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VIEWS: 589 PAGES: 99

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									PATENT LAW
OUTLINE OVERVIEW  Intellectual Property Overview – 3
o o o o Trade Secrets – 4 Copyright – 8 Trademark – 8 Patents – 9

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Federal Pre-Emption – 11 Inventorship – 12
o Corroboration – 13

Priority – 14 Conditions for a Valid Patent – 15 (Graham Part I) o Patentable Subject Matter – 35 USC § 100 and § 101: – page 16
      Scientific Principles, Natural Phenomenon – 17 Process – 17
     New Use of a Known Product – 17 Mathematical Expressions & Computers – 18 Computers – 19 Business Methods – 19 Micro-Organisms – 20

Machine – 19 Manufacture – 20 Composition of Matter – 21 Improvements – 21

o Utility – § 101 – page 22 o Novelty – § 102 – page 24
  Inventions Made Abroad & Derivations – 25 Anticipation – 26
      Inherent Anticipation – 26 Anticipation of Ranges – 27 Known or Used by Others (in this Country) – 27 Printed Publications (any country) – 28 Public Use (in this country) – 29 On Sale (in this country) – 31

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Section 102(a): before date of invention Section 102(b): more than one year prior to application Section 102(c) – 33 Section 102(f) – 34 Section 102 (g) – 35
   Conception & Diligence – 35 Reduction to Practice (RTP) – 36 Abandoned, Suppressed, or Concealed – 37

o Non-obviousness – § 103 – page 39
   Combination Patents – 41 Analogous Prior Art – 42 Combining Prior Art References & Elements – 42


Invention as a Whole – 43
    Claimed Invention, Teaching Away – 43 Discovery of Problem – 43 Simplicity – 44 Slight Physical Changes – 44

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OUTLINE OVERVIEW o Non-obviousness – § 103 (continued)
     POS (Person of Ordinary Skill in the Art) – 45 Secondary Considerations (Objective Indicia) – 46 At the Time the Invention Was Made – 47 Manner in which the Invention was Made – 47 Question of Law or Fact – 48

o Section 112: Sufficiency of Specification & Disclosure – page 49  Paragraph 1:
   Written Description – 50 Enablement – 51
o Undue Experiment, Bio Deposit – 52

Best Mode – 53 Claims – 55
o Means Plus Function – 56


Paragraph 2:
   Claim Drafting – 57 Double Patenting – 59


Procedures in the US PTO – 60
o o o Applications & Appeals – 60 Duty of Applicant to the US PTO (Materiality, Inequitable Conduct) – 61 Interference – 64 Reissue – 66 Re-examination – 67  Intervening Rights – 68


Amending & Correcting Patents – 65
o o


Infringement – 69
Presumption & Burden – 70 Claim Construction – 71 Doctrine of Equivalents – 73 Means Plus Function Claims – 77 Reverse Doctrine of Equivalents – 77 Statutory Infringement – § 271 – page 78  Direct Infringement – 79  Contributory Infringement – 80  Inducing Infringement – 82  Repair & Reconstruction – 83  Temporary Presence in the US, Prior Use Defense on Bus. Methods – 84 Design Patents – 85 Plant Patents – 87 Interests in Patents – 88 o o o o o o

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Licenses – 90
o o o Creation & Effect – 90 Employer-Employee Relationship – 91 Licensee Estoppel – 91 Injunctions & Damages – 92 DEFENSES: Laches & Equitable Estoppel – 96 Effect of Judgments – 98


Litigation Procedure – 92
o o o

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INTELLECTUAL PROPERTY OVERVIEW Trade Secrets, Copyrights, Trademarks, and Patents are NOT mutually exclusive protections; they can all exist in the same thing, although some must be chosen over others (e.g., usually choose trade secret or patent) Property of the intellect – intangible Shoe Example: Every element of intellectual property…  Patent – design patent on shape; utility patent on machine or process that makes it, formula or glue used  Trade Secret – info of value that others don’t know that you keep secret – potentially infinite duration  Trademark – brand of shoe, source indicator; goodwill of quality and advertising  Copyright – some of the design elements – Mazer v. Stein (separable from useful)

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INTELLECTUAL PROPERTY OVERVIEW – Trade Secrets Trade Secret: alternative approach to protect FUNCTIONALITY  Choose TS because EITHER cannot get patent OR want longer protection Trade Secret: Commercially valuable information not generally known to others  TS helps those who employ some level of SELF-PROTECTION (based on fiduciary duty / agency law) POINTS of VULNERABILITY of TS: TS NOT available (or does not protect against) when:  Independent Creation  Reverse Engineering  Non-actionable leakage (cannot show/prove that it leaked inappropriately) Advantages of Trade Secrets:  Does not have strict requirements of patents, also less expensive (hard to invalidate)  Protection may be PERPETUAL (as long as it remains a Trade Secret)  Not subject to merger doctrine in CR  May be available regardless of the availability of other forms of IP  Can choose TS over Patent or CR if you prefer (no pre-emption) Choosing TS or Patent:  TS Enforcement can be problematic o Duration is tempting, but note the remedy in Roton cut off the time of potentially infinite duration o PRACTICALITY – now I’m filing a complaint in open court with my trade secret! Letting the secret out  Can file under seal, not go into public record, not all judges like that o WHY SO MANY TS CASES SETTLE, FEW GO TO TRIAL  VERY DIFFICULT TO KEEP A TS A SECRET o You can license a TS, but if you violate it, I can sue you but I might not be able to get the secret back if you gave it to someone else; innocent bona fides not knowing of obligation can use it (it’s out there…)  From D Standpoint: D wants to go out and find an expert who can say everyone in the trade knows about it – how can the D reveal this secret to the expert? (Court: usually, you can’t)

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INTELLECTUAL PROPERTY OVERVIEW – Trade Secrets Common Law Trade Secret Requirements: 2 to 8 US States still have this 1. Information was a trade secret (not generally known) 2. Existence of a confidential relationship
  D was told information was secret or should have known from circumstances Existence of confidentiality agreement indicative of confidential relationship

3. Use of information in breach of confidence UTSA (Uniform Trade Secret Act) Enacted in 42 of 50 US States Trade Secret = information including but not limited to: technical or nontechnical data, a formula, pattern, compilation, program, device, method, technique, drawing, process, financial data, or list of actual or potential customers or suppliers, THAT is:  (Sufficiently secret to) derive economic value (actual or potential) from  Not being generally known and  Subject of reasonable attempts to maintain secrecy/confidentiality (under the circumstances) Misappropriation = acquisition of improper means (like espionage); not just breach of duty (GOES FURTHER THAN COMMON LAW) Remedies: 1. Injunction – can only last so long as it remains secret (best estimate plus headstart) 2. Monetary Awards – actual loss, unjust enrichment (profits), PROFIT EROSION, exemplary damages (punitive-like – if willful and malicious) 3. Attorney’s Fees – if willful and malicious OR bad faith of P Statute of Limitations = 3 years COURT SECRECY = Court is authorized to protect secrecy in litigation Inevitable Disclosure Doctrine = can enjoin as if former employee has taken or intends to take a job where the use of a trade secret is inevitable (7th Cir Pepsi v. Redmond revitalized – some courts reject) Economic Espionage Act = Criminal offense for TS protection – criminal, not civil; need to convince a prosecutor

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INTELLECTUAL PROPERTY OVERVIEW – Trade Secrets Kewanee (p. 9) – no facts in our case book (see also page 1151 of text, page 11 of outline) Patent law does NOT pre-empt State Trade Secret Law  Patent law and trade secret law can peacefully co-exist Trade Secret: 1. Must be Secret 2. Must NOT be public knowledge or general trade/business knowledge Trade Secret does NOT protect against independent invention or reverse engineering Forest Labs (p. 21) – company acquires other company and buys their assets; other company knew the trade secrets  Court: buying asset does not mean you bought the trade secret – the employees knew it was confidential and they told you – you violated TS/duty when you found out about duty and did not respect it, used the TS  Indirect misappropriation For a trade secret to exist (or be protect-able): 1. Must be Secret  Must take reasonable steps to protect its secrecy 2. Must have Value  Value such that if someone else used it that would be to their advantage  Must not be public knowledge or general trade/business knowledge Trade Secret does NOT have to be original or novel or unique Duration of Trade Secret is potentially unlimited  You can choose TS or patent but after 1 year [102(b) bar] you cannot change your mind EI DuPont (p. 25) – plane takes pictures of methanol plant during construction  photographers held liable  5th Circuit IMPROPER MEANS OF OBTAINING ANOTHER’S TRADE SECRET
 At the time, sending a plane overhead to take pictures was extraordinary measure, far beyond public domain  (At time), not reasonable to require them to put up a dome; a fence was enough

REASONABLE STEPS NOTE: NOW this case would likely come out differently – with satellite photos available from publicly available sources, nothing extraordinary about aerial photo

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INTELLECTUAL PROPERTY OVERVIEW – Trade Secrets FED CIR CAN GRAB A CASE WITH only PATENT IMPLICATIONS Roton (p. 11) – Fed Cir – Stanley misappropriates Roton’s hinge trade secrets – gross margins, sales data, market analysis information, hinge profit sales data, customer lists, milling process, lubrication information, machine and hinge fixturing methods, etc.
  Stanley had an obligation to keep secret because they considered buying Roton – got a plant tour, know-how, financial data UNDER A NON-DISCLOSURE CONFIDENTIALITY AGREEMENT Deal fell through, but then Stanley comes out with hinge… (Even though earlier they said it could not be done)

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Trade Secret Agreements can be written (e.g., confidentiality agreement) or can be oral
Trade Secret definition under Uniform Act – technical or non-technical data, etc. Circumstantial evidence & common sense nailed this case – not credible to say Stanley just magically came up with that This was DIRECT misappropriation (versus indirect misappropriation in Forest Labs) Remedy: o Actual damages for lost sales, past & future price erosion o NO punitive or attorney fees – willful but NOT malicious o Injunction was too broad (1st was over-broad, 2nd was not specific enough)

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INTELLECTUAL PROPERTY OVERVIEW – Copyright Low Cost Get copyright rights instantaneously (“springs up”)  Even if you want to register (which is optional), only $70 or so and easy form Copyright IF:  Original  Fixed in a Tangible Medium BUT – Cannot protect an IDEA under CR, only EXPRESSION Mazer v. Stein (p. 998) – lamp statue case  statue is separable from useful lamp and therefore copyright-able  Patentability of a work does NOT bar CR o Design patentability does NOT preclude a CR o Peaceful co-existence of design patents with CR  Intended use does not bar CR  Cannot CR functional elements, but can CR ornamental elements if they are SEPARABLE (PHYSICALLY or CONCEPTUALLY) from useful elements NOTE: CR and Design Patent and TM can all be in there, not mutually exclusive – BUT NOTE THE REMEDIES CAN BE DIFFERENT

INTELLECTUAL PROPERTY OVERVIEW – Trademark Constitutional basis is in the Commerce Clause (not patent & copyright clause) Can be just a mark, word or phrase, but also:  Product configuration (trade dress)  Color (pink insulation)  Sounds (Harley motorcycle engine)  Smell (bubble gum lubricating oil) Trademark is a SOURCE IDENTIFIER, infringement based on LIKELIHOOD of CONSUMER CONFUSION

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INTELLECTUAL PROPERTY OVERVIEW – Patents Patent Law is a creature of federal law  US Constitution: Article I, Section 8, clause 8 o The Congress shall have power… To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries  Exclusive jurisdiction in federal court Federal Circuit (Fed. Cir. or CAFC)
Fed Cir created in 1982 to funnel all patent appeals to one court (at least initially; US SC takes patent cases from Fed Cir, but usually very few)  More uniformity – no Circuit splits  First Chief Judge Markey ruled with an “iron fist” to get uniformity Fed Cir has changed over time; does NOT speak with one voice anymore – now panels may decide essentially the same facts differently – not as homogeneous anymore

Essential Elements for a Patent:  Useful
o level of utility is low (just not landfill; Pet Rock as paperweight OK) Prior Art – that which came before that relates to the invention Analogous versus Non-Analogous prior art Thomas Jefferson – must be something more than just new

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o o o


Patent Policy: Incentive for investment in innovation: monopoly profits for a limited time in exchange for information going into public domain, justify the R&D expense
 If no patents available, must rely on secrecy – may think twice about R&D investment

Quid Pro Quo:  Patent right – incentive; temporary monopoly  Disclosure – benefit to the public; public domain
Other incentives for innovation:  Altruism: the common good (not the most effective incentive)  First-mover advantage (get profit before others can copy)  Prize system  Patronage system

Rights under a Patent: Right to EXCLUDE OTHERS from:  Making the patented matter (within the scope of the patent claim)  Selling the patented matter (within the scope of the patent claim)  Using, importing, etc Does NOT give the right to practice  Force improvement patentees to go to base inventor for license ** We allow improvement patents (being cognizant of original patentees’ rights)  That is what drives technology, building on idea after idea

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INTELLECTUAL PROPERTY OVERVIEW – Patents Pieces of Patents: (See page 97 of text from Graham):  Background  Summary of Invention  Drawings  Detailed Description
o o Written description must be ENABLING – POS can make invention based on this Best Mode Language of claims is critical – come within claim & infringe METES & BOUNDS OF YOUR IP


o o

Hard to get a patent invalidated  Jurors and judges impressed by the document; inventors are special (Mr. Wizard)  Halo Effect  As the P, show the jury the document! Touch it!  Burden for patent invalidation: CLEAR & CONVINCING Evidence, PRESUMPTIVE VALIDITY of patent in litigation (in reality, burden may be HIGHER because of halo effect) Forum-Shopping in Patent Law Cannot avoid the Fed Cir (law is relatively uniform), but can get differences in district courts: 1. Speed  The “rocket docket”: ED TX, ED VA, WI, D.Del.  Courts in these jurisdictions take filing to decision in 1 year (versus 3 to 5 more typically) BUT these dockets can then get overloaded 2. Patent Law as a Business  Patent litigation is expensive  Litigants want to reduce their expenses, cost of enforcement  Discovery is expensive o Marshall, TX – Judge Ward – patent cases good for the community, patent litigation tourism – hotels, restaurants, etc  65-70% decided in favor of patentee (statistically higher than other courts)  only 2 ever held invalid o ND Ill. – likes SJ more, fewer trials NOTE: Not really forum-shopping the LAW because of the Fed Cir umbrella, but forumshopping other features like speed and friendliness to parties at district court level  KEY: 95% of cases SETTLE before trial

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FEDERAL PRE-EMPTION Bonito Boats (p. 1134) – FL statute forbids copying (direct molding) of boat hull designs  statute held VOID due to pre-emption of patent law Federal Patent Law PRE-EMPTS State Law  No state patent-like statute/system (utility & design) to intellectual creations which would otherwise be unprotected as a matter of federal law  States must yield if Federal conflict  State regulation of (potentially patentable but) unpatented NOT “per se” or “ipso facto” pre-empted  trade dress and such Public Domain if:  Patent Expires  Publicly Known & Unprotected POLICY  Uniformity for patent law  In the US, copying is not only allowed but it is encouraged with notable exceptions for patents and such  Concern about something easily reverse-engineered and could be patented but now protected without the high bar of patent requirements  If everything could be protected, have we dulled the incentive to truly invent, inventions that meet patentability standards? NOTE: In response, federal legislature included boat hulls under copyright law Kewanee Oil (p. 1151) – former employees steal synthetic crystal trade secrets (see also page 9 of text, page 6 of outline)  State Trade Secret Protection is NOT pre-empted by patent law o Trade Secret protection is initially available whether patented or not
   Some tension, but not incompatible Thing Protected = Trade Secret; Basis = Contractual obligation of confidentiality Berger:

o TS largely covers things that are not patentable or dubiously patentable, (next step) only occasionally clearly patentable and TS protection is weaker o On next step, choose not to patent at own peril – someone else will invent soon anyway or reverse engineer (then maybe they’ll get a patent and shut you down), so not really a conflict
 Patents & TS have co-existed for over 100 years and they seem to get along

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INVENTORSHIP The US cares about inventorship; virtually all the rest of the world does not (only cares about ownership) Constitutional basis: “authors and inventors” 35 USC § 102(f) – person entitled to a patent UNLESS he did not himself invent  Example: go to England, see machine for making plastic wrap, only isolated community in England knows about it; come back to US and file patent app  cannot get a valid patent in the US – 102(f) bars JOINT INVENTION For joint inventorship, must be some kind of transfer, can work together or be separated by space and time If there is a common obligation to assign the same entity, then joint inventor A not treated as prior art to joint inventor B working for the same company Ethicon (p. 121) – joint inventorship proved on one claim, kills entire suit  Patent issuance creates a presumption that the named inventors are the true and only inventors  Inventorship is a question of LAW (court reviews w/o deference)  Conception is the touchstone of inventorship o Each joint inventor must generally contribute to the conception of the invention o Joint inventors need not make the same type or amount of contribution to the invention  Contribution to one claim is enough o Simply reduced the inventor’s idea to practice is not necessarily a joint inventor  Each co-inventor presumptively owns a pro rata undivided interest in the entire patent, no matter what their respective contributions  All co-owners must ordinarily consent to join as plaintiffs in an infringement suit o One co-owner has the right to impede by refusing to voluntarily join  Inventor’s testimony respecting the facts surrounding a claim of derivation or priority of invention cannot, standing alone, rise to the level of clear and convincing proof o Must supply evidence to corroborate his testimony (See Corroboration – next page)

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CORROBORATION From Ethicon on prior page in outline: Inventor’s testimony respecting the facts surrounding a claim of derivation or priority of invention cannot, standing alone, rise to the level of clear and convincing proof  Must supply evidence to corroborate his testimony (See Corroboration – next page) Sandt Technology (p. 165) – phone security cover  patent invalid due to prior invention; inventor testifies Corroboration: A party claiming his own prior inventorship MUST proffer evidence corroborating his or her testimony Corroboration Rule of Reason Test: o All pertinent evidence examined to determine if inventor’s story is credible
 In this situation, has there been sufficient proof such that it is not simply one person’s word against another’s? Recognize vested interest and account for that…

o Each case judged on own facts 1. Documentary/Physical evidence is best  More than just a dated notebook is best – orders for material needed; 2. Circumstantial evidence (even alone) may corroborate (sufficiently) 3. Oral testimony of non-inventor is SUSPECT (risk of collusion) Whether oral testimony of non-inventor is sufficient: 1. Relationship between corroborating witness and alleged prior user; 2. Time period between the event and the trial; 3. The interest of the corroborating witness in the subject matter in suit; 4. Contradiction or impeachment of the witness’ testimony; 5. The extent and details of the corroborating testimony; 6. The witness’ familiarity with the subject matter of the patented invention and the prior use; 7. Probability that a prior use could occur considering the state of the art at the time; and 8. Impact of the invention on the industry, and the commercial value of its practice Illustrative factors that may be useful POLICY: Prevent fraud by providing independent confirmation of the inventor’s testimony

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PRIORITY 35 USC § 119:  Foreign filing – under international convention – if you file in a member country and within a year (12 months) of that filing date you file in another country member, you can date back to the original filing and the effective filing date (priority date) is the original filing date  First foreign patent must issue or publish to establish priority as prior art - (p. 213)  Can use this to get around prior art! Bancroft (p. 213) – no facts in case book  Foreign patent must issue or publish to establish priority as prior art  application alone is not enough 35 USC § 120:  Continuation applications, divisional applications, continuation-in-part applications – if you have a patent application in the US and you file another application while it is pending, you can claim priority back to the first application for any common subject matter  Can use this to get around prior art! NOTE: Other countries do not give that 102(b) one-year grace period – beware when advising clients

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CONDITIONS for a VALID PATENT Graham v. John Deere (p. 102) – plastic hold-down cap for bottle finger-sprayer  obvious [See page 368 of text and 33 of outline for Part II] For Patent, must be: (Prerequisite = Statutory Subject Matter) 1. Useful 2. Novel 3. Non-obvious  To one of ordinary skill in the art at the time the invention was made Look at: 1. Scope & Content of Prior Art 2. Differences 3. Level of Ordinary Skill in the Art Secondary Considerations (Objective Indicia): 1. Commercial Success 2. Long-felt but Unsolved Need 3. Failure of Others  Etc 4. Known Disadvantage to Discouraging Combination 5. Expert Disbelief  Etc (from additional cases) Measure obviousness, novelty, etc at time when the invention was made PHE (Patent History Estoppel) – construe invention in light of claims and prosecution history    One thing which prior cases used to look at which was laid to rest: o What the inventor DID – sweat of the brow, “flash of genius” A lot of the focus is on the differences that inventor has done, focus on whether adding X was an obvious step or not, whether really an invention Graham: THAT IS NOT THE QUESTION; THE QUESTION IS (under Graham and Section 103) is WHETHER the combo WOULD HAVE BEEN OBVIOUS, IS CLAIMED SUBJECT MATTER AS A WHOLE OBVIOUS?

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STATUTORY SUBJECT MATTER (Patentable Subject Matter) 35 USC § 100: Definitions When used in this title unless the context otherwise indicates – (a) The term “invention” means invention or discovery (b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter or material 35 USC § 101: Inventions Patentable 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 therefore, subject to the conditions and requirements of this title [useful, novel, nonobvious, proper disclosure, etc] Not everything can be patented; Patent statute covers only some subset of subject matter in the universe Anything under the sun created by MAN (Chakrabarty) Patent protection cannot be obtained on: (In re Alappat – p. 558) o The laws of nature; o Physical/Natural phenomenon; and o Abstract Ideas
o o Including mathematical subject matter, standing alone UNTIL useful, concrete & tangible result

In contrast to practical application or embodiment thereof o Electrical, chemical, mechanical products – statutory for virtually all, no debate o Closer questions – computer science, biotech Globally, scope of patentable subject matter varies significantly from country to country Dolbear (The Telephone Cases) – p. 527 – Bell’s patent on the telephone  valid o CANNOT patent natural phenomenon like magnet, electricity BUT CAN patent USE of it for a particular purpose, APPLICATION
o o o o Distinguish from Morse (p. 488) – breadth, specificity o Morse claim 8 – covering too much, all applications of electricity to communicate o Here: NOT covering too much, electricity only for specific application Cederoth: was the only difference that Bell was more subtle than Morse? Hari: Morse claimed a result; Bell is claiming a method – “as set forth” – old claiming style where you could refer back to specification When NON-PATENTABLE PIECE (law of nature, etc) is BUT A PIECE OF A WHOLE INVENTION, why not let it be patented? Being express about it should not be a penalty; that stuff is in almost EVERY invention!!

Greenewalt (p. 529) – patent for associating light with emotion & aesthetic of music  VOID  not patentable subject matter o Cannot patent emotional or aesthetic reactions, aesthetic expression in itself o Does not seem like it should be protected via patent; alternate way to protect through © laws and design patents (pattern of a water fountain)

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Take-Away Ideas: If A is the first person to recognize that you could whop little brother with a baseball bat, could patent the method 1. Read older cases carefully – really addressing patentable subject matter or trying to avoid addressing patentable subject matter by saying not new or obvious? 2. If you come up with a new USE for an existing product, it IS patentable subject matter Is the EFFECT naturally occurring? Then may run into same outcome as Eye Infirmary, that in itself it is a natural phenomenon

Cannot patent a naturally occurring compound Morton v. NY Eye Infirmary (p. 530) – patent on inhalation of ether  void, not patentable subject matter o Not all discoveries patentable, even if brilliant and useful o Discovery (new force or principle) must be embodied & set to work, patented only in connection or combination with the means by which, or the medium through which, it operates
o o o o o Natural functions of an animal not patentable “Patent laws not meant to protect discoverers, but innovators” Ether itself cannot be patented because it is naturally occurring, but what about it’s use as an anesthetic? Are the uses precluded because the substance is known or are they precluded from patent because they are known? Case is fun to read, but doesn’t really help us draw a bright line

Cannot patent a scientific principle or law of nature o Einstein cannot patent E=mc2 o Newton cannot patent the law of gravity PROCESS Process in Section 101 is defined as “process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter or material” in Section 100 o Bit of a circular definition; gives courts some trouble Expanded Metal (p. 536) – expanded sheet metal  valid process patent o Process patents not limited to chemical action; process or method involving mechanical operations, producing new and useful result, may be patented NEW USE OF A KNOWN PRODUCT Application of Hack (p. 539) – new use of alloy in vacuum tube production  rejected o Patent on composition or machine cannot be predicated on new use of known composition/machine o “New Use” patent must be on method or process, not product claims
o If something exists (brazing compound) and you discover a new use for it, is that an invention or simply a discovery?

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MATHEMATICAL EXPRESSIONS & COMPUTERS Halliburton (p. 541) – 9th Cir – method of determining location of obstruction in drilling well  invalid, just mental steps o Mental steps, mental processes, abstract intellectual concepts, arithmetic  NOT patentable (alone)
o Perhaps problem was that the patent didn’t DO anything with the information, just calculated a number that sat there (as far as the patent was concerned)

Gottschalk v. Benson (p. 542) – US SC – method for converting binary  no patent; no practical application
  BCD  binary 127 in decimal = 001 0010 0111 in BCD = 01111111 in binary

o CANNOT patent abstract idea, mathematical formula, or algorithm WITHOUT a practical application o If it is simply a formulaic recitation of naturally occurring relationship, it is NOT patentable subject matter
o While the result itself was useful per se in the computer world; this is not a true application – JUST a mathematical formula, nothing else to it  Formula defines a necessary relationship Machine that made USE of the equation would be fair game…


Flook – intermediate case not included in our case book

Diamond v. Diehr (p. 545) – US SC – process for curing rubber which includes computer  patentable  Does not purport to over-rule Benson, purports to be consistent with it  Statutory subject matter = “anything under the sun that is made by man”  Claim does not become non-statutory merely because it USES math formula, computer  APPLICATION of law of nature or mathematical formula may well be deserving of patent  transform or reduce article to different state or thing o LEADS TO FOCUS ON POST-SOLUTION ACTIVITY  102/103 are of no relevance in determining section 101 – separate issues
 Significant activity after calculations – re-writing alarm limits, etc

Focus on Post-Solution Activity: 1. Is formula implicated?  If no, no big deal, no patentable subject matter problem  If yes, have math formula implicated, go to 2… 2. Does claim as a whole effectively proscribe anyone else from using formula?  If it doesn’t, no problem  If it does, not patentable subject matter  To determine this: is there significant post-solution activity (Parker case, not in our book)

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MACHINE COMPUTERS In re Alappat (p. 558) – computer carries out means for clearer picture for oscilloscope  patentable subject matter  Computer operating pursuant to software may be patentable (if all requirements met) o Do NOT decide that software in abstract is patentable  Computer is a machine/apparatus, not mathematics Three Categories of Non-Patentable: 1. Laws of Nature 2. Natural Phenomenon 3. Abstract Ideas  Including mathematical subject matter, standing alone  UNTIL useful, concrete & tangible result
 Key fact: claims are means plus function (Section 112, Paragraph 6) o By law, they incorporate by reference corresponding structure in specification o Could take each element (means + function) and use something electronic, but noncomputer to cover it o Cederoth: this case is NOT REMARKABLE – analogy to mechanical version of “computer” Why was this patentable  useful, concrete & tangible result – smooth waveform, akin to sharper image on TV



Software itself is NOT patentable – must be applied to useful, concrete and tangible result o Diehr – focus on claim as a whole

BUSINESS METHODS State Street (p. 565) – Financial hub & spoke mutual fund software/method  patent VALID  Calculating final share price is useful, concrete & tangible, not simply abstract idea/algorithm  There is no business method exception to statutory subject matter
 Again, claims were means + function claims o Each step by operation of law effectively incorporated computer it ran on in the spec BUT those steps could be performed without a computer


Any operation that you can think of to run on a computer is conceptually patentable as long as you claim it in means + function
Cederoth doesn’t like this case: o Just swept aside old business method exception doctrine – no basis for it o Look at statute – is it within a 101category? Process? o He uses some absurd examples: call customer, call back, then again – method to improve sales (doesn’t mention protection of novel/obvious) The statutory language is broad – the courts have no authority to narrow it; only Congress


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MANUFACTURE MICRO-ORGANISMS Chakrabarty (p. 573) – man-made genetically engineering bacteria capable of breaking down crude oil (for spills)  patentable Living organisms can be patented if: 1. Man-made and NOT naturally occurring 2. Meet other statutory criteria  For example, used to perform a specific function (useful, tangible result)  Micro-organisms, bacteria  Not for courts to narrow broad language of Section 101; Congress’s option, even when “new” areas erupt
  Plant patent statute is entirely different, does not preclude micro-organism from patent The “Harvard Mouse” – patentable – genes have been spliced and altered by man


This does NOT cover simple breeding – that is not considered man-made

[Handout] Newman – rejected claim Wagner – transgenic mammals (specifically says non-human) Wagner – virus-resistant transgenic mice Newman expressly put in human – rejected & later abandoned – to make a point  US PTO: cannot patent a genetically modified human based on 13th Amendment  The line is HUMAN

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COMPOSITION OF MATTER PE Sharpless (p. 596) – patent for Roquefort cream cheese combo  valid  Intermixing two or more ingredients which develop a different or additional property which ingredients themselves do not possess in common  patentable composition of matter If you reorganize it (naturally occurring or known) and it is new, it is no longer naturally occurring and you can get a patent

IMPROVEMENTS If it is patentable subject matter to begin with, you can patent an improvement on it if you meet all the statutory requirements Improvements will be subject to the same requirements for patentability as any other patentable subject matter Washburn (p. 601) – patents for barbed wire  An improvement patent cannot receive strength from the basic or parent idea; it must stand or fall on its own merit
  Difference in patents is the shape of the barb itself Although it was a slight change or improvement, it made barbed wire a commercial success, changed the Western US

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UTILITY Utility = usefulness Chisom – to be useful, need not be superior, but must pass 3 tests: 1. Operable, capable of use, achieve results 2. Operate to achieve minimum human purpose 3. Human purpose cannot be illegal, immoral, or contrary to public policy (slight misquote?) PROBLEM: Perception of immoral, illegal, etc changes over time – ex: contraception Patent Office more likely to be agnostic on public policy today… In re Christmann (p. 439) There must be an expression of utility either by implication or directly In re Bremner (p. 439-40) The law requires that there be in the application an assertion of utility and an indication of the use or uses intended Ex Parte Murphy (p. 441) – slot machine rejected by USPTO for lack of utility  overruled, court granted patent o Useful if it can accomplish a good results, even if it can be used for bad o Even if no good use prior to suit Brenner v. Manson (p. 442) – chemical process (method)  similar product being tested for anti-tumor effects o Not patentable unless CURRENTLY KNOWN to be useful o “Might be” doesn’t cut it o Nor does “usefulness under investigation” o Takeaway: A Patent is not a Hunting License o Just the other side of getting rid of social utility? Society doesn’t care about what you’re doing?

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UTILITY Raytheon (p. 450) – oven: microwave, thermal cook, self-cleaning  claim 1 invalid (convection did not occur in autoignition, error about how it worked was embodied in the claim); claims 2-7 valid (they did not have the error and the DC should not have imported the error from claim 1) UTILITY  Utility is a QUESTION of FACT, but depends on claim construction which is LEGAL QUESTION  When a claim requires a means for accomplishing an unattainable result, the claimed invention is inoperable as claimed  invalid under Section 112 or Section 101  When a properly claimed invention meets at least one stated objective, utility under Section 101 is clearly shown  If a party has infringed a properly claimed device by making, selling, or using  utility established  further supported by commercial success o If it was not useful, no one would copy it SECTION 112  Claim with a limitation impossible to meet may be held invalid under Section 112 (the impossible cannot be enabled) Error (in the theory of how it works) can be overlooked (and usually is) BUT error CANNOT be overlooked when the misconception is embodied in the CLAIM (May invalidate one claim but not necessarily others if they do not have the same problem) – Graver Tank quoted on p. 452 YOU DON’T HAVE TO UNDERSTAND WHAT YOU’VE DONE o You don’t have to be right about how invention works AS LONG AS IT WORKS o Don’t elevate drafting style of patent document over substance of disclosure Today, stating objectives tends to be used against you, but 20-30 years ago that was the style – highlight the benefits, list of objects of the invention

One area of innovation where patent office holds firm on REJECTION:  PERPETUAL MOTION machines  Violate both the 1st and 2nd law of thermodynamics  REJECTED under Section 101 for LACK OF UTILITY  May also reject on Section 112 enablement

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NOVELTY 35 USC § 102 – NOVELTY (page 194 of case book) A person shall be entitled to a patent UNLESS: (a) (publicly) known or used by others in this country, or patented or described in a printed publication in this or a foreign country – before the DATE OF INVENTION; or  Why partly limited to US? Convenience of trial – statutory language rules even in the age of the internet (solution – update the statute) (b) public use or on sale in this country; patented or described in a printed publication in this or a foreign country – MORE THAN ONE YEAR BEFORE FILING DATE; or  Own invention can become prior art  The “absolute bar” or “statutory bar” (c) inventor has ABANDONED the invention; or (d) First patented (patent issued) by applicant or legal rep in foreign country prior to the date of the application filing in US AND foreign application filed more than 12 months before the filing of the US application; or (e) the invention was described in (1) an application for patent published under Section 122(b), by another filed in the US before the invention by the applicant for patent OR (2) a patent granted on an application for patent by another filed in the US before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the US only if the international application designated the US and was published under article 21(2) of such treaty in the English language; or (f) applicant did not himself invent the subject matter to be patented; or (g) (1) during the course of an interference conducted under Section 135 or Section 291, another inventor involved therein establishes, to the extent permitted in Section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.  In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other  “secret” prior art NOT abandoned, suppressed, or concealed  Interference

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INVENTIONS MADE ABROAD Clow (p. 185) – invented earlier in Brazil but agreed to disclaim in interference settlement  appellant entitled to prove that assignors were not first inventors (remand)  Patent can only issue to first inventor in fact, not by agreement or arrangement o Cannot be conclusively settled between private parties – no 3rd party bound by that o Inventions made abroad count for first to invent (for inventorship, but NOT necessarily for filing date – i.e., prior art Section 104, 119) DERIVATIONS Derivation = taking someone else’s work and claiming it as your own Hedgewick v. Akers (p. 187) – In Canada, Akers has access to files and Hedgewick charges derivation in interference  P fails to meet burden of proof on derivation Evidence of activity, knowledge or use concerning an invention in a foreign country is not precluded in establishing derivation  though is precluded from date of invention except Section 119 priority Derivation: Prior complete conception of subject matter + communication of the complete conception to party charged with derivation  sufficient to enable ordinary skill in art to construct & successfully operate o (This is the BURDEN of PROOF for DERIVATION) Motive + Opportunity is NOT enough to meet burden on derivation  This is a derivation case because knowledge, activity in foreign country cannot be prior art

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ANTICIPATION What does the prior art DISCLOSE (not claim); it the invention NOVEL?  Novelty (Anticipation) – must be one source; cannot combine sources  Obviousness – can combine sources o NOTE: sometimes courts used “anticipation” when they really meant obviousness – only obviousness goes beyond four corners of prior art document Anticipation = Q of FACT Medichem (p. 189) Kalman v. Kimberly-Clark (p. 196) – thermoplastic ribbon filter valid & infringed Anticipation under Section 102:  Found (express/inherent) in SINGLE reference, device or practice  Claims under attack “read on” disclosure in a reference o Read on = all limits/elements in claim are found in reference or “fully met” by it o Does NOT require teaching what the patent teaches  Focus on anticipation of CLAIMS, not patent  To be prior art, must be ENABLING disclosure

INHERENT ANTICIPATION Schering (p. 197) – Claratin metabolite compound (DCL) claims are ANTICIPATED by Claritin  INHERENT ANTICIPATION AT ITS MOST EXTREME  Metabolites – no compound claims, BUT pure/isolated, pharmaceutical compound, or method of administration Anticipated (novelty) if single prior art reference discloses each and every limitation of the claimed invention  Requires only enabling disclosure, not creation or RTP  May anticipate w/o disclosing if missing characteristic is necessarily present or INHERENT in prior art o Does NOT require ordinary skill would recognize disclosure (at the time); recognition in prior art is not necessary o Inherent if natural result flowing from prior art General Principles: 1. That which would literally infringe later in time anticipates if earlier 2. Anticipated if granting would (allow to) exclude public from practicing prior art  Inherency does not have to place something in the public domain – if it’s there, it’s there  Court probably angry that second patent was transparent attempt to extend the patent life on the first
 Example: tethered cap on bottle o Snap-on cap rather than screw-on – maybe not inherently disclosed, but obvious

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ANTICIPATION OF RANGES Titanium Metals (p. 204) – Ti alloy: Russian article within range claimed by patent  patent anticipated  When a claim covers a range or several compositions, it will be anticipated if ONLY ONE point or part of range is disclosed in the prior art o KEY: Look at the claims – is any point on the range anticipated?  Do not want to write claims that are too broad  Claims are always the focus

KNOWN OR USED BY OTHERS IN THIS COUNTRY Gayler (p. 206) – fireproof safe made prior but private use not really accessible to public per se  “Known or used by others in this country” means knowledge & use existing in a manner ACCESSIBLE to the PUBLIC  Some tension with Schering?  Later (on remand): Fed Cir held if Wilder sold that safe to someone, THEN it would be prior art – offer for sale does not have to be public

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PRINTED PUBLICATION Printed Publication = ANYWHERE – does NOT have to be in the US
 Why printed? Statute written where printing was indicative that it would be distributed

Printed alone not enough  must be published NOTE:
    It does not matter if no one actually read it – they COULD have o Likewise, does not matter if no one appreciated the invention (parallel w/ Schering) It does not matter if it is in a foreign language The audience MAY matter – person of ordinary skill in the art? TRANSITORY nature CAN have effect – was slide just up for a second, long enough to be in the public domain?

In re Wyer (p. 225) – Australian patent application “laid open” for inspection ruled a prior “printed
publication” (published a blurb and says come to the office if you want more; available at office in Australia if you want to see it)

Printed publication is a unitary concept  disseminated (or) such that accessible to ordinary skill in art with diligent search w/o further research, experiment May aid BUT not requisite or conclusive:  Intent to make public  Activity in disseminating information  Production of a certain number of Copies  Method of publication amenable to copying In re Hall (p. 228) – doctoral thesis in library ruled prior art “printed publication”  For “printed publication,” public accessibility is the touchstone  Doctoral thesis CATOLOGED & INDEXED in one library sufficient Example: Russian thesis in Siberia library properly indexed in Russian is a printed publication In re Klopfenstein (p. 229) – printed poster slide presentation ruled prior “printed publication” (Pulls it all together) Sufficiently Accessible for Printed Publication: Several Factors for Case-by-Case Analysis:  Distribution  Indexing  Length of Time Exhibited – TRANSITORY nature  Expertise of Target Audience  Reasonable Expectation it would not be Copied, Steps to Prevent Copying (Baniak says bogus, expectation of those in the audience should be focus)  Simplicity or ease to understand & copy In re Cronyn (p. 234) – thesis title indexed only under author’s name – not cataloged or indexed in a
meaningful way


Not cataloged or indexed in any meaningful way = not accessible to the public o (Ex: Filed by name which bears no relationship to the subject of the thesis)

Soviet document obtained only after months of diplomacy  not a printed publication (p. 234 n.3)

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STATUTORY BAR - 102(b) A party’s OWN work can be used against THEM to prevent THEM from getting a patent NOTE: The printed publication cases on 102(a) apply to 102(b) as well PUBLIC USE – TOTALITY OF CIRCUMSTANCES Modern Statute: If in public use or on sale IN THIS COUNTRY for more than ONE YEAR prior to FILING, then no patent / invalid patent Shaw v. Cooper (p. 272) – sold and used gun invention before patent  patent invalid Statutory Bar: Law in effect at time of case = 1790/93/Pennock&Sellers Publicly known or used anywhere before filing  no patent / invalid POLICY:  If invention is in public domain, it STAYS there  Do not want patent extension  Different result under today’s law – 1-year grace and only applies to US City of Elizabeth (p. 274) – road testing in public for 6 years  patent valid  Court felt this was controlled, legitimate testing Law in effect at time of case = 1836/39 Experimental Use Exception/Negation Experimental use is NOT public use IF:
      Under inventor surveillance (reasonable measures to keep it under control); Testing for purpose, efficacy (not testing market); OR making improvements; Public use NECESSARY for testing/experimentation Public use/own, NOT public knowledge Used generally Put on sale


Egbert v. Lippmann (p. 277) – friend uses corset steels for 11 years prior to application  public use Law in effect at time of case = 1870 Public Use:
   ONE use is enough, though many may strengthen Number of persons to whom know IRRELEVANT for public use, ONE PERSON enough Even if it cannot be seen due to its nature


Negations/Exceptions for Public Use: 1. Experimental Use 2. Limitations/Restrictions of Use, Injunction of Secrecy
Whole industry adopted this stuff in interval; guy slept on rights and then wanted to go back and get a patent – tax on the industry; 11 years too long to believe experiment

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STATUTORY BAR - 102(b) A party’s OWN work can be used against THEM to prevent THEM from getting a patent PUBLIC USE Hall v. MacNeale (p. 279) – improved safe sold >2 years before filing  barred Law in Effect at Time of Case = 1870 Public Use DESPITE: 1. Hidden nature – had to deconstruct to see 2. Never “put to test” by burglar
Cross between corset case and paving case – all put product into intended environment  Paving – all can see it  Corset – no one can see it  Safe – features not used until someone tries to break in No reason he could not file app the moment the safe was installed

TP Laboratories (p. 281) – Fed Cir 1984 – experimental use of orthodontic appliance  not a public use  Court feels this was legitimate testing, getting it ready for patenting  Testing device, not the market  No extra charge was one factor, although overall charge for simultaneous services Experimental Use burden of proof NOT on patentee: If prima facie Public Use case, patentee must point out or come forward with convincing evidence to counter  Burden is always on the patent challenger Experimental/Public Use Non-Dispositive, Non-Exclusive Factors: 1. Length of test period 2. Whether payment made (commercial benefit) 3. Whether user agreed to secrecy 4. Whether records of progress kept 5. Non-inventor conducting 6. How many tests 7. How long compared to similar tests/products  Consider entire surrounding circumstances  Expression of inventor of subjective intent to experiment of little value BOTTOM LINE: Entirety of the Circumstances – nothing is dispositive

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STATUTORY BAR - 102(b) ON-SALE BAR Pfaff (p. 286) – Pfaff invents computer chip socket, sends drawings to mfr, sells, then actual RTP & filing patent (more than one year after purchase order)  patent INVALID – ready for patenting when purchase order On-Sale Bar 102(b) Applies When (aka 1-year Clock Starts When): 1. Commercial Offer for Sale (recall experimental use doctrine); AND 2. Invention must be ready for Patenting Either: a) (Actual) RTP before critical date; OR b) Drawings or descriptions enabling person of ordinary skill prior to critical date (constructive RTP)  Totality of Circumstances: nature of product, commercial relationship COMMERCIAL OFFER Linear Technology (p. 293) – pre-sale activities on computer chip rule NOT an offer for sale FOR TANGIBLE ITEM, NOT PROCESS COMMERCIAL OFFER FOR SALE:  Only an offer which the other party could make into a contract by simple acceptance for 102(b)  Look to general law of contracts, UCC – “common denominator”  Conclusion of law based on underlying facts NOT an Offer:  Mere advertising, promotion  Request for pricing advice  Data sheets, samples 102(b) Sale:  Offeree must make objective manifestation of assent to offeror  Clear “will-advise” is NOT a sale (“not released, not booked, will advise in future”)  Firm price NOT necessary Prevent commercialization beyond the 1-year grace period
     Ads – not enough, just getting pricing, can’t just say “yes” to it Prelim data sheets and info – can’t just say “yes”, not an offer o (Why not publication? Likely not enabling) Why wasn’t booking will-advise order sufficient? The ACCEPTANCE was NOT communicated to the BUYER  NOTE: were NOT offers from seller; were (“unsolicited”) offers to purchase from Buyers Mechanistic approach by Fed Cir – if purpose is to prevent commercial activity to prevent extension of the patent, is this a wide open loophole? How long can you book orders in this manner? What if deposit and getting money? Potentially large loophole for commercial activity – officially, I did not send a written confirmation…


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COMMERCIAL OFFER In re Kollar (p. 308) – contract to begin R&D to commercialize process  NOT a sale under 102(b) FOR PROCESS, NOT TANGIBLE ITEM On-Sale Bar 102(b) for PROCESS:  Sale of a product made by the process  Actually performing the process itself for consideration  Licensing the invention (even under which development of process would have to occur to commercialize) is NOT a 102(b) sale  merely granting a license is NOT enough  Distinction: selling patent RIGHTS versus the INVENTION, then you do not put the invention on sale Quirk: can make money on sale of rights w/o the 102(b) bar! Grain Processing (p. 311) – samples of starch conversion products sent out to mfrs  rule experimental use For on-sale bar, INDUSTRY CUSTOM IS RELEVANT Consistent with experimentation:  Short testing period  Small quantities  Free of charge  Necessary to gauge adverse reactions  EVEN SAMPLES GOING OUT THE DOOR (a step further than Linear where samples simply requested) could be non-bar

Two Prongs of Pfaff Test: 1. Offer/Accept 2. RTP What if offer/accept at t=0, then less than 1 year later, RTP (Ready to Patent), then file at 1.5 years from 0 – is this barred? Issue: once you RTP, do you march back to offer/accept or do you start off at RTP If you go back in time, Pfaff accomplishes nothing Start the clock when the second condition of Pfaff is met – go forward, not back Some uncertainty Reduce to Practice and Ready for Patenting very much synonymous, but there may be a scenario where they diverge (not the same words)

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ABANDONMENT – 102(c) Electric Storage Battery (p. 339) – no facts in case book Whether the invention has been abandoned is a QUESTION of FACT  Abandonment may be evidenced by the express and voluntary declaration of the inventor;  It may be inferred from negligence or unexplained delay in making application for patent;  It may be declared as a consequence of the inventor’s concealing his invention and delaying application for patent in an endeavor to extend the term of the patent protection beyond the period fixed by statute. Macbeth-Evans Glass (p. 339) – guy uses process commercially for 9 years as secret then tries to patent  abandonment  Court makes distinction between abandoning INVENTION and abandoning RIGHT TO PATENT INVENTION  Using invention for profit in secret for years effectively ABANDONS patent privileges, it is counter to policy  Must CHOOSE Trade Secret or PATENT – ABANDONMENT is about Abandonment of Patent RIGHT, not necessarily abandonment of product WL Gore (p. 344) – Kiwi makes Teflon tape machine, sells it  Trade Secret Process  no copies  No public use, no 102(b) bar  (Someone else’s) Secret commercialization of process does not 102(b) bar patent  Award party that gets to patent office and discloses against the world
  If Gore had been the party selling the Teflon – likely opposite result – chose trade secret, cannot go back Perhaps letter could have been offer for sale, but never argued

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PRIOR KNOWLEDGE UNDER 102(f) Oddzon Products (p. 268) – two confidential ball designs (102f) render application obvious  Subject matter derived from another is un-patentable under 102(f) AND  When combined with other prior art may make an invention un-patentable TO THAT PARTY (who derived) under Section 103 on OBVIOUS grounds EXCEPTION: Prior art under 102(f) and 102(g) cannot be combined for obviousness if the art is commonly owned w/ invention at time of invention  Encourages community among members of research teams Expanding prior art to PRIVATE COMMUNICATIONS Only prior art to a subclass of the public (exposed to art), not public at large o In “secret” prior art cases, if you see the machine and figure it out, it is prior art TO YOU!

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CONCEPTION & REDUCTION TO PRACTICE Key events in first-to-invent: o Conception o Reduction to Practice  Constructive – filing the enabling application, for example  OR Actual – making a working prototype First-to-conceive will still be first-to-invent IF you can prove diligence between conception and RTP (even if they RTP first before you) 35 USC § 102(g) – before your invention, made by another inventor who did not abandon, suppress, or conceal o “Secret” prior art – effectively punished for concealing it – not considered first inventor even if you were

CONCEPTION Burroughs Wellcome (p. 151) – AZT patent infringed; testers NOT joint inventors Conception  Touchstone of invention  WHETHER inventor idea is DEFINITE & PERMANENT (full & complete) enough that someone skilled in the art could understand (enabling)  Must prove by CORROBORATING EVIDENCE, prefer contemporaneous disclosure  Need NOT know it will work! ANYONE WHO PARTICIPATES IN CONCEPTION IS AN INVENTOR!! If conception is complete, anyone who comes later is thus NOT an inventor May or may not need TESTING to prove conception  Left open – are there inventions where testing could be required?

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REDUCTION TO PRACTICE Scott v. Finney (p. 158) – penile implant  junior party (in interference) shows RTP earlier (in
this case, conception was complete without any testing)  ISSUE: HOW DO YOU PROVE actual or constructive RTP?


To show RTP, must demonstrate suitable for intended purpose
o Do NOT need an actual RTP – use in intended environment  Can get by with some sort of demonstration that would convince someone in the field that it would work for intended purpose

o When testing needed to prove actual RTP, the embodiment relied upon for evidence must actually work for its intended purpose  TESTING REQUIREMENT DEPENDS ON THE PARTICULAR FACTS OF EACH CASE
    Simple devices need no testing to show RTP RTP does not require commercially satisfactory stage of development Testing need not show utility beyond a possibility of failure, but only utility beyond a probability of failure Character of testing varies with character of invention & problem

COURT APPLIES A REASONABLENESS STANDARD  Common Sense must be applied (p. 161)  Reduction to Practice (RTP) is a QUESTION of LAW Proving Prior Invention, Prove: 1. RTP earlier; OR 2. (If RTP later) Conception before PLUS reasonable diligence in RTP
HYPO (best examples are pharmaceuticals/medicals):  Company A conceives of a hangover cure on Jan 1  Company B conceives of same compound a month later  On May 1, B decides X is the dosage  On June 1, A decides dosage  Both file on July 1  A is before B on conception  B is before A on supposed RTP  How do you decide actual RTP on pharma? Tests which prove?  What if B had more failures in testing? Any credit for working around difficulties?  Have to do a double blind study with placebo? Enough but not required?  Does it matter if it’s a hangover cure or cure for AIDS? If you’ve got drawings or some articulation of an idea, if when you read what I have and you recognize once this is made it will work, then making it is (actual) RTP TAKE-AWAY: RTP all depends on circumstances, how long it would take to do double blind study or real world testing – character of the testing varies with the character of the invention and the problem it solves


For exam, consider & explore:  Complexity of the invention, level of skill in the art, social implications  Who gets the patent?

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ABANDONED, SUPPRESSED, OR CONCEALED Rooting through 102(g) – who is first to conceive, first to RTP Caveat at end – must not have abandoned, suppressed, or concealed  Because we have a first-to-invent versus a first-to-file system NEXT THREE CASES: WHICH OF TWO PARTIES WILL GET PATENT? Mason (p. 168) – first inventor conceals gun magazine design & loses  Subsequent good faith inventor is real inventor over one who deliberately conceals invention  Mason builds a clip for a gun, it works, puts it in his storehouse; years later Hepburn files, Mason sees it (inference) and then files - SPURRING  Note delay here is negligent  NOTE: Mason did not resume UNTIL IT WAS TOO LATE! – unlike Paulick Young v. Dworkin (p. 171) – expansible envelope patent to senior (invented in Jan 1967); junior suppressed/concealed (inventor invented in 1965 but A/S/C)  Here: senior party did in 8 months what junior party tried to make an excuse for taking 23 months – judge just didn’t like this, although diligence is not the issue on A/S/C; in theory, what 2nd party did should be irrelevant  Note delay here considered willful by court Guideposts for Suppressed/Concealed: 1. Length of time from RTP to file NOT determinative (but is a factor)  Mere delay alone is not enough (but at own peril)  Key may be PURPOSE of DELAY, CREDIBILITY 2. Spurring into filing by another is NOT essential (but is a factor) Paulik (p. 176) – Paulick’s 4-year delay on catalytic process; resumed before Rizkalla so patent to Paulick  Probably matters that court actually believed Pualick’s excuses, unlike Young v. Dworkin  If first inventor RESUMES work before second inventor enters (conceives), then NO suppress/conceal (start the clock afresh at resumption date) o First inventor does not have to show activity following RTP o Lapse of time is NOT determinative  POLICY: Do not want to discourage resumption of activities TOTALITY OF CIRCUMSTANCES – no harm in coming up with excuses If you can separate out the facts and party still wins, they win Intent in each case? Not clear… EXAM: Look at facts, consider how each may affect on equity basis who should get the patent…

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ABANDONED, SUPPRESSED, OR CONCEALED THIS CASE: IS THE PATENT INVALID DUE TO PRIOR WORK of Butch (patent never sought) Dunlop (p. 258) – Surlyn golf balls used in public but ingredient was a secret  not concealed
  Surlyn prevents gold balls from being cut, gauged, or damaged during play Key: court believed competitors could easily reverse engineer, Butch had no protection from that under Trade Secret law


Public use of an invention forecloses a finding of suppression or concealment (102g) even though the use does not disclose the discovery o “Non-Informing” Public Use o BUT public could have easily engineered (would come out same way even if no way to reverse engineer – see next bullet) o Also – public getting economic benefit o Also – inventor is under no duty to apply for patent

Abandoned, Suppressed, Concealed  effectively put into the public domain “Secret” Prior Art cannot be prior art under 102(g) because it was not suppressed  Cannot tell the secret from just looking at product made by the machine which is under lock and key at factory

Summary: Prior Inventor can lose right to invention because of A/S/C OR can lose the right to stop someone later (preclude) because of A/S/C

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NON-OBVIOUS SUBJECT MATTER – 35 USC § 103 Obviousness = Q of LAW Medichem (p. 189) See also page 40 – Q of Law or Fact… 35 USC Section 103: No patent IF:  The differences between the subject matter sought and the prior art are such that  Subject matter as a whole  Would have been obvious at the time the invention was made  To a person having ordinary skill in the art (POS) Patentability shall not be negatived by the manner in which the invention was made
   Flash of genius does NOT matter, not the standard; No sweat equity; Could flubber – knock over test tube and simply recognize invention – accident OK

103(c) Where there is a corporation or common obligation to assign to an entity, won’t consider prior art of co-workers if under same basic research umbrella Hotchkiss (p. 360, see also p. 105) – US SC – mere substitution of materials, clay for wood or metal in doorknobs  patent INVALID - “obvious”  ROOTS OF OBVIOUSNESS  Foundation of 103; 103 codified this principle  Pre-103: condition for patent: patentable invention must evidence more ingenuity and skill than “ordinary mechanic acquainted with the business”  If it is nothing more than ministerial work of POS, then it doesn’t rise to the level of invention, just ordinary skill Just because it is a new use of a material does not necessarily mean that it WON’T be patentable – Example: carbon fiber composites – certain amount of translation, different than Hotchkiss; Velcro; microprocessors Kimberly-Clark (p. 392) – no facts in our case book  Since Jan. 1, 1953 (effective date of 1952 patent statute revision): o No need for presumption that inventor has knowledge of all material prior art o Just a fiction pre-103 for person of ordinary skill in the art  Duty of Candor and Obligation to disclose material art to PTO limited to ACTUALLY KNOWN to inventor or his assigns, agents, attorneys, etc
   Inventor is not charged with knowledge of anything – we care about person of ordinary skill in the art Vision: POS is sitting around with all the prior art hanging up on the walls around him or her POS will vary from case to case…

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NON-OBVIOUS SUBJECT MATTER – 35 USC § 103 Graham v. John Deere (p. 102) – shock-absorbing plow shank  obvious [See page 102 of text and 15 of outline for Part I] For Patent, must be: 1. Useful 2. Novel 3. Non-obvious  To one of ordinary skill in the art at the time the invention was made Look at: 1. Scope & Content of Prior Art 2. Differences 3. Level of Ordinary Skill in the Art Secondary Considerations (Objective Indicia): 1. Commercial Success 2. Long-felt but Unsolved Need 3. Failure of Others  Etc 4. Known Disadvantage to Discouraging Combination 5. Expert Disbelief  Etc (from additional cases) Measure obviousness, novelty, etc at time when the invention was made PHE (Patent History Estoppel) – construe invention in light of claims and prosecution history
  A lot of the focus is on the differences that inventor has done, focus on whether adding X was an obvious step or not, whether really an invention Graham: THAT IS NOT THE QUESTION; THE QUESTION IS (under Graham and Section 103) is WHETHER the combo WOULD HAVE BEEN OBVIOUS, IS CLAIMED SUBJECT MATTER AS A WHOLE OBVIOUS?

OBVIOUSNESS IS A QUESTION OF LAW – based on underlying fact findings – judge decides, underlying facts by jury
   Inventor himself did not think it was obvious – court rules obvious to POS, not persuaded by inventor The “flexing” was never mentioned at the patent office (Baniak: it could have just been allowed, that’s not a good reason, holds no water…) Practical consideration in fn 12 and 13 – P’s own expert hoses him – no, not a great factor

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NON-OBVIOUS SUBJECT MATTER – 35 USC § 103 COMBINATION PATENTS Cuno (p. 364) – US SC – adds well-known thermostatic control to car cigarette lighter  obvious  Hotchkiss principle (must be more than ordinary skill in the art) applies to adaptation or combination of prior art in new uses  Mere aggregation of old parts which perform no new function is NOT patentable
 Prior art was: o 1) cigarette lighter on reel, connected to battery with reel wire and then light up o 2) Wireless that just kept heating – careful or car will burn o 3) thermostatic control Inventor took wireless version and added thermostatic control to make it automatically pop out when it’s ready so it won’t burn car up Court: looking for (1) flash of genius and (2) wants to strictly apply requirements or each slight technical advance in art will have heavy burden – tax on industry

 


Used phrase “flash of genius” which was later abolished by statute in 1952

Great A&P (p. 366) – US SC – grocery cashier’s counter  patent invalid; obvious  Patent for combination which only unites old elements with no change in function is NOT patentable  Higher standard for combination patent claims  difficult, improbable  AGGREGATION  “combination patent”  Also, court wants synergy in this case (See Markey later)  Later Markey: everything is a combination, this makes no sense Sakraida (p. 378) – US SC – combination of old elements for abrupt release of water on barn floor from storage tank/pool  obvious  Old elements performing same functions not patentable, even if more striking effect than previous combination  Great A&P and Hotchkiss still good after 1952 patent statute revision Stratoflex (p. 384) – Fed Cir – Markey – no facts in our case book  Synergism (whole is more than sum of parts) may point toward non-obvious but lack of synergism has no place in evaluation of evidence of non-obvious o Synergy per se not needed for patent SHIFT (Fed Cir): “Combination Patents” is meaningless term; no support for distinguishing combination patents from other patents – all patents created equal  Ignored US SC precedent! Lingering question over how US SC would rule today – Fed Cir has followed the path of Stratoflex “Heart of the invention N/A”

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In re O’Farrell (p. 385) – what do you need in the way of gluing (analogous) to put these two pieces of art together?

Section 102 items are prior art ONLY when ANALOGOUS to claimed invention
 (In re Bigio p. 400)

Union Carbide (p. 395) – bag dispenser obvious due to similar bag dispenser solving same problem Determination that a reference is NON-ANALOGOUS art: 1. Whether within “field of endeavor” (regardless of problem) (If not 1, then) 2. Determine whether reference is reasonably pertinent to the particular problem with which the inventor was involved
  Patent owner tried to distinguish one piece as non-analogous paper-holder Court: maybe not analogous under 1, but analogous under 2

In re Bigio (p. 399) – toothbrush patents held analogous to hair brush patent  obvious “Field of Endeavor” Test: Determine appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiment, function, and structure of the claimed invention o PTO must show substantial evidence to support field of endeavor  Toothbrush can be used on facial hair and such  Case is a bit wacky Bott v. Four Star (p. 402) – easel was NOT analogous art for luggage rack on vehicle  Just looking similar is not enough – must have similar problems & purposes “Field of Endeavor” One of ordinary skill in the art would be aware of similarity of elements, problems, and purposes COMBINING PRIOR ART REFERENCES & ELEMENTS “Teaching, Suggestion, or Motivation”
   not in the statute itself Fed Cir came up with this to guard against the evils of hindsight Goes to whether or not art is analogous

NOTE: KSR Teleflex in US SC is taking a look at the standard in the next two cases ACS Hospital Systems (p. 420) – Obviousness cannot be established by combining prior art UNLESS some teaching or suggestion in (from? Implicitly OK) prior art supporting the combination In re Oetiker (p. 420) – hose clamp with pre-assembly hook  valid patent  Must be suggestion or motivation (or reason or teaching) in (from? Implicit OK) prior art for POS to combine o Cannot come from applicant’s invention itself  From  comes from Nies concurring opinion here

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INVENTION AS A WHOLE Exam: Words of claim is what counts on obviousness, not what inventor thought they’d invented or the differences between this and the prior art – invention as a whole 1. Look at Claim 2. It is NOT the differences, even though that is considered – subject matter as a whole o Inquiry is NOT: is it obvious to add a lid to a cup? o Inquiry IS: is cup with a lid obvious in view of cups w/o lids? CLAIMED INVENTION Jones v. Hardy (p. 402) – molded polystyrene form for decorated concrete wall  reverse infringement judgment and remand to consider invention as a whole  Proper to note difference in invention and prior art; IMPROPER to consider the differences as the invention  invention as claimed to be considered as a whole for obviousness  Failure to consider invention as a whole for obviousness is an error of law  For infringement, all claims must be analyzed  If one gets through (valid & infringed), infringer is done – like Missile Command Gillette (p. 405) – Edge post-foaming gel patent  VALID  Obvious must consider results achieved by combination  Less obvious if no suggestion to combine in prior art or prior art discourages combination (TEACHING AWAY)  This case – no suggestion to combine, clear or otherwise  This case – prior art actually DISCOURAGED substitution (we are going waterbased, oil-based would just be silly)  Marketing that showed preference was persuasive to the court as well DISCOVERY OF PROBLEM Eibel Process (p. 408) – patent for pitch on newsprint machine, using higher pitch to increase speed/capacity  VALID, non-obvious Subject Matter as a Whole: Discovery of the problem itself can be part of the invention o Precursor to secondary considerations: commercial success, expert disbelief, longfelt-but-unsolved need
o Industry had been confounded for years on this o Court seems swayed by his “eureka” moment – not appropriate under 1952 statute, serendipity OK o What if the tweak was in the set-up manual? Or pitch was adjustable? Likely obvious… Must be more than just a matter of degree improvement in prior art; whether this change in context of entirety of claimed subject matter creates a different result such that the invention as a whole would not be obvious o Difference = Matter of Degree  NOT patentable o Difference = Change in Kind, Structure, or Result  patentable

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INVENTION AS A WHOLE SIMPLICITY (p. 411) The fact that the invention seems simple after the fact does not determine the question Simplicity when others fail may indicate novelty/invention In re Oetiker (p. 411) o Simplicity is NOT inimical to patentability That is the law, but is it the practice? o Appealing notion: sometimes there is invention in simplicity – seeing through other complex attempts to simpler problem, reducing steps or number of parts o LESS IS MORE – not adding A, B, and C; saying only A and C are needed – B is not needed o PROBLEM: is that then really novel? Will there be some resistance there? o Is this OK under 103 but NOT ok under 102? o Is there a way to harmonize? Perhaps…  Cederoth: could define A+B in a way that is DIFFERENT than A+B+C, once it’s different, get into 103 analysis, using English language  Always A+B+C to make X (CONSISTING, probably not comprising or including)  Solely A+B (consisting SOLELY of) – excludes C o Danger of court’s looking back in hindsight and saying “so simple must have been obvious”

SLIGHT PHYSICAL CHANGES Topliff (p. 412) – turning wagon springs horizontally  patentable o Slight physical change can sometimes result in patentable invention Schenck (p. 412) – bolted together was in art  invention was unitary piece  patent o Art taught away o Norton (D) adopted itself o Slight physical change can sometimes result in patentable invention

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Who decides whether subject matter as a whole is obvious or not? o Judge or Jury posing as the Person of Ordinary Skill in the Art o Unique to every industry and art What does POS know? o All the prior art in the field of endeavor and analogous prior art Does lowering the threshold seem unfair? o Do we benefit from people inventing new paper clips if a nuclear physicist would think it was obvious? o Cederoth: perhaps bar should be a bit higher… o Economics – law of comparative advantage

Ryko (p. 418) – 2/3’s engineers and prior art technology “sophisticated” = ordinary level of skill in the art o Probative of skill in the art is educational level (inventor, those in field) + sophistication of technology involved o Ordinary skill in the art = objective measure Environmental Designs (p. 419) – no facts in our case book Ordinary Skill in the Art FACTORS: 1. Education level of inventor; 2. Type of problems encountered in the art; 3. Prior art solutions to those problems; 4. Rapidity with which innovations are made in the field; (is that really the person or does it go to question itself?) 5. Sophistication of the technology; AND 6. Educational level of active workers in field * Not all factors present in every case, 1 or 2 may dominate a case * Factors do not actually tell judge/jury how to make decision, just who POS is Is the law asking of the decision-makers the un-doable?
o o o Can judge or jury put themselves in the shoes of the POS? Special Master is common solution – not completely satisfying – one person’s opinion Juries good at understanding who POS actually was/is BUT next step is the problem – would POS think that was obvious?

This is the patent version of Reasonably Prudent Person – but harder It’s not the jury’s layman impression, it’s not the expert reaction, it’s not the judges reaction after looking at the patent and prior art  It’s the POS (Person of Ordinary Skill in the Art) Inventor usually PRESUMED to have GREATER than ordinary skill in the art

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SECONDARY CONSIDERATIONS aka Objective Indicia All the secondary considerations have their foundation in the Graham case… NOTE: secondary considerations are NOT in the statute (only requires primary)… o Unclear whether party could rest on primary… US SC to address? Demaco (p. 423) – paving stone patent  valid; commercial success o The brick WAS the patent WAS the product – easy case o Secondary considerations MUST be considered in ALL CASES Commercial Success: Burden on patentee to show NEXUS between success and invention Prima Facie NEXUS (burden on patentee): o Invention itself is commercial success – product sold is coextensive with patent o If what is sold is NOT coextensive with patent  sufficient relationship between patent and what is sold o Continuous use of patented features while other features were not copied gives rise to inference that there is a nexus IF Prima Facie Established, REBUTTAL shifts burden to D: D can show success due to other factors: advertising, workmanship, etc. o Patentee does not have to prove success NOT due to advertising, etc (but may have to defend against it)
Commercial Success: o If there was potential for profit and it was obvious, POS would have done it already o This is easier to prove, less technical for judges/juries – more objective o STOP-CHECK ON TECHNICAL ANALYSIS, More “real world” o Used as a PROXY to whether it would have been obvious When the patent is two features on a complicated product, how do you really establish that nexus? What is “sufficient relationship”? Circular reasoning? Tough on complex products…

Ryko (p. 426) – electronic keypad for car wash  obvious based on primary considerations o Court can & must weigh all considerations, primary & secondary  then render decision o Secondary can lose to primary Cable Electric (p. 427) – copied night light o Copying alone is NOT enough to show non-obvious (but it could help in addition with other factors) For the exam: if you run across copying, discuss this – whether copier was disrespecting patent and patentee (or their ability to enforce, etc see p. 427) or whether they recognized that this was the only way to do it

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AT THE TIME THE INVENTION WAS MADE Panduit (p. 429) – one-piece cable tie  not obvious AT THE TIME o Test is obvious to POS AT the TIME the inventions were MADE, not obvious to judge after reading patents & testimony, not 20 years later, not after you’ve seen others copy, not after you’ve seen commercial success (some tension with secondary considerations which must happen after) o Focus on statutory language – “at the time the invention was made” o Cast mind back to time invention made, POS has only prior art (on the wall around them) & then-accepted wisdom in art  NO HINDSIGHT!!!
o “District Court looked to knowledge from inventor, in his patents and in his testimony, and then used that knowledge against its teacher”

Gillette (p. 432) – Milton quote from Paradise Lost: “So easy it seemed, Once found, which yet unfound most would have thought, Impossible!” EVILS OF HINDSIGHT

MANNER IN WHICH THE INVENTION WAS MADE (page 433) Since 1952 (Section 103 created), Patentability NOT NEGATIVED by manner in which the invention was made – no flash of genius is needed  Serendipity OK  Accident OK o Gets rid of “sweat of the brow” approach; analogous to CR law here o Expressly does away with “flash of genius” or negatived if systematic tests could have found Focus is on whether POS would have seen subject matter as a whole obvious, not on how it was made (come up on exams) Examples: o Goodyear dropping rubber on hotplate and vulcanizing it – he recognized the result o Flubber (fictional example)

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OBVIOUSNESS: QUESTION OF LAW OR FACT? Moore v. Wesbar (p. 434) – o Factual questions in Graham to be considered in the ultimate conclusion of law on whether the claimed invention as a whole was obvious o Not mixed law-fact o Obviousness = Question of law based on subsidiary facts Fed Cir: If facts are not in dispute (or reasonable jury could only find one way), then judge can find obvious on summary judgment

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SUFFICIENCY OF SPECIFICATION/DISCLOSURE POLICY:  Disclosure is the QUID PRO QUO of the right to exclude  Failure to disclose properly is failure of CONSIDERATION, contract void The audience is the POS at the time of filing – describe to them, enable them, best mode that they understand  Application does NOT have to be a manufacturing specification TOTALITY OF THE CIRCUMSTANCES TYPE TEST  Nature of invention  Nature and level of art  Whether innovation is a matter of degree All these factors go into the analysis 35 USC § 112, 1st Paragraph: (p. 458)  WRITTEN DESCRIPTION o Defines outer boundaries of what applicant thinks they have done, what applicant thinks they have invented; putting public on NOTICE o Outer bounds of your land grab; a check on applicant later trying to claim more than what they actually did  ENABLEMENT o Enable the POS to make and use the same o You may not need to understand what you did or how it works, but you must convey to someone skilled in the art such that they can make and use without undue experimentation  BEST MODE o Set the best mode that the INVENTOR CONTEMPLATES at the TIME of FILING, set forth the best mode o This is unique to the US 35 USC § 112, 2nd Paragraph: (p. 490)  CLAIMS o Measure the ultimate rights, but they are a necessary SUBSET of the written description of the invention o Claims must be ENABLED o It is the claims that the applicant provides the BEST MODE for
Application of Moore (p. 490) – no facts in the case book Section 112 Analysis: First analyze claims (Paragraph 2); THEN analyze Paragraph 1 Section 112 Analysis: 1. Particularity – Paragraph 2 2. Definiteness – Paragraph 2 3. Whether claim is supported by disclosure – Paragraph 1 o Whether disclosure enables POS to make AND use the invention o Scope of enabling disclosure must be commensurate with scope of protection from claims

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WRITTEN DESCRIPTION Write application broad enough to cover what you want to claims Written description is the BOUNDARY of WHAT YOU CAN CLAIM Written description is the defendant’s chance to get a foot in the door  Wait! That’s not what you invented; it may look like it, but that is not it (the shadow bunny is not a real bunny)  Guard against patentee coming back and re-arranging based on elements in patent application, trying to over-reach to get something they did not invent  Examples: (1) “shadow bunny” (2) Parts catalog LISTING PARTS IS NOT ENOUGH in total Vas-Cath (p. 460) – no facts in case book; distinguishing written description from claims, both Section 112  Section 112 Compliance for written description is a question of FACT WRITTEN DESCRIPTION Written description must clearly allow POS to recognize that inventor invented what is claimed Purpose:  Section 112, Paragraph 1 = written description – guards against over-reaching by inventor (makes sure inventor actually has the invention)  Enablement = the quid pro quo, consideration for the right to exclude  Section 112, Paragraph 2 = claims – notice of scope of patent, shaping conduct of others Test for Sufficiency of Written Description: Whether disclosure shows artisan (POS) that inventor had possession of the claimed invention at the time of filing – firm idea in mind

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ENABLEMENT (p. 462-68) (These rules generally the same around the world) Drawings do not have to be to scale unless POS would need scale drawings to reproduce (schematics are acceptable – generally show how things go together, but not a manufacturing specification) Drawings are part of the disclosure Not allowed to add new subject matter to application after filing (Section 132 – NO NEW MATTER) – UNLESS you are just clearing something up, conforming written description to claims and drawings a originally filed  Example: if you implicitly disclosed, can add express disclosure – not new matter  Example: spec can be amended to reflect info that was in claims or drawing prior  Example: drawings can be amended with info that was in spec or claims prior (Boundaries set at filing, but not necessarily confined to those drawings, those claims, etc) INCORPORATION by REFERENCE – essential material can only be incorporated by reference from issued US patent or US patent publication; non-essential material can come from other sources including unpublished patent application that is commonly owned  Essential = needed to comply with any of the disclosure and claim requirements of Section 112 DO NOT HAVE TO PROVIDE A MANUFACTURING SPEC  Mass production info is NOT required Do not have to use the exact same terms of POS – BUT must at least be understood  Can be own lexicographer Do NOT need to understand or explain scientific principles on which it operates – just describe the steps or parts sufficiently to enable POS to make & use Audience of patent application is POS Spec can be sufficient even though POS may have to make several TRIALS or EXPERIMENTS before successfully making & using AS LONG AS only the exercise of ordinary skill is required to do so Advantages & Unexpected Results – no statutory requirement to disclose all of this, but may help avoid the condemnation of “afterthoughts” when the patent is in court  Self-promotion in patent MAY help you – with Examiner, jury  BUT whatever you say can and will be used against you  Can do some self-promotion w/o shooting self in the foot

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ENABLEMENT Enablement cases rise or fall on a KEY FACT
  Look for some salient fact that suggests the disclosure is not just inadequate (where you look solely at the volume of the work required) but FLAWED More applicable to undue experimentation?

WL Gore (p. 470) – stretching Teflon tap  enabling, definite  Section 112 enabling defined AT THE TIME OF FILING to POS  Need for UNDUE experimentation invalidates, but not just experimentation per se o Line between “some” experimentation to “undue” = Totality of the Circumstances o If POS would effectively have to invent to practice what you disclose, then too much experimentation is required – certain  However, it probably does not have to rise quite to the level of invention – when it doesn’t seem fair that all the people after you are doing all the work  Applicant may be own lexicographer LEXICOGRAPHER Patentee can be own lexicographer BUT
  You must communicate, put info into the public domain Cannot use terms completely contrary to their ordinary meaning (or perhaps meaning in the art)

In re Wands (p. 475) – monoclonal antibodies  no deposit, but no undue experimentation  PATENT (valid)  ENABLEMENT is a QUESTION of LAW, although UNDERLYING FACTS DEPOSIT of organisms can satisfy Section 112 Need deposit if: (Cannot be obtained by readily available sources AND EITHER) 1. Starting Materials not available to public; OR 2. Undue experimentation needed No deposit needed if organism can be obtained by readily available sources or derived from readily available starting materials through routine screening w/o undue experimentation Deposit not required, but perhaps you don’t do it at your peril UNDUE EXPERIMENTATION: Reasonableness Standard (nature of innovation, art) FACTORS: 1. Quantity of experimentation needed 2. Amount of direction or guidance present in application 3. Presence/Absence of working examples 4. Nature of Invention 5. State of the Prior Art 6. Relative Skill in the Art 7. Predictability of the Art 8. Breadth of the Claims

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BEST MODE BEST MODE is SEPARATE & DISTINCT from Enablement & Written Description POLICY:  disclose to the public the best way known to the inventor to carry out the invention  THEORY = this is completing the full consideration for the patent grant, preventing deception on the part of the applicant (getting patent but keeping secrets for selves) Christiansen - 7th Cir: best mode = economically efficient  Allows competitors to jump right in when patent expires  Unfair for you to sit on that info and somehow prolong or extend patent right  BUT application does not have to be manufacturing spec  Will that be of use to anyone in 20 years?  Middle Ground – to INCREASE efficiency  Do not want people playing around with the patent grant by keeping secrets on the invention  Promote honesty and forthrightness in application – 2nd part of Chemcast Chemcast (p. 479) – patent invalid  did not disclose best PVC material  Best Mode compliance is a QUESTION of FACT (because it depends on state of mind) Best Mode: 1. Whether at time of filing, knew of a mode he/she considered better o (SUBJECTIVE) (If 1, then 2) 2. Compare knew to disclosed o Adequate to enable best mode or does it conceal from the public? o (OBJECTIVE – POS) o Chance for patentee to save himself – it was not in there explicitly, but POS would understand it… Depends on:  Scope of claimed invention – is this being added or claimed?  Level of skill in the art – how POS would have understood disclosure POLICY: Restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of their inventions which they have in fact conceived Go back and interview inventors again on day of filling – know of any new best mode?  If inventor still involved in development process, potential best mode issue

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BEST MODE DON’T LIE & CHEAT! Glaxo (p. 483) – Glaxo officials knew of best mode but no evidence inventor knew  no best mode violation  Best mode “CONTEMPLATED by INVENTOR” at “TIME of FILING”  NO IMPUTED KNOWLEDGE in a best mode defense o Knowledge by others in a company will not be imputed to inventor when inventor did not know or conceal o Must show ACTUAL KNOWLEDGE, not “constructive/imputed” knowledge  Statutory language could not be more clear  PROBLEM: where the inventor hands off application to attorney, finds better mode later, then lawyer files…  PROBLEM: What if inventor goes off on the next design project, sees a presentation with a new best mode, and then lawyer files the application the next day…  KEY: it is at time of filing, not when you come up with the invention or when you hand it off to your attorney  Better mode does not have to be your development, nor does it have to be someone you are really affiliated with Engel Industries (p. 485) – snap-fit duct sections  VALID  Crimping (claimed best mode) not started until AFTER commercialization, filing  Crimping was not within the claimed invention, unclaimed subject matter, taken to facilitate transport and handling  Each claim considered individually for best mode compliance
o o o o From Chemcast: Patent invalidity for failure to set forth the best mode requires that: 1. The inventors knew of a better mode of carrying out the claimed invention than they disclosed in the specification; AND 2. The inventors concealed that better mode

    

Failure of best mode compliance must be clear & convincing Best mode determined AT TIME OF FILING Best mode inquiry is directed to what the applicant regards as the invention, which in turn is measured by the claims Unclaimed subject matter not subject to Section 112, best mode IT COMES DOWN TO THE CLAIMS; ALWAYS BACK TO THE CLAIMS
o o o o What you claim tends to evolve, can be amended during prosecution Written description – does it support the CLAIMS? Enablement – have CLAIMS been enabled? Best mode – best mode of making/using the CLAIMED invention?

 

Can lead to subtle manipulation of claim language – just leave out that part of the claim, patent around your gap in disclosure – work your way around the hole in the donut POLICY: avoiding endless pitfalls, boundless disclosure

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CLAIMS 35 USC § 112, 2nd Paragraph: (p. 490)  CLAIMS o The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention o Define the legal boundaries of the patent, what the patent can exclude others from doing o Affirmative burden on the patentee to write in a way that a competitor can know what is inside and outside of the monopoly rights
Historical Development:  Original Patent Act did not require claims  Formerly, disclosure was what was protected  Now, claims define what patentee has rights in – only that subject matter need be enabled, described and have the best mode revealed  Now, it’s the claims that count

Morse (p. 488) – first seven claims are valid but the eighth is invalid; eighth claim was too broad – covered every improvement where electric current carries characters, sign or letters
  Eighth claim encompasses too much that is not described, enabled, set out best mode Eighth claim would include possibly radio, TV, the internet, etc


You can claim more than the precise embodiment; there is a gray area
But Morse was way outside the gray area

 

Standard = you can only claim as broadly as you enable US Patent Laws do not protect results – can protect composition of matter, process, etc.
Was Morse’s problem that he was too blunt or honest?


Court: the “evil constraint” on innovation: later inventors would not know what they could do without infringing o Patent would expire, but now in public domain and incentive may be gone

Application of Moore (p. 490) – no facts in the case book Section 112 Analysis: First analyze claims (Paragraph 2); THEN analyze Paragraph 1 Section 112 Analysis: 1. Particularity – Paragraph 2 2. Definiteness – Paragraph 2 3. Whether claim is supported by disclosure – Paragraph 1 o Whether disclosure enables POS to make AND use the invention o Scope of enabling disclosure must be commensurate with scope of protection from claims o Laypeople often don’t understand this – layperson gut reaction is to look only at spec, not look closely at claims, think about whether level of generality of claims will cover them o It is the CLAIMS THAT COUNT! Page 55 of 99

CLAIMS – Means Plus Function (See also page 77 of outline) Means plus function is as close as the patent law allows to protecting/claiming a result Statute: You do not know what means plus function covers until you go back into the spec and see what it says o Duty of patentee with means plus function language is that they must provide an example or examples in the spec
o Example: clearly link “joining” with some structure in the specification like a screw

o Means plus function will cover EQUIVALENTS of examples based on what is known in the art at the time o While on the surface these claims may appear to be more broad, you are effectively claiming MORE NARROW and not more broad – only what is in spec and equivalents covered MUST GO THROUGH THIS EXERCISE WHENEVER YOU ENCOUNTER MEANS PLUS FUNCTION NOTE: o Means plus function does NOT cover everything that is capable of performing function (unless the spec enables and discloses everything which is rhetorical impossibility); o DOES cover what is expressly disclosed; o Gray area is what is equivalent based on state of art at time What if you used means plus function but there was NOTHING in the spec?
o May be treading on invalid claim – failure to comply with statutory requirement (failure to particularly point out and distinctly claim – paragraph 2)

In re Hyatt (p. 495) – no facts in case book o Single means claim (SMC) violates Section 112, Paragraph 1 o SMC = Means + Function not drawn to combination o Example = Means for processing o Combination claims with means + function are acceptable o Claim that is “overbroad” such that spec not enabled rejected under Section 112, Paragraph 1 o For inadequate disclosure, not imprecise or indefinite, reject under Paragraph 2
o o o o PROBLEM: single means claim – covers every conceivable means for achieving the stated result, while the spec discloses at most only those means known to the inventor Scope of claim must be commensurate with what is disclosed Court read claim as “every conceivable means to achieve result” Court: all you are doing here is putting “means for” in front of claim 8 from Morse – that does not limit it any more…

“And equivalence thereof” Later Fed Cir – if it is technology developed later, it is NOT covered under 112, it is NOT an equivalent

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CLAIM DRAFTING (p. 496) This requires a lot of practice, tutelage  it is an ART / CRAFT o Presumed to mean what you write; every word you write is important o Comprising = claim does not exclude other elements in addition to those listed in the body of the claim o Consisting of = limiting in that the scope of the claim excludes other elements o Consisting essentially of = partially limiting, permits inclusion of only elements which do not materially affect the basic characteristics of the combination of explicitly recited elements o INDEPENDENT claims – stands alone o DEPENDENT claims – refer back to independent claims, incorporate by reference all the limits and elements of the independent claim referred to o Important for proving infringement or invalidity – must prove all elements/limits, including those incorporated by reference o Jepson claims o Set out portion of claim that is the key piece, the preamble is what is already known (not being claimed, admitted prior art) – examiners like this, novelty must be in key piece o Markush groups o “A group consisting of” – lacking a sub-generic term for some of a group of related substances, an applicant may use “a group consisting of” certain specified substances o See often in chemical claims o Product-by-Process Claim o Defines a product or composition by the steps of the process for making it o Covers only products produced by the defined process, not all products having the same characteristics as those produced by the defined process

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CLAIM DRAFTING Fromson (p. 501) – “reaction” in lithography claim interpreted to mean chemical change OR interaction  valid  may be infringed o Patentee can be own lexicographer (case often cited for this) o Limit: cannot define in a way CONTRARY to ordinary use or ordinary use in the art
o o If you do not know what terms mean, better off inventing terms on your own If you are wrong about the term and POS would understand it to mean something different, then you have a problem and you want to avoid that

In claim construction, can look to: 1. Dictionary; AND 2. Trade Usage (use in the art) Claims are normally construed as they would be by POS o Can look to other claims to interpret a claim BUT o Where some claims broad and some narrow, narrow limits cannot be read into broad claims – whether to avoid invalidity or to escape infringement
o o o Raytheon: not only was he wrong, but he put his wrong theory in the claim Fromson: wrong, but did not put that (explicitly) in his claim, should not be imported – just threw it around in one of the claims Offset printing historically more a trade than science, court cuts slack on level of art

PREAMBLE LANGUAGE Corning Glass Works (p. 507) – fiber optic patent  valid; preamble (“an optical waveguide comprising”) is limitation not in prior art Effect of Preamble Language (limitation or statement of purpose): Resolved only on review of entirety of patent, inventors’ invention and intent for claim coverage  no litmus test, spec “breathes life and meaning” into the claims o Court may NOT redraft a claim for purposes of avoiding a defense of anticipation PRODUCT-BY-PROCESS CLAIMS Atlantic Thermoplastic (p. 509) – product-by-process claim for making innersoles  non-infringe  same product but did not make by same process o Process terms in product-by-process claims serve as limitation in determining infringement o Infringement for Product-by-Process  must prove product was made by same process or equivalent o Product-by-Process is EXCEPTION to general rule that claims must define products in terms of structural characteristics NOTE Contrast: in the US PTO, that is NOT true – if they find a product that is the same they will reject your claim despite what the prior art steps are More recent law: if you mix process steps into a product claim, you have created a claim which is necessarily indefinite Page 58 of 99

DOUBLE PATENTING JUDICIALLY-CREATED DOCTRINE o Simple concept: you get ONE patent for your invention o Rooted in statute: shall be entitled to A patent o Two inventions in the same application will get a RESTRICTION o Two inventions in separate applications will get rejected on DOUBLE PATENTING Miller (p. 512) – 1st patent covers plow with up or down spring; 2nd patent covers up spring  2nd patent VOID for double patenting o No patent on invention covered by former patent, although claims may differ o Valid if 2nd patent is DISTINCT & SEPARABLE & INDEPENDENT
o o Substantially different, more than a mere distinction of breadth or scope of claims improvements OK (not double patenting), machine and mfr process OK

Courts actually give patentees a lot of latitude for having overlapping claims in the SAME patent; problem if they are in separate patents

Application of Vogel (p. 514) – earlier patent on pork; new patent on meat and beef  claims 7 and 10 on meat must have a terminal disclaimer; claim 11 on beef is OK Double Patenting: 1. Is the same invention being claimed twice?
o (Does 2nd patent cover the same invention as the first patent?) o SAME INQUIRY AS ANTICIPATION – is the disclosure the same, use same, public use on sale event same; if not the same, not the same invention type double patenting

o Identical Subject Matter

o Claims may be different words BUT STILL same invention – in determining the meaning of a word in a claim, the spec may be examined o Good Test: o Whether one of the claims could be literally infringed without literally infringing others. If it could be, the claims do not define identically the same invention. Can you infringe the claim of the 2nd patent w/o infringing the claim of the 1st patent? (If 1=yes, then no patent; terminal disclaimer does no good) (If 1=no, then go to 2) 2. Does any claim in the application define merely an obvious variation of an invention disclosed and claimed in the patent?1 – curable by terminal disclaimer
o (Is claim in the 2nd patent obvious variation of claim in 1st patent?)

o Claims so related they just should have been in the same patent (If 2=no, no double patenting, no terminal disclaimer needed) (If 2=yes, TERMINAL DISCLAIMER required)


Vogel makes this tough: cannot use patentee’s earlier disclosure in earlier (or later) as prior art to teach you what variation of the invention would be, can’t use your own teachings against you in double patenting – have to get it from other prior art
EXAMPLE: Patent 1 for wagon of any color (like for safety); Patent 2 for red wagon – if same patentee, examiner cannot use Patent 1 against you; if different patentee they can

Aren’t you doing that anyway? Not granting patent BECAUSE of 1 st patent?

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PROCEDURES IN THE US PTO APPLICATIONS (p. 605) Types of Applications: 1. “Regular” Utility 2. Provisional  More recent creation, put in statute for global harmonization  Have 1 year from filing provisional to file full application  No real life of its own – will die within a year if no full application  GET A FILING DATE (very important in first-to-file countries)  PROVISIONAL APPLICATION DOES NOT HAVE TO HAVE CLAIMS o Most practitioners put in at least one or two o Enabling disclosure requirement – conservative angle to put almost as much information as in regular patent  Can also save money and determine later if you want to spend money for full application 3. Reissue (Ch. 5) 4. Design Patent (Ch. 7) 5. Plant Patent (Ch. 8)

PROSECUTION PROCEDURE OVERVIEW  Applicant will FILE the application  Examiner will then search for prior art  Examiner will then issue Office Action (rejecting claims 95% of time)  Then applicant files an amendment/response if they disagree (PROSECUTION HISTORY that can later estop applicant – recapture rule, Markman, Festo)  All of this is called the File History or Prosecution History (or sometimes the File Wrapper)  If patent is finally allowed, pay issue fee and get the patent  If finally rejected, can appeal to BOPAI (Board of Patent Appeals & Interferences)  Can appeal that to Fed Cir (can also appeal to District Court of DC Cir, few people do it)
o o NOTE: must exhaust administrative appeals before Fed/DC – have to appeal BOPAI Fed Cir (or DC Court) has NO DISCRETION – must take the appeal

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DUTY OF PATENT APPLICANT TO THE PATENT OFFICE (p. 613) Inequitable Conduct [IC] (aka Fraud on the Patent Office) (Likely to be on exam) 37 C.F.R. 1.56 (pages 615 spilling onto 616) No patent will be granted where fraud was practiced or attempted or duty of disclosure was violated through bad faith or intentional misconduct Prerequisites to Inequitable Conduct: 1. Materiality 2. Intent (sliding scale but if no intent, no IC) If 1 and 2 present, then court must balance to determine whether IC Applicant’s Duty to the Patent Office Duty to disclose all known, material prior art to the Patent Office  True all the way up to the point that patent actually issues, even if issue fee has been paid Applicant has no duty to do a prior art search prior to application 1. (Allows applicants to bury their head in the sand a bit) Even if you have heard of some vague rumor, no duty to investigate (yet) 2. Prior art has to be KNOWN, in front of you and stinking Attorneys tend to err on the side of telling PTO more rather than less 3. Could this backfire? Accuse applicant of IC via burying prior art in a haystack of irrelevant stuff 4. NOTE: only one case of this, but had to prove it was INTENDED to bury/hide Kimberly-Clark (p. 392) – no facts in our case book  Since Jan. 1, 1953 (effective date of 1952 patent statute revision): o No need for presumption that inventor has knowledge of all material prior art o Just a fiction pre-103 for person of ordinary skill in the art  Duty of Candor and Obligation to disclose material art to PTO limited to ACTUALLY KNOWN to inventor or his assigns, agents, attorneys, etc
   Inventor is not charged with knowledge of anything – we care about person of ordinary skill in the art Vision: POS is sitting around with all the prior art hanging up on the walls around him or her POS will vary from case to case…

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MATERIALITY (Likely to be on exam) Material = 1 and (2 or 3) [37 CFR .156 – page 614-15] 1. Not already in record; AND 2. If it establishes, by itself or in combination with another reference, a prima facie case of unpatentability of a claim; OR 3. It refutes, or is inconsistent with, a position the applicant takes in: i) opposing an argument of unpatentability from Office ii) asserting an argument of patentability Prima facie case COMPELS a conclusion that claim is unpatentable by PREPONDERANCE of EVIDENCE  NOTE: Prima Facie is a pretty high standard American Hoist (p. 616) – no facts in case book; discussion of the three tests(1: objective “but for” standard; 2: subjective “but for” standard; 3: “but it may have” standard), what is material (only place where they differ)  Duty to disclose information pertinent/material to application of which applicant is aware, NOT duty to disclose ALL pertinent prior art of which aware (Former) PTO Rule 1.56a, Material When:  Substantial likelihood (that a)  Reasonable Examiner  Would Consider Important  In Deciding Whether to Allow/Issue (This is technically not the standard at present, but good overall guideline)  Materiality & Culpability often inter-related and intertwined
 BALANCING:  Highly material will require only low level of intent  Low materiality will require high level of intent  IF NO INTENT – no amount of materiality will lead to IC


Fed Cir a consistent on this after Kingsdown, though some confusion prior

Re-iterating: Prerequisites to Inequitable Conduct:  Materiality  Intent (sliding scale but if no intent, no IC) If 1 and 2 present, then court must balance to determine whether IC

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INEQUITABLE CONDUCT (Likely to be on exam) JP Stevens (p. 618) – no facts in case book  PTO inequitable conduct broader than common law fraud (acts of commission AND omission) Inequitable Conduct: Prove by Clear & Convincing Evidence (challenging patent validity) 1. Materiality  Non-disclosed or false information  AmHoist 2. Intent (to withhold material info)  Need not be proven with direct evidence  Acts the natural consequences of which are presumably intended by the actor is sufficient 3. Once threshold of 1 and 2 established, balance to determine whether IC occurred  Effect of IC (defense)  UNENFORCEABLE (not invalid)  for WHOLE PATENT, not just claims affected by prior art o If IC in parent, then all children/continuation/divisional also unenforceable  Fruit of the poisoned tree o Even if disclosed prior art in the child patent Again, if no intent, then no IC Gross negligence out the door with Kingsdown Kingsdown (p. 620) – included claim in continuation application  allowable subject matter BUT rejected as indefinite in parent application  NO IC Inequitable Conduct 1. Failure to disclose material OR submission of false material 2. Intent to deceive PTO  IC is equitable question (of law)  Gross negligence alone is not enough for #2 on IC (intent) o Conduct as a whole, including good faith, must be culpable deception o Must have at least some INTENT  Must have intent – analogy to “mens rea” guilty mind Burlington Industries (p. 624) – no facts in case book but quotable commentary  “Absolute Plague” of IC charges  Summary judgment of IC when reputable attorney denies  rarely appropriate NOTE: No duty to go back to patent office for re-issue or re-exam just because someone in suit says your patent is invalid – not inequitable conduct  IC is what is done IN PTO, not what happens outside PTO later

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INTERFERENCE Interferences are a bit of a “black art” Our system is presently FIRST-to-INVENT rather than first-to-file like most countries  Another movement afoot to get US on first-to-file system What if person who gets patent was not the first to invent? 35 USC § 102(g) – first inventor may lose if not diligent in reducing to practice, filing What if two people try to get a patent at the same time?  INTERFERENCE – mini-litigation at the Patent Office (administrative trial) o BOPAI – Board of Patent Appeals and Interferences o Key Question: who has PRIORITY? o Who conceived first and diligently reduced to practice (RTP)? Simplest Form of Interference:  App 1 and App 2 claim the same subject matter  Then patent office introduces INTERFERENCE  Decides which applicant gets patent rights  See Medichem case Harder Form of Interference:  App 1 and Patent 2 – as long as within a year of Patent 2 issuing; interference can still be declared Medichem (p. 189) – reversed on first leg of two-way test; remand for more info on 2nd leg For US Court Jurisdiction: For interference in district court – patents must have same or substantially same subject matter as per two-way test  need interference in fact for JURISDICTION in US Court Two-Way Test for Interference-in-Fact Exists when at least one claim of A anticipates or renders obvious at least one claim of B AND at least one claim of B anticipates or renders obvious at least one claim of A o Way to short-circuit: just amend and add a claim from the one you want to declare an interference on, then prove you have disclosure enabling to that claim; also must be patentable subject matter – new prior art? Anticipation = Q of FACT Medichem (p. 189) Obviousness = Q of LAW Medichem (p. 189) – See also page 40 of outline

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AMENDMENT & CORRECTION OF PATENTS 1. Reissue  Can only be instituted by applicant/owner  Can be instituted ANY TIME where wholly or partly invalid  BROADENING RE-ISSUE must be done WITHIN 2 YEARS of ISSUE date o Any part broadened, not necessarily broadened overall 2. Re-examination  Can be instituted by third parties Each: ability to get back to PTO to have patent looked at again to correct something REISSUE Ball (p. 627) – missile dual slot assembly  re-issue valid
 This case: broader in some respect but pretty insignificant (non-material) thus not in violation of the recapture rule, sufficiently narrower than cancelled claims to avoid the recapture rule

Recapture Rule: Bars patentee from acquiring through reissue claims that are the same or broader scope as cancelled claims
 Where cancellation amounts to admission that reissue claims are not patentable at time of cancellation

Patentee CAN get NARROWER claims than those cancelled through re-issue  Broader in any respect DOES apply here Exists for equitable reasons, give pause to applicant tempted to go for reissue to avoid appeal Broader-in-Any-Respect: Claim is broadened if broader in any respect  APPLIES TO 2-YEAR BAR BUT NOT RECAPTURE RULE

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RE-EXAMINATION Closest thing in US to an opposition proceeding Similar to re-issue except:  LIMITED to PATENTS or PRINTED PUBLICATIONS ONLY o No public use, etc  Third parties can initiate Originally only ex parte procedure Now (since 1999) some cases allow for inter parte procedure In some cases, can choose between Re-Exam or Litigation:  Re-Exam: o Can be less expensive o No presumption of validity o Can backfire and make patent look stronger (not just issued but passed reexam) o Re-exams have high likelihood of re-affirming validity (70+%) o Re-exam allows patentee to modify claims (versus all-or-nothing)  Allows patentee to craft claims that you still violate…  Litigation: o Can be more expensive o Presumption of validity applies o Litigation has better odds for patent challenger o all-or-nothing Baniak leans in the direction of litigation rather than re-exam (for challenger/infringer)  Especially if significant part of client’s business, no way out, cannot design around Reverse if patentee In re Etter (p. 642) – no facts in case book  No presumption of validity in Re-Exam proceeding (the statutory presumption in Section 282 is simply inapplicable in re-exam), Preponderance of Evidence Standard in re-exam o PTO has expertise o Congressional intent – provide a less expensive way to challenge patents  Re-examination can be requested by third parties  Re-examinations done ONLY in light of patents or printed publications, nothing else (37 CFR 1.510) If you litigate and lose (patent found valid), you can run back to the PTO and try to get it re-examined (different forum and different standard) BUT it will not do you any good – you still have an infringement judgment against you – enjoined, damages, RJ will hold you to the judgment

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RE-EXAMINATION Notes (p. 648 ff) Ex Parte Neuwirth (p. 648 n1) Re-examination claims cannot be broader than original claims 35 USC 305: No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a re-exam proceeding In Kaufman (p. 648 n2) Identity in re-exam = without substantive change (same as re-issue) Syntex (p. 649 n4) A third party who requests re-exam has no right to participate in proceedings after filing its reply to the patentee’s statement and has no standing to contest Office decision to issue re-exam certification Ethicon (p. 649 n6) PTO has no authority to stay re-exam pending the outcome of litigation BUT Gould (p. 650) – no facts in case book  District court can stay validity proceeding until completion of re-exam proceeding (but DC has some discretion, not necessarily required)  Stay would have to be for a protracted or indefinite period as to render its issuance an abuse of discretion  Judge more inclined to stay if requested early in the proceeding; less inclined to stay if it is getting late in the case, trial is looming

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INTERVENING RIGHTS Intervening rights applies to both re-issue and re-examination  If you infringed original claims and they survive the re-issue without any changes, you are on the hook for all of it – no intervening rights  EVEN A SMALL CHANGE between original and re-issue (ex: just a slight broadening) WILL RESULT IN INTERVENING RIGHTS  AFTER RE-ISSUE issued, infringer liable for new claims infringed Seattle Box I (p. 633) – spacer blocks for bundling tiers of pipes Re-Issue: Original patent is dead; re-issue claims reach back to original issue date ONLY IF identical to original claims  Identical = without substantive change (at most) Liability for new/amended claims starts at re-issue date Intervening Rights: Whether claims in original, repeated in re-issue, are infringed  Yes = infringer has no protection  No = equitable remedy (have INTERVENING RIGHTS to protect infringer) Seattle Box II (p. 637) – spacer blocks for bundling tiers of pipes (continued); intervening rights up to time of re-issue, unclean hands after that  Made a lot of these product in the interim – court lets that go  After patent re-issued, you continued – court will not let that go Intervening Rights: Whether substantial preparation by infringer prior to re-issue grant Protect investments made:  Prior business commitments (prior orders)  Cost/ease of conversion from infringing to non-infringing Seattle Box Takeaways: 1. Absolute Intervening Rights up to the point of Re-issue  If no claim survives from original patent, no liability  Any infringement of original claims is expunged 2. Equitable Intervening Rights  Court looks at circumstances to see if infringer should be allowed to continue to infringe  CASES WHERE INFRINGER ALLOWED TO CONTINUE TO INFRINGE ARE EXTREMELY RATE o Perhaps built factory on that basis and cannot convert o More likely to require LICENSE or ROYALTY or just allow temporarily

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INFRINGEMENT (p. 661) General TORT theory applies  Direct Infringement o Whether, without authorization of patent holder (right or license), another has made, used, imported, offered for sale or sold the patented invention as defined by a claim (necessary to determine nature and scope of invention defined by claims)  Inducing Infringement o Aiding, abetting, encouraging direct infringement by another  Contributory Infringement o Contributing to direct infringement by another PROPERTY INTEREST – likened to property, claims are METES & BOUNDS Infringement is like a TORT – similar to trespassing JOINT & SEVERAL LIABILITY – like torts (case w/ two hunters shooting)  Patent law pushes liability toward mfr, away from consumer WARRANTY of MERCHANTABILITY – UCC: as between merchants, automatically get a warrantee that nothing infringes  Customers often use INDEMNIFICATION clauses to get help from their suppliers Four Scenarios of Infringement: (p. 662) 1. Non-Infringe  Claim does NOT literally read on; AND subject matter does NOT embody the invention 2. Doctrine of Equivalents (DoE) in Reverse: Non-Infringe (very rare)  Claim DOES literally read on; BUT subject matter does NOT embody the invention 3. Literal Infringe  Claim DOES literally read on; AND subject matter DOES embody the invention 4. Infringe under Doctrine of Equivalents (DoE)  Claim does NOT literally read on; BUT subject matter DOES embody the invention  Elements are not literally present but that element as represented in invention is equivalent structure, functioning in equivalent way to same end

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PRESUMPTION & BURDEN 35 USC § 282: Presumption of validity to each and every claim of each and every patent granted by US PTO; proving invalidity lies on the challenger Amer. Hoist & Derrick (p. 435) – Rich – jury instruction error: if new prior art, presumptive validity is gone and burden is preponderance of evidence o Patents are presumptively valid; o Burden of Proof (of invalidity) is always on the attacker – no shifting of burden o Standard = Clear & Convincing Evidence o “Must leave a definite and firm conviction in the mind of the jurors” o MORE than preponderance of evidence o LESS than beyond a reasonable doubt o Deference to PTO on “old” prior art o “New” prior art may DISCHARGE burden, but does not change or shift burden – no deference to PTO on prior art it did not consider o Chevron principle: presumption that administrative agency got it right – as long as interpretation is reasonable, defer to the administrative agency o Miracle on 34th Street: (lawyer has PO deliver sacks of mail addressed to Santa while client on stand testifies that he is “Santa”) if it’s good enough for the PTO, it’s good enough for me o What if jurors not unanimous? Firm conviction? What about Secondary Considerations? o Standards of proof are for FACTS, not LEGAL questions  gone off the rails o This can make some sense under factual 102; less/no sense under 103 o It’s not clear what jurors are asked to do; good guess at what they actually do Criticism: o Rich’s analysis has not fared well with critics o Basis for presumption was deference to PTO, Congress wanted to apply that deference in all situations and not just “same prior art” o If it is, trying the administrative process

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INTERPRETATION OF PATENT CLAIMS (Claim Construction) Markman (p. 663) – Markman Patent on drycleaning inventory  JML (jnov) that D (Westview) does NOT infringe  did not track LAUNDRY items  Key to the case was the meaning/construction of the word “inventory” in claim  7th amendment right to jury trial NOT violated – no right to jury on legal issue Two Elements of Simple Patent Case: 1. Patent Claim Construction  This is a QUESTION of LAW; determined by judge
   Fact/Law distinction can turn on who is better positioned to decide – judges are smarter, more educated, used to construction of written instruments; judges used to interpreting legislation (like Patent Statue) Patent claims are highly technical, hard to construe More uniformity if judges decide patent claims – juries would be less consistent (?): Fed Cir created for this reason; intra-jurisdiction uncertainty, undermine stare decisis (two juries coming up with different conclusions – don’t know how they got there because verdict form does not [usually] have claim construction, just infringe or not – the black box jury process is NOT RJ…); let judges do it, have an opinion and stare decisis (no CE/RJ for non-parties) [NOTE: patent owner as party may be stuck… Why it is so important for a patentee to get a good Markman hearing], makes it more consistent (esp. if Fed Cir kissed it) Less jury concerns like credibility Jury better at deciding credibility, battle of experts on meaning of term  Court just brushes the facts bits under the rug… Does this assume judges know SCIENCE better than a jury?

  

2. Whether Infringement Has Occurred  This is a QUESTION of FACT; submitted to a jury
Why was Markman such a big deal?  Old 1800s cases in Phillips said judge can do it…  US SC says it MUST be the judge in Markman  Before, judge could punt and let juries handle some factual debates over meaning of words What was the real kicker?  At what point in the proceedings will we do this? Fed Cir and US SC silent – no guidance Birth of the…  MARKMAN HEARING (aka Markman Proceeding) – many jurisdictions do this now – anywhere between filing and jury/end, usually earlier  Often done at close of fact discovery  Some do even earlier than discovery – potentially kill case early, save docket time  Some do slightly later at SJ stage LAW OF THE CASE – early ruling on law in case goes throughout later in the case PROBLEMS:  Some judges willing to CHANGE the Markman ruling  Fed Cir reviews Markman ruling DE NOVO – high reversal rate 45-50% v. 15% avg  Grass roots movement not to bother with Markman hearings – just leads to two cases  Practical results of Markman seem to totally undermine the rationale – if judges so great at it, why the high reversal rate? That’s uniformity? Judges can all handle SCIENCE based on LEGAL education?

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TOOLS OF CLAIM CONSTRUCTION Phillips (p. 668) – invention has baffles in vandal-resistant walls for prisons  reverse non-infringe & remand  baffle could be 90 degrees Claim Construction: Ordinary meaning given by POS at filing in context Look to: Intrinsic Record (in the public record of patent): 1. Claims a. Claims Themselves b. Other Claims (context, consistent use throughout required) * 2. KEY: SPEC – own lexicographer *  Makes sense – chronologically, drafter usually starts at claims and then explains everything in spec 3. Prosecution History (Intrinsic record more reliable than Extrinsic record) Extrinsic Record (NOT in the public record of patent): 4. Dictionaries, Treatise 5. Expert & Inventor Testimony  Beware taint of “litigation testimony” – Baniak thinks inventor litigation testimony is out entirely EXTRINSIC CANNOT CHANGE WHAT INTRINSIC SETS OUT, but can supplement it or explain it (extrinsic is just context, helping out to educate, informing on intrinsic) OLD SAW: Want to construe claims in a way such that they are VALID CARDINAL RULE: Do not read limits of spec into claims – do not import limits of spec into a claim  Claims by nature allowed to be broader than spec, so long as spec will enable them; spec written to enable, describe, not intended to come up with every which way to do it; entitled to broader claims than what is in the spec; just because the spec has a screw doesn’t mean “connector” in claims limited to screws Trend: NARROWING (Dictionaries are written BROAD, all-encompassing) Here, dictionaries are pushed lower, elevate the specification Over-ruled Texas Digital line of cases that hoisted dictionary high
Lower the Dictionary: * Dictionary is out of context * This is new – not in the dictionary yet * Dictionary editors want broad, all-encompassing term – not so in patent * Dueling dictionaries – which dictionary to choose from… * Dictionary at what time? Filing? Issue? Definitions change…

Fed Cir at present: time of filing of application is basis for construction

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DOCTRINE OF EQUIVALENTS Fudge Factor; Penumbra DoE Competing Policies: PROBLEMS with DoE: uncertainty, problems with public notice (put public on notice of what claim is); public should be able to rely on this notice - balanced / competing with – Equitable, fair – trying to protect patentees from imperfections of language, trivial changes to avoid infringement, hollowing of patent rights Graver Tank (p. 689) – welding composition not literally infringed but infringed under DoE  patent used magnesium; infringer used manganese  operated same way, substitutes  no evidence that infringer came up with Mn independently – persuasive to US SC Whether Infringe: 1. Words of Claim (Literal Infringement) If accused literally infringes – done (unless DoE in reverse) 2. Doctrine of Equivalents (DoE) TRIPLE IDENTITY TEST (function/way/result): Infringes under DoE IF it performs substantially the same function in substantially the same way to obtain the same result 3. DoE in Reverse If same or similar function in substantially different way but within literal words of claim  restrict claim: non-infringe Equivalency: determination of FACT (any extrinsic evidence OK)  Look to context of patent, prior art, circumstances of case  Not absolute  Important Factor: whether POS knew ingredient was interchangeable  Time of infringement is what counts; figure out equivalency at time of infringement o Tension (?): definition/construction (and enablement) is at time of filing  To permit imitation that does not copy every literal detail would make patent hollow and useless, leave room for unimportant and insubstantial changes; words are imperfect and patentee will get some latitude for that (OFTEN QUOTED) o Literal infringement is “dull and rare” Language is imperfect – does not always keep up, not always as precise as needed PUBLIC NOTICE (function of claims); uncertainty with DoE

 

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Can be a limit on the doctrine of equivalents:  When Fed Cir began – enunciated FLEXIBLE BAR – see whether and why amendment was made, may want to give you some of that range under DoE even if amended for patentability  Contrast: ABSOLUTE BAR – any amendment gives up right to use DoE – if amended claim and narrowed it, cannot use DoE on that claim  Today: more of a flexible bar, not quite absolute bar; more of a SPECTRUM

Warner-Jenkinson (p. 693) – dye filtration purification patent  “pH from approximately 6.0 to 9.0”  pH = 5.0 (no literal infringe) can infringe under DoE (remand)
  Prior art – higher than 9.0 (PHE would have applied at 9.0 and higher – no infringement if the pH of the accused had been 10.0 or even 9.1 – absolute end of spectrum) Not clear where the 6.0 came from – nothing in the file history

   

DoE must be applied to individual elements of a claim, NOT invention/claim as a whole
o o o Example: DoE on <6, absolute bar on >9 Public Notice function of claims, file history Cannot recapture territory you surrendered to get your patent

Prosecution History Estoppel (PHE)  legal limit on DoE Certain reasons for amendment may AVOID PHE – BUT IF amend and no explanation of why, PRESUME a bar to using DoE; burden on patentee to establish reason for amendment sufficient to overcome PHE
o Fn 6 – to change from flexible bar now would change the rules of the game after many relied on them in prosecution

  

  

Whether to use triple identity test or “insubstantial differences” is case-by-case; both are OK  essential question: does accused contain elements equivalent to patent claim? Cancel a claim and re-write without comment? Likely still barred – harder to ferret out but same concept Takeaways: o Function/way/result test re-iterated from Graver Tank (triple ID test) o DoE kicks in unless file history estoppel o Equity – judge decides if DoE applies o Question of Equivalence is a FACT QUESTION for jury (if issue of fact to be resolved) Gradual erosion of ability to get to jury o Markman was a big jump, the other cases are small jumps If there was copying along the way, then likely DoE will be applied Attempt to design around – may be indication of equivalency (counterintuitive)

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Festo VII (not in case book) – Fed Cir (2001) – Fed Cir chose ABSOLUTE BAR on public notice rationale; any amendment can bring on PHE  Over-turned by US SC in Festo VIII Festo VIII (p. 699) – US SC (2002) – patents for magnetic rodless cylinder (used at Disney)  amended for PAIR of sealing rings  SINGLE ring infringe under DoE?  semi-FLEXIBLE BAR  PHE applies to (narrowing) amendments made for “substantial reason related to patentability” such as: o To avoid prior art; OR o To satisfy the statute:  Useful (§ 101)  Novel (§ 102)  Non-obvious (§ 103)  Description, Enablement, Best Mode, Claimed=Disclosed (§ 112)  PHE  when amendment narrows scope (and related to patentability) o If § 112 amendment is truly cosmetic, then no narrowing of scope and no PHE o If § 112 amendment is necessary for patentability and narrowing, PHE applies (even if just for better description)  Festo Presumption:  Presume all territory between original and amended claim is SURRENDERED UNLESS rebutted with: 1. Unforeseeable 2. Tangential 3. Other Festo IX (p. 699) – Fed Cir en banc (2003) – patents for magnetic rodless cylinder (used at Disney)  amended for PAIR of sealing rings  SINGLE ring infringe under DoE?  PHE Inquiry: 1. Does amendment NARROW the literal scope of the claim?  If no, then PHE does not apply – can use DoE  If yes, then go to 2: 2. Whether reason for amendment was substantially related to patentability?  If no reason, then W-J presumption that is WAS related to patentability – can rebut (but only with evidence in file history itself)  If not related to patentability, then PHE does not apply – can use DoE  If related to patentability, then go to 3: 3. Scope of Subject matter surrendered by amendment  Festo Presumption – all territory between original claim and amended claim is SURRENDERED  If rebuttal of Festo presumption fails, then PHE will bar use of DoE  If rebuttal of Festo presumption succeed, then PHE does not apply – can use DoE  Can REBUT if: 1. Unforeseeable  Equivalent was unforeseeable thus beyond fair interpretation of surrender  Ex: later-developed technology; old tech highly unlikely  Extrinsic Evidence OK here 2. Rationale for amendment no more than tangential to equivalent  NOT avoiding prior art  PHE only  ONLY INTRINSIC HERE – testimony only to interpret PHE 3. Other  Shortcoming of language preventing description  Limit to PHE INTRINSIC evidence if possible  May NOT use 3 if equivalent in prior art

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DOCTRINE OF EQUIVALENTS Festo Comments:  Still a flexible bar, but not as flexible as before o FLEXIBLE bar only going to kick in where you can see from file/intrinsic there is some explanation given as to why amendment was there o Unexplained amendment will hit ABSOLUTE bar  Rebutting the Festo presumption is murky, reading the “entrails of a goat” o 1) foreseeability makes some sense, but 2 and 3 are opaque o No one has ever successfully used (3) o Does bottom line become foreseeable?  Rader’s dissent – tangential is so narrow it does not exist, will collapse into whether foreseeable  Newman’s dissent – takes issue of extracting proof only from intrinsic record  Record built on law that has now changed; didn’t explain in record because didn’t think they had to – changing rules of the game  Does Festo weaken the enablement requirement? o If you did not enable the unforeseen embodiment, Festo will give it to you, give you the penumbra – even if no enabling disclosure? Seems odd.

[See Festo flowchart] Still have DISCLAIMER  If you say something that constitutes disavowal / disclaimer, that will be used against you, too – DISCLAIMER – no DoE for that scope (same basic result)  Public notice

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MEANS PLUS FUNCTION CLAIMS (See also page 56 of outline) M+F sound broad but actually narrow  M+F covers what you disclosed in your spec plus (substantial) equivalents therof  M must be described in specification (or be a substantial equivalent) o Substantial equivalents at the time the patent was written Can have literal infringement if substantial equivalent under M+F claims Not clear if DoE could be used to snag “glue” in the case of mech connections Apex (p. 727) – computer switching systems; no “means” word in claim  NOT means + function  Whether claim is means + function is QUESTION of LAW (reviewed de novo)  Use of word “means”  rebuttable presumption of means + function: o Focus: whether claim term recites no corresponding function OR recites structure/material for performing function o (“Yes” on either rebuts)  No use of word “means”  rebuttable presumption NOT means + function: o Presumption collapses if limitation relies on functional terms rather than structure or material to describe performance of the claimed function

REVERSE DOCTRINE of EQUIVALENTS SRI (p. 730) – filter & camera  SJ non-infringe REVERSED  performs different way, but allow evidence of HOW different  Is it so far changed that even though literal infringe would seem to apply it should not infringe? Reverse DoE: Whether a principle has been so FAR changed that the way is SUBSTANTIALLY different  Depends on Evidence such as: o Whether accused device came from independent R&D o Whether POS would have known interchangeable ingredient

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STATUTORY INFRINGEMENT – ACTS CONSTITUTING INFRINGEMENT (Page 731 ff) DIRECT INFRINGEMENT  Direct Infringement = a party is practicing every limitation in the claim
 35 USC § 271(a) – Makes, uses, offers to sell, or sells within the US or imports into the US

35 USC § 271(c) Whoever offers/sells/import a component of a patented combination/process, constituting a MATERIAL PART, KNOWING it to be ESPECIALLY ADAPTED for use in infringement and NOT A STAPLE article suitable for substantial non-infringing use

  

NOTE: no intent required on 271(c) Knowledge: must know there is a patent out there, must know this item is a part of it Staple items like baker’s flour not covered (unless custom-made)  Harder when there are multiple uses

INDUCEMENT  Aiding & Abetting – you are making someone infringe
35 USC § 271(b) Whoever ACTIVELY INDUCES infringement of a patent shall be liable as infringer


Intent element clearly present from case law

35 USC § 271(g) Product made by process patented in US Importing product made by process in the US = infringement

35 USC § 271(f) (1) Supplier can be liable when assembly outside the US Supplies all or a substantial portion of the components of a patented invention Actively induce the combination outside the US (2) Supplies any component especially made or adapted for use, not a staple article

Knowledge/Intent Requirements:  No knowledge requirement on direct infringement  Knowledge requirement on contributory infringement  Intent requirement for inducement

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DIRECT INFRINGEMENT  Direct Infringement = a party is practicing every limitation in the claim  35 USC § 271(a) – Makes, uses, offers to sell, or sells within the US or imports into the US Autogiro (p. 737) – no facts in case book Direct Infringement Analysis: 1. Determine meaning of claims  Must go beyond claim itself  Other patent documents – spec, drawings, file wrapper  Circumstances surrounding patent inception 2. Read claims on accused structures  Literal; or  Equivalent – do the same work, in substantially the same way, and accomplish substantially the same result  GUIDES:  POS know interchangeable  Pioneer patents given wider equivalence range than minor improvement

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35 USC § 271(c) Whoever offers/sells/import a component of a patented combination/process, constituting a MATERIAL PART, KNOWING it to be ESPECIALLY ADAPTED for use in infringement and NOT A STAPLE article suitable for substantial non-infringing use

Dawson Chemical (p. 741) – Rohm & Haas makes propanil, non-staple and no use other than patent
infringement; R&H (patentee) requires people to buy propanil from them  no patent misuse (infringe)  R&H protected by statute Section 271(d)

Patentee has statutory right to control non-staple goods capable only of infringing use in patented device and are essential in advance over prior art Limits on Contributory Infringement:  Non-Staple Article  Only capable of infringing (no substantial non-infringing use)  Essential in advance over prior art (?) Limits on Patent Misuse: 1. Patentee may make & sell non-staple goods connected to invention 2. Patentee may license others to do stuff which is otherwise contributory infringe 3. Patentee can sue for contributory infringement w/o fear of losing rights
Historical Journey through Contributory Infringement (Swinging Pendulum): PENDULUM BEGINS Wallace (1871)  New burner for an oil lamp (hurricane lamp); patent over all elements  Rival product including everything except the chimney, including novel burner  Not direct – not all elements – BUT you KNOW what they’re doing, KNOW they’ll add the chimney  Ruling = CONTRIBUTORY INFRINGEMENT  Seems Fair PENDULUM MOVING FORWARD Leeds & Caitlin (1909)  Phonograph discs not patented but specially designed for use in patented combination, could not be used elsewhere  Ruling = Injunction Upheld; CONTRIBUTORY INFRINGEMENT  Questioned in Mercoid, effectively brought back by statute  Seems Fair; seems straightforward EXPANSION – “High Water Mark” Henry v. AB Dick (1912)  Conditional licensing tying patented printing machine to sale of staple items like paper & ink  Ruling = Contributory Infringement  Over-ruled in Motion Picture  Seems way overboard  Side Note: Damages Analogy: royalties based on unpatented paper going through patented machine UPHELD (KEY: do not have to buy the paper from licensor)  UPHELD as long as rationally related  If you start to require paper from licensor or have an irrational basis, start to get into tying and misuse problems; can sometimes tie if rational basis like using our special paper will ensure machine works OK (antitrust law – must be unable to handle that with specs)

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35 USC § 271(c) Whoever offers/sells/import a component of a patented combination/process, constituting a MATERIAL PART, KNOWING it to be ESPECIALLY ADAPTED for use in infringement and NOT A STAPLE article suitable for substantial non-infringing use

Dawson Chemical (p. 741) – CONTINUED – Rohm & Haas makes propanil, non-staple and no
use other than patent infringement; R&H (patentee) requires people to buy propanil from them  no patent misuse (infringe)  R&H protected by statute Section 271(d) Historical Journey through Contributory Infringement (Swinging Pendulum): (CONTINUED) REACTION – PENDULUM SWINGS BACK Motion Picture (1917)  Patent on film projection equipment, conditioning use of machine on exclusive use of film (film patent had expired, Baniak: film only had use in that machine?)  Ruling = Improper, creating a monopoly outside legitimate patent – No infringement  Over-ruled Henry v. AB Dick  Seems to more or less make sense unless Baniak’s film sole use is right  Baniak: tough one, may come out differently today under 271(c) PENDULUM SWINGING BACK A SHADE MORE Carbice (1931)  Use of patented design for fridge authorized only to purchasers from the licensees of dry ice (staple)  Ruling = Patent Misuse (No infringement), tying staple product is beyond scope of monopoly  Seems to more or less make sense – people can freely make flour/dry ice, staple product PENDULUM BACK TOO FAR? Mercoid I & II (1944)  Patent on combination of furnace elements, unpatented stocker switches specially made for the furnace  Right to use system granted to purchasers of stoker switches  Mercoid was competitor who refused sublicense  Ruling = No infringement: any attempt to control the market for unpatented goods would be misuse, even if those goods had no use outside patented invention  Disapproved of Leeds  Seems to make no sense, way overboard  EFFECTIVELY OVER-RULED BY STATUTE PENDULUM SWINGS BACK AGAIN A BIT WITH STATUTE See statute text (blue, prior page) for what statute lays down now

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INDUCING DIRECT INFRINGEMENT Knowledge/Intent Requirements:  No knowledge requirement on direct infringement  Knowledge requirement on contributory infringement  Intent requirement for inducement HP v. Bausch & Lomb (p. 749) – B&L sells Houston, who makes infringing grit wheel plotters, to Ameteck  no inducement, though direct infringement prior to sale – no intent, indemnification alone is not enough Contributory Infringement: Must prove knowledge, not intent MUST KNOW: his activity caused infringement  Component was especially made or adapted for a particular use; AND  Know of the patent that proscribed that use (Aro II fn 4) Active Inducement [under § 271(b)]: Must prove actual intent to cause the acts which infringe  Indemnification will not establish intent, but intent will be inferred where purpose of indemnification is to overcome deterrent effect of patent on would-be infringers
 This is really aiding & abetting, no problem with a knowledge requirement

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REPAIR & RECONSTRUCTION Aro I (p. 752) – Aro sells replacement fabric for patented car convertible top  permissible repair, not
reconstruction  KEY: HERE: licensed GM cars

There can be no contributory infringement unless there is direct infringement REPAIR is permitted; RECONSTRUCTION can/does infringe  Such a true reconstruction as to make a new article after entity as a whole is spent  Replacing unpatented part of patented combination – no contributory infringe (Permissible) Replacement of a spent part of a combination patent where there is no separate patent on the part is not (impermissible) reconstruction no matter how essential part is or cost/difficulty to replace
 THAT IS THE BUYER EXPECTATION – repair to get full life of product

Aro II (p. 757) – Aro sells replacement fabric for patented car convertible top  permissible repair, not
reconstruction  KEY: HERE: UNLICENSED Ford cars (Ford is direct infringer, now Convert Top is contrib.)  In one sense: Convert Top was doing the same thing – how were they to know? WTF?

 Where use infringes, so does repair (for it perpetuates infringing use)  Sale of patented article by permission of patentee  implied license to use For Contributory Infringement: Must prove KNEW combination for which component was designed was: 1. Patented; AND 2. Infringing Husky Injection (p. 763) – replacement molds for injection molding machine  non-infringe, kin to

Three Repair & Reconstruction Situations: 1. Reconstruction:  Entire patented item spent, infringer reconstructs to make usable  INFRINGE (ex. Cotton Tie) 2. Repair  Spent part is replaced  If not separately patented and use of whole allowed  NON-INFRINGE 3. Kin to Repair  (Unpatented?) part not spent but replaced to allow different function  NON-INFRINGE   AT MINIMUM REPAIR EXISTS IF PART REPLACED IS EASILY REPLACEABLE Aro I applies to replaceable parts only, can question whether applicable

Cotton Tie (p. 763) – metallic cotton-bale tie opened by cutting and sold for scrap iron; D purchased this scrap iron, rivets them back together and recreated the bands  infringed via reconstruction, was not supposed to be re-used

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TEMPORARY PRESENCE IN THE US (p. 767) 35 USC § 272: Temporary Presence in the US Use of any invention in any vessel, aircraft or vehicle… entering the US temporarily or accidentally, shall NOT constitute infringement… IF… invention is used exclusively for the needs of the vessel, aircraft or vehicle and is not sold in or used for the manufacture of anything to be sold in or exported from the US METHOD OF DOING BUSINESS – PRIOR USER DEFENSE (p. 768) Enacted to protect prior users of a patented business method (after State Street) 35 USC § 272: It shall be a defense… had, acting in good faith, actually reduced the subject matter to practice at least 1 year before the effective filing data… and commercially used… before the effective filing date  Burden of proof = Clear & Convincing evidence  Personal Defense – can only be used by the person who performed the acts necessary to establish the defense, right to assert the defense shall not be licensed

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DESIGN PATENTS Design Patents = protection for the ornamental features of an article of manufacture  Requirements essentially the same as utility patent, except “ornamental” rather than utility  Encourage decorative arts, over and beyond classically considered fine arts STATUTORY SUBJECT MATTER Subject matter of an ornamental design should not be the result of purely functional requirements and the by-product thereof  Rejection of a design application as being functional is only proper when every part or substantially every part of the shape is dictated by the utility to be performed NOTE: Tire treads are subject to design patents, despite lots of function Criteria for Design Patent:  ORNAMENTAL (rather than usefulness)  NOVEL (Section 171 – same as utility)  NON-OBVIOUS (Section 171 – same as utility) In re Webb – visible to the eye in use does not matter (no “inside” versus “outside” distinction)  Hip replacement designs can now get a design patent  Design patents are granted on coffins Design Patent Claims  Only one claim in design patents  “The ornamental design for ____ as shown and described”  Refers to the figures Application of Hruby (p. 771) – water fountain design patent  article of manufacture, made by man  patent! Whether dependence does or does not exist ALONE does NOT preclude article of manufacture Design Patent Purpose: Encourage decorative arts, over and beyond classically considered fine arts
     What about functional? Use for martini? Just because it has some functionality will not stop it from being largely ornamental What if sold with “operate at low pressure” – does not look the same at lower pressure? Infringe – Fed Cir – INFRINGE if sold in a matter than can infringe, then it does infringe (even if following operating instructions would be non-infringe) Screw as a governor might release from infringement… Taking screw out is direct infringer What about showerhead? Look to claim construction – analogous? Rader’s toothbrush & hairbrush Windy days? If it infringes any day, it infringes

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DESIGN PATENT NOVELTY Application of Bartlett (p. 781) – plastic floor tile  novel  comet blobs versus marbleized Design Patent Novelty: Whether average observer would think design different rather than same or mere modification (ordinary observer would discern it is different)  in general or ensemble appearance and effect
   We look to average/ordinary observer, not expert Prior art – marbleized – smeared in two directions, bi-directional Item in question – comet blobs – uni-directional

DESIGN PATENT – NONOBVIOUS (p. 784) Question in design cases is whether they are so related that the appearance of certain ornamental features in the one would suggest application of those features in the other  Secondary considerations seldom if ever relevant

DESIGN PATENT INFRINGEMENT Gorham v. White (p. 788) – White designs infringe  differences minor, only expert would notice Design Patent Infringement: In the eyes of ordinary observer, giving attention of normal purchaser, the two designs are substantially the same, such to deceive the observer into purchasing the one supposing it to be the other
   Gorham is cited to this day as the test for design patent infringement Similar to test for CR infringement (substantially similar) Ordinary observer in between careful and casual

Litton v. Whirlpool (p. 790) – Whirlpools’ microwave oven does NOT infringe Litton’s design patent  did not copy NOVEL FEATURES distinguishing from prior art Point of Novelty To find design patent infringement, must attribute similarity to novelty which distinguishes from prior art  “Point of Novelty” in design patent infringe only; NOT in utility patent infringe
 Similarity is there but not in the novel features, the novel features were not copied

Design Patents  point of novelty or “gist of invention” Utility Patents  “patent as a whole”
Baniak 6-second test: find big ticket similarities in 6 seconds of looking?  Not quite right – no point of novelty  BUT – if you cannot come up with differences, no need to go further because no chance at point of novelty (can be used as a threshold filter)

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PLANT PATENTS (p. 796) Since 1930, Patent Act has included a section on plant patents  See Chisum on Patents; Harmon’s Patents and the Federal Circuit for more info
35 USC § 161: Patents for Plants (p. 796) Invents or discovers and ASEXUALLY REPRODUCES new variety of plant may obtain a patent  EXCEPT (no protection for): o a TUBER-PROPOGATED plant; OR o a plant found in an uncultivated state Provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided 35 USC § 162: Description, Claim  Description – will “meet” Section 112 if description is as complete as reasonably possible  Claim shall be in formal terms to the plant shown and described 35 USC § 163: Grant Right to exclude others from asexually reproducing the plant or selling or using the plant so reproduced 35 USC § 164: Assistance of Department of Agriculture President may be executive order direct the Secretary of Agriculture… to effect provisions of this title… [by furnishing info available to Dept of Ag, conducting research, or detailing officers and employees]

Plant patent cannot be issued for the discovery of a variety of plant which exists in nature but which has previously not been catalogued by botanists (Ex parte Foster) 1970 Plant Variety Protection Act (p. 797-98)
 Extended patent-like protection (i.e., with a “certificate” rather than a patent) to sexually reproduced plants (since by then it was generally recognized that true-to-type reproduction could be achieved by other means)

7 USC § 2402: Right to Plant Variety Protection; Plant Varieties Protectable (a) breeder of any sexually reproduced or tuber propogated plant variety (other than fungi or bacteria) who has so reproduced the variety…. Shall be entitled to plant variety protection, subject to (this chapter) 7 USC § 2483: Contents and Term of Plant Variety Protection (a) Certificate – right to exclude others from selling the variety, or offering it for sale, or reproducing it, or importing it, or exporting it, or using it in producing (as distinguished from developing) a hybrid or different variety therefrom, to the extent provided by this chapter (b) Term (1) Except as in 2, in general – 20 years from the date of issue (2) EXCEPTIONS: if the certificate is not issued within three years from effective filing date, Secretary may adjust the term EXCEPT (A) tuber-propogated plants – subject to waiver – 20 years after date of original grant (B) tree or vine – 25 years from the date of issue of cert (C) protection shall also expire if the owner fails to comply with regulations… relating to replenishing seed in a public repository… except that this expiration shall not occur unless notice is mailed… and the last owner fails… to comply… paying an additional fee

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INTERESTS in PATENTS – Property & Contract (p. 814) 35 USC § 261: Ownership; Assignment (p. 816) Patents shall have the attributes of personal property (subject to provisions of this title) o Real estate references, but really personal property in statute  Transfer of a patent (or of any interest in a patent) MUST BE IN WRITING  Assignment/grant/conveyance shall be void as against any subsequent purchaser for valuable consideration without notice UNLESS it is recorded either within 3 months from date of transfer or prior to the date of the subsequent purchase Recordation  No requirement that someone be able to find it, just discharge duty to record – honest searcher who missed it gets shaft, even if patent offices loses it or records it under the wrong number 35 USC § 262: Joint Owners (p. 816) In absence of agreement, each joint inventor can do as they wish and not answer to the other (without accounting to the other owners)  When representing joint inventors, get an agreement of unanimous consent or assign to a single entity  Even if one joint inventor invented 1% of claims and the other did 99%, each is equally entitled to undivided right to the whole – joint owners in entirety Patents – exclusive jurisdiction in federal courts, even tangent issues State court can have jurisdiction: ownership, rights (licenses, contract) – if invalidity comes up as a defense, it may play out in state court

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INTERESTS in PATENTS – Property & Contract (p. 814) FilmTec (p. 820) – Fed Cir – Cadotte invented X while working for MRI; MRI granted rights to government; Cadotte later assigned to FilmTec  PI against defendant Allied reversed b/c P had no ownership therefore no standing – consideration VALUABLE? On notice?  By statute, patents have the attributes of personal property Common Law: If owner of patent transfers to purchaser for value, w/o notice  purchaser owns free of encumbrances Statutory, Section 261: Transfer to initial purchaser VOID if subsequent purchaser of same thing for:  Valuable consideration  And Without notice UNLESS recorded within 3 months or prior to subsequent purchase  Without ownership at time of filing, no standing to sue for patent infringement
    If Cadotte had to assign to MRI when he invented, he had nothing to assign to FilmTec Gov’t did not record…. BUT: On notice? FilmTec had actual notice – inventor was one of FilmTec founders; FilmTec could not be bona fide Valuable consideration was questionable…

Gaia (p. 823) – Fed Cir – relied on Board Meeting minutes re: sale of 100% of shares as assignment  dismissed; did not own at filing  no standing  Agreement to assign is NOT assignment and does NOT transfer title  Patent/TM assignment must be in writing  Recording only needed to protect against subsequent purchaser w/o notice, for valuable consideration  Court cannot exercise supplemental jurisdiction if no original jurisdiction (e.g., lacked standing)  FilmTec was automatically assigned…. Contrast:  Arachnid (p. 826) – rights remained in party until actual assignment o While a patentable invention is subject to an assignment BEFORE IT EXISTS, inchoate, once it comes along, obligation to assign kicks in  Obligation to assign or actually assigned?  “will” – something must be done

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LICENSES (p. 835) Two Kinds of Licenses: 1. Exclusive License  Exclusive right to practice the patent  May be divided up by time, type/field of use (soy beans v. corn), and geographic territory  Can be granted with or without right to grant a sub-license  Exclusivity carries a premium 2. Non-Exclusive License  Right to practice but can grant other licenses Implied that if patentee gives exclusive license and he is practicing at that time, in absence of explicit agreement, patentee can continue to practice, call the license a sole exclusive license Term of the license will not be limited to less than the term of the patent unless expressly provided for in the contract

CREATION & EFFECT Waterman (p. 836) – no facts in case book; patentee refused to cooperate when licensee wanted to sue  Court: under equity, you can make patentee involuntary party, suck in by contractual relationship – involuntary plaintiff (trick: does court have jurisdiction over patentee?)  Whether assignment or license based on legal effect, not “label” used by parties Assignment: 1. Whole Patent 2. Undivided Part/Share 3. Exclusive patent rights within a territory  Assignee has right to sue;  Licensee does NOT have right to sue o (unless to prevent injustice such as when the patentee is infringer against exclusive licensee) NOTES:  Exclusive licensee can sue in his own name the owner of the licensed patent for the owners infringement thereof  Non-exclusive licensee cannot join infringement action o Non-exclusive licensees basically have no standing at all

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EMPLOYER-EMPLOYEE RELATIONSHIPS Dubilier Condenser (p. 841) – invented on own time in government lab  no assignment to government, but government had shop rights Employed to Invent  bound to assign to employer (even w/o specific contract) Employed Generally  NOT bound to assign (in absence of contract)  Generally = employed to design/construct/devise method of mfr Shop Right: use employer time and resources to invent  must give employer non-exclusive license to use invention [use may include selling, broader] Force assignment by employee contract? Must relate to business… LICENSEE ESTOPPEL Lear (p. 1143) – inventor licenses prior to patent issue, licensee wants to sue  suit allowed  no licensee estoppel  ASSIGNOR estoppel still exists for patents  Licensee estoppel no longer exists for patents o A person licensed to use a patent may challenge the validity of the patent o A licensee who establishes that a patent is invalid need not pay the royalties accrued under the licensing agreement subsequent to the issuance of the patent o Desirability of encouraging licensees to challenge validity of patents o Policy of only inventions which meet rigorous requirements
    Competing policy: Contract – forbids a purchaser from repudiating his promise simply because he later becomes dissatisfied with the bargain he has made Patent – all ideas in general circulation be dedicated to common good unless patent Pay money before patent issues? Got first-mover advantage, technology secret…

Fed Cir tried to erode Lear, say licensee could sue, but still had to pay royalties… Until…

MetaMune (just down from US SC) – not in case book  If you continue to pay royalties, you cannot get into court (no case-orcontroversy)  If you stop paying, you can sue (e.g., declaratory judgment) – but you better be right or else you are infringer o Old “sanitized” letter is now grounds for Declaratory Judgment  Linn: US SC wants DJ? Here you go! Gave DJ when P/D said “I am not going to sue you” Aronson (p. 1157) – agree to royalty but patent denied  agreement enforced (akin to Trade Secret)  Can enforce a royalty agreement where patent was denied if: o Arm’s length transaction o No fixed reliance on patent or probable patent grant

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LITIGATION PROCEDURE (p. 905 ff) INJUNCTIONS (Likely to be on exam) 35 USC § 283: Injunction (p. 906) Courts… may grant injunctions in accordance with the principles of equity… on such terms as the court deems reasonable Smith International (p. 908) – no facts in case book
   Where patentee establishes validity & continuing infringement  presume irreparable harm  grant preliminary injunction o Valid Patent + Infringe = Injunction (unless overwhelming public policy) Effectively over-ruled by eBay Logic behind old rule: patent is right to exclude, without injunction cannot have full protection

Activated Sludge v. Milwaukee (not in case book) – patent covered method of treating sewage;
new sewage plant infringed  Court: we are not shutting down sewage plant and shoving raw sewage into Lake MI  Overpowering public interest/policy

eBay (p. 911) – Merc Exchange sues eBay for business method patent infringement & wants injunction  US SC: injunction NOT automatic, remand  Patent injunctions in equitable discretion of courts, apply classic equity factors o No automatic injunction when finding of patent valid + infringed Classic Factors for Injunctions: 1. Irreparable Injury 2. Remedy at Law is Inadequate 3. Balance of Hardships between plaintiff and defendant favors party seeking 4. Public Interest would not be disserved by granting injunction (5. [Preliminary Injunctions] Likelihood of Success on the Merits)
   Plain language of statute – “in accordance with the principles of equity” Roberts Concur: history is instructive in applying the test, usually grant injunction Kennedy Concur: modern cases like patent trolls diverge from history

Since eBay, lower courts have nearly universally refused to grant injunctions to patent holders that do no also practice the patent (trolls, enforcement corporations) Most courts hold presumption of irreparable harm would not apply in PI cases, although technically an open question FOOTNOTES:  Cannot get an injunction (for patent) against the government  Cannot sue government for patent infringement – must sue for “adequate compensation”

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DAMAGES 35 USC § 284: Damages
   Court shall award… damages adequate to compensate… but it no event less than a reasonable royalty… together with interest and costs Court may TREBLE Court may receive expert testimony to aid on reasonable royalty

LOST PROFITS on CONVOYED or RELATED SALES Rite-Hite (p. 916) – Rite-Hite sues for lost profits when MDL-55 patent infringed lost profits on
ADL-100 OK (even though not covered under infringed patent, covered in another patent); no damages on unpatented dock levelers, just sold together for marketing & convenience, not function; reasonable royalty OK


Can get damages for profits lost from a product NOT actually covered by the patent (in right circumstances), patent as the door to the marketplace  Makes economic sense – reflects genuine market realities but remember foreseeable Lost Profits: “But for” test: Panduit is prima facie case, although not the only way to prove: 1. Demand for patented product 2. Absence of acceptable non-infringing substitutes (this or another patent)  Non-infringing alternative is available when it is available to customers from non-patentee (legally) 3. Mfr & Marketing capability to exploit demand 4. Amount of profit it would have made LIMITS: 1. No remote, indirect (no heart attack)  must be type which may be compensated 2. Reasonable, Objective Foresee-ability (to infringer) Entire Market Value Rule For damages for unpatented product sold with patented product, must function together as one assembly or functional unit  NO LIABILITY if sold together only for business advantage or convenience Royalty Can be based on established royalty rates OR results of hypothetical negotiation In practice, patentee more often settles for reasonable royalty; tougher to prove lost profits, especially in diverse marketplace Current Fed Cir: in divided marketplace, even where there are patented goods and nonpatented goods, if you’ve got market share of 20% you can get lost profits on 20% of your sales – on remaining 80% must be satisfied with reasonable royalty YOU CAN GET PRICE EROSION AS ELEMENT OF DAMAGES
Spectrum: FROM good is entire patent TO good is incidental feature At some point, will not recover lost profits on entirety of what is sold

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The floor of patent damages – “in no event less than a reasonable royalty”

Georgia Pacific (p. 929) – this is THE seminal case on reasonable royalty determination
Fifteen Factors Relevant to Reasonable Royalty Rate: 1. Royalties received by the patentee for patent in suit (proving or tending to prove an established royalty) 2. Rates paid by licensee for the use of comparable patents 3. Nature and scope of the license – exclusive or non-exclusive; restricted or nonrestricted in terms of territory or with respect to whom product may be sold 4. Licensor’s established policy – not licensing others to use or granting licenses under special conditions 5. Commercial relationship between licensor and licensee – whether competitors in the same territory in same line of business or whether they are inventor and promoter 6. Effect of selling the patented specialty in promoting sales of other products of the licensee – existing value of invention as generator of sales of non-patented items, extent of such derivative or convoyed sales 7. Duration of the patent, term of the license 8. Profitability of the product – commercial success, current popularity 9. Utility and advantages of the patent property over the old modes or devices (if any) 10. Nature of the patented invention – character of the commercial embodiment, benefits to users 11. Extent to which infringer has made use of the invention – evidence probative of that use 12. Portion of the profit or of the selling price customary – customary in the particular business or in comparable businesses to allow for use of the invention or analogous inventions 13. Portion of the realizable profit credited to the invention – as distinguished from nonpatented elements, mfr process, business risks, or significant features or improvements added by the infringer 14. Opinion testimony of qualified experts 15. Amount that a licensor and a licensee would have agreed upon  At the time infringement began  Key Takeaway: immediately before infringement begins – don’t get false measurements by looking at some of this post-infringement where market may have collapsed  If both had been reasonably and voluntarily trying to reach agreement  Prudent Licensee willing to pay as a royalty and still make a reasonable profit  Prudent Patentee willing to grant a license for Trying to articulate market realities of the patented feature

No formula to weight all factors  appraise all factors together in context LIST IS NOT MEANT TO BE EXHAUSTIVE Technically, law says royalty should not be based on money eventually lost (too much benefit of hindsight)  However, in practice, peeking into “book of wisdom” (rational business person would have done a good job forecasting) of future is often allowed
  Ultimately turns on the evidence – several cases where infringers with rosy plans that turned into failure have nonetheless been hit with large damages based on expectations; rare that rosy-planned infringer WON’T have to pay (right outcome, but hard to square with the book of wisdom) Reasonable royalty on non-patented items if you can show “but for” and entire mkt test

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PREJUDGMENT INTEREST & WILLFUL INFRINGEMENT (TREBLE DAMAGES) Underwater Devices (p. 931) – infringed then got suspicious, cursory “legal advice” from in-house  willful upheld, prejudgment interest on willful portion denied Prejudgment Interest Can only be applied to primary or actual damage portion and not to any punitive or enhanced portion (like willful infringement) Willful Infringement  Question of FACT (jury, review std = clearly erroneous)  If actual notice of other’s patent rights, affirmative duty to exercise due care o Due care includes:  Seeking and obtaining competent legal advice BEFORE infringing
   Patent Validity Analysis o Based on file history of patents at issue Analysis of Infringement o Comparing and contrasting patented to potential infringer Using in-house attorney or non-patent attorney is RELEVANT (and not in infringer’s favor) BUT NOT DISPOSITIVE


Failure to exercise due care here is willful infringement

Willful is a type of punitive Conflict: Fed Cir: negligent can be subject to treble damages US SC: only award punitive in egregious conduct

Patent Validity Infringement Opinions: (p. 934 n1)  Issues of attorney-client waiver o If attorney who issued opinion comes to stand, waives privilege o Is that privilege waived for other aspects? What is scope of waiver?  Fed Cir reconsidering SCOPE of WAIVER (p. 934)

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DEFENSES LACHES AC Aukerman (p. 953) – no facts in case book – covers laches & equitable estoppel

Laches:  Laches is an equitable defense to patent infringement claim  Where laches, damages PRIOR TO SUIT may be barred Two Elements: 1. Delay in bringing suit was unreasonable and inexcusable; and
 Laches is not established by undue delay, merely lays the foundation – other factors

2. Infringer suffered material prejudice attributable to the delay Consider all factors and evidence and other circumstances, equitable discretion PRESUMPTION of LACHES arises where patentee delays bringing suit for MORE THAN 6 YEARS after the date the patentee knew or should have know of the alleged infringer’s activity
   Presumption – has effect of shifting burden of going forward with evidence (does NOT shift the burden of persuasion) NOTE: 6 years STATUTE of LIMITATIONS begins with date of suit and counts backward BUT 6 years for LACHES begins with patentee’s knowledge of infringement and counts FORWARD Presumption  prima facie defense of laches is made out; with the presumption, the two facts of unreasonable delay and prejudice MUST be inferred absent rebuttal evidence; w/o the presumption, these facts might be inferred from the length of time but do NOT HAVE to be

LACHES: Justifications/Excuses offered for Delay (sometimes accepted): 1. Other litigation 2. Negotiations with the accused 3. Possible poverty and illness under limited circumstances 4. Wartime conditions 5. Extent of infringement 6. Dispute over ownership of the patent Patentee may also defeat a laches defense if the infringer has engaged in particularly egregious conduct (conscious copying may weigh against the defendant, ignorance or good faith belief may tilt in favor of defendant) For laches, length of delay, seriousness of the prejudice, reasonableness of the excuses, and the defendant’s conduct or culpability must be weighed to determine whether the patentee dealt unfairly with the alleged infringer by not promptly bringing suit Symbol Technologies (p. 959) – Prosecution laches is an infringement defense Page 96 of 99

DEFENSES EQUITABLE ESTOPPEL AC Aukerman (p. 953) – no facts in case book – covers laches & equitable estoppel

Equitable Estoppel:  Equitable estoppel is an equitable defense to patent infringement claim  Where equitable estoppel, ENTIRE CLAIM MAY BE BARRED Three Elements: 1. Patentee, through misleading conduct, leads the alleged infringer to reasonably infer that the patentee does not intend to enforce its patent against the alleged infringer
  May include specific statements, action, inaction, or silence where there was an obligation to speak Communicate something in a misleading way; something = accused infringer will not be disturbed by the plaintiff patentee in the activities in which the former is currently engaged To show reliance, infringer must have had a relationship or communication with the plaintiff which lulls the infringer into a sense of security in going ahead with plans

2. Alleged infringer relies on that conduct

3. Due to its reliance, the alleged infringer will be materially prejudiced if the patentee is allowed to proceed with the claim Even where all three elements are established, take into consideration any other evidence and facts – equitable discretion NO PRESUMPTION is applicable to equitable estoppel defense For equitable estoppel, alleged infringer CANNOT BE UNAWARE of the patentee and/or its patent (unlike laches); alleged infringer MUST KNOW or REASONABLY by able to INFER that the patentee has known of the infringer’s activities for some time
 Most common: patentee specifically objects then does not follow up for years

Material Prejudice: 1. Evidentiary (“Defense”) Prejudice – defendant’s inability to present a full and fair defense on the merits due to loss of records, death of a witness, or the unreliability of memories of long past events 2. Economic Prejudice – defendant and possibly others will suffer the loss of monetary investments or incur damages which likely would have been prevented by an earlier suit – this is a slippery issue to resolve

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EFFECT OF JUDGMENTS Mississippi Chemical (p. 974) – effect of judgments in patent law
   Suit 1: patent valid Suit 2: patent invalid Suit 3: patent infringement collaterally estopped by Suit 2, regardless of Suit 1

Collateral Estoppel under Blonder-Tongue: Where patent declared invalid in proceeding with full & fair opportunity to litigate validity, patent estopped to re-litigate validity If infringer raises defense of collateral estoppel, burden on patentee to prove no full & fair opportunity to litigate validity in prior case Factors for Full & Fair Opportunity to Litigate Validity: 1. Whether court failed to grasp technical matter & issues (rare) 2. Whether patentee, through no fault of own, was deprived of crucial evidence or witnesses in the prior suit Prior inconsistent decision is ONLY A RED FLAG, warning to apply full & fair opportunity criteria carefully

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MISCELLANEOUS LASER BOMB PATENT Nothing inequitable about seeing a competitor’s product in the marketplace and then amending claims to read exactly on that (as long as not inequitable on original disclosure; your spec must be broad enough to support it, enabling disclosure)  Fed Cir – some exceptions: o Cannot do the bait & switch – reissue is to fix things not grab territory you’ve never talked about before – what was your invention? Did you possess that invention?  Can do this with continuation applications – laser bomb o File a continuation, keep it percolating o Use to attack people who try to design around o Take continuation and draft claims right on it – laser bomb Fully endorsed by PTO and case law as long as you’ve got original disclosure enabling Advantages on continuation:  Do not have to go through re-issue which is public proceeding  No opposition process in the US SUBMARINE PATENT When duration of patent was 17 years from issue and there was no publication, could keep a patent in the prosecution process (continuations) for many years until it rises up like a submarine out of nowhere to attack baffled infringers

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