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Myths About Avoiding Prosecution History Estoppel
In the recent Federal Circuit case Honeywell, Int'l. Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131 (Fed. Cir. 2004) (en banc), the court held that a presumption of prosecution history estoppel arises when a patent applicant cancels an independent claim and rewrites its first dependent claim in independent form. Since then, patent attorneys and industry watchdogs have repeatedly misinterpreted the cause of this estoppel. Worse, many have advocated the dangerous strategy of initially writing dependent claims in independent form as a means of avoiding the estoppel. Such a strategy is useless in avoiding estoppel and highly counterproductive. Patent prosecutors should leave dependent claims in dependent form and, instead, avoid estoppel by using the strategies suggested below.
The patentee in Honeywell was asserting infringement under the doctrine of equivalents. Under the doctrine, a device that does not fall within the literal boundaries of a patent's claims may nevertheless infringe if it performs substantially the same function in substantially the same way to obtain substantially the same result as the claimed device. The doctrine is of great value to patentees because it lets them expand the scope of their patent to cover devices that are only insubstantially different from the literal scope of their claims.
The doctrine of equivalents is tempered by prosecution history estoppel. Estoppel prohibits the patentee from using the doctrine of equivalents to recapture territory that was surrendered to obtain the patent. In the landmark case Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd., 535 U.S. 722 (2002), the Supreme Court held that a presumption of estoppel arises when an amendment narrows the patent's scope and is made for any reason related to patentability.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
Removing Restrictive Covenants In New York
In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?