PATENT LAW
Randy Canis
CLASS 14
Part 2
Final Review
1
Final Exam Info
• Final Exam format
– 50 multiple choice questions + bonus
questions
– 2 points per question
– All answers to be completed in Excel
document provided on website
– Use capital letters for your answer
2
Final Exam Info
• Grading
– I will not acknowledge receipt of your graded
exam immediately.
– However, I will respond within 24 hours of
receipt of your exam with your final grade
– I will not advise you of which questions you
scored correctly or incorrectly on the final
exam, nor do I send an answer key
– However, if you did not receive the grade you
expected to receive, I am willing to go over the
questions with you that you missed.
3
Final Exam Info
• Thus, you have an incentive to turn in the final
exam early so that you can get your grade early
and address any issues before your final exam
grade is entered.
• I reserve my right to enter final grades for all
students at 12:01 p.m. the day the exam is due.
• DO NOT BE LATE IN TURNING IN THE EXAM
OR, AMOUNG OTHER THINGS, YOUR GRADE
IN THE COURSE COULD BE DELAYED
• Any further questions about the final exam?
4
Final Review
• What did we learn this semester?
• Let’s review…
5
Branches of U.S. Government (3)
Legislative
Executive
Judicial
Body
Congress
Pres &
Admin
Agencies
Federal Courts
Role
“Make”
“Enforce”
“Interpret”
Regulations
Case Opinions
Federal
Register and
C.F.R.
Case Reporters
“Product” Statutes
Location
U.S. Code
6
Federal Court Structure
• US Supreme Court (1)
• US Court of Appeals (13)
– 8th Circuit
– Federal Circuit
• US District Courts (144); at least 1 per
state
– Missouri - 2 Federal District Courts
•
•
•
Eastern District - St. Louis
Western District - Kansas City
+ Federal Bankruptcy Court
7
Jurisdictional Requirements
• What is jurisdiction?
– the power of a court to decide a matter in
controversy (i.e., a case)
• What is needed to establish jurisdiction?
– Authority of the court to hear the case (e.g.,
original or appellate jurisdiction)
– Authority of the court over the subject matter
(subject matter jurisdiction)
– Jurisdiction over the parties (personal
jurisdiction) or property (in rem jurisdiction) of
the suit
– Proper notice
•8
8
Types of Intellectual Property
• Unfair Competition
• Right of Publicity
• Trademarks
• Trade Secrets
• Patent
• Copyright
Note: Lay people often erroneously term one
type of intellectual property by another
name, such as copyrighting a name,
patenting a music CD, trademarking an
invention, etc.
9
Introduction (Chapter 1)
• Essence of the Patent System
– Disclosure of a technological advance in exchange for
the right to exclude others from employing it
– Also: Improve society through technological change
10
Three Types of Patents
• Utility Patent – an invention that is
functional and useful
• Design Patent – a new, original, and
ornamental design of an article of
manufacture
• Plant Patent – protection on a new variety
of plant that has been asexually
reproduced through grafting, budding or a
similar technique
11
Diamond v. Chakrabarty
• Ruling
– Court overruled the examiner’s rejection
of the claims.
• Holding
– Congress hasn’t excluded organisms
produced by genetic engineering from
§101.
• Dicta
12
In re Bilski (Fed. Cir.)
• Test identified by Federal Circuit In re
Bilski
– “A claimed process is surely patenteligible under § 101 if: (1) it is tied to a
particular machine or apparatus, or (2) it
transforms a particular article into a
different state or thing.”
– Sole test for determining patent
eligibility of a process under 101…
13
In re Bilski –
Supreme Court Decision
• Machine-or-transformation test
– not endorsed as the exclusive test
– was not intended to be an exhaustive or
exclusive test
– provides “a useful and important clue,
an investigative tool, for determining
whether some claimed inventions are
processes under §101”
– is not the sole test
14
In re Bilski –
Supreme Court Decision
• Result
– Computer software is still patentable
– Business methods that don’t involve
technology have a limited chance of
being patentable
– What about methods for treatment?
• More in a minute
15
Mayo Collaborative Services v.
Prometheus Labs., Inc.
• “If a law of nature is not patentable,
then neither is a process reciting a
law of nature, unless that process
has additional features that provide
practical assurance that the process
is more than a drafting effort
designed to monopolize the law of
nature itself.”
16
Post Mayo Claim Drafting
• In the claims, have something
beyond steps or combination of steps
that are in context obvious, already in
use, or purely conventional
• If your claims include a natural law,
make sure to structure the claim (or
step(s) of the claim) as an inventive
application of the natural law
17
Utility
• Should the claimed invention be
useful for some practical purposes in
and of itself, or should it be superior
to known technologies?
18
Juicy Whip, Inc. v. Orange Bang, Inc.
“The fact that one product can be
altered to make it look like another is
in itself a specific benefit sufficient to
satisfy the statutory requirement of
utility”
19
Anticipation (Chapter 4)
• An invention must be new at
conception by an original inventor to
be patentable.
• An invention is anticipated if
someone else has already invented
the invention.
20
Anticipation
• Inquiry
– Does a reference qualify as a prior art
reference?
– Does the reference and the claimed invention
both disclose the same invention?
• Must be in a single reference, and not a
combination of two or more references.
• Enablement
– Does the reference enable those skilled in the
art to practice the invention without undue
experimentation?
21
Titanium Metals Corp. of America v. Banner
• “Congress has not seen fit to permit
the patenting of an old alloy, known
to others through a printed
publication, by one who has
discovered its corrosion resistance or
other useful properties, or has found
out to what extent one can modify the
composition of the alloy without
losing such properties.”
22
Schering Corp. v. Geneva
Pharmaceuticals, Inc
• “A patent is invalid for anticipation if a
single prior art reference discloses each
and every limitation of the claimed
invention. … Moreover, a prior art
reference may anticipate without
disclosing a feature of the claimed
invention if that missing characteristic is
necessarily present, or inherent, in the
single anticipating reference.”
23
Four Corners
• “[U]nless a reference discloses within the
four corners of the document not only all of
the limitations claimed but also all of the
limitations arranged or combined in the
same way as recited in the claim, it cannot
be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under
35 U.S.C. § 102.”
• Net Moneyin, Inc. v. Verisign, Inc., Fed.
Cir. 2008
24
When Do the Provisions of AIA
Go Into Effect?
•
•
•
•
•
•
Day of Enactment Sept 16, 2011
10 Days Sept 26, 2011
Oct 1, 2011
60 Days Nov 15, 2011
12 Months Sept 16, 2012
18 Months Mar 6, 2013
25
25
Prioritized Examination
• Track 1
– $4,800 Examination fee (50% reduction
for small entity)
– Final disposition on average within 12
months from examination request grant
– Must be filed by EFS-WEB
– Max of 4 indep. and 30 total claims
26
Reading a Patent
• Front Page
–
–
–
–
–
–
–
Title
Abstract
Single Drawing
Inventor
Assignees
Search data and references
Examiner(s) & Firm
• Drawings
• Specification
• Claims
27
Statutory Bars
• Encourages timely filing and disclosure of
inventive activity.
• An inventor must file within a year of any public
use or offer to sell the invention.
• Anyone, including individuals unknown to the
inventor, can defeat the patent by placing the
invention in public use or sale.
• The 1-year grace period permits the inventor to
weigh the advantages of patent protection, to
perfect the invention, and to draft a patent
application.
28
Metallizing Engineering Co. v.
Kenyon Bearing & Auto Parts
• “… if he does beyond [the 1 year period of
probation], he forfeits his right regardless of how
little the public may have learned about the
invention; just as he can forfeit it by too long
concealment, even without exploiting the
invention at all.”
• “It is indeed true that an inventor may continue for
more than a year to practice his invention for his
private purposes of his own enjoyment and later
patent it. But that is, properly considered, not an
exception to the doctrine, for he is not then
making use of his secret to gain a competitive
advantage over others; he does not thereby
extend the period of his monopoly.”
29
Lough v. Brunswick Corp.
• What factors are used in the totality of circumstances test?
• To determine whether a use is "experimental," a question of
law, the totality of the circumstances must be considered,
including various objective indicia of experimentation
surrounding the use, such as the number of prototypes and
duration of testing, whether records or progress reports
were made concerning the testing, the existence of a
secrecy agreement between the patentee and the party
performing the testing, whether the patentee received
compensation for the use of the invention, and the extent of
control the inventor maintained over the testing. … The last
factor of control is critically important, because, if the
inventor has no control over the alleged experiments, he is
not experimenting. If he does not inquire about the testing or
receive reports concerning the results, similarly, he is not
experimenting.
30
Experimental Use
• As a general rule, an experimental use
only negates a statutory bar when the
inventor was testing claimed features of
the invention.
• Courts view the totality of the
circumstances when determining whether
an invention was on sale or in public use
• The experimental use exception does not
include market testing.
31
Pfaff v. Wells Electronics, Inc.
•
“On Sale” Test
1) The product must be the subject of a
commercial offer for sale
2) The invention must be ready for patenting
• Proof of reduction to practice before the
critical date; or
• Proof that prior to the critical date the
inventor had prepared drawings or other
descriptions of the invention that were
sufficiently specific to enable a person
skilled in the art to practice the invention
32
W.L. Gore & Associates v.
Garlock
• The secret commercialization of a
product or method by a third party
does not provide a statutory basis
to bar an applicant from obtaining a
patent on the product or method.
33
In re Hall
• “[P]ublic accessibility” has been called the
touchstone in determining whether a
reference constitutes a “printed
publication” bar under 35 U.S.C. §102(b)
… The proponent of the publication bar
must show that prior to the critical date the
reference was sufficiently accessible … so
that such a one by examining the
reference could make the claimed
invention without further research or
experimentation.”
34
New 102 After AIA
(a) NOVELTY; PRIOR ART.--A person shall be entitled to
a patent unless-(1) the claimed invention was patented, described in a
printed publication, or in public use, on sale, or
otherwise available to the public before the effective
filing date of the claimed invention; or
(2) the claimed invention was described in a patent
issued under section 151, or in an application for
patent published or deemed published under section
122(b), in which the patent or application, as the case
may be, names another inventor and was effectively
filed before the effective filing date of the claimed
invention.
35
New 102 After AIA
• (b) EXCEPTIONS.-• (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE
THE EFFECTIVE FILING DATE OF THE CLAIMED
INVENTION.--A disclosure made 1 year or less before the
effective filing date of a claimed invention shall not be prior
art to the claimed invention under subsection (a)(1) if-• (A) the disclosure was made by the inventor or joint inventor
or by another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor; or
• (B) the subject matter disclosed had, before such
disclosure, been publicly disclosed by the inventor or a joint
inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint
inventor.
36
How Will the Grace Period Work?
• Inventor must disclose the invention publically
first
– Less than one year before filing
– Before a third-party discloses
• How will proof of disclosure be measured?
– Don’t know
• Is experimental use still a viable exception?
– Don’t know
37
Patent Searches
• Type of Searching
– Key word search
– Inventor search
– Assignee search
• Limitation of what’s listed without separate
assignment search
– Classification Search
38
35 U.S.C. §102
• Conditions for patentability; novelty and
loss of right to patent
A person shall be entitled to a patent
unless-(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 . . .
39
Gillman v Stern
• [A secret use] is clearly not a ‘public’
one, and such an inventor is not a
‘first inventor’.”
40
“Swearing Behind” a Reference
• Under rule 131
– Applicants can declare an invention date prior
to the date of a prior art reference.
– Termed “swearing behind” or “antedating” a
prior art reference
– Can overcome a 102(a) or 102(e) rejection
– Cannot overcome a 102(b) rejection—why?
• Invention date is revealed on an ad hoc
basis
41
102(g) Background
• “A person shall be entitled to a patent
unless… before the applicant’s
invention thereof the invention was
made in this country by another.”
• Exception
– If the first inventor has “abandoned,
suppressed or concealed” the invention,
then the first inventor has forfeited
special status under 102(g)(2).
42
•
Patent Interference
Applicability
If two or more applications are filed in the
PTO for the same invention, a complicated
set of proceedings called an
INTERFERENCE PROCEEDING.
Interference between:
– two or more PENDING APPLICATIONS or
– between PENDING APPLICATION AND
ISSUED PATENT if during the first year
after patent issued when declared by
patent examiner or provoked by patent
applicant
43
The Rule of Priority
• In short,
– The first inventor to reduce the invention
to practice wins, unless
– If the inventor who was first to conceive,
but second to reduce to practice can
show diligence from the time of
conception to reduction to practice, then
this inventor will displace the first
inventor who reduced to practice.
44
Showing Conception
• “To show conception, an inventor
must present proof showing
possession or knowledge of each
feature of the count and
communicated to a corroborating
witness in sufficient detail to enable
one of skill in the art to replicate the
invention.”
45
Reduction to Practice
•
Reduction to practice by:
1) Constructively – by filing a patent
application
2) Actually – by building and testing a
physical embodiment of the invention
46
102(e)
• 102(e)(1) – a published application that
discloses, but does not claim the invention
constitutes prior art as of its filing date
• 102(e)(2) – an issued patent that
discloses, but does not claim the invention,
constitutes prior art as of its filing date
• How might this occur?
47
More on Patent Reform
for 102
• What’s changed (or gone)?
– Gone  102(a), 102(f), 102(g)
– Expanded  102(e)
– Gone  patent interferences, swearing
behind
– Likely Gone  establishing conception
and reduction to practice (e.g., still alive
for derivation?)
48
Derivation Proceedings
• Completely new
• Similar in some aspects to patent
interferences
• Nothing like it in foreign jurisdictions
49
Data Available
• What is available in Public Pair?
–
–
–
–
–
–
–
–
Application data
Image file wrapper
Patent term adjustments
Continuity data
Fees
Published documents
Address & Attorney/Agent
Display references
50
Graham v. John Deere Co.
• “Under §103, the scope and content of the
prior art are to be determined; differences
between the prior art and the claims at issue
are to be ascertained; and the level of
ordinary skill in the art resolved. Such
secondary considerations as commercial
success, long felt but unresolved needs,
failure of others, etc., might be utilized to give
light to the circumstances surrounding the
origin of the subject matter sought to be
patented.”
51
Objective Evidence of
Nonobviousness
•
•
•
•
•
•
•
Commercial Success
Copying
Prior Failures
Licenses
Long-felt need
Unexpected results
Skepticism
52
Suggestion to Combine
• “To render an invention obvious under section
103, an examiner or court may acquire evidence
that a skilled artisan, confronted with the same
problems as the inventor and with no knowledge
of the claimed invention, would select the
elements from the cited prior art references and
combine them in the manner claimed.
• The examiner or the court must show a
suggestion or motivation to make the combination
before the invention. NO LONGER GOOD LAW
AFTER KSR
53
KSR v. Teleflex – Supreme
Court
• Supreme Ct
– Rejects rigid approach; expansive and flexible
approach
– “[T]he Court has held that a ‘patent for a
combination which only unites old elements with no
change in their respective functions . . . obviously
withdraws what is already known into the field of its
monopoly and diminishes the resources available
to skillful men.’ ...
– “The combination of familiar elements according to
known methods is likely to be obvious when it does
no more than yield predictable results.”
54
2007 Obviousness Guidelines
(1) Combining prior art elements according to known methods to yield
predictable results;
(2) Simple substitution of one known element for another to obtain
predictable results;
(3) Use of a known technique to improve similar devices, methods, or
products in the same way;
(4) Applying a known technique to a known device, method, or product
ready for improvement to yield predictable results;
(5) Obvious to try— choosing from a finite number of identified,
predictable solutions, with a reasonable expectation of success;
and
(6) Known work in one field of endeavor may prompt variations of it for
use in either the same field or a different one based on design
incentives or other market forces if the variations are predictable to
one of ordinary skill in the art.
• Any rationale employed must provide a link between the factual
findings and the legal conclusion of obviousness.
55
Categorization of Cases in the 2010
Examination Guidelines
• Combining Prior Art Elements
• Substituting One Known Element for
Another
• Obvious to Try Rationale
• Consideration of Evidence
56
Prior Art for Nonobviousness
• “… [I]t is often possible to take the
same group of references relevant for
novelty, and by combining them or
looking past the contents of a single
reference, undertake the nonobvious
inquiry.”
• “The technology must also issue from
a technical discipline that is relevant
to the claimed invention.”
57
Oddzon Products, Inc. v. Just
Toys, Inc.
• “It means that an invention, A’, that is
obvious in view of subject matter A,
derived from another, is also unpatentable.
The obvious invention, A’, may not be
unpatentable to the inventor of A, and it
may not be unpatentable to a third party
who did not receive the disclosure of A,
but it is unpatentable to the party who did
receive the disclosure.”
58
Analogous Arts
• “Two criteria have evolved for determining
whether prior art is analogous:
• (1) whether the art is from the same field
of endeavor, regardless of the problem
addressed, and
• (2) if the reference is not within the field of
the inventor’s endeavor, whether the
reference is still reasonable pertinent to
the particular problem with which the
inventor is involved.”
In re Clay
59
Joint Research Efforts
• Under 103(c), when the prior art and
the claimed invention are, at the time
of the invention, owned by a single
entity, then they may not be
considered under a nonobviousness
inquiry.
• Exempts 102(e), (f) and (g)
60
Patent Specification
Requirements
35 U.S.C. §112 requires that the Specification
of a patent application must contain:
(A) A written description of the invention;
(B) The manner and process of making and
using the invention (the enablement
requirement); and
(C) The best mode contemplated by the
inventor of carrying out the invention.
M.P.E.P. 2161
61
Undue Experimentation
• “Factors to be considered in determining
whether a disclosure would require undue
experimentation have been summarized
by the board. The include (1) the quantity
of experimentation necessary, (2) the
amount of direction or guidance presented,
(3) the presence or absence of working
examples, (4) the nature of the invention,
(5) the state of the prior art, (6) the relative
skill of those in the art, (7) the predictability
or unpredictability of the art, and (8) the
breadth of the claims.”
62
Must be Enabled at the Time of Filing
• “To overcome a prima facie case of
lack of enablement, applicant must
demonstrate by argument and/or
evidence that the disclosure, as filed,
would have enabled the claimed
invention for one skilled in the art at
the time of filing.”
• MPEP 2146.05
63
Unpredictable Arts
• Chemistry and Biotechnology
• Patent specifications within the
unpredictable arts must show with
reasonable specificity how to practice
the invention across the entire scope of
the claim.
64
Deposit Requirement
• “Some inventions cannot be enabled by a
written explanation. The way to enable
such inventions is to provide a sample.
Major patent offices therefore adopted a
procedure whereby inventors of novel
microorganisms could fulfill statutory
enablement requirements by depositing a
sample of the microorganism in a facility
open to the public.”
65
Written Description
Requirement
• To satisfy the written description
requirement, a patent specification
must describe the claimed invention
in sufficient detail that one skilled in
the art can reasonably conclude that
the inventor had possession of the
claimed invention.
• MPEP 2163
66
Written Description
Violations
• Broad Claims
• Claims cannot cover inventions never contemplated
or disclosed by the inventor
• Narrow Claims
• Each limitation must be supported by written
description
• Addition of New Matter
• To obtain benefit of earlier-filed application, claims of
a continuation (or CIP) must be supported by original
specification
67
Design Patent
• See MPEP 1500
• 35 U.S.C. 171. Patents for designs.
• Whoever invents any new, original and ornamental design
for an article of manufacture may obtain a patent therefor,
subject to the conditions and requirements of this title. The
provisions of this title relating to patents for inventions shall
apply to patents for designs, except as otherwise provided.
The design for an article consists of the visual
characteristics or aspect displayed by the article. It is the
appearance presented by the article which creates an
impression through the eye upon the mind of the observer.
• 14 years from date of grant
• 1 claim - “The ornamental design for (the article which
embodies the design or to which it is applied) as shown.”
• No maintenance fees
68
Design Patent
1502.01 Distinction Between Design and Utility
Patents
In general terms, a “utility patent” protects the way
an article is used and works (35 U.S.C. 101),
while a “design patent” protects the way an article
looks (35 U.S.C. 171). The ornamental
appearance for an article includes its
shape/configuration or surface ornamentation
applied to the article, or both. Both design and
utility patents may be obtained on an article if
invention resides both in its utility and ornamental
appearance.
69
No Support in Specification for Claims
• “When claimed subject matter is only
presented in the claims and not in the
specification portion of the
application, the specification should
be objected to for lacking the
requisite support for the claimed
subject matter…”
• MPEP 2146
70
The Gentry Gallery, Inc. v. The Berkline
Corp.
• “[A] narrow disclosure will limit claim
breadth.”
• How should disclosures be written?
– “An applicant is entitled to claims as
broad as the prior art and his disclosure
will allow.”
– “[A] narrow disclosure will limit claim
breadth.”
71
Best Mode
• The best mode of carrying out the invention must
be disclosed.
• The test for a best mode violation is a two prong
inquiry.
• PRONG 1 (Subjective) – Did the inventor possess
a best mode for practicing the invention?
• PRONG 2 (Objective) – Does the written
description disclose the best mode so that a
person skilled in the art could practice it?
• MPEP 2165
72
Chemcast Corp. v. Arco Industries
Corp.
•
Test
1. At the time the inventor filed his patent
application, did the inventor know of a mode
of practicing the claimed invention that
he/she considered to be better than any
other?
2. If so contemplated, is the disclosure
adequate to enable one skilled in the art to
practice the best mode (i.e., has the best
mode been concealed)?
73
Best Mode Violation?
•
•
•
•
•
What May Establish Subjective Evidence of
Concealment?
Inventor testimony
Inventor’s lab notebook
Inventor’s contemporaneous articles, notes,
speeches, etc.?
Other corporate disclosures cannot impute
knowledge to inventor (Glaxo Inc. v. Novopharm
Ltd., 52 F.3d 1043 (Fed. Cir. 1995)
Commercial embodiment is not necessarily the
best mode. (Zygo Corp. v. Wyko Corp., 79 F.3d
1563 (Fed. Cir. 1996)
74
Ex Parte Fressola
• Ruling
– The Board affirmed the examiner’s final
rejection of claim 42 that claim 42 is indefinite
and fails to particularly point out and distinctly
claim what applicant regards as his invention
as required by Section 112 ¶ 2.
• Holding
– “… [An] omnibus claim does not satisfy Section
112 ¶ 2 because the claim does not itself
define the invention, but relies on external
material.”
• Dicta
75
Additional Notes on Claims
• “… [C]laims are to be read in light of the
specification.”
• “… a patent claim [must] be composed as
a single English sentence.”
• “… the narrower the claim, the greater the
likelihood that such a claim will withstand a
defense of invalidity.”
• “… the patentee also wants the broadest
claim possible in order to have the
possibility of reaching as many
competitors as possible.”
76
Elemental Claim Structure
Three basic parts of a claim:
1) A preamble
2) A transition phrase
3) A body
77
Catalina Marketing International v.
CoolSavings.com, Inc.
“In general, a preamble limits the invention
if it recites essential structure or steps, or if
it is ‘necessary to give life, meaning, and
vitality’ to the claim. … Conversely, a
preamble is not limiting ‘where a patentee
defines a structurally complete invention in
the claim body and uses the preamble only
to state a purpose or intended use for the
invention.’”
78
Catalina Marketing International v.
CoolSavings.com, Inc.
• Indications that the preamble may limit
claim scope
– Jepson preamble
– “… dependence on a particular disputed
preamble phrase for antecedent basis...”
– “… when reciting additional structure or steps
underscored as important by the specification”
– “clear reliance on the preamble during
prosecution to distinguish the claimed
invention from the prior art…”
79
Catalina Marketing International v.
CoolSavings.com, Inc.
• Indications that the preamble may not
limit the claim scope
– Claim body describes a structurally
complete invention
– Preamble extols benefits or features
(unless reliance on those features as
being patentably significant and/or to
distinguish prior art)
– Describes use of the invention
80
The Open Transition
“The Open Transition (‘comprising’):
The use of the term ‘comprising’
captures technologies with all the
elements described in the body of the
claim; whether the technology has
additional elements is irrelevant.
Thus, if a claim recites elements ‘A’
and ‘B’, a device with ‘A’, ‘B’ and
others is an infringement.”
81
The Closed Transition
“The Closed Transition (‘consisting
of’): In contrast, a claim which
employs the term ‘consisting of’ is
‘closed’ to additional ingredients.
Infringement can occur only when the
accused technology has exactly the
same elements recited in the claimno more or no less.”
82
The Hybrid Transition
“The Hybrid Transition (‘consisting
essentially of’): … This terminology
renders the claim “open” to include
additional elements that do not
materially affect the basic and novel
characteristics of the claimed
combination.”
83
The Body
Element Introduction
• “Elements of an invention are ordinarily
introduced with indefinite article, such as
‘a’ or ‘an,’ as well as terms such as ‘one,’
‘several,’ or ‘a plurality of.’ When that
element is noted later in the claim, claims
drafters ordinarily employ the definite
article ‘the’ or the term ‘said.’”
• “If an element appearing for the first time is
accompanied by ‘the’ or ‘said,’ then it will
ordinarily be rejected by an examiner as
lacking so-called ‘antecedent basis.’”
84
The Body
Element Introduction Example
• An apparatus comprising:
a first module to receive a video signal from a
source;
a second module to access the video signal from
the first module and encode transitioning data
into one or more frames of the video signal;
and
a third module to broadcast the video to the
plurality of display devices.
• What’s wrong with this claim?
85
Atlantic Thermoplastics Co. Inc. v.
Faytex Corp.
• “This court has repeatedly stated that
infringement requires the presence of
every claim limitation or its equivalent
… Thus, ignoring the claim limits of a
product-by-process claim would clash
directly with basic patent principles
enunciated by the Supreme Court
and this court.”
86
Means-Plus-Function
Format
“It requires the applicant to describe
in the patent specification the various
structures that the inventor expects to
perform the specified function. The
statute then expressly confines
coverage of the functional claim
language to ‘corresponding structure,
material, or acts described in the
specification and equivalents
87
thereof.”
Al-Site Corp. v. VSI International,
Inc.
• “… [A] structural equivalent under
§112 must have been available at the
time of the issuance of the claim. …
An equivalent structure or act under
§112 cannot embrace technology
developed after the issuance of the
patent…”
• After rising equivalents – doctrine of
equivalents
88
Aristocrat Technologies Australia Pty Ltd.
v. International Game Technology
• “[A] general purpose computer
programmed to carry out a particular
algorithm creates a ‘new machine’
because a general purpose computer
‘in effect becomes a special purpose
computer once it is programmed to
perform particular functions pursuant
to instructions from program
software.”
89
Jepson Claim
• Defines an invention in two parts:
– A preamble which recites the admitted
prior art,
– Followed by an “improvement” clause
which recites what the applicant regards
as his invention
• Referred to as a two-part claim in
other parts of the world
– Most popular in Germany
90
In Re Fout
• “This court has recognized that
section 102 is not the only source of
section 103 prior art. Valid prior art
may be created by the admissions of
the parties. Nor is it disputed that
certain art may be prior art to one
inventive entity, but not to the public
in general.”
91
Markush Groups
• Common in Chemical Practice
• Claim a family of compounds by defining a
structure common to all members of the
family, along with one or more alternatives
selected from the set consisting of named
chemical compounds.
• Example
– A compound of the formula OH-CH-R, where R
is selected from the group consist of chlorine,
bromine and iodine.
92
Datamize, LLC v. Plumtree Software, Inc.
• “[T]he purpose of the definiteness
requirement is to ensure that the
claims delineate the scope of the
invention using language that
adequately notifies the public of the
patentee’s right to exclude”
93
What is Prosecution?
• Negotiation by inventors or their
representatives as by patent counsel or
patent agent with a patent examiner &
other PTO officials administratively in
procedures involving the patent
application, examination, amendment,
continuing procedures and patent
grant.
94
Office Action
Summarizes the findings of examiner
• As to each claim specifically
– each claim is rejected, allowed, objected to
indicating allowable if rewritten in independent
form
• Any objections to the drawings, specification,
title, or abstract are included
• The office action could also include a double
patenting rejection
95
Provisional versus
Nonprovisional
Provisional
• Less preparation time Nonprovisional
• Can not amend
• More preparation time
• Amendments are possible
• No claims required
• Must have at least 1 claim
• Not examined
• Examined
• Informal
• More formal
• Valid for only 1 year;
must timely file
• Application valid until
nonprovisional claiming
abandoned or patent issued
priority
• New fee schedule as of 9/26/11 is here 
http://www.uspto.gov/web/offices/ac/qs/ope/fee092611.ht
m
96
Term of patent
• Patent will issue to be in effect 20 years from:
– Date of first filing of this or parent application
– Or as limited by delays of applicant during
prosecution
– E.g., extensions of time required by applicant
– Or as limited by the lapse of a parent
application
– Or where terminal disclaimer was submitted to
overcome a double patenting rejection
• Patent is subject to maintenance fees payable 3.5, 7.5
& 11.5 years after issuance
97
Continuation Possibilities
• Continuation – might claim other
aspects disclosed but not claimed, or
claimed in the same way as rejected
claims
• Request for Continuing Examination
(RCE) – removes finality of the office
action (e.g., pay to play)
98
Other Continuation Possibilities
• Divisional Application (CPA)
– To prosecute claims on independent invention
– Examiner restricted cls. to independent
invention
• Continuation-in-Part (CIP) Applicant
– To add matter not present in earlier application
– Where part or all of earlier application is
present
• Timing of Filing of Continuation(s)
– Before termination of proceedings in parent
– Before payment of issue fee in parent
99
Publication of patent applications
• 18 months after filing unless applicant requests
otherwise upon filing & certifies has not & won’t be
subject of an application filed in a foreign country
• Provisional rights available to patentees to obtain
reasonable royalties if others make, use, sell, or
import invention in the period between publication
and grant
• Applicant can consider if foreign counterparts will be
sought after all, after non-publication request (NPR).
• If applicant then files for foreign patent, must notify
PTO in US application within 60 days & withdraw
NPR. Application then is published ASAP
• PRIOR ART effect for published applications -Sec.102(e)
100
Inventorship
• Applications must be filed in the
name of the true inventors
• Inventors must sign a declaration or
an oath stating that they believe they
are the first inventors.
• Joint inventorship of an invention is
possible.
101
Ethicon, Inc. v. United States Surgical Corp.
“Conception is the ‘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’”
102
Ethicon, Inc. v. United States Surgical Corp.
• “[E]ach co-inventor presumptively
owns a pro rata undivided interest in
the entire patent, no matter what their
respective contributions.”
• “[J]oint inventions may become joint
property without some express
agreement to the contrary.”
• Outcome of this case?
103
Double Patenting
In such instances issues of double
patenting often overcome by use of
terminal disclaimer:
 Term of second patent after expiration of
first patent is disclaimed.
 Both patent then expire on the same
date.
 Both patents must remain commonly
owned.
104
Citation of Material to the USPTO
• Each individual associated with the
filing and prosecution of a patent
application has a duty of candor and
good faith in dealing with the Office,
which includes a duty to disclose to
the Office all information known to
that individual to be material to
patentability as defined in this section.
• 37 C.F.R. § 1.56(a)
105
Current Method of Disclosure
• Applicants submit one or more information
disclosure statements (IDS) during prosecution to
make the USPTO aware of any prior art that an
examiner would consider material.
• Prior art is material if there is a substantial
likelihood that a reasonable patent examiner
would consider it important in deciding if patent to
issue.
• To be material, prior art need not necessarily
render the claims unpatentable.
106
Therasense, Inc. v. Becton, Dickinson & Co.,
• Effect of Inequitable Conduct
– Defense to patent infringement
– Bars enforcement of a patent when found
• Historical Inequitable Conduct
– “egregious misconduct, including perjury, the
manufacture of false evidence, and the
suppression of evidence.”
– “deliberately planned and carefully executed
scheme[s] to defraud” not only the PTO but
also the courts.
107
Therasense, Inc. v. Becton, Dickinson & Co.,
• “To prevail on a claim of inequitable
conduct, the accused infringer must prove
that the patentee acted with the specific
intent to deceive the PTO. …
A finding that the misrepresentation or
omission amounts to gross negligence or
negligence under a ‘should have known’
standard does not satisfy this intent
requirement.”
108
Therasense, Inc. v. Becton, Dickinson & Co.,
• “[T]he accused infringer must prove
by clear and convincing evidence that
the applicant knew of the reference,
knew that it was material, and made
a deliberate decision to withhold it.”
109
Therasense, Inc. v. Becton, Dickinson & Co.,
• “[T]he materiality required to establish
inequitable conduct is but-for materiality.
When an applicant fails to disclose prior art to
the PTO, that prior art is but-for material if the
PTO would not have allowed a claim had it
been aware of the undisclosed prior art.
Hence, in assessing the materiality of a
withheld reference, the court must determine
whether the PTO would have allowed the
claim if it had been aware of the undisclosed
reference.”
110
Post Grant Procedures
• How can a patent be corrected or
reconsidered?
– Certificate of Correction
– Reissue
– Reexamination
• What types of errors may occur in a
patent?
–
–
–
–
Errors of Typographical Nature
Errors by PTO
Errors by Applicant(s)
Errors when printed patent differs from record
in PTO
111
Reissue/Reexamination
Correction of Substantive Errors
• Reissue – applicants correction of
more significant errors affecting the
validity and enforceability of an
issued patent
• Reexamination – allows applicants or
third parties to request that the PTO
reconsider the validity of the patent
112
Reissue
Rules
• Can seek broader claims (only w/in 2 yrs. of
issue) or narrower claims
• Cannot be used to correct inequitable conduct in
original prosecution
• Cannot recapture claim given up in original
prosecution
• Can’t defeat "intervening rights" of another who
relied upon original claims. Broadened reissue
claims can’t be enforced against another who
designed structure outside original claims
• Reissue petition need not point out any error
• Reissue has risk of involvement in interference
113
Recapture Rule
• If the patentee opted to narrow its claims
to avoid a prior art reference, then he
cannot use the reissue proceeding to
recapture the abandoned subject matter.
• Prevents a patentee from acquiring
through reissue claims of the same or
broader scope than those canceled from
the original application.
114
Reexamination
• Any person may file a request for
reexamination of a patent, along with
the required fee, on the basis of prior
art consisting of patents or printed
publications.
• PTO first determines if there is a
substantial issue of patentability of
one or more claims.
115
Repair v. Reconstruction
• Repair – permissible
– “Precedent has classified as repair the disassembly and
cleaning of patented articles accompanied by
replacement of unpatented parts that had become worn
or spent, in order to preserve the utility for which the
article was originally intended.”
• Reconstruction – impermissible
– Reconstruction requires a more extensive rebuilding of
the patented entity.
– “The unrestricted sale of a patented article, by or with
the authority of the patentee, ‘exhausts’ the patentee’s
right to control further sale and use of that article by
enforcing the patent under which it was first sold.”
116
Markman v. Westview Instruments, Inc.
• “An infringement analysis entails two
steps. The first step is determining the
meaning and scope of the patent claims
asserted to be infringed. The second step
is comparing the properly constructed
claims to the device accused of infringing.”
• “… [I]n a case tried to a jury, the court has
the power and obligation to construe as a
matter of law the meaning of language
used in the patent claim.”
117
Claim Construction
• Intrinsic
– Claims
– Specification
– Prosecution History
• Extrinsic
– Inventor testimony
– Dictionaries
– Learned treatises
118
Other Types of Infringement
INDIRECT INFRINGEMENT
• Active Inducement (§271(b))
– “Whoever actively induces infringement of a patent shall be
liable as an infringer.”
• Contributory Infringement (§271(c))
– “Whoever offers to sell or sells within the United States or
imports into the United States a component of a patented
machine, manufacture, combination or composition, or a
material or apparatus for use in practicing a patented process,
constituting a material part of the invention, knowing the same
to be especially made or especially adapted for use in an
infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial noninfringing
use, shall be liable as a contributory infringer.”
119
Eli Lilly & Co. v. American Cyanamid
Co.
• “Congress … [provided] that a
product that is ‘made by’ a patented
process within the meaning of the
statute ‘will . . . not be considered to
be so made after -- (1) it is materially
changed by subsequent processes;
or (2) it becomes a trivial and
nonessential component of another
product.’ 35 U.S.C. § 271(g).”
120
Knorr-Bremse Systeme v. Dana Corp.
• “… [T]he Federal Circuit ruled that ‘where,
as here, a potential infringer has actual
notice of another’s patent rights, he has an
affirmative duty to exercise due care to
determine whether or not he is infringing,’
including ‘the duty to seek and obtain
competent legal advice from counsel
before the initiation of any possible
infringing activity.’”
121
Knorr-Bremse Systeme v. Dana Corp.
• “A defendant may of course choose
to waive the privilege and produce
the advice of counsel. However, the
assertion of attorney-client and/or
work-product privilege and the
withholding of the advice of counsel
shall no longer entail an adverse
inference as to the nature of the
advice.”
122
Knorr-Bremse Systeme v. Dana Corp.
• “Although there continues to be ‘an
affirmative duty of due care to avoid
infringement of the known patent rights of
others,’ L.A. Gear Inc. v. Thom McAn Shoe
Co., 988 F.2d 1117, 1127 (Fed. Cir. 1993),
the failure to obtain an exculpatory opinion
of counsel shall no longer provide an
adverse inference or evidentiary
presumption that such an opinion would
have been unfavorable.”
123
In re Seagate
• “[T]o establish willful infringement, a
patentee must show by clear and
convincing evidence that the infringer
acted despite an objectively high
likelihood that its actions constituted
infringement of a valid patent.”
• State of mind not relevant
124
124
In re Seagate
• “[F]airness counsels against disclosing trial counsel’s
communications on an entire subject matter in response to
an accused infringer’s reliance on opinion counsel’s opinion
to refute a willfulness allegation.”
• “[A]s a general proposition, that asserting the advice of
counsel defense and disclosing opinions of opinion counsel
do not constitute waiver of the attorney-client privilege for
communications with trial counsel. We do not purport to set
out an absolute rule. Instead, trial courts remain free to
exercise their discretion in unique circumstances to extend
waiver to trial counsel, such as if a party or counsel engages
in chicanery. “
125
125
Infringement Under the Doctrine
Equivalents
• First Inquiry - Does a device or
method literally infringe one or more
claims of a patent?
• Second Inquiry - Does a device or
method infringe one or more claims
of a patent under the doctrine of
equivalents (DOE)?
126
Warner-Jenkinson Company v. Hilton
Davis Chemical Co.
• The Doctrine of Equivalents
– “… [A] product or process that does not
literally infringe upon the express terms
of a patent claim may nonetheless be
found to infringe if there is ‘equivalence’
between the elements of the accused
product or process and the claimed
elements of the patented invention.”
127
Graver test for equivalence:
FUNCTION-WAY-RESULT*
Graver Tank: "If two devices do the
same work in substantially the same
way, and accomplish substantially
the same result, they are the same,
even though they differ in name, form
or shape.”
*FWR
128
“All Elements” Rule
• “[T]he doctrine of equivalents can
only apply to an accused product or
process that contains each limitation
of a claim, either literally or
equivalently.”
• How is the “all elements” rule
applied?
129
Festo Corp. v. Shoketsu
Kinzoku
Holding on Issue #1
• “… [A] narrowing amendment made to satisfy any
requirement of the Patent Act may give rise to an
estoppel.”
• A patentee who narrows a claim as a condition for
obtaining a patent disavows his claim to the
broader subject matter, whether the amendment
was made to avoid the prior art (not for other
reasons tangential to patentability). In either
event ... estoppel can apply as to elements
narrowed by amendment.
130
Festo Corp. v. Shoketsu Kinzoku
Holding on Issue #2
• Prosecution history estoppel is not a
complete bar to assertion of the doctrine of
equivalents. … “Warner-Jenkinson held that
the patentee bears the burden of proving that an
amendment was not made for a reasons that
would give rise to estoppel, we hold here that the
patentee should bear the burden of showing that
the amendment does not surrender the particular
equivalent in question.”
131
Federal Circuit decision in Festo
Court spelled out three circumstances in
which presumption could be rebutted:
(1) where the accused equivalent was
unforeseeable at the time of amdt.
(2) where amdt. bore no more than a
“tangential relation” to accused equiv.,or
(3) where “some other reason” prevented
patentee from describing accused
equivalent in the patent appl.
132
Wilson Sporting Goods Co. v. David
Geoffrey & Associates
• “[A] patentee should not be able to
obtain, under the doctrine of
equivalents, coverage which he could
not lawfully have obtained from the
PTO by literal claims.”
133
The Reverse DOE
• Starting point - If you are practicing
the prior art, the claims that cover the
accused product or process are
invalid for obviousness or
anticipation.
134
Merck KGaA v. Integra LifeSciences I,
LTD
• “This case presents the question
whether uses of patented inventions
in preclinical research, the results of
which are not ultimately included in a
submission to the Food and Drug
Administration (FDA), are exempted
from infringement by 35 U. S. C.
§271(e)(1).”
135
Merck KGaA v. Integra LifeSciences I,
LTD
• “[W]e think it apparent from the statutory text that
271(e)(1)’s exemption from infringement extends to all
uses of patented inventions that are reasonably related to
the development and submission of any information
under the FDCA. …
• “This necessarily includes preclinical studies of patented
compounds that are appropriate for submission to the
FDA in the regulatory process. There is simply no room
in the statute for excluding certain information from the
exemption on the basis of the phase of research in which
it is developed or the particular submission in which it
could be included.”
136
NTP, Inc. v. Research In Motion,
LTD
• “The claims are directed to systems and methods
for sending email messages between two
subscribers; the transmission is made between an
originating processor and destination processor.
Although RIM’s relay, which is located in Canada
is the only component that satisfies the ‘interface’
of the ‘interface switch’ limitation is the asserted
claims, because all of the other components of
RIM’s accused system are located in the United
States, and control and beneficial use of RIM’s
system occur in the United States, we conclude
that the situs of the “use” of RIM’s system for
purposes of 271(a) is the United States.”
137
Madey v. Duke
Experimental Use Defense
• The accused infringer has the burden
of establishing the defense
• The defense is very narrow and
limited to actions performed “for
amusement, to satisfy idle curiosity,
or for strictly philosophical inquiry.”
A.C. Aukerman Co. v. R.L.
Chaides Construction Co.
• “1. Laches is cognizable under 35 U.S.C. § 282 (1988) as
an equitable defense to a claim for patent infringement.
• 2. Where the defense of laches is established, the
patentee’s claim for damages prior to suit may be barred.
• 3. Two elements underlie the defense of laches: (a) the
patentee’s delay in bringing suit was unreasonable and
inexcusable, and (b) the alleged infringer suffered material
prejudice attributable to the delay. The district court should
consider these factors and all of the evidence and other
circumstances to determine whether equity should intercede
to bar pre-filing damages.
• 4. A presumption of laches arises where a patentee delays
bringing suit for more than six years after the date the
patentee knew or should have known of the alleged
infringer’s activity.
• 5. A presumption has the effect of shifting the burden of
going forward with evidence, not the burden of persuasion.”
139
A.C. Aukerman Co. v. R.L.
Chaides Construction Co.
3. Three elements must be established to bar a
patentee’s suit by reason of equitable estoppel:
(a) The pantentee, through misleading conduct,
leads the alleged infringer to reasonably infer that
the patentee does not intend to enforce its patent
against the alleged infringer. ‘Conduct’ may
include specific statements, action inaction, or
silence where there was an obligation to speak.
(b) The alleged infringer relies on that conduct.
(c) Due to its reliance, the alleged infringer will be
materially prejudiced if the patentee is allowed to
proceed with its claim.
4. No presumption is applicable to the defense of
equitable estoppel.”
140
Akamai Technologies, Inc. v.
Limelight Networks, Inc.
• Direct infringement of a method claim
requires that a single party perform
each of the steps of the claimed
method
• No infringement unless “one party
exercises ‘control or direction’ over
the entire process such that every
step is attributable to the controlling
party.”
141
Divided/Joint Infringement
Conclusions
• Always draft claims from a single
party perspective when possible
• Include system claims
– Write system claims that can be “used”
by a single party
142
Shop Right
• “… [T]he right of an employer to use employee’s
invention in employer’s business without payment
of royalty. The ‘shop right’ doctrine is that, where
an employee during his hours of employment
working with his employer’s materials and
appliances conceives and perfects an invention
for which he obtains a patent, he must accord his
employer a nonexclusive right to practice the
invention. The employer, however, is not entitled
to a conveyance of the invention, this remains the
right of the employee-inventor.”
Blacks Law Dictionary, Abridged Sixth Edition
143
Remedies
• §283 Injunctive Relief
– The several courts having jurisdiction of
cases under this title may grant
injunctions in accordance with the
principles of equity to prevent the
violation of any right secured by patent,
on such terms as the court deems
reasonable.
144
Remedies
• §284 Damages
– Upon finding for the claimant the court
shall award the claimant damages
adequate to compensate for the
infringement, but in no event less than a
reasonable royalty for the use made of
the invention by the infringer, together
with interest and costs as fixed by the
court.
145
eBay v. MercExchange
•
Plaintiff must satisfy a four-factor test before a
court may grant a permanent injunction:
1) that it has suffered an irreparable injury;
2) that remedies available at law, such as monetary
damages, are inadequate to compensate for that injury;
3) that, considering the balance of hardships between the
plaintiff and defendant, a remedy in equity is warranted;
and
4) that the public interest would not be disserved by a
permanent injunction.
•
The decision to grant or deny permanent
injunctive relief is an act of equitable discretion
by the district court, reviewable on appeal for
abuse of discretion.
146
Panduit Corp. v. Stahlin Bros Fibre
Works, Inc.
• § 284 – damages adequate to compensate
for the infringement
• “To obtain as damages the profits on sales
he would have made absent the
infringement, i.e., the sales made by the
infringer, a patent owner must prove: (1)
demand for the patented product, (2)
absence of acceptable noninfringing
substitutes, (3) his manufacturing and
marketing capability to exploit the demand,
and (4) the amount of the profit he would
have made.”
147
Marking
• In general, a patented article should
have the word “patent” or the
abbreviation “pat.” together with the
number of the patent(s) affixed to the
article itself or packaging of the
article. By providing such notice, the
company retains its ability to obtain
pre-suit damages for its patents
subject to the statute of limitations.
Marking
• Provides notice of patent rights
• “Patent” or “pat.” along with the
number of the patent on patented
articles
• A label may instead be placed on
article or its packaging
• If not marked, no damages until after
the infringer receives actual notice of
the infringement
149
Marking
35 U.S.C. 287§(a)
• Patentees, and persons making, offering for sale, or selling
within the United States any patented article for or under
them, or importing any patented article into the United
States, may give notice to the public that the same is
patented, either by fixing thereon the word ''patent'' or the
abbreviation ''pat.'', together with the number of the patent,
or when, from the character of the article, this can not be
done, by fixing to it, or to the package wherein one or more
of them is contained, a label containing a like notice. In the
event of failure so to mark, no damages shall be recovered
by the patentee in any action for infringement, except on
proof that the infringer was notified of the infringement and
continued to infringe thereafter, in which event damages
may be recovered only for infringement occurring after such
notice. Filing of an action for infringement shall constitute
such notice.
150
Any Questions?
• See you for the final class next
week…
151
Program
Completed
All course materials - Copyright 2002-12 Randy L. Canis, Esq.
152