Table of Contents

• Jurisdiction: United States

Table of Contents

About the Author

Preface

Chapter 13 Jurisdiction and Procedure

Introduction

§13.01 U.S. District Courts

[A] Subject Matter Jurisdiction over Patent Cases

[1] Statutory Basis: 28 U.S.C. §1338

[2] "Arising Under" Jurisdiction

[a] "Creation" Test

[b] "Serious Federal Interest" Test

[i] Christianson (U.S. 1988)

[ii] Gunn (U.S. 2013)

[iii] Post-Gunn Federal Circuit Decisions on "Substantial Question" of Patent Law

[B] Personal Jurisdiction

[1] Generally

[2] Specific Personal Jurisdiction

[a] Stream-of-Commerce Theory

[b] Sending Enforcement Letters

[i] Traditional rule: Red Wing (1998): No Personal Jurisdiction from Solely Informing Party in the Forum of Suspected Infringement

[ii] Trimble (2021): More Extensive Communications Will Give Rise to Personal Jurisdiction

[C] Venue

[1] Patent-Specific Statute: 28 U.S.C. §1400(b)

[2] Fourco Glass (U.S. 1957)

[3] V.E. Holding (Fed. Cir. 1990) Greatly Expands Patent Venue

[4] TC Heartland (U.S. 2017) Drastically Narrows Patent Venue

[5] Suing Where Accused Infringer Has "Committed Acts of Infringement" and Has a "Regular and Established Place of Business"

[a] In re Cordis (Fed. Cir. 1985)

[b] Representative Post-TC Heartland (U.S. 2017) District Court Decisions

[c] Post-TC Heartland (U.S. 2017) Federal Circuit Decisions

[i] Cray (2017)

[ii] ZTE (2018)

[d] Waiver or Forfeiture of Improper Venue Defense

[6] Venue for Infringement Actions Against Foreign Corporations

[7] Venue for Patent-Related Actions Not Asserting Infringement

[a] Correction of Inventorship

[b] Declaratory Judgment Actions

[8] Choice of Law and Burden of Proof

[a] Federal Circuit Law Governs

[b] Burden of Proof on Plaintiff

[9] Suing Where Accused Infringer "Resides"

[D] Pleading Requirements

[1] Elimination of Form Pleading for Direct Infringement (2015)

[2] Bill of Lading (Fed. Cir. 2012)

[3] Pleading Joint Infringement

[E] Evidentiary Privileges

[1] Attorney-Client Privilege

[2] Patent Agent-Client Privilege

§13.02 U.S. International Trade Commission

§13.03 U.S. Court of Appeals for the Federal Circuit

[A] Subject Matter-Specific Appellate Jurisdiction

[B] Critiques of the Federal Circuit

[C] Standards of Review

[1] Appeals from Federal District Courts

[a] Jury Trial

[b] Bench Trial

[2] Appeals from the International Trade Commission

[3] Appeals from the U.S. Patent and Trademark Office

§13.04 U.S. Supreme Court

[A] Before Formation of the Federal Circuit

[B] After Formation of the Federal Circuit

§13.05 Standing to Sue for Patent Infringement

[A] Introduction

[B] Licensees

[C] Declaratory Judgment Plaintiffs

[D] Appeals to Federal Circuit from USPTO

§13.06 Patent Declaratory Judgment Actions

[A] Introduction

[B] Pre-MedImmune "Reasonable Apprehension" Test

[C] MedImmune v. Genentech (U.S. 2007)

[D] Post-MedImmune Federal Circuit Decisions

[1] "All the Circumstances" Test

[2] Decisions Illustrating Lack of Declaratory Judgment Jurisdiction

[3] Decisions Illustrating Existence of Declaratory Judgment Jurisdiction

[4] Covenants Not to Sue

[E] Burden of Proof

Chapter 14 Analytical Framework for Patent Infringement

§14.01 Statutory Basis: 35 U.S.C. §271

§14.02 Direct Versus Indirect Infringement

[A] Introduction

[B] Direct Infringement Under §271(a)

[1] Making

[2] Using

[a] Generally

[b] Using a Claimed System

[c] Using a Claimed Method

[3] Selling

[4] Offering to Sell

[5] Importing

§14.03 Territoriality Aspects of §271(a)

[A] Introduction

[B] Use of Processes or Methods Within the United States

[C] "Beneficial Use" Doctrine

[D] "Sells" Within the United States

[E] "Offer[] to Sell" Within the United States

§14.04 Temporal Aspects of §271

[A] Pre-Issuance Acts

[B] Post-Issuance Acts

§14.05 Divided Direct Infringement by Multiple Entities

[A] Introduction

[B] Akamai II (Fed. Cir. 2012) (en banc)

[C] Akamai III (U.S. 2014)

[D] Akamai V (Fed. Cir. 2015) (en banc)

[1] "Directs or Controls" Liability

[a] Service Provider-Customer Relationship

[b] Physician-Patient Relationship

[c] "Partnership-Like" Relationship

[2] Joint Enterprise Liability

[3] Subsequent History

[E] Pleading Joint (or "Divided") Direct Infringement

[1] Illustrative Cases Not Alleging Sufficient Facts for a "Plausible" Claim

[2] Illustrative Cases That Do Allege Sufficient Facts for a "Plausible" Claim

§14.06 Indirect Infringement Under §271(b)–(c): Overview

[A] Practicing Less Than Complete Claimed Invention

[B] Intent Required

[C] Historical Background

[D] Direct Infringement as Predicate to Indirect Liability

§14.07 Two-Step Analysis for Patent Infringement

Chapter 15 Patent Claim Interpretation

§15.01 The Central Role of Patent Claims

§15.02 Judge Versus Jury as Interpreter

[A] Pre-Markman

[B] Markman v. Westview (U.S. 1996)

[C] Markman Hearings

[D] Must a District Court Always Expressly Interpret Claim Terms?

§15.03 Evidentiary Hierarchy for Claim Interpretation

[A] Intrinsic Evidence

[B] Extrinsic Evidence

[C] "Contextualist" Versus "Literalist" Approaches

[D] The En Banc Phillips Decision (Fed. Cir. 2005)

§15.04 Canons of Patent Claim Interpretation

[A] Perspective: Person Having Ordinary Skill in the Art

[B] General Rule: Ordinary and Customary Meaning

[1] Decisions Permitting Only "Stringent" Exceptions to Ordinary Meaning

[2] Decisions Rejecting "Stringent" Exceptions Rule

[C] Self-Defined Terms ("Own Lexicographer" Rule)

[1] Express Redefinition

[2] Implicit Redefinition

[D] Interpret Claims in View of the Written Description but Do Not Import a Limitation from the Written Description into the Claims

[E] Generally Do Not Exclude Preferred Embodiment

[F] Claim Differentiation Principle

[1] Definition

[2] Weight of Presumption

[G] Generally Do Not Interpret Claims to Preserve Validity

[H] The Indefinite Article "A" Generally Means One or More

[I] Timing: Interpret Claim Term Meaning as of Effective Filing Date

§15.05 Disclaimer or Disavowal

[A] In the Specification

[B] During Prosecution in the USPTO

[1] Foundational Case

[2] Disavowal of Scope Must Be Clear and Unmistakable

[3] Disclaimer by Statements in USPTO Post-Issuance Reviews

§15.06 Interpreting Preamble Language

[A] Preamble Not Scope-Limiting

[B] Preamble Is Scope-Limiting

§15.07 Federal Circuit Review of Claim Interpretation Decisions

[A] Question of Law, Fact, or Mixed

[B] De Novo Review Under Cybor (en banc) (1998)

[C] Criticism of De Novo Standard of Review

[D] Federal Circuit Revisits Cybor in Lighting Ballast (2014)

[E] Deference for Fact Finding: Teva (U.S. 2015)

[F] Federal Circuit's Application of Teva

[1] Limited Impact to Date

[2] Federal Circuit Must Not Consider Extrinsic Evidence in First Instance

[G] Interlocutory Appeals Rejected

§15.08 Collateral Estoppel Effect of Prior Claim Interpretation Decisions

[A] Generally

[1] Elements

[2] Relevant Supreme Court Decisions

[B] Does Earlier Decision by Federal District Court Necessarily Bind USPTO?

[1] Pre-2018 Federal Circuit Decisions

[2] Impact of 2018 USPTO Claim Interpretation Standard Rule Change

[C] Effect of Earlier Decision by Federal Circuit

[D] Same Term in Related but Not Identical Patents

[E] Administrative Agency Preclusion Applied to Federal District Courts

[1] B&B Hardware (U.S. 2015)

[2] Potential PTAB Preclusion in Federal District Courts?

Chapter 16 Comparing the Properly Interpreted Claims to the Accused Device

§16.01 Introduction

§16.02 Literal Infringement

§16.03 Infringement Under the Doctrine of Equivalents

[A] Historical Background and Policy Underpinnings

[B] Tension with the Notice Function of Claims

[C] All-Limitations Rule

[1] Defining a "Limitation"

[2] Federal Circuit Examples

[D] The Fact Question of Equivalence

[1] Function/Way/Result Test

[a] Generally

[b] Adequate Expert Testimony

[c] Inadequate Expert Testimony

[d] Determination of "Function" Not Limited to Intrinsic Evidence

[2] Insubstantial Differences Test

[3] Obviousness as a Test of Equivalency?

[4] Known Interchangeability

[E] After-Arising Technology

§16.04 Reverse Doctrine of Equivalents

§16.05 Legal Limitations on the Doctrine of Equivalents

[A] Overview

[B] Prosecution History Estoppel

[1] Definition

[2] Scope of Estoppel

[3] Presumption of Estoppel Under Warner-Jenkinson (U.S. 1997)

[4] The Festo Decisions

[a] Federal Circuit's Complete Bar Rule of Festo I (2000)

[b] Supreme Court's Presumptive Bar Rule of Festo II (2002)

[c] Federal Circuit's Remand Decision in Festo III (2003)

[5] Applying the Festo Rebuttal Criteria

[a] Mere Tangentialness

[b] Unforeseeability

[c] "Some Other Reason"

[6] What Qualifies as a Narrowing Amendment

[a] Generally

[b] Merely "Clarifying"

[c] Making Explicit an Inherent Characteristic

[d] Contract Overall Scope of Claim

[7] Argument-Based Estoppel

[C] Prior Art

[1] Generally

[2] Not Applicable to Literal Infringement

[3] Hypothetical Claim Analysis/Ensnarement

[a] Generally

[b] Illustrative Cases

[c] Scope of Hypothetical Claim

[i] Does Not Encompass All Possible Equivalents

[ii] Cannot Add Any Narrowing Limitations

[D] Dedication to the Public

[1] Disclosing Without Claiming

[2] Level of Specificity to Work a Dedication

[E] Vitiation of Claim Limitations

[1] Generally

[2] Decisions Finding Vitiation

[3] Decisions Finding No Vitiation

[4] Question of Law or Fact?

§16.06 Infringement of Means-Plus-Function Claim Elements

[A] Literal Infringement

[B] Infringement Under the Judicially-Created Doctrine of Equivalents

Chapter 17 Indirect Infringement

§17.01...