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Patent Infringement II. Intro to IP – Prof Merges 2.2.09. Topics Today. Recap Doctrine of Equivalents; prosecution history estoppel Briefly review contributory infringement Foreign infringement. Equivalents/Literal Claim Scope. Range of Equivalents. Literal Claim Scope.

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patent infringement ii

Patent Infringement II

Intro to IP – Prof Merges

2.2.09

topics today
Topics Today
  • Recap Doctrine of Equivalents; prosecution history estoppel
  • Briefly review contributory infringement
  • Foreign infringement
equivalents literal claim scope
Equivalents/Literal Claim Scope

Range of

Equivalents

Literal

Claim

Scope

doctrinal sequence
Doctrinal Sequence
  • FIRST: What is the literal meaning of the claim language?
  • THEN: If the accused product falls outside that language, is it an “equivalent” of the claimed invention?
what is the test for equivalence
What is the test for equivalence?
  • Is the accused product an “insubstantial alteration” under Warner-Jenkinson and Festo?
  • Even if so, was this trivial variation on the claim “given up” during patent prosecution; in which case, equivalents are “estopped”
equivalents literal claim scope1
Equivalents/Literal Claim Scope

Range of

Equivalents

Literal

Claim

Scope

What is a “baffle”? Is the tank “thereon”?

equivalents literal claim scope2
Equivalents/Literal Claim Scope

Range of

Equivalents

Literal

Claim

Scope

Is a single sealing ring equivalent to “a pair” of them?

prosecution history estoppel
Prosecution History Estoppel
  • Warner-Jenkinson: presumption that part of claim coverage is surrendered when applicant amends claim
  • Festo case: 3 Ways to beat the presumption
  • Post-Festo developments: “disclosed but not claimed”/dedicated to the public
slide9

“Range of Equivalents”

Literal Claim Scope

Infringement under DOE ?

warner jenkinson
Warner-Jenkinson
  • DOE Survives challenge
  • Presumption in cases of claim amendment: amendment made for reasons related to patentability; prosecution history estoppel applies

 SO: Presumption of no DOE, you are limited to your literal claim language

slide12

Original Claim Scope

Narrowed Scope, after amend-ment

re service v johnson johnston
RE Service v. Johnson & Johnston
  • What was disclosed?
  • What was claimed?
disclosed
Disclosed
  • Aluminum and steel plates, for use as “backing” to protect copper sheets in manufacture of circuit boards
claimed
Claimed
  • Use of alumunim plates only
slide18
Held
  • Subject matter (i.e., embodiments of the inventive concept) disclosed but not claimed is “dedicated to the public” –
    • Cannot be recaptured through doctrine of equivalents
contributory infringement
Contributory Infringement
  • Can you be held liable for patent infringement when you do something less than a complete act of infringement?
cr bard v advanced cardiovascular systems inc
CR Bard v. Advanced Cardiovascular Systems, Inc.
  • Claim: “Method for using a catheter in coronary angiolasty”
  • Who infringes this claim? The surgeon
why does bard sue acs
Why does Bard sue ACS?
  • Sue where the money is
  • Don’t sue your customers
how can bard sue acs
How can Bard sue ACS?
  • Must argue that ACS does something essential to infringement; “aids and abets” the infringement
  • Two labels for this in patent law, and IP law generally
contributory infringement inducement
Contributory infringement & inducement
  • Two labels, conceptually similar acts
indirect infringement inducement and contributory infringement
Indirect infringement: Inducement and contributory infringement

35 USC 271 (b):

Whoever actively induces infringement of a patent shall be liable as an infringer.

35 usc 271 c
35 USC 271(c)

(c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

substantial noninfringing uses
Substantial noninfringing uses?
  • Claim specifies catheter opening location
  • Are there noninfringing uses of the defendant’s catheter?
slide29
MICROSOFT CORP. V. AT & T CORP.

Title 35 U.S.C. § 271(f)(1) provides that it is an act of direct patent infringement to

“suppl[y]. . . from the United States . . . components of a patented invention . . . In such manner as to actively induce the combination of such components outside of the United States.”

slide30
The questions presented are:

(1) Whether digital software code—an intangible sequence of “1’s” and “0’s”—may be considered a “component[ ] of a patented invention” within the meaning of Section 271(f)(1); and, if so,

(2) Whether copies of such a “component[]” made in a foreign country are “supplie[d] . . . from the United States.”

the statute 35 usc 271 f
The Statute – 35 USC § 271(f)

(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

section 271 f 2
Section 271(f)(2)

(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

schematic 271 f 1
Schematic: 271(f)(1):

[1] Whoever without authority

[a] supplies or causes to be supplied

[b] in or from the United States

[c] all or a substantial portion of the components of a patented invention,

[2] where such components are uncombined in whole or in part,

[3] in such manner as to actively induce the combination of such components outside of the United States

[4] in a manner that would infringe the patent if such combination occurred within the United States,

shall be liable as an infringer.

slide34
[1]Whoever without authority

[a] supplies or causes to be supplied

[b] in or from the United States

[c] any component of a patented invention

[i] that is especially made or especially adapted for use in the invention and

[ii] not a staple article or commodity of commerce suitable for substantial noninfringing use,

[2] where such component is uncombined in whole or in part,

[3] knowing that such component is so made or adapted and

[4] intending that such will be combined

[a] outside of the United States

[b] in a manner that would infringe the patent if such combination occurred within the United States,

shall be liable as an infringer.

history
History

271(f): Enacted to overturn Supreme Court opinion in Deep South Packing v. Laitram, 406 U.S. 518 (1972) (accused infringer sold and shipped three separate boxes which, when opened and assembled according to provided instructions in less than an hour, resulted in fully operable infringing device under machine combination patent).

deepsouth 1972
Deepsouth (1972)

“We cannot endorse the view that the ‘substantial manufacture of the constituent parts of [a] machine’ constitutes direct infringement when we have so often held that a combination patent protects only against the operable assembly of the whole and not the manufacture of its parts.” 406 U.S. at 528.

slide37
The questions presented are:

(1) Whether digital software code—an intangible sequence of “1’s” and “0’s”—may be considered a “component[ ] of a patented invention” within the meaning of Section 271(f)(1); and, if so,

(2) Whether copies of such a “component[]” made in a foreign country are “supplie[d] . . . from the United States.”

slide38
271(f) enacted “to close a loophole in patent law.” The legislative history indicates that the provision's primary purpose is “[to] prevent copiers from avoiding U.S. patents by supplying components of a patented product in this country so that the assembly of the components may be completed abroad.” -- Patent Law Amendments Act of 1984, Pub. L. No. 98-622, 101, 98 Stat. 3383 at 5828
at t v microsoft
AT&T v. Microsoft

AT&T owns Atal et al., US Patent Re 32,580 (originally 4,472,832), “Digital Speech Coder,” Jan. 19, 1988. This patent covers speech compression and decompression techniques developed at Bell Labs. AT&T claimed a portion of Microsoft’s Windows product infringed the patent.

procedural history
Procedural History

Trial court held that liability could be established under 271(f) for export of “golden master” disks containing Windows. The golden masters were used by Microsoft licensees to install Windows on personal computers manufactured and sold in overseas countries, e.g., Germany and Japan. Microsoft appealed to the Federal Circuit.

federal circuit holding
Federal Circuit Holding:

Export of golden master disks was a violation of 271(f). Software on the disks is a “component,” and the sending of the disks overseas was “suppl[y]” of such a component under 271(f).

component
“Component”:

“Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005), issued while the instant appeal was pending, held that ‘software could very well be a “component” of a patented invention for the purposes of § 271(f).’ Id. at 1339.”

supplied
“Supplied”:

“It is inherent in the nature of software that one can supply only a single disk that may be replicated – saving material, shipping, and storage costs – instead of supplying a separate disk for each copy of the software to be sold abroad. All of such resulting copies have essentially been supplied from the United States.” – 414 F.3d at 1370.

slide44
Supreme Court held that software may constitute a “component” under 271(f)(2), at some point but that sending the “golden master” as in the Microsoft case was NOT “supply” of a software component under the statute.

See page 320: when does software become a component? (When embodied on a medium)

policy
Policy

The Federal Circuit’s holding extended United States patent law to foreign markets

Said to put United States software companies at a competitive disadvantage vis-a-vis their foreign competitors in foreign markets.

AT&T Should seek independent foreign patents to cover the acts alleged here