Chapter 4
A. PatentsGeneral
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
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
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
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).

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