Prosecution History Disclaimer: Beware of What You Clearly and Unambiguously Say
Patent prosecutors typically are cautious when making arguments that distinguish their client's invention from the prior art. This caution was traditionally based on the concern that later, when the client enforced its patent rights against a potential infringer, these arguments may provide the basis for restricting the range of equivalents available to the patentee under the doctrine of prosecution history estoppel. Prosecution history estoppel normally limits the range of equivalent elements that are available to satisfy a claim element under a doctrine of equivalents analysis (<i>ie</i>, when there is no literal infringement of that claim element). Recent decisions by the Federal Circuit not only reaffirm the significance of statements made during prosecution; they also extend their impact to a literal infringement analysis. A patentee who during prosecution "clearly and unequivocally" disavows the prior art (or even defines the invention) may affect the literal scope of the claims. This doctrine is now regularly referred to as prosecution history disclaimer.
The Dedication Rule's Effect on Business Strategy
While the Federal Circuit's direct assault on the applicability and scope of the doctrine of equivalents may have been set back by the Supreme Court in <i>Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.,</i> 535 U.S. 722 (2002), the so-called Dedication Rule continues to limit the scope of equivalents under some circumstances. This controversial rule deems any subject matter that is disclosed in the specification, but falls outside the literal scope of the claims, to be dedicated to the public. This judicially created doctrine effectively denies patent protection, even under the doctrine of equivalents, to the subject matter that is disclosed, but left unclaimed, in the patent. This rule has been criticized both from legal and practical perspectives, and continued adherence to this rule could significantly impact the business policies and prosecution decisions of many patentees.
The Court's Proper Role in Construing the Claim of a Design Patent: Should a Picture Be Worth a Thousand Words?
The Federal Circuit has held that, as with utility patents, design patents must be construed by the court. <i>See Elmer v. ICC Fabricating, Inc.</i>, 67 F.3d 1571, 1577 (Fed. Cir. 1995). This apparently simple mandate has proven difficult in practice. The single claim in a design patent typically consists only of a series of drawings depicting the patented design. The basic premise of <i>Markman</i> ' that a judge's experience with the interpretation of documents will likely allow him or her to produce a more accurate and consistent claim interpretation ' does not intuitively extend to design patents, nor is it apparent that a judge's interpretation of the drawings will be any more proper and uniform than a jury's interpretation.
In The Marketplace
Highlights of the latest equipment leasing news from around the country.
Is It a True Lease or a Loan?
<i>Part One of a Two-Part Series.</i>Anyone who has been in the leasing business for much time at all understands that a transaction that the parties describe as a "lease" can be either a "true lease" where the lessor owns the leased equipment or a "loan" which results in the lessee being the owner and the lessor having merely a security interest. The latter is commonly referred to as "disguised security interests" or "leases intended as security" or "financing leases." Many people also have a general understanding of the distinction between the two, and most of those reading this article have heard one person or another proclaim the bright-line rule that a lease with a dollar purchase option is a loan and a lease with a fair market value purchase option is a true lease.
Circuit Court Ruling on Nonmonetary Defaults Sets Up Conflict Over Bankruptcy Code
A recent circuit court decision regarding the interpretation of section 365 of the Bankruptcy Code has set up a conflict between two circuits. On March 15, 2004, the Court of Appeals for the First Circuit issued an opinion regarding whether bankruptcy debtors are required to cure nonmonetary defaults prior to assuming unexpired leases under section 365 of the Bankruptcy Code, 11 U.S.C. §365. <i>In re Bankvest Capital Corp. (Eagle Insurance Co. v. Bankvest Capital Corp.)</i>, 360 F.3d 291 (1st Cir. 2004). The First Circuit found — expressly contrary to a holding of the Ninth Circuit Court of Appeals — that debtors are not required to cure such defaults, resulting in a split in the circuits over a very widely used section of the code.
Leveraged Lease Gone Bad? Avoid the Courtroom with Mediation
Throughout the 40-year history of U.S. leveraged leasing, deals have occasionally gone bad. Lessees default, markets change, equipment loses value ' sometimes even the best planned and executed deal may turn out to be the biggest problem in a lessor's portfolio.
The Top 10 Reasons Most Attorneys Don't Do Marketing
... Any high school business student knows that marketing is an important and mandatory part of any business. This comes as a shock to attorneys who often conceive of themselves as belonging to some sort of 19th century guild. ...
Small Firm Marketing: How to 'Think Big'
The competition is heating up and smaller firms are in the hunt for ways to appear larger and have capabilities generally reserved for larger firms. The good news is that perception can become reality. Here are a few ways to "think big."
Thinking Outside The Booth
When creating a marketing plan, the topic of exhibiting at trade shows invariably comes up. If your firm determines that a trade show will be a beneficial part of the marketing mix, it must be seamlessly integrated into the firm's marketing and sales plan rather than it being treated as an isolated event. This is not to say that the big show cannot be the crowning event of the year or as a kick-off for new promotions. <b>Make the trade show part of a Master Plan. </b>
