PATENT NOTES

(1) (2) (3) (4) (5) PATENT NOTES Prof. Jones – marie@brooksiplaw.com ; marie@jonesesq.com Exam: Know the fact patterns from the cases, as those will be repeated on the case. Types of Patents: a. D b. Want to write the broadest claim possible when prosecuting a patent, otherwise people will be able to design around your patent. Patent Infringement a. ABC patent holder against AC patent holder against BC patent holder. i. ABC cannot win against the others because they are all distinct and each is missing an element of the other. ii. AC and BC can win as against ABC because ABC has the entire element of each of AC and BC. iii. Rule: Improvements on existing patents fall under the existing patents rights, except: 1. When the new improvement is novel and non-obvious. iv. Usually the first people that get patents get the widest patents, when an industry matures they get narrower and narrower. Applies only to US Territories. a. What happens when someone out of the country decides to import only a part of the product Prosecuting a Patent a. 35 USC 112 b. Types of Claims: i. ii. Independent 1. A device of claim 1 or claim 2 (i.e. multiple claims) meant to be used in a certain environment. Exclusive Rights Granted By Patent are to exclude others from: (1) Make (2) Use (3) Sell (4) Import (5) Offer to Sell (6) Process Rights are alienable. Seat and Legs Analogy. If I have a patent on B and C and someone invents A which is based upon B and/or C then they would be infringing on my rights. PATENT APPLICATION (1) Procedure a. Provisional Application i. “I have an idea and I have no money or haven‟t worked it out yet” ii. Provides a priority date that the non-provisional app can refer back to so later prior art is preempted. iii. Term: 1 year. iv. The duration of patent begins running on the filing of the provisional app. b. Non-Provisional Application i. Any time you have to amend an app, you have to file an all new app, but you can claim priority based on the previous application so long as the previous app is still pending (i.e. not abandoned, closed or awarded). ii. The priority will be for the original elements and combination, the new element and combination will have a priority date as of when filed and not the earlier date. iii. International: Priority Date goes to first to file iv. Domestic: Priority Date §102(a) goes to the first inventor if the applications are both pending at the same time. 1. Claim for priority must satisfy § 112, 119, 120, 121. 2. See handout c. Examination i. Prior Art Search 1. Examiner can only look to prior art on the day prior to the application. 2. Continuation Applications: a. When filing for a derivative patent based on an earlier application. Application 2 claims the benefit of the priority of application 1. 3. Examiner may issue a notice of allowance saying that he has searched the prior art, so the patent in question is novel (§ 102) and non-obvious (§ 103) a. May come back and say § 112(2) Not Definite enough b. § 102: There is one Prior Art with same description. c. § 103: Found at Least two prior Art that each have some of the elements that could be combined to make your patent. (“TSM”) Teaching / Suggestion 4. When get a rejection have 3-6 months to file an appeal. a. Use drawings to support application. b. Can amend the claims and amend the specification as long as don‟t introduce new matters (minor things like grammar). d. Publication (2) Requirements: a. Definitions: i. Critical Date = 1 Year prior to Filing Date if the item is used in commerce, prior to this date an innovation is barred from patent protection and will be violated in litigation. ii. Filing Date = iii. Broad Claim = Least Elements iv. Narrow Claim = More Elements v. Prior Art = A previous invention that has the same elements as the current application. b. Disclosure i. 35 USC § 112 Enabling Disclosure 1. There is a quid pro quo, Gov‟t gives exclusive right for full disclosure. 2. Disclosure must be commensurate with the scope of the claims. 3. Must disclose enough for someone of ordinary skill in the art to make and use without undue experimentation the item being patented. a. MUST be enabling at the time of filing or will have to file a new app with a later date which will blow the priority date of the earlier app with regard to prior art. b. Way Around is to file a continuation app from an earlier patent app. 4. Must disclose the „state of the art‟ at the time of the application so can determine a. What ordinary skill is, and b. What is novel and non-obvious 5. Ridiculous Claims: If it has not been reduced to practice or the enablement is not sufficient to reduce to practice will not get a patent. ii. Best Mode (Two Tests) 1. Incorporate the best mode as contemplated by the inventor at the time of the filing. 2. Subjective Inventor Preference on Filing Date (p. 188) a. Don‟t need to give away business contacts or advantages. i. Ex. Coconut Oil is best mode, don‟t need to say where to get it. 3. Objective Adequate Disclosure a. _______ 4. The range may be ok for the USPTO, but may not be for litigation. 5. What happens when a new best mode comes into being. a. If it is easy to reverse engineer then will want a patent. b. If not, then keep as a trade secret. i. But be aware that the critical date is set by the first date of sale, so the right to patent will disappear one year thereafter. iii. Written Description 1. Allows third parties to read the patent app and understand with substantial degree of certainty where the patentees proprietary boundaries reside. 2. Lets the PTO determine what the applicant knew at the time of filing. It is a limiting function. 3. The judge will look at it in litigation. a. To determine priority date claiming b. To determine scope 4. Be sure to put in broadening language. a. Instead of saying a “refrigerator” with a TV, put in any kitchen appliance with a TV. i. Often describe by examples, so put in the laundry list of examples. b. Balance with speed. Narrower claims clear faster. i. Can always file a continuation claim with a broader scope right before pay the issuance fee on the first patent. 5. Read P. 224 Note 4 & 5 iv. Definiteness 1. Particularly Pointing Out a. Athletic Alternatives v. Prince Mfg i. Claim Differentiation 1. A Box… 2. Wherein the box is Plastic… 3. The above two allow the inference that the box could be made out of other things and not just plastic. ii. Definitions: 1. Can use proprietary words so long as define. 2. Can redefine common words for the purposes of the act. 3. Court will go to dictionary if a term is not defined. 4. Rule: When there is a choice between an broader or narrower adopted meaning of a claim, court will interpret narrower. 2. Distinctly Claiming c. Novelty - § 102 i. Loss of Right Due to Prior Art ii. iii. iv. v. vi. vii. viii. ix. 1. § 102(b) Patented or Described in a printed publication anywhere in the world a. Or in public use or offered for sale in this country i. By inventor or any authorized party ii. b. At least 1 year prior to the filing date (or is it invention date?) c. In foreign countries, must file before first sale or public exhibition (i.e. file they day before you tradeshow). § 102(f) POLICY UNERPINNINGS Pennock Case 1. Defendant alleges an invalid patent because the item was used or for sale more than 1 year prior to the patent app. 2. This is to protect the public from an extended monopoly. 3. Here, it wasn‟t the inventor who sold the item, it was a licensee. But that doesn‟t matter. PUBLIC USE 1. Can be done by inventor or third party. Egbert v. Lippmann Case (Steele Corset Case) 1. Issue: What Constitutes Public Use? 2. Facts: Defendant slept on rights for 11 years. 3. Rule: A use can be public, even if open to 1 person if in plain view. If used only for test purposes not in public view then not a public use. 4. Restated Rule: Public Use occurs when inventor allows a third party to use the invention without control from the inventor, such as conditions of confidence and secrecy. Metallizing Engineering Co. v. Kenyon Case: (brad White) 1. Public was retailed in public. 2. Process claimed under patent. 3. Two prior art found. EXPERIMENTAL USE 1. Policy is to allow inventor time to perfect the invention. a. Cannot claim when it is someone else doing the perfection. City of Elizabeth 1. Critical Point: Experimentation is not use ??? 2. Testing must be for intended purpose. 3. Duration of testing becomes an issue. a. Test ends when product is working for its intended purpose. b. P. 361 c. Consider the amount of control retained d. Consider the duration required to test x. xi. xii. xiii. xiv. xv. e. Consider if the test can be private f. Consider would the test be dispositive if private? g. Is the test to encourage the market (i.e. product testing like giving out Xboxes) h. Degree of Commercial exploitation during testing Lough v. Brunzwick 1. Boat Motor Case 2. Loft repairs a certain motor and notices the seal is subject to corrosion, so develops a new assembly. 3. He makes 6 prototypes. a. 1 for his own boat, gives one to a friend, installs one in his bosses boat, 1 in the boat of a customer and 2 gives away. b. Doesn‟t charge or it. c. 2 years later he files a patent app. d. Rule: If invention in public use 1 year prior to patent app then precluded. e. Hold: Inventor did not exercise any control so that was public use and it was more than a year so lost patent rights. f. If retain control then it is probably not public use. ON-SALE BAR § 102(b) prevents one from obtaining a patent on an invention that was “on sale” for more than one year before the patent application filing date. 1. “Public Use” and “On Sale” are separate events and one may occur without the other. Pfaff v. Wells Electronics 1. Commercial Offer For Sale vs. Experimental in Character a. Illegal is not a commercial sale. b. Signing a license is usually not a commercial sale?? 2. Proof prior to Critical Date Inventor Crafted Drawings Specific enough for a person reasonably skilled to practice the invention. THIRD PARTY ACTIVITY 1. Lorenz v. Colgate 2. Baxter v. COBE Laboratories a. Held public use because experimentation was done by a third party in a public place. FOREIGN ACTIVITY AS A STATUTORY BAR 1. In re Kathawala a. Patent rights accrue on effective date. b. § 102(d) Precludes issuance of a patent when the invention was irst patented or cause to be patented by the applicant in a foreign country prior to the date of the application for patent I this country on xvi. xvii. xviii. xix. an application for patent filed more than 12 months before the filing of the application in the US. c. The policy of § 102(d) is to require persons who obtain patent protection abroad to apply promptly for patent protection in the US. i. Some people makes more sense to look to the date of foreign filing instead of foreign issuance. ii. See P. 406. iii. Look to § 102(b) as well as a statutory bar. 2. Is the filing date of foreign later than domestic by 1 year? a. If yes, then: b. Was the patent issues? i. If yes, then § 102(d) Bar 3. Not on Test – Design Patents have a 6 month bar instead of 1 year. PROVING DATE OF INVENTION Maharkar v. C.R. Bard, Inc 1. Whether you have created something suitable for it‟s intended purpose 2. Reasonable diligence IDENTITY OF INVENTION AND ANTICIPATORY ENABLEMENT 1. In Re Paulsen a. Yokoyama invented a hinge on a calculator earlier and patented. b. Paulsen invented a hinge on a computer later. c. § 102(b) action. d. Yokoyama only disclosed a hinge on a calculator. i. Court ruled not enabling disclosure (one ordinarily skilled in the art). e. Microwave combined with a TV: could it get a patent? It may be obvious to one of ordinary skill in the art. But it cannot be in hindsight. 2. P. 416 & 417 Note 1 & 2. a. The reference to 102 may be useful for 103. 3. Teleporters etc, will not have enablement because no prototype has ever been able to be reduced to practice. KNOWN OR USED 1. Gayler v. Wilder a. Issue: § 102(a) Is patent valid. b. Using safe with plaster of paris as fire retardant. c. In this scenario this was not a public use. 2. Rosaire Case a. Patent for mining or prospecting Oil 1936 b. A different company also invented the same and were using in the Texas oil field. c. “Known or Used” means publicly known or used. xx. DESCRIBED IN A PRINTED PUBLICATION 1. In re Hall a. Issue: What is prior art? Printed in a publication? b. 1979: Thesis written in Germany in German. Posted in the library in Germany. c. Printed Publication can be devastating. 2. In re Cronyn a. Patent App for chemical compound. b. Issue: Search there are three student thesis describing the same compound in printed publications that all anticipated the invention. c. Patent was originally rejected but court reversed under § 102(b). Even though the above is true, just because they are printed publications does not mean they are „printed publications‟ under the meaning of § 102(b) i. Here they had not been presented and were not indexed in a manner where anyone would find it. d. “Printed Publications” = publicly presented or indexed in manner where public can find it. xxi. PATENTED 1. In Re Carlson a. Even though had to go to Timbuktu to find a prior patent, there was one and it was publicly accessible, so valid. 2. A third party can request a re-examination at the USPTO, which is a means of invalidating a patent without litigation. a. Costs about $2000. b. Re-examination is a post issuance process. xxii. SECRET PRIOR ART 1. § 102(e) (See page 452) a. Certain Prior Art, even though essentially inaccessible to the public, including the inventor, may defeat novelty. b. Malekulan Case i. Rubics Cube Case ii. Invented by kid when in college iii. It was a paper model. iv. Friends and roommates saw it. He explained what it was to them, but never gave it to anyone. v. Then went to work for Malekulan. 2. 3. 4. 5. vi. Created a wooden prototype and kept it in his office. vii. Boss discovered it one day and wanted to market it. There was an oral license to malekulan to do something with it. viii. Company sent descriptions of the puzzle our to various major toy companies. 3/7/1969 ix. The inventor filed with the company on 3/3/1970. (Critical Date was therefore 3/3/1969. x. Court held that this was not public use because this was a retention of control, not a sale of a copy, and he had control of all areas in which the invention was shown. xi. Private Use = Legitimate expectation of privacy, such as in house, office, or under an NDA, not sold, and cannot be reverse engineered by the public if in the public eye. There is a case where someone brought an invention to a party and let them play around with it without supervision of control, and that was public use. W. L. Gore Case a. Parallel development of the process of making Gore-Tex. b. Gore got a patent on it. A new Zealand inventor had actually invented first, and sought to invalidate. c. However, there was not public use so Gore‟s patent was good. Bottom Line: Private Use does not set a critical date. Private use is non-public use, which can include B2B under strict confidentiality provisions. Offers to sale are public uses. Case: a. Patent filed 1/24/1957 in Switzerland b. Patent filed 1/23/1958 in US i. Claims priority date in US to the Switzerland date as the priority date. c. Second inventor contests saying he had prior art based on § 119 and § 102(e). i. § 119 says can file a national application and claim an earlier priority date so long as application is done within one year of that earlier app. 1. And therefore any intervening art cannot be used against. d. Somehow § 102(e) invalidated the claim to an earlier priority date, therefore prior art came in and kept the patent from being approved. e. Rule on P. 472 xxiii. Thomson v. Quixote (§ 102(g)(2)) 1. MCA patents anticipated all of Quixote‟s patents. 2. Rule: Since it was a non-party, assignor, or beneficial interest holder, you cannot enforce the patent? 3. § 102(g): Before such person invention therof invention was made by a person in the US that was not abandoned, suppressed or concealed. 4. Method Patents: First Inventors Defense available. Reduced to practice one year of patent filed… 5. LOGIC: a. Look to see what the invention date is. b. Look to see what the critical date is. c. Look to see if there is abandonment, suppression or concealment. i. If have a patent and do nothing with it. xxiv. Derivation § 102(f) 1. Gambro Case a. Question is whether Gambro derived their patent app from a different source than the actual inventor. b. § 102(f) a person shall be entitled to a patent unless he did not himself invent the subject matter sough to be patented. c. Must prove: i. Prior conception by a different inventor, and ii. There must be a communication from the inventing party to the other was “enabling.” d. § 102(f) does not discriminate against ideas from the US or abroad. e. In the US the inventor must be the name on the application, but can be assigned. There cannot be any deceptive intent of patent may be invalidated. xxv. Priority § 102(g) 1. Boroughs Welcome Case a. Drug was shown to work for HIV i. When given to lab, test results where not conclusive. But Boroughs thought it would work. b. On 2/6 Application was drafted c. On 2/20 test results where received saying drug worked. d. 3/1 UK app filed. e. 1/9/85 US app filed. f. Joint Inventors – neither party can be held to have infringed on a patent. g. Issue: What is the date of conception…(???). It is not the inventor‟s reasonable expectation it will work. It is the date on which it actually is reduced h. Practical Note: If in an unpredictable Art, patent office will want more enablement and more disclosure. 2. Reduction to Practice P. 499 a. DSL Case b. Rule: Priority is awarded to the first person to reduce the invention to practive. i. Actual – Actual construction of the invention and testing to determine if it works for its intended purpose. 1. Must be tested in intended environment, or 2. Environment in which conditions are sufficiently similar to the intended environment to show results for intended purpose. 3. ii. Constructive – Filing a valid application (with all elements correct). c. Fujikawa v. Wat Case i. Inventor invented invention first, but shelved for two years, then reduced to practice and filed for patent. ii. In the shelved period another invented (but did not reduce to practice??). iii. Who has priority? 1. Rule: Depends on whether first inventor deliberately abandoned, suppressed or concealed their invention. If did, then during that suppressed time another could come in and be considered first. If abandoned then abandoned permanently? a. Intentional Suppression requires more than the passage of time. b. Requires unreasonable delay in prosecution of a patent. c. § 102(c) Intentional Surrender of invention to the public. Inventor can expressly or impliedly donate invention to the public. 2. Rule: First inventor must show reasonable diligence from the time of invention to the actual or constructive reduction to practice. 3. Patentable Subject Matter a. Utility: i. If USPTO says the utility does not make sense. ii. USPTO has the burden of proving that one of ordinary skill in the art will doubt the utility for what the applicant says. iii. Presumption of utility. If rebutted by USPTO, then applicant can cross rebut with test evidence. b. Biotechnology i. Diamond v. Chakrabarty (P. 776) c. Computer Related Inventions i. Gottschalk v. Benson 1. Invention related to processing of data 2. Is it a process or a law of nature. 3. Laws of nature cannot be patented. a. i.e. algorithms cannot be patented unless they are a process. d. Diamond v. Diehr i. The combination of algorithms and computer steps is patentable, although individually not patentable. ii. d. Non-Obvious (§ 103) 1. A+B and another invention with B+C may make A+B+C obvious. 2. ii. Lorenz P. 389 1. Non-obvious if a proper combination of all prior art does not function correctly. 2. Also, if prior art says not to do something, and you make that work, it was non-obvious by definition. iii. Baxter iv. Kathawala v. Mahurkar vi. Paulsen vii. viii. ix. x. xi. Gayler Hall Cronyn Carlson P . 449 P. 564 Footnote 2 & 3. 1. Secondary Considerations: Must be looked at by the patent prosecutor as ordered by Federal courts. Secondary in time. a. Usually used to show commercial success. xii. In re Clay 1. Facts: a. Appeal to Patent Boards hold of prior art. b. Background: New process for storing refined oil. c. Rule: § 103 Requires..?? i. “Analogous Art” = Either from same field as the invention, or is a reasonably pertinent reference to the problem the inventor is solving. Therefore not prior art. ii. Is this a place that one of ordinary skill in the art would look for enlightenment. 1. ex. If I wanted to eliminate gas cased by baby food, a may look at baby formula. 2. ex. If I wanted to do Optical Character Recognition on a fax machine, I might look to computer software. xiii. In Re Hazeltine 1. Defendant‟s Patent Pending 3/1954 issued 3 days after plaintiffs patent.on 2/24/1958. 2. § 102(e) prior art comes in under § 103. a. Ex. Patent published comes in as prior art. b. Need “two of them” c. Rule: P. 595 – Can exclude prior art where there is common ownership. 3. Rule: Teaching, Suggestion, Motivation to Combine Test: Examiner cannot argue obviousness because of hindsight. xiv. McGilly v. Franklin (P. 602-605) 1. Baseball Case. a. Has finger imprints to teach 4 kinds of pitches. b. Ball has tapered indentations where fingers go to show witch way is up. c. Prior Art: ball that teaches three kinds of pitches. Finger indentations are only circular, not tapered. d. Prior Art #2: ball that teaches one pitch and has a finger mark to who which way to hold. e. Prosecution Claim: Obvious when look at both. f. Burden of Proof: Presumption of Validity that can only be overcome with clear and convincing evidence. g. Held: Not Obvious xv. Promoole Case 1. Baseball card protector case 2. Sourcing Prior Art and Combination of Prior Art rules (to make an invention obvious and invalidated): a. Source of suggestion may come from references from those ordinarily skilled in the art. b. For purpose of combining references…look for presumption of validity by??? c. P. 618 Footnote # 3: Hindsight is prohibited. Cannot look during litigation and find prior art and say obvious. Must have been obvious, with reason or motivation to combine prior to patent issuance date. i. Teaching suggestion motivation to combine ii. Teaching suggestion reason to combine. d. Footnote #4: Not dispositive, i. Rule: ii. Objective indicia of non-obviousness (may be used to rebut a §103 action). Secondary, but can use non-technical means such as commercial, economic and social. 1. Commercial success of invention a. If it was so obvious, why did I make a million dollars manufacturing ths? 2. long term longing 3. copying of the invention 4. praise and skepticism a. battery case 5. Unexpected Results xvi. P. 627 Third Line 1. Rule: Must be nexus between invention claimed and secondary evidence. 2. Must have a showing of factually significant connection between commercial success and the invention. 3. Ex. Pet Rock Patent. a. Has commercial success. b. But not based on product so much as marketing. 4. Ex. Windows Explorer technology a. Can‟t prove commercial success based on the fact it was integrated as a minor component of the Windows OS. 5. Patent Excel Spreadsheet Process a. Must prove that successful not because everyone uses spreadsheets. xvii. Non-Obvious Scale 1. If change an element and something scale‟s up, larger or smaller, beyond what someone of ordinary skill in the art would expect, it is non-obvious. e. Utility f. Statutory Subject Matter (3) Infringement a. Claim Interpretation: i. Construe the language of the patent to see what is included and excluded. 1. Claim construction is a matter of law and done by a judge. a. Given plain meaning unless it‟s a defined term or outside reference. 2. Can patent writer make reference to external sources as definitions of words – YES. 3. Can also define a term within the text of the application. 4. Make sure to define broadly because a definition can be a limitation on the patent‟s scope. a. Give careful attention to the plain meaning of each word. b. Don‟t use term: i. Screw, use fastener ii. Must, use may ii. Determine what which claims are independent and dependent 1. Dependents modify the independents. iii. Markman Hearing: There is a right to a jury trial, but if it‟s only a matter of law only a judge can decide. 1. Appeals reviewed de novo. 2. In Markman, question was what does the word “inventory” mean in this context. iv. Sources of Evidence for Claim Interpretation 1. Vitronics Case P. 888 a. Definitions at Issue: “Soldering Reflow Temperature” i. Could be “Peak Flow” or”Liquids Temp” ii. Brought in Extrinsic evidence. iii. Extrinsic = Dictionaries, Prior Art, anything. 1. Which dictionary do we use? Technical or layman? It makes a difference. The iv. Intrinsic = Prosecution History (office actions etc) 1. Rely on this first. 2. Graver Tank Case: a. Manganese used instead of Magnesium in competitors product. Product has same result. b. RULE: Doctrine of Equivalence: An Element is equivalent if: Substantially performs the same function, in substantially the same way and provides substantially he same result. i. Generally an element by element rule. ii. In some situations two elements can be combined into one if substantially the same. iii. No equivalence where the inverse is true. iv. Applies to existing or later devised Inventions. 3. Warner v. Jenkins a. Dye Process. PH 6 to 9 b. Company B posted same process at PH 5. c. Issue: Are they equivalent? i. Doctrine of Equivalence cannot be applied when patent prosecution history estops. 1. Estoppel because gave claim up in patent prosecution process in order to get patent. d. Issue 2: Is company with Patent precluded from court prosecution by estoppel based on patent prosecution history? i. During Prosecution plaintiff amended their app to include PH 6 to 9. There was prior art of PH greater than 9. e. Recapture Rule: Estoppel is a valid defense to Doctrine of Equivalence. You cannot recapture what you surrendered during patent prosecution. f. Triple Identity Test: g. P. 927 Footnote B h. P. 928 Letter C b. Rights: i. Process Patents: Right to Exclude other from using, making selling, offering to sell, importing, products made by the process. ii. Patent: Making, using offering for sale, or selling throughout the US, importing. c. Invalidation through: i. § 102 ii. § 103 iii. § 112 d. (4) Defenses and Limitations (5) Remedies a. Monetary Damages i. Provisional Compensation Right: 1. Reasonable Royalties 2. For Patents filed on or after 11/29/2000 a. Rx Royalties from time claims published (18 months prior to Issuance normally). (6) Causes of Action a. Definitions: i. “Literal Infringement” – Exact duplicate of patented item. ii. “Infringement by Doctrine of Equivalence” – Test to see if change in form is not of substance, so indirect Infringement. b. § 271 Infringement i. (a) Direct Infringement ii. (b) Inducing Infringement iii. (c) Contributory Infringement c. Burden of proof: i. ON plaintiff to show the accused device has each and every element AND performs the same function. ii. Patent Attorney has a duty to file all relevant claims and supporting info with the USPTO. Air on the side of caution and file everything. d. Inequitable Conduct e. Misuse: i. Not pliable for misuse when uses in conjunction with sale of a patented article that constitutes a material part of the invention and is not suited for commercial use outside the scope of the patent claims. ii. A patent only on a method still can give control over non-staple goods. iii. What is a non-staple good? f. Anti-Trust i. Sherman Act – Must show: 1. Patent Owner has market power, or is likely to achieve market power, and 2. Unclean Hands ii. The Walker Process 1. Clear Evidence to deceive the examiner iii. P. 1125. iv. P. 1129 footnote 3 – shows how to establish market power. g. First Sale Doctrine i. Unless the purchase has conditions attached to it, the device may be freely alienated. ii. Repair is ok iii. Reconstruction is not, that is making the patented invention. h. Declaratory Judgment: Metamune Case: i. Issue: Does a license have to stop paying royalties before it can sue for declaratory judgment? ii. No, a licensee in good standing can sue. i. Assume KSR case has not overruled anything. Motivation to Combine still applies. j. Brullee v. Tiest P. 1222 i. Fact: Licensing K that had royalty payments. ii. Issue: Royalty payments in the license. extended beyond the term of the patent. iii. Held: Royalties beyond the expiration of a patent is unlawful per se. k. Ronson Case (1228) i. Facts: Inventor invented key holder. While patent pending negotiated a license with a 5% royalty payment if issued within 5 years or 2.5% if patent not issued within 5 years or not issued at all.. ii. Issue: In Brullee court said if contract provision extends beyond patent term it is invalid. Here, The clause was such that the two parties contemplated two scenarios. iii. Rule: In this case the Federal Law did not preempt the contract law. Because contemplated a never issued patent so it has an unlimited life. iv. Rule: Don‟t lump Copyright, Trademark, Patent and Trade Secret all in one area of the contract. Separate them in case any provision is invalid at law. l. Inventorship vs. Ownership & Issues of Joint Inventors. i. Inventorship requires a human entity to file the application. ii. If even one element of a claim is attributed to a previous inventor must attribute in application (why?). iii. As a practical matter, make sure students from out of country assign their rights right away, which requires filing the application while they are working. iv. § 256: You can correct the inventors list. v. It is a tenancy in common situation where each owner can do whatever they want with the patent. vi. If there are joint inventors, practically for control, assign to a corporation or partnership, or use a contract. (7) Damages: a. Rx Royalty b. Lost Profits i. But for Causation requirement c. Interest on Time Value of Money d. Punitive Treble Damages if willful infringement. e. Attorney Fees § 285 – In exceptional cases rx fees will be awarded. Willful infringement may be an exceptional case. Depends on facts. f. Injunction. Ebay v. Merk Exchange. Regular Civil Procedure rules apply. No longer automatic. Irreparable harm with inadequate remedy at law. g. P. 1251 Footnote 3 & 4: Usually there is a contract when hired saying obligation to assign. When there is no written contract, there is recourse for the employer. i. “Hired to invent” rule. Obligation exists at law. ii. “Shop Right” you use equipment of company, company has nonexclusive rights to employee work. h. Laches: Unreasonable delay in filing the lawsuit. 6 years is laches. i. NOTICE REQUIREMENTS: i. 35 USC 287(a) ii. Patentees or persons making any patented article for sale, or importing, may give notice to the public. iii. Either by fixing Pat. Together with the number of the patent, or if because of the character of the article, fixing to the package. iv. In the event of failure, no damages may be awarded in an action for infringement, unless the infringer was on notice, and then only from the date of notice may damages be recovered. v. If a patent is pending, must note that. Can‟t say invention is patented. j. Analysis: A vs. B in a patent dispute. i. Patent Valid? ii. Infringement? iii. Defenses? iv. Damages? v. Four major sections: § 101, 102, 103, 112. vi. KNOW: Provisional and non-provisional app. 1. Don‟t need to know: foreign filing information. vii. Claims will be as simple as possible. 1. We will be using a method of comprising only. 2. Anyone who has ABC and anything more will be infringing. 3. Every Element will be A, B and C. 4. Look to example finals. (8) Exam a. Consider how can invalidate a patent i. 101, 102, 103, 112, Not proper Statutory Subject Matter. ii. You can get a patent and be invalidated in litigation. iii. Know Patent Process, iv. Know in‟s and out‟s of prior art b. Three Essay Questions. c. Write in IRAC. d. Closed Book Closed Note. e. Look for an email with included statutes. i. Know statutes with regard to remedy and requirements for patent protection.