Patent Law: Reisman & Morley

Final: Based on the Reading-2 Essay Questions-Issue Spotting



A.     Patent Attorney:

1.     An individual with a technical background in science or engineering who is classified as an attorney, has passed the patent bar exam and is licensed to practice law. A patent attorney may practice law before the USPTO, including all aspects of the patent prosecution process. In addition, they may aid in litigation proceedings such as infringement cases over patented inventions.

B.     Patent Agent:

1.     An individual with a technical background as a scientist or an engineer who has passed the patent bar exam. Patent agents may practice law before the USPTO which includes all aspects of the patent prosecution process.

C.     Patent Practitioner:

1.     An individual who has passed the patent bar exam and is registered to practice patent law before the USPTO. They may be either an agent or an attorney.


1.     U.S. Constitution: Art I, §8, cl. 8

i)      “To promote the Progress of Science and Useful Arts, by securing for limited Times to Authors and Inventors the exclusive Rights to their respective Writings and Discoveries

A)    Green=Copyright

B)    Blue=Patent

C)    What rights does this give?

1)    Right to exclude others from making, using or selling your invention

2)    Links Congresses authority to what has been discovered

i)      Doesn’t have to use the patent system, could use the Commerce Clause and give out grants

2.     Title 35 U.S.C.

i)      §101-Inventions Patentable

A)    Utility-has to make sure that it is useful

ii)     §102-Conditions for Patentability; Novelty and Loss of Right to Patent

A)    has to make sure that nothing old is covered by the patent

iii)    §103- “Doctrine of Obviousness”

A)    Embarrassing for the country to give a patent for something that even if new, just aren’t different enough

iv)    §112

v)     Jurisdiction: Actions arising under this Title go to the District Court

A)    Exclusive federal jurisdiction

B)    Appeals go to the Federal Circuit Court of Appeals

3.     Title 37 C.F.R (not binding).

4.     Manual of Patenting Examining Procedure (not binding

5.     Patents

i)      Utility Patents-New, Useful and Non-Obvious Compositions of Matter, Processes,….

A)    Limit: 20yrs after filing

ii)     Design Patents-Ornamental works

iii)    Plant Patents-New Assexually-Reproduced Plants

6.     Other Forms of Intellectual Property

i)      Copyrights-Original works of authorship

A)    Limit: Life of author + 70yrs

ii)     Trademark-Identifiers of source of goods/services

A)    Springs from Commerce Clause

B)    Limit: Whenever it is abandoned or becomes generic

iii)    Trade Secrets-Information that derives value from not being generally know, and subject to efforts to maintain its secrecy

A)    State Law

B)    Limit:  Whenever it is disclosed

1)    Exceptions: Accidental disclosure

7.     Example:

i)      Pez:

A)    Patent- spring mechanism

B)    Copyright- Head of girl

C)    Trademark- PEZ

D)    Tradesecret- Candy formula

8.     What should you do if you invent something?

i)      Get a patent attorney (not required)

A)    Search for prior art

B)    Should the patent be filed?

ii)     Prepare a patent application

iii)    Submit a patent application-Commissioner of the U.S. Patent and Trademark Office

A)    Provisional or Non Provisional

B)    Examination (17-20hrs)

C)    Rejected 99%-“Office Action”

iv)    Prepare Response

A)    Argue that the examiner is wrong or Change the claim

v)     Submit Response

A)    Examiner either says yes or no(final office action)

vi)    Options after Final Office Action


1)    Location: District court or Court of Appeals for the Federal Circuit (have jurisdiction over the appeals from the Patent and Trademark Office)

2)    Chart:

i)      Two Options (Post 1982)

(a)   PTOBoard Fed Cir.S.C.

(b)   District CourtS.C.

ii)     Pre-1982

(a)   District Court”Regional” Courts of AppealsS.C.

B)    RCE-Request for Continuing Examination

C)    File Continuation Application

9.     Federal Circuit Court of Appeals

i)      Created to unify the patent appeal system

ii)     Government employees can also bring their cases

iii)    Government contract law



1.     Trade Secrets

i)      Sources of Law

A)    Uniform Trade Secrets Act

B)    Cal Civ. Code §§3426.1(d) Subject matter

1)    “Trade secret” means information, including a formula, pattern, compilation, program, device, method, technique, or process, that:

i)      Derives independent economic value, actual or potential, from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use; and

ii)     Is the subject of efforts that are reasonable under the circumstances(normative)to maintain its secrecy.

2)    Broader concept than §102(a) for patent law

C)    Cal Civ. Code §§3426.2 Injunctions

1)    Actual or threatened misappropriation(normative) may be enjoined.

i)      Means taken do NOT have to be illegal to be improper  E.I. du Pont de Nemours & Co. v. Rolfe Christopher et al. (1970) 

ii)     Requirements:

A)    Has to be secret, however disclosure does not mean automatic destruction of secret.

B)    Reasonable effort to protect secret

C)    Has economic value by being secret

1)    Focus

iii)    Miscellaneous:

A)    Does not expire until secret is disclosed

B)    Is cost efficient

C)    Protected against misappropriation:

1)    Acquisition of TS knowing or having reason to know that it was acquired through improper means

2)    Disclosure by a person who used improper means to acquire the TS or

i)      Improper means include theft, bribery, misrepresentation, inducement of breach or breach of duty to maintain secrecy

(a)   Breach of duty is highly litigated because there exists a tension between mobility of labor and the preservation of trade secrets

iv)    Secrecy

v)     Commercial Value

vi)    Misappropriation

A)    Means taken do NOT have to be illegal to be improper  EI duPONT deNEMOURS & Co. v. Christopher (5th Cir. 1970) Dupont had a process for processing methanol.  Plane circled overhead taking pictures, during Dupont’s building of a new plant where the equipment used for the process was in open view.  Defendant argues that Dupont could have taken precautions (tarp).  DuPont argues that it was too expensive for a low risk probability.  HOLDING:  “Our tolerance of the espionage game must cease when the protections required to prvent another’s spying cost so much that the spirit of inventiveness is dampened.  To require DuPont to put a roof over the unfinished plant to guard its secret would impose an enormous expense to prevent nothing more than a school boy’s trick.” (pg. 65)

B)    Whyte v. Schlage Lock (Cal App. 2003)  No covenant to not compete.  However, by moving to the competitor it is implied that he will disclose the trade secrets (doctrine of inevitable trade disclosure).  Covenant not to compete-  Inevitable doctrine-patents that are obtained and properly assigned to company(important)and then they leave to go to competitors.  Doesn’t matter about ID because company has the patent.  Not very robust against §112

2.     Copyrights

i)      Sources of Law

A)    17 U.S.C. §§102 Subject Matter of Copyright: In General Literary works, musical works, dramatic works, pantomimes

B)    17 U.S.C. §103 Subject Matter of Copyright: Compliations and Derivative Works

C)     17 U.S.C. §107 Limitations on Exlusive Right: Fair Use

1)    No similar policy exception in the patent law.

ii)     Application

A)    Bowers v. Baystate (Fed. Cir. 2003) “Shrink Wrap” The Fed Cir. opinioning as a matter of first principle(matter of law) what the first Cir. law is to preemption by the copyright act.  Whether the shrink wrap patent affects the fair use laws.  Look at the shrinkwrap license  and they compare that to the fair use provisions (in principle) of the copyright act.  Differences: If someone were to give a copy of software, under 101 patents might cover what software does, so if you develop your own software and sell it there might be a patent problem  However according to the copyright there is not this policy on policing the processes.  Big gap in the copyright law on copying the code under fair use.  If someone wants to reverse engineer and develop something else that is allowed (fair use exception)  If someone were to give a copy of software, you don’t have a blanket right to copy it but you can copy it for a specific use.    If you had a literary work and you wanted to find somebody to make a T.V. Show after it, put in the negotiations that you can have it but can’t sponsor anything that would make fun of it-can you do it?  Sure.  Generally speaking the states have agreed that the shrink wrap licenses is a contract of adhesion.  In this case looking at the balance between copyright(fair use) and contract.  There is an addition to the contract, however not negotiated.  The license is a contract what not okay with allowing such contracts that are enforceable to eradicate a policy balance that is a matter of federal law about fair use.


------------------------------------------SECTION 101 Inventions patentable UTLITY------------------------------------------------------



A.     35 U.S. 101 (Standard #1: Address on Final)“a person who invents or discovers any new and useful process, machine, manufacture, or any composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title

1.     Definitions:

i)      Process: a series of acts which are performed upon subject matter to produce a given result Cochrane v. Deener (U.S.1877)-Most of the issues in patent law arise under this definition.

ii)     Machine: any apparatus  or mechanical device Nestle-Le Mur Co. v. Eugene(6th Cir. 1932)

iii)    Composition of matter: synthesized chemical compounds and composite articles Diamond v. Chakrabarty (U.S. 1980)

iv)    Manufacture: almost any other useful technology


1.     Laws of Nature/Phenomenon and Abstract Ideas

i)      Usually not patentable

ii)     Patentable if incorporated into a process or apparatus as one of the steps.  Example: an algorithm can be patentable if it is applied to produce a useful, concrete tangible result without preempting other uses of the mathematical principle.

2.     Areas of Litigation:

i)      “Algorithms”

A)    A mathematical formula, having no substantial practical application except in connection with a digital computer, cannot be patented. Gottschalk v. Benson (U.S.1972) Benson (P) submitted patent claims for a method for converting binary-coded-decimal (BCD) numerals into pure binary numerals. The claims were not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use.  They purported to cover any use of the claimed method in a general purpose digital computer of any type.  Gottschalk (D). the Acting Commissioner of Patents, appealed the reversal of his rejection of the patent claims.  HOLDINGIt is conceded that one may not patent an idea.  The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.” (NUTSHELL) “While a scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be…”pg. 63“HOWEVER, here the “process” claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion.  The end use may(1) vary from the operation of a train to verification of drivers’ licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus.” Pg. 63 In other words, the claim is not linked to a computer (even though practicality wise it can only be used by a computer), hence it is too abstract.

1)    NOTE: Congress intent with §101: Anything under the sun made by man.

2)    NOTE: The Benson decision is the leading one on the question of whether or not computer programs are patentable.  The history of the case reveals the typical positions which have been taken by the Patent Office, and the Court of Customs and Patent Appeals,.  The patent claims were rejected by the Patent Office, reflecting its usual opposition to patenting computer programs.   The Court of Customs and Patent Appeals, typically defiant of the Patent Office, reversed.  In subsequent decision, the Court of Customs and Patent Appeals seemed to even defy the Supreme Court in attempting to gain patents for computer programs.

B)    Patentable claims are not invalid because they include mathematical formulas.  Must look at claims as a whole.  Diamond v. Diehr (U.S.1981) Diehr (P) developed a process for cuing synthetic rubber, which included in several of its steps the use of a mathematical formula and a programmed digital computer.  Diamond (D), the patent examiner, rejected Diehr’s (P) claims, contending that the steps in Diehr’s (P) claims that were carried out by computer under control of a stored program constituted nonstatutory subject matter under 35 U.S.C. §101.  Diamond (D) concluded that Diehr’s (P) claims defined and sought protection of a computer program for operating a rubber-molding press and thus could not be patented.  At trial, the Court of Customs and Patent Appeals ruled in Diehr’s (P) favor, stating that Diehr’s (P) claims used a mathematical formula in a process which, when considered as a whole, performed a function which the patent laws were designed to protect.  Diamond (D) appealed. HOLDING: It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.  In deciding the eligibility of Diehr’s claimed process, the claims must be considered as a whole.    The claims are not an attempt to patent a mathematical formula, when considered as a whole.  While the claims contain a mathematical formula, they implement the formula in a process which is performing a function which the patent laws were designed to protect (transforming an article to a different state or thing)

C)    NOTE:  Must consider the claim as a whole, especially in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.

D)    If a mathematical algorithm recited in a patent claim only applies to the physical elements of an apparatus or steps in a process, then the claim is patentable subject matter. Look to see if the claimed invention as a whole is no more than the algorithm itself. Arrhythmia Research Technology. Inc. v. Corazonix Corp. (Fed. Cir. 1992) Judges: Rader, Newman, Lourie, Rich. Simson, on behalf of Arrhythmia Research Technology, Inc. (P), created an apparatus and method to analyze heart function.  ART’s (P) patent concerned the detection and measurement of certain heart activity anomalous to patients subject to ventricular tachycardia. Corazonix (D) claimed that the patent was directed at a mathematical algorithm and thus was unpatentable subject matter under 35 U.S.C. §101.  Summary judgment was entered on behalf of Corazonix (D), and ART (P) appealed.  HOLDING:

1)    TEST: Freeman-Walter-Abele

i)      Determine whether a mathematical algorithm is recited directly or indirectly in the claim

ii)     Next determine whether the claimed invention as a whole is no more than the algorithm itself,

(a)   Look to see if the mathematical algorithm is applied in any manner to the physical elements of a process or the steps in a process.

(i)    If so, then the  requirements of 35 U.S.C. §101 are met.

(ii)   If it is a natural phenomenon then unpatentable

2)    (35 U.S.C §112¶6)

i)      Using this claim essentially renders 101 ineffective.  This section has the wording “means for” which requires the claim to describe the structure and by describing the structure it is construed that there is a structure and therefore is not a disembodied algorithm.

(a)   It is also a short hand in practice to say means for and then list all the ways it can be done, that way you are not limited to a particular process

3)    NOTE: Emerging issue of the district court being policed by the Supreme Court.  Since 2002 they have been taking a stronger interest in patent law.

4)    In Re Allapat: The claimed invention as a whole is directed to a combination of interrelated elements which combine to form a machine for converting discrete waveform data samples into anti-aliased pixel illumination intensity data to be displayed on a display means.  This is not a disembodied mathematical concept which may be characterized as an “abstract idea” but rather a specific machine to produce a useful, concrete, and tangible result.


1)    Claim was for putting a continuous current, in a closed circuit, into a certain specified condition, suited to the transmission of vocal and other sounds, and using it in that condition for that purpose, not one for all telephonic use of electricity. The Telephone Cases (U.S.)

2)    The chemical process or the physical acts which transform the raw material are sufficiently definite to confine the patent monopoly within rather definite bounds. Corning v. Burden (U.S.)

3)    Patent on process to manufacture fat acides and glycerine was allowed.  Tilghman v. Proctor (U.S.) Transformation and reduction of an article “to a different state or thing” is the clue to the patentability of a process claim that does not include particular machines. 

ii)     Business Methods (Patentable)-No longer an exception

A)    A machine or program that stores and calculates numbers in a useful manner is eligible for a patent. State Street Bank & Trust Co. v. Signature Financial Group, Inc. (Fed. Cir. 1998) ( Judge Rich.)  Signature (D) was an assignee of a patent entitled Data Processing System for Hub and Spoke Financial Services Configuration.  This computer program facilitates a structure whereby mutual funds pool their assets in an investment portfolio organized as a partnership.  The system provides means for a daily allocation of assets for multiple mutual funds that are invested in the same portfolio and enables the determination of true asset values daily.  Given the complexity of the necessary calculations, this program is essential to perform the task.  HOLDING:  Signature’s patent claim is for a data processing system, which is a machine made up of the means plus function elements of the program.  A machine is proper subject matter for patent under 35 U.S.C. §101.  While the Congressional mandate of §101 is for broad availability of patents, there are three judicially created exceptions, law of nature, natural phenomenon and abstract ideas.  While an algorithm could fall in the abstract idea category, the transformation of data by a machine through a series of mathematical calculations into a final and useful and concrete result (final share price) is not an unpatentable abstract idea.

1)    Additional Comments:

i)      The Freeman-Walter-Abele test does not apply to determine the presence of statutory subject matter. The focus should be on the essential characteristics of the subject matter, in particular, its practical utility. (This has the effect of collapsing the subject matter inquiry into another patentability requisite, that of utility- a minimal standard requiring only that the invention confer a specific benefit in currently available form.)

ii)     Section 101- A process is a process, there is no business method exception.

2)    Result of Holding:

i)      Delimma for the patent office-need tax law people to examine the patents

B)    Patent allowed for a claim that was solely involved in information exchange AT&T Corp. v. Excel Communications, Inc. (Fed. Cir. 1999)

iii)    Compositions of Matter-Biotechnology

A)    Life Forms

1)    Living Organisms are patentable Chakrabarty(U.S. 1980) –Pre 1982-PTO rejected claim.  Dr. Chakrabarty sought a patent for an artificially created oil-eating bacterium.  HOLDING: The judiciary must proceed cautiously when asked to extend patent law to areas that Congress had not foreseen.  However, the judiciary shall apply the statute if it is clear, and Title 35 contains no ambiguity in the present case.  It contains broad languages.  Here the objective is the promotion of “Progress of Science and useful Arts”, and limiting it by the PTO’s proposed interpretation fails this policy.  You have a composition of matter and is man made which is made under the sun.  Claim is not to unknown natural phenomenon but to “a product of human ingenuity” that is not naturally occurring.  Bacterium is a “new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility.” –pg. 130  Focus of Justice Burger. 

i)      ANALYSIS: The court also disregards the policy arguments about gene therapy and that issuing a patent will encourage the threatening, and growing trend towards gene therapy.  No matter the decision reached, it was still accepted that the products created by a genetically engineered object and the processes of genetic engineering were patentable.  This case extended it to the organism itself.

ii)     NOTE: Advocate wants to prevent crazy monsters, however in that case the patent would be rejected at Step 102 (utility)

2)    Non naturally occurring, non human multi cellular living organisms are patentable

iv)    Methods of Medical Treatment

A)    Australia allows patents for medical treatments Anaesthetic supplies Pty. Ltd. V. Rescare Ltd. (1994) Anaesthetic Supplies sought to revoke a patent granted for a medical device and a method to treat a snoring sickness.  I claimed a method of treating OSA by applying air at a particular pressure through a nose piece. HOLDING: Looking at other countries, some do recognize the patentability of methods of human medical treatment.

III. UTLITY ( Can be used with §112 (description))

A.     General Info: An invention must be “useful”. 

1.     Requirements: Modest requirement.  

i)      Benefit has to be “functional”-not just aesthetic or descriptive

ii)     Must work-capable of fulfilling described function

iii)    Have a specific, substantial and practical use (Brenner v. Manson)

A)    Policy:  To give an inventor rights on a product without showing a specific benefit could prevent others from discovering such specific benefits.

2.     DOES NOT have to be:

i)      Socially beneficial (can be deceptive- Juicy Whip)

ii)     Efficient

iii)    Better-

iv)    Safe

3.     Biotech: Researchers have to show that the product has some pharmacological activity in the laboratory-cannot just identify a potentially useful product or process which would be a subject of research (Brenner)

B.     Beneficial Utility (General Principles)

1.     The statutory requirement of utility is satisfied if one product can be altered to make it look like another because that in and of itself is a benefit.  An invention does not lack utility for patent purposes simply because it can fool the public, through imitation, in a manner that is designed to increase product sales. Juicy Whip, Inc. v. Orange Bang, Inc. (Fed Cir. 1999) Juicy sued Orange alleging it was infringing on its beverage-dispensing patent.  Orange allege the dispenser was unpatentable because it lack utility. HOLDING: An invention is useful if it is capable of providing some identifiable benefit.  It is common for a product to be designed to appear to viewers to be something that it is not and there are many patents directed at making one product imitate another.  The value of such products is that they appear to be something that they are not.

i)      Additional Comment:  Conflicts with Lowell because it holds that there is no beneficial utility standard, just a plain utility standard.

C.     The Utility Requirement in Chemistry and Biotechnology

1.     A process or a product which has no known use or is useful only in the sense that it maybe the object of scientific research is not patentable because it is not “useful” “A patent is not a hunting license” Brenner, Commissioner of Patents v. Manson (U.S.S.C 1966) He claimed a process to produce a chemical compound (steroid).  Similar steroids had proven effective in inhibiting tumors in mice and he hoped his would have the same effect.  But he didn’t do any testing.  HOLDING: He needed to show that the steroid produced by this process would be substantially likely to have tumor inhibiting effect on the mice.  With the class of steroids effects were unpredicitable, and similar compounds were not likely to have the same effects. The purpose of the patent system is to encourage dissemination of information concerning discoveries and inventions.  However, this argument must be warily evaluated as people disclose as little as possible while making the claim reach as broadly as possible.  Whatever weight is attached to the value of encouraging disclosure and of inhibiting secrecy, we believe a more compelling consideration is that a process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should only be granted if clearly commanded by the statute.  Otherwise, it may engross a vast, unknown, and perhaps unknowable area, conferring power to block off while areas of scientific development, without compensating benefit to the public.   DISSENT:  In chemistry, one discovery builds on the next so even if a product does not have utility somebody could build upon it to create something useful without having to first do that step.

i)      NOTE:  There was utility after filing, does §101 require useful or known to be useful, because technically it was “useful” at the time of filing, however the usefulness wasn’t known.

2.     Does not need to be as effective as existing technology Custom Accessories v. Jeffrey-Allan Indus., (Fed. Cir. 1986)  “It is possible for an invention to be less effective than existing devices but nevertheless meet the stautory criteria for patentability.”

D.    The Utility Requirement at the Federal Circuit

1.     Applicants must show a specific use for their substances and satisfy the evidentiary requirements in order to prove utility. In re Brana (Fed. Cir. 1995) June 20th, 1980, Brana and other applicants filed for a patent on compounds to be used as antitumor substances.  The compounds had not been tested, but were only slightly different chemically than know antitumor compounds.  The known antitumor compounds had been evaluated in a computer test.  The testing was accepted to the point that when the computer indicated one substance was effective, the National Cancer Institute chose to further test it.  The patent application specified the similarity of the claimed compunds with the tested compounds and also illustrated the cytotoxicity of the claimed compound against human tumor cells, indicating that the claimed compound “had good action”.  The examiner rejected the patent on the ground that the application failed to specify the particular disease the compounds were active against and secondly that the tested tests were insufficient to establish a reasonable expectation that the compounds had a practical utility. HOLDING:  The application claimed that the compounds have a better action than known compounds.   The alleged use against the particular type of cancer is much more specific than the vaguely intimated uses rejected by the courts in another case.  While the Board says that they are only applicable to the specific cell line which is man made the Court is not going to require the animal to naturally develop the tumor.  The PTO has the initial burden of challenging a presumptively correct assertion of utility in the disclosure.  Only after the PTO provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince such a person of the invention’s asserted utility.  Even if one skilled in the art had questioned the asserted utility, proof of an alleged pharmaceutical property for a compound by statistically significant tests with standard experimental animals is sufficient to establish utility. “It is our firm conviction that one who has taught the public that a compound exhibits some desirable pharmaceutical property in a standard experimental animal has made a significant and useful contribution to the art, even though it may eventually appear that the compound is without value in the treatment in humans.”





------------Section 102 Conditions for patentability; NOVELTY and loss of right to patent---------------



A.     35 U.S.C.A. §102 (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

1.     (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States

B.     General Info: An invention is not patentable if it is in a reference(publication/product or other evidence of public knowledge(ex. conference boards)) in the prior art that anticipates the invention (contains all the elements of the claimed invention.)  Does not require knowledge of the prior art by the inventor.  Does not require absolute novelty. 

C.     Requirements: Judged as of the date of invention(hard to determine)

1.     If the applicant can prove the date of conception (when he had fully conceived the invention in its operable form), that is the date of invention(as long as he proceeded diligently to make the invention or file a patent application).  However, hard to prove date of conception (some patents are so complex it would be possible to have a complete mental conception.  Absent a date of conception, invention occurs on “reduction to practice” when the inventor made the invention and performed any necessary testing.  If cannot prove time of reduction to practice the date of invention is simply the date of filing application.

D.    Definitions:

1.     Publication: Any medium that makes the reference publicly accessible.

i)      Does not need to be widespread. (Ex. In a doctoral thesis in the stacks and listed in a catalog of a university library. Ex. Oral presentation of a paper where copies were distributed without restrictions to six people)

E.     References:

1.     §102(a): Identical

2.     §102(b): Identical or obvious in light of reference (§102(b)/§103 anticipation)- It is more accurate to call it a finding of obvious under §103, using the prior art from §102(b) but courts frequently discuss it as anticipation under §102(b) where the product is similar to the invention.

F.     TEST:

1.     Is it a §102 reference? Is it prior art? Is the prior art enabling?

i)       It can be anything that satisfies the requirements of §102.

2.     Does it “anticipate”?  Look at the differences between the pertinent prior art and the invention?

i)      Has to be identical §102(a)- If you have A+B and they have A+B+C, then you are good to go.

ii)     Has to be identical or obvious in light of reference (§102(b)/§103 anticipation)



What has been done?

Who is doing it?

Where was it done?

When was it done?

§102 (a)




Before Invention(of patent applicant/holder)

** triggered by day you made invention


Patented/Printed Publication

Others (?)


Before Invention(of patent applicant/holder)

** triggered by day you made invention


Patented/Printed Publication

Anyone *


1 yr before filing

* cannot avoid


Public Use/On Sale*

Inventor v. Others



1 yr before filing “Grace Period”


Inventor/Owned “Abandoned” invention

Inventor/Owned “Abandoned” invention

Inventor/Owned “Abandoned” invention

Inventor/Owned “Abandoned” invention


U.S. patent application-“secret prior art”-not going to be able to access it (only examiner)



Before invention

*Note similar to 102(a)-difference is the WHAT (knowledge v. application)

** triggered by day you made invention

§102(f) “Stealing Cases”

Inventor “derived” invention from another-“he did not himself invent”-wrong people named as inventor-possible technical section-can fix it.

Inventor “derived” invention from another-“he did not himself invent” -wrong people named as inventor-possible technical section-can fix it.

Inventor “derived” invention from another-“he did not himself invent” -wrong people named as inventor-possible technical section-can fix it.

Inventor “derived” invention from another-“he did not himself invent” -wrong people named as inventor-possible technical section-can fix it.


Priority contest-who “invented first”-Prior invention-Chpt. 6

Priority contest-who “invented first”

Priority contest-who “invented first”

Priority contest-who “invented first”


*-going to be covered in this class




G.    Does it Anticipate? (Expressly or Inherently)

1.     Inherency: (Law of nature)

i)      General Info: References include elements, that although not expressly stated, are necessarily present in the product or process described in the reference.

ii)     Requirements:  Consistency on how often the process going to come out the same way?

iii)    Limit: Process will not be anticipated if it occurred only as an accidental and unwitting by product in some previous process

iv)    When a patent reference is silent about an inherent characteristic, the missing descriptive matter must be necessarily present and recognized by persons of ordinary skill. Continental Can Co. v. Monsanto Co. (Fed Cir. 1991) Monsanto asserted that all of the claims of Continental’s 324 patent were anticipated by the Marcus patent although there were silent references.  HOLDING: (Judge Newman) Anticipation requires that the identical invention that is claimed was previously known to others and is not new.  The party claiming anticipation as a defense to infringement has the burden to show that every element of the claims of patent were identically described in the anticipating reference.  To serve as an anticipation when the reference is silent about the asserted inherent characteristic, the gap in the reference may be filled with recourse to extrinsic evidence.  This evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference and would be recognized by persons of ordinary skill.  It is sufficient if the reference shows that the natural result flowing from operation as taught would result in the performance of the questioned function.  In the present case, the question of whether process described in the Marcus patent necessarily produces hollow ribs cannot be determined on summary judgment.  Accordingly, the anticipation issue must be decided at trial.

A)    NOTE: Anticipation is governed by 35 U.S.C. §102 and §103.  Continental’s experts testified by deposition that Marcus patent showed solid, not hollow, ribs.  Thus, it was fairly clear that summary judgment was inappropriate in this case.

v)     A law of nature not disclosed in the reference does not mean you can claim the process as novel. Titanium Metals Corp. of America v. Banner(Fed. Cir. 1985) Banner claimed he could exclude others from making, using, or selling an alloy described in a Russian scientific article, while Titanium contended that Banner should not receive a patent on the alloy because it was prior art.  HOLDING: (Judge Rich) Novelty is a fundamental condition for patentability.  It is an elementary principle of patent law that when, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is anticipated if one of them is prior art.  Here, Banner’s claims were anticipated by the Russian article, which admittedly disclosed an alloy on which these claims read.  Section 102 also requires that such documents be in existence before the creation of the invention being considered.  Judicial interpretation regarding which documents and things are within the scope of §102 vary to fit the exigencies of the cases as to what will best promote the progress of the useful arts. “What if a prior art reference describes a single species after the inventor claims an entire genus, then the entire genus is anticipated by the reference.  When as by a recitation by ranges or otherwise a claimed covers several compositions the claim is anticipated if one of them is prior art.”

A)    Class Notes:The only thing missing from the Russian claim was the corrosion resistance.  However if it is discovered that something happens because of a law of nature does not mean that you can claim that process.(Inherency)

B)    Example: Humans lit fires for thousands of years before realizing that oxygen is necessary to create and maintain a flame.  The first person to discover the necessity of oxygen certainly could not have obtained a valid patent claim for “a method of making a fire by lighting a flame in the presence of oxygen”…Even if prior art on lighting fires did not disclose the importance of oxygen and one of ordinary skill in the art did not know about the importance of oxygen, understanding this law of nature would not give the discoverer a right to exclude others form practicing the prior art of making fires.” Pg. 176

2.     Schering Corporation v. Geneva Pharmaceutical-Inherency

i)       Patents:

A)    #1: Claratin (Loratadine-generic)

1)    If you take Loratadine the body makes it into Desloratadine-all the time

B)    #2: Claranex (Desloratadine-generic)

1)    Body doesn’t do anything

C)    FACTS: Patent #1 expires-different drug company wants to make generic druge of Loratadine.  Schering says no because then the liver is going to make Desloratadine and they have a patent on the metabolite

D)    Judge says that you can’t patent something that has been happening for years(Inherency) i.e. people have been converting Loratadine into Desloratadine for years.

1)    What if 10% of the population does not convert Loratadine into Desloratadine?

E)    This case shows that you have to look at the facts at the present time- that Loratadine converts into Desloratadine is a fact at the present time, not when Loratadine was first patented

V.    STATUTORY BARS §102(b)(c)

A.     Applicant Activities §102(b)

1.     General Info: Once an invention becomes public knowledge, an inventor has one year to file application. Therefore there must be a triggering event (Patented or described(anywhere), on sale, public use(USA)(does not require knowledge of triggering event). 

i)      Policy: Gives inventors a strong incentive to patent promptly 2) If invention has been in unrestricted public use and knowledge, others may have a reliance interest 3) Prevents delaying in hopes of effectively gaining a longer period of protection.

2.      Public Use  (Does not depend on number of people who use it or how many are being used)

i)      Requirements: Unrestricted.

A)    DOES NOT depend on # of people who use it or # of inventions being used

B)    Limit: Experimental use and secret prior use (by a third party)

ii)     Case Law:

A)    If an inventor gives or sells a device to another without limitation or restriction, or injunction or secrecy, and it is used, such use is public and places the invention “in public use” Egbert v. Lippman(1881) Lippman fought a patent infringement charge by asserting that Barnes, the original patentee, had permitted the corset steels he had invented to be “in public use” long before he patented them.  COURT: Whether the use of an invention is public or private does NOT depend upon the number of persons to whom its use is known.  Furthermore, to constitute the public use of patent, it is NOT necessary that more than one of the patented articles be publicly used.  Some inventions, like the one at issue here, are by their very character capable of being used only where they cannot be seen or observed by the public eye.  Nevertheless, if the inventor allows it to be used without any restriction of any kind, the use is a public one.  The wife could have shown them to somebody and that is enough for the court to rule that it is public use.  Tested by these principles, the evidence in this case showed there was a public use of the invention. 

1)    NOTE: It was non informing use, however exposure to public view is not and never has been the test of a public-use bar.

2)    Dissent: Invention was incapable of a public use because how the corset worked was not being shown to everyone.

B)    Commercial exploitation of an invention, even if done in secret, constitutes a “public use” under § 102(b) of the Patent Act. Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts (1946) Metallizing Engineering assigned a patent to Meduna concerning a new metallizing process.  The application for the patent was filed on August 6, 1942 but the Patent Law required that the invention not be in “public use” prior to a year before this date.  Before August 6, 1941, Meduna had used the process for commercial gain, but had kept it a closely guarded secret.  When Kenyon later used the process, Metallizing sued for infringement.  Kenyon claimed that Metallizing lost all patent rights with its earlier public use. COURT: Lower court correctly followed precedent, but this precedent confused two separate doctrines:  1) the effect an inventor’s commercial exploitation has upon patent rights for a machine or process; and 2) the effect that the prior use of others has upon patent rights.   As to the first doctrine, an inventor cannot commercially exploit his invention longer than the statutorily required time to file for an application.  Regardless of how little the public learned of the invention or process, an inventor loses his patent rights once it is commercially utilized.  He must either choose secrecy or a legal monopoly.

1)    NOTE: Justice Hand was forced to distort his definitions of common words so that “public” meant “secret” when modifying “use”.  Had Hand reached the opposite conclusion, then an inventor could commercially exploit his discovery while keeping it secret as long as possible. (POLICY CONCERN) Once someone else “discovered” the invention, the original inventor could then apply for a patent and receive protection.  Thus, he could maintain exclusivity for much longer than the limited amount of years that Congress has decided accounts for the ‘progress of Science and the Useful Arts’.

2)    Focus:  Whose public use?  When the inventor/patentee uses it for public use a critical policy concern comes into play regarding the “grace period”.  

i)      If public use by inventor it triggers the 1 yr filing period.


3.     Experimental Use (Allowed)

i)      Factors to Decide if Experimental: Control over prototype, how many the number of prototypes and duration of testing; records and reports taken; existence of secrecy agreements between testers and inventor; compensation; and the extent of control the inventor exerts over the invention.  The last factor is critically important.  An inventor’s subjective intent is of minimal value in this consideration.

ii)     Case Law:

A)    Public experimentation does not put an invention in “public use” City of Elizabeth v. American Nicholson Pavement Co. (1877) Nicholson (P) patented a process in 1854 for laying down wooden pavement that was cheaper, more durable, and safer than the norm.  While developing the process, Nicholson (P) experimented by laying down, at his own expense, pavement on a public road in Boston in 1848.  It was assumed that people and horses would travel along it.  The City of Elizabeth (D) laid down wooden pavements in substantial conformity with the patented process.  Nicholson (P) successfully brought an action for patent infringement, and the Supreme Court granted review.  COURT: It is not enough that the public know of the invention; public use or sale must occur.  The policy of abandonment requires that if the invention is in public use or sale prior to the statutory two years before filing, the invention loses all rights.  However, the nature of street pavement is that it cannot be experimented upon satisfactorily without public use.  The public had incidental use of Nicholson’s (P) pavement, but not “public use” within the meaning of the statute.  It would have been different if Nicholson (P) had allowed Boston to lay down pavement elsewhere in the city or had he sold it, but Nicholson (P) never let the invention beyond his control.  Public knowledge of the invention does not preclude the inventor from receiving a patent.  It is the public use or sale of the object that will preclude the patent. POLICY: Certain inventions require public experimentation, while others do not.  What is less obvious is whether public experimentation is an exception to the “public use” rule or is it simply not a “public use”.

1)    Class Notes:

i)      Experimentation has to be on whether the invention will work for its intended purpose.

ii)     Only way to test pavement is out in the open

iii)    Experimental use falls into the public use part of the public use/on sale section of the chart

B)    Failure to maintain control over prototypes during testing will render the prototypes not experimental and, thus, in public use. Lough v. Brunswick Corp. (Fed. Cir. 1997) Lough (P) a repairman at a Florida boatshop, recognized that several seal assemblies in inboard/outboard motors failed due to corrosion.  In 1986, Lough (P) fashioned six new seals using his grandfather’s metal lathe.  He installed one on his own boat, two on friends’ boats, and gave the remaining three to friends to install on third parties’ boats.  On June 6, 1988, Lough (P) applied for a patent, which was granted on July 18, 1989.  After learning of Lough’s (P) invention, Brunswick (D) created a new seal assembly and installed it in all new baots as wellas offered it as a repair part.  Lough (P) sued, and a jury found that Brunswick (D) had infringed Lough’s (P) claims and awarded damages of $1.5million.  Brunswick (D) filed a motion for a judgment as a matter of law, which claimed that the patent was invalid since the invention had been in public use before the critical date.  The lower court denied the JMOL, and Brunswick (D) appealed.  COURT: An inventor loses the right to a patent if his invention is in “public use” for more than a year before the patent application is filed.  However, a patentee may negate a showing of public use by coming forward with evidence that the invention was experimental.  Whether the invention was experimental is a question of law and is to be considered in light of the totality of the circumstances.  Factors include: the number of prototypes and duration of testing; records and reports taken; existence of secrecy agreements between testers and inventor; compensation; and the extent of control the inventor exerts over the invention.  The last factor is critically important.  An inventor’s subjective intent is of minimal value in this consideration.

1)    NOTE:  The decision is harsh.  It requires a homemade inventor with a high school education to be abreast of the law to the extent he patents his inventions earlier. 

4.     On Sale (Not Allowed)

i)      Requirements: More than one year before filing. Qualified for a patent, subject of a formal commercial offer of sale

ii)     Case Law:

A)    An invention may not be patented a year after it was ready for patenting and was the subject of a commercial offer for sale.  Pfaff v. Wells Electronics, Inc. (1998) Pfaff (P) began work on a computer chip socket in November 1980.  He prepared detailed engineering drawings that described the design, dimensions, and materials in March 1981.  The following month, Texas Instruments ordered 30,100 of the sockets from Pfaff (P) although there was no prototype yet.  Pfaff (P) did not fill the order until July 1981.  Subsequently, Pfaff (P) was issued a patent on January 1, 1985, and brought a patent infringement action against Wells (D), the maker of a competing socket.  The court of appeals ruled that Pfaff’s (P) claims were invalid because he had filed for the patent more than a year after the sale of Texas Instruments.  Pfaff (P) argued that his invention was not “on sale” for this purpose until it had been actually reduced to practice. COURT: The Patent Act of 1952 does not require that an invention be reduced to practice before it can be patented.  Assuming diligence on the part of the applicant, it is normally the first inventor to conceive, rather than the first to reduce to practice, who establishes the right to patent.  It is evident that Pfaff (P) could have obtained a patent on his socket when he accepted the Texas Instruments purchase order.  35 U.S.C. §102 patents on ideas that are in the public domain.  Thus, an inventor loses patent rights when the inventor puts the invention into public use before filing an application, although private testing is permitted.  2 conditions start the period: 1) Subject of a commercial offer for sale 2) Qualified for a patent.  This standard is perfectly clear and allows the inventor control over the timing of an invention’s public use.  In the present case, Pfaff’s (P) invention was ready for patenting because he had detailed drawings of the socket prior to its actual manufacture.  Thus when it was offered for sale the clock started to run. 

1)    Additional Comments:  Cannot be a formal offer, but can work around it (advertising, samples, data sheets)

B.     Third Party Activities § 102(b) (if somebody has already invented it and it is in public use) Informing Uses, Non-informing uses, Secret Uses

1.     Informing Uses (Not Allowed)

i)      A third party’s innocent use of an invention in its factory to create a commercial product is a “public use” under § 102(b)Electric Storage Battery Co. v. Shimadzu(1939) On July 14, 1923 and April 27, 1926, Shimadzu(P), a Japanese citizen, applied for patents concerning an apparatus and process by which fine lead powder was developed.  Electric Storage Battery Co. (D), without knowledge of Shimadzu’s (P) inventions, began the use of a machine that involved the use of Shimadzu’s (P) method and apparatus.  Electric’s (D) machine was set up in early 1921, and it attained commercial production in June 1921.  Shimadzu (P) sued successfully for patent infringement, and the Supreme Court granted review. COURT: The unhidden use of a machine in a factory process to produce commercial products for profit is a public use.  In this case, the machine, process, and product were not hidden from employees in Electric Storage’s (D) plant and no efforts were made to conceal them from anyone who may have had a legitimate interest.  The machine was in use two years prior to Shimadzu’s (P) applications, so his patent claims were invalid, and thus, they could not be infringed.

A)    NOTE: This case extends § 102(b) to the use by third person other than the patent applicant and/or inventor.  The statutory time that limits the date of public use prior to a patent applicant has changed over the years.

2.     Non-informing Uses (Not Allowed)

i)      See Egbert v. Lippman

ii)     Knowledge of Product Sold-Not Required

A)    The on-sale bar doctrine applies when before one year prior to the date of application for the patent,  the invention is both the subject of a commercial sale or offer for sale and is ready for patenting, even if there is no knowledge about the productAbbott Laboratories v. Geneva Pharmaceuticals, Inc. (Fed. Cir. 1999) Abbott(P) sought a patent for Form IV. Geneva (D) sought to market a generic form of  Form IV Geneva (D) argued that Form IV was anticipated because it was sold in the United States more than one year before Abbott’s (P) patent filing date of October 18, 1994.  Byron Chemical Company, Inc. had made three sales of Form IV terazosin hydrochloride anhydrate in the United States more than one year before Abbott’s (P) patent filing date.  Byron itself had bought the substance at issue from two foreign manufacturers.  At the time of the Byron sales in the United States, the parties did not know the identity of the particular form with which they were dealing.  It was not until after the sales were made that samples were tested and it was determined that Form IV had been sold. 

3.     Secret Uses

i)       A third party’s secret, commercial use of a process is not “public use” under §102(b) W.L. Gore & Associates v. Garlock, Inc. (Fed. Cir. 1983)

A)    Entire difference is wrapped up by what efforts did the other person take to conceal.  Policy against inventor’s stretching their invention time comes into effect.

C.     Patents, Printed Publications, & In This Country §102(a) & §102(b)

1.     Patented

i)      Any invention is patented at the time the sovereign bestows a formal grant of legal rights to the applicant.

ii)     A German thing is a patent with in the meaning of §102(a) and may therefore qualify as prior art for the purposes of raising the statutory bar to a patent claim In Re Carlson (Fed. Cir. 1992)

2.     Printed Publication

i)      Def:  Any document no matter where located, look at public accessiblity

ii)     Non Traditional Publication

A)    Factors:

1)    Length of time displayed

2)    Expertise of target audience

3)    Likelihood that it would be copied

4)    Ease of copying

iii)    Public accessibility is the key issue in determining whether a reference constitutes a printed publication. In Re Hall (Fed. Cir. 1986)

A)    Magna carta qualifies as a printed publication (it is a 102 piece of art-however does not disclose anything-everything in every library that is properly indexed is a 102 reference…the question is what does it disclose?

B)    The issue is not whether it has been accessed, it is whether there is accessibility, doesn’t matter if nobody has looked at it.

C)    If it is not indexed, does not make it 102-then have to look at what other steps there are that a person would take to access it.  Just need accessibility.

D)    Soon there will be a case that is not a hardcopy

iv)    In re Carol F. Klopfenstein and John L. Brent, Jr. (Fed. Cir. 2004)

A)    Others in the box 102(a)2 the inventor can’t publish the invention before he has invented it  It is indefinite as to who it is in the statute.

3.     In this Country

i)      Claims are considered anticipated and thus patentable if the subject matter has been described in a printed publication and is in the possession of the public such that the invention could be created more than one year prior to the filing date of the present application.Ex Parte Thomson (PTO 1992)

D.    Abandonment §102(c)

1.     Section 102(c) he has abandoned the invention, i.e. surrendered to the public (donation)

i)      Has to be overt and clear


A.     Prior Invention under §102(a)

1.     Requires some form of modest public accessibility to the first inventor’s invention before the second inventor’s application is denied. (Harmonize §102(a) with §102(b))

2.     If the first inventor of a machine obtains a patent, a second inventor, regardless of his lack of awareness of the first invention, cannot then obtain a patent on the machine Woodcock v. Parker (1813)

i)      First in time rewards the person who invents it first. Different than rest of the world who is first to file.

3.     An inventor who strictly conceals the operation and composition of his machine while operating it commercially cannot be a “first inventor” Gillman v. Stern (2nd Cir. 1940)

i)      Not prior art because was kept very secret and never let anybody know about it.  Could not use it as prior art against somebody who subsequently patents it because of the secrecy. The secret use does not trigger §102a

B.     The Elements of “Invention” under §102(g)

1.     Section 102(g) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or  before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

2.     The Rule of Priority

i)      Before the filing date the applicant has come up with the invention.  Under U.S. all you have to do is submit the application- no detail about prior activities.  Law requires the examiner to treat the filing date as the date of invention. (See 102(a) When….without additional evidence.  After the filing the patent examiner will come back to you and could reject it citing against the applicant under 102(a) based on reference X and 102(b) based on reference Y.Reference X: Journal article-look at publication date-look at authors.  Very often the date of reference X will be months or years before filing date.  If cited under 102(a) and it is two years before, then a fight is not going to work, because it will also be put under 102(b).  If it is 9 months before filing date (not a 102(b) because not more than a year before filing date) and then could say that it is not before “invention”..therefore it is not available as a reference…meaning that the presumption (made by law) that invention=filing date is wrong.  Use 1.131 to establish that the reference is not in fact before the date of invention. 

A)    37 C.F.R. §1.131 “Something is fixed in time and trying to predate it”

1)    Declaration to establish prior “invention”

i)      Reduction to practice prior to effective date of reference

(a)   2 types: working model that shows the invention works for its intended purpose (actual reduction to practice), and , filing of the patent application that sufficiently describes the invention (constructive reduction to practice)-show that you built the thing before the date of reference-file a declaration and supporting evidence (lab notebook)…don’t have to show the date you did it, just that it was prior to the date of the reference.  Can take out dates of the lab notebook. 

ii)     Conception prior to effective date of reference plus “diligence” from prior to effective date until applicants’ subsequent Reduction to Practice

(a)   Definite idea of the structure of the idea. 

B)    Shorthand way: §102(g)

1)    Figure out who is “Junior” and “Senior”

i)      “Senior” party has the earliest effective filing date

ii)     “Junior” party has later filing date and 2nd to reduce to practice

(a)   Burden to show prior conception(communicate to others, i.e. lab notebook) plus “diligence” from before other’s conception until “Junior” party’s reduction to practice.(Use additional papers)

(i)    If show 1st to conceive and show due diligence then could win. (don’t care about 1st reduction to practice’s diligence)

(ii)   ¦ →→→→→→→¦CRP

(iii)  ¦ →→→→→→¦ ARP

C)    →→→→¦→→→→→¦→→→→→→→ ¦→→→→→→→→→→→→

i)      Invention       Reference           Filing Date

3.     Conception/Diligence

i)      Conception: Mental act of invention, have a definite and permanent idea of the complete and operative invention as it is hereafter to be applied in practice.(Cannot be a work in progress)

ii)      Diligence: have to show continual and reasonable efforts towards reduction to practice)

iii)     Conception requires proof that the junior party knew the means of carrying out the conception and proof of an exact date of conception. Oka v. Youssefyeh (Fed. Cir. 1988)

A)    Had the idea but did not have the way to implement the idea.

4.     Reduction to Practice (Best proof of Invention for Priority)

i)      Does not require actual use, but reasonable showing that it will work to over the problem it addresses.

ii)     Two Types:

A)    Actual:  Working Model

B)    Constructive:  Filing patent application or drawing of invention

iii)    The standard to determine whether sufficient testing has occurred to show reduction to practice is a common sense assessment of whether the invention in fact solved the problem Scott v. Finney (Fed. Cir. 1994)

A)    Lesson in the flexibility of the standard of the reduction to practice.  Stringency of the test is completely dependent on the complexity of the invention.   Some inventions are so complex that you can’t even conceive of them until you reduce it to practice.

1)    Amgen, Inc. v. Chugai Pharmaceutical Co. (Fed. Cir. 1991)

5.     Corroboration

i)      Only have to corroborate inventor’s testimony

A)    Judge relationship between witness and inventor

B)    Interest of witness

C)    Credibility of witness

D)    Familiarity of the subject matter

E)    Length in time between invention and trial

ii)     Barbed Wire Cases (1898)

iii)    Uncorroborated oral testimony by interested parties concerning long-past events does not provide the clear and convincing evidence required to invalidate a patent on the grounds of prior knowledge and use.Woodland Trust v. Flowertree Nursery, Inc. (Fed. Cir. 1998)

C.     Derivation §102(f): Someone who merely learns of the invention is not entitled to patent the invention-even if the inventor freely discloses it and has no plans to patent it herself.  An applicant is not entitled to a patent if a fully operable conception of the invention is communicated to the applicant.





------------------------SECTION 103 Conditions for patentability; non-obvious subject matter---------------------------



A.     Section 103: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art (Mr. Phosita) to which said subject matter pertains.  Patentability shall not be negatived by the manner in which the invention was made

B.     General Info:

1.     Can combine prior art (§102) only that which comes from an analogous art (has to be within the field that the patented subject matter is applied)-

2.     Have to demonstrate a nexus between a secondary consideration and the invention. (Commercial success, copying, long felt need, praise and skepticism, unexpected results, prior failure of others)-has to be due to feature of product

C.     Steps: If New, Still not Patentable IF

1.     Differences between prior art and claim

2.     “Would have been obvious”

3.     To Mr. Phosita

4.     At the Time the Invention was Made

5.     Consider claim invention “as a whole”

D.    The Historical Standard of Invention

1.     A patent will not be held valid if it consists merely in improving an old device by substitution of materials better suited to the purpose of the device Hotchkiss v. Greenwood(1851)

2.     A patent will not be sustained if the patentee merely brings together segments of prior art, with no change in their respective function Great A & P Tea Co. v. Supermarket Equipment Corp. (1950)

E.     The Modern Standard of Nonobviousness

1.     The Triology

i)      Determination in the non-obviousness of a claimed invention as to a prior art requires a case-by-case analysis of the scope and content of the prior art, the differences between the prior art and claims at issue, and the level of ordinary skill in the pertinent art. Graham v. John Deere Co.(1966)

ii)     Known disadvantages in old devices that would naturally discourage the search for new inventions may be taken into account in determining obviousness United States v. Adams(1966)

2.     The Suggestion to Combine

i)      In order to make a prima facie case of obviousness, motivation on behalf of one skilled in the art to combine references must be demonstrated.  A lofty level of skill alone does not provide the necessary motivation to combine references. In Re Rouffet (1998)

3.     The Objective Tests

i)      Objective evidence such as commercial success, failure of others, long-felt need and unexpected results must be considered before reaching a conclusion on obviousness Hbyritech Inc. v. Monoclonal Antibodies Inc.

F.     Obviousness in Chemistry and Biotechnology


       Predictable                                                    Unpredictable                                                                                     

      ¦---------------------------------------------------------------------------- ¦                   

1.     Prior Art Must Show Little(Chemistry)                     Prior Art Must Show More (Biotechnology)

2.     Composition Claims

i)      A prima facie case of obviousness due to structural similarity of compounds can be overcome by showing a difference in the compound’s properties.  In Re Papesch (CCPA 1963) Papesch sought a patent on a compound that was admittedly structurally obvious in light of an already patented compound.  It differed only that Papesch had three ethyl groups while the prior art had three methyl groups.  However, the tri-ethyl compound had unexpectedly anti-inflammatory properties while the prior art had no usefulness in this area.  COURT; In patent law, a compound and its properties are one and the same thing.  The patentability of the thing does not depend on the similarity of its formula to patented compound, but instead relies on the similarity of the two compounds.  An assumed similarity based on a comparison of formulae must give way to evidence showing the assumption to be incorrect.  NOTE: This case marked a turning point where one could rebut a finding of structural obviousness and obtain a patent on the compound itself.

3.     Balancing New and Old Uses

i)      A prima facie case of obviousness does not require both structural similarity and a suggestion in or expectation from the prior art that the claimed compound will have the same or a similar utility as the one newly discovered by the applicant. In Re Dillon (Fed. Cir. 1990) Dillon sought a patent on tetra-orthoesters, useful as a fuel additive to reduce soot emissions.  These compositions were structurally obvious from the already used tri-orthoesters, but were used to gain the added benefit of dewatering.  The examiner and the PTO board rejected Dillion’s application as obvious.  A panel of the Fed. Cir. reversed, then granted a petition for a hearing en banc.  COURT: It is not the law that if an applicant asserts a use not known to be possessed by the prior art, a prima facie case cannot then be established.  Properties are relevant to establishing a prima facie case, but the prior art need not suggest or disclose the properties of the newly discovered compound to establish a prima facie case of obviousness.  In this case while there is no reference to the dewatering, there is a sufficient relationship(structural similarites) between the two compounds in the fuel oil art to assume they would have similar properties, including water scavenging and to provide motivation to make such new compounds.  Dillon failed to show her compound had different properties than the prior art or that hers performed to an unexpectedly higher degree. See In Re Albrecht (CCPA 1975) “Discovery that a claimed composition possesses a property not disclosed for the prior art subject matter, does not by itself defeat a prima facie case Shetty   If the amount of compound required to achieve the claimed composition is different from the prior art and critical to the use of the claimed composition then the appellant could succeed. See In Re Reni (CCPA 1970)  That is not the case here. NOTE:  Distinguished from Papesch because that case did not deal with the requirements of establishing a prima facie case but whether the examiner had to consider the properties of an invention at all.

A)    Methods of Making

1)    If the prior art supplies no operative method known or obvious to a worker skilled in the art to make the claimed compound, this situation would compel a conclusion of nonobviousness. In re Hoeksema (CCPA 1968)

B)    New Uses(Secondary Uses)

1)    If a chemist invents a new chemical compound that is prima facie obvious, should this inventor be able to overcome the obviousness problem by arguing that he discovered a new use for his compound that is far more important than the one known in the art?  Public policy would support a yes conclusion to provide an incentive to discover new uses.  A No conclusion would rely on the method of use patent avenue.

4.     Obviousness for Biotechnology (use of living organisms or their products to modify human health and the human environment)

i)      When a chemical entity is structurally new, a prima facie case of obviousness requires that the teaching of the prior art suggest the claimed compounds to a person of ordinary skill in the art In Re Deuel (Fed. 1995) biotech is highly unpredictable so the prior art has to suggest the claimed compound and enable its creation. Higher standard


A.     Section 103 Art in Terms of §102

1.     Section 102(a) Art

i)      A reference does not constitute prior art under §103 if the applicant possessed an obvious variation of the reference prior to the third party In Re Stryker (1971) Stryker attempted to remove a prior art reference by submitting an affidavit by a representative revealing his invention to have occurred before the prior art. COURT: when using an affidavit to remove a references, the affidavit need not completely describe the invention.  The differences between the affidavit and application were so small as to render the claims obvious over the reference. QUESTION:

2.     Prior Art Under Sections 102(b) and 102(d)

i)      A patent must be denied where an applicant undertakes, under Rule 131, to swear back of a reference having an effective date more than a year before his filing date if the reference contains enough disclosure to make his invention obvious In Re Foster

3.     §102(f) Art

i)      Subject matter derived from another party is not only unpatentable under §102(f) but it may be combined with other prior art to render another invention unpatentable for obviousness under §103. OddzOn Products, Inc. v. Just Toys, Inc.

B.     Analogous Arts

1.     A prior art is analogous if it is in the same field of endeavor and, if not, if it is still reasonably pertinent to the particular problem with which the inventor is involved. In Re Clay (Fed. Cir. 1992)

2.     §103 presumes full knowledge by the inventor of the prior art in his field of endeavor In Re Winslow (P.A. 1966)



-----------------------------------------SECTION 112 SPECIFICATION (Enablement)----------------------------------------------


A.     Section 112: SPECIFICATION

1.     ¶1 The specification shall contain: 1) a written description (objective) of the invention 2) and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art (objective) to which it pertains, or with which it is most nearly connect, to make and use the same, and 3) shall set forth the best mode (subjective) contemplated by the inventor of carrying out his invention.The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

2.     ¶2 The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

3.     ¶6 An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

B.     Enablement-How to Make (Requirement #2)

1.     Policy: Bars inoperable invention, prohibits overly broad claims, has to be able to be made by Mr. Phosita

2.     A patent application must have adequate disclosure sufficient for one skilled in the art to make an operable device Gould v. Hellwarth(1973) Gould and Hellwarth applied for patents on a Q-switch laser.  Gould filed on April 6th, 1959, and Hellwarth filed on August 1, 1961.  However, Hellwarth claimed Gould’s patent was invalid under 35 U.S.C. §112, which requires the application to provide adequate instructions for a person skilled in the field to make an operable device.  Gould’s application sufficiently described a Q-switch, but did not contain instructions on how to construct an operative laser.  Part of an interference claim §102(g). Masers, using microwaves instead of light waves, were well known, and it was understood that lasers were theoretically possible. However, a working laser was not developed until 1960 at the earliest.  The Board ordered a priority hearing, and Hellwarth won.  Gould appealed.  COURT:  Several expert witnesses testified that the application did not disclose a complete set of parameters for a laser and failed to reversal the knowledge necessary to produce an operable laser.  Gould said that the necessary instructions were in the section suggesting the use of sodium and mercury, however as of 1968 there were no lasers using that technology.  ANALYSIS: Court looked at the fact that nobody could make a laser for a significant amount of time after Gould’s patent filing because the disclosure did not adequately describe how to make the laser without significant experimentation.

i)      Genentech, Inc. v. Novo Nordisk (Fed. Cir. 1997)

3.     To be enabling under §112, a patent must contain a description that enables one skilled in the art to make and use the claimed invention.  That some experimentation (adjustments and corrections) is necessary is allowable as long as it is something which would naturally occur to a worker skilled in the art and is not unduly extensive.  Atlas Powder Co. v. E.I. du Pont De Nemours & Co.(Fed. 1984) Atlas (P) developed the ‘978 patent for a blasting agent.  When DuPont (D) began to market a similar agent, Atlas (P) used Du Pont for infringement.  At trial, Du Pont contended that Atlas’s patent was invalid because the patent disclosure did not enable one of ordinary skill in the art to make and use the claimed invention pursuant to the dictates of 35 U.S.C. §112. Dupont claimed that out of the 300 experiments performed by Atlas before filing 40% of those failed.  The district court said that the listing of an experiment as “failed”, “unsatisfactory” was misleading.  Experiments were designated as failures because not optimal under all condition, however optimal conditions are not necessary for a valid patent.  The court ruled for Atlas on the grounds that the patent was different enough from the prior art and provided a solution to a detonation problem which others had not considered such that the patent was non-obvious.  COURT:  That some experimentation is necessary does not preclude enablement; the amount of experimentation, however, must not be unduly extensive.  Determining enablement is a question of law.  DuPont argues that Atlas included ingredients which a person would have to select from and would result in excessive experimentation.  They should only have included the two that worked, however the court held that Du Pont had not proved that the others were inoperable.  However, the district court held that it would have been impossible for Atlas to list all operable emulsions and exclude the inoperable ones.  Also, such a list would be unnecessary because one skilled in the art would know how to select a salt and fuel and then apply “Bancroft’s Rule” which is a “basic principle of emulsion chemistry” to determine the proper emulsifier.  It is not the function of the claims to specifically exclude possible inoperative substances. Also “the use of prophetic examples do not automatically make a patent non-enabling.  The person challenging the validity has the burden to show that “the prophetic examples together with other parts of the specification are not enabling.” Pg 452 ANALYSIS: A specification will be sufficient even though a skilled person might have to make several trials or experiments before successfully making and using the invention.  However, a skilled person is only required to use ordinary skill in making the invention.  It is sufficient if the invention can be made operative by adjustments or corrections, which would naturally occur to a worker skilled in the art.   POLICY:  The court does not require patent applicants to exclude items that are not operable in that particular subject matter because at the end of the day who wants something that is not going to work in the subject matter under which it is claimed.

4.     An application containing a general description of processes, the subject matter, and methods of use, with only one working example, may be rejected as unsupported by an enabling disclosure (in unreliable fields). In Re Wright(Fed. 1993) Wright applied for patents on the processes of producing live, non-pathogenic vaccines against pathogenic RNA viruses, the vaccines produced by these processes, and methods of using these vaccines.  His application contained a general description of the processes, vaccines, and methods of use, but only a single working example.  The example, fully described in the application, concerned a vaccine that confers immunity in chickens against the RNA tumor virus known as PrASV.  The application contained claims in many degrees, from the specific PrASV vaccine to a general non-pathogenic vaccine for an RNA virus.   The examiner rejected the application because it only provided one working example that did not provide sufficient likelihood of creating other working examples without undue experimentation, or that these would be useful in the design of viral vaccines.   Furthermore, the methods described in Wright’s application were so undeveloped in 1983, the time of filing, as to not enable the design and production of vaccines against any and all RNA viruses. Also noted that there was an inability of the scientific community to develop an effective AIDS virus vaccine.   COURT: The burden was shifted to Wright to provide persuasive arguments with sufficient evidence.  The general description and single example in the application did nothing more in Feb of 1983 than invite experimentation to determine whether other vaccines having in vivo immunoprotective activity could be constructed for other RNA viruses.  At that date the “physiological activity of RNA viruses was sufficiently unpredictable that Wright’s success in developing his specific avian recombinant virus vaccine would not have led one of ordinary skill in the art to believe reasonable that all living organism could be immunized against infection by any pathogenic RNA virus by inoculating them with a live virus containing the antigenic code but not the pathogenic code of the RNA virus. There is no evidence that a skilled scientist could extrapolate that due to Wright’s success with one particular strain, there was a reasonable expectation of success for other avian strains or any other viral strains.   ANALYSIS:  This case reveals the tough balancing act that occurs when a single example is listed.  If a patent is drawn too narrowly, others could make simple changes to the example and circumvent the patent.  However, one that is broadly defined would provide a windfall to the inventor. 

i)      NOTE:  After the filing date of the application there were certain recombinant AIDS virus vaccines carrying SIV and HIV envelope genes have been produced which confer protective immunity in the animal models where they have been tested, and that these developments illustrate that the art is not so unpredictable as to require undue experimentation.  However, the Examiner noted that there was difficulty in making those few vaccines.

ii)     Making Sense of Antisense

A)    Enzo Biochem, Inc. V. Calgene Inc., (Fed Cir. 1999) Fed Cir. considered a claim that essentially covered the use of antisense technology in all types of cells-based on a disclosure that taught how to use antitsense technology with respect to three genes in one organism.  COURT:  Amount of direction presented and the number of working examples were very narrow.  Outside of the three genes, there was virtually no guidance, direction or working examples for practicing the invention in other types of cells.  “There must be sufficient disclosure, either through illustrative examples or terminology, to teach those of ordinary skill how to make and use the invention as broadly as it is claimed.” Pg. 461

B)    8 Factors to determine whether a disclosure requires “undue experimentation”

1)    The quantity of experimentation necessary(not undue)

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(working examples)

8)    The breadth of the claims

C.     Written Description-Proscription on New Matter (Requirement #1)

1.     Ways to Achieve: actual reduction to practice or words, drawings, sufficiently detailed formulas, or other way to convey information.  Such symbolic means may be impracticable to describe some inventions, especially biological method.

2.     Drawings may be sufficient to provide the written description of the invention. Vas-Cath Inc. v. Mahurkar(Fed. Cir.1991) Mahurkar’original application contained drawings of his catheter invention, and he later attempted to attach written descriptions.

i)      Timeline:

A)     3/8/82          8/9/82         10/1/84                         11/30/84

¦---------------¦--------------¦-------------------------¦---------------------                                        081 Design  CA issued  US utility filed 329   Design abandoned

B)    In order to file another application to claim the benefit (continuing) it has to be filed while the first one is alive and pending.

D.    Written Description”-Proscription Applied to Claims Without Priority Issues


Predictable                                                                   Unpredictable


Patent Application Must Show Less                              Patent Application Must Show More


1.     Claims for a DNA sequence will be considered invalid for failure to provide an adequate written description of the subject matter if a description of the DNA itself, which includes information pertaining to its relevant structure or physical characteristics, such as a sequence information indicating which nucleotides constitute human cDNA, is not included. Regents of the University of California v. Eli Lilly & Co. (Fed. Cir. 1997)(Judge Laurie) The UC sued Eli Lilly & Co.  for infringement.  Eli Lilly & Co. defended claiming that the patent was invalid because the specifications failed to provide an adequate written description of the subject matter.  COURT: The claims are invalid for failing to provide an adequate written description.  An adequate written description of a DNA requires more than a mere statement that it is part of the invention and reference to a potential method of isolating it; what is required is a description of the DNA itself.  The claimed microorganism in Claim 5 requires human insulin-encoding cDNA.  Example 6 provides only a general method for obtaining human cDNA.  It does not provide a written description of the cDNA encoding human insulin, which is necessary to provide a written description of the subject matter of Claim 5

i)      Enzo Biochem, Inc. v. Gen-Probe Inc. (Fed. Cir. 2002) Deposited the DNA in a DNA bank and therefore that was good enough to describe the DNA that was trying to be claimed.  Dissent:  (About UC v. Eli Lilly): 1997 for the first time, this court purported to apply WD as a general disclosure doctrine in the place of enablement, rather than as a priority doctrine.  A claim of vertebrate insulin cDNA scope far exceeds the patent’s enabling disclosures. (Need to have at least two examples) Rat insulin was the only thing the inventor had enabled.  Instead of invalidating under the test for enablement however, the court created a new doctrine for adequacy of disclosure, written description. Written description had never before been a free standing substitute for enablement.  Even accepting that WD can be isolated as a separate requirement from enablement in §112, the words “written description” hardly prescribe a standard that requires nucleotide-by-nucleotide disclosure.  Enablement would only have required the inventor in Lilly to have specifications that show one of skill in the art how to acquire that sequence on his or her own.  The written disclosure requirement in Lilly and in this case threatens to disrupt the patent system.  Lilly also prejudices those claims filed before it, because those inventors were not on notice of the Lilly written description requirement.  It also prejudices small inventors who do not have the wherewithal to process every new invention to extract its nucleotide sequence.


A.     Since the existence of a best mode of carrying out the invention is known only ot the inventor, actual disclosure is demanded, regardless of whether practicing that mode would be within the knowledge of one of ordinary skill in the art.  Disclosure, however, of every preference an inventor possesses as of the filing date is not required.  Thus, only preferred ways of carrying out of the invention need to be disclosed.  Precedent demonstrates that the best mode disclosures requirement only referrers to the invention define by the claims.

B.     Violations: 1) Failure to disclose subject matter not strictly within the bounds of claim, which involve either failure to disclose a preferred embodiment of the invention or else failure to disclose a preference that materially affected making or using the invention. 

C.     To fulfill the best mode requirement, only preferences that are reflected in a preferred embodiment or that relate to making or using the invention and have a material effect on the properties of the claimed invention must be disclosed. Bayer AG v. Schein Pharmaceuticals, Inc. (Fed. Cir. 2002) Cipro was developed by Bayer by creating the Klauke compound combining 6-FQA which was converted into Cipro.  Schein filed applications seeking to make generic versions of Cipro.  Bayer sued Schein for patent infringement of its patent for ciprofloxacin.  Schein conceded infringement but argued that the patent was invalid because Bayer’s patent application didn’t disclose the best mode making ciproflaxin.  ISSUE: Does the patent application set forth the best mode contemplated by Bayer for making ciproflaxin? COURT:  Yes, the application did disclose the best mode contemplated by Bayer for carrying out its invention, ciproflaxin.  Only preferences that are reflected in a preferred embodiment or that relate to making or using the invention and have a material effect on the properties of the claimed invention must be disclosed.

1.     A+B=C  Only claimed C-doesn’t matter about how he got to C.  TEST: 1) Must determine whether at the time of filing the application the inventor possessed a best mode for practicing the invention(Subjective-inventor’s state of mind) 2) If the inventor subjectively considered one mode to be preferred over all others, then whether the inventor’s disclosure is adequate to enable one of ordinary skill in the art to practice the best mode of the invention.

D.    Avoid:

1.     Take the invention away from inventor and give to another person to perfect thereby allowing the inventor to claim ignorance about the “actual” best mode


A.     Patent Claim Format

1.     Elemental Claim Structure

i)      The Preamble

A)    Generally identifies the invention

B)    If the preamble phrase does not 1) define the invention 2) recites steps as important to the specification 3) distinguish the invention from the prior art, then the preamble does not limit the claim’s scope. Catalina Marketing International v., Inc. (Fed. Cir. 2002)

ii)     The Transition

A)    Vocabulary:

1)    “Comprising” (open ended to additional elements)

2)    “Consisting of” (activity anything beyond the body there is avoidance of claim)

i)      Narrow, might be important commercially

3)    “Consisting essentially of”

i)      Would describe a device or process containing insubstantial elements in addition to the listed elements.

ii)     Hard to keep impurities out of the chemicals which doesn’t effect the ability of the chemicals to fulfill their purpose.  Don’t want somebody to add something useless to the compound to avoid the claim

B)    Example: Thus a device with elements A,B, and C could infringe a claim reading “comprising A and B” but not a claim reading “consisting of A and B”

iii)    The Body

B.     Claim Definiteness

1.     Claim Definiteness

i)      A claim is valid under 35 U.S.C. §112 if those skilled in the art would understand what is claimed when the claim is read in light of the specification. Orthokinetics, Inc. V. Safety Travel Chairs, Inc (Fed. Cir. 1986).



A.     §172: “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefore, infringes the patent.

B.     General Info:

1.     Types:

i)      Direct Infringement

A)    For importing, selling, offering to sell or using a product made through a process protected by a U.S. process patent

B)    For manufacturing or selling certain components of a patented invention to be assembled abroad.

ii)     Indirect Infringement

A)    Active Infringement (inducing or assisting another to infringe)

1)    when components selling have multiple uses, requires intent and knowledge that one of the uses if infringing

B)    Contributory infringement

1)    When the only legitimate use is the infringing one

2.     Limits: *Defenses

i)      For Sale Doctrine:  If you sell the product then the buyer has the rights to the product sold.

ii)     Repair v. Reconstruction:  Can repair but not reconstruct (infringes on the patentees right to “make” the product

iii)    Experimentation Use:  May only do experimentation for theoretical use.

3.     Determination of patent infringement is a two-step process: first, determine the meaning of the claims; secondly, read the claims onto the accused structures Autogiro Co. of America v. United States (1967) COURT: The claims provide the formal patent definition, and it is to these that one must look when determining infringement.  When conducting the first step, determining the meaning of the claims, one should recognize that they are best construed in connection with other parts of the patent instrument.  Three parts of the patent should be utilized in interpreting claims: the specification, the drawings, and the file wrapper.  The second half of the process is reading the claims against the accused infringement.  A literal reading on the accused structure is not necessary, for that would only reward clever writers.  If the structure performs substantially the same function in substantially the same way and for substantially the same purpose as the claims set forth, infringement occurs.  This is the doctrine of equivalence.  Does not require intent.

C.     Literal Infringement

1.     For literal infringement each limitation of the claim must be met by the accused device exactly, any deviation from the claim precluding a finding of infringement Lantech Inc. v. Keip Machine Co. (Fed. Cir. 1994)   

2.     Interpretation and Construction

i)      The interpretation and construction of patent claims is a matter of law exclusively for the court Markman and Positek, Inc. v. Westview Instruments, Inc. and Althon Enterprises Inc. (Fed. Cir. 1995) Markman and Positek, Inc. Westview and Athlon had similar systems to track clothing through a dry cleaning process.  Markman had a patent on its system and brought a patent-infringement suit against Westview and Athlon.  In its answers to general interrogatories, the jury returned a verdict of infringement on two claims.  The district court set aside the jury’s verdict on a motion for Judgement as a Matter of Law on the grounds that the jury’s verdict was incompatible with proper claim construction.  Markman appealed, arguing that the jury’s implied construction of the claims were correct, and thus its verdict should be reinstated. COURT:  Infringement claims have two steps(determining meaning and reading the claims).  The first step(claim construction) is at issue here.  Notwithstanding some inconsistent statements by this court as to whether this is a legal or factual issue, the U.S. Supreme Court has repeatedly held that the construction of a patent claim is a matter of law exclusively for the court.  The reason is that the construction of written evidence is exclusively the responsibility of the judge, and the patent is a fully integrated written instrument.  In this case, the district court property construed the claim and properly ruled on the JMOL motion.  ANALYSIS: 7TH Amendment guarantees the right to a jury trial so patent cases can come before a jury (however much the lawyer might want to avoid it)  The court in this case wanted to “improve patent law administration by removing uncertainties (jury results) from trials.”  Therefore they “declared claim interpretation a question of law exclusively for the judge”, hence a trial is not necessary to get an early claim interpretation, which then in turn promotes early settlement by clarifying the parties legal position.  However, if the Fed Cir overturns a significant portion of district court claim interpretation it will make the district courts a mockery and promote trial strategy to get an appeal.

3.     Patentee’s Commercial Embodiment

i)      Section 271 states that the infringement inquiry compares the accused product or process to the “patented invention” i.e. the claims.  Zenith Labs v. Bristol-Myers Squibb Co. (Fed Cir. 1994) Therefore the patentee’s commercial products are not relevant to the infringement inquiry.

4.     Extrinsic Evidence

i)      Extrinsic evidence may be used only to help the court come to the proper understanding of the claims; it may not be used to vary or contradict the claim language.  Nor may it contradict the import of other parts of the specification.  Vitronics Corp. v. Conceptronic, Inc. (Fed. Cir. 1996)  “Where the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight.

ii)     Limit: Can only be used if intrinsic evidence leaves the patent unclear Phillips (2005)

D.    The Doctrine of Equivalents (“Forgiveness Doctrine”) or Non-Textual Infringement (Jury Question)

1.     General Info: Prevents a defendant from avoiding liability through insubstantial changes that take her device or process outside the literal language of the patent claims. 

2.     Requirements:

i)      Must be determined that the defendant’s device or process contains an element that corresponds(either identical or equivalent) to each element described in the patent claim.

A)     Equivalency is an objective determination made on an element-by-element basis from the perspective of Mr. Phosita as of the time of the infringement.  Look at: 1) Whether the defendant’s differing element performs substantially the same function in substantially the same way to obtain the same result as the claimed element 2) Whether the difference between the defendant’s element and the claimed elements is “insubstantial”.

B)    In doing the inquiries look at: 1) Whether Mr. Phosita would have know the differing elements were interchangeable at the time of the infringement 2) Whether finding the defendant’s invention equivalent, and thus infringing, would give the patentee rights that she would not have been able to obtain initially, through broader claim language 3) how great a departure from the patentee’s invention is from prior art.

3.     The doctrine of equivalents is applied to mechanical or chemical equivalents in compositions or devices and offers protection against a device, process, or composition which performs substantially the same function to obtain substantially the same result . Graver Tank Co. v. Linde Air Prod. Co. (1950)(Jackson) Linde obtained an improvement patent on an electric welding composition or flux, its claims specifying essentially a combination of alkaline earth metal silicate and calcium fluoride.  Graver began production of its own composition that substituted silicates of manganese, not an alkaline earth metal, for the silicates of magnesium, which is an alkaline earth metal, used by Linde.  Although Linde, which charged Graver with infringement, had mentioned manganese in its specifications, it was not within the specific claims of the patent.  Nevertheless, the courts found there was infringement, and Graver appealed. COURT: The doctrine of equivalent applies to chemical equivalents the same way it applies where there is equivalence in mechanical components.  It offers protection to the patentee against a device, process, or composition which performs substantially the same function to obtain substantially the same result.  While the court looked at disclosures of prior art, purpose of the invention, the expert testimony in this case(chemists familiar with the process) was the basis on which the courts below found that silicates of manganese, used by Graver, were the “equivalent” of the silicates of magnesium used in Linde’s patented composition under the doctrine of equivalents.  Thus, the infringement finding must stand. DISSENT: (Black) the patent claims specified alkaline earth metals and the silicates are not alkaline metals.  DISSENT: (Douglas) Extends the patent to cover a composition which could not be patented, inasmuch as manganese silicate had been covered by prior non-expired patents.  ANALYSIS: The doctrine of equivalents can also work against a patentee.  Example: When the infringer’s device may fall within the literal words of the claims but be so far changed in principle from the patented article that it performs the same or similar function in a substantially differed way.  In such a case, the doctrine can be applied to defeat an infringement claim. (Unique Case)

i)      How to avoid the litigation: List in dependent claims every working example from the patent.  $20 a piece.

4.     The determination of equivalence should be applied as an objective injury on each individual element of the claim, rather than the process as a wholeWarner-Jenkinson v. Hilton Davis Chemical Co. (1997)  Hilton-Davis develops ultrafiltration process, added limitation of at a pH of approximately  6.0-9.0, to avoid prior art at above 9.0. WJ  develops process with pH of 5.0.  COURT:  Don’t know why they brought it from 3.0 to 6.0, and if there is no reason for the amendment it is then presumed that by amending the claim to move it from 3.0-6.0 it was to overcome a barrier to patentability.  .  Question about whether a 112 amendment is about patentability in the federal circuit. In this case anything in Title 35 is related to patentable New test:  Insubstantial differences (compare on an element by element basis)  If it was to overcome a barrier to patentability then Prosecution History Estoppel applies-Gatekeeper

E.     Limitations on the Doctrine of Equivalents

1.     “The All Elements Rule”-Gatekeeper Function (Have to apply DOE element by element and ask, is there an equivalent for this element?)

i)      For a claim to fail for being anticipated by the prior art, the prior art claim must disclose all the limitations in the specification of the newer claim Corning Glass Works V. Sumitomo Electric U.S.A., Inc. (Fed. Cir. 1989) All elements rule run amok

2.     Prosecution History Estoppel -Gatekeeper Function

i)      Requires that the scope of the patent claims be interpreted in light of what happened in the application process in the P.T.O.  Applies when an applicant makes an amendment that narrows a claim and makes that amendment to satisfy any requirement of patentability.  Such an amendment might narrow a claim to avoid prior art or so that the claim agrees with the written description of the invention.  If it is made than the patentee is estopped from using the Doctrine of Equivalence for that claim.  REASON:  Is that the patentee narrowed the claim to get the patent and therefore should not be allowed to use the doctrine of equivalence to broaden the scope of the claim.

ii)     Limitation on the Prosecution History Estoppel 1) the equivalent may have been unforeseeable at the time of the application 2) the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; or 3) there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question.

iii)    A narrowing amendment made to satisfy any requirement of the Patent Act may give rise to estoppel.  Estoppel, does not, however, bar the patentee from asserting infringement against any equivalent in the narrowed element.  The patentee bears the burden of showing that the amendment does not surrender the particular equivalent in question Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd  “narrowing amendment made to satisfy any requirement of the Patent Act may give rise to an estoppel.” Logically it has to be narrowed because the claim is going to be smaller.  If there is something that would fit in the original claim but not the present claim then it is narrowed.  Why would there be an amendment not related to patentability?  Look at §121 Divisional applications “If you make an amendment going to be presumed to be a general disclaimer of the territory between the original claim and the amended claim applications.  However you did have a limited word choices at your disposal and you are describing some aspect of the element of the claim and because you picked a word that might alter the claim further than avoiding the prior art the court will still have sympathy”

iv)    Earthbased Computer Example: U.S. infringed but they said that they had a satellite based computer, not an earth based computer.   After 18 rounds of litigation and there is liability for the U.S. for infringing.  This is the template for the being unforeseeable at the time.

3.      “Disclosed-But-Not-Claimed”- Gatekeeper Function

i)      A patentee cannot apply the doctrine of equivalents to cover unclaimed subject matter disclosed in the specification Johnson and Johnston Associates Inc., v. R.E. Service Co., Inc. (Fed. Cir. 2002)  Compare to Graver Tank.  Only claim was for that it had to be aluminium.  Graver Tank did not specifically claim Mn but had a claim that embraced it.  Can you say that it was disclosed and not claimed in an invalid claim?  Do you put all the examples in for §112 paragraph 1.  Don’t rely on the doctrine of equivalents.  File a continuation, claim broadly, add dependent claims…don’t use the DOE for the first resource.

4.     Prior Art Limitations

i)      If the scope of the equivalency necessary to find infringement would cover prior art, there can be no infringement Wilson Sporting Goods Co. v. David Geoffrey & Associates (Fed. Cir. 1990)  Can’t use the doctrine of equivalent to cover prior art  can’t be used to cover what can’t be covered under the statute.  Patentability played into infringement.  If it would not have been patentable then the DOE would not have been applicabl

F.     Experimental Use

1.     The sole question under §271(e)(1) is whether the actual uses solely reasonably relate to the development and submission of information to the FDA Intermedics, Inc. v. Ventritex, Inc. (Fed. Cir. 1993)

G.    Indirect Infringment (Need Intent)

1.     Intent:In order to find active inducement, the court must find intent to cause acts that would result in infringement Hewlett Packard Co. v. Bausch & Lomb Inc.

2.     Reconstruction: For used, refurbished, single-use cameras whose first sale was in the United States with a patentee’s authorization, and for which the alleged violators activities were limited to the steps of removing the cardboard cover, cutting open the plastic casing, inserting new film and a container to receive the film, replacing the winding wheel for certain cameras, replacing the battery for flash cameras, resetting the counter, resealing the outer case, and adding a new cardboard cover, the totality of these procedures are permissible repair and not prohibited reconstruction Jazz Photo Corp. v. US Int’ Trade Commission.(Fed. Cir. 2001)


XIII.      PROSECUTION (Ex Parte-Non Adversarial)

A.     Overview of Patent Prosecution

1.     Prosecution in the United States

i)      Non provisional: §111(a)-requires oath by applicant (§115), time limit starts when this is filed.  Have to include one claim and only get two office actions.

ii)     Provisional: §111(b)-does not require a claim, 1 yr. time limit (have to file non provisional-patent time limit starts when nonp is filed-gets the prior art date of the provisional), no examination

iii)    35 U.S.C. §120 Benefit of earlier filing date in the United States “application following §112 or §363..shall have the same effect as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier application.”

A)    Continuation Application: after two office actions, want more prosecution.  Filed during the pendency of another application (parent).  Requirements: 1) Claims the subject matter claimed in an earlier application, some variation but cannot add, 2) names at least one inventor from the parent application, 3) filed before abandonment/termination or patenting of parent occurs,4) consist of same written description. Get the prior art date and filing date from parent date.

B)    CIP Application:  A continuing application containing a portion or all of the disclosure of an earlier application together with added matter not present in that earlier application. Use it to add improvements.  Patent term is from the date of the parent.  However, prior art is subject to the type of the patent.

1)    Non Modified: Get Parent filing date for prior art

2)    Modified: Gets CIP filing date for prior art

iv)    Restriction Requirements:

A)    35 U.S.C. §121 Divisional Applications “If two or more independent and distinct inventions are claimed in one application, the Commissioner may require the application to be restricted to one of the inventions.”-POLICY: Limits size of patent instrument and deters filing several inventions within one claim

1)    Divisional Application: §120 Carved out of an earlier application (parent) which disclosed and claimed more than one independent invention, the result being that the divisional application claims only one or more, but not all, of the independent inventions of the earlier application.

i)      Get parent filing date for term and prior art.

2.     Continuing Application Practice

i)      A continuing application and the application on which it is based are considered part of the same transaction constituting one continuous application Transco Products, Inc. v. Performance Contracting, Inc. (Fed Cir. 1994)

3.     U.S. Patent Appeal and Petition Practice

4.     Publications of Pending Applications

i)      Paris Convention-“Priority Right”-allows patent applicants to benefit from an earlier filing date in a foreign country.  So long as an inventor files abroad within one year of his first filing and complies with certain formalities, his subsequent foreign filings will be treated as if they were made as of the date of his initial filings.

ii)     American Inventors Protection Act:  Requires publication to prevent similar research while the applicant is pending, and provide notice for possible litigation when patent issues.

iii)    Domestic Publication of Foreign Filed Patent Applications Act:  Publish patents 18 months from the date of filing, except where the inventor represents that he will not seek patent protection abroad, then no filing until patent issues.

A)    Provision for more patent protection: allowing applicants to “submit a redacted copy of the application filed in the Patent and Trademark Office eliminating any part of description of the invention in such application that is not also contained in any of the corresponding application filed in a foreign country.”

5.     Patent Term

i)      §154 Contents

6.     Patent Prosecution Abroad

B.     Inventorship §102(f)

1.     Patent application must always be made by the inventor.

2.     Joint Inventorship: 

i)      Enjoys presumption of ownership in the entire patent

ii)     Don’t have to contribute to the all claims

iii)    Don’t have to work together on a claim

iv)    Can license the whole patent because gets a pro rata share on the patent.

3.     Testimony corroborated by sketches is sufficient to show clearly and convincingly co-invention.  A joint inventor as to even one claim enjoys a presumption of ownership in the entire patent.  Ethicon, Inc. v. United States Surgical Corp. (Fed. Cir. 1998)  

i)      A patented invention may be the work of two or more  joint inventors §116.  Because “conception is the touchstone of inventorship” each joint inventor must generally contribute to the conception of the invention.

A)    Conception: “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice

1)    Definite and permanent idea..(add from book)

4.     Joint inventorship requires the alleged joint inventor to conceive of some important element or claim that is claimed in the patent and have some conceptual role in at least an important or necessary element or claim Hess v. Advanced Cardiovascular Systems, Inc. (Fed. Cir. 1997)

i)      Defense: Terminal disclaimer agree that later patent will expire at the same time as the previous patent. Therefore all the patents will expire at the same time.

C.     Inequitable Conduct (Discretion of Trial Court and therefore is reviewed under an Abuse of Discretion Standard)

1.     General Info:

i)      Def:  Inequitable conduct resides in the failure to disclose material information, or submission of false material information, with an intent to deceive, and those two elements, materiality and intent, must be proven by clear and convincing evidence.”

ii)     Inequitable Conduct Suit:  Not adversarial, ex parte suit. 

iii)    Requirements:  duty of disclosure, candor, good faith (inventor (each named), each prosecuting attorney or patent agent, or anybody that was associated)

iv)    Where “Inequitable Conduct” might come up:  Small entity claim, reissue application, discipline proceedings.

2.     The Duty of Disclosure (37 C.F.R. §1.56, 1.97, 1.98)-Courts not bound by

i)      37 C.F.R. §1.56 Duty to Disclose Information material to Patentabilty

A)    Duty to disclose all information material to patentability.  Information material to the patentability of a claim that is canceled or withdrawn from consideration need not be submitted if the information is not material to the patentability of any claim remaining under consideration in the application.

B)     No duty to submit non material information or material that is related to cancelled claims.

C)    Satisfied if:  If all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §1.97 and §1.98.  The duty is also satisfied if the Office finds it instead of the patent applicant. 

ii)     Inequitable Conduct

A)    Requirements:

1)    Has to be material:

i)      Material if: Not cumulative to information already of record (PHOSITA) and

(a)   Establishes a  prima facie patent unpatentable or

(b)   Inconsistent or refutes a position the application takes in:

(i)    Opposing an argument of unpatentablity or

(ii)   Asserting an argument of patentability

2)    With a certain intent

3)    Somewhat subjective, take into account all evidence.

B)    Standard of Review

1)    Committed to the discretion of the court and is reviewed by this court under an abuse of discretion standard.

C)    Effect of Inequitable Conduct

1)    Entire patent rendered unenforceable.

iii)    §1.97 Filing of information disclosure statement


iv)    §1.98 Content of information disclosure statement

3.     Intent

i)      Gross negligence does not automatically constitute inequitable conduct (look for pattern of withholding, or mischaracterizing, circumstances surrounding event, person’s conduct on the whole)

A)    Failure to withdraw a patent application when there is a suit for inequitable conduct does not constitute intent to deceive.  Kingsdown Medical Consultants, LTD v. Hollister Inc.  (1988) Kingsdown erroneously included a claim in its continuation application that had been rejected in the initial patent application.  In filing its claim 43, it copied the “wrong” version of claim 50 which lead to the incorrect listing of claim 43 as corresponding to the allowed claim 50 and to incorporation of claim 43 as claim 9 in the patent.  The claim was proper subject matter but had been rejected as indefinite.  Kingsdown included the claim in the application after viewing the Hollister device in order to prevent him from marketing the product.  Hollister claimed inequitable conduct.  Kingsdown’s attorney became aware of the mistake when Hollister pointed it out.  Experts on each side testified that there was no evidence of deceptive intent.  The district court found the patent unenforceable based on Kingsdown’s inequitable conduct.  Kingsdown appealed. COURT:  The district court’s finding of intent must be upheld unless it is clearly erroneous.  The district court determined that Kingsdown intended to deceive based on the inclusion of an invalid claim in the continuation application.  Although the inclusion of the claim constitutes negligence, it does not rise to the level of gross negligence necessary to find intent to deceive.  There is nothing illegal in amending an application to exclude a competitor’s product. Nor is it in any matter improper to amend or insert claims intended to cover a competitor’s product the applicant’s attorney has learned about during the prosecution of a patent application.  Hollister’s contention that Kingsdown’s failure to withdraw the application constituted bade faith is erroneous.  The court should no promulgate a rule dissuading patentees form defending against claims, and the courts should not adopt a rule encouraging inequitable conducts charges, as there are already far too many of these claims.

ii)     So if the examiner finds something do they err on the side of inequitable conduct do they instigate an investigation.

4.     Material

i)      Declarations are always material

ii)     Information is material when there is substantial likelihood that a reasonable examiner would have considered the information important in deciding whether to allow the application to issue as a patent. Molins Plc. v. Textron, Inc. (1995) Old Rule v. New Rule.  Important to see if they considered whether to submit the information. No prominence around reference.  Always issue:  if you have a reference that is dead on, kills claim then finding intent is easier to make.  A vague reference that is arguable off point would have a finding of intent harder.

A)    Court took the fact that he had been practicing for years, had told the foreign patent office that it was the closest prior art known.

iii)    CFMT, Inc. v. Yieldup International Corp. (2003)

A)    District court said it wasn’t enablement because it didn’t work at Texas Instrument, but the reviewing court said that it did work, not as well, but it did work and therefore it was enablement.  The district court wanted superenablement.

B)    District court said that the company did not disclose the info that Texas Instruments had to tweak it a lot  before it would work.  It was commercial standard and the applicant is only required to do the statutory standard.

C)    There was also an obvious rejection.

D.    Double Patenting §102(b)  Judicial Doctrine

1.     General Info: The patent system envisions the issuance of only a single patent per invention.  Allowing inventors to obtain multiple patents on a single invention could disturb the integrity of the twenty year patent term and confront accused infringers with the possibility of paying multiple damages for a single infringing act..  Despite the conspicuous drawback of double patenting, the prior art definition provided by §102 contains no express statutory mechanism for addressing this abuse of the patent acquisition process.  Many activities must be performed by “another” under §102.  Only the statutory bars of §102(b) generate prior art from the applicant’s own work.  Thus in the absence of other activities that disclose the invention to the public, an inventor could extend the statutory protection period through a simple policy: file an application no later than one year after an earlier, related application has matured into a patent.  Don’t have to sort out prior art

2.     Policy: The judicially created doctrine of obviousness type double patenting cements the legislative limitation of how long a party can exclude others from practicing the claimed invention by prohibiting a party from obtaining an extension of the right to exclude through claims in a later patent that are not patentably distinct from claims in a commonly owned earlier patent.  The doctrine is necessary to prevent a patent term extension through claims in a second patent that are not patentably distinct from those in the first patent.

3.     Types:

i)      “Same Invention Double Patenting” Occurs when both patents have claims of identical scope.  If the claims of the later patent could not be literally infringed without literally infringing the claims of the earlier patent, then a court will strike down the later patent for double patenting

ii)     “Obviousness-type double patenting” When two patents do not claim the identical invention, but instead obvious variations of each other , the later patent will also be invalidated.  Judges may employ prior art references in combination with the claims of the earlier patent to determine whether the later patent claims an invention that would have been obvious to those skill in the art.

A)    Test:  Construe the claim in the earlier patent and the claim in the later patent and determines the differences.   Second the court determines whether the differences in subject matter between the two claims render the claims patentably distinct.

4.     Defenses:

i)      Two Way Double Patenting:   These cases usually involve two patents that claim inventions with a genus-species relationship.  Under a two way analysis, double patenting will not apply unless the claims of each patent would have been obvious in view of the claims of the other patent.  Example:  File Genus A, the files Species B. If the PTO allows the application to issue in the order filed, then no double patenting issues arise.  A demonstration of obviousness-type double patenting would require a showing that prior art references in combination with the Genus A would render the species obvious, usually not the case.  However if the PTO allows Species B to issue first then Genus A  would be invalid for double patenting.  Therefore, the courts long ago sensed that PTO processing times should not dictate whether patents are subject to the double patenting doctrine or not.  Therefore you have two way double patenting.  Therefore under the two way analysis, the court would first check to see if Genus A would have been obvious in view of Species B, and see if Species B would have been obvious in view of Genus A.  In this example the second condition would not have been met and would not be subject to the double patenting doctrine.  Does not apply unless the PTO is solely responsible for the delay in causing the second filed application to issue prior to the first. This means that if inventors do not pursue their applications expeditiously they may lose the benefit of the two way double patenting doctrine.

5.     Analysis of double patenting requires that first one ask if the same invention is being claimed twice, and if not, then is the claim an obvious variation of an already disclosed invention. In Re Vogel (CCPA 1970)

6.     The same entity cannot separately patent both a biological property and a chemical structure that exhibts that property. Eli Lilly and Company v. Barr Laboratories (Fed. Cir. 2001)  Barr filed an application to the FDA for a generic drug of Prosac and Eli Lilly brought an infringement action claiming that the application infringed 549 and 081.  Barr argued that claim 7 of the 549 patent is invalid for double patenting.  COURT:  Claim 7 of 549 patent is invalid for obviousness-type double patenting.   Where do we have generic entry?  Will it be when the 213 patent expires or the 549?  The 213 patent tells how to make it and how to use it, to admister prozac to treat depression in humans.  The 549 patent discusses how it works in animals.  “When two patents issue with claims that are not patentably distinct, the principle served by the judge made law of double patenting is that because patent protection started with the first patent to issue, it should not extend to the expiration of the second patent to issue. Doctrine of inherency and the doctrine of double patenting.  Court:  549 has to be truncated at the end of 213. (terminal disclaimer)

i)      A reference is anticipatory if it discloses every limitation of the claimed invention either explicitly or inherently.  A reference includes an inherent characteristic if that characteristic is the “natural result” flowing from the references’s explicitly explicated limitations.  In this case it is clear from all the evidence proffered by Barr that the natural result flowing from administration of fluoxetine hydrochloride is inhibition of serotonin uptake.  Therefore the limitation of claim 7 of 549 patent directed to blocking serotonin uptake by use of fluoxetine hydrochloride is an inherent characteristic of the administration of fluoxetine hydrochloride for any purpose, including the treatment of anxiety.

ii)     Two Basis:  Genus/Species, Inherency, Obviousness

7.     Geneva v. GSK (Fed. Cir. 2003) Kept calling half of the application “divisionals” The second patent issued at the same time as the first patent expired.    Back at the beginning of the first patent they filed a divisional because there was a restriction requirement.  Paper 7.5 was an interview summary (talk to the examiner)-always followed up with the summary of the topics discussed and the outcomes.  Showed that the applicant had agreed to split up the inventions(were not distinct?)-but that is not a restriction requirement.  Therefore they couldn’t get the §120 exception and had the double patenting label


A.     U.S. Code Title 35:

1.     §281 Remedy for infringement of patent A patentee shall have remedy by civil action for infringement of his patent.

2.     §282 Presumption of validity; defenses  A patent shall be presumed valid. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.  Defenses:  1) Non-infringement, absence of liability for infringement, or unenforceability 2) Invalidity of the patent on any ground specified in Part II of this title 3) Invalidity of the patent for failure to comply with an requirement of §112 or §251

3.     §283 Injunction Courts may grant injunctions in accordance with the principles of equity

4.     §284 Damages  Upon finding for the claimant the court shall award the claimant damages adequate to compensate

5.     §285 Attorney Fees The court in exceptional case

6.     §286 Time limitation on damages  No recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

7.     §287 Limitation on damages and other remedies; marking and notice Patentee, and persons making, offering for sale, or selling within the U.S. any patented article into the U.S., may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat”.

B.     Injunctions

1.     Info:  

i)      Reviewable under Discretion Standard

ii)     Requires a bond where the amount decided by discretion of judge

iii)    Linked to the market value of the product

2.     Preliminary Injunctions

i)      Substantial weight may be given to a patent’s litigation history in connection with a motion for relief H.H. Robertson, Co. v. United Steel Deck, Inc. (Fed. Cir. 1987)  Likelihood of Success, Irreparable Harm, Public Interest, Balance of Hardships

ii)     Defining Factors:

A)    Balance of Hardships:  Courts will not look favorably on the argument that the infringer will go out of business if the injunction is allowed.

B)    Presumption of Irreparable Harm: There exists a presumption of irreparable harm when a patent is found to be infringed.  However, it can be rebutted: 1)  if the claim is not likely to succeed in proving that the device infringes the claim 2) If there is a lack of commercial activity by the patentee 3) If allowed to infringe for a long period of time (sit on rights)

C)    The Public Interest:  Preliminary injunctions have been denied based on overriding social concerns, particularly where a public health concern.

iii)    Preliminary Measures Available Abroad

3.     Permanent Injunctions

i)      Ebay(2006) Justice Thomas  Concurrence (Chief Justice Roberts, Scalia, Ginsberg) “Compulsory” license  Concurrence (Kennedy, Stevens, Souter, Breyer) Injunction is a bargaining tool to get a large fee for a license. “When the patented invention is but a small component of the product the companies seek to produce and the threat of an injunction is employed simply for undue leverage in negotiations, legal damages may well be sufficient to compensate for the infringement and an injunction may not serve the public interest.”

C.     Damages

1.     Basic Principles:

i)      Lost Profits v. Reasonable Royalties A patent owner must receive from the infringer damages adequate to compensate for the infringement (detterence)Panduit Corp. v. Stahlin Bros. Fibre Works, Inc. (6th Cir. 1978) Chief Judge Phillips, Judge Celebrezze, Judge of the CPA Markey  Four Factor Test: 1) Demand for patented product 2) absence of acceptable noninfringing substitutes 3) his manufacturing and marketing capability to exploit the demand 4) the amount of the profit he would have made.  Want to make a showing for the reasonable royalty (floor). 

A)    Reasonable royalty:  which a person, desiring to manufacture and sell a patented article, as a business proposition, would be willing to pay as a royalty and yet be able to make and sell the patented article, in the market at a reasonable profit.  –don’t penalize the person who breached the contract just because of the breach.  Going back to the time when the people were whole and in a better bargaining position.

ii)     Claim Infringement on “Other” Patent: (1) If a particular injury was or should have been reasonably foreseeable by an infringing competitor in the relevant market, broadly defined, that injury is generally compsenable. (2) the “entire market value rule” requires that the unpatented component must function together with the patented component in some manner to produce a desired end. Rite-Hite Corp v. Kelley Co. (Fed. Cir. 1995)  Infringement of a patent but the infringing product was competing with another product.  Argument that everytime Kelly sold a truck stop they lost a profit on the infringing patent product.  There wasn’t enough of the product of the noninfringing product so the consumers would have to buy the infringing product.

2.     Market Share Rule

i)      If the patentee’s and the infringer’s products are not substitutes in a competitive market, the Panduit test to determine lost profits is improper

3.     Availability of Non-infringing substitutes

i)      Patent owners must show causation in fact establishing that but for the infringement, additional profits would have resulted in order to recover alleged lost profits.

4.     Reasonable Royalties

i)      The amount of damages for patent infringement is based upon the value of a reasonable royalty for use of the patent.

5.     Enhanced Damages (Willful Infringement) 3x Amount Found

i)      The paramount determination in deciding to grant enhancement and the amount thereof is the egregiousness of the defendant’s conduct based on all the facts and circumstances (willful infringement)



§103 Obviousness revisited KSR v. Teleflex  Issue in case will take back to week 5:  Is it different enough to justify the patent?  Is it a big enough change?



Issue in the case:  Fed Cir. –focus on 3 and 4 of the steps in order to make legal sense of the at the time the invention (no hindsight) requirement and Mr. Phosita.  They have grafted requirement that prior art(or the nature of the problem) includes some teaching, suggestion or motivation to combine references.  What does that mean?  Need to combine because if it was a single reference it would be a §102, therefore have to combine references.


So trying to combine references, no hindsight, Phosita


Supreme Court  In re Winslow will be argued.  Judge Rich(dead) what does he tell us about obviousness  who said that the suprme court was wrong in §101.  She says that Mr. Phosita is sitting in room with the prior art on the walls.  However does not take into account her subsequent cases regretting the Winsolw analysis (not all the prior art is analogous)  Too much prior art, gets mucked and the invention could be in there but it gets lost.


When we go into practice like after Graham.


Judge Scalia says that the test is gobbldy gook…probably going to go against the Fed Cir. suggestion to combine references….who knows what the hell is going to happen


Another question is who is Mr. Phosita  Mr. Breyer is trying to to understand the mechanics, and he can’t come to terms with that he is not Mr. Phosita.  Doesn’t care if the Phosita gets it, Justice Breyer gets it and therefore it is obvious.


Enhanced Damages (extreme-infringing the patent)  Balance between this and Misuse/Antitrust

Attorney Fees

 §284 Damages (Increase 3 times amount found or assessed)  follow a finding of willful infringement

        Jury finds if the infringement is willful, but at the end of the day the judge is the only one that can actually increase-is not required to enhance up to 3 times or enhance at all.

§285 Attorney Fees- Adoption of the English Rule-if the case is  “exceptional” the prevailing party can have attorney fees covered.  If there was inequitable conduct, litigation misconduct, willfulness


Read Corp. v. Portec, Inc. (Fed Cir. 1992)  Multi factors (984-985) Should look at those-still apply in some meaningful sense

. Knorr-Bremsa v. Dana Corp.  how do you know if it is willful-  I know about this patent and I want to do this…attorney will sit down and say if you keep doing it will infringe (not usually in writing)  Is it appropriate for the triat of fact to draw and adverse inference with respect to willful infringement when the attorney-client privilege is invoked by a defendant in an infringement suit?  No  (Factor 3)


Factor 2 Reasonable reliance of what happens in court?  Attorney’s opinion…let people introduce that opinion because if we create a rule that the attorney opinion is only a blanket rule than the clients won’t get them.  Have to get to the nub of item 2 so if you invoke the privilege to prevent the disclosure of the opinion letter than the fact finder can infer it was an adverse opinion (useless opinion).  In this case the Federal Circuit says now we live in place that respects patents…has been upholding patents-so people could not possibly be getting the bad opinions and gets rid of the rule.


Why did the Fed. Cir create the rule in Underwater Advice because the attorney’s advice was correct (7th cir. in Chicago says that patent are usually held invalid)  Example Great A &P checkout stand carrier


Patent Enforcement


Ownership/Assignment (mechanical-who brings suit, how do we figure out who is the owner, how do we transfer the right) Inventor to assignee Right to exclude resides in the inventor.  In employment assign

                Filmtec Corp. v. Allied Signal Inc. (Fed. Cir. 1991)  Walks you through the real property right issues.  Once your employer has the patent (assigned) can the employer sell the patent? Yes, it is another assignment.  Think about the notice race provision in real property.  The new assignee wants to record it as soon as possible


Licensee- spectrum- bare license (nothing more than a promise not to sue someone under the patent)  don’t have rights to bring infringement.  The other side is virtual assignment (exclusive license (the only licensee)-exclusive even of the patentee) usually have to achieve minimums (practice under the patent, best effort) usually all those the requirements make the licensee want the right to enforce patent and then you have standing


                Waterman v. Mackenzie  If far enough to the extreme of the exclusive licensee you essentially have all the rights of the patent, but short of having all the rights there might still be the right to enforce.    If the exclusive licensee is in the suit and the owner isn’t there might be a basis for counter suits- involuntary joinder.  Law will not abide by the diliemma in which the owner of the patent is not bound by a judgment in which the patent is found to be invalid.  Civil Procedure aspect of patent law

Personal Jurisdiction

                Beverly Hills Fan Co. v. Royal Sovereign Corp (1994)


Licensing, Misuse and Patent-Antitrust other extreme-when someone is overly aggressively asserting the patent)

Per se violations and rule reason


Patent misuse is simply a defense against infringement.  Doesn’t mean antitrust violator.  Either doing per se misue or misuse under the rule of reason.  Remedies: Can’t enforce the patent.  Misuse: In order to get a license under my patent have to buy a staple good from me.  Antitrust problem.

The Technical License Agreement

Compulsory Licensing



Invalidity §101, §102, §103, §112 if it comports to all the requirements then valid but if under inequitable conduct then unenforceable.















































EXAM Question:


Call of the question:   Draft a memo

I.                    Risks of the launch in light of the 001 and 002

II.                  Any other information?


Step 1: The product v. the patents

Infringement:  “A” product   v. 001

                         “A “ product v. 002


Step 2: The patents v. each other (102? 103?)

Double Patenting:

Validity Inquiry: 102(b)


Remedies: Injunction, damages (loss profits and reasonable remedies, also look at attorney’s fees and willful infringement(3x damages)




Further Information: *

                Put any facts that you need.




Outline of the Answer:  101, 102, 103, 112


I.     001:  cotton, wool, silk (no poly-ethylene)

A.    101- Is it a composition of matter?  Yes, it appears to satisfy 101-expresses a use (to make exercise clothes)

B.    102:  Is there a prior art?  Does it anticipate?

1.    *  Armano-what is your patent?  Production log pre 1996?  Could it be prior art? Want to search?

C.    103: Would it have been obvious when the references are combined as a whole, and there is a reason to combine?  ?  Look at the differences

1.    * Need more information again. 

D.    112

E.     Literal Infringement

1.    Compare Sotton with 001:

i)        001

A)     Fabric “for use in manufacturing exercise clothes” (preamble)-consisting of : “closed-everything”

1)    water repellant synthetic fiber

2)    water absorbent natural fiber (cotton, wool or silk)

3)    interwoven with the synthetic on surface

ii)       A’s Fiber

A)    Polyethylene Synthetic fiber- is water repellant-meets the 1st one

B)    Sotton-synthetic fiber with the properties of cotton, so while seems like it if is spun cotton then it would be water absorbent but it is not natural-so missing the limitation of #2

2.    Exception: Doctrine of Equivalent “substantially the same function, same way, same result”

i)        Exception: Prosecution History Estoppel

A)    Here is how get back to 112-had to amend with a narrowing amendment because of paragraph 2  definiteness

1)    Was it made for a reason related to patentability?  Yes it was made under Title 35

2)    Have a nice defense if can get over the literal infringement

B)    Exceptions:

1)    Unforseeable, tangential, some other reason it could not be literally claimed.

i)        Best argument for Power:  * when did Armano get his patent, if he got it before 1996 it might not be unforeseeable, if he got it after 1996, then it might be unforeseeable

F.     Risks:  Injunction, damages * what are the profits, what are Power’s profits?  Is it willful?

II.   002 Exercise clothes compromising

A.    Finely spun fibers

B.    And water reppellant synthetic

C.    Dependant + synthentic fiber is poly-ethylene(has to be attacked separately for validty)

D.    Analsysis of 002 Claim:

1.    101: Exercise clothes- have a use, is a composition of matter-passes the 101 screen

2.    102:  Is there prior art? Yes, 001 for 102(b).  Is it anticipated?

i)        Cotton, clothes, the only missing element is the finely spun cotton fibers v. cotton

3.    103:  Is it obvious?

i)        *Ask Armano- it is an obvious issue?

E.     Analysis of Dependent Claim:

1.    101:

2.    012-Prior art?  Is it anticipated?  No Genus species

3.    103- is it obvious?  Who knows

4.    Infringement Analysis:

i)        Compare Sotton with the Dependant Claim 

A)    Armano uses polyethylene-both are met by Sotton

5.    Doctrine of Equivalence-is the finely spun cotton

i)        No exception