Patent Law & Policy

Good luck on your exam. Come by and see me next semester.

Does the experimental use exception apply to Novelty, or just Statutory Bars? I know there is a lot of overlap, but we only talked about it in the context of statutory bars. It seems like if someone experimented in public, but tried to keep it secret and controlled, then it wouldn't qualify as prior art under 102 because it wasn't reasonably accessible. What do you think?

The "experimental use exception" (EUE) deals with statutory bars -- usually where a patentee has herself use/sold the invention prior to the critical date. The EUE operates to shield what would otherwise be barring activities.

Your hypo - experimentation in public, but tried to keep the use secret - might raise two issues. First, this might also raise statutory bar issues, since third party activity can be bars, too. So the EUE might play a role here.

But the EUE would not apply to novelty questions -- there the question is whether the prior activity disclosed the invention.

I have a quick question regarding licensee estoppel after MedImmune. In MedImmune, the licensee perceived the patent-holder to have threatened to terminate a license agreement and sue for patent infringement. The court said that in this situation, the licensee did not need to cease royalty payments to bring a DJ action. However, it does not say that a licensee may bring a DJ action when there is a CLEAR provision in the license that forbids challenging a patent's validity, and there is NO definite or concrete dispute that is being threatened. It was my understanding that licensee estoppel may still apply in the case of a non-repudiating licensee where there is an explicit licensee estoppel provision in the license. At least, that was what I thought we discussed after that class session.

Yes, Medimmune says that licensees do not have to actually breach to bring a DJ action. It does not take a position on what might happen if the contract actually forbids (or specifies when) litigation may occur. For this reason, it is not entirely clear what the long-term impact of Medimmune actually is.

The exam is done. I've uploaded the first page, here [ pdf ]. Unfortunately, when revising it, I did not come up with any additional sample questions suitable for distribution. Here are the sample questions I previously distributed: [ pdf ]

A student had the following questions:

1. Under 102(e), are foreign patents only prior art for what they claim, so the disclosure in the foreign application's specification wouldn't anticipate a US patent's claims?

No. 102(e) excludes foreign patents as prior art (for section e only), unless they are filed as part of the international treaty process ("PCT") -- which we did not cover in this course.

I think what you're thinking of is that where 102 says "patented," that signals that the scope of disclosure is limited to what is "patented" (what is in the claims). The Reeves Brothers case we read discusses this aspect of the law. Note that this rarely arises in 102, because in most circumstances, foreign patents are published, making them "printed publications" for purposes of the section.

2. If DOE is still a factual issue but the "legal limits of DOE" issues are reserved for the judge to decide, what questions do the jury actually decide?

Assuming no legal limit applied, the jury would decide the actual question of equivalence: is a hexagonal cross-section for a train car "equivalent" to a round cross-section. In most cases, the jury would be instructed as to the function-way-result test and told to decide equivalence.

3. I'm still unclear regarding the MPF claiming and literal v. DOE infringement.

For typical infringement analyses, we have two forms of infringement:

[1] Standard (non-MPF) literal infringement = each element of the claim must be identically found in the accused device.

[2] Standard (non-MPF) DOE infringement = each element of the claim must be literally or "equivalently" found in the accused device. Equivalence is usually conducted via the function-way-result analysis.

For MPF claim elements, we have three forms:

[1] Literal infringement = identical function, identical "corresponding" structure.

[2] 112p6 equivalents (or "statutory equivalents") = identical function, equivalent "corresponding" structure. Odetics describes this as "identical function, equivalent way and result."

[3] DOE equivalents = equivalent function, equivalent "corresponding structure". Odetics describes this as "equivalent function, equivalent way, and equivalent result."

4. Can literal infringement of a Section 112 para 6 MPF claim capture after-arising technology after Odetics?

Odetics does not key the analysis to timing, so yes. But note that Chiuminatta does key the analysis to timing. So there is some conflict on this point. My view is that Odetics is the better law, but the Federal Circuit does cite Chiuminatta a fair amount. On the exam, I would have to tell you which law to use.

5. After Lear and Adkins, there's definitely no more licensee estoppel in patent law so licensee is free to bring litigate and/or ask for a declaratory judgment?

In Lear v. Adkins, the Court established that there is no (implied) licensee estoppel. In Medimmune, the SCOTUS held that a licensee could bring a DJ action even without ceasing royalty payments.