Patent Law Spring 2008

1. Patent LawSpring 2008 Class 1: 1.14.08 Professor Merges

2. Logistics • Office hours: Mondays, 1:15 – 2:30, or by appt. • 438 North Addition • rmerges@law.berkeley.edu – x 3-6199

3. Logistics II • Course mailing list • Posting selections from PowerPoint slides • Website: http://www.law.berkeley.edu/institutes/bclt/students/2008_patent_law.htm

4. Cases to watch – Supreme Court • (1) Quanta Computer, Inc. v. LG Electronics, Inc., No. 06-937 • Supreme Court oral argument 1/16/08 • Patent “exhaustion” and 1st sale doctrine

5. (2) Section 101 cases at the Federal Circuit • In re Bilski (SN 08/833,892); • In re Ferguson (SN 09/387,823)

6. 2 Main Topics Today • Introduction patent system • Claims, patent document: how to read (and write) a patent

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

8. 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.”

9. AMESv.HOWARD1 F.Cas. 755 (CCD Mass. 1833) “The constitution of the United States, in giving authority to congress to grant such patents for a limited period, 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. . . .; and when the nature and extent of that claim are apparent, not to fritter away his rights upon formal or subtle objections of a purely technical character.”

10. Historical development of US patent law WHO CARES WHAT THOMAS JEFFERSON THOUGHT ABOUT PATENTS? REEVALUATING THE PATENT "PRIVILEGE" IN HISTORICAL CONTEXT, 92 Cornell L. Rev. 953 (2007) Adam Mossoff

11. In canvassing primary historical sources, … this Article explains how patent rights were defined and enforced using the social contract doctrine and the labor theory of property of natural rights philosophy. In the antebellum years, patents were civil rights securing important property rights--what natural-rights-influenced politicians and jurists called "privileges."

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

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

14. 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

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

16. 1. A cupholder comprising a band of insulating material.

18. 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.: 150682Filed: November 9, 1993

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

21. United States Court of Appeals for the Federal Circuit 04-1097 INNOVA/PURE WATER, INC., Plaintiff-Appellant, v. SAFARI WATER FILTRATION SYSTEMS, INC. (doing business as Safari Outdoor Products), Defendant-Appellee.

23. Safari's accused product is a water bottle with a tube of filtering material, a bottle cap, and a valve. In operation, the tube of filtering material is suspended in the mouth of the bottle by means of an annular flange that rests on the mouth of the bottle. The tube of filtering material is mechanically sealed in position when the bottle cap is screwed over the mouth of the bottle, thereby contacting the annular flange and fixing the tube of filtering material in position to filter water before it exits the bottle.

24. In part, the independent claims at issue in the '759 patent state: 1. A filter assembly for use with a bottle having a circular cross-section neck or open end to simultaneously cap the neck or open end and filter liquid poured out of the bottle through the neck or open end, comprising: a tube of filtering material . . . a cap . . . said cap having first and second substantially opposite surfaces . . . a manual valve operatively associated with said cap, in fluid communication with said tube of filtering material and manually movable between a position defining means for allowing liquid flow through said tube and a position defining means not allowing liquid flow through said tube; and said tube operatively connected to said cap second surface at said tube second open end . . . .

25. The district court construed the claim term "operatively connected" to require that the tube of filtering material be affixed to the cap, i.e., "not merely adjoining or abutting, but affixing the tube to the cap by some tenacious means of physical engagement that results in a unitary structure."

26. Concluding that the annular flange arrangement of Safari's accused product is such that the filter tube is "never affixed to the cap by some tenacious means of physical engagement as required by claims 1 and 15," the district court denied Innova's motion for summary judgment and granted Safari's motion for summary judgment of noninfringement.

27. The district court erred. The asserted claims do not require that the filter tube and cap be affixed to one another in a manner that results in the two components forming a unitary structure.

28. [T]he district court was correct to look to the ordinary meaning of the terms "operatively" and "connected" and we discern no error in the district court's initial understanding that "the ordinary and customary meaning of 'operatively connected' requires the . . . linking together of the tube and the cap to produce the intended or proper effect."

29. But the district court erred when it proceeded beyond this plain meaning based on the "[e]xamples of means for connecting the tube to the cap disclosed in the '759 patent," all of which reflect a "physical engagement [between the tube and the cap] that results in a unitary structure."

30. International Harmonization • 1880s • 1990s • Future – consolidation? Worksharing among Big 3 patent offices?