What you say on the way to getting your patent can and will be used against you.
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(4,652,525 and 4,431,740).
In the first court action, the district court ruled: (1) that neither patent was infringed by Lilly; (2) that the “‘525 patent directed to mammalian, vertebrate, and human cDNA is invalid for lack of an adequate written description;” and (3) that both patents are unenforceable for inequitable conduct. The University of California appealed to the Federal Circuit. The Federal Circuit affirmed the district court decision on all grounds except for unenforceability based on inequitable conduct. What is of interest with respect to this article is the court holding with respect to infringement.
In a unanimous decision, the US Supreme Court in Markman v. Westview (116 S. Ct. 1384 [1996.]) held that “the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.” In other words, the judge must determine what a patent claim means and encompasses and only then can the factual determination of infringement begin. The Supreme Court reasoned that patent claims are written in a stylized legal form required by US Patent Office rules and, hence, claims best interpreted by judges. Judges, rather than jurors, are trained in the construction of written instruments.
In Hilton Davis Chem. v. Warner-Jenkinson Co. (117 S. Ct. 1040 [1997.]), the US Supreme Court reaffirmed the existence of the doctrine of equivalents theory of infringement and held that what is critical to the determination of this type of infringement is that the equivalence must be analyzed on an element-by-element basis. In other words, each of a claim's elements must be found in the accused infringing device either exactly as claimed or as an equivalent of the claim element. The most critical portion of the Hilton Davis decision for a party seeking patent protection is the Supreme Court's requirement that prosecution history estoppel be an important limitation on the determination of claim scope and infringement. The equivalence theory of infringement expands the scope of a claim and conflicts with the notice function of patent claims. This tension was reconciled by making actions taken by a patent applicant during the prosecution of an application to patent to operate against the patent holder. Unless there is an explanation for the action which mitigates against an estoppel, the patentee will not be permitted to regain something that was given up in order to procure allowance of the patent.
1997 WL S78762 at page 10 (Fed. Cir. 1997.)
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Rzucidlo, E. Patent prosecution: Be careful what you say. Nat Biotechnol 15, 1305–1307 (1997). https://doi.org/10.1038/nbt1197-1305
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DOI: https://doi.org/10.1038/nbt1197-1305
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