Associate Professor, College of Law, National Chengchi University
[email protected]; [email protected]
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For ASLI Secretariat Use Only Date of Presentation
(delete where applicable):
Thursday, 23 May 2013 Friday, 24 May 2013
Panel Assigned:
I. Introduction
Distinguished from traditional tangible properties, patent must rely upon the claims and the specification to provide with a public notice about the scope of exclusive rights. As the determination of patent infringement is subject to the violation of exclusive rights, the claims of a patent play a key role in deciding what acts would constitute patent infringement. Generally, there are two types of tests under patent law for the determination of patent infringement, respectively, literal infringement test and the doctrine of equivalents.
While the former focuses upon the claims of a patent to find out whether the accused product or method was element-by-element read into any claim, the latter is to secure the fairness of patent protection by having the evaluation of patent infringement where the accused product or method was made through insubstantial improvement about the patent. According to patent law, the time point for the determination of literal infringement is set up on the date of patent application. However, the patent infringement occurs usually after a patent was issued. When the infringer took advantage of new technologies arising after the date of patent application, it is worth considering whether such technologies would break the public notice of a patent and endow the patentee with an inadequate stretch of the patent. Similarly, the doctrine of equivalents also runs into the issue of new technology, especially on the ground that it is applied in accordance with the time point of patent infringement. In order to ensure the determination of patent infringement would be justified to meet with the jurisprudence of patent law, and prevent the patentee from being overprotected, this article attempts to discuss the impact of new technologies on the determination of patent infringement. It is also a significant issue under this article to detect the reasonable allowance for incorporation of new technologies into the determination of patent infringement under literal infringement test and the doctrine of equivalents.
The article mainly relies upon a theoretical construction to justify the analogous concept of the nonobviousness requirement under patent law to ascertain the reasonable allowance of after-arising
technologies on the determination of patent infringement. Some possible approaches to deal with the issue of after-arising technologies are also initially reviewed in accordance with the rationale of patentlaw. The article is expected in two ways of refinement to strengthen the position about the issue of after-arising technologies. One is to propose the theoretical ground for the model the author proposed for the resolution of disputes of after-arising technologies. Another is to try the best to make the model workable in the various jurisdictions.
However, the issues of after-arising technologies under patent infringement rarely became the main concerns of judicial decisions. The reason why the issue of after-arising technologies is not popular under patent law, according to the observation of the author, is not that the issue was ignored, but that a ideal model and its justification for the issue is hard to be settled. As a consequence, in some cases of after-arising technologies, the court chose to resolve through claim construction or the application of DOE, rather than positively proposed a legal ground to avoid absolute interference of exclusive rights into after-arising technologies. The author hopes sincerely that the proposed model could deliver a justified base under patent law for the reference of future development of case law or judicial cases on the issue of after-arising technologies under patent infringement.
II. Patent Infringement and Reasonable Allowance of After-Arising Technologies.
A. Predicament of Literal Infringement and Doctrine of Equivalents
Under patent laws in various jurisdictions, patent infringement would be determined through the practice of claims or the doctrine of equivalents. On the one hand, without the patentee’s authorization, to practice claims to materialize the abstract technologies contained in the claims, for the purpose of the manufacture of patented products, or the execution of patented process, constitutes a literal infringement under patent law.
One the other hand, even if the infringer didn’t practice any claim completely, having one or more elements of the claim been changed, such partial materialization still be evaluated as an infringement, on the condition that the changes reflected in the accused product or process, comparing with the original elements of the claim, never lead to a substantial difference under the observation of PHOSITA(person having ordinary skill in the art). That is the application of Doctrine of Equivalents. In spite of the function to secure patent exclusive rights shared by both literal and equivalent infringements, the jurisprudences behind the two infringements are very distinctive from each other. Moreover, the two infringements have also own defects on the determination of infringement that run possibly against the gist of patent law motivating the improvement and cumulative innovation of technologies.
Patents are among intangible properties. Claims of a patent serve a public notice to delimit the boundary of exclusive rights enjoyed by the patentee. The specification is read to clarify some ambiguous parts of claims for the interpretation on the width of patent. Under the peripheral system, like U.S. patent law, on alerting the prohibition of an absolute importation of the specification into the interpretation of claims, case law has not denied the function of the specification for ascertaining the inventor’s real intention in
drafting the claims for the patent application. 1 Further, to be self-evident, under eclectic system, like European countries, Taiwan and China, it is codified to affirm that the specification is among the most significant sources for the construction of claims. 2 As a consequence, when claims work with the specification to deliver information about a patent, the public theoretically should grasp the scope of patent as well as to what extent the claims might be reduced into practice. From the point, the achievement of public notice on a patent seems to be justified for the patentee to take advantage of the literal infringement to seek remedies against third parties’ practicing patent claims without any authorization.
However, in reality, claim construction is awkward because the ultimate purpose of such construction is to probe into the intention of the inventor in designing the claim. The plain and reasonable interpretation of a claim isn’t made by referring to the ordinary or technical dictionary that the public can easily access for a common meaning of any element in the claim without bearing extra costs, but the inventor’s own lexicography.3 Under patent law, to respect the meaning of a claim the inventor expects, the intrinsic evidence is prioritized over the extrinsic one for claim construction when there is any ambiguity on the element of a claim read between the patentee and third parties.4 Only on the occasions where the intrinsic evidence couldn’t resolve the conflicting interpretation of a claim, the extrinsic evidence is justified to come into play over claim construction. According to the experience of various jurisdictions on patent law, it seems that the intrinsic evidence didn’t work so efficiently as the public have anticipated in exploring the real intention of the inventor on what the elements of claim should be. It is well observed that the specification as a significant source among intrinsic evidence, rather than settling the disputes on claim construction, often brings in uncertainty of interpretation due to interplays between a claim and its specification.5 While the importation of examples in the specification is prohibited to fix the interpretation about the scope of a claim, in some cases, the specification may serve a limitation, in other cases, for a claim that meets with the real intention of an inventor. As a result, without definite guidelines, what the correlation between a claim and its specification obfuscates the pubic most is how to distinguish under what occasions where the specification may be the limitation of a claim, from under what ones where the interpretation of a claim may break through the specification. From this point, the public seems to bear more costs to recognize what the public notice of a claim is, because a claim couldn’t directly pass down its reasonable scope by wording. Such phenomenon substantially hinders the function of public notice of a claim, and further affects the justification of the assertion of patent literal infringement. Aside from the weak public notice of a claim due to difficulty in setting up a clear standard for claim construction, claim construction is also faced of a predicament where the determination of literal infringement would contradict with the gist of patent law that always prevents the possession of prior art from the patentee and secures technological improvement and cumulative innovation.
The determination of literal infringement under patent law is through comparison between the accused product and a claim to ensure whether all elements of the accused products would be read into the claim on a corresponding basis. If a claim is mechanically interpreted to read the elements of the accused products without checking its capacity allowable under patent law, the patentee will be given a chance to take
1 See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc)(U.S.).
2 See Article 58(4) of Taiwan Patent Act; Article 59 of China Patent Act.
3 Phillips v. AWH Corp., 415 F.3d at 1316.
4 Phillips v. AWH Corp., 415 F.3d at 1320-22.
5 See Craig Allen Nard, A Theory of Claim Interpretation, 14 HARV.J. LAW &TEC 2, 7-9 (2000).
advantage of prior art or later-developed technologies to catch excessive interests that patent law find unbearable. The overcompensation under this situation through the literal infringement surely will collapse the interest balance between the patentee and the public, as well as the sound evaluation on patent practice established by patent law system. For example, under a hypothetical scenario, we assume that Claim 1 of Patent A is about an article, composed of Element X1, Element Y and Element Z. Each accused product made and sold could be divided into Element X2, Element Y and Element Z. And the accused product is read in aforesaid Claim 1 since Element X1 goes through claim construction to cover Element X2. In other words, the manufacture and sale of the accused products constitute the literal infringement of Claim 1 of Patent A. But the fact can be proven that the technology for making the accused product had been available prior to the application date of Patent A. It means that the manufacture and sale of the accused product had already been serving as prior art for Patent A according to patent law. Without further checking if such prior art would affect the patentability of Patent A, due to the lack of special mechanism in the determination of literal infringement to detect if prior art would be incorporated in claim construction, while the manufacture and sale of accused products are evaluated as the literal infringement, it is easy to bring the technology positioned as prior art directly into the possession of the patentee over Claim 1 of Patent A. Certainly, it would be denied that claim construction might be possibly doing some fine tuning to preclude prior art from going within any claim of a patent. However, such function is the result of manipulation through considering prior art, rather than that of the inherent application of the literal infringement.
We also are setting a scenario for after-arising technologies. The infringer made and sold the accused product that comprises Element X3, Element Y and Element Z in the market. It is assumed that Element X3 has not been developed until the infringement date of Patent A. But Element X3 is interpreted into the definition of Element X1 of Claim 1 of Patent A according to claim construction. As a consequence, when the manufacture and sale of accused products constituted the literal infringement against Claim 1 of Patent, the patentee simultaneously catches Element X3 as part of Claim 1 for the exercise of exclusive rights under patent law. Since Element X3 had no chance to be fixed in the wording of Claim 1 at application date, it is reasonably referred that Element X3 was never prosecuted with Element Y and Element Z as a whole to secure the patent eligibility and patentability. It is worth questioning further under this scenario if Element X3 not prosecuted would be justified to become the subject matter which the patentee could exercise exclusive rights over.
As to Doctrine of Equivalents, its function under patent law merely concentrates on the ground of fair protection for the patentee, and works to prevent the infringer from avoiding unreasonably any action of literal infringement by doing some insubstantial changes to Claim 1 for the manufacture and sale of accused products. In addition, it is a common thought that the critical date for the application of DOE is not established at the application date of patent, but at that time when the infringement was done. Compared with literal infringement, scenarios mentioned above seem to possibly happen in the application of DOE.
We assume that the accused product contains Element X4, Element Y and Element Z. In spite of Element X4 being out of the scope of Element X1, under the scenario, based upon an insubstantial change from Element X1 to Element X4, the manufacture and sale of the accused products are still evaluated as an infringement on Claim 1 of Patent A. As the determination of literal infringement, DOE possibly leads to an
extension of Claim 1 to subsume Element X4 as part of the scope of exclusive rights. But the technology for making the accused product had existed before the application date of Patent A. As a matter of fact, the accused products are positioned as prior art of Patent A. On another scenario, if Element X4 is developed after the application date of Patent A, the application of DOE also makes the accused products determined as a patent infringement, even though the accused products never existed in the market at the application date of Patent A.
B. Novelty and Patent Infringement
Prior art has been playing a core role in determining the patentability of an invention under patent law.
An invention may be transformed to a patent if it can be conceived to transcend the technological blocks set up by prior art. Not only does the patentability make an invention distinguished from other technologies exist at the date of patent application through specific elements, but it also secures the advance of an invention over other technologies according to evaluation of PHOSITA when a patent application is filed. The former is the requirement of novelty under patent law. On the one hand, the novelty requirement promotes new inventions under patent law to correspond to continuing demand of industries on technologies. The legislative purpose of the novelty requirement is declared in various jurisdictions to emphasize that the patent system is established to promote industries’ technological developments through the innovation of new things.
Any possible innovation comes from new things or new uses of old things. It can’t be imagined that an invention containing old things would be granted as a patent to exclude the public from accessing the invention. Without technological contributions, merely by reorganizing old things, it is hard to make an invention be a patent. On the other hand, from the angle of limitation of exclusive rights, novelty is justified because it protects the public from being deprived of the benefits already contributed by prior art.6 The significant meaning of innovation is to create a new status where the inventions exist to produce more technological benefits shared by the public, than ordinary things did under an old status. The new status should be evaluated prospectively and dynamically while the old status remains steadily and statically. And the new status always parallels the old one without interfering with each other. Anything just transposed from the old status never establishes a new status. Theoretically, under the element-element comparison for determination of literal infringement, it is possible to read prior art into a claim of a patent through claim construction, provided that the accused product or process was made or practiced to base on technologies defined within prior art of the patent. However, such the result contradicts with the legislative policy of the requirement of novelty under patent law, and makes no difference to entitle the patentee to take possession of benefits already enjoyed by the public before the patent application, rather than the harvest resulting from innovation. With being shared with the same token, the application of DOE also runs into the above-mentioned predicament by subsuming prior art to determine the patent infringement. As a consequence, prior art of a patent really cautions us that a legal boundary derived from prior art is always with claim construction and the application of DOE to determine patent infringement.
C. Non-obviousness and Patent Infringement
6 See Dan L. Burk & Mark A. Lemley, Inherency, 47WM AND MARY L.REV.371,374,379-84 (2005).
Comparing with the requirement of novelty under patent law, nonobviousness is required to ensure that an invention gets beyond prior art on inventive quality to be granted as a patent, even if such an invention has been made to meet with the requirement of novelty. The more excellent inventive quality is not merely showed in technological difference and improvement, when an invention is evaluated with reference to prior art. Instead, the attention of the requirement of nonobivousness is paid upon whether the difference or improvement is a necessary development, in terms of PHOSITA, by teaching, suggestion and motivation of prior art that mixed with the fundamental knowledge of PHOSITA and other objective circumstances, like customer demands in the market. There are two significant meanings in the requirement of nonobivousness, which also relate to the legislative policy of patent law. First, An invention that was conceived merely by following the path driven by prior art recognized by PHOSITA is impossible to implement the innovation policy inherent in patent law. If this invention were qualified as a patent, the access of the public to ordinary logics and knowledge derived from prior art would be blocked. Such the patent also would frustrate the technological improvement and further innovation about prior art. Under this situation, the patentee simultaneously would be inadequately given a chance to occupy the benefits contributed by prior art, and
Comparing with the requirement of novelty under patent law, nonobviousness is required to ensure that an invention gets beyond prior art on inventive quality to be granted as a patent, even if such an invention has been made to meet with the requirement of novelty. The more excellent inventive quality is not merely showed in technological difference and improvement, when an invention is evaluated with reference to prior art. Instead, the attention of the requirement of nonobivousness is paid upon whether the difference or improvement is a necessary development, in terms of PHOSITA, by teaching, suggestion and motivation of prior art that mixed with the fundamental knowledge of PHOSITA and other objective circumstances, like customer demands in the market. There are two significant meanings in the requirement of nonobivousness, which also relate to the legislative policy of patent law. First, An invention that was conceived merely by following the path driven by prior art recognized by PHOSITA is impossible to implement the innovation policy inherent in patent law. If this invention were qualified as a patent, the access of the public to ordinary logics and knowledge derived from prior art would be blocked. Such the patent also would frustrate the technological improvement and further innovation about prior art. Under this situation, the patentee simultaneously would be inadequately given a chance to occupy the benefits contributed by prior art, and