The waiting at the (patent) bar is over - the Supreme Court decides Hilton Davis

Article Abstract:

The US Supreme Court's decision in Warner-Jenkinson Co. v. Hilton Davis Co. clearly rejects the petitioner's request that the doctrine of equivalents be eliminated, but the Court failed to resolve a number of other issues. The Court was not willing to accept that a limited inclusion of the doctrine under section 112 of the 1952 Patent Act should imply the doctrine's exclusion in all other cases. The Court affirmed that prosecution history estoppel does limit the doctrine. The Court failed to address whether infringement issues under the doctrine were questions for the jury.

Other Justice, Public Order, and Safety Activities, Patent Law

---

Drafter's dilemma: means plus function and guidelines and Hilton-Davis, oh my!

Article Abstract:

Use of the doctrine of equivalents and section 112 are still available to patent drafters despite apparent limitation of the doctrine by In re Donaldson and the uncertain outcome of Hilton-Davis Chemical Co. v. Warner-Jenkinson Co. The means plus function limitations of section 112 can be used to identify the scope of the patent claim. The limitations that the US Patent and Trademark Office Guidelines appear to place on the use of section 112 can be brought before a jury as part of the equivalency issue.

Analysis, Patent practice

---

Do the means justify the end - a matter of Bond, Bowles, the office and 35 U.S.C. s. 112, paragraph 6

Article Abstract:

Patent claims since 1990 may use functional language to describe works. The US Congress added a 6th paragraph to section 112 of the patent code referring to 'means plus function.' In patent litigation, description can be given wide latitude as for In re Bond, or description can be given precise limits as for In Re Bowles. Such differences between courts and the Patent Office will eventually require clarification, possibly in congressional legislation.

Similar abstracts:

• Abstracts: Mandatory arbitration clauses: an analysis of Supreme Court decision in Wright case. Arbitral perspectives in supervisor work restriction cases
• Abstracts: A second generation of sexual harassment law: the Supreme Court rewrites the rules for the workplace. The thin line between love and hate: same sex hostile environment sexual harassment
• Abstracts: Standing in the Supreme Court and circuits: October term 1997. Ruling without real rules, or how to influence private conduct without really binding
• Abstracts: Anger rises over bankruptcy fees; Congress and courts consider ways to control legal costs. Firms benefit from hot, but cyclical, business of IPOs
• Abstracts: Senate panel told of fraud, corruption at RTC. Bush Justice Department assails S & L report

This website is not affiliated with document authors or copyright owners. This page is provided for informational purposes only. Unintentional errors are possible.