呆子的專利部落格

美國最高法院 (US Supreme Court) 在 1996 年的時候，針對 Markman v. Westview Instruments, Inc. 這個訴訟案中裁定，專利語言的範圍認定屬於法律問題 (matter of law) 而非事實問題 (matter of fact) ，因此專利說明書和申請範圍裡面所使用的語言，其範圍應由法院來裁定，而非陪審團。

從那時候開始，專利訴訟初期，法院都會舉行所謂的 Markman Hearing (馬克曼聽證會) ，在聽證會上由兩造進行專利範圍架構 (Claim Construction) 的攻防。法院最終則會裁定專利範圍中每個有爭議的元件、名詞或語言，其範圍該如何來定義。

進入正式訴訟程序後，法院、兩造律師和陪審團必須引用 Markman Hearing 中所認定的定義來進行專利侵權與否的攻防和判斷。因此， Markman Hearing 具有可以左右一個專利權利範圍大小，甚至專利訴訟勝負的影響力。

n. a court order ruling that no factual issues remain to be tried and therefore a cause of action or all causes of action in a complaint can be decided upon certain facts without trial. A summary judgment is based upon a motion by one of the parties that contends that all necessary factual issues are settled or so one-sided they need not be tried. The motion is supported by declarations under oath, excerpts from depositions which are under oath, admissions of fact and other discovery, as well as a legal argument (points and authorities), that argue that there are no triable issues of fact and that the settled facts require a summary judgment for the moving party. The opposing party will respond by counter-declarations and legal arguments attempting to show that there are "triable issues of fact." If it is unclear whether there is a triable issue of fact in any cause of action, then summary judgment must be denied as to that cause of action. The theory behind the summary judgment process is to eliminate the need to try settled factual issues and to decide without trial one or more causes of action in the complaint. The pleading procedures are extremely technical and complicated and are particularly dangerous to the party against whom the motion is made.

http://dictionary.law.com/default2.asp?selected=2063&bold=||||

簡易判決 (Summary Judgment) 基本上是由原告或被告兩造之一提出，法院認定訴訟案中沒有事實爭議 (factual issue) 而只有法律爭議 (legal issue) 的時候，法院可以逕行裁定，而不需要經由陪審團。 p.s. 此為簡化的講法

名詞；發音：sersh-oh-rare-ee

a writ (order) of a higher court to a lower court to send all the documents in a case to it so the higher court can review the lower court's decision. Certiorari is most commonly used by the U.S. Supreme Court, which is selective about which cases it will hear on appeal. To appeal to the Supreme Court one applies to the Supreme Court for a writ of certiorari, which it grants at its discretion and only when at least three members believe that the case involves a sufficiently significant federal question in the public interest. By denying such a writ the Supreme Court says it will let the lower court decision stand, particularly if it conforms to accepted precedents (previously decided cases).

上級法院如果決定要審理下級法院審理過的案件，而向下級法院調閱該案件的全部資料，稱之為調審令(Ceritiorari)

Writ of Ceritiorari 則是由申請人向上級法院提出"調審令請求"，請求上級法院向下級法院提起調審令。

Motion to Intervene

Normally, a lawsuit involves the plaintiffs (who bring the suit), and the defendants (whom the suit is brought against). Sometimes, a person who is not a party to a lawsuit in progress wants to become a party. Such a party must file a Motion to Intervene. Generally, to be admitted into the lawsuit, the intervenor must have an interest in the subject matter of the original suit.

A motion to intervene in a case in Federal Court is addressed by Rule 24 of the Federal Rules of Civil Procedure. It provides in part that:

(a) Intervention of Right. Upon timely application anyone shall be permitted to intervene in an action: (1) when a statute of the United States confers an unconditional right to intervene; or (2) when the application claims an interest relating to the property or transaction which is the subject of the action and the applicant is so situated that the disposition of the action may as a practical matter impair or impede the applicant's ability to protect that interest, unless the applicant's interest is adequately represented by existing parties.

adj.

Latin for "anew", which means starting over, as in a trial

http://dictionary.law.com/default2.asp?typed=de+novo&type=1

(一)何謂“確認之訴”(Declaratory Judgment)?

「確認之訴」(Declaratory Judgment)是一種由原告請求法院確認其與被告之間，是否存在某種法律關係的訴訟。通常起因於雙方當事人對於法律關係之認識不一致，因此發生爭議而至無法解決，此時便要求法院予以認定，以確定雙方存在或不存在某種法律關係；這類訴訟並不要求被告履行一定的民事義務，一旦法院作出判決，消除當事人之間爭議後，此案即告結束。
將確認之訴應用於「專利訴訟」時，通常會提出二種主要的主張：
1. 向法院請求宣告對方之專利權無效。
2. 即使對方專利有效，但原告公司本身的產品沒有侵犯到對方專利權。

In United States patent law, patent holders must go to the federal courts to enforce their patent rights. Even if the patent is valid and infringed, these courts may exercise their equitable discretion not to enforce the patent if the patentee has engaged in inequitable conduct. The patent applicant has a duty of candor and good faith to the US Patent and Trademark Office when applying for their patent. Breach of this duty constitutes inequitable conduct, which includes the following: (a) failure to submit prior art likely to be deemed relevant; (b) failure to explain references in a foreign language or submit pre-existing full or partial translations of the references; (c) misstatements of fact, including misstatements in affidavits concerning patentability; and (d) mis-description of inventorship.

The party asking the court to decline to enforce the patent, usually the alleged infringer, bears the burden of proving inequitable conduct to the court. This party must show by clear and convincing evidence that the patentee intentionally withheld or misrepresented material information. Proven inequitable conduct in any claim can lead the entire patent to be unenforceable.

http://en.wikipedia.org/wiki/Inequitable_conduct

當申請專利的時候，申請人/發明人有義務在申請過程中對美國專利商標局維持以誠信的態度來申請。當違反下列幾點的時候，則可能被認定屬"不正當行為"：a) 未揭露已知與本發明有關之前案； b) 未解釋已知與本案有關之外國語文件，或是未將部份或全部的翻譯文件揭露； c) 扭曲事實； d) 提供錯誤的發明人資料。

Law - Information Disclosure Statement

In a court of law, issued U.S. patents enjoy a presumption that they are valid and enforceable against infringers. If, however, an alleged infringer can show that background art references were in existence on the filing date of the application and that those references were not considered by the Examiner in his/her examination of the application, the presumption of validity is weakened. Examiners are only human and do not always find all the background art that bears on patentability issues. For this reason, it is important that applicants bring to the attention of Examiners any background art that he/she should have considered. In addition, applicants, their representatives and any others associated with filing and prosecution of U.S. patent applications have a "duty of disclosure" to the USPTO to disclose any information known to the individual to be "material to patentability" of a claimed invention. This information is submitted in a specified format and is called an Information Disclosure Statement (IDS). Patent Partner reminds the user of the date before which an IDS can be submitted without the payment of a fee. The date is the earlier of the U.S. filing date plus 3 months or the mailing date of the first Office action on the merits of the applicaiton.

The position of the USPTO on this issue is described in the following section(s) of the Manual of Patent Examining Procedure (MPEP):

MPEP 609 - Information Disclosure Statement

Prosecution history estoppel, also known as file-wrapper estoppel, is a term used in United States patent law to indicate that a person who has filed a patent application, and then makes amendments to the application to accommodate the patent law, has no cause of action for infringement to the pre-amendment patent claims that were amended.

Although primarily a US term, questions of whether, or the extent to which the prosecution history should be relevant for determining the extent of protection of a patent also arise outside the US

http://en.wikipedia.org/wiki/Prosecution_history_estoppel

在申請專利的過程中，申請人/發明人可能會需要和美國專利商標局的審查委員進行溝通，以釐清本發明和一些相關前案的差異處。在這個溝通過程中，申請人/發明人所講過的話，或是針對專利範圍所做過的修改，都會被用來認定專利權的範圍。

In the United States, there are two tests for determining whether an accused device or process is deemed to be equivalent. Under the first test (Graver Tank & Manufacturing Co. v. Linde Air Products Co., (1950)), called the "triple identity" test, something is deemed equivalent if:

It performs substantially the same function
in substantially the same way
to yield substantially the same result.

Under the second test (Warner-Jenkinson Co. v. Hilton Davis Chem. Co. (1997)) something is deemed equivalent if there is only an "insubstantial change" between each of the elements of the accused device or process and each of the elements of the patent claim. One limitation that has been placed on this doctrine is prosecution history estoppel, which prevents a claim from being made for infringement where the difference is something that the patentee had abandoned through an amendment to the patent. It is generally considered the case that the second test builds on the first test in a doctrine of equivalents analysis.

en banc

發音(on bonk)

French for "in the bench," it signifies a decision by the full court of all the appeals judges in jurisdictions where there is more than one three- or four-judge panel. The larger number sit in judgment when the court feels there is a particularly significant issue at stake or when requested by one or both parties to the case and agreed to by the court.

意指該轄區內所有的上訴法官均參與本案之審理。(一般案件係由三到四位上訴法官組成審理)