Intellectual Property Boston College Law School March 7, 2008 Patent – Infringement

Infringement 35 U.S.C. § 271 –“(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”

Sources of Interpretation Claim language Patent specification Prosecution history Extrinsic evidence –Expert testimony –Dictionaries –Treatises

Canons of Construction Relationship of claims to specification –Can refer to specification for express definition –Can refer to specification where ambiguity Claim differentiation –Interpret so as to avoid redundant claims Presumptions about breadth –Interpret to preserve validity –Where two equally valid, adopt narrower one

Larami v. Amron SuperSoaker 200‘129 Patent Claim 1: “[a] toy comprising an elongated housing [case] having a chamber therein for a liquid [tank], a pump including a piston having an exposed rod [piston rod] … facilitating manual operation for building up an appreciable amount of pressure in said chamber for ejecting a stream of liquid therefrom …”

Doctrine of Equivalents Tests –Substantially same function, way, result –Insubstantial differences Evidence –Circumstances, purpose, prior art –Would PHOSITA have viewed interchangeable? Details –All-elements rule –Measured at time of infringement

Patent No. 5,205,473

“What is claimed is: –1. A recyclable, insulating beverage container holder, comprising: a corrugated tubular member comprising –cellulosic material and at least a first opening therein for receiving and retaining a beverage container, said corrugated tubular member comprising fluting means for containing insulating air; said fluting means comprising fluting adhesively attached to a liner with a recylable adhesive

Patent No. 5,425,497

Doctrine of Equivalents Limitations –Claim on prior art –Prosecution history estoppel –Disclosed but not claimed

Warner Jenkinson pH Booth Hilton Original Hilton Amended Warner ?

Festo Two issues –What kinds of amendments trigger estoppel? –Does estoppel apply to all equivalents based on the amendment?

Doctrine of Equivalents Claims Prior Art Prosecution History Estoppel Equivalents for Pioneer Invention Equivalents for Minor Invention

Patent No. 5,205,473

“What is claimed is: –1. A recyclable, insulating beverage container holder, comprising: a corrugated tubular member comprising –cellulosic material and at least a first opening therein for receiving and retaining a beverage container, said corrugated tubular member comprising fluting means for containing insulating air; said fluting means comprising fluting adhesively attached to a liner with a recylable adhesive

Patent No. 5,425,497

Problem 3-11 “1. A pocket toothbrush having an exterior structure resembling a traditional fountain pen case comprising –a. a removable cylindrical end cap cover, –b. a main cylindrical body shaft over at least one end of which said end cap cover fits …, –c. said cylindrical body shaft having one end which contains toothbrush bristles …, –d. said cylindrical body shaft including an interior passage extending into said bristle end and having at least one termination opening in the area at the base of said bristles, –e. a movable plunger extending into said cylindrical body shaft in said main cylindrical body shaft, –f. said body shaft including an interior space for the accommodation of a charge of toothpaste to be fed to said bristles by operation of said movable plunger …”

Administrative Assignment for next class –Read through IV.C.6 – Foreign Activity