Patent LawFall 2011

Class 1: 8.25.2011

Professor Merges

Logistics

• Office hours: Tuesdays, 1:30 – 2:40, or by appt.

• 438 North Addition

• rmerges@law.berkeley.edu – x 3-6199

Logistics II

• Course mailing list

• Posting selections from PowerPoint slides

• Website: http://www.law.berkeley.edu/institutes/bclt/students/courses_html

www.law.berkeley.edu/institutes/bclt

Logistics III

• bSpace course page– Syllabus– Email archive– Seating Chart

• Note the schedule

Logistics IV

• AM Commute

• www.capitolcorridor.org

• http://www.capitolcorridor.org/home/train_status.php

• Will send group email if train is very late

Developments to watch – legislation

• Patent Reform Bill, will likely this fall; 1st to file priority, reexam reform, other detailed provisions

Where to follow cases, developments

• Patently-O Blog

• BNA Patent Trademark Copyright Journal Daily

• US Patent Quarterly (BNA)

2 Main Topics Today

• Introduction patent system

• Claims, patent document: how to read (and write) a patent

Venetian Patents

Patents in Britain

• Association of patents with corrupt crown privileges

• End of these abusive practices: the Statute of Monopolies, 1623

Opposing principles in US Patent Law

• Technology as a force for good in a wild, untamed wilderness where labor is scarce

• Patents as the remnants of royal privilege; vestige of discredited monarchy and vested power

Thomas Jefferson v. Alexander Hamilton

If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power called an idea, which an individual may exclusively possess as long as he keeps it to himself; but the moment it is divulged, it forces itself into the possession of every one, and the receiver cannot dispossess himself of it. Its peculiar character, too, is that no one possesses the less, because every other possesses the whole of it.

He who receives an idea from me, receives instruction himself without lessening mine; as he who lights his taper at mine receives light without darkening me. That ideas should freely spread from one to another … for the moral and mutual instruction of man, and improvement of his condition, seems to have been peculiarly and benevolently designed by nature, when she made them, like fire, expansible over all space, without lessening their density at any point, and like the air . . . incapable of confinement or exclusive appropriation. Invention, then, cannot be a subject of property.

Letter from Thomas Jefferson to Isaac MacPherson, Aug. 13, 1813, reprinted in The Portable Thomas Jefferson 531 (Merrill D. Peterson ed. Penguin Books 1977)

“Jeffersonian Moments” in US Patent Law

• Early federal period (1790-1800); Jacksonian era (1830s); Progressive era (1895-1915); New Deal period (1932-1945); 1960s and 1970s

William O. Douglas

Alexander Hamilton

Technology and the primeval forest

“Dark forests from the view recede, and herds and flocks in safety feed, and plenty crown a cheerful home where prowling wolves were wont to roam.”

-- Sturbridge, Massachusetts Centennial, July 4, 1838

Hamiltonian moments in US Patent Law

• Federalist period (1800-1830); Mid-nineteenth century (1865-1890); 1920s; 1950s; 1980-2005 (+?)

Justice Joseph Story

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.”

“The constitution of the United States, in giving authority to congress to grant … patents …, 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. . . . AMES v. HOWARD, 1 F.Cas. 755 (CCD Mass. 1833)

Patent Document: Main Features

• CLAIMS!

– Very important now, Sup Ct, Federal Circuit jurisprudence

• Specification– Key: relationship to claims– Timing issues

Cupholder – claim 1

Dependent Claims

Claim Scope 101

• What is the goal?

–Maximize “SHELF SPACE” you own

• How do you get there?

– By drafting broadest claim(s) possible

More space, more $$!

P. 36: “A cup holder comprising a band of insulating material.”

Claim Breadth

Short, broad claim

Band with interlock-ing ends

“Band of insulating material” Band

withOUT interlock-ing ends

NO INFRINGEMENT OF NARROW CLAIM

The “Noon” Patent – p. 44

P. 46: “A cupholder comprising a strip of insulating material, said strip having two ends capable of interlocking to form a band for receiving a cup.”

P. 36: “A cup holder comprising a band of insulating material.”

“Less is More”

Narrower, longer claim

Band without interlock-ing ends

Insulating Band, interlocking ends

3) “All red shirts”

Broadest Claim (Claim 1): All Clothing

Claim 2): All Shirts

Cupholder – claim 1

Dependent Claims

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

“picture claim”

Broadest Claim (Claim 1)

Special case: dependent claim

“the ____ of claim 1, wherein the _____ [element] comprises ______.”

Dependent claims define subsets of the claims form which they depend

1. A cupholder comprising a band of insulating material.

Claim 1

‘473 Coffin Sr. – tubular preformed

Claim 1

Noon prior art holder

Claim 1

‘473 Coffin Sr. – tubular preformed

Noon prior art holder

Claim 1

“Less is More” (Enforceable)

Narrower, longer claim

Noon prior art holder

Corrugated paper strip w/ “slotted” closure

‘473 Coffin Sr. – tubular preformed

• 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

Narrowing Amendment

“prior Art Chart”

• P. 45

• Multiple features, compared to claim

Patent System Overview

• Administrative Agency: PTO

• Reviewing courts– District courts– Federal Circuit (after 1982)– US Supreme Court (especially since 1995)

Patent System

• PTO – Court relationship unusual

• PTO predates most administrative agencies

• APA applied to PTO piecemeal and incompletely