Patent Claim Interpretation
Mueller on Patent Law, Vol. II (Patent Enforcement) (Wolters Kluwer Law & Business 2014)
77 Pages Posted: 13 Jul 2015 Last revised: 23 Jul 2015
Date Written: January 1, 2015
The 2015 annual update for Volume II (Patent Enforcement) of the two-volume treatise, Janice M. Mueller, Mueller on Patent Law (Wolters Kluwer Law & Business) analyzed critical 2014-2015 patent law developments in diverse areas including standing to appeal to the Federal Circuit; the Supreme Court’s rejection of the Federal Circuit’s determination that in a distributed infringement situation involving multiple actors, an accused infringer can be liable for inducing infringement even in the absence of direct infringement under 35 U.S.C. §271(a); claim interpretation decisions illustrating the difficulty of interpreting claim term meaning as of a remote effective filing date and applying the doctrine of prosecution disclaimer; the Federal Circuit’s forceful rejection of the argument that foreseeability/known interchangeability bars infringement under the doctrine of equivalents; the Federal Circuit’s position that evidence of a good-faith belief of a patent’s invalidity may negate the intent required for §271(b) induced infringement liability, reversed by the Supreme Court in Commil (2015); whether well-established Federal Circuit law on the patent laches defense will survive the Supreme Court’s copyright laches decision in Petrella (2014); inequitable conduct when a patentee “crossed the line” between advocating in good faith a reasonable, legitimate interpretation of the prior art, and affirmatively and knowingly misrepresenting material facts about that art; the Supreme Court’s 2014 decisions in Highmark and Octane Fitness, jettisoning as “overly rigid” the Federal Circuit’s restrictive Brooks Furniture standard for district court determinations of “exceptional”ness under 35 U.S.C. §285 and reemphasizing the courts’ discretion in assessing attorney fee awards; Federal Circuit decision that owner of an infringed, standard essential patent (“SEP”) subject to licensing on fair, reasonable, and nondiscriminatory (“FRAND”) terms was not entitled to a permanent injunction; district court jury instruction was reversibly erroneous in setting a royalty base equal to the “smallest salable unit containing the patented feature” because “a patentee’s obligation to apportion damages only to the patented features does not end with the identification of the smallest salable unit if that unit still contains significant unpatented features”; rejection of Nash Bargaining Solution as tool for estimating reasonable royalty damages; failure of asserted claims of a reissue patent to satisfy reissue statute’s “original patent requirement” because specification did not “clearly and unequivocally disclose the newly claimed invention as a separate invention”; two-year snapshot of America Invents Act (AIA) post-grant procedures including rapidly increasing number of inter partes reviews and high patent “kill rate”; controversial “broadest reasonable construction” rule applied by Patent Trial and Appeal Board (PTAB) for claim interpretation in post-grant procedures despite minimal opportunity to amend claims; two 2014 Federal Circuit decisions reversing district court denials of patent litigation stay requests in view of parallel TPCBM proceedings; principles of prosecution history estoppel apply to design patents as well as utility patents; actions of third party individuals (non-inventors) who obtained samples of unreleased but later-patented table grape varieties from the government and planted them in their own fields did not constitute a §102(b) (2006) invalidating public use; status of European Union Unified Patent System and Unitary Patent Court.
Keywords: patent infringement, induced infringement, direct infringement, claim interpretation, prosecution disclaimer, doctrine of equivalents, laches, inequitable conduct, attorney fees, exceptional case, SEP patents subject to FRAND licensing, AIA, PTAB, European Unitary Patent Court
JEL Classification: K19, K29, K39, K41
Suggested Citation: Suggested Citation