Patent Law: Difference between revisions

i. Alexander Milburn v. Davis

1. Statute: person had to be the original and first inventor

2. D: attempted to show that the patent holder was not the inventor

3. I: can the disclosure in the original patent prevent the later patent from claiming the invention?

a. The earlier patent did not claim the invention, just disclosed it in the specification

b. Why did the court hold that the first patent filer deemed to be the first inventor?

4. the inventor is the one who claims the invention

i. Clifford failed to claim, so he was not the inventor

5. Analogies for one failing to file claims

a. If a prior application had been abandoned, that filer was no longer considered the first inventor

i. This situation is analogous to an abandoned patent. Clifford basically abandoned claim to the invention when he failed to claim it in the patent

b. Previous foreign invention that is not patented or published

c. Someone writes a description and puts it in a drawer

i. that person was not diligent

d. Closest analogy: Publication before filing date would bar the later patent

i. Clifford did nothing wrong; he filed as soon as possible, and just had to wait for PTO to publish the patent

6. Current Rule:

a. 102(e)(2): Applicant is entitled to grant of patent unless: invention was described . . . in a patent granted on an application for patent by another filed in the US before the invention by the application for patent . . . .

ii. Agawam Woolen v. Jordan

1. § 102(f):

a. Two requirements:

i. No patent if someone else conceived of the claimed invention; and

ii. That someone else communicated it to the applicant before applicant’s filing/invention date

iii. Mahurkar v. Bard

1. Defendant argued that a catalog activated a §102(a) prior art ban

2. Establishing the Invention date:

a. Date of Reduction to practice (R to P); OR

b. Conception Date + Diligence up to R to P date starting at just before effective date

i. R to P date can either be actual R to P; Or

ii. Constructive R to P (filing date)

iv. In Re Stryker

1. Claim at issue:

a. Main elements claimed:

i. less than propylene left after polymerization

ii. 50-60% polypropylene

2. Harband patent is prior art under §102(e)

a. Main elements claimed:

i. Harband claims: 35%

ii. “nearly perfect” separation

b. Harband is prior art under 102(e)

i. It does not anticipate but is still prior art

ii. Obvious prior art b/c it is obvious to go from 35% to 50-60%

3. Stryker tried to show that his invention date was before Harband’s filing date by affidavit

4. Patent Board rejected affidavit b/c affidavit did not contain the alleged essence of the invention

a. No evidence of percentage limitations of 50 % to60 %

5. Stryker argued that his affidavit only had to relate to what the prior reference (Harband’s patent) disclosed

6. Bottom line: Harband reference can be removed b/c:

a. If Stryker can use his affidavit to get a broader claim, why would he not be able to use it to get a narrower claim?

b. If it is obvious to go from 35% to 50-60%, then it was obvious to go from lacking that 50-60% (In the affidavit) to 50-60%

c. One may be able to establish an invention date even if the prior invention does not meet the limitations of the claim

i. the present invention can be narrower

v. In Re Costello

1. Facts:

a. Dates:

i. Apr. ’71: Costello filed original application

ii. Oct. ’72 abandoned original app

iii. Dec. ’72 Gouldson paper published

iv. Jan ’73 Cereijo app filed

v. Mar ’73 second application filed

vi. Oct. ’75 Cereijo issues

b. Cereijo discloses but does not claim Costello’s subject matter

2. Costello tries to relate 2nd application back to original app under § 120

a. § 120 rules:

i. copendency

ii. reference

iii. requirements of §112

3. Costello successfully swears back invention date prior to coworkers’ paper (which was before Cereijo’s filing date) because coworkers got it from him.

4. Costello cannot show reduction to practice before Cereijo because:

a. at the time, statute prevented him from using actions that occurred out of the country (Canada)

b. Can show reduction to practice using original app, but cannot show diligence

IV. §103 Obviousness

a. Generally:

i. Any prior art could be used to find anticipation (all elements are there) and obviousness. § 102 defines what qualifies as prior art.

ii. Jefferson: the inventor did not have any Lockean natural right to own the invention; rather, the inventor should be incentivized or rewarded for inventing new material by receiving from society the rights to profits arising therefrom.

iii. Are the statutes tailored the best way to meet the objectives of the patent system?

b. Hotchkiss v. Greenwood

i. I: can a patent be given for a device made from a different material than others make it from?

1. The material itself was not new, and was known to those with ordinary skill in the art.

2. “the improvement is the work of the skilful mechanic, not that of the inventor.”

ii. The standard that came from this case that was used for the next 100 years: What the ordinary mechanic knew or understood.

c. Great A. & P. Tea Co. v. Supermarket Equipment Corp.

i. Invention: 3-sided frame

ii. Holding: the aggregation of previously known art is not patentable.

1. If 2 +2 = 4, there is no synergism

2. If 2 +2 =>5, there is synergism and could be patentable

iii. Douglas and Jackson: This is a gadget that is flimsy and spurious.

d. The 1952 Patent Act

i. There were many different court decisions which attempted to define that “inventive” or “unobviousness” requirement

1. “Flash of genius,” “synergism,” “beyond ordinary mechanic,” “flash of inventiveness” etc.

ii. Giles Rich was instrumental in getting § 103 passed

iii. The Act replaced all previous decisions and replaced with: “Obvious to one of ordinary skill in the art”

iv. Last sentence of § 103: “Patentability shall not be negatived by the manner in which the invention was made”

1. Got rid of “Flash of genius” decisions

v. “subject matter as a whole would have been obvious...”

1. Don’t look at each parts, but at the sum of the parts

vi. First case to come to the Supreme Court was 16 years after effect of the Patent Act of 1952 – “The Trilogy”

e. Graham v. John Deere Co.

i. J. Clark said that § 103 was only there to codify previous decisions, not to change the law.

ii. Validity is a question of law, but a famous formula: (most oft quoted passage):

1. certain factual inquires need to be satisfied:

a. Scope and Content of prior art

b. Difference between prior art and claims at issue

c. level of ordinary skill in the pertinent art

2. Relevant Secondary Considerations:

a. commercial success

b. Long-felt but unresolved need

c. failure of others

f. Cook Chemical

i. The patent at issue was only different in that it was designed for the lid to not touch the top of the bottle- there was a small space between the hold-down cap and the container cap

1. the invention was that the hold-down cap could be tightened a lot without touching the container cap

ii. The critical factor in the patent as issue was the sealing gasket, and was obviously similar to prior art features.

g. US v. Adams

i. Adams beat prior art by arguing that no prior art suggested combining the various types of electrodes

ii. Case is a classic example of A+B+C

1. No prior art showed a combination of A, B, or C.

2. The result was surprising and unexpected, so the result was more than the sum of the parts

h. Decisions on Obviousness:

i. Who has the burden?

1. Patent examiner must come forward with prima facie evidence of obviousness, after which

2. Patentee rebuts the prima facie case of obviousness

ii. Factual Questions re: obviousness

1. Judge can decide those factual questions, or can send them to a jury

a. If a jury reaches a factual finding, and there is substantial findings that supports that finding, the judge must abide by that finding

b. On appeal, standard of review is clear error

iii. Obviousness itself is a question of law, which appellate court reviews de novo

i. Hypothetical:

i. A genus is disclosed, and in that genus is a small species that gives surprising results. Is that genus patentable in light of the prior art?

1. If the species is superior over the rest of the genus, it may be patentable

j. Standards of obviousness from Fed. Cir. are under attack

i. Current standard:

1. Teaching, Motivation, or suggestion (T M S) to combine prior art must all be present (in addition to all elements)

2. D. Ct. must have a clear finding that there is a T M or S to combine

ii. Example: KSR international v. Teleflex

1. brief that argues before the S. Ct. that standards must be tightened for obviousness determinations

2. Fed. Cir. #: 04-1350

3. Solicitor General will submit a brief, and then could make a decision

4. Current case to follow in determining obviousness standards

iii. Debate today: are standards of patentability too low?

1. Anti-trust organizations argue that too many patents do not stimulate the economy but hamper it

k. In Re Rouffet

i. Current Patent:

1. low-earth orbit (non geo-synchronous) satellites transmitting fan-shaped beam

2. Claims:

a. low-earth orbit satellite

b. plurality of fan beams

c. axis of beams aligned with movement of satellite

i. This is different b/c the transmission of the satellite aligns with movement of the satellite rather than alignment of ground antenna to satellite

1. But the difference is an obvious one

ii. Prior art references:

1. King:

a. Teaches that low-earth orbit satellites are not new

2. Rosen:

a. Teaches the use of geo-synchronous satellites transmitting in fan-shaped beams

3. Ruddy:

a. Molniya orbit (always follows the same path through the sky when viewed from a fixed point – narrow elliptical apogee loop)

iii. Analysis:

1. Law requires that there be a Teaching, Motivation, or Suggestion (T M S) to combine prior art must all be present (in addition to all elements)

2. Factors from which the TMS may flow:

a. nature of the problem to be solved

b. teaching of the prior art

c. knowledge of persons of ordinary skill in the art

i. who is the person of ordinary skill?

1. Usually the court will determine what educational level that person would have

a. for example court would determine what classes the person took to obtain that education, and look at the texts that person would have read for those classes, etc.

d. Specific understanding or teaching principle

3. Existence of a TMS is a question of fact, even though obviousness determination is a question of law

a. The question of law is: is the TMS strong enough to make the combination obvious or not?

4. Application:

a. The court wanted a specific example of TMS

b. The Ps argued that the person of ordinary skill in the art is really smart, so that they would have figured it out themselves.

c. There was nothing that specifically gave a TMS

l. Hybritech v. Monoclonal

i. What claimed:

1. sandwich assay

a. labeled antibody

b. antigen

c. second antibody bound to a solid insoluble carrier

2. Monoclonal antibodies

a. purified antibodies

3. affinity of antibodies > 108 L/mol

ii. Prior Art

1. K&M

a. easy way to make monoclonal antibodies

i. monoclonal antibodies are not new (discovered 3 years before)

2. 2nd group of lit. and patents – CJPS

a. using polyclonal antibodies in sandwich assays

3. Eight other articles

a. 4 discussed  advantages of monoclonal antibodies – but did not mention monoclonal assays

b. Other 4 references are not prior art b/c invented after filing date

i. Always check- is it really prior art?

iii. Bench trial at D Ct.

1. claim is obvious in light of prior art

a. objective considerations by court:

i. independent development at about the same time

1. shows that invention could be obvious

a. used as a consideration, but may not have strong probative value

ii. D Ct. explained away other objective considerations

1. economic success came because of a large amount of marketing

2. long felt need & unexpected value – court did not really consider this

iv. D’s argument: everybody knew that a monoclonal antibody would be better, P just cam along and did it

1. Fed Court said: there was no TMS anywhere in prior art that present invention could not be done

2. Nobody combined K&M’s monoclonal invention with sandwich assay for three years, if it was that profitable and obvious, why did no one do it?

3. Also, claim requirement of affinity > 108 L/mol. Apparently this was not found in prior art

m. Richardson-Vicks v. The Upjohn Co.

i. Claims of patent in question

1. Claim 36:

a. combination of ibuprofen (I) and pseudoephedrine (PDE) range of ratios from 1.5 to 1 – 8 to 1

2. Claim 37

a. 200 mg Ibu

b. 30 mg PDE

3. Claim 47 & 48

a. method of using components of claims 36 & 37 in “combinatory immixture”

ii. Prior Art:

1. Cotylenol

a. acetaminophen

b. PDE

c. single unit dosage

2. aspirin & PDE

3. Doctors prescription

a. I

b. PDE

c. separate pills, prescribed together

iii. Differences between prior art and claims

1. Cotylenol

a. claims use I instead of acetaminophen

b. prior art used separate tablets, not  

2. aspirin and PDE

a. claims I instead

b. “combinatory immixture”

3. Doctor’s prescriptions

a. single unit dosage instead of “combinatory immixture”

iv. P’s arguments

1. Secondary considerations

a. combination of drugs gave “synergistic effect” when combined in a table – gave unexpected results

b. commercial success

c. skepticism that would not be functional

d. Prior art taught away – taught that I induces congestion

v. PH: jury said not obvious, judge gave a JMOL – b/c it was a question of law, the judge ruled it de novo.

1. B/c there was underlying questions of fact, those are reviewed for substantial evidence – reasonable jury test

a. underlying questions of facts = secondary considerations, are they strong enough to evidence nonobviousness

i. level of ordinary skill is a question of fact

vi. Analysis:

1. Cir. Ct. did not know what the jury thought as to each individual question of fact, so it had to assume that the jury found each element of fact

2. Then the Cir court had to review if there was substantial evidence to support those findings

a. There was substantial evidence that secondary considerations were as the jury found them, but these were only secondary considerations. Cir Cout still found obviousness

3. There were other motivations that led to the combination of the components

a. FDA approvals motivated to use low-dosage ibuprofen in over the counter, which led many in the industry to believe that ibuprofen would replace acetaminophen and aspirin as preferred analgesic b/c I was known to be more effective pain reliever and produced less bad side-effects

b. Cotylenol – motivation to go to a single unit dosage

V. Relationship between §102 and § 103

a. Foster

i. Facts:

1. argued that his date of invention was before prior art

a. To prove invention date:

i. conception + diligence or

ii. reduction to practice

b. This didn’t work because filing date was more than 1 year after publication date, so he was barred by that

ii. P tried to argue §103:

1. “obvious at the time the invention was made”

2. Foster argued that the time the invention was made was before the prior art articles, so it was not obvious at that time

3. Reasons court did not take this argument:

a. Foster waited too long to file.

b. Originally, §§102 & 103 were both in the same §. The references would have been allowable as prior art to determine obviousness, so they are now even thought the two sections are divided from each other

b. Hazeltine Research v. Brenner

i. Facts:

1. First app, when combined with another app, renders patent at issue obvious

ii. I:

1. Does the application for patent that is pending at the time a later patent application is filed count as prior art?

iii. Patentee’s argument: prior application is not prior art because it is not known

1. Court: patent application becomes prior art at the time of filing (from Millburn)  

2. Prior patent become prior art upon the publication date, but when it becomes prior art, it is considered prior art as of its filing date

c. How to determine if something is prior art:

i. Questions to ask to determine kinds of prior art:

1. What?

2. When?

3. In What Form?

4. Where?

5. Who?

ii. (102(a) prior art):

1. the claimed invention

2. before app’s invention date

3. known or used

4. in US

5. by others

iii. (102(a) prior art):

1. the claimed invention

2. before app’s invention date

3. printed publication

4. anywhere

5. by another

iv. (102(b) prior art):

1. the claimed invention

2. more than one year before app’s filing date

3. something on sale or in public

4. in US

5. by anyone

v. (102(e) prior art):

1. the claimed invention or any prior art for obviousness

2. filing of prior application occurs before invention date

3. published or issued US patent application

4. filed in US

5. by another

vi. 102(g) prior art:

1. the claimed invention or any prior art for obviousness

2. Before applicant’s invention date

a. determined:

i. conception w/ diligence or

ii. reduction to practice

1. actual

2. constructive (filed application)

3. Actually reduced to practice (constructed)

a. IF: not abandoned, suppressed, or concealed

4. in US

5. by another

vii. 102(f) prior art:

1. claimed invention or any prior art for obviousness

2. before invention of application

3. any subject matter communicated to applicant

4. anywhere

5. by another

d. In Re Bass

i. Facts:

1. inventor J filed prior art 10/64

2. inventors B & H filed prior art 8/65

3. inventors B, J, & H filed on Oct 11, 1965

a. latest patent included improvements, but was only a combination (obvious) in light of same inventors’ prior patents

ii. requirement for “another”:

1. same inventors, but different entity:

a. B, J, & H are different inventive entity than B & H, etc.

2. “another” compares each inventive entity – must be identical.

iii. swearing back: if inventors could successfully swear back to before other filing dates, the patent are removed as prior art

iv. 102(g): can prior inventions that are still secret be prior art even if they are not known?

1. Yes, they are considered prior art upon becoming public, and when they do become public, they are considered prior art as of the effective date

v. Aftermath:

1. Congress passed amendment b/c didn’t like the result of people working for same company being precluded

a. §103(c): subject matter developed by another person which qualifies as prior art only under one or more of (e), (f), or (g) of § 102 shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by he same person or subject to an obligation of assignment to the same person.

i. If a references qualifies as prior art under just 102(e), (f), or (g) and could make patent at issue obvious, cannot be considered as prior art

vi. Hypothetical from Hazleton:

1. what if later prior art patent were owned by same applicant?

a. analysis:

i. 102(a): no bar b/c filing date (assumed invention date) was before “known or used” of later prior art patent

e. Oddzon Products, Inc. v. Just Toys, Inc

i. Facts:

1. Oddzon holds a design patent

ii. Defense argued:

1. Patent was invalid b/c applicant had received confidential designs for a similar product, and the patent was obvious in light of those two designs

a. If confidential designs were identical to patent at issue, 102(f) would apply for non-inventor

iii. I: are confidential designs obvious prior art?

iv. P’s argument:

1. the confidential designs would never become publicly known

2. No public knowledge b/c not prior art

v. Holding:

1. confidential designs were prior art for obviousness purposes b/c:

a. 103(c) says that prior art under 102(f) might not be prior art under other circumstances (103(c) is an exception) which implies that there must be cases where it is still prior art even though not public for 102(a), 102(b) purposes.

f. In Re Clay

i. READ

ii. analogous art

VI. § 112 Specification

a. Generally

i. Three requirements:

1. written description

2. enablement

3. best mode

ii. § 112 has more recently become a common hurdle to many patent drafters

iii. US is the only country to include a “best mode” requirement

1. proposed amendments would do away with the best mode requirement

b. Enablement

i. Gould v. Hellwarth

1. Issue: does Gould’s patent meet the enablement requirement?

2. The problem with the patent:

a. Patent did not detail how to build a helium-cesium laser (at least had not done so at the filing time) and did not include operating procedures for that type of laser, but just his “Q switch,” and it was not known in the art how to build a laser at the time of filing

b. Helium-cesium laser had not been reduced to practice until 1962

ii. Genetech

1. A “germ of an idea” is not enough to fulfill enablement

iii. Atlas v. DuPont

1. Prophetic examples:

a. The patent can hold a “prophetic example” to show how maybe to make the invention

b. When a patent holds a prophetic example, the party contesting validity of the patent has the burden to show, by clear and convincing evidence, that the prophetic examples together with other parts of the specification are not enabling.

c. If the prophetic examples are mostly operative, they will fulfill enablement

i. If a few do not work, that alone will not preclude patentability

d. Current Law re: prophetic examples:

i. Now, it must be clear that the examples have not actually been practices

1. don’t use past tense

iv. Vas-Cath Inc. Mahurkar

1. Facts:

a. Plaintiff’s original patent was a design patent

b. P tried to file a continuation from design patent for utility patent

2. Issue:

a. Can the design patent fulfill the §112 requirements?

3. Principle reason for written description:

a. Explain how to make and use

b. show limits of invention claimed to the public

4. Important case for § 112

v. Gentry Gallery v. Berkline Corp.

1. Outcome:

a. patent was invalid because there was no written description of the invention

i. the invention was to put the controls in the center console, and the claim does not say anything about where the control would be

ii. So, even though the accused product infringed the claim, the claim was invalidated because it did not claim what was in the specification

2. Rule: claims cannot be broader than the written description

vi. University of Rochester v. G.D. Searle & Co.

1. Facts:

a. Patent claimed a method that included the use of a “non-steroidal anti-inflammatory device that selectively inhibits activity of the PGHS-2 gene”

b. Claims nor description did not disclose such a compound, nor provide any suggestion on how to make such a compound other than trial and error

2. Issue:

a. does the lack of description of the NAID invalidate the patent?

3. Outcome:

a. There was no description because there was only a “germ of an idea”

4. Written description requirement:

a. purposes

i. Show how to make and use invention

ii. ensure scope is not unduly larger than actual invention by patentee

5. Policy:

a. If the patent does not actually show the public how to use and what is the invention, there is no quid pro quo.

6. § 112 requirements:

a. three:

i. Written description

ii. enablement

iii. best mode

b. “although there is often significant overlap between the three requirements, they are nonetheless independent of each other”

7. How to enable an invention without describing the invention:

a. have obvious variants of the invention that only use different starting materials

vii. Barker

1. not talked about in class

VII. Utility

a. Generally:

i. Statutes:

1. § 101 requires that the invention has utility

2. § 112 requires that the specification describes in sufficient detail the utility

ii. Why is Utility a requirement?

1. It is in the constitution

2. Quid pro quo – you need to give some utility to the public

3.

b. Lowell v. Lewis

i. Patent statute language: “useful invention”

ii. Definition of Useful:

1. helpful or “useful” to public

2. Is not:

a. Mischevious, frivolous, or injurious to the public

b. more useful or better than other inventions, can be just as good

c. Brenner v. Manson

i. Facts:

1. Manson’s patent for a process for making a steroid was turned down because others had already received a process on essentially the same process

2. Manson wanted an interference declared against the prior patent but the PTO simply turns down his patent because of lack of utility of the product, which indicates that the process has no utility

3. Manson points toward an article that indicates than a similar steroid (a homologue) has utility

4. Manson also argues that his process is useful b/c it creates a product

ii. Standard:

1. As long as the process is useful for creating a product, and that product is not detrimental to the public interest, that process has utility

2. Previously, the standard (from Nelson) for utility was: useful to chemists

3. The standard from Bremner was: use for the product must be known

iii. Holding:

1. SC deferred to the examiner’s findings of non-utility, they did not want to overturn a finding of fact

2. There was not utility because it was not the exact same product as the one in the article

3. What was the court looking for (new standard of Utility):

a. “Specific benefit exists in currently available form”

i. ex: “we don’t know how to use the product, so it is not useful”

d. Brana

i. Issues:

1. Applicant must allege utility

a. Tumor models were similar enough to count

2. Applicant must prove utility

a. PTO has the burden of showing a “reason to doubt” that there is utility

i. Show reason to doubt  

ii. If it works in mice, that is reason enough to have utility

b. Curing tumors in mice is utility enough

e. Juicy Whip v. Orange Bang

i. I:

1. Is the fake pre-mix juice dispenser unpatentable due to deception?

ii. What would the court strike down?

1. unlawful deception

iii. Rule:

1. There is no clause in patent statute that exempts deceptive inventions from patentability

35 U.S.C. §271

o Does not change the idea that you must make before you can sell something

• Adams v. Burke

o original inventors assigned patent w/in 10 miles of Boston

o inventors assigned remained of patent rights

o Issue: If Burke is using the patented invention during the patent term, and within the territorial limits of the patent rights, why is he not infringing?

 Statute language that gives Burke license to use the invention:

• Whoever... w/out authority

 Burke had authority to use invention b/c bought it from licensed seller

o What did Adams get from this transaction?

 One could argue that what he got was a lower price for his assignment of the patent

o Policy: More competition benefits the public, so pitting inventors (and common patent owners) against each other helps the public

o Implied license:

• Markman v. Westview Instruments

o Facts

 Language at issue of the patent:

• “inventory control system”

• “maintain an inventory total”

• “detect and localize spurious additions to inventory”

 D argued that inventory only included articles and clothing

 P argued that inventory also included cash or inventory receipts

o PH: Jury was given instructions to determine meaning of the claim language

 Jury found broad definition, so found infringement

 Judge reversed as a JMOL

 Jury also had specification to examine

 Markman used extrinsic evidence (expert testimony) to establish the meaning of the term

o Question of law:

 Jury does not determine the claim meaning, it is a question of law to be determined by the judge

 reviewed de novo on appeal

o Claim construction:

 What question are we trying to answer?

• How the inventor used the term in the intrinsic evidence, and if intrinsic evidence does not establish that meaning, how would a person of ordinary skill in the art at the time of filing would ascribe to the term?

 Things that are relevant to construe the claims: