上周一(3月22日),美国联邦巡回法院上诉庭对一项对专利法极具影响力的案件作出了裁决,从而让一场持续近8年的诉讼暂时告一段落。
这场案件的中心是关于美国法典35章112款有关专利撰写说明的解读问题。112款的部分文字如下。
“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”
有趣的这段文字可以有两种不同的断句方式,即 “in such full, clear concise…是修饰 “a written description of the invention”加 “of the manner and process…”还是仅仅修饰 “[a written description of the invention] of the manner and process…”。
第一种:
“The specification shall contain
[A] a written description
[i] of the invention, and
[ii] of the manner and process of making and using it,
[B] in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”
第二种:
(1) “The specification shall contain a written description of the invention, and”
(2) “The specification shall contain a written description . . . of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and”
(3) “The specification . . . shall set forth the best mode contemplated by the inventor of carrying out the invention.”
两种不同的断句方式,产生的法律效果是完全相反的。其中涉及到的经济得失是6千5百20万美元外加2.3%的年息。
不过大家可以在此免费玩一把,看看你倾向哪一种?第一还是第二?:)
- Re: 有趣而昂贵的英文断句问题posted on 03/27/2010
第一 - Re: 有趣而昂贵的英文断句问题posted on 03/27/2010
second . - posted on 03/28/2010
moab wrote:
第一
选第一的代表是哈佛法学院毕业的John M. Whealan教授。
John M Whealan
Education
B.S., Villanova University; M.S., Drexel University; J.D., Harvard University
Current Semester Courses
Federal Circuit Bar Journal; The Federal Circuit
Intellectual Property Law Program
Associate Dean for Intellectual Property Law Studies; Professorial Lecturer in Law
Biographical Sketch
Before joining GW Law School in 2008, Dean Whealan worked at the U.S. Patent and Trademark Office (USPTO) where he served as deputy general counsel for intellectual property law and solicitor since 2001. Dean Whealan represented the USPTO in all intellectual property litigation in federal court and advised the agency on a variety of policy issues. During his tenure, he argued approximately 30 cases before the Federal Circuit and, with his staff, was responsible for briefing and arguing more than 250 cases. Dean Whealan also assisted the U.S. Solicitor General on virtually every intellectual property case that has been heard by the Supreme Court since 2001. He also served as counsel to the U.S. Senate Committee on the Judiciary for the last year.
Prior to 2001, Dean Whealan was a staff attorney for the U.S. International Trade Commission where he litigated several investigations involving intellectual property matters. He has clerked at both the appellate and trial court levels, serving as law clerk to Judge Randall R. Rader, J.D. '78, of the Federal Circuit and Judge James T. Turner of the U.S. Court of Federal Claims. Dean Whealan has engaged in private practice at Fish & Neave in New York and worked as a design engineer for General Electric. For the past 10 years, he has taught as an adjunct professor of law at The Franklin Pierce Law Center and also has taught courses at George Mason University School of Law and Chicago-Kent College of Law.
- posted on 03/28/2010
LM wrote:
second .
选第二的代表是华盛顿律师Charles Lipsey。
Charles E. Lipsey
Bar and Court Admissions
District of Columbia
Virginia
U.S. Court of Appeals, Federal Circuit
U.S. Patent and Trademark Office
Education
George Washington University, National Law Center
LL.M., Patent and Trademark Regulation Law, with highest honors, 1981
George Washington University Law School
J.D., high honors, 1977
Georgia Institute of Technology
B.S., Chemical Engineering, 1972
Judicial Clerkships
U.S. Court of Customs and Patent Appeals
Charles Lipsey focuses his practice on intellectual property litigation, particularly patent infringement litigation. He has handled cases covering a diverse spectrum of mechanical, chemical, and electrical technologies, with an emphasis on cases involving biotechnology and pharmaceutical chemistry. Since joining Finnegan in 1978, Mr. Lipsey has amassed a wealth of experience in patent infringement litigation, patent arbitration proceedings, and patent interferences.
Mr. Lipsey lectures throughout the world to professional and bar audiences on patent law, licensing, biotechnology, and litigation and has authored and coauthored extensive number of scholarly and practice works, including the multi-volume treatise Patent Law Perspectives, published by Matthew Bender.
Highlights
Involved on behalf of patent owners in cases such as Hybritech v. Abbott Laboratories and the associated interference proceedings, relating to monoclonal antibody technology.
Participated on behalf of accused infringers in cases such as Regents of the University of California v. Eli Lilly and Co., relating to recombinant DNA used to make human insulin.
Active in the case of Loral Fairchild, Inc. v. Matsushita et al., relating to semiconductor devices used in camcorders.
Handled the Gallo v. Montagnier interference proceeding, relating to the ownership of the patent rights underlying the AIDS antibody test.
Invited by the U.S. Supreme Court to brief and argue in support of the judgment of the Florida Supreme Court in the case of Bonito Boats, Inc. v. Thundercraft Boats, Inc., relating to the constitutionality of state anti-direct-molding statutes.
Served as a patent examiner in the USPTO.
Former associate professorial lecturer in law at The George Washington University.
Professional Recognition
Recognized as a leader in the field of Life Sciences: Intellectual Property in the U.S. and in Intellectual Property in Washington, DC by Practical Law Company's Which Lawyer, 2010.
Recognized as a leader in the field of Intellectual Property Law by Chambers & Partners in its guide, Chambers USA: America’s Leading Lawyers for Business, 2003-2009.
Selected by his peers for inclusion in The Best Lawyers in America, 2005-2010.
Listed in the Washingtonian Magazine as a "Top Lawyer," 2009.
Professional Activities
The District of Columbia Bar
Virginia State Bar
American Bar Association
American Intellectual Property Law Association
Select Publications
Coauthor. "Which Way to Go?," IP Law & Business, July 2008.
"Canadian Court Decision Places Broad Class of Patents in Jeopardy," Washington Legal Foundation Legal Backgrounder, July 2007.
Coauthor. "Litigation of the Written Description Requirement," 2005 Summer ILP Conference, June 2005.
Coauthor. "Patent Law Perspectives," Matthew Bender, 1982-1988. - posted on 03/28/2010
再补充点统计数据。
由于本案裁决的可能有“重大的现实意义及深远的历史意义”,上诉法庭两次听取辩论(第二次除一名法官因故缺席外余下十一名法官全数出席)。
在上诉中法庭共收到25份 amucus briefs(非本案当事人方为法院提供的旨在影响法院裁决的陈述)。其中七份brief对两种解读都不支持;1份支持第一种解读;17份支持第二种解读。
下面是我最近撰写的一篇有关本案法评片段以提供一些背景知识。
[Background]
On June 25, 2002, Ariad Pharmaceuticals, Inc., Massachusetts Institute of Technology, the Whitehead Institute for Biomedical Research, and the President and Fellows of Harvard College (collectively, “Ariad”) brought suit against Eli Lilly & Company (“Lilly) in the United States District Court for the District of Massachusetts, alleging infringement of U.S. Patent 6,410,516 (“the ‘516 patent”).
The ‘516 patent relates to the regulation of gene expression by the transcription factor NF-κB. Transcription factors are molecules found in cells that regulate the extent to which genes are expressed. The inventors of the ‘516 patent were the first to identify NF-κB and to uncover the mechanism by which NF-κB activates gene expression underlying the body’s immune responses to infection. The inventors discovered that NF-κB, normally in an inactive form, can be activated by extracellular stimuli and, once activated, NF-κB triggers gene expression of certain proteins (e.g. cytokines) to help the body to counteract the extracellular attack. However, excessive production of cytokines can be harmful. Thus the inventors recognized that artificially interfering with NF-κB activity could reduce the harms. They filed a patent application on April 21, 1988, disclosing their discoveries and claiming methods for regulating cellular responses to external stimuli by reducing NF-κB activity in a cell.
NF-κB regulates over 300 genes, and NF-κB-controlled pathways are relevant to many human diseases. As many as 200 marketed drugs have mechanisms of action that may affect the NF-κB pathway. Ariad alleged infringement of claims 80, 95, 144 and 145 by Lilly’s osteoporosis drug Evista® and the sepsis drug Xigris® which inhibit NF-κB.
Claims 80, 95, 144 and 145 are genus claims, encompassing the use of all substances that achieve the desired result of reducing the activity of NF-κB. The patent specification hypothesizes three types of molecules with the potential to reduce NF-κB activity in cells.
On May 4, 2006, a federal jury in Boston found infringement of claims 80 and 95 with respect to Evista® and claims 144 and 145 with respect to Xigris®, awarding $65.2 million and requesting Eli Lilly to pay royalties of 2.3 percent of sales of the two drugs. The jury also found that the asserted claims were not invalid for anticipation, lack of enablement, or lack of written description. The court denied without opinion Lilly’s motions for JMOL and, in the alternative, a new trial.
In August 2006, the court conducted a four-day bench trial on Lilly’s additional defenses of unpatentable subject matter, inequitable conduct, and prosecution laches, ruling in favor of Ariad on all three issues. Lilly timely appealed to the Court of Appeals for the Federal Circuit.
On April 3, 2009, a panel upheld the district court’s finding of no inequitable conduct, but reversed the jury’s verdict on written description, holding the asserted claims invalid for lack of an adequate written description as required by 35 U.S.C. § 112, paragraph.
Ariad moved for a rehearing en banc and the Federal Circuit granted Ariad's motion and directed the parties to brief two questions:
(a) Whether 35 U.S.C. § 112, paragraph 1, contains a written description requirement separate from an enablement requirement?
(b) If a separate written description requirement is set forth in the statute, what is the scope and purpose of the requirement?
[The Controversy over the Written Description Requirement]
35 U.S.C. § 112, paragraph 1 provides, in part, that
“the specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same…”
Whether there is a written description requirement separate from an enablement requirement is not a new question. However, in the recent years the controversy has intensifies. While the courts have had several occasions to interpret this language, divergent opinions emerged on the question of whether there is a separate written description requirement.
As early as in 1853, the Supreme Court, in O’Reilly v. Morse, rejected a claim in the patent of Samuel Morse, the inventor of the telegraph. The claim sought protection for any use of electric current “for making or printing intelligible characters, signs or letters…at any distance.” The Court concluded that “he claims an exclusive right to use a manner and process which he has not described and indeed had not invented…The court is of [the] opinion that the claim is too broad, and not warranted by law.”
By contrast, the Supreme Court found valid an apparently broad claim, by Alexander Graham Bell, to the “method of and apparatus for transmitting vocal or other sounds telegraphically” and, essentially, to “speech transmission by transmitting it.” The Court concluded, “Surely, a patent for such a discovery is not to be confined to the mere means he improvised to prove the reality of his conception.” The Telephone Cases (1888).
Subsequent court decisions tend to establish that a “written description” is a requirement separate from the enablement requirement (In re Ruschig, 379 F.2d 990 (C.C.P.A. 1967)) and that to satisfy the written description requirement, a patent specification must demonstrate that at the time the patent application was filed, the inventor was “in possession” of the claimed invention. LizardTech Inc. v. Earth Resource Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). On the other hand, claim construction cases seem to suggest that claims may not be limited to the embodiments described in the specification. To some judges, these divergent lines of cases cannot be harmonized. . LizardTech Inc. v. Earth Resource Mapping Inc., 424 F.3d 1336, 1376-81 (Fed. Cir. 2005).
The divergent views on the written description requirement were also apparent in the 25 amicus briefs filed in the current case, with 17 of them in support of Lilly, one in support of Ariad and 7 in support of neither party. The majority, including a brief filed by the United States, were filed in support of Federal Court’s existing written description doctrine.
On December 7, 2009, an 11-member en banc Court of Appeals for the Federal Circuit (with a vacancy caused by Judge Alvin A. Schall’s taking senior status) heard the oral argument.
- posted on 03/29/2010
有意思。没来得及看两位专家的解读,但我读来自己认为应该是第一种。常识读者而言,and 之后应该通常算做插入语,否则没有必要逗号隔开,完全可以写成一句话。
感觉着这种重新断句解读的需要,一般在英美法律界都不会空穴来风。一定是当时或现在的实际情况和社会需求发生了某种变化,人们意识到有必要重新解读,适应社会变化,才会被提出来,而且被一些博学精明的律师和法官放在焦点之下。
比如这个涉及专利法,个人猜想,是因为人们觉得应该重新解释定位一下有关专利的特权。我不知道是因为现在的专利法太霸道了,专利持有者过于贪婪,有点滥用其专利特权 (第一种判决将有利于这种状况);还是现在的专利法过于宽松,总被人钻漏子,损失很大(第二种解读将有利于改善这种情况)。所以,最终的判决结果,我认为,应该取决法官们于对现状理解,和对实际后果的把握。法律是否伸张了“正义”,应该取觉于一次判决的实际后果和长远后果。对不对?
这个贴子很有意思,没想到能在小资论坛上看到。希望风子能帮助反馈其进展和结果。:) - posted on 04/01/2010
U.S. Court of Appeals for the Federal Circuit, in an 9-to-2 opinion, sided with the proponents for the second interpretation. You're absolutely right in that legal challenges to established precedents may reflect and lead to shifting societal norms or values. In the intellectual world, tensions have run high between patent holders seeking to broaden their exclusive rights beyond what they actually have invented---a trend that arguably could have been made worse by adopting the first reading of the statute at issue, and the general public interested in lowering the barrier to access certain monopolized technology. To the latter camp, the recent decision by the court came down as a long sought-after relief.
令胡冲 wrote:
- Re: 有趣而昂贵的英文断句问题 (Proper Parsing: A $65-Million-Dollar Grammar Question)posted on 04/01/2010
- posted on 04/01/2010
9-to-2? That's a lot of lips moving. :-)
What about the sanctity of the legal language? If they need to revise it, at least do it the right way.
Fengzi wrote:
U.S. Court of Appeals for the Federal Circuit, in an 9-to-2 opinion, sided with the proponents for the second interpretation. You're absolutely right in that legal challenges to established precedents may reflect and lead to shifting societal norms or values. In the intellectual world, tensions have run high between patent holders seeking to broaden their exclusive rights beyond what they actually have invented---a trend that arguably could have been made worse by adopting the first reading of the statute at issue, and the general public interested in lowering the barrier to access certain monopolized technology. To the latter camp, the recent decision by the court came down as a long sought-after relief.
- posted on 04/01/2010
Compared with the number of "lips" available in the legal world, 22 lips (counting both upper and lower ones) are really not "a lot".
With regard to propriety of law making, everyone in the process believes his and her way to be the "right way."Therefore, you can rest assured on that. ;)
moab wrote:
9-to-2? That's a lot of lips moving. :-)
What about the sanctity of the legal language? If they need to revise it, at least do it the right way.
Fengzi wrote:
U.S. Court of Appeals for the Federal Circuit, in an 9-to-2 opinion, sided with the proponents for the second interpretation. You're absolutely right in that legal challenges to established precedents may reflect and lead to shifting societal norms or values. In the intellectual world, tensions have run high between patent holders seeking to broaden their exclusive rights beyond what they actually have invented---a trend that arguably could have been made worse by adopting the first reading of the statute at issue, and the general public interested in lowering the barrier to access certain monopolized technology. To the latter camp, the recent decision by the court came down as a long sought-after relief.
- posted on 04/02/2010
这个案子有意思。风子是搞专利法的?我认识一个小伙子,在伦敦一家最出色的律师行见习,参与的都是跨国企业的商业合同法律案件。前两年是纠纷打官司部门,经常也是一个案子好几年,律师费就是几十millions。这两年又去合同签订部门工作,参与的是商业合同制定和认证工作。
跟他聊天,有一点感觉,感觉他们商业合同的制定就象项目的设计工作。最后客户不得不打官司,那时候,就象项目的实施与集成阶段,最后交货跟顾客和供应商闹翻了一样。没有一线具体工作、跟人吵架争执解释标准的丰富经验和具体教训,就很难成为一个好的设计人员。在英美,出色的律师都来自这些宝贵的案例。律师的眼界和经验都取决于这些纷繁庞杂的一流的项目。
这个案子有意思,但是,风子上面解释还是觉得有一点不太清晰.... - posted on 04/09/2010
This case is complicated and involves a lot of background info. Give me an email at xufengzi@gmail.com and I'll send you the full opinion.
One thing to note is that the decision was rendered not based on English grammar--which, albeit relevant in many cases, is rarely dispositive. Instead, statutory interpretation is often resolved through the analysis of legislative history, legal precedents, etc.
令胡冲 wrote:觉得有一点不太清晰....
这个案子有意思。风子是搞专利法的?我认识一个小伙子,在伦敦一家最出色的律师行见习,参与的都是跨国企业的商业合同法律案件。前两年是纠纷打官司部门,经常也是一个案子好几年,律师费就是几十millions。这两年又去合同签订部门工作,参与的是商业合同制定和认证工作。
跟他聊天,有一点感觉,感觉他们商业合同的制定就象项目的设计工作。最后客户不得不打官司,那时候,就象项目的实施与集成阶段,最后交货跟顾客和供应商闹翻了一样。没有一线具体工作、跟人吵架争执解释标准的丰富经验和具体教训,就很难成为一个好的设计人员。在英美,出色的律师都来自这些宝贵的案例。律师的眼界和经验都取决于这些纷繁庞杂的一流的项目。
这个案子有意思,但是,风子上面解释还是
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