Patent Litigations that Shaped Their Industry

Transcription

1 Patent Litigations that Shaped Their Industry Carl A. Giordano

2 Agenda What is Patentable Conditions for Patents Inventions that Created Industries Power Communications Electronics Litigations that Shaped These Industries

3 Patents Legally Sanctioned Monopoly Exclusive right to prevent others from duplicating or slightly modifying an invention claimed in the patent document. Protection rights for issued patent is 20 years from date of filing. Prior to 1995, 17 years from date of issue Affords strongest protection for novel, non-obvious ideas or improvements.

4 Patentability What is Patentable any new and useful process, machine manufacture or composition of matter or any new and useful improvement thereof may obtain a patent therefor, subject to the conditions and requirements of this title. 35 USC 101. Conditions and Requirements Novel 35 U.S.C. 102 Non-Obvious 35 U.S.C. 103

5 Patentability (Cont d) Novelty A person shall be entitled to a patent UNLESS the invention was known or used by others; was sold or offered for sale one year prior to filing; the invention was patented or described in a publication; the invention was abandoned by the inventor; the invention was caused to be patented in a foreign country; the invention was described in a patent filed by another the invention was made by another.

6 Patentability (Cont d) Obvious A patent may NOT be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a person of ordinary skill in the art to which the subject matter pertains.

7 Patentability (Con t) Duty to Disclose Fully disclose invention so one skilled in that art may practice the invention (Enablement) Best Mode Best Mode of operation at time of application. Duty of Candor Provide material relevant to patentability.

8 Parts Written Description Description of the Invention Enablement, Best Mode Drawings Provided, if necessary, to explain invention. Claims Legal bounds of the invention.

9 Patenting/Inventing Everything that can be invented, has been invented. US Patent Office, 1899 Discovery is seeing what everybody else has seen and thinking what nobody else has thought. Syent-Gyorgi Axiom

10 100 Greatest Inventions* 1. Wheel 2. Light Bulb (Power) 4. Telephone 5. Television 6. Radio 14. Airplane 19. Colossus Computer (ENIAC) 26. Transistor (Integrated Circuit) 80. Laser *Source 100 Greatest Inventions of All Time, Tom Philban, Citadel Press, 2003

11 Patent Litigation A patent is an invitation to a lawsuit Thomas Edison(?)

12 Light Bulb US Patent No. 223,898 Filed 1879, issued 1879 to Edison Novelty - High Resistance carbonized filament Litigations John Swan v. Edison British court rules in favor of Swan Forms Edison-Swan Electric Co. Interference Sawyer and Man v. Edison Awarded Priority of Invention to John Sawyer

13 Light Bulb Light Bulb War Edison Electric Light Co. v. US Electric Lighting Co., (1891) aff d (1892) Case filed 1885 Upheld Edison Light Bulb Patent Westinghouse using different bulb Goedel Defense (Carbonized filament in 1854) Edison v. Beacon Co Junction against Beacon Co. Edison v. Columbia Incandescent Lamp Co Junction not issued against Columbia Edison v. Electric Manfact. Co. of Oconto 1893, aff d Junction against Electric Manfact. Co.

14 Power A/C - D/C Litigation Edison General Electric (Thomas Edison) Direct Current Problem - Limited Range of Power Distribution Westinghouse (George Westinghouse) Alternating Current Nicola Tesla Patents Transformer Polyphase Generator - USP 390,414 Polyphase Induction Motor Patent Sharing Agreement Westinghouse & General Electric Duopoly on Power

15 Telephone US Patent No. 174,465 Filed Feb. 14, 1976, issued March 7, 1976, to Bell Novelty - Undaltory Current E. Gray filed caveat on Feb. 14, 1976 Litigations Bell Telephone Co. v. Dowd (Western Union) Filed in 1879 Settled 1881 Bell inventor, Bell not to get into Telegraphy Telephone Case 6 lower court cases combined People s Telephone Co. v. American Bell Telephone Co. 126 US 231 (1887) U.S. v. Bell 128 US 315 (1888) Patents not obtained through fraud 20 years of litigation lawsuits 5 decisions by US Supreme Court

16 Television US Patent No. 1,773,980 Filed 1927, issued 1930 to Philo T. Farnsworth Novelty Electronic Scanning US Patent No. 2,141,059 Filed 1931, issued 1938 to Zworykin (assigned to RCA) Claims priority back to 1923 filing. McCreay v. Zworykin, 12 USPQ 229 (1932) support 1923 filing; Westinghouse v. RCA, 39 USPQ 206 (1938)- 059 patent issued. Litigations Interference #64027 (1935) Priority of Invention Awarded to Farnsworth First royalty paid by RCA RCA is in the business to collect royalties, not pay them

17 Television US Patent No. 2,091,439 Multipactor Osc. & Ampl. Filed Feb. 1936, issued 1937 to Philo T. Farnsworth Claim priority to USP No. 2,071,517 - Multipactor Phase Controller Filed May 1935, issued 1937 US Patent Appl. No. 97,722 Filed Aug assignee RCA Division of USP No. 2,121,067 Double Cathode Discharge Filed Oct. 1935, issued 1938 Litigations Interference #75091 (1935) Priority to Brown & Roberts Farnsworth v. Brown & Roberts, 35 USPQ 71 (1941) (CCPA) Affirmed priority to Brown & Roberts.

18 Radio (Wireless Communications) US Patent Nos. 586,193; Re11913; 763,772 Filed 1896, Issued 1897; Issued 1901; filed 1900, issued 1904 Novelty- resonant freq. between transmit/receive (tuning). Litigation Marconi v. DeForest, 138 F. 657 and Marconi v. Nat. Sign., 213 F. 815 Marconi Patents upheld Marconi v. U.S., 27 USPQ 234 (1935), Aff d. 57 USPQ 473 (1943) Case filed 1915 Marconi Patents invalid Tesla, Published Paper 1883 Tesla, USP No. 645,576, filed 1897, issued 1900; Lodge, USP No. 609,154, filed 1898, issued 1989; Stone, USP No. 714,756, filed 1900, issued 1902

19 Radio (Wireless Communications) Side Issue US Patent No. 803,684 Filed 1905, Issued 1905 to Fleming Novelty Diode Patent held invalid Improper Disclosure Prior teaching Edison recorded Edison Effect

20 Radio (Triode) US Patent No. 878,832 to De Forest Filed 1906, issued 1908, expired 1925 Novelty Triode US Patent No. 1,558,436 to Langmuir Litigation Filed 1913, issued 1925 Novelty High Vacuum Triode De Forest Radio v. G.E., 7 USPQ 67 (3th Cir.) (1929), aff d. 8 USPQ 342 (3th Cir.) (1930), rev d. 9 USPQ 297 (1931). 1,558,436 patent Invalid High vacuum known in the art.

21 Radio (Regeneration/Feedback Circuit) US Patent Nos. 1,507,016 (Osc); 1,507,017(Feedback) Filed 1915; 1914, issued 1924 to L. De Forest US Patent No. 1,113,149 Filed 1913, issued 1914 to E. Armstrong Litigations Interferences (De Forest, Armstrong, Langmuir, Meissner) Interferences filed 1918 Priority of Invention awarded to Armstrong (1923) De Forest v. Meissner, 54 App. D. C. 391, 298 Fed (1924) Priority awarded to De Forest patents granted

22 Radio (Regeneration/Feedback Circuit) Armstrong v. De Forest Radio Telephone, 279 Fed. 445, aff d. 280 Fed. 584 (2 nd Cir.) (1922) USP 1,113,149 Priority of Invention Awarded to Armstrong Deforest Radio v. Westinghouse Electric, 13 Fed.2d 1014, (1926), aff d., 21 F. (2d) 918 (3 th Cir.), aff d 278 U.S. 562 (SCt) Case Filed 1924 Awarded Priority to De Forest RCA v. Radio Electronics Lab., 14 USPQ 305 (1932), rev d. 19 USPQ 111 (2 nd Cir.) (1933), rev d., 21 USPQ 353 (SCt) (1934) Affirmed Priority to De Forest Deforest may not know principles of oscillation but it could be

23 Radio (FM Modulation) US Patent Nos. 1,941,069; 1,941,066; and Re21,660 Filed 1930, 1940, issued 1933, 1933, 1940 Litigations Armstrong v. RCA, Filed in 1948, settled 1954 Armstrong v. Emerson, 123 USPQ 133 (1959) Armstrong Patents held valid, Settled 1959 Armstrong v. Motorola, Inc. 141 USPQ 862 (1964), aff d 152 USPQ 535 (1967) Case filed 1954 Armstrong Patents valid and enforceable

24 Airplane US Patent No. 821,393 Litigation Filed 1903, Issued 1906; Wright Brothers Novelty - Flexible Wing Wright Co. v. Herring-Curtis Co., 177 F. 257 (1910), aff d. 211 F. 652 (1914) filed 1908 Patents valid and infringed Curtis and Wright Aircraft Companies merged 1929

25 ENIAC US Patent No. 3,120,606 (+ 30 other patents) Litigations Filed 6/26/47, issued 2/4/64 to Eckert, Mauchly Honeywell v. Sperry Rand 180 USPQ 673 (1973) Filed 1967 Prior 1962 decision upheld ENIAC patent Decision Patent Invalid Prior Use before critical date use , On-Sale before critical date surrendered custody to Gov t 1945 Derivation - Dr. John V. Atanosoff (ABC Computer) Publication First Draft Final Report June 30, 1946 Improperly broadened claims to capture new technology

26 Integrated Circuit US Patent Appl. No 169,557 Filed 1962 Claim Priority to USP No. 3,138,743 Filed 2/6/1959, issued 1964 US Patent No. 2,981,877 Filed 7/30/1959, issued 1961 to Robert Noyce (Fairchild) Litigation Interference #92841 (1964) Priority awarded to Kilby Noyce v. Kilby, 163 USPQ 550 (1969) Held Priority to Noyce 743 patent provided no support for 557 application Patent Sharing Agreement (1966)

27 Single Chip Computer US Patent No ,515 Filed 6/17/1988, issued 1990 to G.P. Hyatt Claim priority back to 1969 filing US Patent Appl. No. 07/473,541 Inventor-Boone, (Assignee Texas Instruments, Inc.) Claim priority back to 1970 filing Amended claims in 1991 to cause interference Litigation Interference #102, USPQ 139 (1993) Priority awarded to Boone Hyatt 1969 filing not enabling Hyatt v. Boone, 47 USPQ 1129 (1998) Aff d. Priority to Boone Boone not entitled to patent

28 Laser US Patent Nos. 4,053, 845; 4,161,436 Filed 1959, issued 1977, 1979 to Gordon Gould Litigation Gould v. Schawlow, 150 USPQ 634 (1966) Priority awarded 1958 filing of Schawlow, Townes (USP 2,929,922 (Maser)) Did not accept 1957 notebook entries Did not state sidewalls optically transparent Gould v. Hellwarth, 176 USPQ 515 (1973) Priority awarded 1961 filing of Hellwart 1959 filing not enabling Gould v. Control Laser 200 USPQ 693 (1978), aff d. 213 USPQ 1120 (1981), aff d. 217 USPQ 985 (1983) filed 1977 Patent valid and infringed Patlex Corp. v. Mossinghoff, 225 USPQ 243 (1983), rev d 226 USPQ 985 (1985) Unconstitutional Procedure for Patent Reexamination

29 Summary Patent Litigation Expensive; Protracted; and Unpredictable. No man has any business connected with this work who cannot stand grief. Joseph Meredith (Project Engineer for 7-mile bridge to Key West)

30 Summary Bullet Proofing Patents Have Strategy for Patent Development; Clearly identify novelty; Accurately Record Inventive Concept; Timely Filing; and Provide for Full Disclosure. File Early, File Often

31 The information contained in this presentation is intended to supply general information. It is not intended to constitute legal advice on any subject matter. The presentation is not intended to be advertising or solicitation. The information provided is general and does not constitute a legal opinion on any specific facts or circumstances. Every attempts to ensure the accuracy of the information, but cannot guarantee that all of the information is accurate.