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Use of Incorporation By Reference in Patents: A Shortcut Tool and Possible Consequences
In drafting a U.S. patent application, the patent applicant may refer to a prior publication to aid in describing the background or some other facet of his or her invention. The applicant may incorporate this prior public information expressly into the specification of his or her application, or as a shortcut may incorporate this information by explicit reference. This seemingly innocuous shortcut may be a useful tool for the patent applicant or patentee; however, patent infringement litigants ' whether plaintiff or defendant ' should be keenly aware not to overlook subject matter that has been incorporated by reference either in the patent at issue or in relevant prior art when validity of the patent is challenged.
Incorporation By Reference to Blame for Finding of No Infringement
In a 2006 case, a patentee trying to enforce his patent found out the hard way how a problem could arise from subject matter incorporated by reference in its patent. In Cook Biotech Inc. v. ACell Inc., the patentee, Cook Biotech, asserted infringement against ACell of a patent claiming a 'composition comprising urinary bladder submucosa delaminated from … at least the luminal portion of the tunica mucosa of a segment of a urinary bladder.' 460 F.3d 1365 (Fed. Cir. 2006). The appellate court, the Court of Appeals for the Federal Circuit, overturned the district court's finding of patent infringement. In reviewing Cook Biotech's patent, the appellate court looked to the specification of the patent and found it incorporated by reference a previous patent that defined the luminal portion of the tunica mucosa as including the lamina epithelialis mucosa, its lamina propria and the basement membrane sandwiched between. With this interpretation of the claim limitation, ACell's product was found to be non-infringing because rather than being 'delaminated from ' the luminal portion of the tunica,' it retained part of the luminal portion of the tunica, namely, the basement membrane and the lamina propria. To its detriment, Cook Biotech failed to appreciate the principle, affirmed by the appellate court, that by incorporating material by reference, the material may be effectively considered part of the host document as if it were explicitly stated therein. Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272 (Fed. Cir. 2000).
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.
The Anti-Assignment Override Provisions
UCC Sections 9406(d) and 9408(a) are one of the most powerful, yet least understood, sections of the Uniform Commercial Code. On their face, they appear to override anti-assignment provisions in agreements that would limit the grant of a security interest. But do these sections really work?