6th]]

[[EB: Patent Prosecution Process (Part II): Notes Friday, April 8th]]

=Homework=
[[EB: Friday, January 28: Non-obvious Analysis of My Patent (The Folding Bicycle)]]

[[EB: Friday, February 4: Obviousness v. Non-obviousness of Adams Battery]]

[[EB: Wednesday, February 9: Edit of Nonobvious Wikipage]]

[[EB: Wednesday, March 23: "Printed Publication"]]

EB: Patent Prosecution Process: Notes Wednesday, April 6th

2011-04-06T16:36:18Z

Ebingle:

Several Steps:

1. Application

2. Examination by PTO

3. Office Action

4. Response to Office Action

5. Subsequent Office Action

6. Final Rejection or Allowance

7. Issued

What is the application?
*CFR (Code of Federal Regulation); promulgated by PTO, Dept. of Commerce
*Title 37 CFR - Patents, Trademarks and Copyrights
*37 CFR 1.51: An application needs:
**Specification including claims (35 USC 112)
**Drawings (35 USC 113)
**Oath = you are the first inventor, to the best of your knowledge, and you are not committing fraud

Section 112: Describe the invention, and the manner/process of using it; there must be enough detail so that a person of ordinary skill could understand the invention; Must provide the alternative methods of using your patent

Section 113: Gives details of where to put text/number lables etc.

Oath Regulations: Identify inventor and country of origin; Swear that (to the best of your knowledge) you are the first inventor

Examination by PTO:
*Initial screening - figure out which group of examiners should look at the patent
*Examiner:
**(1) applications in the order filed, with exception (inventors over 65 years old get priority; national priority; reissues; application is ready to be issued or rejected)
**(2) Preliminary examination for informalities - is the application ready to be examined? (e.g. appropriate terminology...)
**(3) Prior Art Search - 37 CFR 1.104
**(4) Examiners letter or action - "office actions" - 35 USC 132; all office actions contain identifying information for both application and examiner and a time limit to respond (6 months, unless otherwise specified - typically less, 3 months or 30 days)
**(5) Initial Office Action
***First action not on merit (if your application actually involves more than one invention, needs restriction or election)
***First action on merit: rule 37 CFR 1.105 - examiner must raise all grounds for rejection; examiner must indicate all allowable claims; examiner must provide statutory language as a basis for rejection (e.g. claims 1-5 are rejected under 35 USC 102 as being clearly anticipated by "Smith")

EB: Patent Prosecution Process: Notes Wednesday, April 6th

2011-04-06T16:23:43Z

Ebingle:

2011-03-30T23:25:35Z

Ebingle:

2011-03-28T16:25:08Z

Ebingle:

==The Situation==
*Hilton has patent on a method for ultrapurification of dyes from pH 6-9. Warner develops a similar invention at pH 5.
*Hilton sues Warner for infringement

==The Decision==
*Trial Court found infringement, CAFC affirmed that decision
*Supreme Court sets a few new rules regarding the doctrine of equivalents, but then remands the decision back to trial court.

==In Class==
Issue #1: Is there still a doctrine of equivalents? Answer = yes!
*Argument for getting rid of it: Section 112 places statutory burden on the patentee to establish their claims specifically; inconsistent with administrative role of PTO to set bounds on claims; it circumvents the reissue process
*Nonetheless, the Supreme Court upheld the doctrine
**However, they do express concern about the doctrine taking on a "life of its own" - meaning there has to be some limit on the expansion of claims - thus, one method of solving this dilemma was to consider each claim of an invention element-by-element rather than considering the invention as a whole. If you look at an invention overall it is easier to see "substantially the same..." but there may be distinct differences hidden within the individual elements of the invention. Thus, if you look at each element, you get a narrower application of the doctrine of equivalents, successfully checking its power.
**Seems like this narrowing doesn't really solve the 5 v. 6 aspect of the case; you would have gotten down to 5 v. 6 regardless of this narrower specification
**Also seems like the importance of an element in the claims (whether it distinguishes the patent from the prior art) should be considered when applying the doctrine. The pH of 9 distinguished the patent from prior art, but 6 was seemingly arbitrary - so should pH be a defining characteristic? This leaves much room for interpretation
*Because there was no specific reason given for the lower pH limit, it was assumed that there was some important reason - but, the patentee can get around that assumption if they can prove that they just arbitrarily made the distinction.

*The new part of the law = "element-by-element" application of doctrine & the "fuzzy" allowance of proof regarding arbitrary limitations (6pH)
**Note: Supreme Court did not actually say anything about the infringement

*"en blanc" - trial is in front of the whole court of judges rather than the usual three, happens when something is really important

EB:Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)

2011-03-28T16:22:40Z

Ebingle: /* In Class */

==The Situation==

==In Class==
Issue #1: Is there still a doctrine of equivalents? Answer = yes!
*Argument for getting rid of it: Section 112 places statutory burden on the patentee to establish their claims specifically; inconsistent with administrative role of PTO to set bounds on claims; it circumvents the reissue process
*Nonetheless, the Supreme Court upheld the doctrine
**However, they do express concern about the doctrine taking on a "life of its own" - meaning there has to be some limit on the expansion of claims - thus, one method of solving this dilemma was to consider each claim of an invention element-by-element rather than considering the invention as a whole. If you look at an invention overall it is easier to see "substantially the same..." but there may be distinct differences hidden within the individual elements of the invention. Thus, if you look at each element, you get a narrower application of the doctrine of equivalents, successfully checking its power.
**Seems like this narrowing doesn't really solve the 5 v. 6 aspect of the case; you would have gotten down to 5 v. 6 regardless of this narrower specification
**Also seems like the importance of an element in the claims (whether it distinguishes the patent from the prior art) should be considered when applying the doctrine. The pH of 9 distinguished the patent from prior art, but 6 was seemingly arbitrary - so should pH be a defining characteristic? This leaves much room for interpretation
*Because there was no specific reason given for the lower pH limit, it was assumed that there was some important reason - but, the patentee can get around that assumption if they can prove that they just arbitrarily made the distinction.

*The new part of the law = "element-by-element" application of doctrine & the "fuzzy" allowance of proof regarding arbitrary limitations (6pH)
**Note: Supreme Court did not actually say anything about the infringement

*"en blanc" - trial is in front of the whole court of judges rather than the usual three, happens when something is really important