1. Intellectual Property Boston College Law School February 23, 2009 Patent – Infringement

2. 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.”

3. Patent No. 5,205,473

4. “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

5. Phillips v. AWH We claim: –1. Building modules … comprising in combination, an outer shell …, sealant means … and further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel wall shells

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

7. 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

8. 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 …”

9. 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

10. Patent No. 5,205,473

11. “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

12. Patent No. 5,425,497

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

14. Warner Jenkinson pH 9.0 8.0 7.0 6.0 5.0 Booth Hilton Original Hilton Amended Warner ?

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

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

17. Patent No. 5,205,473

18. “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

19. Patent No. 5,425,497

20. Administrative Assignment for next class –Finish IV –In IV.C.3, skip: Subject Matter Disclosed But Not Claimed Johnson & Johnson