Patent Law: Difference between revisions

Latest revision as of 03:15, October 11, 2023

I. History and Architecture of the Patent System[edit | edit source]

A. History[edit | edit source]

1. Italian Renaissance

Republic of Florence and Filippo Brunelleschi
Private guild rules
Venetian patent statute of 1474
- Quid pro quo
- Utility
- Operability
- Reduced to practice
- Novelty
- Non-obviousness
- Infringement == same or similar
- Temporal limit on exclusive right
- Damages
- Destruction of infringing device

2. English patent policy and the Statute of Monopolies

Abusive use of patents
- Patents on vinegar, starch, playing cards
- Queen Elizabeth I and King James I
Statute of Monopolies
- Parliament passed in 1624
- Exception provided for “any manner of new manufacture”
- Development of the “specification” – “consideration” for the patent grant

3. The American experience

Several colonies granted patents
Articles of Confederation left the power to issue patents to the states
Constitutional Convention
- James Madison and Charles Pickney
- Passed the “IP Clause” with little recorded discussion or dispute
Patent Act of 1790
- Signed into law by Washington
- Examination of applications, not a registration system
- Commissioners for the Promotion of Useful Arts
  - Sec. of State, Jefferson
  - Sec. of War, Henry Knox
  - Atty. General, Edmund Randolph
- First US Patent – “Making potash and pearl ash by a new apparatus and process”
Patent Act of 1793
- Registration system
- Introduced public-use and on-sale bars
- Defined statutory subject matter categories
- Resulted in fraudulent and duplicative patents
- “Patent thicket”
Patent Act of 1836
- First modern patent statute
- Created the Patent Office
- Created position of Commissioner of Patents
- Reinstituted examination process
- Created the present-day numbering system
- Codified practice of using patent claims
- Last act to require disclosure of models
Patent Act of 1870
- Emphasized importance of patent claims
- Public notice function
  - Used to determine infringement by comparing the claim with the accsed product or method
  - Used to determine validity by comparing claim with prior art
Supreme Court treatment of patents
- Treated favorably from 1890 to 1930
- Monopolistic and social cost aspects emphasized from 1930 to 1950
- Doctrinal decisions
  - Expanded patent misuse doctrine
  - Eliminated ability to draft claims to products by describing their function
  - Created a “flash of genius” test for invention
  - Cast doubt on ability to patent “combination” inventions by requiring display of synergy
Patent Act of 1952
- Overturned expanded patent misuse doctrine
- Overturned elimination of ability to draft claims to products by describing their function
- Overturned “flash of genius” and synergy tests by focusing instead on non-obviousness
- One of the primary drafters was Giles S. Rich, later a Circuit Judge of the Federal Circuit
Regional court treatment of patents
- Widely diverging treatment of patents between 1950 and 1982
- Resulted in forum shopping
Creation of the US Court of Appeals for the Federal Circuit in 1982
- To unify patent law, eliminate forum shopping, and stimulate the economy
- Located in DC
- Hears appeals from rejections of patent applications by USPTO
- Hears appeals from judgments in patent cases filed in district courts, the Court of Federal Claims, and the International Trade Commission
Leahy-Smith America Invents Act (AIA)
- Passed in 2011, but various effective dates of changes
- Most significant changes to US patent law since 1952
- Converts US from first-to-invent to first-to-file system

B. Economics[edit | edit source]

Information is a public good

Non-rivalrous consumption – use by one person does not reduce the amount available for consumption by others
Non-excludability – once disclosed, use by anyone is difficult to prevent except through special legal institutions, but disclosure is often necessary to use the information
Free-rider problem
- Intangible information is easy go copy
- Difficult for discoverer to obtain return on investment
- Result that information will be under-produced or not produced
Solutions
- Government subsidies
- Government provision of services using tax revenue
- Government enforced private property rights
Costs of patent system
- Temporary higher prices
- Temporary reduced output
- Temporary reduced access
Benefits of patent law
- Increased invention – may allow inventors to recoup costs of research and development through supra-competitive prices
- Increased disclosure
  - To obtain private property right, the applicant must comply with disclosure requirements
  - Allows competitors to improve upon inventions
  - Positive result when compared to trade secret protection
- Increased innovation
  - Increases likelihood of use of inventions in commercialized products
  - Serves as signaling tool to cause exclusive right to end up in hands of most efficient market actor
Continued debate over actuality of benefits and cost-benefit analysis
- Reputational, monetary incentives to invent, disclose, and innovate
- Wasteful, winner-takes-all patent races
- Excessive rent-seeking
- Whether disclosure requirements adequate
- No requirement to commercialize inventions
- “Although there are powerful economic reasons in favor of creating property rights in inventions, there are also considerable social costs and whether the benefits exceed the costs is impossible to answer with confidence on the basis of present knowledge.” – William M. Landes & Richard A. Posner, The Economic Structure of Intellectual Property Law (2003) at 310.

C. Patent Document[edit | edit source]

Example of a patent – Hall’s Pizza Box

Cover page
Figures
Background
Summary of invention
Description of the figures
Detailed description
Claims
Appendix

Claim drafting – most difficult task

Describes an invention using words
Captures the novel and non-obvious features
Avoid the prior art
Include definite (clear) language

D. Process for Obtaining Rights[edit | edit source]

Applications

Provisional applications (reserve the filing date)
Non-provisional applications (within one year of provisional)
Specification – written description
Claims – metes and bounds of legal right, used to compare to prior art and to accused product or process
Examination of applications
- Subject matter requirement
- Utility requirement
- Disclosure requirements
- “Prior art” searches
  - Novelty
  - Non-obviousness
- Office Actions
  - First office actions typically issue within two to three years of filing
  - Allow, reject, or object to claims on individual basis
- Responses
  - Also called amendments, but may or may not amend the claims
  - Concedes points or makes arguments if disagreement
- Final Office Actions
  - At least one claim is still not in condition for allowance
  - Applicant’s options:
    - Abandon
    - File request for continued examination (RCE)
    - File continuation application
    - File continuation-in-part application
    - Appeal
- Notice of allowance – no pending rejections or objections
- Issuance – to inventors, except in limited circumstances
Quality is a real concern
- Time constraints placed on examiners
- Limited resources and information available to examiners
- High-volume patent strategies by applicants
- Persistence by applicants
- Difficulty applying patentability requirements
- Volume of patent applications
  - Steep increase since 2000
  - Large volume of applications
  - Potential reasons:
    - Increasing understanding of value of patents and particularly high volume patent portfolio
    - Difficulty gauging commercial potential early in the process
    - Strengthening of patent rights by Federal Circuit
    - Congressional schemes incentivizing patent filings
    - Tool to attract venture capital funding
    - Use as a signaling tool
    - Increase in research productivity
    - Block competitors and enhance bargaining power
- Cost of obtaining patent rights
  - Increasing steadily
  - In 2014, median attorney’s fees for preparing a utility patent were $7k to $10,250
  - Cost for prosecuting a filed application to issuance can easily add anywhere from $3k for a simple first office action allowance to $30k for two responses, an RCE, two more responses, and an in-office appeal
Patent attorneys versus patent agents
- Agents must pass the patent bar exam, which requires certain educational requirements
- Attorneys do not need to pass the patent bar exam to litigate, but it does make it easier

II. Eligible Subject Matter[edit | edit source]

35 USC § 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.”

Five statutory categories, with the understanding that “anything under the sun made by man”:

Process
Machine
Manufacture
Composition of matter
Any new and useful improvement thereof

Three judicially created exceptions:

Laws of nature (Mayo) – requires inventive concept
Physical phenomena (Myriad) – requires “act of invention”
Abstract ideas (Alice)

Diamond v. Chakrabarty

S.Ct. 1980, p. 162

RULE: While natural laws, physical phenomena, abstract ideas, or newly discovered minerals are not patentable, a live artificially-engineered microorganism is. Test asked whether the claimed invention was “made by man” in the sense of having “markedly different characteristics” as compared by nature.

Mayo Collaborative Services v. Prometheus Laboratories, Inc.

S.Ct. 2012, p. 172

RULE: You cannot patent laws of nature or pure applications of laws of nature – there must be sufficient additions/transformations beyond a restatement of the laws. Test asks whether the claimed invention includes an “inventive concept.” Very unpopular opinion, conflates eligibility with novelty and non-obviousness.

Association for Molecular Pathology v. Myriad Genetics, Inc.

S.Ct. 2013, p. 186

RULE: Test asks whether the claimed invention includes an “act of invention” in what is not naturally occurring.

Bilski v. Kappos

S.Ct. 2010

RULE: “Machine or transformation” test is not exclusive test for determining eligibility, but a useful and important clue. Implicit rejection of old Fed. Cir. “useful, concrete, and tangible result” test.

Alice Corp. Pty. v. CLS Bank Int’l

S.Ct. 2014, p. 213

RULE: Two-step analysis: (1) Is the claim directed towards an abstract concept? (2) Is there an inventive concept therein (an element sufficient to ensure that the patent in practice amounts to significantly more than a patent on the concept itself)? Has resulted in only a handful of cases finding no invalidity, lots of claims invalidated.

III. Utility[edit | edit source]

35 U.S.C. § 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.”

In re Schwartz

Fed. Cir. 2000, p. 233

RULE: Initial burden is on USPTO to prove applicant has not met requirements. Applicant must then disprove their conclusion.

Operability – claimed invention must be “operable.” Must work, do what the claim says, though doesn’t have to work perfectly or better than prior art did.

Non-deception – “one as may be applied to some beneficial use in society.” Not modern law after Juicy Whip.

Brenner v. Manson

S.Ct. 1996, p. 236

RULE: Operability and a substantial and specific utility are required. “Substantial” means having a real world use, significant and presently available benefit to the public – may prove useful at some future date after future research. “Specific” means not so vague as to be useless, well defined and particular benefit, and benefit specific to the subject matter to be claimed.

Note on design patents: protect new, original, and ornamental features. Only one claim: “Ornamental design for a _____ as in figure X.” Infringement test: ordinary user test in light of differences between patented design and prior art. Same test for validity.

IV. Claiming and Disclosing the Invention[edit | edit source]

35 USC § 112(b): “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

A. Claim Interpretation[edit | edit source]

Phillips v. AWH Corp.

Fed. Cir. 2005, p. 63

RULE: Intrinsic evidence includes the claim itself, the other claims (presumption of consistent use, claim differentiation), specification (“always highly relevant,” “usually, it is dispositive,” “single best guide to the meaning of a disputed term,” lexicography, disclaimers or disavowals), and the prosecution history (“because represents ongoing negotiation, it often lacks the clarity of the specification and is less useful”). Extrinsic evidence includes dictionaries and treatises, expert testimony, and inventor testimony. It’s considered less reliable than intrinsic evidence and is “unlikely to result in a reliable interpretation unless considered in context of intrinsic evidence.”

Interpreting the claim in the light of the spec == good.

Importing limitations from spec to claim == bad.

Canons of construction:

Claims should be construed to sustain validity, though Phillips limited this to situations where claims remain ambiguous after using all available tools
Notice function is best served by adopting narrower meaning of claims

Unique Concepts, Inc. v. Brown

Fed. Cir. 1991, p. 79

RULE: “All elements rule” – to prove infringement, every element in the claim must be found in the accused device either literally or equivalently.

Import-export rule: it is improper to import/read in a limitation from the written description and improper to eliminate or ignore (export) a limitation in order to extend a patent to subject matter disclosed but not claimed.

Role of patented device and accused device:

Claims aren’t to be construed by reference to the patented device; claims define the patent right, not the commercial product of the patentee
Claims are not to be construed by reference to accused device, but courts are permitted to have knowledge of the accused device to provide context for claim construction.

Claim differentiation doctrine – limitations in a dependent claim cannot be read into the language of the independent claim; independent claim must be broader than dependent.

35 USC § 112: “(a) 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 or joint inventor of carrying out the invention. (b) The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”

B. Enablement[edit | edit source]

Purpose: information dissemination and constraining claim scope to ensure patent right does not exceed the scope of the disclosure

Test: whether the specification enables a person having ordinary skill in the art to make and use the claimed invention without undue experimentation.

O’Reilly v. Morse

S.Ct. 1854, p. 92

RULE: Spec must enable one of skill in the art to make and use the claimed invention without undue experimentation.

Consolidated Electric Light Co. v. McKeesport Light Co.

S.Ct. 1895, p. 96

RULE: “If the description be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void.”

Commensurability – optimize claim scope by limiting to disclosure.

Genus-species claims: genus sometimes allowed, but more species disclosed the better.

Cedarapids, Inc. v. Nordberg, Inc.

Fed. Cir. 1997, p. 114

RULE: In mechanical as opposed to chemical arts, a broad claim can be enabled by disclosure of a single embodiment. All that is required is that the amount of experimentation must not be unduly extensive.

Automotive Tech. Int’l, Inc. v. BMW of North Am., Inc.

Fed. Cir. 2007, p. 116

RULE: Specification must enable the full scope of the invention, especially the novel aspect. Spec does not have to disclose what is well known in the art. Enablement is measured at the time of filing.

Undue experimentation factors:

Quantity of experimentation necessary
Amount of discretion or guidance presented
Presence or absence of working examples
Nature of the invention
State of the prior art
Relative skill of those in the art
Predictability or lack thereof in field
Breadth of claims

C. Written Description[edit | edit source]

35 USC § 112(a): “The specification shall contain a written description of the invention . . .”

Ariad Pharma., Inc. v. Eli Lilly & Co.

Fed. Cir. 2010, p. 127

RULE: Test is whether the specification clearly allows persons of ordinary skill in the art to recognize that the inventor invented what is claimed. Test is “possession as shown in the disclosure.”

New Matter – corollary to written description, new matter is prohibited. Matter that does not find support in original spec. CIP applications are proper instead.

Gentry Gallery, Inc. v. Berkline Corp.

Fed. Cir. 1998, p. 139

RULE: You are limited to what you include in the disclosure as what you possess.

D. Best Mode[edit | edit source]

35 USC § 112(a): “The specification . . . shall set forth the best mode contemplated by the inventor of carrying out his invention.”

Not enforceable in litigation under AIA, but still determined by patent office
Subjective element: is inventor aware of a best mode?
Objective element: if so, from the perspective of an objective third party person having ordinary skill in the art, is it disclosed in the patent spec?

E. Definiteness[edit | edit source]

35 USC § 112(b): “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

Nautilus, Inc. v. Biosig Instruments, Inc.

S.Ct. 2014, p. 144

RULE: Test: “reasonable certainty” as to the scope of the claim from the perspective of people of ordinary skill in the art at the time of filing. Spec and prosecution history are relevant.

Means-plus-function limitations: when directed to software, the limitations are indefinite when the spec has not included sufficient “corresponding structure” in the form of an algorithm for performing a function recited in the limitation.

V. Novelty[edit | edit source]

A. 35 USC § 102(a)[edit | edit source]

§ 102(a) – “A person shall be entitled to a patent unless . . . 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.”

Two comparisons:

Content of prior art versus the claim at issue
Effective date of prior art versus date of invention for particular claim

Atlas Powder Co. v. Ireco Inc.

Fed. Cir. 1999, p. 247

RULE: Anticipation requires each element of the claim at issue to be present expressly or inherently in a single prior art reference.

Anticipation: each element of the claim at issue must be disclosed expressly or inherently in a single prior art reference. The prior art must include an “enabling disclosure” so that one of skill in the art can make and use the invention based on the prior art. The elements of the claimed invention must be arranged in the prior art as in the claims, not just disclosed in the prior art.

Inherency: The element not expressly disclosed must necessarily be present or inevitably flow from the prior art reference or be the natural result of using the prior art. Just because the missing element is one of several ways a person of ordinary skill in the art could use a disclosed device, for example, is insufficient.

1. Knowledge or Use in US[edit | edit source]

Compare date of invention with date known or used by others in the US. Publicity requirement is met by public use without efforts to maintain secrecy.

Gayler v. Wilder

S.Ct. 1980, p. 256

RULE: Private use of an invention does not render a patent non-novel, the use must be public.

Rosaire v. Baroid Sales Div.

5th Cir. 1955, p. 258

RULE: Public use doesn’t have to be informing, just without attempts at secrecy.

2. Patented Anywhere[edit | edit source]

35 USC § 102(a): “. . . patented in this or a foreign country . . .”

Key question: did the prior patent issue before the invention date of the applicant?

Everything disclosed in the prior art patent qualifies, not just the claims.

3. Printed Publication Anywhere[edit | edit source]

Public accessibility is key. Factors:

Distribution and indexing
Length of time the display was exhibited
Expertise of target audience
Existence or lack of reasonable expectations that the material displayed would not be copied
Ease with which the material could have been copied

In re Klopfenstein

Fed. Cir. 2004, p. 292

RULE: Physical printing or publication is not required. Key consideration is the public accessibility.

B. 35 USC § 102(e)[edit | edit source]

35 USC § 102(e): “. . . the invention was described in (1) an application for patent, published under § 122(b), by another filed in the US before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the US before the invention by the applicant for the patent . . . “

Published US applications qualify as prior art as of their filing date (issuance date for 102(a))
Issued US patents qualify as prior art as of their filing date, not publication or issue date.

Alexander Milburn Co. v. Davis-Bournonville Co.

S.Ct. 1926, p. 268

RULE: Issuance of a patent qualifies it as prior art as of its filing date, including all contents (not just claims).

C. 35 USC § 102(g)[edit | edit source]

35 USC § 102(g): “. . . before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.” “In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.”

Thompson, SA v. Quixote Corp.

Fed. Cir. 1999, p. 273

RULE: Corroboration is required when the testifying inventor is asserting a claim of derivation or priority of invention and is a named party/employee of assignor to named party/otherwise in a position where they stand to substantially and directly gain by his or her invention being found to have priority. Kind of arbitrary, as alleged inventors are always self-interested.

35 USC § 102(g)(1): “. . . during the course of an interference . . . another inventor involved therein establishes, to the extent permitted in § 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed . . .”

Applies only to interferences
Inventive activity may be in US or NAFTA/WTO country
Interferences not permitted under AIA

D. Hilmer Doctrine and Foreign Activity[edit | edit source]

Paris Convention allows patent applicants to obtain the benefit of their foreign filing dates when their applications are first filed in member countries. This means that applicants can use their earlier foreign filing date to eliminate prior art. Foreign priority dates cannot be used by USPTO or an accused infringer to show a patent or application qualifies as prior art. Exception: if the application designated the US and was published in English, it may be treated as a US patent.

In re Hilmer (Hilmer I and II)

CCPA 1966, p. 282/CCPA 1970, p. 288

RULE: Foreign filing dates may only be used defensively by applicant, not offensively by office or accused infringer.

Note that the AIA overturned both cases, so any applications filed after 3.16.13 do not follow the Himer doctrine and may be used offensively against an applicant.

VI. Priority[edit | edit source]

Determining an invention date: the invention date is the date of reduction to practice, but the first to conceive of the invention is entitled to prove an invention date at the beginning of his or her period of diligence that results in a reduction to practice.

Test for priority:

Priority goes to the first party to reduce an invention to practice.
Where a party is first to conceive but second to reduce, that party must demonstrate reasonable diligence towards reduction to practice from a date just prior to other party’s conception to their own reduction to practice.
Abandonment, suppression, or concealment can eliminate right to priority.

Mahurkar v. CR Bard, Inc.

Fed. Cir. 1996, p. 306

RULE: Invention date is the date of conception and reduction to practice prior to the date of alleged prior art or date of conception plus diligence pre-dating prior art and constructive reduction to practice (filing application).

Conception – formation in the mind of a definite and permanent idea of the complete and operative invention, so clearly defined that only ordinary skill in the art would be necessary to reduce to practice without extensive research or experimentation. Corroboration required for inventor testimony, and evidence is only allowed if from US, NAFTA, or WTO country.

Reduction to practice:

Constructive – filing patent application that meets § 112 requirements with respect to the claim at issue (enablement, best mode, etc.)
Actual requires
- Construction of an embodiment or performance of process that meets all claim elements
- Demonstration that the invention is suitable for its intended purpose
- Simple construction for simple inventions, or simulated working conditions for more complex inventions that require some testing.
- Corroboration required for inventor testimony from US, NAFTA, or WTO countries.

Griffith v. Kanamaru

Fed. Cir. 1987, p. 314

RULE: Must be reasonable diligence towards reduction to practice.

Diligence – pursuing the goal in a reasonable manner. Reasonable, everyday limitations and problems are excusable, but delays due to commercialization or pursuing other inventions are not.

Fujikawa v. Wattanasin

Fed. Cir. 1996, p. 318

RULE: Abandonment, concealment, or suppression can only occur after reduction, and may be ok as long as inventive activities are resumed prior to other party’s conception.

Abandonment, concealment, or suppression

Intentional – requires evidence inventor intentionally delayed filing in order to prolong period of secrecy
Inferential – arises when there is a relatively long and unexplained gap between an actual reduction to practice and a filing of a patent application

VII. Statutory Bars[edit | edit source]

35 USC § 102(b): “A person shall be entitled to a patent unless . . . 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.”

Four categories:

Patented anywhere in the world
Printed publication anywhere in the world
In public use in the US
On sale in the US

More than one year prior to the effective date of application (not date of invention)

35 USC § 102(d): Applicant is barred from obtaining a patent if he or she filed and obtained a patent in a foreign jurisdiction and filed in the US more than one year after filing in the foreign jurisdiction.

A. On-Sale[edit | edit source]

A pardon is entitled to a patent unless the invention was on sale in the US more than a year to the application date.

Pfaff v. Wells Electronics

S.Ct. 1998, p. 427

RULE: Two-part test: (1) commercial sale or offer for sale of the invention and (2) invention must be ready for patenting (either actual reduction to practice or drawings or description sufficient to enable one of skill in the art to make the invention).

Space Systems/Loral, Inc. v. Lockheed Martin Corp.

Fed. Cir. 2001, p. 432

RULE: Conception alone is not enough to show that an invention is ready for patenting.

Plumtree Software, Inc. v. Datamize LLC

Fed. Cir. 2006, p. 437

RULE: Two ways to put a method on sale: offer to perform the claimed method or actual performance of the method coupled with a promise to pay. Focus is on the result of the method.

Assignments and licenses – assignments of patents are not sales or offers for sales, as it is a sale of patent rights, not the invention itself. Licenses also not a sale/offer for sale, as it’s just an agreement not to enforce rights of exclusion against licensee.

B. Public Use[edit | edit source]

35 USC § 102(b): “A person shall be entitled to a patent unless . . . the invention was . . . in public use . . . in this country, more than one year prior to application.”

Egbert v. Lippmann

S.Ct. 1882, p. 446

RULE: Public use without restriction or experimentation is sufficient to trigger bar.

Motionless Keyboard Co. v. Microsoft Corp.

Fed. Cir. 2007, p. 448

RULE: Demonstrations to potential investors and testing are not sufficient.

Public – unrestrained use by someone other than the inventor, use in public by the inventor outside of control and testing, does not require that the invention be seen by members of the public.

Use – actual use for intended purpose/use for commercial purposes including every element of the claim, one use is sufficient.

Private use, under the inventor’s control, not for commercial purposes does not trigger the bar, nor does secret third party use, even if commercial.

C. Experimental Use[edit | edit source]

Argument by inventor to negate allegations of on-sale or public use bars, as it allows the inventor time to test inventions and perfect them prior to application.

City of Elizabeth v. American Nicholson Pavement Co.

S.Ct. 1878, p. 472

RULE: Installation of wooden pavement with frequent checks on quality and performance did not trigger the public use bar.

Electromotive Division of General Motors Corp. v. Transportation Systems Division of General Electric Co.

Fed. Cir. 2005, p. 476

RULE: Inventor control and customer awareness of experimental nature must be proven, though every feature of the claim need not be tested.

Lisle Corp. v. A.J. Manufacturing Co.

Fed. Cir. 2005, p. 484

RULE: Customer awareness of experimental use may outweigh absence of confidentiality, restrictions on use, or records. Examiner or accused infringer must prove public use, then patent owner can rebut with experimental use defense. Standard is “clear and convincing.”

Relevant factors:

Necessity for public testing
Amount of control over the experiment retained by the inventor
Nature of invention
Length of the test period
Whether payment was made
Whether there was a secrecy obligation
Whether records of the experimentation were kept
Who conducted the experiment
The degree of commercial exploitation during testing
Whether the invention reasonably requires evaluation under actual conditions of use
Whether testing was systematically performed
Whether the inventor continually monitored the invention during testing
The nature of the contacts made with potential customers

Most important two: control by inventor and knowledge of testing by customers.

Experimental use ends with actual reduction to practice or when the invention is ready for patenting (requires no further testing to confirm the invention will work).

D. Third-Party Activity[edit | edit source]

Third-party activities can also trigger bars. This is to prevent the inventor from taking an invention out of the public domain and encourages early filing. The law favors early filing, not a third party who doesn’t disclose to the public but engages in secret commercial use (inventor secret activity triggers bar, third party secret use does not).

Evans Cooling Systems, Inc. v. General Motors Corp.

Fed. Cir. 1997, p. 460

RULE: “Stolen invention” put on sale without inventor’s knowledge can still trigger the on-sale bar.

VIII. Non-Obviousness[edit | edit source]

Pre-AIA 35 USC § 103 – “(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 , 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.”

Post-AIA 35 USC § 103 – “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.”

A. Foundation of § 103[edit | edit source]

Replaces “invention” requirement, which gave too much discretion to the courts. Makes non-obviousness a question of law based on subsidiary factual findings. Analysis is just before invention (old) or filing (AIA).

Hotchkiss v. Greenwood

S.Ct. 1851, p. 331RULE: Changing material of an invention to a more effective one is not sufficient.

Old tests:

“Flash of genius” – not good, makes no sense
“Synergism” requirement – repetition of novelty, really. Combining things in the prior art must work together in a new way to create synergism
Lots of strict/amorphous language led to enactment in 1952 of § 103.

B. Graham Test and Secondary Considerations[edit | edit source]

Graham v. John Deere Co.

S.Ct. 1966, p. 336

RULE: Four step analysis:

Determine the scope and content of prior art
Ascertain differences between prior art and claims at issue
Resolve the level of ordinary skill in the art
Determine obviousness or nonobviousness of claimed invention from perspective of a person of ordinary skill in the art at the time of invention, considering the above and secondary considerations.

United States v. Adams

S.Ct. 1966, p. 342

RULE: Factors favoring non-obviousness include unexpected advantages, proceeding contrary to accepted wisdom, disbelief expressed by experts, later recognition of significance, and inability to find prior art in crowded technology area

Non-obviousness permits combination of prior art and is a question of law based on factual inquiries. Patent applicant or patentee can argue that the prior art teaches away from the invention.

Secondary considerations: (require a “nexus” to the inventive features)

Commercial success – must be due to the technical merits of the claimed invention, not just due to first mover advantage, aggressive advertising, unclaimed feature, litigation-induced cost of defense settlement licenses.
Long felt, but unsolved needs
Failure of others
Copying
Licensing
Respect by competitors/praise by those in the field
Industry skepticism
Unexpected results (particularly in pharma)

C. KSR[edit | edit source]

KSR International v. Teleflex, Inc.

S.Ct. 2007, p. 355

RULE: “Reason to combine” test – inquiry into a teaching, suggestion, or motivation to combine elements in prior art is a relevant factor to consider, though the reason itself doesn’t have to be shown in the prior art (can be implicit).

USPTO’s list of “exemplary rationales” to base on obviousness rejection on (MPEP 2141):

(A) Combining prior art elements according to known methods to yield predictable results;

(B) Simple substitution of one known element for another to obtain predictable results;

(C) Use of known technique to improve similar devices (methods, or products) in the same way;

(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;

(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;

(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;

(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

“Obvious to try” – for a claimed invention to be obvious after KSR, the prior art must contain an enabling methodology for practicing the claimed invention, there must be a teaching, suggestion, or motivation to modify or combine the prior art to practice the claimed invention, and there must be evidence suggesting that a person of ordinary skill in the art would have a reasonable expectation of success.

Note that only analogous prior art may be used. This includes prior art in the same field of endeavor, regardless of the problem to be solved, or art reasonably pertinent to the particular problem with which the inventor is involved, if not in the same field.

D. Ordinary Skill in the Art[edit | edit source]

The higher the level of ordinary skill, the more difficult it is to satisfy the non-obviousness requirement/the easier to prove obviousness. Size of gap between ordinary skill and the invention is smaller with greater skill, lower with lesser skill. Patentee has the incentive to show that the inventors have much more than ordinary skill, as their skill is a factor in determining ordinary skill.

Factors:

Educational level of inventor
Type of problems encountered in the art
Prior art solutions to those problems
Rapidity with which innovations are made
Sophistication of the technology
Educational level of active workers in the field

IX. Enforcing Patent Rights[edit | edit source]

A. Claim Interpretation[edit | edit source]

“Markman” hearings – a hearing to receive argument and evidence regarding the proper meaning of claim terms.

Markman v. Westview Instruments, Inc.

S.Ct. 1996, p. 500

RULE: Courts have broad discretion to interpret claims and over format of hearings, including scheduling, input, and use thereof.

Teva Pharms. USA, Inc. v. Sandoz, Inc.

S.Ct. 2015, p. 503

RULE: When reviewing a district court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim, the Federal Circuit must apply a “clear error,” not a de novo, standard of review.

Standards of review:

Clear error review of underlying fact finding (resolution of disputes involving extrinsic evidence)
De novo review of the ultimate construction (resolution of disputes involving intrinsic evidence and determinations of how fact finding impacts the ultimate construction)

“Comprising” – open ended, non-exclusive list of elements

“Consisting of” – closed, exclusive list of elements

“Consisting essentially of” – in between; excludes features that would materially affect the basic and novel characteristics of the claimed invention

B. Opinion Letters[edit | edit source]

Types:

Patentability
Freedom to operate
Non-infringement
Invalidity

Non-infringement opinions may be useful in litigation to prove lack of intent to infringe or knowledge of infringement:

No indirect infringement
No willful infringement

“Competency” is key – if the opinion is relied upon in litigation as a defense to a charge of willful infringement, ultimately the opinion was wrong. Use of the opinion waives attorney-client privilege and work product immunity on same subject (In re Echostar and In re Seagate are controlling Federal Circuit opinions on point). The AIA makes clear that the lack of an opinion (or failure to introduce one) may not be used to prove intent for indirect infringement or willful infringement

C. Geographic Scope[edit | edit source]

35 USC § 271(a): “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the US, or imports into the US any patented invention during the term of the patent therefore, infringes the patent.”

35 USC § 154(a)(1): “Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.”

Location of use of:

System - place where the system as a whole is put into service (control and beneficial use)
Method – place where each step of the method occurs
Offer to sell system – place of future sale that would occur
Offer to sell method – no such concept

1. Export Activity[edit | edit source]

35 USC § 271(f)(1): “Whoever without authority supplies or causes to be supplied in or from the US all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside the US in a manner that would infringe the patent if such combination occurred within the US, shall be liable as an infringer.”

35 USC § 271(f)(2): “Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial non-infringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.”

Microsoft Corp. v. AT&T Corp.

S.Ct. 2007, p. 650

RULE: Software installed on hardware qualifies as a “component,” and to be supplied, the hardware must be installed in a computer (it is insufficient to copy the software from the hardware) – this will never happen. Note that method claims cannot be infringed under § 271(f) (another reason to diversify claim types).

Update: Life Tech. Corp. v. Promega Corp. has said that one component may constitute a substantial portion of the components of a patent invention under 271(f)(1) if the one component is sufficiently important.

2. Import Activity[edit | edit source]

35 USC § 271(g): “Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use or retail sale of a product unless there is no adequate remedy under this title for infringement on account of the importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will, for purposes of this title, not be considered to be so made after— (1) it is materially changed by subsequent processes; or (2) it becomes a trivial and nonessential component of another product.”

Eli Lilly & Co. v. American Cyanamid Co.

Fed. Cir. 1996, p. 663

RULE: Material change refers to physical or chemical properties, not degree of difference in economic value.

Geographic scope: allows for finding of infringement of a patented method when a product is imported that was created outside the US using the patented method. Also covers US sales, offers for sale, and use of products created outside the US.

No direct infringement required, except when the product is materially changed or when it becomes a trivial and nonessential component of another product.

X. Infringement[edit | edit source]

Patent terms

Enforceable from the date of issue to expiration
For applications filed on or after June 8, 1995, 20 years from effective filing date, excluding provisional application filing dates
For applications pending on and still in force on June 8, 1995, the longer of 17 years from issue or 20 years from filing

Infringement basics

Determined on a claim-by-claim basis

Two step basis:

Construe the claim
Compare correctly construed claim to alleged infringer’s commercial embodiment

Comparison of claim to alleged infringer’s commercial embodiment

Not comparison of specification to alleged infringer’s commercial embodiment
Not comparison of patentee’s commercial embodiment to alleged infringer’s commercial embodiment

Defenses

Independent creation not a defense
Ability to reverse engineer not a defense
Lack of intent not a defense (strict liability), but indirect infringement requires a specific form of intent, and willful infringement allows for treble damages
Lack of knowledge of a patent may be a defense in a limited respect.
- For device claims, constructive notice through marking or actual notice is required
- For process claims, no notice requirement

A. Direct Infringement[edit | edit source]

Product or service must meet each and every limitation of a patent’s claim – claim must describe what the alleged infringer is doing.

1. Literal Infringement[edit | edit source]

Each and every element of a claim found literally in accused device of method. If even one limitation is not present, there is not literal infringement (compare to anticipation). Additional feature does not automatically mean no infringement either, unless claim is written specifically to exclude additional features.

Larami Corp. v. Amron

E.D. Pa. 1993, p. 517

RULE: Absence of one element means there can be no literal infringement; if replaced by substantial equivalent then could be infringement by doctrine of equivalents.

2. Doctrine of Equivalents[edit | edit source]

Each and every element of a claim found either literally or equivalently in accused device or method.

Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co.

S.Ct. 1997, p. 531

RULE: Doctrine of Equivalents is not superseded by patent act of 1952.

Graver Tank & Mfg. Co. v. Linde Air Prods. Co.

S.Ct. 1950, p. 526

RULE: Test is whether the infringed device performs (1) substantially the same function in (2) substantially the same way to (3) obtain substantially the same result.

Limitations:

Prosecution history estoppel – if subject matter is surrendered during prosecution, there is a rebuttable presumption that patentee cannot recapture it through DoE. The reason for amendment is important, and the patent owner bears the burden of proving the amendment was not related to matters of patentability. Question of law for court to use to limit scope of DoE.
Dedication to the public/disclosed but not claimed – disclosed by unclaimed subject matter cannot be captured under the doctrine of equivalents. Disclosed subject matter need not need the enablement requirement, but the subject matter must be identified as an alternative to a claim limitation.
All limitations/vitiation – element by element analysis required, overall claim in its entirety cannot be eliminated (vitiated)
Specific exclusion – if the claim expressly or implicitly excludes subject matter, the DoE cannot be used to capture that subject matter. Any such disclaimer must be clear as a matter of public notice.
Prior art – DoE cannot be used to capture subject matter that could not have been patented in the first place. Hypothetical claim covering the alleged infringement must be patentable over prior art (not anticipated, not obvious, burden is on patentee). Dependent claims must be analyzed even if an independent claim does not infringe under DoE because it ensnares prior art.
Not limited to equivalents known at time of application, but at time of alleged infringement.

Prosecution History Estoppel – stops patent owner from recapturing via DoE claim scope surrendered during prosecution.

Argument-type
Amendment-type

Festo Corp. v. Shoketsu Kinsoku Kogyo Kabushiki Co.

S.Ct. 2002, p. 548

RULE: If narrowing claim amendment is made for purposes of patentability (or patentee cannot prove another reason), then there is a presumption of surrender of all subject matter between original and amended claim.

Amendments for purposes of patentability:

Made to fall within subject matter under § 101
To respond to § 102 or § 103 rejections – claim language is changed
Made to correct lack of written description or lack of enablement under § 112
To correct ambiguity or vagueness under § 112 (includes spelling corrections)

Presumption of surrender can be rebutted three ways:

Equivalent was objectively unforeseeable at the time of the amendment
Rationale underlying amendment bears no more than tangential relation to equivalent
“Some other reason” patentee could not reasonably be expected to have described the equivalent

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Johnson & Johnston Assocs., Inc. v. RE Service Co., Inc.

Fed. Cir. 2002, p. 563

RULE: Disclosed but unclaimed subject matter cannot be captured through the doctrine of equivalents (public dedication rule).

SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc.

Fed. Cir. 2001, p. 571

RULE: If the claim expressly or implicitly in light of the spec excludes subject matter, DoE cannot be used to capture that subject matter (specific-exclusion rule).

Wilson Sporting Goods Co. v. David Geoffrey & Assocs.

Fed. Cir 1990, p. 583

RULE: DoE cannot be used to capture subject matter that could not have been patented in the first place.

3. “Divided” or “Joint” Infringement[edit | edit source]

Typically, only one entity’s product or conduct meets each and every limitation of a patent’s claim. However (absent vicarious liability) there is sometimes no one entity whose conduct meets every limitation.

Akamai Techs., Inc. v. Limelight Networks, Inc.

Fed. Cir. 2015, p. 617

RULE: Direct infringement asks whether one entity is responsible for infringement. The acts of one may be attributable to another such that a single entity is responsible for infringement (1) where a first entity directs or controls a second entity; or (2) where the two entities form a joint enterprise.

Vicarious liability – direction and control, where one acts through an agent, contracts with another to perform one or more steps of the method, or conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.

Joint enterprise requirements:

An agreement, express or implied, among the members o the group
A common purpose to be carried out by the group
A community of pecuniary interest in that purpose, among the members
An equal right to a voice in the direction of the enterprise, which gives an equal right of control

4. Reissue and Continuations[edit | edit source]

Broadening reissue - within the first two years after a patent issues, the patent owner can go back to the office and attempt to broaden claims without introducing new matter. Necessary only if no pending continuation.

Continuation – serially file continuation applications, continuously broadening or otherwise modifying claim language. May be used to overcome double-patenting rejections via terminal disclaimers. Unavailable if there is no pending application.

B. Indirect Infringement[edit | edit source]

Aiding and abetting infringement

1. Inducement of Infringement[edit | edit source]

35 USC § 271(b): “Whoever actively induces infringement of a patent shall be liable as an infringer.”

Global-Tech Appliances, Inc. v. SEB SA

S.Ct. 2011, p. 607

RULE: Not limited to the US, knowledge of patent and infringement both required, though may be actual or attributable (willful blindness).

Required to prove:

Direct infringement
Actions inducing infringing acts
Knowledge that the acts would induce infringement
Intent to cause infringement

Willful blindness – alleged inducer subjectively believes there is a high probability that patent/infringement exists and takes deliberate actions to avoid learning of patent/infringement.

2. Contributory Infringement[edit | edit source]

35 USC § 271(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 non-infringing use, shall be liable as a contributory infringer.”

Lucent Tech., Inc. v. Gateway, Inc.

Fed. Cir. 2009, p. 604

RULE: Contributory infringement is limited to sales, offers to sell, or importation in the US.

Required to prove:

Direct infringement
The defendant sold, offered to sell, or imported a component that is a material part of the patented invention
Defendant knew that the combination for which the component was especially made was patented and infringing
The component has no substantial non-infringing use, i.e. it is a non-staple good

C. Means-plus-function limitations[edit | edit source]

35 USC § 112 ¶ 6: “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

Williamson v. Citrix Online, LLC

Fed. Cir. 2015, p. 622

RULE: Construction of alleged means-plus-function limitations:

Determine whether it is a means-plus-function limitation – use of “means for” creates a rebuttable presumption in favor, absence creates presumption against. Ultimate issue is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.
Identify recited function
Determine the structure disclosed in the written description as corresponding to the recited function

Odetics, Inc. v. Storage Tech. Corp.

Fed. Cir. 1999, p. 630

RULE: [t]he individual components, if any, of an overall structure that corresponds to the claimed function are not claim limitations. Rather, the claim limitation is the overall structure corresponding to the claimed function.

Literal Infringement – requires identical function, allows equivalent structure at time of issuance

Accused device must possess a structure that performs the identical function as set forth in the claim and
The structure of the accused device must be identical or equivalent to the structure set forth in the written description. Insubstantial differences must exist in way and result only, not of function
Analysis time period is at time of issue – after-arising technology cannot literally infringe.

DoE Infringement – allows equivalent function plus equivalent structure at time of issuance

Equivalent or insubstantial difference in function permitted
Equivalent structure (difference in way and result)
After-arising technologies may infringe under DoE

XI. Defenses[edit | edit source]

Invalidity defenses:

Lack of utility, ineligible subject matter
Violation of enablement, written description, and best mode requirements
Anticipation, statutory bars
Obviousness

Non-infringement – experimental use

Unenforceability defenses:

Inequitable conduct
Inventorship
Laches
Equitable estoppel

A. Licensee Estoppel[edit | edit source]

Lear, Inc. v. Adkins

S.Ct. 1969, p. 751

RULE: Licensees may challenge the validity of patents they have licensed (estoppel largely abolished).

Licensee estoppel is largely abolished. Licensee may not have to pay royalties under a license agreement if they can prove the patents are invalid. But, licensee may be estopped from challenging their obligation to pay royalties for activities prior to issuance for license agreements negotiated prior to issuance.

Assignor estoppel still exists – assignors cannot challenge the validity of an assigned patent.

B. Declaratory Judgment Jurisdiction[edit | edit source]

Declaratory judgment: in a case of actual controversy within a court’s jurisdiction, that court may declare the rights of a party seeking such a declaration.

Arguably, because licensees are paying fees, there is no controversy. Courts permit potential infringers to sue for declaratory judgment, rather than making them wait for patentees to sue for infringement or breach of contract. Test: “whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”

MedImmune, Inc. v. Genentech, Inc.

S.Ct. 2007, p. 757

RULE: A licensee does not have to breach an agreement before seeking a declaratory judgment of invalidity or non-infringement.

Test – whether the facts alleged show a substantial controversy between parties with adverse legal interests of sufficient immediacy and reality to warrant issuance of declaratory judgment. Met if the DJ plaintiff if put in position to pursue arguably illegal behavior or abandon it even though he or she claims a right to pursue it or if patentee asserts rights based on identified ongoing or planned activity of another party, and where the party contents it has a right to engage in that activity.

C. Inequitable Conduct[edit | edit source]

“Atomic bomb” of patent law – makes the entire patent unenforceable

Inequitable conduct – requires intent and materiality, each analyzed for clear and convincing evidence.

Intent: specific intent to deceive, not just gross negligence. Can be inferred, but not just based on high materiality – has to be single most reasonable inference. Once prima facie case of intent shown, good faith explanation may be provided.
Materiality: “but for” test – PTO would not have granted the patent but for the omission or misrepresentation. Give claims the broadest reasonable interpretation and apply a preponderance of the evidence standard. Exception: affirmative egregious misconduct is always material.

Therasense, Inc. v. Becton, Dickinson & Co.

Fed. Cir. 2011, p. 824

RULE: Must show intent and materiality by clear and convincing evidence.

PTO’s definition of materiality: “A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.”

Supplemental exam – may “cleanse” potential inequitable conduct. Essentially prohibits future claims of inequitable conduct based on same information considered during supplemental exam.

D. Experimental Use[edit | edit source]

1. Statutory[edit | edit source]

35 USC § 271(e)(1): “It shall not be an act of infringement to make, use, offer to sell, or sell within the US or import into the US a patented invention [with limited exceptions] solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.”

Merck v. Integra Lifesciences I

S.Ct. 2005, p. 835

RULE: Must be a reasonable basis for believing that a patented compound may work and use in research that, if successful, would be appropriate to include in a submission to the FDA (even if FDA does not require it and even if it ultimately is not submitted).

Expansive conception of safe harbor that encompasses pre-clinical activity, bot not necessarily research tools.

2. Common Law[edit | edit source]

Narrow to the point of non-existence. Accused infringer has to establish the defense, and is limited to situations where action is taken “for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry.” Scientific inquiry with definite, cognizable, and not insubstantial commercial purposes does not qualify, nor does use consistent with legitimate business of infringer.

Madey v. Duke

Fed. Cir. 2002, p. 842

RULE: Use consistent with legitimate business of infringer does not qualify under the common law experimental use defense (University research lab, in this case).

E. Inventorship[edit | edit source]

35 USC § 116: “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.”

Improperly named or omitted inventor. Second is most common.

Misjoinder: incorrect inventor named
Non-joinder: omitted inventor
Pre-AIA required a showing of no deceptive intent
Joint inventors considered tenants-in-common with complete rights to the patent

Acromed Corp. v. Sofamar Danek Group, Inc.

Fed. Cir. 2001, p. 854

RULE: Alleged inventor must prove contribution to inventive conception of at least one part of a claim in a patent by clear and convincing evidence.

F. Laches[edit | edit source]

SCA Hygiene Products v. First Quality Baby Products

Fed. Cir. 2015

RULE: Laches eliminates entitlement to pre-lawsuit damages and injunctive relief, including damages within the six years of filing allowed by § 286.

Elements: long period of delay (more than six years after patentee knew or should have known of infringer’s activities) and material prejudice resulting from the delay.

Bars:

Injunctive relief
Patentee’s claim for damages prior to the filing of the lawsuit
NOT claim of ongoing royalties

Burden of going forward is on patentee, but alleged infringer always bears burden of persuasion.

G. Equitable Estoppel[edit | edit source]

May bar entire lawsuit, if proven. Includes entitlement to an injunction and past damages, but also any opportunity for ongoing royalties. Three elements:

Patentee engages in conduct that misleads the alleged infringer to reasonably infer that patentee does not intend to enforce patents (includes statements, actions, inaction, or silence when there is an obligation to speak).
Alleged infringer must rely upon that conduct.
Due to the reliance the alleged infringer would be materially prejudiced if patentee allowed to bring its claim.

H. Patent Exhaustion and Repair-Reconstruction[edit | edit source]

Exhaustion (AKA first sale) – patentee’s rights in a product, i.e. the right to exclude use, expire when the patentee or its licensee acting within the scope of its license sells the product. A purchaser or downstream user cannot be held liable for infringement with respect to the product. Scope is limited by the repair-reconstruction doctrine.

Keurig, Inc. v. Sturm Foods, Inc.

Fed. Cir. 2013, p. 673

RULE: Exhaustion exists if there is an authorized, unconditional sale in the US of the device covered by the patent.

Quanta Computer, Inc. v. LG Electronics, Inc.

S.Ct. 2008, p. 712

RULE: Exhaustion exists for an unpatented component when (1) The only reasonable and intended use of a product is to infringe a patent (has no reasonable non-infringing use) and (2) the product embodies essential features of the patented invention (includes all inventive aspects of the claim).

Circumstances:

Sales of patented devices – authorized, unconditional sale in the US of a patented device
Unpatented components of patented invention – authorized, unconditional sale in the US of a component when (1) the only reasonable and intended use of a product is to infringe a patent (has no reasonable non-infringing use) and (2) the product embodies essential features of the patented invention (includes all inventive aspects of the claim).

Effect: termination of ability of patent holder to control or obtain damages for use of the patented invention

Repair-reconstruction doctrine: Exhaustion does not apply in cases of reconstruction, though it does in cases of repair.

Repair: preserving fitness for use throughout useful life
Reconstruction: effectively recreating the product

Relevant only if the contract of sale does not eliminate the possibility of the default right of repair. Patentees may impose conditions on reuse and resale, so that violation of those terms constitutes infringement (action without authority).

Jazz Photo Corp. v. Int’l Trade Comm’n

Fed. Cir. 2001, p. 676

RULE: Repair (making sure the article stays functional for useful life/preserving fitness for use) is not infringement.

Bowman v. Monsanto Co.

S.Ct. 2013, p. 734

RULE: Reconstruction/copying (effectively recreating the product) is infringement.

International exhaustion – US patent rights are not exhausted by foreign sales, but importation may infringe, even if the devices were purchased from patentee or licensee abroad. Thus, no real such thing as international exhaustion.

Lexmark Int’l, Inc. v. Impression Products, Inc.

Fed. Cir. 2016, p. 719

RULE: Copyright exhaustion applies abroad, but patent exhaustion does not.

I. Patent Misuse[edit | edit source]

Allowable contract terms:

Restricting use of the invention
Conditioning use of the invention
Structuring royalty payments

35 USC § 271(d): ““No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1) derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent; (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent; (3) sought to enforce his patent rights against infringement or contributory infringement; (4) refused to license or use any rights to the patent; or (5) conditioned the license of any rights to the patent or the sale of the patented product on the acquisition of a license to rights in another patent or purchase of a separate product, unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned.”

Misuse: common law equitable defense to infringement and breach of conduct that does not permit patentee to extend patent right beyond statutory scope of patent grant. Per se misuse is conduct with anti-competitive effects and no redeeming pro-competitive effects (i.e. patent-to-product tying plus market power or requirement to pay royalties beyond term of patent). Anything not per se misuse requires analysis of anti- and pro-competitive effects, aka rule of reason analysis (patent-to-patent tying). However, there is no duty to practice your invention and no presumption of market power because of ownership of the patent.

Morton Salt Co. v. GS Suppiger Co.

S.Ct. 1942, p. 689

RULE: Patent-to-product tying is per se misuse (no longer good law – now § 271(d)(5) requires a showing of market power).

US Philips Corp. v. Int’l Trade Comm’n

Fed. Cir. 2005, p. 691

RULE: Conduct with anti-competitive effects and no redeeming pro-competitive effects is per se misuse.

Field of use restrictions – enforced so long as not per se illegal, reasonably within patent grant, and pass the rule of reason analysis of pro- and anti-competitive effects. Include geographic restrictions, market restrictions, “single use only” restrictions. Price discrimination allowed. Patent and contract remedies available for breach of restrictions.

Structuring royalty payments – royalty payments cannot extend past expiration of last-to-expire patent (per se misuse). Payments can be made past expiration for pre-expiration use, but not post-expiration use. May tie to trade secret use or create a joint venture instead to avoid.

Brulotte v. Thys Co.

S.Ct. 19664, p. 741

RULE: It is patent misuse to require royalty payments beyond the term of the patent.

Scheiber v. Dolby Labs, Inc.

7th Cir. 2002, p. 745

RULE: There is a difference between structuring payments such that some occur after expiration and requiring payment for activities after expiration.

J. Antitrust[edit | edit source]

Patents by definition give their holder a legal monopoly in the right to exclude, but do not give the holder market power if a viable non-infringing alternative is available. Ownership of a patent alone does not create a presumption of market power. Patent-to-product tying is per se illegal under antitrust law.

Illinois Tool Works, Inc. v. Independent Ink, Inc.

S.Ct. 2006, p. 782

RULE: Ownership of a patent alone does not create a presumption of market power under patent or antitrust law.

Illegal monopolization

Claimant must prove patentee has market power in relevant market
Anticompetitive conduct to exclude or weaken competition to increase market power
Superior products, business acumen, and historic accident are not anticompetitive conduct.

Walker process claim – antitrust liability arises when a patentee fraudulently obtains a patent and enforces or threatens to enforce it.

Requirements:

1. Fraud at the patent office by showing:

Representation of material fact
Falsity of the representation
Intent to deceive or at least recklessness
Justifiable reliance inducing action
Injury

2. Knowledge at the time of attempted enforcement of the earlier fraud at the patent office.

3. Elements of antitrust liability:

Attempted enforcement of the fraudulently obtained patent
Patent Office issued the patent because of the fraud
Attempted enforcement threatened to lessen competition in a relevant antitrust market
Plaintiff suffered antitrust damages
Other elements of attempted monopolization (including market power)

Nobelpharma AB v. Implant Innovations, Inc.

Fed. Cir. 1998, p. 790

RULE:

Sham litigation claim – allegation that a patentee should be subject to an antitrust claim based on filing a lawsuit alleging infringement of a patent claim known to be invalid, not infringed or unenforceable, with a purpose to impose anticompetitive harm on the defendant rather than to obtain a justifiable legal remedy.

Not required to prove fraud at the Patent Office, just bad faith litigation based on knowledge of invalidity, non-infringement, or unenforceability, by showing:

Lawsuit is objectively baseless because no reasonable litigant could expect success on the merits
Litigant subjectively sought to interfere directly with the business relationships of a competitor through the litigation process (not the outcome)
Other elements of antitrust: (1) threat to lessen competition in relevant antitrust market, (2) plaintiff suffered antitrust damages, and (3) other elements of attempted monopolization, including market power.

Settlements – most cases settle for payment in exchange for release from liability and licenses, though may give rise to claims of antitrust liability.

Hatch-Waxman – balances spurring pharma innovation with providing for prompt access to pharma products in the market by addressing competition between name brand and generic drug companies. Procedures at the FDA:

“Inventors” or name brand companies – files NDA, applicant lists any patents that would be infringed in the Orange Book, which secures a 30-month stay of FDA approval on a generic if the applicant files an infringement lawsuit against the generic manufacturer (1. List drug, 2. File infringement suit and receive 30 month stay)
“Copiers” or generic drug companies – files ANDA, prove bio-equivalency, explain why the patents in the Orange Book are not a barrier (invalid or non-infringing). Must be done in “timely fashion”
After FDA filings: generic gives name brand notice with details of invalidity or non-infringement arguments within 20 days of filing, giving brand name 45 days to file infringement suit to obtain stay.
If invalidity or non-infringement is found, generic application is approved. Else, generic is enjoined and their application won’t be approved until the brand name patent expires.

Reverse payments – settlement agreements between generic and brand names to keep generics from entering the market. Brand name pays generic to stay off the market. AKA “exclusion” payment. Reverse payments are subject to a rule of reason analysis.

FTC v. Actavis, Inc.

S.Ct. 2013, p. 802

RULE: Reverse payments are subject to a rule of reason analysis.

Sample analysis:

Assume litigation is costless for both sides.
Brand name analysis:
- Without the generic, assume the name brand could make $100mil/year over a 10 year term. Total profit: $1bil
- 80% certainty that it’s valid and infringed
- What is the risk if unsettled? $200mil (20% chance of losing). This means anything less than $200mil is acceptable to settle.
Generic analysis:
- Generic potential in 6 months of exclusivity is $40mil.
- In the remaining 9.5 years, they can expect to make $60 mil. Thus, total over ten years is $100mil.
- Only 20% chance of winning, 80% chance of losing, so their gamble is $20mil. (20% of $100mil). This means anything over $20mil is acceptable to settle.
Assume they settle for $110mil. Makes complete economic sense, but is there an antitrust issue? Probably not, but best to avoid the dispute altogether.

Refusals to deal: patent gives right to exclude, no duty to practice or license an invention. Unconditional refusals to deal (sell or license) are not violations of antitrust law, but conditional refusals (patent-to-product tying or agreements not to buy form competitors) may be.

K. “Advice of Counsel”[edit | edit source]

Assert an opinion of counsel as a defense to allegations of willful infringement (communication from an attorney indicating non-infringement, invalidity, and/or unenforceability. Author and recipient will testify at trial.

Effect on privilege and immunity:

Attorney-client privilege is waived
Work-product immunity may also be waived with respect to communications on the same subject as the opinion relied upon for defense and un-communicated work-product that memorializes attorney-client communications.

35 USC § 298 (AIA): “Failure of an infringer to obtain the advice of counsel or failure of infringer to present such advice to the jury or court may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.”

XII. Remedies[edit | edit source]

35 USC § 283: “The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”

35 USC § 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.”

A. Money Damages[edit | edit source]

1. Lost Profits[edit | edit source]

Lost profits – typically higher than reasonably royalties. Not the profits the infringer made, though disgorgement is available for design patents. Goal is to fully compensate patent owner for damages caused by infringement. Considered under but-for causation (profits the patentee would have made but for infringement). Limited by foreseeability and proximate causation – profits that were or should have been reasonably foreseeable. Includes profits on products the patentee could reasonably foreseeably have sold but for infringement.

Rite-Hite Corp. v. Kelley Co., Inc.

Fed. Cir. 1995, p. 890

RULE: Four-part Panduit factors: (1) demand for patented product, (2) absence of acceptable non-infringing substitutes, (3) manufacturing and marketing capacity to exploit demand, and (4) amount of profits patent owner would have made.

Grain Processing Corp. v. American Maize Products Co.

Fed. Cir. 1999, p. 899

RULE: To be entitled to lost profits, there must not have been any acceptable non-infringing substitutes sold or offered during the period of infringement or “available” during that time.

Absence of non-infringing substitutes during period of infringement – can be assumed unavailable if none sold or offered during that time. Infringer bears the burden of showing that a substitute was available. “Non-availability” means technical, financial, legal, or other insurmountable barriers to use of the alternative technology.

Market share rule – patentee may still recover lost profits even if there was an available non-infringing substitute, just less than if they had a monopoly on the market.

Manufacturing capability – patent owner must show that it was capable of making and marketing the patented device. Capability encompasses capacity. Can be met even if the patentee didn’t have the capability at the time of infringement but could have increased its capacity or licensed another to produce the invention. Factors include time and funding required.

Amount of profit – think of lost sales (both patented and unpatented goods), considering price erosion (damage caused by patentee having to reduce prices to compete) and accelerated market reentry (damage caused by infringer entering the market earlier than would have had it waited for the patent to expire).

2. Reasonable Royalties[edit | edit source]

35 USC § 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.”

Reasonable royalties – default method of determining damages, considered the floor for damages. Awarded in absence of higher lost profits or an “established” royalty (repeatedly agreed to by patentee).

Analytical method – based on marginal effect of patented technology on infringer’s profit
Georgia-Pacific factors:
- Royalties received by the patentee for licensing of the patent in suit, proving or tending to prove an established royalty
- Rates paid by licensee for the use of other patents comparable to the patent in suit
- Nature and scope of the license, as exclusive or non-exclusive; or restricted or non-restricted in terms of territory or with respect to whom the manufactured product may be sold
- Licensor’s established policy and marketing program to maintain his patent monopoly by not licensing others to use the invention or by granting licenses under special conditions designed to preserve that monopoly
- The commercial relationship between the licensor and licensee, such as, whether they are competitors in the same territory in the same line of business, or whether they are inventor and promoter
- Effect of selling the patented specialty in promoting sales of other products of the licensee; that existing value of the invention to the licensor as a generator of sales of his non-patented items; and the extent of such derivative or convoyed sales
- Duration of the patent and term of the license
- Established profitability of the product made under the patent; commercial success and current popularity
- Utility and advantages of the patent property over the old modes or devices, if any, that had been sued for working out similar results
- Nature of patented invention; character of commercial embodiment of it as owned and produced by the licensor; benefits to those who have used the invention
- Extent to which the infringer has made use of the invention; evidence probative of value of that use
- Portion of the profit or of the selling price that may be customary in the particular business or in comparable businesses to allow for the use of the invention or analogous inventions
- Portion of the realizable profit that should be credited to the invention as distinguished from non-patented elements, manufacturing process, business risks, or significant features or improvements added by the infringer
- Opinion testimony of qualified experts
- Amount that a licensor and licensee would have agreed upon if both had been reasonably and voluntarily trying to reach an agreement
“Hypothetical negotiation” – most common, based on a negotiation that would have occurred right before infringement occurred, assuming the patent is infringed and valid. May consider after the fact events (“Book of Wisdom”) by assuming predictions made at that negotiation would have come true, especially if there were no actual predictions.

Forms:

Running - royalty base (based on number of units sold and revenue – not profits) x royalty rate (percentage reflecting allocated share). Lack of success means reduced royalties, so licensor (patentee) is compensated for bearing this risk with higher royalty rate.
Lump sum (above the cost of defense) may reflect present value (at time of hypothetical negotiation) of a predicted running or reasonable royalty.

Entire market value rule – if patentee can prove the patented invention is the basis for consumer demand, damages may be based on entire apparatus, not just patented invention portion. Value is tied to the relative amount of the profits from the sales attributable to the invention. In reality, royalty calculations are based on revenue of sales for entire apparatus, for ease of calculation and monitoring.

3. Marking/Notice Requirement[edit | edit source]

35 USC § 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 by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article 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.”

To recover damages for claims other than method claims, patentee must either provide constructive notice by marking its patented good, or provide actual notice of infringement by letter or lawsuit. Marking may be on the item or the packaging. AIA allows for “virtual marking” Method claim patent issuance is considered constructive notice. Issuance is also considered notice for non-practicing entities.

4. Statute of Limitations[edit | edit source]

35 USC § 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.”

Not technically a statute of limitations, more a limitation on damages. No damages may be recovered for infringement more than six years prior to filing of claim.

B. Equitable Relief[edit | edit source]

35 USC § 283: “The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”

Important considerations:

Whether the patent owner practices the claimed invention (i.e. whether the parties are competitors)
Whether the patent covers the entire infringing product or merely a component
Whether the patent owner introduces evidence supporting assertions of irreparable harm/inadequacy of money damages

1. Preliminary Injunctions[edit | edit source]

Patentee must prove:

Reasonable likelihood of success
- Infringement, no invalidity, and no unenforceability (presumption of validity not present)
- Consideration of underlying burden of proof (clear and convincing)
- Analysis of infringement and validity requires preliminary claim construction
- No substantial defense from infringer (minority says infringer only needs an argument worthy of consideration)
Irreparable harm if injunction is not granted – typically not present if money damages would suffice
Balance of hardships favors granting the inunction (hardship on patentee without > hardship on infringer with)
Public interest must favor injunction

2. Permanent Injunctions[edit | edit source]

Patentee must prove:

Irreparable injury in absence of injunction
Monetary damages are inadequate compensation
Balance of hardships favors granting the injunction (hardship on patentee without > hardship on infringer with)
Injunction’s favorable impact on public interest

C. Enhanced Damages and Attorney’s Fees[edit | edit source]

35 USC § 284: “The court may increase the damages up to three times the amount found or assessed.”

35 USC § 285: “The courts in exceptional cases may award reasonable attorney fees to the prevailing party.”

Most common basis for award of enhanced damages and attorney fees is willful infringement.

Knorr-Bremse Systeme v. Dana Corp.

Fed. Cir. 2004, p. 982

RULE: Not turning over attorney’s opinions no longer creates an adverse inference, in order to preserve the attorney-client relationship, though opinions may still be used at trial to show lack of willful infringement.

Halo Electronics v. Pulse Electronics, Inc.

S.Ct. 2016

RULE: Burden is on patentee to prove willful infringement by preponderance of the evidence. Must show willful, wanton, malicious, bad faith, deliberate, consciously wrongful, flagrant, or conduct characteristic of a pirate.

Enhanced damages analysis:

Determine whether willful infringement or another basis supporting an award of enhanced damages
District court may use discretion to decide whether to enhance damages and in what amount, up to triple. May be based on Read factors:

Deliberate copying of the ideas or design of another
Investigation of scope of patent and formation of good faith belief that it was invalid or not infringed
Behavior as party to litigation
Infringer’s size and financial condition
Closeness of the case
Remedial action taken by infringer
Infringer’s motivation for the harm
Attempts to conceal misconduct

Attorney fees analysis:

Determine whether the case is “exceptional” – whether it stands out from the average case, is uncommon, rare, or not ordinary, by the preponderance of the evidence. Standard of review is abuse of discretion
District court will determine, using its discretion, whether to award and how much.

@@ Line 1: / Line 1: @@
-==Part I Patentability==
-===Introduction===
-'''Three kinds of patents:'''
-*Utility
-**this class is all about this kind
-*Design
-*Plant
-'''Things covered by a utility patent:'''
+== {{anchor|Toc342061192}} I. History and Architecture of the Patent System ==
-*Thing
-*Device
-*Composition of matter
-*Method
-'''Rights of a patent:'''
+=== {{anchor|Toc342061193}} A. History ===
-* Right to Exlude:
-** Actions:
-**# Selling
-**# Practicing
-**# Making
-**# Using
-* Place:
-** United States
-* Subject matter:
-** Patented Invention (as described by the patent)
-'''Justification of patent law:'''
+. Italian Renaissance
-* Incentive to invent
+* Republic of Florence and Filippo Brunelleschi
-* Natural rights
+* Private guild rules
-** If you created a property, you should own it
+* Venetian patent statute of 1474
-* Get knowledge out in the open – encourage full disclosure
+** Quid pro quo
+** Utility
+** Operability
+** Reduced to practice
+** Novelty
+** Non-obviousness
+** Infringement == same or similar
+** Temporal limit on exclusive right
+** Damages
+** Destruction of infringing device
-'''Requirements of patentability:'''
+. English patent policy and the Statute of Monopolies
-* Novelty
+* Abusive use of patents
-* Nonobviousness
+** Patents on vinegar, starch, playing cards
-* Adequate description
+** Queen Elizabeth I and King James I
-* Utility
+* Statute of Monopolies
-* Eligible subject matter
+** Parliament passed in 1624
+** Exception provided for “any manner of new manufacture”
+** Development of the “specification” – “consideration” for the patent grant
-'''Claims:'''
+. The American experience
-* How do we decide if a prior invention is "close enough" to prevent patenting a recent invention?
+* Several colonies granted patents
-** Whether a chair is “close enough” to a table depends on the level of abstraction used to describe the first. If the table was described abstractly (“a horizontal surface supported above the floor”) the chair would fall under that description.
+* Articles of Confederation left the power to issue patents to the states
-* Three sections to a claim:
+* Constitutional Convention
-*# preamble
+** James Madison and Charles Pickney
-*# transition
+** Passed the “IP Clause” with little recorded discussion or dispute
-*# body
+* Patent Act of 1790
-* Claims must only have one sentence each.
+** Signed into law by Washington
-* Quandry:
+** Examination of applications, not a registration system
-*# Keep claim broad, with questions about validity? or
+** Commissioners for the Promotion of Useful Arts
-*# keep claim narrow, with questions about infringement?
+*** Sec. of State, Jefferson
+*** Sec. of War, Henry Knox
+*** Atty. General, Edmund Randolph
+** First US Patent – “Making potash and pearl ash by a new apparatus and process”
+* Patent Act of 1793
+** Registration system
+** Introduced public-use and on-sale bars
+** Defined statutory subject matter categories
+** Resulted in fraudulent and duplicative patents
+** “Patent thicket”
+* Patent Act of 1836
+** First modern patent statute
+** Created the Patent Office
+** Created position of Commissioner of Patents
+** Reinstituted examination process
+** Created the present-day numbering system
+** Codified practice of using patent claims
+** Last act to require disclosure of models
+* Patent Act of 1870
+** Emphasized importance of patent claims
+** Public notice function
+*** Used to determine infringement by comparing the claim with the accsed product or method
+*** Used to determine validity by comparing claim with prior art
+* Supreme Court treatment of patents
+** Treated favorably from 1890 to 1930
+** Monopolistic and social cost aspects emphasized from 1930 to 1950
+** Doctrinal decisions
+*** Expanded patent misuse doctrine
+*** Eliminated ability to draft claims to products by describing their function
+*** Created a “flash of genius” test for invention
+*** Cast doubt on ability to patent “combination” inventions by requiring display of synergy
+* Patent Act of 1952
+** Overturned expanded patent misuse doctrine
+** Overturned elimination of ability to draft claims to products by describing their function
+** Overturned “flash of genius” and synergy tests by focusing instead on non-obviousness
+** One of the primary drafters was Giles S. Rich, later a Circuit Judge of the Federal Circuit
+* Regional court treatment of patents
+** Widely diverging treatment of patents between 1950 and 1982
+** Resulted in forum shopping
+* Creation of the US Court of Appeals for the Federal Circuit in 1982
+** To unify patent law, eliminate forum shopping, and stimulate the economy
+** Located in DC
+** Hears appeals from rejections of patent applications by USPTO
+** Hears appeals from judgments in patent cases filed in district courts, the Court of Federal Claims, and the International Trade Commission
+* Leahy-Smith America Invents Act (AIA)
+** Passed in 2011, but various effective dates of changes
+** Most significant changes to US patent law since 1952
+** Converts US from first-to-invent to first-to-file system
-'''Getting a patent is not the ability to practice your own technology.'''
+=== {{anchor|Toc342061194}} B. Economics ===
-* There might be other patents out there. You only have the right to exclude others, yet you might be excluded yourself.
-===Novelty===
+Information is a public good
-'''35 USC § 102'''
+* Non-rivalrous consumption – use by one person does not reduce the amount available for consumption by others
-* A person should be entitled to a patent unless . . . [focuses on the invention itself]
+* Non-excludability – once disclosed, use by anyone is difficult to prevent except through special legal institutions, but disclosure is often necessary to use the information
+* Free-rider problem
+** Intangible information is easy go copy
+** Difficult for discoverer to obtain return on investment
+** Result that information will be under-produced or not produced
+* Solutions
+** Government subsidies
+** Government provision of services using tax revenue
+** Government enforced private property rights
+* Costs of patent system
+** Temporary higher prices
+** Temporary reduced output
+** Temporary reduced access
+* Benefits of patent law
+** Increased invention – may allow inventors to recoup costs of research and development through supra-competitive prices
+** Increased disclosure
+*** To obtain private property right, the applicant must comply with disclosure requirements
+*** Allows competitors to improve upon inventions
+*** Positive result when compared to trade secret protection
+** Increased innovation
+*** Increases likelihood of use of inventions in commercialized products
+*** Serves as signaling tool to cause exclusive right to end up in hands of most efficient market actor
+* Continued debate over actuality of benefits and cost-benefit analysis
+** Reputational, monetary incentives to invent, disclose, and innovate
+** Wasteful, winner-takes-all patent races
+** Excessive rent-seeking
+** Whether disclosure requirements adequate
+** No requirement to commercialize inventions
+** “Although there are powerful economic reasons in favor of creating property rights in inventions, there are also considerable social costs and whether the benefits exceed the costs is impossible to answer with confidence on the basis of present knowledge.” – William M. Landes & Richard A. Posner, The Economic Structure of Intellectual Property Law (2003) at 310.
-'''[[Titanium Metals Corp. of America v. Banner]]'''
+=== {{anchor|Toc342061195}} C. Patent Document ===
-* Claims are composition claims for Ti alloys
-* Alloy did not actually have to have been made previously to be prior art. Even if it was not made, it was still described which is enough to defeat novelty.
-* Enablement:
-** Patent must enable one skilled in the art to practice the invention
-** prior art must enable one with ordinary skill in the art to be able to practice the art in order for it to anticipate the invention.
-*** example: light sabers are disclosed in Star Wars, but there is no enablement, so one could invent it now and receive a patent.
-'''[[Schering Corp. v. Geneva Pharmaceuticals]]'''
+Example of a patent – Hall’s Pizza Box
-* ANDA filer: The first generic seller can file an ANDA filing; has six months to sell with FDA permission if the drug was already approved and now its patent is expired.
+* Cover page
-'''What if a claim for a patent were for a specific composition that fell within a prior art’s range of compositions? Is it patentable?'''
+* Figures
-* If the composition has distinct and improved properties over prior art, it could be patentable. It is up in the air.
+* Background
-ii. Factors courts have considered if a genus anticipates a species:
+* Summary of invention
-. number of compounds embraced b the most specific prior art description
+* Description of the figures
-. he degree of structural similarity between the compounds of that group;
+* Detailed description
-. the number of properties shared by compounds of that group;
+* Claims
-. whether the properties of the claimed compounds are the same as, consistent with or diametrically opposite to the properties disclosed in the prior art;
+* Appendix
-. the number of parameters that can  be varied among the most specifically described group of prior art compounds; and
-. whether the claimed materials are physical mixtures or the product of chemical reactions.
-III. Public Use
+Claim drafting – most difficult task
+* Describes an invention using words
+* Captures the novel and non-obvious features
+* Avoid the prior art
+* Include definite (clear) language
-a. Effective Date: Date of on sale, published, public use, etc.
+=== {{anchor|Toc342061196}} D. Process for Obtaining Rights ===
-b. § 102(B)
+Applications
+* Provisional applications (reserve the filing date)
+* Non-provisional applications (within one year of provisional)
+* Specification – written description
+* Claims – metes and bounds of legal right, used to compare to prior art and to accused product or process
+* Examination of applications
+** Subject matter requirement
+** Utility requirement
+** Disclosure requirements
+** “Prior art” searches
+*** Novelty
+*** Non-obviousness
+** Office Actions
+*** First office actions typically issue within two to three years of filing
+*** Allow, reject, or object to claims on individual basis
+** Responses
+*** Also called amendments, but may or may not amend the claims
+*** Concedes points or makes arguments if disagreement
+** Final Office Actions
+*** At least one claim is still not in condition for allowance
+*** Applicant’s options:
+**** Abandon
+**** File request for continued examination (RCE)
+**** File continuation application
+**** File continuation-in-part application
+**** Appeal
+** Notice of allowance – no pending rejections or objections
+** Issuance – to inventors, except in limited circumstances
+* Quality is a real concern
+** Time constraints placed on examiners
+** Limited resources and information available to examiners
+** High-volume patent strategies by applicants
+** Persistence by applicants
+** Difficulty applying patentability requirements
+** Volume of patent applications
+*** Steep increase since 2000
+*** Large volume of applications
+*** Potential reasons:
+**** Increasing understanding of value of patents and particularly high volume patent portfolio
+**** Difficulty gauging commercial potential early in the process
+**** Strengthening of patent rights by Federal Circuit
+**** Congressional schemes incentivizing patent filings
+**** Tool to attract venture capital funding
+**** Use as a signaling tool
+**** Increase in research productivity
+**** Block competitors and enhance bargaining power
+** Cost of obtaining patent rights
+*** Increasing steadily
+*** In 2014, median attorney’s fees for preparing a utility patent were $7k to $10,250
+*** Cost for prosecuting a filed application to issuance can easily add anywhere from $3k for a simple first office action allowance to $30k for two responses, an RCE, two more responses, and an in-office appeal
+* Patent attorneys versus patent agents
+** Agents must pass the patent bar exam, which requires certain educational requirements
+** Attorneys do not need to pass the patent bar exam to litigate, but it does make it easier
-i. Egbert v. Lippmann
+== {{anchor|Toc342061197}} II. Eligible Subject Matter ==
-. Critical date at the time was two years prior to filing
+USC § 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.”
-. Timeline:
+Five statutory categories, with the understanding that “anything under the sun made by man”:
+# Process
+# Machine
+# Manufacture
+# Composition of matter
+# Any new and useful improvement thereof
-a. 1855: Barnes made a corset w/ corset spring inside and gave to his future wife, Egbert
+Three judicially created exceptions:
+# Laws of nature (''Mayo'') – requires inventive concept
+# Physical phenomena (''Myriad'') – requires “act of invention”
+# Abstract ideas (''Alice'')
-b. 1858: Barnes gave another corset w/ spring to Egbert
+''Diamond v. Chakrabarty''
-c. Egbert and Barnes married
+S.Ct. 1980, p. 162
-d. 1863: Barnes showed springs to Sturgis
+RULE: While natural laws, physical phenomena, abstract ideas, or newly discovered minerals are not patentable, a live artificially-engineered microorganism is. Test asked whether the claimed invention was “made by man” in the sense of having “markedly different characteristics” as compared by nature.
-e. 1866: invention in general use
+''Mayo Collaborative Services v. Prometheus Laboratories, Inc.''
-f. July 1866: Filed for patent
+S.Ct. 2012, p. 172
-. Arguments against public use:
+RULE: You cannot patent laws of nature or pure applications of laws of nature – there must be sufficient additions/transformations beyond a restatement of the laws. Test asks whether the claimed invention includes an “inventive concept.” Very unpopular opinion, conflates eligibility with novelty and non-obviousness.
-a. limited use (only one person used only several examples
+''Association for Molecular Pathology v. Myriad Genetics, Inc.''
-b. No one saw the invention, was under clothing
+S.Ct. 2013, p. 186
-c. Close relationship of Barnes and Egbert
+RULE: Test asks whether the claimed invention includes an “act of invention” in what is not naturally occurring.
-i. Barnes maintained control of invention
+''Bilski v. Kappos''
-. Reasons for public use
+S.Ct. 2010
-a. even one public use is enough
+RULE: “Machine or transformation” test is not exclusive test for determining eligibility, but a useful and important clue. Implicit rejection of old Fed. Cir. “useful, concrete, and tangible result” test.
-b. invention does not need to be visible, some inventions inherently remain invisible to the public
+''Alice Corp. Pty. v. CLS Bank Int’l''
-. Public use:
+S.Ct. 2014, p. 213
-a. Inventor does not restrict nor hold the user to secrecy
+RULE: Two-step analysis: (1) Is the claim directed towards an abstract concept? (2) Is there an inventive concept therein (an element sufficient to ensure that the patent in practice amounts to significantly more than a patent on the concept itself)? Has resulted in only a handful of cases finding no invalidity, lots of claims invalidated.
-b. No control
+== {{anchor|Toc342061198}} III. Utility ==
-c. No later improvement
+U.S.C. § 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.”
-d. Generally the court does not look at general use to determine if “public use” has occurred
+''In re Schwartz''
-ii. Moleculon Research Corp. v. CBS, Inc.
+Fed. Cir. 2000, p. 233
-. Timeline:
+RULE: Initial burden is on USPTO to prove applicant has not met requirements. Applicant must then disprove their conclusion.
-a. 1957-62: Nichols made paper models of puzzle, showed it to several colleagues and explained how it worked
+Operability – claimed invention must be “operable.” Must work, do what the claim says, though doesn’t have to work perfectly or better than prior art did.
-b. 1968: Nichols constructed working prototype out of wood
+Non-deception – “one as may be applied to some beneficial use in society.” Not modern law after ''Juicy Whip''.
-c. Jan. 1969: Nichol’s boss sees prototype on Nichol’s desk and suggests that Moleculon attempt to commercialize the puzzle. Boss uses puzzle
+''Brenner v. Manson''
-(borrows it & takes it home).
-d. Feb. 6, 1969: Boss calls Parker Bros to inquire re: licensing of toys.
+S.Ct. 1996, p. 236
-e. March 3, 1970: Nichols files patent on behalf of Moleculon
+RULE: Operability and a substantial and specific utility are required. “Substantial” means having a real world use, significant and presently available benefit to the public – may prove useful at some future date after future research. “Specific” means not so vague as to be useless, well defined and particular benefit, and benefit specific to the subject matter to be claimed.
-f. Apr. 11, 1972: Patent issues (‘201) patent
+Note on design patents: protect new, original, and ornamental features. Only one claim: “Ornamental design for a _____ as in figure X.” Infringement test: ordinary user test in light of differences between patented design and prior art. Same test for validity.
-. Issue: Was invention in public use?
+== {{anchor|Toc342061199}} IV. Claiming and Disclosing the Invention ==
-. PH: District Court said that invention was not in public use because:
+USC § 112(b): “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”
-a. invention was under Nichols’ control entire time
+=== {{anchor|Toc342061200}} A. Claim Interpretation ===
-. Why did Circuit Ct. affirm this?
+''Phillips v. AWH Corp.''
-a. Nichols remained control entire time
+Fed. Cir. 2005, p. 63
-b. Standard of review is clear error. Court found no clear error.
+RULE: Intrinsic evidence includes the claim itself, the other claims (presumption of consistent use, claim differentiation), specification (“always highly relevant,” “usually, it is dispositive,” “single best guide to the meaning of a disputed term,” lexicography, disclaimers or disavowals), and the prosecution history (“because represents ongoing negotiation, it often lacks the clarity of the specification and is less useful”). Extrinsic evidence includes dictionaries and treatises, expert testimony, and inventor testimony. It’s considered less reliable than intrinsic evidence and is “unlikely to result in a reliable interpretation unless considered in context of intrinsic evidence.”
-c. relationship between Nichols and people who saw evidences retention of control.
+Interpreting the claim in the light of the spec == good.
-d. Use must be without limitation or restriction
+Importing limitations from spec to claim == bad.
-i. Ct. found that when boss borrowed it, relationship evidences retention of control – was implicit in relationship
+Canons of construction:
+* Claims should be construed to sustain validity, though ''Phillips'' limited this to situations where claims remain ambiguous after using all available tools
+* Notice function is best served by adopting narrower meaning of claims
-ii. “none of those participants had any basses for inferring that the puzzle was being given over by Nichols for their free and unrestricted use.
+''Unique Concepts, Inc. v. Brown''
-e. Private use is allowable w/out activation bar
+Fed. Cir. 1991, p. 79
-i. there was no evidence of “commercially motivated activity”
+RULE: “All elements rule” – to prove infringement, every element in the claim must be found in the accused device either literally or equivalently.
-iii. City of Elizabeth v. American Nicholson Pavement Co.
+Import-export rule: it is improper to import/read in a limitation from the written description and improper to eliminate or ignore (export) a limitation in order to extend a patent to subject matter disclosed but not claimed.
-. City of Elizabeth argued public use
+Role of patented device and accused device:
+* Claims aren’t to be construed by reference to the patented device; claims define the patent right, not the commercial product of the patentee
+* Claims are not to be construed by reference to accused device, but courts are permitted to have knowledge of the accused device to provide context for claim construction.
-. Nicholson argued experimentation
+Claim differentiation doctrine – limitations in a dependent claim cannot be read into the language of the independent claim; independent claim must be broader than dependent.
-. Why did the Ct. say it was not a public use?
+USC § 112: “(a) 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 or joint inventor of carrying out the invention. (b) The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
-a. experimental use negation
+=== {{anchor|Toc342061201}} B. Enablement ===
-i. bona fide intent of testing qualities is not a public use
+Purpose: information dissemination and constraining claim scope to ensure patent right does not exceed the scope of the disclosure
-. Rule for public use: lack of control, no intent to perfect or test qualities of invention.
+Test: whether the specification enables a person having ordinary skill in the art to make and use the claimed invention without undue experimentation.
-. Maintaining control is an indicator of experimentation.
+''O’Reilly v. Morse''
-iv. Lough v. Brunswick Corp.
+S.Ct. 1854, p. 92
-. Control:
+RULE: Spec must enable one of skill in the art to make and use the claimed invention without undue experimentation.
-a. prototype may be sold to help out w/ feasibility
+''Consolidated Electric Light Co. v. McKeesport Light Co.''
-b. control is down the list of factors
+S.Ct. 1895, p. 96
-. The fact that Lough was only waiting for people to respond if there were problems or defects was not enough to evidence experimentation.
+RULE: “If the description be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void.”
-. Key to remember: If an inventor gives his device to another without limitation, that is public use.
+Commensurability – optimize claim scope by limiting to disclosure.
-c. Experimental Sales § 102(b) (Applicant’s own activity)
+Genus-species claims: genus sometimes allowed, but more species disclosed the better.
-i. Pfaff v. Wells Electronics
+''Cedarapids, Inc. v. Nordberg, Inc.''
-. Reduced to Practice:
+Fed. Cir. 1997, p. 114
-a. exist
+RULE: In mechanical as opposed to chemical arts, a broad claim can be enabled by disclosure of a single embodiment. All that is required is that the amount of experimentation must not be unduly extensive.
-b. inventor tests to see that device fulfills purpose
+''Automotive Tech. Int’l, Inc. v. BMW of North Am., Inc.''
-c. Two-part test for application of on-sale bar (both must be fulfilled):
+Fed. Cir. 2007, p. 116
-i. subject of a commercial offer for sale
+RULE: Specification must enable the full scope of the invention, especially the novel aspect. Spec does not have to disclose what is well known in the art. Enablement is measured at the time of filing.
-ii. ready for patenting
+Undue experimentation factors:
+* Quantity of experimentation necessary
+* Amount of discretion or guidance presented
+* Presence or absence of working examples
+* Nature of the invention
+* State of the prior art
+* Relative skill of those in the art
+* Predictability or lack thereof in field
+* Breadth of claims
-. proof of reduction to practice before critical date or
+=== {{anchor|Toc342061202}} C. Written Description ===
-. proof that prior to the critical date inventor could have prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.
+USC § 112(a): “The specification shall contain a written description of the invention . . .”
-ii. Linear v. Micrel
+''Ariad Pharma., Inc. v. Eli Lilly & Co.''
-. Before critical date, Linear’s salespeople met with potential clients, made orders, etc.
+Fed. Cir. 2010, p. 127
-. There were not offers to sell the product, but only offers to sell.
+RULE: Test is whether the specification clearly allows persons of ordinary skill in the art to recognize that the inventor invented what is claimed. Test is “possession as shown in the disclosure.”
-a. So, the question becomes, was there an acceptance to the offer to buy?
+New Matter – corollary to written description, new matter is prohibited. Matter that does not find support in original spec. CIP applications are proper instead.
-. Burden of Proof fell upon Micrel to prove on-sale.
+''Gentry Gallery, Inc. v. Berkline Corp.''
-d. Statutory Bars – use by a 3d party
+Fed. Cir. 1998, p. 139
-i. Baxter v. Cobe
+RULE: You are limited to what you include in the disclosure as what you possess.
-. Even if the use was only done inside a laboratory, but was not “controlled,” it was public use
+=== {{anchor|Toc342061203}} D. Best Mode ===
-. Public policy: If knowledge is understood to be public, one cannot take that knowledge out of the public domain
+USC § 112(a): “The specification . . . shall set forth the best mode contemplated by the inventor of carrying out his invention.”
+* Not enforceable in litigation under AIA, but still determined by patent office
+* Subjective element: is inventor aware of a best mode?
+* Objective element: if so, from the perspective of an objective third party person having ordinary skill in the art, is it disclosed in the patent spec?
-. Cobe argued that the work was not done by or for the inventor, but independently. There was no chance of experimental use b/c it was not the inventor’s agent.
+=== {{anchor|Toc342061204}} E. Definiteness ===
-ii. Abbott Laboratories v. Geneva Pharmaceuticals, Inc
+USC § 112(b): “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”
-. On-sale bar applies even if buyer and seller do not know the nature of the product.
+''Nautilus, Inc. v. Biosig Instruments, Inc.''
-iii. Gore v. Garlock
+S.Ct. 2014, p. 144
-. Confidentiality agreement was not rigorously enforced, but that does not mean that the secret was out. No one could know the process just be looking at the machine itself.
+RULE: Test: “reasonable certainty” as to the scope of the claim from the perspective of people of ordinary skill in the art at the time of filing. Spec and prosecution history are relevant.
-. The patent was not the product, but a process, which was not public knowledge
+Means-plus-function limitations: when directed to software, the limitations are indefinite when the spec has not included sufficient “corresponding structure” in the form of an algorithm for performing a function recited in the limitation.
-. Public policy is to encourage prompt disclosure
+== {{anchor|Toc342061205}} V. Novelty ==
-. Bedrock policy of public use:
+=== {{anchor|Toc342061206}} A. 35 USC § 102(a) ===
-a. If you have a process patent and the product becomes publicly known through your own actions, your are barred from patentability
+§ 102(a) – “A person shall be entitled to a patent unless . . . 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.”
-b. If a 3d party discloses your process (or at least sells your product) you may not be barred.
+Two comparisons:
+# Content of prior art versus the claim at issue
+# Effective date of prior art versus date of invention for particular claim
-. The law favors the inventor who files quickly, not the one who sits on their patent
+''Atlas Powder Co. v. Ireco Inc.''
-. This case was wrongly decided: § 102(a) should have been used, as the Cooper machine was used and known before Gore’s invention, not just the filing date.
+Fed. Cir. 1999, p. 247
-e. § 102(a) “known or used”
+RULE: Anticipation requires each element of the claim at issue to be present expressly or inherently in a single prior art reference.
-i. Gillman v. Stern
+Anticipation: each element of the claim at issue must be disclosed expressly or inherently in a single prior art reference. The prior art must include an “enabling disclosure” so that one of skill in the art can make and use the invention based on the prior art. The elements of the claimed invention must be arranged in the prior art as in the claims, not just disclosed in the prior art.
-. standard J. Hand used was “first and original inventor”
+Inherency: The element not expressly disclosed must necessarily be present or inevitably flow from the prior art reference or be the natural result of using the prior art. Just because the missing element is one of several ways a person of ordinary skill in the art could use a disclosed device, for example, is insufficient.
-. Haas invented similar machine before.
+==== {{anchor|Toc342061207}} 1. Knowledge or Use in US ====
-a. Haas’ machine had no tube to regulate air, but Ct. said this difference was unimportant for two reasons:
+Compare date of invention with date known or used by others in the US. Publicity requirement is met by public use without efforts to maintain secrecy.
-i. original machine did not have to claim the tube (the Ps invention claims every element in original machine
+''Gayler v. Wilder''
-ii. would be obvious for those with ordinary skill in art to put tube
+S.Ct. 1980, p. 256
-. Rule: “Just as a secret use is not a “public use,” so a secret inventor is not a “first inventor.”
+RULE: Private use of an invention does not render a patent non-novel, the use must be public.
-. Court distinguishes between a “secret user” and a “public user which does not inform the art”
+''Rosaire v. Baroid Sales Div.''
-a. watch wearer – everyone sees it, public use is there even though there is no informing of the art
+th Cir. 1955, p. 258
-. “public knowledge” – knowledge must be reasonably  accessible to the public to qualify
+RULE: Public use doesn’t have to be informing, just without attempts at secrecy.
-ii. In Re Borst
+==== {{anchor|Toc342061208}} 2. Patented Anywhere ====
-. prior memo was declassified before filing date
+USC § 102(a): “. . . patented in this or a foreign country . . .”
-a. prior memo contained enabling disclosure
+Key question: did the prior patent issue before the invention date of the applicant?
-b. author had never actually made anything – no actual reduction to practice
+Everything disclosed in the prior art patent qualifies, not just the claims.
-c. Schlittler
+==== {{anchor|Toc342061209}} 3. Printed Publication Anywhere ====
-i. journal article was submitted before filing date and published after filing date, so lower court found anticipated
+Public accessibility is key. Factors:
+* Distribution and indexing
+* Length of time the display was exhibited
+* Expertise of target audience
+* Existence or lack of reasonable expectations that the material displayed would not be copied
+* Ease with which the material could have been copied
-ii. Higher court said article was not prior art b/c it was not known by others b/c:
+''In re Klopfenstein''
-. no actual reduction to practice
+Fed. Cir. 2004, p. 292
-a. disclosure of a conception only
+RULE: Physical printing or publication is not required. Key consideration is the public accessibility.
-. not available to the public
+=== {{anchor|Toc342061210}} B. 35 USC § 102(e) ===
-a. was not published until after the filing date
+USC § 102(e): “. . . the invention was described in (1) an application for patent, published under § 122(b), by another filed in the US before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the US before the invention by the applicant for the patent . . . “
+* Published US applications qualify as prior art as of their filing date (issuance date for 102(a))
+* Issued US patents qualify as prior art as of their filing date, not publication or issue date.
-iii. In relation to this case, requirements have changed:
+''Alexander Milburn Co. v. Davis-Bournonville Co.''
-. Atomic energy act means that classified material is still considered available to public
+S.Ct. 1926, p. 268
-. actual reduction to practice not necessary; only an enabling disclosure is sufficient
+RULE: Issuance of a patent qualifies it as prior art as of its filing date, including all contents (not just claims).
-d. Presumption is that filing date is invention date, then inventor has an opportunity to rebut by filing affidavit of invention date
+=== {{anchor|Toc342061211}} C. 35 USC § 102(g) ===
-e. constructive reduction of practice:
+USC § 102(g): “. . . before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.” “In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.”
-i. enabling disclosure is in a patent application
+''Thompson, SA v. Quixote Corp.''
-.
+Fed. Cir. 1999, p. 273
-f. §102(a)-(b) “patented or described in a printed publication”
+RULE: Corroboration is required when the testifying inventor is asserting a claim of derivation or priority of invention and is a named party/employee of assignor to named party/otherwise in a position where they stand to substantially and directly gain by his or her invention being found to have priority. Kind of arbitrary, as alleged inventors are always self-interested.
-i. Cronyn
+USC § 102(g)(1): “. . . during the course of an interference . . . another inventor involved therein establishes, to the extent permitted in § 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed . . .”
+* Applies only to interferences
+* Inventive activity may be in US or NAFTA/WTO country
+* Interferences not permitted under AIA
-. Student Thesis are stored by author and title, many titles are non-descriptive
+=== {{anchor|Toc342061212}} D. Hilmer Doctrine and Foreign Activity ===
-. rejection was §102(b) printed publication from than one year prior to the filing date
+Paris Convention allows patent applicants to obtain the benefit of their foreign filing dates when their applications are first filed in member countries. This means that applicants can use their earlier foreign filing date to eliminate prior art. Foreign priority dates cannot be used by USPTO or an accused infringer to show a patent or application qualifies as prior art. Exception: if the application designated the US and was published in English, it may be treated as a US patent.
-a. two relevant times:
+''In re Hilmer (Hilmer I and II)''
-i. 102(b): one or more year filing date
+CCPA 1966, p. 282/CCPA 1970, p. 288
-ii. 102(a): prior to invention date
+RULE: Foreign filing dates may only be used defensively by applicant, not offensively by office or accused infringer.
-. Previous cases of interest:
+Note that the AIA overturned both cases, so any applications filed after 3.16.13 do not follow the ''Himer'' doctrine and may be used offensively against an applicant.
-a. Bayer
+== {{anchor|Toc342061213}} VI. Priority ==
-i. thesis was pubic if “accessibility is sufficient  to raise a presumption that the public concerned with the art would know [of the invention]”
+Determining an invention date: the invention date is the date of reduction to practice, but the first to conceive of the invention is entitled to prove an invention date at the beginning of his or her period of diligence that results in a reduction to practice.
-ii. papers were shelved but not indexed
+Test for priority:
+* Priority goes to the first party to reduce an invention to practice.
+* Where a party is first to conceive but second to reduce, that party must demonstrate reasonable diligence towards reduction to practice from a date just prior to other party’s conception to their own reduction to practice.
+* Abandonment, suppression, or concealment can eliminate right to priority.
-b. Hall
+''Mahurkar v. CR Bard, Inc.''
-i. papers were indexed and cataloged before critical date, so were published
+Fed. Cir. 1996, p. 306
-. Analysis:
+RULE: Invention date is the date of conception and reduction to practice prior to the date of alleged prior art or date of conception plus diligence pre-dating prior art and constructive reduction to practice (filing application).
-a. Papers are not public because public concerned with the art would not know of the invention
+Conception – formation in the mind of a definite and permanent idea of the complete and operative invention, so clearly defined that only ordinary skill in the art would be necessary to reduce to practice without extensive research or experimentation. Corroboration required for inventor testimony, and evidence is only allowed if from US, NAFTA, or WTO country.
-ii. Carlson
+Reduction to practice:
+* Constructive – filing patent application that meets § 112 requirements with respect to the claim at issue (enablement, best mode, etc.)
+* Actual requires
+** Construction of an embodiment or performance of process that meets all claim elements
+** Demonstration that the invention is suitable for its intended purpose
+** Simple construction for simple inventions, or simulated working conditions for more complex inventions that require some testing.
+** Corroboration required for inventor testimony from US, NAFTA, or WTO countries.
-. In Germany, deposit a photo, drawing, etc. at a local office, which was then published as a list of “design patents”
+''Griffith v. Kanamaru''
-a. entry contains city of deposit and a copy of the drawing or photo deposited
+Fed. Cir. 1987, p. 314
-b. rights enforced in Germany
+RULE: Must be reasonable diligence towards reduction to practice.
-i. prevent copying, but not independent development
+Diligence – pursuing the goal in a reasonable manner. Reasonable, everyday limitations and problems are excusable, but delays due to commercialization or pursuing other inventions are not.
-. Lower Ct rejected for:
+''Fujikawa v. Wattanasin''
-a. 102(a) b/c invention was patented... in this or a foreign country before the invention date
+Fed. Cir. 1996, p. 318
-b. 103 for obviousness
+RULE: Abandonment, concealment, or suppression can only occur after reduction, and may be ok as long as inventive activities are resumed prior to other party’s conception.
-. P argued that the knowledge was not accessible enough to be prior art.
+Abandonment, concealment, or suppression
+# Intentional – requires evidence inventor intentionally delayed filing in order to prolong period of secrecy
+# Inferential – arises when there is a relatively long and unexplained gap between an actual reduction to practice and a filing of a patent application
-. Rule: a hypothetical person is presumed to know all the pertinent prior art, whether or not the applicant is actually aware of its existence
+== {{anchor|Toc342061214}} VII. Statutory Bars ==
-a. Publicly available is the standard, not easily accessible
+USC § 102(b): “A person shall be entitled to a patent unless . . . 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.”
-. Patented: some grants of rights & be publicly available
+Four categories:
+# Patented anywhere in the world
+# Printed publication anywhere in the world
+# In public use in the US
+# On sale in the US
-g. § 102(c) abandonment
+More than one year prior to the effective date of application (not date of invention)
-h. §102(d) prior foreign patent application
+USC § 102(d): Applicant is barred from obtaining a patent if he or she filed and obtained a patent in a foreign jurisdiction and filed in the US more than one year after filing in the foreign jurisdiction.
-i. Kathawala
+=== {{anchor|Toc342061215}} A. On-Sale ===
-. Rejected for §102(d) filing application in foreign country before critical date
+A pardon is entitled to a patent unless the invention was on sale in the US more than a year to the application date.
-. Requirements of §102(d)
+''Pfaff v. Wells Electronics''
-a. file in US more than 1 year before US filing
+S.Ct. 1998, p. 427
-b. file in US after foreign issuance
+RULE: Two-part test: (1) commercial sale or offer for sale of the invention and (2) invention must be ready for patenting (either actual reduction to practice or drawings or description sufficient to enable one of skill in the art to make the invention).
-. Ps argument:
+''Space Systems/Loral, Inc. v. Lockheed Martin Corp.''
-a. Greek patent claims were invalid b/c statutory unpatentable subject matter
+Fed. Cir. 2001, p. 432
-i. Court said that validity is not concern, the patent was issued
+RULE: Conception alone is not enough to show that an invention is ready for patenting.
-b. Spanish patent was officially published after filing date (even though enforcement of Spanish patent occurred prior to US filing date)
+''Plumtree Software, Inc. v. Datamize LLC''
-i. Court said patented means patent was granted and K’s rights became fixed.
+Fed. Cir. 2006, p. 437
-. Why does patent in this case not need be “public” for § 102(d) (only rights granted) but for §102(a) must be public and rights granted?
+RULE: Two ways to put a method on sale: offer to perform the claimed method or actual performance of the method coupled with a promise to pay. Focus is on the result of the method.
-a. different definition of word “patented” in each statute – for 102(a) applied to other people patenting invention, for 102(d), applied to same person applying in the foreign country.
+Assignments and licenses – assignments of patents are not sales or offers for sales, as it is a sale of patent rights, not the invention itself. Licenses also not a sale/offer for sale, as it’s just an agreement not to enforce rights of exclusion against licensee.
-. In this case, the invention is defined not by claims, but by the disclosure – against everything we learned in other cases.
+=== {{anchor|Toc342061216}} B. Public Use ===
-i. §102(g) – prior invention
+USC § 102(b): “A person shall be entitled to a patent unless . . . the invention was . . . in public use . . . in this country, more than one year prior to application.”
-i. Interferences
+''Egbert v. Lippmann''
-. Unique to US patent law as a result of the first-to-invent system
+S.Ct. 1882, p. 446
-. Can be started by the USPTO pro se or by a patent applicant
+RULE: Public use without restriction or experimentation is sufficient to trigger bar.
-ii. Important dates/occurrences:
+''Motionless Keyboard Co. v. Microsoft Corp.''
-. conception date
+Fed. Cir. 2007, p. 448
-. reduction to practice date
+RULE: Demonstrations to potential investors and testing are not sufficient.
-. filing date
+Public – unrestrained use by someone other than the inventor, use in public by the inventor outside of control and testing, does not require that the invention be seen by members of the public.
-. conception date2
+Use – actual use for intended purpose/use for commercial purposes including every element of the claim, one use is sufficient.
-. filing date 2
+Private use, under the inventor’s control, not for commercial purposes does not trigger the bar, nor does secret third party use, even if commercial.
-. invention date 2
+=== {{anchor|Toc342061217}} C. Experimental Use ===
-. diligence
+Argument by inventor to negate allegations of on-sale or public use bars, as it allows the inventor time to test inventions and perfect them prior to application.
-. abandonment/suppression/concealment
+''City of Elizabeth v. American Nicholson Pavement Co.''
-iii. Conception
+S.Ct. 1878, p. 472
-. Oka v. Youssefyeh
+RULE: Installation of wooden pavement with frequent checks on quality and performance did not trigger the public use bar.
-a. Oka filed first, Y said he conceived first, but:
+''Electromotive Division of General Motors Corp. v. Transportation Systems Division of General Electric Co.''
-i. conception requires both a description (idea) and possession of a method for making it
+Fed. Cir. 2005, p. 476
-. Just a drawing of the compound was not enough
+RULE: Inventor control and customer awareness of experimental nature must be proven, though every feature of the claim need not be tested.
-. Types of conception:
+''Lisle Corp. v. A.J. Manufacturing Co.''
-a. directing conception: the idea or conception that a certain desired result may be obtained by following a particular general plan (aka the inventive concept)
+Fed. Cir. 2005, p. 484
-b. “the selection of the means for effectively carrying out the directing conception.”
+RULE: Customer awareness of experimental use may outweigh absence of confidentiality, restrictions on use, or records. Examiner or accused infringer must prove public use, then patent owner can rebut with experimental use defense. Standard is “clear and convincing.”
-ii. In the case of a tie, the winner is the senior inventor – the junior inventor must bring forth evidence that he invented before
+Relevant factors:
+* Necessity for public testing
+* Amount of control over the experiment retained by the inventor
+* Nature of invention
+* Length of the test period
+* Whether payment was made
+* Whether there was a secrecy obligation
+* Whether records of the experimentation were kept
+* Who conducted the experiment
+* The degree of commercial exploitation during testing
+* Whether the invention reasonably requires evaluation under actual conditions of use
+* Whether testing was systematically performed
+* Whether the inventor continually monitored the invention during testing
+* The nature of the contacts made with potential customers
-. Policy: we want to encourage inventors to file quickly, so we give incentive for earlier filing
+Most important two: control by inventor and knowledge of testing by customers.
-b. Rule: Conception does not work unless inventor also conceives a method to make the invention
+Experimental use ends with actual reduction to practice or when the invention is ready for patenting (requires no further testing to confirm the invention will work).
-c. Rule II: Inventor should find corroboration for conception date
+=== {{anchor|Toc342061218}} D. Third-Party Activity ===
-iv. Reduction to Practice
+Third-party activities can also trigger bars. This is to prevent the inventor from taking an invention out of the public domain and encourages early filing. The law favors early filing, not a third party who doesn’t disclose to the public but engages in secret commercial use (inventor secret activity triggers bar, third party secret use does not).
-. Scott v. Finney
+''Evans Cooling Systems, Inc. v. General Motors Corp.''
-a. senior party= Finney, junior party= Scott
+Fed. Cir. 1997, p. 460
-b.  Scott used a video demonstration of a surgeon implanting his device and demonstration
+RULE: “Stolen invention” put on sale without inventor’s knowledge can still trigger the on-sale bar.
-c. Patent office said that video was not actual working conditions
+== {{anchor|Toc342061219}} VIII. Non-Obviousness ==
-d. Fed. Cir. said that the video showed that the differences between the invention and prior art worked, and the court could use prior art practical knowledge to determine that the other aspects of the invention would properly work
+Pre-AIA 35 USC § 103 – “(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 , 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.”
-i. This is the common-sense approach
+Post-AIA 35 USC § 103 – “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.”
-. Does it work for its intended purpose?
+=== {{anchor|Toc342061220}} A. Foundation of § 103 ===
-v. Dilligence
+Replaces “invention” requirement, which gave too much discretion to the courts. Makes non-obviousness a question of law based on subsidiary factual findings. Analysis is just before invention (old) or filing (AIA).
-. Gould v. Schawlow
+''Hotchkiss v. Greenwood''
-a. Gould had to show diligence or conception before Schawlow’s conception date (during the crucial period)
+S.Ct. 1851, p. 331RULE: Changing material of an invention to a more effective one is not sufficient.
-i. Had to show diligence during the entire critical period
+Old tests:
+* “Flash of genius” – not good, makes no sense
+* “Synergism” requirement – repetition of novelty, really. Combining things in the prior art must work together in a new way to create synergism
+* Lots of strict/amorphous language led to enactment in 1952 of § 103.
-b. Holding: Gould was not diligent during the entire critical period – did not account for the entire critical period – “acts giving invention specific embodiment lacking”
+=== {{anchor|Toc342061221}} B. Graham Test and Secondary Considerations ===
-c. Bottom line: Gould should have described critical period actions with more detail to show diligence
+Graham v. John Deere Co.
-i. The fact that the invention worked was not enough to show diligence – his diligence needed to be demonstrated
+S.Ct. 1966, p. 336
-vi. Patent Award to the Second Inventor
+RULE: Four step analysis:
+# Determine the scope and content of prior art
+# Ascertain differences between prior art and claims at issue
+# Resolve the level of ordinary skill in the art
+# Determine obviousness or nonobviousness of claimed invention from perspective of a person of ordinary skill in the art at the time of invention, considering the above and secondary considerations.
-. §102(g)(2): a patent granted on an application for patent by another filed in the US before the invention by the applicant for patent . . .
+''United States v. Adams''
-.
-. Apotex v. Merck – Ping-Pong case
+S.Ct. 1966, p. 342
-a. Apotex is the “inventor” so their patent is presumed valid, Merck has the burden by proving invalidity by “clear and convincing” evidence
+RULE: Factors favoring non-obviousness include unexpected advantages, proceeding contrary to accepted wisdom, disbelief expressed by experts, later recognition of significance, and inability to find prior art in crowded technology area
-b. Merck met its burden so Apotex then had the burden of showing abandonment, suppression, or concealment (actively or inferentially) by production of evidence
+Non-obviousness permits combination of prior art and is a question of law based on factual inquiries. Patent applicant or patentee can argue that the prior art teaches away from the invention.
-c. Apotox met this by producing evidence, so Merck has burden of proving invalidity again
+Secondary considerations: (require a “nexus” to the inventive features)
+* Commercial success – must be due to the technical merits of the claimed invention, not just due to first mover advantage, aggressive advertising, unclaimed feature, litigation-induced cost of defense settlement licenses.
+* Long felt, but unsolved needs
+* Failure of others
+* Copying
+* Licensing
+* Respect by competitors/praise by those in the field
+* Industry skepticism
+* Unexpected results (particularly in pharma)
-d. Merck proved that Apotex’s patent was invalid by proving that Merck did not abandon the invention
+=== {{anchor|Toc342061222}} C. KSR ===
-i. Key to avoiding abandonment, suppression, or concealment is making benefits available to the public
+''KSR International v. Teleflex, Inc.''
-ii. Merck made benefits available to public by selling tablets to the public, which could have been reverse-engineered by one skilled in the art (could have figured out the process by which the tablet is made)
+S.Ct. 2007, p. 355
-j. § 102(e)-(f) – prior applications, Derivation, “Before the Invention . . . By the Applicant”/ “Date of the Application for Patent”
+RULE: “Reason to combine” test – inquiry into a teaching, suggestion, or motivation to combine elements in prior art is a relevant factor to consider, though the reason itself doesn’t have to be shown in the prior art (can be implicit).
-i. Alexander Milburn v. Davis
+USPTO’s list of “exemplary rationales” to base on obviousness rejection on (MPEP 2141):
-. Statute: person had to be the original and first inventor
-. D: attempted to show that the patent holder was not the inventor
-. 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?
-. the inventor is the one who claims the invention
-i. Clifford failed to claim, so he was not the inventor
-. 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
-. 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
-. § 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
-. Defendant argued that a catalog activated a §102(a) prior art ban
-. 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
-. Claim at issue:
-a. Main elements claimed:
-i. less than propylene left after polymerization
-ii. 50-60% polypropylene
-. 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%
-. Stryker tried to show that his invention date was before Harband’s filing date by affidavit
-. 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 %
-. Stryker argued that his affidavit only had to relate to what the prior reference (Harband’s patent) disclosed
-. 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
-. 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
-. Costello tries to relate 2nd application back to original app under § 120
-a. § 120 rules:
-i. copendency
-ii. reference
-iii. requirements of §112
-. Costello successfully swears back invention date prior to coworkers’ paper (which was before Cereijo’s filing date) because coworkers got it from him.
-. 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?
-. The material itself was not new, and was known to those with ordinary skill in the art.
-. “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.
-. If 2 +2 = 4, there is no synergism
-. 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
-. “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”
-. Got rid of “Flash of genius” decisions
-v. “subject matter as a whole would have been obvious...”
-. 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):
-. 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
-. 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
-. 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
-. No prior art showed a combination of A, B, or C.
-. 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?
-. Patent examiner must come forward with prima facie evidence of obviousness, after which
-. Patentee rebuts the prima facie case of obviousness
-ii. Factual Questions re: obviousness
-. 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?
-. 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:
-. Teaching, Motivation, or suggestion (T M S) to combine prior art must all be present (in addition to all elements)
-. D. Ct. must have a clear finding that there is a T M or S to combine
-ii. Example: KSR international v. Teleflex
-. brief that argues before the S. Ct. that standards must be tightened for obviousness determinations
-. Fed. Cir. #: 04-1350
-. Solicitor General will submit a brief, and then could make a decision
-. Current case to follow in determining obviousness standards
-iii. Debate today: are standards of patentability too low?
-. Anti-trust organizations argue that too many patents do not stimulate the economy but hamper it
-k. In Re Rouffet
-i. Current Patent:
-. low-earth orbit (non geo-synchronous) satellites transmitting fan-shaped beam
-. 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
-. But the difference is an obvious one
-ii. Prior art references:
-. King:
-a. Teaches that low-earth orbit satellites are not new
-. Rosen:
-a. Teaches the use of geo-synchronous satellites transmitting in fan-shaped beams
-. Ruddy:
-a. Molniya orbit (always follows the same path through the sky when viewed from a fixed point – narrow elliptical apogee loop)
-iii. Analysis:
-. 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)
-. 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?
-. 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
-. 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?
-. 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:
-. sandwich assay
-a. labeled antibody
-b. antigen
-c. second antibody bound to a solid insoluble carrier
-. Monoclonal antibodies
-a. purified antibodies
-. affinity of antibodies > 108 L/mol
-ii. Prior Art
-. K&M
-a. easy way to make monoclonal antibodies
-i. monoclonal antibodies are not new (discovered 3 years before)
-. 2nd group of lit. and patents – CJPS
-a. using polyclonal antibodies in sandwich assays
-. 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.
-. claim is obvious in light of prior art
-a. objective considerations by court:
-i. independent development at about the same time
-. 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
-. economic success came because of a large amount of marketing
-. 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
-. Fed Court said: there was no TMS anywhere in prior art that present invention could not be done
-. 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?
-. 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
-. Claim 36:
-a. combination of ibuprofen (I) and pseudoephedrine (PDE) range of ratios from 1.5 to 1 – 8 to 1
-. Claim 37
-a. 200 mg Ibu
-b. 30 mg PDE
-. Claim 47 & 48
-a. method of using components of claims 36 & 37 in “combinatory immixture”
-ii. Prior Art:
-. Cotylenol
-a. acetaminophen
-b. PDE
-c. single unit dosage
-. aspirin & PDE
-. Doctors prescription
-a. I
-b. PDE
-c. separate pills, prescribed together
-iii. Differences between prior art and claims
-. Cotylenol
-a. claims use I instead of acetaminophen
-b. prior art used separate tablets, not
-. aspirin and PDE
-a. claims I instead
-b. “combinatory immixture”
-. Doctor’s prescriptions
-a. single unit dosage instead of “combinatory immixture”
-iv. P’s arguments
-. 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.
-. 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:
-. 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
-. 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
-. 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:
-. 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:
-. “obvious at the time the invention was made”
-. Foster argued that the time the invention was made was before the prior art articles, so it was not obvious at that time
-. 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:
-. First app, when combined with another app, renders patent at issue obvious
-ii. I:
-. 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
-. Court: patent application becomes prior art at the time of filing (from Millburn)
-. 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:
-. What?
-. When?
-. In What Form?
-. Where?
-. Who?
-ii. (102(a) prior art):
-. the claimed invention
-. before app’s invention date
-. known or used
-. in US
-. by others
-iii. (102(a) prior art):
-. the claimed invention
-. before app’s invention date
-. printed publication
-. anywhere
-. by another
-iv. (102(b) prior art):
-. the claimed invention
-. more than one year before app’s filing date
-. something on sale or in public
-. in US
-. by anyone
-v. (102(e) prior art):
-. the claimed invention or any prior art for obviousness
-. filing of prior application occurs before invention date
-. published or issued US patent application
-. filed in US
-. by another
-vi. 102(g) prior art:
-. the claimed invention or any prior art for obviousness
-. Before applicant’s invention date
-a. determined:
-i. conception w/ diligence or
-ii. reduction to practice
-. actual
-. constructive (filed application)
-. Actually reduced to practice (constructed)
-a. IF: not abandoned, suppressed, or concealed
-. in US
-. by another
-vii. 102(f) prior art:
-. claimed invention or any prior art for obviousness
-. before invention of application
-. any subject matter communicated to applicant
-. anywhere
-. by another
-d. In Re Bass
-i. Facts:
-. inventor J filed prior art 10/64
-. inventors B & H filed prior art 8/65
-. 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”:
-. same inventors, but different entity:
-a. B, J, & H are different inventive entity than B & H, etc.
-. “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?
-. 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:
-. 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:
-. 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:
-. Oddzon holds a design patent
-ii. Defense argued:
-. 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:
-. the confidential designs would never become publicly known
-. No public knowledge b/c not prior art
-v. Holding:
-. 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:
-. written description
-. enablement
-. 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
-. proposed amendments would do away with the best mode requirement
-b. Enablement
-i. Gould v. Hellwarth
-. Issue: does Gould’s patent meet the enablement requirement?
-. 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
-. A “germ of an idea” is not enough to fulfill enablement
-iii. Atlas v. DuPont
-. 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
-. don’t use past tense
-iv. Vas-Cath Inc. Mahurkar
-. Facts:
-a. Plaintiff’s original patent was a design patent
-b. P tried to file a continuation from design patent for utility patent
-. Issue:
-a. Can the design patent fulfill the §112 requirements?
-. Principle reason for written description:
-a. Explain how to make and use
-b. show limits of invention claimed to the public
-. Important case for § 112
-v. Gentry Gallery v. Berkline Corp.
-. 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
-. Rule: claims cannot be broader than the written description
-vi. University of Rochester v. G.D. Searle & Co.
-. 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
-. Issue:
-a. does the lack of description of the NAID invalidate the patent?
-. Outcome:
-a. There was no description because there was only a “germ of an idea”
-. 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
-. 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.
-. § 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”
-. How to enable an invention without describing the invention:
-a. have obvious variants of the invention that only use different starting materials
-vii. Barker
-. not talked about in class
-VII. Utility
-a. Generally:
-i. Statutes:
-. § 101 requires that the invention has utility
-. § 112 requires that the specification describes in sufficient detail the utility
-ii. Why is Utility a requirement?
-. It is in the constitution
-. Quid pro quo – you need to give some utility to the public
-.
-b. Lowell v. Lewis
-i. Patent statute language: “useful invention”
-ii. Definition of Useful:
-. helpful or “useful” to public
-. 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:
-. 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
-. 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
-. Manson points toward an article that indicates than a similar steroid (a homologue) has utility
-. Manson also argues that his process is useful b/c it creates a product
-ii. Standard:
-. 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
-. Previously, the standard (from Nelson) for utility was: useful to chemists
-. The standard from Bremner was: use for the product must be known
-iii. Holding:
-. SC deferred to the examiner’s findings of non-utility, they did not want to overturn a finding of fact
-. There was not utility because it was not the exact same product as the one in the article
-. 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:
-. Applicant must allege utility
-a. Tumor models were similar enough to count
-. 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:
-. Is the fake pre-mix juice dispenser unpatentable due to deception?
-ii. What would the court strike down?
-. unlawful deception
-iii. Rule:
-. There is no clause in patent statute that exempts deceptive inventions from patentability
-==Part II Infringement==
+(A) Combining prior art elements according to known methods to yield predictable results;
-Direct and Indirect Infringement
+(B) Simple substitution of one known element for another to obtain predictable results;
+(C) Use of known technique to improve similar devices (methods, or products) in the same way;
+(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
-U.S.C. §271
+(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
-• (a): Direct Infringement
+(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
-•
-o Four questions to ask re: infringement
-o
- Action: What occurred?
-
- Time: When did it occur?
-
- Where: Where was it done?
-
- Object: Object of the action?
-
-o Questions under (a) Direct Infringement
-o
- Action: make, sell, offer to sell, use, import
-
- When: during patent term
-
- Where: Within the US
-
- Object: Patented invention
-
-• (b): Active Inducement
-•
-o Questions
-o
- Action: providing instructions (for example)
-
- Time: During the term of the patent (actions before patent issuance are not infringement nor are they inducement)
-
- Where: anywhere
-
-• (c): Contributory Infringement
-•
-o Questions:
-o
- Actions: offer to sell or imports
-
- Time: During term of patent (same as above)
-
- Where: w/in US
-
- Object: component of patented invention with no substantial noninfringing uses (SNIU), or a material or apparatus for use in practicing a patented process that has no SNIU
-
-• (g): Product by Process
-•
-o Questions
-o
- Actions: offer to sell, sell, import, or use
-
- Time: actions above occur during patent term (time of process not important)
-
- Where: actions above occur in US
-
- Object: product made by a patented process
-
-• Deepsouth
-•
-o Basic Presumption: you cannot sell something you have not made
-o
-o If there is no direct infringement, there cannot be any inducement
-o
-o Deepsouth would still not be a direct infringer even if they sold their product w/in US
-o
-o Inducement is harder to prove- inducement must have intent and knowledge
-o
-o 271(c) contributory infringement requires knowledge, and knowledge that the combination for which your part is adapted (no other use but infringing) actually infringes that patent
-o
- You know if: you get a letter saying that you are infringing
-
- If you are a direct infringer (271(a), you do not need to know
-
-o 271(b): must show intent to infringe
-o
- Must know about the patent
-
- must intend to cause the acts constituting infringement
-
- Uncertainty in the law: some courts say that you have to intend to actually have infringement.
-
- General Rule: If you sell an item with substantially noninfringing uses with no instructions (on how to infringe a patent) you do not have intent
-
- Two standards right now in the Fed. Cir.
-
-• HP standard to find intent: intend the acts to occur and know about the patent
-•
-• Mannan standard: intent must be for acts to infringe the patent
-•
-• (f): components:
-•
-o seems specifically made to curb selling of components
-o
-o Does not change the idea that you must make before you can sell something
-o
-• CR Baird v. Advanced Cardiovascular
-•
-o Issue: Are there any substantial noninfringing uses of the device the D sells?
-o
- If so, no liability under § 271(c)
-
+(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
+“Obvious to try” – for a claimed invention to be obvious after KSR, the prior art must contain an enabling methodology for practicing the claimed invention, there must be a teaching, suggestion, or motivation to modify or combine the prior art to practice the claimed invention, and there must be evidence suggesting that a person of ordinary skill in the art would have a reasonable expectation of success.
+Note that only analogous prior art may be used. This includes prior art in the same field of endeavor, regardless of the problem to be solved, or art reasonably pertinent to the particular problem with which the inventor is involved, if not in the same field.
-First Sale Doctrine; Implied License; Repair and Reconstruction
+=== {{anchor|Toc342061223}} D. Ordinary Skill in the Art ===
-• Adams v. Burke
+The higher the level of ordinary skill, the more difficult it is to satisfy the non-obviousness requirement/the easier to prove obviousness. Size of gap between ordinary skill and the invention is smaller with greater skill, lower with lesser skill. Patentee has the incentive to show that the inventors have much more than ordinary skill, as their skill is a factor in determining ordinary skill.
-•
-o original inventors assigned patent w/in 10 miles of Boston
-o
-o inventors assigned remained of patent rights
-o
-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?
-o
- 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?
-o
- 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
-o Implied license:
-o
- Can one who purchased a patented invention in an unconditional sale re-sell?
-
-• Yes, they have an implied license to do with the invention what they want
-•
- First Sale Doctrine: After one authorized first sale, an implied license accompanies the article and permits the person do sell, use, etc. the invention.
-
-• Met-Coil v. Korners Unltd.
-•
-o Facts: There is not a patent on the machine or corner pieces (the things the patentee was selling) but only the method for which the machine and corner pieces are selling
-o
-o Korner’s Argument: Met-Coil’s sales to customers are an implied license to Met-Coil’s customers, and that license says that the customers cannot infringe if they own a license. If there is no infringement, there is no inducement by Korner.
-o
-o Bandag Test to establish an implied license w/ sale of an item by patentee (or authorized by patentee):
-o
- Item sold by patentee must not have substantial noninfringing uses
-
- Circumstances of the sale must “plainly indicate that the grant of a license should be inferred.”
-
-o Korner can only sell their items to people who had a license, so they must have only been customers of Met-Coil
-o
-o An implied license to arise when the patentee sells something covered by the patent, (First Sale Doctrine) or if the sale by the patentee meets the Bandag Test
-o
-• Aro Manufacturing v. Convertible Top Replacement
-•
-o Facts: There are no substantial noninfringing uses of what Aro is selling
-o
-o Issue: is Aro making a repair or simply making an entire new top?
-o
- If it’s only a repair, it is definitely not infringement
-
- Determinative Question: Whether the car owners are liable (if they are direct infringers by replacing the fabric)
-
-• Customers have a license to use, and repair falls under use, but not a license to make
-•
-o Test to determine if it is a repair or a making
-o
- replacing one unpatented component of a combination patent is a repair
-
- In fact making a new article is the only way to “make” the patent
-
-o Repair v. make: Are you repairing it, or are you constructing it?
-o
- This is important b/c a license to use (and repair) comes with a purchase of the item from the patentee
-
+Factors:
+* Educational level of inventor
+* Type of problems encountered in the art
+* Prior art solutions to those problems
+* Rapidity with which innovations are made
+* Sophistication of the technology
+* Educational level of active workers in the field
-Claim Interpretation and Literal Infringement
+== {{anchor|Toc342061224}} IX. Enforcing Patent Rights ==
-• Markman v. Westview Instruments
+=== {{anchor|Toc342061225}} A. Claim Interpretation ===
-•
-o Facts
-o
- 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
-o
- 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:
-o
- 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:
-o
- 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:
-
-• Claims
-•
-• Specification
-•
-• Prosecution history
-•
-• extrinsic evidence (knowledge of person with ordinary skill in the art)
-•
-o expert testimony
-o
-o inventor testimony
-o
-o prior art
-o
-o dictionaries
-o
-o treatises
-o
- in this case:
-
-• intrinsic evidence:
-•
-o specification uses word “inventory” in relation to clothes and articles
-o
-o Prosecution history shows that “inventory” means clothing and articles
-o
-• extrinsic evidence
-•
-o contradicts the intrinsic evidence, amounts to legal opinion
-o
-o if this were relevant , the patent expert and patent drafter would be very important evidence
-o
-• Vitronics v. Conceptronics
-•
-o Facts:
-o
- claim language at issue: “solder reflow temperature”
-
-• how high is this temperature?
-•
- Conceptronics submitted a lot of evidence that contradicted the use of the term as used in the specification
-
-o Rule:
-o
- A claim construction that causes the claim to fail to cover the preferred embodiment is a wrong claim construction.
-
- The claim needs to be read on the preferred embodiment
-
- Hierarchy
-
-• when intrinsic evidence will resolve any ambiguity in a disputed claim term, it is improper to rely on extrinsic evidence
-•
-o This does not mean the judge cannot admit such extrinsic evidence, but cannot rely on such evidence to come to a conclusion that contradicts the claim term as used in the intrinsic evidence
-o
-o Claim construction: not a purely factual question (a “mongrel” issue)
-o
-• Phillips v. AWH Corp
-•
-o Facts:
-o
- claim language in dispute: “baffle”
-
-• What was at issue: do the baffles have to be set an acute or obtuse angles, can 90 degree baffles be read under the claim construction?
-•
- There were no embodiments given that had 90 degree baffles
-
- specification repeatedly stated that the purpose of the baffles were to deflect bullets
-
-o Rule:
-o
- Just b/c one purpose is emphasized more than others, that does not mean that the claim language must be construed to meet only that purpose
-
- Claim differentiation: another claim that limits baffles to acute angles gives an inference that normal baffles cannot have 90 degree angles
-
- You cannot start at the dictionary definition and then begin to whittle it away, at least you should not rely on the dictionary more than the intrinsic evidence
-
- Old Rules:
-
-• Two old rules
-•
-o interpret claim in light of intrinsic evidence
-o
-o do not import limitations into the claims from the specification
-o
-• How do we reconcile these two rules?
-•
-o You cannot say that baffles mean no right angles just b/c there are no examples of right angles in the specification
-o
-o You can find a limited definition of claim language from the dictionary, as long as it is not contradicted by the intrinsic evidence, and use that to import limitations into the claims
-o
- Phillips says this is wrong
-
-• Ultimate claim construction purpose question: What meaning would a person of ordinary skill understand the inventor to use the term
-•
-• Unique Concepts v. Brown
-•
-o Why is this case being discussed?
-o
- The dissent (By J. Giles Rich)
-
-o Claim language in dispute: “corner pieces” The alleged infringing pieces were just mitered linear pieces that were able to be put together as corner pieces by the end user
-o
-o Language in the disclosure disclosing miter-cut linear pieces does not claim them- the court assumed “pre-formed” into the claims, so that the disclosure talked about miter-cut linear pieces without actually claiming them
-o
-o Dissent
-o
- The inventor contemplated (as evidenced by specification) mitered pieces for corner pieces, so the definition of a corner piece should not only be limited to “pre-formed” pieces
-
- The original disclosure, as filed, includes the claim language- the infringing device was disclosed
-
- We don’t know why claim 9 was cancelled, but it still shows inventors intention. The fact that it was cancelled does not matter- we do not know why claim 9 was cancelled
-
- The plaintiffs speculated why claim 9 was cancelled; Judge Rich argued that such assumptions could not be used
-
-• Exxon Chemical Patents v. Lubrizol Corp
-•
-o Exxon tried to claim that their patent was more a “recipe” rather than an actual composition, so they argued that Lubrizol followed their recipe when creating their own composition
-o
-• Nystrom v. Trex
-•
-o What is unique about this case?
-o
- vacated and re-decided b/c of Phillips
-
-o What was at issue?
-o
- definition of “board”
-
-• was it only made of wood, or could it be any material?
-•
-o Specification
-o
- use of board only spoke of wood
-
-o What did the district court do wrong?
-o
- They went first to the dictionary to start out with the broadest definition possible
-
- Court should have started with intrinsic evidence first
-
-o Convex
-o
- Trex tried to use drawings from a prior art patent to invalidate the patent. the court held that such drawings could not be used unless the drawings were explicitly drawn to scale.
-
+“Markman” hearings – a hearing to receive argument and evidence regarding the proper meaning of claim terms.
-Limitations on the Doctrine of Equivalents
+''Markman v. Westview Instruments, Inc.''
-• Graver Tank
+S.Ct. 1996, p. 500
-•
-o facts
-o
- claim language: “a major portion of alkaline earth metal silicate”
-
- accused composition: had some alkaline earth metal silicate (calcium silicate) but majority of composition was manganese silicate, not an alkaline earth metal silicate.
-
-• therefore, no literal infringement
-•
- specification indicates that manganese silicate can be used but is not preferred
-
- previously the patent-at-issue had claims that were broad enough to encompass manganese, but those claims were held invalid in litigation
-
-o Argument
-o
- Patentee was trying to claim the manganese in the broader claim; can this show that he should be entitled to claim manganese based on intent?
-
-o Holding
-o
- infringement under the doctrine of equivalents
-
-o Rule
-o
- Doctrine of equivalents test. same:
-
-• function
-•
-• way
-•
-• results
-•
- This test is the same as the test used for infringement before claims were used in patents
-
- “an important factor is whether persons reasonably skilled in the art would have known about the interchangeability”
-
-• Warner-Jenkinson
-•
-o Facts
-o
- claim was purification process of a dye- specified that the pH of the dye is approximately between 6.0 to 9.0
-
-o Issues
-o
- What is “approximately” between 6 and 9? How close is approximately
-
-• claim construction—look to see what the drafter intended it to mean
-•
-• Probably does not extend down to 5.0—patentee didn’t try to argue literal infringement
-•
- What is an “element” (for analyzing if an “element” has a substantially equivalent infringing device element)?
-
- Can Doctrine of Equivalents be applied to this case?
-
-• circumstances
-•
-o originally, there was no such limitation, but during Pros. His, patentee added pH limitation
-o
-o Holding
-o
- D of E can apply to even explicit ranges (such as this case).
-
-o What the law is now
-o
- Compare elements to elements (not entire process/device)
-
- Must be in prosecution history, if not in PH, not related to patentability
-
- When you narrow claims, presumption is that you added that limitation for reasons related to patentability.
-
-• evidence to the contrary must be in the record—in the prosecution history
-•
-• Rules from Warner and Graver
-•
-o Focus of whether the differences are substantial or insubstantial
-o
-o Vitiation
-o
- Originated from Warner-Jenkinson
-
- When claim language is rendered meaningless
-
-• Corning Glass
-•
-o Facts
-o
- Corning Glass owns the patent for fiber optic, suing Sumitomo Electric
-
-o Holdings
-o
- Why is there no literal infringement?
-
-• requirement that the core must have fused silica is not met; accused product is pure (not doped) silica
-•
- How to find equivalent elements:
-
-• [From Atlas Powder; This test is no longer used] In the function, way, result test, (FWR) for the “way” test:
-•
-o Find equivalent elements for each and every claimed element, and to determine if elements are equivalent, use either “purpose, quality, f?? (PQF); FWR; or insubstantial differences
-o
- known interchangeability is a factor in this determination
-
-• [Current Test] is from Warner-Jenkinson
-•
-o element by element test,
-o
-o “element” = a limitation, not a “component”
-o
- this is from Corning Case
-
-o Main Rules
-o
- Element, as used in Warner-Jenkinson, means a claim limitation
-
-• and does not mean a component
-•
- In order to find infringement under the DOE, there must be something of the accused product or process that is equivalent to claim limitations of the patent.
-
-• Rules
-•
-o If prior art would render the accused product obvious, doctrine of equivalents cannot be used to find infringement
-o
-• DiMarini
-•
-o Facts
-o
- Patent-at-issue is for an aluminum baseball bat with an inserted tube that strengthens the bat
-
- Accused device is a bat with an outer sleeve tube that strengthens the bat
-
-o Arguments
-o
- Plaintiff argues Corning Glass—says very analogous to this case
-
- Plaintiffs switches “shell” with “insert” and “within” with “outside”
-
-• But also, had to switch “frame” with “shell” once and “insert” with “frame”
-•
-o Holding
-o
- P’s claim was so narrow that there were a lot of “elements,” and each and every element needed to have an equivalent, which did not occur
-
-o What we should know
-o
- Even Fed. Cir. is not clear on what element by element analysis entails and what restrictions this analysis imposes
-
-• Moore USA v. Standard Register (note, pg 797)
-•
-o Facts
-o
- patent was for a mailer-type business form, with a adhesive strip that extended majority of length of the form
-
- accused device had an adhesive strip that extended 47.8% of the length of the form
-
-o Issue
-o
- Is 47.8% equivalent to “majority” of the length?
-
-o Holding
-o
- No equivalence because 47.8% is a minority, and a minority is the opposite of the majority.
-
-o Proper Analysis (according to Todd)
-o
- Look at equivalence in the elements straight from the claims (47.8% vs. “majority”) rather than classifying “minority” and THEN determining if the is equivalence between “minority” and “majority”
-
-• Eagle Comtronics v. Arrow Communication Laboratories
-•
-o Facts
-o
- Patent claims required front cap, rear end portion, and seal
-
- accused device was one piece with an o-ring seal
-
-o Argument
-o
- D argued that there was no equivalent because there were not the same number of components
-
-o Holding
-o
- One piece could be equivalent to the two pieces
-
-o Rule
-o
- “visciation” asserting a certain theory of equivalents that effectively eliminates a claim limitation
-
-• from Warner-Jenkinson
-•
-• Summary (from Warner)
-•
-o For every claimed limitation that is “not there” in the accused device, there must be an equivalent element in the accused device
-o
-o Visciation:
-o
- ?? Find out
-
-• Wilson Sporting Goods Co v. David Geoffrey Associates
-•
-o Facts
-o
- claim required that the was no overlap of the great circles and the golf ball dimples
-
- accused ball has overlapping dimples and great circles
-
-o Analysis
-o
- Create a hypothetical patent claim that would cover the accused device, determine if that claim stands up to prior art
-
-• Hypothetical claim cannot broaden the existing claim
-•
-• Streamfeeder
-•
-o Patentee attempted to draft hypothetical claim that constricted the scope of the claim-at-issue rather than expand it, the court said that the doctrine of equivalents could only be used to expand the claim equivalents rather than constrict
-o
-• Texas Instruments v. US International Trade Commission
-•
-o Rule
-o
- unmistakable assertions made by the applicant to the PTO in support of patentability, whether or not required to secure allowance of the claim, also may operate to preclude the patentee from asserting equivalency between a limitation of the claim and a substituted structure or process step
-
-• Pharmacia & Upjohn Co v. Mylan Pharmaceuticals Inc
-•
-o Facts
-o
- patent prosecutor used the word “critical” during prosecution to achieve patentability
-
-o Holding
-o
- Prosecution History estoppel barred the patentee from using the doctrine of equivalents to find infringement because the patent attorney claimed that spray-dried lactose was a “critical” feature of the invention
-
- the court said that a “reasonable competitor” would read the prosecution history and the claim language and take it to mean that anhydrous lactose is not covered by the patent
-
- The patentee has the burden to describe what the patent covers and what it does not
-
-o Important points to take away
-o
- the court is saying that you look at a claim how a reasonable competitor would look at the claim
-
-• if a reasonable competitor would objectively say that it is not covered, the court will find for the competitor (and the public)
-•
- Statements by anybody—the patent attorney, the inventor, etc. that are in the record could be used as prosecution history estoppel
-
-• Rules from above cases
-•
-o Hypothetical claim is created to just cover the accused device
-o
- If the hypo claim is not valid (obvious) in light of prior art, doctrine of equivalents cannot be employed
-
- Hypo claim cannot be narrower than the real claim—must be broader than the real claim
-
-• Johnson & Johnston Associates v. RE Services
-•
-o Facts
-o
- patentee: Johnson
-
- accused: RES
-
- invention: sheet of metal to preserve thin layer of foil
-
- There were no amendments to the claim-at-issue, nor was there any statements that distinguished the present invention from prior art, does not seem that any distinction from steel was necessary for patentability
-
-o Factual question of equivalence
-o
- Is the steel equivalent to aluminum?
-
-o Legal limits
-o
- Is the patentee precluded from asserting equivalence?
-
-o Outcome
-o
- We know that there was not problem patenting aluminum b/c patentee later acquired patent with aluminum
-
-• Why did patentee sue on this patent then? damages started running earlier with the earlier patent
-•
- Court had to carve an exception from the Graver-Tank rule
-
-o PH
-o
- Fed cir. said that it was disclosed but not literally claimed, it was dedicated to the public
-
-o Brightline Rule
-o
- If you do not claim what you disclose, you lose (except for Graver Tank Rule, when you “claimed” that subject matter in a patent claim but it was found invalid, so the patentee did not really disclaim the subject matter and thereby dedicate it to the public
-
-o Concurring opinion by Dyk
-o
- Spec said that aluminum and steel are equivalent, so this should be used
-
- But, estoppel prevents claiming so
-
-o Other Case
-o
- The disclosure must be of such specificity that one of ordinary skill in the art could identify the subject matter that was disclosed and not claimed
-
-• If it were vague, it could be found to not be disclosed
-•
-o Rule from Judge Rader that will probably be the rule soon
-o
- Doctrine of equivalents does not include subject matter that the patentee could have included in the claims
-
-• foreseeability plays into this
-•
-• not all prior art is foreseeability—some prior art could be realistically impossible for the patentee to know about
-•
-• What problems could this rule have with S Ct precedent?
-•
-o known interchangability from Graver Tank—which would assess foreseeability at the time of infringement (which would indicate infringement), as opposed to at the time of drafting (??) which, under J. Rader’s law, would indicate noninfringement—doctrine of equivalents would not be available
-o
-• Another way to make J. Rader’s rule work
-•
-o discussed in Freedman Seating, below
-o
-• Freedman Seating
-•
-o Facts
-o
- The claim requirement that is not literally infringed upon but accused to be infringed by doctrine of equivalents
-
-• “slidably mounted”
-•
-• accused device is rotatably mounted
-•
- Lower court awarded summary judgment of equivalence
-
-• this should set lights off b/c is such a fact intensive question
-•
-o Vitiation
-o
- To assert that rotatably mounted is equivalent to slidably mounted would vitiate the claim language b/c then “slidably mounted” would be effectively eliminated
-
- It is suggested that foreseeability is one way that judge Rader decides if there is vitiation
-
-• Festo
-•
-o Issue
-o
- When a patentee makes an amendment, what claims is he giving up?
-
-• (for the purposes of doctrine of equivalents)
-•
-o Holding
-o
- Presumptively, you did give up ability to use DOE for that element added by amendment, but can rebut by showing:
-
-• not foreseeable
-•
-• the real reason was tangential
-•
-o only been found by Fed Cir in one case
-o
-o reason must be apparent from prosecution history
-o
-• Other reason
-•
-o so far there is no other such “other reason”
-o
-o Outcome
-o
- What is an amendment?
-
-• re-writing independent claim as dependent claim is considered an amendment
-•
-• One other (find out?)
-•
+RULE: Courts have broad discretion to interpret claims and over format of hearings, including scheduling, input, and use thereof.
-Infringement of Claims With Means-Plus-Function Limitations
+''Teva Pharms. USA, Inc. v. Sandoz, Inc.''
-• Generally
+S.Ct. 2015, p. 503
-•
-o 35 U.S.C. § 112 ¶ 6
-o
- means-plus-function claims are limited to corresponding structure, material, or acts described in the specification and equivalents thereof
-
-o Steps for determining Literal Infringement
-o
- Determine if claim element is means-plus-function (or step-plus-function)
-
-• Presumptions:
-•
-o if the word “means” is present, the presumption is that it is a means-plus-function element
-o
- can rebut if:
-
-• claim itself recites structure performing the function
-•
-• there is no function recited
-•
-o if the word “means” is absent, the presumption is that it is not a means-plus-function element
-o
- can rebut if:
-
-• claim recites a function and no structure
-•
- Interpret the function recited in the claim
-
- Identify the “corresponding structure” disclosed in the specification
-
-• Example
-•
-o If the means is “choosing a random number on my computer,” the corresponding structure would be a computer with that particular program on the computer—not just any computer
-o
- Determine if the accused product/process performs the function
-
- Determine if the structure performing the function in the accused product/process is “equivalent” (or identical) to the “corresponding structure”
-
-• Odetics v. Storage Technology Corp
-•
-o Facts
-o
- claim language included a “rotary means”
-
-• corresponding structure was determined by the court to be the rotary means for providing access . . .
-•
-o Analysis (See steps for analysis above)
-o
- rotary means for providing access . . .
-
-
-
- bins, gear, & rod
-
- Yes, same function
-
- bins, rod, & pins were found by the jury to be equivalent, but the dis. court reversed (could not be equivalent)
-
-• Compare the combination of structures in the accused device with the combination found in the patent—This is the point of this case.
-•
-o Things we learned from this case:
-o
- Compare the combination of structures in the accused device with the combination found in the patent (do not have to only compare a single element)
-
- Test for equivalence: insubstantial differences
-
-• known interchangeability is a factor
-•
- Function, way, result test boils down to way, results test b/c function is already established
-
-• IMS v. Haas
-•
-o Analysis
-o
- Means + Function?
-
-• Yes “interface means for transferring and recording
-•
- b
-
- What was the “corresponding structure”
-
-• PIA and tape cassette transport (both together)
-•
- Does the accused product perform the function?
-
-• Yes, a floppy disk drive performs the function
-•
- Is the structure performing the function in the accused product equivalent or identical to the corresponding structure?
-
-• District court said that there was no way that a floppy drive could be considered equivalent to the corresponding structure.
-•
-• The Fed. Cir reversed, saying that the lower judge should not have ruled JMOL on an issue of fact
-•
-o Things we learned from this case
-o
- Determine equivalence at the time of infringement, not necessarily at the time of the patent drafting
-
- Context—“an analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute element plays a role substantially different from the claimed element.”
-
-• What is the importance of the corresponding structure to the invention as a whole?
-•
-o if not very important, there may be a broad range of equivalents than if the physical characteristics of the structure are critical in performing the claimed function in the context of the claimed invention.
-o
-• Chiuminatta v. Cardinal
-•
-o Doctrine of Equivalence and means-plus-function
-o
- Step 4 from means-plus-function analysis (determine if the accused process/product performs the function) now becomes:
-
-• determine if the accused process/product performs an equivalent function
-•
- Step five is the same question (equivalent function), so the rule from this case is:
-
-• If there is no literal infringement, there is no infringement
-•
-o b/c means-plus-function §112 ¶6 already gives protection “limited to corresponding structure, material, or acts described in the specification and equivalents thereof”
-o
-• Dicta gave one possible exception: after-arising technology could be found to be equivalently infringing
-•
-• Al-Site v. VSI International
-•
-o Analysis
-o
- “fastening means”
-
- t
-
- corresponding structure: rivet or button/hole
-
- accused device: glue performed the fastening function
-
- Issue: is glue equivalent to the rivet or button/hole arrangement?
-
-o Holding
-o
- Jury said equivalent, the fed cir. said that substantial evidence, so defer to jury’s decision of equivalence (b/c it is a factual finding)
-
-o Analysis for other means-plus-function claim
-o
- means for securing
-
- t
-
- corresponding structure: mechanically fastened loop, rivet, or button/hole
-
- accused device: hole (performed the securing function)
-
- Jury said: no literal infringement, but doctrine of equivalence infringement
-
-• How?
-•
-o Jury found that the hole was equivalent to the patented device for DOE, so they would have found equivalence for means-plus-function anyway
-o
-• New Step in the analysis (step 4 ½)
-•
-o Determine if a portion of the accused device performing the function is “after-arising”
-o
- If so, DOE could be applied to find infringement—ask the question you would have asked for literal infringement, if not “after-arising,” proceed to step 5
-
- After arising?
-
-• see date of issue of the patent, but later fed. cir. cases say date of filing
-•
-o both cases give it in dicta
-o
-o Now, everybody ignores Al-Site—why?
-o
- there is no effect on the analysis except for what type of infringement (DOE or literal under means-plus-function)
-
-o Pros. hist estoppel by argument
-o
- affected by both DOE and literal
-
-o disclosed but not claimed
-o
- affected by DOE-cannot be claimed as equivalent,
-
- but can be claimed by means-plus-function (not affected)
-
-o Prior art (Wilson)
-o
- affected by both the same--???, but we don’t know how
-
+RULE: When reviewing a district court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim, the Federal Circuit must apply a “clear error,” not a de novo, standard of review.
-Equitable Defenses – Laches, Estoppel, Inequitable Conduct
+Standards of review:
+* Clear error review of underlying fact finding (resolution of disputes involving extrinsic evidence)
+* De novo review of the ultimate construction (resolution of disputes involving intrinsic evidence and determinations of how fact finding impacts the ultimate construction)
-• Generally
+“Comprising” – open ended, non-exclusive list of elements
-•
-• Aukerman v. Chaides Construction
-•
-o Facts
-o
- Patent covered a slip form for highway barriers that could be formed on lanes of differing elevations
-
-o Rule
-o
- Laches
-
-• Delay
-•
-o Unreasonable
-o
- Clock starts running at the time the patentee knew or should have known of infringement
-
-o Inexcusable
-o
-• Material Prejudicial
-•
-o Two kinds of material prejudice:
-o
- economic: change in economic position of defendant
-
- evidentiary: loss of memory of important events, death of witness, etc
-
-• Laches may bar partial or entire relief—only past infringement (prior to the suit)
-•
- Equitable Estoppel
-
-• Mislead
-•
-• Reliance
-•
-• Prejudiced the alleged infringer
-•
-• Equitable Estoppel can wipe out the entire case—past and future infringement
-•
-• Kingsdown Medical v. Hollister
-•
-o Inequitable Conduct
-o
- Material information v. Intent—the worse the intent, the less materiality is needed, and vice versa.
-
-• Material: What a reasonable prudent examiner would think is material
-•
-o Rule: Gross negligence is not necessarily inequitable conduct
-o
- There must be clear evidence that the patentee or other agents (pat.atty., etc) intended to conduct the inequitable conduct
-
-o Related case: Digital Content
-o
- 05-1128 decided 2/8/06
-
-• Molins v. Textron
-•
-o Three tests for inequitable conduct
-o
- Subjective
-
-• reasonable examiner
-•
- Objective
-
-• From §1.56:
-•
-o Was the argument made during the prosecution inconsistent
-o
- But for
-
-• ???
-•
+“Consisting of” – closed, exclusive list of elements
-Topic: Monetary Relief/Damages
+“Consisting essentially of” – in between; excludes features that would materially affect the basic and novel characteristics of the claimed invention
-• Generally
+=== {{anchor|Toc342061226}} B. Opinion Letters ===
-•
-o The issues of infringement and damages are bifurcated into practically two separate
-o
-• Panduit Corp v. Stahlin
-•
-o Issue
-o
- Should the damages be a reasonable royalty, or the profits that the patentee would have made “but for” the infringement
-
-o Test
-o
- To obtain as damages the profits on sales patentee would have made absent the infringement, i.e., the sales made by the infringer, a patent owner must prove: (Damp test—or Panduit Test)
-
-• demand for the patented product,
-•
-• absence of acceptable noninfringing substitute,
-•
-• his manufacturing and marketing capability to exploit the demand, and
-•
-• the amount of the profit he would have made
-•
-o Results
-o
- Now, every case will look back to Panduit for lost profits damages
-
-• Rite-Hite Corp v. Kelly
-•
-o Facts
-o
- The infringing product affected the sales of an unpatented product of the patentee more than the actual patented invention
-
-o Issue
-o
- Can the patentee recover damages from sales of an infringing device that decreases sales of a non-patented device?
-
-o Holding
-o
- Yes, damages for lost profits, even for the device that is not covered by a patent
-
- The damages must be reasonable foreseeable
-
-o Functionally Tied together
-o
- the leveler was not an essential element of the patented device (the patented product could work with or without the infringing product or the patent holder’s similar product), so it was not used for the damages calculations
-
-• BIC v. Windsurfing
-•
-o Facts
-o
- Windsurfing is the patentee, and licenses out to various companies
-
- BIC begins to make windsurf boards, but sells them at a much lower price than the windsurf boards
-
-o Issue
-o
- How much damages? Should it be a reasonable licensing fee or lost profits?
-
-o holding
-o
- The BIC products were not really taking away from the Windsurfing sales, but from other makers
-
-• The price points were so disparate that the court said that the BIC sales were not really taking away from the Windsurfing sales.
-•
- If the patentee has a track record of licensing their patents, the court will be more likely to reward only reasonable licensing fees
-
-• Grain Processing v. American Maize
-•
-o facts
-o
- American Maize made a maltodextrins by several different processes, which infringed upon the patent-at-issue
-
- After finding out that they were infringing, they switched to the fourth process, which did not infringe the patent
-
- The fourth process had never been used, but the technology to use that process was known
-
-o Issue
-o
- Did the previously absent-from-the-marketplace fourth process qualify as an “acceptable noninfringing substitute” for the purposes of the “but for” test?
-
-o Holding
-o
- The fourth process could have been used by the infringing company had they known that their process infringed, so it qualified as an acceptable substitute, even though was not in use at the time of the infringement
-
+Types:
+* Patentability
+* Freedom to operate
+* Non-infringement
+* Invalidity
-Other Limitations on Relief – Patent Misuse; Antitrust Liability
+Non-infringement opinions may be useful in litigation to prove lack of intent to infringe or knowledge of infringement:
+* No indirect infringement
+* No willful infringement
-• Generally
+“Competency” is key – if the opinion is relied upon in litigation as a defense to a charge of willful infringement, ultimately the opinion was wrong. Use of the opinion waives attorney-client privilege and work product immunity on same subject (''In re Echostar'' and ''In re Seagate'' are controlling Federal Circuit opinions on point). The AIA makes clear that the lack of an opinion (or failure to introduce one) may not be used to prove intent for indirect infringement or willful infringement
-•
-o Misuse
-o
- remedies: patent is unenforceable
-
-o Anti-Trust
-o
- penalties: remedies, $100 Million fines, felonies, treble damages,
-
-• Morton Salt
-•
-o This case is the first of many cases in which the S Ct. went from patent misuse (this case) down a slippery slope
-o
-o Facts
-o
- Patented invention: machine related to sale water softeners
-
- Suppenger required Morton to purchase their salt tablets if they wanted to use Suppenger’s machine
-
- There was no tie between  Suppenger and Morton regarding salt, but between Suppenger and a third party
-
-o Holding
-o
- Suppenger was attempting to extend its patent by forcing others to purchase things that were not patented
-
-o Analysis
-o
- This case was not an anti-trust case, only question: “Did the patentee misuse their patent?”
-
- We must protect the public, the patent is in the public’s interest
-
-o Questions
-o
- How deeply did the court go into economics?
-
-• Not really at all, just proclaimed it a misuse and abuse of patent right
-•
-• Court did not look at whether Suppenger had market power
-•
-• Cases that followed the line of reasoning form Morton (extreme tying)
-•
-o International Salt
-o
- tried to extend similar facts to antitrust violation
-
-• 1950 Patent Act
-•
-o contributory infringement was minimized
-o
-• Nobelpharma AB v. Implant Innovations
-•
-o Facts
-o
- patent covered implant into the jaw-bone that had micro-pits without which the invention would not have worked
-
- Patent was foreign filed in 1979
-
- book in 1977 referred to small irregularities (but did not call them micropits)
-
- book was included in references in foreign patent app, but was excluded from US application IDS
-
- bigger problem: patent application was missing a critical disclosure: there was no best mode disclosed
-
-• size of micropits was not disclosed, and inventor himself said that you would have to be very lucky to be successful without micropits of the proper size
-•
-o Issue:
-o
- was there misuse?
-
-o Holding
-o
- Court found sufficient evidence that there was patent misuse
-
- Patent was condemned
-
-o Walker Process fraud:
-o
- elements:
-
-• representation of a material fact;
-•
-• the falsity of that representation; (sometimes 1 & 2 are combined)
-•
-• the intent to deceive or, at least, a state of mind so reckless as to the consequences that it is held to be the equivalent of intent (scienter);
-•
-• a justifiable reliance upon the misrepresentation by the party deceived which induced him to act thereon; and
-•
-• injury to the party deceived as a result of his reliance on the misrepresentations.
-•
- if party is injured, treble damages are instituted, also could have attorney fees
-
-o must link commercial loss to the anti-trust activities (must have substantially affected the market) to show damages
-o
-o Reversal: this case has been reversed by the S Ct.
-o
-o Sham Patenting:
-o
- could be misconduct, but unlike Walker Process fraud, sham patenting might not be fraud
-
- usually seen in the context of Noerr-Pennington or PKE (which carves out an exception to Noerr-Penn.)
-
- applies in knowingly asserting a patent which you clearly know is invalid
-
-• Virginia Panel v. Mac
-•
-o facts
-o
- patent was for device to test devices with many, many electrical connections
-
- patentee brought action against competitor, competitor alleged anti-trust violations
-
-
-
- issues were bifurcated between infringement and patent misuse
-
- infringement was found on summary judgment
-
- jury found re: patent misuse
-
-• anti-trust violation with Ascor agreement
-•
-• anti-trust for threatening to void warranty
-•
-• Virginia Panel was supposed to make sure the customers knew they would be indemnified if they were accused of infringing a patent; VP wrote to other clients and to Mac, but didn’t tell them they would be indemnified by the US government
-•
-o Mac argued that this was a tie b/c their customers were told that they were infringing a patent and were therefore driven away from dealing with Mac
-o
-o PH
-o
- anti-trust violation was when Virginia called their attack on Mac’s market share a Mac-attack—the jury didn’t like that and called it anti-trust violation
-
-o Holding
-o
- Ascor agreement holding was reversed b/c the agreement was never agreed in to.
-
- warrantee voiding was okay, at most was a breach of warranty (a contract matter
-
-• plus, was not a tie b/c there was no threat to tie into future sales, only warranty related to past sales
-•
- that VP did not notify government contracts that they would be protected was not a problem, b/c the contractors already knew that the government would protect them and the contractors would ultimately be found harmless
-
-o Lessons to take from this case
-o
- advise clients to not enter into potential anti-trust violating agreements
-
-• Independent Ink v. Illinois Tool Works
-•
-o facts
-o
- patentee (Illinois) was the defendant in this case
-
- patent was for print heads and print dispensers
-
- plaintiff charged patentee with antitrust, Illinois was alleging patent infringement
-
- Independent Ink sold ink
-
- In order for customers to get the patented printer head from Illinois, they had to purchase ink from Illinois, there was a tie between the ink and the patented product
-
-o PH
-o
- district court applied S Ct. cases—tie-ins are not like they used to be, the tie-in laws are outdated, and deserve to be thrown out
-
-• S Ct had been chipping away at the tie-in laws
-•
- had this been tried in the ‘60s, Independent  Ink would have won due to clear ties between the product and the patent
-
- Fed Cir. reversed b/c they, neither the trial court, cannot reverse laws created by the Supreme Court—they held a tie
-
-o Holding
-o
- Fed Cir was reversed, the law is old. At least the Fed Cir acknowledged that the law was not good, but that only the S Ct. could reverse
-
- rationale:
-
-• Tie-in law was undermined by § 271(d)
-•
-o 35 USC §271(d)
-o
- ties were specifically authorized in specific circumstances
-
-• Economics
-•
-• FTC guidelines
-•
- The presumption that patents give market power is overturned in this case
-
-• Tie-ins can only occur if there is strong market power by the seller
-•
-o otherwise, the customer will go elsewhere
-o
+=== {{anchor|Toc342061227}} C. Geographic Scope ===
-Topic: Enhancement of and Limitation on Damages – Marking, Willfulness
+USC § 271(a): “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the US, or imports into the US any patented invention during the term of the patent therefore, infringes the patent.”
-• Generally
+USC § 154(a)(1): “Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States, and, if the invention is a process, of the right to exclude others from using, offering for sale or selling throughout the United States, or importing into the United States, products made by that process, referring to the specification for the particulars thereof.”
-•
-o This topic covers ways that damages can be limited or enhanced
-o
-• Marking
-•
-o Generally
-o
- 35 USC § 286
-
-• you can only recover six years worth of damages prior to the filing of the complaint
-•
-o This is different than the 6 year presumption of laches, which starts ticking when the patentee knew or should have known of infringement
-o
-o For this, you start at the time of filing and count backwards
-o
- 35 USC § 287 Marking Statute
-
-o Amsted v. Buckeye
-o
- Facts
-
-• Dresser owned patent until 1985, then sold to Amsted
-•
-• In 1986, Amsted published a letter that they just purchased the patent, that they intended to protect the patent, and advised readers to familiarize themselves with the patent and not infringe it.
-•
-• Patent covered a combination that included what Buckeye (accused infringer) was manufacturing and selling to customers to assemble into patented invention
-•
-• In 1989, Amsted sent a letter directly to Buckeye, referencing the earlier letter and accusing Buckeye of infringement
-•
-• The patentee, nor their customers, marked that the device was patented on the device
-•
-• The accused infringer actually knew that they infringed before the second letter was sent
-•
- PH
-
-• Amsted appealed that marking was not necessary because their customers did not have duty to mark under § 287
-•
-o statutory language: “persons offering for sale any patented article for or under them . . . may mark by putting patent or pat with number of the patent
-o
-o Argued that the later language in § 287 really means: “If you are patentee who makes, sells or offers for sale patented articles you must mark OR if someone else is doing so “for or under” you (that patentee) the patented articles must be marked
-o
-o Their argument: they were not selling a patented article, but a unpatented piece of a combination patent, so under the statute they would no be able to mark an unpatented article
-o
- Court’s response: The customers were implied licensees, (they were given implied permission to use the invention because the invention had no other substantial noninfringing uses (Metcoil)), so those customers should have marked the articles, so they were someone making the patented invention “for or under” the patentee, if no marking, then no damages until after mark
-
- Court’s other response: you could have marked: “for use under pat #####”
-
- Issue
-
-• Does the first public letter constitute notice of infringement to the accused infringer?
-•
- Holding
-
-• No, the accusation of infringement must be direct and specific
-•
-o The notice cannot merely be notice of the patent’s existence or ownership, but “affirmative communication of a specific charge of infringement by a specific accused product or device”
-o
-o Language in the statute (§ 287(a)): “in the failure to mark the device with patent notice, there can be no damages, except upon proof that the infringer was notified of infringement, and continued to infringe after such notice
-o
-o It is irrelevant that Buckeye might have known about the patent and their own infringement, the inquiry focuses on the action of the patentee
-o
- Rule
-
-• If you have to mark, and you don’t, you will be penalized (won’t get as much damages)
-•
-• If you do not have to mark (such as if patent covers a method patent), there is no penalty for not marking b/c no duty to mark
-•
- What if the patent has both process and article claims, and you assert both types?
-
-• You have a duty to mark, and if you didn’t, you get penalized for not marking
-•
- What if the patent has both process and article claims, and you only assert infringement of the method claims?
-
-• you have no duty to mark, so no penalty for not marking
-•
-• Problem with method patent claims:
-•
-o might be more difficult to get manufacture (the $$) for direct infringement
-o
-o Also, knowledge is required for the purposes of contributory or inducement infringement, which is different than marking
-o
- Knowledge does not have to come from notice from the patentee, could come from the infringer’s own research
-
-• Willfulness, Enhanced Damages and Attorney Fees
-•
-o Generally
-o
- The word “Willful” never shows up in the statute, but the courts have brought it about
-
- §285: 2 things must occur to get attorney fees
-
-• you must be the prevailing party
-•
-o you must have won on all of the patent issues
-o
-• the case must be an “exceptional case”
-•
-o Reed v. Portec
-o
- Timeline:
-
-• Patent is for a portable screening apparatus for separating fine earth material from coarser materials
-•
-• Infringer: Portec
-•
-• Portec wanted to purchase the company from Reed, but that didn’t work
-•
-• 1985: Groffe Opinion: Portec decided to make their own Screening device, and the attorney told them they would probably be able to work around the patent (but nothing had been designed yet), but their design might not be as “efficient or commercially appealing to customers”
-•
-• Late 1986: Portec decides to design a product,
-•
-• Feb 1987, meet with a patent attorney, who tells them what to leave out of the design to get around the patent
-•
-• Sept 1987, get an attorney opinion based on a design in order to get around the patent—that opinion said that his opinion was that they did not infringe the patents-at-issue
-•
-o Attorney at least made a comment that patent holder would not be able to assert doctrine of equivalents infringement
-o
-• Nov. 1987: reconfirmed opinion
-•
-• Product was made and sold
-•
-• Jan 1988: lawsuit is filed
-•
- Other Facts
-
-• Portec knew about the patent before they ever started making or selling the product
-•
- PH:
-
-• Trial court found doctrine of equivalents infringement and willful infringement
-•
-• judge ruled treble damages (Judge rules on a motion to do so, jury does not decide if damages should be enhanced) so treble damages
-•
-• Judge gives Reed attorney’s fees
-•
-• Why did the Dist. Court enhance the damages?
-•
-o Portec had copied
-o
-o Willfulness
-o
-o Used manipulative litigation strategy
-o
-• Dist. Court’s decision of Atty’s fees:
-•
-o litigation misconduct
-o
-o willfulness—Fed Cir said no substantial evidence, same as for enhanced damages
-o
- Issue
-
-• Was there really willful infringement?
-•
- Holding
-
-• Some circumstances indicate that there was not willful actions:
-•
-o patent attorney’s opinion letters that indicated no infringement—stating and affirming that Portec would not infringe
-o
-o Portec attempted to design around, trying not to infringe
-o
-o fact that only doctrine of equivalents infringement was found, it was not so clear-cut
-o
-• Reed argued that patent attorney opinion letter was incompetent b/c did not discuss doctrine of equivalents
-•
-• There is no substantial evidence for the jury to find willful infringement, so the judge could not rely on that to treble damages
-•
-• manipulative court strategies, by itself, (see factor 3 below) is not enough to enhance damages without a finding of willfulness
-•
-• Litigation misconduct may make a case “exceptional”—(when Portec showed photos that were misleading) to support attorney fees, even though it cannot support enhancement of damages
-•
- Rule
-
-• Definition of Willful:
-•
-o “Wanton disregard” of patentee’s patent rights
-o
-• Burden of Proof: The patent holder has the burden of proving willfulness, the D can then rebut
-•
-• Circumstances to determine enhancing damages:
-•
-o 1) Whether the infringer deliberately copied the ideas or design of another;
-o
-o 2) whether the infringer , when he knew of the other’s patent protection, investigated the scope of the patent and formed a good-faith belief that it was invalid or that it was not infringed; and
-o
-o 3) the infringer’s behavior as a party to the litigation
-o
-• Secondary circumstances which “courts have appropriately considered, particularly in deciding on the extent of enhancement”:
-•
-o 4) Defendant’s size and financial condition
-o
-o 5) Closeness of the case
-o
-o 6) Duration of D’s misconduct
-o
-o 7) Remedial action by the D
-o
-o 8) D’s motivation for harm
-o
-o 9) Whether defendant attempted to conceal its misconduct
-o
- Knorr-Bremse
-
-• What we should know:
-•
-o All sorts of problems occur when clients decide to waive attorney-client privilege and bring forth a past opinion letter
-o
- Such as, what else may be brought forth from the attorney’s communications because that privilege has been waived
-
- Can drafts of the opinion be brought out?
-
- Can copies of the patent that the attorney had when writing the opinion letter be brought out?
-
-• Silence on opinion letter:
-•
-o If you did not produce an opinion, the presumption was that the opinion letter was against you
-o
-o Rule now: There is no inference upon the D that an opinion letter was against him if he decides not to produce that letter
-o
-• Duty on D to make sure not infringing
-•
-o Old rule: Defendant had a duty to make sure he is not infringing, by seeking an opinion letter from an attorney, that letter would have to be produced, or else the presumption that it was be negative would  be in effect
-o
-o Now: Not necessary
-o
-o
+Location of use of:
+* System - place where the system as a whole is put into service (control and beneficial use)
+* Method – place where each step of the method occurs
+* Offer to sell system – place of future sale that would occur
+* Offer to sell method – no such concept
-[[Category:Outlines]]
+==== {{anchor|Toc342061228}} 1. Export Activity ====
+USC § 271(f)(1): “Whoever without authority supplies or causes to be supplied in or from the US all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside the US in a manner that would infringe the patent if such combination occurred within the US, shall be liable as an infringer.”
+USC § 271(f)(2): “Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial non-infringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.”
+''Microsoft Corp. v. AT&T Corp. ''
+S.Ct. 2007, p. 650
+RULE: Software installed on hardware qualifies as a “component,” and to be supplied, the hardware must be installed in a computer (it is insufficient to copy the software from the hardware) – this will never happen. Note that method claims cannot be infringed under § 271(f) (another reason to diversify claim types).
+Update: ''Life Tech. Corp. v. Promega Corp. ''has said that one component may constitute a substantial portion of the components of a patent invention under 271(f)(1) if the one component is sufficiently important.
+==== {{anchor|Toc342061229}} 2. Import Activity ====
+USC § 271(g): “Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use or retail sale of a product unless there is no adequate remedy under this title for infringement on account of the importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will, for purposes of this title, not be considered to be so made after— (1) it is materially changed by subsequent processes; or (2) it becomes a trivial and nonessential component of another product.”
+''Eli Lilly & Co. v. American Cyanamid Co.''
+Fed. Cir. 1996, p. 663
+RULE: Material change refers to physical or chemical properties, not degree of difference in economic value.
+Geographic scope: allows for finding of infringement of a patented method when a product is imported that was created outside the US using the patented method. Also covers US sales, offers for sale, and use of products created outside the US.
+No direct infringement required, except when the product is materially changed or when it becomes a trivial and nonessential component of another product.
+== {{anchor|Toc342061230}} X. Infringement ==
+Patent terms
+* Enforceable from the date of issue to expiration
+* For applications filed on or after June 8, 1995, 20 years from effective filing date, excluding provisional application filing dates
+* For applications pending on and still in force on June 8, 1995, the longer of 17 years from issue or 20 years from filing
+Infringement basics
+Determined on a claim-by-claim basis
+Two step basis:
+* Construe the claim
+* Compare correctly construed claim to alleged infringer’s commercial embodiment
+Comparison of claim to alleged infringer’s commercial embodiment
+* Not comparison of specification to alleged infringer’s commercial embodiment
+* Not comparison of patentee’s commercial embodiment to alleged infringer’s commercial embodiment
+Defenses
+* Independent creation not a defense
+* Ability to reverse engineer not a defense
+* Lack of intent not a defense (strict liability), but indirect infringement requires a specific form of intent, and willful infringement allows for treble damages
+* Lack of knowledge of a patent may be a defense in a limited respect.
+** For device claims, constructive notice through marking or actual notice is required
+** For process claims, no notice requirement
+=== {{anchor|Toc342061231}} A. Direct Infringement ===
+Product or service must meet each and every limitation of a patent’s claim – claim must describe what the alleged infringer is doing.
+==== {{anchor|Toc342061232}} 1. Literal Infringement ====
+Each and every element of a claim found literally in accused device of method. If even one limitation is not present, there is not literal infringement (compare to anticipation). Additional feature does not automatically mean no infringement either, unless claim is written specifically to exclude additional features.
+''Larami Corp. v. Amron''
+E.D. Pa. 1993, p. 517
+RULE: Absence of one element means there can be no literal infringement; if replaced by substantial equivalent then could be infringement by doctrine of equivalents.
+==== {{anchor|Toc342061233}} 2. Doctrine of Equivalents ====
+Each and every element of a claim found either literally or equivalently in accused device or method.
+''Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co.''
+S.Ct. 1997, p. 531
+RULE: Doctrine of Equivalents is not superseded by patent act of 1952.
+''Graver Tank & Mfg. Co. v. Linde Air Prods. Co.''
+S.Ct. 1950, p. 526
+RULE: Test is whether the infringed device performs (1) substantially the same function in (2) substantially the same way to (3) obtain substantially the same result.
+Limitations:
+* Prosecution history estoppel – if subject matter is surrendered during prosecution, there is a rebuttable presumption that patentee cannot recapture it through DoE. The reason for amendment is important, and the patent owner bears the burden of proving the amendment was not related to matters of patentability. Question of law for court to use to limit scope of DoE.
+* Dedication to the public/disclosed but not claimed – disclosed by unclaimed subject matter cannot be captured under the doctrine of equivalents. Disclosed subject matter need not need the enablement requirement, but the subject matter must be identified as an alternative to a claim limitation.
+* All limitations/vitiation – element by element analysis required, overall claim in its entirety cannot be eliminated (vitiated)
+* Specific exclusion – if the claim expressly or implicitly excludes subject matter, the DoE cannot be used to capture that subject matter. Any such disclaimer must be clear as a matter of public notice.
+* Prior art – DoE cannot be used to capture subject matter that could not have been patented in the first place. Hypothetical claim covering the alleged infringement must be patentable over prior art (not anticipated, not obvious, burden is on patentee). Dependent claims must be analyzed even if an independent claim does not infringe under DoE because it ensnares prior art.
+* Not limited to equivalents known at time of application, but at time of alleged infringement.
+Prosecution History Estoppel – stops patent owner from recapturing via DoE claim scope surrendered during prosecution.
+* Argument-type
+* Amendment-type
+''Festo Corp. v. Shoketsu Kinsoku Kogyo Kabushiki Co.''
+S.Ct. 2002, p. 548
+RULE: If narrowing claim amendment is made for purposes of patentability (or patentee cannot prove another reason), then there is a presumption of surrender of all subject matter between original and amended claim.
+Amendments for purposes of patentability:
+* Made to fall within subject matter under § 101
+* To respond to § 102 or § 103 rejections – claim language is changed
+* Made to correct lack of written description or lack of enablement under § 112
+* To correct ambiguity or vagueness under § 112 (includes spelling corrections)
+Presumption of surrender can be rebutted three ways:
+# Equivalent was objectively unforeseeable at the time of the amendment
+# Rationale underlying amendment bears no more than tangential relation to equivalent
+# “Some other reason” patentee could not reasonably be expected to have described the equivalent
+[[Image:|top]]
+''Johnson & Johnston Assocs., Inc. v. RE Service Co., Inc.''
+Fed. Cir. 2002, p. 563
+RULE: Disclosed but unclaimed subject matter cannot be captured through the doctrine of equivalents (public dedication rule).
+''SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc.''
+Fed. Cir. 2001, p. 571
+RULE: If the claim expressly or implicitly in light of the spec excludes subject matter, DoE cannot be used to capture that subject matter (specific-exclusion rule).
+''Wilson Sporting Goods Co. v. David Geoffrey & Assocs.''
+Fed. Cir 1990, p. 583
+RULE: DoE cannot be used to capture subject matter that could not have been patented in the first place.
+==== {{anchor|Toc342061234}} 3. “Divided” or “Joint” Infringement ====
+Typically, only one entity’s product or conduct meets each and every limitation of a patent’s claim. However (absent vicarious liability) there is sometimes no one entity whose conduct meets every limitation.
+''Akamai Techs., Inc. v. Limelight Networks, Inc.''
+Fed. Cir. 2015, p. 617
+RULE: Direct infringement asks whether one entity is responsible for infringement. The acts of one may be attributable to another such that a single entity is responsible for infringement (1) where a first entity directs or controls a second entity; or (2) where the two entities form a joint enterprise.
+Vicarious liability – direction and control, where one acts through an agent, contracts with another to perform one or more steps of the method, or conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.
+Joint enterprise requirements:
+# An agreement, express or implied, among the members o the group
+# A common purpose to be carried out by the group
+# A community of pecuniary interest in that purpose, among the members
+# An equal right to a voice in the direction of the enterprise, which gives an equal right of control
+==== {{anchor|Toc342061235}} 4. Reissue and Continuations ====
+Broadening reissue - within the first two years after a patent issues, the patent owner can go back to the office and attempt to broaden claims without introducing new matter. Necessary only if no pending continuation.
+Continuation – serially file continuation applications, continuously broadening or otherwise modifying claim language. May be used to overcome double-patenting rejections via terminal disclaimers. Unavailable if there is no pending application.
+=== {{anchor|Toc342061236}} B. Indirect Infringement ===
+Aiding and abetting infringement
+==== {{anchor|Toc342061237}} 1. Inducement of Infringement ====
+USC § 271(b): “Whoever actively induces infringement of a patent shall be liable as an infringer.”
+''Global-Tech Appliances, Inc. v. SEB SA''
+S.Ct. 2011, p. 607
+RULE: Not limited to the US, knowledge of patent and infringement both required, though may be actual or attributable (willful blindness).
+Required to prove:
+# Direct infringement
+# Actions inducing infringing acts
+# Knowledge that the acts would induce infringement
+# Intent to cause infringement
+Willful blindness – alleged inducer subjectively believes there is a high probability that patent/infringement exists and takes deliberate actions to avoid learning of patent/infringement.
+==== {{anchor|Toc342061238}} 2. Contributory Infringement ====
+USC § 271(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 non-infringing use, shall be liable as a contributory infringer.”
+''Lucent Tech., Inc. v. Gateway, Inc.''
+Fed. Cir. 2009, p. 604
+RULE: Contributory infringement is limited to sales, offers to sell, or importation in the US.
+Required to prove:
+# Direct infringement
+# The defendant sold, offered to sell, or imported a component that is a material part of the patented invention
+# Defendant knew that the combination for which the component was especially made was patented and infringing
+# The component has no substantial non-infringing use, i.e. it is a non-staple good
+=== {{anchor|Toc342061239}} C. Means-plus-function limitations ===
+USC § 112 ¶ 6: “An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”
+''Williamson v. Citrix Online, LLC''
+Fed. Cir. 2015, p. 622
+RULE: Construction of alleged means-plus-function limitations:
+# Determine whether it is a means-plus-function limitation – use of “means for” creates a rebuttable presumption in favor, absence creates presumption against. Ultimate issue is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.
+# Identify recited function
+# Determine the structure disclosed in the written description as corresponding to the recited function
+''Odetics, Inc. v. Storage Tech. Corp.''
+Fed. Cir. 1999, p. 630
+RULE: [t]he individual components, if any, of an overall structure that corresponds to the claimed function are not claim limitations. Rather, the claim limitation is the overall structure corresponding to the claimed function.
+Literal Infringement – requires identical function, allows equivalent structure at time of issuance
+* Accused device must possess a structure that performs the identical function as set forth in the claim and
+* The structure of the accused device must be identical or equivalent to the structure set forth in the written description. Insubstantial differences must exist in way and result only, not of function
+* Analysis time period is at time of issue – after-arising technology cannot literally infringe.
+DoE Infringement – allows equivalent function plus equivalent structure at time of issuance
+* Equivalent or insubstantial difference in function permitted
+* Equivalent structure (difference in way and result)
+* After-arising technologies may infringe under DoE
+== {{anchor|Toc342061240}} XI. Defenses ==
+Invalidity defenses:
+* Lack of utility, ineligible subject matter
+* Violation of enablement, written description, and best mode requirements
+* Anticipation, statutory bars
+* Obviousness
+Non-infringement – experimental use
+Unenforceability defenses:
+* Inequitable conduct
+* Inventorship
+* Laches
+* Equitable estoppel
+=== {{anchor|Toc342061241}} A. Licensee Estoppel ===
+''Lear, Inc. v. Adkins''
+S.Ct. 1969, p. 751
+RULE: Licensees may challenge the validity of patents they have licensed (estoppel largely abolished).
+Licensee estoppel is largely abolished. Licensee may not have to pay royalties under a license agreement if they can prove the patents are invalid. But, licensee may be estopped from challenging their obligation to pay royalties for activities prior to issuance for license agreements negotiated prior to issuance.
+Assignor estoppel still exists – assignors cannot challenge the validity of an assigned patent.
+=== {{anchor|Toc342061242}} B. Declaratory Judgment Jurisdiction ===
+Declaratory judgment: in a case of actual controversy within a court’s jurisdiction, that court may declare the rights of a party seeking such a declaration.
+Arguably, because licensees are paying fees, there is no controversy. Courts permit potential infringers to sue for declaratory judgment, rather than making them wait for patentees to sue for infringement or breach of contract. Test: “whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”
+''MedImmune, Inc. v. Genentech, Inc.''
+S.Ct. 2007, p. 757
+RULE: A licensee does not have to breach an agreement before seeking a declaratory judgment of invalidity or non-infringement.
+Test – whether the facts alleged show a substantial controversy between parties with adverse legal interests of sufficient immediacy and reality to warrant issuance of declaratory judgment. Met if the DJ plaintiff if put in position to pursue arguably illegal behavior or abandon it even though he or she claims a right to pursue it or if patentee asserts rights based on identified ongoing or planned activity of another party, and where the party contents it has a right to engage in that activity.
+=== {{anchor|Toc342061243}} C. Inequitable Conduct ===
+“Atomic bomb” of patent law – makes the entire patent unenforceable
+Inequitable conduct – requires intent and materiality, each analyzed for clear and convincing evidence.
+* Intent: specific intent to deceive, not just gross negligence. Can be inferred, but not just based on high materiality – has to be single most reasonable inference. Once prima facie case of intent shown, good faith explanation may be provided.
+* Materiality: “but for” test – PTO would not have granted the patent but for the omission or misrepresentation. Give claims the broadest reasonable interpretation and apply a preponderance of the evidence standard. Exception: affirmative egregious misconduct is always material.
+''Therasense, Inc. v. Becton, Dickinson & Co.''
+Fed. Cir. 2011, p. 824
+RULE: Must show intent and materiality by clear and convincing evidence.
+PTO’s definition of materiality: “A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.”
+Supplemental exam – may “cleanse” potential inequitable conduct. Essentially prohibits future claims of inequitable conduct based on same information considered during supplemental exam.
+=== {{anchor|Toc342061244}} D. Experimental Use ===
+==== {{anchor|Toc342061245}} 1. Statutory ====
+USC § 271(e)(1): “It shall not be an act of infringement to make, use, offer to sell, or sell within the US or import into the US a patented invention [with limited exceptions] solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.”
+''Merck v. Integra Lifesciences I''
+S.Ct. 2005, p. 835
+RULE: Must be a reasonable basis for believing that a patented compound may work and use in research that, if successful, would be appropriate to include in a submission to the FDA (even if FDA does not require it and even if it ultimately is not submitted).
+Expansive conception of safe harbor that encompasses pre-clinical activity, bot not necessarily research tools.
+==== {{anchor|Toc342061246}} 2. Common Law ====
+Narrow to the point of non-existence. Accused infringer has to establish the defense, and is limited to situations where action is taken “for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry.” Scientific inquiry with definite, cognizable, and not insubstantial commercial purposes does not qualify, nor does use consistent with legitimate business of infringer.
+''Madey v. Duke''
+Fed. Cir. 2002, p. 842
+RULE: Use consistent with legitimate business of infringer does not qualify under the common law experimental use defense (University research lab, in this case).
+=== {{anchor|Toc342061247}} E. Inventorship ===
+USC § 116: “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.”
+Improperly named or omitted inventor. Second is most common.
+* Misjoinder: incorrect inventor named
+* Non-joinder: omitted inventor
+* Pre-AIA required a showing of no deceptive intent
+* Joint inventors considered tenants-in-common with complete rights to the patent
+''Acromed Corp. v. Sofamar Danek Group, Inc.''
+Fed. Cir. 2001, p. 854
+RULE: Alleged inventor must prove contribution to inventive conception of at least one part of a claim in a patent by clear and convincing evidence.
+=== {{anchor|Toc342061248}} F. Laches ===
+''SCA Hygiene Products v. First Quality Baby Products''
+Fed. Cir. 2015
+RULE: Laches eliminates entitlement to pre-lawsuit damages and injunctive relief, including damages within the six years of filing allowed by § 286.
+Elements: long period of delay (more than six years after patentee knew or should have known of infringer’s activities) and material prejudice resulting from the delay.
+Bars:
+* Injunctive relief
+* Patentee’s claim for damages prior to the filing of the lawsuit
+* NOT claim of ongoing royalties
+Burden of going forward is on patentee, but alleged infringer always bears burden of persuasion.
+=== {{anchor|Toc342061249}} G. Equitable Estoppel ===
+May bar entire lawsuit, if proven. Includes entitlement to an injunction and past damages, but also any opportunity for ongoing royalties. Three elements:
+# Patentee engages in conduct that misleads the alleged infringer to reasonably infer that patentee does not intend to enforce patents (includes statements, actions, inaction, or silence when there is an obligation to speak).
+# Alleged infringer must rely upon that conduct.
+# Due to the reliance the alleged infringer would be materially prejudiced if patentee allowed to bring its claim.
+=== {{anchor|Toc342061250}} H. Patent Exhaustion and Repair-Reconstruction ===
+Exhaustion (AKA first sale) – patentee’s rights in a product, i.e. the right to exclude use, expire when the patentee or its licensee acting within the scope of its license sells the product. A purchaser or downstream user cannot be held liable for infringement with respect to the product. Scope is limited by the repair-reconstruction doctrine.
+''Keurig, Inc. v. Sturm Foods, Inc.''
+Fed. Cir. 2013, p. 673
+RULE: Exhaustion exists if there is an authorized, unconditional sale in the US of the device covered by the patent.
+''Quanta Computer, Inc. v. LG Electronics, Inc.''
+S.Ct. 2008, p. 712
+RULE: Exhaustion exists for an unpatented component when (1) The only reasonable and intended use of a product is to infringe a patent (has no reasonable non-infringing use) and (2) the product embodies essential features of the patented invention (includes all inventive aspects of the claim).
+Circumstances:
+* Sales of patented devices – authorized, unconditional sale in the US of a patented device
+* Unpatented components of patented invention – authorized, unconditional sale in the US of a component when (1) the only reasonable and intended use of a product is to infringe a patent (has no reasonable non-infringing use) and (2) the product embodies essential features of the patented invention (includes all inventive aspects of the claim).
+Effect: termination of ability of patent holder to control or obtain damages for use of the patented invention
+Repair-reconstruction doctrine: Exhaustion does not apply in cases of reconstruction, though it does in cases of repair.
+* Repair: preserving fitness for use throughout useful life
+* Reconstruction: effectively recreating the product
+Relevant only if the contract of sale does not eliminate the possibility of the default right of repair. Patentees may impose conditions on reuse and resale, so that violation of those terms constitutes infringement (action without authority).
+''Jazz Photo Corp. v. Int’l Trade Comm’n''
+Fed. Cir. 2001, p. 676
+RULE: Repair (making sure the article stays functional for useful life/preserving fitness for use) is not infringement.
+''Bowman v. Monsanto Co.''
+S.Ct. 2013, p. 734
+RULE: Reconstruction/copying (effectively recreating the product) is infringement.
+International exhaustion – US patent rights are not exhausted by foreign sales, but importation may infringe, even if the devices were purchased from patentee or licensee abroad. Thus, no real such thing as international exhaustion.
+''Lexmark Int’l, Inc. v. Impression Products, Inc.''
+Fed. Cir. 2016, p. 719
+RULE: Copyright exhaustion applies abroad, but patent exhaustion does not.
+=== {{anchor|Toc342061251}} I. Patent Misuse ===
+Allowable contract terms:
+* Restricting use of the invention
+* Conditioning use of the invention
+* Structuring royalty payments
+USC § 271(d): ““No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1) derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent; (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent; (3) sought to enforce his patent rights against infringement or contributory infringement; (4) refused to license or use any rights to the patent; or (5) conditioned the license of any rights to the patent or the sale of the patented product on the acquisition of a license to rights in another patent or purchase of a separate product, unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned.”
+Misuse: common law equitable defense to infringement and breach of conduct that does not permit patentee to extend patent right beyond statutory scope of patent grant. Per se misuse is conduct with anti-competitive effects and no redeeming pro-competitive effects (i.e. patent-to-product tying plus market power or requirement to pay royalties beyond term of patent). Anything not per se misuse requires analysis of anti- and pro-competitive effects, aka rule of reason analysis (patent-to-patent tying). However, there is no duty to practice your invention and no presumption of market power because of ownership of the patent.
+''Morton Salt Co. v. GS Suppiger Co.''
+S.Ct. 1942, p. 689
+RULE: Patent-to-product tying is per se misuse (no longer good law – now § 271(d)(5) requires a showing of market power).
+''US Philips Corp. v. Int’l Trade Comm’n''
+Fed. Cir. 2005, p. 691
+RULE: Conduct with anti-competitive effects and no redeeming pro-competitive effects is per se misuse.
+Field of use restrictions – enforced so long as not per se illegal, reasonably within patent grant, and pass the rule of reason analysis of pro- and anti-competitive effects. Include geographic restrictions, market restrictions, “single use only” restrictions. Price discrimination allowed. Patent and contract remedies available for breach of restrictions.
+Structuring royalty payments – royalty payments cannot extend past expiration of last-to-expire patent (per se misuse). Payments can be made past expiration for pre-expiration use, but not post-expiration use. May tie to trade secret use or create a joint venture instead to avoid.
+''Brulotte v. Thys Co.''
+S.Ct. 19664, p. 741
+RULE: It is patent misuse to require royalty payments beyond the term of the patent.
+''Scheiber v. Dolby Labs, Inc.''
+th Cir. 2002, p. 745
+RULE: There is a difference between structuring payments such that some occur after expiration and requiring payment for activities after expiration.
+=== {{anchor|Toc342061252}} J. Antitrust ===
+Patents by definition give their holder a legal monopoly in the right to exclude, but do not give the holder market power if a viable non-infringing alternative is available. Ownership of a patent alone does not create a presumption of market power. Patent-to-product tying is per se illegal under antitrust law.
+''Illinois Tool Works, Inc. v. Independent Ink, Inc.''
+S.Ct. 2006, p. 782
+RULE: Ownership of a patent alone does not create a presumption of market power under patent or antitrust law.
+Illegal monopolization
+* Claimant must prove patentee has market power in relevant market
+* Anticompetitive conduct to exclude or weaken competition to increase market power
+* Superior products, business acumen, and historic accident are not anticompetitive conduct.
+Walker process claim – antitrust liability arises when a patentee fraudulently obtains a patent and enforces or threatens to enforce it.
+Requirements:
+. Fraud at the patent office by showing:
+# Representation of material fact
+# Falsity of the representation
+# Intent to deceive or at least recklessness
+# Justifiable reliance inducing action
+# Injury
+. Knowledge at the time of attempted enforcement of the earlier fraud at the patent office.
+. Elements of antitrust liability:
+# Attempted enforcement of the fraudulently obtained patent
+# Patent Office issued the patent because of the fraud
+# Attempted enforcement threatened to lessen competition in a relevant antitrust market
+# Plaintiff suffered antitrust damages
+# Other elements of attempted monopolization (including market power)
+''Nobelpharma AB v. Implant Innovations, Inc.''
+Fed. Cir. 1998, p. 790
+RULE:
+Sham litigation claim – allegation that a patentee should be subject to an antitrust claim based on filing a lawsuit alleging infringement of a patent claim known to be invalid, not infringed or unenforceable, with a purpose to impose anticompetitive harm on the defendant rather than to obtain a justifiable legal remedy.
+Not required to prove fraud at the Patent Office, just bad faith litigation based on knowledge of invalidity, non-infringement, or unenforceability, by showing:
+# Lawsuit is objectively baseless because no reasonable litigant could expect success on the merits
+# Litigant subjectively sought to interfere directly with the business relationships of a competitor through the litigation process (not the outcome)
+# Other elements of antitrust: (1) threat to lessen competition in relevant antitrust market, (2) plaintiff suffered antitrust damages, and (3) other elements of attempted monopolization, including market power.
+Settlements – most cases settle for payment in exchange for release from liability and licenses, though may give rise to claims of antitrust liability.
+Hatch-Waxman – balances spurring pharma innovation with providing for prompt access to pharma products in the market by addressing competition between name brand and generic drug companies. Procedures at the FDA:
+* “Inventors” or name brand companies – files NDA, applicant lists any patents that would be infringed in the Orange Book, which secures a 30-month stay of FDA approval on a generic if the applicant files an infringement lawsuit against the generic manufacturer (1. List drug, 2. File infringement suit and receive 30 month stay)
+* “Copiers” or generic drug companies – files ANDA, prove bio-equivalency, explain why the patents in the Orange Book are not a barrier (invalid or non-infringing). Must be done in “timely fashion”
+* After FDA filings: generic gives name brand notice with details of invalidity or non-infringement arguments within 20 days of filing, giving brand name 45 days to file infringement suit to obtain stay.
+* If invalidity or non-infringement is found, generic application is approved. Else, generic is enjoined and their application won’t be approved until the brand name patent expires.
+Reverse payments – settlement agreements between generic and brand names to keep generics from entering the market. Brand name pays generic to stay off the market. AKA “exclusion” payment. Reverse payments are subject to a rule of reason analysis.
+''FTC v. Actavis, Inc.''
+S.Ct. 2013, p. 802
+RULE: Reverse payments are subject to a rule of reason analysis.
+Sample analysis:
+* Assume litigation is costless for both sides.
+* Brand name analysis:
+** Without the generic, assume the name brand could make $100mil/year over a 10 year term. Total profit: $1bil
+** 80% certainty that it’s valid and infringed
+** What is the risk if unsettled? $200mil (20% chance of losing). This means anything less than $200mil is acceptable to settle.
+* Generic analysis:
+** Generic potential in 6 months of exclusivity is $40mil.
+** In the remaining 9.5 years, they can expect to make $60 mil. Thus, total over ten years is $100mil.
+** Only 20% chance of winning, 80% chance of losing, so their gamble is $20mil. (20% of $100mil). This means anything over $20mil is acceptable to settle.
+* Assume they settle for $110mil. Makes complete economic sense, but is there an antitrust issue? Probably not, but best to avoid the dispute altogether.
+Refusals to deal: patent gives right to exclude, no duty to practice or license an invention. Unconditional refusals to deal (sell or license) are not violations of antitrust law, but conditional refusals (patent-to-product tying or agreements not to buy form competitors) may be.
+=== K. “Advice of Counsel”  ===
+Assert an opinion of counsel as a defense to allegations of willful infringement (communication from an attorney indicating non-infringement, invalidity, and/or unenforceability. Author and recipient will testify at trial.
+Effect on privilege and immunity:
+* Attorney-client privilege is waived
+* Work-product immunity may also be waived with respect to communications on the same subject as the opinion relied upon for defense and un-communicated work-product that memorializes attorney-client communications.
+USC § 298 (AIA): “Failure of an infringer to obtain the advice of counsel or failure of infringer to present such advice to the jury or court may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.”
+== {{anchor|Toc342061253}} XII. Remedies ==
+USC § 283: “The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”
+USC § 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.”
+=== {{anchor|Toc342061254}} A. Money Damages ===
+==== {{anchor|Toc342061255}} 1. Lost Profits ====
+Lost profits – typically higher than reasonably royalties. Not the profits the infringer made, though disgorgement is available for design patents. Goal is to fully compensate patent owner for damages caused by infringement. Considered under but-for causation (profits the patentee would have made but for infringement). Limited by foreseeability and proximate causation – profits that were or should have been reasonably foreseeable. Includes profits on products the patentee could reasonably foreseeably have sold but for infringement.
+''Rite-Hite Corp. v. Kelley Co., Inc.''
+Fed. Cir. 1995, p. 890
+RULE: Four-part ''Panduit ''factors: (1) demand for patented product, (2) absence of acceptable non-infringing substitutes, (3) manufacturing and marketing capacity to exploit demand, and (4) amount of profits patent owner would have made.
+''Grain Processing Corp. v. American Maize Products Co.''
+Fed. Cir. 1999, p. 899
+RULE: To be entitled to lost profits, there must not have been any acceptable non-infringing substitutes sold or offered during the period of infringement or “available” during that time.
+Absence of non-infringing substitutes during period of infringement – can be assumed unavailable if none sold or offered during that time. Infringer bears the burden of showing that a substitute was available. “Non-availability” means technical, financial, legal, or other insurmountable barriers to use of the alternative technology.
+Market share rule – patentee may still recover lost profits even if there was an available non-infringing substitute, just less than if they had a monopoly on the market.
+Manufacturing capability – patent owner must show that it was capable of making and marketing the patented device. Capability encompasses capacity. Can be met even if the patentee didn’t have the capability at the time of infringement but could have increased its capacity or licensed another to produce the invention. Factors include time and funding required.
+Amount of profit – think of lost sales (both patented and unpatented goods), considering price erosion (damage caused by patentee having to reduce prices to compete) and accelerated market reentry (damage caused by infringer entering the market earlier than would have had it waited for the patent to expire).
+==== {{anchor|Toc342061256}} 2. Reasonable Royalties ====
+USC § 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.”
+Reasonable royalties – default method of determining damages, considered the floor for damages. Awarded in absence of higher lost profits or an “established” royalty (repeatedly agreed to by patentee).
+* Analytical method – based on marginal effect of patented technology on infringer’s profit
+* ''Georgia-Pacific ''factors:
+** Royalties received by the patentee for licensing of the patent in suit, proving or tending to prove an established royalty
+** Rates paid by licensee for the use of other patents comparable to the patent in suit
+** Nature and scope of the license, as exclusive or non-exclusive; or restricted or non-restricted in terms of territory or with respect to whom the manufactured product may be sold
+** Licensor’s established policy and marketing program to maintain his patent monopoly by not licensing others to use the invention or by granting licenses under special conditions designed to preserve that monopoly
+** The commercial relationship between the licensor and licensee, such as, whether they are competitors in the same territory in the same line of business, or whether they are inventor and promoter
+** Effect of selling the patented specialty in promoting sales of other products of the licensee; that existing value of the invention to the licensor as a generator of sales of his non-patented items; and the extent of such derivative or convoyed sales
+** Duration of the patent and term of the license
+** Established profitability of the product made under the patent; commercial success and current popularity
+** Utility and advantages of the patent property over the old modes or devices, if any, that had been sued for working out similar results
+** Nature of patented invention; character of commercial embodiment of it as owned and produced by the licensor; benefits to those who have used the invention
+** Extent to which the infringer has made use of the invention; evidence probative of value of that use
+** Portion of the profit or of the selling price that may be customary in the particular business or in comparable businesses to allow for the use of the invention or analogous inventions
+** Portion of the realizable profit that should be credited to the invention as distinguished from non-patented elements, manufacturing process, business risks, or significant features or improvements added by the infringer
+** Opinion testimony of qualified experts
+** Amount that a licensor and licensee would have agreed upon if both had been reasonably and voluntarily trying to reach an agreement
+* “Hypothetical negotiation” – most common, based on a negotiation that would have occurred right before infringement occurred, assuming the patent is infringed and valid. May consider after the fact events (“Book of Wisdom”) by assuming predictions made at that negotiation would have come true, especially if there were no actual predictions.
+Forms:
+* Running - royalty base (based on number of units sold and revenue – not profits) x royalty rate (percentage reflecting allocated share). Lack of success means reduced royalties, so licensor (patentee) is compensated for bearing this risk with higher royalty rate.
+* Lump sum (above the cost of defense) may reflect present value (at time of hypothetical negotiation) of a predicted running or reasonable royalty.
+Entire market value rule – if patentee can prove the patented invention is the basis for consumer demand, damages may be based on entire apparatus, not just patented invention portion. Value is tied to the relative amount of the profits from the sales attributable to the invention. In reality, royalty calculations are based on revenue of sales for entire apparatus, for ease of calculation and monitoring.
+==== {{anchor|Toc342061257}} 3. Marking/Notice Requirement ====
+USC § 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 by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article 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.”
+To recover damages for claims other than method claims, patentee must either provide constructive notice by marking its patented good, or provide actual notice of infringement by letter or lawsuit. Marking may be on the item or the packaging. AIA allows for “virtual marking” Method claim patent issuance is considered constructive notice. Issuance is also considered notice for non-practicing entities.
+==== {{anchor|Toc342061258}} 4. Statute of Limitations ====
+USC § 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.”
+Not technically a statute of limitations, more a limitation on damages. No damages may be recovered for infringement more than six years prior to filing of claim.
+=== {{anchor|Toc342061259}} B. Equitable Relief ===
+USC § 283: “The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”
+Important considerations:
+* Whether the patent owner practices the claimed invention (i.e. whether the parties are competitors)
+* Whether the patent covers the entire infringing product or merely a component
+* Whether the patent owner introduces evidence supporting assertions of irreparable harm/inadequacy of money damages
+==== {{anchor|Toc342061260}} 1. Preliminary Injunctions ====
+Patentee must prove:
+* Reasonable likelihood of success
+** Infringement, no invalidity, and no unenforceability (presumption of validity not present)
+** Consideration of underlying burden of proof (clear and convincing)
+** Analysis of infringement and validity requires preliminary claim construction
+** No substantial defense from infringer (minority says infringer only needs an argument worthy of consideration)
+* Irreparable harm if injunction is not granted – typically not present if money damages would suffice
+* Balance of hardships favors granting the inunction (hardship on patentee without > hardship on infringer with)
+* Public interest must favor injunction
+==== {{anchor|Toc342061261}} 2. Permanent Injunctions ====
+Patentee must prove:
+* Irreparable injury in absence of injunction
+* Monetary damages are inadequate compensation
+* Balance of hardships favors granting the injunction (hardship on patentee without > hardship on infringer with)
+* Injunction’s favorable impact on public interest
+=== C. Enhanced Damages and Attorney’s Fees ===
+USC § 284: “The court may increase the damages up to three times the amount found or assessed.”
+USC § 285: “The courts in exceptional cases may award reasonable attorney fees to the prevailing party.”
+Most common basis for award of enhanced damages and attorney fees is willful infringement.
+''Knorr-Bremse Systeme v. Dana Corp.''
+Fed. Cir. 2004, p. 982
+RULE: Not turning over attorney’s opinions no longer creates an adverse inference, in order to preserve the attorney-client relationship, though opinions may still be used at trial to show lack of willful infringement.
+''Halo Electronics v. Pulse Electronics, Inc.''
+S.Ct. 2016
+RULE: Burden is on patentee to prove willful infringement by preponderance of the evidence. Must show willful, wanton, malicious, bad faith, deliberate, consciously wrongful, flagrant, or conduct characteristic of a pirate.
+Enhanced damages analysis:
+# Determine whether willful infringement or another basis supporting an award of enhanced damages
+# District court may use discretion to decide whether to enhance damages and in what amount, up to triple. May be based on ''Read'' factors:
+* Deliberate copying of the ideas or design of another
+* Investigation of scope of patent and formation of good faith belief that it was invalid or not infringed
+* Behavior as party to litigation
+* Infringer’s size and financial condition
+* Closeness of the case
+* Remedial action taken by infringer
+* Infringer’s motivation for the harm
+* Attempts to conceal misconduct
+Attorney fees analysis:
+# Determine whether the case is “exceptional” – whether it stands out from the average case, is uncommon, rare, or not ordinary, by the preponderance of the evidence. Standard of review is abuse of discretion
+# District court will determine, using its discretion, whether to award and how much.

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Patent Law: Difference between revisions

Latest revision as of 03:15, October 11, 2023

I. History and Architecture of the Patent System[edit | edit source]

A. History[edit | edit source]

B. Economics[edit | edit source]

C. Patent Document[edit | edit source]

D. Process for Obtaining Rights[edit | edit source]

II. Eligible Subject Matter[edit | edit source]

III. Utility[edit | edit source]

IV. Claiming and Disclosing the Invention[edit | edit source]

A. Claim Interpretation[edit | edit source]

B. Enablement[edit | edit source]

C. Written Description[edit | edit source]

D. Best Mode[edit | edit source]

E. Definiteness[edit | edit source]

V. Novelty[edit | edit source]

A. 35 USC § 102(a)[edit | edit source]

1. Knowledge or Use in US[edit | edit source]

2. Patented Anywhere[edit | edit source]

3. Printed Publication Anywhere[edit | edit source]

B. 35 USC § 102(e)[edit | edit source]

C. 35 USC § 102(g)[edit | edit source]

D. Hilmer Doctrine and Foreign Activity[edit | edit source]

VI. Priority[edit | edit source]

VII. Statutory Bars[edit | edit source]

A. On-Sale[edit | edit source]

B. Public Use[edit | edit source]

C. Experimental Use[edit | edit source]

D. Third-Party Activity[edit | edit source]

VIII. Non-Obviousness[edit | edit source]

A. Foundation of § 103[edit | edit source]

B. Graham Test and Secondary Considerations[edit | edit source]

C. KSR[edit | edit source]

D. Ordinary Skill in the Art[edit | edit source]

IX. Enforcing Patent Rights[edit | edit source]

A. Claim Interpretation[edit | edit source]

B. Opinion Letters[edit | edit source]

C. Geographic Scope[edit | edit source]

1. Export Activity[edit | edit source]

2. Import Activity[edit | edit source]

X. Infringement[edit | edit source]

A. Direct Infringement[edit | edit source]

1. Literal Infringement[edit | edit source]

2. Doctrine of Equivalents[edit | edit source]

3. “Divided” or “Joint” Infringement[edit | edit source]

4. Reissue and Continuations[edit | edit source]

B. Indirect Infringement[edit | edit source]

1. Inducement of Infringement[edit | edit source]

2. Contributory Infringement[edit | edit source]

C. Means-plus-function limitations[edit | edit source]

XI. Defenses[edit | edit source]

A. Licensee Estoppel[edit | edit source]

B. Declaratory Judgment Jurisdiction[edit | edit source]

C. Inequitable Conduct[edit | edit source]

D. Experimental Use[edit | edit source]

1. Statutory[edit | edit source]

2. Common Law[edit | edit source]

E. Inventorship[edit | edit source]

F. Laches[edit | edit source]

G. Equitable Estoppel[edit | edit source]

H. Patent Exhaustion and Repair-Reconstruction[edit | edit source]

I. Patent Misuse[edit | edit source]

J. Antitrust[edit | edit source]

K. “Advice of Counsel”[edit | edit source]

XII. Remedies[edit | edit source]

A. Money Damages[edit | edit source]

1. Lost Profits[edit | edit source]

2. Reasonable Royalties[edit | edit source]

3. Marking/Notice Requirement[edit | edit source]

4. Statute of Limitations[edit | edit source]

B. Equitable Relief[edit | edit source]

1. Preliminary Injunctions[edit | edit source]

2. Permanent Injunctions[edit | edit source]

C. Enhanced Damages and Attorney’s Fees[edit | edit source]

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