Patent Infringement II

1. Patent Infringement II Intro to IP – Prof Merges 2.2.09

2. Topics Today • Recap Doctrine of Equivalents; prosecution history estoppel • Briefly review contributory infringement • Foreign infringement

3. Equivalents/Literal Claim Scope Range of Equivalents Literal Claim Scope

4. Doctrinal Sequence • FIRST: What is the literal meaning of the claim language? • THEN: If the accused product falls outside that language, is it an “equivalent” of the claimed invention?

5. What is the test for equivalence? • Is the accused product an “insubstantial alteration” under Warner-Jenkinson and Festo? • Even if so, was this trivial variation on the claim “given up” during patent prosecution; in which case, equivalents are “estopped”

6. Equivalents/Literal Claim Scope Range of Equivalents Literal Claim Scope What is a “baffle”? Is the tank “thereon”?

7. Equivalents/Literal Claim Scope Range of Equivalents Literal Claim Scope Is a single sealing ring equivalent to “a pair” of them?

8. Prosecution History Estoppel • Warner-Jenkinson: presumption that part of claim coverage is surrendered when applicant amends claim • Festo case: 3 Ways to beat the presumption • Post-Festo developments: “disclosed but not claimed”/dedicated to the public

9. “Range of Equivalents” Literal Claim Scope Infringement under DOE ?

10. Warner-Jenkinson • DOE Survives challenge • Presumption in cases of claim amendment: amendment made for reasons related to patentability; prosecution history estoppel applies  SO: Presumption of no DOE, you are limited to your literal claim language

11. Original Claim Scope

12. Original Claim Scope Narrowed Scope, after amend-ment

13. RE Service v. Johnson & Johnston • What was disclosed? • What was claimed?

16. Disclosed • Aluminum and steel plates, for use as “backing” to protect copper sheets in manufacture of circuit boards

17. Claimed • Use of alumunim plates only

18. Held • Subject matter (i.e., embodiments of the inventive concept) disclosed but not claimed is “dedicated to the public” – • Cannot be recaptured through doctrine of equivalents

19. Contributory Infringement • Can you be held liable for patent infringement when you do something less than a complete act of infringement?

20. CR Bard v. Advanced Cardiovascular Systems, Inc. • Claim: “Method for using a catheter in coronary angiolasty” • Who infringes this claim? The surgeon

21. Why does Bard sue ACS? • Sue where the money is • Don’t sue your customers

22. CR Bard

23. How can Bard sue ACS? • Must argue that ACS does something essential to infringement; “aids and abets” the infringement • Two labels for this in patent law, and IP law generally

24. Contributory infringement & inducement • Two labels, conceptually similar acts

25. Indirect infringement: Inducement and contributory infringement 35 USC 271 (b): Whoever actively induces infringement of a patent shall be liable as an infringer.

26. 35 USC 271(c) (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

27. Substantial noninfringing uses? • Claim specifies catheter opening location • Are there noninfringing uses of the defendant’s catheter?

29. MICROSOFT CORP. V. AT & T CORP. Title 35 U.S.C. § 271(f)(1) provides that it is an act of direct patent infringement to “suppl[y]. . . from the United States . . . components of a patented invention . . . In such manner as to actively induce the combination of such components outside of the United States.”

30. The questions presented are: (1) Whether digital software code—an intangible sequence of “1’s” and “0’s”—may be considered a “component[ ] of a patented invention” within the meaning of Section 271(f)(1); and, if so, (2) Whether copies of such a “component[]” made in a foreign country are “supplie[d] . . . from the United States.”

31. The Statute – 35 USC § 271(f) (1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

32. Section 271(f)(2) (2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

33. Schematic: 271(f)(1): [1] Whoever without authority [a] supplies or causes to be supplied [b] in or from the United States [c] all or a substantial portion of the components of a patented invention, [2] where such components are uncombined in whole or in part, [3] in such manner as to actively induce the combination of such components outside of the United States [4] in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

34. [1]Whoever without authority [a] supplies or causes to be supplied [b] in or from the United States [c] any component of a patented invention [i] that is especially made or especially adapted for use in the invention and [ii] not a staple article or commodity of commerce suitable for substantial noninfringing use, [2] where such component is uncombined in whole or in part, [3] knowing that such component is so made or adapted and [4] intending that such will be combined [a] outside of the United States [b] in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

35. History 271(f): Enacted to overturn Supreme Court opinion in Deep South Packing v. Laitram, 406 U.S. 518 (1972) (accused infringer sold and shipped three separate boxes which, when opened and assembled according to provided instructions in less than an hour, resulted in fully operable infringing device under machine combination patent).

36. Deepsouth (1972) “We cannot endorse the view that the ‘substantial manufacture of the constituent parts of [a] machine’ constitutes direct infringement when we have so often held that a combination patent protects only against the operable assembly of the whole and not the manufacture of its parts.” 406 U.S. at 528.

37. The questions presented are: (1) Whether digital software code—an intangible sequence of “1’s” and “0’s”—may be considered a “component[ ] of a patented invention” within the meaning of Section 271(f)(1); and, if so, (2) Whether copies of such a “component[]” made in a foreign country are “supplie[d] . . . from the United States.”

38. 271(f) enacted “to close a loophole in patent law.” The legislative history indicates that the provision's primary purpose is “[to] prevent copiers from avoiding U.S. patents by supplying components of a patented product in this country so that the assembly of the components may be completed abroad.” -- Patent Law Amendments Act of 1984, Pub. L. No. 98-622, 101, 98 Stat. 3383 at 5828

39. AT&T v. Microsoft AT&T owns Atal et al., US Patent Re 32,580 (originally 4,472,832), “Digital Speech Coder,” Jan. 19, 1988. This patent covers speech compression and decompression techniques developed at Bell Labs. AT&T claimed a portion of Microsoft’s Windows product infringed the patent.

40. Procedural History Trial court held that liability could be established under 271(f) for export of “golden master” disks containing Windows. The golden masters were used by Microsoft licensees to install Windows on personal computers manufactured and sold in overseas countries, e.g., Germany and Japan. Microsoft appealed to the Federal Circuit.

41. Federal Circuit Holding: Export of golden master disks was a violation of 271(f). Software on the disks is a “component,” and the sending of the disks overseas was “suppl[y]” of such a component under 271(f).

42. “Component”: “Eolas Techs. Inc. v. Microsoft Corp., 399 F.3d 1325 (Fed. Cir. 2005), issued while the instant appeal was pending, held that ‘software could very well be a “component” of a patented invention for the purposes of § 271(f).’ Id. at 1339.”

43. “Supplied”: “It is inherent in the nature of software that one can supply only a single disk that may be replicated – saving material, shipping, and storage costs – instead of supplying a separate disk for each copy of the software to be sold abroad. All of such resulting copies have essentially been supplied from the United States.” – 414 F.3d at 1370.

44. Supreme Court held that software may constitute a “component” under 271(f)(2), at some point but that sending the “golden master” as in the Microsoft case was NOT “supply” of a software component under the statute. See page 320: when does software become a component? (When embodied on a medium)

45. Policy The Federal Circuit’s holding extended United States patent law to foreign markets Said to put United States software companies at a competitive disadvantage vis-a-vis their foreign competitors in foreign markets. AT&T Should seek independent foreign patents to cover the acts alleged here