Patent LawFall 2010

Class 1: 8.17.2010

Professor Merges

Logistics

• Office hours: Tuesdays, 1:30 – 2:40, or by appt.

• 438 North Addition

• rmerges@law.berkeley.edu – x 3-6199

Logistics II

• Course mailing list

• Posting selections from PowerPoint slides

• Website: http://www.law.berkeley.edu/institutes/bclt/students/courses_html

www.law.berkeley.edu/institutes/bclt

Logistics III

• bSpace course page– Syllabus– Email archive– Seating Chart

• Note the schedule

Developments to watch – legislation

• Patent Reform Bill, may pass this fall after election; will probably be modest (possibly 1st to file priority, reexam reform, other detailed provisions)

Where to follow cases, developments

• Patently-O Blog

• BNA Patent Trademark Copyright Journal Daily

• US Patent Quarterly (BNA)

2 Main Topics Today

• Introduction patent system

• Claims, patent document: how to read (and write) a patent

Venetian Patents

Glassmaking Tools

Patents in Britain

• Association of patents with corrupt crown privileges

• End of these abusive practices: the Statute of Monopolies, 1623

Opposing principles in US Patent Law

• Technology as a force for good in a wild, untamed wilderness where labor is scarce

• Patents as the remnants of royal privilege; vestige of discredited monarchy and vested power

Thomas Jefferson v. Alexander Hamilton

If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it. Its peculiar character, too, is that no one possesses the less, because every other possesses the whole of it.

He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine receives light without darkening me. That ideas should freely spread from one to another … for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density at any point, and like the air . . . incapable of confinement or exclusive appropriation. Invention, then, cannot be a subject of property.

Letter from Thomas Jefferson to Isaac MacPherson, Aug. 13, 1813, reprinted in The Portable Thomas Jefferson 531 (Merrill D. Peterson ed. Penguin Books 1977)

“Jeffersonian Moments” in US Patent Law

• Early federal period (1790-1800); Jacksonian era (1830s); Progressive era (1895-1915); New Deal period (1932-1945); 1960s and 1970s

William O. Douglas

Alexander Hamilton

Technology and the primeval forest

“Dark forests from the view recede, and herds and flocks in safety feed, and plenty crown a cheerful home where prowling wolves were wont to roam.”

-- Sturbridge, Massachusetts Centennial, July 4, 1838

Hamiltonian moments in US Patent Law

• Federalist period (1800-1830); Mid-nineteenth century (1865-1890); 1920s; 1950s; 1980-?

Justice Joseph Story

R. Kent Newmyer, Supreme Court Justice Joseph Story: Statesman of the Old

Republic (UNC Press 1986)

“In these [patent] cases [Story] moved away from undue reliance on English law in the direction of an American patent law that would favor inventors and, following the spirit of the Constitution, serve national interest by promoting technological progress. . . . Story’s authority . . . was of immense importance in giving legitimacy to the new position. [H]e was identified by contemporaries as the pioneer in the liberalization of American patent law.”

AMESv.

HOWARD1 F.Cas. 755 (CCD Mass. 1833)

“The constitution of the United States, in giving authority to congress to grant such patents for a limited period, declares the object to be to promote the progress of science and useful arts, an object as truly national, and meritorious, and well founded in public policy, as any which can possibly be within the scope of national protection. Hence it has always been the course of the American courts . . . to construe these patents fairly and liberally, and not to subject them to any over-nice and critical refinements. . . .; and when the nature and extent of that claim are apparent, not to fritter away his rights upon formal or subtle objections of a purely technical character.”

Patent Document: Main Features

• CLAIMS!

– Very important now, Sup Ct, Federal Circuit jurisprudence

• Specification– Key: relationship to claims– Timing issues

Cupholder – claim 1

Dependent Claims

Claim Scope 101

• What is the goal?

–Maximize “SHELF SPACE” you own

• How do you get there?

– By drafting broadest claim(s) possible

More space, more $$!

P. 36: “A cup holder comprising a band of insulating material.”

Claim Breadth

Short, broad claim

Band with interlock-ing ends

“Band of insulating material” Band

withOUT interlock-ing ends

NO INFRINGEMENT OF NARROW CLAIM

The “Noon” Patent – p. 44

P. 46: “A cupholder comprising a strip of insulating material, said strip having two ends capable of interlocking to form a band for receiving a cup.”

P. 36: “A cup holder comprising a band of insulating material.”

“Less is More”

Narrower, longer claim

Band without interlock-ing ends

Insulating Band, interlocking ends

3) “All red shirts”

Broadest Claim (Claim 1): All Clothing

Claim 2): All Shirts

Cupholder – claim 1

Dependent Claims

Dealing with Prior Art

• Multiple claims– More variations in scope, more chances to own

the key piece of shelf space– More chances that at least one claim will end up

valid and valuable

• Disclosure, searches, prosecution– A complex calculus governs searching for and

including prior art– Willfull infringement/inequitable conduct

“picture claim”

Broadest Claim (Claim 1)

Special case: dependent claim

“the ____ of claim 1, wherein the _____ [element] comprises ______.”

Dependent claims define subsets of the claims form which they depend

1. A cupholder comprising a band of insulating material.

Claim 1

‘473 Coffin Sr. – tubular preformed

Claim 1

Noon prior art holder

Claim 1

‘473 Coffin Sr. – tubular preformed

Noon prior art holder

Claim 1

“Less is More” (Enforceable)

Narrower, longer claim

Noon prior art holder

Corrugated paper strip w/ “slotted” closure

‘473 Coffin Sr. – tubular preformed

• United States Patent 5,425,497 Sorensen June 20, 1995 Cup holder

• Abstract• A cup holder is disclosed in the form of a sheet with distal

ends. A web is formed in one of the ends, and a corresponding slot is formed in the other end such that the ends interlock. Thus the cup holder is assembled by rolling the sheet and interlocking the ends. The sheet can be an elongate band of pressed material, preferably pressed paper pulp, and is preferably formed with multiple nubbins and depressions. In one embodiment, the sheet has a top and bottom that are arcuate and concentric, and matching webs and cuts are formed in each end of the sheet, with the cuts being perpendicular to the top of the sheet.

• Inventors: Sorensen; Jay (3616 NE. Alberta Ct., Portland,

OR 97211) Appl. No.: 150682Filed: November 9, 1993

Narrowing Amendment

“prior Art Chart”

• P. 45

• Multiple features, compared to claim

United States Court of Appeals for the Federal Circuit

04-1097

INNOVA/PURE WATER, INC.,

Plaintiff-Appellant,

v.

SAFARI WATER FILTRATION SYSTEMS, INC.

(doing business as Safari Outdoor Products),

Defendant-Appellee.

Safari's accused product is a water bottle with a tube of filtering material, a bottle cap, and a valve. In operation, the tube of filtering material is suspended in the mouth of the bottle by means of an annular flange that rests on the mouth of the bottle. The tube of filtering material is mechanically sealed in position when the bottle cap is screwed over the mouth of the bottle, thereby contacting the annular flange and fixing the tube of filtering material in position to filter water before it exits the bottle.

In part, the independent claims at issue in the '759 patent state:

1. A filter assembly for use with a bottle having a circular cross-section neck or open end to simultaneously cap the neck or open end and filter liquid poured out of the bottle through the neck or open end, comprising:

a tube of filtering material . . . a cap . . . said cap having first and second substantially opposite surfaces . . . a manual valve operatively associated with said cap, in fluid communication with said tube of filtering material and manually movable between a position defining means for allowing liquid flow through said tube and a position defining means not allowing liquid flow through said tube; and

said tube operatively connected to said cap second surface at said tube second open end . . . .

The district court construed the claim term "operatively connected" to require that the tube of filtering material be affixed to the cap, i.e., "not merely adjoining or abutting, but affixing the tube to the cap by some tenacious means of physical engagement that results in a unitary structure."

Concluding that the annular flange arrangement of Safari's accused product is such that the filter tube is "never affixed to the cap by some tenacious means of physical engagement as required by claims 1 and 15," the district court denied Innova's motion for summary judgment and granted Safari's motion for summary judgment of noninfringement.

The district court erred. The asserted claims do not require that the filter tube and cap be affixed to one another in a manner that results in the two components forming a unitary structure.

[T]he district court was correct to look to the ordinary meaning of the terms "operatively" and "connected" and we discern no error in the district court's initial understanding that "the ordinary and customary meaning of 'operatively connected' requires the . . . linking together of the tube and the cap to produce the intended or proper effect."

But the district court erred when it proceeded beyond this plain meaning based on the "[e]xamples of means for connecting the tube to the cap disclosed in the '759 patent," all of which reflect a "physical engagement [between the tube and the cap] that results in a unitary structure."

More space, more $$!

International Harmonization

• 1880s

• 1990s

• Future – consolidation? Worksharing among Big 3 (soon – Big 4?) patent offices?