At least, Bux has acknowledged that IDC's patents are pioneering. It certainly explains why he is trying desperately and persistently to frame the 1994 cross-licensing agreement as a sale of patent rights that gives Qualcomm rights that fit his extravagant fantasies about Qualcomm's place in the world of global broadband. Pathetic effort, but at least it's a very major concession from a very minor intellect with a reptilian sense of honor.
a. Pioneer Status
One factor that has been used to determine the permissible range of equivalents of a patent is its status as either a 'pioneer' patent or an 'improvement' patent. Pioneer patents typically are afforded a very broad range of equivalents, and improvement patents are granted a much narrower range. The Supreme Court has defined a pioneer patent as 'a patent covering a function never before performed, a wholly novel device, or one of such novelty and importance as to mark a distinct step in the progress of the art, as distinguished from a mere improvement or perfection of what has gone before.' The status of a patent is determined by comparing it with the prior art.
The observation that a pioneer patent should be entitled to a broader range of equivalents than an improvement patent was made early in the context of mechanical inventions.
When an invention was claimed that performed a new function or operated on a new principle, the inventor could exclude all other forms of the invention that operated on the same principle and performed the same function. However, when a patent was obtained on an improvement to the principle, the inventor could only exclude other forms of the narrow improvement, and not other forms of the original broad principle. It was therefore said that a pioneer patent was afforded a broader range of equivalents than an improvement patent.
A different view of pioneering patents has been expressed in some cases from the Federal Circuit. These cases state that pioneer status is not a separate rule of analysis, but rather a conclusion or effect that naturally flows from an absence of prior art and the prosecution history. In other words, the broader range of equivalents afforded a pioneer patent is not due to its status as a 'pioneer,' but rather due to the absence of blocking prior art and limiting prosecution history estoppel. These cases further state that a 'pioneer' patent is not 'a separate class of invention, carrying a unique body of law. Rather, there is a 'wide range of technological advance between pioneering breakthrough and modest improvement [that] accommodates gradations in scope of equivalency.' Where a particular invention falls on this spectrum 'depends on all the circumstances, and is decided as a factual matter.' In each case the trier of fact must 'balance the competing public policies of avoiding 'a fraud on the patent', and the need for reasonable certainty by the public as to the scope of the patent grant.'
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