patent law overview - lauson & associates - law...
TRANSCRIPT
PATENT LAW OVERVIEW
“The good patent gives the world something it did not truly have before,
whereas the bad patent has the effect of trying to take away from the world
something it effectively already had.” Giles Sutherland Rich, Federal Circuit Judge
Presented by: Bob Lauson, Southwestern Class of 1994
Rafael Orozco, Southwestern Class of 2013 1
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Authorized by the U.S. Constitution: ◦ The Congress shall have power ... To promote the
progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries
Encourage innovation Incentive for disclosure of inventions Only a right to exclude for a limited time Public notice of monopoly scope
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Inventor of Abdominal Exercise Devices as we know them
Personal Trainer, owner of health and fitness center in small shopping center in New Jersey
Problem was client had suffered a neck injury in a car crash, and had difficultly doing her sit-ups
Solution is device to isolate her abdominal muscles while supporting her neck
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Novel (unique) and nonobvious Scope of prior art, differences between prior
art and claims, level of ordinary skill in the art, whether Invention is within ordinary skill
Secondary considerations: commercial success, fulfilled a long-felt need, others tried and failed, others copying or taking licenses, counterintuitive, etc.
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Conception, reduction to practice Prototypes
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Novelty searching, appropriate scope Preparing application, types Prosecution, in-person Examiner interviews Continuations, Reissue (broadening for only
two years) Reexamination/post grant review Appeals go to Federal Circuit
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Background Detailed description, including drawings Claims, defining the boundaries of the
invention Example: Brown ‘520 Patent
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Literal Infringement – all the claim limitations found in the accused product
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Question of Law Typically a Markman Hearing is held Extrinsic Evidence, such as expert testimony Documents other than the patent and file
wrapper may be inadmissible Claim construction begins with dictionary,
encyclopedia, and treatise definitions. Limitations should be given their “ordinary
meaning” as understood by a skilled artisan, except if the inventor acted as his/her own lexicographer.
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Claims should be construed as of the time of the invention.
Limitations in the specification may not be read into the claims.
Preamble terms are not claim limitations. Claims should be construed to cover preferred
embodiments. Claims may not be construed to read an express
limitation out of the claims. Claims should be construed to uphold their validity. Claim differentiation applies to presume a difference
in meaning and scope when different words or phrases are used in separate claims.
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1. An abdominal exercise frame comprising a pair of arcuate rocker portions for receiving a person therebetween in a supine position, each rocker portion being disposed on a circular arc of a radius of 6 3/4 inches; an upstanding portion connected to and between said rocker portions, said upstanding portion defining a space to receive a head of a person disposed between said rockers and providing a surface to be engaged by one of the hands or arms of a person in said supine position; and a pair of arm rest portions, each arm rest portion extending from a respective rocker portion at an end opposite said upstanding portion.
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Insubstantial Differences For Mechanical Inventions - Same Function,
Same Way, Same Result? Prosecution History Estoppel – changes to
the claims or arguments in support of patentability may prevent later inconsistent positions
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Cover Ornamental Appearance Claims Are the drawings Quick, inexpensive protection Narrower but easier to prove infringement Multiple applications can be filed protecting
parts, pieces and portions Google home page design patent
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Infringement standard: likelihood-of-confusion
Is the Colonello ‘378 Patent infringed?
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Patent litigation is expensive Patent defense and enforcement insurance Preliminary injunctions, may effectively end
case Summary judgment often granted Defenses in litigation - Invalidity
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Brown received a $200k advance and did a 50-50 deal with a California infomercial company.
But soon there were 27 knock offs, and Brown only had 10% of the market.
Brown sued them all, there were some settlements, but difficult cases remained.
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http://www.abroller.com/press/wall-street-journal.html
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32. An abdominal exercise device for exercising abdominal muscles, said device comprising a skeletal frame for resting on a support surface, said frame including a pair of arcuate portions defining a space for receiving a person therebetween in a supine position and a third portion connected to and between said arcuate portions; and a support means mounted on said third portion for supporting a head and neck of a person supinely disposed between said arcuate portions during rocking of said frame whereby a person disposed supinely between said arcuate portions with the head and neck of the person supported on said support means and with the hands of the person engaging said frame is able to conduct a curling exercise while rocking said frame.
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The patent process and successfully commercializing an invention is a journey with many potential obstacles.
Where is the patent law headed? ◦ 1. Tougher for patentees: first-to-file disfavors sole
inventors; injunctions unavilable for NPEs, treble damages/atty. fees more difficult to get; pending legislation loser pays unless “substantially justified” ◦ 2. More disputes resolved at the PTO instead of the
Courts ◦ 3. Business methods are a controversial area,
e.g. Amazon’s one-click ordering.
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