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are forwarded to a patent attorney. The patent attorney

may conduct a search of related patents and publications

to assist in understanding the potentially patentable

aspects of the invention—the aspects not already known

in the ﬁeld. This search may also reveal competitors’

patents in the same ﬁeld that may impact the ability to

launch a product based on the invention.

Drafting the Patent Application. The next step is to draft

the patent application. This step depends on whether the

patent attorney is ﬁling a provisional application or a non-

provisional application. The patent attorney could also ﬁle

a U.S. application that is a counterpart to a previously

ﬁled international application. Such counterparts are

beyond the scope of this article.

Provisional applications serve as a temporary place-

holder to establish a ﬁling date. They are not reviewed by

the USPTO and do not result in issued patents. Provisional

applications require a thorough description of the technical

details of the invention, but the description can be informal.

For example, a technical report, memorandum, or set of data

tables may sufﬁce. Provisional applications, unlike nonpro-

visional applications, do not require claims (described be-

low). Thus, ﬁling a provisional application is convenient

when there is no time to draft a more formal nonprovisional

application before publicly disclosing the invention. Addi-

tionally, ﬁling a provisional application buys an applicant

some time to assess whether the invention merits the costs

associated with ﬁling a nonprovisional application, which

can be signiﬁcantly more than the cost of ﬁling a provisional

application. A non-provisional application must be ﬁled

within a year of the ﬁling of the provisional application.

A nonprovisional patent application is the formal ap-

plication that the USPTO examines for patentability.

Nonprovisional applications must include a written de-

scription of the invention and at least one claim. The

requirements for ﬁling a nonprovisional application are

available at the USPTO website (38). An applicant can ﬁle

a nonprovisional application without ﬁling a provisional

application. Only a nonprovisional application can issue

as a patent. Attorney time and ﬁling fees can make ﬁling a

nonprovisional application expensive.

The Claims Deﬁne the Invention. Patent claims, which

appear at the end of each patent, deﬁne the invention.

They are the legal boundaries of the patentee’s right to

exclude. Drafting claims typically involves discussing the

invention with the inventors and probing whether and

how the invention can be applied beyond the immediate

uses envisioned by the inventor. In drafting patent claims,

the patent attorney balances the conﬂicting goals of

obtaining the broadest possible protection for the novel

aspects of the invention without encompassing subject

matter that was already known in the ﬁeld. Patent

attorneys often achieve this balance by drafting a series

of claims of varying breadth.

Other Statutory Requirements of the Application. In

drafting the application, the patent attorney considers

criteria the patent examiner will use to assess patent-

ability, including utility, novelty, and nonobviousness, and

satisfying the deﬁniteness, written description, enable-

ment, and best mode requirements described below (20).

Deﬁniteness: The claims of a patent must clearly set

forth the patented subject matter, such that one can

determine whether or not they infringe the patent.

Written Description: The patent speciﬁcation must

describe the invention in a way that demonstrates

that the inventor actually possessed the claimed

invention. For example, when during prosecution

(i.e., the back-and-forth communication with the

examiner to obtain a patent, described below), an

applicant amended a claim to cover packaging con-

ﬁgurations that lacked ‘‘an annular reinforcing

bead,’’ while everything in the patent (i.e., the

abstract, speciﬁcation, and drawings) described

that feature as mandatory to the invention, a court

found the amended claim invalid for failure to

comply with the written description requirement of

the patent statute (39).

Enablement: The patent speciﬁcation must enable

those skilled in the art to make and use the inven-

tion without undue experimentation. This entails

providing information that is necessary to make and

use the invention and that would not otherwise be

known. It does not require providing basic informa-

tion that would be know to people working in the

ﬁeld.

Best Mode: The patent speciﬁcation must disclose the

best way of practicing the invention known to the

inventors at the time of ﬁling the application. For

example, if the inventors believe that a particular

grade of plastic works best in the invention, they

must disclose that grade in the application.

Determining Inventorship. In the United States, only

inventors can apply for patent applications. The inventors

can assign ownership of the invention to a company, but

the

application must be

ﬁled by the inventors. Conse-

quently, the patent attorney must determine the identity

of the true inventors. Although inventorship can be cor-

rected, improper inventorship is also a basis for invalidat-

ing a patent.

Each claim of a patent can have one or more inventors,

and different claims can have different inventors. Each

inventor should be included in the patent application.

Therefore, joint inventorship is common. Joint inventor-

ship may cause issues for inventions created with outside

consultants, comanufacturers, or research institutes.

Therefore, when working on joint projects, it is important

to consider up front who will own inventions resulting

from such projects. Issues may also arise when an inven-

tor has left a company and is needed to participate in ﬁling

a patent application.

Accuracy of the Application. Before ﬁling an application

with the USPTO, the inventors must carefully review the

application for accuracy. The inventors then sign a De-

claration stating that they are the original inventors and

that the contents of the application are accurate. In the

928 PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY

Declaration, the inventors also acknowledge their duty of

candor to the USPTO. This duty is described below.

The Duty of Candor. Under U.S. patent law, the

patent applicants (including each named inventor) have

a duty to provide to the patent examiner any informa-

tion that could be material to the patentability of their

invention. Such information could be prior art, public

presentations, or data relating to the invention. This is

known as the ‘‘duty of candor.’’ This duty begins with the

ﬁling of the application and continues until the patent

issues. This duty may be satisﬁed by identifying such

information in the application itself, or by separately

submitting materials to the USPTO in what is called

an Information Disclosure Statement . Failure to comply

with the duty of candor can render an issued patent

unenforceable.

The Filing Date and Its Implications. Once the USPTO

receives an application, it assigns a ﬁling date. This date is

the presumptive date of invention and is used by the

patent examiner when searching for prior art to assess

novelty and nonobviousness. Furthermore, in the United

States, an inventor has a one-year grace period to ﬁle a

patent application after a public disclosure or public use of

the invention by the inventor (or anyone else). The ﬁling

date marks the end of the one-year grace period. This

grace period distinguishes U.S. patent law from that of

most of the rest of the world, where patent rights are not

available after an invention has been disclosed to the

public. Therefore, before publicly disclosing or publicly

using an invention, it is important for the inventor (or

intellectual property management) to discuss such poten-

tial disclosures with a patent attorney to (1) ensure that

the U.S. patent application is ﬁled within one year of such

events and (2) consider how such disclosures might impact

patentability in other countries.

Prosecuting the Patent Application. The USPTO pub-

lishes its Manual of Patent Examining Procedure (‘‘the

MPEP’’) to provide patent examiners, applicants, and

attorneys a reference on practices and procedures relating

to prosecution of patent applications before the USPTO.

The MPEP is available on the USPTO website at http://

www.uspto.gov/web/ofﬁces/pac/mpep/mpep.htm.

The USPTO assigns patent applications to examiners

who specialize in the relevant technology. The examiner

reviews the application to ensure that it complies with the

statutory requirements described above. The examiner

then communicates with the applicants regarding

whether the application meets such requirements. This

process of communication between applicant and exam-

iner is referred to as patent prosecution. The USPTO

maintains a written record of these communications

known as the prosecution history of the application/pa-

tent. The public and competitors may rely on the prosecu-

tion history to aid in understanding the scope of the patent

claims. The applicant and examiner may speak with each

other, but only written communications become part of the

prosecution history on which the applicant, public, and

competitors may rely. Such written communications can

include summaries of oral communications.

Ofﬁce Actions. If an application does not meet the

requirements for patentability, the examiner issues an

Ofﬁce Action. An Ofﬁce Action is a written communication

from the examiner containing a claim-by-claim analysis of

the invention. The examiner separately either allows or

rejects each claim, providing the basis for each rejection.

Ofﬁce Actions become part of the prosecution history.

Ofﬁce Action Responses. Applicants have a set period of

time, typically two to three months, to respond to an Ofﬁce

Action. This time can be extended through payment of

extension fees. A response can address a rejected claim by

canceling the claim, amending the claim to attempt to

overcome the rejection, or explaining why the rejection is

wrong and arguing for allowance of the unamended claim.

A response can include a submission of data or other

information in support of the applicant’s arguments.

Ofﬁce Action responses become part of the prosecution

history.

Examiner Interviews. In addition to or in lieu of submit-

ting an Ofﬁce Action response, an applicant can request

an Examiner Interview to discuss the invention, discuss

the examiner’s bases for rejection, and explain the appli-

cant’s counterarguments. Interviews can be telephonic or

face-to-face. After an examiner interview, the examiner

typically issues an Examiner Interview Summary

, sum-

marizing

what was

discussed in the examiner interview.

Examiner Interview Summaries become part of the pro-

secution history.

The Prosecution History. As explained above, all written

communications between applicant and examiner go into

the prosecution history. Thus, any admissions or explana-

tions in the prosecution history can be used by accused

infringers during litigation, or by competitors trying to

interpret the scope of a patent. This prevents applicants

from (a) adopting a narrow view of the invention with the

examiner for purposes of patentability and (b) later ar-

guing for a broad interpretation when asserting the patent

in litigation. Therefore, the ability to amend claims and

debate claim scope with the examiner is not a substitute

for drafting a well-thought-out application.

Publication of the Application. Patent applications

are generally published by the USPTO about 18 months

after ﬁling, even if the application is still being prosecuted

and even though the application may never issue as a

patent. Applicants who ﬁle a patent application only in

the United States may request that the application not be

published. This enables an applicant to maintain the

information in the patent application as a trade secret

until the patent issues, if it issues. If such a request was

made and a patent never issues, the USPTO will not make

the information of the patent application available to the

public.

Monitoring published applications can provide insight

into competitor activities. The USPTO posts newly

PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY 929

published patent applications every Thursday(38). Once a

patent application is published, its prosecution history

becomes publicly available and is accessible at the USPTO

website at http://portal.uspto.gov/external/portal/pair.

Final Rejection or Allowance. Eventually, a patent ap-

plication is either allowed or the examiner issues a ﬁnal

rejection of one or more claims. If at least one claim is

allowed, the applicant can obtain a patent on that claim,

and ﬁle a continuation application (see below) to continue

prosecution of the other claims. The applicant can also

appeal the Examiner’s rejections.

Upon issuance, the patent owner’s rights and the

presumption of validity attach. The USPTO issues new

patents every Tuesday.

The Patent Family. During prosecution, before a patent

application is abandoned or matures into an issued pa-

tent, an applicant may ﬁle related applications, which

may include divisional applications, continuation applica-

tions, and continuation-in-part applications, each of

which is brieﬂy described below. The original application

is called the parent application.

Divisional Applications: If a parent application con-

tains claims directed to more than one invention, the

examiner may require that the applicant prosecute

the claims to the different inventions in different

applications. For example, if an application contains

claims to both a new compound and a new package,

the examiner might require the applicant to prose-

cute the compound claims in one application and the

package claims in another. The applicant must then

choose which type of claim to prosecute in the

original parent application and cancel the unchosen

claims. The applicant can then ﬁle a divisional

application to prosecute the unchosen claims.

The divisional application is limited to subject mat-

ter disclosed but not pursued in the original

application.

Continuation Applications:Acontinuation can be

ﬁled to continue prosecution of ﬁnally rejected

claims with new arguments or amendments. A con-

tinuation may also be useful where only some claims

in the original application have been allowed and

some have been rejected. In such circumstances, the

applicant can choose to have a patent issue on

the allowed claims and pursue the rejected claims

in the continuation application.

Continuation-in-Part Applications:Acontinuation-

in-part (‘‘CIP’’) is an application ﬁled during the

pendancy of a parent application that contains

some new matter—that is, information that was

not in the original application. The original matter

in the CIP is entitled to the ﬁling date of the original

application, but the new matter is not. New matter

may be added for any reason, including providing

support for claim amendments necessary to over-

come an examiner’s rejection or to pursue improve-

ments made to an invention during prosecution of

the application.

Divisional, continuation, and CIP applications must be

ﬁled during the pendancy of the parent application.

Maintenance Fees. The USPTO requires patent holders

to pay signiﬁcant maintenance fees at 3.5, 7.5, and 11.5

years after issuance, respectively, to keep a patent alive.

Companies often reevaluate the value of a patent when

maintenance fees are due because paying maintenance

fees on patents claiming unused or outdated technology

may not make business sense.

Reissue and Reexamination. After a patent issues, appli-

cants and third parties can have the USPTO reconsider

the issued patent through reissue and/or reexamination

procedures.

Reissue: A patent holder can seek reissue to correct

mistakes in a patent, such as claiming too much, or

claiming too little. A reissue that narrows the claim

scope can be pursued any time before patent expiry,

but a reissue that broadens the claim scope must be

requested

within two years

after issuance.

Reexamination: Reexamination allows the patentee

or a third party to request that the USPTO reex-

amine a patent’s claims in light of speciﬁc pieces

of prior art. The USPTO will only conduct a reex-

amination upon presentation of a substantial new

question of patentability. A patentee may seek reex-

amination to bolster the strength of a patent—that

is, reinforce the presumption of validity in light of

newly discovered prior art. A competitor may seek

reexamination as a relatively inexpensive alterna-

tive to litigation to invalidate a patent. However,

such an approach can backﬁre where, because the

competitor’s rights are limited during reexamina-

tion, the patent makes it through reexamination

and is actually strengthened by the procedure.

THE ANATOMY OF AN ISSUED PATENT

Below we familiarize the reader with the structure of

patents to facilitate reading, navigating, understanding,

and using patents.

Sections of a Patent—Overview

Reproduced below, as Figure 1, is the cover page of U.S.

Patent No. 6,639,004, entitled ‘‘Method For Making Odor

Sorbing Packaging Material.’’

In addition to the cover, a patent also contains draw-

ings (where necessary), a speciﬁcation, and at least one

claim. Below we provide a brief overview of the content

and function of these parts.

The Cover. The cover of a patent includes the patent

number and issue date, its title, the names of the inven-

tors and patent owner or assignee, information regarding

the ﬁling of the application, information regarding related

references, and an abstract. These parts of the cover are

described below.

930 PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY

Patent Number : The patent number is at the top

right-hand corner of the cover. Here, the patent

number is 6,639,004. Patents are frequently referred

to by the last three digits of the patent number.

Thus, we refer to U.S. Patent No. 6,639,004 as

‘‘the ’004 patent.’’

Issue Date: The issue date is just below the patent

number. The ’004 patent issued on October 28, 2003.

A patent owner’s rights and the patent’s presump-

tion of validity begin on the issue date.

Title: The title of a patent appears in the upper-left-

hand column of the cover. The ’004 patent is entitled:

‘‘Method for Making Odor Sorbing Packaging Mate-

rial.’’ This provides some guidance regarding the

subject matter of the patent. However, what a patent

protects is deﬁned by its claims, not its title. Indeed,

due to changes in claims during prosecution, the

title may not completely or accurately reﬂect the

subject matter claimed. Therefore, any review of a

patent should go far beyond the title. For example,

the title of the ’004 patent recites a ‘‘method’’ of

making materials, but the claims are directed to

materials, not methods of making them.

Inventors: Beneath the title is a listing of the inven-

tors, Ladislav Falat, James R. Miller, Mark E. Shiek,

and David R. Walker.

Assignee: Beneath the listing of inventors is identiﬁ-

cation of the assignee of the ’004 patent, Mead

Westvaco Corporation. A patent is personal property

and therefore can be sold, mortgaged, transfer-

red, and so on. Under U.S. patent laws, such trans-

fers are made by using a written instrument known

as an assignment. The person transferring the

patent, often the inventor, is the assignor, while

the recipient is the assignee. Employment contracts

often require that an employee assign to the

Figure 1. Cover of U.S. Patent 6,639,004.

PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY 931

employer/company rights to any invention made

during employment. Patents can be assigned multi-

ple times. The USPTO maintains an assignment

database within its website (40). The cover may

not have the most current assignment information.

For the most current assignment information, one

should check the assignment database and check

with the USPTO assignment ofﬁce.

Filing Date: Beneath the assignee information is ﬁl-

ing date information. The cover of the ’004 patent

indicates that the application for the ’004 patent was

ﬁled on July 12, 2001.

Notice Regarding Patent Term: The determination of

the expiration date of a patent can be complex and is

beyond the scope of this article. One fact to consider

in such a determination is whether any portion of

the patent term has been disclaimed or extended.

The cover indicates that the term of the ’004 patent

has been extended by 162 days.

Prior Publication Data: U.S. patent applications are

typically published about 18 months after they are

ﬁled. The publication date is provided beneath the

ﬁling date. The cover indicates that the application

for the ’004 patent was published on October 3, 2002

as publication number 2002/0149161 A1.

Related U.S. Application Data: Beneath the ﬁling

date is the heading ‘‘Related U.S. Application

Data.’’ This part of the patent provides information

regarding related applications, such as divisionals,

continuations, and continuations-in-part. This sec-

tion indicates that the application that matured into

the ’004 patent was a divisional application ﬁled off

of an earlier application having serial number 09/

388,071 (‘‘the ’071 application’’). The ’071 application

was ﬁled on September 1, 1999 and is now

abandoned.

U.S. Cl.: The USPTO classiﬁes patents into classes

and subclasses based on subject matter. All issued

patents are classiﬁed according to this system. The

class is identiﬁed by the heading ‘‘U.S. Cl.’’, found

beneath the related U.S. application data. The clas-

siﬁcations provide information about the subject

matter of the patent.

Field of Classiﬁcation Search: This section lists the

classes and subclasses that the patent examiner

searched when assessing the novelty and obvious-

ness of the ’004 patent. One can search the USPTO

patents database by class and subclass to uncover

patents in a ﬁeld of interest. The USPTO website

provides an index of classes (41). For example, the

following are some classes relevant to packaging:

053

065

106

156

206

215

Package making

4Glass manufacturing

Compositions: coating or plastic

Adhesive bonding and miscellaneous chemical

manufacture

Special receptacle or package

Bottles and jars

224

229

264

413

Package and article carriers

Envelopes, wrappers, and paperboard boxes

Plastic and nonmetallic article shaping or treating:

processes

Sheet metal container making

References Cited: The cover lists the U.S. patents,

foreign patents, and other materials the examiner

considered when assessing patentability. Such ma-

terials often provide a starting point for learning

more about the subject matter of an invention, or for

an alleged infringer trying to attack the validity of a

patent.

Abstract: The cover includes an abstract of the inven-

tion at the bottom of the right-hand column. The

abstract provides an overview of the invention. Like

the title, due to changes during prosecution, the

abstract may not completely or accurately reﬂect

the subject matter ultimately claimed.

Drawings. After the cover come drawings, if there are

any. Drawings are required, if necessary, to understand

the invention. Therefore, the USPTO may deem an appli-

cation incomplete if drawings are absent. Drawings are

typically explained in the speciﬁcation (described below).

The cover of the ’004 patent indicates that it has no

drawings.

Speciﬁcation. The speciﬁcation is the text of the patent.

It comes after the cover and drawings and before the

claims. In essence, the speciﬁcation is a ‘‘user manual’’

that

should provide enough

description and detail to

enable persons skilled in the art to make and use the

full scope of the claimed invention. It deﬁnes terms used in

the claims and often provides examples of the invention. It

is the speciﬁcation that must satisfy the written descrip-

tion, enablement, and best mode requirements of patent-

ability. Therefore, the speciﬁcation must be drafted as

broadly as necessary to support broad claims, and with as

much speciﬁcity as necessary to support narrow claims.

Understanding the claims of a patent often requires care-

ful review of the speciﬁcation.

A speciﬁcation typically has the following sections:

background of the invention; summary of the invention;

brief description of the ﬁgures; detailed description of the

invention; examples, and claims (which are technically

part of the speciﬁcation).

The background of the invention describes the general

ﬁeld of the invention, notes insufﬁciencies in existing

technology, and explains generally how the invention

solves such problems. The summary of the invention

usually provides additional information about how the

invention solves the problem addressed by the invention.

The brief description of the drawings brieﬂy explains what

the drawings show. The detailed description of the inven-

tion typically explains the invention and how to make and

use it. Finally, the examples demonstrate how the inven-

tion works, either by describing actual experiments and

results or by setting forth methods that could be used and

indicating expected (but not actual) results (known as

932 PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY

‘‘prophetic’’ examples). A proper speciﬁcation should make

clear whether an example is actual or prophetic.

Claims. The claims are found at the end of the patent

and follow the statement ‘‘I Claim’’ or ‘‘What is claimed is.’’

The claims include ‘‘limitations’’ that deﬁne the bound-

aries of a patent owner’s right to exclude. Such limitations

are (a) the elements against which patentability is tested

and (b) the elements that a product or process must

contain to infringe. Thus, any review of a patent must

include careful consideration of the claims.

Claims are numbered. By statute, each claim must be

written as a single sentence. As a consequence, claims

often are less readable than typical English sentences.

Claims usually have three parts: a preamble, a transition,

and a body. For example, consider the following hypothe-

tical claim in which the parts are denoted.

A composition

|ﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄ{zﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄ}

Preamble

consisting of

|ﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄ{zﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄ}

Transitional Phrase

ingredient A; ingredient B; and also ingredient C:

|ﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄ{zﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄﬄ}

Body

Below we provide some basic information about these

three claim parts. Books have been written about claim

drafting and how to determine the meaning of claims.

Such detail is beyond the scope of this article (42).

The Preamble. A preamble is an introductory statement

that names the thing that is claimed or deﬁnes the ﬁeld of

invention. The preamble may or may not serve as a claim

limitation. If a preamble serves as a claim limitation, it

narrows the claim. In other words, it provides an addi-

tional requirement a product or process must possess to

infringe the claim.

The Transition. The transition comes between the pre-

amble and the body. One of the following two transitional

phrases, or a variation thereof, is used in most claims: (1)

consisting of, as used in the hypothetical above, or (2)

comprising. The transitional phrase used affects how a

claim is construed.

Consisting Of: The term ‘‘consisting of ’’ is referred to

as a ‘‘closed’’ transitional phrase. This means that

the claim covers products and process that include

only the limitations that follow the transition. For

example, in the hypothetical above, the claim covers

only compositions that contain ingredients A, B, and

C; compositions with only A, B, and C would infringe

claim 1. The claim would not cover compositions that

also contain ingredient D; a composition containing

A, B, C, and D would not infringe claim 1.

Comprising: The term ‘‘comprising’’ is known as an

‘‘open’’ transitional phrase. This means that the

claim covers products and processes that include

each limitation that follows this phrase but that

infringing products can also include additional ele-

ments. For example, had the hypothetical above

used ‘‘comprising’’ as the transitional phrase, the

claim would cover compositions that contain ingre-

dients A, B, and C, whether or not they also contain

ingredient D; a composition containing A, B, C, and

D would infringe the claim if it were written with

‘‘comprising’’ as the transitional phrase.

The Body. The body of the claim is everything that

follows the transition phrase. The body contains the

limitations of the claim. As noted previously, limitations

are (a) the elements against which patentability is tested

and (b) the elements that a product or process must

contain to infringe. In claim 1, above, A, B, and C are

limitations.

There are two primary claim types: independent and

dependent. Independent claims stand on their own. De-

pendent claims relate back to or ‘‘depend from’’ a previous

claim. A dependent claim is construed to contain each

limitation of the claim from which it depends, as well as

the additional limitations added in the dependent claim

itself. Consider the following hypothetical claim set:

1. A packaging ﬁlm comprising laminate A, laminate

B, and an adhesive.

2. The packaging ﬁlm of claim 2 further comprising a

coating.

3. The packaging ﬁlm of claim 3, wherein the coating is

impermeable to moisture.

Claim 2 is an independent claim that has three limita-

tions: laminate A, laminate B, and an adhesive. Claim 3 is

a dependent claim that depends from claim 2. Therefore,

claim 3 contains all three limitations of claim 2 (laminate

A, laminate B, and an adhesive), as well as the additional

limitation of a coating (whether impermeable to moisture

or not). Claim 4 depends from claim 3 (which depends

from claim 2). Therefore, claim 4 contains the laminate A,

laminate B, and the adhesive limitations of claim 2 and

the coating limitation of claim 3, with the additional

limitation that the coating must be impermeable to moist-

ure. A competitor need only infringe one patent claim to be

liable for infringement and face an injunction and/or

infringement damages.

Claim Construction. Claim construction is a very com-

plicated process by which the claims are interpreted to

understand what they do and do not cover. It requires

consideration of the language of the claims themselves,

the speciﬁcation, and the prosecution history of the patent

(e.g., representations made to the examiner to obtain the

patent). Claim construction begins with the language of

the claim. Typically, the words and phrases in the claims

are given their ordinary meaning as used and understood

by people in the ﬁeld of the invention. However, a patentee

can be his or her own ‘‘lexicographer,’’ meaning that the

patentee may use claim terms in a way that is markedly

differently from their ordinary meaning, provided that the

patentee’s deﬁnition is clearly set forth in the patent

speciﬁcation. Even seemingly simple terms may lead to

PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY 933

claim construction disputes during litigation. Resolution

of such disputes often requires a court hearing that can

last hours or even days. For example, in one patent

dispute, the parties fought about the meaning of the claim

term ‘‘generally convex’’ (43). Resolution of such claim

construction issues is often determinative of whether a

patent is valid and/or infringed.

Legal Opinions

Understanding what a claim covers is crucial to assessing

issues of infringement and validity. For example, if a

business wants to determine if a proposed new product

may infringe an existing patent, it must (1) construe the

claims and (2) compare the construed claims to its new

product. Infringement is not determined by comparing a

proposed product to the patent holder’s product. Infringe-

ment is tested against what is claimed in the patent.

Similarly, to assess the validity of a patent, one must (1)

construe the claims and (2) consider the construed claims

in view of the prior art and other patentability require-

ments to determine if the claimed invention meets the

requirements of patentability. Federal courts strictly ad-

here to these two-step processes.

Due to the complexity of the claim construction process,

a patent attorney is typically consulted. For example,

companies often seek freedom-to-operate opinions or non

infringement opinions from patent attorneys before

launching a new product. Such opinions entail searching

the patent landscape to identify patents of interest, ana-

lyzing the patents (claims, speciﬁcation, and prosecution

histories), construing the claims, and comparing the

claims to the proposed product to assess the potential for

infringement liability. If potentially troublesome patents

are identiﬁed, the patent attorney may be asked to assess

the validity and/or enforceability of the patent. The patent

attorney may also be asked for advice regarding design

around options—that is, ways to achieve the same result

without infringing any potentially problematic patent

claims.

ENFORCING PATENTS

The rights that accompany an issued patent are not self-

executing. Although the patent holder has the right to

exclude competitors from making, using, selling, or offer-

ing for sale in the United States, or importing into the

United States, the patented invention, the mere existence

of a patent does not ensure that infringing competitors

will not enter the market. For example, a competitor

might sell a potentially infringing product because the

competitor (1) did not know about the patent, (2) believed

that the product would not infringe the patent, (3) be-

lieved that the patent was invalid, (4) believed the patent

was unenforceable, and/or (5) believed that infringement

would not or could not be detected.

This section addresses the identiﬁcation of potential

infringers, the interaction between business goals and

appropriate enforcement action, and the litigation

process.

The Several Phases of Patent Enforcement

Pre-Enforcement. Before attempting to enforce a pa-

tent, a patentee must ﬁrst determine whether there are

potential infringers. This typically involves monitoring

the market to identify potentially infringing activity,

obtaining potentially infringing products, and assessing

whether such products infringe. The scientists and en-

gineers working within a ﬁeld, reading related literature,

and attending trade conferences are often a source of such

competitive information. Monitoring published patent

applications and issued patents can also provide insight

regarding competitor activities and where infringement

might arise.

Once a potentially infringing product or process is

identiﬁed, one must construe the claims and compare

them to the potentially infringing product or process to

determine whether there is infringement (see section

entitled ‘‘The Anatomy of an Issued Patent,’’ above).

Patent counsel can be very helpful construing claim terms.

Again, whether the patentee has a product of its own, and

how that product compares to the potentially infringing

product, is not relevant to the infringement analysis.

Deciding What to Do About Potential Infringer. Upon

identifying a potential infringer, and concluding that a

product or process likely infringes, the patent holder must

decide what to do. For example, the patent holder could

contact the potential infringer with the goal of negotiating

a license for royalties or a cross-license. Alternatively, the

patent holder could provide the potential infringer with

notice of the patent and ask the potential infringer to

remove a potentially infringing product from the market.

The patent holder may instead decide that the ultimate

goal is a license or cross-license, but choose to initiate a

litigation to signal the patent holder’s belief in the

strength of the patent, hoping that this will result in

better license terms. Or, the patent holder might decide

not to assert the patent for business or other reasons.

Ultimately, how a patent holder proceeds will depend

on the speciﬁc facts. However, the decision making process

often includes considering and weighing the answers to at

least the following questions:

1. What role does the patent play in the patent holder’s

business strategy? For example, does the patent

protect a market that is important to the patent

holder and in which the patent holder competes? If

so, the patent holder has increased incentive to sue

exclude competitors as

opposed to providing a

license that would likely increase competition.

2. What is the relationship, if any, between the patent

holder and the potential infringer? For example, are

they ﬁerce competitors or have they worked out

patent licenses and other business agreements in

the past? What relationship does the patent holder

desire? If a friendly relationship is desired, litigation

may not be the best approach.

3. How strong is the patent at issue? For example, are

there documents created during prosecution of the

patent that might provide a basis for alleging

934 PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY

inequitable conduct? Through discovery (discussed

below), alleged infringers will often ﬁnd weaknesses

in the patent—some previously known to the patent

holder and some previously unknown. Weaknesses

in a patent provide a motivation for a nonlitigation

resolution.

4. How much time would a patent infringement law-

suit require from important scientists or executives,

and would such time commitments disrupt impor-

tant R&D or business functions? The level of dis-

ruption must be weighed when determining

whether to bring suit.

5. Does the potential infringer have any patents that

could be used against the patentee? If so, a cross-

license may be an appropriate goal, because a law-

suit (and countersuit by the competitor) might result

in neither party being able to market their respec-

tive products.

6. Is the relevant market large enough, or important

enough, to merit a lawsuit that could cost millions of

dollars? Litigation can result in large damage

awards that justify the costs involved. It can also

result in excluding a competitor from an important

market, whereas a license might result in less of a

revenue stream.

7. What are the potential damages that could be

recovered from the potential infringer?

Enforcement Through Litigation

If a patentee decides to sue, the lawsuit will typically

progress through the following phases, each of which is

discussed below: (1) ﬁling of the lawsuit, (2) fact and

expert discovery, (3) claim construction; and (4) trial.

Patent lawsuits rarely go to trial in under a year, and

they often take several years to reach that point. The

following sections go into more detail on the phases of

litigation.

Filing of the Lawsuit.

The Patent Holder Files a Complaint. If a patent owner

has a good faith belief that a competitor is infringing, the

patent owner can enforce its patent rights in court. As

explained in the section entitled ‘‘Introduction to the

United States Patent System,’’ patent suits are handled

in the federal court system. To initiate a lawsuit in the

federal court system, the patentee must ﬁle what is called

a Complaint. The Complaint names the alleged infringer,

identiﬁes the patent(s) that are allegedly infringed, recites

the allegedly infringing activity, and speciﬁes the reme-

dies that the patent holder seeks. Typically, the patent

holder seeks payment of money damages and/or an in-

junction ordering the infringer to stop the infringing

activity.

The patent holder may bring suit on one patent or

several patents. For example, assume that the patent

holder has a ﬁrst patent covering a packaging material

and a second patent covering packages made with the

material. If a competitor is selling a product in a package

made with the claimed packaging material, the patent

holder could sue on both the material and the packaging

patent. Furthermore, a patent holder can assert a patent

even if it suspects that only some, but not all, of the claims

are infringed; that is, a patent is infringed if there is

infringement of a single claim.

The party ﬁling suit is known as the Plaintiff, and the

party being sued is known as the Defendant. Typically, but

not always, the Plaintiff is the patent holder and the

Defendant is the potential infringer.

The Alleged Infringer Files an Answer to the Complaint.

After the Complaint is ﬁled, the competitor ﬁles an

Answer, which additionally includes defenses. These de-

fenses usually include one or more of the following:

noninfringement, invalidity, and/or unenforceability. The

alleged infringer can assert as many defenses as

applicable.

Evidence And Burdens. Discovery is the process through

which the parties obtain information, known as Evidence,

relevant to the case. The patent holder uses discovery to

uncover details about the accused product or process to

prove that infringement exists. Conversely, the alleged

infringer uses discovery to uncover information relevant

to invalidity or unenforceability defenses, such as infor-

mation regarding how an invention was conceived or

whether the inventors withheld material information

from the USPTO during prosecution of the patent.

Such evidence, in the form of documents, testimony,

and often expert opinion, is presented to the court to try to

meet a party’s burden of proof in the case. In patent

litigation, the patent holder has the burden to prove

infringement by a preponderance of evidence—that is,

that there is more than a 50% likelihood that the allegedly

infringing product uses the patented subject matter. This

means

that if neither

the patent holder nor the alleged

infringer provide any proof of infringement or non-infrin-

gement, there will be no infringement because the patent

owner has not met its burden.

Similarly, the alleged infringer has the burden of

proving defenses against infringement but, as explained

above, does not have to prove noninfringement. With

regard to proving invalidity and/or unenforceability, the

alleged infringer must do so by clear and convincing

evidence. This is a more difﬁcult standard to satisfy than

the preponderance of the evidence standard, because once

a patent is issued by the USPTO, it is presumed valid.

Fact Discovery. During fact discovery, the parties re-

quest and exchange factual information related to the

case. The Federal Rules of Civil Procedure (‘‘the Rules’’),

which govern litigation in federal court, provide the

following mechanisms for obtaining such factual informa-

tion: document requests, interrogatories, requests for

admission, and depositions. Fact discovery usually in-

volves disclosing to the opposing party, a competitor,

information that one would consider conﬁdential. Typi-

cally the parties have the court enter a Protective Order

that protects such information by governing who of

the opposing party can see such conﬁdential information,

as well as what the receiving party can do with the

PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY 935

information. In other words, the protective order is nego-

tiated so that even though information is exchanged, the

dissemination and use of conﬁdential information can be

restricted.

Document Requests. Each party is permitted to request

documents from the opposing party to obtain evidence

relevant to their allegations or defenses. These requests

are called Document Requests. Each party is obligated to

preserve and hand over documents that might prove

relevant to the lawsuit. These include laboratory note-

books, meeting minutes, memoranda, ﬁnancial data, ad-

vertising and marketing documents, ﬂow diagrams,

forecasts, organizational charts, invoices, consulting

agreements, e-mails, and the like. The Rules require ex-

changing information maintained in paper form as well as

in electronic form, and even electronic information that

has been erased, where traces are accessible. Ultimately,

the parties can exchange tens of thousands, hundreds of

thousands, or even millions of pages of such documents.

These documents are then reviewed by the respective

parties to identify evidence to present to the court to prove

infringement, invalidity, and so on.

Interrogatories and Requests for Admission. An Interro-

gatory is a question to the opposing party that the oppos-

ing party must answer. For example, an alleged infringer

might propound interrogatories regarding how and when

the inventors of a patent conceived their invention, or

when the patent holder ﬁrst showed prototypes of the

invention to a customer. The patent holder must then

make a good faith effort to obtain and provide an answer

to the interrogatory. Likewise, the patent holder may

present interrogatories to the alleged infringer asking

for details about its process or products.

Requests for Admission are statements that the oppos-

ing party is asked to admit. Such admissions can reduce

the issues for trial. For example, based on the review of

documents produced in response to a document request,

an alleged infringer might ask the patent holder to admit

that its inventors had not conceived their invention by a

given date. Once admitted, the alleged infringer would no

longer have to prove (or present evidence regarding) the

admitted fact at trial. Likewise, if the alleged infringer

admits that its process uses a speciﬁc step(s), the patent

holder will not need to separately prove this at trial when

attempting to prove infringement.

Depositions. Typically after documents have been ex-

changed and reviewed, each side identiﬁes individuals

(i.e., witnesses) from the opponent’s company for deposi-

tion. These often include the inventors, people with knowl-

edge of the patent prosecution, people with knowledge of

the accused products or processes, people knowledgeable

about product costs and proﬁt margins, and so on. During

a deposition, the witness is required to answer questions

from the opposing attorney. The attorney’s questions and

the deponent’s answers are recorded by a stenographer

and may also be videotaped. All questions are answered

under oath, and the answers (subject to objections) can be

used at trial for different purposes, including to impeach a

witness’ testimony if the witness’ trial testimony differs

from the witness’ deposition testimony.

Fact depositions are used to gather fact evidence re-

lated to the issues in the case (infringement, validity, etc.).

Fact depositions therefore address what actually hap-

pened with regard to the invention at issue, the allegedly

infringing product, and other issues in the case. Question-

ing of the patent holder’s witnesses often relates to how

the patented process or product was developed, commu-

nications with the USPTO, and the content of relevant

memoranda, reports, correspondence, e-mails, and so on.

Questioning of the accused infringer often relates to (a)

the details of accused products or processes and (b) the

accused infringer’s knowledge of the patents in suit.

Many scientists and engineers dread the idea of being

deposed. Depositions represent an unfamiliar environ-

ment to most scientists and engineers, and many are

anxious about how their performance will impact their

company. To alleviate such anxiety and to prepare for the

deposition, the witness will usually have a meeting with

an attorney that will represent the witness at the deposi-

tion, also known as the attorney who defends the witness.

During this meeting, the attorney can answer questions

the witness has regarding depositions. In addition, the

attorney will usually:

1. Explain the mechanics and rules of a deposition,

such as the role of the witness, questioning attorney

and defending attorney, the presence of a court

reporter, and so on.

2. Review the issues in the litigation.

3. Discuss the witness’ knowledge regarding the issues

in the litigation.

4. Explain how the witness ﬁts into the case.

5. Discuss questions and/or issues that will likely arise

during the deposition.

6. Provide guidelines regarding how to answer ques-

tions, including telling the witness to listen to ques-

tions carefully, to answer only the question asked,

and to tell the truth.

Adequacy of preparation for a deposition often correlates

with how well a witness does do at deposition. Therefore,

is important to

allow an appropriate amount of time for

preparation. Often such preparation will last a day or

more, depending on the anxiety level of the witness, how

important the witness is to the case, and the amount of

material to review.

Impact of Fact Discovery. As discovery proceeds, each

party typically reﬁnes its litigation positions based on the

discovery it obtains. For example, the alleged infringer

might reﬁne its defenses to include an unenforceability

defense if it learned during discovery that one of the

patent holder’s inventors had information material to

patentability that was not provided to the USPTO. Re-

ﬁnement can be based on uncovered documents, interro-

gatory responses, request for admission responses, and

deposition answers.

936 PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY

In some cases, fact discovery can drain a company’s

resources. For example, key employees may have to spend

days, or weeks, helping attorneys collect documents for

production, helping attorneys respond to interrogatories

and requests for admission, preparing for depositions, and

being questioned as witnesses at depositions. Through the

discovery process, opposing counsel will often ﬁnd any

‘‘skeletons’’ that exist in relation to the litigation. The

disruptive nature of litigation must therefore be weighed

against the potential value of litigation before a patent

owner asserts a patent.

Expert Discovery. Expert discovery follows fact discov-

ery. During expert discovery, the parties work with ex-

perts in the ﬁeld of the invention covered by the asserted

patent(s). Experts can be university professors with ex-

pertise in the technology at issue, outside consultants,

ﬁnancial experts (to address, for example, damages is-

sues), and the like.

Experts are retained to provide expert opinions regard-

ing issues in the case. Unlike fact witnesses whose testi-

mony is limited to what actually happened, experts can

provide opinions and consider what would happen in

various hypothetical circumstances. Experts typically

rely on documents and other information exchanged by

the parties during fact discovery. They may also conduct

tests or ﬁnd relevant scientiﬁc materials on their own.

Thus, for example, a patent holder may hire an expert to

submit a report providing opinions as to how the alleged

infringer’s product meets all of the limitations in its

patent claims, supported by testing that the expert con-

ducted. The alleged infringer may retain an expert to

submit a report giving opinions regarding why the as-

serted patent claims are invalid.

After an expert submits an expert report on behalf of a

party, the opposing party will usually take the expert’s

deposition. Such depositions are used to more fully under-

stand the expert’s opinions and to probe the bases for the

opinions.

Claim Construction. At some point during litigation, the

parties may have a hearing before the court to establish

the meaning of the asserted claims, or, more particularly,

speciﬁc terms within the asserted claims. This is known as

a claim construction hearing. The claim construction

hearing can happen during or after fact or expert discov-

ery, or even as part of the trial. The result of a claim

construction hearing often has a large impact on the

litigation. For example, if a claim is construed narrowly,

it might make it difﬁcult for a patent owner to prove

infringement. However, that same narrow construction

might help the patent owner defend against an allegation

of invalidity.

Trial. Many patent cases do not go to trial. One reason

is that many patent cases settle before trial because of

weaknesses in the parties’ positions revealed during fact

and/or expert discovery. Another reason is that cases may

be resolved before trial if a party has proven to the judge

that there are no issues of fact that have to be resolved at

trial, thereby allowing the judge to rule without the need

for a trial. However, if a case does not settle or end for

some other reason, it will go to trial.

The trial is an opportunity for a judge and/or jury to see

fact and expert witnesses testify and to assess their

credibility. Indeed, many cases are won or lost based on

whether the judge and/or jury believe a witness.

During trial, and even after the trial but before a

decision has been rendered by the judge or jury, the

parties can still settle the case. Again, such settlements

occur because presentation of evidence at trial, or the

performance of a witness at trial, may highlight a weak-

ness in a party’s position. If a case does not settle, a

decision will be rendered. As explained in the section

entitled ‘‘Introduction to the United States Patent Sys-

tem,’’ such decisions can be appealed to the Federal Circuit

and ultimately to the U.S. Supreme Court.

Acknowledgments: The authors appreciate the assistance of Ms.

Victoria Elman in preparing the section entitled ‘‘The Interplay

Between Patents and other Forms of Intellectual Property’’ and

they also appreciate the helpful suggestions of Professor John R.

Kettle III of Rutgers University School of Law—Newark.

BIBLIOGRAPHY

1. Intellectual Property Today, September 2006, p. 11 (Decisions

& Settlements).

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Kieff, Principles of Patent Law: Cases and Materials,

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4. 35 U.S.C. y 101.

5. Juicy Whip Inc. v. Orange Bang Inc., 185 F.3d 1364 (Fed. Cir.

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6. 35 U.S.C. y 102.

7. Continental Plastic Containers Inc. v. Owens-Brockway Plas-

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11. 35 U.S.C. yy 281, 283, 284

12. 35 U.S.C. y 282.

13. 37 C.F.R. y 1.56.

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20. 35 U.S.C. y 112.

21. 35 U.S.C. yy 101, 102, 103, 112.

22. 35 U.S.C. y 154(d).

23. 35 U.S.C. y 171.

PATENT LAW PRIMER FOR THE PACKAGING INDUSTRY 937