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SUNY Buffalo Law School
Simpson, Robert P.

Monday, February 16, 2015
Class 3
–          3 kinds of patents: Utility, Plant, Design
–          Infringement:
o   Make sure you look at dates of filing and issuant of the patent and make sure that they are still in force
o   If utility patent- make sure maintenance fees have been paid, or you wouldn’t have an issue
o   Plant patent- asexually developed
o   Design patent- protect ornamental design of a patent; only protects the way something looks; have no maintenance fees (EXAM QUESTION); last for 15 years- measure from the date the design patent is issued- not from the filing date (EXAM QUESTION)
–          Patent gives you right as the patentee to prevent others from using, making, selling, or offering for sale the thing
–          Literal Infringement: the using, making, or selling, or offering for sale a thing that includes each and every element of at least one claim
–          Claims are the most important part of the patent
o   First thing the lawyer does is draft the claim
–          Parts of a Patent
o   Title
o   Filed of the invention
o   Background of the invention
o   Summary of the invention
o   Brief description of the drawings
o   Detailed description
o   Claims
o   Abstract
–          Job 1 is always to understand the invention. You can’t do anything in Patent Law if you don’t understand the invention! (EXAM QUESTION)
–          Understanding the Invention
o   If a court opinion discusses an issued patent, always get a copy of the “official patent” and read it; you will NOT get the drawings from the USPTO, so best to download from
o   You should always get a copy of the prior art references cited in the opinion
–          How to Write and Refer to a Patent
o   Always use commas to delineate digits in a US Patent #
o   Common practice is to recite complete number once in opinion and then to refer to patent by last three digits
o   Common (informal) practice is to refer to patent by last name of first listed inventor
–          Types of US Patent Applications
o   Original
§  Complete US patent app that discloses an independent invention that can stand alone
o   Provisional
§  Includes specification (every word in everything of the patent- except the drawings)
§  Not examined- must convert to non-provisional in a year or it dies; they get you the ability to say something is patent pending
§  USC 112
o   Continuation
§  Patent app for the same invention described in an earlier filed parent app
§  Must be filed while earlier app is still pending
§  No new matter allowed
§  Must include specific reference to earlier filed app
§  Keeps the app alive, 2 office actions you can reply to
§  Filing date helps measure prior art
o   Continuation in Part
§  Includes new subject matter not included in earlier filed parent app
§  “in-Part” synonymous with “new matter”; new claims get later filing date, earlier matter gets first filing date
o   Divisional
§  A second app for an independent and distinct invention, carved out of the parent app during its lifetime
·         Restriction Requirement
o   Have 2 inventions- pick one or file another patent application for the other invention (people try to file 2 for the price of one) (EXAM QUESTION)
–          Patent Infringement
o   35 USC 271(a)
o   Section 112- applicant must “claim” his invention and “particularly point out the part, improvement, or combination, which he claims as his own invention or discovery.”
o   Literal infringement- “…every limitation set forth in a claim must be found in an accused product, exactly” Southwall Technologies, Inc
o   The Process
§  Patent attorney must investigate the facts, analyze the law, and prepare an opinion as to patent infringement
§  Send a cease and desist letter
§  If asked to prepare an opinion, and you conclude that there is infringement, refrain from reducing your opinion to writing
·         Why not writing? Make it really easy to prove intentional infringement and if discovered, you’ve just fried your client- which can include damages and treble damages
·         Treble damages- 4 times the damage amount
§  Average cost of an infringement opinion (without consideration of validity)- $5-10k per patent per alleged product/method
§  If your client infringes, make sure you research enough of the prior art
o   Consider a reexamination proceeding before the USPTO- can invalidate a patent
o   Also consider filing a motion to stay the litigation proceedings pending a decision on the reexamination
o   Reexamine v. reissue***
–          Markman v. Westview Instruments, Inc
o   Patent for dry cleaning system that would track inventory and receipts of clothes throughout the day; used barcodes to locate and say whose clothes they were
o   Westview had similar system- keyboard, data processing, barcodes, but Markman says theirs didn’t track where in the building the clothes are
o   Question: what is an inventory system mean?
§  Dispute over meaning of “inventory”
o   First jury finds for Markman, but judge held for Westview because of interpretation of the word “inventory”
o   Appellate Court affirms; Moves to SCOTUS
§  SCOTUS: answers questions about right of jury v. right of judge to interpret the law; different in patent law because of how technical and how

gs to have a patent reissued with either narrower or broader claims
§  An app for a broadened reissue can only be filed within two years after issuance of the original patent (EXAM QUESTION)
§  In applying for a broadened reissue, need to consider doctrine of intervening rights
§  Change or broaden claims to a bigger area
–          Cost of infringement Opinion/ Threshold Issue of infringement
o   Easily cost $5-10k to prepare this type of letter for a single patent
o   Might consider assessing the situation to determine if there is a “threshold issue” of infringement
–          Claim interpretation
o   It is the role of the judge to interpret the claims- explain to the jury what the claims mean as a matter of law, but it is the role of the jury to determine if the claims are infringed as a matter of fact (Markman v. Westview Instruments)
o   The court will consider:
§  The plain meaning of the words of the claim
§  The meaning of the words in view of the specification, drawings and file wrapper
§  Extrinsic evidence – dictionary, affidavits from experts, printed publications, etc.
o   The meaning of the words can be very important to define parts of a patent that are not dictionary correct
o   Equivalence is a determination of fact
–          Prosecution History Estopple     
o   Patentee cannot regain in litigation what he gave up prior
–          Festo Corp. v. Shoketsu
o   Doctrine of Equivalents and Prosecution History Estopple
o   Not an absolute bar if you amend during prosecution
–          Johnson & Johnston
o   Is a patentee able to apply DOE to cover unclaimed subject matter disclosed in the specification? – NO
–          Morton Salt
o   Patent misuse case
o   USSC heard the case eventually
§  Whether a court of equity will lend its aid to protect the patent monopoly when respondent is using it as the effective means of restraining competition with its sale of unpatented articles.
§  About direct infringement
§  Right to EXCLUDE others (EXAM QUESTION)
§  Cant tie license to a patent as a requirement for the person to purchase something unrelated to the patent.