Precision Instrument Mfg. Co. v. Automotive Co. - 324 U.S. 806 (1945)

Precision applied for a patent that interfered with Automotive’s patent.  Precision falsified dates and information during the interference proceedings on their patent.  Automotive at least suspected Precision of fraud in their application.  Automotive brought this up to Precision’s attorney and Precision’s attorney withdrew.  The new counsel for Precision settled with Automotive and Automotive became the owner of the patents that came out of the interference proceeding. Relations between Automotive and Precision declined and Automotive sought to enforce the patent they obtained from Precision, against Precision.

When Automotive sued to enforce their patent the district court denied damages saying that because Automotive knew of the falsified dates and information that Automotive’s conduct was inequitable, and Automotive could not sue for damages.  The Appeals court reversed, and the Supreme court via a split decision, affirmed the district court’s determination that the patent was unenforceable due to inequitable conduct.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002)

The Doctrine of Equivalents says equivalents of the claimed elements in a patent claim can also cause infringement.  Judge Learned Hand said that courts "resort to the 'doctrine of equivalents' to temper unsparing logic and prevent an infringer from stealing the benefit of the invention.”  Royal Typewriter co. v. Remington Rand, Inc., 168 F.2d 691, 692 (2d Cir. 1948) One of the limits on the Doctrine of Equivalents is prosecution history estoppel. Prosecution history estoppel is the presumption that any narrowing limitation added to the claims during prosecution bars the doctrine of equivalents in defining scope of the amended claims.

After Festo began marketing its patented device, Shoketsu marketed a device that allegedly infringed Festo's patented device.  Festo charged infringement under the doctrine of equivalents.  Festo's claim had been amended during prosecution to fix a 35 U.S.C. §112 problem, and Shoketsu claimed that prosecution history estoppel should bar Festo from asserting equivalents.  The court decided that the prosecution history estoppel presumption is rebuttable where:

• the amendment cannot reasonably be viewed as surrendering a particular equivalent;

• the equivalent may have been unforeseeable at the time of the application;

• the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; 

• or there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question.  

Impermissible Recapture in a Reissue examination flowchart

Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (federal circuit 1988),

Inequitable conduct during prosecution can invalidate a patent in later litigation. Inequitable conduct resides in failure to disclose material information, or submission of false material information, with an intent to deceive, and those two elements, materiality and intent, must be proven by clear and convincing evidence.

Kingsdown had a claim rejected and then Kingsdown renumbered the claim and told the examiner that the renumbered claim had the same wording as an already allowed claim.  The District court found that the amendment was material, because the amendment was made to overcome a rejection; the District court found that the amendment was deceitful because the amendment was at least grossly negligent; and the District court invalidated the patent on grounds of inequitable conduct.  The Federal Circuit found that the District court’s decision regarding inequitable conduct was clearly erroneous and reversed the decision and remanded the case.

Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co. 520 U.S. 17 (1997)

The Doctrine of Equivalents says equivalents of the claimed elements in a patent claim can also cause infringement.  Judge Learned Hand said that courts "resort to the 'doctrine of equivalents' to temper unsparing logic and prevent an infringer from stealing the benefit of the invention.”  Royal Typewriter co. v. Remington Rand, Inc., 168 F.2d 691, 692 (2d Cir. 1948) One of the limits on the Doctrine of Equivalents is prosecution history estoppel. Prosecution history estoppel is the presumption that any narrowing limitation added to the claims during prosecution bars the doctrine of equivalents in defining scope of the amended claims.

In Warner-Jenkinson a chemical process was patented.  During prosecution a limitation was added that a step in the chemical process had to be carried out at a PH of between six and nine.  The upper limit, nine, was added to overcome the prior art of record; but at the time of trial, it was unclear why the lower limit, of six, was added to the claimed chemical process.  The alleged infringer was doing the same chemical process at a PH of two and the patent owner sued the infringer arguing that under the doctrine of equivalents, the infringer was using an insubstantial tweak to the chemical process to avoid literal infringement.  The Supreme court decided that prosecution history should be used to limit the doctrine of equivalents whenever an amendment was made for a “substantial reason related to patentability…” and left it up to lower courts to decide what a substantial reason related to patentability is.  Waner-Jenkinson also did not decide whether prosecution history estoppel was a complete bar to Doctrine of Equivalents or whether prosecution history estoppel just limited the number of things that could be considered equivalents.

Impermissible Recapture in a Patent Reissue Application

A Reissue application is an application filed with the USPTO that seeks to broaden the scope of a previously allowed patent.  A reissue application will not be allowed where the claimed subject matter was surrendered during the application process for the original patent.  Applying for previously surrendered subject matter in a Reissue Application is called “recapture” and it is not allowed.

There is a three step test for recapture outlined in the North American Container case, 415 F.3d at 1349, 75 USPQ2d at 1556.

North American Container says that impermissible recapture happens when:

• The reissue claims are broader than the original patent claims;
• The limitations of the reissue claims that have been broadened are limitations regarding subject matter that was surrendered in the original application;
• and the limitations were material to the allowance of the patent in the original application.

Arguments go nowhere at a rate of adjective and/or adverb used per sentence

I'm a patent examiner and most days I exhaust my capacity for adjectives and adverbs.  My theory is that, in non-fiction writing, arguments that don't progress understanding come with markers; and those markers are adjectives and adverbs.

In patents the words "clearly", "erroneously", "obviously", and "merely" are used.  These words are filler for a lack of understanding, respect, or both.  In the patent law, one of the determinations that has to be made for every application, is whether or not the patent application is obvious in view of the prior art.  This non-obviousness requirement is a litigated issue, see Graham v Deere, KSR v. Teleflex etc.  It costs time and money to argue about what is obvious.  What would happen, I wonder at least once a day, if non-obvious were better defined or not a requirement; how much money and time would be saved?

Adjectives and adverbs also rude up the place, for a good example see a Patent attorney melt down in a legal response, it's full of adjectives and adverbs.  Adjectives and adverbs don't persuade people whose job it is to decide things, to decide a certain way, see douchebag bingo.  Finally, adjectives and adverbs don't progress the argument because adjectives and adverbs don't add facts.  Adjectives and adverbs cover a lack of facts.  For example:

• Don't say something is fast when you can say it goes 1000km/h.    
• Don't say Usain Bolt is fast, say Usain Bolt won a gold medal in the 100m dash
• Don't say "the reference clearly doesn't teach allocating power..." Say "the reference does not use the words 'allocate' or 'power' anywhere within its disclosure."
• Don't say "the opposing party merely seeks to confuse the court..." Say, "The opposing party has submitted 678 claims..." Let the judge decide if 678 claims shows an intent to confuse.

In all the above examples, adjectives and adverbs added no facts and confused the point with how the writer feels about the point.  I realize that sometimes a term of art is an adjective or adverb and therefore has to be used, but I limit my use of adjectives and adverbs to terms of art as much as I can.

Adjectives and adverbs confusing the issue recently happened between two people that I admire.  Here is a case study in how adjectives and adverbs hurt feelings and muddy waters.  Full disclosure: I put 130$ into Rob Rhinehart's Soylent meal replacement shake kickstarter and I am excited about the product; And I own all of Tim Ferriss' books, I work similar to the prescription in Tim's four hour work week book, I leaned out with Tim's four hour body book; and I learned how to draw using the compressed learning techniques in Tim's four hour chef book.  

Soylent is a meal replacement shake invented by Rob Rhinehart.  Rob made a shake, he ate only the shake for a period of time, then he reported his results.  Rob perceived some critique of his shake, so he responded with adjectives and adverbs.  For example, "We are more serious about health..."  What does "serious" mean?  Serious is not defined and I don't even know how to measure it.  Serious doesn't add a fact; Serious doesn't require a fact to be rebutted; and it is relative to some point that we can't know.  Rob could have said "We are more happy about health..." and it would have added just as many facts to the argument.

Tim responded by calling the argument "underhanded and deceptive".  Under whose hand, how is hand position relevant, and who is deceived -- while we are on it, what is the international unit of measurement for deception. I suggest Maddoffs as a unit, and I say that Rob's argument was 20 milliMaddoffs.  I'm trying to make jokes now, but I hope it gets my point across.  Two things have been said, feelings have been hurt, and the argument has not gotten anywhere closer to conclusion.  Why say something if you're not progressing some train of thought, or progressing the course of an argument?