Patent Law Outline
1. Utility
a. Utility- [35 U.S.C. § 101] Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent.
b. Statutes
i.
§ 101 – “Whoever invents or discovers, any new and useful process,
machine…” à there has to be a utility
ii.
§ 121 - “The specification shall contain a written description of the invention,
and the manner and process of making and using it…”
1. the utility has to be disclosed, and the utility requirement assessed at
the time of application.
2. what level and type of utility is required, however, is a matter of
common law…
c. Types of Utility
i.
Beneficial Utility
ii.
Operable Utility
iii.
Practical Utility
d. Beneficial utility- Which asks whether the invention has a socially harmful or
deleterious purpose.
i.
Lowell v. Lewis (Water pump case)- A patent satisfies the requirement that
the invention be useful as long as it is not immoral or harmful to society.
ii.
Juicy Whip, Inc. v. Orange Bang, Inc. - Where a patented product’s purpose
and value rests in the fact that it looks like another product, that product
satisfies the utility requirement.
iii.
These inventions fell chiefly into two classes
1. Inventions used to defraud buyers
2. Machines used for gambling
a. Interference-A procedural process whereby the U.S. Patent
Office (USPTO) determines which of two inventors invented
something first.
e. This substantial or practical utility- involves some judgment as to what constitutes
a real enough utility, and it can be the most difficult part of utility doctrine.
i.
practical utility” = some specific, non-trivial, substantive use.
ii.
most of cases under this prong of the doctrine.
iii.
big issue in cutting edge research where inventor doesn’t know specifically
what use might be.
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iv.
v.
vi.
Brenner v. Manson- In the context of chemical inventions and discoveries,
the utility requirement is satisfied only if the chemical process and product, in
the form existing at the time of the patent application, confer a specific benefit
upon society.
In re Brana- Applicants for pharmaceutical inventions who disclose specific
uses for claimed compounds are not required to prove the compounds are
useful, as asserted, to meet the utility requirement of 35 U.S.C. § 112.
In re Fisher- To meet the “substantial” and “specific” utility requirements, a
patent application must show that the claimed invention provides a
significant, presently available, well-defined, and particular benefit to the
public.
f.
Operable Utility
i.
Rule: the invention must work
ii.
eg, couldn’t patent “a perpetual motion machine, comprising…”
1. rarely an issue
iii.
Burdens:
1. PTO must first show invention is “doubtful,” then applicant can rebut.
iv.
what have this at all? If it doesn’t work, how can anyone ever infringe?
1. concern: fraud. Getting someone to believe in your fanciful discovery
because you have a patent.
a. Rmk: commercial feasibility not required. just that it functions.
g. The third major- aspect of utility requires that an inventor show the utility of the
claimed invention with credible evidence of the invention’s operability.
i.
ii.
iii.
Practical utility test- needs to be specific and substantial,
Specific utility- is specific to the subject matter claimed and can “provide a
well-defined and particular benefit to the public.
Substantial utility- an application must show that an ince to
2. Patentable Subject Matter 101:
a. 101 inventions Patentablei.
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent thereof, subject to the conditions and requirements
of title.
1. “any new process, machine, manufacture, composition of matter [is
patentable]”
b. 100 Definition
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i.
ii.
When used in [the Patent Act] unless the context otherwise indicatesThe term “invention” means invention or discovery
1. The term “process” means process, art or method, and includes a new
use of a known process, machine, manufacture, composition of matter, or
material
c. Statutory categories
i.
Process
1. Series of steps taken to achieve a result
ii.
Machine
1. A pulartical of parts that operate together
iii.
Manufacture
1.
iv.
Composition of matter
1. Composition of chemicals
d. Judicial Exceptions
i.
Law of nature
1. Markley different
ii.
Physical Phenomena
1. The phenomena of magnetism
iii.
Abstract ideas
e. Law of nature
i.
Diamond v. Chakrabarty
1. A live, human-made microorganism is patentable subject matter.
2. Patentablea. Things created by human beings
b. Things that occur in nature without human intervention do
not.
3. Machine-Or-Transformation Test- Provides that an invention is a
patentable process if it is tied to a machine, or transforms an
article into some other thing.
ii.
Mayo Collaborative Services v. Prometheus Laboratories, Inc.
1. A natural law or natural phenomena must be sufficiently added
upon or transformed in order to make an idea, formula,
mechanism, or test patentable.
a. The Court noted that the claimed process only acted as an
improved system for updating the alarm limits but failed to
provide additional details or steps to make the process
improved, inventive, and ultimately, patentable.
b. Prometheus’ patent claims fail to sufficiently build upon the
naturally-occurring processes involving the metabolization
of thiopurine in order to be patentable.
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iii.
f.
Association for Molecular Pathology v. Myriad Genetics, Inc.
1. A naturally occurring DNA segment is not patentable merely
because it has been isolated.
a.
Eligible patent subject matter test (IMPORTANT)
i.
Step 1 -> Statutory category if no -> ineligible subject matter
1. If yes then judicial expectation step 2a
a. If no Patent eligible subject matter
b. If yes inventive concept, if no, then ineligible
1. Statutory category- if no ineligible subject matter
a. Process
b. Machine
c. Manufacturer
d. Composition of matter
2. Judicial exception- if no patent eligible subject matter
a. Law of nature
b. Physical Phenomena
3. Inventive Concept- if no ineligible subject matter
a. If yes patent eligible subject matter
●
Two step test
○ 1. Determine if a natural law is involved
○ 2. If so, determine if inventive concepts turn the law into a patentable application
it
1. Abstract Ideas
a. Bilski v. Kappos
i.
Bernad Bilski and randal warsaw (plaintiff) filed a patent application for
instructions on how to protect against risk in the purchase of energy
commodities.
1. Applied as a process
a. Patent for hedging against risk
b. Preempt use of approach in all fields
c. Grant a monopoly over an abstract idea
ii.
Holding: Abstract Ideas are not patentable
a. Inventions discoveries eligible for patents
i.
1. Processes
ii.
2. Machines
iii.
3. Manufacturers
iv.
4. Compositions of matter
b. Exemptions to Broad patent-eligibility principles
i.
1. laws of nature
ii.
2. Physical phenomena
iii.
3. Abstract ideas
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2. As an initial matter, the Court determines that
a. (1) the machine-or-transformation test is not the only
method for determining whether an invention is a
“process,” and
b. (2) a business method is not per se excluded from being
considered a patented process.
b. Alice Corp. Pty. Ltd. v. CLS Bank International
i.
Alice Corporation (Alice) (defendant) was assigned several patents that
utilize a third-party computer scheme to mitigate settlement risk in a
transaction (i.e., the risk that one party will not satisfy its obligation).
1. No. An abstract idea is not patentable. However, a claim that
involves an abstract idea is patentable, provided the balance of
the claim adds something of significance to the idea.
2. Does a claim patent an abstract idea
a. Is the claim directed at an abstract idea?
b. Does the claim contain an inventive concept that
transforms the abstract idea into a new or useful end?
Uspto Prong 1
- Is the claim directed to a judicial exception (law of nature, natural phenomenon or
abstract idea?
- The USPTO
- Certain methods of organizing human activity:
- Fundamental economic principles or practices (including hedging, insurance,
mitigating risk);
- Commercial or legal interactions (including agreements in the form of contracts
- Advertising marketing or sales activities
USPTO Prong 2 to step 2a
- Is the claim, though a judicial exception, nonetheless “integrated into a practical
application of the judicial exception
- Reflect an improvement to computer functionality or to another technology field
- Transformation to a different state or thing?
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1.
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Statutory Category
Processes
Machines
Manufacturers
Compositions of
matter
NO
Non- Patentable
Subject matter
Yes
Judicial Exceptions
Laws of nature
Physical
Phenomena
Abstract Ideas
NO
Non- Patentable
Subject matter
Yes
Yes
Is their an inventive
application Yes or not
NO
Patentable subject
matter
Non- Patentable
Subject matter
1. Written Description, Enablement, Best Mode, Definiteness
a. Section 112: The specification shall contain a written description of the invention,
and of the manner and process of making it, so as to enable any person skilled in
the art …to make and use the same [enablement], and shall set forth the best
mode contemplated by the inventor for carrying out the invention. The
specification shall include one or more claims particularly pointing out and
distinctly claiming [definiteness] the subject matter.”
b. Enablement
i.
[35 U.S.C. § 112, paragraph 1] States that the written patent specification
describing the invention must be in clear and concise language that would
enable any person skilled in the relevant art to make and use the invention.
1. The Gentry Gallery, Inc. v. The Berkline Corp.
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a. A patent holder is limited to claims of infringement on a
patent to the extent that the written specification describes
the invention and all of its claimed purposes and limitations.
b. Gentry’s disclosure provides for only a minor variation in the
placement of the controls, noting that they “may be mounted
on top or side surfaces of the console rather than on the front
wall…without departing from this invention.”
c. No other variation beyond the console is suggested.
d. Thus, locating the controls anywhere but on the console is
outside the stated purpose of the invention.
2. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.
a. This written description must show to anyone familiar with the
subject matter that the inventor was actually the one who
invented it as of the date of the patent.
i.
Written description
1. Inventor possess the claimed invention
2. Discloses knowledge the patent is based on
ii.
What is the standard for a genus claim?
1. Must disclose
a. A representative number of species of
the genus; or
b. Structural features common to all
members of the genus,
i.
So that a PHOSITA could
visualize or recognize it
members
iii.
Patent Infringement
1. Under the general infringement section of 35
U.S.C. § 271, a person who imports, sells,
offers to sell, or uses in the United States
without authorization a patented invention,
process, machine, or manufacture is
chargeable with infringement of the patent.
c. Definiteness Requirement
i.
[35 U.S.C. § 112, paragraph 2] States that the written patent specification
must clearly and distinctly claim the subject matter of the invention.
1. rationales:
a. clear notice to the public about what is claimed
b. information-forcing: burden on applicant to clearly disclose
2. Nautilus, Inc., v. Biosig Instruments, Inc.
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a. A patent’s claim is invalid for indefiniteness if the claim fails to
provide reasonable certainty about the scope of the
invention.
b. The definiteness requirement is evaluated by:
i.
someone skilled in the relevant area,
ii.
looking at the time the patent was filed, and;
iii.
looking at the patent’s specification and prosecution
history.
3. Janssen Pharmaceutica v. Teva Pharmaceuticals USA, Inc.
a. A patent is invalid for lack of utility if its specification is based
on speculation.
i.
A specification that is overly conceptual, hypothetical,
or speculative in nature fails to establish the utility of
the invention.
d. Written Description
i.
Written description prong 35 of usc 112(a) requires that the written
description be sufficient to demonstrate that the inventor had possession of
the invention being claimed at the time that pentet application was filed.
ii.
old written description requirement: policing “no new matter”
iii.
Written description prong 35 of usc 112(a) requires that the written
description be sufficient to demonstrate that the inventor had possession of
the invention being claimed at the time that pentet application was filed.
1. § 132: An amendment shall introduce “new matter”
2. rationale: since get benefit of the date of filing, amendments to
claims can only encompass things within written description of
application as originally filed.
a. § prevent “gamesmanship” in ex post claim extension via
amendment,
iv.
Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.
1. If the legislature had intended this paragraph to only include the
enablement requirement, the paragraph would not have included
either the phrase “of the invention” or “and of the manner and
process of making and using it.”
2. This written description must show to anyone familiar with the
subject matter that the inventor was actually the one who invented it
as of the date of the patent.
3. Written description
a. Inventor possess the claimed invention
b. Discloses knowledge the patent is based on
e. Best Mode
i.
§ 122, ¶ 1: requires inventor to disclose the “best mode” of implementing
invention known to him at the time of the application.
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ii.
1. subjective: only need to disclose best mode if you have one
2. timing: assessed at application. Need not update if later figure out a
better one. (Spectra Physics)
a. What was the inventor's best mode of carrying out the
invention at the time of application.
Four requirements to claim priority (102)
1. The claim must be supported under 112(a), written description,
previous species must be disclosed in the earlier application
2. At least one common inventor
3. Must be filed during the penance to the earlier patent
4. Must make a reference to a earlier patent
1. Novelty under AIA
a. First thing to analyze is to determine what law applies
i.
35 USC 100
1. The term “effective filing date” for a climbed invention in a patent
or application for patent means
a. A. if subparagraph (b) does not apply, the actual filing date
of the patent or the application for the patent containing a
claim to the invention or
b. B. the filing date of the earliest application for which the
patent or application is entitled, as to such invention, to a
right of priority
ii.
Transition Applications
1. AIA applies to a “transition application” If:
a. The US application contained at any time a claim not
supported by the pre AIA Application
2. America Invents Acts
a. 35 USC 102
i.
Novelty
1. Critical date - Effective filing date
a. In which all prior art is
b. The Critical date must be before the
prior art to survival
ii.
Loss of Right Provisions
1. Critical Date- Effective Filing Date (PostAIA)
iii.
Determine the date of invention
1. Requires:
a. Conception with due diligence to
filing
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b. 35 USC 102(a) Novelty; Prior Art.—A person shall be entitled to a patent
unless—
i.
(a1) The claimed invention was patented, described in a printed
publication, or in public use, on sale, or otherwise available to the
public before the effective filing date of the claimed invention; or
ii.
(a2) The claimed invention was described in a patent issued under
section 151, or in an application for patent (1) published or deemed
published under section 122(b), in which the patent or application, as the
case may be, names another inventor and was effectively filed before the
(2) effective filing date of the claimed invention. TO be a prior
reference
iii.
(b) Exceptions.—
1. (1) Disclosures made 1 year or less before the effective filing
date of the claimed invention.—A disclosure made 1 year or
less before the effective filing date of a claimed invention shall not
be prior art to the claimed invention under subsection (a)(1) if—
a. The disclosure was made by the inventor or joint inventor
or by another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor; or
b. The subject matter disclosed had, before such disclosure,
been publicly disclosed by the inventor or a joint inventor
or another who obtained the subject matter disclosed
directly or indirectly from the inventor or a joint inventor.
2. Disclosures appearing in applications and patents.—A
disclosure shall not be prior art to a claimed invention under
subsection (a)(2) if—
a. The subject matter disclosed was obtained directly or
indirectly from the inventor or a joint inventor;
b. The subject matter disclosed had, before such subject
matter was effectively filed under subsection (a)(2), been
publicly disclosed by the inventor or a joint inventor or
another who obtained the subject matter disclosed directly
or indirectly from the inventor or a joint inventor; or
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iv.
v.
c. The subject matter disclosed and the claimed invention,
not later than the effective filing date of the claimed
invention, were owned by the same person or subject to an
obligation of assignment to the same person.
© Common Ownership Under Joint Research Agreements.—Subject
matter disclosed and a claimed invention shall be deemed to have been
owned by the same person or subject to an obligation of assignment to
the same person in applying the provisions of subsection (b)(2)(C) if—
1. The subject matter disclosed was developed and the claimed
invention was made by, or on behalf of, 1 or more parties to a joint
research agreement that was in effect on or before the effective
filing date of the claimed invention;
2. The claimed invention was made as a result of activities
undertaken within the scope of the joint research agreement; and
3. The application for patent for the claimed invention discloses or is
amended to disclose the names of the parties to the joint research
agreement
(d) Patents and Published Applications Effective as Prior Art.—For
purposes of determining whether a patent or application for patent is prior
art to a claimed invention under subsection (a)(2), such patent or
application shall be considered to have been effectively filed, with respect
to any subject matter described in the patent or application—
1. If paragraph (2) does not apply, as of the actual filing date of the
patent or the application for patent; or
2. If the patent or application for patent is entitled to claim a right of
priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to
claim the benefit of an earlier filing date under section 120, 121,
365(c), or 386(c), based upon 1 or more prior filed applications for
patent, as of the filing date of the earliest such application that
describes the subject matter.
c. Printed Publication Bar- A person is not entitled to a patent if the invention was
described in a printed publication more than a year prior to the date of the patent
application.
i.
The publication must be readily
ii.
In re Klopfenstein
1. For purposes of the statutory bar to patent validity known as the
printed-publication bar, an inventor’s disclosure of his invention
does not have to be distributed or indexed to qualify as a printed
publication.
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iii.
iv.
v.
2. Prior to the enactment of the America Invents Act, 35 U.S.C. §
102(b) barred an inventor from patenting an invention if the
inventor disclosed the invention to the public through printed
publication more than one year before filing for a patent.
3. When professional and behavioral norms entitle a party to a
reasonable
a. The factors:
i.
The length of time the display was exhibited,
ii.
The expertise of the target audience
iii.
The existence (or lack thereof) of reasonable
expectations that the material displayed would not
be copied,
iv.
The simplicity or ease with which the material
displayed could have been copied
4. The plaintiffs took no steps to discourage viewers from copying
down information, and the novel aspects of the inventions could
be copied easily from bullet-points on the slides.
5. Although the plaintiffs’ presentation was not copied, distributed, or
indexed, this presentation was still publicly accessible. Therefore,
the presentation qualifies as a printed publication.
Egbert v. Lippmann
1. A public disclosure of an invention made prior to filing a patent
application may still be considered public, even if the disclosure is
limited to one item, disclosed to one person, and generally
concealed from public view.
a. The Court observed:
i.
A public use may be as limited as one article of the
invention,
ii.
A public use may be as limited as disclosure to one
person, and
iii.
Concealment of the article from public view does
not defeat a finding of “public use.”
Moleculon Research Corp. v. CBS, Inc.
1. An inventor’s use of an invention or sale of the patent rights does
not constitute an invalidating public use or an invalidating offer for
sale that would invalidate the patent.
a. Moreover, even if Nichols assigned or sold his patent rights
to Moleculon, this does not constitute a sale of the
invention, because there is no evidence Nichols also sold
the single wooden puzzle in existence at that time.
Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts
1. Publicly using an invention, even in secret, may bar patent
protection under 35 U.S.C. §102(b).
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2. Publicly using an invention, even in secret, may bar deferral
patent protection extensions of monopoly is the key policy; public
use found here, patent invalid
d. On- Bar sale testi.
1. The product must be the subject of a commercial offer for sale
1. An inventor can both understand and control the timing of the
forest commercial marketing of his invention
2. The experimental use doctrine, for example, has not generated
concerns about idefinitieness, we perceive no reason why
unmanageable uncertainty should attend a rule that measures the
application of the on-sale bar of [sec. 102] against the date when
an invention that is ready for patenting is first marketed
commercially
ii.
2. Second, the invention must be ready for patenting
1. The condition may be satisfied in at least two ways: by proof of
reduction to practice before the critical date; or by proof that prior
to the critical date the inventor had prepared drawings or other
descriptions of the invention that were sufficiently specific to
enable a person skilled in the art to practice the invention.
e. Pfaff v. Wells Electronics, Inc.
i.
An invention need not be reduced to practice in order for it to trigger the
start of the one year “on sale” statutory bar.
1. An invention can be considered on sale under the patent act
before it’s been reduced in practice
ii.
In the present case, the Supreme Court looked to Pfaff’s original
conception of the product, which ultimately resulted in the patent at issue.
1. Had Pfaff filed the paperwork relating to his original conception as
part of a patent application, he would have been granted a patent.
Support for this notion that an inventor need not have a working
prototype in hand prior to filing a patent application is found in The
Telephone Cases, 126 U.S. 1 (1888).
1. Novelty under Pre- AIA Law
Pre- AIA §102. CONDITIONS FOR PATENTABILITY; NOVELTY AND LOSS OF RIGHT TO
PATENT
1. A person shall be entitled to a patent unless—
a. The invention was known or used by others in this country, or patented or
described in a printed publication in this or a foreign country, before the
invention thereof by the applicant for patent,
b. The invention was patented or described in a printed publication in this or a
foreign country or in public use or on sale in this country, more than one year
prior to the date of the application for patent in the United States,
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c. He has abandoned the invention
d. The invention was first patented or caused to be patented, or was the subject
of an inventor’s certificate, by the applicant or his legal representatives or
assigns in a foreign country prior to the date of the application for patent in this
country on an application for patent or inventor’s certificate filed more than
twelve months before the filing of the application in the United States,
e. The invention was described in — (1) an application for patent, published . . .
under section 122(b), by another filed in the United States before the invention
by the applicant for patent or (2) a patent granted on an application for patent
by another filed in the United States before the invention by the applicant for
patent.
f. He did not himself invent the subject matter sought to be patented,
g. (g) (1) during the course of an interference conducted under section 135 or
section 291, another inventor involved therein establishes, to the extent
permitted in section 104, that before such person’s invention thereof the
invention was made by such other inventor and not abandoned, suppressed, or
concealed, or
i.
(g)(2) before such person’s invention thereof, the invention was
made in this country by another inventor who had not abandoned,
suppressed, or concealed it. In determining priority of invention under
this subsection, there shall be considered not only the respective dates
of conception and reduction to practice of the invention, but also the
reasonable diligence of one who was first to conceive and last to reduce
to practice, from a time prior to conception by the other.
1. Conception
a. Definition- The formation in the mind of a definite and permanent idea of the
complete and operative invention
b. Corroboration Required- Inventors testimony alone is insufficient requires
corroborating evidence
c. Complete Invention- Must include all claim elements of the invention
i.
Look at diligence
1. Finance to promote
2. Vacation
ii.
Invalid excuses
1. Attempts to commercialize
2. Doubts about value
3. Working on other inventions
d. Consisting meaning- Have the same plus more
e. Comprising- has to have exactly the elements
2. Dow Chemical Co. v. Astro-Valcour, Inc.
a. For purposes of a patent dispute, a party can be considered a prior inventor even
if the party had no awareness of the invention’s patentability.
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3.
i.
If an invention is disclosed to the public through commercialization, a
delay accompanied by reasonable efforts to bring the invention to market
is generally excusable.
ii.
This awareness is enough to establish prior inventorship, even if the
employees did not see themselves as inventors engaged in the creation
of a patentable process
4. Brown v. Barbacid
a. In an interference proceeding, the board must consider physical evidence of
conception that would be understood by a person of ordinary skill in the relevant
field.
i.
Conception is the formation of a definite and permanent idea of a
complete and operable invention in the mind of the inventor.
ii.
Although oral testimony of purported conception or reduction to practice
must be corroborated by independent evidence, a similar corroboration
requirement does not apply to physical evidence, including notebooks.
iii.
The interference board must weigh evidence from the vantage point of a
person of ordinary skill in the field.
5. Reduction to Practice
a. The steps taken by inventors, at their direction or under their control, to ensure
that inventions operate as claimed.
6. Peeler v. Miller
a. An unreasonably long delay in filing a patent application by an inventor’s
assignee raises a presumption of suppression.
i.
reduced the improved fluid to practice as of April 1966.
ii.
There was no unreasonable delay on the part of Miller himself. Monsanto,
on the other hand, delayed action on the invention until October 1968—
two and a half years from the April 1966 disclosure.
iii.
Black then took another year and a half to file the application. Although
Black’s delay may have been reasonable given his caseload, the initial
delay was not reasonable
1. Nonobviousness
a.
●
TSM TEST
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○
A claim is obvious when there is a teaching, suggestion, or motivation to combine
prior art teachings. The teaching, suggestion, or motivation may be found in the prior
art, in the nature of the problem, or in the knowledge of a person having ordinary skill
in the art.
■ Need for motivation
● To establish obviousness based on a combination of the elements
disclosed in the prior art, there must be some motivation, suggestion
or teaching of the desirability of making the specific combination that
was made by the applicant.
○
b. Hotchkiss v. Greenwood
i.
Prior Art: Metal doorknob with hole for a dovetail shank
ii.
Invention: Clay or porcelain doorknob with same hole
iii.
Holding: Invalid as being obvious
1. Reasoning: [T]here was an absence of that degree of skill and
ingenuity which constitute essential elements of every invention.
In other words, the improvement is the work of the skillful
mechanic, not that of the inventor.
2. The Court held that all the components of the Hotchkiss
doorknobs were well known. In fact, the only distinction between
the Hotchkiss knob and the prior art, as correctly asserted by the
trial judge, was the substitution of one material for another.
●
§ 103. Conditions for patentability; non-obvious subject matter
○ (a) A patent may not be obtained though the invention is not identically disclosed or
described as set forth in section 102 of this title, if the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negated by the manner in which the invention was made.
c.
●
35 USC Sec 102(b)(2)(c)
○ A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if . .
. (C) the subject matter disclosed and the claimed invention, not later than the
effective filing date of the claimed invention, were owned by the same person or
subject to an obligation of assignment to the same person.
d. Graham v. John Deere Co.
i.
In order to determine non-obviousness, a court must determine the state
of the prior art, the differences between the prior art and the claims, and
the level of skill of one of ordinary skill in the art, and, taking into
consideration any secondary factors, determine if the claims are
patentable.
1.
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2. Factual Inquiries
a. Determining the scope and content of the prior art;
b. Determining the differences between the claimed invention and the prior art;
c. Determining the level of ordinary skill in the pertinent art; and
d. Determining if there are any relevant secondary considerations.
i.
Commercial success
ii.
Long-felt but unsolved needs
iii.
Failure other attempts to address the same problem
iv.
Unexpected results
e. Analogous Prior Art
i.
Field of applicant’s endeavor, or
ii.
Reasonable pertinent to the particular problem with which the inventor
was concerned
f. Winslow v. IDS Life Insurance Co.
i.
It is a violation of the Americans with Disabilities Act for an insurer to
uniformly deny the issuance of a long-term disability insurance policy
based on an applicant’s mental health disability.
1. The McCarran-Ferguson Act does not “invalidate, impair, or
supersede” any relevant Minnesota statute and does not bar
Winslow’s ADA claims.
2. Finally, IDS may not avail itself of the Safe Harbor provision of
Title III of the ADA that states that an insurer or other organization
with underwriting tasks may be exempt from the ADA if it complies
with state law.
g. KSR International Co. v. Teleflex, Inc.
i.
To determine whether an invention is unpatentable, a court reviews the
differences between the prior art and the claims at issue, the level of
ordinary skill in the art at the time of invention, and the presence of any
secondary considerations such as commercial success, long felt but
unsolved needs, failure of others, etc., surrounding the origin of the
subject matter sought to be patented.
1. Patent Obviousness- 1. The difference between the prior art and
the claim at issue. 2. The level of ordinary skill applicable at the
time of the invention
2. Patent Obviousness (Secondary issues)- Long-felt but unresolved
needs, The failure of others to achieve a solution, The invention’s
commercial success
3. A person having ordinary skill in the art could have combined
Asano with a pedal position sensor in a fashion encompassed by
the claim, and would have seen the benefits of doing so.
●
Supreme Court endorses/ rejects certain subtests of obviousness:
○ 1) rejects Fed. Cir. TSM rules as “too rigid,” endorses “common sense”
19
○
○
○
obviousness approach
● § Fed. Cir. had used TSM test (teaching, suggestion, motivation) test
for obvious: to show obviousness, must prove prior references TSM
the invention
● rigid, though TSM could be implicit.
● pros of TSM: predictability, avoid hindsight bias
§ Supreme Court rejects this:
■ Too rigid, unsupported by text or precedent
■ Creates a high evidentiary burden.
■ Reflects sense that higher bar should be imposed, that there are currently “too
many patents”
2) adopts “combination rule” (Skaraida): patent which “simply rearranges old
elements,” yielding predictable results à obvious
■ § touchstone is predictability. If combination surprising, then may have
discovered something nonobvious.
■ § exception when prior art “teaches away” (Adams)
■ § most obviousness cases are “combination” cases
3) PHOSITA has both reasonable skill in the area and reasonable creativity.
“Not an automaton”
■ § Factors to determine level of ordinary skill (Environmental Designs):
● 1) education of inventor/ people in field; 2) types of problem
encountered in art; 3) prior art; 4) rapidity with which inventions are
made; 5) sophistication of the technology;
● other potential factors: amount of experimentation, cost of
experimentation, maturity of the field; difficulty of the problems; routine
techniques and approaches
o 4) “obvious to try” test appropriate in some cases§ eg, when there are a
limited number of possibilities, and inventor simply tests them all.
§ but: if “obvious to try” experiment yields unexpected results, should
probably be able to get patent (but see Pfizer).
·
want to encourage this kind of experimentation, thoroughness.
20
Combining prior art elements according to known methods to yield predictable results;
- Simple substitution of one known element for another to obtain predictable results;
- Use of known techniques to improve similar devices (methods or products) in the
same way;
- Applying a known technique to a known device (method or product) ready for
improvement to yield predictable results;
- “obvious to Try” – choosing from a finite number of identified, predictable solutions,
with a reasonable expectation of success;
- Known work in one field of endeavor may prompt variations of it for use in either the
same field or a different one based on design incentives or other market forces if the
variations are predictable to one of ordinary skill in the art; and
- Some teaching, suggestion, or motivation in the prior art that would have led one of
ordinary skill to modify the prior art references or to combine prior art reference
teachings to arrive at the claimed invention.
●
-
Direct Infringement/Claim construction
○ Claim must be constructed Claim Construction- The art of translating patent
claim language, including technical terms, into language understood by a
layperson. The court-accepted definition of specific, technical terms used in
patent claims.
Statutory Classes
- 35 USC 101
- Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
○
○
○
Markman v. Westview Instruments, Inc.
■ The court, because of its 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.
Phillips v. AWH Corporation
■ A 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 one of skill in the art.
Limelight Networks, Inc. v. Akamai Technologies, Inc.
■ An individual cannot be liable for inducing patent infringement when no
one party is liable for directly infringing the patent.
■ A method patent is not infringed unless all steps in the patent are
employed.
21
■
■
-
Under Muniauction, this cannot occur unless the employment of all of the
steps is attributable to the same defendant, either directly or via agency
law.
As a result, an individual cannot be liable for inducing patent infringement
when no one defendant is liable for directly infringing the patent.
Hierarchy of sources of Information
- Intrinsic Evidence (Primary Importance)
- 1. Patent Claims
- 2. Specicifaction
- 3. Prosecution History
- Extrinsic Evidence (Secondary Importance)
- Expert and Inventor testimony Dictionaries and treaties
Hierarchy of Sources of information
- (1) Terms commonly understood do not require additional analysis
- (2) Ambiguous or disputed terms begin with the terms as used in the claim
- (3) Other claims in the patent may be used to assist
- (4) Must examine the specification
- (5) Prosecution history may be relevant in string a term
- (6) Court has discretion to consider extrinsic evidence
-
○
-
-
-
Codification of functional claims
- 35 USC 112(f)
- An element in a claim for a combination may be expressed as a means or step
for performing a specified function without the recital of structure, material, or
acts in support thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the specification and
equivalents thereof.
Invoking Section 112(f) (Test)
- The use of the term “means” invokes a rebuttable presumption that section 112(f)
applies.
- The presumption may be rebutted in two ways:
- 1. The claim does not specify any corresponding function;
- 2. The claim recites sufficient structure to perform the recited function.
- The absence of the term “means” invokes a rebuttable presumption that section
112(f) does not apply.
- The presumption may be rebutted if the claim recites a function without
sufficient structure to carry out the function.
1- determine if 112f applies
2- is their a presumption (means)
3- A means of display would be construed to the court.
●
-
Chapter 8 – Doctrine of Equivalents:
○ For infringement to exist, the accused product or process must literally contain
every element (meaning, every limitation) of a claim
Direct Infringement
22
35 USC 271(a)- Whoever without authority [1] makes, [2] uses, [3] offers to sell,
or [4] sells any patented invention within the United States, or [5] imports into the
United States any patented invention during the term of the patent therefor,
infringes the patent.
- To determine whether the accused product or process infringes a claim,
courts undertake a two-step process:
- First, determine the meaning of the claim.
- Second, determine whether the claim reads on the accused device
or process.
Indirect Infringement
- 35 USC 271(b)- Whoever actively induces infringement of a patent shall be liable
as an infringer.
- 35 USC 271(c)- Whoever offers to sell or sells within the United States or imports
into the United States a component of patented machine, manufacture,
combination or composition
Contributory Infringement
- 35 USC 371 (c) - Whoever offers to sell or sells within the United States or
imports into the United States [1] a component of a patented machine,
manufacture, combination or composition, or a material or apparatus for use in
practicing a patented process, [2] constituting a material part of the invention,
[3] knowing the same to be especially made or especially adapted for use in
an infringement of such patent, and [4] not a staple article or commodity of
commerce suitable for substantial noninfringing use, shall be liable as a
contributory infringer.
Inducing Infringement
- 35 USC 271(b)- Whoever actively induces infringement of a patent shall be liable
as an infringer.
- The inducer acted towards the Party to commit the infringement.
-
-
-
-
-
●
Means-Plus-Function
- A claim written in terms of function without reciting a supporting structure, which is
construed to apply to any corresponding structures described in the specification
or any equivalent structures.
- Means-plus-function claiming allows a patentee to describe an element of a claim
by referring to the function it serves, provided that the written description recites a
specific structure, material, or activity that serves as the "means" which performs
this function. In determining whether a means-plus-function claim is infringed,
courts must therefore consider the specific means recited in the written
description, and compare that with the means by which the same function is
performed in the accused structure or process. If these two means are
"equivalent," then this element of the claim is considered to be literally present in
the accused structure or process.
Product-by-process
Doctrine of Equivalents
○ Allows a court to find that a party infringed on a patent even though the infringing
invention did not fall directly within the scope of a specific patent claim.
○ Triple Identity Test
■ [I]f two devices do the same work in substantially the same way, and
23
○
accomplish substantially the same result, they are the same, even though
they differ in name, form, or shape.
● it does not matter when the equivalent was discovered. What
matters is whether, at the time of the infringement, a person of
ordinary skill in the art would have recognized that the new fabric is
an equivalent.
● Equivalence is determined at the time of the infringement. This
means that infringement may be found even though the alleged
equivalent did not exist at the time the patent issued. The window
shade hypothetical illustrates this point.
Prosecution-History Estoppel
■ A doctrine under which a patent-holder that amended its patent during the
patent application process can’t use the doctrine of equivalents to claim
infringement of rights that are beyond the scope of the amended
parameters.
○
○
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.
■ An equivalent alternative is foreseeable if a person skilled in the relevant
art would have known that the alternative existed in the field of art as
defined by the original scope of a claim.
● A patentee's decision to narrow his claims through amendment
may be presumed to be a general disclaimer of the territory
between the original claim and the amended claim. There are
some cases, however, where the amendment cannot reasonably
be viewed as surrendering a particular equivalent. The equivalent
may have been unforeseeable at the time of the application; the
rationale underlying the amendment may bear no more than a
tangential relation to the equivalent in question; or there may be
some other reason suggesting that the patentee could not
reasonably be expected to have described the insubstantial
substitute in question. In those cases the patentee can overcome
the presumption that prosecution history estoppel bars a finding of
equivalence.
Global-Tech Appliances v. SEB
■ To be liable for actively inducing infringement of a patent, the party must
know that the induced act constitutes patent infringement.
■ In addition, actual knowledge of an existing patent is not required, but
rather willful blindness to such existence will suffice.
■ Willful blindness is a well-established concept in criminal law, and there is
no reason why the standard should not apply in induced patent
infringement cases.
■ Given the long history of willful blindness and its wide acceptance in the
Federal Judiciary, we can see no reason why the doctrine should not
apply in civil lawsuits for induced patent infringement under 35 U.S.C. §
271(b).
24
-
-
Willful Blindness
- (1) the defendant must subjectively believe that there is a high probability that a fact exists
and
- (2) the defendant must take deliberate actions to avoid learning of that fact. We think these
requirements give willful blindness an appropriately limited scope that surpasses
recklessness and negligence.
Specific Intent Requirement
- Actual knowledge that the induced conduct infringes a known patent
- Willful blindness including
- (1) the inducer subjectively believes there is a high probability the invention is
patented, and
- (2) the inducer takes deliberate actions to avoid learning those facts.
●
Limelight v. Akama US Supreme Court
○ In addition to circumstances identified by the panel, liability may arise if “an
alleged infringer conditions participation in an activity or the receipt of a benefit
upon performance of a step or steps of the patented method, and establishes the
manner or timing of performance.”
●
Limitations on Infringement
○ Patent Exhaustion
■ Patent exhaustion limits the extent to which patent holders can maintain
control of a patent produced after an authorized sale.
● Under the doctrine, once an authorized sale of patented product
occurs, the patent holder’s exclusive rights to control the use and
sale of that article are said to be “exhausted” and the purchaser is
free to use or resell that article without further restraint from patent
law.
■ However, under the repair and reconstruction doctrine, the patent owner
retains the right to exclude purchasers of the patented products from
making the patented invention anew (i.e., making another product).
■ Supreme court: holdings
● Methods claims
○ Substantially embodied
■ [I]f [a] device practices patent A while substantially
embodying patent B, its relationship to patent A
does not prevent exhaustion of patent B. For
example, if . . . lens blanks had been composed of
shatter-resistant glass under patent A, the blanks
would nonetheless have substantially embodied,
and therefore exhausted, patent B for the finished
lenses.
■ Quanta Computer, Inc. v. LG Electronics, Inc.
25
●
○
A patent’s method claims are subject to the doctrine of patent
exhaustion.
○ Under the doctrine of patent exhaustion, the authorized
sale of a patented item terminates the patent holder’s right
to control the use of that item.
Inequitable Conduct
■ Rule: Occurs when a patent applicant breaches a duty of good faith and
honesty to the U.S. Patent and Trademark Office either through
misrepresentation or omission of a material fact related to a patent
application. (37 CFR 1.56 (Rule 56)
■ An accused infringer must prove that the applicant deliberately
misrepresented or omitted material information with the specific intent of
deceiving the patent office.
● (b) Information is material to patentability when it is not cumulative
to information already of record or being made of record in the
application, and
○ (1) It establishes, by itself or in combination with other
information, a prima facie case of unpatentability of a
claim; or
○ (2) It refutes, or is inconsistent with, a position the
applicant takes in:
■ (i) Opposing an argument of unpatentability relied
on by the Office, or
■ (ii) Asserting an argument of patentability.
■ Doctrine of inequitable conduct
■ Affirmative act of deceit
■ Non Disclosure of information
● Intent Requirement- An accused infringer must show clear and
convincing evidence that the applicant made a deliberate decision
to withhold known information
● Materiality Requirement: An accused infringer must prove but-for
materiality- that the patent office wouldn’t have granted the patent
had it known about the prior art
○ IN 1977, “substantial likelihood that a reasonable examiner
would consider it important in deciding whether to allow the
application to issue as a patent.”
■ Therasense, Inc. v. Becton-Dickinson, Inc.
● The materiality required to establish inequitable conduct is but-for
materiality.
○ An accused infringer can prove the defense of inequitable
conduct by proving with clear and convincing evidence that
the patent applicant misrepresented or omitted material
information with intent to deceive the PTO.
26
● Remedies
○ Injunctive Relief
■ Preliminary and permanent Injunctions
■ Permanent
● 35 USC § 283.
○ The several courts having jurisdiction of cases under this
title may grant injunctions in accordance with the
principles of equity to prevent the violation of any right
secured by patent, on such terms as the court deems
reasonable.
● The 4 Part Test: For permanent injunction Plaintiff must show –
○ (1) [T]hat it has suffered an irreparable injury;
○ (2) That remedies available at law, such as monetary
damages, are inadequate to compensate for that injury;
○ (3) That, considering the balance of hardships between the
plaintiff and defendant, a remedy in equity is warranted;
and
○ (4) That the public interest would not be disserved by a
permanent injunction.
■ Preliminary
● 1. Reasonable likelihood of success on the merits
● 2. Irreparable harm if the injunction is not granted
● 3. Balance of hardships favor moving party
● 4. Injunction’s favorable impact on public interest
○ Compensatory Damages
■ Monetary relief for past infringement
● 35 U.S.C. § 284
○ [T]he court shall award [the patentee] damages adequate to
compensate for the infringement but in no event less than a
reasonable royalty for the use made of the invention by the
infringer.
● Two Measures:
○ 1. Lost Profits
■ Examples
● Demand for patented product
● Absence of non-infringing substitutes
● Manufacturing and marketing capability
● Amount of profits that would have been
made (accounting evidence)
■ Price Erosion
27
● If price falls by 10% - what happens to
demand?
● We know demand will increase
● By more than 10%?
● By less than 10%?
● Elasticity measures the extent to which
demand will change
■ 35 U.S.C. § 284
● [T]he court shall award [the patentee]
damages adequate to compensate for the
infringement but in no event less than a
reasonable royalty for the use made of the
invention by the infringer.
○ 2. Reasonable Royalty Rate
■ Established Royalty
■ Analytical Approach
■ Hypothetical Negotiation
○ Reasoning:
■ What is the appropriate royalty base when the
invention constitutes a portion of the product being
sold?
■ The royalty base shall be the cost of the product
when consumer demand for the invention drives the
sales of the product.
○ Examples:
■
■
■
■
■
■
■
■
■
■
■
■
■
1. ROYALTIES RECEIVED BY LICENSOR
2. RATES PAID FOR USE OF COMPARABLE PATENTS
3. NATURE AND SCOPE OF LICENSE
4. LICENSOR’S ESTABLISH POLICY AND MARKETING
PROGRAM
5. COMMERCIAL RELATIONSHIP BETWEEN
LICENSOR AND LICENSEE
6. EFFECT OF SELLING PATENT PRODUCT ON SALES
OF OTHER PRODUCTS
7. DURATION OF PATENT/TERM OF LICENSE
8. ESTABLISHED PROFITABILITY OF PRODUCT
9. UTILITY AND ADVANTAGE OVER OLDER DEVICES
10. NATURE OF THE PATENTED INVENTION
11. EXTENT TO WHICH LICENSEE HAS MADE USE OF
THE INVENTION
12. CUSTOMARY LICENSING RATES IN COMPARABLE
BUSINESSES
13. PORTION OF PROFIT ATTRIBUTABLE TO THE
INVENTION
28
■
14. OPINION TESTIMONY OF EXPERTS
○ 35 USC 286
■ Except as otherwise provided by law, no recovery
shall be had for any infringement committed more
than six years prior to the filing of the complaint or
counterclaim for infringement in the action.
○ Punitive Damages
■ Treble damages for willful infringement
● 35 USC 284
○ When the damages are not found by a jury, the court shall
assess them. In either event the court may increase the
damages up to three times the amount found or assessed.
○ Attorneys’ Fees
■ Exceptional Cases
● 35 USC 285
○ The court in exceptional cases may award reasonable
attorney fees to the prevailing party.
29