Federal Circuit decisions on how to interpret patent claim language are critically important. Unfortunately, however, recent Federal Circuit decisions do not reflect a unitary approach to patent claim interpretation. On July 21, 2004, the Federal Circuit issued an order granting a petition to rehear en banc the appeal in Phillips v. AWH Corp., 363 F.3d 1207 (Fed. Cir. 2004). The court "determined to hear this case en banc in order to resolve issues concerning the construction of patent claims," and invited the parties as well as amicus curiae to submit briefs on seven very specific questions relating to claim construction methodology and review on appeal. This article analyzes the Phillips en banc appeal focusing on the amicus briefing and responses to the Federal Circuit's seven questions.
- February 25, 2005Robert F. Kramer and Marc J. Pernick
Part one of this series, published last month, reviewed the current state of the law governing the availability of lost profits damages in patent infringement cases. This final installment addresses the calculation of these damages based on diverted sales.
February 25, 2005Michael M. CarlsonIn last month's issue, we discussed the prerequisites for a patentee to recover a royalty for his provisional rights. Provisional rights are intended to give a patent applicant interim protection for the disclosure of his invention from the date on which a patent application is published through the date of patent issuance. In the absence of provisional rights, infringement of the invention as published in the patent application would leave the patentee without redress for infringement while the application is being prosecuted. Without provisional rights, the patentee can stop infringement when a patent issues, but cannot seek compensation for prior infringement of the published patent application.
To address the vulnerabilities of a patent applicant prior to issuance of a patent, Congress enacted the Provisional Rights subsection as part of the American Inventors Protection Act of 1999. Notable among a patent applicant's provisional rights is the right to assess a "reasonable royalty" for use of an invention as claimed in the published application. 35 U.S.C. §154(d) (2000). As the Director of the USPTO commented, "In practice, this would serve as a brake on potential infringers ... from blatantly infringing because they know once the patent is issued, they're liable [for infringing the patent application]." Sabra Chartrand, A New Law Removes Some Secrecy From the Applications, N.Y. Times, Dec. 4, 2000, at C6.
Last month's installment of this article described the prerequisites required to raise a patentee's provisional rights. First, the USPTO must grant a patent from the patent application. Second, the accused infringer must have actual notice of the published patent application. Third, provisional rights are only available if the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application. Last month's installment also described the nuances of each requirement, and also explored unsettled legal questions relating to each. This month's article explores the interplay between the publication requirement and the Provisional Rights Subsection.February 25, 2005Jitendra Malik, Ph.D. and Michael S. ConnorWhen considering a broadening reissue application, patent owners often confront a recurring issue: Can a limitation added or argued during prosecution of an original patent to gain allowance over prior art later be broadened during reissue? Recent developments in case law at the Federal Circuit Court of Appeals and U.S. Patent and Trademark Office ("USPTO") suggest a way to permissibly broaden such limitations through reissue and still avoid recapture. We call it reclaiming the ring.
February 25, 2005Michael Messinger and Lori GordonSome recent estimates suggest that by 2007 brand name pharmaceutical companies will lose more than $80 billion in drug sales because of patent term expirations. Patent term expirations, of course, usher the entry of generic drugs into the marketplace. On average, the market share for branded products decreases by 15% to 30% when a first generic version reaches the market, and as much as 75% to 90% when subsequent generics launch. Such significant losses provide incentive to extend patent life and maximize the period of market exclusivity for a patented drug.
February 25, 2005Teresa J. Welch, Ph.D.Your client International Marketers, Inc. (IMI) owns U.S. and foreign patents for an improved football. IMI wants to license the patent and make direct sales of identical balls around the world, while making its own sales to the U.S. market. However, IMI knows that the price consumers will pay for its football is much higher in the United States than elsewhere. IMI is concerned that footballs sold by it and its licensees to distributors outside the United States might be purchased by third parties and imported back into the United States at a price below what it hopes to charge distributors in the United States.
February 25, 2005Matthew W. Siegal and Angie M. HankinsRecently filed cases in entertainment law, straight from the steps of the Los Angeles Superior Court.
February 24, 2005ALM Staff | Law Journal Newsletters |Attorney-Client Privilege
Personal Jurisdiction Over LawyersFebruary 24, 2005ALM Staff | Law Journal Newsletters |The U.S. District Court for the Northern District of Illinois ruled that a defendant who engaged in the unauthorized downloading of sound recordings from the Internet didn't have a viable fair-use defense.
February 24, 2005ALM Staff | Law Journal Newsletters |