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Defenses & Counterclaims II. Class Notes: March 25, 2003 Law 677 | Patent Law | Spring 2003 Professor Wagner. Today’s Agenda. Inequitable Conduct Patent Misuse & Antitrust First Sale Implied License Repair versus Reconstruction. Inequitable Conduct. Considers Behavior Before the PTO

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Defenses counterclaims ii

Defenses & Counterclaims II

Class Notes: March 25, 2003

Law 677 | Patent Law | Spring 2003

Professor Wagner

Today s agenda
Today’s Agenda

  • Inequitable Conduct

  • Patent Misuse & Antitrust

  • First Sale

  • Implied License

  • Repair versus Reconstruction

Law 677 | Spring 2003

Inequitable conduct
Inequitable Conduct

  • Considers Behavior Before the PTO

  • Can include misrepresentations, failure to disclose, or submission of false information

  • Test:

    • Establish that baseline levels of materiality and intent exist. (Factual analysis.)

    • Balance materiality and intent to determine inequities involved. (Discretion by Court.)

Law 677 | Spring 2003

Inequitable conduct intent
Inequitable Conduct: Intent

  • Kingsdown Medical Consultants (Fed. Cir. 1988)

    • What did Kingsdown’s patent attorney do?

    • Why does the court emphasize that the claims-at-issue were patentable? (How does this fit in the analysis?)

    • Why does gross negligence ≠ intent for IC? (Can’t gross negligence cause the same problems for the PTO/public that inequitable conduct is designed to address?)

    • What is the ‘rule’ for intent? (What is the intent to be directed towards?) How do you show it?

Law 677 | Spring 2003

Inequitable conduct materiality
Inequitable Conduct: Materiality

  • Critikon v Becton-Dickenson (Fed. Cir. 1997)

    • Why take the materiality standard from the PTO’s rules?

      • Pre-1992: ‘important to a reasonable examiner’

      • Post-1992: ‘establishes prima facie case of invalidity / refutes argument put forth my applicant”

    • Why does the court find that the McDonald patent should have been disclosed? (How does one know when a prior art reference is sufficiently unrelated to not disclose?)

    • Why should the existence of litigation concerning the patent have been disclosed during reissue?

    • What does the court’s expansive approach to materiality suggest about incentives to search for prior art?

Law 677 | Spring 2003

Inequitable conduct hypos
Inequitable Conduct: Hypos

  • Halfway through the prosecution process, you find relevant prior art. In order to avoid slowing the process, you simply amend the claim to avoid the art (everyone agrees you were successful in doing so) rather than notifying the examiner. Inequitable conduct?

  • After finding relevant prior art, you file a notice with the PTO, listing the problematic reference together with 35 other less relevant (but not irrelevant) documents. Inequitable conduct?

    • You claim to have submitted the quantity or art to impress the examiner with the scope of your search. Any change?

  • The inventor of the patent application you are prosecuting tells you that she does not know of any relevant prior art; accordingly, you do not notify the PTO of any. After the patent has issued, it becomes clear that the inventor did know of relevant prior art. Inequitable conduct?

Law 677 | Spring 2003

Patent misuse
Patent Misuse

  • Misuse: impermissibly broadening the physical or temporal scope of the patent

  • Mallinckrodt v Medipart (Fed. Cir. 1992)

    • Why do you think Mallinckrodt marks its device for ‘one use only’? (What are the social benefits?)

    • What is the argument that the restriction on reuse is a form of patent misuse?

    • What, specifically, are the things a patentee cannot do under the misuse doctrine?

      • Tie-in

      • Price-fixing

      • Other?

    • How does the court describe the analysis/rule?

Law 677 | Spring 2003

Patent antitrust

  • Key case: In re ISO II (Fed. Cir. 2001)

    • Xerox refuses to sell patented parts to ISOs, with the goal of expanding into the service market

    • Why does the Federal Circuit decline to find an antitrust violation? (Do you agree?)

    • Consider the following antitrust violations:

      • Illegal tying

      • Fraud at the PTO (Walker-Process Fraud)

      • Sham Litigation

      • Does this exhaust the list of problematic circumstances?

    • Do you agree with the view that patentees may refuse to deal, but may not condition sales where anticompetitive concerns exist?

Law 677 | Spring 2003

First sale
First Sale

  • Limitations on Patent Rights

  • First Sale Doctrine

  • The Doctrine of Implied License

  • Repair versus Reconstruction

    First Sale Doctrine: sale of a patented product implies …

    • Purchasers can use the product

    • Purchasers can re-sell the product

      Note: can be overridden by contract terms

      What is the theory supporting this doctrine?

Law 677 | Spring 2003

Implied license repair reconstruction
Implied License / Repair & Reconstruction

  • Implied license: arises from equitable estoppel

  • Typically requires ‘inferred consent’ to use the patented invention

  • Repair versus Reconstruction

    • Repair: okay; reconstruction: not okay (Why?)

    • Key issue: how to determine repair/reconstruction line

Law 677 | Spring 2003

Defenses counterclaims ii

  • Next Class

  • Defenses & Counterclaims III

  • Limitations on Patent Licenses

  • First Inventor Defense

  • Experimental Use Defense

Law 677 | Spring 2003