tag:blogger.com,1999:blog-5574479.post4588607714663261509..comments2024-03-28T13:45:42.289+00:00Comments on The IPKat: Prosecution history - as relevant as any inventor evidence? Verónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger11125tag:blogger.com,1999:blog-5574479.post-39432156863340634482018-01-22T22:05:33.914+00:002018-01-22T22:05:33.914+00:00Thanks for that, Acoom. But it's not just me....Thanks for that, Acoom. But it's not just me. I got the "interesting" idea from Lord Neuberger's opinion in Activis. He started it, not me! MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-13252898660487219652018-01-22T18:08:11.360+00:002018-01-22T18:08:11.360+00:00Interesting MaxDrei that you are treating construi...Interesting MaxDrei that you are treating construing the claim very differently from judging infringement. I broadly agree, that claim construction (i.e. without DOE) can be done without looking at the prosecution history, and DOE analysis can only be done using knowledge of the potential infringement and that will be assisted by the prosecution history. DOE analysis is going to be very fact specific and require a very good understanding of how the claim ended up as it did and how it relates to the inventive concept. Everything that helps that analysis should be available and used, and perhaps even documents from discovery to establish the intentions of all the relevant parties. It is important to come up with a reason as to why the patentee deserves the DOE scope, and equally to understand why it is not unfair for a potential infringer to be caught by the DOE scope.Acoomplicenoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-87223272845730879882018-01-22T12:37:08.696+00:002018-01-22T12:37:08.696+00:00It makes no sense to "The US Anon". How ...It makes no sense to "The US Anon". How about readers from the UK?MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-49269164401930283742018-01-22T11:32:52.465+00:002018-01-22T11:32:52.465+00:00That makes no sense, maxdrei - I leave it to you t...That makes no sense, maxdrei - I leave it to you to figure out why.The Same Previous Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5729458794174093622018-01-22T08:47:32.285+00:002018-01-22T08:47:32.285+00:00Which is it? When judging infringement by equivale...Which is it? When judging infringement by equivalent, recourse to the wrapper might be a help. For construing the claim though, not.maxdreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-13932268313883674112018-01-21T21:14:41.033+00:002018-01-21T21:14:41.033+00:00Once again, I wander upon a series of comments inv...Once again, I wander upon a series of comments involving those of MaxDrei and have to wonder if he realizes what he is posting.<br /><br />Contrast the last comment of "<i>Nor is there now.</i>" with his first post of "<i>So too can the evidence of the file history.</i>"<br /><br />Which is it? Do you have a clue?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-14325236216378267592018-01-20T21:17:53.489+00:002018-01-20T21:17:53.489+00:00O'Malley surmises that Activis would have gone...O'Malley surmises that Activis would have gone the other way, in the USA. well yes, of course. Because the American DoE is very different from the one in Activis.<br /><br />What Neuberger did was to leave claim construction undisturbed. No change there. An infringement by equivalent is by an act that falls outside the scope of the claim, properly construed. Unlike in America.<br /><br />To construe a claim in England, there is no need to take account of the Patent Office file. Nor is there now. If you do it anyway, in Activis, you find that limitation to Na was because of poor drafting and Art 123(2) not the prior art.MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-87754047081631924132018-01-20T09:56:28.032+00:002018-01-20T09:56:28.032+00:00Great comments from both Festo and Ron. The USA ha...Great comments from both Festo and Ron. The USA has a slew of "doctrines" downstream of its "Doctrine of Equivalents", for example, "re-capture" and "ensnarement", to minimise the legal uncertainty and injustice entrained with the DoE. But the judges in Europe are aware of all this and will keep things simpler. At a conference in Germany some years ago, Robin Jacob was heard to say:<br /><br />You can learn a lot from the Americans. watch carefully what they do, then make sure you don't repeat their mistakes.<br /><br />The Activis facts were very special. I predict that the DoE will hardly ever succeed in England.<br />MaxDreinoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-57475190340379009732018-01-19T22:01:44.908+00:002018-01-19T22:01:44.908+00:00Older readers may recall that, before the UK's...Older readers may recall that, before the UK's 1977 Patents Act came into force, very little of the prosecution file was open to public inspection (the provisional application, priority document and its translation (if any), the complete application as filed, the patent as granted, a list of any documents cited during prosecution, and not much else). However, the full file could be inspected by a judge if the patent came to court. Thus I would think that the prosecution history must have been taken into account in such cases, otherwise what purpose would there have been in the judge inspecting the file? Ronnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-4575159612113045462018-01-19T17:17:26.857+00:002018-01-19T17:17:26.857+00:00Once you have a doctrine of equivalents you must h...Once you have a doctrine of equivalents you must have file wrapper estoppel and amendments (https://en.wikipedia.org/wiki/Festo_Corp._v._Shoketsu_Kinzoku_Kogyo_Kabushiki_Co.)<br /><br />What you have lost by amendment cannot be regained by doctrine of equivalents. It cannot be any other way for the system to make sense. We now need to accept the situation and start to develop our own 'Festo doctrine' of how the scope of a claim is affected by past amendments. Otherwise a lot of injustice will occur.Festo got it rightnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-16657360970021889012018-01-19T13:44:34.543+00:002018-01-19T13:44:34.543+00:00One of the great strengths of English law is that ...One of the great strengths of English law is that its fact-finding procedures ought to keep people (parties, witnesses) "honest". So too can the evidence of the file history.<br /><br />For example, imagine deciding a case on the evidence of experiments, without inspection and cross-examination.<br /><br />But it's all a question of "balance". Give zealous litigators an inch of freedom to adduce more evidence (say: the PTO file wrapper) and they will bring a bus load of it, to complicate the case.<br /><br />Strict case management is needed, by a court experienced enough to know when the wool is being pulled over its eyes. I happen to think that the patents courts of England are unique in all the world for the wisdom and pragmaticism of its judges, coupled with totally flexible fact-finding procedures which the parties can use to flush out dissembling and lack of good faith. Where else but in England can parties in dispute get a better and quicker written roadmap of the merits of the case?<br /><br />Elsewhere there is not enough wise case management, or too much "flexibility" and so loss of legal certainty.<br /><br />But what do other readers think? MaxDreinoreply@blogger.com