subject matter "disclosed but not claimed"
johnson and johnston v. RES (2002)
rule: if you have given info to the public not included in the claim, then you have waived your patent rights to that information.
I.
JandJ makes a circuit board that uses aluminum for a protectant. JandJ's 050 patent for their says that "while aluminim is the preferred material, other metals such as stainless steel may be used". then RES began to make the exact same circuit board except the laminates in theirs were made of a steel substrate. RES argued that the JandJ's 050 patent didn't claim steel but limited the scope of the claim to just aluminum and because JandJ didn't need the doctrine of equivalents because JandJ could have foreseen that what could be accomplished with aluminum could be accomplished with other metals, and their not claiming the steel substrate dedicates the information to the public. the patentee's response, "read the spec! i said aluminum or other materials can be used! i even said you can use steel!"
a jury found that RES willfully infringed JandJ's patent under the doctrine of equivalents and awarded JandJ 1.3M. the court ordered an en banc rehearing.
II.
RES challenges that the scope of JandJ's patent claim was limited to aluminum -- though steel was mentioned in the specs, it is unclaimed subject matter and therefore dedicated to the public. cites maxwell, where the patentee's system for paring shoes also contained information about stitching lining on the shoes. the court determined that the lining info was dedicated to the public by maxwell's failure to claim the attachment system, and therefore couldn't be infringed. but maxwell did not establish new law regarding doc of equiv: maxwell is limited to situations where a patent discloses an unclaimed alternative distinct from the claimed invention.
III.
the point of the limitation on the scope of the patent is to create incentive to the patentee to disclose ALL information. the presumption is that what is not claimed is not owned by the patentee but public property, and the public has the undoubted right of use (mahn). claim requirements presuppose the patentee defined his invention in the claims and not in the specification. but the court will read the entire claim to construe its meaning because that's the only way the doc of equivalents can be applied. infringement, either literally or under doctrine of equivalents, does not arise by comparing the accused product "with a preferred embodiment described in the specification, or with a commercialized embodiment of the patentee's invention."
IV.
when a patent drafter discloses but declines to claim subject matter, as in this case, the action dedicates that unclaimed subject matter to the public. application of doctrine of equivalents to recapture subject matter that was surrendered would "conflict with the primacy of the claims in defining the scope of the patentee's exclusive right."
V.
JandJ's 050 patent specifically limited the claims to a "sheet of aluminum". but the specification clearly reads other materials such as steel may be used." having disclosed without claiming the steel, JandJ cannot now invoke the doctrine of equivalents to extend its aluminum limitation to encompass steel too, so the docrine of equivalents cannot apply to the unclaimed steel substrate. REVERSED.
concurrence: the doctrine of equivalents does not capture subject matter that the patent drafter reasonably could have foreseen during the application process and included in the claims. a foreseeability bar places a premium on claim drafting and enhances the notice function of claims.if a PHOSITA can reasonably anticipate ways to evade the lateral claim language, the patentee has an obligation to cast his claim to provide the PTO with notice of coverage, and draft claims that capture all reasonably foreseeable ways to practice the invention.
dissent: newman says that this is also going to promote the nondisclosure of information to public domain. if we punish patentees for not repeating everything in the patent what they've put in the claim, then there will be a loss to the public domain.
the court's opinion describes two techniques for avoiding the effect of its holding: (1) broadening reissues and (2) continuation of the patent application.
After-Arising Technologies.
a primary reason for doctrine of equivalents is to accommodate after-arising technology. all patent protection for amended claims is lost when it comes to after-arising technology, while the doctrine of equivalents will continue to accommodate after-arising technology in unamended claims.
when the patent is on just an improvement, the courts tend not to consider it an equivalent, a product or process that is even a modest distance beyond the literal terms of the claim. but on the otherhand, a pioneer invention (a patent concerning a functin never before performed, a wholly novel device or one that is of such novelty and importance as to make a distinct step in teh progress in teh art) is entiteled to a broad range of equivalents. a court will strech in this case to find infringers even by a product whose characteristics lie considerably outside teh boundaries of the literal claim.
graver tank: SCOTUS confronted with a device accused of infringing inquire whether it performed the same function and achieves the same result as the invention in the claims, and whether it does so in the same way. where the accused device shows only minor or insubstantial variations in one of these elements -- such as the small movement of one part or a mind change in structure -- infringement will be found even if the patentee's invention is a mere improvement.
can new technology, unforeseen at the time the patent was issued, constitute equivalents? a device performing the same function and achieving the same result in the same way as a patented invention can be found to infringe even if it uses technology developed after the patent was issued.
see Hughes Aircraft: partial variationin technique, an embellishment made possible by post-williams tecnhology, does not allow the accused spacecraft to escape the web of infringement.
see Texas Inst: where all of the claimed functions are performed in the accused devices by subsequently developed or improved means, to view each such change as if it were they only change from the disclosed embodiment of the invention it is the entirety of the technology embodied in the accused devices that must be compared with the patent disclosure
reverse doctrine of equivalents
taken too far, DOE could undermine the whole patent system. so there's also the converse: "the patentee may bring the defendant within the letter of his claims, but if the defendant has so far changed the principle of the device such that the claims of the patent, ltierally construed, no longer represent the defendant's actual invention, he is not subject as an infringer (boyden power brake co)
where a device is so far changed that it performs the same or similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the DOE may be used to restrict the claim and defeat the patentee's action (graver tank)
means - PLUS - function claims
Patent Act of 1952, s. 112 P 6: "an element in a claim for a combination ma be expressed as a means or step for performing a specified function without the recital of structure, material or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and existing (not future) equivalents thereof. "
35 USC s.271(c)
stable v. nonstable goods. a market where the only reason the product is useful is for practicing a patent (nonstable goods, an example could be something like a specific type of motor or wheel that can't be used without the patented good). stable goods have lots of independent uses. contributory infringment/ secondary infringment.
contributory infringers are inventors who create minor components of nonstable quality that can be summarily used to infringe upon the patent.
C.R. Bard inc v. Advanced Cardio Systems (ACS)
Bard claimed infringement of a method for using a catheter in coronary angioplasty. the court revered the grant of summ judg and remanded the case.
35 U.S.C. § 271(c), or "contributory infringement," is triggered when a seller provides a part or component that, while not itself infringing of any patent, has a particular use as part of some other machine or composition that is covered by a patent.[3] If there are other valid uses for the product, however, or it is "a staple article or commodity of commerce suitable for substantial noninfringing use," the seller has likely not contributed to a third party's infringement under 35 U.S.C. § 271(c).
under 35 USC s.271(c), the statute requires that ACS sell a catheter for use in practicing the 017 process, which use constitutes a material part of the invention, knowing that the catheter is especially made or adapted for use in infringing the patent, and that the catheter is not a staple article or commodity of commerce suitable for substantial noninfringing use.
a reasonable jury could find that, purusant to the procedure and use of the catheter, it can be used in many noninfringing ways.
"when a charge of contributory infringment is prediated entirely on the sale of an article of commerce that is used by the purchaser to infringe the patent, the public interest in access to that article of commerce is necessarily implicated." (sony v. universal)
35 U.S.C. § 271(b) covers situations where one actively induces the infringement of a patent by encouraging, aiding, or otherwise causing another person or entity to infringe a patent. A potential inducer must actually be aware of the patent and intend for their actions to result in a third party infringing that patent.
a person induces infringement under s. 271(b) by actively and knowingly aiding and abetting another's direct infringement. in this case, there is a question of material fact, so no summ judg.
defenses for patent infringement.
see justice story's argument. patent is for profit, so if there's no affect on the inventor's ability to profit, there's no issue about infringment.
the experimental use defense -- use is in furtherance of defendant's legit business objectives
Roche: generic pharma creator was experimenting with creating a pharmacuetical becausewanted to hit the market with the generic as soon as the patent protected product expired. the fed court said that's not experimental use because you are doing it because you want to profit off the patented product and are doing so while hte product is protected.
in response, congress created 35 USC s.271(e)(1): it shall not be an infringment to make, use or sell within the US or import solely for uses reasonably related to the devlopment and submission of information to the FDA.
yeah, you're using an invention for experimental use but that's not solely amusement, to satisfy curiosity, etc...
maybee court: if it is your business to do these kinds of experimental uses, then that's a business objective, that is not an experimental use that allows you to bypass the patent system. if you want to serve legitamate uses of your institution, you have to get patents that allow you to do that. what's the results?
- condition of employment to license your patent rights to your employer
- avoidance of freerider issues that might let anybody say that their works were purely philosophical
so no non-profit exemption of patenting. what flows from this?
- delays. you either have to wait till the patent runs out or pay for using it. research becomes slower and more expensive.
this is the tradeoff made in every doctrine we've discussed.
Inequitable Conduct.
kingsdown v. hollister.
kingsdown sued hollister for infring of 363 patent for a two-piece ostony appliance for use by patients with openings in the ab wall for release. while kingsdown appeal of other rejected claims was pending, kingsdown saw a two-piece ostomy appliance by hollister. in renumbering the claims, it misnumbered a claim that had been rejected as being accepted. hollister had defenses to the approved claims but not the rejected claims. the misnumbered/misidentified claim was approved, and kingsdown sued hollister in light of it. the district court said tat kingsdown had intended to decive teh PTO and hollister. even if you weren't trying to deceive you were grossly negligent.
the standard is higher than gross negligence. the patentee must intend to deceive the PTO.
must
patent misuse defense.
motion picture patents v. universal film mfg.
patent gives you a right to intellectual property and to practice the information.
universal film is using the reels in a way that edison didn't contract/license them the right to do.
patent on the film can be designed around, but not the patent on the projectors. what's wrong with MPPC saying to the purchasers of the projectors, "you have to use this only to show the reels i lease to you"? edison has the exclusive phenomenon. but why can't he just patent and protect as he wants to? well, once he's created
remember the definition of infringment: makes, sells, uses or imports to US
you didn't create a single patent.
MPPC balances the issues of antitrust and patents: does enforcement of the monopoly on the patented projector allow the owner of the projector patents to extend into another market is a use we want to tolerate for the patent?
35 USC s.271(c)
stable v. nonstable goods. a market where the only reason the product is useful is for practicing a patent (nonstable goods, an example could be something like a specific type of motor or wheel that can't be used without the patented good). stable goods have lots of independent uses.
contributory infringment/ secondary infringment. infringers who create minor components of nonstable quality that can be summarily used to infringe upon the patent.
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