§101 Inventions Patentable
I.
Things That Can Be Patentable: a.
New and useful AND b.
Process, machine, manufacture, or composition of matter
II.
Things That Cannot be Patentable (do not take away basic building blocks) a.
Abstract Ideas (abstract idea + inventive concept under Mayo) i.
Flook ( formula that did catalytic conversions of hydrocarbons); not patentable ii.
Diehr (curing rubber using the Arrhenius equation); patentable iii.
CellzDirect (thawing liver cells); process is patentable iv.
Alice (computer program as a ledge); not patentable v.
Mayo (scientists already understood how the basic issues worked and simply combining them did nothing new) vi.
Thales ( defines what an abstract idea even is)
1.
the claims are directed to systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame.
2.
At step one, “it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether that patent-ineligible concept is what the claim is ‘directed to.’'
3.
The claims specify a particular configuration of inertial sensors and a particular method of using the raw data from the sensors in order to more accurately calculate the position and orientation of an object on a moving platform. The mathematical equations are a consequence of the arrangement of the sensors and the

unconventional choice of reference frame in order to calculate position and orientation. Far from claiming the equations themselves, the claims seek to protect only the application of physics to the unconventional configuration of sensors as disclosed. vii.
Exergen (scanning forehead and millions of dollars; court got it wrong applying Mayo; Hughes dissent is right) viii.
Note: the machine-or-transformation test is a test of patent eligibility under which a claim to a process qualifies for consideration if it (1) is implemented by a particular machine in a non-conventional and non-trivial manner or (2) transforms an article from one state to another
1.
Not only test but useful to guide b.
Physical Phenomena (needs to be manmade) i.
Chakrabarty

manmade bacterium is patentable because it does not exist in nature (note: process to make something can still be patentable even if the subject matter is not)
1.
SC used broad definitions of manufacture and composition
(statutory reading from the Patent Act of 1793 suggests a broad reading)
 a.
Under 35 USC 101 does the microorganism constitute a
"manufacture" or "composition of matter" within the meaning of the statute; SC uses the dictionary definition (thinks this suggests wide scope by congress): i.
Manufacture: the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations whether by hand labor or machinery ii.
Composition: all compositions of two or more substances and all composite articles, whether they be

the results of chemical union, or of mechanical mixture, or whether they be gases, fluid, powders, or solids ii.
Parke Davis

Purified adrenaline is patentable; judge kept in mind how valuable the discovery was and wanted to promote that (implicit benefit) iii.
Myriad (more recent)

isolated DNA not patentable though cDNA
(note: Ct ignores footnote 8 that says cDNA is made in nature by viruses; unusual and rare phenomenon) c.
Laws of nature d.
Mineral found in the ground or plant off the forest floor
§112 Specification (Written Description and Enablement)
(a) In General.
The specification shall contain a written description of the invention, and of the manner and process of making and using it , in such full, clear, concise, and exact terms as to enabl e any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
1.
Enablement a.
Either (1) provide the raw materials for making the invention or (2) tell the world how to make the raw materials for the invention b.
In Re Wands (you cannot get the patent and be a sole provider of raw material)
(no undue experimentation) i.
Quantity of experimentation necessary

ii.
Amount of direction or guidance presented iii.
Presence or absence of working examples iv.
The nature of the invention v.
State of the prior art vi.
Relative skill of those in the art vii.
Predictability or unpredictability of the art viii.
Breadth of the claims c.
Janssen (meets written description but not enablement because the papers don’t prove anything; can be proven through analytic reasoning but that is very difficult; if you fail utility you also fail enablement) d.
Incandescent Lamp (what you claim must share a common property) e.
Methods of Proof i.
Test on people ii.
Test on animals iii.
Test in test tubes iv.
Test on a theoretical computer model
2.
Written Description a.
Gentry (recliner with controls and the location of the controls; preferred embodiment defense does not work) (might not be good law anymore) b.
Ariad (written description and enablement are separate) c.
Person Skilled In The Art
§102 Novelty
1.
General a.
All-elements Rule i.
Inherently Described Counts (extrinsic evidence says necessarily present)

i.
In Re Robertson (diaper is not anticipated by the Wilson patent because Wilson patent only has 2 and does not inherently describe the Robertson patent) ii.
Person skilled in the art of ordinary skill can recognize it iii.
The thing in the prior art must be there not just may b.
In re Schreiber (patent application made conical top for popcorn but there was something similar for gasoline) i.
Even if used for a different purpose you can’t take it ii.
Patentee just changed the diameter and got the patent c.
In re Seaborg i.
Fermi’s creation of americium was accidental and not able to be separated and could not be detected ii.
Does not anticipate Seaborg’s creation of Americium d.
In re Schering i.
Does not matter if the DCL in people’s bodies were detected ii.
Only matters if it could have been detected e.
2011: prior user right f.
Tilghman v. Proctor (no anticipation) i.
Accidental anticipation does not count ii.
Fat made in engine does not anticipate tilghman’s invention g.
Hafner (lack of utility does not make something not prior art)
2.
Public Knowledge (§102a) a.
Must be known or used by others b.
Test: non-secret, ordinary court of business c.
National Tractors (no public K) i.
Drawing on mother’s tablecloth does not count d.
Rosaire (public K) i.
No active steps needed ii.
Ordinary use for prospecting for oil

e.
Garlock (public K) i.
(1) Non-secret use in the (2) usual course of (3) business f.
Hafner (his own prior art anticipated his own invention)
3.
Priority (§102g)

how does this work with suppression a.
General i.
Evidentiary i.
Inventor must corroborate his own testimony ( Barbacid) b.
RTP i.
Needs ACS right away i.
Not ACS: improving/handing it over a.
Marketing Strategy is not commercializing ii.
Miller (4 years is too long; implied ACS not deliberate ACS) c.
Conception i.
Needs diligence after party B conceives i.
Diligence: illness, lack of funding, maternity leave ii.
Experimental Use Exception d.
Informing Use i.
Product i.
If product is sold then it will bar third-parties ii.
Process i.
If process is kept secret but product sold then it will not bar thirdparties
1.
Excuses For Inactivity a.
Valid i.
Poverty and illness ii.
Regular employment iii.
Scheduled vacations b.
Invalid i.
Attempts to commercialize ii.
Doubts about value or feasibility iii.
Work on other inventions iv.
Seeking grants to fund a reduction to practice when it can already afford it e.
Resumed effort is fine

4.
Public Use (§102b) a.
Moleculon (not public use) i.
Rubix cube; showed friends and co-workers b.
Beachcombers (public use) i.
Showed 20-30 people for the purpose of gathering more information c.
NOTE: people need to handle it and work with it to be a public use; just talking about it is not enough
5.
On Sale Bar (§102b) a.
Does not include selling patent rights b.
Pfaff (2 part test for on-sale bar) i.
Product is the subject of a commercial offer for sale i.
Offer only needed ii.
Commercial offer not casual offer ii.
Invention Ready for patenting i.
Need proof of RTP or drawings and description to enable person skilled in the art ii.
Conception not enough c.
Dunlop/Gillman

if reverse engineered product then on sale bars third party but if secret process then no bar d.
Metallizing (basically public sale; pick one or the other; does not matter if secret or not FOR YOURSELF) e.
Experimental Use Exception i.
Elizabeth (experimental use before RTP if your invention needs long time
to work out) i.
Test For Experimental Use a.
Used under the surveillance of the inventor b.
For the purpose of enabling him to test the machine

c.
And to ascertain whether it will answer the purpose intended d.
And make alternations and improvements as experience demonstrates to be necessary ii.
Manville (not commercial sale if testing it out) i.
At cost test iii.
Baxter i.
Test here: totality of the circumstances with the policies underlying the public use bar a.
Policies: i.
Discouraging the removal from public domain of inventions that the public reasonably has come to believe are freely available ii.
Favoring the prompt and widespread disclosure of inventions iii.
Allowing the inventor a reasonable amount of time following sales activity to determine the potential economic value of a patent iv.
Prohibiting the inventor from commercially exploiting the invention for a period greater than the statutorily prescribed time
6.
Printed Publication (§102b) a.
Klopstein (PPT is PP) (4 factor test) i.
Lenght of time ii.
Expertise of viewing audience iii.
Whether copying was allowed iv.
Ease of copying b.
Cronyn (not PP; student presentation catalogued and handed out to faculty but not in a meaningful way) c.
Hall (PP: thesis indexed and was available)

7.
Third Party a.
Baxter International (working with it in a somewhat public laboratory blocks other parties) b.
Theft (still blocks third-parties because public expectation) ( Lorenz

stole process ) c.
Garlock (not public use because process was sold but kept secret; tape) d.
Lockwood (features in public the public use??) e.
General RULE? i.
102b public use

expectation of public and reliance? ii.
102b on sale

exploitation of 20 years and only applies to first party’s actions?
New §102
102(a)(1) d.
MIT (copies distributed so PP) e.
Wyer (microfilm in Australian patent place); PP though dubious
Patent is granted unless the claimed invention was patented, described in a printed publication
(enablement req’d), in public use enablement),
(no on sale
(no enablement), or otherwise available
102(a)(2) 102(b)(1) -
Exceptions
102(b)(2) –
Disclosure
Exception
Patent is not granted if it was descried in a patent and was filed before the filing date
(1) 1 year grace period
(A) Exceptions that apply to 102(a)(1) –
(2) Disclosure is not prior art under (a)(2) if: of the effective filing date

First-to-file rule

No geographic limitations someone discloses the (A) They stole it invention before you from you
(B) Before the patent in 1/5 ways

Disclosure = anything in was filed, the subject matter was publicly
102(a)(1) disclosed by the inventor

to the public
(enablement req’d) before the effective filing date of the claimed invention

Critical date
= filing date

No ct has decided
“otherwise available to the public”. Likely an oral presentation at a conference or a podcast would be swept in

On sale = party specific

Public use = not party
(B) Exceptions that apply to 102(a)(2) – discloses later
– ok

Secret sale ≠ public
(C) It was owned by the same person or someone files before you filed

If disclosure was public – ok

If you disclose assigned to the same person.

Co-inventor files first, but you are the same entity.
(Masur says first and then someone rarely an issue) specific

Ascertain who made the first public disclosure?
Prior User Rights § 273(b) (2011)
1.
If you are using something commercially and someone patents that process/invention, the patentee cannot force you out. Keeps trade secrets safe for you.
Non-obviousness §103

1.
Obviousness does not require all-elements rule
2.
Graham (TEST) a.
Scope and content of prior art b.
Difference between the prior art and claimed invention c.
Level of ordinary skill in the art d.
Determining whether the subject matter is obvious ( secondary considerations such as public and commercial response to an invention)
3.
KSR (rejects the TSM test) a.
Worries about hindsight bias b.
Adjustable pedals c.
Rule: look to all information and prior art teaching and see if person ordinarily skilled in the art would have understood (SC thinks people are more skilled than the Federal Circuit does) i.
But, SC says does not have to be an automaton
4.
Full Test a.
Look at the Graham factors then move on to secondary considerations i.
Timing/Long-felt need ii.
Commercial success iii.
Failure of others
5.
Ritchie

routine experimentation would have led to sex toy
6.
Arkie

fishing lines
Presumption of Validity §282.

A patent shall be presumed valid

To invalidate must show by clear and convincing evidence
Infringement
1.
Literal Infringement

a.
Phillips (use the Vitronics approach and reject the Texas Digital Approach; favor intrinsic evidence over extrinsic evidence) i.
Intrinsic Evidence:
1.
Language of the claim
2.
Specification
3.
Procedural History ii.
Extrinsic Evidence
1.
Experts, dictionary, treatises
2.
Infringement by the Equivalents a.
Function-Way-Result Test b.
Festo (flexible bar not complete bar) c.
Equivalent should be foreseeable and non-tangential
3.
Prosecution History Estoppel a.
Test i.
Was the amendment made for a substantive reason? ii.
Was it tangential? (not relevant) iii.
If relevant, then apply the function-means-way test b.
Primos

limitation added but the limitation was a tangential amendment because differentially spaced still encapsulates both domes and plates c.
Johnson & Johnson (COME BACK)
4.
Indirect Infringement
§ 271(b): Induced infringement
§ 271(c): Contributory infringement – need to sell the item
(b) Whoever actively induces infringement of a patent shall be liable as an infringer
(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 non-infringing use, shall be liable as a contributory infringer
1.
Aro a.
Repair-reconstruction b.
Needs direct infringement to find contributory infringement c.
If you get a license then you can repair (implied license, first-sale doctrine) d.
Good faith belief not infringement fine
2.
Bard (catheter)
3.
Commil (to fight against inducement you can say you thought you were not infringing but you cannot say that the reason was invalidity)
5.
Akamai 5 a.
Test to find direct infringement: i.
Normal infringement ii.
Direct Supervisory Role iii.
Joint Enterprise
1.
Agreement (express or implied), among members of group
2.
Common purpose to be carried out by the group
3.
Community of pecuniary interest in that purpose among the members; and
4.
Equal right to a voice in the direct of the enterprise, which gives an equal right to control iv.
Alleged infringer (1) conditions participation in an (2) activity or receipt of a benefit (3) upon the performance of a step or steps of a patented method and (4) establishes the manner of timing of that performance
Remedies

1.
Injunctive Relief § 284
2.
Damages a.
Lost profits b.
Reasonable royalty rate
3.
Ebay injunction test a.
Test i.
Suffered irreparable injury ii.
Remedies available at law, like monetary damages, are inadequate iii.
Considering the balance of hardship between the P and D iv.
Public interest b.
Look at precedent c.
Roberts Concurrence i.
Use precedent d.
Kennedy Concurrence i.
Watch out for patent trolls; watch out for licensing ii.
No categorical rules
4.
Watch out for bilateral monopolies
5.
Property rule: injunction; liability rule: monetary damages a.
If transaction costs are high then injunction and vice versa
6.
Negotiation occurs at date of infringement
7.
Royalty Rate and Base
8.
LaserDynamics a.
Use smallest salable part b.
Entire Market Rule: if the part is driving the demand
9.
Punitive Damages a.
May b.
Halo i.
Overturned Seagate; only cares about subjective belief ii.
Letter of invalidity is fine a.
5 factor test: i.
Market for the patent has, or is substantially certain to, expand or contract;

ii.
The likelihood that the infringer would explore other markets; iii.
The availability and cost of non-infringing alternatives; iv.
The capacity of the infringer to design around the patented technology, and the cost at which the infringer could do so; and v.
The expert testimony of qualified experts