Patent Law Flashcards
(207 cards)
1
Q
3 types of patent
A
• 3 types: Utility patent, design patent (ornamental, not functional usually Copyright or TM), plant patent (making hybrid plants)
2
Q
What is the Specification
A
• The Specification: o all background of the patent o Field of invention o Advantages, disadvantages o Summary of invention and all its embodiements o Detailed description of invention, how to use it, how to make it o Drawings o The CLAIMS (within specification)
3
Q
The Claim consists of…
A
• Claim Drafting:
• 1) preamble (“I claim…”)
o preamble is non-limiting, short.
• 2) the transition (3 types used)
o comprising (most open ended claim)
• roller skate of 5 wheels include 5 wheels and above
o consisting (close ended)
• roller skate of 4 wheels means only 4 wheels
o consisting essentially of
• drug consisting essentially of acid (you can put all sorts of other stuff in it and that doesn’t matter b/c inventor only cares about the acid)
4
Q
Utility Comes from…
A
Comes from Article 1 Section 8 of Constitution “…useful arts…”
• Section 35 U.S.C. 101: requires invention be useful
o “…any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…”
5
Q
Enablement comes from…
A
• 35 USC 112 (enablement requirement): requires applicant to disclose the manner and process of making and using the invention
6
Q
3 major issues with utility:
A
• 3 major issues:
• practical or specific utility requirement
• what constitutes a substantial utility, most difficult of utility doctrine
• beneficial utility
• whether invention socially harmful or deleterious purpose
• operability of the invention
• whether the invention can actually accomplish the utility alleged
• enablement (Section 112)
o (no fantastic claims: perpetual motion machine, time machine)
• Mistakes: not allowed.
• Something works but theory behind it wrong: PTO wants accurate disclosures, quid pro quo: exclusive right to invention and public gets disclosure to spur innovation (how to make, use, manufacture invention: operability)
7
Q
it’s a low bar for utility
A
- Judges of utility: PTO examiner, the public/consumers, judges/courts (subjective), and Congress (laws on morality).
- Utility not used to invalidate patents all that often b/c the bar is so low.
8
Q
Timing is Key for Utility
A
• Timing: Application is judged from the time of the invention, must provide proof of the asserted utility AT THE TIME OF THE APPLICATION.
o Evidence obtained after the filing date is too late.
9
Q
Burden of Proof PTO review v. litigation
A
Beneficial/moral Utility:
*Inventor has burden on proof for utility in PTO, in litigation the defendant has burden to prove the patent doesn’t meet the utility requirement.
10
Q
Juicy Whip
A
- R: The fact that one product can be altered to make it look like another is in itself a specific benefit sufficient to satisfy the statutory requirement of utility.
- A: Court rejects Lowell. “The invention of the product or process that makes such imitation possible has “utility” – the imitation is the utility, so you have met utility requirement. Court is okay with this deception to consumers.
11
Q
Utility Hypo: • New method of free basing cocaine:
A
o Operable utility: yes, you can get higher quicker
o Functional utility: yes
o Beneficial/moral utility: No, we don’t wait people an easy way to do cocaine, and cocaine is illegal in 50 States for use
12
Q
Utility Hypo: Better way of free-basing Marijuana:
A
o Operable: yes
o Functional: yes
o Beneficial/moral: yes for medical purposes; but…
• Makes a difference that a few states have allowed recreational use, but still illegal to feds and feds issue patents
13
Q
Utility Hypo: better way of running prostitution house
A
o Operable: yes
o Functional: yes
o Beneficial/moral: ….?…. Nevada has said this is okay. Yes, patent can be issued, but only enforceable in Nevada, not workable in other states.
• This is innovation, may benefit society.
14
Q
Utility o As Examiner, you can’t test it, default for examiner is to presume useful, operable, and then Examiner can go back to inventor for evidence and inventor can respond.
A
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15
Q
utility hypo: • New method of cooking chicken using a particle collider (3 or 4 in world):
A
o Operable: yes
o Functional/it works?: yes, it cooks
o Beneficial/moral: yes, not illegal, just super inefficient.
16
Q
Utility hypo: • Newly isolated DNA molecule that can be used as paperweight:
A
o Operable, does it serve as a paperweight: yes
o Functional, work as a paperweight?: yes
o Beneficial/moral: yes, doesn’t harm society.
• PTO: said no, everything can be used as a paperweight, this is not good enough utility.
17
Q
Utility hypo: • Device that interferes with traffic cameras or traffic lights:
A
o Operable: yes
o Functional: yes
o Beneficial/moral: it’s illegal in all 50 States; if it’s illegal in 49 states then maybe the calculus changes a bit.
In general for beneficial/moral utility:
*If illegal in all 50 states or is it not?
18
Q
Brenner v. Mason:
• No Patent
• Process for making a known steroid
A
• Rule: “Unless and until a process is refined and developed to this point – where specific benefit exists in currently available form – there is insufficient justification for permitting an applicant to engross what may prove to be broad field.”
19
Q
extending patent life unnecessarily (called evergreening).
A
!
20
Q
Hypo:
• Firm makes chemical X, Can firm get patent on process to make Chemical X.
o
A
Under Brenner, cannot get a patent b/c no known use for the chemical.
21
Q
Hypo:
Invention designed for a thing just for entertainment/amusement?:
A
yes, patentable.
• See p. 231, santa clause detector.
• PTO very cautious on issuing patents for something that spark curiosity of scientist compared to a patent that sparks curiosity for a child.
o This is because it may inhibit/stop innovation and research.
22
Q
In Re Brana:
• Patent valid
• Claim for antitumor substance
• Issue: Obviousness (103)
A
• Utility burden is met here, when it was not in Brenner v. Mason because Brana did experiments to actually show utility but Mason had no experiments and the chemical compounds in Mason were less predictable.
23
Q
To clear the low bar utility requirement: • *Need experiments and test results to show utility
• Dr’s declaration of the test results
• Show predictability based on prior work.
A
!!
24
Q
Cannot File patent and continue experiments; not allowed b/c must have utility at the time of filing.
• BUT you can file additional experiments later on to rebut the PTO or support your case in litigation.
A
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25
In Re Fisher, p. 241
• No patent.
• ESTs: the structure of ESTs and function of ESTs is same; All ESTs do is fish out coding of the proteins = very different
Specific Utility Requirement: “Application must disclose a use which is not so vague as to be meaningless.”
• Specific utility: show what is useful in your EST specifically.
*Must have general utility and specific utility
26
Utility hypo: • A painting that has artistic value by those skilled in the art:
o Copyright is better; doesn’t serve function; no utility
27
Utility hypo: • Toy for toddlers that are easy to hold and machine washable
o
Yes
| o Used for amusement but has practical, functional, utilty
28
Utility Hypo: • Sculpture used as a door stop
o Like In re fisher, look at general utility and specific b/c almost everything can be used as a doorstop.o Can get design patent on making it ornamental or copyright on expressive elements
29
Enablement: Unlike utility, which comes from the Constitution, enablement is required by Section 112 Section a.
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30
112(a), enablement requires: quid pro quo: inventor gives society the invention and part of inventor giving the invention is the thing has to work.
• How does it function
• The process of making and using it in such full clear consice and exact terms as to enable
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31
Why do we have enablement standard?
* To limit how broadly patent claims may reach (p. 264)
* Regulates what degree of speculation is tolerable.
* Tell competition what to avoid; helps define metes and bounds of what the invention is so others can avoid it, invent around it, or license the technology.
* This is opposite to trade secret, you disclose advantage but get right to exlude others for a short period of time.
32
Enablement (policy, reasons for):
| •
Bars inoperable inventions, and
• Overly broad claims (give inventor only that much that he has given to the public)
Enablement helps show the inventor possess the invention
33
Enablement must inform “anyone skilled in the art.”
not a person extremely excessive, just a regular practitioner.
34
Enablement does not require the mechanism of function.
• For enablement: it works and that’s all that matters.
• Aspirin: no one knew how it worked until 20 years later. It’s function was to treat headaches, but the process on how that worked wasn’t discovered until years later.
35
Timing of enablement.
• Just like utility, it must be enabled at the time the application was filed (through the eyes of a POISA); not at a later date.
36
Public policy: why can’t applicant add new material to show enablement after the fact?
• Must inform competitor of metes and bounds of invention;
37
• Procedural: “new matter rejection” definition.....
trying to claim what was later discovered and adding that material to your claims
38
o 2 procdural ways around new matter rejection if applicant:
1) file a new application (easy)
• disadvantage; preemption issues
• priority dates: everything judged from the date of filing;
• what can be used against your patent depends on when you file;
• 2) CIP: Continuation In Part Application:
• same application, adding new material but 2 priority dates:
o 1) is everything disclosed in previous application
o 2) all the new matter has a new priority date from filing of CIP (CIP Filing Date).
• Problem with CIP: you don’t disclose what new matter is, so examiner has to look at original application and the CIP to determine new matter.
39
Incandescent Lamp Patent
| • Patent invalid
Sawyer and Mann claim to all carbonous fibrous filaments overly broad;
o To prove enablement:
• Think about predictability (really helps), what you must show to be enabled; a genus claim requires more species or common element to show that it works.
o Enablement prevents overly broad claims; narrow it to enable it.
40
In re Wands “The Wands Factors” (p. 275)
• Patent Valid at end of the day.
o Invention: an IGG or IGM antibody: a method.
• *The more predictable a field, the less disclosure is necessary to enable a broad claim.
o If experimentation standard for one skilled in art then low success rate okay/fine.
o Look to who is the person we are targeting when looking at enablement: the person skilled in the art (POISA).
41
What are the Wands Factors:
* 1) the quantity of expirimation necessary
* 2) the amount of direction or guidance presented
* 3) the presence or absence of working examples
* 4) the nature of the invention
* 5) the state of the prior art
* 6) the relative skill of those in the art
* 7) the predictability or unpredictability of the art
* 8) the breadth of the claims.
42
Wands Factors Applied to Incandescent Light:
• 1) the quantity of expirimation necessary
o high level, thousands of expirements performed.
o Hurts you as inventor arguing enablement
• 2) the amount of direction or guidance presented
o carbonized fibrous material is broad
o Hurts inventor
• 3) the presence or absence of working examples
o only a few examples
o hurts inventor
• 4) the nature of the invention
o is it hard or is it easy?
o In late 1800s, is tech. easy to understand or difficult?
o Hurts inventor, if more difficult need more disclosure
• 5) the state of the prior art
o what has been disclosed?
• Computer tech today is very well developed today
o Hurts inventor
• 6) the relative skill of those in the art
o this may be somewhat hard for someone to understand in 1800s
o Helps inventor
• 7) the predictability or unpredictability of the art
o is it predictable? S&M guys claimed all fibrous material without disclosing enough information. It was unpredictable.
o hurts inventor (this factor sunk the S&M guys)
• 8) the breadth of the claims.
o S&M was very broad
o Hurt inventor
^^7 out of 8 hurts inventor so invention not enabled.
!
43
Do we need to enable starting materials?
• YES, you have to enable starting materials b/c the disclosure must teach someone skilled in the art on the method.
o Ex: cancer treatment using KFC recipe, but no mention of recipe, so what have you given to the public? No method of treating cancer, no info on recipe = not enabled.
44
• Good policy: disclose and give to public or keep trade secret (but beware, if someone patents it then they may be able to stop you from using your trade secret)
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45
ENABLEMENT HYPO: • Hypo: kryptonite hits earth, no one can make it, can someone get a patent on process to liquify kryptonite to inject people giving them superpowers?
o
Patentable. There is a market for it, kryptonite is a natural rock.
• You don’t have to enable metal when you submit a bicycle patent.
o As long as someone skilled in art knew how to obtain a piece of starting material (metal, kryptonite) then you don’t have to enable it.
46
Enablement Hypo: how would you describe Cheeto’s you use in a claim? What if the recipe changed?
o
PTO doesn’t allow use of Trademarks within the scope of the claim UNLESS you control the TM. You must give a statement disclosing what the TM item is comprised of.
47
Janssen Pharmaceutica v. Teva Pharms (2009)
• Patent invalid
o Claims on dosages extremely broad, large.
• The narrower claims will be harder to invalidate.
• Enablement tries to stop overly broad claims, a narrow claim usually won’t create enablement problems.
o You can have a patent and method for using something even if you don’t understand how it works (Ex: Aspirin, mechanism behind wasn’t understood until 1990s).
o Human trials are not required, but in vitro testing may establish a practical utility for the pharm compound.
o In vitro test results for a claimed pharmaceutical compound combined with animal test results for a structurally similar compound, shows a reasonable correlation between the disclosed in vitro utility and an in vivo activity, therefore a rigorous correlation is not necessary where the disclosure of pharm activity is reasonable baed upon the probative evidence.
48
• “if a patent claim fails to meet utility requirement b/c it is not useful or operative, then it also fails to meet the how-to-use aspect of the enablement requirement.”
o How does inventor get rid of enablement problem without adding new evidence once application already filed (stuck with what you have)?
• Narrow your claims so it isn’t so broad.
49
What are the Economics behind enablement:
• quality not size of disclosure that counts
• don’t want enablement standard to be too harsh b/c then firms may move to trade secret and the patent system wouldn’t work, nobody disclosing research
• patents help stimulate R&D investments (2 arguments):
o broad patent hurts b/c 2nd gen patent will be subject to first, discourages improvement
o broad patent gives incentive for additional investment (Kisch theory)
50
Enablement Test for Final Exam:
1. ID nature and scope of relative claim (name of the game is the claim)
a. What does the claim say: broader scope of claim the more you need to show enablement
2. ID the specification disclosure informing POISA how to make and use invention
a. Does specification guide POISA tomake/use invention, if clear then good; if confusing then enablement probs
3. ID the state of the prior art, relevant art.
a. What kind of tech. – well developed? New field = disclose more b/c things are not known. If well developed field may disclose less.
b. Looking through eyes of POISA at time of filing
4. Combine the specifications disclosure with the state of art to determine if POISA would have to perform undue experimentation
a. (Go through WANDS factors)
1. 1) the quantity of expirimation necessary
a. Success rates (1% success rate may be very good in certin field)
2. 2) the amount of direction or guidance presented
3. 3) the presence or absence of working examples
4. 4) the nature of the invention
5. 5) the state of the prior art
6. 6) the relative skill of those in the art
a. a genius, a grad student, or Joe Public?
b. If genius POISA then you don’t have to disclose as much;
i. Opposite of what we want for “obviousness”
c. For enablement, want genius POISA to disclose less.
7. 7) the predictability or unpredictability of the art
8. 8) the breadth of the claims.
!
51
Similar to utility, enablement doesn’t come up all that often.
• If not enabled, not useful = no market for something that doesn’t work (nobody sues for something that doesn’t work)
• If it doesn’t work, nobody notices it, nobody will sue on it.
* In addition to utility, enablement, Written description and best mode are also things that do not come up that often
* Indefiniteness, prior art, obviousness = ways to invalidate.
52
WRITTEN DESCRIPTION comes up...
1. Where patent applicant amends their specification (to add new distinctions to narrow their claims)
2. If you claim too broadly
53
Drawings enough to provide support or written description claims.
•
Low bar
• Unlike utility and enablement rejections, we do se written desc rejections more likely during prosecution, less during litigation
54
• Must have written description support: You can’t narrow claims without support
o Ex: in written description – tried 5 mg and 2,000 mg; later on: 100-200 mg works best
55
Regents of Univ. of California v. Eli Lilly Co.
*No Patent, lack of valid written description;
method of creating insulin for rats, obtained patent for making human insulin
*you can have enabling disclosure that does not meet written description requirement.
o Inventor doesn’t give the info on human insulin, don’t know what it looks like or how it works.
• Distinction is important between enablement and WD.
• Everything here in this case is enabled, but issue is WD.
o Must define item with distinction, define precisely what is trying to be claimed.
56
Regents v. Eli Lilly: a generic statement without more is not an adequate written description of the genus b/c it does not distinguish the claimed genus from others, except by function.”
* Doesn’t define any genes in that distinction
| * Doesn’t define precisely what is trying to be claimed.
57
WD Policy from Regents v. Eli Lilly• would the inventor been unduly rewarded had the patent been upheld? (they were first to find rat DNA and they want to broaden that)
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58
• Ask these questions to determine if inventor had possession of invention; WD overlaps quite a bit with enablement.
o Would POISA know which works by looking at the specification?
• Is WD sufficient to cover Velcro in fastener claim?
59
Ariad Pharm v. Eli Lilly
No Patent, lack of written description
broad genus claim, very broad claim
• D Wants 3 requirements: separate enablement, separate WD, and separate best mode.
o Court agrees with D^
• Key takeaways:
o 1) timing issue (lot of stuff in 1991 application, but not in 1989 application)
o 2) lot of things between enablement and WD that are linked.
• Stops things needing undue expireimation
o WD ensures when you claim by genus buy function or result you must have specific examples that accomplish that result or function
60
Policy from Ariad:
We don’t want to close off invention in entire field with overly broad patent claim, but we want to award inventor for what they disclose.
61
Ariad Dissent:
• Would give Ariad a patent on all 3 hypos in patent b/c it’s a good idea; and Eli Lilly would have their own patent on the specific ones they found (the improvement), but would have to license from Ariad.
o Downstream and upstream innovators benefit from the ability to cross license
o Dissent: Innovation wont be blocked if we give licenses to Ariad.
o We are trying to reward disclosure of ideas.
o Dissent: Under the new regime, mere improvement will likely invalidate the genus patents. (Is this true? Prof says • If species claim comes after the genus then it’s fine.
• If species claim comes before the genus claim then genus invalidated. )
62
• Blocking patent:
patent on something, somebody makes improvement on it, they can’t use their patent without a license from you (even though they get their own patent).
63
WD is a Q of Fact. Enablement is a Q of Law.
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64
```
PTO guidelines on WD to see if WD is met:
• Level of skill in knowledge in the art
• Any partial structures
• Physical or chemical properties
• Functional characteristics
```
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65
Definiteness; positive def and negative def
• quid pro qui:
o positive definition: inventor give us something and give us an exact term so we understand what we have
o negative definition: telling us what the invention isn’t; the metes and bounds of the invention. Allows competitors to design around the invention; or design something completely new.
66
Orthokinetics v. Safety Travel Chairs
• handicap travel chair to fit into car; issue of definiteness
• patent valid
I: o Claim uses language “so dimensioned” to describe fitting the wheelchair into cars,
The claim itself does not have to enable the invention, but the specification must be enabled (know how to make and use); then distinctly claim within the claim.
* Whether those skilled in the art (subjective standard) would understand what is claimed when the claim is read in light of the specification.
* IF POISA understands what it would be (how to make and use, enablement) then we are definite enough.
o “if the language is as precsise as the subject matter permits, the courts can demand no more.”
67
• What kind of deference does a patent get when litigating?
Presumed valid, so to kill it, invalidate it you must meet clear and convincing evidence.
• (preponderance is lowest; 2nd highest is clear and convincing; highest: beyond reasonable doubt).
68
Deference during "RE-EXAMINATION" (: go back into Article 1 court and try to figure out if the patent is good or not. )
• When thrown into re-exam: no longer considered a patent, considered an application again and given NO DEFERENCE; No Clear and Convincing Evidence; Evidentiary standard much lower for Def compared to litigation.
69
o What technologies do we look for to take to re-exam versus litigation?
* If difficult technology: go re-exam (not litigation)
| * Def controls choice to go to re-exam, even if P doesn’t want to
70
Advantages of Re-exam v. litigation
o ADVANTAGE #1:
• Def gets to talk to PTO too, better than litigation.
• You take side of examiner too b/c you can talk to examiner.
o ADVANTAGE #2:
• When thrown into re-exam: no longer considered a patent, considered an application again (given no deference)
o ADVANTAGE #3 OF REXAM V LITIGATION:
• Examiner is expert and is present for rexam, judge and juries are not experts in litigation
71
Nautilus v. Biosig June 2014 Supreme Court case
| • Issue: Spacing for heart rate monitor (issue of definiteness with spacing): (like on a treadmill)
we are pulling back from insolubly ambiguous standard (low bar, easy for inventor).
o Supreme Ct - New standard/Rule w 3 parts:
• 1) Look at from POISA view
• 2) At the time the application was filed
• 3) Look at that standard from view of if the specification viewed through the lens of POISA at time of filing is enough to be definite.
o Supreme Court: here (spacing of heart monitor): NO, 112 (2nd) doesn’t tolerate that much ambiguity.
• Supreme Court New Rule: more exacting; better but harder to apply.
72
• POLICY ISSUES (why new Nautilus Rule versus insolubly ambiguous
o One one hand new tech so unsure of boundaries, but other hand want clear notice to competitors to know boundaries of invention
o SCOTUS: Want to stop gamesmanship; if standard is low, incentive to be very ambiguous. Competitors are forced to stay away or license – no matter what the innovator wins.
• SCOTUS: Don’t want zone of uncertainty to be large, want it small
• SCOTUS: 112 requires clear and concise language
o Who is lowest cost provider for definiteness: the inventor, the person drafting the patent.
• Competitor costs: high to det. Metes and bounds of invention
• Judge and juries: cost much higher than inventor draft patent
• Thus the burden of defitness is on the shoulders of the inventor.
73
112 (2nd) is a question of law (not a Q of fact).
• In reality it’s a mix of law and fact, although technically Q of law.
74
Standard Oil, p. 321
• Acrhylomide manufacturing process
• “Partially soluble” is term at issue here.
!
75
o Prosecution history estoppel:
inventor is stuck with the term and stuck with the way the Examiner interpreted term.
76
Rationale for Definiteness standard:
• Know boundaries of claim.
• New matter is big issue: don’t add stuff to specification that will be considered new matter b/c if you do can get a new matter rejection.
o Don’t see all too often with def standard; unless you are trying to broaden the claim.
77
Energizer holdings Case: • Issue: don’t know what “said zinc anode” in claim is talking about.
o Antecedent basis (“said”): go back to the magic word
• Problem comes when you have 2 different types of magic words, don’t know which antecedent basis it refers to.
• Have “a” and “said” and make sure they match up.
• Nautilus Standard: POISA at time of filing – you’re okay.
78
Specification is what enables, but WD and Def. apply to claims.
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79
Definitiveness analysis:
• (1) think pre litigation (during prosecution) and (2) during or post litigation;
• before litigation we want to know the boundaries of patent;
o when under prosecution, not a patent yet, so let in declaration evidence, extrinsic evidence, let in what the applicant thinks, textbooks, journal articles, etc.
• Post patent prosecution: should not allow in outside extrinsic evidence; hindsight biased, they will narrow claim the way they want; don’t want inventor to have gamesmanship involved.
80
Definiteness test:
* draft claim with sufficient precisiosn to clearly set forth invention when read by POisa
* claim must be commensurate with subj matter with inventor’s claim with subj matter at time of filing
81
2 types of special cases with definiteness:
software patents: o don’t need code to explain what control mean does but need something like an algorithm, more than just general purpose microprocessor.
112(6) or 112f: means plus function claim
• A special way to allow applicants to cover function, giving only some structure.
- limited to claims in specification
82
Perspective for definitiveness:
* POISA: Under Nautilis: looking under lens of person skilled in the art to understand metes and bounds of invention.
* Can look to the technology in the field at the time to help clarify definiteness.
* Extrinsic evidence allowed during prosecution b/c we want metes and bounds defined.
* Just b/c you’re enabled doesn’t mean you’re definitite
* Enablement: specs
* Definiteness: claims
83
Novelty (Harsh Standard),
102, a, g, e = anticipation
102 b, c, d = pure stat. bars
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84
burden to show novelty is on...
PTO examiner. Default assumption that it's novel unless PTO has something as prior art reference
85
In Re seaborg
*Americium case (small amount in nuc reactor), very broad claim
Inherent anticipation here
Issue here: must understand and appreciate you were creating the invention (other option is the substance have a significant existence, not here).
Valid patent b/c product produced is miniscule amount
86
• Inherency doctrine: lack of novelty in a product if a comparable process for making the product is found to exist in the art.
from In Re Seaborg
87
Schering Corp v. Geneva (Claritin)
patent invalid.
Court: o Accidental results, not intended and not appreciated, do not constitute anticipation.
Court distinguishes Seaborg b/c there was minimal amount of the element and here the amount is known, measurable, and consistent.
88
Anti-backsliding principle: parties cannot obtain patent rights encompassing practices that already exist in the public domain.
o When patent expires the claim becomes public domain.
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89
• Must consider quality of prior art reference, is it enabled enough to anticipate the invention. Prior art ref must describe invention in enabling fashion, so POISA can make and use what is defined in patent application.
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90
In Re Hafner
Patent invalid
Inventor disclosed years prior in German patent application.
his own prior art prevents patent.
HE is anticipated by his own disclosure in years past.
91
102a burden of proof on patent office;
First section: only U.S.
Second Section: anywhere
(pre AIA has this geo element; AIA has no geo element)
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92
National Tractors v. Watkins
* Tractor pull sleds
* Patent Valid
* Drawing on kitchen table cloth not enough to serve as prior art here
93
o Corroboration rule
That which is alleged to be prior art must have its prior art existence and relevancy established by clear and convincing evidence.
o Knowledge required by 102(a) involves some type of public disclosure and is not satisfied by knowledge of a single person, or a few persons working together.”
o ... must be prior public knowledge, that is knowledge which is reasonably accessible to the public.
94
Rosaire v. Baroid Sales Div., National Lead Co.
• Patent invalid
• Method for prospecting oil and hydrocarbons
• Issue: 102(a) – “known or used by others” focus here;
o Here: actual going out publicly and practicing invention (no attempt to hide what they were doing)
• Patent invalid for anticipation – invention was being used by others
95
National Tractor and Rosaire:
• Focus is on public disclosure – how public are these things
o National tractor: tablecloth drawing not public enough
o Roasaire: public enough to be used out in open.
• 3 reasons for public disclosure in Roasiare, court (prof points out):
o 1) gulf benefited from prospecting method (some public benefit)
o 2) fairness: unfair to enjoin gulf from practicing method that company used in non secret manner (backsliding)
o 3) info by gulf open to public b/c employees could disclose info about the method to coworkers.
96
In Re Klopfenstein *known or used by others case
• Patent invalid, due to public disclosure – known or used by others
• Method for lowering cholesterol
o For anticipation: need each and every element and a single reference.
^WE have that here; Inventor admitted looking at PPT given at event would allow you to make/use invention.
97
• Rule – Factors to Balance for Public Accessibility to be a printed publication under 102(b):
o 1) length of time display was exhibited
o 2) expertise of the target audience
o 3) existence of lack thereof of reasonable expectations that displayed material would not be copied.
o 4) simplicity or ease with which the material displayed could have been copied.
1) the longer a reference is displayed, more likely it is to be considered a printed publication.”
2) experts in field in audience?
3) o Protective measures include license agreeemnts, non disclosure agreement, anti-copying software or even a simple disclaimer.
4) o R: more complex a display, more difficult for members of public to effectively capture its info.
98
Reeves Bros v. U.S. Laminating Corp
• Patent invalid – German patent was prior art
• Process for laminating
Section 2 of 102(a) Issue
Takeaway: broader scope to "patented and printed publications" than "known or used" (intl v. domestic) b/c its all about accessibility of info.
Evidentiary presumption:
• requires greater effort to disseminate to U.S. citizens known or used;
99
102A gives a leg up to US Inventors. If commercial sale in another country 1+ year before a U.S. National claims same invention then U.S. inventor can get patent in US as long as files first
• Japanese inventor can’t rely on sale of invention in Japan where the U.S. applicant can.
100
Under 102a (Anticipation): you're own art cannot be used against you. (AIA changes this b/c now only filing date is important, so your own art can affect you)
AIA: invention date is now filing date; added catch all "otherwise available to public" (not known or used) and no geographical limitation.
101
*no enablement requirement for public use prior art
In Re Haffner: German anticipated by his own patent even though not enabled by own German patent = like a non enabling piece of art that can anticipate your invention
102
Species patent anticipates a later genus
| • Green laser anticipates the later broad/full laser (genus).
Genus patent does not always anticipate the species patent that comes later
• Broad spectrum laser doesn’t always anticipate the green laser.
103
102e: secret prior art
102a and e – pre AIA applies to US patents only; post aia applies to U.S. and international patents.
104
Alexander v. Davis
patent invalid; o Clifford disclosed in his specs but did not claim (disclosed A, B, C, but claimed A); Ex: Whitford then claimed B.
TAKEAWAY: Everything disclosed in earlier art can anticipate what later comes out, even though it isn’t claimed; disclosed and enabled = prior art.
105
102a and 102e differences (secret prior art):
o doesn't publish for 18 months so 18 month period where inventor cant search it but held against inventor as of the filing date for 18 months.
• 102a is printed publication, so as of publication date (published online, not date you submit to journal or editor). Different for 102e; count as of date of filing, not date of publication.
policy: o If disclosed in earlier filed application, its evidence that person is not first to invent.
o Prevents backsliding issue
o Don’t want to take something out of public domain that people practicing before
o Patentapplications easy for PTO to search, if disclosed but not claims then inventor must have thought it wasn’t useful;
o Benefit to public: if you don’t claim it we will assign to public.
106
• Abandonment of application, 2 options:
o Expressly, send form to PTO,
As if it never happened.
o You don’t respond, PTO publishes for examination; you don’t respond and it goes abandon.
This is disclosed as 102e art as of filing date.
• Inventor may expressly abandon so it can’t be used as prior art against you later on.
!
107
• Provisional application:
o Holds filing date
o Goes completely unexamined
Claims aren’t required, but recommended with prov app
o You have 1 year to file normal application after prov app or it goes abandoned
o Never published, after 1 year it dies as if never existed.
o If before the year term expires, you file application, then you get priority to provisional application date for everything in provisional application
!
108
Campbell v. Spectrum Automation:
| •
102(f)
• derivation (copying)
patent invalid, Campbell not inventor
o Standard: clear and convincing evidence to invalidate a patent
o Good Rule: 1 piece of evidence shouldn’t undue the work of the Patent Office. PTO did the research on prior art to confirm patent.
o Examination system, not just a filing system
109
102f Derivation:
- no geo. limitation
- if 2 people, the person that conceives is the inventor
co-inventors: Both people considered inventors; co-inventors have full rights to every claim in patent. But must be involved in at least 1 claim to be considered inventor.
If someone tweaks 1 claim out of 100, that person gets rights to all claims in the patent.
Co-inventors: both have right to exclude, but can’t exclude one another and can’t exclude assigns of the other. Equal Rights to All Claims.
110
102g1: focus and look just to teh claims
o RULE generally first to reduce to practice and not abandon/suppress/conceal is the one who invents (and wins), UNLESS the last to reduce to practice was first to conceive and was sufficiently diligent from conception prior to reduction to practice.
111
• 102g2 encompasses 102a art, 102e art, destroying
| 102g2 comes up when competing parties have diff invention dates; mainly in litigation not so much prosecution.
* 102g1: applies to interferences, true priority fights; inventors must overcome non-supressed invention any where in world
* 102g2: applies generally to priority issues and only in U.S.
112
Brown v. Barbicid
| 2 inventors claiming same thing in 6 months
JR party and has burden of proof
• PTO: if trying to prove priority before filing date, burden on you
• Prep of evidence standard; EXCEPT for priority/conception date which is a higher burden (clear and convincing evidence)
• Must det. Conception: Need all elements described, formation in mind of inventor of def idea of complete and operate invention (all elements, must work, must be operative).
not know how or why invention works; just that it works.
o Policy: publish inventions; want people to build/improve on it and help understand mechanics of it.
113
• Conception: each and every element must be present and enabled. 2 exceptions: complete blueprint not necessary (enable POISA), uncertainty as to successful operation is okay
!
114
2 types of reduction to practice:
• 1) actual: physical object/embodiment
o works for its intended use. Elements of 101 operational utility; 112 first enablement;
o based on reasonableness standard
o Need inventors appreciateion of inventions utility (plus working for intended purpose)
• 2) constructive: theoretical
o only happens in 1 case in patent case: when you file. Only constructive reduction to practice when YOU FILE (filing patent app with disclosure requirements that satisfy 112(1);
o Policy of constructive Encourages early filers; early filing date = early expiration date; gives them establishment of early invention date which is collapsed into conception date and constructive reduction to practice date.
!
115
Diligence: period inbetween conception and reduction to practice
Diligence breaks if abandon or if you go trade secret route. No reward back to conception date.
• Policy: get it out to the public, focus on invention not inventor.
• Courts will give 2 weeks/3 weeks if good excuse (illness); a few days are fine. When you’re talking 2-3 months or more it’s a break in diligence.
!
116
• 131 Declaration swear behind affidavit:
| o special declaration made by inventors: our invention date comes this prior art you have identified Examiner.
Use this antidating strategy if you get a 102g2 rejection; you can use 131 Dec on 102a art and 102e. For 102a (Your invention date could be before publication date so swear behind using 131 dec. or say conception date came before date of known or used ) For 102e (If evid that invention date before earliest priority date you can swear behind that art. )
117
CANNOT use 131 Dec for 102g1 (B/c interference figures it out) or 102g2 (b/c dealing with conception dates in 102g1 and 102g2).
cant swear behind 102g1 and 102g2.
118
Diligence is only relevant priot to RTP. Abanondment/supreession/concealment can occur only ater reduction to practice.
! Abandonment and Supression doesn't require any intent function. Concealment infers some sort of intent.
119
Peeler v. Miller; 5 identical claims.
o Miller was first to RTP, so winner, Unless:
Peeler first to conceive or
No diligence from conception to RTP: delay due to abandoned/suppressed/concealed.
Miller loses here b/c Company (Monsoto) took to long to file his application.
o Public policy favoring, in interference situations, the party who expeditiously starts his invention on the path to public disclosure through the issuance of patents by filing a patent application.
120
o Longer you delay the more a court can infer concealment/abandonment.
Look to excuses: incapacitation justifies longer delay; bad patent attorney is no good.
!o BURDEN: Once pto or def shows presumption of concealment then BOP shifts to inventor to rebut that presumptionof concealment
121
Trying to perfect invention is allowed. trying to commercialize is not allowed. (ex: marketing campaign, trying to get funding = not allowed)
Focus on disclosure function of patents, must deal with invention (ex: doing something to make sure invention works)
122
Paulik v. Rizkalla
You can have abandonment and then pick up again, but you only get the date where you start to try to get things out to the public (the date you pick it up again)
123
• For 102g: worry about 2 key dates:
o Conception
o Reduction to Practice
o Filing date
o DILIGENCE: TIME BETWEEN CONCEPTION AND RTP
(expireimation/testing; breaks in diligence include stopping testing; small breaks allowed. Bad illness will allow longer break; but in general only small breaks)
o AFTER RTP: can only abandonment, suppression, concealment after RTP.
!• FAILING to file, describing invention in public doc = all things to look to when considering ASC
124
• Purpose of ASC:
o stop people from using trade secret, spur them to apply for patent faster
o Patent given to later inventor who has taken steps to get things out to public; stop people from trying to suppress, conceal, go trade secret.
!
125
Prior Art Uses of 102g
* 102g1: applies exclusively to interferences
* 102g2: applies in other circumstances
!
126
Dow Chemical v. AVI
| • 102g2 case
AVI first to RTP, but failure to understand or appreciate invention (argued by Dow).
• Court: bogus argument by Dow.
o Does not require that a prior inventor estalibih that he recognized the invention in shte same terms recited in the count. Inventor must establish that he recognized and appreciated the new form.
o This was disclosed to public b/c it was commercialized so they clearly knew it was valuable (selling it and licensed to make it).
DOW also argues supressed/concealed invention.
o In cases in which an invention is disclosed to the public by commercialization, courts have excused delay upon proof that the first inventor engaged in reasonable efforts to bring the invention to market.
Key Facts: active efforts to commercialization, active and continuously took steps toward commercialization rebuts the presumption of ASC (inferred).
127
• 2 types of ASC:
o 1) express: trade secret right (not in DOW v. AVI)
actively abandons, suppresses, or conceals invention from public
o 2) inferred: not disclosing to the public
abandonment, suppression, or concealment may be inferred based upon the prior inventor’s unreasonable delay in making the invention publicly known.
• Focus on rationales for ASC (from Peeler, AVI cases):
o Both cases: not looking at bad actors, not a spurring situation (expressly TS but filing b/c somebody else is); in inferred world (part 2 of ASC)
o Peeler case: 4+ yr of no disclosure; excuse was due to incompetent patent consel (not enough to overcome inference of ASC)
o Dow v. AVI: steps towards commercialization, going public, enough to overcome inference of ASC; note only 1-2 year delay here, not 4+ like peeler.
• Look to reasonable efforts to get invention to public; we care about the quid pro quo.
128
Procedural:
• BOP: challenger of validity must est prior invention with clear and convicing evidence
• BOP then shfts to patentee to rebut that challenge of validity with genuie issue of material fact standard as to whether priot invention ASC.
• BOP then back to challenger and must rebut that ASC evidence with clear and convincing evidence to the contrary.
o ^^patentee gets leg up b/c they were first to get a patent
!
129
102g in AIA doesn’t matter. No applications today will deal with it, now in first to file system. All of these cases, first to file wins.
!
130
STAT BAR: 102b: loss of right
* Can preclude or bar an applicant from a patent even if the applicant is the first inventor of the claimed invention.
* Only the statutory bars, not the novelty provisions, can be triggered by events occurring AFTER the date of the applicant’s invention.
131
Diff in 102b and 102a(novelty):
• Critical date is very different from 102a.
• possible critical dates: time of invention, filing date, patent date.
o 102a critical date: invention date: before date of invention
o 102b critical date: file date minus 1 year (anything before is 102b art)
• who qualifies:
o 102a: has to be anybody but the inventor
o 102b: anybody’s art before filing date minus 1 year can count towards 102b art; 102b includes inventor’s art.
Policy:
• disclose earlier
o 1) increased reliability of public information
o minimization of detrimental reliance
o 2) faster dissemination of new info and claims
earlier public disclosure redirects other researchers away from problems that have already been solved.
o 3) earlier termination of patent rights
invention will enter the public domain sooner
termination of patent rights tends to increase the social benefits associated with the invention.
o 1 year grace period (benefits inventor) allows inventor to determine commercial viability; not improving invention just marketing it. Allows inventor to publish, disclose.
* 102a: rewards first inventor, provides carrot to incentive the inventor
* 102b: more like a stick: spur inventor to file as soon as reduced to practice.
132
Egbert v. Lippman (p. 508)
| • corset spring case, no patent.
• You can’t antidate (131 DEc) 102b art. Critical date is date of filing minus 1 year; earlier invention date the worse off you are.
Here: 1 or 2 people saw invention, but lack of control was key here.
patent is invalid here b/c inventor slept on his rights for 11 years.
o Policy: cant go trade secret then patent later on.
o Make you disclose earlier, quid pro quo is equal.
Dissent: o Goes the Rosaiire route b/c nobody could see the invention, not visible by public so not a public use.
o Problem with this: too subjective, how public is public, not a good rule.
133
Moleculon Research v. CBS
| *Rubix Cube case, patent valid
o Inventor showed model to Dr.
o Company sent out model to toy manufacturers.
o Court: inventor never relinquished control.
control was not relinquished by failure to make president of company enter into any express confidentiality agreement (presence or absence of agreement is not detrminative).
o Assignment of rights in invention and potential patent rights is not a sale of the invention within meaning of 102b. Sale of patent rights does not come within the section 102b bar.
Takeaways:
• Look to control, look to what is actually public, what is disclosed, control by the inventor, confidentiality agreement, # of employees given access to info.
134
• How many people nee dto know for public use:
o 1 in Egbert was enough;
o group coworkers in Moleculon not enough
o Beachcomber (p. 518): twenty or thirty friends at party = public use
• Relationship with invention: did you control invention or let it out into public: that’s the key inquiry.
Note: “statutory bar is triggered if the inventor practices the invention in exchange for consideration; it does not matter if the transaction is described as a sale or license.”
135
Metallizing Engineering v. Kenyon Bearing
| • Patent invalid (patent on improved method of conditioning metal surfaces)
court: o Unlike prior use by others, competitive/commercial exploitation can prevent someone from receiving patent
136
PFAFF v. Wells Electronics
| • patent valid
• Pfaff Test for 102b On Sale Bar Test: On sale bar applies when 2 conditions are satisfied before the Critical Date:
o 1) the product must be the subject of a commercial offer for sale.
UCC Article 2 defines what a commercial sale is, this is used by courts to determine commercial sale.
o 2) the invention must be ready for patenting:
satisfied by proof of reduction to practice before the critical date, or
by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.
137
o mere offer to sale starts 102b clock; key issue: what state of development was invention in (undeveloped concept won’t start on sale bar, but drawings/predictability, etc. will start on sale bar).
```
Sham Sales (p. 534):
• don’t count as actual sales.
• Invention marketed even though it doesn’t work
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138
City of Elizabeth v. American Nicholson Pavement
• Patent valid: wooden pavement outside of Boston
*Experimental Use Exception
• Policy: give the best invention to the public ,he is perfecting the invention.
o We can have public use if inventor engaged in good faith testing and operation; we know good faith (evidence of daily assessment here)
139
Manville Sales v. paramount Systems
*• New light poles in Wyoming (valid patent)
• Experimental Sales: Experimental use doc can excuse not only public uses but also sales and offers to sell.
o Inventor here never lost control, closed to public, did nothing to put invention in public domain, marked drawings confidential (showing control) even though state officials authorized payment all the evidence indicates expirement
140
• Cannot use exp use doc after you have reduced to practice.
o Once an invention has been RTP, it can no longer meet meet the expiremental use exception.
Look to whether the inventor was acting reasonably in continuing to evaluate the invention.
141
Lough v. Brunswick Corp
| • Low educated boat repair guy inventing new seal rings on boats: patent invalid.
o whether use is experimental is a Q of law. Totality of circumstances must be considered, including various objective indicia of experimentation surrounding the use, such as the number of prototypes and duration of testing, whether records or progress reports were made, existence of secrecy agreement between patentee and party performing the testing, whether patentee received compensation for use of the invention, and extent of control the inventor maintained over the testing (last factor critically important).
142
• Activities encompassed by 102b bar:
o Actual sale of claimed invention: yes
o Assignment of patent: no, sale of the IP, not the sale of physical item
o Actual Sale or offer to sale claimed invention: yes, even offer to sale and someone says no = starts 102b clock
o Actual sale or offer to sale invention in addition to assignment of patent rights: yes, you’re still offering to sell physical embodiment
o We focus on offer to sell, even if no products shifted hands, no acceptance of sale occurred, offer to sell starts bar.
If experimental sale then on sale bar doesn't start until the item ships, once RTP.
143
Baxter Intl v. Cobe Labortires
| Patent invalid.
Here: totaly unrelated 3P (not inventor or competitor).
• Prof: court here focuses more on control and loss of control by Ito and Dr. S.
• If high security you could argue confidential policy and trying to keep it under control.
144
Gore v. Garlock
• Waterproof fabrics case
Trade Secret.
• 102a no problem: Gore has filed an application. Nothing known or used in this country b/c kept secret; no patent filed and no publication.
• 102 e: nothing filed
• 102g1: interferences: only 2 inventors, no application by cropper
• 102g2: cropper first to invent, unless they abandon concealred or suppress (going trade secret).
• 102b: no patent or printed publication
• 102b: public use or on sale:
o offer to sale: IP sale is diff from physical sale
o but here: the machine was sold; it was sold in new Zealand not US
o but there was ofeerr to sale in the U.S.
court: b/c we know of actual sale of machine later on, sale would have been subject to secrecy restriction; the offer to sale in Mass. Is “suppressed” b/c sale would have been trade secret
o Court trying to reward Gore, bc 4 year period before Gore got it.
145
If inventor is trying to be secret than 102b can prevent him of getting patent (metallizing); when a 3P sells product with secret process the 3p practice is not public use that can be used against inventor (Gore)
• 102b: think about who is doing the disclosure.
• Gore/garlock situation: beer in public use can bar later filer from getting composition claim, but not amethod claim b/c method of making beer was secret.
146
• Lack of utility = still enabled and still each/every element it can be used as prior art
• Lack of enablement = cannot be used as prior art.
o It has to work to count
o If it doesn’t have a use, we will still count that against inventor
o We don’t need utility to e anticipatory art.
!
147
inherent anticipation; we don’t care if it has unknown propertires, if it’s the compostion of matter if its out there you can’t get patent to composition
o You can only get patent to new method for making the powder
o ^can get patent on method not compostion.
^this shows power of composition claim, you stop all uses, everyone has to come to you.
New uses, less so.
148
Obviousness, 103
• One of the most important conditions of patentability
• Obviousness most difficult bar to get over.
public policy:
Economic issue with search cost: Avoids unnecessary search costs and licensing; higher search costs.
Inducement Standard: but for inducement of patent there would be no incentive to patent.
If trivial patents, diminish the invention of the person that made the real novel, initial invention.
U.S. focuses on economic rationale.
o You don’t need a flash of genius or eureka moment;
o You can have methodical research, testing, etc. or a eureka moment to get an invention.
149
Graham v. John Deere Co .(1966) p. 624
| Shank Plow; patent invalid
Look at all 4 to make a determination: • The Test ®: (p. 630)
o 1) the scope and content of the prior art are to be determined;
(All prior art as defined by 102 can be used as 103 prior art).
o 2) differences between the prior art and the claims at issue are to be ascertained; (each and every element in several references or an obvious variation )
o 3) and the level of skill of the ordinary skilled artisan in this field (typical worker in the field, is it predictive, can you figure out by looking at picture)
o 4) secondary considerations: (• commercial success, long felt but unsolved needs, failure of others, etc; failure of others most compelling). [all secondary indicia are NOT your primary arguments, so if you have to focus here you’re in a bad start. ]
• Court Concludes: this thing is not diff enough form prior art to make it patentable.
150
Calmar Inc. v. Cook, p. 637
• Pesticide pump sprayer
• Patent invalid
• KEY from case: Obviousness is tested from ALL Relevant priort art that a POISA would know; not just the immediate topic of prior art.
This case involved secret prior art.
****a POISA here knows more than the inventor b/c POISA has access to secret prior art.
*shows power of filing early.
151
Prosecution history estoppel: those statements you make during pros history can’t say later on that isn’t what you meant. You’re stuck with statemetns you made.
You are estopped from claiming stuff you gave up during prosecution. You agreed with Examiner to narrow your claims, you’re stuck.
Cant later say these limitations do not limit the invention
!
152
U.S. v. Adams, p. 645:
• patent valid,
• guy builds battery and Gov doesn’t want to pay for it, uses it later
the prior art reference with the 2 key elements did not work (not enabled) and was very dangerous. This helps inventor by showing how unpredictable the field is.
153
TSM test:
• Cares about why we would combine 2 elements to reach something
• What’s the motivation to combine the 2 things
• We want people to have a reason to put things together
• Policy: hindsight, 20/20; Court is using TSM test to protect against hindsight bias.
Test is good for plaintiff/patent owners. Bad for accused infringer.
154
KSR International v. Teleflex • Patent Invalid. Sensor on gas pedals.
* “the combo of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results.”
* Supreme Ct: we don’t need express, written teaching. POISA is not an automaton, the person is actually creative and can think for themselves.
• Takeaway: what does this case do to the novelty argument?
o Weakens novelty; we’ve bolstered obviousness, broadened scope of obv doctrine, not restricted to narrow TSM test, given it more breadth.
o Obviousness doc: trying to get rid of trivial inventions
key point: inventor’s method in reaching the claimed subject matter should be irrelevant.
*o TSM is not the only test, but it is a test that can be used.
Obvious to Try is still alive.
apply more expansive/flexible approach to obviousness analysis
Factors:
• Look to diff. types of problems that a poisa would look to.
• Look to diff. fields
• Comb. Inventions shoud be scrituined but allowed
• Inferencers permissible
• Obv. Analysis based on scope of the claims, that’s what we focus on.
155
post KSR, to keep a patent valid, look for missing elements
• Look at all references used and attack it saying something is missing; if you don’t have each and every element out of of all references and it doesn’t teach the invention then patent valid
Teaching Away (trying and showing something failed) is stronger argument than lack of TSM. (teaching towards something else is not teaching away; teaching away is narrow)
156
In Re Winslow: p. 709
• Patent invalid
3 prior art references put together invalidate patent
technology fields of envelopes and paper bags similar enough to be prior art to the plastic bag issue in this case: we are not locked into plastic bag tech., we can look to other types of technology in paper bag and envelopes.
OBJECTIVE Standard
• Poisa presumed to know all pertinent prior art. In a workshop.,
157
In Re Bass:
• Patent valid
• 102g rejection
We have a set of inventors working together (which we want), but their own art is hurting them here.
* **we have expanded prior art in obviousness realm b/c can be art from diff. tech that works on same problem.
* This is a big expansion, expanded time from and can look to elements in other fields.
THUS congress created “Bass disqualifier” amended 103 to disqualify prior art that is “commonly owned.” Want researchres to share and put together new inventions, want comm. Between coworkers.
• Bass Disqualifier Applies to 102f, 102g, or 102e or from commonly owned inventions or parties to joint research agreement.
158
Oddzon (p. 725)
| • Patent valid (vortex football)
Held: • 102f (derivation provision, stealing idea) is a prior art provisions for purposes of 103.
```
• General R: allow 103 art to include 102e and 102g and 102f;
o Exception (Bass Disq) if under joint research agreement then 102f, g, e doesn’t count against you
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159
In Re Foster • Here: published article (printed pub) before critical date under 102b: statutory bar
• Court: this is not 102b rejection b/c elements missing but it would be obvious to modify the elements so this is obvious.
o Practice point: PTO often rejects under both 102 and 103. Tandem rejections. Bc what you can’t get under 102 you can usually get under 103, covers PTO examiners but
• RULE: 102b references qualify as prior art under 103.
160
In Re Clay
• Patent valid
• Prior art dealt with similar process, one for extraction of oil and patent at issue with storage of oil.
• Analogous Art:
• Two criteria to det. Whether prior art is analogous, 2 prong test (Use Under Prong 1 of Graham):
o 1) whether the art is from the same field of endeavor/invention (not who the assignee is) (if in same field we can use it regardless of prob being solved)
o 2) if ref not within field of inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved (does it offer same solution to a diff. problem ).
• Here: not prior art ref, not analogous art;
o Not same field: storage tech versus extraction tech.
o Purposes of both the invention and the prior art are important to det. Reasonably pertinent.
161
Section 101: Inventions patentable
process (amazon one click purchase invalidated); machine (apparatus with moving parts);
composition of matter (ingredients in a drug)
manufacture (no moving parts but useful/new: cardboard slips on coffee mug)
one EXCEPTION: product by process; claiming comp of matter with a process (giving process on how to make it but don't really know what it is: sticky note glue).
162
3 doors to patentability
• 1) the 101 barrier, the subject matter (easiest to pass). You need to be inventor and have invention:
o a) cant steal it (102f) and new and useful
• 2) needs to be useful, enabled, and described well enough (utility under 101, enablement under 1121 and 112(2)
• 3) the qualitative conditions for patentability (102, 103: new and useful over something described in past).
163
Things that CANNOT be patented
* abstract ideas
* natural phenomena,
* laws of nature (gravity, a new element).
• Good Rule: encourages disclosure and promotion of arts and sciences.
o Take elements and do something with them to make something new = man made.
o If you genetically engineer tree then maybe made by man.
o Genetically engineered mouse for lab testing = patentable as long as we’ve done enough to be manmade.
164
Funk Bros Seed v. Kalo
patent invalid
• Mix culture of Rhizobia capable of inoculating seeds of plants - *mixed them together.
NATURALLY OCCURING, BUT ARTIFICIALLY PACKAGED
Court: o aggregation of species fell short of invention.
o Takaway: no modification of anything from nature here, just repackaged; court won’t patent product of nature, it’s too broad.
165
• Obviousness analysis on Funk Bro (this case was before 103):
o Graham Analysis (weigh the following):
1) scope of the prior art
• nobody had done that, when they had it inhibited each other.
2) diff between prior art and this
• here: significant differences;
• what was done was individual packaing
3) level of skill of POISA in the field
4) secondary consideration (commercial success, failure of others, longfelt need)
o ^prof: this analysis makes it seem it would have gone other way: patent valid. At this time 103 wasn’t valid.
166
Parke-Davis v. HK Mulford
• Patent Valid
Adrenaline extract
Naturally Occurring But Isolated and Purified
o New way of isolating adrenaline, a diff prop; It’s not changed, its only isolated and purified.
o Funk Bro didn’t change anything: the bacteria doing the same thing they originally did. Nothing changed, just repackaged.
o Here: the adrenaline is isolated and doing something different than before.
novel over adrenaline find in body b/c it can do stuff that adrenaline can’t do in the body.
o Non-obvious, Novel over prior art b/c it has unexpected properties when used in concentrated form.
Judge Hand: this is different in kind: b/c its isolated it is completely different.
167
Hypo: Indiana jones goes to amazon and finds medicinal plant. Can he get patent on the extract?
must be different in kind to get patent (Parke Davis); must be diff. from wht plant would have normally done = patentable under Parke Davis.
• Other ways to protect IP: process/method of putting bacteria’s together can also be patentable (just not as broad as “composition of matter claim”)
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Composition of matter and process are different inventions.
| • PTO: Restriction requirement: you have 2 diff. inventions here, pick 1.
• Then you file “divisional application” to split the 2 claims apart, file div. app.
can’t get obviousness type double patenting rejection under Div. app. b/c examiner has admitted these are 2 diff. inventions.
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Indiana Jones hypo:
• What if its proven that population in amazon was removing bark from trees, boiling it to paste then consuming the paste?
o Need to know not in the U.S. b/c of “known or used/public use” under 102a.
o If outside the U.S. then not prior art under pre AIA. Post AIA says “otherwise known anywhere as catch all.
o 103, obvious, issue: go through Graham factors.
o 101: must be Different in Kind.
o 102f: derivation issue – that can be anywhere in the world. If this is copying the indigineous people that’s an issue.
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Diamond v. Chakrabarty:
• Patent valid
• Bacteria for breaking down and treating oil
• 3 claims:
o Valid: process for producing bacteria
o Valid: claims for an inoculum carrier to float on water
o At issue here: composition of matter for bacteria (broad)
Plant ACt N?A here.
• This case matters b/c:
o Composition of Matter claims so important b/c there is a broadness issue.
o Advantages of Composition of Matter claim
Evidentiary bonus: very easy to test to see if competitor has violated composition of matter claim, just see if its there. Very hard to test to see if competitor using same process, you have no idea how they get there
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Genetically altered human could be patented under Chakrabarty.
Thus: • 1996: Welden Amendment: anything directed to a human is not patentable subject matter.
BUT • AIA: overruled Welden Amendment. Broadly states nothing directed to or encompassing a human organism.
o Cloned human: no
o Human cell lines: yes, cancer research
o Human genes in animals: yes for research
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Bowman
| *Farmer in Iowa, plant wheat seeds in violation of license from Monsato to another farmer. Self replicating technology.
* Bowman lost. Argued he bought seeds should be able to do whatever he wants with it.
* Allowing Bowman to win would make patents useless. Must reward inventor for that 20 year timeframe. Would kill incentive structure of patents (public policy).
*important as we have more self replicating technology
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Myriad Genetics (2013 from supplement):
• Tried to claim 15 amino acids from isolated DNA = not patentable
```
• cDNA = patentable
o cDNA comes from mRNA, doesn’t contain introns so doesn’t come from nature
• Chakrabarty Rule: anything under the sun made by the man = patentable.
o DNA here is only isolated and purified = like Funk Bros with the seeds = not patentable
o CDNA = not in nature, something under sun made by man = patentable. Satisfies 101.
Note: o Genes that are isolated not patent eligible.
***o Myriad has now gone trade secret. None of that info available to researchers, somewhat hurts innovation.
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O’Reilly v. Morse
| • Some claims valid, some invalid
* Court: definiteness/enablement type analysis.
* Claim too broad and not warranted by law, claim 8 could bar development of nay future invention based on electric current.
• Why did court not just use enablement to invalidate claim 8, court goes further here, why?
o This is a fail safe, court goes extra mile: not enabled and not patentable subject matter.
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BUSINESS METHOD PATENTS = a "process"
a method of doing something to reach some sort of end product. As long as not unapplied abstract idea or concept.
Statestreet case, 1998
• Statestreet test, rule create by fed circuit: claimed process patentable under 101 (Machine or Transformation Test): if
o 1) tied to particular machine or apparatus
o 2) transforms particular article into diff state or thing.
• TSM test before KSR was sole test for obviousness, combining references, Supreme court said not sole test
• Here similarliy: the machine or transformation test created by fed circuit, supreme court: not sole test.
• Know: black letter law: Mach or Trans test not sole test, but good, know how it works, apply it to business methods.
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Machine or transformation test:
• Bright line rule, easy to follow
| Easier for inventor (just add a mahcine to do calculation and you're out of 101)
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• Biliski v. Kappos
o Tech here: process to hedge risks in energy sector.
pure math formula, abstract idea therefore not patent eligible.
o Supreme Ct: No – Machine or Transformation test is too broad, not sole test, as sole test violates statutory interpretation principles.
Supreme ct: you’re making up stuff, congress doesn’t speak to this.
Pure process, even if it doesn’t involved a machine or transformation can be patentable (Benson).
You can get a patent on an object even if isn’t tied to machine or doesn’t transform a particular article (Flook).
o Court doesn’t want to exclude BMPs: 273b1 (a defense for infringement for prior use for method of conducting business, defined as method for doing business)
Thus patents can be allowed for methods of conducting business
If BMP barred then 273b1 would be useless.
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Supreme ct: Mach/Trans test not sole test
| o Fed circuit has continued to put a lot of weight on mach or trans test, like TSM test.
• Effect of bilski: on BMP:
o Pre bilski 200-300 BMP filed, After Biliski: over 1200 in a year = quadrupled the BMP out there.
Some are broad: method for det. Effectiveness of internet advertising
o BMP increase transaction costs.
Europe says no BMP
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o You can patent machine, but not medical procedure
Policy: o Don’t want people to not use defribilator process bc of concern they will infringe.
Costs would be outrageous.
• Don’t want doctors to not do their job b/c they think they may be infringing.
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Infringement: 271a
• Defines our stick of rights, like prop law bundle of rights
• 271a defines what rights we have
• negative right (not a positive right to do something with patent), it’s a right to exclude others
*includes make use sale or Offer to Sale in US = infringement
• limitations:
o must be in U.S. or imported to U.S
• 271a does not require proof of intent: no mens rea.
STRICT LIABILITY Crime for patent infringement. Don’t care bout intent.
Similar to trespass law in property.
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Doctrine of Equiv (DOE): even if your claims do not literally describe what is being done, we will expand to cover what the infringer is doing (warner jenksinon)
The Doctrine of Equivalents
• Judge made law
• Allows for non literal or non textual infringement
• Broadens scope of claims to what inventor may not have claimed in patent
* Fed circuit resistant to expand DOE; wants bright line rules so companies know what to do.
* With DOE: how far does that expand your claims? Creates uncertainty. Supreme Court won’t kill DOE
• Now: periphal claiming system: claims of patent give you prefer of patent and set out boundaries of what patent covers.
o Old way: not limited by words, if bad claim drafter still okay, but if competitor, didn’t know metes bounds patent
o New regime: compeitotrs know limits of claim but if you have bad claim drafter = worthless claim; courts less willing to give you things you didn’t claim (but that’s okay b/c inventor is lowest cost provider for knowing what the thing is).
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Types of infringement:
• Literal infringement:
o makes, use, sell, offer to sell
o what anticipates before, infringes after
prior art each and every element put in same way before the patent = anticipation (novelty); if same thing done after patent = infringement.
• Doctrine of Equivalents (DOE)
o Not exactly within scope of claims, but court says you have enough so court will expand scope of claims; judge decides how far to expand
People who can infringe:
• Direct infringer: one person, each and every element
• Indirect Infringer:
o Vicarious liability: telling employee to go and do something, but he is under your control.
o Contributory infringement: person A does steps 1-3, customer does step 4 and patent requires all 4 steps
o Can have activity less than making entire invention, such as assisting one who invents; inducement/contributory infringement; jointly and severally liable for infringement.
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Merrill v. Yeomans
• Is this a manufacture or process (producing oil and the oil product or just the process?)
o Definiteness Issues with term “free from” and "substantialy"
• Court: no excuse for ambiguous language or vague descriptions. NOT going to give really liberal construction to patentee.
• Court looks to internal documents (the specification: what did inventor define term to mean)
o *Specification really important for defining the claims.
* Pheriphal claiming: the name of the game is the claim.
* A) patentee islowest cost provider for defining boundary of claim
* B) public needs to know boundaries to avoid infringements
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• To guide us for claim interpretation:
o 1) Look to claims
o 2nd) look to specification: are terms specifically defined
o 3) prosecution history (was a diff term used? Prosecution history estoppel)
o 4) go outside patent document: what POISA would understand that term to mean.
o 5) go outside patent doc: dictionary terms, specialized dictionary terms
o 6) allow experts to define terms.
Phillips: we will allow things outside patent doc (dictionary terms when spec/claims don’t provide sufficient guidance), also allow eperts to come in.
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MEANS PLUS FUNCTION CLAIM:
• 112(f) 6
o Congress has broadened scope of claim by using means plus function language
1126f only applies to the mean plus function claim.
1126f means plus function interpreted much more narrowly; narrow interpretation.
the absence of the word “means” creates a rebuttable presumption that section 112, paragraph 6, does not apply.
• *means plus function claiming applies only to purely functional limitations that do not provide the structure that performs the recited functions.
• EX: a means of fastening 2 pieces of cloth using button/zipper/nail
o ^don’t have to recite structure like a button or zipper (the item to fasten 2 pieces of cloth)
if Velcro comes about 10 years later, is your claim broadened to allow it even though it didn’t exist when you invented?
• Depends. Look to last language in 112f 6: is Velcro equivalent to button, zipper?
Courts hate means plus functions, avoid it in practice.
• Courts will interpet it as same work same way same results test. If it works n same way, same work, achieves same result = an equivalent.
o Many courts have limited means plus function severaly so usually only get structures in your spec.
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DO NOT read limitations from specs into the claims.
| • Odd and hard to do b/c spec used to interpret claims. It is practically very hard to do.
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Canons of Claims Construction:
• 1) narrow construction to save validity (minor, last resort rule)
o assumes all claims valid, interpret claims to save if possible. b/c we give presumption of validity to patents. If it can be interpret in such way to be invalid, don’t use that, use the one that keeps it alive
• 2) ordinary v contextual meaning
o ordinary: dictionary, trade journals
o contextual: particular usage in patent (go with contextual meaning)
o patentee has ability to define in spec, if didn’t define it then will go with ordinary meaning.
• 3) contextual meaning may trump ordinary meaning
o refuse to apply a more narrow intrep from spec; prosecution history helps to show what inventor met.
• 4) lexicographer rule:
o patentee can make up their own new words to describe invention
o this is very frequently arising with new tech.
o only make def for terms in the claims
o inventor can define up as down and down as up (courts hate this; there is gamesmanship with this, drives costs up trying to be tricky; patent examiner will make you change it.
• 5) disclaimer of subject matter
o patentees statements will be used against her from claim, spec, pros history, if you disclaim from any of those you cannot get it back.
• 6) claim differentiation: anti redundancy canon
o if you have several claims, can’t have them identical, interpreted as diff.
• 7) purpose or goal of invention
o claims must be supported by WD.
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Wright Co. v. Paulhan, p. 779
• pulley system where the rutter and roping of wings can be controlled.
• Accused infringer used pilot instead of rope system.
o J. hand doc of equivalents analysis here is broad
1) cover only equivalent’s described in specifications. 2) importance of understanding technology in interpreting claims.
• Hand is trying to reward innovator here b/c they are pioneers.
public policy: this inhibits innovation.
• Policy issue: How to we determine a pioneer patent v. non-pioneer patent.
• ^we don’t do this today, no diff scope to pioneer v non-pioneer.
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Phillips v. AWH Corporation p. 757:
• panels for vandalism resistant walls
o this case between 112(2nd: definiteness) and 112 (1st: WD)
PHILLIPS*
• Key case that has made claim construction more consistent.
• TBD if Phillips is a good rule or not.
• (Many cases settle during markman stage of patent litigation).
• lower courts: no infringement; On appeal: infringed.
o District court: contextual: look to specs, drawing, pros history; in the spec and diagrams when we look at baffles, all diagrams show there is an angle other than 90 degrees
o District Ct Dissent: literalist: ordinary meaning of dictionary should control, give it a broader view.
• Canons of claim construction RULE: 1) cases whre ord meaning is readily apparent, general purpose dictionaries may be helpful and use (use ordinary meaning if it is apparent); cases where ordinary meaning not apparent then start with words of claims themselves for guidance then go to specs, Pros hist (internal) THEN go to extrinsic evidence (cientific prinicples, meaning of tech terms, state of art).
o Look first to internal document (claims first then spec then pros history) then move to external things (extrinsic evidence) like dictionaries, external treaties, etc.
Extrinsic evidence les reliable than intrinsic evidence
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Reverse Doc of Equivalents
• never used by courts
• acts as a def to a charge of literal infringement
• doctrine will absolve accused infringer where accused device although literally following with scope of asserted claims is so far changed from principle invention that infringe cant be found
• if you look at claims and my invention, I literally infringe, BUT what you claim is maybe too broad and my invention works in such a diff way that to hold me liable would be unfair.
• Interesting doctrine, never been used. YET.
!
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Westinghouse v. boyden, p. 830 (year 1898)
• No infringement
• Tech that deals with the brake: main line coming from train or from aux reserves
• Boyden invention is so diff that it really shouldn’t be brought within the letter of the claim.
Rule: the patentee brings def within letter of his claims but latter has so far changed principle of device that the claim of patent . . . the spirit and intent.”
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Scripps v. Genentech
• Scripps: plaintiff – broad patent (composition patent) (very powerful, don’t care how you made it, if you have it you infringe)
• Genentech: def has much improved process to make the product.
• Appellate court: patent is valid and we need to go to court to determine infringement.
• Settlement: plaintiff pays Def roaylties and Def continues to manufacture process product. Def does not license back to P. CALLED A REVERSE PAYMENT.
o What could be going on: 1) blocking patent, my licensees have to pay you; 2) scripps afraid that if rev doc equiv revived then the patent may be dead (plus other patents), so settle.
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Winans v. Denmead
• District court: no infringement; app ct: reverse, doc of equiv to expand claim
• Tech: a car for transportation of coal; cone shape
• Court: def infringed b/c device was so near as to true circle to substantially embody patentees mode of operation.
• Court here is adding words to the applicants claim and saying: you could have added these words, but law will fix what you didn’t put in (patentee).
o Like contrct law, blue line laws. However, in patent law this is very rarely dne, court is fixing what you messed up.
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Why do we have DOE:
* Don’t want one to practice fraud on patent
* Quid pro quo
• Incentive to invent: we will give you a little more than whats in your claim as incentive
o Also: cutting edge technology: don’t have correct words to describe what inventor has
* Problems: notice function of the claims. Competitors don’t know the scope of the claim.
* Fair protection v. certainty
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Pros history estoppel limits DOE: DOE can’t recapture wagt was lost. Cant expand doe to cover those pieces that would anticipate or render obvious the invention.
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WITH DOE compare patent claims with accused infringers product. Don’t compare the commercial product with the infringers product.
• All elements rule: equiv est with each elements in the claim and some structure in accused infringers device.
DOE rarely used, almost never used. Some say it’s a dead doctrine.
!
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FESTO
• 2 patents to magnetic rodless cylinders
amended claims to add new claim limitations
infringer: ring with 2 way lip instead of 1 way lip, and non magnetized alloy
•RULE Patentee must show to avoid pros history estopp in doe:
o 1) show that amend was not made for reason that would give rise to estopp. If no reason is given then pros history estoppel.
o 2) show the amend does not surrender the particular equivalent in question.
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Festo 2:
• DOE IS appropriate when
o 1) when patentee has broader claims that were judicially invalidated, narrower claims may be broadened to cover what was invalidted.
o 2) claim lang doesn’t capture some newly developed tech. (Velcro)
o 3) claim drafter couldn ont have reaonsly be expectedto draft better claims, mayble lang is limitation.
* Rule: rebut pres that narrowing amend surrenders equiv. if record silent hold that against patentee.
* Patentee mus t show to rebut (public policy rationales): 1) equiv may have been unforeseeable (objective inquiry, foreseeable to POISA, later dev tech not foreseeable); 2) rationel under amendment tangential relation (amend made to avoid prior art in q not tangential; focus on patentee objective reasoning for narrowing, only intrinsic evidence, not extrinsic may be used by court); 3) patentee may not have had no reason to describe the invention (no lang that could have covered it: look to shortcomings of language).
* Festo 3: patentee could not show amendments tangential or made for some other reason. Remand to district court
* District court: equivalents foreseeable. At end of day, DOE did not apply.
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Johnson and Johnson
• Claimed invention having sheet of alumunim, but could be made out of other alloys
Infringer used steel
* Court: you had language but didn’t bother to claim the other metals.
* Court: will not expand DOE to capture; what you don’t claim, goes to public.
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Festo: what you do during prosecution can limite your claims dramatically, during DOE
- what gives rise to pros history estopp: narrowing amendment, cancelling claims, changing something due to WD, indefinestnee
- NOT give rise to pros history estopp: amend that merely clarifying the claims meaning and not mean to dist from prior art.
Johnson and Johnson: patnette cant use DOE to recapture sub matter that was disclosed in application but not claimed.
TEST to det specificity required of patentee disclosure of unclaimed material to be dedicated to public:
- whether poisa can understand unclaimed teaching based on WD of patent
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Prior art limitation on DOE; if something already in public domain then you can already practice it. Can’t expand doe to cover something already in prior art.
Doe very limited; must rely on literal infringement now a days (festo; Johnson Johnson)
Know for doe:
- doe can be used to recapture what was not literlaly claims
- used when 1) broader claims judic invalided; 2: knewly dev tech was newly created, 3) when drafter couldn’t describe it due to language
- know what does patentee need to do to rebut presumption of narrowing amend: 1) equiv unforseeability at time of app; 2) amend bears tangential relationship to equiv (amend made has nothing to do with how this broadening doe would capture accused infringind evice) 3) some other reason patentee can’t describe sub in question
- know limiations to doe focusing on pros hsit estp: whats disclosed and not claimed.
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- indirect infringement: when Def has interefered with patentee legal right
- public policy in statute: 271B and 271C
- 271B: inducement standard (like aiding and abetting in crime: alleged inducer knowingly aids abets in infringement; proof of mens rea needed and must have direct infringer (violation of 271A), circumstantial evidence of infringement is enough, must have actual/constructive knowledge of patent and help somebody infringe that patent.
o Most common occurs when one actor provides another actor with instructions on how to make use invention
o Must have direct infringer for inducement
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- 271C: contributory infringement
o applies when one entity (contributory infringer) supplies non staple component of claimed invention to another entity that makes/uses/sells entire invention
o Limitation: must have dirct infringer for contrib infringerment
o non staple component: part of invention not suitable for any substantial use other than the patented invention; good for nothing else but infringement. MGM v. Grokster case.
If usefulness of article only for infringement then intent can be low
If article can be used for other components then intent can be higher.
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Aero Case:
- Top part of convertible. Damaged by weather
- Product: fabric for replacement of convertible tops. Ford did not license, GM did
- Repair/reconstruction distinction
o Does nt apply when replacement done with original manufacturer that does not have license
o Ford infringed aero by supplying replacement fabric: guilty of contrib infringement under 271C
- If ford had license like GM then ford could have repaired or replaced the convertible tops
- Court: GM permitted to repair tops w/o infringing patnets, not case for Ford.
- RULE for contrib infringement: 4 steps
o 1) det if direct infringement (w/o it can’t have contrib)
o 2) det if intent to use fabric for replacement purposes
o 3) det if component if component is material part of invention and especially made or adapted
o 4) det if component is stable article or commodity for non infringing uses
(if staple or for no infringing uses then prob not contrib infringement)
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Inducemet v contrib infringement
- 271b like aiding abetting; applies only when person has offer to sell/imported,
- contrib all other behavior: requires some kind of knowledge
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271f1: territorial limits of infringement
- component parts in US but haven’t assembled, ship it to China/India and they do assembly there = imputes liability to you even though you aven’t done it in this country
- protects against acts of infringement completed outside us but begun by activity in the us
- no infringement when made/sold in other country. However, if stuff happens in us and exported to india to assemble, want to stop that behavior
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Microsoft v. ATT
- SCOTUS: patent not infringed
- Patent on apparatus for encoding recorded speech
- Microsoft sent disc to foreign country, computers made and sold abroad (would be infringing if in US)
- No infringement under 271f
- Limits to 271f: you need to have component supplied within the US, presumption against extra-territorial of foreign application of us laws. If congress wants to adjust they can
- Good rule b/c we have treaty obligations with other countries, cant force our laws onto them.
