This case involves a dispute over a United States patent. Before summarizing the positions of the parties and the legal issues involved in the dispute, I want to explain what a patent is and how one is obtained.
The United States Constitution grants Congress the powers to enact laws “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.” Using this power, Congress enacted the patent laws.
Patents are granted by the United States Patent and Trademark Office (sometimes called “the PTO”). A valid United States patent gives the patent holder certain rights [for up to 20 years from the date the patent application was filed] [for 17 years from the date the patent issued]. The patent holder may prevent others from making, using, offering to sell, or selling the patented invention within the United States, or from importing it into the United States without the patent holder’s permission. A violation of the patent holder’s rights is called infringement. The patent holder may try to enforce a patent against persons believed to be infringers by a lawsuit filed in federal court.
The process of obtaining a patent is called patent prosecution. To obtain a patent, one must file an application with the PTO. The PTO is an agency of the federal government and employs trained examiners who review applications for patents. The application includes a section called the “specification,” which must contain a written description of the claimed invention telling what the invention is, how it works, and how to make and use it, in such full, clear, concise, and exact terms so that others skilled in the field will know how to make and use it. The specification concludes with one or more numbered sentences. These are the patent “claims.” If the patent is eventually granted by the PTO, the claims define the boundaries of its protection and give notice to the public of those boundaries. Claims can be independent or dependent. An independent claim is self-contained. A dependent claim refers back to an earlier claim and includes the requirements of the earlier claim.
After the applicant files a patent application, a PTO patent examiner reviews it to determine whether the claims are patentable and whether the specification adequately describes the invention claimed. In examining a patent application, the patent examiner may review “prior art.” Prior art is defined by law, and, at a later time, I will give you specific instructions on what constitutes prior art. In general, though, prior art includes things that existed before the claimed invention, that were publicly known or used in this country, or that were patented or described in a publication in any country. The examiner considers, among other things, whether each claim defines an invention that is new, useful, and not obvious when compared with the prior art. A patent lists the prior art the examiner considered; this list is called the “cited references.” The cited references include the prior art found by the examiner as well as any prior art submitted to the PTO by the applicant.
After the prior art search and examination of the application, the patent examiner then informs the applicant in writing what the examiner has found and whether any claim is patentable, and thus will be “allowed.” This writing from the patent examiner is called an “office action.” If the examiner rejects any of the claims, the applicant then responds and sometimes changes the claims or submits new claims. This process, which takes place only between the examiner and the patent applicant, may go back and forth for some time until the examiner believes that the application and claims meet the requirements for a patent. The papers generated during this time of communicating back and forth between the patent examiner and the applicant make up what is called the “prosecution history.” All of this material becomes available to the public no later than the date when the PTO grants the patent.
Just because the PTO grants a patent does not necessarily mean that any invention claimed in the patent is, in fact, legally entitled to the protection of a patent. One or more claims may, in fact, not be patentable under the law. A person accused of infringement has the right to argue here in federal court that a claimed invention in the patent is not entitled to patent protection because it does not meet the requirements for a patent. In other words, an accused infringer may defend a suit for patent infringement on the grounds that the patent is invalid.
Let’s take a moment to look at [the patent] [one of the patents] in this case. The cover page of the patent identifies the date the patent was granted and patent number along the top, as well as the inventor’s name, the filing date, and a list of the references considered in the PTO.
The specification of the patent begins with an abstract, also found on the cover page. The abstract is a brief statement about the subject matter of the invention. Next come the drawings. The drawings illustrate various aspects or features of the invention. The written description of the invention appears next and is organized into two columns on each page. The specification ends with numbered paragraphs. These are the patent claims.
To help you follow the evidence, I will now give you a summary of the positions of the parties. The parties in this case are [the patent holder] and [the alleged infringer]. The case involves a patent obtained by [the inventor], and transferred by [the inventor] to [the patent holder]. The patent involved in this case is United States Patent [patent number], which lists [the inventor] as the inventor. For convenience, the parties and I will often refer to this patent as the [‘XXX] patent. [XXX] are the last three digits of the patent number.
[The patent holder] alleges that [the alleged infringer] has infringed claims [ ] of the [XXX] patent by making [using] a product [method] that includes all of the requirements of those claims. [The alleged infringer] alleges that the asserted claims are not infringed and are also invalid. To fulfill your duties as jurors, you must decide whether claims [ ] of the [XXX] patent have been infringed and whether those claims are invalid. If you decide that any claim of the [XXX] patent has been infringed and is not invalid, you will then need to decide any money damages to be awarded to [the patent holder] to compensate for that infringement. [You will also need to decide whether the infringement was willful. If you decide that any infringement was willful, that decision should not affect any damage award you give. I will take willfulness into account later in the proceedings.]
It is my job as judge to determine the meaning of any claim language that needs interpretation. You must accept the meanings I give you and use them when you decide whether any claim of the patent has been infringed and whether any claim is invalid. [I have already given you a copy of the meanings I have adopted for certain claim terms.]
When a party has the burden of proof on any claim or defense by a preponderance of the evidence, it means the evidence must persuade you that the claim or defense is more probable than not.
You should base your decision on all of the evidence, regardless of which party presented it.
Burden of Proof: In these instructions, for example in instructions 3.2, 3.3, and 3.7, the Committee has adopted “more probable than not” as a statement of the burden of proof. If the instructions are used as proposed, the above instruction on the preponderance of the evidence is not necessary. The above instruction is included for the event that the court and parties chose to use a “preponderance of the evidence” as a statement of the burden of proof.
When a party has the burden of proving any claim or defense by clear and convincing evidence, it means the evidence has persuaded you that the claim or defense is highly probable. Such evidence requires a higher standard of proof than proof by a preponderance of the evidence.
Again, you should base your decision on all of the evidence, regardless of which party presented it.
Burden of Proof: In these instructions, for example in instructions 5.2, 5.3, and 5.9, the Committee has adopted “highly probable” as a statement of the burden of proof. If the instructions are used as proposed, the above instruction on clear and convincing evidence is not necessary. The above instruction is included for the event that the court and parties chose to use “clear and convincing” as a statement of the burden of proof.
To assist you in your deliberations, I have attached a Glossary of Patent and Technical Terms that identifies terms used in patent matters and gives you a definition of those terms.
Glossary: Where appropriate the court should add to the glossary technical terms that the parties expect will come up at trial.
GLOSSARY OF PATENT TERMS
Application – The initial papers filed by the applicant with the United States Patent and Trademark Office (also called the Patent Office or PTO).
Claims – The numbered sentences appearing at the end of the patent that define the invention. The words of the claims define the scope of the patent holder’s exclusive rights during the life of the patent. Claims can be independent or dependent. An independent claim is self-contained. A dependent claim refers back to an earlier claim and includes the requirements of the earlier claim.
File wrapper – Another term for the “prosecution history” defined later.
License – Permission to use or make the patented invention, or perform any of the other exclusive rights granted by the patent, which may be granted by a patent holder (or a prior licensee) in exchange for a fee called a “royalty” or other types of payment.
Office action – Communication from the patent examiner regarding the patent application.
Patent examiners – Personnel employed by the PTO who review (examine) patent applications, each in a specific technical area, to determine whether the claims of a patent application are patentable and whether the specification adequately describes and enables the claimed invention.
Prior art – Prior art is not art as one might generally understand the word art. Rather, prior art is a technical term relating to patents. In general, it includes things that existed before the claimed invention and might typically be a patent or a printed publication. I will give you a more specific definition of prior art later.
Prosecution history – The written record of proceedings between the applicant and the PTO, including the original patent application and later communications between the PTO and applicant.
Specification – The information that appears in the patent and concludes with one or more claims. The specification includes the written text and the drawings (if any). In the specification, the inventor should provide a description telling what the invention is, how it works, and how to make and use it so as to enable others skilled in the art to do so, and what the inventor believed at the time of filing to be the best way of making the invention.
Ordinary skill in the art – The level of experience, education, and/or training that those individuals who worked in the area of the invention ordinarily possessed at the time of the effective filing date of the patent application.
Return to top of this page.
Return to Home Page
Mike Ervin - Cost Effective Small Business Patent Protection.
If you have any questions on on this site - please feel free to contact me.