Patent law is strict liability- you don’t know you’re ifg, it doesn’t matter. 35 U.S.C. 101 et seq=
Patent Act. US- changes from FTI to FTF. Encourage disclosure-further technological
advancement. Utility= not useful to society, just works in general and is new/non-obv. Sec 112enablement-most common challenge. Patents- general exception to general prohibition on
monopolies. Novel, Useful, Non-Obv, Disclose in app, 20 years from filing, 17-18 from grant.
Right to exclude, not use. Claim section is what you own. Patent, Trade Secret, or Publish.
Secret- must had commercial value, take reasonable and necessary steps to protect. PHOSITA
E.I. DuPont deNemours Co. v. Christopher- legal means of obtaining a secret may still be
improper and thus a misappropriation of a trade secret, punishable by law. Cost of protecting
secret vs. possibility of espionage. Intent and purpose.
101-Patent Eligibility-Diamond v. Chakrabarty-New and useful. “Manufacture.” Natural
phenomena are not patentable, but a live-artificially engineered microorganism is.
Myriad- Naturally occurring, isolated DNA segment is not patentable, because “they are the
basic tools of scientific and technological work” that individuals use to create and innovate.
Isolation of those genes is not “new...composition of matter.” Synthetic version of cDNA is
patentable because not naturally occurring.
Gottschalk- math formula- patent for use in comps or by humans in general? Cannot patent
formula for EVERY use in a comp-like patenting magnetism in general instead of how Morse
did in his telegraph.
Mayo v. Prometheus- natural law or phenomena must be sufficiently added upon or
transformed in order to make an idea, formula, mechanism or test patentable. Prometheus failed
to sufficiently build upon the naturally-occurring processes (metabolization of thiopurine).
Diamond v. Diehr- App. of a math formula or natural phenomena to a known process may be
deserving of patent (improvement/new process). Claiming the process for curing rubber, not the
math formula. Transforms rubber into a diff state/thing.
Alice- Claim involving an abstract idea is patentable only if it adds sth of significance to the idea
(transforms the idea to a new and useful end.) Concurr., business method patent not enough.
101-Utility (and see 112)-Lowell v. Lewis- Invention need not be frivolous, injurious, or
immoral. Patentable if it serves no purpose, but is different and it works (water pump). Disclose
so they can serve as building blows for future. Invention may even be worse than previous art.
Juicy Whip v. Orange Bang- Just because customers are deceived does not mean there is no
utility/injurious/immoral. Deceptive fine. PTO not responsible for protecting consumers.
Brenner v. Manson- Utility. Steroid tested on mice- something similar to invention works, not
sure if invention works. Not enough-small changes can alter in a big way (pharm). Inhibits
investigation giving them a patent that may/may not work. Cannot patent something only good
for research, must have specific public benefit. Not a hunting license. Cant even patent process.
In re Fisher- EST’s were objects of mere testing and not patentable. Just hypotheticals.
PRE-102-Novelty-Anticipation-Titanium Metals v. Banner- Russian article described
invention (alloy) , but did not disclose how to make it. One skilled in art could figure. Articles
did not know it was corrosion-resistant, but it was. Should have patented a use of it, not the alloy.
Article anticipated the range of metals used, so even if that feature was unknown, it was
anticipated. Compound out there- not novel. Single prior reference must disclose it to bar. (Four
Corners Def.)
Schering Corp.-Prior patent covered Claritin. Claritin causes DCL to be made in body. New
patent for DCL would make all uses of the generics illegal ‘cause they will create DCL. DCL not
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mentioned in prior patent, but also not novel. It is naturally flowing. Stems from another patented
activity- not patentable. Could patent DCL in isolated form, not in the body.
PRE-102(b)-in (a) someone else was using the invention or disclosed it. In (b) use in US up to a
year by ANYONE bars patent- statutory bar. A- pure novel. B- stat bar- shoot in foot. Want to
promote early disclosure, and not remove from public domain.
PRE-102(f)- you must be the inventor, cant steal ideas (foreign or domestic).
102(a)(1)/PRE-102(b)-Statutory Bars
Public Use-Egbert v. Lipman- Corset spring case. Sold or given to person to use
unconditionally and not sworn to secrecy=public use. Even if very nature of invention is to be
hidden (corset). Nichols case- rubix cube- showed friends. No attempt to extent monopoly. Does
it attempt to extend a patent term by exploiting for more than 1 year?
Metallizing Engineering co. v. Kenyon Bearing & Auto Parts- Process used secretly for a
year prior to filing date. Used in secret BUT FOR COMMERCIAL gain=public use. Someone
else could have patented it- trade secret- novel to them. Diff in Euro/Jap. If you write article
disclosing to public, you have 1 year to patent it. Nobody else can.
Motionless Keyboard- public use only if the invention is actually used for its intended purpose
+1yr before the patent app. filed. No evidence there was continued use after one-time test.
On Sale-The Medicines Com v. Hospira- Two prong test: Pfaff v. Wells, on-sale bar applies if,
before critical date of one year prior to application, the invention 1) was the subject of a
commercial offer for sale, and 2) was ready for patenting. Sale is commercial-law sense (UCC).
Mere preparations are not. Ben sold mfg. services not invention to MedCo. (invoice); MedCo
paid only ~1% of the mkt. value. Ben also lacked title. Stockpiling merely preparation for sale.
Experimental Use-City of Elizabeth v. American Nicholson Pavement- Process used for 6
years on public road. Not public use because experiment required this use in order to be created.
Public Use=Commercial use for profit. Not sharing how to make. No other way to test- if there
was they would shoot you down. No modifications necessary after experiment. Cannot be tested
for market use, must be tested for claims.
Otherwise Available to the Public-In re Lister-A reference is accessible to the public only if an
interested researcher would have been sufficiently capable of finding the reference and
examining its contents +1yr prior to the app. Must a least provide evidence of the entity’s general
cataloging practices (manuscript available at the PTO, cannot establish precisely when it became
publicly available, ct not presume date)
Prior Invention PRE-102(a)-Gillman v. Stern-Invention kept as trade secret. No way for 2nd
ITI to know. never in “public use” because it was a trade secret- even if for commercial usenobody knows. You may be first inventor, but you dont exist in patent world.
PRE-102(g)-CONCEPTION, RTP, DILIGENCE. burden on second RTP to show first concept.,
and due diligence to “date-back” to concept. (reasonable usually=1 year).
PRE-102(d)-Inventor can file overseas and then US within 12 months. If SOMEONE else
patents or files overseas- you cannot file here
Conception-Oka v. Youssefyeh- Class 2-I and 5-I compounds. Conception requires both the idea
and possession of an operative method of making it. Without means to produce it, idea means
nothing. If cannot give specific date (last week in Oct) you get last day of that period. Oka files
for patent on Oct 31, Youssefyeh shows concept. on this day, loses. PTO calls INTERFERNCE
PROCEEDINGS on this case. Getting lawyer and costs may delay app. but that is ok.
A BREAK IN WORK WILL HURT DUE DILIGENCE AND MAKE YOU LOSE.
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Reduction to practice-Scott v. Finney- Reduction to practice- either filing app or building
model- No due diligence?- show you reduced to practice first. Penile implant case. Commonsense assessment used for RTP and whether invention solved problem or not. Testing must show
utility BEYOND PROBABILITY OF FAILURE, NOT BEYOND POSSIBILITY OF
FAILURE. Reasonable expect that invention would work under normal condition for its intended
use. More tinkering may be needed, but doesn’t mean it isn’t RTP.
Diligence-Gould v. Schawlow- Both use filing dates as RTP dates so later RTP must show
earlier conception and diligence. Inventor must account for entire period between concep. and
rtp. Gould showed no particular activity for a period of time, and thus loses. Won’t be penalized
for limited resources, but must devote those resources reasonable and diligently. Don’t have to
give up livelihood but must work. Burden on first inventor to show diligence. 102(g)(2)- can use
foreign activity to show diligence/GET A PATENT FOR YOURSELF, not defeat someone
else’s patent.
102(g)(2)- another invented and did not abandon/conceal, before you invented, in the U.S,
defeats your patent
PRE-102(e)- Someone disclosed but did not claim in patent app before you invented/filed, in
U.S.-you lose.
Alexander Milburn- Effective date of a US patent for purposes of anticipating a later invention
is the date of filing. First to apply is first to invent unless otherwise proven. If you disclose in
patent, but do not claim, you cannot later claim it.
TRIPS Agreement- 20 years from filing, not grant. No more submarine patents- patenting, not
publishing, and then suing years later. Applications will be published within 18 months of
application, granted or not.
103- Nonobviousness- Added by Patent act of 1952- Subject matter as a whole must not have
been obvious at the time the invention was made to a person having ordinary skill in the art.
Invention novel- but obvious due to prior art- not different enough- no patent. (Permissible to
combine separate items of prior art. unlike: NOVELTY SINGLE REFERENCE.)
Graham/John Deere Test: 1) ascertain the scope prior art; 2) differentiate the prior art and the
claims; 3) ascertain the level of ordinary skill in the art; 4) take into account any secondary
considerations of non-obviousness; and 5) in light of 1-4, determine if the claims are patentable.
LEVEL OF SKILL- 1) Education level of inventor 2) Types of problems encountered in art 3)
prior art solutions to problem 4) rapidity with which inventions are made 5) sophistication of the
technology 6) Education level of active workers in the field. Patent Holder wants the skill level
to be high. Teaching, Suggestion, or Movtivation (TSM) must have provided PHOSITA to
combine the references.
Scope of prior art- 1) whether art is from same field of endeavor regardless of problem
addressed, 2) if reference is not within field of inventors endeavor, whether the problem is still
reasonably pertinent within the inventor’s field.
Traditional-Hotchkiss- Wooden doorknob case- Patent invalid if it merely improves an old
device by the substitution of materials better suited to the purpose of the device. Work of a skillfull mechanic, not an inventor. Can improve upon something, but not just swap.
Great A&P Tea Co- A patent will not be sustained if the patentee merely brings together
segments of prior art, with no change in their respective functions (the piece must do something
new). The sum of the whole must exceed its parts. New and useful not enough. Must make
distinctive new contributions to science and demonstrate inventive genius. Long-felt but
unsolved needs may change this, but the problem here was not around long enough.
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Modern-Graham- Patent invalidated for no new result/combination. Obviousness=case by case
analysis between claim and prior art. Patentable/just an obvious improvement? patented a device
that absorbed shock for plows. Cheaper/more advantageous=patentable.
Cook Chemical- nothing in prior art taught or made appellee’s novel combination of the
elements readily discernible. Appellants infringed because they changed the shape of the bottle’s
sealing surface (spray pump) and claimed that the patented sealing surface bottle was obvious.
PHOSITA would have found it obvious from researching prior arts.
Adams- Non-rechargeable water electric battery case- Adam went against common wisdom and
prior art teachings, making him a winner on non-obvious grounds. Battery was water activatedeach element of the invention well known, but the COMBINATION was non-obvious. Prior art
taught against the combo. Experts did not think it was possible- which helped even more.
In re Clay- Oil tank bottom case- too much in the bottom left but could not get to the spout.
Prior art is analogous if it is in 1) the same field of endeavor OR if it is 2) still reasonably
pertinent to the particular problem at hand. One invention was extracting oil, one was storing it,
not same or similar issues. Court applies a narrow field/endeavor range. May be case specific.
Person Skilled in the Art-Diiachi-Inventors were not general practitioners, testing not carried out
by general practitioners, compound creation required specialized knowledge/training.
Secondary Considerations/Objective Tests-Transocean-Factors: 1) the scope and content of the
prior art; 2) the differences between the design and the prior art; 3) the level of skill in the prior
art; and 4) objective secondary considerations, including commercial success of the invention,
the extent to which there was an unsolved need for the invention, and the failure of others,
among others. Rarely, objective evidence may be sufficient to rebut a prima facie case of
obviousness. Transocean presented substantial objective evidence of commercial success,
industry praise, unexpected results, copying, industry skepticism, licensing, and a long-felt but
unsolved need.
Apple v. Samsung-ct. must consider available objective indicia of nonobviousness1) the scope
and content of the prior art; 2) differences between the prior art and the claimed invention; 3) the
level of ordinary skill in the art; and 4) objective indicia of nonobviousness (or secondary
considerations) such as commercial success, long-felt needs, industry praise, copying, etc.
KSR International Co v. Teleflex Inc.- Secondary factors such as the teaching, suggestion,
motivation test must not be used until the court considers prior art, differences between invention
and prior art, and level of ordinary skill to determine obviousness. TSM test encourages to look
into why a person would combine these things. Something may have been obvious to patentee,
but not in general, and that doesn’t bar him. Obvious to try=obvious invention.
Factors to fight against obviousness- commercial success- flows from innovation not from
sales/marketing, copying- if everyone is copying you it must not have been too obvious cuz they
woulda made it earlier, prior failures- ton of prior failures couldn’t have been obvious or they
wouldn’t have failed, licenses- people would rather pay to use yours than to try to create
something new, long-felt need, unexpected results (HUGE), skepticism (also huge-adams case),
simultaneous inventions by others will hurt you.
Review for obviousness is de novo- court may just simply disagree with lower ct. Prior art and
persons skilled in art are under clearly erroneous.
112- Disclosure (utility)- 1) Enablement- specifications must contain manner and process of
making/using in full/concise/exact terms to enable any person skilled in the art to make and use
the invention. (Disclosure must be enabling AT THE DAY OF FILING. WHAT YOU KNEW
THEN, NOT NOW.) 2) Written Description- must be there at day of filing, if not can re-file if
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nobody else has. 3) Best mode for creating/performing etc. Claims can be altered throughout
trial, description is either there or it isn’t. Best mode=your opinion. If enablement is not
proper=no dating back. Can fiddle with claims, not disclosure.
Gould v. Hellwarth- App described switch but did not contain instructions on how to make an
operative laser. Working laser just a theory, not invented till much later. Failed to produce
knowledge necessary to produce a working laser or parameters for one. App. must teach one of
ordinary skill in the art how to make and use to meet 112 enablement.
Atlas Powder co v. E.I. Dupont- Patent must contain a description that enables one skilled in
the art to make and use. A person skilled in art could have made the blasting agent based on the
ingredient list in the patent and how long it took to experiment w the list did no matter, a person
skilled in art would know which to use and which not to. Do not have to specifically exclude
some possible inoperative substances. Undue experimentation will mean not enabling, but
reasonable experimentation is ok.
Written Description-Vas-Cath Inc. v. Mahurkar- 3 somewhat detailed drawings in original
abandoned patent. Wanted new patent apps to date back to prior filing. Drawings may be
sufficient to provide the written description of the invention. Question of fact – purpose of
section is to convey with reasonable clarity to those skill in art, that as of filing date, they were in
possession of the invention. At time of filing-no hindsight- are drawings detailed enough? Can
add descriptions in later apps or through prosecution, but not new matter. New matter=later date.
Best Mode-Chemcast Corp v. Arco Industries- Supplier of materials used trade secret, and
patentee did not tell where things came from- Specifications satisfy duel-pronged test for best
mode- subjective- did inventor know of better mode? Objective- is disclosure adequate to direct
those skilled in art to best mode? Inventor did not discuss the best mode at all, but did know it,
and thus failed the 2 prong test under 112. Cannot get around best mode by failing to reveal
supplier of materials.
University of Rochester v. G.D. Searle & Co.- Claimed invention is for a correlation between
enzymes and stomach pain. It basically said this is why you get stomach pain, so we need
something that would stop enzyme 1 without stopping enzyme 2 and we’re all good. Basically
patenting an idea. They had a method/idea, but lacked the end drug. They claimed the drug, but
did not disclose how to make it, without undue experimentation. They basically invited people to
try and make the invention (and would prob later sue). Theories lay the groundwork for
invention but are not inventions.
Claims- This is what you own. 1st is usually very broad and is usually independent. The rest are
usually dependent and narrower. Too broad may hurt you=obvious. Claim 1 novel-=claim 2
novel!
Patent Prosecution- provisional app- post 1994- cheap and does not contain claims. File normal
app within 1 year you get that earlier filing date. During year you can market/advertise, you get
earlier date, BUT protection from 2nd date (extends a little). Lets you fiddle with claims which
are difficult to draft, but you must satisfy 112.
101-Inventorship-Ethicon Inc. v. United States Surgical- trocars for endoscopic surgery- Each
co-inventor must contribute to the conception. Can do so through claims- contribute to one=coinventor. Sketches prove he invented 2 claims (of 56- does not matter). Co-inventor enjoys
ownership of entire invention- can license and do what wants (must account for profits) and must
also consent to suits! Should have formed a K, Diss.- should be more like property rights. Only
contributed to 2 of 56, should only get those.
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Inequitable Conduct (Def.)-intentional failure to disclose/misrepresent material info, patent
unenforceable-Therasense-but-for material if PTO would not have granted patent if it had
known of prior art-preponderance of evidence standard. (issue is about the EPO briefs Abbott
omitted from app.) Generally unavailable overseas.
Post-Issuance Administrative Proceeding-Supplemental Examination-to limit the use of
inequitable conduct in litigation, permit patent owners to request in order to consider, reconsider,
or correct info believed to be relevant to the patent. 257(a) “patent shall not be held
unenforceable . . . on the basis of conduct relating to information that had not been considered,
was inadequately considered, or was incorrect in a prior examination of the patent if the
information was considered, reconsidered, or corrected during a supplemental examination of the
patent.” 257(c)(1). The supplemental examination request and resulting reexamination must be
concluded prior to the start of litigation for the patent to obtain this benefit. The statute stipulates
that if there is evidence of “material fraud,” the Director of the USPTO is authorized to notify the
Attorney General for “such further action as the Attorney General may deem appropriate.”
257(e).
271-Infringement- Bringing into Country AT ALL is illegal infringement. Compare device
against claims, not against other device. Literal vs. Equitable.
Markman v. Westview- Markman hearing- each side tells judge what terms in claims need
defining. Dry Cleaner case- Final decision on meaning of term “inventory” is up to judge- hybrid
fact and law question- because of training in complex issues and knowledge of written
documents, is more competent to correctly, fairly, and uniformly make decisions relating to the
interpretation of a term of art. Q of fact (juries)- clearly erroneous standard of appeal. Q of lawjudge- de novo.
Phillips- court may take a variety of approaches in conducting claim construction and may
employ a variety of resources to resolve the meaning of a disputed claim term, including a
patent’s prosecution history and intrinsic and extrinsic evidence, but always in the context of the
claims and specification as viewed by PHOSITA.
Computer Docking v. Dell- laptop case- Markman hearing- portable comps w portable
keyboard/screens are claimed, but continuously disavow laptops as not to be precluded by prior
art. Later they get patent and sue Dell for laptops. Cannot unambiguously disavow a claim to get
patents then sue under equivalents. Prosecution history makes it clear.
Equivalents- Graver Tank v. Linde Air Products Co- DOE- substantially same function,
result, and way. Experts knew manganese and magnesium could be interchanged. Basically, just
copied and swapped. DOE- question of fact for juries. Close to obviousness. “That which
infringes, if later in time, would anticipate, if earlier in time.”
Warner-Jenkinson Co v. Hilton Davis Chemical Co- Pore sizes for filtration of dye. DOE will
be applied to each individual claim, not process as a whole. Prosecution history estoppel doctrine
(comp docking case) applies. Does process contain elements identical or similar to claimed
element? Found process on their own. If you describe invention by what it does in claims, rather
than what it is, you are limited to your description. Possible equivalents are at time of
infringement, not application. Ph’s were same and thus infringement.
All Elements Rule-Corning Glass Works v. Sumitomo Electric USA Inc- Accused device
containing an equivalent to another’s patented claim somewhere in the device, is infringing.
Fiberoptics for long-distance- doping case. Positive doping to one aspect=negative doping to
another. Equivalent. Neg doping didn’t exist when the applied or would have claimed it.
(unforeseen equivalents are still barred later on).
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Prosecution History Estoppel-Festo Corp v. Shoketsu- Amended claims- When you claim
something and it is rejected and you narrow to get the patent, you cannot claim the other
equivalents that you surrendered. Estoppel arises when you narrow the scope of the patent- 112
amendments narrow scope. If you amend the form and not the subject matter of patent, no estop.
Equivalents may still exist, ALL equivalents are not barred, just what you surrendered.
Equivalent could be new and unforeseen at the time and is not barred. Must show that at time of
amend one skilled in art could not have wrote claim to include the equiv. Flexible bar. Safe
harbors- unforeseen technology, rational for amendment not related to this equivalent- will not
bar you. Spelling, and such. Don’t know reason for narrowing- must show safe harbor or
estopped from bringing equivalent claims.
Dedication-Johnson and Johnson v. R.E. Services- If you disclose something in the patent, but
do not claim it in the claim section, you cannot sue for doctrine of equiv cause you donated it to
the public domain. Within 2 years of original patent you can file for reissue and add to claim.
Prior Art Limitations-Wilson Sporting Goods v. David Geoffrey- If scope of equivalency to
find infringement covers prior art there can be no infringement because that would have been
obvious to patent. Patent owner must show equiv does not ensnare prior art.
Indirect Infringement-271(b) Induced Infringement-271(c) Contributory InfringementGlobal-Tech-the party must know that the induced act constitutes patent infringement to be
liable for actively inducing infringement. Actual knowledge of an existing patent is not required,
but rather willful blindness to such existence will suffice, defendant will be deemed to be
willfully blind under 271(b) if the defendant “takes deliberate actions to avoid confirming a high
probability of wrongdoing and who can almost be said to have actually known” that the induced
act constituted patent infringement.
Commil v. Cisco-good-faith belief in a patent’s invalidity is not a defense to induced
infringement. A belief as to invalidity cannot negate the scienter required for induced
infringement. Additionally, accused inducers who believe a patent is invalid have various proper
ways to obtain a ruling that the patent is invalid.
Akamai v. Limelight- A party is liable for direct infringement if all steps of a claimed method
are performed by, or attributable to, the party.271(a). A party is responsible for others’
performance if the party is found to have directed or controlled the others’ actions. Direction and
control exists when the party conditions the others’ participation in an activity on the
performance of a step of the method, and sets the parameters for the manner and timing of such
performance.
Defenses
Patent Exhaustion-Impression Products v. Lexmark-patent holder cannot place a postsale
reuse or resale restriction on an authorized sale of the patent item. Once sold, the holder’s patent
rights exhaust because the item is no longer within the limits of the holder’s monopoly.
Equitable Estoppel-Laches- A.C. Aukerman Co. v. R.I. Chaides Construction- highway
barriers. Warned of infringement 8 years ago, didn’t sue. Warned again for 2nd barrier, sued.
Laches say 6 year delay- you give up right. Gave up right on first infringement. Not on second.
First was bought from a company AC licensed with after suit. Second RL made. 282. Equitable
estoppel also cognizable under 282. i. Misleading conduct led infringer to think it was ok, and
would not be sued, ii- ALLEGED infringer relied on conduct, iii. Because of reliance, infringer
would be materially prejudiced if patentee could proceed. AC was able to sue cause of second
barrier/warning. Laches, a defense to patent infringement under 282 that can bar a patentee’s
claim for damages prior to suit, has two elements: 1) the delay must be unreasonable and
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inexcusable, and 2) the alleged infringer must have suffered material prejudice from the delay. A
presumption of laches arises after 6 years, which shifts the burden to the patent holder.
Right of Repair-Aro-purchaser of patented goods obtains an implied license to repair; those who
sell replacement parts to the customers cannot be held to have contributory infringed.
No Reconstruction-Sandvik-drill, never intended to be retipped, did not mfr. or sell
replacement, did not instruct on how to retip or suggest could/should be retipped, only resharpen.
Replacement is not permissible Repair.
Prior (Commerical) User Rights-273 any type may be subject to the def.; also can be asserted by
any other entity that controls, is controlled by, or is under common control with such person.
PTAB claim construction, Inter Partes Review-Oil States v. Greene’s-PTO abandon BRI
283-Injunctive Relief-Permanent-eBay- injunctive relief must look at 4 part- Civ Pro test- 1)
Party suffered irreparably injury, 2) no adequate remedy at law, 3) equitable remedy is warranted
after balancing the hardships between plaintiff and defendant, 4) a permanent injunction would
serve the public interest. No longer receive automatic injunction for infringement. Instead, must
pass 4 part test. Especially permanent.
Injunction has great power and court may not issue because of effect on economy etc.
Preliminary-Sanofi v. Apotex- Party must show (1) reasonable likelihood of success on the
merits; (2) irreparable harm; (3) the balance of hardships tipping in its favor; and (4) the impact
of the injunction on the public interest.
Amazon v. Barnes and Noble (pre-KSR)- 1 click feature- Markman hearing. Preliminary (not
permanent) injunc. 4 things for plaintiff to demonstrate-4 factor test for preliminary injunction.
Bond must be posted in case pl loses- amount which court feels adequate and proportionate to
damages def will suffer if injunc was wrong. Amazon loses because CompuServe Trend
(program for stocks) used 1 click and patent was invalid. Irrep harm- distinguishing self from
competition.
284-Money Damages- Reasonable royalty as compensation-figured by court. DAMP test- butfor.
Panduit Corp v. Stahlin Bros Fibre Works, Inc- Special master said 2.5% is reasonable
royalty, but Panduit wants more, - 35% royalty, or lost profits/price reduction. Owner gets
damages to compensate the infringement. DAMP TEST. Lost Profits- 1) Demand for the
patented product, 2) absence of acceptable non-infringing substitutes, 3) patent owners
manufacturing/market capability to exploit demand, 4) the amount of profit he would have made.
Reasonable royalty=amount a person desiring to make and sell the product would pay for a
license but still make a profit. Factors for computing royalty-1) The lack of acceptable noninfringing uses, 2) panduits unvarying policy of not licensing, 3) the future business and profits
Panduit would expect to lose by licensing, 4) the fact that infringing patent gave the entire
market to Panduit.
Georgia Pacific Corp v. United States Plywood Corp-Amount of damages is based upon the
value of reasonable royalty for use of the patent. Determined by factors such as royalties
received for licenses, established profitability of the product, and opinion testimony from
experts. Conflicting evidence=judicial discretion.
Rite-Hite Corp v. Kelly co- Truck restraint cases (ADL-100 and dock-levelers). Entire market
value rule says unpatented product (dock levelers) mush function together with patented
component in some manner to produce the desired end. If it does, then damages based on that
product will be included. Unpatented product must be part of whole, and not just sold together
for marketing reasons (they had other uses) and must operate together to achieve one result.
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Patent related feature of the whole (when they actually do work together toward a desired end)
must be the reason for the demand. Things such as share prices falling, and other speculative
things will not be given damages. Business/marketing strategies will not be compensated for
(selling the levelers in a package even though they don’t have to be together). Things that serve
no useful purpose independent of the patented product will be given damages.
Enhanced Damages, Esq. Fees/ProfRes willfulness requires an assessment of the totality of the
circumstances These factors traditionally include:1.Whether the infringer deliberately copied the
ideas or design of another.2.Whether the infringer, when he knew of the other’s patent
protection, investigated the scope of the patent and formed a good-faith belief that it was invalid
or that it was not infringed.3.The infringer’s behavior as a party to the litigation.4.The infringer’s
size and financial condition.5.The closeness of the case.6.The duration of the defendant’s
misconduct.7.Remedial action by the defendant.8.The defendant’s motivation for
harm.9.Whether the defendant attempted to conceal its misconduct. a fact-based inquiry—the
factfinder will determine whether the infringer willfully infringed the patent. But even if the jury
concludes that the infringer acted willfully, the court retains the discretion to decline to award
enhanced damages or attorney fees."
Halo-objective recklessness is not required to prove willfulness, but rather only subjective belief
of infringement. 284 permits district ct. to exercise discretion free from Seagate test.
Octane-285 does not require a rigid framework for determining esq. fees.
Limitations on Damages-287-Marking-Amsted Industries Inc. v. Buckey Steel Casting CoAmsted sent letters to several companies including Buckey that they now owned a patent and
that the companies should look into it to make sure they weren’t infringing. Nobody cared.
Buckeye knew they were. 3 years later Amsted sent another letter telling them they were
infringing and to stop and then sued. Patented products of Amsted were not marked. First letter
does not constitute notice. If products were marked they’d get damages from first letter- 287.
Notice must be of infringement, not existence of patent, actual notice- affirmative
communication of specific charge of infringement. 287-mark for better damages.
Notice=do not want them to let damages pile up. Only can get 6 years worth of damages- other
things may have stopped you from suing so we give you 6 years. Mark packaging if you can’t
mark product, and add method patents if you own them.
285-Attorney Fees- bad faith litigation (IBM picking on the little guy), willful infringement, or
inequitable conduct. 286-6 year damages rule. No pile up. Strict liability.
Process-Injunction, lost profits, reasonable royalties on other products could have sold
(capacity), pecuniary issues such as lost profits and price erosion (could you have charged
more?) Things that cannot function absent the patented product will be counted. Punitive
damages- willful infringer? Laches- unless you can show good cause (hot wheels example).
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Woodland Trust v. Flowertree Nursery Inc- Start using system again as patent comes up.
Uncorroborated testimony of interested parties will not provide clear and convincing evidence to
defeat a patent for prior use. Criteria for corroboration-1. Relationship between witnesses and
prior user, 2. Time period between event and trial, 3. Interest of the witnesses in the subject
matter, 4, contradictions in testimonies, 5, how detailed the testimony, 6 witnesses’ familiarity
with the patented subject matter, probability prior use occurred, and impact of invention on
industry. Invoices and pictures woulda helped.
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