Patents, Part 3 Sec. 71, Infringement

1. Patents, Part 3 Sec. 71, Infringement

2. Patent Infringement SECTION 71. Rights Conferred by Patent. - 71.1. A patent shall confer on its owner the following exclusive rights: (a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product;

3. (b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized person or entity from using the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process. 71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, and to conclude licensing contracts for the same. (Sec. 37, R.A. No. 165a)

4. SECTION 75. Extent of Protection and Interpretation of Claims. - 75.1. The extent of protection conferred by the patent shall be determined by the claims, which are to be interpreted in the light of the description and drawings. 75.2. For the purpose of determining the extent of protection conferred by the patent, due account shall be taken of elements which are

5. equivalent to the elements expressed in the claims, so that a claim shall be considered to cover not only all the elements as expressed therein, but also equivalents. (n)

6. What are the CLAIMS for? A patent CLAIM sets the bounds of the technical areas within which the patent owner has the legal right to exclude others from making, using and selling. “It is elementary that the property right bestowed by a patent is measured in the first instance by the claims.” A. B. Dick Co. vs. Burroughs Corp., 713 F.2d 700 218 USPQ 965

7. For purposes of patent infringement, each claim of a patent defines a separate invention. Jones v. Hardy, 727 F.2d 1524, 220 USPQ 1021 • It is only the claims that define the exclusive rights of a patent. “The claims alone delimit the right to exclude; only they may be infringed.” Environmental Instruments Inc. vs. Sutron Corp. 877 F.2d1562

8. Each claim defines a separate right to exclude • One claim may be infringed without another being infringed • Scope of Claims – Claims are generally written in a series of narrowing scope. An INDEPENDENT CLAIM stands on its own, whereas a dependent claim adds further limitations to the claim on which it depends. A MULTIPLE DEPENDENT CLAIM depends on more than one prior claim in the alternative

9. The first step in determining patent infringement is to interpret the claim in question to ascertain its precise scope and meaning before comparing it to the accused device. In the second step, the court determines whether the claims “read on” the accused device; that is, are all the elements of the claim found in the product or process of the person charged with being an infringer.

10. Smith Kline Beckman Corporation vs. The Honorable Court of Appeals and Tryco Pharma Corporation, G.R. No. 126627. August 14, 2003 • Issues: Patent Infringement / Equivalence • Facts: • Smith Kline Beckman Corporation obtained Letters Patent No. 14561 for an invention entitled "Methods and Compositions for Producing Biphasic Parasiticide Activity Using Methyl 5 Propylthio-2-Benzimidazole Carbamate." • 2. Claims 2 covers a new compound named methyl 5 propylthio-2-benzimidazole carbamate and the methods or compositions utilizing the compound as

11. an active ingredient in fighting infections caused by gastrointestinal parasites and lungworms in animals such as swine, sheep, cattle, goats, horses, and even pet animals. 3. Tryco Pharma distributes and sells veterinary products including Impregon, a drug that has Albendazole for its active ingredient and is claimed to be effective against gastro-intestinal roundworms, lungworms, tapeworms and fluke infestation in carabaos, cattle and goats. 4. Claiming that its patent covers Albendazole, SK sued Tryco for patent infringement.

12. 5. Tryco claims SK’s patent does not cover the substance Albendazole for nowhere in it does that word appear; and that even if the patent were to include Albendazole, such substance is unpatentable. • Even if SK’s patent does not mention Albendazole, infringement exists under the doctrine of equivalents. Albendazole, the active ingredient it alleges was • appropriated by private respondent for its drug Impregon, is substantially the same as methyl 5 propylthio-2-benzimidazole carbamate • Held: • 1. The burden of proof to substantiate a charge for patent infringement rests on the plaintiff.

13. 2. The patent does not mention the compound Albendazole. All that the claims disclose are: the covered invention, that is, the compound methyl 5 propylthio-2-benzimidazole carbamate; the compound's being anthelmintic but nontoxic for animals or its ability to destroy parasites without harming the host animals; and the patented methods, compositions or preparations involving the compound to maximize its efficacy against certain kinds of parasites infecting specified animals. 3. When the language of its claims is clear and distinct, the patentee is bound thereby and may not claim anything beyond them.

14. 4. No extrinsic evidence had been adduced to prove that Albendazole inheres in petitioner's patent in spite of its omission therefrom or that the meaning of the claims of the patent embraces the same. 5. The doctrine of equivalents provides that an infringement also takes place when a device appropriates a prior invention by incorporating its innovative concept and, although with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result.

15. 6. While both compounds have the effect of neutralizing parasites in animals, identity of result does not amount to infringement of patent unless Albendazole operates in substantially the same way or by substantially the same means as the patented compound, even though it performs the same function and achieves the same result. • Under function-means-and-result test, the patentee must show that all three components of such equivalency test are met.

16. 8. Apart from the fact that Albendazole is an anthelmintic agent like methyl 5 propylthio-2-benzimidazole carbamate, nothing more is asserted and accordingly substantiated regarding the method or means by which Albendazole weeds out parasites in animals, thus giving no information on whether that method is substantially the same as the manner by which petitioner's compound works.

17. US Jurisprudence “This court has repeatedly stated that direct infringement requires a two-step analysis. The claimed invention must first be defined, a legal question of interpretation. Second, the trier of fact must determine whether the claims, as properly interpreted, cover the accused device or process. The second step involves a question of fact… The burden is on the patent owner to prove infringement by a preponderance of evidence. . Such proof must show that every limitation of the

18. patent claims asserted to be infringed is found in the accused device, either literally or by an equivalent.” Smithkline Diagnostic Inc. vs. Helena Laboratories Corp., 859 F.2d 878, 8 USPQ 2d1468

19. What rights are acquired under a patent?

23. Amazon.com,Inc.v.Barnesandnoble.com Inc.Fed. Cir.02-14-2001 The '411 patent has 26 claims, 4 of which are independent. Independent claims 1 and 11 are method claims directed to placing an order for an item, while independent claim 6 is an apparatus claim directed to a client system for ordering an item, and independent claim 9 is an apparatus claim directed to a server system for generating an order. Amazon asserted claims 1-3, 5-12, 14-17, and 21-24 against BN.

24. For purposes of this appeal we may initially direct our primary focus on the "single action" limitation that is included in each claim. Appropriate because BN's appeal attacks the injunction on the grounds that either [1] its accused method does not infringe the "single action" limitation present in all of the claims, [2] that the "single action" feature of the patent is invalid, or both.

25. 1. A method of placing an order for an item comprising: under control of a client system, displaying information identifying the item; and in response to only a single action being performed, sending a request to order the item along with an identifier of a purchaser of the item to a server system; under control of a single-action ordering component of the server system, receiving the request; retrieving additional information previously stored for the purchaser identified by the identifier in the received request; and generating an order to purchase the requested item for the purchaser identified by

26. the identifier in the received request using the retrieved additional information; and fulfilling the generated order to complete purchase of the item whereby the item is ordered without using a shopping cart ordering model. 2. The method of claim 1 wherein the displaying of information includes displaying information indicating the single action.

27. 6. A client system for ordering an item comprising: an identifier that identifies a customer; a display component for displaying information identifying the item; a single-action ordering component that in response to performance of only a single action, sends a request to a server system to order the identified item, the request including the identifier so that the server system can locate additional information needed to complete the order and so that the server system can fulfill the generated order to complete purchase of the item; and a shopping cart ordering component that in response to performance of an add-to-shopping-cart action, sends a request to the server system to add the item to a shopping cart.

28. District Court: • …the term "single action" as used in the '411 patent appears to refer to one action (such as clicking a mouse button) that a user takes to purchase an item once the following information is displayed to the user: (1) a description of the item; and (2) a description of the single action the user must take to complete a purchase order for that item. • BN's "Express Lane“ system, like the system contemplated by the patent, contains previously entered billing and shipping information for the customer.

29. On BN's initial web page (referred to as the "menu page"), the person can click on an icon on the menu page to get to what is called the "product page." BN's product page displays an image and a description of the selected product, and also presents the person with a description of a single action that can be taken to complete a purchase order for the item.

30. Federal Circuit: As the moving party, Amazon is entitled to a preliminary injunction if it can succeed in showing: (1) a reasonable likelihood of success on the merits; (2) irreparable harm if an injunction is not granted; (3) a balance of hardships tipping in its favor; and (4) the injunction's favorable impact on the public interest.

31. It is well settled that an infringement analysis involves two steps: the claim scope is first determined, and then the properly construed claim is compared with the accused device to determine whether all of the claim limitations are present either literally or by a substantial equivalent.

32. Only when a claim is properly understood can a determination be made whether the claim "reads on" an accused device or method, or whether the prior art anticipates and/or renders obvious the claimed invention. File History: Amazon provided the following comments (not limited to specific claims) to explain proposed amendments to the claims and to "clarify that the claimed single-action ordering technology is different from the shopping cart metaphor":

33. To order an item using single-action ordering technology, the purchaser first locates the item by browsing through a catalog of items, by searching for the item, by selecting a link to the item, or by using any other means for locating the item. Once the item is located, the purchaser need only perform a single action to generate an order for the item and to fulfill that generated order

34. In Amazon's view of the file history, a purchaser has not located the item, for the purpose of counting the number of steps thereafter to generate the order, until the purchaser has made the decision to purchase the item. Only after one moves from BN's menu page to its product page has one "located" the item for purposes of placing the order by a single action. Since it only takes a single action on BN's product page to place the order, Amazon contends that BN likely infringes the '411 patent.

35. We ultimately agree with Amazon and construe all four independent claims (i.e., claims 1, 6, 9, and 11) to call for the single action to be performed immediately after a display of information about an item and without any intervening action, but not necessarily immediately after the first display or every display.

36. In claims 1, 6, and 11, the context of the claim makes it clear that the single action is performed after some information about the item is displayed. When does counting start: “The written description supports a construction that after information is "displayed," single-action ordering is an option available to the user, and the counting falls within the scope of the claim when single-action ordering is actually selected by the user.”

37. “The plain language of the claims and the written description require only that single action ordering be possible after some display of information. Indeed, the written description allows for and suggests the possibility that previous displays of information will have occurred before the display immediately preceding an order.”

38. “When the correct meaning of the single action limitation is read on the accused BN system, it becomes apparent that the limitations of claim 1 are likely met by the accused system. The evidence on the record concerning the operation of BN's "Express Lane" feature is not in dispute. At the time that the '411 patent was issued, BN offered customers two purchasing options. One was called "Shopping Cart," and the other was called "Express Lane."

39. “Express Lane option allowed customers who had registered for the feature to purchase items simply by "clicking" on the "Express Lane" button provided on the "detail page" or "product page" describing and identifying the book or other item to be purchased. The text beneath the Express Lane button invited users to "Buy it now with just 1 click!…Under the claim construction set forth herein, BN likely infringes claim 1.”

40. Invalidity, anticipation by prior art “Validity challenges during preliminary injunction proceedings can be successful, that is, they may raise substantial questions of invalidity, on evidence that would not suffice to support a judgment of invalidity at trial.” “..[I]n our review of the asserted prior art in this case, each of the asserted references clearly teaches key limitations of the claims of the patent in suit. BN argued to the district court that one of ordinary skill in the art could fill in the gaps in the asserted references, given the opportunity to do so at trial.”

41. SECTION 76. Civil Action for Infringement. - 76.1. The making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee constitutes patent infringement. 76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights have been infringed, may bring a civil action before a court of competent jurisdiction, to recover from the infringer such damages sustained thereby, plus attorney's fees and other expenses of litigation, and to secure an injunction for the protection of his rights.

42. 76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the court may award by way of damages a sum equivalent to reasonable royalty. 76.4. The court may, according to the circumstances of the case, award damages in a sum above the amount found as actual damages sustained: Provided, That the award does not exceed three (3) times the amount of such actual damages.

43. 76.5. The court may, in its discretion, order that the infringing goods, materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed, without compensation. 76.6. Anyone who actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced because of a patented process knowing it to be especially adopted for infringing the patented invention and not suitable for substantial non-infringing use shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer. (Sec. 42, R.A. No. 165a)

44. Creser Precision Systems, Inc. vs. Court of Appeals and Floro International Corp., G.R. No. 118708. February 2, 1998 • Issue: Real Party in Interest • Facts: • Floro Co. obtained a Letters Patent No. UM-6938 3 covering an aerial fuze from the IP Office on January 23, 1990. • 2. It learned that Creser was claiming the aforesaid aerial fuze as its own and planning to bid and manufacture the same commercially without license or authority from Floro Co.

45. 3. Instead of complying with Floro Co.’s cease-and-desist demand, filed a complaint for injunction and damages against Floro, claiming it is the first, true and actual inventor of an aerial fuze; Floro’s aerial fuze is identical in every respect to Creser’s fuze; and that the only difference between the two fuzes are miniscule and merely cosmetic in nature. 4. Floro moved to dismiss, arguing Creser has no cause of action to file a complaint for infringement against it since it has no patent for the aerial fuze which it claims to have invented; and that Creser’s available remedy is to file a petition for cancellation. 5. The trial court issued an injunction against Floro.

46. Held: • Creser’s claim that, being the first and true inventor,it can file an action for infringement not as a patentee but as an entity in possession of a right, title or interest in and to the patented invention. • The Patent Law does not bar the first true and actual inventor of the patented invention from suing another who was granted a patent in a suit for declaratory or injunctive relief recognized under American patent laws. • 3. Creser admits it has no patent over its aerial fuze. Therefore, it has no legal basis or cause of action to institute the petition for injunction and damages arising from the alleged infringement by Floro Co.

47. 4. While Creser claims to be the first inventor of the aerial fuze, still it has no right of property over the same upon which it can maintain a suit unless it obtains a patent therefor. 5. The injunctive remedy is available only to the patent holder or his successors-in-interest. Thus, anyone who has no patent over an invention but claims to have a right or interest thereto can not file an action for declaratory judgment or injunctive suit which is not recognized in this jurisdiction. 6. The remedy is a petition for cancellation of the patent.

48. Roberto L. Del Rosario vs. Court of Appeals and Janito Corporation, G.R. No. 115106. March 15, 1996 • Issue: Infringement / Injunction • Facts: • Del Rosario obtained Letters Patent No. UM-5269 dated 2 June 1983 as well as Letters Patent No. UM-6237 dated 14 November 1986 covering an audio equipment and improved audio equipment commonly known as the sing-along system or karaoke. • In 1990, Janito started manufacturing a sing-along system bearing the trademark or miyata karaoke substantially similar if not identical to the sing-along system covered by the patents.

49. The trial court issued an injunction, which the CA set aside. • Janito argued Del Rosario was not entitled to injunction, claiming that he manufactured the miyata karaoke or audio system, and that the karaoke system was a universal product manufactured, advertised and marketed in most countries of the world long before the patents were issued to Del Rosario. • There are only two requisites to be satisfied if an injunction is to issue, namely, the existence of the right to be protected, and that the facts against which the injunction is to be directed are violative of said right.

50. The Patent Law provides for an injunction as a provisional remedy in patent infringement cases. • 7. Janito failed to present before the trial court competent evidence that the utility models covered by the Letters Patents issued to Del Rosario were not new. • In contrast, Del Rosario proved that was Janito was manufacturing a similar sing-along system bearing the trademark miyata which infringed his patented models. • 9. While Janito showed differences in its sytem and Del Rosario’s first model, it disregarded Del Rosario’s