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Patent Outline

§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
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.
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
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
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 enable 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)
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
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
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
Poverty and illness
Regular employment
Scheduled vacations
b. Invalid
Attempts to commercialize
Doubts about value or feasibility
Work on other inventions
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
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
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)
d. MIT (copies distributed so PP)
Wyer (microfilm in Australian patent place); PP though dubious
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
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
New §102
102(b)(1) -
102(b)(2) –
Patent is granted
Patent is not granted
(1) 1 year grace
(2) Disclosure is not
unless the claimed
if it was descried in a
prior art under (a)(2)
invention was
patent and was filed
(A) Exceptions that
patented, described
before the filing date
apply to 102(a)(1) –
in a printed
of the effective filing
someone discloses the
(A) They stole it
invention before you
from you
in 1/5 ways
(B) Before the patent
(enablement req’d),
in public use (no
enablement), on sale
(no enablement), or
otherwise available
Disclosure =
was filed, the subject
No geographic
anything in
matter was publicly
disclosed by the
to the public
(B) Exceptions that
(C) It was owned by
(enablement req’d)
apply to 102(a)(2) –
the same person or
before the effective
someone files before
assigned to the same
filing date of the
you filed
claimed invention
If disclosure
Critical date
was public –
files first, but
= filing date
you are the
If you disclose
same entity.
first and then
(Masur says
rarely an
available to the
discloses later
public”. Likely
– ok
No ct has
an oral
presentation at a
Secret sale ≠
conference or a
podcast would be
swept in
On sale =
party specific
Public use =
not party
 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
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)
4. After verdict but before the judgment Global Tech Appliances came out which
stated: in an action for induced infringement, it is necessary for the plaintiff to
show (1) that the alleged inducer knew of the patent in question and (2) knew the
induced acts were infringing.
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
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
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