g.Odetics v. Storage: Have to have identical functionality. Not substantially same function – IDENTICAL. Can be substantially the same to the specification.XIX.Geographic Reach of Patent Rights: Excludes others from making, using, offering for sale or selling the invention throughout the US; or imports. § 271.a.NTP v. Research in Motion: Blackberry. Must be the ownership, control and beneficial use of the system in the US.b.Microsoft v. AT&T: Act of infringement to import unpatented product to US even if that product made by patented process outside the US. §271(g): product made by patented process will not be considered so after (1) materially changed by subsequent processes or (2) becomes trivial and nonessential component of another product.c.Eli Lilly v. Am. Cyanamid: patent on intermediary active ingredient. Court ruled substantially changed final product.XX.Defenses to Patent Infringement (Not defenses: reverse engineering, independent creation and lack of intent).a.Exhaustion (First Sale Doctrine): An authorized sale to an authorized acquirer exhausts the patent owner’s rights as to that product.
i.Helferich v. NYT: authorized acquirerii.Bowman v. Monsanto: self-replicating inventions. The authorized sale of a patented item gives the purchaser a right to use or resell that item, as long as the purchaser does not make copies of the item.iii.LG v. Quanta: method claims can be exhausted. What is sold needs to substantially embody inventive concept. The authorized sale of anything that substantially embodies the inventive concept, then those authorized sales will extinguish patent owner’s rights REGARDLESS of where the authorized sale occurred.iv.Keurig v. Sturm: Activity of home users is exhausted because of first sale. Negates direct infringement and indirect of pod makers.b.Jazz Photo v. ITC: Repair-Reconstruction Doctrine. Permissible repair of a patented article includes disassembling and repairing a patented article, and replacing any unpatented elements.i.Repair allowed. Mere replacement of individual unpatented parts, one at a time, whether of the same part repeatedly or different parts successively, is no more than the lawful right of the owner to repair his property.ii.Reconstruction prohibited. Reconstruction of a patented entity, comprised of unpatented elements, is limited to such a true reconstruction of the entity as to in fact make a new article.iii.LEXMARK OVERRULES re: sales over sea (any sales on planet give rise to exhaustion)c.Misuse i.Morton Salt v. GS Supplier: Product tying. Patented machine, trying to charge more for unpatented salt. Generally illegal to extend monopoly to unpatented things. NEW RULE: Safe harbor. Condition license on rights of another patent or purchase of a separate product, unless patent owner has market power in therelevant market.