cstr

Patent Law Outline for the Final Exam (draft02)

1. Claim Construction (Question of Law)
1.1 Target an accused product and start to construe a claim to cover such product.
1.2 Methodology
1.2.1 Evidence 1: Claim:
- A claim is given its ordinary and customary meaning. But an inventor is a lexicographer who can define the meaning of a term (in the written description).
- The doctrine of claim differentiation helps identify the scope of a claim b/c the scope one claim is different from that of another claim.
- The preamble of a claim may read into a claim if the inventor means to do so or if it does not merely describe the purpose of the claimed invention.
1.2.2 Evidence 2: Written Description & Drawings:
- The specification helps understand the definition of a term in a claim or the consistency of its ordinary meaning.
- The specification may have some disclaimers where the inventor intends to mean that is not part of the claimed invention. (Look for any disclaimer language.)
- For a “means-plus-function” claim element,
(1) if “means” is used in a claim element,
1.2.3 Evidence 3: Prosecution History Record:
- The prosecution history provides the information of any express presentations mad e by the applicant about the scope of the claims.
1.2.4 Extrinsic Evidences: After the above three were used, if the claim is still ambiguous, then weigh others: Expert Testimony, Inventor Testimony, Dictionary, and Learned Treatises.
2. Validity
2.1 101, Subject Matter:
2.2 112, Disclosure Requirements:
2.2.1 112, 1
- Defense 1, Enablement (Question of Law): (1) A patent specification should provide sufficient information to enable a person skilled in the relevant art to make and use the claimed invention without “undue experimentation.” (2) The omission of minor details does not cause a specification to fail to meet the enablement requirement. (3) Application sufficiency must be judged as of its filing date. Later publications can prove the state of art which existed on the filing date.
- Defense 2, Best Mode (Question of Fact): Two-part test: (1) first determine whether the inventor subjectively contemplated a best mode of practicing the claim invention on filing date; (2) secondly determine whether, objectively, the specification adequately disclose that best mode such that the person skilled in the art could practice it.
- Defense 3: Written Description:
2.2.2 112, 2 (Question of Fact)
- Defense 4: Indefiniteness:
2.2.3
2.3 102 (Question of Fact)
2.3.1 Type 1: Witness Testimony
- Defense 1, 102(f), Derivation:
2.3.2 Type 2: Document
- Defense 1, :
- Defense 2, :
2.3.3 Other Issue: Earliest Effective Filing Date.
2.4 103 (Question of Law)

2.5

3. Infringement Analysis
3.1 Literal Infringement (Question of Fact)
3.2 DOE Infringement (Question of Fact)
3.2.1 Basic: insubstantial difference; objective standard for equivalency.
3.2.2 Function/Way/Result: Test whether the dispute element performs substantially the same function in substantially the same way to obtain substantially the same result.
3.2.3 Time: DOE is measured at the “time of infringement.”
3.2.4 Evidence: expert testimony, documents (e.g., texts or treatises), and disclosures of the prior art.
3.2.5 Other equitable factors: (1) whether the accused infringer knew of and copied the patented invention, or (2) developed the accused product or process independently.
3.2.6 Means-plus-function term: way and result.
3.2.7 Defense 1: All-Limitation Rule: limitation-by-limitation comparison.
3.2.8 Defense 2: Public Dedication Rule: an equivalent is something expressly disclosed in the specification but not literally claimed in the patent, and such equivalent is out of the scope of the equivalency. Evidence: written description.
3.2.9 Defense 3: Prosecution History Estoppel (PHE) or File Wrapper Estoppel (Question of Law)
- Presumption: (During Prosecution, Correction, Reexamination)
- Exception 1: Unforeseeable elements at the time of amendment. Evidence.
- Exception 2: Amendments bear no more than a tangential relation
- Exception 3: Other reasons
3.2.10 Defense 4: Prior Art Equivalent
3.3 Other Infringement Types
3.3.1 Inductive infringement (35 U.S.C. § 271(b)): (1) intent; (2) direct infringement.
3.3.2 Contributory infringement (35 U.S.C. § 271(c)): aknowledge; non-infringing uses.
3.3.3 Foreign Activity (35 U.S.C. § 271(f)): Exportation.
3.3.4 Product Made by A Patented Process (35 U.S.C. § 271(g)):
3.4
4. Other Defenses
4.1 Inequitable Conducts (Question of Law)
4.1.1 Evidence: Prosecution History.
4.1.2 Two Factors:
- (1) Intent;
- (2) Materiality: Information, related to patentability, known to an inventor, an attorney, or an applicant, while the patent application is pending. Evidence: Facts during the Prosecution History.
4.1.3 Results: All claims become unenforceable.
4.2 Prosecution Laches (or Prosecution Estoppel)
5. Remedies