Patent Litigation Outline
I. Introduction/Bringing suit
A. Notice
§ 287 – Patentees may give notice that a device is patented by marking it. In the event of failure to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.
Elements of notice – Recipient must be informed of
i. The identity of the patent
ii. The activity that is believed to be an infringement and
iii. A proposal to abate the infringement (by license or otherwise)
Lans v. DEC: Lans was the sole inventor of a data display system for color graphics display. For tax purposes, he assigned the patent to his company Uniboard. Forgetting about the assignment, he brought suit in his individual capacity against several defendants who allegedly infringed the patent. The court dismissed the suit, holding that Lans did not have standing and refused to amend his complaint because there was no standing to allow the amendment. Lans brought suit under Uniboard but by that time the patent had expired. Actual notice under § 287(a) must be an affirmative act on the part of the patentee which informs the defendant of infringement (and not someone closely associated with the patentee).
B. Bringing suit
Fed.R.Civ.Pro. 8(a) – Notice pleading
A short and plain statement of the grounds upon which the court’s jurisdiction depends
A short and plain statement showing that the pleader is entitled to relief, and
A demand for judgment for the relief the pleader seeks
No obligation to identify specific claims of the patent
Judin v. United States: Judin owns patent pertaining to method of micro-optical imaging. After taking very limited investigative steps, Judin brought suit against the government for infringement. HP filed for sanctions because of the limited investigation Judin undertook (did not even obtain an infringing device to determine whether there was actual infringement). Rule 11 requires that the plaintiff conduct an investigation such that an infringement action is well grounded in fact.
Antonious v. Spalding & Evenflo Cos.: Antonious is the owner of a patent directed to golf club heads. Antonious obtained a Spalding golf head, cut it open, and determined that Spalding infringed upon his invention and brought suit but during the filing of suit were vague about which claims had been infringed. After the suit was dismissed, Spalding sought sanctions. Sanctions are improper when one party’s case rests upon an incorrect (but unfrivolous) claim construction; sanctions may be proper where there is insufficient investigation prior to filing suit.
C. Declaratory judgment
Declaratory Judgment Act (28 U.S.C.A. § 2201) – In a case of actual controversy within its jurisdiction … any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration, whether or not further relief is or could be sought.
Two-pronged test to determine whether a declaratory judgment plaintiff has shown the existence of a sufficiently real and immediate controversy in view of the totality of the circumstances:
The DJ plaintiff must show that the defendant’s conduct has created a reasonable apprehension in the plaintiff that the defendant will sue if the plaintiff continues with the allegedly infringing activity
i. History of litigation between the parties and threatening letters to the DJ plaintiff
ii. When license negotiations have been entered but the matter is turned over to litigation counsel for action
iii. Letters of intent to enforce, coupled with prior actual enforcement
The DJ plaintiff’s activity must place it at risk of infringement liability
II. Claim construction
A. Claim anatomy
§ 112, ¶ 2 – 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.
Claim anatomy
Preamble – recites a context or purpose, or overall theme or structure and may or may not limit the claims
i. Statement of intended use does not let it escape from prior art
ii. But if the preamble cites structures it will be limited accordingly
Transition – determines whether the claim is open to other elements or not
i. “Comprising of” – open transition; open to other elements
ii. “Consisting of” – closed transition; closed to other elements
iii. “Consisting essentially of” – hybrid transition; open to other elements so long as the other elements don’t materially change the composition cited
Body – recites the elements of the invention, as well as their interaction with each other either structurally or functionally
i. Independent claims – claims that stand on their own
ii. Dependent claims – refer to independent claims and further limit the claim(s) it is dependent upon
B. Claim construction
Who decides?
Markman v. Westview Instruments: The construction of a patent, including terms of art within its claim, is exclusively within the province of the court.
Cybor Corp. v. FAS Techs, Inc.: claim construction is subject to de novo review by the Court of Appeals.
Materials to consider
Intrinsic evidence:
i. Claims
1. Primacy of the claims in claim construction and the heavy presumption of ordinary meaning
a. Because the claims define the scope of the right to exclude, the claim construction inquiry, therefore, begins and ends in all cases with the actual words of the claims.
b. Absent a special and particular definition created by the patent applicant, terms in a claim are to be given their ordinary and accustomed meaning.
2. Overcoming the presumption of ordinary meaning (Johnson)
a. Where th
does not require that each claim be construed as limited to structures that are capable of achieving all those objectives.
Anticipation requires that a single prior art reference disclose each and every limitation of the claimed invention.
Phillips v. AWH Corp.: construed baffle to mean structures at acute or obtuse angles because of intrinsic evidence.
This was the only embodiment described in the specification
This construction was necessary to realize the invention’s purpose of providing panels that are projectile resistant
Baffles directed at 90 degrees are disclosed in the prior art.
E. Appendix
Athletic Alternatives, Inc. v. Prince Manufacturing, Inc.: alleged infringer’s sports racket with splayed strings that had two offset distances did not infringe patentee’s racket in which offset distance “varies between” minimum and maximum distances, under doctrine of equivalents, as patent claim specifically excluded racket with splay that had two offset distances, and encompassed only racket with splay involving three or more offset distances.
Northern Telecom Ltd. v. Samsung Electronics Co., Ltd.:
Term “aluminum and aluminum oxide,” in patent claiming process for gaseous etching of aluminum and aluminum oxide, meant pure aluminum and its native oxide layer, and was not limited to aluminum arranged in a layer, as patent established no minimum quantity of aluminum that had to be etched, written description’s references to layers of aluminum did not impose layer limitation upon disputed claim, and this construction of patent did not render “aluminum oxide” limitation superfluous.
Term “plasma etching,” in patent claiming process for gaseous etching of aluminum and aluminum oxide, did not require exclusion of any ion bombardment etching; although patent specification, prosecution history, and extrinsic evidence referred to differences between plasma etching and ion bombardment, those sources did not specifically exclude ion bombardment.
III. Infringement
A. Direct infringement
Literal infringement
§ 271(a) – Infringement of patent. Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention during the term of the patent therefore, infringes the patent.
Framework of a patent infringement case
i. Claim construction – determining the scope of the claims
