1) Disclosure Requirements for Patent a) Written Description of the Invention ( § 112 ¶ 1) i) Includes drawings ii) Broader than enablement must convey with reasonable clarity to those skilled in the art that as of the filing date he or she was in possession of the invention (Vas-Cath) iii) Fujikawa – genus vs. sub-genus (1) PTO Board correctly denied a motion by the senior party in an interference to add a count to a sub-genus of the genus of chemical compounds at issue in the interference because the junior party's specification did not provide a sufficient written description of the sub-genus. (a) “Laundry list” disclosure of “possible moieties for the generic compound's and other positions, which included the subgenus moieties, did not disclose the sub-genus “ipsis verbis.” (b) Specification did not “reasonably convey” that the junior party had possession of the subgenus because, inter alia, the specification's preferred substitutions differed from the subgenus count's substitutions (2) Application contained no blazemarks as to what compounds, other than those disclosed as preferred, might be of special interest (a) In the absence of such blazemarks, simply describing a large genus of compounds is not sufficient to satisfy the written description requirement as to particular species or subgennuse b) Enablement (§ 112 ¶ 1) i) Sufficient Information to Enable a person skilled in the art to make and use the invention without Undue Experimentation (1) Morse – claim was too broad to be enabling, not tied to a machine (a) Must bear reasonable correlation with the scope of the claims ii) Filing Date Rule -Sufficiency must be judged at time of filing (1) Glass – temperature, pressure, vapor saturation conditions were necessary and not disclosed, terms like “optimum supersaturation” (a) Applicant sought to rely on four patents that issued after the applicant's filing date as indicating the state of the crystal-growing art (b) The court held that the patents could not be relied upon for the purpose. (i) 35 U.S.C. § 132 prohibits adding any 'new matter' to the disclosure after filing (ii) It is an applicant's obligation to supply enabling disclosure without reliance on what others may publish after he has filed (2) Post-filing state of the art cannot be used retroactively against an application with an earlier effective date under enablement (Hogan) (a) At the 1953 filing date, the specification was enabling as to all known species, which had only low molecular weight (i) Later art (1962) made possible homopolymers of high molecular weight, on which the generic claim would read but as to which, arguably, the specification was not enabling iii) Undue Experimentation Factors (Wands) (1) Presence or Absence of working examples (2) Nature of the invention (3) State of the prior art (4) Relative skill in the art (5) Quantity of Experimentation necessary (6) Amount of guidance or direction presented (7) Breadth of claims (8) Predictibility of the art c) Best Mode (§ 112 ¶ 1) – 2 Part Test i) Subjective Inventor Preference (1) Did inventor, at the time of filing, know of a mode that he considered better than any other? (2) Glaxo v. Novapharm (a) No best mode violation based on an imputed knowledge defense (i) Best mode of carrying out an invention, indeed if there is one, to be disclosed is that 'contemplated by the inventor’ ii) Disclosure Adequate to enable one skilled in the art to practice the best mode (1) Great Northern Corp. v. Henry Molded Products, Inc. (a) Feature concerning the “production process” may be a best mode if it relates to the claimed invention rather than to “commercial considerations.” (i) Patentee argued that diamonds are added during the production process merely constitute a production detail rather than the best mode of practicing the claimed invention 1. Commercial considerations such as the equipment on hand, or prior relationships with suppliers do not constitute a best mode of practicing the claimed invention because they do not relate to the quality or nature of the invention a. Patented products designed to support large-diameter rolls could not be produced without the diamonds critical to practicing the claimed invention rather than simply a commercial consideration 2. Details which do relate to the quality or nature of the invention but which need not be disclosed because they are routine--i.e., details of production about which those of ordinary skill in the art would already know a. “No testimony ... which indicates whether or not the diamonds are routine and known to those of ordinary skill in the art” d) Definiteness -Distinctly Claim Subject Matter (§ 112 ¶ 2) i) Two Purposes (1) Provide clear warning to others as to what constitutes infringement of the patent (2) Provide a clear measure of the invention in order to facilitate determinations of patentability ii) Athletic Alternatives v. Prince (1) When there are two reasonable interpretations and enabling disclosure that shows the applicant is at least entitled to the narrower claim, the narrow claim should be adopted (2) Choosing broader would undermine the fair notice function of the requirement 2) Requirements a) Novelty i) Proving Date of Invention (1) Priority goes to first party to reduce to practice unless other party can show it was (a) First to conceive the invention (i) Definite and permanent idea of the complete and operative invention…ordinary skill necessary to RTP w/o undue experimentation (b) Exercised reasonable diligence in reducing to practice (2) Oral Testimony requires corroboration ii) Anticipatory Enablement (1) Paulsen – 2 Part Test (a) Each and every limitation of claimed invention must be disclosed in prior art (i) Implied Teaching – need not teach principles or skills that are well-known to persons with ordinary skill in the art 1. Not required to be in 4 corners, but provides everything necessary to anticipate (b) Reference must be enabling and describe claimed invention to place it in possession of OSITPA (i) Must contain within its four corners a sufficient description to enable such a person to make the invention without an unreasonable amount of experimentation (ii) Level of skill in the art was advanced and reference was enabling (Paulsen) iii) § 102(a) -Invention “known or used” “by others” in this country, or “patented or described in a printed publication” in this or a foreign country before the invention (1) “Known or Used” (a) Prior use must be of the complete product or process actually reduced to practice (i) Use must be accessible to the public in some minimum sense 1. Gayler a. Fireproof safe case i. If C had not made his discovery public, but had used it simply for his own private purpose, and it had been finally forgotten or abandoned…no obstacle subsequent patent if he be an original, though not the first inventor or discoverer.” ii. Knowledge of the improvement was as completely lost; public could not benefit from it until it was discovered by another inventor (ii) Prior user need not have taken any affirmative or positive steps to make the device or process known widely to those skilled in the art or to the public generally 1. Rosaire a. R&H invented in 1936 and obtained a patent b. In 1935 one T and other employees of Gulf Oil Corporation used the method claimed by the patentee to take and analyze samples in oil fields c. “Performed in the field under ordinary conditions without any deliberate attempt at concealment or effort to exclude the public and without any instructions of secrecy” (2) Printed Publication (a) Hall (i) Sufficient accessibility to those interested in the art exercising reasonable diligence (b) Cronyn (i) Collected and reference with index cards using names and titles, no subject matter indexing. (ii) Technically available, but probability of public knowledge was virtually 0, so no 102(b) rejection. (c) Must be physically and logically available to hypothetical member of the interested public (3) Patented (a) If akin to patent in foreign country (i) Exclusive Rights (ii) Registration (iii)Accessible to the public (b) Carlson (i) Once registered, provided exclusive rights for industrial design 1. Fully discloses the design 2. German law conferred the exclusive rights attendant to the registration iv) Statutory Bars – 102(b) – patented/described in a printed publication or in public use or on sale in this country (1) Public Use (a) One person without limitation or restriction or injunction of secrecy is a public use (Egbert) (b) Commercial exploitation of a machine or process constitutes a public use even though machine or process is held secret (Metallizing) (i) Inventor obtained a patent from application filed August 6, 1942, began to use the process for commercial purposes in his shop prior to August 6, 1941 1. Process was kept under strict secrecy and the nature of the process could not be determined by examining the product of the process which was commercially sold (c) Private use, under inventor’s control, not for commercial purposes not Public Use (d) Experimental Defense (i) City of Elizabeth (ii) Bona Fide Experiment vs. Gauging market interest 1. Brunswick – developed seal for leak and put them on boats and gave them to friends… a. When one distributes his invention to members of the public under circumstances that evidence a near total disregard for supervision and control concerning its use, the absence of these minimal indicia of experimentation require a conclusion that the invention was in public use b. Never an attempt to see how they were working or request of feedback c. Lost control to unknown 3rd Parties (2) On Sale – 2 Part Test (Pfaff) (a) Product is Subject to Commercial Offer for Sale (i) Use state contract law (ii) Licenses/assignments of interest in patent not on-sale (b) Invention Ready for Patenting (i) RTP Before Critical Date or (ii) Inventor had prepared drawings sufficiently specific to enable one skilled in the art to practice the invention (c) Pfaff (i) Commercial Marketing of newly invented product not yet reduced to practice…acceptance of purchase order plus sufficient drawings = On Sale (ii) In November 1980, Texas Instruments (TI) asked the inventor-patentee Pfaff to “develop a new device for mounting and removing semiconductor chip carriers.” (iii)Pfaff (1) “prepared detailed engineering drawings… (2) “sent those drawings to a manufacturer… and (3) “[p]rior to March 17, 1981, ... showed a sketch of his concept to representatives of Texas Instruments,” who “provided [the patentee] with a written confirmation of a previously placed oral purchase order' (iv) Pfaff filled the TI order in July 1981. He filed his application for a patent on April 19, 1982. (d) Parent-Sub relations – Not an On-Sale Bar if parent controls sub (e) Must occur within US or have sufficient nexus (f) Third-Party Activity – Lorenz v. Colgate (i) Public use before the critical date by one who surreptitiously derived the invention from the true inventor barred a patent (ii) If an inventor does not protect his discovery by an application for a patent within the period prescribed by the Act, and an intervening public use arises from any source whatsoever, the inventor must be barred from a patent or from the fruits of his monopoly, if a patent has issued to him v) § 102(e) Prior Art – US published patents applications or issued patents filed before invention (1) “Secret” Prior Art (a) Alexander Milburn (i) Complete description of invention in US Patent App. filed before the date of invention of another may be used to show the other was not first to invent if it matures into a patent (ii) Material disclosed but not claimed in a United States patent would anticipate a later invention as of the date the application for the patent was filed, rather than the date the patent issued vi) § 102(g) (1) Priority goes to the first person to reduce the subject matter to practice (a) Exception first to conceive the subject matter in question is the first inventor provided he exercised reasonable diligence in reducing to practice from a time just prior to when the first person to reduce to practice entered the field (i) Testimony of a prior inventor must be corroborated (b) Prior invention may anticipate even as of a time when it is secret or otherwise unavailable to the public (i) Inventor loses his status for purposes of priority and anticipation if after reduction to practice he abandons, suppresses or conceals the invention (2) Reduction to Practice (a) Constructive – filing of patent application (b) Use is an intended purpose of invention (DSL) (c) Use is sufficiently simulated to the conditions present to adequately show reduction to practice (if not an intended purpose) b) Non-Obvious i) Patented invention is obvious if differences between subject matter sought to be patented and prior art are such that subject matter would have been obvious to person of OSITPA ii) Determination made against background of factual inquiries (Graham v. John Deere) (1) Scope and Content of Prior Art (2) Differences Between the claims and the Prior Art (3) Level of Ordinary Skill in the Pertinent Art (4) Secondary Considerations – Pro-Mold (a) Commercial Success of Invention (i) Pentec – failed to show success was attributable to the invention (marketplace’s readiness, marketing, ad campaign, market leader) 1. Must show nexus between success and merits of invention (b) Long-felt unsolved need (c) Failure of others to find a solution to the problem (d) Copying of the invention by others iii) Scope of Prior Art – Analogous v. Non-Analogous (1) Two Part Test (Clay) (a) Whether the art is from the same field of endeavor regardless of problem (b) Whether reference is reasonably pertinent to the particular problem (2) Clay (a) “Process for storing refined liquid hydrocarbon product in a storage tank having a dead volume between the tank bottom and its outlet port” (i) References: (i) Hetherington, which disclosed “an apparatus for displacing dead space liquid using impervious bladders, or large bags, formed with flexible membranes”; and (ii) Sydansk, which disclosed “a process for reducing the permeability of hydrocarbonbeaarin formations and thus improving oil production, using a gel similar to that in [applicant's] invention.” (b) Not within field of endeavor merely because both relate to the petroleum industry (i) Unconfined & irregular volumes in underground natural formations to channel flow vs. introduction of gel to the confined dead volume of a man-made storage tank (ii) extreme conditions vs. ambient temperature and atmospheric pressure (iii)Storage vs. extraction (c) Not reasonably pertinent to the inventor's problem. (i) Pertinent if one which logically would have commended itself to an inventor's attention in considering his problem (3) Paulsen (a) Problems were not unique to portable computers, given nature of problem OSITPA would have consulted the other arts for a solution iv) Content of Prior Art (1) References must (a) Suggest to person OSITPA that he should make the invention (b) Reasonable expectation of success once invention made (2) Franklin Sports (a) Teaching Away Doctrine – create seemingly inoperable device (i) References that teach away cannot serve to create prima facie case of obviousness (3) Pro-Mold (a) There was a reason to combine a reference describing an elegant card holder and cover arrangement with a reference describing a card holder no larger than necessary to enclose the card. The suggestion or motivation to combine these features of the prior art was thus evident from the very size of the card itself (b) Despite the prior art suggestion to combine, summary judgment of invalidity of the patent for obviousness was improper because there were genuine material fact issues on commercial success v) Unexpected Properties (1) Soni (a) Unexpected Results – must be established by factual evidence (b) “When an applicant demonstrates substantially improved results, ... and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.' (i) Must offer more than “mere argument or conclusory statements” to overcome prima facie obviousness (ii) Contained specific data indicating improved properties c) Utility i) Disclose a utility that must be credible to one skilled in the art (1) PTO has burden of proving that one of ordinary skill in the art would reasonably doubt the asserted utility (Brana) (a) Even if the PTO met its initial burden, Brana proffered sufficient evidence to convince one of skill in the art of the asserted utility. ii) Brana (1) Tumor Models – sufficiently specific use (2) Presumption of usefulness (a) Specification's implicit assertion that a compound was effective against specified animal tumor models was a sufficient practical utility; stated that the compound had “better action” as an antitumor substance than a prior art compound (i) Favorable comparison implicitly asserts that their claimed compounds are highly effective (i.e. useful) against lymphocytic leukemia d) Statutory Subject Matter i) Laws given wide scope – “anything under the sun made by man” (1) Product of human ingenuity that is nonnaturally occurring – Chakrabarty (a) “Composition of matter” -'all compositions of two or more substances and ... all composite articles' (b) Congress plainly contemplated that the patent laws would be given wide scope.” ii) Mathematic Algorithm (1) Cannot patent formula or process or law of nature or abstract idea (Gottschalk v. Benson) (a) Doesn’t seek to preempt the use of the equation, only in conjunction with other steps in the claimed process (Diehr) iii) Business Methods (1) Must be applied in useful way, produce “useful, concrete, tangible result” (State Street Bank) (a) ''Data processing system (the system) for implementing an investment structure which was developed for use in [the patentee's] business as an administrator and accounting agent for mutual funds.'' (b) Useful, concrete and tangible result'--a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades. (2) Lundgren – As long as there is a concrete result, no requirement to have a computer for business methods 3) Post-Issuance Procedures a) Reissue i) Allow patent owner to correct inadvertent mistake ii) Mistake must be such that its presence causes patent to be “deemed by the owner wholly or partially inoperative or invalid” iii) Must show mistake was (1) Unintentional or unavoidable (2) Without deceptive intent iv) Broadening reissue only within 2 years of grant, fatal errors cannot be fixed b) Intervening Rights i) If reissue differs sufficiently from original claims, person may acquire intervening rights on account of prior non-infringing activity under original patent ii) Absolute vs. Equitable (1) If started manufacturing, can continue to sell but not continue making (2) If substantial preparation, court determines the extent and terms it deems equitable c) Recapture i) Deliberate surrender of certain subject matter cannot be recaptured under reissue, etc. d) Reexamination i) Request the PTO reexamine any patent claim in view of cited prior art (patent or printed publication) 4) Infringement -§ 271(a) a) Two Steps i) Claim Construction ii) Make Sure Claim Reads on Accused Device (1) All Elements Rule for DOE b) Claim Interpretation i) Question of law, done by judge (Markman I and Markman II) ii) Intrinsic Evidence (1) Everything in administrative record (2) Interpretation must be consistent with the way it is used in the specification and include disclaimers iii) Extrinsic Evidence – Only if ambiguity after intrinsic evidence is considered (Vitronics) (1) If patent cannot be resolved it will be rendered fatally ambiguous iv) Canons of Interpretation (1) Interpreted from perspective of OSITPA (2) Claims assigned ordinary and customary meaning by default (a) Exception for Special meaning consistent with intrinsic evidence (3) Interpreted in light of written description without importing limitations (4) Not construed in manner to exclude preferred embodiment of invention (a) Exception -Unless applicant expresses intent (5) Claim terms are interpreted consistently throughout the claims c) Two Types of Infringement i) Literal Infringement (1) Literally reads on claim elements (2) MPF identical function, structural equivalents at the time of issuance ii) Doctrine of Equivalents (1) Function-Way-Result (Graver Tank) (a) Substantially the same function in substantially the same way to achieve the same result (2) Equivalency -assessed ''at the time of infringement.'' (Warner-Jenkinson) (a) Element by element approach (Warner-Jenkinson) (3) Prosecution History Estoppel (a) Rebuttable bar – cannot claim DOE to anything surrendered by amendment related to patentability during prosecution (b) Warner-Jenkinson (i) Absent justification, assume narrowing amendment made for patentability. (c) Festo (i) PHE is rebuttable if one can establish 1. Equivalent was unforeseen at time of invention 2. Narrowing amendment tangential to patentability 3. Other Reason (4) Public Domain Rule -can’t be used to expand and encompass embodiments in public domain (5) Foreseeability Limitation (a) Can’t use DOE to get coverage of Foreseeable Equivalents that weren’t claimed d) Means Plus Function Infringement i) If “means” appears, presumed to be MPF, but presumption can be overcome (1) If does not appear, generally inappropriate to treat as MPF (2) § 112, P 6 governs only claim elements that do not recite sufficient structural limitations (3) Presumption that § 112, P 6 applies is overcome if the claim itself recites sufficient structure or material for performing the claimed function (4) Where a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in meanspllusfunction format ii) Structural Equivalent must be available at the time of issuance for literal infringement iii) Device must perform identical function iv) Al-Site Corp v. VSI (1) Equivalent structure or act for literal infringement must have been available at the time of patent issuance (2) Equivalent under the doctrine of equivalents may arise after patent issuance and before the time of infringement (a) "After-arising" technology could thus infringe under the doctrine of equivalents without infringing literally as a § 112, P 6 equivalent (b) Under § 112, P 6, the accused device must perform the identical function as recited in the claim element while the doctrine of equivalents may be satisfied when the function performed by the accused device is only substantially the same e) Indirect Infringement i) Active Inducement -§ 271(b) (1) Requires (a) Direct Infringement (b) Actual Intent to cause acts which constitute infringement (i) Can use circumstantial evidence (ii) HP v. Bausch & Lomb 1. Accused infringer did not induce infringement by selling its division that made the infringing product and agreeing to indemnify the purchaser for patent infringement liabilities 2. ''Proof of that intent ... is missing in the present case.'' a. Bausch & Lomb, had ''no interest in nor control over what Amtek [the buyer] chose to do with the plans or the personnel.'' b. The agreement to try to design a noninfringing product ''establishes, if anything, an intent ... not to induce infringement ...'' c. Indemnification agreement certainly facilitated the sale of Houston Instruments at the particular price at which it was sold, but we cannot agree that B&L used it to induce infringement by Ametek ii) Contributory Infringement -§ 271(c) (1) Section 271(c) deals with sale of a component for use in practicing a patented process (2) Requires (a) Direct Infringement (b) Component must be “non-staple” item that is not “suitable for substantial non-infringing use” (i) C.R. Bard -Could find substantial non-infringing uses (c) Seller must have knowledge the component is “especially made or especially adapted for use in an infringement of a patent” f) Foreign Activity -§ 271(f) i) Foreign Activity and Export Control -§ 271(f) ii) Foreign Activity and Import Control -§ 271(g) (1) Importation of product patented in the US is infringement (amended § 154) (2) Under 271(g) – a product made by patented process will…not be considered to be so made after (a) it is materially changed by subsequent processes or (i) Eli Lilly v. American Cyanamid (b) it becomes a trivial and nonessential component of another product 5) Defenses a) Implied/Express License i) Wang Labs – consented and encouraged use, cannot later sue for infringement…Royalty Free license b) Prior Use i) Inventor first invents ii) If used in business and RTP 1 year prior to patent filing c) Experimental Use i) No liability if infringing for purpose of test results for FDA, etc. d) First Sale Doctrine i) Implied right to use or resell patented product e) Inventorship and Ownership i) Each inventor has right to use without accounting to the other inventor f) Equitable Defenses i) Laches (1) Unreasonable and inexcusable delay, prejudicial to ii) Equitable Estoppel (1) Π makes representation he will not sue and relies, is immune (Wang) iii) Inequitable Conduct (1) Duty of Candor with PTO (2) Renders Claims Unenforceable (3) Must establish inequitable conduct occurred during the application process of the asserted patent (a) Clear and Convincing (4) Examples (a) Submitting false information, misleading info, affirmative misrepresentation, non disclosure (5) Two Prongs – Judicial Balancing Test (a) Intent (Kingsdown) (i) Involved conduct, viewed in light of all the evidence, including evidence indicative of good faith, must indicate sufficient culpability to require a finding of intent to deceive." 1. No clear evidence of deceitful intent a. Newly hired counsel for Kingsdown mistakenly included a rejected version of a patent claim in a continuation application instead of the approved version. b. Gross Negligence not equal to Intent to Deceive 2. The Federal Circuit found that when viewed in the context of the application proceedings and the multiplicity of claims involved, Kingsdown's conduct did not constitute action with a sinister intent to deceive 3. Factors – large number of claims, similar language in the claims, new attorney involved, action was over two years old, etc. (ii) May be inferred from circumstantial evidence, but more than just GN 1. Given the level of materiality and failure to offer a good faith explanation of the pattern of nondisclosure, intent to mislead may be inferred (Critikon) (b) Materiality (Critikon) (i) Once Materiality and Intent established, court conducts balancing test to determine whether the scales tilt to a conclusion of inequitable conduct 1. “A patentee facing a high level of materiality and clear proof that it knew or should have known of that materiality, can expect to find it difficult to establish ‘subjective good faith’ sufficient to prevent the drawing of an inference of intent to mislead.” a. Given the level of materiality and failure to offer a good faith explanation of the pattern of nondisclosure, intent to mislead may be inferred (ii) Other patent was material along with ongoing litigation in the reissue proceedings g) Misuse -§ 271(d) i) Misuse available when patentee expands scope of grant with anticompetitive effect, under rule of reason (1) Courts will withhold any remedy for infringement or breach of a license agreement (2) Rights of the patent owner will be restored if and when the misuse is purged ii) Dawson Chemical (1) By enacting 35 U.S.C.S. §§ 271(c) and (d), Congress granted to patent holders a statutory right to control nonstaple goods that are capable only of infringing use in a patented invention, and that are essential to that invention's advance over prior art (a) The provisions of 35 U.S.C.S. § 271(d) effectively confer upon the patentee, as a lawful adjunct of his patent rights, a limited power to exclude others from competition in nonstaple goods. A patentee may sell a nonstaple article himself while enjoining others from marketing that same good without his authorization h) Antitrust – Bad Faith Enforcement i) Must prove either (1) Patent obtained through knowing and willful fraud (a) Must be material – would not have issued “but for” (b) Clear intent to deceive and reliance (2) Infringement suit is a “mere sham” to cover nothing more than interference with business relationships (a) Must show suit is “objectively baseless” and “subjectively motivated” (i) No objectively rx litigant would expect success on the merits (ii) Use of process as opposed to outcome as a anticompetitive weapon (3) Do you still have to show Sherman Act provisions??? (a) Monopoly Power in Market (b) Wielded in Anti-Competitive Manner i) Permissible Repair i) 3 situations (Husky) (1) Entire patented item is spent and infringer reconstructs to make usable again (a) Reconstruction (2) Spent part of combination patent is replaced (a) Permissible repair (3) Part is not spent, but replaced to enable the machine to perform a different function (a) Permissible repair ii) Inquiry is whether part is readily “replaceable” 6) Remedies a) 35 USC 284 i) Patent owner entitled to damages “adequate to compensate for infringement” ii) Patentee can recover own lost profits or no less than a reasonable royalty + interests & costs b) 35 USC 286 i) No recovery for any infringement committed more than six years prior to the filing of the complaint (1) Generally you can recover damages from time you file suit and the 6 year period before c) Notice/Marking [§ 287] i) John L Rie (1) Court said that the product could have been marked, and therefore marking on packaging was not helpful – could not prove they couldn’t put it on the product (2) Notice Requirement – 35 USC 287(a) (a) Patentees and persons…may give notice to the public that the thing is patented by either fixing the word patent or pat. and the patent number constructive notice (b) If the character is such that the notice cannot be affixed, you can affix it to the packaging (3) If you have constructive notice, then you can begin recovering damages (a) If not marked, the only way is to file suit or send a letter d) Attorneys Fees and Costs for willful/repeat infringing….damages can also be trebled e) Reasonable Royalty i) If no established royalty or lost profits ii) Royalty that willing parties would have agreed to had they negotiated a license under the patent f) Established Royalty -owner chooses to exploit the patent through offering licenses at an established royalty rate, that rate is the appropriate basis for recovery g) Lost Profits -sales diversion, price erosion, or increased expense, are an appropriate basis for recovery when the patent owner (or an exclusive licensee) exploits the lawful exclusive rights of the patent directly by manufacture, use or sale i) BIC Leisure (1) Patent owner must show “but for” the infringement, it would have made the infringer’s sale (a) Panduit is an acceptable nonexclusive test for “but for” causation (i) Assumes patentee and infringer compete in the same market segment, if they are not substitutes in competitive market, first two factors won’t be met (ii) Sold different types of sailboards at different prices to different customers, differed significantly in terms of price and characteristics and marketing channels (2) Panduit test (a) Demand for the patented product (i) Rarely contested – significant sales by either patent owner or infringer usually deemed compelling evidence (b) Absence of acceptable noninfringing substitutes (i) Patent owner show either 1. Purchasers in the marketplace generally were willing to buy the patented product for its advantages a. Can’t have disparately higher price or significantly different characteristics 2. Specific purchasers of the infringing product purchased on that basis (ii) State Industries market share approach 1. % market share = % of infringers lost profits recoverable 2. Cannot be used if they do not sell products that are sufficiently similar to compete in the same market segment (c) Capacity to exploit the demand (i) Marketing and manufacturing capabilities to make infringer’s sales (d) Profits lost due to infringement (i) Shown with accounting and economic evidence h) Crystal Semiconductor i) Patentee must show credible economic evidence to show the decrease in sales, if any, that would have occurred at the higher hypothetical price (1) Evidence of elasticity of demand, estimates of sales that would have been lost or kept (2) Without economic evidence of the resulting market for higher priced products, cannot recover both lost profits and price erosion damages on each of the lost sales ii) Patentee may obtain lost profit damages for that portion of the infringer's sales for which the patentee can demonstrate "but for" causation and reasonable royalties for any remaining infringing i) Grain Processing i) With proper economic proof of availability, an acceptable substitute not on the market during the infringement may nonetheless become part of the lost profits calculus and therefore limit or preclude those damages ii) Because alternative noninfringing product was available at the time, there is no recovery of lost profits j) Injunction i) 35 USC 283 (1) May grant an injunction in equity ii) Schneider (1) General Rule – permanent injunction will issue following a judgment of infringement unless sound reason for denying injunction (a) City of Milwaukee case – the process was infringing, but the court denied the injunction because it will cause sewage problem (i) Public safety may justify denial or delay as in this case (to phase out their use of the infringing product) iii) Polaroid (1) Preliminary Injunction (a) Likelihood of success (b) Irreparable harm (c) Balancing of Hardships (d) Public Interest (2) 90-day window, no hardship/irreparable harm when infringer loses loses gamble/predictable results