Patent Law

Part I Patentability

Introduction

Three kinds of patents:

• Utility
  • this class is all about this kind
• Design
• Plant

Things covered by a utility patent:

• Thing
• Device
• Composition of matter
• Method

Rights of a patent:

• Right to Exlude:
  • Actions:
    1. Selling
    2. Practicing
    3. Making
    4. Using
• Place:
  • United States
• Subject matter:
  • Patented Invention (as described by the patent)

Justification of patent law:

• Incentive to invent
• Natural rights
  • If you created a property, you should own it
• Get knowledge out in the open – encourage full disclosure

Requirements of patentability:

• Novelty
• Nonobviousness
• Adequate description
• Utility
• Eligible subject matter

Claims:

• How do we decide if a prior invention is "close enough" to prevent patenting a recent invention?
  • 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.
• Three sections to a claim:
  1. preamble
  2. transition
  3. body
• Claims must only have one sentence each.
• Quandry:
  1. Keep claim broad, with questions about validity? or
  2. keep claim narrow, with questions about infringement?

Getting a patent is not the ability to practice your own technology.

• There might be other patents out there. You only have the right to exclude others, yet you might be excluded yourself.

Novelty

35 USC § 102

• A person should be entitled to a patent unless . . . [focuses on the invention itself]

Titanium Metals Corp. of America v. Banner

• 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

• 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.

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?

• If the composition has distinct and improved properties over prior art, it could be patentable. It is up in the air.
• Factors courts have considered if a genus anticipates a species:
  • number of compounds embraced b the most specific prior art description
  • the degree of structural similarity between the compounds of that group;
  • the number of properties shared by compounds of that group;
  • whether the properties of the claimed compounds are the same as, consistent with or diametrically opposite to the properties disclosed in the prior art;
  • 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.

Public Use

35 USC § 102(b)

• Effective date of the prior art: the date on sale, published, public use, etc.

Egbert v. Lippmann

• Critical date at the time was two years prior to filing
• Timeline:
  • 1855: Barnes made a corset w/ corset spring inside and gave to his future wife, Egbert
  • 1858: Barnes gave another corset w/ spring to Egbert
  • Egbert and Barnes married
  • 1863: Barnes showed springs to Sturgis
  • 1866: invention in general use
  • July 1866: Filed for patent
• Arguments against a finding of public use:
  • limited use (only one person used only several examples
  • No one saw the invention, was under clothing
  • Close relationship of Barnes and Egbert
    • Barnes maintained control of invention
• Arguments for a finding of public use:
  • even one public use is enough
  • invention does not need to be visible, some inventions inherently remain invisible to the public (such as a corset)
• What Constitutes Public Use?
  • Inventor does not restrict nor hold the user to secrecy
  • No control
  • No later improvement
  • Generally the court does not look at general use to determine if “public use” has occurred

Moleculon Research Corp. v. CBS, Inc.

• Timeline:
  • 1957-62: Nichols made paper models of puzzle, showed it to several colleagues and explained how it worked
  • 1968: Nichols constructed working prototype out of wood
  • Jan. 1969: Nichol’s boss sees prototype on Nichol’s desk and suggests that Moleculon attempt to commercialize the puzzle. Boss uses puzzle (borrows it & takes it home).
  • Feb. 6, 1969: Boss calls Parker Bros to inquire re: licensing of toys.
  • March 3, 1970: Nichols files patent on behalf of Moleculon
  • Apr. 11, 1972: Patent issues (‘201) patent
• Issue: Was the invention in public use?
• Procedural History: District Court said that invention was not in public use because:
  • invention was under Nichols’ control entire time
• Why did Circuit Ct. affirm this?
  • Nichols remained in control of the invention the entire time
  • Standard of review is clear error. Court found no clear error.
  • The relationship between Nichols and the people who saw the invention evidences retention of control by Nichols.
  • Use must be without limitation or restriction
    • Ct. found that when boss borrowed it, relationship evidences retention of control – was implicit in relationship
    • "none of those participants had any basses for inferring that the puzzle was being given over by Nichols for their free and unrestricted use."
  • Private use is allowable w/out activation bar
    • there was no evidence of “commercially motivated activity”

City of Elizabeth v. American Nicholson Pavement Co.

• City of Elizabeth argued public use
• Nicholson argued experimentation
• Why did the Ct. say it was not a public use?
  • experimental use negation
    • bona fide intent of testing qualities is not a public use
• Rule for public use: lack of control, no intent to perfect or test qualities of invention.
• Maintaining control is an indicator of experimentation.

Lough v. Brunswick Corp.

• Control:
  • prototype may be sold to help out w/ feasibility
  • control is down the list of factors
• The fact that Lough was only waiting for people to respond if there were problems or defects was not enough to evidence experimentation.
• Key to remember: If an inventor gives his device to another without limitation, that is public use.

Experimental Sales § 102(b) (Applicant’s own activity)

Pfaff v. Wells Electronics

• Reduced to Practice means:
  • The invention exists
  • inventor tests to see that device fulfills purpose
• Two-part test for application of on-sale bar (both must be fulfilled):
  • subject of a commercial offer for sale
  • ready for patenting
    • proof of reduction to practice before critical date or
    • 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.

Linear v. Micrel

• Before critical date, Linear’s salespeople met with potential clients, made orders, etc.
• There were not offers to sell the product, but only offers to buy.
  • So, the question becomes, was there an acceptance to the offer to buy?
• Burden of Proof fell upon Micrel to prove on-sale.

Statutory Bars – use by a 3d party

Baxter v. Cobe

• Even if the use was only done inside a laboratory, but was not “controlled,” it was public use
• Public policy: If knowledge is understood to be public, one cannot take that knowledge out of the public domain
• 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.

Abbott Laboratories v. Geneva Pharmaceuticals, Inc.

• On-sale bar applies even if buyer and seller do not know the nature of the product.

Gore v. Garlock

• 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.
• The patent was not the product, but a process, which was not public knowledge
• Public policy is to encourage prompt disclosure
• Bedrock policy of public use:
  • If you have a process patent and the product becomes publicly known through your own actions, your are barred from patentability
  • If a 3d party discloses your process (or at least sells your product) you may not be barred.
• The law favors the inventor who files quickly, not the one who sits on their patent
• 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.

§102(a) "known or used"

Gillman v. Stern

• standard J. Hand used was “first and original inventor”
• Haas invented similar machine before.
  • Haas’ machine had no tube to regulate air, but Ct. said this difference was unimportant for two reasons:
    1. original machine did not have to claim the tube (the Ps invention claims every element in original machine
    2. would be obvious for those with ordinary skill in art to put tube
• Rule: “Just as a secret use is not a “public use,” so a secret inventor is not a “first inventor.”
• Court distinguishes between a “secret user” and a “public user which does not inform the art”
  • watch wearer – everyone sees it, public use is there even though there is no informing of the art
• “public knowledge” – knowledge must be reasonably accessible to the public to qualify

In Re Borst

• prior memo was declassified before filing date
  • prior memo contained enabling disclosure
  • author had never actually made anything – no actual reduction to practice
  • Schlittler
    • journal article was submitted before filing date and published after filing date, so lower court found anticipated
    • Higher court said article was not prior art b/c it was not known by others b/c:
      • no actual reduction to practice
        • disclosure of a conception only
      • not available to the public
        • was not published until after the filing date
    • In relation to this case, requirements have changed:
      • Atomic energy act means that classified material is still considered available to public
      • actual reduction to practice not necessary; only an enabling disclosure is sufficient
  • Presumption is that filing date is invention date, then inventor has an opportunity to rebut by filing affidavit of invention date
  • constructive reduction of practice:
    • enabling disclosure is in a patent application

§102(a)-(b) "patented or described in a printed publication"

i. Cronyn

1. Student Thesis are stored by author and title, many titles are non-descriptive

2. rejection was §102(b) printed publication from than one year prior to the filing date

a. two relevant times:

i. 102(b): one or more year filing date

ii. 102(a): prior to invention date

3. Previous cases of interest:

a. Bayer

i. thesis was pubic if “accessibility is sufficient to raise a presumption that the public concerned with the art would know [of the invention]”

ii. papers were shelved but not indexed

b. Hall

i. papers were indexed and cataloged before critical date, so were published

4. Analysis:

a. Papers are not public because public concerned with the art would not know of the invention

ii. Carlson

1. In Germany, deposit a photo, drawing, etc. at a local office, which was then published as a list of “design patents”

a. entry contains city of deposit and a copy of the drawing or photo deposited

b. rights enforced in Germany

i. prevent copying, but not independent development

2. Lower Ct rejected for:

a. 102(a) b/c invention was patented... in this or a foreign country before the invention date

b. 103 for obviousness

3. P argued that the knowledge was not accessible enough to be prior art.

4. Rule: a hypothetical person is presumed to know all the pertinent prior art, whether or not the applicant is actually aware of its existence

a. Publicly available is the standard, not easily accessible

5. Patented: some grants of rights & be publicly available

g. § 102(c) abandonment

h. §102(d) prior foreign patent application

i. Kathawala

1. Rejected for §102(d) filing application in foreign country before critical date

2. Requirements of §102(d)

a. file in US more than 1 year before US filing

b. file in US after foreign issuance

3. Ps argument:

a. Greek patent claims were invalid b/c statutory unpatentable subject matter

i. Court said that validity is not concern, the patent was issued

b. Spanish patent was officially published after filing date (even though enforcement of Spanish patent occurred prior to US filing date)

i. Court said patented means patent was granted and K’s rights became fixed.

4. 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?

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.

5. In this case, the invention is defined not by claims, but by the disclosure – against everything we learned in other cases.

i. §102(g) – prior invention

i. Interferences

1. Unique to US patent law as a result of the first-to-invent system

2. Can be started by the USPTO pro se or by a patent applicant

ii. Important dates/occurrences:

1. conception date

2. reduction to practice date

3. filing date

4. conception date2

5. filing date 2

6. invention date 2

7. diligence

8. abandonment/suppression/concealment

iii. Conception

1. Oka v. Youssefyeh

a. Oka filed first, Y said he conceived first, but:

i. conception requires both a description (idea) and possession of a method for making it

1. Just a drawing of the compound was not enough

2. Types of conception:

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)

b. “the selection of the means for effectively carrying out the directing conception.”

ii. In the case of a tie, the winner is the senior inventor – the junior inventor must bring forth evidence that he invented before

1. Policy: we want to encourage inventors to file quickly, so we give incentive for earlier filing

b. Rule: Conception does not work unless inventor also conceives a method to make the invention

c. Rule II: Inventor should find corroboration for conception date

iv. Reduction to Practice

1. Scott v. Finney

a. senior party= Finney, junior party= Scott

b. Scott used a video demonstration of a surgeon implanting his device and demonstration

c. Patent office said that video was not actual working conditions

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

i. This is the common-sense approach

1. Does it work for its intended purpose?

v. Dilligence

1. Gould v. Schawlow

a. Gould had to show diligence or conception before Schawlow’s conception date (during the crucial period)

i. Had to show diligence during the entire critical period

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”

c. Bottom line: Gould should have described critical period actions with more detail to show diligence

i. The fact that the invention worked was not enough to show diligence – his diligence needed to be demonstrated

vi. Patent Award to the Second Inventor

1. §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 . . . .

2. Apotex v. Merck – Ping-Pong case

a. Apotex is the “inventor” so their patent is presumed valid, Merck has the burden by proving invalidity by “clear and convincing” evidence

b. Merck met its burden so Apotex then had the burden of showing abandonment, suppression, or concealment (actively or inferentially) by production of evidence

c. Apotox met this by producing evidence, so Merck has burden of proving invalidity again

d. Merck proved that Apotex’s patent was invalid by proving that Merck did not abandon the invention

i. Key to avoiding abandonment, suppression, or concealment is making benefits available to the public

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)

j. § 102(e)-(f) – prior applications, Derivation, “Before the Invention . . . By the Applicant”/ “Date of the Application for Patent”

i.Alexander Milburn v. Davis

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

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

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

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

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

4.the inventor is the one who claims the invention

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

5.Analogies for one failing to file claims

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

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

b.Previous foreign invention that is not patented or published

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

i.that person was not diligent

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

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

6.Current Rule:

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

ii.Agawam Woolen v. Jordan

1.§ 102(f):

a.Two requirements:

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

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

iii.Mahurkar v. Bard

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

2.Establishing the Invention date:

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

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

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

ii.Constructive R to P (filing date)

iv.In Re Stryker

1.Claim at issue:

a.Main elements claimed:

i.less than propylene left after polymerization

ii.50-60% polypropylene

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

a.Main elements claimed:

i.Harband claims: 35%

ii.“nearly perfect” separation

b.Harband is prior art under 102(e)

i.It does not anticipate but is still prior art

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

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

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

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

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

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

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

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

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

i.the present invention can be narrower

v.In Re Costello

1.Facts:

a.Dates:

i.Apr. ’71: Costello filed original application

ii.Oct. ’72 abandoned original app

iii.Dec. ’72 Gouldson paper published

iv.Jan ’73 Cereijo app filed

v.Mar ’73 second application filed

vi.Oct. ’75 Cereijo issues

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

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

a.§ 120 rules:

i.copendency

ii.reference

iii.requirements of §112

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

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

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

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

IV.§103 Obviousness

a.Generally:

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

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

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

b.Hotchkiss v. Greenwood

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

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

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

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

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

i.Invention: 3-sided frame

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

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

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

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

d.The 1952 Patent Act

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

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

ii.Giles Rich was instrumental in getting § 103 passed

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

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

1.Got rid of “Flash of genius” decisions

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

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

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

e.Graham v. John Deere Co.

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

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

1.certain factual inquires need to be satisfied:

a.Scope and Content of prior art

b.Difference between prior art and claims at issue

c.level of ordinary skill in the pertinent art

2.Relevant Secondary Considerations:

a.commercial success

b.Long-felt but unresolved need

c.failure of others

f.Cook Chemical

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

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

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

g.US v. Adams

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

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

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

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

h.Decisions on Obviousness:

i.Who has the burden?

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

2.Patentee rebuts the prima facie case of obviousness

ii.Factual Questions re: obviousness

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

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

b.On appeal, standard of review is clear error

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

i.Hypothetical:

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

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

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

i.Current standard:

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

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

ii.Example: KSR international v. Teleflex

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

2.Fed. Cir. #: 04-1350

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

4.Current case to follow in determining obviousness standards

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

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

k.In Re Rouffet

i.Current Patent:

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

2.Claims:

a.low-earth orbit satellite

b.plurality of fan beams

c.axis of beams aligned with movement of satellite

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

1.But the difference is an obvious one

ii.Prior art references:

1.King:

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

2.Rosen:

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

3.Ruddy:

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

iii.Analysis:

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

2.Factors from which the TMS may flow:

a.nature of the problem to be solved

b.teaching of the prior art

c.knowledge of persons of ordinary skill in the art

i.who is the person of ordinary skill?

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

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

d.Specific understanding or teaching principle

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

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

4.Application:

a.The court wanted a specific example of TMS

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

c.There was nothing that specifically gave a TMS

l.Hybritech v. Monoclonal

i.What claimed:

1.sandwich assay

a.labeled antibody

b.antigen

c.second antibody bound to a solid insoluble carrier

2.Monoclonal antibodies

a.purified antibodies

3.affinity of antibodies > 108 L/mol

ii.Prior Art

1.K&M

a.easy way to make monoclonal antibodies

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

2.2nd group of lit. and patents – CJPS

a.using polyclonal antibodies in sandwich assays

3.Eight other articles

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

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

i.Always check- is it really prior art?

iii.Bench trial at D Ct.

1.claim is obvious in light of prior art

a.objective considerations by court:

i.independent development at about the same time

1.shows that invention could be obvious

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

ii.D Ct. explained away other objective considerations

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

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

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

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

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

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

m.Richardson-Vicks v. The Upjohn Co.

i.Claims of patent in question

1.Claim 36:

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

2.Claim 37

a.200 mg Ibu

b.30 mg PDE

3.Claim 47 & 48

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

ii.Prior Art:

1.Cotylenol

a.acetaminophen

b.PDE

c.single unit dosage

2.aspirin & PDE

3.Doctors prescription

a.I

b.PDE

c.separate pills, prescribed together

iii.Differences between prior art and claims

1.Cotylenol

a.claims use I instead of acetaminophen

b.prior art used separate tablets, not

2.aspirin and PDE

a.claims I instead

b.“combinatory immixture”

3.Doctor’s prescriptions

a.single unit dosage instead of “combinatory immixture”

iv.P’s arguments

1.Secondary considerations

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

b.commercial success

c.skepticism that would not be functional

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

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

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

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

i.level of ordinary skill is a question of fact

vi.Analysis:

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

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

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

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

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

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

V.Relationship between §102 and § 103

a.Foster

i.Facts:

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

a.To prove invention date:

i.conception + diligence or

ii.reduction to practice

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

ii.P tried to argue §103:

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

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

3.Reasons court did not take this argument:

a.Foster waited too long to file.

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

b.Hazeltine Research v. Brenner

i.Facts:

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

ii.I:

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

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

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

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

c.How to determine if something is prior art:

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

1.What?

2.When?

3.In What Form?

4.Where?

5.Who?

ii.(102(a) prior art):

1.the claimed invention

2.before app’s invention date

3.known or used

4.in US

5.by others

iii.(102(a) prior art):

1.the claimed invention

2.before app’s invention date

3.printed publication

4.anywhere

5.by another

iv.(102(b) prior art):

1.the claimed invention

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

3.something on sale or in public

4.in US

5.by anyone

v.(102(e) prior art):

1.the claimed invention or any prior art for obviousness

2.filing of prior application occurs before invention date

3.published or issued US patent application

4.filed in US

5.by another

vi.102(g) prior art:

1.the claimed invention or any prior art for obviousness

2.Before applicant’s invention date

a.determined:

i.conception w/ diligence or

ii.reduction to practice

1.actual

2.constructive (filed application)

3.Actually reduced to practice (constructed)

a.IF: not abandoned, suppressed, or concealed

4.in US

5.by another

vii.102(f) prior art:

1.claimed invention or any prior art for obviousness

2.before invention of application

3.any subject matter communicated to applicant

4.anywhere

5.by another

d.In Re Bass

i.Facts:

1.inventor J filed prior art 10/64

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

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

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

ii.requirement for “another”:

1.same inventors, but different entity:

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

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

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

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

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

v.Aftermath:

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

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

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

vi.Hypothetical from Hazleton:

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

a.analysis:

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

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

i.Facts:

1.Oddzon holds a design patent

ii.Defense argued:

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

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

iii.I: are confidential designs obvious prior art?

iv.P’s argument:

1.the confidential designs would never become publicly known

2.No public knowledge b/c not prior art

v.Holding:

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

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

f.In Re Clay

i.READ

ii.analogous art

VI.§ 112 Specification

a.Generally

i.Three requirements:

1.written description

2.enablement

3.best mode

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

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

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

b.Enablement

i.Gould v. Hellwarth

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

2.The problem with the patent:

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

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

ii.Genetech

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

iii.Atlas v. DuPont

1.Prophetic examples:

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

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

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

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

d.Current Law re: prophetic examples:

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

1.don’t use past tense

iv.Vas-Cath Inc. Mahurkar

1.Facts:

a.Plaintiff’s original patent was a design patent

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

2.Issue:

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

3.Principle reason for written description:

a.Explain how to make and use

b.show limits of invention claimed to the public

4.Important case for § 112

v.Gentry Gallery v. Berkline Corp.

1.Outcome:

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

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

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

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

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

1.Facts:

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

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

2.Issue:

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

3.Outcome:

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

4.Written description requirement:

a.purposes

i.Show how to make and use invention

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

5.Policy:

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

6.§ 112 requirements:

a.three:

i.Written description

ii.enablement

iii.best mode

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

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

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

vii.Barker

1.not talked about in class

VII.Utility

a.Generally:

i.Statutes:

1.§ 101 requires that the invention has utility

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

ii.Why is Utility a requirement?

1.It is in the constitution

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

3.

b.Lowell v. Lewis

i.Patent statute language: “useful invention”

ii.Definition of Useful:

1.helpful or “useful” to public

2.Is not:

a.Mischevious, frivolous, or injurious to the public

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

c.Brenner v. Manson

i.Facts:

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

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

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

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

ii.Standard:

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

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

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

iii.Holding:

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

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

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

a.“Specific benefit exists in currently available form”

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

d.Brana

i.Issues:

1.Applicant must allege utility

a.Tumor models were similar enough to count

2.Applicant must prove utility

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

i.Show reason to doubt

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

b.Curing tumors in mice is utility enough

e.Juicy Whip v. Orange Bang

i.I:

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

ii.What would the court strike down?

1.unlawful deception

iii.Rule:

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

Part II Infringement

Direct and Indirect Infringement

35 U.S.C. §271

(a): Direct Infringement

Four questions to ask re: infringement

Action: What occurred?

Time: When did it occur?

Where: Where was it done?

Object: Object of the action?

Questions under (a) Direct Infringement

Action: make, sell, offer to sell, use, import

When: during patent term

Where: Within the US

Object: Patented invention

(b): Active Inducement

Questions

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

Questions:

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

Questions

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

Basic Presumption: you cannot sell something you have not made

If there is no direct infringement, there cannot be any inducement

Deepsouth would still not be a direct infringer even if they sold their product w/in US

Inducement is harder to prove- inducement must have intent and knowledge

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

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

271(b): must show intent to infringe

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:

seems specifically made to curb selling of components

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

CR Baird v. Advanced Cardiovascular

Issue: Are there any substantial noninfringing uses of the device the D sells?

If so, no liability under § 271(c)

First Sale Doctrine; Implied License; Repair and Reconstruction

Adams v. Burke

original inventors assigned patent w/in 10 miles of Boston

inventors assigned remained of patent rights

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

Statute language that gives Burke license to use the invention:

Whoever... w/out authority

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

What did Adams get from this transaction?

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

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

Implied license:

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.

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

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.

Bandag Test to establish an implied license w/ sale of an item by patentee (or authorized by patentee):

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.”

Korner can only sell their items to people who had a license, so they must have only been customers of Met-Coil

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

Aro Manufacturing v. Convertible Top Replacement

Facts: There are no substantial noninfringing uses of what Aro is selling

Issue: is Aro making a repair or simply making an entire new top?

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

Test to determine if it is a repair or a making

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

Repair v. make: Are you repairing it, or are you constructing it?

This is important b/c a license to use (and repair) comes with a purchase of the item from the patentee

Claim Interpretation and Literal Infringement

Markman v. Westview Instruments

Facts

Language at issue of the patent:

“inventory control system”

“maintain an inventory total”

“detect and localize spurious additions to inventory”

D argued that inventory only included articles and clothing

P argued that inventory also included cash or inventory receipts

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

Jury found broad definition, so found infringement

Judge reversed as a JMOL

Jury also had specification to examine

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

Question of law:

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

reviewed de novo on appeal

Claim construction:

What question are we trying to answer?

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

Things that are relevant to construe the claims:

Claims

Specification

Prosecution history

extrinsic evidence (knowledge of person with ordinary skill in the art)

expert testimony

inventor testimony

prior art

dictionaries

treatises

in this case:

intrinsic evidence:

specification uses word “inventory” in relation to clothes and articles

Prosecution history shows that “inventory” means clothing and articles

extrinsic evidence

contradicts the intrinsic evidence, amounts to legal opinion

if this were relevant , the patent expert and patent drafter would be very important evidence

Vitronics v. Conceptronics

Facts:

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

Rule:

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

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

Claim construction: not a purely factual question (a “mongrel” issue)

Phillips v. AWH Corp

Facts:

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

Rule:

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

interpret claim in light of intrinsic evidence

do not import limitations into the claims from the specification

How do we reconcile these two rules?

You cannot say that baffles mean no right angles just b/c there are no examples of right angles in the specification

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

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

Why is this case being discussed?

The dissent (By J. Giles Rich)

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

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

Dissent

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

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

Nystrom v. Trex

What is unique about this case?

vacated and re-decided b/c of Phillips

What was at issue?

definition of “board”

was it only made of wood, or could it be any material?

Specification

use of board only spoke of wood

What did the district court do wrong?

They went first to the dictionary to start out with the broadest definition possible

Court should have started with intrinsic evidence first

Convex

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.

Limitations on the Doctrine of Equivalents

Graver Tank

facts

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

Argument

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?

Holding

infringement under the doctrine of equivalents

Rule

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

Facts

claim was purification process of a dye- specified that the pH of the dye is approximately between 6.0 to 9.0

Issues

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

originally, there was no such limitation, but during Pros. His, patentee added pH limitation

Holding

D of E can apply to even explicit ranges (such as this case).

What the law is now

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

Focus of whether the differences are substantial or insubstantial

Vitiation

Originated from Warner-Jenkinson

When claim language is rendered meaningless

Corning Glass

Facts

Corning Glass owns the patent for fiber optic, suing Sumitomo Electric

Holdings

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:

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

known interchangeability is a factor in this determination

[Current Test] is from Warner-Jenkinson

element by element test,

“element” = a limitation, not a “component”

this is from Corning Case

Main Rules

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

If prior art would render the accused product obvious, doctrine of equivalents cannot be used to find infringement

DiMarini

Facts

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

Arguments

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”

Holding

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

What we should know

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)

Facts

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

Issue

Is 47.8% equivalent to “majority” of the length?

Holding

No equivalence because 47.8% is a minority, and a minority is the opposite of the majority.

Proper Analysis (according to Todd)

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

Facts

Patent claims required front cap, rear end portion, and seal

accused device was one piece with an o-ring seal

Argument

D argued that there was no equivalent because there were not the same number of components

Holding

One piece could be equivalent to the two pieces

Rule

“visciation” asserting a certain theory of equivalents that effectively eliminates a claim limitation

from Warner-Jenkinson

Summary (from Warner)

For every claimed limitation that is “not there” in the accused device, there must be an equivalent element in the accused device

Visciation:

?? Find out

Wilson Sporting Goods Co v. David Geoffrey Associates

Facts

claim required that the was no overlap of the great circles and the golf ball dimples

accused ball has overlapping dimples and great circles

Analysis

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

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

Texas Instruments v. US International Trade Commission

Rule

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

Facts

patent prosecutor used the word “critical” during prosecution to achieve patentability

Holding

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

Important points to take away

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

Hypothetical claim is created to just cover the accused device

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

Facts

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

Factual question of equivalence

Is the steel equivalent to aluminum?

Legal limits

Is the patentee precluded from asserting equivalence?

Outcome

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

PH

Fed cir. said that it was disclosed but not literally claimed, it was dedicated to the public

Brightline Rule

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

Concurring opinion by Dyk

Spec said that aluminum and steel are equivalent, so this should be used

But, estoppel prevents claiming so

Other Case

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

Rule from Judge Rader that will probably be the rule soon

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?

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

Another way to make J. Rader’s rule work

discussed in Freedman Seating, below

Freedman Seating

Facts

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

Vitiation

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

Issue

When a patentee makes an amendment, what claims is he giving up?

(for the purposes of doctrine of equivalents)

Holding

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

only been found by Fed Cir in one case

reason must be apparent from prosecution history

Other reason

so far there is no other such “other reason”

Outcome

What is an amendment?

re-writing independent claim as dependent claim is considered an amendment

One other (find out?)

Infringement of Claims With Means-Plus-Function Limitations

Generally

35 U.S.C. § 112 ¶ 6

means-plus-function claims are limited to corresponding structure, material, or acts described in the specification and equivalents thereof

Steps for determining Literal Infringement

Determine if claim element is means-plus-function (or step-plus-function)

Presumptions:

if the word “means” is present, the presumption is that it is a means-plus-function element

can rebut if:

claim itself recites structure performing the function

there is no function recited

if the word “means” is absent, the presumption is that it is not a means-plus-function element

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

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

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

Facts

claim language included a “rotary means”

corresponding structure was determined by the court to be the rotary means for providing access . . .

Analysis (See steps for analysis above)

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.

Things we learned from this case:

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

Analysis

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

Things we learned from this case

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?

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.

Chiuminatta v. Cardinal

Doctrine of Equivalence and means-plus-function

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

b/c means-plus-function §112 ¶6 already gives protection “limited to corresponding structure, material, or acts described in the specification and equivalents thereof”

Dicta gave one possible exception: after-arising technology could be found to be equivalently infringing

Al-Site v. VSI International

Analysis

“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?

Holding

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)

Analysis for other means-plus-function claim

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?

Jury found that the hole was equivalent to the patented device for DOE, so they would have found equivalence for means-plus-function anyway

New Step in the analysis (step 4 ½)

Determine if a portion of the accused device performing the function is “after-arising”

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

both cases give it in dicta

Now, everybody ignores Al-Site—why?

there is no effect on the analysis except for what type of infringement (DOE or literal under means-plus-function)

Pros. hist estoppel by argument

affected by both DOE and literal

disclosed but not claimed

affected by DOE-cannot be claimed as equivalent,

but can be claimed by means-plus-function (not affected)

Prior art (Wilson)

affected by both the same--???, but we don’t know how

Equitable Defenses – Laches, Estoppel, Inequitable Conduct

Generally

Aukerman v. Chaides Construction

Facts

Patent covered a slip form for highway barriers that could be formed on lanes of differing elevations

Rule

Laches

Delay

Unreasonable

Clock starts running at the time the patentee knew or should have known of infringement

Inexcusable

Material Prejudicial

Two kinds of material prejudice:

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

Inequitable Conduct

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

Rule: Gross negligence is not necessarily inequitable conduct

There must be clear evidence that the patentee or other agents (pat.atty., etc) intended to conduct the inequitable conduct

Related case: Digital Content

05-1128 decided 2/8/06

Molins v. Textron

Three tests for inequitable conduct

Subjective

reasonable examiner

Objective

From §1.56:

Was the argument made during the prosecution inconsistent

But for

???

Topic: Monetary Relief/Damages

Generally

The issues of infringement and damages are bifurcated into practically two separate

Panduit Corp v. Stahlin

Issue

Should the damages be a reasonable royalty, or the profits that the patentee would have made “but for” the infringement

Test

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

Results

Now, every case will look back to Panduit for lost profits damages

Rite-Hite Corp v. Kelly

Facts

The infringing product affected the sales of an unpatented product of the patentee more than the actual patented invention

Issue

Can the patentee recover damages from sales of an infringing device that decreases sales of a non-patented device?

Holding

Yes, damages for lost profits, even for the device that is not covered by a patent

The damages must be reasonable foreseeable

Functionally Tied together

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

Facts

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

Issue

How much damages? Should it be a reasonable licensing fee or lost profits?

holding

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

facts

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

Issue

Did the previously absent-from-the-marketplace fourth process qualify as an “acceptable noninfringing substitute” for the purposes of the “but for” test?

Holding

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

Other Limitations on Relief – Patent Misuse; Antitrust Liability

Generally

Misuse

remedies: patent is unenforceable

Anti-Trust

penalties: remedies, $100 Million fines, felonies, treble damages,

Morton Salt

This case is the first of many cases in which the S Ct. went from patent misuse (this case) down a slippery slope

Facts

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

Holding

Suppenger was attempting to extend its patent by forcing others to purchase things that were not patented

Analysis

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

Questions

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)

International Salt

tried to extend similar facts to antitrust violation

1950 Patent Act

contributory infringement was minimized

Nobelpharma AB v. Implant Innovations

Facts

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

Issue:

was there misuse?

Holding

Court found sufficient evidence that there was patent misuse

Patent was condemned

Walker Process fraud:

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

must link commercial loss to the anti-trust activities (must have substantially affected the market) to show damages

Reversal: this case has been reversed by the S Ct.

Sham Patenting:

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

facts

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

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

PH

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

Holding

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

Lessons to take from this case

advise clients to not enter into potential anti-trust violating agreements

Independent Ink v. Illinois Tool Works

facts

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

PH

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

Holding

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)

35 USC §271(d)

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

otherwise, the customer will go elsewhere

Topic: Enhancement of and Limitation on Damages – Marking, Willfulness

Generally

This topic covers ways that damages can be limited or enhanced

Marking

Generally

35 USC § 286

you can only recover six years worth of damages prior to the filing of the complaint

This is different than the 6 year presumption of laches, which starts ticking when the patentee knew or should have known of infringement

For this, you start at the time of filing and count backwards

35 USC § 287 Marking Statute

Amsted v. Buckeye

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

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

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

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

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

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”

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

It is irrelevant that Buckeye might have known about the patent and their own infringement, the inquiry focuses on the action of the patentee

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:

might be more difficult to get manufacture (the $$) for direct infringement

Also, knowledge is required for the purposes of contributory or inducement infringement, which is different than marking

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

Generally

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

you must have won on all of the patent issues

the case must be an “exceptional case”

Reed v. Portec

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

Attorney at least made a comment that patent holder would not be able to assert doctrine of equivalents infringement

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?

Portec had copied

Willfulness

Used manipulative litigation strategy

Dist. Court’s decision of Atty’s fees:

litigation misconduct

willfulness—Fed Cir said no substantial evidence, same as for enhanced damages

Issue

Was there really willful infringement?

Holding

Some circumstances indicate that there was not willful actions:

patent attorney’s opinion letters that indicated no infringement—stating and affirming that Portec would not infringe

Portec attempted to design around, trying not to infringe

fact that only doctrine of equivalents infringement was found, it was not so clear-cut

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:

“Wanton disregard” of patentee’s patent rights

Burden of Proof: The patent holder has the burden of proving willfulness, the D can then rebut

Circumstances to determine enhancing damages:

1) Whether the infringer deliberately copied the ideas or design of another;

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

3) the infringer’s behavior as a party to the litigation

Secondary circumstances which “courts have appropriately considered, particularly in deciding on the extent of enhancement”:

4) Defendant’s size and financial condition

5) Closeness of the case

6) Duration of D’s misconduct

7) Remedial action by the D

8) D’s motivation for harm

9) Whether defendant attempted to conceal its misconduct

Knorr-Bremse

What we should know:

All sorts of problems occur when clients decide to waive attorney-client privilege and bring forth a past opinion letter

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:

If you did not produce an opinion, the presumption was that the opinion letter was against you

Rule now: There is no inference upon the D that an opinion letter was against him if he decides not to produce that letter

Duty on D to make sure not infringing

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

Now: Not necessary