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- CHAPTER 19 Defenses to Patent Infringement
Chapter 19 Outline
Jurisdiction | United States |
Chapter 19
Defenses to Patent Infringement
§19.01 Introduction
§19.02 Noninfringement
§19.03 Absence of Liability for Infringement
[A] License
[1] Express License
[2] Implied License
[B] Prior User Rights
[1] Pre-America Invents Act of 2011
[2] Post-America Invents Act of 2011
[C] Experimental/Research Use
[D] Expiration of Damages Limitation Period of 35 U.S.C. §286
[E] Laches and Equitable Estoppel in Initiating Patent Infringement Litigation
[1] Introduction
[a] Aukerman (Fed. Cir. 1992) ( en banc)
[b] Petrella (U.S. 2014)
[c] SCA Hygiene I (Fed. Cir. 2014)
[d] SCA Hygiene II (Fed. Cir. 2015) ( en banc)
[e] Supreme Court Eviscerates Patent Laches Defense in SCA Hygiene III (U.S. 2017)
[2] Laches Framework
[a] Elements
[i] Unreasonable Delay by Patentee
[ii] Material Prejudice to Accused Infringer
[b] "Should Have Known"
[3] Equitable Estoppel
[a] Introduction
[b] Elements
[c] Privity
[d] Misleading Communication
[e] Reasonable Reliance
[f] Relationship Between Patent Claims, Misleading Conduct, and Reliance Thereon
[F] State Sovereign Immunity
[G] Temporary Presence Exemption
[H] Patent Exhaustion
[1] Generally
[2] Unconditional Sale of Patented Product
[3] Conditioned Sale of Patented Product
[a] Federal Circuit Position
[i] Mallinckrodt (Fed. Cir. 1992)
[ii] Lexmark Int'l (Fed. Cir. 2016) ( en banc)
[b] Supreme Court Reversal: Impression Prods., Inc. v. Lexmark Int'l (2017)
[4] Application to Method Claims: Quanta (U.S. 2008)
[5] Self-Replicating Technology
[I] Lack of Standing to Sue
§19.04 Unenforceability
[A] Introduction
[B] Inequitable Conduct
[1] Acts or Omissions
[2] Materiality
[a] Materiality Standards Pre- Therasense (Fed. Cir. 2011) ( en banc)
[b] Materiality Standard Post- Therasense (Fed. Cir. 2011) ( en banc)
[i] "But For" Test
[a] No Allowance if USPTO Had Been Aware of Undisclosed Information
[b] Nondisclosure of Inconsistent Statements or Positions
[c] Nondisclosure of Prior Art
[d] Nondisclosure of Corroborating Evidence
[ii] "Affirmative Egregious Misconduct" Exception
[iii] Cumulative Information
[3] Intent to Deceive
[a] Generally
[b] Inferring Intent
[i] Generally
[ii] Adverse Inference of Intent to Deceive USPTO as Sanction for Litigation Misconduct
...[c] Clear and
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