1952 102(b)
Evidentiary Component
Patented
Printed Publication
In Public Use
AIA 102(a)(1)
On Sale
Evidentiary Component

Patented
Printed Publication
In Public Use
On Sale
“Otherwise available to the public”
Geographic Component
Worldwide
US Only
Invalidity
1.
Presumption of validity- 35 USC §282
2.
Indefiniteness
3.
Utility
4.
Disclosure a.
Enablement i.
Commensurate Scope ii.
Wands Factors iii.
Undue Experimentation b.
Written Description i.
Later-added Claims c.
Best Mode
5.
Anticipation a.
Inherency b.
Enablement Standard
6.
Novelty/Prior Art a.
Printed Publication b.
On Sale Bar/ Pfaff c.
Public Use i.
Or Experimental Use? ii.
Or “secret” use?
7.
Obviousness
Infringement
A.
Tests
Temporal Component
>1yr before the application’s filing date
Geographic
Component
Worldwide
Temporal Component
Before effective filing date (with exception to 102(b)(1):

“Grace Period” made 1yr or less before effective filing date
Disclosures 1yr or less before filing date aren’t PA if:
1) Disclosure made by the inventor
- PA that originated with applicate doesn’t count
2) SM disclosed had, b4 such disclosure, been publicly disclosed by the inventor
- PA from 3 rd parties before filing date doesn’t count only if preceeded by applicant’s own public disclosure
(incentivices incentive to disclose)
Infringement
1.
Ct. Construes Claims (meat of the analysis) to determine the scope of the patent a.
Phillips
2.
Qualify the ∆’s activity as a type of act that could be infringement—271(a) a.
Makes, uses, sells, offers to sell, imports, within US, during the term of the patent.
3.
Compare claims to qualifying acts a.
Determine whether the ∆’s act literally infringes any given claim
All elements, single claim
If yes

liability for DI
If no, ↓ b.
Determine whether the ∆’s act infringes any given claim under
DOE
FWR, element by element
If yes

liable for DI
If no

No liability for DI
4.
Anyone else involved? a.
Direct Divided b.
Indirect infringement
 Claim Constuction
A.
CC
1

a.
Literal b.
DOE i.
PHE
B.
Acts of Infringement a.
Direct b.
Direct Divided c.
Indirect i.
Induced &
Contributory
 Plead/Answer:
A.
Non-Infringement
B.
Invalidity (Affirmative Defense)
C.
Invalidity by Enablement or:
 Defenses to Infringement
A.
Inequitable Conduct
B.
Exhaustion
C.
Experimental Use

Remedies
A.
Injunctive Relief a.
Preliminary Injunction
B.
Damages a.
Treble b.
Attorney’s fee c.
Limitations
B.
Claim Definiteness
 Eligibility
A.
Living SM
B.
Abstract Ideas a.
Processes & Software
C.
Post-Alice
 Utility
A.
Must be minimally operative OR
B.
Displays substantial utility, yielding a specific benefit which exists in currently available form

Disclosure
A.
Enablement a.
Commensurate scope problems b.
Undue experimentation problems- Wands Factors
B.
Written Description a.
Later-added Claims b.
Claims by Funciton ( Ariad)
C.
Best Mode

Prior Art/Novelty
A.
Loss of Right - § Bars a.
Under 1952 Act i.
Printed Publication ii.
Public Use iii.
Experimental uses & sales b.
Under AIA
B.
Prior Filed Application as PA a.
Pre-AIA b.
Under AIA 102(a)(2), (b)(2),
 Anticipation
& d
A.
Inherency
B.
Enablement std.

Obviousness
A.
Graham Test
B.
Modern Analysis a.
Primary Factors: i.
Scope & Content ii.
Level of ordinary skill in the art b.
Secondary Characteristics
Claim Construction
A.
Intrinsic Evidence a.
Claim Terms- Within the claim itself and in the context of other claims & preamble. b.
Written Description- Drawings & specs
2

c.
Prosecution History
B.
Extrinsic Evidence- Expert Testimony, Dictionaries, technical docs, treatises
SM Eligibility- See page 8-9 of outline
A.
Is the claim to a process, machine, manufacture, or composition of matter? If no, not eligible
B.
Is the claim directed to a law of nature, abstract law, natural product, or physical phenomenon. If no, Eligible SM
C.
Does the claim recite additional elements that “transform” the nature of the claim into patent eligible SM?
Disclosure
A.
Enablement Problems a.
Commensurate Scope b.
Too much undue experimentation- Spec must teach how to make and use without undue experimentation i.
Wands Factors- pg 14
1.
Quantity of experimentation necessary
2.
Amount of direction or guidance presented
3.
Presence or absence of working examples
4.
Nature of the invention
5.
State of the prior art
6.
Relative skill of those in the art
7.
Predictability or unpredictability of the art
B.
Written Description
8.
Breadth of the claim a.
Latter-Added Claims- Does WD reasonably convey to POSA that inventor had possession of the claimed invention as of the filing? b.
Claimed by Function i.
# Species in genus or ii.
Structural features in common to members of the genus c.
Final Test: i.
Possession isn’t exclusive test ii.
Level of detail required varies on the nature & scope of the claims& on the complexity & predictability of the relevant technology iii.
Factors include the existing knowledge in the particular field, the extent & content of the prior art, the maturity science or technology, and the predictability of the aspect @ issue iv.
A description that merely renders the invention obvious does not satisfy the
C.
Best Mode Test requirement a.
Did the inventor consider any mode of carrying out the invention to be the “best”? b.
If so, is the disclosure sufficient to enable one of ordinary skill in the art to practice the inventor’s subjective “best mode” (
Clemcas v. Arco)
Utility
A.
Minimally operative ( Swartz)
B.
Brenner a.
Display Substantial Utility i.
Practical/real world utility ( Fisher) ii.
Determined if POSA would accept something as having utility ( Brana) b.
Yielding a specific benefit which exists in currently available form i.
Public benefit ( Fisher)
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Framework for analyzing Patents over PA
1.
What is claimed invention i.
What is alleged PA ii.
What is alleged PA missing
2.
Qualify as PA- PP, in public use, on sale, “Otherwise publicly available”(AIA
3.
Compare claims to disclosure of PA i.
Any Single PA anticipates? a.
All Elements b.
Single Source ii.
Do they have a defense? a.
Experimental Use b.
Secret Use iii.
Does PA make the invention obvi?
Obviousness test
To Evaluate PA for obvi, look at:
1.
Scope & content of PA
2.
Difference between PA & claims o Analogous Art Doctrine- simulates what POSA would consider i.
Prior art is analogous if:
1.
In the same general field of endeavor as claimed invention or
2.
Reasonably pertinent to the problem that the claimed invention seeks to solve o Teaching, Suggestion, Motivation ( KSR)
4

i.
Patent claim obvious only if some teaching, suggestion, or motivation that would make POSA think to combine the:
1.
PA
2.
Knowledge of POSA that certain references or disclosures are of specific interest in field
3.
From nature of the problem to be solved ii.
Common sense as TSM Evidence:
1.
Typically invoked to provide a known motivation to combine, not to supply a missing claim limitation unless the missing limitation is usually simple & the technology is particularly straightforward
2.
Cannot be used as a wholesale substitute for reasoned analysis & evidentiary support
3.
Level of ordinary skill in the art (background of POSA in field, ↑ skill in art ↑likely to prove nonobvi) ( Ruiz) o Ask whether the claimed invention would have been obvi @time made to POSA i.
Types of problems encountered in the art ii.
PA solutions to those problems iii.
Rapidity with which innovations are made iv.
Sophistication of technology v.
Education level of active workers in the field
4.
Secondary Considerations o Commercial Success ( Calmar & Adams) o Long felt need met ( Calmar) o Failure of others (to solve problem) o Initial skepticism toward the invention, followed by acceptance ( Adams) o How to evaluate Secondary considerations (Transoceannexus required, weirdly used 2
° used to show non-obvi) i.
Commercial success ii.
Industry praise iii.
Unexpected results iv.
Copying v.
Industry skepticism vi.
Licensing vii.
Long-felt but unsolved need
5