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Law School Outline - Patent Law

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Patent Law Outline

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									Patent Law Outline 

§101 Patentable Subject Matter (pg. 524 – 582; 598 – 600)
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§100 – 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 §101 – Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title  

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o Non-patentable subject matter  Laws of nature  Natural phenomena  Abstract ideas .  Mathematical algorithms  Humans  Signals o Patentable Subject matter  “anything under the sun made by man”  Implementation of a computer program in a general purpose digital computer  Business methods  Micro-Organisms  Natural occurring substances in a substantially pure form o Look at the claim as a whole o Dolbear v. American Bell Tel. (pg. 527)  Telephone cases  Claim: “The method of and apparatus for transmitting vocal or other sounds telegraphically, as herein described, by causing electrical undulations,…”  In the present case the claim is not for the use of a current of electricity in its natural state as it comes from the battery, but for putting a continuous current, in a closed circuit, into a certain specified condition, suited to the transmission of vocal and other sounds, and using it in that condition for that purpose o Funk Bros. Seed Co. v. Kalo Inoculant (pg. 532)  Microbes to fix nitrogen  Discovery of the fact that certain strains of bacteria can be mixed without harmful effect to the properties of either is a discovery of their qualities of noninhibition – discovery of the handiwork of nature and is not patentable o Expanded Metal v. Bradford (pg. 536)  Metal openwork  That this court did not intend to limit process patents to those showing chemical action or similar elemental changes is shown by subsequent cases in this court o Application of Hack (pg. 539)  Brazing alloy  As a matter of claim drafting, the discoverer of a new use must protect his discovery by means of process or method claims and not product claims o Halliburton Oil Well Cememting v. Walker (pg. 541)  Oil well obstructions – unpatentable  We think these mental steps, even if novel, are not patentable  Walker's apparatus patent gives him all the protection his inventive genius entitles him to 1

o Gottschalk v. Benson (pg. 542)  BCD to binary algorithm – unpatentable  They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals. The claims were not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use  Here the „process' claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion o Diamond v. Diehr (pg. 545)  Cure synthetic rubber – patentable  Post solution activity  The respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber  A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer  It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.  This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made o Arrhythmia Research Technology v. Corazonix (pg. 552)  ECG signal analysis – patentable  The mathematical procedures are considered in the context of the claimed invention as a whole  Signals can be part of patentable claim  Freeman – Walter – Abele test:  Is mathematical formula used?  Is the claimed invention as a whole no more than the algorithm?  After Diehr and Chakrabarty, the Freeman-Walter-Abele test has little, if any, applicability to determining the presence of statutory subject matter  When the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, the requirements of §101 are met  “These input signals are not abstractions; they are related to the patient's heart function.”  “These claimed steps of “converting”, “applying”, “determining”, and “comparing” are physical process steps that transform one physical, electrical signal into another.” o In re Alappat (pg. 558)  Oscilloscope display antialiasing  Mathematical algorithms are not patentable  Look at the claim as a whole  Patentable subject matter – Implementation of a computer program in a general purpose digital computer  “this is not a disembodied mathematical concept which may be characterized as an abstract idea, but rather a specific machine to produce a useful, concrete, and tangible result.” 2

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“see whether the claimed subject matter as a whole is a disembodied mathematical concept”  “We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” State Street Bank. v. Signature Financial Group (pg. 565)  Mutual fund management - patentable  Business methods are patentable  “Produces a useful, concrete, and tangible result”  Useful = disclosed specific, substantial and credible utility  Concrete = more likely than not the result contemplated by the invention can be reasonable assured  Tangible = embodied in a form that can be measured or analyzed  The question of whether a claim encompasses statutory subject matter should focus on the essential characteristics of the subject matter, in particular, its practical utility  Not which of the four categories of subject matter a claim is directed to process, machine, manufacture, or composition of matter  Whether the patent's claims are too broad to be patentable is not to be judged under §101, but rather under §§ 102, 103 and 112 Diamond v. Chakrabarty (pg. 5)  Oil eating microbe – patentable  Micro-organisms are patentable  “Anything under the sun made by man” Merck & Co. v. Olin Mathieson (pg. 598)  Vitamin B12 – patentable  Natural occurring substances in a substantially pure form are patentable  It did not exist in nature in the form in which the patentees produced it  What was produced was, in no sense, an old product In re Comiskey (course materials)  A mental process alone is not patentable  A mental process tried to a machine maybe patentable  The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness In re Nuijten (course materials)  Signal is not patentable  A signal is not a manufacture Kunin PowerPoint (course materials) – con‟t at end  Judicially created exceptions to patentability  Laws of nature  Natural phenomena  Abstract ideas  Humans – not patentable  Business methods w/ practicable application – patentable  Life forms altered by human intervention may be patented  Including plant breeds  And non-human animals 3

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§101 Utility (pg. 437 – 458)
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§101 – “Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” §112 – “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

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o The law does not look at the degree of utility; it simply requires that it shall be capable of use and that the use is such as sound morals and policy do not discountenance or prohibit. o The law requires that there be in the application an assertion of utility and an indication of the use or uses intended  expression of utility either by implication or directly o Ex Parte Murphy (pg. 441)  One arm bandit  Rejected for lacking utility  The patent should not be held void for want of utility, if the court for itself should see, or be convinced by experts, that the instrument was susceptible of good uses, though in fact never put to such before the suit was begun.  Useful = designed and adapted to be used for a good result, even if can or is used to accomplish a bad result o Brenner v. Manson (pg. 442)  Ground of rejection – failure to disclose any utility for the chemical compound produced by the process  Issue: whether the practical utility of the compound produced by a chemical process is an essential element in establishing a prima facie case for the patentability of the process.  Until the process claim has been reduced to production of product shown to be useful, the metes and bounds of that monopoly are not capable of precise delineation.  Utility ≠ potential role as an object of use-testing  To patent a process need to show utility for the resulting compound  Also applies to a product by process claim o In re Brana (pg. 445)  Pharmaceutical compounds  Issue: with regard to pharmaceutical inventions, what must the applicant prove regarding practical utility or usefulness of the invention for which patent protection is sought?  Tumor models represent a specific disease against which the claimed compounds are alleged to be effective  In re Marzocchi  Information presented in a patent application is presumed ture  The PTO has the initial burden of challenging a presumptively correct assertion of utility in the disclosure  Only after the PTO provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince such a person of the invention‟s asserted utility. 4

Evidence of success in structurally similar compounds is relevant in determining whether one skilled in the art would believe an asserted utility.  Proof of an alleged pharmaceutical property for a compound by statistically significant tests with standard experimental animals is sufficient to establish utility.  FDA approval is not a prerequisite for finding a compound useful within the meaning of patent laws  The stage at which a pharmaceutical compound becomes useful is well before it is ready to be administered to humans. o Raytheon v. Roper (pg. 450)  Oven  Utility is a question of fact  When a claimed invention meets at least one stated objective, utility under §101 is clearly shown o A claimed invention need not accomplish all objectives stated in the specification  Lack of utility cannot co-exist with infringement and commercial success o A correct finding of infringement of otherwise valid claims mandates as a matter of law a finding of utility under §101  People rarely, if ever, appropriate useless inventions o Proof of utility is supported when the invention has been met with commercial success  Claim interpretation is a question of law  When an incorrect or questionable theory of operation is included in a patent claim, that claim in invalid – §112  A claim containing a limitation impossible to meet maybe held invalid under §112  When a claim requires means for accomplishing an unattainable result, the claim is invalid under §101 or §112 o The impossible can not be enabled o E.I. Dupont v. Berkley (pg. 455)  Fluorescent fishing lines  One who infringes a patent may not deny utility of the invention  Presumption of utility created by issuance of a patent  Issued patents are assumed valid  Perfection under all conditions is not required  A small degree of utility is sufficient  The claimed invention must only be capable of performing some beneficial function  Commercial success is evidence of utility  The defense of non-utility cannot be sustained without proof of total incapacity o Kawai v. Metlesics (pg. 457)  Filing of a US patent application is a constructive reduction to practice as of the date of filing  Constructive reduction to practice is not proven unless the specification relied upon discloses practical utility for the invention where one would not be obvious  Constructive reduction to practice is not proven unless there is sufficient disclosure in the specification to enable any person skilled in the art to take advantage of that utility where it would not be obvious how this is done 5

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§102 Novelty (pg. 191 – 270)
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§102 – A person shall be entitled to a patent unless  (a) the invention was 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 thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or (e) the invention was described in  (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or  (2) a patent granted on an application for patent by another filed in the United States 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 United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; (f) he did not himself invent the subject matter sought to be patented (g)(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

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o §102(a) – before the invention by the applicant  Known or used by other in this country  Foreign country ≠ prior art  Patented or described in a printed publication in this or foreign country o §102(b) – more than 1 year prior to the date of application  Patented or described in printed publication in this or foreign county  Public use or on sale in this country  Foreign country does not bar

Invention Date
Ref – 102(a) bar

Filing

Ref – 102(b) bar

One Year
o §102(e) applies when an inventor claims something disclosed but not claimed in another US patent or published U.S. patent application (PCT inclusion)- §102(e)(2)  §102(e) bars if the patent is granted or published  §102(e) precludes granting a patent if the invention was described in a patent granted on an application by another filed in the United States before the invention thereof by the applicant for patent.  If the patent is not granted there is no §102(e) bar  An abandoned application does not invoke §102(e)  If a patent application is published then abandoned §102(e) does bar-§102(e)(1) o A U.S. application is a reference as to its filing date if it is published or granted

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o To negate novelty, §102, the invention must be disclosed within the four corners of a single reference or by a single device o To negate nonobviousness, §103, it is permissible to combine prior art references and devices o 131 Affidavit (pg. 325)  To beat a §102(a) or §102(b) reference  Establish reduction to practice prior to the reference  Establish conception prior to the reference coupled with diligence to reduction to practice

Diligence – show working on invention to some extent Reduction to practice  Working invention  Realize the invention was a success  Filing date – constructive reduction to practice o Foreign filing date can be relied on for constructive reduction to practice  The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application  Must be copending o Kalman v. Kimberly Clark (pg. 196)  Anticipation  A claim is anticipated only if each and every element as set forth in the claims is found, either expressly or inherently described, in a single prior art reference.  A party asserting that a patent claim is anticipated under §102 must demonstrate identity of invention  Identity of invention is a question of fact  Must show that each element of the claim in issue is found, either expressly described or under principles of inherency, in a single prior art reference, or that the claimed invention was previously known or embodied in a single prior art device or practice  The law of anticipation does not require that the reference “teach” what the subject patent teaches.  It is only necessary that the claims under attack “read on” something disclosed in a single reference, i.e., all limitations of the claim are found in the reference, or “fully met” by it  Anticipation  References anticipate claims  Claims under attack “read on” the prior art 7

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o “Read On” – every component of the invention and limitation are in the prior art reference o “Fully Met” – claims read completely on the prior art reference; all components and limitation are present  Party asserting anticipation must demonstrate identity of the invention  Must show every element of the claim is evident, expressly of inherently, in a single prior art reference  Prior art does not have to teach what the patent teaches o Schering Corp v. Geneva  Loratadine and its metabolite  Metabolite anticipated by Loratadine  Inherent Anticipation  A patent is invalid for anticipation if a single prior art reference discloses each and every limitation of the claimed invention  A prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.  Inherent anticipation does not require that a person of ordinary skill in the art at the time would have recognized the inherent disclosure  Recognition by a person of ordinary skill in the art before the critical date of a patent is not required to show anticipation by inherency.  A limitation or the entire invention is inherent and in the public domain if it is the “natural result flowing from” the explicit disclosure of the prior art  That which would literally infringe if later in time anticipates if earlier  Anticipation does not require the actual creation or reduction to practice of the prior art subject matter; anticipation requires only an enabling disclosure.  A person may infringe a claim to a metabolite if the person ingests a compound that metabolizes to form the metabolite  Natural occurring compounds are not patentable  Patentable if claimed in its pure and isolated form or as a pharmaceutical composition o Titanium Metals v. Banner (pg. 204)  Prior art – Spec. %; Patent - % range  Recitation, in a claim to a composition, of a particular property said to be possessed by the recited composition, be that property newly-discovered or not, does not necessarily change the scope of the subject matter otherwise defined by that claim  It is also an elementary principle of patent law that when, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is anticipated if one of them is in the prior art o Gayler v. Wilder (pg. 206)  Safe  “Used by others”  Public use  Existing in a manner accessible to the public  Knowledge and use in a manner accessible to the public

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o Coffin v. Ogden (pg. 208)  Locks  The invention or discovery relied upon as a defense, must have been complete, and capable of producing the result sought to be accomplished  The law requires not conjecture, but certainty  Until his work is done, the inventor has given nothing to the public  To be publicly know – must be publicly working  Complete and capable of working  Can not be speculation o Westinghouse Machine v. GE (pg. 210)  Interference – trying to figure out who is the inventor  Known means publicly known  Not private knowledge not know to the public  Reduction to practice in foreign country can never operate to destroy a patent unless the invention be patented or described in a printed publication o Text pg. 213 – 216  An application in a foreign country does not suffice to establish priority of an invention over a United States application. The foreign must have issued or a description published  Reduction to practice in a foreign country of a previous foreign invention cannot operate to invalidate a patent granted in the United States unless the foreign invention has either been patented or described in a printed publication  Gilman v. Stern  Commercial use in secret of a prior invention by another does not invalidate a patent  Secreting a machine one may keep it from becoming an anticipation, even though its public use would really have told nobody anything about it  Work that the government classifies as restricted is not publicly available and thus not prior art  An invention is “known” when it is reduced to practice  Belief that an invention will work is not sufficient  Printed publication  Must be an enabling disclosure or description  Unless the earlier printed and published description does exhibit the later patented invention in such a full and intelligible manner as to enable persons skilled in the art to which the invention is related to comprehend it without assistance from the patent, or to make it, or repeat the process claimed, it is insufficient to invalidate a patent o Reeve Bros. v. US Laminating (pg. 217)  Utility model (GM)  Only a reference as to what is claimed  An American patent is a reference not only for its claims but also for its disclosures as revealed in its specification  A foreign patent, for anticipation purposes, §102, are limited to their claims and can not be used as references for the disclosures in their specifications

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o Bendix Corp. v. Balax, Inc. (pg. 219)  Utility model (GM)  Specification o Determine what is claimed but not add to what is claimed  The specification can only be used to interrupt the meaning of the claims  The specification can not be used to add new matter to what was patented by the claims  For anticipation purposes under §102 a foreign patent is a reference only to what is patented, i.e., for what it claims and not, for what is disclosed in its specifications o In re Wyer (pg. 225)  Printed publication  Printed and published  Public dissemination/accessibility  Availability and accessibility  Proof the document was read is not required  Classification and indexing is of some importance  Public dissemination of the document or its availability and accessibility to persons skilled in the subject matter or art o In re Hall (pg. 228)  Thesis in library  No concrete date of indexing but still determined to be a publication o The approximation of a date works no injustice  In re Bayer  Thesis was not a printed publication because it was not indexed or catalogued  Printed publication bar  Prior to the critical date the reference was sufficiently accessible, at least to the public interested in the art, so that such a one examining the reference could make the claimed invention without further research or extermination o In re Klopfenstein (pg. 229)  Public display at a professional conference  Distribution and indexing are not the only factors to be considered in a §102(b) “printed publication” inquiry  The factors relevant to the facts of this case are:  The length of time the display was exhibited, the expertise of the target audience,  The existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and  The simplicity or ease with which the material displayed could have been copied.”  Possible measures to prevent copying  license agreements,  non-disclosure agreements,  anti-copying software  or even a simple disclaimer informing members of the viewing public that no copying of the information will be allowed or countenanced 10

o Application of Ekenstam  A document can be a patent without being a printed publication  The United States applies its own standards to foreign patents  A Belgium patent is a patent on its brevet publie date (the date the application is published) not its brevet octroye date  A secret foreign patent is not a proper reference against an application for a patent in the U.S. o Alexander Milburn Co. v. Davis-Bournoville Co. (pg. 237)  Order  A files; disclosing but does not claiming X  B files and claims X  A issues then B issues  B‟s patent is invalid  The delays of the patent office ought not to cut down the effect of what has been done. The description shows that Whitford was not the first inventor  Lead to §102(e) which precludes granting a patent if the invention was described in a patent granted on an application by another filed in the United States before the invention therof by the applicant for patent. o In re Wertheim (pg. 240)  What filing date is given to a reference patent that issues after a series of patents?  How far back can one extend the effective date of a reference patent as prior art?  A continuation in part application is entitled to the filing date of the parent application as to all subject matter carried over into it from the parent application  Applies obtaining a patent and defeating another‟s right to a patent  If a patent could not have issued the day the application was filed, it is not entitled to be used against another as secret prior art  Continuation in Part  New info is award new filing date  Old info is awarded old filing date  Can not get the benefit of a date until enough info is in the patent for it to grant o Application of Bayer (pg. 244)  Uncataloged, unshelved thesis  Not a valid reference  Not a printed document because not available to the public  Delays within a university library, or within any other organization responsible for the publication of printed documents, are of utmost significance because public access to the document is thereby deferred o Joseph Bancroft & Sons Co. v. Brewster Finishing Co. (pg. 247)  An abandoned application is not proof of prior invention  If the subject of an abandoned application was reduced to practice in this country, then the abandoned application is admissible as evidence of prior knowledge of the technique  Abandoned U.S. application is not prior art  Unless published then it is prior art §102(e)(1)  An application in a foreign country does not suffice to establish priority of invention over a U.S. application  The foreign patent must issue or a description published  Reduce to practice in a foreign country can never operate to destroy a patent applied for in the U.S. 11

o Application of Hilmer (pg. 250)

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The effective date as a reference of a US patent is its US filing date, not the foreign filing date to which it might be entitled Application of Schlittler (pg. 252)  A printed publication does not constitute a reduction to practice but is evidence of conception only  One of the essential elements of the word „known‟ as used in 35 U.S.C. § 102(a) is knowledge of an invention which has been completed by reduction to practice, actual or constructive, and is not satisfied by disclosure of a conception only  A printed magazine is published on the day it was received by the addressee rather than when mailed by the publisher since, as a rule, the contents of the mails are preserved in secrecy until delivered to the addressee Corona Tire Co. v. Dovan Chem. Corp. (pg. 256)  By using his invention, an inventor abandons his right to a patent  The work of a first inventor is prior art against the patent of a second inventor Dunlop Holdings Ltd. V. Ram Golf Corp. (pg. 258)  An abandoned invention will not defeat the patentability of the rediscovery of “lost art”  An inventor who made a secret use of his discovery should not be regarded as the first inventor  §102(g) relates to the prior inventorship by another in this country preventing the grant of a patent  if an inventor confers the benefit of his invention to the public without abandonment, concealment, or suppression then it can not be patented (in the public domain)  Public use of an invention forecloses a finding of suppression or concealment even though the use does not disclose the discovery  Gives the public the benefit of the invention  Secret will be uncovered (reverse engineering)  No duty to apply for a patent Aktiebolaget v. ITC (pg. 264)  §103 (c)(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of §102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person  Inventions made under a common owner - §102(e) does not apply Oddzon Products, Inc. v. Just Toys, Inc. (pg. 268)  §102(f) is a prior art provision for purposes of § 103  §102 (f) he did not himself invent the subject matter sought to be patented  Prior invention is prior art unless the invention is commonly owned  Works of fellow employees engaged in team research 12

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Loss of Right to Patent an Invention (pg. 270-357)
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§102 – A person shall be entitled to a patent unless  (b) the invention was patented or described in a printed publication in this or a foreign country or
in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

PUBLIC USE o Shaw v. Cooper (pg. 272)  Guns  An inventor can abandon his invention but once abandoned he can not get it back  Patent law was designed for the benefit of the public  An inventor may abandon his invention, and surrender or dedicate it to the public. This inchoate right, thus gone, cannot afterwards be resumed at his pleasure o City of Elizabeth v. American Nicholson Pavement (pg. 274)  Wooden pavement  Experimental use vs. Public use  Experimental use, even thought not secret, negates public use  Primary intent must be experimental use  Public may derive incidental benefit  If the inventor allows his machine to be used by other persons generally, either with or without compensation, or if it is , with his consent, put on sale for such use, then it will be in public use and on public sale, within the meaning of the law  Why experimental use  Type of invention that needs to be tested in the public  Wished to experiment  Did it at his own expense  Public had incidental use  Bona fide effort to bring his invention to perfection o Egbert v. Lippmann (pg. 277)  Corset steels  It is not necessary that more than one of the patented articles should be publicly used  The use of a great number may tend to strengthen proof of public use, but one well defined case of public use is just as effectual to the annul the patent as many  Whether the use of an invention is public or private does not necessarily depend upon the number of persons to whom its use is known  Some inventions are by their very character only capable of being used where they cannot be seen  Indicia of “public use”  No obligation of secrecy o Show to anyone o Made invention themselves o Sold the invention  Not presented for the purpose of experiment  Invention was complete

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o Hall v. Macneale (pg. 279)  Safes  Indicia of public use:  Invention complete  Construction known to workmen  Not experimental use  Safes were sold  No attempt was made to strip off plates (brake into the safe) o TP Laboratories v. Professional Positioners (pg. 281)  Orthodontic Appliance  Non-secret use is not ipso facto “public use” activity  Experimental use  Invention: o Needed time to determine success  Inventor: o Had means to commercialize but did not o Made no extra charge  Policy consideration (pg. 282)  Protecting the public  Encouraging prompt disclosure  Discourage attempts to extend exclusive right  Allow inventor to perfect invention  Public use or experimental use  Single issue  Look at the totality of the circumstances and decide if public use  It is incorrect to impose on the patent owner, as the trial court in this case did, the burden of proving that a “public use” was “experimental.” These are not two separable issues. It is incorrect to ask: “Was it public use?” and then, “Was it experimental?” Rather, the court is faced with a single issue: Was it public use under § 102(b)?  Patents are presumed valid ON SALE o Pfaff v. Wells Electronics (pg. 286)  Chip Socket  The word “invention” refers to the inventor's conception rather than to a physical embodiment of that idea.  The statute does not contain any express requirement that an invention must be reduced to practice before it can be patented  The word “invention” must refer to a concept that is complete, rather than merely one that is “substantially complete.”  On-sale bar applies when:  The product must be the subject of a commercial offer for sale  The invention must be ready for patenting.” o Proof of reduction to practice before the critical date; or o Detailed drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention (prior to critical date)

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o Linear Technology Corporation v. Micrel (pg. 293)  Adaptive transistor drive circuits  On sale when patentee makes an offer  Not on sale when a 3rd party makes an offer to buy  Data sheet ≠ printed publication o Space Systems v. Lockheed Martin (pg. 304)  Attitude control system  Ready for patenting  Must be able to prepare a patent application with an enabling disclosure  For a complex concept, wherein the inventor himself was uncertain whether it could be made to work, a bare conception that has not been enabled is not a completed invention ready for patenting o In re Kollar (pg. 308)  Ethylene Glycol Process  Merely granting a license w/o more does no trigger the on sale bar - [process]  Need performance of process for consideration; or  Sale of a product made by the process  Need commercialization  Performance of the process for an economic benefit  Merely granting a license to an invention, without more, does not trigger the onsale bar of §102(b)  We cannot articulate in advance what would constitute a sale of a process in terms of the on-sale bar o Except:  Sale of a product made by the process  Performing the process for consideration  Leasing trigger the on sale bar o Grain Processing v. American Maize-Products (pg. 311)  Starch Conversion  Shipping samples from a process was experimental use  Experimental use of the process because:  Shipped to determine product utility  Necessary because of possible interactions  Short testing period  Small quantities  Free of Charge EFFECTIVE DATE OF APPLICATION FOR A PATENT o §120 – Benefit of earlier filing date in the US (pg. 314)
 An application for patent for an invention [112] … which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application





To get the benefit of the 1st application  Filed before the patenting, abandonment, or termination of proceedings  Invention disclosed in the manner provided by §112 Para. 1 Requires only that the invention be disclosed in the parent application in such a manner as to comply with the first paragraph of §112 and be the same invention as that disclosed in the later application 15

o

o

o

o

The priority is determined not by the date the invention was claimed but rather when it was first disclosed in an application  A continuation in part application is entitled to the filing date of the parent application to the extent of subject matter common to both  Old info gets old filing date  New info gets new filing date Godfrey v. Eames (pg. 315)  If a party choose to withdraw his application for a patent, and pay the forfeit, intending at the time of such withdrawal to file a new petition, and he accordingly do so, the two petitions are to be considered as parts of the same transaction, and both as constituting one continuous application, within the meaning of the law General Talking Pictures v. Western Ele. (pg. 317)  Vacuum tube amplifiers  Original application disclosed but did not claim an invention  That invention was later claimed in a “divisional” application Muncie Gear Works v. Outboard, Marine & Mfg. (pg. 318)  Cavitation plates  Original Application: August 25, 1926  Public Use/Sale February 26, 1926  December 8, 1928 Amendments  In them Johnson for the first time made claims relating to the exterior surface of the housing. Claim 12 described the housing as having „unbroken outer wall surfaces at each side,‟ and claim 14, as having „smooth and unbroken walls.‟  We think the conclusion is inescapable that there was public use, or sale, of devices embodying the asserted invention, more than two years before it was first presented to the Patent Office.  120: “…invention disclosed in the manner provided by the first paragraph of section 112…” In re Mulder (pg. 328)  131 Affidavit case  Foreign filing date can be relied on for constructive reduction to practice
Reference Not one year



Application Sent to US

Netherlands Filing

US Filing

 Conception = Application sent to US  Constructive reduction to practice = Foreign filing  No diligence was found by the court o In re Costello (pg. 331)  Constructive reduction to practice by filing an application can be lost of that application is abandoned  Abandon an application – loose the benefits afforded to that application  In order to overcome Cereijo appellants must either (1) comply with the substantive requirements of Rule 131, or (2) establish that the relevant disclosure is of their own work 16

App. Filed App. Abd.

2

nd

Application

Paper presented

Cereijo

While the filing of the original application theoretically constituted a constructive reduction to practice at the time, the subsequent abandonment of that application also resulted in an abandonment of the benefit of that filing as a constructive reduction to practice o Application of Foster (pg. 335)  §102(b) reference can be used in combination with §103 ABANDONMENT o §102(c) – A person shall be entitled to a patent unless  He has abandoned the invention o Abandonment  Evidenced by express and voluntary declaration of the inventor  Inferred from negligence or unexplained delay in making application for patent  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 o Abandonment is a question of fact o Macbeth-Evans Glass v. General Elec. (pg. 339)  Secret use from 1903 to 1913 = abandonment  He may forfeit his rights as an inventor by willful or negligent postponement of his claims o W.L. Gore & Associates v. Garlock (pg. 344)  Teflon Tape  Prior inventors secret use does not bar patenting by a later inventor  Prior secret use does not bar a 3rd party from getting a patent  Secret use by the inventor bars the inventor only o Crown Cork & Seal v. Ferdinand Gutmann (pg. 346)  Abandonment of an application is not abandonment of the invention  2 ways an abandonment of an application can happen  Let the time run out on the application  Express abandonment of application FOREIGN FILING LICENSE o §184 – Foreign Filing of a US Invention
 Except when authorized by a license obtained from the Commissioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. ..The license may be granted retroactively where an application has been filed abroad through error and without deceptive



  

Prohibits filing of a patent application in a foreign country on any invention made in this country except when authorized by a license from the commissioner or more than 6 months after filing a US patent application on the invention If §184 is violated and a retroactive license is not subsequently obtained, §185 bars US patent protection Joint inventors from different countries  Where did you file first?

17



o In re Kathawala (pg. 353)  An invention is patented in a foreign country under §102 when a patentee‟s rights under that patent become fixed  §102 bar applies regardless whether the foreign patent contains claims to less than all aspects of the invention Inventorship (pg. 116 – 132) o §102(f) – a person shall be entitled to a patent unless he did not himself invent the subject matter sought
to be patented

o §116 – When an invention is made by two or more persons jointly, they shall apply for patent jointly . ..
Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent

o §256 – Correction of named inventor
 “Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issued a certificate correcting such error. The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section..”



o Correction of named inventor  Joint inventors  Can eliminated wrong names  Can add missing names  Error without deception  An issued patent is not invalidate for error of inventor‟s name if correctable o MPEP 201.03  Can change the inventor on a patent sole to sole o Ethicon v. United States Surgical (pg. 121)  Coinventor contribution to conception  Contribution to reduction to practice does not make you a coinventor  Patent issuance creates a presumption that the named inventors are the true and only inventors.”  “each joint inventor must generally contribute to the conception of the invention  Conception is the „formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.‟ ”  “On the other hand, one does not qualify as a joint inventor by merely assisting the actual inventor after conception of the claimed invention  Co-inventorship can be very bad:  “.. each co-inventor presumptively owns a pro rata undivided interest in the entire patent, no matter what their respective contributions.”  “Thus, a joint inventor as to even one claim enjoys a presumption of ownership in the entire patent.”  “.. joint inventions may become joint property without some express agreement to the contrary.” o Kimberly-Clark v. Procter & Gamble (pg. 128)  Need collaboration for joint inventorship  For persons to be joint inventors under Section 116, there must be some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another's suggestion at a meeting 18

o Pannu v. Iolab (pg. 131)  §256 is a saving provision  Thus, section 102(f)still makes the naming of the correct inventor or inventors a condition of patentability; failure to name them renders a patent invalid. However, in cases of misjoinder and nonjoinder the operation of section 102(f) is ameliorated by section 256 

§103 Obviousness (pg. 357 – 408; 420 – 429)
o §103(a) – “A patent may not be obtained though the invention is not identically disclosed or described as
set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the 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 to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.” §103(b) – (pg. 358)Rules for a Biotechnological Process (pg. 358) §103(c) – (pg. 360) precludes the use of prior art under only §102(f) and §102(g)(2) of earlier invention not publicly known in applying non-obviousness test of subsection §103(a) to a later invention of another if both inventions were commonly owned  Avoids invalidation of patents under §103(a) based on the unpublished work of fellow employees engaged in team research and development

o
o

o Immaterial whether the invention from long toil and experimentation, from a flash of genius or luck o Can combine reference under §103 o Be careful of Hindsight reasoning  Reconstruction by hindsight, making obvious something that was not obvious to superior minds until someone pointed it out, is too often a tempting exercise for astute minds o Hotchkiss v. Greenwood (pg. 360)  Door knobs with different materials  Substitution of one material in place of another is not the subject of a patent o Atlantic Works v. Brady (pg. 362)  To grant to a single party a monopoly of every slight advance made, except where the exercise of invention, somewhat above ordinary mechanical or engineering skill, is distinctly shown, is unjust in principle and injurious in it consequences  It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures o Goodyear v. Ray-O-Vac (pg. 363)  During a period of half a century, …no one devised a method of curing such defects. Once the method was discovered it commended itself to the public as evidenced by marked commercial success. These factors were entitled to weight in determining whether the improvement amounted to invention and should, in a close case, tip the scales in favor of patentability o Cuno Engineering v. Automatic Devices  “flash of creative genius”  No longer valid  That is to say the new device, however useful it may be, must reveal the flash of creative genius not merely the skill of the calling. If it fails, it has not established its right to a private grant on the public domain 19

o Great Atlantic & Pacific Tea v. Supermarket Equipment (pg. 366)  The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them is not patentable  An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance o Graham v. John Deere  §103  Codification of Hotchkiss v. Greenwood principle  Nonobviousness is the operative test  Abolishes “flash of creative genius” test  Graham Test  The scope and content of the prior art are to be determined;  Differences between the prior art and the claims at issue are to be ascertained; and  The level of ordinary skill in the pertinent art resolved  Secondary considerations o Commercial success, o Long felt but unsolved needs, o Failure of others  Against this background, the obviousness or nonobviousness of the subject matter is determined  Secondary consideration might have relevancy as indicia of obviousness or nonobviousness o Anderson’s Black Rock v. Pavement Salvage (course materials)  Combination patent  Combination of radiant heat burner and paving machine  Argued that the combination filled a long felt want and has enjoyed commercial success, but those matters “without invention will not make patentability” o Sakraida v. Ag Pro (course materials)  Combination patent  Water flush system to clean cow manure from barn floor  Rather, this patent simply arranges old elements with each performing the same function it had been known to perform, although perhaps producing a more striking result than in previous combinations  This particular use of the assembly of old elements would be obvious to any person skilled in the art of mechanical application  These desirable benefits “without invention will not make patentability” o Republic Indus. v. Schlage Lock (pg. 379)  Synergism  Definition o In a combination, one of the elements functions differently in combination than it did previously o The combination results in an effect greater than the sum if the several parts  Test o The subject matter of the patent claim comprises a combination of several elements, each was known in the prior pertinent art 20

o

o

o o

o

o

o The combination is synergistic or at least produces a synergistic effect  Synergism has little utility, because congress said the test is nonobviousness  There is, in fact, no such thing as a mechanical or hydraulic element functioning differently in combination than it did outside the combination Stratoflex v. Aeroquip (pg. 384)  It is jurisprudentially inappropriate to disregard any relevant evidence on any issue in any case, patent cases included  i.e. secondary consideration under Graham Test  A requirement for “synergism” is nowhere found in the statute, 35 U.S.C.  Virtually all patent are combination patents In re O’Farrell (pg. 385)  Obvious to try is not the standard under §103  Obviousness does not require absolute predictability of success  For obviousness under §103, all that is required is a reasonable expectation of success In re Ochiai (pg. 387)  If the compound is new and unobvious, the process for making it is also unobvious Demarco (pg. 391)  Evidence of secondary considerations may often be the most probative and cogent evidence in the record  The patent statute does not require that a patentable invention be superior to all prior devices. Nor does the patent statute require that an invention be complex in order to be nonobvious Kimberly Clark (pg. 392)  Presumption that the inventor has knowledge of all material art prior art is dead  Picture the inventor as working in his shop with the prior art references which he is presumed to know -hanging on the walls around him  We hereby declare the presumption that the inventor has knowledge of all material prior art to be dead Union Carbide (pg. 395)  Nonanalogous Art  Prior art includes art  Prior art in the field of his endeavor  Prior art outside the field of endeavor if reasonably pertinent to the particular problem  Determination if a reference is from a nonanalogous art  First, decide if the reference is within the field of the inventor's endeavor.  If it is not, we proceed to determine whether the reference is reasonably pertinent to the particular problem with which the inventor was involved  In resolving the question of obviousness under §103, we presume full knowledge by the inventor of all the prior art in the field of his endeavor. However, with regard to prior art outside the field of his endeavor, we only presume knowledge from those arts reasonably pertinent to the particular problem with which the inventor was involved

21

o In re Bigio (pg. 399)  Scope of Analogous Art  Whether the art is from the same field of endeavor, regardless of the problem addressed  If the reference is not within the field of the inventor‟s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved  The field of endeavor test is neither wholly subjective nor unworkable o Jones v. Hardy (pg. 402)  Claimed invention as a whole  obvious or nonobvious  The test under §103 is NOT whether an improvement or a use set forth in a patent would have been obvious or nonobvious.  The test under §103 is whether the claimed invention, considered as a whole, would have been obvious or nonobvious.  Treating the advantage as the invention disregards the statutory requirement that the invention be viewed “as a whole”, ignores the problem-recognition element, and injects an improper “obvious to try” consideration  The statute requires the invention as claimed to be considered as a whole when considering whether that invention would be obvious when it was made o Gillette v. S.C. Johnson & Son (pg. 405)  The closest prior art and the only reference would likely discourage the worker from attempting the substitution  Each compound was known in the prior art; what was not known or suggested was the composition that resulted from the combination of those compounds and its unique properties o ACS Hospital Systems (pg. 420)  Prior art can only be combined if there is a suggestion or incentive o In re Oitker (pg. 420)  Reason, Suggestion, Motivation Test  There must be some reason, suggestion, or motivation found in the prior art whereby a person of ordinary skill in the field of invention would make the combination o Demaco (pg. 423)  Secondary consideration of the Graham Test must be considered  When a patentee asserts that commercial success supports its contention of nonobvious, there must be of course be a sufficient relationship between the commercial success and the patented invention  “Nexus” btwn patented invention and commercial success  The burden of proof as the connection or nexus resides with the patentee  Objective evidence on how the patented invention is perceived in mkt place o Ryko Manufacturing v. Nu-Star (pg. 426)  Secondary considerations  Commercial success  Long felt but unsolved need  Failure of others o Cable Electric Products v. Genmark (pg. 427)  More than a mere fact of copying by an accused infringer is need to make the action significant to a determination of the obviousness issue 22

o KSR v. Teleflex (course materials)  Adjustable pedal assembly  Court of Appeals applies TSM test to rigidly  TSM test not necessarily inconsistent w/ Graham analysis  We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here  Errors of Court of Appeals  The first error .. was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve  The second error .. lay in its assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem  The Court of Appeals, finally, drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias  The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results  Look for: o Teaching away o Unexpected results  Secondary considerations are always important o In re Icon Health (course materials)  Obviousness is a question of law o Ex parte Kubin (course materials)  Obvious to try may be important o Ex parte Smith (course materials)  Uniquely challenging or difficult for one of ordinary skill in the art o Ex parte Catan (course materials)  Claim Interpretation – broadest reasonable construction  Graham factors continue to define the inquiry  Functional approach  The principle that a combination of familiar elements is likely to be obvious when it yields no more than predictable results  Person of ordinary skill in the art  A hypothetical person presumed to know the relevant prior art  Skill level may reflect: o Type of problem encountered o Prior solutions o Rapidity of innovations o Technology sophistication o Education level of workers in the field

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Infringement (pg 661 – 769)
o §271 – Infringement (pg. 734 – 736)  (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to 
 sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent. (b) Whoever actively induces infringement of a patent shall be liable as an infringer. (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. (f) & (g) – pg. 736



o §271(a) – Direct Infringement  Reconstruction = make a new article = direct infringement  Repair ≠ infringement o §271(b) – Induced Infringement  Selling something that can be used in an infringing process and provide something to allow a person to use it in an infringing way  Staple article of commerce used in an infringing way  Proof of actual intent to cause the acts which constitute the infringement is a necessary prerequisite to finding active inducement o §271(c) – Contributory Infringement  A specially designed item that only can be used in an infringing invention  Specially adapted for infringing use  Need direct infringement in order to have contributory infringement o §271(d) – Limitations on misuse:  It is not misuse to:  (1) derived revenue from acts..;  (2) licensed or authorized another..;  (3) sought to enforce his patent ..;  (4) refused to license ..; or  (5) conditioned the license… o §271(f) – liable as in infringer one who supplies or causes to be supplied in or from the US in uncombined form  At least a substantial portion of the components of a patented invention, or  Any component especially adapted for use in a patented invention and not a staple article or commodity of commerce suitable for substantial non-infringing use  Does not have to be actually combined abroad to have infringement under §271(f) o §271(g) – liable as an infringer one who imports into or sells or uses in the US a product made by a process patented in the US  §295 – presumption product was made by the infringing process; burden is on the party with the infringing product to show it was not made by the infringing process  §287(b) – avoids liability for products already in possession or in transit prior to notice of infringement o §271(i) – makes offers to sell in the US and importing into the US the patented invention during the term of the patent additional acts of infringement 24

o Doctrine of equivalents  If the words of the claim do not literally read on the accused subject matter, but such subject matter embodies the patentable invention defined by the claim there is infringement under the doctrine of equivalents unless the patent holder is estopped to enlarge the scope of the claim beyond the literal meaning of its words  Function – Way – Result Test  If it performs substantially the same function in substantially the same way to obtain the same result  A finding of equivalence is a finding of fact o Reverse doctrine of equivalents  If the words of the claim literally read on the accused subject matter, but such subject matter does not embody the patentable invention defined by the claim, there is no infringement o File wrapper estoppel o Markman v. Westview Instruments (pg. 663)  Claim interpretation is a matter of law  Markman hearing  “We hold that the construction of a patent, including terms of art within its claim, is exclusively within the province of the court.” o Phillips v. AWH (pg. 668)  Can look at the specification to interpret the claim  Can not import limitations from the specification to the claim  Hierarchy of claim interpretation  Intrinsic evidence o The patent claim o The patent specification o The file history  Extrinsic evidence o Dictionaries, treatises o Expert testimony o Amstar v. Envirotech (pg. 687)  Infringement is not determined by comparison between parts of the description in a patent and the accused process or product, or by comparison between commercial products sold by the parties  Accused product or process must be compared to the claims o Graver Tank & Mfg. v. Linde Air Products (pg. 689)  Doctrine of Equivalents  Function – Way – Result Test o If it performs substantially the same function in substantially the same way to obtain the same result  A finding of equivalence is a finding of fact  In determining whether an accused device or composition infringes a valid patent, resort must be had in the first instance to the words of the claim. If accused matter falls clearly within the claim, infringement is made out and that is the end of it

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o Warner-Jenkinson. v. Hilton Davis Chemical (pg. 693)  Doctrine of equivalence must be applied to individual elements of the claim, not to the invention as a whole  Evaluate equivalency at the time of infringement, not at the time that patent was issued  Prosecution history estoppel as a bar to application of the doctrine of equivalents  Burden on the patent holder to establish the reason for an amendment required during patent prosecution  The proper time for evaluating equivalency-and thus knowledge of interchangeability between elements-is at the time of infringement, not at the time the patent was issued  Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole o Festo II (pg. 708)  Prosecution history estoppel  When, however, the patentee originally claimed the subject matter alleged to infringe but then narrowed the claim in response to a rejection, he may not argue that the surrendered territory comprised unforeseen subject matter that should be deemed equivalent to the literal claims of the issued patent  A narrowing amendment made to comply with any provision of the Patent Act, including §112, may invoke an estoppel  Presumption when there is no reason, that amendment was made for patentability  First question: Does the amendment narrow the claim?  Second Question: What was the reason for the amendment?  Limited to the prosecution history record.  If for patentability: o Presumption that all subject matter surrendered. o Can rebut by showing that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent  Equivalence unforeseeable  Extrinsic evidence  Tangential relation to the equivalent  Intrinsic evidence  Could not reasonably be expected to have described  Intrinsic evidence o Rebuttal of the presumption: matter of law  3 chances at the doctrine of equivalence  Equivalence unforeseeable o Extrinsic evidence  Tangential amendment o Intrinsic evidence  Language was inadequate to describe invention

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o Johnson & Johnson Associates v. R.E. Service (pg. 719)  When a patentee discloses but does not claim subject matter, the unclaimed matter is in the public domain, and can not be found as infringement under the doctrine of equivalents  Can not use the doctrine of equivalence to recapture disclosed but unclaimed subject matter  Can claim the subject matter via a continuation application o Valmont Industries v. Reike Manufacturing (pg. 723)  Means plus function claim  Limited to what is described in the specifications and their equivalents  For doctrine of equivalents, look at the specification and see if means are equivalent  For a means plus function limitation to read on an accused device, the accused device must employ means identical to or the equivalent of the structures, materials, or acts described in the patent specification  The accused device must also perform the identical function as specified in the claims  The sole question under §112 involves comparison of the structure in the accused device which performs the claimed function to the structure in the specification o SRI International v. Matsushita Electric (pg. 730)  Reverse doctrine of equivalents  Question of fact  Performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim  A device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used in reverse to restrict the claim and defeat the patentee's action for infringement o Autogiro v. US (pg. 737)  Courts do not rework claims; they only interpret them o Dawson Chemical v. Rohm and Haas (pg. 741)  Propanil had no non-infringing use – Contributory Infringement  Induced infringement  Staple article of commerce used in an infringing way  Contributory infringement  Specially adapted for infringing use o Not a staple article of commerce  Propanil constitutes “a material part of the invention,” that it is “especially made or especially adapted for use in an infringement of [the] patent,” and that it is “not a staple article or commodity of commerce suitable for substantial noninfringing use,”  Staple article of commerce used in an infringing way  §271(d) – Limitations on misuse:  It is not misuse to: o (1) derived revenue from acts..; o (2) licensed or authorized another..; o (3) sought to enforce his patent ..; o (4) refused to license ..; or o (5) conditioned the license… 27

o Hewlett-Packard v. Bausch & Lomb (pg. 749)  Proof of actual intent to cause the acts which constitute the infringement is a necessary prerequisite to finding active inducement o Aro Mfg. Co. v. Convertible Top Replacement (pg. 752)  Repair v. Reconstruction  Reconstruction = make a new article = direct infringement  Repair ≠ infringement  Need direct infringement in order to have contributory infringement  If no direct infringement of a patent there can be no contributory infringement  The combination patent covers only the totality of the elements in the claim and that no element, separately viewed, is within the grant  Reconstruction of a patented entity, comprised of unpatented elements, is limited to such a true reconstruction of the entity as to „in fact make a new article o Husky v. R & D Tool & Engineering (pg. 763)  Repair v. Reconstruction  No infringement if the particular part is readily replaceable  The entire patented item is spent, and the alleged infringer reconstructs it to make it useable again  Infringement  A spent part is replaced – permissible repair  No Infringement  A part is not spent but is replaced to enable the machine to perform a different function  No Infringement  A seller of a “material part” of a patented item may be a contributory infringer if he makes a non-staple article that he knows was especially made or especially adapted for use  User of the article must be a direct infringer o BMC Resources, Inc. v. Paymentech (course materials)  Processing debit transactions  To have joint infringement 1 party must control the conduct of the other party  Paymentech does not perform every step of the method at issue  Paymentech would only infringe if the record showed that it directed or controlled the behavior of the financial institutions  No infringement b/c no direction or control; not even a contractual relationship  Direct infringement – strict liability  Indirect (contributory or inducement) infringement – specific intent o Lucent v. Microsoft (part IV of the decision only) (course materials)  To prove infringement of a method claim you have to show the method was carried out  To prove infringement of a methods claim, there must be sufficient evidence that establishes the device is capable of performing the method and that it indeed performs that method  Product-by-process  CAFC internal split: o not limited to product prepared by the process set forth in claims o “process terms in product-by-process claims serve as limitations in determining infringement.” 28

o Microsoft Corp. v. AT & T (course materials)  Master disc sent abroad & copied abroad  Copies installed on computers making them infringing devices  §271(f) – liable as in infringer one who supplies or causes to be supplied in or from the US in uncombined form  At least a substantial portion of the components of a patented invention, or  Any component especially adapted for use in a patented invention and not a staple article or commodity of commerce suitable for substantial noninfringing use  Does not have to be actually combined abroad to have infringement under §271(f)  Golden master are not components under §271(f) – no infringement  Disagreement over the stage at which software becomes a component  “Abstract software code is an idea without physical embodiment, and as such, it does not match 271(f)'s categorization: “components” amenable to “combination.”” o Research In Motion v. NTP (course materials)  Blackberry case  Because a process is nothing more than the sequence of actions of which it is comprised, the use of a process necessarily involves doing or performing each of the steps recited.  To infringe a method claim all the steps of the method must be performed in the US o Monsanto  To infringe a method claim all the steps of the method must be performed during the life of the patent  No infringement because the 1st step of the patented method was performed prior to the issuance of the patent  Performed only once

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 Damages and Remedies (pg. 905 - 965)
o

§284 – Upon finding for the claimant the court shall award the claimant damages adequate to
compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under §154(d) of this title. §287(a) – Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice.  In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice. §292 – Whoever marks upon, or affixes to, or uses in advertising in connection with any article, the words "patent applied for," "patent pending," or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public - Shall be fined not more than $500 for every such offense.  Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States

o

o

o §282 – Presumption of Validity; Defenses  A patent is presumed valid  The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:  (1) Noninfringement, absence of liability for infringement or unenforceability,  (2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,  (3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of §112 or §251 of this title,  (4) Any other fact or act made a defense by this title.  Laches  An equitable defense to a claim for infringement (§282)  2 Elements o Patentee‟s delay in bringing the suit o Infringer materially altered position b/c of delay  A presumption of laches arises where a patentee delays bringing suit for more than 6 years after the date the patentee knew or should have known of the alleged infringer's activity o 6+ year delay in filing suit = Rebuttal presumption of laches o §283 – Injunctions  Permanent injunctions do not automatically issue  4 factor test for permanent injunctions to issue  Patentee suffered an irreparable injury  Remedies available at law are inadequate to compensate for the injury  Considering the balance of hardships between the patentee and the infringer, a remedy in equity is warranted  The public interest would not be disserved by a permanent injunction 30

o §284 – Damages  Adequate to compensate for the infringement, but in no event less than a reasonable royalty  Reasonable royalty  A hypothetical negotiation between the patentee and the infringer at the time infringement began  Georgia Pacific - 15 Factors o Factor 13 – apportionment of damages  The portion of the realizable profit that should be credited to the invention as distinguished from non-patentable elements, the manufacturing process, business risks or significant features or improvements added by the infringer o Entire market value rule  Patented component creates demand for the entire product  Patented & unpatented items function together in some manner to produce a desired end product or result  If the infringer foresaw that infringement would have affected the sale of noninfringing product  Lost profits  “But for” causation  The Panduit test - a patentee must establish: o (1) demand for the patented product; o (2) absence of acceptable non-infringing substitutes; o (3) manufacturing and marketing capability to exploit the demand; and o (4) the amount of the profit it would have made.  Court can award treble damages  Award of enhanced damages requires a showing of willful infringement o Willful infringement  Objective recklessness standard o Willful factors:  (i) deliberately copied;  (ii) investigated the scope of the patent;  (iii) inappropriate behavior in the litigation;  (iv) the infringer's size and financial condition;  (v) the closeness of the issues;  (vi) the duration of the infringer's misconduct;  (vii) any remedial action by the infringer;  (viii) the motivation for continuing; and  (ix) whether the infringer attempted to conceal its misconduct. o §285 – Attorney Fees  In exceptional cases the court can award reasonable attorney fees to the prevailing party o §286 – Time Limitation on Damages  No recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action 31

o §287 – Limitation on Damages; Marking and Notice  In the event of failure to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages maybe recovered only for infringement occurring after such notice  Filing of an action for infringement is notice  Notice does not apply to a process or method o §154(d) – Patentee is entitled to “reasonable royalty” between the date of publication and patent issuance if:  Actual notice  Substantially identical inventions  Action brought not later than 6 years after patent issues o eBay v. Mercexchange (pg. 911)  Permanent injunctions do not automatically issue  Over rule CAFC rule that a permanent injunction automatically issued once infringement and validity has been adjudged  4 factor test for permanent injunctions to issue  Patentee suffered an irreparable injury  Remedies available at law are inadequate to compensate for the injury  Considering the balance of hardships between the patentee and the infringer, a remedy in equity is warranted  The public interest would not be disserved by a permanent injunction o Rite-Hite v. Kelley Company (pg. 916)  Dock levelers  Damages have to be foreseeable  If a particular injury was or should have been reasonably foreseeable by an infringing competitor in the relevant market, broadly defined, that injury is generally compensable absent a persuasive reason to the contrary  Judicial relief cannot redress every conceivable harm that can be traced to an alleged wrongdoing o Remote consequences are not compensable  Heart attack of the inventor  Loss in value of shares of common stock of a patentee corporation caused indirectly by infringement  Compensable damages (if foreseeable):  Price erosion  Service/maintence/parts/consumables of product  Convoy sales  No lost profits for retail sales  Only a reasonable royalty  Whipsaw problem  Whereby an infringer could avoid paying lost profits damages all together by developing a device using a first patented technology to compete with a device that uses a second patented technology and developing a device using the second patented technology to compete with a device that uses the first patented technology

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o Panduit v. Stahlin Bros. Fibre Works  Four-factor test to prove entitlement to lost profits damages. …  A patentee must establish: o (1) demand for the patented product; o (2) absence of acceptable non-infringing substitutes; o (3) manufacturing and marketing capability to exploit the demand; and o (4) the amount of the profit it would have made. o Georgia Pacific (pg. 929)  15 Factors in determining a reasonable royalty  Factor 13 – apportionment of damages o The portion of the realizable profit that should be credited to the invention as distinguished from non-patentable elements, the manufacturing process, business risks or significant features or improvements added by the infringer  Reasonable royalty  The hypothetical negotiation requires the court to envision the terms of a licensing agreement reached as the result of a supposed meeting between the patentee and the infringer at the time infringement began o Cincinnati Car v. New York Rapid Transit (course material)  Articulated subway cars  Apportionment of damages case o Fonar v. GE  Entire market value rule  Patented component creates demand for the entire product  Patented & unpatented items function together in some manner to produce a desired end product or result  If the infringer foresaw that infringement would have affected the sale of noninfringing product o In re Seagate (course materials)  Award of enhanced damages requires a showing of willful infringement  Willful infringement o Objective recklessness standard o Based on discoverable facts not subjective intent o Makes it harder to get enhanced damages  No affirmative obligation to obtain an opinion of counsel in order to oppose a claim of willful infringement o Knorr-Bremse v. Dana Corp. (course materials)  An adverse inference with respect to willful infringement can NOT be drawn if the attorney-client privilege is invoked o Rohm & Haas v. Crystal Chemical (pg. 935)  Attorneys fees  Uncured fraud in the patent office is not an exceptional case  Crystal maintains that this is an exceptional case under §285 because of our holding that the R & H patent in suit was (found on appeal to be) invalid due to uncured “fraud in the patent office” by R & H…”  “we cannot hold that R&H's failure to follow this new standard makes it unjust for Crystal to bear its own counsel fees on this appeal 33

o American Medical Systems v. Medical Engineering (pg. 940)  Must mark item or give notice of infringement in order to collect damages  Marking §287(a)  Damages start when notice was given o Actual notice of the infringement – i.e. complaint o Constructive notice – a substantial number of the patented products are marked  Does not apply to a process or method  §292 – Marking Error  Improperly marking results in a fine of no more than $500 for each product that is not marked correctly o Symbol Technologies v. Lemelson Medical (pg. 959)  Laches  An equitable defense to a claim for infringement (§282)  2 Elements o Patentee‟s delay in bringing the suit o Infringer materially altered position b/c of delay  Delay of 6 years or more o Rebuttal presumption of laches  Shifting the burden of going forward with evidence not the burden of persuasion  Prosecution Laches  Patentee‟s delay in the PTO  §282 – The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:  (1) Noninfringement, absence of liability for infringement or unenforceability,  (2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,  (3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of §112 or §251 of this title,  (4) Any other fact or act made a defense by this title.

 Statute of Limitations
o §286 – Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action o Cuts off damages backwards; limits the time frame for getting damages o Laches cuts off all damages o Statute of limitations v. Laches

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     

§120 – Benefit of earlier filing date in the US (pg. 314) §184 – Secrecy of certain inventions (pg. 350) §111 – Application (pg. 118) §115 – Oath of Applicant (pg. 119) §116 – Inventors (pg. 120) Kunin Power Point Presentation (con’t) o The claimed invention as a whole must produce a useful, concrete and tangible result  Useful = disclosed specific, substantial and credible utility  Concrete = more likely than not the result contemplated by the invention can be reasonable assured  Tangible = embodied in a form that can be measured or analyzed o The claimed invention as a whole need only have practical application, i.e. namely the invention must have practical utility  Real world value and can be used in a manner that provides some immediate benefit to the public o One is not an inventor in the constitutional sense by merely making a discovery  The discovery must be reduced to a practical application by the hand of man o Medical process is patentable o A claim that defines a machine, manufacture, or composition of matter that incidentally includes a human being or body part as a positive element thereof should not be deemed nonstatutory o A claim to tissue that by its broadest reasonable interpretation encompasses the tissue of a human being, even though altered by human intervention and claimed as such, is statutory o Pure sports or exercise moves, couched in terms of a process ostensibly embraced by 35 U.S.C. § 101 are eligible for patenting if they achieve a concrete, useful and tangible result o A game that involves no more than the manipulation of abstract ideas or that has no more than peripheral or nominal connection to technology is not patent eligible o If a claimed teaching or testing method is determined not to yield a practical application then it is not patent eligible o A mere arrangement of printed matter is not patent eligible o A claim otherwise directed to patent eligible subject matter that contains printed matter is not rendered nonstatutory by the fact that it recites a mere arrangement of printed matter o Neither functional descriptive matter nor non-functional descriptive matter is patent eligible by itself  Functional descriptive matter may be patent eligible if tangibly embodied in a computer readable medium so that it can be executed in a computer  Thus a computer program per se is not patent eligible. But when tangibly embodied in a computer readable medium so that it can be executed in a computer, it becomes patent eligible so long as the claimed program produces a useful, tangible, concrete result.  Nonfunctional descriptive matter, even if tangibly embodied and even if readable by a computer, is not patent eligible.  Protection for such creations is provided in the copyright statutes. o Data structures per se are deemed to be abstractions and thus are not statutory. 35

However, like computer programs, they may become patent eligible when tangibly embodied in a computer readable memory o A signal per se is deemed not within one of the four enumerated statutory categories of invention  On the other hand, when a signal is tangibly embodied in a physical medium such as a carrier wave so that it can be read by a computer, it is deemed statutory.  Likewise, signals may be part of a statutory process or apparatus claim. o A process that merely manipulates abstract ideas without achieving a practical application in the technological arts is not patent eligible o If a claimed process appears to manipulate only numbers, abstract concepts, or ideas, or signals representing any of these, then the process is not directed to patent eligible subject matter 



Trade Secrets
o o o o o o o Professor Jorda's "Patents Come and Go - Trade Secrets are Forever" Kewanee Oil v. Bicron E.I DuPont v. Christopher Roton Barrier v. The Stanley Works Pepsico v. Redmond and The Quaker Oats Sperry Rand v. A-T-O Chemithon v. Procter & Gamble

The purpose of the patent law. Textbook, pages 66-91. AND "Cultural Differences Between the U.S. and Japanese Patent Systems" , JPTOS 72(3), 231238(1990). (Helfgott paper posted in "Course Materials" as a .pdf.)

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