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>> HELLO, I'M JEREMY FOGEL.
I'VE BEEN A UNITED STATES DISTRICT JUDGE SINCE 1998, AND I
AM NOW THE DIRECTOR OF THE FEDERAL JUDICIAL CENTER. AS YOU
PROBABLY KNOW BY NOW, THIS IS A PATENT CASE, SO YOU MAY BE
WONDERING, HOW CAN I SIT IN JUDGMENT ON A CASE LIKE THIS,
WHEN I'M NOT ENTIRELY SURE WHAT A PATENT IS? WE HOPE TO ANSWER
THAT CONCERN WITH THIS BRIEF VIDEO, WHICH WILL GIVE YOU SOME
OF THE BACKGROUND NEEDED TO DO YOUR JOB.
THIS CASE WILL INVOLVE SOME SPECIAL ISSUES THAT THE JUDGE
AND LAWYERS WILL EXPLAIN TO YOU; BUT ALL PATENT CASES INVOLVE
SOME BASICS THAT YOU WILL LEARN ABOUT. THIS VIDEO WILL DISCUSS
WHAT PATENTS ARE, WHY WE HAVE THEM, HOW PEOPLE GET THEM, AND
WHY THERE ARE DISPUTES THAT REQUIRE US TO CALL IN A JURY
LIKE YOU. WE'LL ALSO SHOW YOU WHAT PATENTS LOOK LIKE.
THE UNITED STATES CONSTITUTION GIVES CONGRESS THE POWER TO PASS
LAWS RELATING TO PATENTS.
ARTICLE I, SECTION 8, CLAUSE 8 ALLOWS CONGRESS TO "PROMOTE THE
PROGRESS OF SCIENCE AND USEFUL ARTS, BY SECURING FOR LIMITED
TIMES TO AUTHORS AND INVENTORS THE EXCLUSIVE RIGHT TO THEIR
RESPECTIVE WRITINGS AND DISCOVERIES." A PATENT, THEN, IS
AN OFFICIAL GRANT BY THE UNITED STATES GOVERNMENT THAT GIVES ITS
OWNER CERTAIN RIGHTS TO AN INVENTION. THOSE INCLUDE THE
RIGHT TO STOP OTHERS FROM MAKING, USING, SELLING, OR
OFFERING FOR SALE THE INVENTION THAT IS CLAIMED IN THE PATENT.
A PATENT LASTS FOR A SPECIFIC PERIOD OF TIME, USUALLY 20 YEARS
FROM THE DATE THAT THE APPLICATION IS FILED BY THE
INVENTOR. BUT BECAUSE IT TAKES AN AVERAGE OF 3 YEARS FOR THE
PATENT AND TRADEMARK OFFICE TO ACT ON THE APPLICATION, THE
EFFECTIVE LIFE OF THE PATENT IS CLOSER TO 17 YEARS. A PATENT
REPRESENTS A BARGAIN MADE BETWEEN THE GOVERNMENT AND THE
INVENTOR. IN RETURN FOR THE RIGHT TO PREVENT OTHERS FROM
USING THE INVENTION, THE INVENTOR MUST ENHANCE THE PUBLIC
KNOWLEDGE, OR WHAT WE SOMETIMES CALL THE STATE OF THE ART, BY
ADDING SOMETHING NEW AND USEFUL TO IT. A FAMOUS EXAMPLE IS
THOMAS EDISON'S INVENTION OF THE LIGHT BULB. HARNESSING
ELECTRICAL POWER FOR ILLUMINATION TRANSFORMED SOCIETY
AND LED TO MANY OTHER IMPORTANT BREAKTHROUGHS. DURING THE
LIFETIME OF THE PATENT, ITS DISCLOSURE MAY INSPIRE NEW
INVENTIONS, AND AFTER IT EXPIRES, THE INVENTION IS FREE
FOR ANYONE TO USE. IT IS THIS COMBINATION OF SOMETHING NEW
AND VALUABLE TO THE PUBLIC THAT JUSTIFIES GRANTING TIME-LIMITED
PATENT PROTECTION TO THE INVENTOR. A PATENT IS IN MANY
WAYS LIKE A DEED TO A PIECE OF PROPERTY. IT GRANTS THE OWNER
THE RIGHT TO KEEP PEOPLE OFF THE PROPERTY OR TO CHARGE THEM A
FEE, LIKE RENT, FOR USING IT.
AND JUST AS A DEED INDICATES BOUNDARIES DEFINING THE
LANDOWNER'S PROPERTY, A PATENT CLAIM DEFINES THE PATENTEE'S
DOMAIN. THE PATENT SYSTEM WORKS BECAUSE THE INVENTOR IS REQUIRED
TO DESCRIBE THE INVENTION IN CLEAR AND SPECIFIC TERMS, SO
THAT THE PUBLIC KNOWS WHAT THE BOUNDARIES OF THE INVENTION ARE.
ONCE A PATENT IS ISSUED BY THE GOVERNMENT, IT BECOMES AVAILABLE
FOR PUBLIC INSPECTION. IN THAT WAY, ANYONE WHO LEARNS OF THE
PATENT CAN READ IT AND UNDERSTAND EXACTLY WHAT THE
INVENTOR INVENTED AND THE LIMITS OF THE PATENT SET FORTH IN THE
CLAIMS.
NOW THAT WE UNDERSTAND WHAT A PATENT IS, LET'S TAKE A CLOSER
LOOK AT THE TERM "INVENTION."
AN INVENTION IS A NEW WAY OF SOLVING A PROBLEM OR A USEFUL
NEW MACHINE, MANUFACTURE, OR COMPOSITION OF MATTER.
THE PATENT PROCESS BEGINS IN THE MIND OF THE INVENTOR, AND IN
PARTICULAR WHEN THE INVENTION IS FORMULATED IN THE MIND OF THE
INVENTOR. PATENT LAWYERS CALL THIS "CONCEPTION."
THIS IS WHEN THE IDEA OCCURS TO THE INVENTOR CLEARLY ENOUGH
THAT HE OR SHE CAN WRITE IT DOWN AND EXPLAIN IT TO SOMEONE.
TO QUALIFY FOR A PATENT, THE INVENTION NEEDS TO BE NEW AND
USEFUL. ALSO, IT MUST NOT BE OBVIOUS TO ONE OF ORDINARY SKILL
IN THE FIELD. IF THE INVENTOR BELIEVES THESE REQUIREMENTS ARE
MET, HE OR SHE WILL PREPARE AN APPLICATION FOR FILING WITH THE
PATENT AND TRADEMARK OFFICE, WHOSE HEADQUARTERS ARE IN
ALEXANDRIA, VIRGINIA, JUST OUTSIDE OF WASHINGTON, D.C.
THE PATENT AND TRADEMARK OFFICE--OFTEN CALLED THE "PTO"--
IS THE AGENCY OF THE FEDERAL GOVERNMENT WHOSE JOB IT IS TO
EXAMINE PATENT APPLICATIONS TO MAKE SURE THEY ARE IN PROPER
FORM AND COMPLY WITH THE REQUIREMENTS OF THE LAW.
THE INVENTOR CAN PREPARE AN APPLICATION FOR FILING WITH THE
PTO, BUT USUALLY IT IS DRAFTED BY A PATENT ATTORNEY OR A PATENT
AGENT WHO SPECIALIZES IN WHAT IS CALLED "PROSECUTING" PATENT
APPLICATIONS; THAT IS, THE PROCESS BY WHICH THEY ARE
EVALUATED. THE ATTORNEY OR AGENT WORKS WITH THE INVENTOR TO BE
SURE THE INVENTION IS DESCRIBED AND CLAIMED IN A WAY THAT
COMPLIES WITH THE LAW AND THE REGULATIONS OF THE PTO.
98% OF PATENT APPLICATIONS ARE MADE ONLINE USING THE PTO's
ELECTRONIC FILING SYSTEM, ALTHOUGH A FEW PAPER
APPLICATIONS ARE STILL MADE.
WHEN THE PTO RECEIVES THE INVENTOR'S APPLICATION, IT IS
FIRST CHECKED TO SEE IF IT IS COMPLETE AND COMPLIES WITH ALL
THE PTO's APPLICATION REQUIREMENTS. IT THEN ASSIGNS
THE SUBMISSION TO A PATENT EXAMINER--A STAFF PERSON WITH A
BACKGROUND IN THE FIELD OR "ART" THE INVENTION FALLS WITHIN--TO
EVALUATE THE APPLICATION AND DECIDE WHETHER A PATENT CAN BE
GRANTED.
YOU'VE BEEN GIVEN A SAMPLE PATENT TO REFER TO AS YOU WATCH
THIS VIDEO, SO YOU ALREADY HAVE A SENSE OF WHAT A PATENT LOOKS
LIKE. BUT NOW, LET'S TAKE A CLOSER LOOK AT THE 3 MAIN PARTS
OF A PATENT. TO BEGIN WITH, THERE IS SOME BASIC IDENTIFYING
INFORMATION ON THE FIRST PAGE.
THIS MATERIAL IS HIGHLIGHTED IN YOUR HANDOUT.
ON THE UPPER RIGHT SIDE OF THE PAGE IS THE NUMBER ASSIGNED TO
THE PATENT BY THE PTO. AND ON THE LEFT SIDE IS A TITLE THAT
DESCRIBES THE INVENTION, AND THE NAMES OF THE INVENTORS AND
SOMETIMES THE COMPANY TO WHOM THEY HAVE ASSIGNED THE PATENT.
ALSO ON THE LEFT IS THE DATE WHEN THE PATENT APPLICATION WAS
FILED, AND BACK ON THE RIGHT, THE DATE WHEN THE PATENT ISSUED.
THERE ALSO IS MORE DETAILED INFORMATION ON THE FIRST PAGE,
INCLUDING A LIST OF NUMBERS FOLLOWING THE CAPTION "FIELD OF
SEARCH." THESE NUMBERS IDENTIFY PREVIOUSLY ISSUED PATENTS THE
EXAMINER LOOKED AT OR "SEARCHED" TO MAKE SURE THE APPLICANT'S
CLAIMED INVENTION REALLY IS SOMETHING NEW, NOT OBVIOUS, AND
THUS PATENTABLE. ALSO LISTED ON THE FIRST PAGE ARE WHAT WE CALL
"REFERENCES"; THAT IS, PREVIOUS PATENTS OR ARTICLES THAT
DESCRIBE THE TECHNOLOGY OR "PRIOR ART" KNOWN AT THE TIME
THE APPLICATION WAS FILED.
IT MAY SEEM STRANGE TO YOU THAT WE CALL THIS PRE-EXISTING
TECHNOLOGY "PRIOR ART," EVEN THOUGH IT HAS NOTHING TO DO WITH
ARTISTS. WE USE THE WORD "ART" IN ITS HISTORICAL SENSE, TO
INCLUDE INVENTIONS AND OTHER SUBJECT MATTER REASONABLY
RELATED TO THE CLAIMED INVENTION. WE ALSO REFER TO THE
LATEST TECHNOLOGY AS "STATE OF THE ART," AND WE SAY OF SOMEONE
WHO CAN UNDERSTAND AND APPLY THE TECHNOLOGY THAT HE OR SHE IS
"SKILLED IN THE ART."
THE SECOND MAJOR PART OF THE PATENT IS WHAT WE CALL THE
"SPECIFICATION" OR "WRITTEN DESCRIPTION." AS IS THE CASE IN
YOUR SAMPLE, IT IS USUALLY THE LONGEST PART OF THE PATENT.
IT INCLUDES AN ABSTRACT, WHICH IS A BRIEF SUMMARY OF THE
INVENTION; A BACKGROUND SECTION THAT DESCRIBES THE NATURE OF THE
PROBLEM THE INVENTION IS SUPPOSED TO SOLVE; ONE OR MORE
DRAWINGS, CALLED "FIGURES," THAT ILLUSTRATE VARIOUS ASPECTS OF
THE APPLICATION; AND A DETAILED DESCRIPTION OF ONE OR MORE
"EMBODIMENTS" OF THE INVENTION.
AN EMBODIMENT IS A SPECIFIC DEVICE OR METHOD THAT USES THE
INVENTION, SUCH AS A PARTICULAR FORM OF LIGHT BULB.
THE THIRD AND MOST IMPORTANT PART OF THE PATENT IS
THE CLAIMS. THESE ARE THE NUMBERED PARAGRAPHS THAT APPEAR
AT THE END. THE CLAIMS ARE WHAT GIVE THE PUBLIC NOTICE OF THE
BOUNDARIES OF THE INVENTION.
THEY ARE SIMILAR TO THE DESCRIPTION OF PROPERTY YOU MAY
HAVE SEEN IN A DEED, REFERRING TO PRECISE MEASUREMENTS TAKEN ON
THE GROUND. THE JUDGE WILL INSTRUCT YOU FURTHER ON HOW ANY
TECHNICAL OR AMBIGUOUS TERMS IN THE PATENT CLAIMS SHOULD BE
UNDERSTOOD.
>> NOW THAT WE'VE DISCUSSED THE MAIN PARTS OF A PATENT, LET'S
LOOK AT HOW THE PTO PROCESSES PATENT APPLICATIONS, WHAT WE
REFERRED TO EARLIER AS "PROSECUTION" OF THE PATENT
APPLICATION. THIS PROCESS BEGINS WHEN THE INVENTOR'S APPLICATION
ARRIVES AT THE PTO.
THERE, IT RECEIVES A FILING DATE. UNDER THE AMERICA INVENTS
ACT OF 2011, FILING DATES WILL DETERMINE WHO IS AWARDED THE
PATENT IF THERE ARE COMPETING VALID APPLICATIONS. IN 2012, THE
PTO RECEIVED NEARLY 600,000 PATENT APPLICATIONS AND ISSUED
MORE THAN 270,000 PATENTS.
AFTER DETERMINING THAT THE APPLICATION IS COMPLETE, THE
RECEIVING BRANCH ALSO DECIDES WHAT FIELD OF TECHNOLOGY AN
APPLICATION RELATES TO AND ASSIGNS IT TO THE APPROPRIATE
EXAMINING GROUP. IN ORDER TO MAKE THAT DECISION, THE PATENT
EXAMINER USUALLY LOOKS AT PATENTS THAT HAVE BEEN ISSUED
PREVIOUSLY, IN THE SAME OR CLOSELY RELATED FIELDS OF ART.
THE EXAMINER HAS COMPUTER DATABASES THAT CONTAIN
INFORMATION USED TO ACCOMPLISH THIS TASK. ANOTHER PART OF THE
JOB IS TO DECIDE IF THE INVENTOR'S DESCRIPTION OF THE
INVENTION IS COMPLETE AND CLEAR ENOUGH TO MEET THE REQUIREMENTS
FOR A PATENT, INCLUDING THE REQUIREMENT THAT THE DESCRIPTION
ENABLES SOMEONE OF ORDINARY SKILL IN THE FIELD TO ACTUALLY
MAKE AND USE IT.
HOWEVER, BECAUSE THE JOB OF EXAMINING SO MANY APPLICATIONS
IS CHALLENGING, THE LAW REQUIRES THE APPLICANT TO TELL THE
EXAMINER WHATEVER HE OR SHE KNOWS ABOUT THE PRIOR ART THAT
MIGHT BE IMPORTANT TO THE EXAMINER'S DECISION ON WHETHER
TO ALLOW THE PATENT.
WE CALL THIS THE APPLICANT'S DUTY OF CANDOR. ONE WAY THE
APPLICANT CAN SATISFY THIS DUTY IS BY BRINGING PERTINENT PRIOR
ART TO THE ATTENTION OF THE EXAMINER, EITHER IN THE ORIGINAL
APPLICATION OR IN OTHER SUBMISSIONS CALLED "INFORMATION
DISCLOSURE STATEMENTS." IN THIS WAY, THE DECISIONS OF THE
EXAMINER ARE BASED ON BOTH THE INFORMATION PROVIDED BY THE
APPLICANT, AND ON THE INFORMATION THE EXAMINER FINDS
DURING HIS OR HER PRIOR ART SEARCH.
SOMETIMES THE EXAMINER CONCLUDES THAT THE APPLICATION MEETS ALL
THE REQUIREMENTS WE'VE DISCUSSED AND ALLOWS THE PATENT TO ISSUE
AT THIS FIRST STAGE.
BUT MORE FREQUENTLY, THE EXAMINER WILL REJECT THE
APPLICATION AS DEFICIENT IN SOME RESPECT. THIS DECISION WILL
BE COMMUNICATED BY THE EXAMINER IN WHAT IS CALLED AN "OFFICE
ACTION," WHICH IS A PRELIMINARY NOTICE TO THE APPLICANT OF WHAT
THE EXAMINER FINDS INSUFFICIENT OR UNPATENTABLE. FOR EXAMPLE,
THE EXAMINER MAY REJECT CERTAIN CLAIMS AS BEING UNPATENTABLE
BECAUSE A JOURNAL ARTICLE, WRITTEN AND PUBLISHED BY ANOTHER
PERSON PRIOR TO THE EFFECTIVE FILING DATE OF THE PATENT
APPLICATION, DISCLOSED WHAT THE APPLICANT WAS CURRENTLY
CLAIMING. AT THAT POINT, THE APPLICANT PREPARES A WRITTEN
RESPONSE, EITHER AGREEING OR DISAGREEING WITH THE EXAMINER.
AN APPLICANT WHO AGREES WITH THE EXAMINER CAN SUGGEST
AMENDMENTS TO THE APPLICATION DESIGNED TO OVERCOME THE
EXAMINER'S REJECTION.
ALTERNATIVELY, AN APPLICANT WHO DISAGREES WITH THE EXAMINER'S
OFFICE ACTION CAN EXPLAIN THE REASONS FOR THE DISAGREEMENT.
THIS EXCHANGE OF OFFICE ACTIONS AND RESPONSES GOES ON UNTIL THE
EXAMINER ISSUES A "FINAL OFFICE ACTION," WHICH MAY REJECT OR
ALLOW SOME OR ALL OF THE APPLICANT'S CLAIMS.
THE OVERALL PROCESS IS REFERRED TO AS THE "PROSECUTION HISTORY"
OF THE APPLICATION. THE WRITTEN INCOMING AND OUTGOING
CORRESPONDENCE BETWEEN THE PTO EXAMINER AND THE APPLICANT IS
ALSO CALLED THE "FILE WRAPPER."
IN THE PAST, THESE FILE WRAPPERS WERE ALL IN PAPER FORM, AS WERE
THE SUBMITTED APPLICATIONS.
NOW THEY ARE MOST OFTEN ELECTRONIC AND MAY OCCASIONALLY
BE PAPER AS WELL. MOST PATENT APPLICATIONS FILED ON OR AFTER
NOVEMBER 29, 2000 ARE PUBLISHED BY THE PTO 18 MONTHS AFTER THE
INVENTOR HAS FILED HIS OR HER APPLICATION, SO THAT THE PUBLIC
MAY INSPECT IT.
ONCE A FINAL PTO OFFICE ACTION HAS OCCURRED, AND ONE OR MORE
CLAIMS HAVE BEEN ALLOWED, THE APPLICANT IS REQUIRED TO PAY AN
ISSUANCE FEE, AND THE PATENT IS PRINTED. THEN, ON THE DATE SHOWN
ON THE UPPER RIGHT-HAND CORNER OF THE FIRST PAGE OF THE PATENT,
IT IS "ISSUED" BY THE PTO, AND THE INVENTOR RECEIVES ALL THE
RIGHTS OF A PATENT. THAT DATE IS HIGHLIGHTED ON YOUR SAMPLE.
ONCE A PATENT HAS ISSUED, THE INVENTOR, OR THE PERSON OR
COMPANY THE INVENTOR HAS ASSIGNED A PATENT TO, CAN
ENFORCE THE PATENT AGAINST ANYONE WHO USES THE INVENTION
WITHOUT PERMISSION. WE CALL SUCH UNLAWFUL USE "INFRINGEMENT."
BUT THE PTO AND ITS EXAMINERS HAVE NO JURISDICTION OVER
QUESTIONS RELATING TO INFRINGEMENT OF PATENTS.
IF THERE IS A DISPUTE ABOUT INFRINGEMENT, IT IS BROUGHT TO
THE COURT TO DECIDE.
SOMETIMES IN A COURT CASE, YOU ARE ALSO ASKED TO DECIDE ABOUT
"VALIDITY." THAT IS WHETHER THE PATENT SHOULD HAVE BEEN ALLOWED
AT ALL BY THE PTO. A PARTY ACCUSED OF INFRINGEMENT IS
ENTITLED TO CHALLENGE WHETHER THE ASSERTED PATENT CLAIMS ARE
SUFFICIENTLY NEW OR NON-OBVIOUS IN LIGHT OF THE PRIOR ART, OR
WHETHER OTHER REQUIREMENTS OF PATENTABILITY HAVE BEEN MET.
IN OTHER WORDS, A DEFENSE TO AN INFRINGEMENT LAWSUIT IS THAT THE
PATENT IN QUESTION IS INVALID.
YOU MAY WONDER WHY IT IS THAT YOU WOULD BE ASKED TO CONSIDER
SUCH THINGS WHEN THE PATENT HAS ALREADY BEEN REVIEWED BY
A GOVERNMENT EXAMINER. THERE ARE SEVERAL REASONS FOR THIS.
FIRST, THERE MAY BE FACTS OR ARGUMENTS THAT THE EXAMINER DID
NOT CONSIDER, SUCH AS PRIOR ART THAT WAS NOT LOCATED BY THE PTO
OR PROVIDED BY THE APPLICANT.
IN ADDITION, THERE IS, OF COURSE, THE POSSIBILITY THAT
MISTAKES WERE MADE OR IMPORTANT INFORMATION OVERLOOKED.
EXAMINERS HAVE A LOT OF WORK TO DO, AND NO PROCESS IS PERFECT.
ALSO, UNLIKE A COURT PROCEEDING, PROSECUTION OF A PATENT
APPLICATION TAKES PLACE WITHOUT INPUT FROM PEOPLE WHO MIGHT
LATER BE ACCUSED OF INFRINGEMENT, SO IT IS IMPORTANT
THAT WE PROVIDE A CHANCE FOR SOMEONE WHO IS ACCUSED OF
INFRINGEMENT TO CHALLENGE THE PATENT IN COURT. IN DECIDING
ISSUES OF INFRINGEMENT AND VALIDITY, IT IS YOUR JOB TO
DECIDE THE FACTS OF THE CASE.
THE JUDGE WILL INSTRUCT YOU ABOUT THE LAW, WHICH MAY INCLUDE
THE MEANING OF CERTAIN WORDS OR PHRASES CONTAINED IN THE
PATENT.
SO IT IS YOUR PRIMARY DUTY AS JURORS TO RESOLVE ANY FACTUAL
DISPUTES AND--IN SOME CASES, SUCH AS INFRINGEMENT AND
VALIDITY--TO APPLY THE LAW TO THOSE FACTS. TO PROVE
INFRINGEMENT, THE PATENT HOLDER MUST PERSUADE YOU, BY WHAT IS
CALLED "A PREPONDERANCE OF THE EVIDENCE" RELATING TO THE FACTS
OF THE CASE, THAT THE PATENT HAS BEEN INFRINGED. TO PROVE
INVALIDITY, THE ALLEGED INFRINGER MUST PERSUADE YOU BY
WHAT IS CALLED "CLEAR AND CONVINCING EVIDENCE" THAT THE
PATENT IS INVALID. THE JUDGE IN YOUR CASE WILL EXPLAIN THESE AND
OTHER TERMS AND PROVIDE ADDITIONAL SPECIFIC INSTRUCTIONS
AT THE APPROPRIATE TIME.
GOOD LUCK WITH YOUR TASK, AND THANK YOU FOR YOUR SERVICE.