DOCSLIB.ORG

Unifying Markman and Warner-Jenkinson: a Revised Approach to the Doctrine of Equivalents

Total Page：16

File Type：pdf, Size：1020Kb

Download full-text PDF Read full-text
Unifying Markman and Warner-Jenkinson: a Revised Approach to the Doctrine of Equivalents Harvard Journal of Law & Technology Volume 11, Number 1 Fall 1997 UNIFYING MARKMAN AND WARNER-JENKINSON: A REVISED APPROACH TO THE DOCTRINE OF EQUIVALENTS William R. Zimmerman" TABLE OF CONTENTS I. INTRODUCTION .................................... 186 II. MARKMAN V. WESTVIEWINSTRUMENTS, INC. ............... 187 A. The Markman Deciston and the Supporting Precedent .. 187 1. The District Court ........................... 187 2. The Federal Circuit .......................... 188 3. The Supreme Court .......................... 195 B. Application of the Markman Framework ............. 196 1. The District Courts' Application of Markman ..... 196 2. The Federal Circuit's Application of Markman .... 204 C. Analysis of the Markman Decision and Subsequent Cases ................... ....................... 211 III. WARNER-JENKINSONCO., INC. ~'. HILTON DAVIS CO ..... .... 218 A. The Wamer-Jenkinson Decision and the Supporting Precedent ..................................... 218 1. The District Court ........................... 218 2. The Federal Circuit .......................... 219 3; The Supreme Court .......................... 228 B. Application of the Warner-Jenkinson Framework ...... 234 1. The District Courts' Application of Warner-Jenkinson ........................... 234 2. The Federai Circuit's Application of Warner-Jenkinson ... ........................ 238 C. Analysis of the Wamer-Jcnkinson Decision and Subsequent Cases ................................ 243 k * J.D., 1997, Harvard Law School. The Author is a clerk to Judge Alvin A. Schall, United States Court of Appeals for the Federal Circuit. The opinions expressed in this note are solely those of the Author and do not reflect the opinions of Judge Schall o:r the Federal Circuit. The Author gratefully acknowledges Professor Lloyd Weinreb, H~arvard Law School, for his contributions and support. 186 Harvard Journal of Law & Technology [Vol. 11 IV. INCONSISTENCIESBETWEEN THE MARKMANAND WARNER- JENKINSON FRAMEWORKS: THE ROLES OF JUDGE AND JURY . 253 V. A REVISED APPROACH TO THE DOCTRINE OF EQUIVALENTS . 259 VI. CONCLUSION ...................................... 267 I. INTRODUCTION Two recent patent decisions by the United States Supreme Court, addressing claim construction and the doctrine of equivalents, respec- tively, have the potential to reshape several facets of patent practice, especially patent prosecution and litigation. I In Markman v. Westview Instruments, Inc., 2 the Court held that construing the claims of a patent is a matter of law exclusively within the province of the court) In Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 4 the Court reaffirmed the vitality of the doctrine of equivalents and reformulated the method of decision for such casesJ The Court's decisions in these cases create divergent and inconsistent analyses for literal infringement and infringement under the doctrine of equivalents. By analyzing the decisions in these eases and the precedents on which they relied, the inconsistencies between inquiries of literal infringement and infringe- ment through the doctrine of equivalents become evident. A possible resolution of these problems involves a two-step reform. First, the courts must revise the Markman framework to allow a more uniform application at the district and appellate court levels. Second, the courts must also revise the doctrine of equivalents to create defined roles for the judge and jury similar to those in the literal infringement inquiry. This two-step process has the potential to remove the inconsistencies created by the Marlonan and Warner-Jenkinson decisions. I. See Thomas L. Creel, Proving Patent Infringement, 453 PLI/PAT311,315-16 (1996) (asserting that Markman and Warner-Jenkinson fundamentallychanged patent litigation by changing the standards for infringement and the method by which practitioners prove infringement);see also LawrenceM. Sung, Patent Law Decisions of the United States Court ofAppeals for the Federal Circuit, 45 AM. U. L. REV. 1529, 1534 (1996) (showing the pronounced effect .of Markman and Hilton Davis on patent practice). 2. II6S. Ct. 1384(1996). 3. See id. at 1389. 4. li7S. Ct. 1040(1997). 5. See id. at 1045. No. 1] Markman and Warner-Jenkinson 187 Part II reviews the Markman decision and the precedents used to support the decision; surveys the application of the Markman framework by both district courts and the United States Court of Appeals for the Federal Circuit, noting the various dilemmas facing these courts and litigants; and asserts the soundness of the Markman decision, while suggesting methods for alleviating the problems created by the current application of the Markman framework. Part III reviews the Warner- Jenkinson decision and the precedents used to support the decision; presents the application of the Warner-Jenkinson framework by both district courts and the United States Court of Appeals for the Federal Circuit; and assesses the Federal Circuit and Supreme Court decisions and the issues presented. Part IV presents the inconsistencies between the Markman and Warner-Jenkinson frameworks, and addresses the various policy considerations and the possible effects on patent practice crucial to any resolution of the divergence between these two decisions. Finally, Part V proposes a revised approach to the doctrine of equiva- lents designed to harmonize the inquiries used for literal infringement and infringement under the doctrine of equivalents. By making the doctrine of equivalents a matter of law for the judge, courts can reduce the confusion createdby the current system with less impact on patent practice than has resulted under the current Warner-Jenkinson frame- work. II. MARKMAN V. WESTVIEW INSTRUMENTS, INC. A. The Markrnan Decision and the Supporting Precedent 1. The District Court Herbert Markman and Positek, Inc. sued Westview Instruments, Inc. and Althon Enterprises, Inc. alleging literal infringement and infringe- ment under the doctrine of equivalents of United States Reissue Patent No. 33,054 for an inventory control device used by laundries and dry cleaners. 6 The court charged the jury with interpreting the meaning of the claims at issue, and the jury returned general interrogatories finding 6. The claimsat issue are containedin the districtcourt opinion. See Markmanv. Westview Instruments,Inc., 772 F. Supp. 1535, 1536 (E.D. Pa. 1991), aft'din bane, 52 F.3d 967 (Fed. Cir. 1995), aft'd, 116 S. CL 1384 (1996). The patent in suit was a reissue of U.S. Patent No. 4,550,246. See Markman, 52 F.3d at 971. The jury's claim constructionwas not explicit in the general interrogatoriesthey returned. 188 Harvard Journal of Law & Technology [Vol. 11 infringement under their claim construction. 7 On September 30, 1991, Judge Katz granted the defendants' motion for judgment as a matter of law ("JMOL"), finding that the accused device did not infringe Markman's patent either literally or equivalently. 8 The court also noted that "claim construction is a matter of law for the court. ''9 The court stated that a "mere dispute concerning the meaning of a term does not itself create a genuine issue of material fact. '')° The court concluded that plaintiffs' experts 1~ attempted to give unusual or novel meanings to several terms in the patent, t2 These meanings were contrary to the customary meanings of these terms and the "obvious meaning intended by the patentee, determined from the specifications, the drawings and the file histories of the original patent mid the patent-in-suit. ''13 2. The Federal Circuit Markman and Positek, Inc, appealed to the Federal Circuit. ~4 On November 15, 1993, the Federal Circuit ordered sua sponte that the appeal be reheard in bane, after a panel of that court had already heard oral argument. Is in an opinion by Chief Judge Archer, '6 the court affirmed the judgment of the district court, concluding that the interpreta- tion of patent claims, an objective inquiry, is a matter of law exclusively _)'or the court. ~7 7. See Markman, 52 F.3d. at 973. 8. See Markman, 772 F. Supp. at 1538. 9. Id. at 1536 (citation omitted). 10. ld. (quoting Beeton Dickinson & Co. v. C.IL Bard, Inc., 922 F.2d 792, 797 (Fed. Cir. 1990)). 11. Markman presented testimony from an expert in the technology, the inventor, and a patent expert. Both the inventor and the patent expert testified as to the meaning of the claim language. See Markman, 52 F.3d at 973. 12. See Markman, 772 F. Supp. at 1536 (debating the terms "inventory," "report,~' and "attached to"). 13. ld. at 1537. 14. The Federal Circuit was created on October 1, 1982, and has exehisive appdlat¢ jurisdiction in patent cases. See ROBERT L. HARMON, PATENTSAND THE FEDERAL CIRCUIT ix (3d ed. 1994). The court was to create uniformity in patent decisions and foster innovation. See Markman, 116 S. Ct. 1384, 1396 (1996) (citation omitted). 15. See Markman, 52 F.3d at 970 n.l. 16. See id. at 970 (Judges Rich, Nies, Michel, Plager, Lourie, Clevcnger, and Sehall joined the opinion, while Judge Bryson did not participate in the disposition). 17. See id. at 986. The court did not address whether the construction of means- plus-function claims under 35 U.S.C. § 112(6) (1994) is a question of law or fact. See it. at 977 n.8. No. 1 ] Markman and Warner-Jenkinson 189 The Federal Circuit reasoned that reviewing "a grant of JMOL requires careful distinction between fact and law, "'n because the assessment of factual findings occurs under the substantial evidence standard, while matters of law are reviewed de novo) 9 The court then attempted to dissect
Load more

Recommended publications
  • In the United States District Court for the District of Delaware
    IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE SHURE INCORPORATED and ) SHURE ACQUISITION HOLDINGS, INC., ) ) Plaintiffs, ) ) v. ) Civil Action No. 19-1343-RGA-CJB ) CLEARONE, INC., ) ) Defendant. ) REPORT AND RECOMMENDATION In this action filed by Plaintiffs Shure, Inc. and Shure Acquisition Holdings, Inc. (collectively “Plaintiffs” or “Shure”) against Defendant ClearOne, Inc. (“Defendant” or “ClearOne”), presently before the Court is the matter of claim construction. The Court recommends that the District Court adopt the construction set forth below. I. BACKGROUND Shure and ClearOne are competitors in the installed audio-conferencing market. (D.I. 64 at ¶¶ 14-15; see also D.I. 22 at 1; D.I. 40 at 1) On July 18, 2019, Shure filed the instant action against ClearOne in this Court. (D.I. 1)1 On November 19, 2019, Shure filed the operative Second Amended Complaint (“SAC”), in which it first asserted the patent at issue in this Report and Recommendation, United States Design Patent No. D865,723 (the “'723 patent”). (D.I. 64) The '723 patent is entitled “Array Microphone Assembly” and it issued on November 5, 2019. (D.I. 239, ex. 1 (hereinafter, “'723 patent”)) It is a continuation of a parent application filed on April 30, 2015, which matured into U.S. Patent No. 9,565,493 (the “'493 patent”). (Id. 1 The parties have also been involved in litigation against each other in the United States District Court for the Northern District of Illinois since April 2017. (See D.I. 155 at 2-3) at 1-2; id., ex. 4 at 1 (hereinafter, “'493 patent”))2 Further details concerning the '723 patent will be addressed below in Section III.
    [Show full text]
  • The “Article of Manufacture” Today
    Harvard Journal of Law & Technology Volume 31, Number 2 Spring 2018 THE “ARTICLE OF MANUFACTURE” TODAY Sarah Burstein* TABLE OF CONTENTS I. INTRODUCTION .............................................................................. 782 II. BACKGROUND .............................................................................. 785 A. Design Patentable Subject Matter ............................................ 785 B. Design Patent Claiming & Infringement ................................. 786 C. Remedies for Design Patent Infringement ............................... 788 III. WHAT IS THE “ARTICLE OF MANUFACTURE” IN § 289?.............. 789 A. The Apple/Nordock Rule .......................................................... 791 B. The Supreme Court Weighs In ................................................. 791 IV. WHY COURTS SHOULD NOT ADOPT THE GOVERNMENT’S APPROACH .................................................................................... 793 A. The Test .................................................................................... 794 1. The Underlying Premise ........................................................ 795 2. The Factors ............................................................................ 797 B. The Nature of the Inquiry ......................................................... 802 1. A Case-by-Case Inquiry? ...................................................... 802 2. Is it a Question of Fact or Law? ............................................ 807 C. The Burden of Proof................................................................
    [Show full text]
  • United States District Court Middle District of Tennessee Nashville Division
    UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF TENNESSEE NASHVILLE DIVISION TUITIONFUND, LLC, ) ) Plaintiff, ) ) v. ) No. 3:11-00069 ) Judge Sharp SUNTRUST BANKS, INC. et al., ) ) Defendants. ) ORDER Pending before the Court is a Motion to Stay Pending Inter Partes Reexamination (Docket No. 207) filed by Defendants SunTrust Banks, Inc., SunTrust Bank, Vesdia Corporation, and Cartera Commerce, Inc. (collectively the “Vesdia Defendants”), to which Plaintiff Tuitionfund LLC has responded in opposition (Docket No. 211). The Court heard oral arguments on the motion on September 24, 2012, after which the Vesdia Defendants filed a Sealed Supplement Brief in further support of their request for a stay. For the following reasons, the Motion to Stay will be denied. In a related case, TuitionFund LLC v. First Horizon Nat’l Corp. et al., No. 3:11-0852 (“First Horizon”), the Court was presented with a similar request for a stay pending reexamination of the patents in suit. In denying the request, the Court wrote: In determining whether to exercise its discretion to impose a stay pending the USPTO’s reexamination, Courts primarily consider three factors: “(1) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non-moving party; (2) whether a stay will simplify the issues in question and trial of the case; and (3) whether discovery is complete and whether a trial date has been set.” Protective Indus., Inc. v. Ratermann Mfg., Inc., No. 3:10-1033, 2010 WL 5391525 at *2 (M.D. Tenn. Dec. 22, 2010) (internal quotation marks omitted) (quoting Lincoln Electric v. Miller Electric Mfg.
    [Show full text]
  • In the United States District Court for the District of Kansas
    Case 6:17-cv-01217-EFM-ADM Document 37 Filed 02/13/19 Page 1 of 8 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF KANSAS LOGANTREE LP, Plaintiff, vs. Case No. 17-1217-EFM-KGS GARMIN INTERNATIONAL, INC. and GARMIN USA, INC., Defendants. MEMORANDUM AND ORDER Defendants Garmin International, Inc., and Garmin USA, Inc. (collectively “Garmin”) move this Court for a stay pending inter partes review (“IPR”) of the patent in suit. In addition, Garmin moves the Court for an intra-district transfer for trial to Kanas City, Kansas. As explained below, the Court grants Garmin’s motion to stay the case until the Patent Trial and Appeal Board (“PTAB”) issues its decisions regarding Garmin’s IPRs. Furthermore, because the PTAB’s decision could simplify the issues in the case such that Plaintiff LoganTree LP no longer has a claim for infringement, the Court denies Garmin’s motion for intra-district transfer for trial without prejudice. I. Factual and Procedural Background Plaintiff LoganTree LP filed this patent infringement suit on August 23, 2017, alleging that Garmin’s accelerometer-based activity trackers infringe its U.S. Patent No. 6,059,576 (the Case 6:17-cv-01217-EFM-ADM Document 37 Filed 02/13/19 Page 2 of 8 ‘576 Patent). In February 2018, Garmin filed two petitions for IPR with the PTAB covering 52 of the 185 claims of the ‘576 Patent. LoganTree did not file a Patent Owner Preliminary Response, and on August 30, 2018, the PTAB instituted the IPRs on all grounds. The PTAB is expected to complete the proceedings and issue its final decisions by August 30, 2019.
    [Show full text]
  • Nova Law Review
    Nova Law Review Volume 22, Issue 3 1998 Article 9 The Doctrine of Equivalents after Hilton Davis and Markman, and a Proposal for Further Clarification Werner Stemer∗ ∗ Copyright c 1998 by the authors. Nova Law Review is produced by The Berkeley Electronic Press (bepress). https://nsuworks.nova.edu/nlr The Doctrine of Equivalents after Hilton Davis and Markman, and a Proposal for Further Clarification Werner Stemer Abstract In March 1997, the United States Supreme Court issued its decision in Warner-Jenkinson Co. v. Hilton Davis Chemical Co. (”Hilton Davis I/,)’ which had been eagerly anticipated in the intellectual property community. KEYWORDS: disclosure, issues, contract Stemer: The Doctrine of Equivalents after Hilton Davis and Markman, and a The Doctrine of Equivalents after Hilton Davis and Markman, and a Proposal for Further Clarification TABLE OF CONTENTS I. INTRODUCTION .......................................................................... 784 II. PRELIMINARIES ......................................................................... 784 A. The Patent Contract............................................................ 785 B. The Patent Claim ................................................................ 788 C. The EnablingDisclosure .................................................... 791 D.After the Grant-Reissue ...................................................... 792 E. Infringement........................................................................ 793 III. THE DOCTRINE OF EQUIVALENTS ............................................
    [Show full text]
  • Process Considerations in the Age of Markman and Mantras
    Case Western Reserve University School of Law Scholarly Commons Faculty Publications 2001 Process Considerations in the Age of Markman and Mantras Craig Allen Nard Case Western University School of Law, [email protected] Follow this and additional works at: https://scholarlycommons.law.case.edu/faculty_publications Part of the Intellectual Property Law Commons Repository Citation Nard, Craig Allen, "Process Considerations in the Age of Markman and Mantras" (2001). Faculty Publications. 197. https://scholarlycommons.law.case.edu/faculty_publications/197 This Article is brought to you for free and open access by Case Western Reserve University School of Law Scholarly Commons. It has been accepted for inclusion in Faculty Publications by an authorized administrator of Case Western Reserve University School of Law Scholarly Commons. PROCESS CONSIDERATIONS IN THE AGE OF MARKMAN AND MANTRAS Craig Allen Nard* Professor Nard argues that although notions of uniformity and certainty have always been part of patent law parlance, since the Fed­ eral Circuit's decision in Markman v. Westview Instruments, Inc., these noble ends have achieved mantra status. In Markman, the Fed­ eral Circuit, in the name of uniformity and certainty, characterized claim interpretation as a question of law subject to de novo review, thus positioning itself as the arbiter of claim meaning. Although Pro­ fessor Nard disagrees with this characterization and asserts that uni­ formity and certainty are ill-served by such, he concedes that it is here to stay, at least for the foreseeable future. Therefore, Professor Nard addresses Markman on its own terms. Consequently, to achieve uni­ formity and certainty in the context of de novo review, he suggests a proposal to encourage the Federal Circuit to accept interlocutory ap­ peals of district court claim interpretations or so-called Markman hearings.
    [Show full text]
  • Practical Strategies for Markman Hearings Amid COVID-19
    Practical Strategies For Markman Hearings Amid COVID-19 By Edward Tulin (May 15, 2020, 5:16 PM EDT) It has now been nearly a quarter century since the U.S. Supreme Court held in Markman v. Westview Instruments Inc. that "the construction of a patent, including the terms of art within the claims, is exclusively within the province of the court."[1] While the court was unequivocal on that key point, it left open the question of how to go about completing the task of claim construction, and the U.S. Court of Appeals for the Federal Circuit later declined to enumerate required Markman procedures.[2] Over the last 25 years, district courts have thus developed a variety of approaches to claim construction, and while the most commonly used strategy Edward Tulin is to hold a formal Markman hearing prior to trial, when and how patent claims are construed has varied greatly. As the COVID-19 pandemic has swept across the U.S., it has introduced a host of challenges for patent litigators, but with these new difficulties comes an opportunity to revisit options and strategies for Markman proceedings, particularly given that courts have expressed openness to new and innovative ways to keep patent litigation moving forward. Outlined below are a number of strategic considerations relating to whether, when and to what extent to hold a Markman hearing that are ripe for reassessment in these unprecedented times. Is a Markman hearing necessary or desirable? In venues where patent infringement suits are most likely to be filed, including the U.S.
    [Show full text]
  • Interplay of Markman Hearing Claim Construction and PTO Claim Construction During Reexamination and Concurrent Litigation
    THE UNIVERSITY OF TEXAS SCHOOL OF LAW 6TH ANNUAL ADVANCED PATENT LAW INSTITUTE Interplay of Markman Hearing Claim Construction and PTO Claim Construction During Reexamination And Concurrent Litigation January 20 – 21, 2011 Alexandria, Virginia Kenneth R. Adamo* JONES DAY North Point 901 Lakeside Avenue Cleveland, Ohio 44114-1116 (216) 586-7120 2727 N. Harwood Street Dallas, Texas 75201 (214) 969-4856 E-mail: kradamo @ jonesday.com * Member Illinois, New York, Ohio and Texas Bars. This paper reflects only the present considerations and views of the authors, which should not be attributed to Jones Day, or to any of their or its clients (former, present or future). © 2011 Kenneth R. Adamo. All Rights Reserved. INTRODUCTION When concurrent, parallel-in-time reexamination proceedings and patent infringement litigation is ongoing, the effects of claim construction occurring during the reexamination proceeding on the litigation, and a Markman/Phillips ruling/decision in the litigation on the reexamination proceeding, may require consideration. A claim construction in the reexamination proceeding in the PTO is part of the prosecution history; as such, it is intrinsic evidence which Phillips requires be considered by the trial court during the Markman/Phillips construction process, irrespective of the other differences between patent reexamination and the litigation process (burdens of proof and the like). Timing issues might, however, present challenges to efficient consideration in a particular case. A trial court claim construction through Markman as applied per Phillips is not binding in the reexamination proceeding. In re Trans Texas Holdings Corp., 498 F.3d 1290 (Fed. Cir. 2007). Lack of “binding” effect, however, does not end the inquiry, nor demarcate what consideration the PTO may/should give that Markman/Phillips ruling/decision in the reexamination proceedings.
    [Show full text]
  • The Proper Appellate Standard of Review for PTAB Factual Findings Made Incidental to Claim Construction
    Catholic University Law Review Volume 67 Issue 1 Winter 2018 Article 9 3-20-2018 The Proper Appellate Standard of Review for PTAB Factual Findings Made Incidental to Claim Construction A. David Brzozowski II Follow this and additional works at: https://scholarship.law.edu/lawreview Part of the Administrative Law Commons, and the Civil Procedure Commons Recommended Citation A. David Brzozowski II, The Proper Appellate Standard of Review for PTAB Factual Findings Made Incidental to Claim Construction, 67 Cath. U. L. Rev. 165 (2018). Available at: https://scholarship.law.edu/lawreview/vol67/iss1/9 This Comments is brought to you for free and open access by CUA Law Scholarship Repository. It has been accepted for inclusion in Catholic University Law Review by an authorized editor of CUA Law Scholarship Repository. For more information, please contact [email protected]. The Proper Appellate Standard of Review for PTAB Factual Findings Made Incidental to Claim Construction Cover Page Footnote J.D. Candidate, May 2018, The Catholic University of America, Columbus School of Law; B.A. 2012, The University of Connecticut. The author wishes to thank the professors and alumni of the Catholic University who provided their support and guidance. The author also wishes to thank the Catholic University Law Review staff members and editors for their hard work during the editing of this Comment. This comments is available in Catholic University Law Review: https://scholarship.law.edu/lawreview/vol67/iss1/9 THE PROPER APPELLATE STANDARD OF REVIEW FOR PTAB FACTUAL FINDINGS MADE INCIDENTAL TO CLAIM CONSTRUCTION A. David Brzozowski II+ In 2011, President Obama signed the America Invents Act (AIA), enacting the most significant changes to U.S.
    [Show full text]
  • House Judiciary Mark-Up Transcript
    HJU104000 PAGE 1 1 ALDERSON REPORTING COMPANY 2 HJU104000 3 MARKUP OF H.R. 1249, THE AMERICA INVENTS ACT 4 Thursday, April 14, 2011 5 House of Representatives 6 Committee on the Judiciary 7 Washington, D.C. 8 The committee met, pursuant to call, at 10:35 a.m., in 9 Room 2141, Rayburn Office Building, Hon. Lamar Smith 10 [chairman of the committee] presiding. 11 Present: Representatives Smith, Sensenbrenner, Coble, 12 Gallegly, Goodlatte, Lungren, Chabot, Issa, Pence, Forbes, 13 King, Franks, Gohmert, Jordan, Poe, Chaffetz, Griffin, 14 Marino, Gowdy, Ross, Adams, Quayle, Conyers, Berman, Nadler, 15 Scott, Watt, Lofgren, Jackson Lee, Waters, Cohen, Johnson, 16 Pierluisi, Quigley, Chu, Deutch, Sanchez, and Wasserman 17 Schultz. HJU104000 PAGE 2 18 Staff present: Sean McLaughlin, Chief of Staff; 19 Allison Halatei, Deputy Chief of Staff/Parliamentarian; 20 Sarah Kish, Clerk; Perry Apelbaum, Minority Staff Director; 21 and Chrystal Sheppard. 22 HJU104000 PAGE 3 23 Chairman Smith. [Presiding] The Judiciary Committee 24 will come to order. 25 Without objection, the chair is authorized to declare 26 recesses of the committee at any time. 27 The clerk will call the role to establish a quorum. 28 Ms. Kish. Mr. Smith? 29 Chairman Smith. Present 30 Ms. Kish. Mr. Sensenbrenner? 31 Mr. Sensenbrenner. Here. 32 Ms. Kish. Mr. Coble? 33 Mr. Gallegly? 34 Mr. Goodlatte? 35 Mr. Lungren? 36 Mr. Chabot? 37 Mr. Issa? 38 Mr. Pence? 39 Mr. Forbes? 40 Mr. King? 41 Mr. Franks? 42 Mr. Gohmert? 43 Mr. Gohmert. Here 44 Ms. Kish. Mr. Jordan? HJU104000 PAGE 4 45 Mr. Poe? 46 Mr.
    [Show full text]
  • Extending Issue Preclusion to Claim Construction During Reexamination of Previously Litigated Patents
    Loyola of Los Angeles Law Review Volume 44 Number 2 Winter 2011 - Symposium: Rebooting California: Initiatives, Conventions & Article 14 Government Reform 1-1-2011 Preventing Inequity: Extending Issue Preclusion to Claim Construction During Reexamination of Previously Litigated Patents Lauren Drake Loyola Law School Los Angeles, [email protected] Follow this and additional works at: https://digitalcommons.lmu.edu/llr Part of the Law Commons Recommended Citation Lauren Drake, Preventing Inequity: Extending Issue Preclusion to Claim Construction During Reexamination of Previously Litigated Patents, 44 Loy. L.A. L. Rev. 749 (2011). Available at: https://digitalcommons.lmu.edu/llr/vol44/iss2/14 This Notes and Comments is brought to you for free and open access by the Law Reviews at Digital Commons @ Loyola Marymount University and Loyola Law School. It has been accepted for inclusion in Loyola of Los Angeles Law Review by an authorized administrator of Digital Commons@Loyola Marymount University and Loyola Law School. For more information, please contact [email protected]. PREVENTING INEQUITY: EXTENDING ISSUE PRECLUSION TO CLAIM CONSTRUCTION DURING REEXAMINATION OF PREVIOUSLY LITIGATED PATENTS Lauren Drake* This Note explores the uncertainty and inequity created through the dichotomy approach to claim interpretation in the context of reexamination of previously litigated patents. To address this uncertainty and inequity, this Note argues that the claim interpretation determined in a Markman hearing should be binding on the U.S. Patent & Trademark Office (PTO) during reexamination of a previously litigated patent as a form of issue preclusion. To accomplish this result, this Note proposes three changes to current patent practice: first, the definition of “party” must be expanded to include the PTO; second, the PTO must abandon the broadest reasonable interpretation standard of claim interpretation when reexamining previously litigated patents; and third, Article III courts must deny motions to stay for the purpose of reexaminations.
    [Show full text]
  • (Non)Application of Issue Preclusion to Patent Claim Construction Daniel R
    NORTH CAROLINA LAW REVIEW Volume 89 | Number 1 Article 9 12-1-2010 Equitable Uniformity: Finding a Workable Solution to the (Non)Application of Issue Preclusion to Patent Claim Construction Daniel R. Rose Follow this and additional works at: http://scholarship.law.unc.edu/nclr Part of the Law Commons Recommended Citation Daniel R. Rose, Equitable Uniformity: Finding a Workable Solution to the (Non)Application of Issue Preclusion to Patent Claim Construction, 89 N.C. L. Rev. 274 (2010). Available at: http://scholarship.law.unc.edu/nclr/vol89/iss1/9 This Comments is brought to you for free and open access by Carolina Law Scholarship Repository. It has been accepted for inclusion in North Carolina Law Review by an authorized administrator of Carolina Law Scholarship Repository. For more information, please contact [email protected]. Equitable Uniformity: Finding a Workable Solution to the (Non) Application of Issue Preclusion to Patent Claim Construction* INTRODUCTION .......................................... 275 I. THE MARKMAN DECISION, MARKMAN HEARINGS, AND THE PROCESS OF CLAIM CONSTRUCTION ........ .......... 281 A. The Law of Markman ..................... ..... 281 B. Policy ConsiderationsMotivating Markman......................286 II. THE DOCTRINE OF ISSUE PRECLUSION ............ ........... 289 A. First CircuitLaw of Issue Preclusion ............... 290 B. Ninth Circuit Law of Issue Preclusion .......... ......... 291 C. Fifth CircuitLaw of Issue Preclusion ................ 292 D. Tenth CircuitLaw of Issue Preclusion.......... ......... 293 III. DISTRICT SPLIT: To APPLY OR NOT TO APPLY ISSUE PRECLUSION ............................... ..... 295 A. Background. ............................ ...... 295 B. Amgen, Inc. v. F. Hoffman-LaRoche, Ltd. (Applying Issue Preclusion) .............................. 299 C. Smith & Nephew, Inc. v. Arthrex, Inc. (Applying Issue Preclusion) .................................. 302 D. Paltalk Holdings, Inc. v. Microsoft Corp. (Not Applying Issue Preclusion) ................
    [Show full text]