Fall 2015 Duffy Patent Law Major Outline

Patent Law Main Outline
Fall 2015
University of Virginia – Prof. John Duffy
 Why do we want to grant any property rights for innovations?
 Why are the property rights that we do permit so heavily restricted (e.g., ending after only 20 years)?
 Incentive to Create Theory: patents allow for an optimal return on investment for R&D
o Even without patents, innovation occurs (e.g., marijuana) but there may be sub-optimal ROI
 Prospect Theory: investment/R&D can happen after application for or after granting of a patent (Xerox:
product in market much after patent granted)
 First Mover Advantage: first to bring to market will get ROI before copies made
 Regulatory Problem: e.g. pollution - absence of regulation = too much polluters
o Patent system is the opposite (i.e., a Positive Externality): absence of regulation = too little
 Coase: w/ well-defined property rights and zero transaction costs, there would be efficient R&D, thus no
patents needed. Externalities make the patent system necessary
 Competition: patents limit short-term price competition but encourage long-term research competition
(it “orders” competition, not limits it) - w/o patents we would have the opposite result
 Natural Monopoly Problem: high development costs but low costs of production thereafter
o Innovation Costs: high initial cost, i.e., a higher first unit cost, with lower marginal cost
o Possible Solutions from Friedman:
 (1) State ownership (now “public domain” subsidy)
 (2) Private monopoly with regulation
 (3) Unfettered private monopoly: complete private monopoly
o Partial Property Rights:
 Canada pharma: price regulation w/ compulsory licenses
 Temporarily Limited Franchise: like patents today
 Other limitations: fair use, first sale, libraries
 Patentability: should 101 track trends in technology? See e.g. financial engineering
 Concern for the need for more investigation:
o See 101 Mayo, Morse
o See Utility Brenner
o See Enablement: Edison
Ch. 1: Introduction
 Patent:
o (1) Qualifying Inventions: new, useful and not obvious
o (2) Disclosure Required: must disclose information to allow others to practice the invention
o (3) Rights Conferred: certain exclusive rights precluding anyone from making, using, offering
for sale, selling or importing the invention
 Historical Overview of Patent Law: slides 16-19, with lessons on 20
 The Architecture of a Modern Patent
o Specification/Drawings
o Claims: Claims must “particularly point[] out and distinctly claim[] the subject matter which the
applicant regards as his invention.” 35 U.S.C. § 112
 Preamble: must start with “I claim” or “we claim”
 Includes what is not part of your invention because may not count for
infringement analysis (e.g., airplane seats for an airplane tray table invention)
 Transition Words:
 “Open” Claims: “Comprising”
“Closed Claims: “Consisting of”
“Consisting Essentially of” = in between
o Can include additional unclaimed elements IFF they do not make the
variant essentially different from the claimed invention
 “The combination with [elements] of [more details]”
 DUFFY: if evaluating a claim, too narrow a transition word is considered a
Body of the claim
 Claim Definiteness:
o Must be able to determine the scope of the claim, see definiteness, as well
as Written Description and Enablement for what’s in the spec.
o No words like “should,” but “approximately” is more of a gray area
 Three Formal Requirements for Claim Drafting
o (1) Single Sentence
o (2) No Freestanding Elements: must set forth how each element interacts
with at least one other element
o (3) Antecedent Basis: claim references to previously mentioned elements
must be clear
 Independent & Dependent Claims
o Independent Claim: may not refer to any other claims (“A windmill
o Dependent Claim: depends on a prior independent claim (“The window
according to claim 1, wherein/further comprising…”)
 Must narrow the independent claim
 Insurance against granted but overly broad independent claims
 Helps expedite patent process to find patentable claim scope
o Multiple Dependent Claims: may not depend from other multiple
dependent claims
o Combination Claims: “the combination of _(1)_ with _(2)_”
 Older way of claiming things
 May run into obviousness issues
 Means-Plus-Function Elements
o Cannot have single means claim, you need a combination (i.e., at least two
elements) per 35 U.S.C. § 112(6) or 112(f)
See Definiteness under Written Description requirement
See Equivalents of disclosed structure in Claim Interpretation in Infringement
Relation to Written Description Requirement:
o Unclear terms must be found in the spec
Jepson Claims: claiming improvement on works of others (“A __, wherein the
improvement comprises __”)
o Stuff before the improvement is considered prior art or known
Negative Limitations
o Only permitted when there is a proper foundation in the patent
o Sontarus Inc. v. Par Pharmaceutical, Inc. (Fed. Cir. 2012): According to
112(a) written description requirement: negative claim limitations are
adequately supported when the specification describes a reason to
exclude the relevant limitation
Additional information
o “Wherein” is always attached to an element
DUFFY on Claim Scope: when reviewing claims, always think what
language/limitations could be taken out (i.e. what narrows it too much?)
Overview of the Patent System (see slides)
Globalization and Patent Rights (slide 48, p. 55–67)
o Late 19th Century: Paris Convention
o 1970s: Process Consolidation
o TRIPS: Substantive Harmonization
 The Patent Term
 Provisional Applications
 Eighteen Month Publication of Applications
o Continuing Evolution
Ch. 2: Patentable Subject Matter - 35 U.S.C. § 101
 35 U.S.C. § 101: Inventions patentable. 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.
o Broadly interpreted (includes “anything under the sun that is made by man” Chakrabarty
quoting S. Rep.), but subject to two types of exclusions
 General Exclusions: principles of nature, natural products, physical phenomena, abstract
 POLICY: these run into problems with other doctrines
o Novelty: things in nature aren’t new
o Utility: new law of nature is merely an explanation, not a useful
o Abstraction: if it’s too abstract, the legal system may be unable to define
property rights
o Public policy: basic science should be available to all
o Mental Steps: patents are not meant to cover processes of the human mind
o Other IP: patents are not supposed to cover that which is covered by
 Field Restrictions: specific legislative exclusions from patentability (e.g. some nations
exclude surgical methods or business methods)
 Naturally Occurring Things: Living Things & Natural Phenomena
o Overview:
 There is no per se rule against patenting living things (Chakrabarty)
 Current Two Step Process: (From Alice, applied in Ariosa Diagnostics)
 (1) Are the claims directed to a patent-ineligible subject matter? (but isn’t
everything abstract or natural to some degree?)
o Natural: DNA and blood samples (Ariosa)
o Natural: Naturally occurring plasmids (Chakrabarty)
o Natural: Level of compound in blood (Mayo)
o Natural: Isolated DNA (Myriad)
o Natural: Non-modified bacteria
o Y/N Natural: Electrical signals (O’Reilly v. Morse & Telephone Cases)
o N Natural: Synthetic non-naturally occurring cDNA (Myriad)
 (2) If yes, do the claims recite additional elements that “transform the nature
of the claim” into a patent eligible application (step-by-step, and then as a
o N: Describe the natural relation (Mayo)
o N: Simple Application of Discovered Phenom. !patentable (Funk Bros.)
o N: Isolated natural thing (Myriad)
Maybe: Measurement method or actual dosage adjustment (see Mayo)
Y/N: Limited to structure beyond overly broad new principle (compare
O’Reilly v. Morse to Telephone Cases)
Y: Genetic modification (Chakrabarty)
Ariosa Diagnostics, Inc. v. Sequenom, Inc. (Fed. Cir. 2015, supplement) two step
process for claims directed to ineligible SM
 FACTS: diagnostic method claims directed toward isolating plasma from a
maternal blood sample, and amplifying/isolating paternally inherited nucleic acid,
and detecting the paternally inherited nucleic acid.
 RULE: two step process (adding to Mayo?)
o (1) Are the claims directed to a patent-ineligible subject matter?
 DUFFY: everything can be thought of as an abstract idea/law of
nature/etc., so the second prong is really all that matters
o (2) If yes, do the claims recite additional elements that “transform the
nature of the claim” into a patent eligible application
 Two Parts:
 (a) Look at each element alone - is it beyond the abstract
idea and was it in the prior art?
 (b) Look at the combination - does it add more over prior
art? (Duffy thinks Ariosa missed this step, so came out
o (1) Claims were directed toward cffDNA which is naturally occurring
o (2) Claims start with nucleic acid (naturally occurring) and end with
paternal cffDNA (also naturally occurring and known), and the
intermediate process of amplification was well-known. Since the only
thing “new” was the discovery of paternal cffDNA in maternal blood, so
there is not enough to make take this out of the barred category of natural
 IMPORTANT: looks at the claim step-by-step, not as a whole
(the claim was for a new way of getting paternal cffDNA, but the
only thing new was that it existed in maternal blood, i.e., nothing
about the method was new except the starting point, which was a
natural phenomenon)
o BUT SEE patentability of new use for known/natural things (not claimed)
 Paternal was cffDNA normally discarded, but further describing a
new use thereof or specific new steps in the method of isolating
may have passed the test
Diamond v. Chakrabarty (1980) no formalistic or per se rule against living things
 FACTS: invention was genetically modified bacteria (“at least two stable energygenerating plasmids, each of said plasmids providing a separate hydrocarbon
degradative pathway”) that breaks down oil (e.g., oil spills). In some claims
included “inoculum” which included bacteria and carrier material (straw)
o Claims: one for process, one for inoculum, another for just the bacteria
 RULE: man-made microorganism is patentable, as it is not excepted by
congress, thus all claims are patent eligible subject matter
o DUFFY: requires “artificiality”
o DUFFY: This case says the default rule is that congress should except
things from patent eligible SM, but Benson says the opposite, that it is up
to congress to say something is patentable! Duffy thinks the court, in
general, will not exclude a broad man-made category, but may exclude
limited parts thereof
 DICTA: May patent anything under the sun made by man
o DUFFY RESULT: courts began allowing patents on more things
o DUFFY: falls under “composition of matter” and “manufacture” but also
possibly “machine”
 Brennan DISSENT: based on original meaning of the act, living organisms were
not included, so should only get a patent for the process of making the bacteria
 POLICY: compare to CRM—SCOTUS avoids formalistic approach of PTO and
CAFC (don’t just need to tie to “inoculum”)
 POLICY: congress wrote 101 to include broad things it didn’t know about
 Distinction from Plant Patents (Plant Patent Act): needed separate statute
because plant breeders couldn’t describe repeatable process for obtaining the
same results or otherwise enable the invention (how to make and 112)
Mayo v. Prometheus (2012) - something more than describe natural relation
 FACTS: claims drawn to a method of treating a gastrointestinal disorder including
(1) administering a test for 6–thioguanine, (2) determining the level of it, wherein
the level of 6–thioguanine below a threshold “indicates a need to increase” dosage
of a drug, and the level of 6–thioguanine above another threshold “indicates a
need to decrease” dosage of a drug
o Strategy: wanted to sue those who measure, not who prescribe who
probably don’t do the testing steps - divided infringement
 RULE: claims embody natural relations, but fail to do “significantly more than
simply describe … [the] natural relations,” and do not “add enough to their
statements of the correlations to allow the processes they describe to qualify as
patent-eligible processes that apply natural laws”
o DUFFY: this is a method of analysis, not a rule
 POLICY: court notes that traditional excluded categories are not rigid, and at
some level, everything could be considered as a law of nature, a natural
phenomenon, or an abstract idea
O’Reilly v. Morse (1853, p. 107) - Overly Broad New Principle
 FACTS: claim 8 was directed to a method of using electromotive force to send
characters/letters/signs at a distance, explicitly not limited to the specific
machinery in the spec. I.e. new use of electromotive force
 RULE: invalid because it was a too broad—it would cover future inventions
based on the natural principle (of communicating at a distance via electromotive
force) that Morse did not disclose (note: other claims were allowed)
o HISTORY: historically interpreted as invalid because it was a purely
functional claim
o NOTE: claims purely directed to Morse code that were held valid were a
problem for the machine/transformation test Bilski
 POLICY: this is important as a pioneering invention patent that would block use
for future improvements
 DUFFY: Enablement: claimed a result but didn’t disclose all ways of doing it
Telephone Cases (1888, p. 116) - Limitation to Contribution
 FACTS: broad method claim directed to the transmission of vocal/sound with
electrical undulations
 RULE: claim valid patent eligible SM because the undulations in the current were
not naturally occurring. His claim language was limited to his contribution
(“herein described”) and does not cover that which is distinct from that which was
disclosed (this distinguishes from Morse)
Funk Bros. Seed Co. v. Kalo Inoculant Co. (1948) - Can’t Patent Conventional
Application of Natural Phenomenon
 FACTS: plants needed bacteria as inoculants to take nitrogen from the air, but
each strain could only be used with specific types of plants, and some strains
inhibited each other. Patentee found strains that did not inhibit each other and
patented multi-purpose combination of them method for making. Infringement
suit only for the product
 RULE: the conventional application that results from discovering a natural
phenomenon (i.e., strains not inhibiting each other) is not patentable
o This is true even if it the product is not found in nature that way (i.e.,
strains not found in nature together)
 But see Diamond v. Diehr for proposition that novelty is irrelevant
 AMP v. Myriad (2013, supplement) naturally vs. randomly occurring
 FACTS: discovered genes that contribute to certain cancers. Claimed isolated
DNA and synthetic cDNA for coding (processing) that DNA. Method claims for
comparing/analyzing, etc. to find breast cancer not at issue.
 RULE 1: isolated or purified naturally occurring substance is per se patentable
(though the mere possibility that it could or might occur in nature is insufficient),
i.e. naturally occurring DNA is unpatentable
o HISTORY: L. Hand held that things like this were patentable back when
isolation/purification was difficult
 RULE 2: cDNA is patentable as it is not naturally occurring. Even though
cDNA might usually/rarely occur randomly in nature does not render the
composition unpatentable.
Abstract Ideas: software, business methods, etc.
o Two step test (Alice v. CLS Bank)
 Step 1: identify the abstract idea
 If there is a combination of abstract idea, you may be able to stop the analysis as
no case says this is unpatentable
 See stuff above for natural phenom.
 Abstract: Binary to decimal conversion (Benson)
 Abstract: hedging process (Bilski)
 Abstract: third party intermediary exchange (Alice)
 Abstract: digitally implementation of method (Alice, Diehr, Bilski)
 Abstract: electrical signals (Morse but see Benson)
 Step 2: Go through the claim and look for “an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.”
 Two Parts:
o (a) Look at each element alone - is it beyond the abstract idea and was it in
the prior art?
o (b) Look at the combination - does it add more over prior art?
 E.g. Ariosa decided wrongly - each step was known but many
think the combination itself was enough
 Enough:
o Digital implementation of method connected to machine for process
 Best case for software patents
o Bell telephone
 Not Enough:
o Digitally implementation of method (Alice, Bilski)
Convert binary to decimal (shift registers or not) (Benson)
Alice v. CLS Bank (2014) - Two Step Test
 FACTS: computer implemented scheme for using a third-party intermediary to
accomplish exchange of obligations
 RULE: two part test:
o (1) “whether the claims at issue are directed to one of those patentineligible concepts”
 DUFFY: everything can be thought of in this way, and court
agrees here
o (2) If yes, then what else is in the claims
 Look at elements or combination of elements to determine if it’s
sufficient to be significantly more than ineligible concept
 Not Eligible Cases for Comparison: Mayo (gastrointestinal),
Benson (binary conversion), Ariosa (maternal-->paternal), Myriad
(DNA), Funk Bros. (bacteria for plants)
 Eligible Cases for Comparison: Bell (telephone), Diehr (digital
computer operating rubber press), Myriad (cDNA)
o (1) This is an abstract idea
o (2) Nothing significantly more than applying abstract idea of
intermediated settlement using unspecified generic computer. Not
Bilsky v. Kappos (2010) - no per se bar on bus. methods, MOT doesn’t control
 FACTS: patent related to a business method including a market hedging process
(could be accomplished either by contracts or computer) in the energy industry
including a formula
o Take long-term contract for a commodity @ fixed cost, then hedge risk
based on that fixed cost by taking a position in those that would benefit if
the price of that commodity went up
o (1) Machine-Or-Transfer (MOT) test previously endorsed by PTO and
CAFC is only an important clue to 101 analysis
o (2) No per se bar on business method patents (5 justices)
 DUFFY: court is resistant to formalistic bars to patenting (e.g.,
business methods, living things, new uses, medical procedures,
changes in form or proportion—all denied formalistic bar)
o (3) The invention at issue in the case is barred as patent eligible SM as it
would effectively grant monopoly over an abstract idea
 Textualist reasoning: either (1) abstract things are not really new or
useful or (2) take words with ordinary contemporary and common
 Non-textualist reasoning: cannot read 101 literally, it comes with
invitation for creation of federal common law
 Parker v. Flook (1978): Prior precedent “forecloses a purely literal
reading of 101.”
 DUFFY: what about “financial engineering”
Gottschalk v. Benson (1972, p. 123) cannot essentially cover idea/formula
 FACTS: claims directed to method of converting from binary to decimal numbers.
One involved a method with a shift register (which is tied to a digital computer),
while the other simply recited the method steps (could be done with pen & paper).
RULE 1: claim not using a computer is an abstract idea
RULE 2: wrt to claim using a shift register, you cannot get a patent if the
practical effect is to patent an abstract idea or mathematical formula. Inquiry is
whether the claim “essentially covers” the idea/formula.
 POLICY: congress should act to include new developments in patent eligible SM,
but see Chakrabartay and legislation excluding things resembling people
 Improper readings:
o (1) software is per se unpatentable
o (2) abstract ideas tied to an apparatus (e.g., CRSM/”software on a disk
claims”) are patentable
 Inconsistency: Bell telephone case said it might be the only way to make a
telephone, but they still had a valid patent
 Diamond v. Diehr (1981, p. 133) - best case for software eligibility
 FACTS: claimed a specific method of operating rubber press using a digital
computer. It monitored things like temp, time, etc., and plugged into equation to
determine when to remove from the press
 RULE: must look at the claim as a whole, and even if each individual step is of
convention, it may be patent eligible (novelty of each individual step is irrelevant)
o NOTE: may have depended on the fact that it completed a transformation,
which has been held to be patentable (not pure software) - combine with
Diehr which refused to hold all software unpatentable
 HOLDING: patent eligible - not a mathematical formula but rather an industrial
 DUFFY: SCOTUS still has not had a case saying software is patentable,
although it has not made a per se rule against it—this is the best authority to
support that software is patent eligible SM (though it’s tied to a machine here)
Field Restrictions: Disfavored Areas of Patenting
o TRIPS (bar to WTO entry) prohibits discrimination on basis of “field of technology
 EXCEPTIONS: morality/public order, diagnostic/theraputical/surgical methods, and
macroscopic plants/animals, etc. (see slides 104, 106)
 POLICY: don’t want countries favoring those technologies in which they accell
o This does not prohibit “abstract idea” bar, even if it eliminates entire software field
o Other countries
 Business ≠ technology
o US
 Special remedies for surgical methods
o Medical Procedures
 Medical techniques have a spotty patent history. Morton v. New York Eye Infirmary, 17
F. Cas. 879 (C.C. S.D.N.Y. 1862), is an early example of the court’s hesitation to permit
the patenting medical procedures.
 Ex parte Scherer, 103 U.S.P.Q. (BNA) 107 Pat. Off. Bd. App. 1954), officially
overturned the disfavor given medical procedures in the Patent Office, but the office had
granted several medical procedure patents even before Scherer.
 While medical procedures are still patentable, the ability of the inventor to receive any
return on his or her patent has been severely limited. See 35 U.S.C. § 287(c) (2000) for
purposes of infringement, can’t bring infringement against medical practitioners or
healthcare entities
Ch. 3: Utility
 Statutory Basis:
o 35 USC § 101: authroizes patents only for new and “useful” subject matter
35 USC § 112: requires disclosure of “the manner and process of making and using” the
Aspects of Utility Doctrine
o Operability
o Beneficial utility
o Practical or Specific Utility
Operability: concerning usually “incredible” inventions - credible utility
o Concerned with timing: as of filing
o See also Enablement: speculation and prophecy
o Applicant submission of evidence is presumptively correct,
 Burden shifts to applicant to provide evidence (only from the time of filing) only if
rebutted with evidence that those skilled in the art would ‘reasonably doubt’ the asserted
utility and operability (Swartz)
 Agency can assert that applicant’s utility is “an inherently unbelievable undertaking or
involves implausible scientific principles” (In re Brana (Fed. Cir. 1995)
o DUFFY: why should the PTO care? If it doesn’t work they get no market power
Beneficial Utility: some social benefit (at least no social harm)?
o DUFFY: thing of the past
o May overlap with patent eligible SM (e.g., cannot patent something that is substantially human)
o Europe considers morality more than US does: US leaves up to congress to make something
illegal (e.g., Oncomouse—mouse that would get cancer quickly—eventually allowed by EPO bc
would reduce suffering of mice in general)
 The fact that it is illegal is insufficient to defeat beneficial utility: we must be against it as
a nation
 TRIPS: doesn’t protect inventions that are illegal everywhere, but if legal in at least one
jurisdiction then likely cannot exclude it
o Juicy Whip, Inc. v. Orange Bang, Inc. (Fed. Cir 1999) - Deceptive Utility
 FACTS: (“mall”) juice store juice machine where all the real juice stuff was under the
counter and a decoy/face reservoir showed churning juice above the counter
 NARROW HOLDING: “The fact that one product can be altered to make it look
like another is in itself a specific benefit sufficient to satisfy the statutory
requirement of utility”
 BROAD HOLDING :“even if the use of a reservoir containing fluid that is not
dispensed is considered deceptive, that is not by itself sufficient to render the
invention unpatentable” (other institutions can deal with deceptive trade)
o Lowell v. Lewis (Cir Court D. Mass. 1817) (Story) - Originator & Policy
 DICTA: “invention should not be frivolous or injurious to the well-being, good policy, or
sound morals of society” from the word “useful”
 Result: policing morality, but court wasn’t asked about morality
 HOLDING: look to market as the measure of the degree of utility
 DUFFY: this isn’t optimal, option value for prospect of utility exists, but these
shouldn’t be patented
Practical or Specific Utility: is utility “substantial”?
o DUFFY: problems usually arise when another utility is likely to be found later down the research
o NOTE: talk about “specific” and “substantial” utility together
o Concerned with timing: as of claimed date of invention (see Brenner)
 Evidence: you can simply state utility in the spec, and then provide evidence (from that
time) later
Not about economics, but whether it is useful: substantial wrt universe of possible utilities for the
Substantial utility: a “specific benefit exists in currently available form” (Brenner)
USPTO: p. 240
 Specific Utility: specific to the subject matter claimed, not general as it would apply to
a large class of inventions (e.g. diagnostic for some unspecified thing)
 Substantial Utility: “real world use”
 Not Throwaway Utility: new GMO mouse as snake food
Brenner v. Manson (1966) utility as of invention
 FACTS: Ringold and others publish saying that some compounds (including steroid) are
in testing for tumor inhibiting effects; file for patent on process of making the steroid; get
patent; Manson files after for the same process
 RULE (1): you need show a sufficient likelihood of utility as of time you are claiming
to have invented (at a minimum, at the time of filing)
 RULE (2): applications for process of making a material must assert a use for the
material, and the fact that it is the subject of scientific research is insufficient (it can,
however, be useful for research)
 DUFFY: the reason we award game patents (amusement) but not scientific inquiry
patents is because the value of the later is in the prospect of another utility, thus we would
be giving an early/excessive reward (would also increase the number of blocking
patents). This avoids the most extreme type of blocking patents (where first patentee
doesn’t have a use yet)
In re Brana (Fed. Cir. 1995) - Specific Utility
 FACTS: filed patent for chemo chemical that showed success in curing mice of labcreated in vivo tumors and in vitro human tumors
 RULE: in vitro tumor killing is not itself specific utility (absent other evidence), but in
vivo tumor killing in mice is specific utility. There is still a need for practical utility
(satisfied here via mice).
 POLICY: sure, ammonia could kill tumors in a petri dish, it matters if it doesn’t
kill you!
 DUFFY: patenting can be allowed early on in research, but drug companies may have
problem bc it may still take time to make it useful on the market (gap between patent and
marketability). This does, however, create an early winner in the research race so we
don’t have duplication of research. (Note: tolling features for FDA testing)
In re Fisher (Fed. Cir. 2005) subjects of research are not patentable
 FACTS: claims to substantially purified forms of short naturally-occurring DNA
sequences that could be used for research tools—(1) look for polymorphism (mutation
into different structures), or (2) probe (looking for a promoter active in anthesis)
 RULE: no specific utility because there is nothing specifically useful about this particular
gene, just the starting point of other research. Research tools have utility, but subjects
of research do not.
 REASONING: microscopes look at something else, this gene is just being used to
look at itself
 REASONING: substantiality - varies from field to field
 DUFFY: think paperweight example - there’s going to be more value down the research
stream and we don’t want a patent blocking that
See also Juicy Whip (under-counter juice machine and decoy up top): “The fact that one product
can be altered to make it look like another is in itself a specific benefit sufficient to satisfy the
statutory requirement of utility”
Ch. 4: Disclosure & Enablement
o DUFFY: utility asks where the finish line is, whereas enablement (and best mode, written
description, and definiteness) ask whether you’ve crossed it yet.
 Insurance Policy: because prior art must be enabled, if you file an early application and
it ends up not being valid as it is non-enabling, then it cannot be used as prior art to
invalidate your later patent.
Best Mode:
o Pre-AIA: cannot conceal the optimal parameters of the invention as a trade secret
 POLICY: don’t optimize before you file (or you’ll have to disclose), and this is a big
issue for foreign filers
o AIA: eliminated by the new statute
o Timing: must be enabled at the time of invention (time of filing at the latest)
o Two issues:
 (1) Is the disclosed invention operative for some use? (see utility)
 (2) Did the applicant enable all that is being claimed?
o Enablement is a question of LAW
o Cases:
 The Incandescent Lamp Patent (1895, p. 264) - Common Distinguishing Principle
 BACKGROUND: many contributions on light bulbs toward better vacuum in
glass. Once high vacuum in glass globes perfected, race to invent ideal conductor
among researchers.
 FACTS: Edison files 10/4/1879 for high resistance small surface area conductor
(filament); Sawyer and Man (SM) file 1/9/1980 for “carbonized fibrous or textile
material” as an incandescent conductor; 1/27/1880 Edison’s patent issues;
5/12/1885: SM patent issues; 12/8/1887 SM assignees sue companies using
Edison’s lights for infringement on SM’s patent
 RULE: not enabled because there’s (1) no common principle or quality between
all “fibrous” materials (2) “as distinguishing them from other materials.”
o WRT (1) too many in the class were failures, thus there’s undue
experimentation to find which work
o WRT (2) This didn’t pass the technological surprise test: this is not nonobviousness, but something that distinguishes over what was known. If
there is no surprise, then you are precluding people from further
 DUFFY: can get broad pioneering patents, but you must have enabled the broadly
claimed field
 POLICY: Calibrate the patent scope to the scope of the discovery
 POLICY: we have a weak utility doctrine because we don’t care about economic
viability, but enablement takes care of broad claims that could preclude future
economically viable options
o In re Fisher (1970, p. 274) - Scope of Enablement: instruct PHOSITA
 FACTS: hormone preparation disclosing ACTH purities from 1.11–2.30mg, but claiming
at least 1.0 milligrams
 Prior art was below 1.0 milligrams
 RULE: when the specification does not instruct someone skilled in the art to perform
that which is claimed (i.e., above 2.3), then it lacks enablement.
 DUFFY: solution would be to redraft the claim with both upper and lower limits on the
purity. Cannot claim “infinity” and likely not “substantially” absent other
See also Magsil Corp. v. Hitachi Global: claim scope of “change in resistance by at least
10% at room temperature” was not enabled by results that showed 11.8% at time of filing
(marginal advance over prior art)
 DUFFY: this is why you claim different scopes/ranges
In re Wands (Fed. Cir. 1988, p. 275) - Undue Experimentation (Wands Factors) & Enable
Starting Materials
 FACTS: claimed process for using antibodies but did not explain how to get these (they
were not widely available), process worked 1-2% of the time
 RULE (1): wrt undue experimentation, there is no per se rule regarding failure rate, it
depends on the following factors
 (1) quality of experimentation necessary
 (2) amount of direction or guidance presented
 (3) the presence or absence of working examples
 (4) the nature of the invention
 (5) the state of the prior art
 (6) the relative skill of those in the art
 (7) the predictability or unpredictability of the art (tolerance of the art) - key here
 (8) the breadth of the claims
 RULE (2): must enable starting materials (art dependent)
 Can be done by depositing in a repository (new/unobvious use for moonrock)
 DUFFY: trade secrets + patent protection
Speculation and Prophesy
 See also Operability
 Terminology: prophetic patents are okay, but speculative ones are not
 In re Strahilevitz (C.C.P.A. 1982, p. 282) Prophetic - OK if PHOSITA agrees
 FACTS: combination of certain existing technologies to clear out blood of
 RULE: prophetic patents are not per se invalid, and are valid if a person skilled
in the art would think that the invention would work
 Janssen Pharmaceutica v. Teva Pharms. USA Inc. (Fed Cir 2009, p. 277) - Speculative !OK
 FACTS: 1 page patent specification for treating Alzheimers with “cognitively
enhancing amounts” of galantamine.
o Prior animal studies showed success for treating amnesian and improving
short-term memory
 RULE: a patent is speculative if applicant/patentee cannot demonstrate that a
person of ordinary skill in the art would have recognized that the specification
conveyed the required assertion of credible utility
o APPLICATION: specification gives no basis for proposition that it’s
possible to give administer an effective Alzheimer’s disease cognitivelyenhancing amount of galanthamine”—animal studies not enough
o (1) Not a bar on prophetic patents, PHOSITA just must be able to
recognize that it will work from the spec - you can use analytic reasoning
and data to show this
o (2) Note: it’s easier to enable in mechanical arts
o (3) Verb tense: you want to show you aren’t being speculative, but don’t
misrepresent your data (see Purdue v. Endo by using past tense (it has
been discovered) with prophetic results, failure to disclose material
(4) If we were to allow speculative patents, then it would incentivise
patentee to do the experimentation later, or make others do the research
for them
o DUFFY: If it is really difficult to obtain the patented result, you may be required to make a
deposit in a private repository of either (1) final product, or (2) initial materials? Duffy thinks
this is not permitted by the law because to be enabled, you must show how to replicate in the
Written Description Requirement
o Written Description vs. Enablement:
 Written description is an issue of fact, not of law, unlike most validity doctrines
including enablement which are issues of law
 DUFFY: in reality, CAFC almost never defers to d. ct.
 Written description does not allow post-filing publications as evidence, whereas postfiling publications can be used to show that the specification was enabling
 Contribution vs. possession (see below)
 Enablement is purely objective (what would PHOSITA have understood) whereas written
description is an objective view of a subjective (what PHOSITA would have understood
to be known by the inventor)
o Rationals for written description
 (1) History: language has stayed pretty much the same since original statute, which didn’t
require claims, so written description was far more important. Maybe it’s not relevant
anymore now that we have claims and a sufficient enablement requirement?
 (2) Designed to make new matter issues into validity problems (overlaps with 132’s
prohibition on new matter)
 (3) Keep inventors from claiming something beyond their contribution: even if your
specification enables something, you must have realized this before you filed
 (4) Makes up for weakness of enablement requirement, especially for someone patenting
too soon in research process
o Sources:
 § 112 Specification: (a)The specification shall contain a written description of the
invention, and of the manner and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled in the art to which it pertains, or
with which it is most nearly connected, to make and use the same …
 Reading (1): Duffy’s Textual Reading
o (a) “a written description [of the invention, and of the manner and process
of making and using it]”
 Written Description simply requires a writing regarding the things
in brackets
 This is a formality
o (b) “in such full, clear, and concise terms as to enable any person skilled in
the art to which it pertains, or with which it is most nearly connected, to
make and use the same”
 Enablement Requirement
o Takeaway: written description only requires that of the invention, and the
manner and process of making and using it
 Reading (2): Federal Circuit
o (a) “a written description [of the invention]”
 Standalone Written Description separate and apart from the latter
 See Ariad v. Eli Lilly: finds new written description separate from
(b) “and [of the manner and processes of making and using it, in such full,
clear, concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make and
use the same ...]”
 Enablement Requirement
o Takeaway: CAFC written description requires something more than just
the manner and process of making and using
 § 120. Benefit of Earlier Filing Date in the United States: An application for patent for
an invention disclosed in the manner provided by the first paragraph of section 112 of
this title in an application previously filed in the United States . . . , shall have the same
effect as to such invention, as though filed on the date of the prior application, if filed
before the patenting or abandonment of or termination of proceedings on the first
 Continuations, etc.
 § 132. Notice of rejection; reexamination: … [Right to make amendments.] No
amendment shall introduce new matter into the disclosure of the invention.
 Note: not a defense to infringement!
Limitations on Amendments
 New Matter: Limitations on Amendments
 Purely procedural under § 132: you cannot raise under statute during
infringement/etc. trial
 If this comes up in post-grant litigation then you must raise it as a claim breadth
challenge under Written Description
 The Gentry Gallery, Inc. v. The Berkline Corp. (Fed. Cir. 1998, p. 292)
o New claims to a sofa section with (i) two recliners on the same section of
the sofa, (ii) a center console between the two recliners, and (iii) a pair of
recliner controls (one for each recliner) “mounted on the double reclining
seat sofa section.”
o Drawing: controls were on the center console, and spec only mentioned
them on the center console and said that this was an “an essential element
of his invention”
o Added language not limiting the controls to the center console (species to
 RULE: You are limited to claiming the embodiments disclosed your the
original disclosure. PHOSITA/Obviousness/Enablement doesn’t matter.
o APPLICATION: here, the specification did not invent the genus (on the
double reclining seat sofa section) but rather, only the species (on the
center console on the double reclining seat sofa section)
 But see Vas-Cath v. Mahurkar (Fed Cir. 1991, p. 290): vein catheter invention mistakenly
(originally) filed as a design patent was said to support 2,500 words in continuation as
utility patent.
Claim Breadth Limitations
 Regents of the University of California v. Eli Lilly & Co. (Fed Cir. 1997, p. 298): Precise
Definition - Product
 FACTS: Discovered cDNA sequence for rat insulin, but claimed for all mammals
(including humans)
 RULE: § 112 “Requires a precise definition, such as by structure, formula,
chemical name, or physical properties” – not a mere plan for obtaining the
claimed invention
POLICY: more stringent than multifactor undue experimentation test for
 Ariad Pharmaceuticals, Inc. (& Harvard & MIT) v. Eli Lilly & Co. (Fed. Cir. 2010, p.
302) Precise Definition - Method
 FACTS: Claims to directed to reducing NF-kB activity in cells to produce a
beneficial result (immune system won’t kill person), where the reducing
comprises reducing binding of NF-kB to NF-kB recognition sites on genes that
are transcriptionally regulated by NF-kB
o Specification didn’t enable all ways of doing this
 RULE: written description is separate from enablement—must have possessed
the claimed method by sufficiently disclosing the structures (molecules)
capable of producing the desired result (reducing NF-kB activity)
o Post-filing evidence available to show enablement, but not Written
o This is a question of FACT
o ILLUSTRATION: Enablement only requires contribution, i.e., a
PHOSITA to be able to make and use the invention (if description only
describes X, but a PHOSITA would understand how to do Y as well, you
are enabled for X&Y but written description requires possession, and
only in possession of X)
 POLICY: extends other Eli Lilly 1997 case to methods
 POLICY: this is about when you get the fox
Definite Claims: must give the public precise notice of your property rights (can only be raised before
the USPTO like Claim Breadth but unlike new matter)
o § 112(b): “The specification shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the inventor or a joint inventor regards as the
o Breadth ≠ Indefiniteness, breadth is Enablement or Written Description
o Nautilus v. BioSig (2014) - Reasonable Certainty of Scope to PHOSITA
 FACTS: metal handgrips on exercise machine to detect heart rate. Had strips at a “spaced
relationship” to get signals.
 RULE: “invalid for indefiniteness if its claims, read in light of the specification
delineating the patent, and the prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention”
 POLICY: you don’t read the literal reading (any spaced relationship) but see what
PHOSITA would have understood
 SCOTUS OVERRULED CAFC Standard: so long as the claim is “amenable to
construction” and not “insolubly ambiguous”
 On remand CAFC reaches same result that it did before SCOTUS heard
 DUFFY: dumb patent attorney
 POLICY: competing concerns: clarity which provides clear notice to public of right of
which patentee is in the best position to provide vs. imprecision of language and the fact
that it just must inform PHOSITA
o Standard Oil v. American Cyanamid (Fed Cir 1985, p.321) - Old Insolubly Ambiguous Test
 FACTS: claims to something that’s “partially soluble”
 No accepted definition in the field
 RULE: This is “insolubly ambiguous” - important that the spec does not clarify what
this means
o Means-Plus-Function and Definiteness
 Law limits means plus function to that which is in the spec and equivalents, so saves
from overbreadth and establishes more definiteness
Can still be indefinite if there isn’t sufficient structure in the spec, regardless of whether
a PHOSITA “could devise some means to carry the recited function”
 DUFFY: not sure if this is right
Ch. 5: Novelty
 6 Categories of Prior Art
Printed Publications (Documentary)
102(a), (b)
Printed Publications (Documentary)
Patented 102(a), (b)
Patented 102(a)(1)
U.S. Patent Apps. (“2 Time-Period”)
U.S. Patent Apps. (“2 Time-Period)
Used by Others in the U.S. 102(a)
Public Use (Anywhere) 102(a)(1)
Known in the U.S. 102(a)
On Sale (Anywhere) 102(a)(1)
Previously invented by another
(anticipates if in U.S., wins
interference if anywhere) 102(g) (and
to some degree 102(f))
Otherwise Available to the Public
(Anywhere) 102(a)(1)
 Similarities:
 (1) Printed publications and patented art are identical inquiries (global in both)
(aside from slight critical date changes)
 (2) Things that are commercially/publically available are prior art with slightly
different inquiries and geographic restrictions
 (3) Two time period prior art remains limited to U.S. patent applications
 Differences:
 (1) Geographic limitations for commercially/publically available are lifted in
AIA, such that no one time period prior art has any geographic restriction
 (2) Added Catch-All “otherwise available to the public [anywhere]” provision
o Would now likely include speeches at conferences even if you
intended/instructed them to be secret
 (3) Prior invention by another is no longer prior art (first-to-invent to first-to-file)
 Also critical date for many is different (invention vs. effectively filed date)
Pre-AIA: if application or patent was filed before March 16, 2013
 Patented: must be within the scope of the patent, not the disclosure (but the disclosure
can be a printed publication)
 Printed Publication: see standard below
o § 102(a): Novelty Defining Provision
 “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”
 Key language is “invention,” not application - can antedate these references,
see below (In re Moore)
§ 102(b): Statutory Bar - Non-Patent Prior Art
 “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”
 Note: key language is date of the application - cannot antedate
 Note: does not say “by another” - it can be your own work
o § 102(c): Statutory Bar - abandonment
 “he has abandoned the invention”
 Note: none in AIA
 See abandonment standard below
o § 102(d): Statutory Bar - filed & patented in foreign country more than 1 year ago
 “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”
o § 102(e): Novelty Defining Provision - Two Time Period Prior Art
 “the invention was described in [a U.S. patent application that is ultimately published
or patented]” (must be by another) before invention by the applicant
 Key language is “invention,” not application - can antedate these references, see below
(In re Moore)
 Foreign Applications: filings in foreign office are not treated as two time period prior art
 Pre-AIA: 102(e): they filed a PCT with US designated and later published in
english (get WIPO app. date, but not the foreign priority date)
 But see AIA below 102(a)(2)
o § 102(f): Derivation
 Cannot obtain a patent if the applicant/patentee did not invent it themself
 Agawam Co. v. Jordan (1869): Suggestions can defeat an issued patent only if they
“embraced the plan of the improvement” and “would have enabled an ordinary mechanic,
without the exercise of any ingenuity and special skill on his part, to construct and put the
improvement in successful operation.
 Corroboration Rule: oral testimony alone cannot defeat an issued patent, you must be
some corroboration (based on reasonable sufficiency)
o § 102(g): First to Invent (Novelty)
 § 102(g)(1) Interference prior art
 One of the parties in an interference can show they invented first provided they
did not abandon, suppress, or conceal the invention
 No geographic limit for invention, but the subject matter must be claimed in a US
application to qualify for interference proceedings
 See also § 135 for Interference Proceedings: the goal is to find who is prior art to
 See also Brown v. Barbacid
 § 102(g)(2) Anticipation
 Invention in the U.S. by another before applicant/patentee that was not
abandoned, suppressed, or concealed qualifies as prior art for any application or
patent at issue
 Note: This is only a domestic inquiry
 See also Dow Chemical v. Astro-Valcour
AIA: if application or patent was filed on or after March 16, 2013
o Filing Dates: what dates do you use for purposes of the statute?
Effective Filing Date: the date used as reference with regard to the instant application for
patent, or granted patent under review
 Defined in 35 USC § 100(i): the earliest priority date or the date of filing for the
U.S. application
 Used in §102(a) and (b) as the date prior art’s availability date must precede
 Effectively Filed Date: Patents and Published Apps. as Prior Art § 102(d)
 The earliest priority date or the date of filing for the U.S. app.
Meaning of disclosure under exceptions
 NOTE: (b)(1)(A) uses “disclosure”, and (b)(1)(B) uses “publicly disclose”
 PTO: originally thought to only cover exactly that which was disclosed in the application
 DUFFY: “disclosure” and “subject matter disclosed” should be interpreted to cover
everything that would generate prior art under 12(a)(1) (i.e. don’t limit to disclosures in
the patent/pub context, but rather expand to things like commercial use)
 see 323-325 for textual support, etc.
 Concern: some type of commercial activity comes into the prior art under (a)(1)
but then doesn’t get taken out under (b), thus letting the inventor screw
 DUFFY: correct view of the statute
 (b)(1)(A) and (b)(2)(A) provide fairly good protection, including own work,
publications, commercial activities: disclosure means disclosure into the prior art
 (b)(1)(B) and (b)(2)(B) provide protection only if the inventor has “publically
One Time Period Prior Art
 § 102(a)(1): Inclusions - Prior Public Availability Date
 “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”
 NOTE: no limitation on whether it’s by another, this is up to (b)(1) exceptions
 Patented: must be within the scope of the patent, not the disclosure (but the
disclosure can be a printed publication)
 Printed Publication: see standard below
 Otherwise Available to the Public: Catch-All Provision
o Might include things like conference presentations in another country to
significant numbers of people from the U.S. in the art but without
corresponding presentation slides (this would not be included in the old
 Global
 § 102(b)(1): Exceptions
 § 102(b)(1)(A): Grace Period - Disclosure by (Joint) Inventor or Obtained
From Inventor
o Prior art available under (a)(1) is removed if it is a disclosure by (joint)
inventor or by someone who obtained the subject matter from the (joint)
inventor within 1 year of the effective filing date
 § 102(b)(1)(B) Grace Period - Shielding Disclosure by Inventor
o Subject matter disclosed (i.e., by a 3rd party) in prior art available under
(a)(1) is removed/shielded if the (joint) inventor or someone who
obtained the the subject matter from the (joint) inventor had disclosed that
subject matter prior to the third party and within 1 year of the effective
filing date
 I.e. if you have a disclosure under (b)(1)(A), it can shield you from
(a)(1) references published after
Two Time Period Prior Art (see below)
 § 102(a)(2): Inclusions - Published U.S. Patent & Applications (and PCT)
 “the claimed invention was described in a patent issued under section 151, or in
an application for patent 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 effective filing date of the claimed
 Note: to qualify it must name another inventor, subject to exceptions in (b)(2)
 Foreign Applications: filings in foreign office are not treated as two time period
prior art unless
o AIA: 102(a)(2): file within 1 year of (then they get the foreign priority
o But see Pre-AIA above 102(e)
 § 102(b)(2): Exceptions
 § 102(b)(2)(A) Disclosure Obtained from Inventor
o “The subject matter disclosed was obtained directly or indirectly from the
inventor or a joint inventor”
 § 102(b)(2)(B) Intervening Disclosure by Third Party
o Subject matter disclosed (i.e., by a 3rd party) in prior art effectively filed
under (a)(2) is removed/shielded if the (joint) inventor or someone who
obtained the the subject matter from the (joint) inventor had disclosed that
subject matter prior to the third party and within 1 year of the effective
filing date
 I.e. if you have a disclosure under (b)(2)(A), it can shield you from
(a)(2) references published after
o Same as (b)(1)(B) for two time period prior art
 § 102(b)(2)(C) Commonly Owned Disclosures
o If the subject matter was jointly owned/subject to assignment with the
inventor/joint inventor
§ 102(c): Common Ownership
Derivation: now included in § 101 (instead of § 102(f)) with language “whoever invents or
 There are Derivation Proceedings for fights over who invented what
Standard for Anticipation
o Identity Requirement: elements vs. function
In re Robertson (Fed. Cir. 1999, p. 345) - Separate Elements
 FACTS (slides 202–05): Robertson claimed a (diaper) closure member with a first
fastening element, a landing member with a second fastening element engageable
with the first fastening element, and a disposal means with a third fastening
element engageable with the first fastening element.
o Wilson prior art taught the first fastening element that could also function
as the third fastening element
 ISSUE: can the first and third fastening elements be the same?
 RULE: question is whether the prior art falls within the claims of the instant
application: since the claim recites first and third fastening elements, they must
be separate and independent from each other
o RAIDER DISSENT: specification explicitly contemplates that the first
and the third fastening elements can be the same
 In re Schreiber (Fed. Cir. 1997, p. 352) - Inherent Capabilities
 FACTS: conical popcorn lid for pouring out popcorn. Rejected with oil can cap.
 RULE: if the prior art is inherently capable of performing the claimed function,
and has all of the claimed structural elements, then it anticipates
 DUFFY: later amended to recite the size of the top opening, getting over the
Accidental & Unknown Anticipations
 Two Theories:
 (1) Historical: anticipation requires that the prior art have appreciated that it was
creating the invention (In re Seaborg, Tilghman v. Procter, Edison elec. Light Co.
v. Novelty Incandescent Lamp Co.)
 (2) More Modern: anticipation does not require appreciation—if it would cover
the prior art activity then it anticipates (Schering Corp. v. Geneva
Pharmaceuticals, Inc.) - “No Backsliding”
o This is where courts are going
 Schering Corp. v. Geneva Pharmaceuticals, Inc. (Fed. Cir. 2003, p. 358) - Modern Rule
 FACTS: owner of patent covering loratadine (Claritin) obtained subsequent patent
for DCL, which is a metabolite of loratadine. Trying to stop generic companies
from selling loratadine
 RULE: “if granting patent protection on the disputed claim would allow the
patentee to exclude the public from practicing the prior art, then that claim is
o “Anticipation does not require the actual creation or reduction to practice
of the prior art subject matter; anticipation requires only an enabling”
 **DUFFY: though Seaborg and other cases are still technically good law, court
seems to be trending away and more toward the logic in Schering
 In re Seaborg (C.C.P.A. 1964, p. 354) - Must Know/Appreciate
 FACTS: claimed element 95 (had new reliable way to produce it). Rejection with
the fact (though unknown at the time) that it was created at FermiLab before
 RULE: document must demonstrate knowledge or appreciation of what is going
on (“adequate directions”) in order to anticipate
 HOLDING: since element 95 wasn’t identified, no anticipation
 Tilghman v. Procter (1880, p. 356) - Accident Doesn’t Anticipate
 FACTS: inventor developed new pressure/high temp way to break down fat into
glycerine and free fat acids. Prior art steam engines used fat lubricants and
performed the same method.
 RULE: accidental or unintentional prior occurrence, without discovery is not
Edison Elec. Light Co. v. Novelty Incandescent Lamp Co. (Fed. Cir. 1909, p. 357) Accidental Anticipation
 FACTS: Edison invents method of making bulbs where wires are joined inside the
glass. Prior art had junction outside the glass, but occasional manufacturing errors
had glass pour over (thrown away), meeting claims.
 RULE: Accidental occurrences that “gave nothing to the world” do not
anticipate. Must be understood or appreciated
 Inherent Anticipation and the Public Domain
o The “Enablement Standard” for Anticipation: in general prior art must be enabled, but there is
no requirement that it has a use
 In re Hafner (C.C.P.A. 1969, p. 365) - Use Not Required to Enable Prior Art
 FACTS: filed app in Germany, then filed in US with no disclosed use, then app
published in germany, then years later refiles in US after PTO rejected first
application for no use under 112
 RULE: Though prior art must be enabled, it need not have a use
 POLICY: prevents the “backsliding” of the public domain (like modern rule for
accidental anticipation above)
 Broccoli Sprout Patent (Fed. Cir. 2002, p. 368)
 FACTS: Johns Hopkins researchers found that eating cruciferous sprouts
(including broccoli) prevents cancer if you harvest at a certain time, seeks patent
for eating at that time
 RULE: people have been eating broccoli at different times for centuries, cannot
exclude that which has been done
 DUFFY: may be able to get a patent for a doctor prescribing eating broccoli as
medical treatment, but probably won’t be patent eligible SM because it’s a natural
 DUFFY: maybe we should give these patents because butter is good one year, and
bad the next, so maybe we should incentivise good research on this
 Titanium Metals Corp v. Banner (Fed. Cir. 1985, p. 367) Enabled Sample Within
Claimed Range Anticipates
 FACTS: Russian article published about investigating Ti-Mo-Ni Alloys, but did
not disclose a use (alloys in range shown with two dots on a graph). Later TMC
files for patent on that range.
o Expert testified that at the time of the Russian article, PHOSITA would
have known at least 3 techniques to prepare
 RULE: Invalid because the prior art (1) is enabled (with or without utility) and
(2) contains samples within the claimed range
References under § 102(a)
o “Known or Used By Others” (Pre-AIA)
 Known by Others
 National Tractor Pullers Ass’n v. Watkins (N.D. Ill., p. 378) - Public Availability
o FACTS: inventor draws design of tractor sled on tablecloth, shows to 3
o RULE: known by others covers only publicly available knowledge (even
though statute is broader)
o DUFFY: this is parallel to AIA “otherwise available to the public” solves textual problem
 “Used by others”
 Rosaire v. Baroid Sales Division, National Lead Co. (5th Cir. 1955, p. 383) - In
the field w/o concealment
FACTS: Company developed new method involved in oil recovery, uses it
in the Gulf, stops, another party develops and patents (assigns to Rosaire).
o RULE: use “in the field under ordinary conditions without any deliberate
attempt at concealment or effort to exclude the public and without any
instructions of secrecy to the employees performing the work” constitutes
use by others. Stopping use is irrelevant.
 Public Uses under AIA is likely the same as “used by others” pre-AIA. See also
Public Use under statutory bar
o “Printed Publications”
 Defensive Publications: e.g., IMB disclosures
 DUFFY: online publication requires indexing of some sort
 General Public:
 In re Cronyn (Fed. Cir. 1989, p. 389): billboard targeted to PHOSITAs having all
the limitations is “sufficiently accessible to the public interested in the art” even
though it is neither distributed nor indexed
 Constant v. AMD (Fed. Cir. 1988, p. 395): Public accessibility is key; there need
to prove anyone actually accessed the info.
 Presentation:
 In re Klopfenstein (Fed. Cir. 2004, p. 388) - Lack of Confidentiality
o FACTS: in 1998 displayed slides at conference meeting, then displayed on
posters. Conference attendees were free to copy slides. Filed application in
o RULE: even ephemeral publications can be publications. Court looks to
(1) lack of confidentiality explicit or implicit, and (2) simplicity of the
 See also MIT v. AB Fortina
 Distribution:
 Jockmus v. Leviton (2d Cir. 1928, p. 393) - Enough Currency
o FACTS: catalogue which discloses the invention is circulated in France
(50+ copies); later patentee invents
o RULE: Publication must have “enough currency to make the work part
of the possession of the art.” Here: enough.
 MIT v. AB Fortina (Fed. Cir. 1985, p. 390): paper delivered orally to ~500
persons having ordinary skill in the art where 6+ copies of the paper were
distributed (!indexed) is sufficient
 Library
 In re Hall (Fed. Cir. 1986, p. 390): thesis indexed by subject at a university
library is enough
 In re Bayer (Fed. Cir. 2007, p. 394): A thesis not yet indexed is not prior art.
 Northern Telecom v. Datapoint (Fed. Cir. 1990, p. 394): Report in private
library is not a printed publication where the public’s ability to have access to
the materials was unclear.
o “Patented”
 Reeves Bros. v. United States Laminating Corp. (2d Cir. 1969, p. ) –German “petty”
patent was listed by name only in the official publication of the German patent office,
publicly available at the office, but perhaps not sufficiently indexed to qualify as a
publication. Thus must claim the invention.
Two Time Period Prior Art
o 1952 Act § 102(e)
 Alexander Milburn Co. v. Davis-Bournonville Co. (1926, p. 405)
FACTS: Clifford files an application disclosing but not claiming an improvement.
A few months later Whitford files an application claiming the improvement, with
no evidence of earlier invention. Clifford’s patent issues, then Whitford’s.
Whitford assigns to Milburn.
 RULE: applicant must be “the original and first inventor or discoverer . . . of
the thing patented”
o Patent only becomes part of the prior art if it actually issues
 POLICY: Codified in 102(e)
 NOTE: not interference - they aren’t claiming the same thing
o Foreign Applications: filings in foreign office are not treated as two time period prior art unless
 Pre-AIA: 102(e): they filed a PCT with US designated and later published in english (get
WIPO app. date, but not the foreign priority date)
 AIA: 102(a)(2): file within 1 year of (then they get the foreign priority date)
Date of Invention
o This is for purposes of:
 (1) Derivation under pre-AIA 102(f) or AIA 101
 (2) Interference proceedings under 102(g)(1) (see Brown v. Barbacid)
 (3) Antidating under Rule 131 for AIA 102(a), 102(e): your date gets behind reference
(see In Re Moore)
 (4) Anticipation via 102(g)(2) (see Dow Chemical v. Astro-Valcour)
 For all of these (except derivation, which is he said she said), you must show prior
invention, i.e. prior RTP or conception and diligence as set forth below
o Reduction to Practice is the default prior inventor for anticipation or interference
 Actual Reduction to Practice: see below
 Constructive Reduction to Practice: filing patent application that meets all of the
disclosure requirements in 112 (enablement, etc.)
o Second RTP can win interference/antedate a reference/overcome anticipation via 102(g)(2) only
if they were first to conceive and exercised diligence toward their RTP from time prior to first
RTP’s conception (or first RTP’s if first RTP cannot establish conception before RTP like in
Brown) up until second RTP. (See Brown v. Barbacid)
 Events that do not break diligence:
 Poverty and illness: circumstances must prevent work on the invention
 Regular employment
 Overworked patent attorney (excuse for delay in achieving constructive RTP)
 Events that break diligence:
 Attempts to by a research university to get outside funding (Griffith v. Kanamaru:
university claimed poverty, but still had other resources they could have
 Attempts to get commercial orders
 Doubts about value or feasibility of invention
 Work on other unrelated inventions
o Note: Suppressed, Concealed, or Abandoned inventions are disregarded (see Dow Chemical
 Relevance
 102(g)(1): cannot win if suppressed, concealed, or abandoned
 102(g)(2): invention by another under this statute cannot anticipate if abandoned
suppressed, or concealed
 102(c): statutory bar for abandoned inventions
Abandonment: takes an extreme time delay to get to the USPTO (e.g. 4 years in Peeler) more forgiving than diligence
Trade Secrets:
 They are concealed, and thus are not prior art under 102(g)
 Practicing trade secrets in public does count for “public use” under 102(b) bar
 Trade secrets do not qualify under 102(a) known or used (they are not public)
 They might qualify as “public use” under AIA 102(a)(1)
If there is a tie for RTP, then the winner is first to conceive, regardless of diligence, with tie
going to no one if neither party can prove conception
Dow Chemical Company v. Astro-Valcour, Inc. (Fed. Cir. 2001, p. 454) - Invention (102(g)(2)
anticipation) and Suppression
 FACTS: AVI makes foam with new chemical (conception & RTP); AVI begins building
facility to produce the invention; DCC conceives of a similar process/foam; DCC files for
patent; AVI begins commercial production; DCC receives patents.
 RULE (1): there is no requirement that the inventor recognize the inventive nature of
the creation to establish invention.
 APPLICATION: they didn’t think it was an invention, but nonetheless understood
what it was
 RULE (2): a company must undertake “reasonable efforts to bring the invention to
market” in order to not have suppressed the invention
 APPLICATION: AVI’s work to bring the product to market between factory
building and actual sale did not constitute suppression, even if in secret
Brown v. Barbacid (Fed. Cir. 2002, p. 427) - Requirements for Jr. RTP to win Interference
 NOTE: this is in 102(g) section
 FACTS: 9/20/89 Reiss (Brown team) begins experiments; 11/19/89 Reiss has discussion
w/ Casey; 3/6/90 Barbacid RTP; 4/18/90 Reiss files (constructive RTP); 5/8/90 Barbacid
 Reiss’s experiment (9/25/89) showed all elements of the invention, but did not
show appreciation of the results
 RULE: Barbacid wins because he reduced to practice first, and although Brown (Reiss)
can show conception earlier, did not show that he appreciated the invention such to
make this RTP, and did not show sufficient evidence of diligence back from from their
constructive RTP back to before Barbacid’s RTP. Remanded.
 Junior Party bears the burden of proof
In re Moore (Fed. Cir. 1987, p. 469) Rule 131 Affidavit - Partial Invention & Antidating
References (102(a), 102(e))
 FACTS: pre-12/63 Moore invents compound but w/o a use; 12/63 british article
published about that compound but also w/o a use; 11/64 Moore files for patent w/ a use
 RULE: Rule 131 affidavits allow proof of “partial invention” to antedate—no need to
show utility or other elements that are not used from the reference to antedate provided
the other party did not have utility either
Ch. 6: Statutory Bars and the AIA Grace Period (Prior Art Temporal Qualification)
 Statutory Bars & Grace Period
o Comparison: Pre-AIA vs. AIA
 Pre-AIA: 102(b) when you disclosed your own work you automatically got a 1 year clock
- it didn’t enter into the prior art until that ended
 DUFFY: you can rely on this
AIA: 102(a)(1) and to some extent (a)(2) brings everything before effective filing date
into prior art, and you can only get it out with a 102(b) grace period exception
 PTO Original View: disclosure had to be identical to that in the application in
order to pull it out under 102(b)(1)(B) - they are backing off, but you’re a fool to
rely on it
 Encourages people to disclose things early and put them on the market
 PROBLEM: International Matter—many other countries don’t have grace periods
§ 102(b): General Statutory Bars
o Review of Patents and Printed Publications
o Public Use: like a very short adverse possession
 Duffy Test: Public Use for your work or that of a 3rd party
 (1) Invention was exploited in a public way (regardless of whether the invention
itself was disclosed)
 (2) The inventor seeking patent had access to the invention
 Duffy: these cases should apply to AIA statute, see slide 298 for why/not (“otherwise
available to the public”)
 If not, can you patent your own trade secrets?
 Egbert v. Lippmann (1881, p. 508) - Single User is Sufficient
 FACTS: Invents corset springs, gives them to a friend who wears them for years,
then applies (at which point other inventors have made it available to the public
 RULE: His friend’s use of the springs in public counts as public use (thus barred
because it’s been >1 year)
 DUFFY: would be different if they were married
 Metalizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (2d Cir. 1946, p. 519)
Commercial exploitation is public use even if you keep it as a (trade) secret (e.g. for
production methods)
 Note: the same commercial exploitation by another does not constitute a bar
 CONTROVERSY: did the new statute overrule this?
o DUFFY: see slides 328-331 discussing why not
o On Sale
 Pfaff v. Wells Electronics, Inc. (1998, p. 522) Sale = Ready for Patenting
 FACTS: Pfaff shows sketch to TI; later written confirmation of Purchase Order;
CRITICAL DATE; files for patent
o Testimony showed normally sketch-to-tooling, and it worked most of the
 RULE: cannot qualify as on sale unless it was ready for patenting, can show it
o (1) Reduction to Practice
o (2) “Drawings or other descriptions of the invention that were sufficiently
specific to enable a person in the art to practice the invention”
(objective standard)
o DUFFY: you must have sold your invention, not the prior art or vaporware
(mere promise to build)
 OUTCOME: Pfaff’s invention was ready for patenting
o DUFFY: inventor’s own subjective belief of reliability of the drawings
was helpful in determining enablement (objective standard)
 POLICY: test is pegged to when you could get to the PTO
o “Disclosures” under the AIA: see AIA meaning of disclosure under exceptions above
o Experimental Use Exception
City of Elizabeth v. American Nicholson Pavement Co. (1877, p. 543)
 FACTS: invented new wooden paving blocks, 1847 filed caveat (ask PTO for
survey of similar art), 1848 constructs portion of pavement and checks on it
almost daily, 1850 english patent for similar type of pavement, 1854 (6yrs after
construction) files for patent
o NOTE: two year grace period at this time, and foreign patent wasn’t prior
 RULE: experimental use testing the inventions operation is not public use, even
if it provides some incidental benefit to the public
o DUFFY: if hadn’t been checking on it every day, and merely said “report
back to me in x years” then this would be market testing, not testing of the
 DUFFY: pre-AIA this was also extended to sales that were conducted to
test/monitor product
Party-Specific Statutory Bars: § 102(c) and § 102(d)
o § 102(c): Abandonment
 Note: none in AIA
 See above
o § 102(d): Prior Foreign Filing
 In re Kathawala (Fed. Cir. 1993, p. 590) - Rule Illustration
 FACTS: files US app 11/22/1982; files in Greece and Spain with additional
information 11/21/83; Greek and Spanish patents issue 10/2/84 and 1/21/85; files
CIP with additions 4/11/85 (more than 1 year after filed foreign patents and also
was after they both issued)
 RULE: 102(d) statutory bar satisfied:
o (1) Inventor apply in foreign country more than 1 year before U.S. filing
date, and
o (2) The foreign patent have issued prior to the U.S. filing date
 APPLICATION: both satisfied here (see slides 311–12)
 DUFFY: malpractice!
Ch. 7: Nonobviousness
 Modern (Duffy) Process: (from Graham)
o Step 1: Determine scope and content of the prior art
 Assume all subsections qualify (i.e., ignore Hazeltine and dicta in Oddzon)
 Is it pertinent prior art? (Clay, George Meyer Co., Cook Chemical, Winslow)
 Unclear if 102(c) and (d) art is included in obviousness under old statute
o Step 2: Ascertain the differences between the prior art and the claims at issue
o Step 3: Find the level of ordinary skill in the pertinent art
 PHOSITA knows all the pertinent art (Winslow)
 PHOSITA has ordinary creativity, can consider insights from other fields (KSR)
o Step 4: Determine the obviousness or nonobviousness of the subject matter
 Do w/ step 5, though fed. cir. doesn’t necessarily think so
 KSR (“flexible approach”), Graham
 TSM test is still relevant, but not dispositive
 Consider predictability of the art/results (KSR), updating with new technology (e.g.
electronics/computers - KSR), timing analysis (Adams), common sense (KSR), obvious to
try (KSR), qualities not mentioned in the spec = less relevant (Graham), lack of
synergism in combination (Ag Pro)
o Step 5: Secondary considerations/Objective Considerations
 Mainly see Adams, Arkie Lures, KSR (also Graham)
Includes: commercial success (Graham), long-felt but unsolved need (Graham), failure
of others (Graham), teaching away (Adams), timing considerations (Adams), skepticism
of those in the art (Adams, Arkie Lures), social need (Adams), components not previously
available (Adams)
o DUFFY: do steps 4 and 5 together
DUFFY TIME ANALYSIS VIEW: the fact that things come out close in time to big developments
shows it’s obvious - everyone quickly knew that’s the next step/application/adaptation
Pertinent Prior Art
o DUFFY: To be pertinent, prior art must be:
 (1) Same field or industry
 (2) About the same problem
o In re Winslow ( C.C.P.A. 1966, p. 708) “Winslow Tableau”
 FACTS: claims directed to bagging and filling machine, distinction was that there were
pins hold them open rather than a clamp. Other art showed envelopes being filled on rods
and holding papers
 RULE: person skilled in the art “working in his shop with the prior art references—
which he is presumed to know—hanging on the walls around him”
o Calmar v. Cook Chemical (“Scogin Patent”) (p. 637) (another case that was part of Graham) Tableau of Pertinent Art
 FACTS: Argued that new insecticide sprayer cap was distinct because (1) space between
hold-down cap and the shoulder of the container top and (2) use of rib seal rather than a
gasket. Other caps had this technology.
 RULE: Test is what a PHOSITA would would have thought, but tested using all relevant
prior art, (including secret prior art)
 APPLICATION: problem solved in instant patent not just confronting insecticide
sprayer caps, but mechanical closures in general.
 *DUFFY: PHOSITA has perfect knowledge of the whole tableau of pertinent
references—more knowledge than the ordinary researcher, though with the same skill
o Non-anolagous Arts Limitations
 In re Clay (Fed. Cir. 1992, p. 739) - Non-analogous
 FACTS: claim to refined liquid hydrocarbon storage tank with a dead volume
between bottom and outlet port—used a gel that expanded to raise the liquid to a
point. Rejected by a tank with a bladder combined with a gel that would get oil
out of rock formation.
 RULE: analogous art test:
o “(1) whether the art is from the same field of endeavor… and
o (2) …whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved”
 HOLDING: storage of oil is not the same field as extraction of crude oil because
rocks are dissimilar from tanks
 George Meyer Co. v. San Marino Electronic Corp. (9th Cir. 1970, p. 745) - Analogous
 RULE: electrical circuits for detecting missiles/tracking stars are analogous prior
art to claims directed to tracking foreign objects in glass bottles
 DUFFY: reasonably appropriate means focus on real-world capabilities of actual
people of ordinary skill in the art
Obviousness (Step 4)
o See also Adams for timing analysis
o Graham v. John Deere Co. (1966, p. 624)
 FACTS: evolution of Graham chisel plow slides 366–381. Patent at issue solved
problems (compare 375 with 381) (1) damage to upper plate by shank (pink) rubbing up
against fixed upper plate of the clamp (moved hinge plate (green) above the shank so that
the shank does not touch the fixed upper plate), and (2) damage to the spring rod which
was the only part holding the shank within the clamp (bolted the shank to the hinge plate
instead of clamp). Prior art slide 384 not before PTO when granted.
 RULE: look to Graham factors:
 (1) Scope and content of prior art;
o Includes secret prior art, e.g., 102(e) (contrary to Hazeltine) (Duffy thinks
same for AIA)
 (2) The differences between the claimed invention and the prior art; and
 (3) The level of ordinary skill in the art
 Secondary Considerations (Objective Considerations):
o Commercial Success
o Long felt but unsolved need
o Failure of others
 APPLICATION: benefits discussed were almost all found in prior art, and the final
flexing feature was an “afterthought” not shown in the spec
 DUFFY: Is there a requirement to identify nonobviousness?
 DUFFY: walked back Hotchkiss, which was read to say ordinary hard work is not
 Time Analysis: Graham’s device is being challenged as obvious based on prior art that is
very recent
 CAFC Response: teaching suggestion motivation (TSM) test - no “hindsight reasoning”
o KSR International Co. v. Teleflex Inc. (2007, p. 655) - Secondary Considerations/Objective
 FACTS: claims drawn to an electronic sensor on an adjustable throttle pedal with a fixed
pivot. Prior art pedal had each element (adjustable pedal with fixed pivot, electronic
angle sensors)
 RULE: TSM test not exclusive, and instead it’s a flexible test (analysis must be explicit):
 Predictable results generally unpatentable
 PHOSITA is creative and generally can combine insights from other fields
 Combinations of inventions should be scrutinized with special care
o Suspect when (1) function of parts not new, and (2) combination produces
predictable results
 Common sense inferences are permissible in analysis
 Presumption of Validity: diminished when PTO did not have all of the prior art (but this
was limited in Microsoft v. i4i)
 Must present clear and convincing evidence w.r.t. underlying facts
 Judge vs. Jury: issue of law, but underlying facts found by jury
 DUFFY: see Teva, likely to change to allow judge to decide if all relevant facts
can be found by her
 Time Analysis: ECUs had just become popular and were being used for things like
throttle control, so of course you’re going to want to make an adjustable pedal drive-bywire
o Sakraida v. Ag Pro (1976, p. 653): alleged invention is obvious and unpatentable if the invention
is nothing more than (1) a combination of old elements, (2) where each element performs its
known function, and (3) where the end result is not synergistic, that is “result[ing] in an effect
greater than the sum of the several effects taken separately”(Anderson’s-Black Rock v.
Pavement Co. 1969)—unexpected results
Secondary Considerations (Objective Considerations) (Step 5)
o See also KSR and to some degree Graham
o United States v. Adams (1966, p. 645) - Unexpected Results/Secondary Factors
FACTS: battery combining components that had existed for decades (some teaching
away because if left in open circuit the battery would heat), but created absolutely
extraordinary results (magnesium and corpus chloride electrode, each known separately,
plain or salt water electrolyte). US as infringer.
 RULE: this is nonobvious because of Secondary Considerations (Objective
 Teaching away: experts noted skepticism at the time
 Timing considerations: had existed for a long time and no one combined like
Adams did!
 Skepticism of those in the art: others expressed disbelief
 Social need: not true, bc increasing need for better batteries
 Components not available: not true bc they all were
 Timing Analysis: these components had been around for a very long time, and Adams
was the first to combine them in this way—points to nonobviousness
o Arkie Lures, Inc. v. Gene Larew Tackle, Inc. (Fed. Cir. 1997, p. 685) - Secondary
Considerations (Objective Considerations)
 FACTS: claims directed to making plastisol fishing lures with salt in it. Both plastisol
and salt lures were known.
 Evidence combination was thought not technically feasible
 RULE: skepticism of others weighs strongly in favor of finding non-obviousness, even
for relatively simple inventions
 Time Analysis: salt and plastisol lures were known for a long time
DUFFY: the goal of nonobviousness is to weed out trivial inventions, but if it’s trivial won’t it just have
no market value/effect?
o ANSWER: focus is technical triviality, not market triviality (technically trivial invention can
have enormous market value)
o POLICY: reduces transaction costs (licensing, patent searches, litigation, problems of large
collection of trivial patents) (see slides 351–52)
o POLICY: technically trivial patents would develop anyway, so we don’t need the incentive
factor of exclusive rights (lest we reduce incentives for nonobvious inventions) (nonobviousness
allows “those inventions which would not be disclosed or devised but for the inducement of a
patent” Graham v. Deere)
o POLICY: obviousness is really necessary when you have new things that can be done with
existing things
History: Nonobviousness & “Invention”
o History: see slide 357–59
o Selden Patent (p. 606) - Car Patent
 FACTS: Claims combination of gasoline engine and carriage - covers every car on the
 RULE: novel does not mean non-obvious
 APPLICATION: although gasoline engines were relatively new, nearly
everybody thought it was the natural progression to put them on a carriage when
 Duffy Time Analysis: this came out close to the creation of viable gasoline
 POLICY: this would have dire economic effects and reward Selden for not a lot of work
o Hotchkiss v. Greenwood (1851, p. 611) - Benchmark: “Invention” Requirement
 FACTS: claimed conventional method of pouring melted metal into a dovetailed cavity to
get a screw in there (way of bonding central shaft into knob), but with porcelain knob
(prior art was with wood or metal, also different porcelain knobs, but not both together)
 RULE: (new) invention requirement needs more “ingenuity or skill … possessed by an
ordinary mechanic acquainted with the business.”
POLICY: this is more stringent than PHOSITA because it’s about what the
ordinary mechanic could do with a year of dogged work. But we want to
encourage a year of dogged work!
RESULT: overextended doctrine to require things like “creative genius” - 1952 Patent
Act passed in response, wasn’t interpreted till Graham (1966)
DUFFY: is this really obvious? What if it had worked well for metal or wood but
porcelain cracked? FOCUS: this was not hard to do and no disclosure in spec of some
secret as to why it was clever,
Time Analysis: dovetailed technology was very new and only done in one place in CT
Ch. 8: Infringement
 Two ways to do infringement analysis:
o (1) General Infringement (All that’s need for Literal Infringement, starting point for DOE)
 (A) Start with claim language (Merrill v. Yeomans)
 See canons of claim interpretation below
 Means-plus-function language: see under equivalents
 (B) Look also to other parts of the patent document (Phillips v. AWH Corp.)
 Specification
 Drawings
 Prosecution History/File Wrapper
 Note: if intrinsic evidence (patent itself and pros. history) is sufficient, there is no
need to bring in extrinsic evidence
 (C) Limitation:
 Reverse Doctrine of Equivalents (see below)
 Scope of Responsibility (see below for collective/inducement)
 Every Element Rule (Warner-Jenkinson)
 (D) Extrinsic Evidence & Standard of Review and fact vs. law
 Cannot turn interpretation of claims into a question of fact just by bringing
experts (Teva)
 Each claim is interpreted by the court as an issue of law with underlying facts
(Teva, Markman)
 Application of claim to accused device is a question of fact for the jury
 Appeal: Intrinsic evidence (patent itself, prosecution history) is reviewed de
novo, factual findings on extrinsic evidence (experts, things not discussed in
prosecution history) reviewed with deference to the trial court (Teva)
o (2) Infringement under Doctrine of Equivalents (Winans v. Denmead) (if fail under or want an
alternative to Literal Infringement)
 (A) Start with Claim Language
 See canons of claim interpretation below
 (i) Identify element(s) not literally found in accused product/process
 (ii) Identify some structure(s) in the accused product or process that is
“equivalent” to the missing element(s)
 Graver Tank Test: (SCOTUS)
 (1) Performs same function
 (2) In substantially the same way
 (3) To yield substantially the same result
 (iii) Every element or an equivalent MUST be present in the accused
 (B) Limitations
(i) Prosecution History Estoppel: DOE doctrine saying cannot recapture through
equivalents analysis that which is has been “surrendered” during prosecution at
the PTO (such as by narrowing amendment)
o Presumption of estoppel upon amendment, rebutable if patentee can show
PHOSITA couldn’t have been reasonably expected to have drafted a claim
that would have literally encompassed the alleged equivalence (Festo, see
also Warner-Jenkinson)
 (ii) Every element rule (Warner-Jenkinson)
 (iii) Prior Art: if patentee’s “equivalent” analysis would mean that the claim +
equivalents would cover the prior art, then equivalents analysis is rejected
 (iv) Reverse Doctrine of Equivalents: may escape infringement if the defendant
“has so far changed the principle of the device that the claims of the patent,
literally construed, have ceased to represent [the] actual invention.”(Boyden,
Scripps) (= new invention?)
o CAFC has never applied it - weak/nonexistent defense
 (v) Scope of Responsibility for Infringement
o Collective Infringement by Multiple Parties (Limelight)
o Liability for Inducing Infringement (Global Tech., Commil)
 (C) Standard of review and fact vs. law
 DOE is applied as a question of fact for the jury
 Limitations on DOE (especially prosecution history estoppel) are issues of law for
the court
Statutory Basis for Infringement and Claim Interpretation
o 35 U.S.C. § 271: whoever without authority makes, uses, offers to sell, or sells any patented
invention, within the United States or imports into the United States any patented invention
during the term of the patent therefor, infringes the patent
o But what does patented invention mean?
 35 U.S.C. § 154: refers reader to the “specification” for the “particulars” of the
 35 U.S.C. § 112: specification contains (a) written description of the invention, and (b)
claims directed to the subject matter which the application regards as his invention
 NOTE: does not say whether claims or spec should have primacy
 NOTE: says “patented invention,” not “claimed invention”
Interpretation of Patent Claims
o See slides 425-428 for history
o Merrill v. Yeomans (1877, p. 750) - Claim Language = Starting Point
 FACTS: claimed “new manufacture of the deodorized heavy hydrocarbon oils...by
treating them substantially as is hereinbefore described.”
 RULE 1: text of the claim (and standard definition) indicates that the word
“manufacture” is a process of making, not a product (i.e. not product by process)
 RULE 2: the claim is supreme, “no excuse for ambiguous language or vague
descriptions” - thus no liberal construction to cover D’s invention
o Procedure:
 Teva v. Sandoz (2015, Supp. 54)
 FACTS: claims included “molecular weight” for MS drug. Could mean:
o “Peak molecular weight” - weight of most prevalent molecule
o “Number average molecular weight” - weight divided by # of molecules
o “Weight average molecular weight” - give extra weight to heavier
 RULE: first look to context in the specification and use in the claims as well as
prosecution history.
Intrinsic Evidence: (stuff within patent and prosecution history) is a
question of law reviewed de novo
o Extrinsic Evidence: (experts, background science relevant to that time
period) is a question of fact where deference is given to trial court’s
factual findings
 On Remand: Fed Cir.: Cannot make claim interpretation a question of fact just by
bringing expert testimony
o RULE: “The internal coherence and context assessment of the patent, and
whether it conveys claim meaning with reasonable certainty are questions
of law.”
 Markman v. Westview Instruments, Inc. (1996, p. 795)
 RULE: claim construction is an issue of law that may be based on underlying
 Unclear what level of deference is given to trial court & USPTO on interpretation
issues, resolved in part by Teva
Interpreting Claims
o Basic Doctrine
 Phillips v. AWH Corporation (Fed. Cir. 2005, p. 757) Spec, Drawings, Prosecution
History Relevant
 FACTS: bullet stopping wall with “Internal steel baffles extending inwardly from
the steel shell walls.” Accused infringer include internal beams perpendicular to
the shell walls.
o Trial Court: must be oblique or acute angle - 112(f) means-plus function
element that includes structure in spec
o (1) not means-plus-function
o (2) look to specification, patent, prosecution history, and other extrinsic
evidence (not just dictionary) to interpret claim language
 HOLDING (2): specification and claims merely indicates that “baffles” must
impede the flow of something - perpendicular baffle is sufficient to impede flow
of insulation material and thus meets the claim
o DUFFY: this has no basis in the specification for insulation material
 But see SCOTUS: “first look[] into the art to find what the real merit of the
alleged discovery or invention is and whether it has advanced the art
substantially.” Eibel Process Co. v. Minnesota & Ontario Paper Co. (1923)
 Canons of Claim Interpretation (Construction)
 (1) Impose narrow construction to save validity
o Fed. Cir.: last resort
o SCOTUS: must consider “real merit” of invention
 (2) Don’t “read in” limitations from the specification
o CAFC uses often, but...
 (3) Contextual meaning may trump ordinary meaning
 (4) Patentees may be their own lexicographers
 (5) Disclaimers are respected (from prosecution)
 (6) The rule of “claim differentiation”: claims should be interpreted to give each
claim scope different from the scope of other claims (Phillips)—no redundant
 (7) A Claim may be interpreted in light of the purpose or goal of the invention
o Equivalents and Means-Plus-Function Claims
 35 U.S.C. 112(f) (old 6th paragraph): “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”
 (1) only applies to the means elements
 (2) this is more narrow than normal claim interpretation
 Wright Co. v. Paulhan (C.C. S.D.N.Y. 1910, p. 779) (L. Hand)
 FACTS: claims to a plain including “means whereby said rudder is caused to
present to the wind that side thereof nearest the side of the aeroplane having the
smaller angle of incidence and offering the least resistance to the atmosphere.”
Spec disclosed automatic system w/ropes/pulleys connected to rudder.
Subsequent claims had non-automatic means.
o (1) Must approach equivalents analysis with understanding of the
o (2) Means need not be exactly that in the spec
 Look to how hard it would be to modify the Wrights’ plane
o (3) Pioneer patents entitled to broad construction
 Look to how large a contribution was made by the Wrights
o (4) Find fair equivalents
 E.g., to operate the tiller ropes independently and by hand
 DUFFY: under claim language, “ailerons” also infringe the bending wings based
on breadth of language (lateral portions thereof)
 See also Phillips for improper application
Doctrine of Equivalents
o Doctrine of equivalents still starts out with claim language
o Winans v. Denmead (1854, p. 807) - embody mode of operation & same result
 FACTS: claimed coal transportation car “in the form of a … cone … load presses equally
in all directions.” Accused infringer had multi-sided shape.
 RULE: variations from the claim language are allowed when they are “so near to a true
circle as substantially to embody the patentee’s mode of operation, and thereby attain
the same kind of result as was reached by his invention”
o Warner-Jenkinson Co. v. Hilton Davis Chem. (1997, ibid) every element, no intent
 FACTS: claims to an ultrafiltration process with “pH from approximately 6.0 to 9.0.”
This range was to distinguish from a patent having above 9.0. Accused infringer had pH
of 5.0.
 RULE (1): DOE requires
 (i) Element-by element (every element or an equivalent thereto must be present)
 (ii) Burden of disproving prosecution history estoppel is on the plaintiff
 RULE (2): no intent requirement
o Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (2002, p. 813) - Prosecution
History Estoppel
 FACTS: Claimed magnetizable sleeve, accused infringer’s was not magnetizable, but had
properties that provided substantially the same result
 (1) Narrowing of claims through amendment is presumed to be a general
 (2) Can be overcome if “at the time of the amendment one skilled in the art could
not reasonably be expected to have drafted a claim that would have literally
encompassed the alleged equivalent”
o Also if rationale underlying amendment bears no more than a tangential
relation to the equivalent in question
DUFFY: limited doctrine, only available where
 Broad claim is judicially invalidated - narrower valid claims might be broadened
 Claim language does not cover newly developed technology
 Drafters couldn’t reasonably have drafted better claims
The Reverse Doctrine of Equivalents
o Westinghouse v. Boyden Power Brake Co. (1989, p. 830) - Literal Reading Outside Actual
 FACTS: Prior art used train pipe air to activate brakes which used only auxiliary
reservoir air to apply brake. Westinghouse patent allowed for both pipe and aux air to be
used to brake. Boyden’s accused device read literally on the claims.
 RULE: even if the accused infringer is within the letter of patentee’s claims, if doing so
“has so far changed the principle of the device that the claims of the patent, literally
construed, have ceased to represent his actual invention” then it is not infringement
(burden on infringer)
 ANALYSIS: Westinghouse brake was not a perfect solution to the problem (not
successful until additional members incorporated into it), whereas Boyden
through more ingenuity had solved the problem with a simpler design using
modification of an old valve
o Scripps Clinic v. Genentech (Fed. Cir. 1991, p. 837) Possible Application Reverse DOE
 FACTS: Scripps patent for purified human clotting factor from donors needed for
hemophiliacs. 1980s found that even though the factor was very pure, still could transmit
HIV (some still got through purification process they were practicing). Genentech found
way to genetically engineer clotting factor to even purer levels (better & cheaper) so no
HIV problem
 RULE: reverse doctrine of equivalents is an equitable doctrine, remand for more fact
 RESULT: case settled, so never ended up applying RDOE
 DUFFY: likely invalid under Myriad
o Economic Approach to Reverse Equivalents
Injunctive Relief: eBay v. MercExchange (2006, p. 890)
o FACTS: licensing between MercExchange and eBay/Half.com for patent failed, M brought suit
for infringement. Jury found infringement but district judge refused injunction.
o RULE: party seeking an injunction can get one if establishes:
 (1) irreparable harm;
 (2) inadequacy of the remedy at law;
 (3) balance of hardships warrants an injunction; &
 (4) the public interest would not be disserved by injunction
 (different from normal “exceptional circumstances” standard)
o DUFFY: corporations who might take cash award for future infringement can still get
injunctions because damages at law must be proved (not guaranteed)
Questions and to add
 Blocking patents (see 9/23)
 Is Alice v. CLS Bank the appropriate rule for all of the barred categories for patent eligible SM (i.e., not
just abstract ideas, but also natural phenomena/principles?
 What written description issues can be raised as defenses to infringement? You mentioned that it was
only new matter under 132.
 NOTE: if you ever talk about enablement on the exam, you should also talk about written description
 Go through examples slide 317–22, 332–36
Double check slides 337 and beginning of 11/18 - THIS COMBINES THEM ALL
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