Patent Law: Reisman & Morley
Final:
Based on the Reading-2 Essay Questions-Issue
Spotting
I.
COURSE MECHANICS- INTRO
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.
D.
PATENT LAW IN CONTEXT
1.
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
A)
APPEAL
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)
PTO→Board
→Fed
Cir.→S.C.
(b)
District Court→S.C.
ii)
Pre-1982
(a)
District Court→”Regional”
Courts of Appeals→S.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
10.
HOW TO READ A
E.
OTHER FORMS OF PROTECTION
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 &
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------------------------------------------------------
II.
PATENT ELIGIBILITY
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 (
iv)
Manufacture:
almost any other useful technology
B.
PROCESSES:
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.
HOLDING “It
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.
E)
OTHER
PATENTABLE CLAIMS
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
(
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
(
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(
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
i)
Additional Comment:
Conflicts with
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---------------
IV.
ANTICIPATION
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
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) |
Known/used |
Others |
|
Before Invention(of patent applicant/holder)
** triggered by day you made invention |
|
§102(a) |
Patented/Printed Publication |
Others (?) |
Anywhere |
Before Invention(of patent applicant/holder)
** triggered by day you made invention |
|
§102(b) |
Patented/Printed Publication |
Anyone * |
Anywhere |
1 yr before filing
* cannot avoid |
|
§102(b) |
Public Use/On |
Inventor v. Others
Anyone |
|
1 yr before filing “Grace Period” |
|
§102(c) |
Inventor/Owned “Abandoned” invention |
Inventor/Owned “Abandoned” invention |
Inventor/Owned “Abandoned” invention |
Inventor/Owned “Abandoned” invention |
|
§102(e) |
|
Others |
|
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. |
|
§102(g) |
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
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.
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(
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
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
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
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
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
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
VI.
NOVELTY: PRIOR INVENTION
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
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.
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---------------------------
VII.NONOBVIOUSNESS
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.
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
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
VIII.
PRIOR ART FOR NONOBVIOUSNESS
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)----------------------------------------------
IX.
THE PATENT SPECIFICATION: OBJECTIVE DISCLOSURE
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
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.
X.
THE PATENT SPECIFICIATION: BEST MODE (only look at what INVENTOR knew)
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
XI.
CLAIMS
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. Coolsavings.com, 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).
XII.INFRINGEMENT
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
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
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
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)(
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 whole
–Warner-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:
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
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.
4.
Publications of Pending Applications
i)
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.
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
A)
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.
XIV.
REMEDIES
A.
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
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
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
ii)