In Public Use
In Public Use
“Otherwise available to the public”
Presumption of validity- 35 USC §282
Wands Factors iii.
Written Description b.
Novelty/Prior Art a.
Printed Publication b.
On Sale Bar/
Public Use i.
Or Experimental Use?
Or “secret” use?
>1yr before the application’s filing date
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)
Ct. Construes Claims (meat of the
analysis) to determine the scope of the patent a.
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.
Compare claims to qualifying acts a.
Determine whether the ∆’s act b.
literally infringes any given claim
All elements, single claim
liability for DI
If no, ↓
Determine whether the ∆’s act infringes any given claim under
FWR, element by element
liable for DI
No liability for DI
Anyone else involved? a.
Direct Divided b.
Acts of Infringement a.
Abstract Ideas a.
Processes & Software
Invalidity (Affirmative Defense)
Invalidity by Enablement
Defenses to Infringement
Must be minimally operative OR
Displays substantial utility, yielding a specific benefit which exists in currently available form
Injunctive Relief a.
Commensurate scope problems b.
Undue experimentation problems-
Written Description a.
Claims by Funciton (
Loss of Right - § Bars a.
Under 1952 Act i.
Experimental uses &
Prior Filed Application as PA a.
Under AIA 102(a)(2), (b)(2),
Intrinsic Evidence a.
Claim Terms- Within the claim itself and in the context of other claims & preamble. b.
Written Description- Drawings & specs
Modern Analysis a.
Primary Factors: i.
Scope & Content
Level of ordinary skill in the art b.
Extrinsic Evidence- Expert Testimony, Dictionaries, technical docs, treatises
SM Eligibility- See page 8-9 of outline
Is the claim to a process, machine, manufacture, or composition of matter? If no, not eligible
Is the claim directed to a law of nature, abstract law, natural product, or physical phenomenon. If no, Eligible SM
Does the claim recite additional elements that “transform” the nature of the claim into patent eligible SM?
Enablement Problems a.
Commensurate Scope b.
Too much undue experimentation- Spec must teach how to make and use without undue experimentation i.
Factors- pg 14
Quantity of experimentation necessary
Amount of direction or guidance presented
Presence or absence of working examples
Nature of the invention
State of the prior art a.
Relative skill of those in the art
Predictability or unpredictability of the art
Breadth of the claim
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
Final Test: i.
Possession isn’t exclusive test ii.
Level of detail required varies on the nature & scope of the claims& on the iii.
complexity & predictability of the relevant technology
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 requirement
Best Mode Test 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)
Minimally operative (
Display Substantial Utility i.
Practical/real world utility (
Determined if POSA would accept something as having utility (
Yielding a specific benefit which exists in currently available form i.
Public benefit (
Framework for analyzing Patents over PA
What is claimed invention i.
What is alleged PA
What is alleged PA missing
Qualify as PA- PP, in public use, on sale, “Otherwise publicly available”(AIA
Compare claims to disclosure of PA i.
Any Single PA anticipates? a.
Single Source ii.
Do they have a defense? a.
Experimental Use b.
Secret Use iii.
Does PA make the invention obvi?
To Evaluate PA for obvi, look at:
Scope & content of PA
Difference between PA & claims o
Analogous Art Doctrine- simulates what POSA would consider i.
Prior art is analogous if:
In the same general field of endeavor as claimed invention
Reasonably pertinent to the problem that the claimed invention seeks to solve
Teaching, Suggestion, Motivation (
Patent claim obvious only if some teaching, suggestion, or motivation that would make POSA think to combine the:
Knowledge of POSA that certain references or disclosures are of specific interest in field
From nature of the problem to be solved
Common sense as TSM Evidence:
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
Cannot be used as a wholesale substitute for reasoned analysis & evidentiary support
Level of ordinary skill in the art (background of POSA in field, ↑ skill in art ↑likely to prove nonobvi) (
Ask whether the claimed invention would have been obvi @time made to POSA i.
Types of problems encountered in the art
PA solutions to those problems iii.
Rapidity with which innovations are made
Sophistication of technology v.
Education level of active workers in the field
Secondary Considerations o
Commercial Success (
Calmar & Adams)
Long felt need met (
Failure of others (to solve problem) o o
Initial skepticism toward the invention, followed by acceptance (
How to evaluate Secondary considerations
nexus required, weirdly used 2
° used to show non-obvi) i.
Commercial success ii.
Unexpected results iv.
Long-felt but unsolved need