Patents

• Pages: 175-237

Chapter 4

PATENTS

A. Patents—General

1. Instruction 1: Introduction

Plaintiff contends that defendant has used its patent(s) to violate the

antitrust laws. To evaluate plaintiff’s contentions,1 some general

information about patents is necessary.2

The basic policy of the patent laws is to encourage inventors to reveal

new, useful, and nonobvious technology to the public, in exchange for the

grant by the U.S. government of a patent on their inventions.

To receive a patent, an inventor pays a fee and submits an application

to the U.S. Patent and Trademark Office (Patent Office). The Patent Office

reviews the application and, if it finds that the application adequately

describes a new and useful invention, it grants, or “issues,” a patent to the

inventor. The inventor may keep the patent or assign it to some other

person or entity. The owner of the patent is called the patentee. The patent

provides the patentee the right, for a specified number of years, to exclude

others from making, using, offering for sale, or selling the patented

invention throughout the United States without the permission of the

owner of the patent.3 This potential economic reward gives people an

incentive to invest time, money, and effort in research and development.

The length of time a patentee can exclude others from using or selling

the patented invention depends on when the Patent Office issued the

patent. For patents issued before June 8, 1995, the patent rights expire 17

years after the date the patent issued. For patent applications filed on or

after June 8, 1995, the patent usually expires 20 years from the date the

inventor filed an application for a patent. For patent applications filed

before June 8, 1995, where the patent issues on or after that date, the patent

expires either 17 years from the issuance of the patent or 20 years from the

date the application was filed, whichever is later. For patents resulting

from applications filed on or after June 8, 1995, there are certain

circumstances under which the 20-year period may be extended. For

example, if the Patent Office takes a long time to issue the patent, the term

may be extended by up to five years.4 [The description of the relevant time

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176 Model Jury Instructions in Civil Antitrust Cases

periods should be simplified if all of the patents involved in the case have

the same life or if duration is not relevant.]

Every inventor who applies for a patent must provide details of his or

her invention to the Patent Office. When the Patent Office issues a patent,

a specification of the invention is included in a publicly filed document

that describes the innovation, as well as claims that precisely define what

the patent covers. This public filing allows anyone to find out what was

invented and how it works. Thus, other researchers can learn from a patent

owner’s work and can make other inventions of their own.5

[If applicable, add relevant discussion from the following

paragraphs.]

An inventor, including an inventor who had obtained a patent on one

invention, previously may be able to obtain another patent if he or she

invents something that is a nonobvious improvement on an invention

described in the earlier patent.6 Such a patent is commonly known as an

“improvement” patent. When the life of the earlier patent ends, anyone is

free to use the earlier invention. But a person cannot use the invention

claimed by the improvement patent until the improvement patent expires.7

Sometimes an inventor will obtain a patent on part of a commercial

process or product and another inventor will obtain a patent on another

part or an improvement of the same process or product. Under the patent

laws, neither inventor has the right to use the process commercially

without the permission of the other inventor. When this happens, the

inventors are said to have “blocking patents.”

An inventor who receives a patent may sell, or “assign,” his or her

patent to someone else. Frequently, employees working for a corporation

agree to assign any patents they receive to their employer. The buyer of a

patent acquires all of the rights that the original patent holder had.8

A patentee has the right to exclude anyone else from “making, using,

offering for sale, or selling throughout the United States or importing the

invention into the United States” the patented invention for the duration of

the patent. Where the invention is a process, the patentee also has the “right

to exclude others from using, offering for sale or selling throughout the

United States, or importing into the United States, products made by that

process.”9 Using a patented invention within the applicable time period

without the patent owner’s permission is called patent infringement or

infringing the patent. The patentee may enforce the right to exclude by

bringing a lawsuit to stop the alleged infringement, to recover damages for

the alleged infringement, or both.10

A patent owner may give someone else permission to make, use, offer

for sale, or sell the patented invention.11 This is called licensing the patent,

Patents 177

and the permission usually is formally set out in a patent license agreement.

The firm or person receiving permission to use the patent is called the

licensee or license holder.

Occasionally, two entities or persons both own separate patents, and

give each other permission to use the other’s patented inventions. Such

arrangements are known as “cross licenses.”12

NOTES

1. Throughout the patent instructions, the parties’ positions are termed

“contentions” rather than “claims” as they are in other parts of this volume. This

change is made to avoid confusion with the numbered “claims” at the end of a patent.

2. The introductory instruction may require considerable tailoring to the

individual case. For example, if the antitrust claims are being tried together with

patent validity and infringement claims, the instruction probably should include

considerably more detail about the patent laws. On the other hand, i f the antitrust

claims are being tried in the second phase of a bifurcated trial (with the same jury),

the instruction could be shortened somewhat. Also, in many cases it may be

helpful for the court to present an overview of the patent laws in a preliminary

instruction given before the presentation of opening statements. While this

exemplar is drafted as an instruction to be given after the close of evidence, with

appropriate modifications, it could serve as a preliminary instruction as well.

Similarly, in a case involving antitrust claims based on the exercise of other

intellectual property rights, these instructions may be modi fied accordingly.

3. 35 U.S.C. § 154(a)(1).

4. Id. § 154(b)-(c). Where possible, the instruction should be modified to

state the duration of each of the patents at issue in the case.

5. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480-81, 484 (1974);

Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 229-30 (1964); Diamond v.

Chakrabarty, 447 U.S. 303, 307 (1980).

6. 35 U.S.C. § 101 (“Whoever invents or discovers any new and useful

process, machine, manufacture, or composition of matter, or any new and useful

improvement thereof, may obtain a patent therefor, subject to the conditions and

requirements of this title.”).

7. See, e.g., Atlas Powder Co. v. E.I. du Pont & Co., 750 F. 2d 1569 (Fed.

Cir. 1984).