Intellectual Property

Boston College Law School

March 10, 2008

Patent – Infringement 3

Doctrine of Equivalents

• Limitations– Claim on prior art– Prosecution history estoppel– Disclosed but not claimed

Problem 3-11• “1. A pocket toothbrush having an exterior structure

resembling a traditional fountain pen case comprising– a. a removable cylindrical end cap cover,

– b. a main cylindrical body shaft over at least one end of which said end cap cover fits …,

– c. said cylindrical body shaft having one end which contains toothbrush bristles …,

– d. said cylindrical body shaft including an interior passage extending into said bristle end and having at least one termination opening in the area at the base of said bristles,

– e. a movable plunger extending into said cylindrical body shaft in said main cylindrical body shaft,

– f. said body shaft including an interior space for the accommodation of a charge of toothpaste to be fed to said bristles by operation of said movable plunger …”

Means Plus Function Claims

• 35 U.S.C. 112– “An element in a claim for a combination may be

expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

Contributory Infringement

• Elements– (1) Sale of a product– (2) Material part of patented invention/process– (3) Knowledge– (4) Specially made or adapted for infr. use– (5) Not a staple article of commerce– (6) No substantial non-infringing use

Foreign Activity

• 35 U.S.C. 271(f)(1)– “Whoever … supplies or causes to be supplied

in or from the United States all or a substantial portion of the components of a patented invention … in such manner as to actively induce the combination of such components outside the United States …shall be liable.”

Administrative

• Assignment for next class– Read IV.D – Defenses