Includes separate combination of scanner and printer

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includes separate combination of scanner and printer in specification)(6)Don’t import limitations from specifications (Phillips)(7)Purpose or goal of the invention (3M v. Johnson & Johnson– “Lubricant” means “slippery lubricant” because this was the improvement/purpose over prior art)41That which infringes if later, anticipates if earlierBUT there is argument that this would not apply to secret prior use by 3rdparty
(8)Disclaimer of subject matter in specification/prosecution history (through abandoned claims, see prosecution history estoppel below) (Unique Concepts)(9)Product-by-process– Claims that process and the product produced by that process (Merrill v. Yeomans; Abbott v. Sandoz, but see Scripps v. Genetech)(10)Means-plus-function– The elementreferred to is construed to cover only the corresponding structure in specification and equivalents thereof(a)Phillips– Not means plus function if the claim refers directly to the means of producing the result (“Comprising baffles extending inwardly”)iii)Cases(1)Merrill v. Yeomans(SC 1877) – “Manufacture” refers to process of making(a)Remedy for inadvertent omission is § 251 reissue(2)Phillips v. AWH Corp.(FC 2005) – “Modular unit” with “internal steel baffles”(a)All spec. baffles @ acute angle, infringer is perpendicular(b) There is a broad claim, then narrow ones claiming acute angles broad claimmeans something different includes perpendicular baffles(3)Unique Concepts v. Brown– Kit for making fabric wall covering, question whether it requires “right angle corner pieces”(a)Cancelled original claim that would include 45 degree side pieces joined together Disclaimed this, requires separate right-angle corner pieces(4)Abbott Labs. v. Sandoz Inc.(Product-by-process) (FC 2009)(a)Product by process claims allow claiming of the product as produced by the claimed method(b) Newman Dissent – Claims are drafted this way because it is hard to describe new products – “Rule of Necessity” – burden on patentee to prove no better way to describe than by process(5)Scripps v. Genetech– Known clotting factor, Scripps method of purifying from WB with antibodies Holding that this claims the protein(a)Blocks Genetech patent on making protein with recombinant gene technology(6)Wright Co. v. Paulhan(SDNY 1910 – Hand, J.)(a)Wright brothers’ airplane patent(b) Wing warping to stabilize plane requires tail rudder counter steering(c)Claim: “Means whereby said rudder is caused to present to the wind that side of the aircraft having less drag” – In specification, wing and rudder are tied together to automate counter steering(d) Issue: Is it infringement if pilot takes the place of the rope?(e)Holding: “Is caused” implies no – pilot may not turn the rudder BUT if pilot prefers to lice, pilot will cause rudder to turn infringed(7)Markman v. Westview Instruments, Inc.(SC 1996) – No historical evidence of claim construction being a jury issue no 7thAmendment problem. Provides uniformity across infringement cases – No offensive collateral estoppeld)Doctrine of Equivalents42
i)Generally(1)Rule

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