Intellectual Property

Boston College Law School

February 23, 2009

Patent – Infringement

Infringement

• 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.”

Patent No. 5,205,473

Patent No. 5,205,473

• “What is claimed is:– 1. A recyclable, insulating beverage

container holder, comprising:• a corrugated tubular member comprising

– cellulosic material and at least a first opening therein for receiving and retaining a beverage container, said corrugated tubular member comprising

• fluting means for containing insulating air; said fluting means comprising fluting adhesively attached to a liner with a recylable adhesive

Phillips v. AWH

• We claim:– 1. Building modules … comprising in

combination, • an outer shell …, • sealant means … and • further means disposed inside the shell for increasing

its load bearing capacity comprising internal steel baffles extending inwardly from the steel wall shells

Sources of Interpretation

• Claim language

• Patent specification

• Prosecution history

• Extrinsic evidence– Expert testimony– Dictionaries– Treatises

Canons of Construction

• Relationship of claims to specification– Can refer to specification for express definition– Can refer to specification where ambiguity

• Claim differentiation– Interpret so as to avoid redundant claims

• Presumptions about breadth– Interpret to preserve validity– Where two equally valid, adopt narrower one

Larami v. AmronSuperSoaker 200 ‘129 Patent

Claim 1: “[a] toy comprising an elongated housing [case] having a chamber therein for a liquid [tank], a pump including a pistonhaving an exposed rod [piston rod] … facilitating manual operation for building up an appreciable amount of pressurein said chamber for ejecting a stream of liquid therefrom …”

Doctrine of Equivalents

• Tests– Substantially same function, way, result– Insubstantial differences

• Evidence– Circumstances, purpose, prior art– Would PHOSITA have viewed interchangeable?

• Details– All-elements rule– Measured at time of infringement

Patent No. 5,205,473

Patent No. 5,205,473

• “What is claimed is:– 1. A recyclable, insulating beverage

container holder, comprising:• a corrugated tubular member comprising

– cellulosic material and at least a first opening therein for receiving and retaining a beverage container, said corrugated tubular member comprising

• fluting means for containing insulating air; said fluting means comprising fluting adhesively attached to a liner with a recylable adhesive

Patent No. 5,425,497

Doctrine of Equivalents

• Limitations– Claim on prior art– Prosecution history estoppel– Disclosed but not claimed

Warner Jenkinson

pH

9.08.07.06.05.0

BoothHilton

OriginalHilton

Amended Warner

?

Festo

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

the amendment?

Doctrine of Equivalents

Claims

Prior Art

ProsecutionHistoryEstoppel

Equivalentsfor PioneerInvention

Equivalentsfor MinorInvention

Patent No. 5,205,473

Patent No. 5,205,473

• “What is claimed is:– 1. A recyclable, insulating beverage

container holder, comprising:• a corrugated tubular member comprising

– cellulosic material and at least a first opening therein for receiving and retaining a beverage container, said corrugated tubular member comprising

• fluting means for containing insulating air; said fluting means comprising fluting adhesively attached to a liner with a recylable adhesive

Patent No. 5,425,497

Administrative

• Assignment for next class– Finish IV – In IV.C.3, skip:

• Subject Matter Disclosed But Not Claimed

• Johnson & Johnson