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Volumn 87, Issue 5, 2007, Pages 969-1019

Patent symmetry

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EID: 38949105527     PISSN: 00068047     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Review
Times cited : (7)

References (321)
  • 1
    • 21344438281 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • § 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 scopus 로고    scopus 로고
    • See infra Part I.C (discussing extensively the doctrine of equivalents).
    • See infra Part I.C (discussing extensively the doctrine of equivalents).
  • 4
    • 85081477497 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • U.S. CONST. art. I, § 8, cl. 8.
    • U.S. CONST. art. I, § 8, cl. 8.
  • 28
    • 85081490917 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • §§ 101, 271a, 2000
    • 35 U.S.C. §§ 101, 271(a) (2000),
    • 35 U.S.C
  • 30
    • 85081491450 scopus 로고    scopus 로고
    • See Cotropia, supra note 9, at 169-70
    • See Cotropia, supra note 9, at 169-70.
  • 31
    • 0035649475 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • See note 17, §§ 1.1, 1.3b
    • See HOVENKAMP, supra note 17, §§ 1.1, 1.3(b).
    • supra
    • HOVENKAMP1
  • 36
    • 85081482121 scopus 로고    scopus 로고
    • See id. § 2.3(c).
    • See id. § 2.3(c).
  • 37
    • 0345984391 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • See Graham, 383 U.S. at 9.
    • See Graham, 383 U.S. at 9.
  • 39
    • 33846540862 scopus 로고    scopus 로고
    • § 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 52 U.S. (11 How.) 248 (1850).
    • 52 U.S. (11 How.) 248 (1850).
  • 42
    • 85081477504 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id. at 265
    • Id. at 265.
  • 44
    • 85081490847 scopus 로고    scopus 로고
    • Id. at 266
    • Id. at 266.
  • 45
    • 85081486791 scopus 로고    scopus 로고
    • Id. at 267
    • Id. at 267.
  • 46
    • 85081485058 scopus 로고    scopus 로고
    • Id
    • Id.
  • 47
    • 85081479001 scopus 로고    scopus 로고
    • 314 U.S. 84 1941
    • 314 U.S. 84 (1941).
  • 48
    • 85081478438 scopus 로고    scopus 로고
    • Id. at 88
    • Id. at 88.
  • 49
    • 85081491674 scopus 로고    scopus 로고
    • Id
    • Id.
  • 50
    • 85081479589 scopus 로고    scopus 로고
    • Id. at 88-89
    • Id. at 88-89.
  • 51
    • 85081491249 scopus 로고    scopus 로고
    • Id. at 91
    • Id. at 91.
  • 52
    • 85081476332 scopus 로고    scopus 로고
    • Id. at 91-92
    • Id. at 91-92.
  • 53
    • 85081480981 scopus 로고    scopus 로고
    • Id. at 91
    • Id. at 91.
  • 54
    • 85081487768 scopus 로고    scopus 로고
    • Id. at 92
    • Id. at 92.
  • 55
    • 85081479745 scopus 로고    scopus 로고
    • 107 U.S. 192 1882
    • 107 U.S. 192 (1882).
  • 56
    • 85081491126 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • § 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • § 103c, 2000
    • 35 U.S.C. § 103(c) (2000).
    • 35 U.S.C
  • 63
    • 85081478561 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • § 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • text accompanying notes 224-228
    • See infra text accompanying notes 224-228.
    • See infra
  • 70
    • 85081484783 scopus 로고    scopus 로고
    • 383 U.S. 1 1966
    • 383 U.S. 1 (1966).
  • 72
    • 85081490162 scopus 로고    scopus 로고
    • Id
    • Id.
  • 73
    • 85081486286 scopus 로고    scopus 로고
    • Id
    • Id.
  • 74
    • 85081484925 scopus 로고    scopus 로고
    • Id
    • Id.
  • 75
    • 85081481350 scopus 로고    scopus 로고
    • Id. at 17-18
    • Id. at 17-18.
  • 76
    • 85081481551 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id
    • Id.
  • 78
    • 85081490750 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Monarch Knitting, 139 F.3d at 885.
    • Monarch Knitting, 139 F.3d at 885.
  • 91
    • 85081479733 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • See Ecolochem, 227 F.3d at 1379;
    • See Ecolochem, 227 F.3d at 1379;
  • 94
    • 85081480758 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • § 154(a)2, 2000
    • 35 U.S.C. § 154(a)(2) (2000).
    • 35 U.S.C
  • 96
    • 85081488145 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • See Cianfrani, supra note 7, at ¶ 13
    • See Cianfrani, supra note 7, at ¶ 13.
  • 98
    • 85081490849 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Patent Act of 1870 § 26, 16 Stat. 198, 201.
    • Patent Act of 1870 § 26, 16 Stat. 198, 201.
  • 102
    • 85081487337 scopus 로고    scopus 로고
    • § 112 2000
    • 35 U.S.C. § 112 (2000).
    • 35 U.S.C
  • 103
    • 85081485336 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • § 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 56 U.S. (15 How.) 330, 332 (1854).
    • 56 U.S. (15 How.) 330, 332 (1854).
  • 116
    • 85081491105 scopus 로고    scopus 로고
    • Id. at 342
    • Id. at 342.
  • 117
    • 85081486289 scopus 로고    scopus 로고
    • Id. at 340
    • Id. at 340.
  • 118
    • 85081475985 scopus 로고    scopus 로고
    • Id
    • Id.
  • 119
    • 85081492129 scopus 로고    scopus 로고
    • Id
    • Id.
  • 120
    • 85081486224 scopus 로고    scopus 로고
    • Id. at 343
    • Id. at 343.
  • 121
    • 85081480383 scopus 로고    scopus 로고
    • Id. at 344
    • Id. at 344.
  • 122
    • 85081491868 scopus 로고    scopus 로고
    • Id
    • Id.
  • 123
    • 85081477925 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id. at 347 (Campbell, J., dissenting).
    • Id. at 347 (Campbell, J., dissenting).
  • 125
    • 85081482363 scopus 로고    scopus 로고
    • 339 U.S. 605 1950
    • 339 U.S. 605 (1950).
  • 126
    • 85081481763 scopus 로고    scopus 로고
    • Id. at 610
    • Id. at 610.
  • 127
    • 85081483300 scopus 로고    scopus 로고
    • Id
    • Id.
  • 128
    • 85081484198 scopus 로고    scopus 로고
    • Id
    • Id.
  • 129
    • 85081476620 scopus 로고    scopus 로고
    • Id
    • Id.
  • 130
    • 85081486311 scopus 로고    scopus 로고
    • Id. at 607
    • Id. at 607.
  • 131
    • 85081476422 scopus 로고    scopus 로고
    • Id
    • Id.
  • 132
    • 85081475060 scopus 로고    scopus 로고
    • Id
    • Id.
  • 133
    • 85081484109 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id
    • Id.
  • 135
    • 85081489649 scopus 로고    scopus 로고
    • Id. at 609
    • Id. at 609.
  • 136
    • 85081489078 scopus 로고    scopus 로고
    • Id. at 612
    • Id. at 612.
  • 137
    • 85081491915 scopus 로고    scopus 로고
    • Id. at 610-11
    • Id. at 610-11.
  • 138
    • 85081485404 scopus 로고    scopus 로고
    • Id. at 611
    • Id. at 611.
  • 139
    • 85081477356 scopus 로고    scopus 로고
    • Id
    • Id.
  • 140
    • 85081490187 scopus 로고    scopus 로고
    • Id. at 612
    • Id. at 612.
  • 141
    • 85081480637 scopus 로고    scopus 로고
    • Id
    • Id.
  • 142
    • 85081486723 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 833F.2d931Fed.Cir. 1987
    • 833F.2d931(Fed.Cir. 1987).
  • 147
    • 85081477541 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 520 U.S. 17 1997
    • 520 U.S. 17 (1997).
  • 151
    • 85081484413 scopus 로고    scopus 로고
    • Id
    • Id.
  • 152
    • 85081488290 scopus 로고    scopus 로고
    • Id. at 22
    • Id. at 22.
  • 153
    • 85081477159 scopus 로고    scopus 로고
    • Id. at 23
    • Id. at 23.
  • 154
    • 85081482788 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id. at 39-40
    • Id. at 39-40.
  • 159
    • 85081484437 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Warner-Jenkinson, 520 U.S. at 40.
    • Warner-Jenkinson, 520 U.S. at 40.
  • 161
    • 85081481929 scopus 로고    scopus 로고
    • Id
    • Id.
  • 162
    • 85081475166 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 520 U.S. at 28-29
    • 520 U.S. at 28-29.
  • 164
    • 85081476340 scopus 로고    scopus 로고
    • Id. at 29
    • Id. at 29.
  • 165
    • 85081483070 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id. at 731;
    • Id. at 731;
  • 178
    • 85081490154 scopus 로고    scopus 로고
    • see also Cianfrani, supra note 7, at 29
    • see also Cianfrani, supra note 7, at 29.
  • 179
    • 85081492058 scopus 로고    scopus 로고
    • Festo, 535 U.S. at 730-31.
    • Festo, 535 U.S. at 730-31.
  • 180
    • 85081482824 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Festo, 535 U.S. at 731 ;
    • Festo, 535 U.S. at 731 ;
  • 182
    • 85081478276 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id. at 731
    • Id. at 731.
  • 184
    • 85081479830 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Warner-Jenkinson, 520 U.S. at 40.
    • Warner-Jenkinson, 520 U.S. at 40.
  • 191
    • 85081480456 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • § 103 2000
    • 35 U.S.C. § 103 (2000).
    • 35 U.S.C
  • 205
    • 85081481815 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id. at 1079
    • Id. at 1079.
  • 212
    • 85081477092 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • § 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • § 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 339 U.S. 605, 607 (1950).
    • 339 U.S. 605, 607 (1950).
  • 229
    • 85081490869 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id
    • Id.
  • 232
    • 85081478022 scopus 로고    scopus 로고
    • 805 F.2d 1558 (Fed. Cir. 1986).
    • 805 F.2d 1558 (Fed. Cir. 1986).
  • 233
    • 85081488109 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • notes 118-124 and accompanying text
    • See supra notes 118-124 and accompanying text.
    • See supra
  • 240
    • 85081492337 scopus 로고    scopus 로고
    • Warner-Jenkinson, 520 U.S. at 22 n.2.
    • Warner-Jenkinson, 520 U.S. at 22 n.2.
  • 241
    • 85081489540 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 750 F.2d 1569 (Fed. Cir. 1984).
    • 750 F.2d 1569 (Fed. Cir. 1984).
  • 246
    • 85081484320 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id. at 1579
    • Id. at 1579.
  • 248
    • 85081476443 scopus 로고    scopus 로고
    • Id. at 1580
    • Id. at 1580.
  • 249
    • 85081486620 scopus 로고    scopus 로고
    • Id
    • Id.
  • 250
    • 85081477665 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id
    • Id.
  • 253
    • 85081489865 scopus 로고    scopus 로고
    • Id
    • Id.
  • 254
    • 85081490601 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 79 F.3d 1112 (Fed. Cir. 1996).
    • 79 F.3d 1112 (Fed. Cir. 1996).
  • 262
    • 85081475468 scopus 로고    scopus 로고
    • Id. at 1128 (Nies, J., Additional Views).
    • Id. at 1128 (Nies, J., Additional Views).
  • 263
    • 85081477832 scopus 로고    scopus 로고
    • Id. (emphasis added).
    • Id. (emphasis added).
  • 264
    • 85081478726 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Winans v. Denmead, 56 U.S. 330, 343 (1853).
    • Winans v. Denmead, 56 U.S. 330, 343 (1853).
  • 266
    • 85081481612 scopus 로고    scopus 로고
    • Id
    • Id.
  • 267
    • 85081483817 scopus 로고    scopus 로고
    • Id. at 344
    • Id. at 344.
  • 268
    • 85081477418 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id. at 611
    • Id. at 611.
  • 271
    • 85081477628 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id
    • Id.
  • 274
    • 84963456897 scopus 로고    scopus 로고
    • notes 152-153 and accompanying text
    • See supra notes 152-153 and accompanying text.
    • See supra
  • 275
    • 85081485125 scopus 로고    scopus 로고
    • Warner-Jenkinson, 520 U.S. at 40.
    • Warner-Jenkinson, 520 U.S. at 40.
  • 276
    • 34548636812 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • Id
    • Id.
  • 278
    • 85081477397 scopus 로고    scopus 로고
    • Id. at 734
    • Id. at 734.
  • 279
    • 85081481090 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • U.S. CONST, art. I., § 8, cl. 8.
    • U.S. CONST, art. I., § 8, cl. 8.
  • 281
    • 85081488634 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • notes 15-19 and accompanying text
    • See supra notes 15-19 and accompanying text.
    • See supra
  • 283
    • 85081487140 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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 scopus 로고    scopus 로고
    • 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.


* 이 정보는 Elsevier사의 SCOPUS DB에서 KISTI가 분석하여 추출한 것입니다.