-
1
-
-
21344438281
-
-
A. Samuel Oddi, Un-Unifled Economic Theories of Patents - the Not-Quite-Holy Grail, 71 NOTRE DAMB L. REV. 267, 268 (1996) (comparing attempts to draft an economic theory of patent law to the quest for a unifying scientific theory of the universe). As his title implies, Oddi finds that none of the theories yet proposed adequately accounts for all aspects of patent doctrine. Id. at 271.
-
A. Samuel Oddi, Un-Unifled Economic Theories of Patents - the Not-Quite-Holy Grail, 71 NOTRE DAMB L. REV. 267, 268 (1996) (comparing attempts to draft an economic theory of patent law to the quest for "a unifying scientific theory of the universe"). As his title implies, Oddi finds that none of the theories yet proposed adequately accounts for all aspects of patent doctrine. Id. at 271.
-
-
-
-
2
-
-
34948831530
-
-
§ 103 (2000, stating that a patent may not be obtained for obvious changes made to prior art, see infra Part I.B discussing extensively the modern standard of nonobviousness
-
35 U.S.C. § 103 (2000) (stating that a patent may not be obtained for obvious changes made to prior art); see infra Part I.B (discussing extensively the modern standard of nonobviousness).
-
35 U.S.C
-
-
-
3
-
-
85081484896
-
-
See infra Part I.C (discussing extensively the doctrine of equivalents).
-
See infra Part I.C (discussing extensively the doctrine of equivalents).
-
-
-
-
4
-
-
85081477497
-
-
Toro Co. v. White Consol. Indus., Inc., 266 F.3d 1367, 1370 (Fed. Cir. 2001).
-
Toro Co. v. White Consol. Indus., Inc., 266 F.3d 1367, 1370 (Fed. Cir. 2001).
-
-
-
-
5
-
-
85081487130
-
-
See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997) ([T]he insubstantial differences test offers little additional guidance [beyond equivalence itself] as to what might render any given difference 'insubstantial.').
-
See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997) ("[T]he insubstantial differences test offers little additional guidance [beyond equivalence itself] as to what might render any given difference 'insubstantial.'").
-
-
-
-
6
-
-
85081492323
-
-
Whether A is known, to persons skilled in the art, as a substitute for B is said to be one objective factor leading to a conclusion that A and B are substantially the same. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950);
-
Whether A is known, to persons skilled in the art, as a substitute for B is said to be one objective factor leading to a conclusion that A and B are substantially the same. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950);
-
-
-
-
7
-
-
85081476129
-
-
see also infra Part I.C.2 (discussing the decision and analysis of Graver in further detail, including whether this factor really illuminates the substantiality of the differences between two patents).
-
see also infra Part I.C.2 (discussing the decision and analysis of Graver in further detail, including whether this factor really illuminates the substantiality of the differences between two patents).
-
-
-
-
8
-
-
0345759669
-
-
See, e.g., Qing Lin, A Proposed Test for Applying the Doctrine of Equivalents to Biotechnology Inventions: The Nonobviousness Test, 74 WASH. L. REV. 885, 906-07 (1999) (recommending a two-prong approach to determining equivalence where the first prong examines whether the accused item was obvious from prior art or surrendered during patent prosecution and the second prong examines whether the modification made to the patented item is obvious);
-
See, e.g., Qing Lin, A Proposed Test for Applying the Doctrine of Equivalents to Biotechnology Inventions: The Nonobviousness Test, 74 WASH. L. REV. 885, 906-07 (1999) (recommending a two-prong approach to determining equivalence where the first prong examines whether the accused item was obvious from prior art or surrendered during patent prosecution and the second prong examines whether the modification made to the patented item is obvious);
-
-
-
-
9
-
-
85081490959
-
-
Michael T. Siekman, The Expanded Hypothetical Claim Test: A Better Test for Infringement for Biotechnology Patents Under the Doctrine of Equivalents, 2 B.U. J. SCI. & TECH. L. 6, 10 (1996) (suggesting that an interchangeability test is as valid as the tripartite and substantial differences tests, but avoids the problems posed by the latter two);
-
Michael T. Siekman, The Expanded Hypothetical Claim Test: A Better Test for Infringement for Biotechnology Patents Under the Doctrine of Equivalents, 2 B.U. J. SCI. & TECH. L. 6, 10 (1996) (suggesting that an "interchangeability" test is as valid as the "tripartite" and "substantial differences" tests, but avoids the problems posed by the latter two);
-
-
-
-
10
-
-
85081490268
-
-
Toshiko Takenaka, Doctrine of Equivalents After Hilton Davis: A Comparative Law Analysis, 22 RUTGERS COMPUTER & TECH. L.J. 479, 482 (1996) (This Article also contends that the test for infringement under the doctrine of equivalents should parallel the standard for nonobviousness.);
-
Toshiko Takenaka, Doctrine of Equivalents After Hilton Davis: A Comparative Law Analysis, 22 RUTGERS COMPUTER & TECH. L.J. 479, 482 (1996) ("This Article also contends that the test for infringement under the doctrine of equivalents should parallel the standard for nonobviousness.");
-
-
-
-
11
-
-
85081491446
-
-
Roy H. Wepner, The Patent Invalidity/Infringement Parallel: Symmetry or Semantics?, 93 DICK. L. REV. 67, 80 (1988) (The standards that govern the decision to grant (or invalidate) a patent should be, to the extent possible, parallel to the standards that define what constitutes an infringement.);
-
Roy H. Wepner, The Patent Invalidity/Infringement Parallel: Symmetry or Semantics?, 93 DICK. L. REV. 67, 80 (1988) ("The standards that govern the decision to grant (or invalidate) a patent should be, to the extent possible, parallel to the standards that define what constitutes an infringement.");
-
-
-
-
12
-
-
85081479870
-
-
Joseph S. Cianfrani, Note, An Economic Analysis of the Doctrine of Equivalents, 1 VA. J.L. & TECH. 1, ¶ 53 (1997), http://www.vjolt.net/voll/issue/voll_artl.pdf (discussing, without enthusiasm, an obviousness measure of equivalence);
-
Joseph S. Cianfrani, Note, An Economic Analysis of the Doctrine of Equivalents, 1 VA. J.L. & TECH. 1, ¶ 53 (1997), http://www.vjolt.net/voll/issue/voll_artl.pdf (discussing, without enthusiasm, an obviousness measure of equivalence);
-
-
-
-
13
-
-
85081486606
-
Obviousness and the Doctrine of Equivalents in
-
Patent Law: Striving for Objective Criteria, 43 CATH. U. L. REV. 577, 582 1994, suggesting parallels between obviousness and equivalence and advocating increased emphasis on objective considerations for the latter
-
Stephen G. Kalinchak, Comment, Obviousness and the Doctrine of Equivalents in Patent Law: Striving for Objective Criteria, 43 CATH. U. L. REV. 577, 582 (1994) (suggesting parallels between obviousness and equivalence and advocating increased emphasis on objective considerations for the latter).
-
-
-
Stephen, G.1
Kalinchak, C.2
-
14
-
-
85081487256
-
-
See Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 748 (Fed. Cir. 1987) (remarking that, as literal infringement mirrors anticipation, infringement under the doctrine of equivalents is somewhat akin to obviousness).
-
See Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 748 (Fed. Cir. 1987) (remarking that, as literal infringement mirrors anticipation, infringement under the doctrine of equivalents "is somewhat akin to obviousness").
-
-
-
-
15
-
-
85081478201
-
-
Judge Lourie, concurring in Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1063 (Fed. Cir. 2002) (en banc), observed that [a] patentee seeking to establish equivalence wants to show that the accused is merely making a minor variation of his invention, an obvious one, not a nonobvious improvement. In contrast, [o]ne accused of infringement wants to show that he has made an important advance, not that he is a copier, and that his device was obvious over the patented invention, or foreseeable.
-
Judge Lourie, concurring in Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1063 (Fed. Cir. 2002) (en banc), observed that "[a] patentee seeking to establish equivalence wants to show that the accused is merely making a minor variation of his invention, an obvious one, not a nonobvious improvement." In contrast, "[o]ne accused of infringement wants to show that he has made an important advance, not that he is a copier, and that his device was obvious over the patented invention, or foreseeable."
-
-
-
-
18
-
-
85081480649
-
-
See infra note 199 and accompanying text. In her concurring opinion in Roton Barrier, Inc. v. Stanley Works, 79 F.3d 1112, 1128 (Fed. Cir. 1996), Judge Nies proposed more explicitly adopting a nonobviousness test for infringement.
-
See infra note 199 and accompanying text. In her concurring opinion in Roton Barrier, Inc. v. Stanley Works, 79 F.3d 1112, 1128 (Fed. Cir. 1996), Judge Nies proposed more explicitly adopting a nonobviousness test for infringement.
-
-
-
-
19
-
-
42149142169
-
-
note 215 and accompanying text. The court has not, so far, adopted her suggestion
-
See also infra note 215 and accompanying text. The court has not, so far, adopted her suggestion.
-
See also infra
-
-
-
20
-
-
34548636812
-
Shoketsu Kinzoku Kogyo Kabushiki Co., 535
-
See, e.g, U.S. 722, 731 (2002, Often the invention is novel and words do not exist to describe it. The dictionary does not always keep abreast of the inventor, quoting Autogiro Co. of Am. v. United States, 384 F.2d 391, 397 Ct. Cl. 1967
-
See, e.g., Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002) ('"Often the invention is novel and words do not exist to describe it. The dictionary does not always keep abreast of the inventor.'" (quoting Autogiro Co. of Am. v. United States, 384 F.2d 391, 397 (Ct. Cl. 1967)));
-
-
-
Festo Corp, V.1
-
21
-
-
85081477425
-
-
Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1310 (Fed. Cir. 1998) (The doctrine of equivalents is necessary because one cannot predict the future. . . . [A] variant of an invention may be developed after the patent is granted, and that variant may constitute so insubstantial a change from what is claimed in the patent that it should be held to be an infringement.);
-
Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1310 (Fed. Cir. 1998) ("The doctrine of equivalents is necessary because one cannot predict the future. . . . [A] variant of an invention may be developed after the patent is granted, and that variant may constitute so insubstantial a change from what is claimed in the patent that it should be held to be an infringement.");
-
-
-
-
22
-
-
85081484959
-
-
see also Christopher A. Cotropia, After-Arising Technologies and Tailoring Patent Scope, 61 N.Y.U. ANN. SURV. AM. L. 151, 161 2005, As of late, the emphasis on the doctrine of equivalents has focused on protecting one specific type of equivalent termed an 'afterarising equivalent
-
see also Christopher A. Cotropia, "After-Arising" Technologies and Tailoring Patent Scope, 61 N.Y.U. ANN. SURV. AM. L. 151, 161 (2005) ("As of late, the emphasis on the doctrine of equivalents has focused on protecting one specific type of equivalent termed an 'afterarising equivalent,'").
-
-
-
-
23
-
-
85081488613
-
-
One could also adopt the perspective of the time when the patented invention was made. This would most closely mirror the obviousness standard. See 35 U.S.C. § 103 2000, However, the time of filing perspective would match the usual practice for claim interpretation, enablement, and other standards related to the information communicated by the patent to persons skilled in the art
-
One could also adopt the perspective of the time when the patented invention was made. This would most closely mirror the obviousness standard. See 35 U.S.C. § 103 (2000). However, the time of filing perspective would match the usual practice for claim interpretation, enablement, and other standards related to the information communicated by the patent to persons skilled in the art.
-
-
-
-
24
-
-
85081486321
-
-
See Plant Genetic Sys., N.V. v. Dekalb Genetics Corp., 315 F.3d 1335, 1339 (Fed. Cir. 2003) (establishing the temporal perspective to be applied in enablement inquiries);
-
See Plant Genetic Sys., N.V. v. Dekalb Genetics Corp., 315 F.3d 1335, 1339 (Fed. Cir. 2003) (establishing the temporal perspective to be applied in enablement inquiries);
-
-
-
-
25
-
-
85081478162
-
-
Kopykake Enters., Inc. v. Lucks Co., 264 F.3d 1377, 1383 (Fed. Cir. 2001) (establishing the temporal perspective to be used in claim interpretation for literal infringement);
-
Kopykake Enters., Inc. v. Lucks Co., 264 F.3d 1377, 1383 (Fed. Cir. 2001) (establishing the temporal perspective to be used in claim interpretation for literal infringement);
-
-
-
-
26
-
-
26844489601
-
The Changing Meaning of
-
Patent Claim Terms, 104 MICH. L. REV. 101, 116 2005, advocating the time of filing as the best alternative for interpreting the meaning of claim terminology, In any event, adopting the perspective of the time when the invention was made, and the perspective of the time when the patent application was filed, present similar difficulties
-
Mark A. Lemley, The Changing Meaning of Patent Claim Terms, 104 MICH. L. REV. 101, 116 (2005) (advocating the time of filing as the best alternative for interpreting the meaning of claim terminology). In any event, adopting the perspective of the time when the invention was made, and the perspective of the time when the patent application was filed, present similar difficulties.
-
-
-
Lemley, M.A.1
-
27
-
-
85081478729
-
-
U.S. CONST. art. I, § 8, cl. 8.
-
U.S. CONST. art. I, § 8, cl. 8.
-
-
-
-
28
-
-
85081490917
-
-
See Alan L. Durham, Useful Arts in the Information Age, 1999 BYU L. REV. 1419, 1437-44 (tracing the various courts and scholars who have suggested that modern-day useful arts are equal to technological arts).
-
See Alan L. Durham, "Useful Arts" in the Information Age, 1999 BYU L. REV. 1419, 1437-44 (tracing the various courts and scholars who have suggested that modern-day "useful arts" are equal to "technological arts").
-
-
-
-
29
-
-
85081475410
-
-
§§ 101, 271a, 2000
-
35 U.S.C. §§ 101, 271(a) (2000),
-
35 U.S.C
-
-
-
30
-
-
85081491450
-
-
See Cotropia, supra note 9, at 169-70
-
See Cotropia, supra note 9, at 169-70.
-
-
-
-
31
-
-
0035649475
-
-
See Steven Shavell & Tanguy Van Ypersele, Rewards Versus Intellectual Property Rights, 44 J.L. & ECON. 525, 530 (2001) (Under the reward system, the incentive to invest is governed by the reward and thus is not systematically inadequate; yet the incentive to invest is not linked to actual surplus but only to the reward.).
-
See Steven Shavell & Tanguy Van Ypersele, Rewards Versus Intellectual Property Rights, 44 J.L. & ECON. 525, 530 (2001) ("Under the reward system, the incentive to invest is governed by the reward and thus is not systematically inadequate; yet the incentive to invest is not linked to actual surplus but only to the reward.").
-
-
-
-
32
-
-
85081486147
-
-
Graham v. John Deere Co., 383 U.S. 1, 7-8 (1966) (detailing Jefferson's reservations regarding the monopolies granted under the patent system).
-
Graham v. John Deere Co., 383 U.S. 1, 7-8 (1966) (detailing Jefferson's reservations regarding the monopolies granted under the patent system).
-
-
-
-
33
-
-
85081490861
-
-
See RICHARD A. POSNER, ANTITRUST LAW 12 (2d ed. 2001) ([W]e now know that output is smaller under monopoly than under competition.);
-
See RICHARD A. POSNER, ANTITRUST LAW 12 (2d ed. 2001) ("[W]e now know that output is smaller under monopoly than under competition.");
-
-
-
-
34
-
-
85081482905
-
-
see also HERBERT HOVENKAMP, FEDERAL ANTITRUST POLICY § 1.2(a) (3d ed. 2005) ([T]he monopolist, unlike the competitor, can obtain a higher price per unit of output by producing less.).
-
see also HERBERT HOVENKAMP, FEDERAL ANTITRUST POLICY § 1.2(a) (3d ed. 2005) ("[T]he monopolist, unlike the competitor, can obtain a higher price per unit of output by producing less.").
-
-
-
-
35
-
-
34848879723
-
-
See note 17, §§ 1.1, 1.3b
-
See HOVENKAMP, supra note 17, §§ 1.1, 1.3(b).
-
supra
-
-
HOVENKAMP1
-
36
-
-
85081482121
-
-
See id. § 2.3(c).
-
See id. § 2.3(c).
-
-
-
-
37
-
-
0345984391
-
The Economics of Improvement in Intellectual Property Law, 75
-
discussing the costs and benefits associated with a patent system, For a discussion of attempts to explain the patent system through economic theory, see infra Part III.D. See
-
See Mark A. Lemley, The Economics of Improvement in Intellectual Property Law, 75 TEX. L. REV. 989, 996-97 (1997) (discussing the costs and benefits associated with a patent system). For a discussion of attempts to explain the patent system through economic theory, see infra Part III.D.
-
(1997)
TEX. L. REV
, vol.989
, pp. 996-997
-
-
Lemley, M.A.1
-
38
-
-
85081482776
-
-
See Graham, 383 U.S. at 9.
-
See Graham, 383 U.S. at 9.
-
-
-
-
39
-
-
33846540862
-
-
§ 102 2000, listing the varieties of relevant prior art
-
35 U.S.C. § 102 (2000) (listing the varieties of relevant prior art).
-
35 U.S.C
-
-
-
40
-
-
85081490620
-
-
U.S. at 14 explaining that prior to the Patent Act, the term invention was used
-
See Graham, 383 U.S. at 14 (explaining that prior to the Patent Act, the term "invention" was used).
-
-
-
Graham, S.1
-
41
-
-
85081481682
-
-
52 U.S. (11 How.) 248 (1850).
-
52 U.S. (11 How.) 248 (1850).
-
-
-
-
42
-
-
85081477504
-
-
Id. at 248-49 (They have invented a new and useful improvement in making door and other knobs, of all kinds of clay used in pottery, and of porcelain, which they state has not been known or used before their application.).
-
Id. at 248-49 ("They have invented a new and useful improvement in making door and other knobs, of all kinds of clay used in pottery, and of porcelain, which they state has not been known or used before their application.").
-
-
-
-
43
-
-
85081489616
-
-
Id. at 265
-
Id. at 265.
-
-
-
-
44
-
-
85081490847
-
-
Id. at 266
-
Id. at 266.
-
-
-
-
45
-
-
85081486791
-
-
Id. at 267
-
Id. at 267.
-
-
-
-
46
-
-
85081485058
-
-
Id
-
Id.
-
-
-
-
47
-
-
85081479001
-
-
314 U.S. 84 1941
-
314 U.S. 84 (1941).
-
-
-
-
48
-
-
85081478438
-
-
Id. at 88
-
Id. at 88.
-
-
-
-
49
-
-
85081491674
-
-
Id
-
Id.
-
-
-
-
50
-
-
85081479589
-
-
Id. at 88-89
-
Id. at 88-89.
-
-
-
-
51
-
-
85081491249
-
-
Id. at 91
-
Id. at 91.
-
-
-
-
52
-
-
85081476332
-
-
Id. at 91-92
-
Id. at 91-92.
-
-
-
-
53
-
-
85081480981
-
-
Id. at 91
-
Id. at 91.
-
-
-
-
54
-
-
85081487768
-
-
Id. at 92
-
Id. at 92.
-
-
-
-
55
-
-
85081479745
-
-
107 U.S. 192 1882
-
107 U.S. 192 (1882).
-
-
-
-
56
-
-
85081491126
-
-
Cuno, 314 U.S. at 92 (quoting Atlanta Works v. Brady, 107 U.S. 192, 200 (1883) (Bradley, J., dissenting)).
-
Cuno, 314 U.S. at 92 (quoting Atlanta Works v. Brady, 107 U.S. 192, 200 (1883) (Bradley, J., dissenting)).
-
-
-
-
57
-
-
85081487502
-
-
See In re Dow Chem. Co., 837 F.2d 469, 472 (Fed. Cir. 1988) (Most technological advance is the fruit of methodical, persistent investigation,).
-
See In re Dow Chem. Co., 837 F.2d 469, 472 (Fed. Cir. 1988) ("Most technological advance is the fruit of methodical, persistent investigation,").
-
-
-
-
58
-
-
85081484068
-
-
See Graham v. John Deere Co, 383 U.S. 1, 14 (1966, Patentability is to depend, upon the 'non-obvious' nature of the 'subject matter sought to be patented' to a person having ordinary skill in the pertinent art, quoting 35 U.S.C. § 103 2000
-
See Graham v. John Deere Co., 383 U.S. 1, 14 (1966) ("Patentability is to depend . . . upon the 'non-obvious' nature of the 'subject matter sought to be patented' to a person having ordinary skill in the pertinent art." (quoting 35 U.S.C. § 103 (2000))).
-
-
-
-
59
-
-
85081490327
-
-
§ 103 2000, Although the Supreme Court viewed the standard of patentability as unchanged, see Graham, 383 U.S. at 4, the terminology nonetheless marked a departure from Hotchkiss and its progeny. Congress also sought to undo the effect of the controversial phrase 'flash of creative genius, Id. at 15
-
35 U.S.C. § 103 (2000). Although the Supreme Court viewed the standard of patentability as unchanged, see Graham, 383 U.S. at 4, the terminology nonetheless marked a departure from Hotchkiss and its progeny. Congress also sought to undo the effect of "the controversial phrase 'flash of creative genius,'" Id. at 15.
-
35 U.S.C
-
-
-
60
-
-
85081492330
-
-
Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed, Cir. 1985).
-
Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 454 (Fed, Cir. 1985).
-
-
-
-
61
-
-
85081476085
-
-
See Life Techs, Inc. v. Clontech Labs, Inc, 224 F.3d 1320, 1325 Fed. Cir. 2000, T]he path that leads an inventor to the invention is, irrelevant to patentability
-
See Life Techs., Inc. v. Clontech Labs., Inc., 224 F.3d 1320, 1325 (Fed. Cir. 2000) ("[T]he path that leads an inventor to the invention is. . . irrelevant to patentability.").
-
-
-
-
62
-
-
85081492340
-
-
§ 103c, 2000
-
35 U.S.C. § 103(c) (2000).
-
35 U.S.C
-
-
-
63
-
-
85081478561
-
enable any person skilled in the art to which it pertains. . . to make and use [the invention]
-
The patent specification must 35 U.S.C. § 112 2000
-
The patent specification must "enable any person skilled in the art to which it pertains. . . to make and use [the invention]." 35 U.S.C. § 112 (2000).
-
-
-
-
64
-
-
85081475165
-
-
The patent specification shall set forth the best mode contemplated by the inventor of carrying out his invention. Id
-
The patent specification "shall set forth the best mode contemplated by the inventor of carrying out his invention." Id.
-
-
-
-
65
-
-
85081476194
-
-
See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed. Cir. 2003) (clarifying that a specification must enable persons skilled in the art to make and use the invention without undue experimentation); Bayer A.G. v. Schein Pharm., Inc., 301 F.3d 1306, 1320 (Fed. Cir. 2002) (explaining that the best mode is adequately disclosed if persons skilled in the art, reviewing the specification, can identify the best mode and practice it for themselves).
-
See Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334 (Fed. Cir. 2003) (clarifying that a specification must enable persons skilled in the art to make and use the invention without undue experimentation); Bayer A.G. v. Schein Pharm., Inc., 301 F.3d 1306, 1320 (Fed. Cir. 2002) (explaining that the best mode is adequately disclosed if persons skilled in the art, reviewing the specification, can identify the best mode and practice it for themselves).
-
-
-
-
66
-
-
85081485584
-
-
Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1324 (Fed. Cir. 2001) ([W]e must always be conscious that our objective is to interpret the claims from the perspective of one of ordinary skill in the art. . . .).
-
Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1324 (Fed. Cir. 2001) ("[W]e must always be conscious that our objective is to interpret the claims from the perspective of one of ordinary skill in the art. . . .").
-
-
-
-
67
-
-
85081487849
-
-
§ 112 2000, The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention
-
See 35 U.S.C. § 112 (2000) ("The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.").
-
See 35 U.S.C
-
-
-
68
-
-
85081478543
-
-
See W.L. Gore & Assoes, v. Garlock, Inc., 721 F.2d 1540, 1557 (Fed. Cir. 1983) (A patent is invalid only when those skilled in the art are required to engage in undue experimentation to practice the invention.).
-
See W.L. Gore & Assoes, v. Garlock, Inc., 721 F.2d 1540, 1557 (Fed. Cir. 1983) ("A patent is invalid only when those skilled in the art are required to engage in undue experimentation to practice the invention.").
-
-
-
-
69
-
-
84888467546
-
-
text accompanying notes 224-228
-
See infra text accompanying notes 224-228.
-
See infra
-
-
-
70
-
-
85081484783
-
-
383 U.S. 1 1966
-
383 U.S. 1 (1966).
-
-
-
-
72
-
-
85081490162
-
-
Id
-
Id.
-
-
-
-
73
-
-
85081486286
-
-
Id
-
Id.
-
-
-
-
74
-
-
85081484925
-
-
Id
-
Id.
-
-
-
-
75
-
-
85081481350
-
-
Id. at 17-18
-
Id. at 17-18.
-
-
-
-
76
-
-
85081481551
-
-
Id. at 18 (The difficulties. . . are comparable to those encountered daily . . . in negligence . . . and should be amenable to a case-by-case development.).
-
Id. at 18 ("The difficulties. . . are comparable to those encountered daily . . . in negligence . . . and should be amenable to a case-by-case development.").
-
-
-
-
77
-
-
85081489864
-
-
Id
-
Id.
-
-
-
-
78
-
-
85081490750
-
-
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1380 (Fed. Cir. 1986);
-
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1380 (Fed. Cir. 1986);
-
-
-
-
79
-
-
85081490723
-
-
see also Ruiz v. A.B. Chance Co., 234 F.3d 654, 667 (Fed, Cir. 2000).
-
see also Ruiz v. A.B. Chance Co., 234 F.3d 654, 667 (Fed, Cir. 2000).
-
-
-
-
80
-
-
85081485589
-
-
Crown Operations Int'l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1376 (Fed. Cir. 2002);
-
Crown Operations Int'l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1376 (Fed. Cir. 2002);
-
-
-
-
81
-
-
85081477420
-
-
Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953, 956 (Fed. Cir. 1997) (Good ideas may well appear 'obvious' after they have been disclosed, despite having been previously unrecognized.).
-
Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953, 956 (Fed. Cir. 1997) ("Good ideas may well appear 'obvious' after they have been disclosed, despite having been previously unrecognized.").
-
-
-
-
82
-
-
85081483897
-
-
Those considerations specifically mentioned by the Supreme Court in Graham may carry greater weight than others, admitted through the open door of the etc. See Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1380 (Fed. Cir. 2000) (The factors specifically mentioned in Graham [are] those that we give the most weight to in the instant case.).
-
Those considerations specifically mentioned by the Supreme Court in Graham may carry greater weight than others, admitted through the open door of the "etc." See Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1380 (Fed. Cir. 2000) ("The factors specifically mentioned in Graham [are] those that we give the most weight to in the instant case.").
-
-
-
-
83
-
-
85081486609
-
-
See In re Dow Chem. Co., 837 F.2d 469, 472 (Fed. Cir. 1988) (Recognition of need, and difficulties encountered by those skilled in the field, are classical indicia of nonobviousness.).
-
See In re Dow Chem. Co., 837 F.2d 469, 472 (Fed. Cir. 1988) ("Recognition of need, and difficulties encountered by those skilled in the field, are classical indicia of nonobviousness.").
-
-
-
-
84
-
-
85081491011
-
-
See Dickey-John Corp. v. Int'l Tapetronics Corp., 710 F.2d 329, 346-47 (7th Cir. 1983). Although commercial success is a common secondary consideration, the logic of it requires careful handling of the evidence. It must be determined, for example, whether the success of the product is due to the claimed invention or to other factors, such as promotion, marketing, or unrelated design advantages.
-
See Dickey-John Corp. v. Int'l Tapetronics Corp., 710 F.2d 329, 346-47 (7th Cir. 1983). Although commercial success is a common secondary consideration, the logic of it requires careful handling of the evidence. It must be determined, for example, whether the success of the product is due to the claimed invention or to other factors, such as promotion, marketing, or unrelated design advantages.
-
-
-
-
85
-
-
85081483379
-
-
Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000) (explaining that commercial success is relevant to nonobviousness where there is a nexus between that success and the claimed invention).
-
Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000) (explaining that commercial success is relevant to nonobviousness where there is a "nexus" between that success and the claimed invention).
-
-
-
-
86
-
-
85081490916
-
-
In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (Licenses taken under the patent in suit may constitute evidence of nonobviousness.).
-
In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) ("Licenses taken under the patent in suit may constitute evidence of nonobviousness.").
-
-
-
-
87
-
-
85081487902
-
Advanced Display Sys., Inc. v. Kent State Univ
-
Cir
-
See Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1285-86 (Fed. Cir. 2000).
-
(2000)
212 F.3d 1272, 1285-86 (Fed
-
-
-
88
-
-
85081476115
-
-
See Ecolochem, 227 F.3d at 1380 (treating positive recognition as indicative of nonobviousness); Monarch Knitting Mach. Corp. v. Sulzer Morat GMBH, 139 F.3d 877, 885 (Fed. Cir. 1998) (remarking that general skepticism from those in the art is relevant as to nonobviousness);
-
See Ecolochem, 227 F.3d at 1380 (treating positive recognition as indicative of nonobviousness); Monarch Knitting Mach. Corp. v. Sulzer Morat GMBH, 139 F.3d 877, 885 (Fed. Cir. 1998) (remarking that general skepticism from those in the art is relevant as to nonobviousness);
-
-
-
-
89
-
-
85081489600
-
-
Gillette Co. v. S.C. Johnson & Son, 919 F.2d 720, 726 (Fed. Cir. 1990) (treating skepticism toward a patentee's new-fangled approach as objective evidence of nonobviousness). One form of expressing skepticism is teaching away, or advocating an approach to a problem contrary to that adopted by the patentee.
-
Gillette Co. v. S.C. Johnson & Son, 919 F.2d 720, 726 (Fed. Cir. 1990) (treating skepticism toward a patentee's "new-fangled approach" as objective evidence of nonobviousness). One form of expressing skepticism is "teaching away," or advocating an approach to a problem contrary to that adopted by the patentee.
-
-
-
-
90
-
-
85081488170
-
-
Monarch Knitting, 139 F.3d at 885.
-
Monarch Knitting, 139 F.3d at 885.
-
-
-
-
91
-
-
85081479733
-
-
The absence of the preceding secondary considerations, according to the Federal Circuit, is not evidence of obviousness but a neutral factor. See Medtronic, Inc. v. Intermedics, Inc., 799 F.2d 734, 739 n.13 (Fed. Cir. 1986)
-
The absence of the preceding secondary considerations, according to the Federal Circuit, is not evidence of obviousness but a "neutral factor." See Medtronic, Inc. v. Intermedics, Inc., 799 F.2d 734, 739 n.13 (Fed. Cir. 1986)
-
-
-
-
92
-
-
85081477901
-
-
cited with approval in Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1478 (Fed. Cir. 1998).
-
cited with approval in Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1478 (Fed. Cir. 1998).
-
-
-
-
93
-
-
85081484228
-
-
See Ecolochem, 227 F.3d at 1379;
-
See Ecolochem, 227 F.3d at 1379;
-
-
-
-
94
-
-
85081480758
-
-
In re Merk & Co., 800 F.2d 1091, 1098 (Fed. Cir. 1986).
-
In re Merk & Co., 800 F.2d 1091, 1098 (Fed. Cir. 1986).
-
-
-
-
95
-
-
85081476117
-
-
§ 154(a)2, 2000
-
35 U.S.C. § 154(a)(2) (2000).
-
35 U.S.C
-
-
-
96
-
-
85081488145
-
supra note 9, at 172 ("The breadth of the patent's scope . . . can prevent an early expiration."). As Cotropia points out, a patent claim of narrower scope is equivalent to a patent claim with a shorter term, because the substitution of non-patented products, resulting in the effective abolition of the patentee's monopoly, is likely to occur sooner
-
See
-
See Cotropia, supra note 9, at 172 ("The breadth of the patent's scope . . . can prevent an early expiration."). As Cotropia points out, a patent claim of narrower scope is equivalent to a patent claim with a shorter term, because the substitution of non-patented products, resulting in the effective abolition of the patentee's monopoly, is likely to occur sooner. Id.
-
Id
-
-
Cotropia1
-
97
-
-
85081478141
-
-
See Cianfrani, supra note 7, at ¶ 13
-
See Cianfrani, supra note 7, at ¶ 13.
-
-
-
-
98
-
-
85081490849
-
-
Judge Newman outlines the history of claiming in her commentary, appended to the Federal Circuit's en banc opinion in Pennwalt Corp. v. Durand-Wayland. Inc., 833 F.2d 931, 957-59 (Fed. Cir. 1987) (en banc).
-
Judge Newman outlines the history of claiming in her "commentary, " appended to the Federal Circuit's en banc opinion in Pennwalt Corp. v. Durand-Wayland. Inc., 833 F.2d 931, 957-59 (Fed. Cir. 1987) (en banc).
-
-
-
-
99
-
-
85081486898
-
-
The earliest form of claims often used phrases such as substantially as described. See DONALD S. CHISUM. CHISUM ON PATENTS § 18.02[1] (2007).
-
The earliest form of claims often used phrases such as "substantially as described." See DONALD S. CHISUM. CHISUM ON PATENTS § 18.02[1] (2007).
-
-
-
-
100
-
-
85081489634
-
-
Patent Act of 1870 § 26, 16 Stat. 198, 201.
-
Patent Act of 1870 § 26, 16 Stat. 198, 201.
-
-
-
-
102
-
-
85081487337
-
-
§ 112 2000
-
35 U.S.C. § 112 (2000).
-
35 U.S.C
-
-
-
103
-
-
85081485336
-
-
See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
-
See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
-
-
-
-
104
-
-
85081477201
-
-
Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148-49 (Fed. Cir. 2003).
-
Prima Tek II, L.L.C. v. Polypap, S.A.R.L., 318 F.3d 1143, 1148-49 (Fed. Cir. 2003).
-
-
-
-
107
-
-
85081480611
-
-
Suntiger, Inc. v. Scientific Research Funding Group, 189 F.3d 1327, 1336 (Fed. Cir. 1999) (indicating that unless the claim is specifically crafted to exclude them, the presence of additional elements in the accused product has no bearing on infringement).
-
Suntiger, Inc. v. Scientific Research Funding Group, 189 F.3d 1327, 1336 (Fed. Cir. 1999) (indicating that unless the claim is specifically crafted to exclude them, the presence of additional elements in the accused product has no bearing on infringement).
-
-
-
-
108
-
-
34948831530
-
-
§ 112 2000, stating that claims must particularly point out and distinctly claim the subject matter which the applicant regards as his invention
-
35 U.S.C. § 112 (2000) (stating that claims must "particularly point out and distinctly claim the subject matter which the applicant regards as his invention");
-
35 U.S.C
-
-
-
109
-
-
85081484064
-
-
All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002) (The primary purpose of the definiteness requirement is to ensure that the claims are written in such a way that they give notice to the public . . . so that interested [persons] can determine whether or not they infringe.).
-
All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 779-80 (Fed. Cir. 2002) ("The primary purpose of the definiteness requirement is to ensure that the claims are written in such a way that they give notice to the public . . . so that interested [persons] can determine whether or not they infringe.").
-
-
-
-
110
-
-
85081488460
-
-
Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1341 (Fed. Cir. 2003) ([A] patentee need not define his invention with mathematical precision in order to comply with the definiteness requirement.);
-
Oakley, Inc. v. Sunglass Hut Int'l, 316 F.3d 1331, 1341 (Fed. Cir. 2003) ("[A] patentee need not define his invention with mathematical precision in order to comply with the definiteness requirement.");
-
-
-
-
111
-
-
85081491418
-
-
see also Bancorp Servs. L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1372 (Fed. Cir. 2004) (terms subject to different interpretations are not necessarily indefinite).
-
see also Bancorp Servs. L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1372 (Fed. Cir. 2004) (terms subject to different interpretations are not necessarily indefinite).
-
-
-
-
112
-
-
85081484627
-
-
Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985).
-
Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985).
-
-
-
-
113
-
-
85081490957
-
-
See Andrew Corp. v. Gabriel Elees., Inc., 847 F.2d 819, 821 (Fed. Cir. 1988).
-
See Andrew Corp. v. Gabriel Elees., Inc., 847 F.2d 819, 821 (Fed. Cir. 1988).
-
-
-
-
114
-
-
85081482907
-
-
See State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985) (One of the benefits of a patent system is its so-called 'negative incentive' to 'design around' a competitor's products, even when they are patented, thus bringing a steady flow of innovations to the marketplace.).
-
See State Indus., Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1236 (Fed. Cir. 1985) ("One of the benefits of a patent system is its so-called 'negative incentive' to 'design around' a competitor's products, even when they are patented, thus bringing a steady flow of innovations to the marketplace.").
-
-
-
-
115
-
-
85081487506
-
-
56 U.S. (15 How.) 330, 332 (1854).
-
56 U.S. (15 How.) 330, 332 (1854).
-
-
-
-
116
-
-
85081491105
-
-
Id. at 342
-
Id. at 342.
-
-
-
-
117
-
-
85081486289
-
-
Id. at 340
-
Id. at 340.
-
-
-
-
118
-
-
85081475985
-
-
Id
-
Id.
-
-
-
-
119
-
-
85081492129
-
-
Id
-
Id.
-
-
-
-
120
-
-
85081486224
-
-
Id. at 343
-
Id. at 343.
-
-
-
-
121
-
-
85081480383
-
-
Id. at 344
-
Id. at 344.
-
-
-
-
122
-
-
85081491868
-
-
Id
-
Id.
-
-
-
-
123
-
-
85081477925
-
-
Specifically, Justice Campbell wrote: The claim of to-day is, that an octagonal car is an infringement of this patent. Will this be the limit to that claim? Who can tell the bounds within which the mechanicalindustry of the country may freely exert itself? What restraints does this patent impose in this branch of the mechanic art? . . . Nothing . . . will be more mischievous, more productive of oppressive and costly litigation, of exorbitant and unjust pretensions and vexatious demands, more injurious to labor, than a relaxation of [the] wise and salutary requisitions of the act of Congress [demanding that patentees describe their invention with particularity].
-
Specifically, Justice Campbell wrote: The claim of to-day is, that an octagonal car is an infringement of this patent. Will this be the limit to that claim? Who can tell the bounds within which the mechanicalindustry of the country may freely exert itself? What restraints does this patent impose in this branch of the mechanic art? . . . Nothing . . . will be more mischievous, more productive of oppressive and costly litigation, of exorbitant and unjust pretensions and vexatious demands, more injurious to labor, than a relaxation of [the] wise and salutary requisitions of the act of Congress [demanding that patentees describe their invention with particularity].
-
-
-
-
124
-
-
85081483527
-
-
Id. at 347 (Campbell, J., dissenting).
-
Id. at 347 (Campbell, J., dissenting).
-
-
-
-
125
-
-
85081482363
-
-
339 U.S. 605 1950
-
339 U.S. 605 (1950).
-
-
-
-
126
-
-
85081481763
-
-
Id. at 610
-
Id. at 610.
-
-
-
-
127
-
-
85081483300
-
-
Id
-
Id.
-
-
-
-
128
-
-
85081484198
-
-
Id
-
Id.
-
-
-
-
129
-
-
85081476620
-
-
Id
-
Id.
-
-
-
-
130
-
-
85081486311
-
-
Id. at 607
-
Id. at 607.
-
-
-
-
131
-
-
85081476422
-
-
Id
-
Id.
-
-
-
-
132
-
-
85081475060
-
-
Id
-
Id.
-
-
-
-
133
-
-
85081484109
-
-
Id. at 608 (quoting Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42 (1929)).
-
Id. at 608 (quoting Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42 (1929)).
-
-
-
-
134
-
-
85081482687
-
-
Id
-
Id.
-
-
-
-
135
-
-
85081489649
-
-
Id. at 609
-
Id. at 609.
-
-
-
-
136
-
-
85081489078
-
-
Id. at 612
-
Id. at 612.
-
-
-
-
137
-
-
85081491915
-
-
Id. at 610-11
-
Id. at 610-11.
-
-
-
-
138
-
-
85081485404
-
-
Id. at 611
-
Id. at 611.
-
-
-
-
139
-
-
85081477356
-
-
Id
-
Id.
-
-
-
-
140
-
-
85081490187
-
-
Id. at 612
-
Id. at 612.
-
-
-
-
141
-
-
85081480637
-
-
Id
-
Id.
-
-
-
-
142
-
-
85081486723
-
-
See W. at 614 (Black, J., dissenting) (Giving this patentee the benefit of a grant that it did not precisely claim is no less 'unjust to the public' and no less an evasion of R.S. § 4888 merely because done in the name of the 'doctrine of equivalents.').
-
See W. at 614 (Black, J., dissenting) ("Giving this patentee the benefit of a grant that it did not precisely claim is no less 'unjust to the public' and no less an evasion of R.S. § 4888 merely because done in the name of the 'doctrine of equivalents.'").
-
-
-
-
143
-
-
85081487265
-
-
Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320, 1325 (Fed. Cir. 1991).
-
Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320, 1325 (Fed. Cir. 1991).
-
-
-
-
144
-
-
85081481430
-
-
Id. at 1327; Lear Siegler, Inc. v. Sealy Mattress Co., 873 F.2d 1422, 1425 (Fed. Cir. 1989) (In order to assure such separate analysis, we said in Nestier, . . . a jury must be separately directed to the proof of each Graver Tank element.). Without a structured analysis, it was said, juries would be put to sea without guiding charts. Lear Siegler, 873 F.2d at 1426.
-
Id. at 1327; Lear Siegler, Inc. v. Sealy Mattress Co., 873 F.2d 1422, 1425 (Fed. Cir. 1989) ("In order to assure such separate analysis, we said in Nestier, . . . a jury must be separately directed to the proof of each Graver Tank element."). Without a structured analysis, it was said, juries would be "put to sea without guiding charts." Lear Siegler, 873 F.2d at 1426.
-
-
-
-
145
-
-
85081475396
-
-
Vulcan Eng'g Co. v. Fata Aluminum, Inc., 278 F.3d 1366, 1374 (Fed. Cir. 2002) (Known interchangeability is an important factor in determining equivalence.).
-
Vulcan Eng'g Co. v. Fata Aluminum, Inc., 278 F.3d 1366, 1374 (Fed. Cir. 2002) ("Known interchangeability is an important factor in determining equivalence.").
-
-
-
-
146
-
-
85081488255
-
-
833F.2d931Fed.Cir. 1987
-
833F.2d931(Fed.Cir. 1987).
-
-
-
-
147
-
-
85081477541
-
-
See id. at 935; see also Bell Atl. Network Servs., Inc. v. Covad Commc'n Group, Inc., 262 F.3d 1258, 1279 (Fed. Cir. 2001) ([T]here can be no infringement under the doctrine of equivalents if even one element of a claim or its equivalent is not present in the accused device.).
-
See id. at 935; see also Bell Atl. Network Servs., Inc. v. Covad Commc'n Group, Inc., 262 F.3d 1258, 1279 (Fed. Cir. 2001) ("[T]here can be no infringement under the doctrine of equivalents if even one element of a claim or its equivalent is not present in the accused device.").
-
-
-
-
148
-
-
85081479454
-
-
See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607-08 (referring to the unscrupulous copyist, pirat[ing] an invention, and fraud on a patent).
-
See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607-08 (referring to "the unscrupulous copyist," "pirat[ing] an invention," and "fraud on a patent").
-
-
-
-
149
-
-
85081489135
-
-
See Int'l Visual Corp. v. Crown Metal Mfg. Co., 991 F.2d 768, 774 (Fed. Cir. 1993) (Lourie, J., concurring) (postulating that independent research resulting] in an invention or product significantly different from what is claimed, albeit one that might perform substantially the same function in the same way to obtain the same result may not justify the application of the doctrine of equivalents).
-
See Int'l Visual Corp. v. Crown Metal Mfg. Co., 991 F.2d 768, 774 (Fed. Cir. 1993) (Lourie, J., concurring) (postulating that "independent research resulting] in an invention or product significantly different from what is claimed, albeit one that might perform substantially the same function in the same way to obtain the same result" may not justify the application of the doctrine of equivalents).
-
-
-
-
150
-
-
85081489226
-
-
520 U.S. 17 1997
-
520 U.S. 17 (1997).
-
-
-
-
151
-
-
85081484413
-
-
Id
-
Id.
-
-
-
-
152
-
-
85081488290
-
-
Id. at 22
-
Id. at 22.
-
-
-
-
153
-
-
85081477159
-
-
Id. at 23
-
Id. at 23.
-
-
-
-
154
-
-
85081482788
-
-
Id. at 34-35 (stating that while Graver Tank refers to the prevention of copying and piracy when describing the benefits of the doctrine of equivalents, that does not mean that its application is limited only to cases where those particular benefits are obtained).
-
Id. at 34-35 (stating that while "Graver Tank refers to the prevention of copying and piracy when describing the benefits of the doctrine of equivalents," that "does not mean that its application is limited only to cases where those particular benefits are obtained").
-
-
-
-
155
-
-
85081492317
-
-
Id. at 35 (reasoning that [i]f the essential predicate of the doctrine of equivalents is the notion of identity, then there is no difference between an infringing equivalent and a device that infringes literally, and there is no proof of intent requirement).
-
Id. at 35 (reasoning that "[i]f the essential predicate of the doctrine of equivalents is the notion of identity," then there is no difference between "an infringing equivalent" and "a device that infringes" literally, and there is no proof of intent requirement).
-
-
-
-
156
-
-
85081486710
-
-
Id. at 36 (The need for independent experimentation thus could reflect knowledge - or lack thereof- of interchangeability possessed by one presumably skilled in the art.).
-
Id. at 36 ("The need for independent experimentation thus could reflect knowledge - or lack thereof- of interchangeability possessed by one presumably skilled in the art.").
-
-
-
-
157
-
-
85081484327
-
-
Id. at 39 (All that remains is to address the debate regarding the linguistic framework under which 'equivalence' is determined.).
-
Id. at 39 ("All that remains is to address the debate regarding the linguistic framework under which 'equivalence' is determined.").
-
-
-
-
158
-
-
85081481175
-
-
Id. at 39-40
-
Id. at 39-40.
-
-
-
-
159
-
-
85081484437
-
-
See Valmont Indus., Inc. v. Reinkc Mfg. Co., 983 F.2d 1039, 1043 (Fed. Cir. 1993) (stating that an equivalent is an insubstantial change which, from the perspective of one of ordinary skill in the art, adds nothing of significance to the claimed invention).
-
See Valmont Indus., Inc. v. Reinkc Mfg. Co., 983 F.2d 1039, 1043 (Fed. Cir. 1993) (stating that an equivalent is "an insubstantial change which, from the perspective of one of ordinary skill in the art, adds nothing of significance to the claimed invention").
-
-
-
-
160
-
-
85081476741
-
-
Warner-Jenkinson, 520 U.S. at 40.
-
Warner-Jenkinson, 520 U.S. at 40.
-
-
-
-
161
-
-
85081481929
-
-
Id
-
Id.
-
-
-
-
162
-
-
85081475166
-
-
Toro Co. v. White Consol. Indus., 266 F.3d 1367, 1370 (Fed. Cir. 2001) (To determine whether the accused device includes equivalents for a claim limitation, this court applies the 'insubstantial differences' test.); cf. id. (In appropriate cases the function-way-result test offers additional guidance on the question of equivalence.).
-
Toro Co. v. White Consol. Indus., 266 F.3d 1367, 1370 (Fed. Cir. 2001) ("To determine whether the accused device includes equivalents for a claim limitation, this court applies the 'insubstantial differences' test."); cf. id. ("In appropriate cases the function-way-result test offers additional guidance on the question of equivalence.").
-
-
-
-
163
-
-
85081476784
-
-
520 U.S. at 28-29
-
520 U.S. at 28-29.
-
-
-
-
164
-
-
85081476340
-
-
Id. at 29
-
Id. at 29.
-
-
-
-
165
-
-
85081483070
-
-
Id. (It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety.).
-
Id. ("It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety.").
-
-
-
-
166
-
-
85081476813
-
-
See Johnson & Johnston Assoc., Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1054 n.l (Fed. Cir. 2002) (en banc).
-
See Johnson & Johnston Assoc., Inc. v. R.E. Serv. Co., 285 F.3d 1046, 1054 n.l (Fed. Cir. 2002) (en banc).
-
-
-
-
167
-
-
85081478020
-
-
Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1380 (Fed. Cir. 2001) (It is well settled law that a patentee cannot assert a range of equivalents that encompasses the prior art.).
-
Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1380 (Fed. Cir. 2001) ("It is well settled law that a patentee cannot assert a range of equivalents that encompasses the prior art.").
-
-
-
-
168
-
-
85081488217
-
-
See Wilson Sporting Goods Co. v. David Geoffrey & Assoc., 904 F.2d 677, 684 (Fed. Cir. 1990) ([A] patentee should not be able to obtain, under the doctrine of equivalents, coverage which he could not lawfully have obtained from the PTO by literal claims.).
-
See Wilson Sporting Goods Co. v. David Geoffrey & Assoc., 904 F.2d 677, 684 (Fed. Cir. 1990) ("[A] patentee should not be able to obtain, under the doctrine of equivalents, coverage which he could not lawfully have obtained from the PTO by literal claims.").
-
-
-
-
169
-
-
85081490560
-
-
Gen. Elec Co. v. Nintendo Co., 179 F.3d 1350, 1363 (Fed. Cir. 1999) ('The essence of prosecution history estoppel is that a patentee should not be able to obtain, through the doctrine of equivalents, coverage of subject matter that was relinquished during prosecution to procure issuance of that patent.' (quoting Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951-52 (Fed. Cir. 1993))).
-
Gen. Elec Co. v. Nintendo Co., 179 F.3d 1350, 1363 (Fed. Cir. 1999) ('"The essence of prosecution history estoppel is that a patentee should not be able to obtain, through the doctrine of equivalents, coverage of subject matter that was relinquished during prosecution to procure issuance of that patent.'" (quoting Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951-52 (Fed. Cir. 1993))).
-
-
-
-
170
-
-
85081484493
-
-
See Lemelson v. Gen. Mills, Inc, 968 F.2d 1202, 1208 Fed. Cir. 1992, Other players in the marketplace are entitled to rely on the record made in the Patent Office in determining the meaning and scope of the patent
-
See Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1208 (Fed. Cir. 1992) ("Other players in the marketplace are entitled to rely on the record made in the Patent Office in determining the meaning and scope of the patent.").
-
-
-
-
171
-
-
85081479774
-
-
See Genentech, Inc. v. Wellcome Found. Ltd., 29 F.3d 1555, 1564 (Fed. Cir. 1994) ([A]void[ing] the possibility of an applicant obtaining in court a scope of protection which encompasses subject matter that, through the conscious efforts of the applicant, the PTO did not examine.).
-
See Genentech, Inc. v. Wellcome Found. Ltd., 29 F.3d 1555, 1564 (Fed. Cir. 1994) ("[A]void[ing] the possibility of an applicant obtaining in court a scope of protection which encompasses subject matter that, through the conscious efforts of the applicant, the PTO did not examine.").
-
-
-
-
172
-
-
85081491293
-
-
See, e.g., Insta-Foam Prods., Inc. v. Universal Foam Sys., Inc., 906 F.2d 698, 703 (Fed. Cir. 1990) ('Depending on the nature and purpose of an amendment it may have a limiting effect within a spectrum ranging from great to small to zero.' (quoting Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1363 (Fed. Cir. 1983))).
-
See, e.g., Insta-Foam Prods., Inc. v. Universal Foam Sys., Inc., 906 F.2d 698, 703 (Fed. Cir. 1990) ('"Depending on the nature and purpose of an amendment it may have a limiting effect within a spectrum ranging from great to small to zero.'" (quoting Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1363 (Fed. Cir. 1983))).
-
-
-
-
173
-
-
85081489944
-
-
234 F.3d 558 (Fed. Cir. 2000) (en banc), vacated, 535 U.S. 722 (2002).
-
234 F.3d 558 (Fed. Cir. 2000) (en banc), vacated, 535 U.S. 722 (2002).
-
-
-
-
174
-
-
85081480900
-
-
Id. at 574 ([P]rosecution history estoppel acts as a complete bar to the application of the doctrine of equivalents when an amendment has narrowed the scope of a claim for a reason related to patentability.) .
-
Id. at 574 ("[P]rosecution history estoppel acts as a complete bar to the application of the doctrine of equivalents when an amendment has narrowed the scope of a claim for a reason related to patentability.") .
-
-
-
-
175
-
-
85081480129
-
-
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002).
-
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002).
-
-
-
-
176
-
-
85081486297
-
-
Id. at 738 (While this Court has not weighed the merits of the complete bar against the flexible bar in its prior cases, we have consistently applied the doctrine in a flexible way, not a rigid one.).
-
Id. at 738 ("While this Court has not weighed the merits of the complete bar against the flexible bar in its prior cases, we have consistently applied the doctrine in a flexible way, not a rigid one.").
-
-
-
-
177
-
-
85081487563
-
-
Id. at 731;
-
Id. at 731;
-
-
-
-
178
-
-
85081490154
-
-
see also Cianfrani, supra note 7, at 29
-
see also Cianfrani, supra note 7, at 29.
-
-
-
-
179
-
-
85081492058
-
-
Festo, 535 U.S. at 730-31.
-
Festo, 535 U.S. at 730-31.
-
-
-
-
180
-
-
85081482824
-
-
Id. at 732; see also Cianfrani, supra note 7, at 21 (referring to the chilling effect on modifications that are beyond the reach of the patent, but not so far out of reach as to make a potential improver certain of prevailing in a dispute). In addition the uncertainty may lead to wasteful litigation between competitors, suits that a rule of literalism might avoid. Festo, 535 U.S. at 732.
-
Id. at 732; see also Cianfrani, supra note 7, at 21 (referring to the "chilling effect" on modifications that are beyond the reach of the patent, but not so far out of reach as to make a potential improver certain of prevailing in a dispute). "In addition the uncertainty may lead to wasteful litigation between competitors, suits that a rule of literalism might avoid." Festo, 535 U.S. at 732.
-
-
-
-
181
-
-
85081483306
-
-
Festo, 535 U.S. at 731 ;
-
Festo, 535 U.S. at 731 ;
-
-
-
-
182
-
-
85081478276
-
-
see also id. at 734 (The doctrine of equivalents is premised on language's inability to capture the essence of innovation . . . .).
-
see also id. at 734 ("The doctrine of equivalents is premised on language's inability to capture the essence of innovation . . . .").
-
-
-
-
183
-
-
85081485403
-
-
Id. at 731
-
Id. at 731.
-
-
-
-
184
-
-
85081479830
-
The patentee must show that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent." Id. at 741. This might be accomplished by demonstrating that the equivalent was unforeseeable
-
"The patentee must show that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent." Id. at 741. This might be accomplished by demonstrating that the equivalent was unforeseeable, or that the rationale for the narrowing amendment bore only "a tangential relation to the equivalent in question." Id.
-
-
-
-
185
-
-
85081478232
-
-
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 37 (1997).
-
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 37 (1997).
-
-
-
-
186
-
-
85081484857
-
-
Although claim interpretation is a question of law for the court, equivalence is a question of fact for a jury. Id. at 38-39
-
Although claim interpretation is a question of law for the court, equivalence is a question of fact for a jury. Id. at 38-39.
-
-
-
-
187
-
-
85081481276
-
-
One can imagine a dialogue between an uncertain juror and a judge versed in patent law: Q: How large a difference is a 'substantial' difference? A: Large enough for you to give it legal effect. Q: When should I give the difference legal effect? A: When it is substantial.
-
One can imagine a dialogue between an uncertain juror and a judge versed in patent law: "Q: How large a difference is a 'substantial' difference? A: Large enough for you to give it legal effect. Q: When should I give the difference legal effect? A: When it is substantial."
-
-
-
-
188
-
-
85081480032
-
Function" and "result
-
are difficult to distinguish, so long as the function of an element in a combination is to achieve a particular result
-
"Function" and "result" are difficult to distinguish, so long as the function of an element in a combination is to achieve a particular result.
-
-
-
-
189
-
-
85081490426
-
-
See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 932 F.2d 1453, 1457 (Fed. Cir, 1991) (In the present case, as often happens in doctrine of equivalents cases, there is no material dispute about the 'function' and the 'result' prongs of the test.).
-
See Slimfold Mfg. Co. v. Kinkead Indus., Inc., 932 F.2d 1453, 1457 (Fed. Cir, 1991) ("In the present case, as often happens in doctrine of equivalents cases, there is no material dispute about the 'function' and the 'result' prongs of the test.").
-
-
-
-
190
-
-
85081481354
-
-
Warner-Jenkinson, 520 U.S. at 40.
-
Warner-Jenkinson, 520 U.S. at 40.
-
-
-
-
191
-
-
85081480456
-
-
Dow Chem. Co. v. Astro-Valcour, Inc., 267 F.3d 1334, 1339 (Fed. Cir. 2001) ([T]hat which would literally infringe if later in time anticipates if earlier than the date of invention. (quoting Lewmar Marine, Inc. v. Barient, Inc. 827 F.2d 744, 747 (Fed. Cir. 1987), cert. denied, 484 U.S. 1007 (1988))).
-
Dow Chem. Co. v. Astro-Valcour, Inc., 267 F.3d 1334, 1339 (Fed. Cir. 2001) ("[T]hat which would literally infringe if later in time anticipates if earlier than the date of invention." (quoting Lewmar Marine, Inc. v. Barient, Inc. 827 F.2d 744, 747 (Fed. Cir. 1987), cert. denied, 484 U.S. 1007 (1988))).
-
-
-
-
192
-
-
85081483364
-
-
See Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) ([I]f granting patent protection on the disputed claim would allow the patentee to exclude the public from practicing the prior art, then that claim is anticipated, regardless of whether it also covers subject matter not in the prior art.).
-
See Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999) ("[I]f granting patent protection on the disputed claim would allow the patentee to exclude the public from practicing the prior art, then that claim is anticipated, regardless of whether it also covers subject matter not in the prior art.").
-
-
-
-
193
-
-
85081477559
-
-
If obviousness is based on a combination of references, there must have been in the prior art a suggestion or motivation to effect the combination. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1354 (Fed. Cir. 2003).
-
If obviousness is based on a combination of references, there must have been in the prior art a suggestion or motivation to effect the combination. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1354 (Fed. Cir. 2003).
-
-
-
-
194
-
-
85081486223
-
-
See Para-Ordnance Mfg. v. SGS Imps. Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995) (Put another way, would one of ordinary skill in the art who set out to solve the problem of increasing ammunition capacity, and who had before him in his workshop the prior art, have been reasonably expected to use the solution that is claimed in the ... patent.).
-
See Para-Ordnance Mfg. v. SGS Imps. Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995) ("Put another way, would one of ordinary skill in the art who set out to solve the problem of increasing ammunition capacity, and who had before him in his workshop the prior art, have been reasonably expected to use the solution that is claimed in the ... patent.").
-
-
-
-
195
-
-
85081491976
-
-
See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) ([C]laims 'must be read in view of the specification, of which they are a part.' (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996))).
-
See Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) ("[C]laims 'must be read in view of the specification, of which they are a part.'" (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 978 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996))).
-
-
-
-
196
-
-
85081489828
-
-
See supra note 135 and accompanying text (explaining that equivalence cannot expand the scope of the claim so much that it encompasses the prior art as well as the accused product).
-
See supra note 135 and accompanying text (explaining that equivalence cannot expand the scope of the claim so much that it encompasses the prior art as well as the accused product).
-
-
-
-
197
-
-
85081488655
-
-
See supra note 115 and accompanying text (stating that each element of a patent claim must find at least an equivalent in the accused product or process).
-
See supra note 115 and accompanying text (stating that each element of a patent claim must find at least an equivalent in the accused product or process).
-
-
-
-
198
-
-
85081490624
-
-
See Jurgens v. CBK, Ltd., 80 F.3d 1566, 1570 n.2 (Fed. Cir. 1996) (noting that infringement is a strict liability offense).
-
See Jurgens v. CBK, Ltd., 80 F.3d 1566, 1570 n.2 (Fed. Cir. 1996) (noting that infringement "is a strict liability offense").
-
-
-
-
199
-
-
85081483153
-
-
Most prior art references are theoretically available to anyone of skill in the art exercising ordinary diligence. See Carella v. Starlight Archery & Pro Line Co, 804 F.2d 135, 139 Fed. Cir. 1986, The statutory language, known or used by others in this country, means knowledge or use which is accessible to the public
-
Most prior art references are theoretically available to anyone of skill in the art exercising ordinary diligence. See Carella v. Starlight Archery & Pro Line Co., 804 F.2d 135, 139 (Fed. Cir. 1986) ("The statutory language, 'known or used by others in this country,' means knowledge or use which is accessible to the public.").
-
-
-
-
200
-
-
85081480250
-
-
On occasion, however, the reference is extremely obscure. See Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1379-80 (Fed. Cir. 2006) (describing figures deleted from a Canadian patent, but present in the patent's prosecution file, as publicly accessible).
-
On occasion, however, the reference is extremely obscure. See Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1379-80 (Fed. Cir. 2006) (describing figures deleted from a Canadian patent, but present in the patent's prosecution file, as "publicly accessible").
-
-
-
-
201
-
-
85081485968
-
-
Also, a patent may be held invalid if obvious in comparison to a patent application that was not accessible to the public at the time the invention was made. See 35 U.S.C. § 102(e, A person shall be entitled to a patent unless, the invention was described in, an application for patent, published under section 122b, by another filed in the United States before the invention by the applicant for patent
-
Also, a patent may be held invalid if obvious in comparison to a patent application that was not accessible to the public at the time the invention was made. See 35 U.S.C. § 102(e) ("A person shall be entitled to a patent unless ... the invention was described in ... an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent ....");
-
-
-
-
202
-
-
85081480150
-
-
Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1402 (Fed. Cir. 1997) (stating that secret prior art under section 102(e) will become public eventually).
-
Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1402 (Fed. Cir. 1997) (stating that "secret prior art" under section 102(e) will become public eventually).
-
-
-
-
203
-
-
85081481327
-
-
If the spring, as hypothesized before, was the one thing that distinguished the patented invention, it is less likely that the substitution of a rubber band would be considered obvious, particularly if the patent touted the spring as superior to a rubber band
-
If the spring, as hypothesized before, was the one thing that distinguished the patented invention, it is less likely that the substitution of a rubber band would be considered obvious, particularly if the patent touted the spring as superior to a rubber band.
-
-
-
-
204
-
-
85081491528
-
-
§ 103 2000
-
35 U.S.C. § 103 (2000).
-
35 U.S.C
-
-
-
205
-
-
85081481815
-
-
See Slip Track Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1265 (Fed. Cir. 2002) (holding that a method claim is reduced to practice by performing the steps of the method).
-
See Slip Track Sys., Inc. v. Metal-Lite, Inc., 304 F.3d 1256, 1265 (Fed. Cir. 2002) (holding that a method claim is reduced to practice by performing the steps of the method).
-
-
-
-
207
-
-
85081479683
-
-
Literal infringement depends upon the meaning of the claim language to a person of ordinary skill in the art at the time of the application. See Kopykake Enterprises, Inc. v. Lucks Co, 264 F.3d 1377, 1383 Fed. Cir. 2001, The court] consider[s] the meaning of the claim as of the date of the invention
-
Literal infringement depends upon the meaning of the claim language to a person of ordinary skill in the art at the time of the application. See Kopykake Enterprises, Inc. v. Lucks Co., 264 F.3d 1377, 1383 (Fed. Cir. 2001) ("[The court] consider[s] the meaning of the claim as of the date of the invention.").
-
-
-
-
208
-
-
85081490128
-
-
See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 37 (1997).
-
See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 37 (1997).
-
-
-
-
209
-
-
85081491022
-
-
See Smithkline Beecham Corp. v. Excel Pharm., Inc., 356 F.3d 1357, 1364 (Fed. Cir. 2004) (referring to after-arising technology as the quintessential example of an enforceable equivalent).
-
See Smithkline Beecham Corp. v. Excel Pharm., Inc., 356 F.3d 1357, 1364 (Fed. Cir. 2004) (referring to "after-arising technology" as "the quintessential example of an enforceable equivalent").
-
-
-
-
210
-
-
85081488198
-
-
See Decca Ltd. v. United States, 544 F.2d 1070, 1079-81 (Ct. Cl. 1976) (per curiam). In Decca, the accused device literally infringed the claim, so the discussion apparently came in the context of the reverse doctrine of equivalents.
-
See Decca Ltd. v. United States, 544 F.2d 1070, 1079-81 (Ct. Cl. 1976) (per curiam). In Decca, the accused device literally infringed the claim, so the discussion apparently came in the context of the reverse doctrine of equivalents.
-
-
-
-
211
-
-
85081489478
-
-
Id. at 1079
-
Id. at 1079.
-
-
-
-
212
-
-
85081477092
-
-
That rarely-applied doctrine holds that a device does not infringe, even though it falls within the literal language of the claim, if it is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950).
-
That rarely-applied doctrine holds that a device does not infringe, even though it falls within the literal language of the claim, if it is "so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way." Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950).
-
-
-
-
213
-
-
85081482896
-
-
See Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1364-65 (Fed. Cir. 1983).
-
See Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1364-65 (Fed. Cir. 1983).
-
-
-
-
214
-
-
85081490355
-
-
But cf. Texas Instruments, Inc. v. U.S. Int'l Trade Comm'n, 805 F.2d
-
But cf. Texas Instruments, Inc. v. U.S. Int'l Trade Comm'n, 805 F.2d 1558, 1570 (Fed. Cir. 1986) (finding that the totality of technological advancements made newer pocket calculators noninfringing, even though each change in isolation might be considered the substitution of an equivalent).
-
-
-
-
215
-
-
85081487972
-
-
Physics 1956, http://nobelprize.org/nobel_prizes/physics/laureates/1956/ (last visited Oct. 20, 2007).
-
Physics 1956, http://nobelprize.org/nobel_prizes/physics/laureates/1956/ (last visited Oct. 20, 2007).
-
-
-
-
216
-
-
85081487849
-
-
§ 102b, 2000, A person shall be entitled to a patent unless, the invention was, on sale in this country, more than one year prior to the date of the application for patent in the United States
-
See 35 U.S.C. § 102(b) (2000) ("A person shall be entitled to a patent unless ... the invention was ... on sale in this country, more than one year prior to the date of the application for patent in the United States ....").
-
See 35 U.S.C
-
-
-
217
-
-
85081480140
-
-
See supra note 165 and accompanying text (Most prior art references are theoretically available to anyone of skill in the art exercising ordinary diligence.). A potential substitute might be known at the time of filing, but seen as impractical because of cost, reliability or similar issues. As long as later improvements are peripheral to the claimed invention, one should assume knowledge of the improved substitute. For example, Merges and Nelson point out that MOS transistor technology was known when Texas Instruments filed its basic patent for the pocket calculator, but because it suffered from reliability problems few firms expected it to be used in such applications.
-
See supra note 165 and accompanying text ("Most prior art references are theoretically available to anyone of skill in the art exercising ordinary diligence."). A potential substitute might be known at the time of filing, but seen as impractical because of cost, reliability or similar issues. As long as later improvements are peripheral to the claimed invention, one should assume knowledge of the improved substitute. For example, Merges and Nelson point out that MOS transistor technology was known when Texas Instruments filed its basic patent for the pocket calculator, but because it suffered from reliability problems few firms expected it to be used in such applications.
-
-
-
-
218
-
-
34547759046
-
On the Complex Economics of
-
Patent Scope, 90 COLUM. L. REV. 839, 858 n.86 1990
-
Robert P. Merges & Richard R. Nelson, On the Complex Economics of Patent Scope, 90 COLUM. L. REV. 839, 858 n.86 (1990).
-
-
-
Merges, R.P.1
Nelson, R.R.2
-
219
-
-
85081477971
-
-
Merges and Nelson argue that [t]hese are the very kinds of improvements that should be encouraged, not blocked by an overly broad pioneer patent. Id. However, advancements in MOS technology, which can be used in a variety of applications, seem peripheral to the calculator art. They may be worthy of encouragement, but perhaps by limiting the scope of patents on transistors, rather than by allowing opportunists who would simply substitute technology improved by others into a basic invention already conceived by Texas Instruments. Id.
-
Merges and Nelson argue that "[t]hese are the very kinds of improvements that should be encouraged, not blocked by an overly broad pioneer patent." Id. However, advancements in MOS technology, which can be used in a variety of applications, seem peripheral to the calculator art. They may be worthy of encouragement, but perhaps by limiting the scope of patents on transistors, rather than by allowing opportunists who would simply substitute technology improved by others into a basic invention already conceived by Texas Instruments. Id.
-
-
-
-
220
-
-
85081482535
-
-
See supra Part I.C.5 (identifying the problems associated with the current analysis of equivalents).
-
See supra Part I.C.5 (identifying the problems associated with the current analysis of equivalents).
-
-
-
-
221
-
-
85081482289
-
supra note 7, at 16 ("An obviousness test [of equivalence] is no more certain than the 'insubstantial changes' test promulgated by the Federal Circuit."). Although either is uncertain, an obviousness test should provide relative
-
Cianfrani, supra note 7, at 16 ("An obviousness test [of equivalence] is no more certain than the 'insubstantial changes' test promulgated by the Federal Circuit."). Although either is uncertain, an obviousness test should provide relative certainty because of the more objective standard and the availability of secondary considerations.
-
certainty because of the more objective standard and the availability of secondary considerations
-
-
Cianfrani1
-
222
-
-
85081481966
-
-
See supra Part I.B (identifying some secondary considerations, for example: commercial success, long-felt but unsolved needs, and the failure of others).
-
See supra Part I.B (identifying some secondary considerations, for example: commercial success, long-felt but unsolved needs, and the failure of others).
-
-
-
-
223
-
-
85081478801
-
-
See supra Part I.C.3 (identifying as immaterial the method by which a defendant arrives at an invention).
-
See supra Part I.C.3 (identifying as immaterial the method by which a defendant arrives at an invention).
-
-
-
-
224
-
-
34948831530
-
-
§ 282 2000, A patent shall be presumed valid
-
35 U.S.C. § 282 (2000) ("A patent shall be presumed valid.").
-
35 U.S.C
-
-
-
225
-
-
85081488128
-
-
This potential defensive use of patents would also provide an additional incentive to file applications, leading to further disclosures and enrichment of the art
-
This potential defensive use of patents would also provide an additional incentive to file applications, leading to further disclosures and enrichment of the art.
-
-
-
-
226
-
-
85081477522
-
-
Today, the commercial success of the defendant's product is most likely to be used against it. It leads not only to higher damages awards but, potentially, to a conclusion that the plaintiff's patent is nonobvious, if the success of the defendant's product is attributed to its use of the patentee's invention. See Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000).
-
Today, the commercial success of the defendant's product is most likely to be used against it. It leads not only to higher damages awards but, potentially, to a conclusion that the plaintiff's patent is nonobvious, if the success of the defendant's product is attributed to its use of the patentee's invention. See Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000).
-
-
-
-
227
-
-
85081492014
-
-
See supra Part I.C.5 (identifying public notice and proper examination of patents as problems associated with the classical equivalents determination).
-
See supra Part I.C.5 (identifying public notice and proper examination of patents as problems associated with the classical equivalents determination).
-
-
-
-
228
-
-
85081481023
-
-
339 U.S. 605, 607 (1950).
-
339 U.S. 605, 607 (1950).
-
-
-
-
229
-
-
85081490869
-
-
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002).
-
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733 (2002).
-
-
-
-
230
-
-
85081477836
-
-
See Lemley, supra note 20, at 1006 referring to on-board navigation as a dramatic improvement that revolutionized satellite technology
-
See Lemley, supra note 20, at 1006 (referring to on-board navigation as a "dramatic" improvement that "revolutionized satellite technology").
-
-
-
-
231
-
-
85081487668
-
-
Id
-
Id.
-
-
-
-
232
-
-
85081478022
-
-
805 F.2d 1558 (Fed. Cir. 1986).
-
805 F.2d 1558 (Fed. Cir. 1986).
-
-
-
-
233
-
-
85081488109
-
-
Id. at 1570 (Taken together, these accumulated differences distinguish the accused calculators from that contemplated in the '921 patent and transcend a fair range of equivalents of the '921 invention.).
-
Id. at 1570 ("Taken together, these accumulated differences distinguish the accused calculators from that contemplated in the '921 patent and transcend a fair range of equivalents of the '921 invention.").
-
-
-
-
234
-
-
85081489273
-
-
See id. at 1570-71 (Each individual difference, standing alone, could conceivably lead to a different result, [i.e., a finding of equivalence] by application of this court's precedent.).
-
See id. at 1570-71 ("Each individual difference, standing alone, could conceivably lead to a different result, [i.e., a finding of equivalence] by application of this court's precedent.").
-
-
-
-
235
-
-
85081490945
-
-
See id. at 1568 (As a matter of law, subsequent improvements do not in themselves preclude a finding of infringement.).
-
See id. at 1568 ("As a matter of law, subsequent improvements do not in themselves preclude a finding of infringement.").
-
-
-
-
236
-
-
85081486056
-
-
See, e.g., Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1324 (Fed. Cir. 2000) ([I]t is well established that separate patentability does not avoid equivalency as a matter of law ....);
-
See, e.g., Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1324 (Fed. Cir. 2000) ("[I]t is well established that separate patentability does not avoid equivalency as a matter of law ....");
-
-
-
-
237
-
-
85081489467
-
-
Nat'l Presto Indus., Inc. v. West Bend Co., 76 F.3d 1185, 1192 (Fed. Cir. 1996) The fact of separate patentability is relevant, and is entitled to due weight.
-
Nat'l Presto Indus., Inc. v. West Bend Co., 76 F.3d 1185, 1192 (Fed. Cir. 1996) ("The fact of separate patentability is relevant, and is entitled to due weight.
-
-
-
-
238
-
-
85081477177
-
-
However, West Bend's statement that there can not be infringement as a matter of law is incorrect.; Atlas Powder Co. v. E.I. Du Pont de Nemours & Co., 750 F.2d 1569, 1580 (Fed. Cir. 1984) (holding that the grant of a patent to an alleged infringer does not constitute prima facie evidence of non-equivalence).
-
However, West Bend's statement that there can not be infringement as a matter of law is incorrect."); Atlas Powder Co. v. E.I. Du Pont de Nemours & Co., 750 F.2d 1569, 1580 (Fed. Cir. 1984) (holding that the grant of a patent to an alleged infringer does not constitute prima facie evidence of non-equivalence).
-
-
-
-
239
-
-
84963456897
-
-
notes 118-124 and accompanying text
-
See supra notes 118-124 and accompanying text.
-
See supra
-
-
-
240
-
-
85081492337
-
-
Warner-Jenkinson, 520 U.S. at 22 n.2.
-
Warner-Jenkinson, 520 U.S. at 22 n.2.
-
-
-
-
241
-
-
85081489540
-
-
See Nat'l Presto, 76 F.3d at 1192 (The fact of separate patentability is relevant and is entitled to due weight.).
-
See Nat'l Presto, 76 F.3d at 1192 ("The fact of separate patentability is relevant and is entitled to due weight.").
-
-
-
-
242
-
-
85081483489
-
-
See supra Part I.C.4 (identifying prosecution history estoppel, the prior art, and the disclosure of unclaimed embodiments as limitations on equivalence).
-
See supra Part I.C.4 (identifying prosecution history estoppel, the prior art, and the disclosure of unclaimed embodiments as limitations on equivalence).
-
-
-
-
244
-
-
85081477987
-
-
In Johnson & Johnston, Judge Rader's concurring opinion suggested a more general rule limiting equivalents to variations that the patentee, when drafting the claims, could not have foreseen. 285 F.3d 1046, 1056 (Fed. Cir. 2002) (The reconciling principle is simple: 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.).
-
In Johnson & Johnston, Judge Rader's concurring opinion suggested a more general rule limiting equivalents to variations that the patentee, when drafting the claims, could not have foreseen. 285 F.3d 1046, 1056 (Fed. Cir. 2002) ("The reconciling principle is simple: 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.").
-
-
-
-
245
-
-
85081483059
-
-
750 F.2d 1569 (Fed. Cir. 1984).
-
750 F.2d 1569 (Fed. Cir. 1984).
-
-
-
-
246
-
-
85081484320
-
-
Id. at 1572 (The team succeeded in making a water-in-oil emulsion blasting agent which Du Pont began making and selling in August 1978.)
-
Id. at 1572 ("The team succeeded in making a water-in-oil emulsion blasting agent which Du Pont began making and selling in August 1978.")
-
-
-
-
247
-
-
85081478298
-
-
Id. at 1579
-
Id. at 1579.
-
-
-
-
248
-
-
85081476443
-
-
Id. at 1580
-
Id. at 1580.
-
-
-
-
249
-
-
85081486620
-
-
Id
-
Id.
-
-
-
-
250
-
-
85081477665
-
-
Id. (Dupont concedes that, if Atlas patents A + B + C and Du Pont then patents the improvement A + B + C + D, Du Pont is liable to Atlas for any manufacture, use, or sale of A + B + C + D ....).
-
Id. ("Dupont concedes that, if Atlas patents A + B + C and Du Pont then patents the improvement A + B + C + D, Du Pont is liable to Atlas for any manufacture, use, or sale of A + B + C + D ....").
-
-
-
-
251
-
-
85081479880
-
-
Id. (holding that Du Pont infringes if its product contains an equivalent or an additional new piece).
-
Id. (holding that Du Pont infringes if its product contains an equivalent or an additional new piece).
-
-
-
-
252
-
-
85081481767
-
-
Id
-
Id.
-
-
-
-
253
-
-
85081489865
-
-
Id
-
Id.
-
-
-
-
254
-
-
85081490601
-
-
Claim preambles typically end with the word comprising, which means that a product is within the scope of the claim if it includes the claim elements listed, alone or in combination with additional elements. See Carl Zeiss Stiftung v. Renishaw PLC, 945 F.2d 1173, 1178 (Fed. Cir. 1991) (holding that a claim is not limited to devices containing only the structures of the embodiments specifically described in the specification).
-
Claim preambles typically end with the word "comprising," which means that a product is within the scope of the claim if it includes the claim elements listed, alone or in combination with additional elements. See Carl Zeiss Stiftung v. Renishaw PLC, 945 F.2d 1173, 1178 (Fed. Cir. 1991) (holding that a claim is not limited to "devices containing only the structures of the embodiments specifically described in the specification").
-
-
-
-
255
-
-
85081481432
-
-
Herman v. Youngstown Car Mfg. Co., 191 F. 579, 585 (6th Cir. 1911). The court in Herman appears to be focusing on literal infringement, where there is no contradiction between the patentability of the defendant's product and its infringement of an earlier claim.
-
Herman v. Youngstown Car Mfg. Co., 191 F. 579, 585 (6th Cir. 1911). The court in Herman appears to be focusing on literal infringement, where there is no contradiction between the patentability of the defendant's product and its infringement of an earlier claim.
-
-
-
-
257
-
-
85081475746
-
-
Merges & Nelson, supra note 177, at 860-61 (explaining that neither the dominant nor the subservient patent owner are capable of selling its product without a license from the other party).
-
Merges & Nelson, supra note 177, at 860-61 (explaining that neither the "dominant" nor the "subservient" patent owner are capable of selling its product without a license from the other party).
-
-
-
-
258
-
-
85081486671
-
-
The court admits that a patent based on unexpected results would be relevant to equivalence. Atlas Powder Co., 750 F.2d at 1580 n.3 (Of course, if A + B + C were patented because of unexpected results, those unexpected results might prompt a finding of no equivalence.). Then the accused combination would produce a substantially different result under the Graver Tank tripartite test of equivalence. One might wonder how a patent could be granted in a case of expected results, but apparently the Du Pont combination, even if patentably different, produced results similar to those achieved by the first patentee.
-
The court admits that a patent based on "unexpected results" would be relevant to equivalence. Atlas Powder Co., 750 F.2d at 1580 n.3 ("Of course, if A + B + C were patented because of unexpected results, those unexpected results might prompt a finding of no equivalence."). Then the accused combination would produce a "substantially different result" under the Graver Tank tripartite test of equivalence. One might wonder how a patent could be granted in a case of "expected results," but apparently the Du Pont combination, even if patentably different, produced results similar to those achieved by the first patentee.
-
-
-
-
260
-
-
85081491331
-
-
see also Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1570 (Fed. Cir. 1996) (The nonobviousness of the accused device, evidenced by the grant of a United States patent, is relevant to the issue of whether the change therein is substantial.).
-
see also Zygo Corp. v. Wyko Corp., 79 F.3d 1563, 1570 (Fed. Cir. 1996) ("The nonobviousness of the accused device, evidenced by the grant of a United States patent, is relevant to the issue of whether the change therein is substantial.").
-
-
-
-
261
-
-
85081478461
-
-
79 F.3d 1112 (Fed. Cir. 1996).
-
79 F.3d 1112 (Fed. Cir. 1996).
-
-
-
-
262
-
-
85081475468
-
-
Id. at 1128 (Nies, J., Additional Views).
-
Id. at 1128 (Nies, J., Additional Views).
-
-
-
-
263
-
-
85081477832
-
-
Id. (emphasis added).
-
Id. (emphasis added).
-
-
-
-
264
-
-
85081478726
-
-
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (Fed. Cir. 1997) (We expect that the Federal Circuit will refine the formulation of the test for equivalence in the orderly course of case-by-case determinations ....).
-
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (Fed. Cir. 1997) ("We expect that the Federal Circuit will refine the formulation of the test for equivalence in the orderly course of case-by-case determinations ....").
-
-
-
-
265
-
-
85081480350
-
-
Winans v. Denmead, 56 U.S. 330, 343 (1853).
-
Winans v. Denmead, 56 U.S. 330, 343 (1853).
-
-
-
-
266
-
-
85081481612
-
-
Id
-
Id.
-
-
-
-
267
-
-
85081483817
-
-
Id. at 344
-
Id. at 344.
-
-
-
-
268
-
-
85081477418
-
-
Graver Tank & Mfg. Co., Inc., v. Linde Air Prods. Co., 339 U.S. 605, 612 (1949).
-
Graver Tank & Mfg. Co., Inc., v. Linde Air Prods. Co., 339 U.S. 605, 612 (1949).
-
-
-
-
269
-
-
85081483736
-
-
Id. at 609 (An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.).
-
Id. at 609 ("An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.").
-
-
-
-
270
-
-
85081478427
-
-
Id. at 611
-
Id. at 611.
-
-
-
-
271
-
-
85081477628
-
-
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 36 (Fed. Cir. 1997) (The need for independent experimentation thus could reflect knowledge - or lack thereof - of interchangeability possessed by one presumably skilled in the art.).
-
Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 36 (Fed. Cir. 1997) ("The need for independent experimentation thus could reflect knowledge - or lack thereof - of interchangeability possessed by one presumably skilled in the art.").
-
-
-
-
272
-
-
85081481035
-
-
Id. at 37. The perspective from which to judge equivalence, and hence knowledge of interchangeability, is the time of the alleged infringement. Id. ([T]he proper time for evaluating equivalency ... is at the time of infringement ....).
-
Id. at 37. The perspective from which to judge equivalence, and hence knowledge of interchangeability, is the time of the alleged infringement. Id. ("[T]he proper time for evaluating equivalency ... is at the time of infringement ....").
-
-
-
-
273
-
-
85081485549
-
-
Id
-
Id.
-
-
-
-
274
-
-
84963456897
-
-
notes 152-153 and accompanying text
-
See supra notes 152-153 and accompanying text.
-
See supra
-
-
-
275
-
-
85081485125
-
-
Warner-Jenkinson, 520 U.S. at 40.
-
Warner-Jenkinson, 520 U.S. at 40.
-
-
-
-
276
-
-
34548636812
-
Shoketsu Kinzoku Kogyo Kabushiki Co., 535
-
U.S. 722, 731 2001, Unfortunately, the nature of language makes it impossible to capture the essence of a thing in a patent application. The inventor who chooses to patent an invention, bears the risk that others will devote their efforts toward exploiting the limits of the patent's language
-
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2001) ("Unfortunately, the nature of language makes it impossible to capture the essence of a thing in a patent application. The inventor who chooses to patent an invention ... bears the risk that others will devote their efforts toward exploiting the limits of the patent's language.").
-
-
-
Festo Corp, V.1
-
277
-
-
85081488549
-
-
Id
-
Id.
-
-
-
-
278
-
-
85081477397
-
-
Id. at 734
-
Id. at 734.
-
-
-
-
279
-
-
85081481090
-
-
See Warner-Jenkinson, 520 U.S. at 37 ([T]he proper time for evaluating equivalency - and thus knowledge of interchangeability between elements - is at the time of infringement, not at the time the patent was issued.).
-
See Warner-Jenkinson, 520 U.S. at 37 ("[T]he proper time for evaluating equivalency - and thus knowledge of interchangeability between elements - is at the time of infringement, not at the time the patent was issued.").
-
-
-
-
280
-
-
85081477817
-
-
U.S. CONST, art. I., § 8, cl. 8.
-
U.S. CONST, art. I., § 8, cl. 8.
-
-
-
-
281
-
-
85081488634
-
-
See Mark F. Grady & Jay I. Alexander, Patent Law and Rent Dissipation, 78 VA. L. REV. 305, 310 (1992) (identifying reward theory as a more traditional method of understanding patent law); Lemley, supra note 20, at 993 (While there are a number of noneconomic theories offered to explain both copyright and patent law, both the United States Constitution and judicial decisions seem to acknowledge the primacy of incentive theory in justifying intellectual property.).
-
See Mark F. Grady & Jay I. Alexander, Patent Law and Rent Dissipation, 78 VA. L. REV. 305, 310 (1992) (identifying reward theory as a more traditional method of understanding patent law); Lemley, supra note 20, at 993 ("While there are a number of noneconomic theories offered to explain both copyright and patent law, both the United States Constitution and judicial decisions seem to acknowledge the primacy of incentive theory in justifying intellectual property.").
-
-
-
-
282
-
-
84963456897
-
-
notes 15-19 and accompanying text
-
See supra notes 15-19 and accompanying text.
-
See supra
-
-
-
283
-
-
85081487140
-
-
See Cotropia, supra note 9, at 169-70 Without the ability to control the invention, the inventor could not demand the price for her invention needed to recoup her costs and turn a profit
-
See Cotropia, supra note 9, at 169-70 ("Without the ability to control the invention, the inventor could not demand the price for her invention needed to recoup her costs and turn a profit.").
-
-
-
-
284
-
-
85081492524
-
-
See Lemley, supra note 20, at 994 (In a private market economy, individuals will not invest in invention or creation unless the expected return from doing so exceeds the cost of doing so - that is, unless they can reasonably expect to make a profit from the endeavor.).
-
See Lemley, supra note 20, at 994 ("In a private market economy, individuals will not invest in invention or creation unless the expected return from doing so exceeds the cost of doing so - that is, unless they can reasonably expect to make a profit from the endeavor.").
-
-
-
-
285
-
-
85081479627
-
-
See Merges & Nelson, supra note 177, at 913 (It is basic to the grant of a patent that the scope of the patent should not exceed the scope of the invention.).
-
See Merges & Nelson, supra note 177, at 913 ("It is basic to the grant of a patent that the scope of the patent should not exceed the scope of the invention.").
-
-
-
-
286
-
-
85081485647
-
-
In In re Fisher, 427 F.2d 833, 839 (C.C. Pa. 1970), the court observed that a patentee should be allowed to dominate the future patentable inventions of others where those inventions were based in some way on his teachings. Even if the improvements are nonobvious, they are still within [the patentee's] contribution, since the improvement was made possible by his work. Id. However, to borrow Professor Merges's analogy, an earlier invention is only the but-for cause of nonobvious improvements, not the proximate cause.
-
In In re Fisher, 427 F.2d 833, 839 (C.C. Pa. 1970), the court observed that a patentee "should be allowed to dominate the future patentable inventions of others where those inventions were based in some way on his teachings." Even if the improvements are nonobvious, they are "still within [the patentee's] contribution, since the improvement was made possible by his work." Id. However, to borrow Professor Merges's analogy, an earlier invention is only the "but-for cause" of nonobvious improvements, not the "proximate cause."
-
-
-
-
287
-
-
85081490063
-
Rent Control in the
-
See, Patent District: Observations on the Grady-Alexander Thesis, 78 VA. L. REV. 359, 363 n.15 1992, Hence, whether the argument is based on fundamental fairness or the tailoring of the economic incentive, the case for dominating nonobvious improvements is a weaker one, particularly when those improvements are beyond the scope of what the patentee claimed explicitly
-
See Robert M. Merges, Rent Control in the Patent District: Observations on the Grady-Alexander Thesis, 78 VA. L. REV. 359, 363 n.15 (1992). Hence, whether the argument is based on fundamental fairness or the tailoring of the economic incentive, the case for dominating nonobvious improvements is a weaker one, particularly when those improvements are beyond the scope of what the patentee claimed explicitly.
-
-
-
Merges, R.M.1
-
288
-
-
85081478814
-
-
Patent law must consider the impact of maintaining the incentive for one inventor on the incentives for potential inventors to follow - those who will be building from, or improving upon, the initial invention. Cotropia, supra note 9, at 179. Improvers may hesitate to proceed if they face the prospect of infringing an earlier patent. Id. at 182 (Almost every inventor is following another's technological development, and protection for after-arising equivalents deters these follow-on inventions.). An improver who could obtain a patent on the improvement would have some leverage for bargaining with the original patentee, because neither could practice the improved invention without the permission of the other.
-
"Patent law must consider the impact of maintaining the incentive for one inventor on the incentives for potential inventors to follow - those who will be building from, or improving upon, the initial invention." Cotropia, supra note 9, at 179. Improvers may hesitate to proceed if they face the prospect of infringing an earlier patent. Id. at 182 ("Almost every inventor is following another's technological development, and protection for after-arising equivalents deters these follow-on inventions."). An improver who could obtain a patent on the improvement would have some leverage for bargaining with the original patentee, because neither could practice the improved invention without the permission of the other.
-
-
-
-
289
-
-
85081477646
-
-
See id. at 198-99 The follow-on inventor, can, in this instance, use her patent to block the existing patentee from practicing her development, forcing a bargaining situation
-
See id. at 198-99 ("The follow-on inventor, can, in this instance, use her patent to block the existing patentee from practicing her development, forcing a bargaining situation.");
-
-
-
-
290
-
-
85081477421
-
-
Lemley, supra note 20, at 1009-10 (The original patent owner can prevent the improver from using his patented technology, but the improver can also prevent the original patent owner from using the improvement.). However, the improver who will owe nothing to the original patentee has a stronger incentive.
-
Lemley, supra note 20, at 1009-10 ("The original patent owner can prevent the improver from using his patented technology, but the improver can also prevent the original patent owner from using the improvement."). However, the improver who will owe nothing to the original patentee has a stronger incentive.
-
-
-
-
291
-
-
34547752801
-
The Nature and Function of the
-
See, Patent System, 20 J.L. & ECON, 265, 265 1977, This essay argues that the patent system performs a function not previously noted: to increase the output from resources used for technological innovation
-
See Edmund W. Kitch, The Nature and Function of the Patent System, 20 J.L. & ECON, 265, 265 (1977) ("This essay argues that the patent system performs a function not previously noted: to increase the output from resources used for technological innovation.").
-
-
-
Kitch, E.W.1
-
292
-
-
85081480401
-
-
at, A] patent 'prospect' increases the efficiency with which investment in innovation can be managed
-
See id. at 276 ("[A] patent 'prospect' increases the efficiency with which investment in innovation can be managed.").
-
See id
, pp. 276
-
-
-
293
-
-
85081475209
-
-
See id. at 279 (A patent system covering all the useful arts provides a uniform structure of incentives without regard to the possibility of economic exploitation in secret.).
-
See id. at 279 ("A patent system covering all the useful arts provides a uniform structure of incentives without regard to the possibility of economic exploitation in secret.").
-
-
-
-
295
-
-
85081487138
-
-
See Grady & Alexander, supra note 234, at 314 (Both systems ... lower the claimant's cost of maintaining control over the valuable discovered resource.);
-
See Grady & Alexander, supra note 234, at 314 ("Both systems ... lower the claimant's cost of maintaining control over the valuable discovered resource.");
-
-
-
-
296
-
-
85081478048
-
-
Lemley, supra note 20, at 1046 ([T]he primary point of the patent system is to encourage further commercialization and efficient use of as yet unrealized ideas by patenting them, just as privatizing land will encourage the owner to make efficient use of it.).
-
Lemley, supra note 20, at 1046 ("[T]he primary point of the patent system is to encourage further commercialization and efficient use of as yet unrealized ideas by patenting them, just as privatizing land will encourage the owner to make efficient use of it.").
-
-
-
-
297
-
-
85081478809
-
-
Merges & Nelson, supra note 177, at 843 However, contrary to what Kitch suggests, we do not presume that granting broad scope to an initial inventor induces more effective development and future invention
-
Merges & Nelson, supra note 177, at 843 ("However, contrary to what Kitch suggests, we do not presume that granting broad scope to an initial inventor induces more effective development and future invention.").
-
-
-
-
298
-
-
85081476150
-
-
Id. at 843-44, 877 (arguing that, at the margin, the law should favor a competitive environment to promote efficiency); Merges, supra note 239, at 372-73 (Invention of improvements, like all invention, is an expensive and unpredictable activity, and the more approaches that are tried the more likely it is that the technical advances will be made.). Although even monopolists have incentives to innovate, competition offers both the carrot of success and the stick of failure at the hands of a more industrious rival.
-
Id. at 843-44, 877 (arguing that, at the margin, the law should favor a competitive environment to promote efficiency); Merges, supra note 239, at 372-73 ("Invention of improvements, like all invention, is an expensive and unpredictable activity, and the more approaches that are tried the more likely it is that the technical advances will be made."). Although even monopolists have incentives to innovate, competition offers both the "carrot" of success and the "stick" of failure at the hands of a more industrious rival.
-
-
-
-
299
-
-
85081487365
-
-
See Merges & Nelson, supra note 177, at 872 (For one thing, under rivalrous competition in invention and innovation there is a stick as well as a carrot.). Competition also means that more creative minds are working on the same problems, perhaps exploring different paths.
-
See Merges & Nelson, supra note 177, at 872 ("For one thing, under rivalrous competition in invention and innovation there is a stick as well as a carrot."). Competition also means that more creative minds are working on the same problems, perhaps exploring different paths.
-
-
-
-
300
-
-
85081479467
-
-
See id. at 873-74 But we would expect a single rightholder to underdevelop, or even ignore totally, many of the potential improvements encompassed by their broad property right, Oddi calls the Merges and Nelson approach the race-to-invent theory, based on the premise that faster is better, Oddi, supra note 1, at 282
-
See id. at 873-74 ("But we would expect a single rightholder to underdevelop - or even ignore totally - many of the potential improvements encompassed by their broad property right."). Oddi calls the Merges and Nelson approach the "race-to-invent" theory, based on the premise that "faster is better," Oddi, supra note 1, at 282.
-
-
-
-
301
-
-
85081480247
-
-
Merges & Nelson, supra note 177, at 910 (The equivalents inquiry ... should be centered around whether the improved structures of the accused device show major differences from the structures disclosed in the original specification.). The source of the symmetry to which they refer is the increased scope of equivalents afforded to pioneer patents - patents on technological breakthroughs inaugurating entirely new fields of endeavor.
-
Merges & Nelson, supra note 177, at 910 ("The equivalents inquiry ... should be centered around whether the improved structures of the accused device show major differences from the structures disclosed in the original specification."). The source of the "symmetry" to which they refer is the increased scope of equivalents afforded to "pioneer patents" - patents on technological breakthroughs inaugurating entirely new fields of endeavor.
-
-
-
-
302
-
-
85081475232
-
-
See Sun Studs, Inc. v. ATA Equip, Leasing, Inc., 872 F.2d 978, 987 (Fed. Cir. 1989) (The wide range of technological advance between pioneer breakthrough and modest improvement accommodates gradations in scope of equivalency.).
-
See Sun Studs, Inc. v. ATA Equip, Leasing, Inc., 872 F.2d 978, 987 (Fed. Cir. 1989) ("The wide range of technological advance between pioneer breakthrough and modest improvement accommodates gradations in scope of equivalency.").
-
-
-
-
303
-
-
85081479801
-
-
The reason for the increased scope may be simply that equivalence, in the case of a pioneer patent, is less hemmed in by the prior art. See Abbott Labs. v. Dey, L.P., 287 F.3d 1097, 1105 (Fed. Cir. 2002) (holding that, in the absence of constraining prior art, pioneers acquire broader claims than non-pioneers).
-
The reason for the increased scope may be simply that equivalence, in the case of a pioneer patent, is less hemmed in by the prior art. See Abbott Labs. v. Dey, L.P., 287 F.3d 1097, 1105 (Fed. Cir. 2002) (holding that, in the absence of constraining prior art, pioneers acquire broader claims than non-pioneers).
-
-
-
-
304
-
-
85081480377
-
-
See Lemley, supra note 20, at 1007-08 (describing the differing treatments of significant improvers and minor improvers under patent doctrine);
-
See Lemley, supra note 20, at 1007-08 (describing the differing treatments of significant improvers and minor improvers under patent doctrine);
-
-
-
-
305
-
-
73949150279
-
-
see also note 9, at, discussing how a radical improvement will not infringe because it falls outside of the range of equivalents
-
see also Cotropia, supra note 9, at 183 (discussing how a radical improvement will not infringe because it falls outside of the range of equivalents).
-
supra
, pp. 183
-
-
Cotropia1
-
306
-
-
85081489546
-
-
A defendant's patent does not prevent literal infringement because additions, even additions that may be patentable, do not prevent the defendant's product from falling within the previously claimed genus. Patentable changes are another matter.
-
A defendant's patent does not prevent literal infringement because additions, even additions that may be patentable, do not prevent the defendant's product from falling within the previously claimed genus. Patentable changes are another matter.
-
-
-
-
307
-
-
85081478487
-
-
See supra Part III.C (concluding that an addition does not prevent infringement).
-
See supra Part III.C (concluding that an addition does not prevent infringement).
-
-
-
-
308
-
-
85081488515
-
-
Grady & Alexander, supra note 234, at 308 The defect in [rent dissipation] is that if multiple inventors expend resources in competition for the patent monopoly, the benefit to society of having the invention will be dissipated by the cost of numerous, redundant development efforts
-
Grady & Alexander, supra note 234, at 308 ("The defect in [rent dissipation] is that if multiple inventors expend resources in competition for the patent monopoly, the benefit to society of having the invention will be dissipated by the cost of numerous, redundant development efforts.");
-
-
-
-
309
-
-
85081475029
-
-
see also Merges, supra note 239, at 370-71 (concluding that a danger posed by rent dissipation is wasteful duplication).
-
see also Merges, supra note 239, at 370-71 (concluding that a danger posed by rent dissipation is wasteful duplication).
-
-
-
-
310
-
-
85081491430
-
-
Grady & Alexander, supra note 234, at 308 The difference between what society would pay for an innovation and its actual cost of development, the rent, is awarded to the inventor in the form of a monopoly right
-
Grady & Alexander, supra note 234, at 308 ("The difference between what society would pay for an innovation and its actual cost of development - the rent - is awarded to the inventor in the form of a monopoly right ....").
-
-
-
-
311
-
-
85081475116
-
-
See id. at 308 claiming that if rent was not awarded to the inventor, competition by imitators would discourage innovation by making it unprofitable
-
See id. at 308 (claiming that if rent was not awarded to the inventor, "competition by imitators would discourage innovation by making it unprofitable").
-
-
-
-
312
-
-
85081476834
-
-
Id. at 307-08 In the perverse equilibrium that would result from a system awarding full control to the inventor who is first, the cost of developing dreams that ultimately fail would equal or exceed the benefit to society of those that succeed
-
Id. at 307-08 ("In the perverse equilibrium that would result from a system awarding full control to the inventor who is first, the cost of developing dreams that ultimately fail would equal or exceed the benefit to society of those that succeed.").
-
-
-
-
313
-
-
85081490630
-
-
See id. at 314-15 (In a gold rush, however, a single lucky prospector wins big, and then society loses as follow-on prospectors bid resources from higher valued uses outside the prospecting industry to lower valued ones inside it.).
-
See id. at 314-15 ("In a gold rush, however, a single lucky prospector wins big, and then society loses as follow-on prospectors bid resources from higher valued uses outside the prospecting industry to lower valued ones inside it.").
-
-
-
-
314
-
-
85081484424
-
-
See id. at 308 (characterizing as redundant the efforts of too many researchers attempting to patent the same invention simultaneously).
-
See id. at 308 (characterizing as "redundant" the efforts of too many researchers attempting to patent the same invention simultaneously).
-
-
-
-
316
-
-
85081478459
-
-
See id. at 306 explaining that patents encourage hopeful inventors to squander valuable social resources in the race to win the patent
-
See id. at 306 (explaining that patents "encourage hopeful inventors to squander valuable social resources in the race to win the patent").
-
-
-
-
318
-
-
85081488133
-
-
Grady and Alexander claim that they are explaining what the courts have done, rather than advocating what they should do. See id. (At its core, our theory seeks to identify an underlying unity that explains the seemingly disorderly patent results.).
-
Grady and Alexander claim that they are explaining what the courts have done, rather than advocating what they should do. See id. ("At its core, our theory seeks to identify an underlying unity that explains the seemingly disorderly patent results.").
-
-
-
-
319
-
-
85081483591
-
-
See id. at 320-21 (As the value of the invention increases, the case for patentability weakens because the large monopoly rent conferred on the inventor tends to encourage rent dissipation at the preinvention stage, Oddi, supra note 1, at 289 (Accordingly, rent dissipation would seem to suggest a narrow scope of protection for low benefit/cost (detail) inventions, because most of the improvements have presumably already been signaled
-
See id. at 320-21 ("As the value of the invention increases, the case for patentability weakens because the large monopoly rent conferred on the inventor tends to encourage rent dissipation at the preinvention stage ...."); Oddi, supra note 1, at 289 ("Accordingly, rent dissipation would seem to suggest a narrow scope of protection for low benefit/cost (detail) inventions, because most of the improvements have presumably already been signaled.").
-
-
-
-
320
-
-
85081486343
-
-
Some who have commented on the Grady & Alexander thesis wonder how to tell whether an invention signals the potential for improvement or does not. See Oddi, supra note 1, at 285 (One also would be suspicious of a counter-intuitive theory that predicts the invalidity of a patent on an elegant invention (categorized as being unimprovable) and that predicts validity of a patent on an inelegant (detail) invention because it somehow signals improvements.). If the relevant improvements are the obvious ones, the solution is found in the knowledge available to persons of ordinary skill.
-
Some who have commented on the Grady & Alexander thesis wonder how to tell whether an invention signals the potential for improvement or does not. See Oddi, supra note 1, at 285 ("One also would be suspicious of a counter-intuitive theory that predicts the invalidity of a patent on an elegant invention (categorized as being unimprovable) and that predicts validity of a patent on an inelegant (detail) invention because it somehow signals improvements."). If the relevant improvements are the obvious ones, the solution is found in the knowledge available to persons of ordinary skill.
-
-
-
-
321
-
-
85081485879
-
-
The costs of developing obvious variations may be lower than the costs of developing nonobvious variations; the former are easier to produce. But more rivals are attracted to the prospect of developing obvious alternatives, because of the lower costs to each rival, the larger pool of effective competitors, and the relative certainty of success, so, in the aggregate, the rent associated with the original invention may be as effectively, if not more effectively, dissipated
-
The costs of developing obvious variations may be lower than the costs of developing nonobvious variations; the former are easier to produce. But more rivals are attracted to the prospect of developing obvious alternatives - because of the lower costs to each rival, the larger pool of effective competitors, and the relative certainty of success - so, in the aggregate, the rent associated with the original invention may be as effectively, if not more effectively, dissipated.
-
-
-
|