Sat, 06 Dec 2008

Enablement but not Written Description
Q: Could you give me an example of being in possession of something but not enabling?

A: Imagine you invent something nobody has ever seen before--imagine you invent velcro, let's say. Nobody else has ever seen anything like velcro before. You draft up a detailed patent application in which you describe velcro, but you omit the critical step--let's say it's the way you form the little hooks that give the velcro its gripiness. The hooks are the hardest part, and none of your competitors, even basing their work on your patent applications, can get the little hooks to work.

Your application is invalid because you haven't enabled PHOSITA on how to make velcro. In order to get from your application to velcro, one must engage in experimentation--and more than undue experimentation.

Yet nobody would accuse of you of failing the written description requirement. You've claimed velcro in the claims, and you have shown that you were in possession of velcro at the time of the application.

posted at: 19:06 | path: | permanent link to this entry

Copyright: Reproduction without Distribution
Q: I did have one question regarding the material in the test today: regarding the act of typing words into a computer from a book that you buy, that is an infringement on its own? In other words, if I purchased a book and typed all the words from it into my computer (let's say it was so that I could search the text of the book more easily for research), but I'm not disseminating that work to anyone or letting anyone else use it, that's an infringement that I could be liable for? I guess I can see how really you're creating a derivative work--it just seems like there must be some exception for a totally personal use like that!

A: I think the crux of your question is about reproduction (or preparation of derivative works) with no distribution. Yes, this technically falls within the section 106 rights, and might lead to infringement. The "personal" nature of the reproduction would cut in favor of fair use, however, so there might be a defense. Also, note that without distribution (or public display/performance) there is probably no damages over which to sue. That's why we rarely see cases involving reproduction but not distribution, although there are exceptions.

posted at: 19:04 | path: | permanent link to this entry

Copyright: Comparing Infringing and Infringed works
Q: When you look at what was taken in a copyright infringment suit, do you only look at what was taken of the infringed material or how much of the infringed material makes up the infringing material as well? Thank you.

A: Remember that these questions are important at two phases--the infringement analysis and the fair use analysis. In both phases, you ask these sorts of questions.

The answer is that both questions have been deemed important at both phases. In other words, for both infringement and for fair use, courts seem to care about both how much of plaintiff's work was taken by defendant and how much of defendant's work was based on plaintiff's work (or conversely, how much of defendant's work was NOT taken from plaintiff.)

But, the real oddity here is that in both infringement and fair use, courts have said that you ARE NOT supposed to look at both of these. Learned Hand said "no plagiarist can excuse the wrong by showing how much of his work he did not pirate." And in the statutory fair use factors, factor three talks ONLY about "the amount and substantiality of the portion used in relation to the copyrighted work as a whole." So if you're discussing this kind of analysis on the exam, you might want to mention these countervailing "rules" that may or may not apply.

posted at: 07:44 | path: | permanent link to this entry

Independent and Dependent Claims
Q: If you have independent claim 1 comprising elements ABC and dependent claim 2 comprising of claim 1 plus additional elements DE. If your competitor makes ABCG, does the competitor literally infringe?

A: Yes. Claim 1 is literally infringed because the addition of G does not matter. Claim 2 is NOT literally infringed because D and E are missing.

posted at: 07:41 | path: | permanent link to this entry

Prosecution History Estoppel
Q: Are we responsible for prosecution history estoppel?

A: No. You weren't assigned the pages, and I gather that Professor Stacy mentioned it only in passing.

posted at: 07:38 | path: | permanent link to this entry

Tertium Quid
Q: In class during the review yesterday, you said that tertium quid can be inherently distinctive. However, from my notes during the semester, you said that tertium quid is protectable but you need secondary meaning. Can you clarify whether secondary meaning is required to find tertium quid or not?

A: At least two students asked me this, so I must've misspoke the first time we covered this. As I said in the review session, tertium quid can be inherently distinctive. Thus, for tertium quid, you may not need to show secondary meaning.

posted at: 07:37 | path: | permanent link to this entry