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Intellectual Property Issues for High Tech Companies
Vol 4 Issue 4 April 2004

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Can you dance on the head of a pin?

A Composition for Infringement.

Tip of the Month

IP Links of Interest

On-Line Patent Glossary


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Directions is a newsletter from TechRoadmap Inc. discussing intellectual property issues and ideas. We hope to stimulate you to examine and improve your own IP practices. (You can change your subscription options with the link at the bottom of the page)


A patent is like a contract with society. If you wish society to give you control of your invention for a couple of decades then you have to give something back to society. When you apply for a patent, the examiner (and then the courts) check to see if you have followed all the terms, conditions and rules required to get the patent.

The Court of Appeals for the Federal Circuit tries to balance society's and the patentee's needs, but what happens when a rule is arbitrary or when one rule conflicts with another? What happens when you choose a claim word whose "patentese" meaning is different from its ordinary meaning - and what happens when a competitor takes advantage of your mistake? Read A Composition for Infringement to find out.

  • Can you dance on the head of a pin?
  • For better or worse, patent claims are more art than science. TechRoadmap combines technical expertise with patent experience to function as your Director of Intellectual Property. We work closely with your patent attorney to vet your claims before they're tested in court.

    Review our services.

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  • A Composition for Infringement.

  • The Court of Appeals for the Federal Circuit ("CAFC") has a tough job. Simultaneously they want their decisions to be fair to everyone; fair for the patentee, fair for society, and fair to competitors. The essence of being fair is having a set of rules that everyone knows and which reward those who play by the rules and punish those who don't. If only it were that simple. What happens when a rule is arbitrary or when one rule conflicts with another? What happens to people who accidentally or innocently break a rule?

    In a recent decision the CAFC seems to be favoring common sense over common legal practice. Norian Corporation owned two patents directed to the repair of bones or teeth with certain rapidly setting calcium phosphate compositions; the first patent covered the method of using the compositions while the second patent covered a "kit" that included both the wet and dry components needed to make the compositions. Stryker Corporation, which had been selling the dry components, along with directions describing how to obtain the wet components and how to prepare the compositions, started marketing a BoneSource® kit that included both wet and dry components, directions, AND a spatula for mixing them. Needless to say, Norian sued Stryker for infringement.

    At the district court Norian lost badly. Not only was their patent on the composition invalidated but also the district court held that because the BoneSource® kit contained a spatula, and Norian's kit patent claims did not recite a spatula, the claims could not be infringed as a matter of law.

    The district court held that the claim wording "consisting of" is a term of patent convention meaning that the claimed invention contains only what is expressly set forth in the claim and that nothing can be included in the kit beyond what is claimed, and therefore that Stryker's kit cannot infringe as a matter of law. This claim problem could have been avoided (perhaps) if the wording "comprising" had been used, or "the chemical composition of said kit consisting of".

    On appeal it fell to the CAFC to perform the fine balancing act between being fair to the patentee (really, do we think adding a spatula avoids infringement), being fair to the competitor (if the rules say adding a spatula makes you non-infringing, then you act accordingly), and being fair to society (another rule is that words in a claim should generally have their plain and ordinary meaning - something everyone can understand).

    In this case, the CAFC ruled that adding a spatula to the mix made a composition for infringement. They declared that although "consists of" is a term of patent art, limiting the invention to the list of items mentioned, one cannot avoid infringement by throwing extraneous items into the mix. To the CAFC, the "kit" of the invention "consists of" only the types of components listed in the claim. That is, the court concludes that the patentee drafted the claim to cover kits that include the enumerated chemical components, but no other chemical components.  Adding a spatula, or the kitchen sink for that matter, doesn't affect infringement.

    Read this article on line.

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  • Tip of the Month
  • The Court of Appeals for the Federal Circuit seems inclined to do the "right" thing, but why risk your patent protection:
    • Look to Experience - Patent claims cannot be created by a novice. Choose a patent practitioner with experience, typically learned as an "apprentice".
    • Test, Review, Probe - Have someone knowledgeable work with your patent practitioner to check your claims for flaws. Every word in the claim should be there for a reason - and the reason should be helpful to you.
    • Stay Ahead of the Curve - Don't put off addressing claims issues. You and your patent practitioner are much more likely to miss something if you are up against a deadline. Find the resources to work issues early - and demand your patent practitioner do the same.
    On-line version of the Tip of the Month

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  • IP Links of Interest
  • US Patent office - Searchable database of all US Patents and, now, published patent applications.
    The Patent Cafe - an on-line source of interesting insights into current IP issues.
    EKMS Inc. - a company with whom we've worked that provides a range of IP management services including portfolio analysis, deal-making, and process improvement.

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  • On-Line Patent Glossary
  • Industry's Best Glossary
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    Newsletter copyright 2003, TechRoadmap, Inc. Nothing in the preceding articles should be construed as legal advice. TechRoadmap Inc. serves as an interface between companies and their legal counsel.


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