Patent Law Fall 2012 Class 1: Professor Merges

Logistics Office hours: Mondays, 2:00 – 3:15, or by appt. 438 North Addition –

Logistics II Course mailing list Posting selections from PowerPoint slides Website: bclt/students/courses_html

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Logistics III bSpace course page –Syllabus – archive –Seating Chart Note the schedule

Logistics

Logistics IV AM Commute train_status.php Will send group if train is very late

Developments to watch AMP v. Myriad, gene patent case, may go back to Supreme Court; 1 st to file priority, reexam reform, other detailed provisions of AIA take effect March 16, 2013

Where to follow cases, developments Patently-O Blog BNA Patent Trademark Copyright Journal Daily US Patent Quarterly (BNA)

2 Main Topics Today Introduction patent system Claims, patent document: how to read (and write) a patent

Venetian Patents

Patents in Britain Association of patents with corrupt crown privileges End of these abusive practices: the Statute of Monopolies, 1623

Opposing principles in US Patent Law Technology as a force for good in a wild, untamed wilderness where labor is scarce Patents as the remnants of royal privilege; vestige of discredited monarchy and vested power

Thomas Jefferson v. Alexander Hamilton

If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it. Its peculiar character, too, is that no one possesses the less, because every other possesses the whole of it.

He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine receives light without darkening me. That ideas should freely spread from one to another … for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density at any point, and like the air... incapable of confinement or exclusive appropriation. Invention, then, cannot be a subject of property.

Letter from Thomas Jefferson to Isaac MacPherson, Aug. 13, 1813, reprinted in The Portable Thomas Jefferson 531 (Merrill D. Peterson ed. Penguin Books 1977)

“Jeffersonian Moments” in US Patent Law Early federal period ( ); Jacksonian era (1830s); Progressive era ( ); New Deal period ( ); 1960s and 1970s

William O. Douglas

Alexander Hamilton

Technology and the primeval forest “Dark forests from the view recede, and herds and flocks in safety feed, and plenty crown a cheerful home where prowling wolves were wont to roam.” -- Sturbridge, Massachusetts Centennial, July 4, 1838

Hamiltonian moments in US Patent Law Federalist period ( ); Mid-nineteenth century ( ); 1920s; 1950s; (?)

Justice Joseph Story

“The constitution of the United States, in giving authority to congress to grant … patents …, declares the object to be to promote the progress of science and useful arts, an object as truly national, and meritorious, and well founded in public policy, as any which can possibly be within the scope of national protection. Hence it has always been the course of the American courts... to construe these patents fairly and liberally, and not to subject them to any over-nice and critical refinements.... AMES v. HOWARD, 1 F.Cas. 755 (CCD Mass. 1833)

R. Kent Newmyer, Supreme Court Justice Joseph Story: Statesman of the Old Republic (UNC Press 1986) “In these [patent] cases [Story] moved away from undue reliance on English law in the direction of an American patent law that would favor inventors and, following the spirit of the Constitution, serve national interest by promoting technological progress.... Story’s authority... was of immense importance in giving legitimacy to the new position. [H]e was identified by contemporaries as the pioneer in the liberalization of American patent law.”

Patent Document: Main Features CLAIMS! –Very important now, Sup Ct, Federal Circuit jurisprudence Specification –Key: relationship to claims –Timing issues

Cupholder – claim 1

Dependent Claims

Claim Scope 101 What is the goal? –Maximize “SHELF SPACE” you own How do you get there? –By drafting broadest claim(s) possible

More space, more $$!

P. 46: “A cupholder comprising a strip of insulating material, said strip having two ends capable of interlocking to form a band for receiving a cup.”

The “Noon” Patent – p. 44

P. 36: “A cup holder comprising a band of insulating material.”

THIS PRODUCT DOES NOT INFRINGE NARROW CLAIM

P. 36: “A cup holder comprising a band of insulating material.”

Claim Breadth Short, broad claim Band with interlock- ing ends “Band of insulating material” Band with OUT interlock- ing ends

P. 46: “A cupholder comprising a strip of insulating material, said strip having two ends capable of interlocking to form a band for receiving a cup.”

M ore words usually equals narrower claim, less “shelf space” Narrower, longer claim Band without interlock -ing ends Insulating Band, “having 2 ends capable of interlocking”

Where do claims come from?

Physical Object/S pecies Conceptual “set”; genus

3) “All red shirts” Broadest Claim (Claim 1): All Clothing Claim 2): All Shirts

Cupholder – claim 1

Dependent Claims

Dealing with Prior Art Multiple claims –More variations in scope, more chances to own the key piece of shelf space –More chances that at least one claim will end up valid and valuable Disclosure, searches, prosecution –A complex calculus governs searching for and including prior art –Willfull infringement/inequitable conduct

“picture claim” Broadest Claim (Claim 1)

Special case: dependent claim “the ____ of claim 1, wherein the _____ [element] comprises ______.” Dependent claims define subsets of the claims form which they depend

1. A cupholder comprising a band of insulating material.

Claim 1 ‘473 Coffin Sr. – tubular preformed

Claim 1

Noon prior art holder Claim 1

‘473 Coffin Sr. – tubular preformed Noon prior art holder Claim 1

“Less is More” (Enforceable) Narrower, longer claim Noon prior art holder Corrugated paper strip w/ “slotted” closure ‘473 Coffin Sr. – tubular preformed

United States Patent 5,425,497 Sorensen June 20, 1995 Cup holder Abstract A cup holder is disclosed in the form of a sheet with distal ends. A web is formed in one of the ends, and a corresponding slot is formed in the other end such that the ends interlock. Thus the cup holder is assembled by rolling the sheet and interlocking the ends. The sheet can be an elongate band of pressed material, preferably pressed paper pulp, and is preferably formed with multiple nubbins and depressions. In one embodiment, the sheet has a top and bottom that are arcuate and concentric, and matching webs and cuts are formed in each end of the sheet, with the cuts being perpendicular to the top of the sheet. Inventors: Sorensen; Jay (3616 NE. Alberta Ct., Portland, OR 97211) Appl. No.: Filed: November 9, 1993

Narrowing Amendment

“prior Art Chart” P. 45 Multiple features, compared to claim

Patent System Overview Administrative Agency: PTO Reviewing courts –District courts –Federal Circuit (after 1982) –US Supreme Court (especially since 1995)

Patent System PTO – Court relationship unusual PTO predates most administrative agencies APA applied to PTO piecemeal and incompletely