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Full-Text Articles in Intellectual Property Law
From The Unforeseeability Exception To Foreseeability Estoppel: The Federal Circuit’S Effort To Limit The Doctrine Of Equivalents, Ping-Hsun Chen
From The Unforeseeability Exception To Foreseeability Estoppel: The Federal Circuit’S Effort To Limit The Doctrine Of Equivalents, Ping-Hsun Chen
Ping-Hsun Chen
A person can infringe a patent under the doctrine of equivalents (“DOE”) which may be limited by prosecution history estoppel (“PHE”). The Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), finalized the basic doctrine of PHE in the context of claim amendment. A narrowing amendment of a claim results in a presumption that a patentee has surrendered the scope between the original claim and amended claim, but the patentee is allowed to rebut the presumption by proving any of three exceptions. Among those exceptions is the “unforeseeable” exception under which a patentee …
Problematic Approaches Of The Joinder Clause Under The America Invents Act By Federal District Courts, Ping-Hsun Chen
Problematic Approaches Of The Joinder Clause Under The America Invents Act By Federal District Courts, Ping-Hsun Chen
Ping-Hsun Chen
Before 35 U.S.C. § 299 was enacted, some minority district courts had permitted joinder of independent defendants only because the same patent was infringed. That gave a great incentive to non-practicing entities to sue as many defendants as possible in one suit. To resolve this problem, Congress created § 299(b) to abrogate the minority view of joinder. The Federal Circuit in In re EMC Corp. also created a test requiring finding of “an actual link between the facts underlying each claim of infringement.” The Federal Circuit provides six EMC factors for lower courts to determine permissive joinder. However, the Eastern …
From The Unforeseeability Exception To Foreseeability Estoppel: The Federal Circuit’S Effort To Limit The Doctrine Of Equivalents, Ping-Hsun Chen
From The Unforeseeability Exception To Foreseeability Estoppel: The Federal Circuit’S Effort To Limit The Doctrine Of Equivalents, Ping-Hsun Chen
Ping-Hsun Chen
A person can infringe a patent under the doctrine of equivalents (“DOE”) which may be limited by prosecution history estoppel (“PHE”). The Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), finalized the basic doctrine of PHE in the context of claim amendment. A narrowing amendment of a claim results in a presumption that a patentee has surrendered the scope between the original claim and amended claim, but the patentee is allowed to rebut the presumption by proving any of three exceptions. Among those exceptions is the “unforeseeable” exception under which a patentee …