PATENT LAW OUTLINE

NOTE: Standards of ReviewFact – clearly erroneous (if decision by judge); deference given to lower courtFact – substantial error (if decision by jury); deference given to juryLaw – de novo; NO deference given to lower court

I. OVERVIEW

[see pgs 643-644 for good overview]

II. PATENT CONSTRUCTION - § 112

A. Types of Claims, § 112 ¶¶3 & 4

1. Independent Claim – does not refer to any other claim

2. Dependent Claim – refers to one or more claims in the patent (e.g. A windmill according to Claim 1…)

a. Dependent claim specifies some feature of the general invention claimed in the referenced independent claim

b. Dependent claim is narrower than the referenced independent claim; dependent claim incorporates all limitations set forth in referenced claim (§ 112, ¶4)

c. What happens when referenced independent claim invalidated? Does not necessarily mean that dependent claims are invalid either since they are narrower (less likely to anticipate or be obvious) [pg 31]

d. Converse: if independent claim is valid, dependent claim must be valid b/c it is narrower

3. Scope of Listed Claims – independent claims are listed in order, staring with the most broad and working down to the least broad

B. Claim Language (pg 28)

1. Open Claim: Broad - an invention comprising elements A, B, and C; claim covers any embodiment of invention having elements A, B, C, and any additional elements

2. Closed Claim: Limited – an invention consisting of elements A, B, and C; invention limited to just those elements, so product using A, B, C, and D does not infringe

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3. In-Between – an invention consisting essentially of elements A, B, and C; a product that contained element A, B, C, and D would NOT infringe if element D made the product essentially different from the claimed invention

C. Patent Term – 20 years from date of filing

1. Exception: Provisional Applications – 21 years from filing date

D. Publication – patent applications in the U.S. are published after 18 months if that same invention is the subject of corresponding foreign prosecution in a country that requires publication after 18 months

1. Prior to 1999, NO domestic patent applications were published until registered (pg 62)

III. DISCLOSURE - § 112 (CH. 4)

PRESUMPTION – when considering invalidity, burden on challenger and presumption is that patent reg. is valid; NEED clear and convincing proof

A. Overview

1. preliminary description of the invention: what it is, what it does, and what inventions came before it

2. Quid Pro Quo – to gain monopoly, patentee must disclose how the invention works (pg 259)

a. Balancing property right (monopoly) w/ policy (promoting science by public disclosure)

3. Contains 4 Parts under § 112, ¶1 – enablement, written description, definiteness of claims, and best mode

B. Enablement (§ 112, ¶1)

Question of law (pg 321)

1. Inventor must describe invention clearly enough so that PHOSITA can understand it well enough to make and use it (pg 262)

a. KEY - description should be clear enough that PHOSITA would NOT need undue experimentation to reproduce claimed invention

2. BUT, inventor need NOT disclose in patent what is well known in the art (pg 283)

a. Enablement is NOT precluded by the necessity for some experimentation, such as routine screening

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3. Factors to Determine Whether Disclosure Would Require Undue Experimentation (fact analysis) [Wands, pg 285]

a. Quantity of experimentation necessary

b. Amount of direction or guidance presented

c. Presence or absence of working examples

d. Nature of invention

e. State of the prior art

f. Relative skill of those in the art

g. Predictability or unpredictability of art

(1) the more predictable the field of technology, the less disclosure necessary to enable a broad claim; SO, broad claim can be enabled by disclosure of single embodiment when result is predictable (pg 290-91)

h. Breadth of claims

(1) A claim can be broader than the specific embodiment disclosed in specification (Gentry, pg 318), BUT claim is necessarily limited by prior art and specific written description

4. Staring Materials – if invention is made of materials (staring materials) not known in the art, inventor must set forth how to make the starting materials to comply w/ enablement requirement (Wands, pg 288)

5. Deposit – PTO has depository for strains of microorganisms, which is necessary for some patent appls to meet enablement requiremen

6. Policy – teach PHOSITA how to do it; alerts public about limits of invention

C. Written Description (“WD”) (§ 112, ¶1)

question of fact, look to expert witnesses (pg 311)

GREAT DEBATE – most scholars believe WD is redundant w/ enablement; WD is a heightened standard that can be used to invalidate many patents, especially technological patents that describe invention in functional terms (Rochester appendix denying en banc hearing)

1. Theory – teaching function that gives public invention in exchange for monopoly (Rochester, handout, pg 922)

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a. Historical – WD was very important initially b/c law did not call for “claims”

b. NOW, Broad Purpose – WD is not merely to describe invention BUT to convey w/ reasonable clarity to PHOSITAs that as of patent filing date, invention was in inventor’s possession (pg 307)

(1) Can add claims after filing, BUT can NOT change WD after filing [no new matter in disclosure, § 132(a)]; SO WD prevents inventors from adding numerous claims since those claims may not be adequately “described” in the WD

c. Typically, WD coupled w/ priority issues (§ 120) (WD in senior application is not sufficient to cover claims in junior application), OR whether “new matter” was introduced into patent (forbidden under § 132)

2. Parallels and Limits Claims - inventor must highlight or describe what she claims, and claim what she highlights (pg 262)

a. KEY – analysis evidencing patent has WD: (1) does WD provide any guidance to steer the PHOSITA on how to make elements listed in the claim OR (2) that the PHOSITA would already know, at the time of filing, how to make the elements? (Rochester, handout, pg 929)

(1) generic words typically do not meet WD requirement, unless they are common words to PHOSITA; instead must specifically describe the invention OR give range of properties when invention covers numerous embodiments

b. Inventor need NOT describe more than one embodiment of a broad claim to adequately support that claim (pg 317); HOWEVER right to exclude may be limited by narrow written description (disclosure); e.g. mounted console in sofa in Gentry

c. Inventor is entitled to draft claims as broad as prior art and WD will allow (Gentry, pg 318); BUT WD can be broader than claims b/c it may contain things that were later rejected by PTO

(1) Pioneering Invention - Claim can state “all” embodiments of a particular invention if they enable all the embodiments existing at time of application (typically, very few embodiments since pioneering invention); this “all” broad claim would then cover improvements discovered in future

d. BUT - after Gentry, to invalidate based on written description, court required clear or unambiguous language in description that calls for narrower claim (pg 319)

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3. Written Description Differs from Enablement – its purpose is broader than merely explaining how to “make and use” invention; it ensures the scope to exclude, as set forth in claims, does not overreach the inventor’s contribution to the field of art as described in patent’s specification (Rochester, handout, pg 920)

4. Written Description Differs from Claim – a claim describes the inventions function or process (i.e. what it does) and sets scope of exclusion; whereas WD describes the structure (e.g. what it is) at time of filing for PHOSITA to learn, it is teaching mechanism (Rochester, handout, pg 923)

5. Other Notes

a. Drawings alone can meet written description requirement (Vas-Cath, pg 307), but the drawings must effectively describe invention in the eyes of PHOSITA (pg 310)

b. WD analysis is not limited to cases in which the legal question is one about priority (Rochester, pg 924)

c. Do NOT need reduction to practice to satisfy WD requirement (Rochester, pg 926)

D. Definiteness of Claims (§ 112, ¶2)

1. Claims must be drafted clearly, so PHOSITA can discern boundaries of patent (pg 262)

a. Inventor must state clearly what is claimed and what is left free to public use

2. Policy – shapes future conduct of persons other than inventor by insisting that they receive notice of scope of patented device (pg 307)

E. Best Mode (§ 112, ¶1)

Question of fact (pg 345)

1. Subjective Drafting by Inventor – of all embodiments encompassed in claims, inventor must state which one, if any, he believes is most effective at time of filing (pg 263; Randomex dissent, pg 340)

a. NO requirement that inventor point out which listed embodiment does he consider the best mode; inventor only required to list best mode as one of the embodiments (Randomex, pg 339)

2. Stricter than Enablement – NOT every detail of invention needs to be described to met enablement requirement, BUT all the details of best mode must be present (pg 342)

3. Analysis – look at evidence (facts) and determine if inventor tried to conceal

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best mode (e.g. used trademark to describe cleaning fluid rather than ingredients of cleaning fluid)

a. Two Components to Analysis (Chemcast, pg 345)

(1) Subjective - At time application was filed, did inventor know a mode for practicing invention that was better than all others?

(a) If inventor envisions numerous of carrying out invention, NO need to highlight best mode (per Randomex, pg 349)

(2) Objective - If so, did the inventor disclose this best mode in a way that a PHOSITA could practice the invention in that embodiment?

(a) View from PHOSITA’s ability; PHOSITA must be able to ascertain best mode

(b) Adequacy of disclosure is objective test based on (1) scope of claims and (2) level of skill in the art

(i) Best mode needs only to be disclosed in a way that meets enablement test (per Chemcast, pg 349)

(ii) This part of test permits disclosure that requires significant, but not undue, experimentation (pg 350); so inventor can say “here is best mode” and then describe it in general terms

4. Inventor need not update the best mode to include modes discovered after filing application (pg 343); would fall under “no new matter” forbidden per § 132

5. Distinguish Radomex and Chemcast – using trademark in Randomex was fine b/c cleaning solution was not an element in claim so not part of invention; BUT using trademark in Chemcast was NOT fine b/c hardness of grommet was an element in claim, so inventor needed to disclose how to make or obtain that specific grommet

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IV. NOVELTY AND DERIVATION - § 102 (CH. 5)

Bars patent b/c inventor was NOT the first to disclose invention

***NOTE: to invalidate patent, Fed Cir requires corroboration of witness testimony rebut presumption (§ 282) that registered patent is valid, MORE than just patentee’s testimony; crucial for establishing priority***

“clear and convincing” to rebut presumption (e.g. patent reg.); but only “preponderance of the evidence” if no presumption (e.g. patent pending)

A. Overview

1. Theory – novelty of invention is like consideration for a K; society’s contract with the inventor is binding b/c inventor has given something of value (i.e. new) in exchange for patent registration (monopoly)

2. Timing - novelty is directed only at events that occurred before the time of invention

3. Difference Abroad – novelty is measured in U.S. by date of invention (priority goes to who invented first); however in other countries novelty is measured by filing date (priority goes to who filed first)

a. Thus, novelty disputes (interferences) are unique to U.S. (pg 364)

B. Steps for Novelty Analysis (pg 364)

1. Does item qualify as reference?

a. Reference - any art that is relevant under § 102

2. Is the effective date of reference earlier than critical date?

a. Effective Date – date material became part of art (e.g. publication date)

b. Critical Date – date of invention [note: term is different for statutory bar analysis]

c. Prior Art – any material having an effective date before the critical date

3. Anticipation - Is the information disclosed in a pre-critical date reference sufficient to render applicant’s invention non-novel?

Anticipation is a question of fact, deference to lower court

a. Anticipation requires all of the relevant information to be disclosed in a singe reference (pg 365), i.e. the reference discloses the identical invention[NOTE: if analysis needs more than one reference, look to obviousness

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under § 103]

b. Every Element Test – each and every element as set forth in claim is found, either expressly OR inherently described, in a single prior are reference (Robertson, pg 368)

(1) Step 1 – does prior art reference expressly include all elements of junior patent’s claim?

(a) If prior art is a patent reg., can look at claims AND specification

(2) Step 2 – If not expressed in prior art reference, were all the elements of the patent appl. claim inherent in the reference?

(a) Limitation on Inherency - Extrinsic evidence must be clear that missing descriptive matter in prior art reference is nevertheless necessarily present in reference AND would be so recognized by PHOSITA

(i) Court must view from eyes of PHOSITA; would PHOSITA have appreciated the inherent features of prior art?

(b) Inherency can NOT be established by mere probabilities or possibilities (Robertson, pg 369)

Create chart to compare patent appl’s claim elements with prior art reference

c. KEY: A prior art reference can NOT anticipate an invention unless the reference is enabling (either patent or publication) [pg 380]

(1) NOTE: the enabling standard for prior art under § 102 is watered down, prior art does NOT need to disclose any use for invention, no utility needed; BUT strict test for enablement under § 112 that requires teaching (Hafner, pg 382)

(2) BUT, if reference names elements but then states that author/inventor was unsuccessful at creating invention, then NO anticipation (Wiggins, pg 387)

(3) Product itself can anticipate, even those products that would not inform public about how to make them (overlaps w/ “public use” in 102(b))

d. KEY: Limitations on Prior Art – overall, novelty is strict test and allows many forms of prior art to destroy patent appl’s novelty; BUT the limitation is that the prior art must be available to inventor at time of invention

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(see below examples: theses in shoebox, Cronyn; unknown isotope in radioactive waste, Seaborg; unrecorded knowledge of prior inventors in NTP; unappreciated steam process in Tilghman; and lost prior art in Gayler)

e. Anticipation Compared to Literal Infringement – analysis is basically the same, except anticipation deals w/ material whose effective date is before the critical date (that which would literally infringe if later in time, anticipates if earlier than the date of invention) [pg 371]

(1) NOTE: anticipation does NOT apply to infringement by DOE

f. Why do strict novelty analysis when broader obviousness analysis typically follows? Court believes it must follow this schedule in keeping w/ language of § 103 (pg 372)

g. Accidental Anticipation – if the result of invention was also found as an accidental or undetectable phenomenon in a prior art reference, the prior art reference does not anticipate (Seaborg, pg 375, and notes on pg 378); PHOSITA would not have found reference

h. Claim Lists a Range – if claim lists a range, and prior art falls w/in that range, then the claim is anticipated (Titanium Metals, pg 387)

i. genus v. species (clothing to sock), a reference that discloses a species anticipates a later claim to a genus containing that species, BUT not vice versa (reference disclosing genus and claim listing species) (pg 390-91); equates theory that one can NOT patent new way to use old invention

(1) HOWEVER a new species (improvement) can be patented if the new species is not obvious under § 103 (pg 391)

C. Disclosures in Earlier Users, Publications, or Patents [§ 102(a)]

1. Statute

a. Known or used by others in U.S. before date of invention, OR

b. Patented or described in a printed publication in worldwide before date of invention

2. Known by Others in U.S.

a. Not limited to documentary evidence, product itself can anticipate (pg 398), or even oral testimony (although, w/out corroboration from some other evidence, oral testimony is not very strong) (pg 402)

b. Public Knowledge – knowledge which is reasonably accessible to the public, involves some type of public disclosure (drawing on tablecloth not public in National Tractor Pullers (“NTP”), pg 400)

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(1) NOT satisfied by knowledge of single person b/c statute states “others”; but NTP case also says a few persons working together is not public knowledge (NTP, pg 400)

c. Lost Art – if prior art product is lost and no other documents evidence its construction, it can NOT anticipate (Gayler, pg 402); BUT later case questioned, but did not overrule, this rule: is technology ever lost? Should patent law pull back what was once in public domain? (Coffin, pg 403)

3. Used by Others in U.S.

a. Non-secret uses in the ordinary course of business anticipate patent application (pg 405)

b. Use does NOT need to be commercial to anticipate, just observable by public when typically the process or device would not normally be so viewed (pg 406)

c. Incomplete or unsuccessful experiment does not constitute use by others (Rosaire, pg 404, and notes, pg 405); HOWEVER, experiment can anticipate and become prior art provided it is perfected and thereafter became publicly known

4. Printed Publications Anywhere (also applies to § 102(b) below)

a. Not restricted to formal publications such as widely circulated magazines and newspapers (Jockmus, pg 409)

b. Burden on Proponent of Publication Bar - must show that prior to the critical date the reference was sufficiently accessible, at least to public interested in the art, so that someone examining the reference could make claimed invention w/out further research or experimentation (reference was enabling) [Hall, pg 411]

(1) NO requirement that reference was obtained by anyone, just that it was accessible to anyone searching (pg 413)

(2) Confidential letters or restricted reports (e.g. military or corporate reports) are NOT publications

(3) Thesis or dissertations are NOT “published” until indexed and available in catalog, such that patentee could find it

c. Time of Publication – becomes public when it becomes available to at least one member of “the general public” (pg 413); e.g. date newspaper published, NOT date when writer submitted story to editor

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5. Patented Anywhere (also applies to § 102(b) below)

a. All U.S. patents qualify to anticipate

b. Foreign Patents

(1) Utility Model Patents – where the utility model qualifies only as “patented” prior art and not a publication under 102(b), then it anticipates ONLY for it claims (disclosure does NOT count) [Reeves, pg 417]; b/c disclosure would equate what is known or used and that is restricted to U.S.

(a) HOWEVER, some utility models have been treated as publications, such that claims and disclosure could anticipate

(2) Design Registrations - considered “patents” b/c it conveys exclusive right (pg 418)

(3) Foreign patents must be accessible to public, but indexing, cataloging, etc. are not required (pg 419)

D. Disclosures in Earlier Filed Applications [§ 102(e)] (pg 427)

1. Merely disclosing the invention (i.e. not claiming but merely describing), is enough for anticipation and bar claim in subsequent application (pg 425)

a. Material disclosed but not claimed in patent is available as prior art ONLY under § 102(e); NO interference under § 102(g), b/c interference is available only for overlap in claims

b. Senior patent constitutes prior art as of its filing date, not the date of its public disclosure (Milburn, pg 426)

2. 1999 Amendment to 102(e) - Disclosures in patent application constitute prior art provided that the application either issues as a granted patent or is published pursuant to § 122(b)

a. NOTE: if application abandoned prior to publication, NOT prior art, BUT if abandoned after publication, then it IS prior art

3. Secret Applications - applications secret for first 18 months

a. PTO can NOT issue 102(e) rejection against junior patent application if senior application has not yet published

b. BUT, when it publishes it can be cited under 102(e)

4. Provisional Applications – under 102(e), it appears that PTO can cite senior provisional application as soon as it matures into an application that is published

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or issues as a patent (pg 427)

5. Swearing Behind – 102(e) says prior patent filed before the invention; so if junior invention created before senior’s filing date, junior filer can “swear behind” the senior filing and eliminate 102(e) invalidation claim

E. Derivation [§ 102(f)] – patentee invented subject matter of patent, it was not derived or stolen from another [not part of “novelty,” but related]

1. Need more than just assistance; help from another is derivation if it (1) encompasses all the elements of invention and (2) is fully enabling (pg 438)

2. NOTE: big difference between inventor and owner; if you listed others as inventors (with intent of sharing ownership) and they did not help create invention, patent invalid under 102(f) for misjoinder of inventors (pg 439)

3. shop right rule

F. Establishing Date of Invention for Priority [§ 102(g)] (pg 501)

Establishes priority for interference and in general, but also is the general rule for establishing date of invention for other sections of 102

1. 102(g) is Narrow

a. For priority, requires conception and reduction to practice (actual or constructive)

b. Applies only when the inventions claimed are the same

2. Interference, 102(g)(1) – establishes priority for interfering party; applies to interfering party’s inventions created in U.S. or abroad

3. General Invalidation, 102(g)(2) – priority for invalidation applies only to inventions created in U.S.

4. General Test for Priority, 102(g)(3) [pg 441-442]

a. KEY: First to reduce to practice has priority (e.g. build a working model)

(1) What if parties reduce on same day? Default is first to conceive

(2) What if parties file on same day and can NOT prove conception or reduction to practice? Neither gets patent (Lassman, pg 455)

b. Filing valid patent application constitutes a “constructive reduction to practice”

(1) NOTE: application MUST be enabling (per § 112); unless filing a provisional application under § 111

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c. First to conceive may prevail (“A”) over first to reduce to practice (“B”) if A was reasonably diligent from a time prior to B’s conception through to A’s own reduction to practice (either actual or constructive) (see Christie v. Seybold, pg 449)

(1) Diligent = working towards perfecting and putting the invention into practice

(2) Failure to reduce b/c no money is a consideration, but is not dispositive; should have filed application to at least obtain constructive reduction

(3) Prima facie evidence that first to reduce has priority; so second to reduce has burden to show diligence

d. Any reduction to practice that has been abandoned, suppressed, or concealed is disregarded

(1) Unreasonable delay in filing after reducing to practice may evidence abandonment or suppression (Peeler, pg 458)

(a) This works against others keeping invention as a trade secret

(2) Intent – must show intent to conceal or suppress

(a) UNLESS, the time period is unreasonable, then can infer (no need to show intent) suppression, concealment, or abandonment (pg 460)

(3) Rebut Inference – delay was to perfect invention (testing and refinement); must point to the claim that you were perfecting

5. Patent Office Rule 131 – allows applicant to “antedate” or “swear behind” date of prior art

a. Oath or declaration to establish date of invention prior to the referenced publication (reject under 102(a)) or appl/reg. (102(e))

b. Can NOT use this rule to overcome rejection (anticipatory reference) of:

(1) U.S. patent reg. or published appl, when claims are the same [must declare interference to determine priority] OR

(2) statutory bar [102(b), (c), or (d)], b/c invention date has nothing to do w/ these rejections

c. For Interference, oath must also establish that invention had practical utility (reduced to practice) prior to cited reference; BUT for ex parte reference (e.g. published article that does not set forth utility), inventor

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does not need to prove prior utility (i.e. what the invention can do), so it’s a lower standard (Moore, pg 505)

6. NOTE: in an interference, applications were co-pending (e.g. junior filed before senior passed to reg), so to prove priority, junior need to only show preponderance of evidence (no clear and convincing for presumption since senior invention had not yet passed to reg when junior was filed) (pg 446)

7. Reduction to Practice – occurs when an inventor or his agent know that the invention will work for its intended purpose (pg 592)

V. STATUTORY BARS (LOSS OF RIGHT TO PATENT) - § 102 (CH. 5)

Preclude or bar patent, even if applicant is the first inventor of claimed invention

Timing – can happen before or after time of invention

A. Patented or Described in Printed Publication [102(b)]

1. prior to application date

2. applies to patents and publications in the U.S. and abroad

3. prior patent or publication would count as prior art under 102(a) and 102(b), as long as the patent or publication occurred more than one year from filing patent

4. although patentee’s publication cannot anticipate itself under 102(a), it can constitute a bar under 102(b) if published more than one year to filing

B. Public Use or On Sale [102(b)]

1. prior to application date

2. applies to use and sales only in U.S.

3. General Statutory Bar – can be caused by anyone, including the applicant

4. Secret Use (Trade Secret)

a. Third Party Secret Use - if party uses invention or process in secret and sells product, and public can NOT ascertain process by looking at product, selling product does not create public use for other parties (Gore, Pennock, pg 613-14)

b. Inventor Secret Use - BUT, same as above, would create public use against that party’s patent application

(1) Policy - in keeping w/ policy of encouraging inventor to file early [Gore, pg 613]

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(2) Some case treats trade secret use as abandonment (which does not create a public use bar for other parties), while others treat it as public use (pg 631-32)

5. Process v. Product – if patent on process, and process kept secret, then selling product by process constitutes a public use ONLY if public could figure out process by examining product

6. Policies Behind 102(b) [pg 604]

a. Discourage removal from public domain of inventions that public reasonably believes are freely available

b. Favoring prompt and widespread disclosure of inventions

c. Allow inventor reasonable amount of time following sales activity to determine the potential economic value of a patent

d. Prohibit inventor from commercially exploiting invention for a period greater than the prescribed statutory time (20 years)

7. Barred if invention, more than 12 months prior to date of application [grace period], was:

a. Patented or described in publication anywhere, OR

b. In public use or sold in the U.S.

8. Grace Period – inventor can publish or sell invention during the 12 months after inventing and NOT abandon right to file patent

a. Grace period commences based on public use OR on sale use, whichever is earliest

b. BUT, if the invention is published and the inventor fails to file application prior to the 12 month deadline, patent right is lost

c. encourages filing w/in 12 months of invention

9. COMPARE to Novelty (102(a))

a. Novelty looks at date prior to invention, rather than “date of application”

b. Inventor can NOT anticipate himself under 102(a), but can create prior art under 102(b)

10. On-Sale Bar -- two-part test (both are required); DESPITE this test, not a mechanical rule but rather depends on the totality of the circumstances [Pfaff, pg 574, 582]

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a. First, product must be the subject of a commercial offer for sale

(1) look at the totality of the transaction and determine if transaction was commercial (i.e. would the “sales activity” help inventor determine value of patent?) [pg 581]

(2) Sham sales do NOT count as on-sale bar

(3) General offer to sell does not count, time would run when invention delivered; but specific offer would count as sale (pg 577, hypos)

(4) Exclusively licensing the invention does not trigger the on sale bar

b. Second, invention must be ready for patenting

(1) Writing - inventor can describe method w/ sufficient clearness and precision to enable those skilled in matter to understand process; a question re: enablement rather than conception (pg 576); OR

(2) Reduced to Practice

(a) RTP - invention does NOT have to be reduced to practice to be “on sale”; inventor can sell product before it is ready b/c inventor can obtain patent before invention is reduced to practice (pg 572)

c. Third Party Sales – sales and offers to sell by third parties may also create statutory bars for inventors (Abbott Labs v. Geneva, pg 609)

11. Public Use

a. Showing Invention to Friends & Employees – NO public use if inventor maintains control and those viewing know to keep it a secret (either expressly or implicitly) [Moleculon, pg 563-564]

(1) Look for explicit or implicit confidentiality agreement

(2) In contrast to Moleculon, the corset springs in Egbert, which was given to others for free and unrestricted

b. Public use can be caused by the inventor OR third party unrelated or unknown to inventor, showing invention to public (Baxter, pg 608)

(1) So, even if the inventor is keeping the invention secret (not public), an unknown person may show his version of invention in public, which causes the inventor’s clock to run too; encourages inventors to file quickly; BUT

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(2) secret commercial activity of inventor may constitute public use, BUT secret commercial activity by unknown third-party would NOT constitute a public use (pg 614)

c. NOT every detail of patent must be disclosed for public use, need only to disclose those features claimed in the patent to equate public use (pg 615)

12. Sale v. License – the sale of the product or process of the patent (something produced according to an invention) is public use, BUT licensing or assigning the rights to patent (invention itself is subject of transaction) is NOT public use (pg 564)

13. Experimental Use Doctrine – perfecting or completing an invention to the point of determining that it will work for its intended purpose

a. Defense for Inventor – negates finding of public use, if use merely experimental and controlled by inventor (pg 588)

(1) Inventor must retain control during the experimental period; invention can NOT be used by others during the experimental period

(a) Making others pledge confidentiality is a factor towards finding experimental use (pg 600)

(b) No commercial exploitation is factor towards finding experimental use

(i) Policy - If not exploiting, does not violate policy of limiting term of monopoly

(ii) Market tests = commercial exploitation

(2) Is subject use experimental? – question of law; must look at totality of circumstances (pg 594); BUT experimental period over when inventor shows others that it works (pg 593)

(a) Dissent in Lough says it should be question of fact, deference to jury

(b) Why Q of law? Judge-made exception; requires exercise of judgment taking into account various facts (pg 599)

b. Experimental Sales - do not trigger the bar (e.g. experimental lighting pole built on highway; Wyoming later paid for the pole after it survived the winter; not a commercial sale, WY was told it was experimental and confidential) [Manville, pg 591]

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c. Market Testing – NOT experimental use b/c it is commercially exploiting invention (pg 601)

d. Reduction to Practice – experimental use can NOT occur after RTP; no need to experiment if inventor already knows invention will work for intended purpose (pg 592)

e. Time Period – no set time for how long inventor can claim experimental use; depends on the invention (e.g. longer time to test running track in winter conditions); determine whether inventor was acting reasonably in continuing the evaluation

C. Abandonment [102(c)]

1. Party-Specific Statutory Bar – triggered ONLY by applicant (pg 614)

2. Two Ways to Abandon

a. Publicly and expressly renouncing rights to patent; abandonment takes effect immediately (effectively waves any remaining grace period granted by 102(b))

b. Trade Secret – in keeping with 102(b), using invention in secret after 12 months from creation effectively abandons patent rights (see Pennock, Gore, Metallizing, Macbeth-Evans, pg 631)

(1) Alternative theory is that trade secret does not constitute abandonment but rather public use, which would bar others from filing for same invention

D. [102(d)]

1. Party-Specific Statutory Bar – triggered only by applicant

VI. NONOBVIOUSNESS (CH. 6)

Not codified until 1952, § 103; prior to 1952, patent only required novelty and utility

Broader test than novelty test under § 102

Overall, obviousness is question of law, no deference to lower court (pg 748); BUT review lower court’s findings on Graham factors as question of fact, look for clear error (Brown & Williamson)

A. Policy

1. nonobviousness attempts to measure technical accomplishment; invention must NOT be mere economic or trivial change from the prior art, but rather significant technical advance to merit award of patent (pg 644)

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2. if an idea is so obvious that people in field would develop it w/out much effort, then incentives for patent system may be unnecessary to generate idea; would actually create social costs since public could not freely use (pg 646)

a. NOT all novel discoveries deserve patent

3. granting patent to obvious inventions may compromise incentives that patent system provides to develop nonobvious inventions

4. granting obvious patents may create a proliferation of economically insignificant patens that are expensive to search and license (pg 647)

B. Process of Mind – don’t take inventor’s intent or process of mind into account for patentability; also codified in § 103 as “patentability shall not be negatived by the manner in which the invention was made”

C. Old Test – inventive genius or flash of creative genius (Cuno Engineering, pg 667); criticisms:

1. typically lead to invalidation of patents covering relatively simple technology; (pg 661)

2. flash of creative genius establishes high bar for patentable; also very arbitrary for courts to enforce (pg 669)

3. Compare Old Test w/ § 103 – old test looked for some special quality that made a new thing patentable; IN contrast, 103 compares the invention with the whole prior art and a fictional person (PHOSITA)

D. Graham – SC addresses § 103

1. 103 is a codification of Hotchkiss

a. House Report on 103 – NO patent if the difference between the new thing and what was known before is not considered sufficiently great to warrant a patent (i.e. the difference is such that the subject matter as a whole would have been obvious at the time to a person skilled in the art) (pg 676)

2. Constitutional Requirements for Patent – promoting useful arts and science (Graham, pg 672)

a. Patent Power is Qualified Authority – Framers wanted to end custom by Crown of awarding certain parties monopolies on goods and businesses that had long been enjoyed by public

b. Congress can NOT enlarge patent monopoly w/out regard to innovation, advancement, or social benefit

c. Congress can NOT authorize issuance of patents whose effect are to

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remove existent knowledge from public domain, or to restrict free access to materials already available

d. Requirements for patent that are in keeping w/ Const’s goal of promoting useful arts and science: innovation, advancement, and things which add to the sum of useful knowledge

(1) Also prevents inventor from getting another patent on some slight variation, extending his monopoly

e. Courts and PTO, in applying Congress’ standards, must adhere to these Constitutional requirements

f. Thomas Jefferson – patent is not designed to secure natural rights, but rather is an inducement to bring forth new technology (pg 673)

(1) So, goal of patent was to find inventions which would not be disclosed or devised but for the inducement of a patent (pg 674)

3. Hotchkiss Summary – based on Constl. requirement, only “inventors” should get patent (implying something original); if invention is obvious, then creator is NOT inventor but rather skilled mechanic (one skilled in the art, not adding anything)

a. So, Hotchkiss requires comparison between patent’s subject matter and background skill of the calling

4. Graham Test (pg 677)

Ultimate question of patent validity is one of law, nonobviousness lends itself to several basic factual inquiries (pg 677)

a. Determine scope and content of the prior art

(1) For 103, consider only prior art that is pertinent to the field of invention (do NOT consider nonanalogous art); TEST

(a) Whether the are is form the same field of endeavor, regardless of the problem addressed, AND

(b) If reference not w/in field of the inventor’s endeavor, whether reference still is reasonably pertinent to the particular problem w/ which the inventor is involved (pg 800)

(2) Backdating done for 102(e) for secret patent application also done for 103 [NOTE: 102(e) requires inventions be the same; no such requirement for 103]

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(3) 102(f) and (g) prior art is the same for 103

(4) Time – ONLY prior art at time invention created

b. Differences between the prior art and the claims at issue are to be ascertained

(1) Note when P argues advantages of invention at trial, but advantages are not in the specification; weighs towards nonobvious (pg 685)

c. Level of ordinary skill in the pertinent art resolved

(1) Factors to consider: educational level of inventor; type of problems encountered in art; prior art solutions to the problem; rapidity w/ which innovations are made; sophistication of tech; educational level of active workers in field (pg 744)

Secondary Considerations (Objective Indicia) – nexus required between the invention disclosed in P’s patent and the secondary considerations

NOTE: w/out any “inventive” qualities, these considerations will not overcome obviousness

SC in Graham said they may play a factor; whereas Fed. Cir. considers them a fourth factor

d. Commercial success

(1) Nexus - if there was some other reason why product was successful (e.g. regulations now permit it, big marketing, large financing for advertising, invention not main source of company’s success, etc.), then does NOT weigh for nonobvious

e. Long felt but unsolved needs

f. Failure of others to produce the invention (answer to problem)

g. Others copied

h. Review of file wrapper, discussing rejected and resubmitted claims

E. Old Elements Combined – a device that combines old elements is not necessarily obvious; must use the Graham test to determine if the combined effect is nonobvious

1. if patent merely rearranges old elements, but the elements perform the same function, it is obvious (merely skilled mechanic, not inventor)

F. Reduction of Presumption – in litigation, if additional invalidating prior art is discovered that was NOT before the PTO during prosecution, then the presumption that

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an issued patent is valid is reduced (pg 701)

1. Policy – do not need deference to PTO since it did not review that prior art in determining patent

G. Combining Prior Art – obviousness can NOT be established by combining pieces of prior art reference suggests combining the features actually combined in the invention at issue

1. Corollary – obviousness cannot be established by combining pieces of prior art absent some teaching, suggestion, or incentive supporting the combination

2. Hindsight – to avoid hindsight-obviousness, apply rigorous application of requirement of teaching or motivation to combine prior art references (Dembiczak, pg 712)

a. Evidence of teaching or motivation MUST be clear and particular; broad conclusory statements re: teaching of multiple references no enough

b. PTO has burden to show obviousness; therefore, did the PTO produce evidence or just make general statements about how references could be connected? PTO needs evidence in keeping w/ Graham test (pg 713-14)

H. SC Trend – Which Predates Creation of Fed. Cir. (1982) [pg 706]

1. § 103 (1952) was supposed to overrule A&P’s synergistic approach (1950) [patent results in an effect greater than the sum of the several effects taken separately]

2. in keeping, Graham (1966) ruled 103 codified the Hotchkiss (1851) standard (mechanic v. inventor) which lowered bar for patentability

3. BUT Sakraida (1976) again cited the A&P synergistic approach, which appears to again raise the bar for patentability

I. Fed Cir Trend – Post 1982

1. Debmiczak – obviousness revolves around using old elements (see above “hindsight”) and if there was suggestion to combine; this test seems to lower the bar from the SC’s synergistic approarch

2. Suggestion Test to Find Obviousness (Brown & Williamson)

a. need to find something in prior art as a whole to suggest the desirability of making the combination (pg 714), AND

(1) suggestion or motivation based on (a) nature of the problem to be solved (prior art trying to solve same or similar problem patent solved), (b) the express teachings of the prior art, OR (c)

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the knowledge of one of ordinary skill in the art (see Teleflex, pg 10)

b. that suggestion claims a reasonable expectation that such combination would be successful (pg 715)

(1) if inventor faced w/ large number of variables and prior art does not give guidance, then inventive step is typically necessary (nonobvious); Exception: when it is reasonable to expect most or all combinations to work [pg 718]

Criticism – although the suggestion/motivation can be implicit (which would mirror the SC’s Sakraida application), too often courts look for explicit, which too often restricts the obviousness inquiry to a literal reading of the prior art (pg 717)

24 Law Professors Brief – claims that suggestion test lowers the bar established by SC; SC is considering whether to take Teleflex case

3. Teaching Away – in contrast to suggestion test that weighs towards obviousness, teaching away from suggested method weighs towards nonobvious (e.g. mixing salt w/ plastics tends to cause explosions, salt frog lure) [pg 726]

VII. INFRINGEMENT – LITERAL BY CLAIM INTERPRETATION

Panel Dependent – which judges on panel is crucial to how the claims will be interpreted (per Petherbridge’s article)

A successful infringement suit requires at least one valid claim to cover the accused infringer’s product or process

A. Infringement [§ 271(a)] – whoever w/out authority makes, uses, offers to sell, or sells patented invention w/in U.S. or import into U.S.

1. access and intent are irrelevant

B. Claim Interpretation – Two Steps for Literal Infringement

1. First - look to the claims; claims determine if invention is patentable and establish boundaries for patentee’s right to exclude (question of law; Phillips at 1211)

a. ALSO look to specification, drawings, preferred embodiment, and file wrapper; help explain the claims; helps define scope and meaning of claims

2. Second - determine if claims read literally on the accused structures (infringing device), IF ALL the limitations claimed are present in accused device, then infringing(question of fact; Phillips at 1211)

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a. BUT, if claims do not read literally, still infringing if accused structure performs substantially the same function in substantially the same way and for substantially the same purpose (pg 881)

b. NOTE: If claims did not read literally or substantially the same, check DOE

C. General Comments (pg 882)

1. Patent Preamble – courts split re: whether preamble can be considered; typically NOT limiting when merely recites purpose or intended use of invention (Innova at 1118)

2. Abstract – statement in abstract may operate as a clear expression of manifest exclusion, but it must be direct or clear since the Abstract is typically a general statement about the invention

3. Doctrine of Claim Differentiation – applicants do not use two claims when one will do; SO if one claim includes limitation and another does not, the claims cover different subject matter (do not read limitation in one into another claim)

4. Doctrine of Prosecution Disclaimer – precludes patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution (Omega, handout, at 1323)

a. Statements in history re: disclaimer must show clarity and deliberateness; BUT if vague, doctrine does not apply (Omega, handout, at 1325)

5. Specification – can help define words and phrases, but limitations in specification can NOT be read into claims

6. Prosecution History – can use statements made during prosecution do help define words or phrases (e.g. response to Office Action)

7. Lexicographer – applicant can define its owns terms in specification

8. Extrinsic Evidence (pg 883)

a. Always can be used - dictionaries and technical treatises

b. Rare circumstances where court is stuck – expert testimony, articles, and inventor testimony

c. AND, any extrinsic evidence that will help court understand the underlying technology

D. Claim Interpretation is Question of Law, no 7th Amend right to jury on claim interpretation (Markman, pg 884); so DC will hold Markman hearing to determine scope of patent for jury

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1. Reasons for Law over Fact

a. judges are better at construction of written documents (patents and statutes)

b. need uniformity, which is better served by judges rather than juries

2. Fed. Cir. in Control

a. SC opinion in Markman (1996) was directive to Fed. Cir. to develop standard for claim construction that lower courts could follow

b. In affirming Markman (question of law), Cyborg (1998) further established Fed. Cir. as the body to develop rules on claim construction; Fed Cir is uniquely in control b/c no SC or statutory guidelines on claim interpretation that it must follow

c. Fed Cir will review DC’s claim interpretation de novo (no deference to DC or PTO)

d. BUT: Phillips en banc dissent (2005) – discussed the confusion Fed Cir has stirred by disagreeing on legal standard (procedural or holistic); argued that claim interpretation has no Const. concern, so should be a question of fact based on Fed. Rule Civ. Pro. § 52(a) (finding of facts only set aside if clearly erroneous)

(1) Waste of time to have evidentiary Markman hearing about claims, and then do it again at Fed. Cir.; more efficient and accurate for DC to construct the record

(2) Who qualifies as PHOSITA and the state of the art at creation are fact specific to case and are not general conclusions that are typical for conclusions of law

(3) Compare - Differs from obviousness analysis, which treats elements as question of fact and then overall balancing as question of law

E. Fed. Cir. Claim Construction – Based on Petherbridge’s Article

NOTE: goal of Fed. Cir. is to obtain consistency; created b/c PTO’s loose standards re: patentability was casing doubts on the judiciary’s presumption that an issued patent is valid and DC’s analyses were varied; SC wanted Fed. Cir. to develop patent law (pg 1115-16)

1. Competing Interpretive Canons that Create Split

a. Claims are to be interpreted in light of specification and prosecution history

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(1) contextual reading; preserve function of claim as ultimate statement of patent scope (pg 1133)

b. Claims may not be modified beyond their actual language by reference to the specification or prosecution history

(1) Meaning of claim language can NOT be altered by importing in changes from outside the claims

2. Other Canons

a. When different claims of a patent use same language, give that language the same effect in each claim

(1) Conversely – when similar but different terms are used, they have different meanings

b. All terms in claim are presumed to have meaning in claim (pseudo-canon) (Innova at 1119)

(1) Should not interpret claim in a way that makes term superfluous

3. Approaches to Tension in Canons

Procedural focused on extrinsic evidence, BUT holistic focused on intrinsic evidence

Phillips en banc decision and dissent discuss tension between the approaches

NOTE: MPF considerations, discussed below, in interpreting claims

a. Procedural Approach (63% of cases) – relatively strict rules-based hierarchy of interpretive sources; emphasis on ordinary meaning of disputed patent claim language (pg 1111)

(1) Trend – approach has gained favor over the years since Markman (1996); two new judges have adopted this approach, which is factor for trend

(a) BUT, Phillips en banc lists 11 of 12 judges agreeing to holistic approach

(2) Inherently more consistent, which favors goal of consistency

(3) Hierarchy (pg 1135)

(a) general presumption - ordinary understood (by PHOSITA) meaning of claim language; objective baseline

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(i) look to dictionaries, reference works, etc. (extrinsic evidence)

(b) alteration from ordinary meaning – if the claim term is vague or deprives clarity, OR the patentee has become its own lexicographer, then can look at intrinsic and perhaps other extrinsic evidence

(4) Comments on Proving Alternative Interpretation

(a) need significant proof that alternative meaning is required (e.g. textual reference in actual claim language w/ which to associate alternative construction, such as referring to written description) (Johnson Worldwide); gives notice to PHOSITA re: alternative definition (Innova at 1117)

(b) Party will argue that specification and prosecution history evidence alternative construction by patentee to support/refute infringement

(c) For alternative, description needs to describe term w/ clarity, deliberateness, and precision (Johnson Worldwide at 991); broad language re: term does NOT rebut ordinary language presumption

(d) Claims will not be read restrictively unless patentee has demonstrated clear intention to limit the claim using words or expressions of manifest exclusion or restriction (Innova at 1117)

(e) NOTE doctrine of claim differentiation, limitation listed in one claim does not extend to all claims where it is omitted

(f) Preferred embodiment by itself, or mere inferences drawn from description of embodiment, do not limit claim terms

(g) Function Relationship – claimed components must perform a designated function (e.g. function of water bottle tube and cap is to filter); weighs against finding alternative b/c broader than specific function that limits claim (Innova at 1118)

(h) Incorporates MPF (see below)

b. Holistic Approach (37% of cases) – less structured analysis; whether a claim must be limited to the specific embodiment presented in specification depends in each case on the specificity of description of

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invention and on the prosecution history (Cultor at 1331)

(1) Goal: Determine what is ordinary meaning of term to PHOSITA at the time of invention (Phillips en banc)

(2) THUS, need to determine ordinary meaning - flexible; seeks correct meaning according to the particular circumstances presented (rather than following formal steps and hierarchy) [pg 1134]

(3) First: Claim Language – widely accepted meaning of commonly understood words

(4) Second: Intrinsic Evidence - Remainder of Specification and Prosecution History

(a) Specification is typically dispositve re: claim term

(b) approach relies heavily on specification language and review or prosecution history for interpretations

(c) term will NOT be ordinary term if intrinsic evidence shows patentee distinguished that term from prior art on (a) basis of particular embodiment (i.e. only one embodiment available), (b) expressly disclaimed subject matter, or (c) described a particular embodiment as important to invention (Phillips at 1213)

(d) NOTE: using embodiment goes against canon that embodiment by itself should NOT limit claim

(5) Third: Extrinsic Evidence - less significant than intrinsic evidence

(a) supported expert or witness testimony, dictionaries, learned treatises, state of art, meaning of technical terms

F. Means-Plus-Function Claims (§ 112, ¶ 6) – alternative to accepting ordinary meaning for term in claims; claims are therefore limited by specification

1. Example: Patentee tries to broaden claims by encompassing equivalent structures by merely listing a function instead of a structure (e.g. instead of rivet, list “means for fastening”)

2. Focus of Issue: whether the claim as properly construed recites sufficiently definite structure to avoid § 112, ¶ 6

3. Test (Omega, handout at 1321)

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a. Identify the claimed function, THEN

b. Ascertain the correspond structures in the written description that perform those functions

(1) Limitation: structure must be necessary to perform the claimed function

For MPF, claim must have more than one element; SO if claim only has one element, can NOT express claim in MPF format (pg 32)

4. Whether claim is MPF is a question of law (Phillips at 1212)

5. Presumption – if the claim lists “means,” then it is presumed to be MPF

a. Exception: drafting around MPF – although “means” is not listed, claim merely lists a function and not a structure

b. Conversely – omitting the word means creates a presumption that MPF does NOT apply (Phillips at 1212)

6. Limitations under § 112, ¶ 6 (see pg 975)

a. FIRST - Authorizes function claiming only in a claim for a combination of elements; a single element claim can NOT be claimed functional

b. SECOND – functionally claimed elements limited to those structures described in specification and equivalents to those structures, does NOT encompass every structure capable of achieving named function

VIII. INFRINGEMENT - DOCTRINE OF EQUIVALENTS

Burden of Proof – Patentee has burden to prove infringement, literal or DOE

NO intent requirement, just like literal infringement (Warner-Jenkins)

A. Definition of DOE – does NOT expand claims, the scope of patent protection as defined by the claims remains the same, BUT rather application of DOE expands the right to exclude to equivalents of what is claimed (pg 971)

1. NOT literal infringement but accused device is equivalent; accused device does not copy every literal detail

2. Function-Way-Result Test - Accused device performs substantially the same function in substantially the same way to obtain the same result (Graver Tank, pg 918)

3. Determined based on whether PHOSITA would have known of the interchangeability of an ingredient not contained in the patent w/ one that was (pg 919)

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a. Insubstantial change gets DOE; substantial change NO DOE

4. Pioneer Patents – pioneer patents are to be given wider ranges of equivalence than minor improvement patents

a. no official definition of what “pioneer” means, which creates a place to argue, but something like path-breaking development in a new field of technology (pg 962)

5. Policy – w/out DOE, would be too easy for other party to make a trivial change to avoid direct literal infringement

a. BUT, do not apply to broadly or runs counter to patent policy of notifying public what is patented and what is in public domain

6. NO DOE for Unclaimed Matter – anything expressly listed in specification but then NOT claimed can NOT be captured under DOE (pg 956)

a. Reissue – BUT, patent owner can file reissue w/in two years from patent reg date to include disclosed by unclaimed subject matter (Johnson & Johnson handout)

7. NO DOE for elements that were expressly or implicitly excluded or criticized in specification (such that the invention is far better) (Gaus, hair dryer case, handout)

B. DOE is question of fact (Graver Tank, pg 918)

1. Evidence = any form, such as expert testimony, documents, texts, etc.

2. Can NOT overrule unless clearly erroneous

3. BUT, although Warner-Jenkins affirms it is question of fact, states that if prosecution history estoppel would apply or if DOE would entirely vitiate a particular claim element, partial or complete judgment should be rendered by the court (question of law) b/c no further material issue for the jury to resolve (pg 936)

C. Comparison – Warner-Jenkins narrows Graver Tank, requiring comparison of accused product with patent claims (rather than the patentee’s commercial product) [pg 937]

D. All Elements Rule – DOE must be applied to each individual element in claim, NOT to the invention as a whole (Warner-Jenkinson, pg 930)

1. Requires equivalence to be established between each element in the clam and some structure in the accused device

2. Prevents too broad an application, which would cut against public notice policy and requirement to state scope of invention in claims

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E. Exceptions

1. Prosecution History Estopple – when claim is narrowed during prosecution to avoid rejection, can NOT use DOE to broaden claims back to include the particular equivalent at issue (Warner-Jenkinson, pg 931)

a. Presumption – when PTO forces narrowing claim amendment, presumption is that estopple applies

(1) Rebuttal – show that amendment did not surrender particular equivalent at issue, OR equivalent unforeseeable at time of appl, OR patentee/PHOSITA could not reasonably describe equivalent (pg 952)

(2) Burden on Patentee to show why claim was amended, and then court would decide if reason sufficient to overcome estopple (pg 932)

b. Basis for Rejection – most likely based on prior art, BUT estopple can be used whenever rejection required patentee to narrow the scope of its claim to meet patentability or statutory requirements (Festo, pg 951)

c. Question of Law b/c based on claim drafting, which is like claim interpretation (question of law) (pg 955)

2. Accused Device Covered in Prior Art

NOTE: overlaps w/ obviousness b/c looking at prior art, BUT concepts are separate (see “d” below)

a. Theory – patentee should NOT be able to get around prior art bar in prosecution by narrowing claims and then rely on DOE to expand rights to exclude those products merely incorporating prior art (pg 971)

b. Whether an asserted range of equivalents would cover what is already in public domain (prior art) is question of law (Wilson, pg 971)

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IX. INFRINGEMENT – EXPERIMENTAL USE DEFENSE

A. In general, experimental use of a device that incorporates another’s patent is infringement, even not manufacturing and selling; just use enough to infringe (Bolar, pg 1004)

1. Exception: pre-market tests for FDA approval are not infringement (§ 271(e)); Trade off: drug patent owners, through patent term restoration, can get extensions for their patents to cover the time that their drug was waiting for FDA (pg 1007)

B. Narrow General Exception – can invoke defense when use is for amusement, to satisfy idel curiosity, or for strictly philosophical inquiry

1. even the slightest commercial use will bar the defense

2. hard to show no commercial use, except someone playing in garage; even universities use there experiments for some commercial gain (Madey)

3. Burden of Proof – D must prove experimental use

X. INFRINGEMENT – CONTRIBUTORY

A. Steps per § 271(c)

1. MUST find direct infringement by user of allegedly infringing device, AND

2. then determine if D was contributory liable

a. knowledge of the activity that is alleged to be infringing (not required that it was infringing), AND

b. knowledge of the patent

B. Substantial Non-Infringing Uses – defense against contributory liability

C. Exhaustion Doctrine – once item sold, consumer can use w/out infringing; sold item no longer under patent monopoly (pg 1023)

D. Repair v. Reconstruction – repairing item does NOT infringe patent on sold device; BUT reconstructing sold device (a lot of repair) would infringe

1. Exception to Repair – provision in sale prohibits repair

2. Repair or reconstruction is question of law

E. Inducement (§ 271(b)) – does not require “knowingly,” but there must be some level of knowledge to hold D liable

1. no passive inducement (i.e. failure to take steps to stop infringement) (pg 1030)

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XI. ALLOCATION OF POWER IN PATENT SYSTEM

A. Fed. Cir review of PTO fact finding is court/agency standard, which is slightly lower than the court/court standard of clearly erroneous

B. PTO Rulings on Law – Chevron Deference (pg 1167)

1. when PTO using its authority re: rules, Fed. Cir. must give the rulings deference

2. when PTO just commenting w/out authority, no deference

XII. DEFENSE – REEXAMINATION ( §§ 301-303)

A. Ex Parte Reexamination (pg 1205)

1. Anyone can commence reexamine by demonstrating that prior art “patents or printed publications” raise a substantial new question of patentability affecting the validity of an issued claim

2. validity question must be new and substantial

3. PTO has three months to determine whether request for reexamination is valid

4. reexamination cannot broaden scope of claims (§

5. 305)

B. Inter Partes Reexamination (pg 1211) – allows third party full participation in reexamination

1. BUT, third party cannot challenge Board’s decision in court, although patentee can

XIII. DEFENSE – DOCTRINE OF INEQUITABLE CONDUCT

A. PTO Rule 56 – Duty to Disclose (pg 1216)

1. public interest is best served when PTO is aware and evaluates teachings of all information material to patentability

2. the duty to disclose is deemed satisfied if all info know to be material to patentability of any claim was cited by PTO or submitted to PTO by applicant

3. What is “material”? (pg 1217)

a. Prior art NOT cumulative of information already or record; AND

b. Establishes by itself or in combination w/ something else, the unpatentability of claim, OR

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c. Refutes or inconsistent w/ position taken by applicant in response to PTO OA

4. NOTE – Rebuttal for Patentee – patentee needs good faith explanation; could argue that the omitted prior art is (1) not material or (2) merely cumulative

B. Three-Part Test

1. Materiality (issue of fact, clearly erroneous)

a. Submit inaccurate (false) information OR Fail to disclose pertinent information

(1) broader than fraud b/c covers omissions

(2) Examples: omit prior art, failure to note public use and on-sale bars, false affidavits re: dates of invention, and doctored data supporting affidavits

b. Requires proof by clear and convincing of a threshold degree of materiality of the nondisclosed or false information

(1) KEY: Test for “Threshold Degree” – whether there is a substantial likelihood that a reasonable examiner would have considered the omitted reference of false information important in deciding whether to allow the application to issue as patent (pg 1220)

c. Overall Degree of Similarity - Missing material does not have to anticipate or render claim obvious to be “material,” it merely needs to be pertinent, such that the PTO would want to see it and make its own conclusion

(1) Other materials omitted, besides prior art, could fell under inequitable conduct (e.g. omission of co-owner, false affidavit)

(2) Best Mode – failure to disclose, or mislead about, best mode can invalidate patent under inequitable conduct (pg 1246)

2. Intent (issue of fact, clearly erroneous)

a. Can prove with direct or indirect evidence; proof of direct scheming is not required

b. Evidence of Intent – prior art cited against foreign applications for same patent, applicant has license from prior art owner, patent involved in litigation re: senior patent

c. NO Gross Negligence – per Kingsdown, gross negligence by itself is NOT enough to infer intent to deceive (pg 1245)

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(1) Need more than just known or should have known to obtain inference; view it in connection with other factors

3. Balancing Materiality and Intent (issue of law, de novo)

a. Sliding Scale – the more material the omission or misrepresentation, the lower the level of intent required to establish inequitable conduct OR vice versa (pg 1231)

C. Unpatentable

1. if court determines inequitable conduced occurred, ALL of the claims are invalidated, not just the ones under investigation

a. BUT, court can look outside the claim(s) subject of the litigation to determine if inequitable conduct occurred (e.g. can look at specification, description, drawings, etc.)

2. inequitable conduct can occur at any stage of prosecution, including reissue

3. Attorney Fees - inequitable conduct qualifies as “exceptional” and thus leads to award of attorney fees (pg 1237)

XIV. INVENTORSHIP AND OWNERSHIP OF PATENTS

A. § 116, Joint Inventors – need to apply together, no matter what percentage each worked on the invention

1. Joint Invention – product of a collaboration between two or more persons working together to solve the problem addressed (pg 1258)

a. need not have worked together at the same time, BUT they must know that they are working together (pg 1263)

b. need not work on all the claims together; contribution to one claim is enough

c. Although inventorship is question of law, Fed. Cir. reviews the underlying finding of fact which uphold a DC’s inventorship determination for clear error (pg 1274)

2. Conception – complete only when the idea is so clearly defined in inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, w/out extensive research or experimentation (pg 1258)

a. May turn on when inventor has ability to describe invention w/ particularity (pg 1259)

b. BUT, inventor does NOT need to know if invention will work for conception to be complete (pg 1259); discovery that invention actually

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works is reduction to practice

3. K Around Ownership – NO, can not use K to add one’s name as inventor; inventor must have contributed; BUT could use K to get ownership (rather than inventor) or license (pg 1262)

B. Judicial Correction of Ownership (§ 265) – court can amend certificate if:

1. in error, person named on certificate is not inventor (misjoinder), OR

2. in error, person not named, and error was not the result of omitted person’s deceptive intent (nonjoinder)

a. NOTE: if other party omitted person on purpose, may be inequitable conduct, which would render patent unenforceable to them but NOT the omitted person (pg 1268)

3. these errors will not invalidate patent

C. Amending Ownership – can add other inventors to application, as long as omission was done without deceitful intent (pg 1256)

D. Licensing by Co-Owners – each owner can license the invention w/out the consent of the other co-owners (pg 1256)

E. Exclusive licensees can bring suit w/out the patentee, only if the licenses owns all the rights to the patent; in other words, licensee is assignee (pg 1293-94)

F. Non-exclusive licensees cannot bring suit w/out the patentee

G. Must record conveyance w/ PTO three months after execution or it will not be valid against subsequent purchasers (pg 1295)

H. Shop Right – right to practice the invention but not the right to license another to do so; shop right is personal right that cannot be assigned (pg 1308)

XV. DEFENSES TO INFRINGEMENT CLAIM: DOUBLE PATENTING AND ANTITRUST MISUSE

A. Double Patenting – can NOT seek double patents in attempt to lengthen monopoly; typically happens with patentee drafts broad claims and PTO divides out application

1. Statutory Double Patent - ???

2. Non-Statutory Double Patent - ???

a. terminal disclaimer (§ 253) – can get another patent on an obvious variation of patent, but that patent’s term ends when the original patent

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expires

B. Antitrust

1. Antitrust Misuse defense - defeats PI action and allows D to use invention royalty free

a. BUT, patentee can purge her misuse and (presumably) reinstate property right (patent) [pg 1065]

XVI. REMEDIES

A. Injunctive Relief (§ 283)

1. Preliminary Injunctions

a. w/out PI relief, infringers would become merely compulsory licensees as long as the litigation lasts (paying damages as they went along) (pg 1040)

2. PI Elements (Amazon, pg 1045)

a. A reasonable likelihood of success on the merits

(1) Prove moving party will likely prove that other party infringes patent; AND

(2) Moving party’s infringement claim will likely withstand other party’s challenges to the validity and enforceability of the patent (pg 1047)

Difficult to prove when basing infringement on DOE (pg 1051)

b. Irreparable harm if an injunction is not granted

(1) Presumption re Irreparable Harm - presumed when clear showing of patent validity and infringement has been made (pg 1045)

c. Balance of hardships tipping in its favor

d. Injunctions favorable impact on the public interest

3. Accordingly: PI will not issue if (pg 1046)

a. D can raise a substantial question concerning either infringement or validity, AND

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b. P can NOT prove that D’s theory lacks substantial merit (i.e. patent would not likely withstand D’s challenge, pg 1051)

Standard of Review (lower standard than for SJ) – D needs only to prove substantial question re: invalidity to block PI; does NOT need to show clear and convincing evidence that is required for summary judgment (pg 1047)

B. Eminent Domain (pg 1064)

1. U.S. Govt. – patentees can only get money (reasonable and entire compensation)

2. State Govts. – patentees can only get injunction; money award would violate 11th amend

C. Property Rules v. Liability Rules

1. injunctive relief is in keeping w/ property right; BUT monetary relief is in keeping w/ liability rules (pg 1066)

2. Property Rules – generally are good when cost of transferring right amongst parties interested in using them are low compared to the costs of courts trying to value harm after infringement (judicial valuation is inaccurate and difficult)

a. Patents do well under property law b/c hard for court to determine damages to patent; court would rather issue injunction than allow continued damages

3. Liability Rules – costs of bargaining before infringement are likely to be very high compared to judicial calculation of value (easier for court to award damages)

a. Temporary – involves non-willful infringement; infringer was not aware of patentee’s right (pg 1067)

b. Permanent (rare) – patentee not selling into market served by infringer, and the market is deemed important to public

D. Damages (§ 284)

1. Statute requires damages awarded that are adequate to compensate for the infringement (pg 1070)

2. Lost Profits (ex post damages award) – patentee must prove (pg 1070)

a. Demand for patented product

b. Absence of acceptable non-infringing substitutes

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c. Patentee’s manufacturing and marketing capability to exploit the demand

(1) consider also whether patentee tends to give no, few, or several licenses

d. Amount of profit patentee would have made

3. Reasonable Royalty (ex ante license agreement)– when lost profits can NOT be proved, patentee is entitled to a reasonable royalty (pg 1071)

a. What is reasonable? The rate at which a licensee would pay as royalty, AND yet still make and sell product at profit, BUT then increased since there would be no deterrence if the infringer merely had to pay the normal royalty rate (e.g. a rate freely negotiated between the parties) [pg 1072]

b. Factors to Consider: what was P’ property, what extent has D taken it; property’s usefulness and commercial value; and extent of property’s use (pg 1072)

c. Rate calculating from date of infringement

d. Can use expert testimony to determine reasonable royalty

e. Fallacy – the reasonable royalty analysis makes the assumption that the D made a choice to pay a royalty, when in realty it did worse: it choose to infringe the patent (pg 1078)

(1) Should the court give a rate that give the infringer a profit? Seems like bad policy (pg 1078)

f. Did the infringer weigh compare benefits of licensing and infringement? If so, then infringement was willful and damages are trebled

XVII. PATENTABLE SUBJECT MATTER

A. Categories of Patents (§ 101, definition of process § 100) – Process, Machine, Manufacture, Composition of Matter, OR any New and Useful Improvement Thereof

1. anything under the sun that is man made

2. EXCEPTIONS: laws of nature, physical and natural phenomena, and abstract ideas

a. Although application of a law of nature or mathematical formula to a known structure or process may deserve patent (pg 147)

3. Utility analysis sometimes is blurred w/ novelty analysis in pre-1952 cases and nonobviousness analysis after 1952

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4. look for transformation; transformation and reduction of article to a different state of thing is the clue to patentability of a process claim that does not include particular machines (pg 145)

B. Living Organisms – patentable as manufacture or composition, as long as they are NOT naturally occurring; must be man-made (Chakrabarty, pg 71)

1. natural things

a. can get patent on process for extracting them, but can NOT patent the natural thing itself (pg 101), OR

b. change the characteristics of natural thing, thus creating a new thing; e.g. isolating and purifying a compound, gland, cell, or gene (pg 102)

(1) Chakrabarty seems to say any artificially created life form is patentable; in keeping, artificially made oysters and other animals (pg 128-29)

c. Hard to distinguish the adrenaline in Parke-Davis w/ the bacteria for legumes in Funk Brothers; court in Funk said bacteria was just doing what it naturally does

(1) Maybe some fields of technology are looked more favorably upon when deciding utility

(2) Both cases were decided before 1952; after 1952, obviousness would play a more important role in these types of cases

C. Plants

1. can get patent for artificially created or bred plants (pg 123)

2. Const. says “any new discovery,” so Congress expanded the law to cover these types of plants

D. Computer Programs

1. can NOT get patent for mathematical formula or algorithm (this is covered under copyright) (pg 147)

2. can get patent for process of making something, wherein a computer is used in the process (i.e. mere application of a law of nature or math)

3. PTO further relaxed standard for computer software; software is patentable if its operation produces a useful, concrete and tangible result (pg 164); constitutes a practical application of an abstract idea, such as a mathematical formula (State Street, pg 160)

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4. NOT patentable – innovative software that generally increases the efficiency of a computer (pg 164)

E. Field Restrictions

1. field restrictions created by courts tend not to endure; BUT restrictions created by legislation remain enforceable (pg 165)

2. NOTE: TRIPS bars any type of field restriction (pg 166)

3. Business Method Exception – before State Street, could not get patent on business method; State Street ruled that if a business method meet the requirements, it could get patent

a. Prior User Rights Defense (§ 273) – gives defense against alleged infringer of business method, when infringer was commercially using business method at least one year prior to the effective filing date of the business method patent

(1) This defense to a specific filed seems to violate the TRIPS’ agreements language about no discrimination amongst fields (pg 173)

XVIII. UTILITY

A. Comments

1. Utility based on § 101’s “inventions that are useful” and § 112’s disclose “manner and process of making and using” (pg 211)

2. Prohibits filing of patent application in the very early stages of research

3. Timing - Utility measured at the time no later than application filing date (pg 246)

4. Whether an invention has utility is a question of fact (Fisher, handout)

B. Practical or Specific Utility – does the invention have substantial utility OR is it frivolous and insignificant (a basic general or speculative use)?

1. low bar to pass, need only show one specific and substantial utility

2. Questions arises in biotechnology where scientists create compound but then do not know what it could be used for (pg 229)

3. until process claim has been reduced to production of a product shown to be useful, the metes and bounds of patent monopoly are not capable of precise delineation; i.e. quid pro qua for monopoly is that society gets something useful

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(which is substantial utility) (pg 232, and from Fisher)

a. PHOSITA can use claimed discovery in a manner which provides some immediate benefit to the public (Fisher); NOT something that is mere staring point for future research

4. How can someone infringe product or process if there is no use?

C. Beneficial Utility – is the invention socially harmful or have a deceitful purpose

1. early patent applications for gambling devices were rejected; NOW, hard to say what device is socially harmful

D. Operability

1. Presumption – that patentee’s claims of use and operability are correct; PTO then must rebut by evidencing PHOSITA would reasonably doubt usefulness and operability (pg 213)

2. ALSO Rejected Under § 112 - typically, if the invention has no utility under § 101, it also can NOT disclose the manner and process (enablement) of using the invention required under §112

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