Part I Patentability[edit | edit source]
Introduction[edit | edit source]
Three kinds of patents:
- this class is all about this kind
Things covered by a utility patent:
- Composition of matter
Rights of a patent:
- Right to Exlude:
- 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:
- Adequate description
- Eligible subject matter
- 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:
- Claims must only have one sentence each.
- Keep claim broad, with questions about validity? or
- 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[edit | edit source]
- A person should be entitled to a patent unless . . . [focuses on the invention itself]
- 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.
- 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.
- 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[edit | edit source]
35 USC § 102(b)[edit | edit source]
- Effective date of the prior art: the date on sale, published, public use, etc.
- Critical date at the time was two years prior to filing
- 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
- 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 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
- experimental use negation
- Rule for public use: lack of control, no intent to perfect or test qualities of invention.
- Maintaining control is an indicator of experimentation.
- 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)[edit | edit source]
- 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.
- 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[edit | edit source]
- 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.
- On-sale bar applies even if buyer and seller do not know the nature of the product.
- 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"[edit | edit source]
- 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:
- original machine did not have to claim the tube (the Ps invention claims every element in original machine
- would be obvious for those with ordinary skill in art to put tube
- Haas’ machine had no tube to regulate air, but Ct. said this difference was unimportant for two reasons:
- 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
- prior memo was declassified before filing date
- prior memo contained enabling disclosure
- author had never actually made anything – no actual reduction to practice
- 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
- no actual reduction to practice
- 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"[edit | edit source]
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:
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
i. papers were indexed and cataloged before critical date, so were published
a. Papers are not public because public concerned with the art would not know of the invention
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
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
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
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?
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
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
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
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
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:
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
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:
b.Long-felt but unresolved need
c.failure of others
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.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
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
1.low-earth orbit (non geo-synchronous) satellites transmitting fan-shaped beam
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:
a.Teaches that low-earth orbit satellites are not new
a.Teaches the use of geo-synchronous satellites transmitting in fan-shaped beams
a.Molniya orbit (always follows the same path through the sky when viewed from a fixed point – narrow elliptical apogee loop)
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?
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
c.second antibody bound to a solid insoluble carrier
3.affinity of antibodies > 108 L/mol
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
a.combination of ibuprofen (I) and pseudoephedrine (PDE) range of ratios from 1.5 to 1 – 8 to 1
a.200 mg Ibu
b.30 mg PDE
3.Claim 47 & 48
a.method of using components of claims 36 & 37 in “combinatory immixture”
c.single unit dosage
2.aspirin & PDE
c.separate pills, prescribed together
iii.Differences between prior art and claims
a.claims use I instead of acetaminophen
b.prior art used separate tablets, not
2.aspirin and PDE
a.claims I instead
a.single unit dosage instead of “combinatory immixture”
a.combination of drugs gave “synergistic effect” when combined in a table – gave unexpected results
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
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
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
1.First app, when combined with another app, renders patent at issue obvious
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:
3.In What Form?
ii.(102(a) prior art):
1.the claimed invention
2.before app’s invention date
3.known or used
iii.(102(a) prior art):
1.the claimed invention
2.before app’s invention date
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
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
vi.102(g) prior art:
1.the claimed invention or any prior art for obviousness
2.Before applicant’s invention date
i.conception w/ diligence or
ii.reduction to practice
2.constructive (filed application)
3.Actually reduced to practice (constructed)
a.IF: not abandoned, suppressed, or concealed
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
d.In Re Bass
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
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?
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
1.Oddzon holds a design patent
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?
1.the confidential designs would never become publicly known
2.No public knowledge b/c not prior art
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
VI.§ 112 Specification
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
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
1.A “germ of an idea” is not enough to fulfill enablement
iii.Atlas v. DuPont
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
a.Plaintiff’s original patent was a design patent
b.P tried to file a continuation from design patent for utility patent
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.
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.
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
a.does the lack of description of the NAID invalidate the patent?
a.There was no description because there was only a “germ of an idea”
4.Written description requirement:
i.Show how to make and use invention
ii.ensure scope is not unduly larger than actual invention by patentee
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:
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
1.not talked about in class
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
b.Lowell v. Lewis
i.Patent statute language: “useful invention”
ii.Definition of Useful:
1.helpful or “useful” to public
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
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
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
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”
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
1.Is the fake pre-mix juice dispenser unpatentable due to deception?
ii.What would the court strike down?
1.There is no clause in patent statute that exempts deceptive inventions from patentability
Part II Infringement[edit | edit source]
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
Action: providing instructions (for example)
Time: During the term of the patent (actions before patent issuance are not infringement nor are they inducement)
(c): Contributory Infringement
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
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
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
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
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
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
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:
extrinsic evidence (knowledge of person with ordinary skill in the art)
in this case:
specification uses word “inventory” in relation to clothes and articles
Prosecution history shows that “inventory” means clothing and articles
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
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
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
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
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
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
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
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?
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
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
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
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?
infringement under the doctrine of equivalents
Doctrine of equivalents test. same:
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”
claim was purification process of a dye- specified that the pH of the dye is approximately between 6.0 to 9.0
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?
originally, there was no such limitation, but during Pros. His, patentee added pH limitation
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
Originated from Warner-Jenkinson
When claim language is rendered meaningless
Corning Glass owns the patent for fiber optic, suing Sumitomo Electric
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
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.
If prior art would render the accused product obvious, doctrine of equivalents cannot be used to find infringement
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
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”
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)
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
Is 47.8% equivalent to “majority” of the length?
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
Patent claims required front cap, rear end portion, and seal
accused device was one piece with an o-ring seal
D argued that there was no equivalent because there were not the same number of components
One piece could be equivalent to the two pieces
“visciation” asserting a certain theory of equivalents that effectively eliminates a claim limitation
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
?? Find out
Wilson Sporting Goods Co v. David Geoffrey Associates
claim required that the was no overlap of the great circles and the golf ball dimples
accused ball has overlapping dimples and great circles
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
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
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
patent prosecutor used the word “critical” during prosecution to achieve patentability
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
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?
Is the patentee precluded from asserting equivalence?
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
Fed cir. said that it was disclosed but not literally claimed, it was dedicated to the public
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
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
The claim requirement that is not literally infringed upon but accused to be infringed by doctrine of equivalents
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
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
When a patentee makes an amendment, what claims is he giving up?
(for the purposes of doctrine of equivalents)
Presumptively, you did give up ability to use DOE for that element added by amendment, but can rebut by showing:
the real reason was tangential
only been found by Fed Cir in one case
reason must be apparent from prosecution history
so far there is no other such “other reason”
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
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)
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
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
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
Means + Function?
Yes “interface means for transferring and recording
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
corresponding structure: rivet or button/hole
accused device: glue performed the fastening function
Issue: is glue equivalent to the rivet or button/hole arrangement?
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
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
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
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
Aukerman v. Chaides Construction
Patent covered a slip form for highway barriers that could be formed on lanes of differing elevations
Clock starts running at the time the patentee knew or should have known of infringement
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)
Prejudiced the alleged infringer
Equitable Estoppel can wipe out the entire case—past and future infringement
Kingsdown Medical v. Hollister
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
Was the argument made during the prosecution inconsistent
Topic: Monetary Relief/Damages
The issues of infringement and damages are bifurcated into practically two separate
Panduit Corp v. Stahlin
Should the damages be a reasonable royalty, or the profits that the patentee would have made “but for” the infringement
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
Now, every case will look back to Panduit for lost profits damages
Rite-Hite Corp v. Kelly
The infringing product affected the sales of an unpatented product of the patentee more than the actual patented invention
Can the patentee recover damages from sales of an infringing device that decreases sales of a non-patented device?
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
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
How much damages? Should it be a reasonable licensing fee or lost profits?
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
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
Did the previously absent-from-the-marketplace fourth process qualify as an “acceptable noninfringing substitute” for the purposes of the “but for” test?
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
remedies: patent is unenforceable
penalties: remedies, $100 Million fines, felonies, treble damages,
This case is the first of many cases in which the S Ct. went from patent misuse (this case) down a slippery slope
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
Suppenger was attempting to extend its patent by forcing others to purchase things that were not patented
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
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)
tried to extend similar facts to antitrust violation
1950 Patent Act
contributory infringement was minimized
Nobelpharma AB v. Implant Innovations
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
was there misuse?
Court found sufficient evidence that there was patent misuse
Patent was condemned
Walker Process fraud:
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.
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
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
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
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
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
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
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
Tie-in law was undermined by § 271(d)
35 USC §271(d)
ties were specifically authorized in specific circumstances
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
This topic covers ways that damages can be limited or enhanced
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
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
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 #####”
Does the first public letter constitute notice of infringement to the accused infringer?
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
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
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
Patent is for a portable screening apparatus for separating fine earth material from coarser materials
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
Portec knew about the patent before they ever started making or selling the product
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
Used manipulative litigation strategy
Dist. Court’s decision of Atty’s fees:
willfulness—Fed Cir said no substantial evidence, same as for enhanced damages
Was there really willful infringement?
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
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
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