Glossary

Abstractness: This term constitutes one of the most engaging concepts of patent law and will be at the center of decisions to be issued by The Federal Circuit and the U.S. Supreme Court in the coming years. It is representative of the challenges presented to our system of intellectual property laws as we more fully explore the Information Age and more fully distance ourselves from the Industrial Age. The Patent Act provides that one is eligible for a patent if one “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” As the centuries unfolded following passage of the Patent Act, courts ruled that there were three categories of subject matter that were outside the bounds of the Act, and, accordingly, were not eligible for patent issuance: laws of nature, physical phenomena, and abstract ideas. Those judge-created exceptions to patent eligibility then led to yet additional judicial discussion. Ultimately, the effort to define the meaning of “abstract ideas” led courts to conclude that---if a “process” or “method” was to be patentable---it would have to meet a “machine-or-transformation” test: if a “process” is to be patent eligible, it must either be “tied to a particular machine or apparatus” or it must transform “a particular article into a different state or thing.” The Federal Circuit---in Bilski v. Kappos---held that the “machine-or-transformation” test was not just an evaluative factor in determining whether a process was patent-eligible. Instead, that court held it was a requirement in determining the patent eligibility of a process. Fortunately, the U.S. Supreme Court reversed that decision and held that the test was not exclusive---just a “useful and important clue, an investigative tool” for determining patentability. Particularly because the concept of “abstractness” is not a statutorily created category of disqualification, courts should be reluctant to impose mechanistic or physical interpretations to that term when so much inventiveness is directed to informational and non-material subjects.

Affidavit: This is a formal document that is signed before a notary public. The person signing the statement formally swears that the matters contained in the affidavit are true.

Class Action Cases: Class actions are a special form of litigation that can be used to determine the rights and damages for large groups of individuals. Rather than having scores or hundreds or thousands of separate lawsuits, the rights of many individuals can be determined in a single proceeding. Class actions are permitted by the Federal Rules of Civil Procedure and in most state courts if certain factors can be established, including numerosity, common questions of law or fact, typicality of claims or defenses, and adequacy of representation.

Closing Argument: At the end of the trial, the attorneys are permitted to summarize their case for the jury before the jurors begin their deliberations.

Copyright: Copyright is a form of protection for intellectual property. Distinguished from patents and trademarks, a copyright is applicable to “original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” 17 U.S.C. § 102. The Act includes the following as being “works of authorship:” literary works, musical works (including any accompanying words), dramatic works (including any accompanying music), sound recordings, motion pictures and other audiovisual works, pictorial, graphic, and sculptural works, pantomimes and choreographic works, and architectural works. 17 U.S.C. § 102. The holder of the copyright is granted certain exclusive rights to the work (17 U.S.C. § 106):

  • The right to reproduce.
  • The right to create derivative works of the original.
  • The right to sell, lease, or rent copies of the work to the public.
  • The right to perform the work publicly.
  • The right to display the work publicly.
  • The right to perform a sound recording by means of digital audio.

Defendant: The defendant is the party being sued in a lawsuit.

Discovery: After a lawsuit is filed, both sides are permitted to obtain information from the other side. This process is very important to the success of any case. Written questions are submitted that must be answered; they are called interrogatories. Written requests to obtain specific documents can be prepared; they are called requests for production of documents. In addition, the attorneys can take depositions of potential witnesses. Rather than being in the form of written questions (interrogatories), depositions are taken of a witness in person. The attorney asks questions and the witness must answer them. Depositions are taken under oath, and a court reporter is present to record all that is said. At the conclusion of the deposition, the court reporter will prepare a written transcript of the question-and-answer session. The deposition can be used as evidence at trial.

Doctrine of Equivalents: This is a patent law principle applied in infringement cases. A party may be held liable for patent infringement under circumstances in which the infringing device or process does not fall within the literal scope of a patent claim but is, instead, equivalent to the element of the claim. The doctrine is applied to individual elements of the patent claim rather than to the invention as a whole and is applied without regard to intent. The Supreme Court — in Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 U.S. 17, 40 (1997) — described the “essential inquiry” as follows: “Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention.” It is said that the doctrine is designed to provide fair protection to inventors. It is utilized in patent interpretation in the United States but is less solidly grounded in many foreign countries.

Fee Agreements: A fee agreement describes the details of the legal services to be provided by the attorney. It should be in writing and should specifically cover such issues as the fees to be paid to the attorney, the manner in which expenses will be charged, and the scope of legal services that are expected of the attorney.

General and Special Damages: In compensating an injured person for the damages that he or she has sustained, the jury will typically assess two basic categories of damages. One category concerns losses that can be determined with some degree of precision — loss of earnings, loss of future earning capacity, medical bills in the past and future, and the like. These are called special damages. General damages, on the other hand, are less "mathematical" in nature, but oftentimes they constitute the most significant loss suffered by the injured person. General damages include physical pain and suffering; emotional pain and suffering; loss of enjoyment of life; and loss of care, comfort, and society when a loved one dies.

Gross Negligence: This phrase applies to misconduct that exceeds ordinary negligence, although most courts do not require proof of willfulness or wantonness. Gross negligence — in most states — can result from multiple acts of ordinary negligence.

Jury Deliberations: At the conclusion of a trial-after voir dire, opening statements, trial witnesses, closing arguments, and jury instructions — the jurors are given the case to decide. They discuss the case in a separate room — jury deliberations — and then summarize the result of their discussions on the verdict form.

Jury Instructions: Jurors decide cases based on their review of the evidence presented during the trial. The jurors receive direction from the judge regarding any legal principles they must consider in arriving at their verdict. The judge provides that direction by reading from written "instructions"; this is done at the end of the case, although some instruction may be read to the jury at the outset of the trial. Attorneys for the plaintiff and defendant are given an opportunity to submit their recommended instructions to the judge.

Jury Verdict: After the jury has heard all the evidence and received the judge's jury instructions, the jurors meet and arrive at their decision. The foreman of the jury summarizes the decision on the verdict form that the judge — with input from both sides of attorneys — has given them. The verdict will indicate who has won and who has lost and, if damages are awarded, the amount of the damages.

Markman Hearing: A Markman hearing (also referred to as a claim construction hearing) is routinely held in patent infringement cases. They can occur at various stages of the process: before the close of discovery (as an accompaniment to a motion for preliminary injunction), following the close of discovery (in tandem with a motion for summary judgment), at trial but before jury selection, or after the close of evidence. If conducted as a stand-alone hearing, it is an evidentiary hearing where the parties argue their positions on the meaning to be given to the key words used in a patent claim. To the extent it is to be found that one patent “reads on” or infringes another patent, the meaning to be given to the words in a patent’s claims is critical. That interpretative function had been undertaken by juries but the U.S. Supreme Court ruled in 1996 that judges---not juries---would decide the meaning of the words. The decision---Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)---resulted in the advent of hearings that can extend for days and which, as a practical matter, can be determinative in resolving the case before trial.

Medical Malpractice: Sometimes referred to as medical negligence, it applies to doctors, hospitals, and other health care professionals. As with general negligence, it describes conduct that deviates from a reasonable standard of care. It is usually necessary to prove that deviation by the testimony of expert witnesses in the same field of practice in which the health care worker was engaged at the time of the incident.

Negligence: Negligence is the failure to exercise that degree of care that a prudent or reasonable person would usually use.

Object Code: This code is the next step beyond source code. Whereas source code is written in human readable words and symbols, object code is the machine readable transformation of the source code as accomplished by the particular compiler for the language utilized for the source code. The resulting object code file is comprised of a sequence of instructions that the computer processor can “understand” but that are not easily understood or modified by a person. It is sometimes referred to as “machine language.”

Opening Statement: Before the jury begins to hear from witnesses and review exhibits in a trial, the attorneys are permitted to summarize the case and to explain the evidence they believe will be presented during the trial.

Patent: A patent is a document issued by the U.S. Patent and Trademark Office. It provides protection to the inventor for the exclusive right to make use of, and sell or commercially benefit from, the invention to the extent described in the patent’s claims. The process commences with a patent application—the patent being the document resulting after the conclusion of the application process. A patent will typically consist of drawings of the invention, a specification or description explaining the invention, and the claims which define the scope and limits of the exclusivity. The U.S. Patent Act defines the types of inventions or discoveries that can be patented. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this [act].” 35 U.S.C. § 101.

Plaintiff: The plaintiff is the party who initiates the lawsuit.

Punitive and Exemplary Damages: This category of damages is not designed to provide compensation for injuries. Instead, compensation is obtained through a jury's award of general damages and special damages. Punitive and exemplary damages, on the other hand, are awarded in circumstances in which the defendant's misconduct should be punished by a specific and separate damage award. Generally, it is necessary to establish that the defendant acted recklessly, willfully, wantonly, or in disregard of the consequences. Under those circumstances, the jury can award damages in an amount that will punish the defendant and assure that the defendant and others will be deterred from similar misconduct in the future.

Royalty Interest: It is a property interest in oil and gas (or other minerals). It entitles the owner of the interest to a share of the production — free of the expenses of production. An "overriding royalty interest" is a royalty interest, but it usually is meant to refer to an interest in production that is "carved out" of the lessee's working interest in an oil and gas lease.

Source Code: This is the original version of a computer program. It is written in human-readable words and symbols and, consequently, can be easily modified by a computer programmer. It consists of programming statements created by a programmer with a text editor or a visual programming tool---and then saved in a file. The programming could be done in various languages---whether “C” or Fortran or RPG or PHP. Because source code can be manipulated, it is typically protected and proprietary. Thus, software would typically not be accompanied with the source code for the program. This is an issue that distinguishes open source products---in which the source code is provided so that there can be open access and further unfettered improvements.

Statutes of Limitation: Lawsuits must be filed within certain limited periods of time or the person can forever lose his or her right to sue. These time limits vary from state to state, and different time periods are provided for different kinds of cases. Thus, depending upon the state in which the case arises, there will be different periods of time to file cases based on personal injuries, wrongful death, libel, slander, breach of contract, and others.

Tort: A tort is a wrongful act that causes harm to another person.

Trademark: A trademark is a word, phrase, symbol, or design---or a combination thereof---that identifies and distinguishes the source of the goods of one party from those of others. 15 U.S.C. § 1127. Trademarks are meant to protect different types of intellectual property than copyright or patent protections. A trademark is protective of brand names and logos used on goods and services; copyrights are focused on original artistic or literary work; patents protect inventions. A service mark is the same as a trademark but it identifies and distinguishes the source of a service rather than the source of goods. In order for the mark to be eligible for trademark protection, it must be in use in commerce and it must be distinctive. As to the first issue, the Lanham Act defines a trademark as a mark used in commerce or registered with the bona fide intent to use it in commerce. 15 U.S.C. § 1127. As to the second issue, distinctiveness is typically analyzed in four categories: arbitrary/fanciful, suggestive, descriptive, and generic. To the extent the mark is considered arbitrary/fanciful or suggestive, it is viewed as inherently distinctive and the exclusive right to use the mark is determined by simple chronological priority. If the mark is considered generic, then protection is not provided inasmuch as the characterization would be general rather than unique or distinctive. If the mark is examined as being descriptive, it is protectable if it has acquired a secondary meaning in the minds of the consuming public

Voir Dire: This phrase is derived from the French words "to see" and "to say or tell." At the beginning of a jury trial, the Court will have summoned a number of people as potential jurors. Most judges permit the attorneys to question potential jurors before the final group of jurors is selected. This process — known as voir dire — allows the attorneys to learn more about the jurors, but it also allows the potential jurors to learn about the case. If the discussion between the attorneys and potential jurors demonstrates that it would be difficult for a particular person to serve as a fair and unbiased juror for the trial, then that person can be excused from jury service.