User:Charles R Talley/Notes CRT

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Introduction

Non-Obviousness

KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)

  • Debate over obviousness of adjustable pedal apparatus with electronic throttle control
  • District Court ruled the patent invalid in a summary judgement due to obviousness
  • TSM Rule: Seeking to resolve the question of obviousness with more uniformity and consistency, the Court of Appeals for the Federal Circuit has employed an approach referred to by the parties as the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if “some motivation or suggestion to combine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.
    • CAFC & PTO want simple clear rules
      • Unlike the Supreme Court, they deal with these rules on a daily basis
      • Tension between imperfect, simple rules and perfect, ambiguous rules
      • Montana speed limit: Reasonable & Prudent
  • We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here. To be sure, Graham recognized the need for “uniformity and definiteness.” 383 U.S., at 18, 86 S.Ct. 684. Yet the principles laid down in Graham reaffirmed the “functional approach” of Hotchkiss, 11 How. 248, 13 L.Ed. 683. See 383 U.S., at 12, 86 S.Ct. 684. To this end, Graham set forth a broad inquiry and invited courts, where appropriate, to look at any secondary considerations that would prove instructive. Id., at 17, 86 S.Ct. 684.
    • US v. Adams: If the combination itself is obvious, but a positive result is unpredictable, it's not obvious
    • Anderson's Black Rock, Inc. v. Pavement Co.: Mere combinations are obvious and unpatentable
  • Can't just look at the patents referenced on the application to determine obviousness. The market and customer demand also comes into play in determining obviousness.
  • KSR provided convincing evidence that mounting a modular sensor on a fixed pivot point of the Asano pedal was a design step well within the grasp of a person of ordinary skill in the relevant art. Its arguments, and the record, demonstrate that claim 4 of the Engelgau patent is obvious. In rejecting the District Court's rulings, the Court of Appeals analyzed the issue in a narrow, rigid manner inconsistent with § 103 and our precedents. The judgment of the Court of Appeals is reversed, and the case remanded for further proceedings consistent with this opinion.
    • Case goes back to District Court for a retrial without claim 4. Summary Judgement is invalid. KSR now has to present their case.

Novelty

Gottschalk v. Benson

  • 1972
  • Relates primarily to 35 U.S.C. 101 (inventions patentable)
    • process, machine, manufacture, or composition of matter
  • "Process" is difficult to define
    • Recently, methods of doing business
    • Computer programs
  • Article !, Section 8 of Constitution
  • Benson was seeking the patent; Gottschalk at PTO denied; CCPA granted; USSC denied

Conclusions

  • Can't patent an idea
    • Would stop all innovative progress
    • For something to be patentable, you have to apply ideas to something new and useful.
  • Not In 101
    • Scientific truth
    • Mathematical expression of a scientific truth
    • Idea (reduction to practice)
    • Phenomena of nature (even newly discovered)
  • In 101
    • Structure created with knowledge
    • Application of the law
    • Process resulting in changes (transformations) in materials.
  • Claims 8 & 13 are too fundamental and sweeping, so granting a patent would eliminate too much possible innovation/invention.
  • Process alone is often too fundamental; usually need to include an application
  • Patentability of Computer Programs
    • No current classification; so unpatentable
    • PTO is freaking out

Diamond v. Diehr

Arrhythmia Research Technology, Inc. v. Corazonix Corp.

Claims

Claim 1 is the broadest method claim:

1. A method for analyzing electrocardiograph signals to determine the presence or absence of a predetermined level of high frequency energy in the late QRS signal, comprising the steps of:
converting a series of QRS signals to time segments, each segment having a digital value equivalent to the analog value of said signals at said time;
applying a portion of said time segments in reverse time order to high pass filter means
determining an arithmetic value of the amplitude of the output of said filter; and
comparing said value with said predetermined level.

Claim 7 is a representative apparatus claim:

7. Apparatus for analyzing electrocardiograph signals to determine the level of high frequency energy in the late QRS signal comprising:
means for converting X, Y, and Z lead electrocardiographic input signals to digital valued time segments;
means for examining said X, Y, and Z digital valued time segments and selecting therefrom the QRS waveform portions thereof;
means for signal averaging a multiplicity of said selected QRS waveforms for each of said X, Y, and Z inputs and providing composite, digital X, Y, and Z QRS waveforms;
high pass filter means;
means for applying to said filter means, in reverse time order, the anterior portion of each said digital X, Y, and Z waveform; and
means for comparing the output of said filter means with a predetermined level to obtain an indication of the presence of a high frequency, low level, energy component in the filter output of said anterior portions.

Background

  • Question of law vs. question of fact
    • addresses the jurisdiction of the court
    • Question of law: within the authority of the court to make a ruling on statutory subject matter
    • Question of fact: must be clearly erroneous to overturn
  • USSC has observed that legislative branch intends absolutely anything to be patentable
    • decide that this is wrong, but never explain why.
  • In Parker v. Flook, the Court explained that the criterion for patentability of a claim that requires the use of mathematical procedures is not simply whether the claim “wholly pre-empts” a mathematical algorithm, but whether the claim is directed to a new and useful process, independent of whether the mathematical algorithm required for its performance is novel. Applying these criteria the Court held nonstatutory a method claim for computer-calculating “alarm limits” for use in a catalytic conversion process, on the basis that “once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention.”
  • Freeman-Walter-Abele Test
    • This analysis has been designated the Freeman-Walter-Abele test for statutory subject matter. It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps. Such claims are nonstatutory. However, when the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, the requirements of section 101 are met.
    • Court likes these simple cut-and-dry tests because although they only have to handle a case every several years, the PTO processes thousands of these, so it makes it significantly easier on them, resulting in fewer debates that lead back to the court system.

Decision

  • Reversed
  • Patent Valid

State Street Bank & Trust Co. v. Signature Financial Group, Inc.

Background

  • Case ended in summary judgement
  • Patent
    • Collection of mutual funds
      • hubs and spokes and mutual funds
  • State Street and Signature are both in the business of acting as custodians and accounting agents for multi-tiered partnership fund financial services. State Street negotiated with Signature for a license to use its patented data processing system described and claimed in the '056 patent. When negotiations broke down, State Street brought a declaratory judgment action asserting invalidity, unenforceability, and noninfringement in Massachusetts district court, and then filed a motion for partial summary judgment of patent invalidity for failure to claim statutory subject matter under § 101.

Bilski v. Kappos

Brief of Amici Curiae Entrepreneurial Software Companies in Support of Petitioner

Summary of Argument

Small- to mid-size entrepreneurial software companies represent a considerable portion of U.S. innovation and have significant impact on U.S. global competitiveness. These same companies are being harmed by the overly-narrow, inflexible definition of statutory subject matter outlined by the U.S. Court of Appeals for the Federal Circuit in its decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008).
This Court has long proffered a broad view of patent-eligible subject matter. Without any corresponding change in this Court's precedent, the *3 Federal Circuit has instigated an overly-narrow and limiting test, by which all types of innovation must be evaluated. As a result, many valuable software-related inventions are being left without adequate patent protection.
The inability to appropriately protect software-related innovation is crippling the ability of small- and mid-size entrepreneurial software businesses to compete in the market against more-established companies. Uncertainty caused by the current legal landscape, and the overly-broad application of the machine-or-transformation test, is causing these software companies to lose significant value due to depreciation of their existing patents and patent potential. Furthermore, small- and mid-size software companies are being particularly harmed by the overbearing increase in unpredictability and costs of patent prosecution and enforcement.
Even if the Federal Circuit did not intend for its machine-or-transformation test to be applied to any statutory classes other than methods, the U.S. Patent and Trademark Office and various district courts are extending the test to all statutory classes of innovation. Additionally, there is great inconsistency among the adjudicative bodies regarding the interpretation of the machine-or-transformation test. This Court should recognize its own precedent and maintain a broad view of statutory subject matter, and strike down the rigid machine-or-transformation test, or at the very least indicate clearly that this test does not apply to software patents.

Interpreted:

  • Narrow scope of patentability is stifling small/mid-sized businesses
  • Narrow scope of software patentability is inconsistent with broad scope applied in general.
  • Valuable software-related inventions unprotected
  • Small/Mid-sized companies are suffering
  • Machine-or-Transformation Test created for Methods evaluation
    • PTO is applying to all classes of innovation
    • USSC should reject Machine-or-Transformation Test or at least reject it in the case of software patents

Statutory Bars

35 USC 102

Conditions for patentability; novelty and loss of right to patent

A person shall be entitled to a patent unless—
  1. the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or
  2. the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
  3. he has abandoned the invention, or
  4. the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States, or
  5. the invention was described in an application for patent, published under section 122 (b), by another filed in the United States before the invention by the applicant for patent or a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351 (a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; [1] or
  6. he did not himself invent the subject matter sought to be patented, or
  7. during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

Important Dates

  • Date of invention (1)
    • Patent void if
      • known or used prior to this date by
        • others in U.S.
      • printed or patented
        • applicant
        • others foreign
  • 1 year prior to patent application (2)
    • Patent void if
      • printed or patented by
        • anyone U.S.
        • anyone foreign
      • public use or sale in
        • U.S.

Purpose & Intention

  • Prevent inventors from establishing a business advantage, profiting from it until competition arises, and then patenting the invention to squash competition and extend monopoly.

Egbert v. Lippmann

Patent

Improvement in corset springs

  • Allowed metal plates to move longitudinally, but not laterally, increasing flexibility while maintaining strength.
  • Invented by Samuel H. Barnes in 1866

Case

  • Appeal from the Circuit Court of the United States for the Southern District of New York.
  • The original letters bear date July 17, 1866, and were issued to Samuel H. Barnes.
    • The reissue was made to the complainant, under her then name, Frances Lee Barnes (Egbert), executrix (female executor of a will) of the original patentee, in 1873.
  • We have to consider whether the patented invention had, with the consent of the inventor, been publicly used for more than two years prior to his application for the original letters.
  • Joseph H. Sturgis, another witness for complainant, testifies that in 1863 Barnes spoke to him about two inventions made by himself, one of which was a corset-steel, and that he went to the house of Barnes to see them. Before this time, and after the transactions testified to by the complainant, Barnes and she had intermarried. Barnes said his wife had a pair of steels made according to his invention in the corsets which she was then wearing, and if she would take them off he would show them to witness. Mrs. Barnes went out, and returned with a pair of corsets and a pair of scissors, and ripped the corsets open and took out the steels. Barnes then explained to witness how they were made and used.

Conclusions

Public

  • No restrictions
  • Number sold doesn't matter
  • Number of people that used it doesn't matter
  • Small or hidden items are still "public"
    • Dissentor disagreed with this point

Private

  • Restrictions on use
    • secrecy
    • experiment

Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc.

Patent

Process to treat metal surface

  • sprayed on surface bonds better
  • conditioning

Public Use

  • Things produced by secret process
    • Only one place was producing

Conclusions

  • Regardless of whether or not the invention itself is public, if the output of that invention is sold in public for more than one year, the patent is invalid
  • Precedent
    • Machine, not process
      • no knowledge
Coming now to our own decisions (the opinions in all of which I wrote), the first was Grasselli Chemical Co. v. National Aniline & Chemical Co., 2 Cir., 26 F.2d 305, in which the patent was for a process which had been kept secret, but the product had been sold upon the market for more than two years. We held that, although the process could not have been discovered from the product, the sales constituted a ‘prior use,’ relying upon Egbert v. Lippmann, supra, 104 U.S. 333, 26 L.Ed. 755, and Hall v. Macneale, supra, 107 U.S. 90, 2 S.Ct. 73, 27 L.Ed. 367. There was nothing in this inconsistent with what we are now holding. But in Peerless Roll Leaf Co. v. Griffin & Sons, supra, 2 Cir., 29 F.2d 646, where the patent was for a machine, which had been kept secret, but whose output had been freely sold on the market, we sustained the patent on the ground that ‘the sale of the product was irrelevant, since no knowledge could possibly be acquired of the machine in that way. In this respect the machine differs from a process * * * or from any other invention necessarily contained in a product’ 29 F.2d at page 649. So far as we can now find, there is nothing to support this distinction in the authorities, and we shall try to show that we misapprehended the theory on which the prior use by an inventor forfeits his right to a patent. In Aerovox Corp. v. Polymet Manufacturing Corp., supra, 2 Cir., 67 F.2d 860, the patent was also for a process, the use of which we held not to have been experimental, though not secret. Thus our decision sustaining the patent was right; but apparently we were by implication reverting to the doctrine of the Peerless case when we added that it was doubtful whether the process could be detected from the product, although we cited only Hall v. Macneale, supra, 107 U.S. 90, 2 S.Ct. 73, 27 L.Ed. 367, and Grasselli Chemical Co. v. National Aniline Co., supra (2 Cir., 26 F.2d 305). In Gillman v. Stern, supra, 2 Cir., 114 F.2d 28, it was not the inventor, but a third person who used the machine secretly and sold the product openly, and there was therefore no question either of abandonment or forfeiture by the inventor. The only issue was whether a prior use which did not disclose the invention to the art was within the statute; and it is well settled that it is not. As in the case of any other anticipation, the issue of invention must then be determined by how much the inventor has contributed any new information to the art.

D.L. Auld Co. v. Chroma Graphics Corp.

Elizabeth v. American Nicholson Pavement Company

  • 2 defenses:
    • Not novel; other prior art
    • Public use

Public Use

  • Timeline
    • 1848: Mill-dam Road (privately-owned toll road in public domain)
    • 1852:
    • 1854: Application & Issue
    • 1867: Re-Issue
  • Held:
    • not public use
    • it was testing to ensure it worked
  • Evidence of experimentation
    • keep records
    • no profit
    • confidentiality
    • control
    • observation
    • no other way to test

Lough v. Brunswick Corp.

UMC Electronics Co. v. U.S.

  • Necessary and Sufficient conditions
    • A->B (Necessary)
    • A<-B (Sufficient)
  • Patent
    • Aviation Counting Accelerometer (ACA)
      • counts the number of times an airplane reaches a certain acceleration
      • cant distinguish btwn different kinds of acceleration
  • Dates
    • Late 1966 - UMC-A contract
    • UMC-A no good
    • May, 1967 - UMC-B prototype (subcomponent)
    • July, 1967 - UMC-B proposal
    • Early 1968 - UMC-A contract cancelled
    • August 1,1968 - UMC-B application filed
    • 1987 - Resolved

Ruling

  • Timothy Products
    • Offer to sell
    • Reduction to Practice (on appeal, no reduction to practice; only prototyped subcomponents)
    • For profit, not experimentation
  • Reduction to Practice not needed

Dissent

  • Wants physical manifestation/model
  • Doesn't think that drawings alone should be sufficient for patents
  • The work of the inventor must be finished, physically as well as mentally. Nothing must be left for the inventive genius of the public

Pfaff vs. Wells Electronics

  • Dates
    • April 8, 1981 - TI orders parts
      • Did not make a prototype before sale, only drawings
    • Reduced to Practice
      • same as drawings
      • physically existed
    • July, 1981 - Actually sends parts
    • April 19,1982 - Application
    • 1998 - Case resolved

Ruling

  • On-sale bar applies when invention exists as a completed concept, not when it's "reduced to practice"
    • must be subject of a commercial offer for sale
    • must be ready for patenting
      • reduction to practice before critical date, OR
      • drawings so detailed that someone skilled in the art could produce a copy

Electric Storage Battery Co. v. Shimadzu

Timeline

  • 8/1919 - Invention (Japan)
    • No foreign patents or printed publications
  • 1/1921 - Production (USA)
  • 6/1921 - Commercial Production (USA)
  • 1/1922 - First Application
  • 7/1923 - Second Application
  • 1926 - Third Application

Case

  • Defense 1
    • If the defendant can say that, as far as USA is concerned, application date is invention date, then the patent is invalid because they had begun production before the application.
      • There is force in the petitioner's argument that the distinction seems illogical. Thus, if a diligent domestic inventor applies, in good faith believing himself to be the first inventor, Section 4923 assures him a patent and gives it priority, despite prior foreign use, even though that use is evidenced by a patent applied for after the invention made in this country. The foreign applicant or patentee cannot carry the date of his invention back of the date of application in this country, as the holder of a later patent for an invention made here would be permitted to do in order to establish priority. On the other hand, a domestic inventor who is willing to dedicate his invention to the public may be held as an infringer by reason of the later patenting of an invention abroad which antedates the invention and use in this country; and so is put in a worse position vis a vis a foreign inventor who subsequently secures a patent, and succeeds in establishing an earlier date of invention, than he would occupy if he had promoted his own interest by procuring a patent.
    • If the defendant had filed an application before or after Shimadzu, the law would clearly grant the patent to the defendant. Evidence from Japan would be irrelevant in this scenario.

Interferences

  • 35 U.S.C. 135
    • If such a conflict had arisen with two domestic inventors, it would go before a board to determine the order of invention after the director had declared 'interference' and notified the relevant parties.

In re Carlson

In re Hall

Timeline

  • Sept 1977 - Foldi submitted dissertation to Dept of Chemistry and Pharmacy at Freiburg University (Germany)
  • Nov 2, 1977 - Foldi awarded doctorate degree
  • Dec 1977 - Copies of dissertation made available to faculty and students of Freiburg University and to general public
  • Feb 27, 1979 - Effective filing date for Hall

Notes

  • Important distinction is that the dissertation was printed and published in the library
    • publicly available

Other IP Law

Patents

Copyright

  • 17 U.S.C.
  • Covers original works of authorship fixed in a tangible medium

Trademark

Trade Secrets

  • State laws (vary)
  • Typically covers technical things used in business (like patents)
  • If you have a secret formula/process not patented and known only to certain individuals who use it in ... manufacturing some article of trade having commercial value. It is rarely, if ever, used to denote the mere privacy with which an ordinary commercial business is carried out.
  • Property Right: protection against unauthorized disclosure and if it is disclosed, can receive monetary compensation.
  • This is the law of torts: One is liable when he or she uses or discloses a trade secret if
    • he discovered it by improper/illegal means
    • the disclosure or use is a breach of confidence
    • he learned of it in from a third person with knowledge that it was a secret and the third party was breaching his duty
    • he had notice it was a secret and the disclosure was a mistake
  • Unlike patents, in trade secrets:
    • someone can come up with the same formula/process independently or by reverse engineering
    • can be only marginally removed from common knowledge (no nonobviousness requirement)
    • no filing requirements or applications

Infringement

CCS Fitness, Inc. v. Brunswick Corporation

Graver Tank & Mfg. Co. v. Linde Air Products Co.

Warner-Jenkinson Company v. Hilton Davis Chemical Co.

Warner-Jenkinson v. Hilton Davis Respondent Brief

Summary of Argument

The judgment finding Petitioner liable for patent infringement under the doctrine of equivalents should be affirmed. The Federal Circuit, exclusively charged by Congress to unify the patent law, after spirited debate, with benefit of the enlightened wisdom of its full en banc membership, and with the assistance of numerous amici curiae, faithfully restated the principle of the doctrine of equivalents defined in Graver Tank & Manufacturing Co. v. Linde Air Products Co. and its predecessors as wise and pragmatic law, fully consistent with the Patent Act of 1952 and Article I § 8, cl. 8 of the Constitution. Petitioner, by challenging the doctrine of equivalents itself, seeks to destroy one of the most important bulwarks underlying our country's patented technology. To affirm the decision below assures the continuance of this necessary rule of law. To change the law returns our patent system to the dark ages where anyone can “practice a fraud on a patent” simply by making “unimportant and insubstantial changes”-an anathema to this Court's wisdom of Graver Tank.

The court below correctly held that the doctrine of equivalents was neither judicially repealed nor affected by the 1952 Patent Act. Further, this Court has recently confirmed in Markman v. Westview Instruments, Inc. that patent infringement incorporates not only literal infringement but also infringement under the doctrine of equivalents.

Previously, in Aro Manufacturing Co. v. Convertible Top Replacement Co., this Court determined that the infringement provisions of the 1952 Patent Act left intact the entire body of case law on patent infringement. Thus, the guiding principles of the doctrine of equivalents laid down in Graver Tank and its predecessors were incorporated sub silentio in the 1952 Act. Since that time, despite continual tinkering with the patent laws, Congress has not modified the doctrine. There is, therefore, a presumption, not rebutted, that Congress' failure to repudiate the doctrine of equivalents is tacit recognition of its continued viability. The contention that the doctrine of equivalents conflicts with requirements of precise claiming and correction of mistakes by reissue under the patent statutes was laid to rest by Graver Tank. Finally, this Court's decision in Markman makes it clear that a patentee may invoke the doctrine of equivalents in all cases.

In its decision below, the en banc court seized the opportunity to “restate-not to revise-the test for infringement under the doctrine of equivalents.” In doing so, the court faithfully adopted this Court's fundamental test of “insubstantial differences” viewed according to an objective standard. Thus, the doctrine of equivalents does not depend on equitable factors, including subjective bad faith of the infringer. Faithfully adhering to this Court's precedent, the court below restated the Graver Tank factual considerations relevant to a determination of “insubstantial differences,” including consideration of substantially similar function/way/result, interchangeability of equivalent devices or process steps, copying, independent development and designing around the patent. Nor did the decision below disturb traditional limits on the doctrine of equivalents, such as prosecution history estoppel and limitations imposed by prior art.

Finally, the court below correctly held that the doctrine of equivalents is an issue of fact to be submitted to a jury in a jury trial with proper instructions. Viewed under the historical test and this Court's precedent, the issue of the doctrine of equivalents is properly submitted to a jury as a question of fact. In contrast to the issue resolved in Markman, no decisional precedent has designated the doctrine of equivalents an issue of law for the court alone. Further, the inquiries underlying equivalency are intensely fact dependent and of the type regularly submitted to a jury, requiring balancing of credibility, persuasiveness and weight of evidence-traditional jury functions. Unlike claim interpretation, uniformity is not paramount since each equivalency determination presents unique factual questions. In Winans v. Denmead, this Court established a two-part infringement test: (1) what is the thing patented; (2) has the thing been constructed, used or sold by the defendants. The first inquiry is a question of law; the second is a question of fact to be submitted to a jury. The doctrine of equivalents is not part of the claim interpretation analysis, but is to be applied only after claim construction has been completed by the court as part of the second Winans infringement step. Further, the claim construction analysis under Markman does not require ascertainment of an absolute maximum outer boundary of equivalent structures or processes, with a subsequent determination of whether the accused device or process falls within that boundary. The inquiry is rather a purely factual comparison of “insubstantial differences” between the patented device or process and the accused device or process.

In the 1982 Federal Courts Improvement Act creating the Court of Appeals for the Federal Circuit, Congress endowed that court with exclusive jurisdiction in patent cases and the charge to unify patent law. Fulfilling its mandate, the court below has acted en banc to unify the law of the scope and application of the doctrine of equivalents and to affirm the right to jury trial on that issue. Since those determinations are consistent with congressional intent underlying patent law, including the 1952 Patent Act, the decision below should not be disturbed, but rather should be affirmed.

Highlights

  • Favors affirming infringement under Doctrine of Equivalents
    • Can't rule in favor of Petitioner because that would debunk DoE and send patent law back the the "dark ages"
  • Infringement incorporates not only literal infringement but also infringement under the doctrine of equivalents
  • Congress' failure to repudiate the doctrine of equivalents is tacit recognition of its continued viability
  • The doctrine of equivalents does not depend on equitable factors, including subjective bad faith of the infringer
  • The doctrine of equivalents is an issue of fact to be submitted to a jury in a jury trial with proper instructions
    • The doctrine of equivalents is not part of the claim interpretation analysis, but is to be applied only after claim construction has been completed by the court
  • The claim construction analysis under Markman does not require ascertainment of an absolute maximum outer boundary of equivalent structures or processes, with a subsequent determination of whether the accused device or process falls within that boundary. The inquiry is rather a purely factual comparison of “insubstantial differences” between the patented device or process and the accused device or process.