In a patent or patent application, the claims define, in technical terms, the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent. This is termed as the "notice function" of a patent claim—to warn others of what they must not do if they are to avoid infringement liability. The claims are of the utmost importance both during prosecution and litigation alike.
In United States patent law, patent misuse is a patent holder's use of a patent to restrain trade beyond enforcing the exclusive rights that a lawfully obtained patent provides. If a court finds that a patent holder committed patent misuse, the court may rule that the patent holder has lost the right to enforce the patent. Patent misuse that restrains economic competition substantially can also violate United States antitrust law.
Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), was a United States Supreme Court decision in the area of patent law, affirming the continued vitality of the doctrine of equivalents while making some important refinements to the doctrine.
Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), was a United States Supreme Court decision in the area of patent law that examined the relationship between the doctrine of equivalents and the doctrine of prosecution history estoppel.
Prosecution history estoppel, also known as file-wrapper estoppel, is a term used to indicate that a person who has filed a patent application, and then makes narrowing amendments to the application to accommodate the patent law, may be precluded from invoking the doctrine of equivalents to broaden the scope of their claims to cover subject matter ceded by the amendments. Although primarily a U.S. term, questions of whether, or the extent to which the prosecution history should be relevant for determining the extent of protection of a patent also arise outside the U.S.
The exhaustion doctrine, also referred to as the first sale doctrine, is a U.S. common law patent doctrine that limits the extent to which patent holders can control an individual article of a patented product after a so-called authorized sale. Under the doctrine, once an authorized sale of a patented article occurs, the patent holder's exclusive rights to control the use and sale of that article are said to be "exhausted," and the purchaser is free to use or resell that article without further restraint from patent law. However, under the repair and reconstruction doctrine, the patent owner retains the right to exclude purchasers of the articles from making the patented invention anew, unless it is specifically authorized by the patentee to do so.
In United States patent law, inequitable conduct is a breach of the applicant's duty of candor and good faith during patent prosecution or similar proceedings. A claim of inequitable conduct is a defense to allegations of patent infringement. Even in an instance when a valid patent suffers infringement, a court ruling on an allegation of infringement may exercise its power of equitable discretion not to enforce the patent if the patentee has engaged in inequitable conduct.
General Talking Pictures Corp. v. Western Electric Co., 304 U.S. 175 (1938), was a case that the Supreme Court of the United States decided in 1938. The decision upheld so-called field-of-use limitations in patent licenses: it held that the limitations were enforceable in a patent infringement suit in federal court against the licensee and those acting in concert with it—for example, a customer that knowingly buys a patented product from the licensee that is outside the scope of the license.
Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700, is a decision of the United States Court of Appeals for the Federal Circuit, in which the court appeared to overrule or drastically limit many years of U.S. Supreme Court precedent affirming the patent exhaustion doctrine, for example in Bauer & Cie. v. O'Donnell.
Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), is a decision of the United States Supreme Court in which the Court reaffirmed the validity of the patent exhaustion doctrine, and in doing so made uncertain the continuing precedential value of a line of decisions in the Federal Circuit that had sought to limit Supreme Court exhaustion doctrine decisions to their facts and to require a so-called "rule of reason" analysis of all post-sale restrictions other than tie-ins and price fixes. In the course of restating the patent exhaustion doctrine, the Court held that the exhaustion doctrine is triggered by, among other things, an authorized sale of a component when the only reasonable and intended use of the component is to practice the patent and the component substantially embodies the patented invention by embodying its essential features. The Court also overturned, in passing, the part of decision below that held that the exhaustion doctrine was limited to product claims and did not apply to method claims.
Fujifilm Corp v. Benun, 605 F.3d 1366 was a case in which the United States Court of Appeals for the Federal Circuit affirmed the judgment made by the United States District Court for the District of New Jersey that the defendants infringed patents owned by Fujifilm Corporation.
A patent holder in Canada has the exclusive right, privilege and liberty to making, constructing, using and selling the invention for the term of the patent, from the time the patent is granted. Any person who does any of these acts in relation to an invention without permission of the patent owner is liable for patent infringement.
Once an invention is patented in Canada, exclusive rights are granted to the patent holder as defined by s.42 of the Patent Act. Any interference with the patent holder's "full enjoyment of the monopoly granted by the patent" is considered a patent infringement. Making, constructing, using, or selling a patented invention without the patent holder's permission can constitute infringement. Possession of a patented object, use of a patented object in a process, and inducement or procurement of an infringement may also, in some cases, count as infringement.
Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. ___ (2014), is a case of the Supreme Court of the United States that deals with civil procedure, and specifically with the question of the burden of proof required in pursuing declaratory judgments.
Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917), is United States Supreme Court decision that is notable as an early example of the patent misuse doctrine. It held that, because a patent grant is limited to the invention described in the claims of the patent, the patent law does not empower the patent owner, by notices attached to the patented article, to extend the scope of the patent monopoly by restricting the use of the patented article to materials necessary for their operation but forming no part of the patented invention, or to place downstream restrictions on the articles making them subject to conditions as to use. The decision overruled The Button-Fastener Case, and Henry v. A.B. Dick Co., which had held such restrictive notices effective and enforceable.
Leitch Manufacturing Co. v. Barber Co., 302 U.S. 458 (1938), is a 1938 decision of the United States Supreme Court extending the tie-in patent misuse doctrine to cases in which the patentee does not use an explicit tie-in license but instead relies on grants of implied licenses to only those who buy a necessary supply from it.
The reverse doctrine of equivalents is a legal doctrine of United States patent law, according to which a device that appears to literally infringe a patent claim, by including elements or limitations that correspond to each element or limitation of the patent claim, nonetheless does not infringe the patent, because the accused device operates on a different principle. That is, "it performs the same or a similar function in a substantially different way." It has been said that "the purpose of the ‘reverse’ doctrine is to prevent unwarranted extension of the claims beyond a fair scope of the patentee’s invention."
Blonder-Tongue Labs., Inc. v. University of Ill. Foundation, 402 U.S. 313 (1971), is a 1971 decision of the United States Supreme Court holding that a final judgment in an infringement suit against a first defendant that a patent is invalid bars the patentee from relitigating the same patent against other defendants. In so ruling, the Supreme Court overruled its 1936 decision in Triplett v. Lowell, which had required mutuality of estoppel to bar such preclusion, and held that the better view was to prevent relitigating if the plaintiff had had a full and fair opportunity to litigate the issue in question.
