Transcript PPT - Berkeley Law

Patent Infringement II
Intro to IP – Prof Merges
2.2.09
Topics Today
• Recap Doctrine of Equivalents;
prosecution history estoppel
• Briefly review contributory infringement
• Foreign infringement
Equivalents/Literal Claim Scope
Range of
Equivalents
Literal
Claim
Scope
Doctrinal Sequence
• FIRST: What is the literal meaning of
the claim language?
• THEN: If the accused product falls
outside that language, is it an
“equivalent” of the claimed invention?
What is the test for equivalence?
• Is the accused product an “insubstantial
alteration” under Warner-Jenkinson and
Festo?
• Even if so, was this trivial variation on the
claim “given up” during patent prosecution;
in which case, equivalents are “estopped”
Equivalents/Literal Claim Scope
Range of
Equivalents
Literal
Claim
Scope
What is a
“baffle”? Is the
tank “thereon”?
Equivalents/Literal Claim Scope
Range of
Equivalents
Is a single sealing
ring equivalent to
“a pair” of them?
Literal
Claim
Scope
Prosecution History Estoppel
1. Warner-Jenkinson: presumption that part of claim
coverage is surrendered when applicant amends
claim
2. Festo case: 3 Ways to beat the presumption
3. Post-Festo developments: “disclosed but not
claimed”/dedicated to the public
“Range of
Equivalents”
Literal
Claim
Scope
Infringement
under DOE ?
Warner-Jenkinson
• DOE Survives challenge
• Presumption in cases of claim amendment:
amendment made for reasons related to
patentability; prosecution history estoppel
applies
 SO: Presumption of no DOE, you are limited to
your literal claim language
Original Claim
Scope
Original Claim
Scope
Narrowed
Scope, after
amendment
RE Service v. Johnson & Johnston
• What was disclosed?
• What was claimed?
Disclosed
• Aluminum and steel plates, for use as
“backing” to protect copper sheets in
manufacture of circuit boards
Claimed
• Use of alumunim plates only
Held
• Subject matter (i.e., embodiments of the
inventive concept) disclosed but not claimed
is “dedicated to the public” –
–Cannot be recaptured
through doctrine of
equivalents
Contributory Infringement
• Can you be held liable for patent
infringement when you do something
less than a complete act of
infringement?
CR Bard v. Advanced
Cardiovascular Systems, Inc.
• Claim: “Method
for using a
catheter in coronary
angiolasty”
• Who infringes this claim? The
surgeon
Why does Bard sue ACS?
• Sue where the money is
• Don’t sue your customers
CR Bard
How can Bard sue ACS?
• Must argue that ACS does something
essential to infringement; “aids and abets”
the infringement
• Two labels for this in patent law, and IP law
generally
Contributory infringement &
inducement
• Two labels, conceptually similar acts
Indirect infringement: Inducement
and contributory infringement
35 USC 271 (b):
Whoever actively induces
infringement of a patent shall
be liable as an infringer.
35 USC 271(c)
(c) Whoever offers to sell or sells within the United
States or imports into the United States a component
of a patented machine, manufacture, combination, or
composition, or a material or apparatus for use in
practicing a patented process, constituting a material
part of the invention, knowing the same to be
especially made or especially adapted for use in an
infringement of such patent, and not a staple article
or commodity of commerce suitable for substantial
noninfringing use, shall be liable as a contributory
infringer.
Substantial noninfringing uses?
• Claim specifies catheter opening location
• Are there noninfringing uses of the
defendant’s catheter?
MICROSOFT CORP. V. AT & T CORP.
Title 35 U.S.C. § 271(f)(1) provides that it is an act of direct
patent infringement to
“suppl[y]. . . from the United States . . . components of a
patented invention . . . In such manner as to actively
induce the combination of such components outside of
the United States.”
The questions presented are:
(1) Whether digital software code—an intangible
sequence of “1’s” and “0’s”—may be considered
a “component[ ] of a patented invention” within
the meaning of Section 271(f)(1); and, if so,
(2) Whether copies of such a “component[]” made
in a foreign country are “supplie[d] . . . from the
United States.”
The Statute – 35 USC § 271(f)
(1) Whoever without authority supplies or causes to be
supplied in or from the United States all or a
substantial portion of the components of a patented
invention, where such components are uncombined in
whole or in part, in such manner as to actively induce
the combination of such components outside of the
United States in a manner that would infringe the
patent if such combination occurred within the United
States, shall be liable as an infringer.
Section 271(f)(2)
(2) Whoever without authority supplies or causes to be
supplied in or from the United States any component
of a patented invention that is especially made or
especially adapted for use in the invention and not a
staple article or commodity of commerce suitable for
substantial noninfringing use, where such component
is uncombined in whole or in part, knowing that such
component is so made or adapted and intending that
such component will be combined outside of the
United States in a manner that would infringe the
patent if such combination occurred within the United
States, shall be liable as an infringer.
Schematic: 271(f)(1):
[1] Whoever without authority
[a] supplies or causes to be supplied
[b] in or from the United States
[c] all or a substantial portion of the components of a patented
invention,
[2] where such components are uncombined in whole or in part,
[3] in such manner as to actively induce the combination of such
components outside of the United States
[4] in a manner that would infringe the patent if such combination
occurred within the United States,
shall be liable as an infringer.
[1]Whoever without authority
[a] supplies or causes to be supplied
[b] in or from the United States
[c] any component of a patented invention
[i] that is especially made or especially adapted for use in the
invention and
[ii] not a staple article or commodity of commerce suitable for
substantial noninfringing use,
[2] where such component is uncombined in whole or in part,
[3] knowing that such component is so made or adapted and
[4] intending that such will be combined
[a] outside of the United States
[b] in a manner that would infringe the patent if such combination
occurred within the United States,
shall be liable as an infringer.
History
271(f): Enacted to overturn Supreme Court opinion
in Deep South Packing v. Laitram, 406 U.S. 518
(1972) (accused infringer sold and shipped three
separate boxes which, when opened and
assembled according to provided instructions in
less than an hour, resulted in fully operable
infringing device under machine combination
patent).
Deepsouth (1972)
“We cannot endorse the view that the
‘substantial manufacture of the constituent
parts of [a] machine’ constitutes direct
infringement when we have so often held
that a combination patent protects only
against the operable assembly of the whole
and not the manufacture of its parts.” 406
U.S. at 528.
The questions presented are:
(1) Whether digital software code—an intangible
sequence of “1’s” and “0’s”—may be considered
a “component[ ] of a patented invention” within
the meaning of Section 271(f)(1); and, if so,
(2) Whether copies of such a “component[]” made
in a foreign country are “supplie[d] . . . from the
United States.”
271(f) enacted “to close a loophole in patent
law.” The legislative history indicates that the
provision's primary purpose is “[to] prevent
copiers from avoiding U.S. patents by
supplying components of a patented product
in this country so that the assembly of the
components may be completed abroad.” -Patent Law Amendments Act of 1984, Pub. L.
No. 98-622, 101, 98 Stat. 3383 at 5828
AT&T v. Microsoft
AT&T owns Atal et al., US Patent Re 32,580
(originally 4,472,832), “Digital Speech Coder,”
Jan. 19, 1988. This patent covers speech
compression and decompression techniques
developed at Bell Labs. AT&T claimed a portion
of Microsoft’s Windows product infringed the
patent.
Procedural History
Trial court held that liability could be
established under 271(f) for export of
“golden master” disks containing Windows.
The golden masters were used by Microsoft
licensees to install Windows on personal
computers manufactured and sold in
overseas countries, e.g., Germany and
Japan. Microsoft appealed to the Federal
Circuit.
Federal Circuit Holding:
Export of golden master disks was a violation of
271(f). Software on the disks is a “component,”
and the sending of the disks overseas was
“suppl[y]” of such a component under 271(f).
“Component”:
“Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d
1325 (Fed. Cir. 2005), issued while the
instant appeal was pending, held that
‘software could very well be a “component”
of a patented invention for the purposes of
§ 271(f).’ Id. at 1339.”
“Supplied”:
“It is inherent in the nature of software that
one can supply only a single disk that may
be replicated – saving material, shipping,
and storage costs – instead of supplying a
separate disk for each copy of the software
to be sold abroad. All of such resulting
copies have essentially been supplied from
the United States.” – 414 F.3d at 1370.
Supreme Court held that software may constitute a
“component” under 271(f)(2), at some point
but that sending the “golden master” as in the
Microsoft case was NOT “supply” of a software
component under the statute.
See page 320: when does software become a
component? (When embodied on a medium)
Policy
The Federal Circuit’s holding extended United States
patent law to foreign markets
Said to put United States software companies at a
competitive disadvantage vis-a-vis their foreign
competitors in foreign markets.
AT&T Should seek independent foreign patents to
cover the acts alleged here