Patent Law – Spring 2010 – Ossorio
OVERVIEW
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Bundle of Rights
o Wholly negative; only the right to exclude (as opposed to broader
ownership/possession/sale/manufacture rights for other types of property)
o Not a monopoly – often reasonable substitutes compete in the same market
o Valid only in the issuing jurisdiction
Need for Patents
o Problem
 Ideas themselves are “non-rival
 Inexhaustible and non-excludable
 Need incentive and way to recoup costs of invention
o Many Solutions
 Patents
 Trade Secret
 First-mover advantages (fast-moving industries, network/infrastructure)
Purpose
o Purpose is to promote public good
 Maximizing production of things (inventions)
 Disclosure/dissemination of ideas
o Side-effect is extraneous quid-pro-quo to inventors
Governing Law
o Constitution – Art I § 8 cl. 8 (empowers Congress to make patent laws)
 “Useful art” = patent
 “Science” = philosophical writings/copyright
o Federal law – 35 USC
o MPEP – 37 CFR
Governing Bodies
o PTO
o Federal courts
Two components
o Invention = new/useful…. [machine/manufacture/method/composition]..etc
 Plays large role in pharma, where research costs to invent are high
o Innovation = bringing invention to market
 Plays large role in biotech, where useful application of invention is sometimes unclear
History
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Aristotle (4th Century B.C.)
o Community called for a reward system for invention
o Aristotle was against patents – there should be no exclusionary right; thought that giving things
to society built good character of citizenry
Middle Ages
o Guilds kept techniques, similar to trade secret
o Community sought dissemination of this information
Venice (15th Century)
o Administrative scheme for granting exclusionary rights to inventors
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England
o Adopted patent system to draw inventors
England (17th Century )
o King James had been manipulating England’s patent law to grant his friends monopolies
o In response, House of Lords passed Statute of Monopolies (basis for U.S. patent law)
 Famous Section 6 – “new and useful” inventions get exclusionary rights
U.S. (1790)
o First patent statute
1/26/09 – Structure Of the patent document
- INID Codes – Internationally agreed Numbers for the Identification of bibliographic Data
- Look like [1], [45], etc.
- Helps w/ international patents
- Patents usually referred to by last 3 numbers of the patent
- Also contains:
o Serial # (issued upon filing)
o Domestic and international classifications
o Fields of search, references cited and other information
o Abstract
o Drawings
 If necessary to understand the invention
o Specification
 Written description of the invention and of the manner and process of making
and using it
 Must disclose the “best mode” known to the inventor of carrying out the
invention
 Generally known as the written description, enablement, and best mode
requirements
 No new matter can be amended after filing
o Claims
 Most important part
Basics of Claim Drafting
- 3 parts: preamble, transition and body
- Preamble
o Introduces and identifies the basic parts of the invention
o E.g. “device for attaching pages together”
- Transition
o Open: “claims comprising” – includes claims
 Most common
o “Closed” claims: “consisting of”
 Used for
o “Consisting essentially of”
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Covers variants having element D only if D did not make the variant essentially
different from the claimed invention
Body
o Must perform two functions: (a) list all the elementsof the invention and
o (b) describe how they interact.
Many attorneys rely on previously-blessed phrases, such as Richard C. Faborer, Landis on
Mechanics of Patent Claim Drafting
Requirements for Claim Drafting
- The claim must be written as one sentence.
- Claim must set forth how each element interacts with at least one other element
- Internal references must be clear
- Claims are either dependent or independent – they rely on previous claims or they stand alone
- Claims may depend on multiple claims (they are multiple dependant)
- Multiple dependent claims may not depend on other multiple dependent claims
- Patent claims most often begin with a broad independent claim followed by subsequent
narrower dependent claims
o These narrower dependent claims afford protection in case the PTO invalidates one of
the broad claims
Means-Plus-Function Elements
- Claims specifically authorized in the form “means for doing X” where X is the function
- Must be used in combination with at least one other element
Improvements – Jepson claims
- Used for patenting improvements to an existing invention
- Typically have long preambles followed by the transitional phrase “wherein the improvement
comprises”
- Improvements can also be drafted in the standard format
For 2/3/2010:
- read Bilski 545 F.3d 943 (2008) Federal Circuit In re Bilski
o Read up to the end of the majority opinion, skip or skim Deek’s concurrence
o And read the dissents
- For next week: p. 175 n.8 – 194; p. 207-221
Patentable Subject Matter
- Patent Co-operation Treaty (PCT)
o Enables a shared prior art searching to occur so that a party wanting to patent in a
jurisdiction ( > 100 countries)
o There can be filing that can be used in any country during the ‘national phase’ of the
patent prosecution
o Referenced in U.S. statuttes
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There is also a EU patent convention (European Patent Convention – EPC)
You can do more than just a prior art search. Afterward, you do have to register in
individual countries
o So the EPC, you can have the entire prosecution done in the countries and then file to
activate in those countries
General agreements on tariffs and trade – most countries participate
o ’93 : first time international patent harmonization tied to international treaty talks
o Patent law agreement called TRIPS – Trade Related Intellectual Property
o Lots of change in the U.S. as a result, lots in other countries as well
o For U.S. companies, under TRIPS, there can’t be any field restrictions as to what is
patentable
 Directed toward India, Brazil, who had laws that excluded patent law on
pharmaceuticals and chemicals
 Under TRIPS there can only be exclusions for public health or environmental
emergencies
Although there is a clause in EU law about patent law regarding public law or morality, it isn’t
used much by the courts or the EU patent
Medical process patents in EU can be excluded from patentability
o Even in the U.S. process patents aren’t enforceable against medical personnel
Treaty has language which sounds like a positive right
o Really it’s the ability to exclude others from importing things covered by the patent
o It doesn’t confer a positive right to import
Remember, the patent privilege is to exclude others
After GATT trips the length changed
o Used to be 17 years from date of issue
o Now it’s 20 years from date of filing (+ any applicable extensions)
o Changed the strategy for prosecution – used to be niggling back and forth until you were
really sure you wanted to get the patent
Benefits of a patent
o Exclusionary rule means you can prohibit someone from researching your invention
o Not usually done b/c if there’s new use and it’s covered by your patent, any inventor
would have to license from you
o Also most biotech companies research using competitors’ products
 And this reduces transaction costs
o If you’ve chosen not to enforce your patent, you will have trouble getting a preliminary
injunction
o Patent system: 20 years term good for longer product cycles, shorter more ideal for
industries with short product cycles
PTA’s – patent term adjustment
o Granted to patentees whose applications sat in the USPTO too long and it was their fault
o Indicated on the face page of the patent
Provisional Patents
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You file an applications w/o claims. It’s not examined – it just holds your place in line.
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DO
file provisional
file app w/ claims - 20 yrs. 
Invention
(w/in 1 yr., have to add on claims)
Also remember, you can have up to 2 continuations
If you file the provisional, then any art that would be obvious subsequent to the
provisional would not be considered
Patentable Subject Matter
- Infringement or D/J action
- If you are the defendant or accused infringer, you argue that the other party’s claims are not
valid
- Or argue the patent is not enforceable because inequitable conduct or patent use
- Only then do you argue “we didn’t do it”
- Patents are born valid!!
o Once the patent has been issued, the courts should presume it is valid
o Means party opposing has to prove by clear and convincing
o And once a patent issues, it’s gone through scrutiny by USPTO, so we defer with this
higher standard
- Claim validity
o Is it patentable subject matter?
 Is it useful (utility requirement)?
 Is it new (novelty requirement)? Is it enough of a contribution to knowledge
(non-obvious)
o Drafting concerns
 Is the claimed invention properly disclosed? (§ 112)
- Whoever invents or discovers
o Any new and useful
 Well-defined in § 102 what is “new”
 Useful isn’t well-defined
o process, machine, manufacture, or composition of matter, or any new and useful
improvement thereof
- 35 USC § 100 Definitions
o When used in [the patent act] unless the context otherwise indicates –
o (a) the term ‘invention’ means invention or discovery
o (b) the term ‘process’ means process, art or method, and includes a new use of a known
process, machine, manufacture, composition of matter or material.
o So if there’s a new use for a product,
- Product vs. Process Patents
o Product patent = patent claims cover physical embodiments
 Covers all uses of the product
o Process patents
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Method of making
Method of using
Method of doing
Funk Brothers
- People knew there was a bacteria that would help the plants grow better
- But each bacterium only infected a specific type of plant, and when they were put together,
they would cancel each other out
- One Bond discovered two strains of bacteria that wouldn’t mutually inhibit one another
- I: is this patentable?
- H: No. The bacteria’s character hadn’t changed – it was just as though the bacteria were in
nature
- The Court says this is nothing more than an advance in packaging
- It’s not modified according to a human thought process
- Pronouncements
o Laws of nature are not patentable – and that’s what the Court thought he’d done.
- Frankfurter dissent
o He basically argues that there wasn’t enablement or that the invention wasn’t
adequately described
o He would’ve invalidated on other grounds
Why do we have this product of nature doctrine?
- The idea that certain knowledge is so fundamental to the advancement of so many fields that it
would not advance, but inhibit progress in science and the useful arts
- Courts are highly deferential to “high tech.” inventions
Diamond v. Chakrabarty
- The Products of nature doctrine
o Cannot patent product of nature and because it’s a living thing
- Defines what section 101 prevents patenting of something that occurs in nature
- Ossorio argues that Product of nature subsumes Living thing
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Patent Office & Lower Ct. – problem is: it’s a living thing?
o Well, can’t they just patent the process of making it?
o Are these little guys machines?
o Ethical issues – cloning human beings
USPTO said it was not in the subject matter
SCOTUS said Sup. Ct. said it intended patents to be all encompassing
I: can a living thing fit into patentable subject matter?
o Useful arts is interesting:
“Anything under the sun made by man” may be patentable
o Has to show the effects of human manipulation
Here the product of nature doctrine wasn’t implicated b/c
What did Chakrabarty do?
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He put bacteria together, and had them “bacteria sex” and then they transfer their
plasmids
If you were the patent office, what would you argue?
o That this is just advancement in packaging?
o The court says these bacteria aren’t found in nature, but we have no idea whether they
do exist in nature or not
So, living v. non-living – both patentable
Dissent argues that the Plant Patent Act specifically mentioned certain items and wasn’t meant
to have such broad applicability.
Chakrabarty not very well argued – they never advanced the Funk Brothers argument and
instead argued there would be a “parade of horribles.”
The court announced that the distinction is not living vs. non-living
o It’s human created or constructed vs. “product of nature”
 Manufactured v. Natural
 Unnatural v. natural
 Artificial v. Natural
They say it’s Congress’s or another agency’s job to limit what can receive protection
Chakrabarty had a number of claims
o The only ones the USPTO didn’t allow were the product claims themselves (the
composition of matter)
o Why?
o There are other ways to get to the same result
The thing about process patents is that if there’s > 1 way to get to the final product, then your
process patent gives you almost not protection
A product patent gives you the right to exclude doing anything with the product
Product patents are viewed as being much more powerful in terms of their exclusion
What about patenting a dog breed, like a Labradoodle?
- J.E.M. Ag Supply Inc. v. Pioneer Hi-Bred Int’l – newly eveloped plant breeds may be protected
under the general patent statute.
- They cite Chakrabarty
- Invention that was a brewing process and the yeast – again it wasn’t just the patenting of yeast.
- There was a widespread view that bacteria weren’t going to meet the requirement for
patentability, and so weren’t even trying
Parke-Davis . H.K. Mulford – opinion by Learned Hand
- Purified adrenaline – even though naturally occurring, as long as it’s useful – and is purified is
patentable
o It becomes a new thing for all practical purposes
- Mr. Takamine isolated and purified adrenaline
o Prior to this, a slurry of ground up adrenal glands were used
o Transformed a salt into a base
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He had another application in which he claimed the salt variety, but this was already in
nature
He obtained a patent on the compound w/ the salt as well
Hand says that as long as the product has new uses, that’s what we should care about
Also he says it’s stunning that judges have to deal with patent law
And he uses the market share after the product was released to see if it should be patented
o And this is questionable jurisprudence
o But the federal circuit is fond of that evidence in determining non-obviousness evidence
One patent for the patent, and another for adrenaline + salt
Learned Hand says that purification of an animalian substance is patentable
Even though different chemicals were used to get the end product, it was a product patent, so if
there were different methods used, it doesn’t matter
Now, was Takamine’s product anticipated from prior art?
o All the prior arts were a salt, so no prior art
Nor does another patent in Germany that used Zinc constitute –
“it became for every practical purpose a new thing commercially and therapeutically That was a
good ground for a patent.”
55-64, 67-78, 98-117
Patent Process Consolidation
- Patent co-operation treaty (PCT)
- And EPC – European Patent Convention
- Inventors may file a single “PCT app in any patent office of a jursidcition bound by the
agreement
o 2 phases “international phase” and “national phase” – applicant must prosecute the
application through the patent office of each country where the prosecution is sought.
- EPC establishes centralized office for prosecution – the European Patent Office
o Only applies to 20 nations, compared to PCT’s 20
- GATT – Global agreement on tariffs and Trade –
o Gatt Trips – Trade Related Aspects of Intellectual Property
o Made almost everything patentable subject matter (pharma. For developing nations)
o Tested them for an inventive step and application (equal to our non-obviousness and
utility)
o Gave patentees the exclusive right to import invention
- Changed the patent term to 20 years from 17 from filing date
o Can get term extensions for PTO and FDA delays, though
- Provisional apps give you up to 1 year longer of a term. They act as a placeholder
o Meant to even out foreigners’ advantages
- We also began publishing some applications after 18 months of being in the patent law
o But an application will be kept confidential unless the applicant also filed a patent on
the same invention in another country that has the 18 month publishing policy
o You can never get that anonymity back – so it’s a tradeoff
Lab Corp. v. Metabolite
- Metabolite sued Labcorp for methodof detecting a vitamin b12 / b9 deficiency
- Detects the deficiency by detecting elevated levels of homocysteine
o Comprising the steps of: testing the body for a level of a hormone, and then correlating
it with the level of
o It’s a process patent – do an assay and think about it
- So who’s the infringer? Well, a lab does the assay, and the doctor does the correlation
o Who are they suing? They’re suing a company does the assays
o But they assays they’re doing aren’t covered in this claim!
o The company (Labcorp) stopped paying royalties to Metabolite b/c they stopped using
their assay. But they came back and said it covers any assay for homocysteine
- So, Labcorp got sued for inducement to infringe
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- Defendants argue that the patent is invalid
- The court said it was improvident to grant cert. on this issue
- Solicitor general said it’s probably unpatentable, but might be patentable if it entails the
transformation and reduction of an article to a different state or thing
- Breyer, Stevens, and Souter
o Breyer has been sending lots of signals that he’s unhappy with the patentable subject
matter doctrine
o Same thing with Souter
- Breyer thinks that this isnt’ a process – and anything can be made a process
- The correlation between homocysteine and vitamin deficiency is a natural phenomenon
The courts for patents
- The CCPAs didn’t have subject matter jurisdiction – heard all patent cases that came up from the
patent office and a lot of FTC (the regulator who regulated importation of patent goods)
- But it di
In Re Bilski – 545 F.3d 943
- Background
o Rader = law & economics
o Gottschalk v. Benson – 1972 - for a “naked computer program” – converted BCD to
binary
 Court held it to be unpatentable subject matter
 Was a process claim
 No new apparatus claimed, no new machinery necessary to carry out the
invention
 If the patent were valid, it would wholly preempt the mathematical formula,
and would be a patent on a mathematical formula
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 Did not say whether or not software could be patentable, however
Paker v. Flook
o Another method patent on updating alarm limits –
 An alarm limits is just a threshold # after which something happens
 Might be a measure of temperature or pressure and when it gets too high, the
machine shuts down
 What was claimed was a more complicated algorithm (a pretty simple
algorithm) implemented through software
 If you wrote it down on paper, most people thought it wouldn’t be patentable
 The court held again that this was an abstract idea or mathematical formula,
and so not patentable
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Diamond v. Diehr
o One of the few cases where a supreme court upheld the patent
o Process for curing synthetic rubber
o Method of operating rubber mold press, using a computer
o Court said this case is different because they weren’t claiming the algorithm was a new
thing –
 Also they were transforming unmolded rubber into molded rubber
o AN otherwise patentable industrial process is not rendered unpatentable by the fact
that some steps refer to software, computers or algorithms
o So now you claim an algorithm as a machine
State Street Bank – Federal Circuit test – not ever followed by the Supreme Court
o Business method patent for transferring $$ between various accounts and investors
o Opinion written by judge Rich
o Held that the algorithm can be patented to the extent that it produces a “useful,
concrete and tangible result.”
o The supreme court had never upheld the test used in this case
o There are some cases that say business methods are unpatentable subject matter, but
these cases could be decided on other grounds, so:
 There is no business method exception
 Business methods may be patentable subject matter
o As for this particular claim, the issue is not whether or not there is some transformation
of something physical. The issue is whether the math and the computer calculations are
used to produce a “useful, concrete and tangible result.”
Utility Requirement
o 35 U.S.C. § 101 Whoever invents any new and useful process, machine, manufacture
o 35 USC § 112 & 1 spec shall contain a written description of the invention and of the
manner and process of making and using it … to enable POSA to make and use the
same and shall set for the best mode
At&t v. Excel
o A claim for a new field in a record of data
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 Purely method claim
o Claim for a new field in a data record about a phone caller that would help phone
companies keep track of who was called
o Tipped the scale to saying that software is just plain patentable
In order to understand if something is patentable, you have to look at the claim as a whole, so
how can you say the algorithm is the real part inside the claim – that’s not examining the claim
as a whole!
Tried to patent a method for managing consumption of risk costs of a commodity sold bya
commodity provider at a fixed price comprising the steps of:
o (a) initiating transactions between commodity provider and consumers at a fixed rate
o (b) identifying market participants for said commodity having a counter-risk position to
said consumers and
o (c) initiating a series of transactions between said commodity provider and said market
participants at a second fixed rate such that said series of market participant
transactions balances the risk position of said series of consumer transactions
Essentially method for hedging risk by using an intermediary commodity provider
It was rejected by the patent office as not directed to patent eligible subject matter
o Why? Wasn’t directed to the technological arts
o Appealed to the board of patent appeals and interferences
 They said it’s an abstract idea, but also by the way it doesn’t produce a useful,
concrete and tangible result test
H: Not patentable subject matter – forget utility, non-obviousness, or enablement
Clarified Comiskey – “physical steps” are not required (a previous clarification)
o There could actually be physical steps, but if it doesn’t meet the machine-ortransformation test, forget it
Useful Concrete and tangible result test in State Street:
o That doesn’t apply either, the court says
H: The machine-or-transformation test – from Benson
o They leave the definition of exactly what a machine is to future interpretation
o Specifically computer is left wide open
o Physical or chemical transformation are good to go under this test
o They don’t define what transformations are eligible for patentability
o Data gathering steps in algorithms are not sufficient
Why doesn’t the Bilski claim meat the test?
o It’s just an “exchange” of options, which is not a transformation of any physical object or
substance, or an electronic signal representative of any physical object or substance
o In Comiskey, they tried to patent an arbitration scheme and it was rejected. Similarly, in
Meyer, they rejected a method of diagnosing the location of a malfunction in an
unspecified system using numerical values – it was essentially a mathematical algorithm
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o Nor was their scheme even limited to any mathematical formula
Newman; Mayer Rader Dissents
o Says the machine-or-transformation makes invalid many photonic, electric technologies
o They say it’s not clear what the limits of the test are
o The redefinition of “process” is contrary to 2 centuries of legislative history
o New definition of “process” was rejected in Gottschalk
o Parker also contravenes
o Argues broad policy point that we want a broad patent grant
o Algorithms are allowed when they transform or reduce an article to a different state or
thing
o Argue that earlier decisions don’t reflect the court’s current tenor
o Concurrence’s reliance on Statute of Monopolies is unfounded, because that Statute
was designed to curb monopolistic abuses
o Legislative history “art” was replaced with process
o Notes that similar business method patents exist in England
o Similarly, the U.S. has always had business method patents
o Says CCPA and Federal Circuit Precedent rejected by the majority
o > 15,000 patents in this classification have been issued and the public has relied on this
(really not a good justification )
Mayer Dissent
o Argues that business method patents shouldn’t be granted
o He looks at historical precedent
o Says State Street led us down the wrong path and allowed business methods
o He says a process isn’t “technology”
o Busts out the dictionaries
o Looks at ridiculous patents
o The test is problematic because everything can be a transformation
o Supports the technological arts test
Rader Dissent
o In Diehr, the Supreme Court adopted a very useful algorithm for determining patentable
subject matter, namely, follow the Patent Act itself. After setting forth the procedural
history of that case, the Supreme Court stated: "In cases of statutory construction, we
begin with the language of the statute."
o Argues Bilski should’ve been overturned on abstractness or theory grounds
o Argues for the broad patentability
o Says Lab Corp – it did achieve a useful and tangible result
o He’s in favor of the tangible result test
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For Next Week: p. 175 (note 8) – 194; 207 – 221;
Relevant distinction is application of an abstract idea and the abstract idea itself. Application can often shown via
MORT, though MORT is not required. More appropriate is “useful, concrete, tangible result” of State Street. And
this can apply across the industries, including life sciences.
Though State Street was a machine claim, not method….and that test may simply just align with the ‘utility’
concept.
Essentially, Bilski went overboard in defining the word “application.” An abstract idea/law of nature/physical
phenomena must be applied to be patented…..the SC will hopefully give us a better definition of what “application”
means.
*JUDGES
Breyer (and Souter somewhat) – wants patent-eligible subject matter narrow
 Found Lab Corp correlation clearly unpatentable
 Makes efforts to gain scientific knowledge
 Seems to think software is unpatentable
Rader
 In Bilski, dissents MORT test; supports tangible result test; Believes the Lab Corp was wrongly decided
(tangible result was diagnosis)
 Law-and-economics focus
 Supports broad patent-eligible subject matter
Newman
 Pays attention to mores/ideas in patent policy
 Makes efforts to gain scientific knowledge
Dyk
 Focuses on procedural issues; not interested in patent-policy
Ridge (State Street opinion)
 Considered to be expert in patent law
UTILITY
§101, §112
 Policy basis: ensures that society gets appropriate benefit from the patent system
 Issues usually arise around timing: patents on early stages of research
 Three kinds of utility:
o Operable
 Prevent claims that violate the laws of nature or fundamental scientific principles
 Also prevents mistakenly drafted claims
o Beneficial
 Aka moral utility
o Practical
 Specific
 Credible
 Substantial
 Procedural considerations
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Every claim is viewed as presumptively correct in terms of utility and the burden is on
the PTO to show someone skilled in the art would ‘reasonably doubt’ the asserted
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utility and operability of the claimed invention. Then the burden shifts to the applicant
to show that those skilled in the art believe the invention has utility
Lowell v. Lewis – Storey, J.
o Invented an improvement to a pump
o The defendant contended there was not utility in the improvement
o “All that the law requires is that the invention should not be frivolous or injurious to
the well-being, good policy, or sound morals of society.”
o The upshot is that the requirement for utility is not general utility, it must only have
utility to that particular person in that field
Juicy Whip v. Orange Bang
o Juicy whip had a dispenser that looked like it was a pre-mix dispenser, but it wasn’t
really
o Interestingly Orange Whip wanted to be able to use the device, but they were a sort of
Johnny-come-lately and wanted to invalidate on grounds there was no utility
o The district court held it invalid because it was deceptive
o The Federal Circuit overturns, saying it’s not injurious to public health, so go ahead
o The court here says that deceptiveness doesn’t really matter that much unless there’s a
use for the invention
o There’s a syllogism in this case
 If there’s a market then people value it
 If people value it then it must e useful
 There is a market for many deceptive thins, so [conclusion 1] people must value
them;
 Therefore, [conclusion 2] many deceptive things must be useful
o Deceptiveness does not deprive an invention of usefulness
 Mixing operability and specific utility with beneficial utility?
o Nothing in the patent statute directs the PTO or courts to deny patents to deceptive
inventions
o So is there a beneficial utility doctrine left after this case?
o And the problem is you’re arguing it should be invalidated, but you want to use it – so if
there’s no utility, wtf?
o Also, it’s not the courts’ job to arbitrate this – leave it to legislatures
Other considerations
o Courts have held chimeras animals to be invalid
o Congress passed a law prohibiting atomic weapons patents
In Europe:
o Who should decide whether an invention is injurious? The European Patent Office has
the power to invalidate
o Juicy Whip’s holding is that the FTC and the FDA, etc. should handle this
Merges argues that the patent system is not the place to be making moral judgments about
biotechnology
Patent Hurdles:
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Utility, novelty, non-obviousness – utility is the smallest hurdle
Kinds of utility
Operability – has to work
Beneficial – moral utility
o Comes from the Lowell v. Lewis –
o Challenge to claims for a pump
 Accused infringer argue that the pumps did not operate s well as other available
pumps
 “All that the law requires is that the invention should not be frivolous or
injurious to the well-being, good policy, or sound morals of society. The word
‘useful,’ therefore, is incorporated into the act in contradistinction to
mischievous or immoral.
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Practical utility
 Specific, credible, substantial
Practical or Specific Utility
- Specific, credible, substantial – the overarching doctrine is “practical”
- Arises primarily in regard to chemical and biotech inventions
- Contra Justice Story’s comments in Lowell v. Lewis, questions about the substantiality and
credibility of an asserted use to go to degrees of usefulness.
- Playing with something (a toy) is a specific, credible, substantial use
o Can’t patent paintings
- Maybe might be able to patent a mobile if there’s a new technical aspect to it
- Typically utility is
Brenner v. Manson
- Arose out of an interference
o Priority dispute to determine who was the first inventor under the law
o Must show you conceived the invention and knew of specific utility first
o Utility always has to be shown by date of application, but for interference, it’s a race to
show you demonstrated utility before the other guy
o What counts as practical utility for a chemical process? Is making the chemical enough?
 No. You need something else – demonstrated utility
o Utility can be § 101 or § 112 or both for rejection, but the examiner has to give reasons
why, and they have to point to specific sections of the statute
- Manson’s process makes a steroid. Precise function or effect of that synthetic steroid is not
know, perhaps it will have tumor-inhibiting properties
- Wanted to patent a compound closely related to a known compound
o Closely related to a known compound
o Not enough if there are no known uses
o
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Manson did not show specific utility – must show a specific benefit in a currently
available form
The court outlines a number of possible tests for specific utility
o (1) if the process works to produce what it says it does
o (2) if the process produces a compound belonging to the class of compounds that are
the subject of research
o The applicant argued that it was homologous to other compounds, so it was useful
o And the court says being homologous isn’t enough. You have to show your invention
itself works
Key to the holding
o Process patent… that doesn’t have specific utility “creates a monopoly of knowledge” …
such a patent may confer power to block off whole areas of scientific development
without compensating benefit to the public… a patent is not a hunting license
Holding:
o A specific function of the chemical compound produced by a process must be known
before the process has utility
In dicta:
o The court says a chemical product patent must show similar specific utility
Special rule for the “unpredictable arts”
o P. 224 – greater unpredictability in that field
Practical utility has to do with when in the inventive process we are willing to give a patent
- 1. Idea for the invention
- 2. Synthesize chemical
- 3. Experiment on cells in a dish
- 4. Experiment on animals
o Brana says utility is shown here
- 5. Experiment on a few humans
- 6. Experiment on more humans
- 7. FDA Approval
-
In re Brana
o USPTO Board of Patent Interferences affirmed rejection of 4 claims (10-13)
o In contracts to Brenner, these are product claims
 See 35 USC § 112 – specification shall contain written desc. Of the invention and
of the manner and process of making and using it,…
o Challenged on utility of compounds
o Applicants filed patent app on something called 5-nitrobenzo
o Differ b/c they have a nitro group (N2)
o In this case, they took mice w/ a cancer, transmit it to another mouse and then test the
anti-cancer drug
o
o
o
o
o
o
o
o
o
o
 The court points out that the Natl. Cancer Inst. Has accepted this model
 There’s evidence of antitumor activity in mice and in vitro
I: if the ultimate utility is to have a drug that treats people, how much do you have to
have shown before you can get an issued patent
Rejected by patent examiner on utility grounds because it failed to fight a specific
disease
 Said “treatment of diseases” and “antitumor substances” not enough, citing In
re Kirk

The Fed. Cir. Says it’s OK – the doc. Proffered evidence indicating a significant antitumor
effect on mice, and that should be enough
H: yes, utility – no need to conduct clinical testing on humans to establish the utility of a
chemical compound!
Used computer simulations to show its utility
As for testing on humans, leave that to the FDA
H: so long as a person skilled in the field would find utility, that’s enough. Don’t need to
prove it works on people
 The usefulness of a compound as a substrate for basic science, or a chemical
intermediate, is not enough to establish utility
Here, an antitumor compound working in vitro and in mice is enough
Interestingly, the rejection came under § 112, which talks about the manner of “making
and using it…”
 Do you think it matters whether it was a § 101 or § 112 rejection ?
 Interestingly, § 101 is generally what’s patentable, whereas 112 is only
evaluated as of the date of filing, so should’ve been 101 if that’s the way they
wanted to reject the claim
 Ossorio argues that if you’re looking at utility prior to the filing date, then
In Brenner, Manson was the junior party to the interference, and he shoulders almost
the entire burden
 In terms of a rejection of an application, utility is presumed
2001 Examining Guidelines
- Invention must be useful for some particular practical purpose ( = specific and substantial) and
the asserted use must be credible to a person of ordinary skill in the art
- POSHITA or POSA – Persona of Ordinary skill in the arts / having ordinary skill…
- Keeps the law attuned to the field, to its stage of development, to its economics, etc.
-
In Re Fisher
o Tried to patent portions of a genome, called EST’s.
o He argues the EST’s can be used as probes, to detect polymorphism on the gene, etc.
o
o
o
o
o
o
o
o
o
o
o
o
o
o
o
Patent office and board of interference said it didn’t meet the utility requirement under
35 USC § 101
This is an example of a “Markoush group” – TODO – LOOKUP
Background:
 Completely automated – no human being had ever examined the DNA
7 asserted uses:
 Marker that will help gene mapping, measure level of mRNA in tissues; Source
of primers for PCR; identify presence or absence of polymorphisms in tagged
genes; Help to isolate promoters (turn genes on and off in the cell); control
protein expression; locate similar genes in other organisms.
Fisher filed a timely appeal and argued his “invention” was like a microscope, a device
that can be used to detect other features of the genome
The court disagrees, said any DNA snippet could fill this role – so it’s not specific or
substantial utility
They also say it would grant a hunting license, because you have to use the EST’s to find
additional useful bits about the DNA
Rader dissent: argues (correctly, in my opinion) that non-obviousness should’ve been
used to dismiss the claims, not utility; his feeling is that if a microscope has utility, then
this has utility as well
Applicant didn’t know where the relevant genes ere in the maize genome
They had asserted 7 utilities.
Regarding the Rader dissent:
 Go back to Brenner v. Manson, where the court says research tools aren’t
patentable
 Ossorio thinks the line is not very clear cut
 He thinks it’s a research tool
What does the majority say about this analogy to a microscope?
 The court says a microscope provides a real-world result
 EST’s can’t provide information about the overall structure let alone the
function of a gene
They’re hypothetical uses
Back to the timeline of when to patent – it seems like the EST is too early in the process
Holding:
 Not specific – not directed toward any characterized gene function nor any
protein with eve one known biochemical function
 Not substantial – all asserted uses are “mere hypothetical possibilities”
Utility Generally
- If your utility doctrine is too lenient, i.e. you allow very general research goals to count as
practical or specific utility, then you stop the patent race really early
- You want an optimal amount of racing
- This optimization won’t be optimized for every single race – it’s a general optimization
-
“Sepcific in the context of ESTs means specific to the EST that is claimed” not just to any possible
EST
- Credible means not incredible – a use that POSA would recognize as valid
- Substantial means not trivial
Utility and Research Tools
- Is it something that has an end market in the research context?
- Is it the object of research or a means of doing research?
-
2/16/10 – Disclosure and Enablement
- Utility: is the claim valid (does the applicant / patentee get any claim allowed?)
- Enablement: how much does the applicant / patentee get to claim?
o This is a scope doctrine
o Scope doctrine: cannot claim more than you have given to the world with your
disclosure; breadth of claims should be commensurate with the advances in knowledge
disclosed
o Breadth of claim: how many embodiments does the claim cover or incorporate?
- Apparently software claims are allowed even when the claims are really broad
o The software industry convinced the PTO that the code is the job of the technicians
- Have to negotiate the tensions between incentives to the first inventor vs. incentives to followon inventors
- Disclosure found in § 112 – READ paragraphs 3-6 in detail
- (1) enablement
o written description of the invention and of the manner and process of making and sing
it in such full, clear, concise, and exact terms as to enable any POSA and shall set for th
the best mode
- (2) written description
o Inventor must highlight what she claims and claims what she highlights
- (3) definiteness of claims and
o An inventor must describe it in such a way that others can easily discern the boundaries
of her legal right
- (4) best mode
o I.e. the best and most effective way of producing the invention
o If there’s reform, it won’t touch best mode requirement
o Europe doesn’t have best mode
Independent and Dependent Claims Revisited
- Independent claims:
o We claim a monoclonal antibody that binds an… antigen
- Dependent:
o A monoclonal antibody.. in which said antibody is an IgG antibody
o
o
 Here, you’re saying claim 1 plus a limitation
3. A monoclonal antibody of claim 1 in which the antibody is an IA antibody
4. A monoclonal antibody of claim 2 or 3 in which the antibody is attached to a support
material
o
Incandescent Lamp Patent
- Consolidated Electric filed bill in equity against McKeesport to recover damages for a patent
- 1880 is the year.
- Defendants said their patent fell under the Edison patent
- They denied complainants utility and novelty
- Sawyer and Man the plaintiffs complained that Edison couldn’t use a bamboo material, because
their claim covered all such materials
- The Sawyer and Man patent didn’t even work
- Whereas Sawyer & Mann found some filaments, Edison figured out the specific characteristics
of the filaments
- Assume Edison’s experiments were done later than Sawyer & Mann’s filing date. Of what
significance are his experiments?
o The correct question is what was known in the art about fibrous and textile materials
o If someone discovers a better conductor, that’s an improvement
o It doesn’t mean the earlier claim was not enabled
- My questions: okay, so enablement needs to happen at the time?
o Analysis for enablement is supposed to focus on as of the date of filing – what was
known as of the date of filing
o The court could’ve reached the same conclusion by saying that you didn’t articulate why
or how this genus, what makes them have a certain function
o They didn’t disclose a particular quality in vegetable fibers that made them good
- Edison claimed they’re trying to monopolize all fibrous and textile materials in lights, and that
Sawyer & Man weren’t the first to discover that these were better adapted than carbon for the
filament purpose
- H: Sawyer & Man’s claim for using all such materials was overly broad because they really only
used carbon paper.
- They go on to discuss the lengths and distances Edison went on to find a suitable material,
finally settling on bamboo
o Also, bamboo was not selected b/c it was of vegetable nature, but b/c it contained
peculiarities in its fibrous structure
o There was also no way of knowing that every vegetable would be sufficient for a
filament – perhaps if they’d done careful experimentation, but that’s not what had
happened here
o They should’ve disclosed the general qualities in vegetable materials that would’ve
made them more ideally suited
-
You have to compare the patent claims with the embodiments by other inventors
Also, what about software patents? Code?
Notion of species and genus –
o Every possible embodiment is the species
o
Amgen v. Chugai Pharma
- Amgen patented recombinant DNA version of EPO, used in red blood cell production
o They had a broad claim meant to cover any analogs of EPO
o There were 1,000’s of analogs that could be produced
o Amgen’s head of the program testified he had no idea if the 80 or so analogs Amgen had
produced actually produced the desired effect
o The court tossed the patent on enablement grounds
In Re Wands
- Claimed invention is an immunoassay method for the detection of hepatitis B surface antigen by
using…. Antibodies …
- They put the living cells used to generate hybridoma, which then are used to produce purified
antibodies in a cell culture collection, referenced in the patent application
- The patent office rejected the patent because it would require undue experimentation
- I: undue experimentation for enablement?
- H: no. Reversed
- R: some experimentation is allowed. Just not undue experimentation
- Test:
o (1) quantity of experimentation necessary
o (2) the amount of direction or guidance presented
o (3) the presence or absence of working examples
o (4) nature of the invention
o (5) state of the prior art
o (6) relative skill of those in the art
o (7j) the predictability or unpredictability of the art, and
o (8) the breadth of the claims
- These factors are not really very helpful, because they don’t say which way these factors go
- The process sometimes produced reliable hybridomas, but lots of the time it didn’t.
- Only 2.8% fell within the claims
- The applicants stored a lot of the unknown unscreened cell-lines, and against this the patent
board took issue
- The court says that this is foolish, because we want people to store more data
- Stands for the proposition that if your field requires lots of experimentation and has lots of
failures, that’s probably the standard for enablement
- What did wands do?
o
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10 fusions, the first four did not work, the next six all produced hybridomas that made
the stuff, isolated and froze 143 hybridomas
o Tested MAb from 9 hybridomas and 4 fell within the claims
Why do the parties and the court care about the stored, frozen hybridomas?
o Goes to the question of how many inoperative species / embodiments are produced by
the methods disclosed
o If too many inoperative species then the genus of “high affinity anti-HBsAg is not
enabled.”
o Board view: only 4 of 143 have been proven to fall within the claims – too unpredictable
for POSA to replicate w/o undue experimentation
Wands’s view:
o Only 9 hybridomas were tested. 4 of ht e9 worked -> 44% of the species fell within the
claims.
o Implied: screening is not research, it is rote, it is mechanical, it is something that does
not require insight or inventive activity -> even screening large numbers of hybridomas
does not constitute undue experimentation
o Held: the process was enabled. It is unduly harsh to treat the unscreened cell lines as
“failures” as the board of patent appeals essentially was doing
Here the court said the deposit wasn’t necessary to enable the claim
But the court doesn’t say exactly how many / if deposits are necessary
In re Fisher
- Claim for a hormone containing at least 1 IU of the hormone per milligram
o Unless there’s knowledge of how high the IU’s go – essentially this is infinite w/o an
upper range
o H: not enabled b/c the applicant had not taught others how to make and use ACTH with
potencies greater than 2.3 units, evne though it is theoretically possible to make ATH of
much greater potency
Amgen v. Chugai
- Amgen’s claim was for a DNA sequence that was “sufficiently duplicative” of that erythropoietin to
allow possession of the biological property of causing bone marrow cells to increase production of
reticulocytes and red blood cells, and to increase hemoglobin synthesis
- They were trying to claim something sufficiently similar to what they’d actually obtained to make their
rights worthwhile
- They anted to make sure their claim covered the variety of changes that everybody could imagine
making
- Held: the claim was not enabled because it encompassed millions of proteins similar to the one
disclosed in Amgen’s specification, but the patent did not teach which of the proteins would have the
properties claimed
- A person in the art would have to do way too much experimentation to determine which EPO analogs
would have the biological properties set forth
- This suggests the court was right to say the patent was invalid
Amgen did not describe any structure-function relationship principle by which the sequences
encompassed in the claimed genus were unified, so its claims was not enabled
Enabling Protein & DNA Claims
- You need not disclose every possible DNAA or protein sequence in a biotech patent genus, nor
must one disclose the function of every possible variant (at least for enablement)
o But simply knowing one could make many variants is not enough information to enable
a broad claim to a genus of sequences
o But you do need to know more than one variant and you need to know something about
the DNA or protein sequence
- Enablement focuses on adequately teaching how to do what you’ve invented. And if you can’t
teach someone else what you’ve claimed, no patent
The Temporal Paradox of Enablement
- You enable as of the date of filing the claim
- But you judge infringement of the alleged infringement, and things might have changed
between enablement and the infringement
- So you may construe the claim differently at time 1 (filing) and time 2 (alleged infringement)
- E.g. the fuzz ball invention – suppose there was nothing in the prior art for writing a claim to
claim ‘fuzz balls’. If you don’t put any limitation on the material, that’s a broad claim, but in your
claim you describe all known embodiments and describe why they’ll work, then that claim could
be enabled as of the date of filing
o But if after that, someone creates a new material, e.g. a synthetic, the claim may still
cover fuzz balls
Blocking patents: dominant and subservient
- If there was a new use for fuzz balls, e.g. you could get a new use patent
- The previous patent on fuzz balls would still block the new use patent, however, but you’d have
to license from them if you wanted to use them for painting
- The broadest patent is often called the “dominant” patent
- And the narrower of the two is the “subservient” patent
- Some cases where it makes sense, others where it doesn’t to use this language
Economics of Scope
- Measure the quality of contribution in disclosure
o Pioneering inventions get a broad right of scope
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If scope too stringent, then inventors / investors receive little for their expenditure,
private return on investment is low, and they’ll shift their investment to other activities
o Might discourage follow-on invention if you give too broad of an exclusionary
right
Arguments on both sides
o Want to encourage pioneering inventions vs. whether the pioneer will have the
expertise to develop follow-on inventions
Investment in R&D has high social dividends
o People who free ride on other people’s work are highly beneficial
o Apparently the spillover benefits are really high
p. 299 – 340 for Monday; 340 – 370 for Wednesday
Written Description Requirement
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Spec. 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 POSA .. to make … p.2 – spec shall conclude w/ one or more claims particularly
pointing out and distinctly claiming the subject matter… which the applicant regards as
his invention
§ 120 – Continuations
o claimed invention may receive the benefit of an earlier application’s filing date if:
 Disclosure is in the earlier app. Adequately describes and enables the
later filed claims;
 The two apps have some of the same inventors named;
 The earlier app is still in prosecution when the later app is filed.
35 USC § 132
o whenever on examination any claim for a patent is rejected, or any objection or
requirement made … NO amendment shall introduce new matter into the
disclosure of the invention
o Allows to tailor the claim to that covers a competitor’s later-developed
technology
What’s the difference between enablement and written description? They’re both in the
same paragraph under 35 USC § 112
She says:
o Enablement is how to make and use the invention
o And the description is the “what” – i.e. what the invention is
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-
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Codified in § 112, 120, 132 –
o Failure to meet the § 112 requirements can render a claim invalid
o Up ‘til ~ ’97, the written description didn’t mean much
 Came in when there was a continuation or a division where
o The § 112 requirements can also determine to which filing date the claim is
entitled
o They are not entirely distinct requirements
 Both involve comparing what is claimed to what is disclosed in the spec
o Can’t add information into the claims – you can only amend them with narrower
claims (make sense – if you disclose something, you don’t want someone to be
able to get in and leapfrog)
o And if an inventor gets his patent rejected, he can still get the earlier filing date
Drawings can act as a description – See Vas-Cath v. Mahurkar – ‘91
o Easterbrook sitting by appointment
o The disclosure just had drawings
o And the court held that the drawings did satisfy the enablement requirement,
but did not satisfy the WD requirement because the dimensions were outlined to
any level of particularity
o And CAFC reversed and remanded, saying that drawings by themselves could be
sufficient
o Citing in re Gostelli – “the applicant need not describe exactly the subject matter
claimed, but must clearly allow POSA to recognize that the inventor invented
what is claimed”
 As opposed to something that was already in the public domain
Claiming essence vs. periphery
o Current practice = “peripheral claiming” – describes the outer boundaries of a
genus
Range of Variation Question
o Is the WD requirement met when the WD drawings depict a reange of design
parameters and…
o CAFC – Proper test when drawings don’t’ include the full range:
o Do the drawings convey to POSA with reasonable clarity, that Mahurkar had in
fact invented the catheter recited in the claims?
 Held: genuine issue of fact b/c expert declaration stated that POSA could
derive the range recited
Misappropriation by amendment
o When you amend the claims so that you block someone else’s product
o The court does not look favorably upon this
-
If you continue in part, and don’t add new matter, you can also receive the benefit of
the parent filing date
If the PTO decides you have two inventions, you’ll have to file a restriction and you’ll
have a divisional application
o Split apps might not be adequately described by the original description years
earlier
Claiming Essence vs. periphery
- When claiming began, people claimed their essence
- Now we describe the contours
Inherent Descriptions
Kennecott Corp v. Kyocera Int. (1987)
- Claim for silicon carbide ceramic product with “equiaxed microsturctures” even though
equiaxed microstructures were not mentioned in the parent or grandparent app.
- Yet the court held all 30 methods described would make the product with the
microstructure, the inventors knew that their product had equiaxed microstructures
when the first app was filed, and anybody with a microscope could have seen the
microstructure
- And it was adequately described… UNTIL ’97, ‘98
Why have a separate WD requirement?
- Historical artifact.
- Written description: more concerned about whether the inventor had possession of the
invention
- Compliments the claim definiteness requirement in delineating the scope of the
invention, providing notice to POSA of what was and was not invented
- Enablement is more about how to make the thing
- It is possible to enable an invention without describing it (Regents v. Eli Lilly)
- Q. If the spec teaches POSA how to make and use some species specifically described,
why does the inventor have to describe additional species? What harm is it uarding
against?
- Review continuations on p. 52-53
Section 120 Deconstructed
- Claimed invention may receive earlier applicant’s filing date
o Disclosure in the earlier app. Describe and enables the later filed claims
o Filed b the same inventors
o If filed before the patenting or abandonment of or termination of the first
application
Gentry Galelry v. Berkline Corp.
- Gentry owns a patent of a sectional sofa, and it put the controls for the recliners on a
console – it allowed the recliners to be next to one another as opposed to on different
ends of the “L”
- Berkline came out with a sofa where the recliners were separated by a seat that has a
back cushion that can be pivoted down onto the seat
- District Court held that Gentry’s patent was valid and enforceable
- Berkline argues the claims are invalid because their patent doesn’t use the console, and
they argue that Gentry’s patent only covers sofas with recliner controls on the console
- Gentry argued that it was just their preferred embodiment
- They argue that citing a species does not preclude the patenting of the genus, citing
- Held:
o Location of the controls was an “essential element” of the invention
o Original disclosure identifies the console as the only possible location for the
controls” by noting several minor variations in which the controls are located on
the front, sides or top of the console.
o Inventor admitted he did not consider placing the controls anywhere beside the
console until he was the competitor’s species of reclining sectional
- Cf. Gentry G. to In re Gostelli
o Applicant need not describe exactly the subject matter claimed, but must allow
POSA to recognize that the inventor invented what is claimed
o Vs. Gentry: application complies w/ WD requirement by describing the invention
with all of its claimed limitations (the new standard)
- The Court disagrees, saying that there’s no hint of coverage outside the console
- Because it didn’t meet the written description requirement
o It was clear that using the written description requirement that
- The inventor also admitted that he never thought of putting the controls anywhere else
on a console
- The court says the location of the controls was an “essential element” of the invention
o This language makes it difficult to determine what the written description entails
- The original disclosure identifies the console as the only possible location for the
controls
- Compare with Gostelli
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-
-
Now the standard is you need to describe the invention, with all of its claimed
limitations
Interpreting Gentry
o It considers situation where the patent’s disclosure makes crystal clear that a
narrow understanding of a claim term is an ‘essential element of the inventor’s
invention.’ Here, however, the disclosure does not ‘unambiguously limit the
meaning”
Regents of Univ. of Calif. V. Eli Lilly
UC claimed a CNDA that encodes the human insulin gene
o Also had genus claims to DNA that encodes mammalian insulin and vertebrate
insulin
o UC disclosed the cDNA sequence of the rat insulin gene. It disclosed the entire
protein sequence of human insulin and several other mammalian insulin protein
sequences and a method for making the claimed DNA sequence
o What was disclosed? Sequence GGX TGX CAY ACX … where you know 2 of every
3
o Ths, any POSA could have written a generic chemical formula for the claimed
human DNA
o Reasoning: See slide
 A description that makes a claimed invention obvious is not sufficient to
satisfy the written description requirement
 CAFC held that a complete protein sequence and a method of making the
corresponding DNA seq. does not make the DNA obvious
 Protein sequence and method of making a DNA seq. does not make the
human insulin DNA seq. obvious
 A disclosure that does not make the DNA obvious, without more, does
not adequately describe the DNA
Describing DNA – how do we describe it?
o Many complete seq. in the genus
o By describing what particular sequences confer particular functions and / or
structure (and why?)
o By hybridization to known sequences within given parameters
o Generic chemical formula?
Has been criticized for creating a super enablement standard.
Johnson Worldwide Associates
- Said the patent’s disclosure in Gentry made crystal clear that a narrow understanding of
a claim is an essential element of the invention
-
In this case, though, the patent disclosure does not ‘unambiguously limit’ the
meaning…”
So if you’re drafting patent apps, you don’t say “it’s absolutely necessary for x”
-
Subsequent embodiments
o If an inventor enables an all known embodiments, but don’t claim all the
subsequent embodiments, they still get patent coverage – as long as the later
discoveries were not anticipated
o In re Hogan
Regents of Univ. of Calif. V. Eli Lilly
- The written description was of a DNA that produced rat insulin, and they also claimed
the DNA sequences for human, mammalian, and vertebrate insulin
- They did not specify the nucleotides for the non-rat DNA
- The court held this was insufficient for a POSA to discern how to produce the rest of the
DNA sequence
- However, the nucleotide bases were only a few bases apart from the rat insulin
- This decision has been criticized, because a POSA could probably figure out how to make
this
- They Court says a description of a chemical genus requires a precise definition, such as
by structure, formula, or chemical name … What is required is a description of the DNA
itself quoting Fiers, p. 322
o Fiers was a lot more like Rochester! The senior filer did not have any DNA
sequence in hand when he filed
- And it was invalid because it did not distinguish the claimed genus from others, except
by function
- There’s a commentator who argues that they should’ve invalidated by failure to enable
the invention, not using the written description requirement
- “A description that makes a claimed invention obvious, without more, is not sufficient to
satisfy the written description requirement”
- So, a disclosure that does not make the DNA obvious, without more, does not
adequately describe the DNA
So how do we describe a DNA genus?
- Many complete seq. in the gens
- By describing what particular sequences confer particular functions and / or structures
(and why?).
-
By hybridization to know sequences within given parameters
Generic chemical formula?
Patent Board Policy
- There is a strong presumption that an adequate written description of the invention is present
when the application is filed
SciMed Life Systems, Inc. v. Cardiovascular Systems inc
- The description described only a catheter that contained a guide wire lumen and an
inflation lumen
- Despite the fact that the claim did not contain anything limiting the catheter
description, the court said that the lack of any broader language in the claim was an
omission, so a side-by-side catheter implementation was non-infringing
University of Rochester v. G.D. Searle – Fed. Cir 2003
- Rochester ‘s claim was for an assay that could find a drug that selectively inhibited COX
enzymes, i.e. it would inhibit only one of COX-1 or Cox-2 enzymes, useful for arthritis
drugs
- They developed a screening assay, but the description neither disclosed the compound
nor provided any suggestions how a compound could be made other than by trial-anderror research
- The claims were actually for selectively inhibiting COX-2 by administering a nonsteroidal compound that inhibits activity of the gene product to a human host…
o So they’re claiming the actual treatment, when all they have is an assay that can
find the drug
o So their claim was way too broad
- And then drugs came out on the market that actually were selective COX-2 inhibitors,
and the drug companies were getting sued b/c Rochester invented the precursor to
- Rochester argued there was no written description requirement because once claims
were included, the written description was redundant
- They also argue that given the disclosure of the assay and the POSA, someone could
come up with the COX2 inhibitor.
o But that’s a pretty ridiculous statement
- They also argued it would violate Bayh-Dole
o If this would’ve come out the other way, the pharmaceutical industry would’ve
lobbied to no end
- H: the court invalidates the patent for failure of written description
-
Pilar says this isn’t a written description issue, it’s an enablement issue because it
focuses on how to make the drug in question
So the federal circuit screws it up big time
Lizardtech v. Earth Resource Mapping
- Lizardtech had a patent on discrete wavelet transforms for images, that were
“seamless” that is they developed a better method of doing DWT’s that did not result in
pixel artifacts or false data
- They claimed EMR violated their patent for DWT
- At issue is one of their claims that fails to mention seamless DWT’s. This claim is the
infringing one allegedly, because it is supposed to cover all the wasy of performing
DWT-based compression that lead to a seamless DWT
- The problem is that the specification does not describe such a broad method.
o Defect in WD and enablement
- CAFC: used WD to interpret claim 21 – it claimed all ways to get seamless DWT, while
the WD only specifies one type
- Enablement and WD are closely tied to each other. In the late 90’s the court focused on
WD as a separate requirement
o This is a defect of both enablement and WD
- Rather, it describes methods that use updated sums of DWT coefficients. It does not
contemplate a more generic way of doing DWT’s. Also, it would lead to overbroad
claims
- So they find claims 21-25 are invalid
- Dissent by: Rader (woot)
o He argues that the court’s decisions are in opposition with one another
o In Lizardtech, the the corut says a claim in excess of the specification’s
embodiments invalidate the claim
o But in JVW, a case about video game controllers, the court says the claims were
properly construed as broader than the disclosed embodiments because “the
patentee did not intend for the claims and the embodiments in the specification
to be coextensive.”
o And he argues the proper standard for written description is that the inventor
must show “possession” of the claimed invention
- Claim Construction and § 112
o Claim construction is done first, then compared to what is disclosedin the WD
o
Definite Claims
-
-
Claims must be definite enough so as to outline the contours of the “monopoly” as
quoted from Justice Brandeis, although really it’s not a monopolistic right, the Court
now construes patent rights as an exclusionary right
o See § 112
o Looks at the claim only, not WD, unlike paragraph 1 (WD and Enablement)
35 USC § 112 p. 2: the spec. shall clearly conclude with one or more claims particarly
pointing out and distinctly claiming the subject matter which the applicant regards as his
invention
o used so POSA can invent around
o Lowers transaction costs by clearly delineating the property right
Orthokinetics Inc v. Safety Travel Chairs, Inc. – Fed. Cir. 1986
- Orthokinetics’ patent was on a char that could be put into a car for disable people
- One of the claims said the chair was dimensionable as to be insertable between the car
door and the front seat
o This had to be determined on a car-by-car basis
- When they sued STC for infringement in a district court, the court invalidated their
patent, holding that it was intended to cover use on a variety of automobiles, and that a
person ordinarily skilled in the art could determine these dimensions
- Ossorio: The lower court used Paragraph 1 “full, fair and concise” analysis on claim
definiteness (proper analysis is under Paragraph 2). The lower court also looked at
whether the “patent” was vague, not the claim, which is what Paragraph 2 is all about!
Analysis should be judged by asking whether POSA would understand what is claimed
- Holding: “So dimsneioned” is accurate as the subject matter permits. POSA would know
that the dimension would depend on the car designed to.
- Definiteness generally: if an expert testifies that allegedly vague language means
something in the industry, it is definite enough.
Definiteness of M-p-F claims
- To satisfy definiteness, the corresponding structure describe or drawnin the narrative
spec must be definite
- supposedly can’t incorporate by reference except see p. 330 for Amtel Corp. v.
Information Storage
Standard Oil Co. v. American Cyanamid
- The claim contained a term “partially soluble” that had no definition in the art
-
The court invalidated the claim because it’s too vague to point out the subject matter not a term of art. Claim language is indefinite under Paragraph 2
1. Antecedent Basis: PTO doctrine/Analytical Tool
a. Every word in the claim is used in the specification. So as in Cyanamide, substantive words
must appear in WD or the claim will be rejected for indefiniteness.
b. CAFC: Each phrase in the claim must find a “clear support” in specification. So the Federal
Circuit allows implicit antecedent basis.
c. Should CAFC give PTO deference in claim construction given that it knows of its practices
using the doctrine? It generally does not.
2. Means/Step-Plus-Function Claims:
a. Way of claiming broadly. 35 USC 112 Paragraph 6: “Means or Step…for performing specific
function, without recital of structure, material, or acts in support thereof… described in the
specification and equivalents thereof.”
b. Cannot have a single means element: “I claim a data processing means”
c. Can have: “I claim a data processing system comprising data processing means, data storage
means, …” multiple elements allowed only.
d. Function: Data Processing. What does Specification say about Data Processing?
e. Equivalents thereof? What counts as equivalent – case law. “A fastening means” may
contain equivalents of Velcro, safety pin, snap, etc. Look at specification for what is
disclosed, and argue that other means are equivalents.
f. To satisfy definiteness requirement, “incorporation of information by reference” cannot be
used, but general knowledge in the field (by expert witness) may be. You can use the title of
the reference, however, because it is used in the disclosure. Pg. 331 Atmel case. Ossorio
thinks this is strange.
g. Must the PTO search PA for all structures that could perform the claimed function?
h. No. See p. 339 - 340
3. Best Mode Requirement: Back to Paragraph 1 of 112
a. “…and shall set forth the best mode…”]
b. Why? Europe doesn’t have the requirement. It provides the public with the appropriate
benefit of the patent bargain.
c. An issue arises with those filing abroad and not specifying Best Mode, and then not being
able to use the foreign filing date as priority date for filing in the US because no Best Mode
was disclosed.
d. The inventor should disclose BM known to him at the time of filing. After the patent expires,
or during when licensed, or if invalidated, people should be able to practice the best mode
of the invention.
e. Subjective element of how best to practice the invention. This is sometimes equivalent with
“preferred embodiment”
f. Randomex v. Scopus (1988)
i. Patent for server storage disk cleaning system. P sued D for infringement, and D
defended on Best Mode requirement (invalid claims based on BM), stating that
“91% alcohol and non-residue detergent” does not disclose the best mode cleaning
solution.
ii. District Court submitted Question Survey to Jury: The jury found the invention
enabled (no undue experimentation), and that P withheld information strategically.
The court found that BM was not disclosed.
iii. Ossorio: BM is often described as requirement to prevent active concealment.
iv. Randomex’s owner even testified that he purposefully left out the formula to
generate additional income on cleaning solution.
v. The majority found it sufficient for BM. POSA isn’t the end user of the device, but
the person making the machine. They didn’t need to know the actual cleaner
formula and would consult someone who knew what they should use.
vi. Ossorio: Cleaning solution itself was not claimed! BM requires disclosure of only the
practice of the invention, sometimes involving things not part of the claim. This is
like enabling starting material in biotech inventions under Enablement. Since
cleaner is required to practice the invention, it must be disclosed if inventor is aware
of a BM version. Here the inventor did experiemtn and found an optimal solution.
He disclosed it along with other cleaner, including one that would potentially catch
fire.
vii. Issue: Is BM met when you list multiple possible options? Yes.
viii. You don’t have to say what is the BM (Pg. 342), citing BPAI language. One can
disclose a list of things including the BM by trade name, not by chemical formula.
Does this raise tying, antitrust issues? He’s not trying to get people to buy
unpatented stuff because they buy something patented, but its close.
ix. The Trade Name vs. Chemical Formula is not an issue because the inventor disclosed
a generic category (non-residue detergent) to which their cleaner belonged. Also,
POSA in the art will not spend time on experimenting with cleaner. They will find
someone in the art of cleaners to make one.
x. Dissent (Mayer): Enablement and Best Mode have different standards. BM needs
more. You should disclose more info than just to enable. The genus on non-residue
detergents was not BM, Randomex cleaner was, and should have been disclosed.
xi. Mayer mentions that Randomex indeed experimented with cleaners and found the
optimal cleaner.
g. Chemcast v. Arco (1990)
i. P invented a grommet that had two parts, one harder and one softer rubber.
ii. The locking part is harder than the outer part. Instead of disclosing the hardness in
the specification, they claimed a range of hardness while they only used one and
kept it secret.
iii. Claim: “Less than 60 Shore A, More than 70 Shore A.” Actual inner ring hardness
was 75+/- Shore D, which does not correspond to anything on the Shore A scale. (Pg.
349). Shore D is used for very hard materials, while Shore A for very soft ones.

iv.
v.
vi.
vii.
viii.
Claim 6, depends from Claim 1 (“depends” is hanging on something, so
hangs from – old fashioned def. of the word depends).
District Court found BM not disclosed. On remand, making 47 factual findings, found
what inventor considered BM at time of filing.
In Randomex, what if the disclosure was way off like in here? Would it have met
BM?
Here, the disclosure was nowhere near the actual BM compound hardness. The
inventor also didn’t disclose the 750 hours spent by third-party developer to make
this compound, which goes to the undue experimentation by a user. The compound
was also the third-party’s Trade Secret.
Holding: BM was not disclosed. Exact hardness, name of compound, and name of
company was not mentioned.
Test: 1) Subjective inquiry (Determines Necessity of Disclosure) – “scienter/mens
rea” intent test: Did the inventor know a BM at the time of filing 2) If no, no issue. If
yes, was the disclosure adequate – did it enable POSA to practice best mode
contemplated. This is a lower standard, just enablement.
Vagueness in Claims
- The patent office strictly enforce its rule that all phrases used in the claims “must find
clear support or antecedent basis in the description so that the meaning of the claims
may be ascertainable by reference to the description
- Energizer Holdings v. International Trade Commission
o Event though a term was not defined in the claim, the Court held that the patent
office had to consider the terminology in light of the prior art
o Claim definiteness analyzed not in a vacuum but in light of the teachings of the
prior art and of the particular application disclosure
Novelty
-
-
The next hurdle after utility
What if we didn’t have novelty?
o Patents could take things out of the public domain
o Harm to people / firms who acted in reliance on the item / process being in the
public domain
 Business disruption;
 Patentee could charge “hold out “ fees
§ 102 – we will focus on a,b,e, and g
o All have to do w/ determining if something is new
o ‘new’ Is a term of art in the patent law
o Novelty: 102(a)(e)(g) – somebody else did it first
o Statutory bars: 102(b)(c)(d) – after making the invention, the patentee waited
too long to apply for a patent and so is barred from receiving one
o (f) – someone else actually invented it
 Often you have the wrong inventive entity named on your application
Anticipation
- All of the relevant must be disclosed in a single reference
- If you’re looking at multiple sources, then you’re talking about non-obviousness
Interpretation of 102(a)
- A person is untitled to a patentee unless the invention was
o Known or used by others [in the US], or
 It’s only in the U.S.
o Patented or described in a printed publication
o Patent applicants cannot defeat his / her own novelty
 Has to be someone not the inventive entity
- What kinds of art defeat the application?
- When?
o When does the prior art count as a reference?
- Critical date =
o Date of invention for § 102(a)
o More than one yr. prior to date of filing for § 102(b)
 (publications)
- Reference
o Something that is known or used, patented or in a printed publication
- Note that inventor means “same inventive entity” – so if you combine w/ an inventor,
things can get interesting
- Prior Art References
o Patents
o Journal articles and theses
o Descriptions, product photos, drawings or illustrations in magazines or trade
publications
o Prior reduction to practice (in the U.S.) of an article or process covered by the
claim
o Some other things can be prior art, too
 Letters, advertisements???
 These can be documentary evidence of prior reduction to practice
-
o Prior art can be all kinds of things
o When is the effective date?
 When written? Accepted? When circulated? Etc.
Novelty Analysis
o Compare
 Applicant’s / patentee’s invention = the claim
 TO
 A reference in the prior art (PA)
 It’s all about what the patentee claimed, and does that claim read on the
prior art?
In re Robertson
- Claimed invention had to deal with a fastening & disposal system for diapers
- The claim was for 3 fastening mechanisms, the 3rd of which
- The prior art only had two fastening mechanisms
- The argument was that the prior art inherently disclosed the mechanism
- H: the prior merely “suggests” that the diaper may be closed for disposal by using the
same fastening means…
- What are these elements of the claims?
o It’s a means plus function claim. You have to have a means and then a structure
o Then you go to the specification to go to the structures
- The specification disclosed Velcro. So what’s equivalent?
o Adhesives, snaps probably
- When a claim recites three “fastening means” does this mean that it recites three
necessarily distinct and physically separate fasteners?
- Just because something in the PA can achieve the same end, or perform the same
function, does not make that thing the same as a means element… the PA ref. must also
contain / disclose the same or an equivalent structure
- Rader concurrence:
Anticipation v. Infringement
- Anticipates = comes before the applicant invents
- Literally infringes = after the patent issues
- “that which would anticipate before the invention” would infringe after the patent
issues
Explicit Anticipation
- Found when every element is specifically mentioned in the reference
Inherent Anticipation
- must necessarily be present in the item or process described in the reference AND
- POSA would recognize that the missing element is necessarily present in the thing
described. But See: Schering
In re Seaborg
- Patent at issue was for a method of producing and purifying Americium
- But there was another prior art patent assigned to Fermi for a reactor that they used to
produce the element,
- Fermi’s reactor when run at the level laid out in their patent, produced really minute
quantities of Americium, yet this was unknown to those inventors
- And it was contained in a “exemplary statement” only, not the claim itself
- I: does the “inherency doctrine” which infers a lack of novelty in a product if a
comparable process is found for making the product bar this patent?
- H: no. They never knew there was Americium in the previous patent and it was in such a
small quantity and diluted w/ other radioactive material so as to be undetectable and it
was too small: 1 billionth of 1 gram
- Isn’t this odd when their way of making the element is pretty close to someone else’s?
o A: unknown. It seems odd
- How would you claim the element? “I claim element 95…”
o See: Parke-Davis
Accidental Anticipation
Tilghman v. Proctor
- One perkins lubricated his steam engine with animal fat and it produced “peculiar
appearances”
- Tilghman tried to patent the method Perkins had disclosed
- And the court allowed it because the process that created the glycerine and acids was
not appreciated
- They said the production of glycerin and fatty acids by running the engine was not an
intended result of running the engines, and was not appreciated boy those who used
glycerin and fatty acids
Edison Elec. Light Co. v. Novelty Incandescent Lamp Co.
- Edison figured out that the lead wires should be joined to copper wires inside the light
bulb
- Prior art bulbs had the wires joined outside
-
But sometimes they were defectively manufactured and joined inside
The court allowed Edison’s patent because it “gave nothing to the world.”
Schering Corp v. Geneva Pharmaceuticals – (Fed. Cir. 2003) - Rader
- Schering owns two patents on antihistamines
- The prior art covered loratadine, which didn’t cause drowsiness
- Schering was looking to keep the exclusionary right long past the original term
- As the patent was about to expire, they figured out what the metabolites were that
loratadine turned into in the human body
- And then anyone who produced a generic would necessarily produce the metabolite
and therefore infringe
- And filing to produce a generic is a type of statutory infringement
- So the question is: does the previous patent application inherently disclose the
metabolite
o Not claimed as isolated and purified because that way they could stop drug
companies from making generic loratadine that would turn into the metabolite
- If the court had gone the other way on this question, then generic drugs would be
severely impeded
- How does the court distinguish this case from Tilghman or Seaborg
o They added an intentionality component
o The said if you intended to create the new thing, then it’s inherent in the prior
art
o The earlier disclosure necessarily includes all elements of at least one
embodiment of the later claimed invention (and / or??):
o The inherent product / process was a natural and necessary result of “what was
intended” in the PA
- IT does not matter whether POSA knew of the inherent item/ property / process when
the PA was disclosed or used
o We do care about what POSA knows now
- Pilar is not sure whether this is the result
In re Hafner
- He invented some new chemical compositions, but failed to disclose any use for the
compounds in his German patent application
- Enablement for anticipation purposes is not the same as enablement for § 112
- If the structure itself is disclosed in the prior art, that’s enough to anticipate even if
there’s no instruction on how to use
-
-
-
-
-
So he disclosed his compound, and then he statutorily barred himself from getting a
patent under § 102(b) because his earlier application and an article that had been
published disclosed the chemical compound but not a use
The point of this case:
o Although you read there’s an enablement standard for anticipation, it’s not the
same enablement standard as there is for § 112
o You have to teach the art how to make the thing, not how to use it
A bit of an asymmetry here – b/c normally you have to teach how to make and use to
get the patent
o But to be barred, you only need to teach how to make something
o The book suggests the reason is that the quid pro quo for getting a patent is that
you need to know of at least one use. So you don’t get a patent w/ prior art, so
lesser standard. With a patent and exclusionary rights, you need to show a use
Remember:
o You can bar yourself statutorily
o What you can’t do is destroy your own novelty
Notes:
o Titanium Metals v. Banner
o Someone discovered a # of alloys of titanium with special ductility and corrosion
resistance properties
o Held: their claims had been anticipated by a Russian journal article that
contained one graph of a # of different alloys, and looked at different properties
o But because some points in the graph would’ve been included in applicant’s
claims, those species disclosed in the publication could not be patented due to
anticipation
o Broccoli Sprout Cases
o They tried to claim growing sprouts in essence
o They thought they could claim this b/c they were rich in a specific compound
that helped people fight cancer
o But their claims didn’t include anything that indicated they were fighting cancer
or isolating those compounds
o The 3rd claim is for increasing certain protective enzymes
o But we come back to inherency or inherent anticipation of those enzymes
 Presumably by eating the sprouts people for centuries had obtained
these benefits
o Rasmussen v. SmithKline

Standard for what constitutes proper enablement for prior art reference
differs from standard under § 112. Prior art reference need not
demonstrate utility to serve as an anticipating reference (p. 383)
New Use Patents
-
-
-
-
-
-
Previously not allowed, but in 1875 changed
o “if an old device or process be put to a new use which is not analogous to the old
one, and the adaptation of such process to the new use is of such character as to
require the exercise of inventive skill to produce it, such new use will not be
denied the merit of patentability”
Under § 100(b) new use patents are process patents
2 problems:
o New use patent is blocked by the old patent w/o a license
o Process patent may be difficult to enforce
Enforcement Problems
o (1) difficult to detect infringement
 Can be difficult to determine whether they used the process to create a
product
o (2) defects in infringement doctrines lead to
o (3) the need to file an inefficiently large # of infringement suits
o and (4) (until recently) better treatment for product patents when the accused
infringer imports products from a foreign country
Solutions:
o Combine with another compound to obtain a product patent on the new
combination
Ossorio:
o Lots of argument that we shouldn’t allow patents on drugs because it prices
drugs out of the reach of many people
o Instead we should have patents on the compound to treat a certain disease
o So how are those patents enforced?
 If there’s more than one medical use, then it would be very difficult to
show who’s infringing
 And the infringer is the patient, and you don’t want to sue the doctors
either
 Inducement and contributory infringement are very hard to prove
The book suggests solutions:
o Defendant class action suits: you’re suing your customers, who you want to have
good will to you
o
In re Thuau
- New use discovered for a compound used in tanneries found to be useful in treating
cervical cancers
- The PTO denied the patent because of risk of tanneries contributorily infringing if
pharmacies purchased large amounts of the compound
o He eventually got a patent on the purified version of the compound used for
treatment
Anticipation Analysis Under § 102
Novelty: remember must be known or used in the US
What must others know or use?
What standard of proof must a party meet?
- Documented but not published can be litigated as “known or used.”
- If there’s a writing or drawing then:
o Is it published within the meaning of the law?
o If not, then was it known or used in the U.S.
- § 102(b)
o The language differs b/c it says “in public use or on sale”
National Tractor Pullers Ass’n. v. Watkins (N.D. Ill. 1980) – This is about what is known by others
- Action for declaration of invalidity and non-infringement by NTPA against owner of the
patent, Billy K. Watkins
- Defendant counterclaimed for infringement
- Patent is on a tractor pulling sled
- P argued the defendant’s device had been known or used
- P alleges a sled the same as D’s was invented by someone else in ’64 or ‘63
- No original drawings exist, but in ’77, at the request of the plaintiffs atty., Irwin was
engaged to prepare drawings which were supposed to be examples of the ’64 drawings
- The device was never built and the group built another type of device instead
- The defendants argue this is not prior art under § 102 because there’s no prior
knowledge
o Tablecloth drawings were not available to the public. They were never printed to
the public, and were destroyed
- H: not prior art.
o The device was never constructed or reduced to practice
o Nor were the drawings available to the public
-
-
-
-
o That which is prior art must have its existence established by clear & convincing
evidence
o And there must be public disclosure
Who has to “know” of the invention before the critical date fo the knowledge to
constitute prior art?
o The public
o Requirement not satisfied by the knowledge of a single person (  good law )
o Or a few persons working together (  bad law)
Comes from § 102 saying known or used by others!!
And also remember burden for existence of PA
o Clear and convincing
Need corroboration of oral testimony
o See: note 5 p. 397 Barbed Wire Patent
o Can you have oral testimony alone to show prior art?
 Yes, but it has to be clear and convincing
 In the barbed wire case, the witnesses couldn’t recall with sufficient
accuracy
o You need to show every element of the
Notes:
o Use must be established by “clear and convincing” evidence – goes to the
presumption of validity afforded a patent holder
o There is no per se rule barring oral testimony to establish use of a prior art
device
o A lost design for a safe, which could not be found did not anticipate the safe
later built, because society could not derive a benefit from it
 Gayler v. Wilder
o Also remember 35 USC § 282 – there’s a presumption of validity for claims that
have issued
 Implications: a dependent claim can be valid even if the independent
claim is invalid
 Why? The dependent claim may be narrower than the independent claim
Non-mutual collateral estoppel
o Once you’ve litigated and lost, you cannot litigate that same issue against
another party in another jurisdiction
Rosaire v. Baroid Sales Dvision, Natl. Lead Co. (5th Cir. 1955)
- Trial Ct. held two patents involved in the litigation were invalid and there had been no
infringement by the defendant
-
-
-
Patents for prospecting of oil
Based on hydrocarbons changing the rocks around the oil deposits
Arguably one Teplitz knew of and used the invention
I: was the work of Teplitz “an unsuccessful experiment” as claimed by appellant or was it
a successful trial and reduction to practice? And was it public enough (see note below)?
The trial court’s fact finding concluded that Teplitz’s efforts over a year resulted in their
filing a patent, so there was use and therefore the patent was invalid
Appellants argue that D’s suspended their work
The court finds that the reason for the stoppage was that the geographical area did not
lend itself properly to the test and the gas prospecting program was suspended to
analyze the data not because the approach had failed
Ossorio: note that the word “public” isn’t there, but the courts read it into § 102(a)
The court says so long as they didn’t take steps to keep it secret, that’s good enough
o Doesn’t have to be access the public actually accessed the prior art, it just has to
be available to the public
Gore v. Garlock
o Prior use of a machine that carried out Gore’s claimed process
o Non-secret use = no particular legal or physical steps taken to maintain a trade
secret in the PA machine or the product it produced.
o However, the machine was not operated in public and its process was not
apparent to the public that received the product
o Held: the non-secret use of a claimed process in the usual course of producing
articles for commercial purposes is a public use and can anticipate
o Courts allow inferences when things happen in the normal course of business,
which makes the proof easier
o And also, it means it wasn’t experimental, and that it was reduced to practice
Printed Publications
- Described in a printed publication in this or a foreign country
o Mirrors language of § 102(a)
Jockmus v. Leviton (2d Cir. 1928) – Learned Hand, J.
- Plaintiff holder on an adjustable light built holder in the shape of a candle, sued D for
infringement
- D asserted lack of novelty, b/c p’s invention was anticipated by a product pictured in a
commercial catalogue distributed to French customers of a German firm.
- The trial court judged the patent to be valid
- Learned hand disagrees
-
-
-
The catalogue, with wide circulation, despite how “ephemeral” the publication was in
existence
Compare, he says, with a publication with just one copy sitting in a library – certainly
that’s not in wider circulation and would qualify under § 102
o “50 would’ve been enough”
And then he says that even though the entire picture of the adjustable candle holder
wasn’t visible, the parts that bear on the claims certainly were, so the patent should be
invalid as anticipated
Ossorio: distributing this catalog in the ordinary course of business helps them prove
that there was a publication date, b/c they do it seasonally
Notes:
o Aluminum Co. of Am. V. Reynolds Metal
o Patent holder issued a progress letter mailed to 33 recipients w/o any secrecy
notice (in the defense industry)
o They said it b/c within the defense industry it was customary to keep these
letters under wraps, it was confidential and not accessible to the public
o What bout lost prior art?
In re Klopfenstein
- Klopfenstein appeals from PTO ruling denying their patent application for double
extruding (soy?) feed for animals (has some saludatory effect on animals)
- The board held the invention was not novel because it was described in a publication
already > 1 year before the date of the patent application because of a presentation
given by a person, Liu, at several conferences
- One Liu presented poster boards at three conferences for a total of 6-7 days
- In determining whether this was a printed publication, the court looks at:
o (1) the skill of people who would’ve seen the publication
o (2) the expectations that the material displayed would not be copied
o (3) the simplicity or ease with which the material displayed could have been
copied
- The court then found that the attendees were ordinarily skilled in the art
- That there were no disclaimers on the presentation, so people could easily copy the
information
- And (3) that the method of single extrusion was already known, so double extrusion
used to implement the technique could have been easily implemented
- Notes:
o A single copy is enough to constitute a printed publication if it is properly indexed
o A publication becomes available when it is available to at least one member of
the “general public”
o Grant proposals can be public art where the list was published and available
under FOIA
o SIR – statutory invention registration – all the defensive rights, none of the
offensive rights of a patent
o If a card catalog is created w/ just a title of a thesis, but you can’t go and retrieve
the thesis, does this count? No.
o You have to be able to get the document
o There was another case where distributing at least 6 copies was enough to be a
printed publication
o Courts might be harsher on 102(b) rather than (a) b/c (b) is really about the
applicant dawdling
Patented Inventions as Prior Art
- Most utility patents also qualify as prior art
- Every U.S. patent qualifies
o Even cancelled parts of an application as long as they were available for
inspection by the general public
Reeves Bros. v. United States Laminating Corp.
- Action involves two inventions made by Dickey and assigned to Reeves Bros. Inc.
- 1st relates to lamination of polyurethane foam to fabric by the use of flame heat
- Second patent relates to an improvement in the method and apparatus for such
lamination
- Third is a reissue of the second patent
- These are German patents called GM’s, which are really for ‘utility methods’
- I: does the GM’s constitute a patent and does it anticipate for what is claimed or also
what is disclosed? And just what’s patented be used as prior art or can the specs be
used as well?
- Well, it does constitute a patent
- However, only what is patented may be used to determine prior art
- Notes:
o Secret foreign patent applications won’t constitute prior art
o Also, the specifications in the GM may be used to explain its claims, but not to
add to them
o Also, some foreign utility methods may be considered publications (the Japanese
for example)
Section 102(e) Disclosures in Earlier-filed u.s. applications
Alexander Milburn Co. v. Davis-Bournonville Co. – Holmes Opinion
- Suit for infringement on P’s patent for an improvement in welding and cutting apparatus
alleged to have been the invention of Whitford
- Clifford, another guy, had disclosed the invention before, but did not claim it.
o It was in a patent app.
- I: is Whitford’s patent valid?
- H: No. Have to be the first to invent
- Notes:
- Interferences require an interference on claims this was a conflict between a claim and
a disclosure
- Milburn later amended so that even if the patent didn’t issue but the patent was
published, stuff…
Patent Reform Act of 2010
-
§ 102 – disclosures made prior to filing date and available to the public would be
If disclosed by the inventor him or herself 1 yr. prior to the filing date,
Derivation becomes more important in a first-to-file world
o B/c what if the first to file stole it from someone else?
Response to issues of cost:
o Inventors should file provisional applications regardless
o
Defining the Date of Invention
-
-
Falls under § 102(g)
(g)(1) – interferences : deconstruction
o (g)(1) during the course of a priority dispute between inventor1 and invetor2
under § 135 [interference] or in ct [§ 291 – allegedly interfering patents issued]
o The invention was made by inventor2 in the US or a WTO member country
before inventor 1 made the invention AND
o Inventor2 did not abandon, suppress or conceal the invention
(g)(1) – you get an invention unless…
o during the course of an interference wherein another inventor made it for you
and it was not abandoned, suppressed or concealed
 The applicant must overcome all inventions in any country during an
interference proceeding
 Only applies to those inventors involved in the interference
-
-
-
o (2) the invention was made in this country by another inventor who had not
abandoned, suppressed, or concealed it
o (3) in considering the priority of invention under this subsection
 Consider the respective dates of conception and reduction to practice of
the invention, but also
 (b) the reasonable diligence of one who was first to conceive and last to
reduce to practice, from a time prior to conception by the other
o Definition of conception:
 Formation in the mind of a definite and permanent idea of the complete
and operative invention
 All that needs to be accomplished is construction
 All elements must be conceived
 Conception is established when the invention is made sufficiently plain
that POSA would be enabled to make the invention
 Again, this is the § 112 enablement standard
o Definition of Reduction to practice
 First to actually or constructive RP has presumptive priority
 RP – building a working version of the invention, doing the steps of a
process of invention
 Constructive RP – filing a valid patent app. (must meet reqs. Of 35 USC §
112)
Summary of priority of invention
o (1) the first to reduce the invention to practice usually has priority
o (2) Filing a valid application constitutes a constructive reduction to practice
o (3) The first to conceive may prevail over the first to reduce to practice if the first
to conceive was diligent from a time prior to the other inventor’s conception
through to her own reduction to practice
o Any reduction to practice that has been “abandoned, suppressed, or concealed”
is disregarded
102(e) – deals w/ previous patents
o for foreign apps, it’s prior art only as of its U.S. filing date
o must be in English and designate the US – only effective if it issues or is
published!
o Sine qua non of that references that anticipate is that they are accessible to the
public
An interference count is a quasi-claim defining an invention the priority of which is
under review in an interference
o The counts define the boundary of the interference
o Get 1 yr. for the interference proceeding
Brown v. Barbacid – 275 F.3d 1327 (Fed. Cir. 2002) – Rader J.
- Interference over a new assay to identify anti-cancer compounds
- PTO board of appeals and interferences awarded priority to Mariano Barbacid and
Veeraswamy Manne (Barbacid) over Brown,
- Brown patents owned by BMS-Squibb, Univ. TX
- Patent is for compounds that inhibit farnesyl transferase (FT) enzyme involved in control
of cell growth
- Brown application was filed first, therefore the senior party
- Brown did not reduce to practice until ’90 based on the evidence, so the Board awarded
priority to Barbacid
- Barbacid filed 1 month later, so Barbacid has the BoP here is… Preponderance of the
evidence
o Why? It hadn’t issued by the time this interference had filed
o If it’s issued, then it’s clear & convincing
- Brown introduces autoradiographs which have the dates of which they occurred
- The court found the doctor who took the autoradiographs didn’t give sufficient
testimony to adequately explain and authenticate them
- The CAFC finds that the board abused its discretion by excluding the evidence within the
understanding of skilled artisans when considering authentication requirements
- Brown argues that the board erred in allowing the inventor’s own documentation to
corroborate his conception or reduction to practice
o In order to prove conception, you have to have corroborative evidence
o No corroboration necessary for physical exhibits
o So the notebooks and autoradiographs don’t require corroboration to
demonstrate the content of the physical evidence itself
o But the physical evidence in this case may not single-handedly corroborate Dr.
Reiss’s testimony
- And they say the Board did not err in holding that unwitnessed documentation does not
corroborate the inventor’s testimony
- To show conception, which is the permanent idea of the complete and operative
invention, which only requires ordinary skill to make the invention, you have satisfy
every limitation of the count
o And they say Dr. Reiss, the inventor for Brown did not do that b/c he didn’t
include a test / substrate
o It didn’t show inhibition of FT
- However, a later Sept. 25th experiment did contain all the limitations,
-
o The court says the physical evidence shows that there was an experiment that
was done on the 25th and that that experiment involved all elements of the claim
 Why isn’t that good enough to show reduction to practice?
 There’s a very subtle distinction – why isn’t that good enough?
 What are the inventive facts? Reduction to practice, conception,
diligence
 You can prove that someone did an experiment, but you have to know
that it worked!!!!
 To prove an inventive fact, you have to have an independent witness to
corroborate that the inventor understood that it worked
o Serene asks:
 What if the inventor himself authenticated it?
 Still needs to be corroborated – and they need to corroborate that the
person who wrote it did in fact write it and that it wasn’t someone else
o And there’s a requirement of corroboration for this experiment and the other
Dr., Dr. Casey cannot corroborate the evidence and there’s no reduction to
practice
o But they say, the physical evidence shows that an experiment took place on that
date w/ all the limitations in place.
o So Casey’s independent testimony corroborates Reiss’s testimony of a
conception before Nov. 1989
o And they remand for findings of conception and diligence
o What’s evidence of conception?

Notes:
o You have to show:
o (1) conception
o (2) Reduction to practice
 Requires the inventor to (i) have practiced an embodiment of the
invention encompassing all elements of the interference count, and
 (ii) to have appreciated that the invention worked for its intended
purpose.
 All elements of the count have to be reduced
 Recognition of invention’s features – means you have to know the
invention will actually work – you have to test it
 There is no requirement for commercial viability
o (3) diligence

-
-
-
Only matters if you’re in an interference and you’re the second to reduce
to practice
Defining “Conception”
o A rigorous concept: - must be a definite and permanent idea of the “complete”
and “operative” invention
o A mental process
o You have to conceive all elements of the later claimed invention!
o Does not occur until the inventive idea is “crystallized in all of its essential
attributes and becomes so clearly defined in the mind of the inventor as to be
capable of being converted to reality and reduced to practice by the inventor or
by one skilled in the art”
 Not every nut and bolt:
 They have to know all the elements but not have a complete
blueprint in his / her head – the shape and location need not be
known
 Uncertainty as to successful operation
 You need only show you had the idea the discovery that it works
is part of its reduction to practice
 In your mind it has to be able to work, but it doesn’t actually have
to work
 Conception is established when the invention is made sufficiently plain
that POSA would be enabled to make the invention (rule of evidence)
 This is the lower enablement standard of novelty, not the § 112
enablement standard
Diligence
o Only relevant when one party claims an earlier conception date, but a later
reduction to practice date
o When one party is both the fist to conceive and reduce to practice, that party
has priority
o The behavior of the second inventor has no relevance
o Where an inventor can establish only a reduction to practice but not a date of
conception, the conception date is assumed to be the date of reduction to
practice
o No flexibility in the diligence period
o Also, You need excuses for inactivity
Constructive Reduction to Practice
o Patent apps and only patent apps constitute a constructive reduction to practice
Reduction to practice
-
o First to actually or constructively RP the invention has presumptive priority
 Reduction to practice = building a working version of the invention, doing
the steps of a process invention
 Constructive reduction to practice = filing a valid patent application (in
particular, the disclosure must meet the requirements of 35 U.S.C. § 112)
 Only patents qualify for constructive reduction to practice
 Not journal articles, etc.
 What about provisional applications?
o Ossorio thinks they count as constructive reduction to
practice
o Everything in a provisional has to support the later-written
claims
 What about where the first to conceive is the second to RP then…
 The first to conceive may prevail if the first to conceive was
diligent from a time prior to the other inventor’s conception
through the first inventor’s own reduction to practice
 |-----C-------RP------------------------File----|
 C RP = Diligence
 RP File = Abandon, Suppress, Conceal
 Some older cases talk about perfecting the invention
 This is synonymous with RP
 NOT that the invention is optimized or in its perfect form
o If you’re the junior party (last to file), the burden of proof is on you
o You only need to be diligent just before the second party’s conception
o If you want to claim an interference, the junior’s app must have been filed less
than one year after publication
The balancing act
o § 102(g) balance the value of providing incentives to the first person / group to
come up with the new idea with the value of getting people to “race” to produce
something of practical consequence
Christie v. Seybold
- Technology at issue – a press to bind book-bindings
- Seybold C in Oct. 1885
- Seybold  sketch of the invention and showed it to several people in Jan 1886
- Seybold: First machine was made (RP’ed) in April 1889
- Christie C in summer of 1886 had working drawings made and patterns ordered in ’88
press completed on about July 12th of 88’
-
Seybold says he did not have the proper tools in his shop to make the machine
Seybold is the senior filer
But can Seybold date his diligence all the way through?
The reason that he didn’t have a press built b/c there was no profit in it.
o And that was the end of Seybold’s opportunity of his patent opportunity
o H: Lack of profit is no excuse
Peeler v. Miller
- Inventors Peeler filed a patent application designed to reduce “cavitation”
- Application on an identical fluid was filed b Miller and assigned to Monsanto
- Patent issued to Peeler and then declared interference on the still-pending Miller
(Monsanto Application)
- Miller wants to get priority over Peeler
- Miller made numerous efforts to improve cavitation by including FREON, water, and
other substances
- In ’66 he submitted a preliminary disclosure of invention to Monsanto’s legal
department
- And he’d given talks in the aeronautical community
- Peeler actually argued the tests were not reduction to practice
o But the court says it’s merely a hydraulic fluid
o The claim is what you have to conceive
- Four years lapsed from this date to the filing date
- So the court goes another route
- I: was there abandonment, suppression, or concealment in the meaning of § 102(g)
- H: the court says Miller reduced it to practice
- And he didn’t to abandon it despite his notebook entry indicating a need to better
assess other alternatives
- And the court holds that Monsanto suppressed the invention by not acting on the
patent for over four years
- Notes:
o Just required to show that there’s not an extreme delay
o Other reasons: delays to perfect the invention
o Testing and refinement of the invention
o Paulik
 Another Monsanto case where they delayed in the legal offices for a long
time
 And someone came back and took steps toward filing a patent
 And that activity began prior to the date of conception of the other party
 But the other party filed before Monsanto

-
-
The court held that Paulik could rely on this new conception, reduction,
etc.
o There is an intent requirement to show abandon, suppressed, concealed
Diligence
o Technical complexity justifies a longer period of preparation and
experimentation
o Some personal circumstances justify delay (illness, moving, death in the family)
o Expediency, competitive advantage, “busy with other things” generally will not
suffice
o Note: “Perfects” in the old cases means RP – does not mean optimized or in its
perfect form
Peeler v. Miller
o Two issues: when did the Monsanto inventor (Miller) RP the invention
o If he RPed the invention in March 1966 or thereabout then did dhe abandon or
suppress it
o Abandoned expt. Vs. RP?
o Held: RP
o Claims were directed to the hydraulic systems generally, not simply those in
aircraft. This influenced what kinds of expts would count as RP of the invention
claimed.
 Miller’s test simulated the relevant real-world conditions (what owul
dPOSA tinka bout the relation to real world?)
 Notebook comment – “need to better assess…” does not show “lack of
conviction of success.”
 Long time elapsed b/w disclsosed and filing does not show abandoned
expt. b/c no doubt that Miller had RPed invention sometime in ‘66

Gillman – Learned hand, J.
- A guy kept his invention secret from everyone including his wife
- He licensed only the output
- Then someone went to try and patent it
- Held: the prior invention was not prior art and was suppressed, or concealed, etc.
- Notes:
o This could have a pretty bad effect on trade secrets
o Apparently the rule hasn’t gained super-wide-spread traction
o The question was whether or not the quilting machine could be prior art, but
that person could not prevail in an interference
-
o If you keep something as a trade secret, you will not prevail in an interference
 Here prima facie unreasonable delay
o Cf Peeler v. Miller to Paulik v. Rizkalla
o Not necessary to show specific evidence to conceal – in general suppression or
concealment must be intention
 But if enough time passes, you can infer a/c/s
 And this shifts the burden Dow v. AVI p. 466
Challenge to validity in litigation
o Challenger has the burden of proof (production and persuasion)
o Challenger must establish a prior inventor by bringing forth clear and convincing
evidence .
o Once that burden is met, then the burden of production shifts to the patentee
to bring forth some evidence that the alleged prior inventor a/c/s.
o Patentee must bring forth enough evidence to creat a genuine issue of material
fact regarding a/c/s
o If patentee can’t do this  S/j against patentee
o If patentee can meet burden of production  challenger may rebut evidence of
a/c/s/ and must do so w/ clear & convincgin evidence to the contrary
Dow v. AVI – see slides – Class 12
- I1: does the alleged earlier inventor have to know that she/he/it created a patentable
invention
- H: No. AVI RPed Dow’s later claimed invention but did not conceive it. CAFC disagrees.
Conception does not mean forming the idea that one’s new and useful entity is
patentable under US law
o Seems consistent w/ inherent anticipation doctrine
- I2: did AVI”s action (or inaction) raise an inference that it a/c/s’ed b/c it took 2.5yrs to
from making to put on sale
o When putting on a patent, what she has to do is that she is bringing the
invention to the public in a timely fashion
- Held: no. “In cases in which an invention is disclosed to the public by commercialization,
courts have excused delay upon proof that the first inventor engaged in reasonable
efforts to bring the invention to market.”
102(g) vs. 102(a)
- 102(g) requires technical proof of C and RP of the claimed invention, whereas 102(a)
does not.
-
102(g) in the interference context requires that both inventors be able to claim the
same invention.
102(g) has a narrower territorial reach with respect to inventions not claimed in another
patent (102(g)(2)).
On the other hand, 102(a) has a publicity requirement that 102(g) does not. A single
first inventor can invalidate a later claimed invention (see notes on Gillman, p. 464).
Secret Prior Art, Hidden Prior Art and Non-informing Public Uses
- Secret inventions and 102(G)
o If a party makes an invention (= RP) and keeps it strictly secret,
o And if a 2nd inventor lates files an app. w/ claims that cover the first invention
o In a priority dispute, first inventor may be deemed to have “suppressed and
concealed” contravening 102(g) p. 3
o If 2nd inventor rececieves a patent, then 2nd can prevent the 1st from practicing
- Gilman v. Stern (Learned Hand)
o “A completed invention will be deemed a/c/s if no steps are taken to make the
invention publicly known w/in the reasonable time
 Invention was machine, could be used in secret and output sold to the
public
 Cf. to public use where the item is not intentionally kept secret, but its
use in public does not allow anybody to examine or evaluate its features.
 Its nature is such that even ordinary use does not disclose much about
the invention. Underwear ?? this is ~= to abandoned and concealed
Dunlop
- Three reasons why the t/s coating on golf balls, which coating could not be reverse
engineered easily, should not be considered a/c/s
o The public got benefit of invention
o Eventually the secret will be reverse engineered …
o An inventor is under no duty to apply for a patent and should not be penalized
b/c she gave her invention to the public in a manner that did not disclose
Timing of A/C/S
- Does the language of 102(g)(2) mean that the first inventor’s abandonment does not
count if it happens after the second inventor’s conception or RP?
- Allen v. Brady p. 477
o Only a/c/s before the inventor’s date of invention matters
o Cf. to Checkpoint which took account of first inventor’s activities that occurred
after the second date of invention
 Which is the better rule?
Rule 131 – swearing behind
Also known as antedating a reference
- This is the way a patent applicant proves a date of invention that is earlier than her filing
date
- “Swear behind” means to prove that the applicant’s date of invention is earlier than the
effective date of the reference
- Used after a claim is rejected by the examiner as anticipated or obvious
- Inventor submits an oath
o No requirement for independent corroboration;
o Must submit exhibits, drawings, records as aprt of the affidavit, or explain why
you don’t have these. But, do not need independent corroboration (cf Brown v.
Barbacid).
- Show facts such as to establish RP prior to the ref. effective date, or C prior to the ref
coupled with diligence from a time prior to the ref. date
- See: p. 496
Clarification
- Secret or hidden – secret or hidden – took steps to keep it that way
- Not informing – given over to someone but difficult to reverse engineer
-
§ 102(b)
-
-
Was patented or described in a printed publication in this or a foreign country (this is by
anybody) – compare w/ 102(a) – where it’s by others
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 (again, by anybody )
You can bar yourself w/ a prior patent as well
Kyle asks:
o w/ 102(a) it’s about the claims – how can you claim the same thing twice?
o Well it’s a bit of guile and subterfuge – sometimes people try and patent the
same thing twice
o Also, 102(e) can create prior art for 102(b)
102(a) – uses the all elements rule – has to be identical – has to be found entirely in one
piece of prior art
102(b) – it was something substantially similar to the invention was …. (see above)
-
Apparently the “invention” in (b) differs from (a)
---------- |-----------------------------| _----------------------------| ------------
Applicant invents
102(b) critical date
File pt. app.
What if there’s a tie? On the one year – it’s more than one year. Tie goes to the inventor
102(b) stat. bar critical date = one year prior to filing of the patent
o Can be created by the inventor and others
What are the policies underlying 102(b) ?
- Makes people get to the patent office early
- Means that the invention goes into the public domain more quickly
- Limit public’s detrimental reliance
- Give inventor / investor some time to test invention (including market testing after RP)
Pennock v. Dialogue – US 1829
- Invention was an improvement of ducting or tubing
- Completed in 1811. App. Not filed ‘til 1818
- During this time he made and sold lots of the product in Philly
- Held: the applicant had lost his right to obtain a patent. Abandoned his right or barred
himself by public use, both analyses are used
- Argued by Daniel Webster, John Sargent
- Held: by exploiting the invention for 7 years, the inventor had lost his right to patent
- But under what theory did he lose his right to patent?
- Public use? Or was it abandoned the right to seek a patent
- The process was patented, and was not shown to the public
- Didn’t matter – this was still considered a public use or abandonment
Egbert v.Lippmann – 1800’s
- Created new kind of corset stays for his mistress
- He RP’ed it ’55, gave it to her in ’58, demoed it in ’63 and files an app. In ’66
- He began to sell it commercially somewhere in the middle
- “public” in terms of public use may be even less than the public-ness of known or used
under § 102(a)
- Would suggest that if you give the invention over to 1 other person w/o restriction, this
can constitute public use
o Might have been a byproduct of the fact that there was a mistress involved
Moleculon v. CBS
- Nichols was the inventor of a toy similar to a Rubix cube
-
-
-
-
Initial versions weren’t durable
In graduate school he’d produced models of the toy
Showed it to a couple close friends
He went to work in ’62 for Moleculon
The boss saw his invention and asked him if he intended to commercialize it
He said no, and Moleculon agreed to commercialize it in exchange, Nichols get a share
of any profits – Nichols assigned patent rights to Moleculon
They sent the thing to Ideal Toy, who expressed no interest
They filed a patent app in ‘72
CBS argues that the patented design was in public use more than a year prior to the
March 3, 1969 critical date
o Thus rendering invalid under SS 102(b)
They allege his showing it to his roommates, etc. w/o mention of secrecy ascribes
commercial purpose
I: statutorily barred?
H: No.
R: he hadn’t given the invention to someone else for free and unrestricted use. He
always retained control over the puzzle’s use and the distribution of information
concerning it
And he retained control even though he and his boss didn’t enter into a confidentiality
agreement
Also CBS argued that an earlier oral agreement to sell the invention started the clock
ticking for a bar
o The court says even if there was an earlier oral agreement, an assignment or sale
of the rights in the invention and potential patent rights is not a sale of “the
invention” within the meaning of 102(b)
o And also, the presence or absence of an express confidentiality agreement is not
determinative of whether or not he retained control. It is but one factor to
consider
Notes:
o Distinguished by Beachcombers Int’l v. WildeWood Creative Prods
 The invention was demonstrated at a party w/ 20-30 friends
 They said it wasn’t at all times under control of the inventor and there
wasn’t an expectation of secrecy
 And she was statutorily barred b/c showing it counted as a public use and
she didn’t impose secrecy on her friends
 How is this different from Moleculon ? Implied secrecy in the work place?
 But it’s a jury verdict, and Ossorio
o Egbert: personal relationship, no express confidentiality = gave away to public
o Moleculon: business relationship, no express confidentiality = did not give away
to public
o Beachcombers: friendship relationship (casual) = gave away
o TP labs: Dentist – pt relationship = did not give away
Metalizing Engineering Co v. Kenyon Bearing & Auto Parts – 1946 (Learned Hand)
- Obtained a patent on an improved method of conditioning metal
- Metalizing brought suit
- H: the fact that he used it for commercial purposes and not experimental for > 1 yr.
prior effected the statutory bar
- He actually says that his previous decision was wrongfully decided – Peerless Roll Leaf
Co. –
o You either keep your invention secret and this means not using it for capital gain
o Or you patent it, not both
- Notes: what was on sale here?
o The guy performing the process
o Decided more as a public use case than an on sale case
 A bit odd b/c it wasn’t really available to the public
 Still applies to modern jurisprudence b/c if it’s on sale then the bar can be
triggered
o He draws a distinction between others’ prior art and the inventor’s own activities
that trigger abandonment, public use, or on sale
- Compare with…. Macbeth-Evans
- Also compare w/ Gore v. Garlock
-
Macbeth-Evans Glass v. General Electric
- Macbeth made an inventive breakthrough in the art of making glass for lightbulbs or
“globes” he kept it secret for 7 yrs.
- In 1910 a former employee went to Jefferson Glass, disclosed the process, who began
making the glass according to the Macbeth method
- Macbeth sued Jefferson for trade secret violation and won
- Then Macbeth filed for a patent
- Held: he couldn’t get a patent b/c he abandoned his right to get the patent by
commercially exploiting the invention for 7 years + as a trade secret
-
It did not matter what was made public – was the product of the TS process, the process
was commercially exploited and this evinced Macbeth’s intent to elect TS rather than
patent protection
Pfaff v. Wells
- Pfaff invented a novel socket for microprocessors
- Began work in Nov. 1980
- April 9th, 1982, he files
- But of course, he can’t have sold it before Apr. 19, 1981
- Mar. 17, 1981, he shows his drawings to TI, which contained the drawings which were
enough to reduce it to practice
- On Apr. 8, 1981, the confirmatory memo from TI
o Confirmatory memo’s are used in K law – not much of a surprise as to when the
sale occurred then
- Goods were delivered July 1981
o So, you see the patent application occurred < 1 yr. after this date (approx. 9
mos.)
o From Pfaff’s perspective, the contract wasn’t really fulfilled until all the parts
were delivered
- So, the argument is to go after novelty
o Either show it’s not novel, or show that Pfaff had forfeited the invention
o Could this be public use? He’s showing it to a big company?
 No. He’s not showing it to the public at large
 Just have to show a substantial amount to the public
o What other things might you have been doing with TI?
 You probably get an NDA so it’s protected as a trade secret
- He argues that he hadn’t actually put it on sale
- At this time, there was a split in the circuits as to what constitutes on sale
o One circuit said it wasn’t on sale until it was on the shelf
o The reasoning was: what if the K failed? Then you’re screwed
- But on the other hand, you might be getting advances and the publisher / manufacturer
might delay the sale
o Or perhaps you get extra rounds of financing
o Soo, at the end of the day, it’s not when the K was formed, but when it was
performed
- TI commissioned a bunch of them, he had the plans sent to a manufacturer, but didn’t
get them back for > 1 yr. after he had created the drawing of the device, AND he
marketed the invention to vendors
- Wells created a copy, basically, and Wells said that he had
- The court wrestles with what constitutes a sale:
o Is it conception or reduction to practice?
o Remember, conception means it can work – but you don’t have to know it works
- The Test (2 parts): see p. 297
o (1) The product must be the subject of a commercial offer for sale
 Note that it has to be specific enough to be an offer
o (2) The invention must be ready for patenting – can be satisfied by:
 Either reduction to practice or by proof that prior to the date of
application, the inventor had produced drawings etc. specific enough to
show how the invention worked
 With Pfaff’s drawings, that was enough for him to walk into the patent
office
- Notes:
o An invention may be deemed on sale even if it’s never consummated
o Need not contain detailed plans or schematics of the invention
o If a general offer for the widget is made, but not in specific terms, the Pfaff test
is not satisfied until the things are actually sold
o General offer; invention; performance
 It’s when the performance occurs (time c)
o Specific offer; invention; performance
 Unclear whether time b or c satisfies the Pfaff test
o Fine tuning:
 In some instances where fine tuning was still required, it didn’t matter.
The invention was still on sale under the Pfaff doctrine
o Sham sales:
 Mahurkar v. Impra
 He licensed the invention to Quinton instruments – remember,
licensing does not trigger the statutory bar
 License included a provision that voided the exclusive rights if
Quinton was unable to market the catheters within 1 yr. and
three days prior to the filing date
 A friend of the company purchased some of the cathehers and
that was not a bar under Pfaff b/c it was a sham sale
 See p. 549
o Marketing but no firm offers to sell
 Quote sheets, circular ads, don’t bar
Abbott Labs v. Geneva Pharmaceuticals
- Abbot alleged D infringed on claim 4 of abbott’s U.S. patent
- Dist Ct. held claim invalid under on-sale bar of 102(B)
- Compound used for treatment of benign prostatic hyperplasia
- Abbott Marketed exclusively since ‘87
- There are also four anhydrous crystalline forms and claim 4 claims the form IV
- D bought this compound from foreign companies, didn’t tell the buyers which crystalline
form they were getting
- Abbott argues the compound wasn’t invented b/c the parties must know precisely the
nature of the compound
- Does it meet Pfaff?
-
-
-
-
o (1) it’s on sale and (2) it was ready for patenting b/c at least two foreign
manufacturers had already reduced it to practice
Abbott argues this case is like Tlighman – b/c it was an accidental production
o The court says those cases are off point b/c they involved the issue whether the
claimed inventions were anticipated by earlier work that produced no useful or
appreciated result
o Here it was decidedly useful and appreciated
The court says no need to recognize – as long as the thing is on sale, then it can be
barred
Cf. Abbott to Scaltech Inc v. Retac / Tetra
o Inventor’s firm offered to perform a process in exchange for $$ prior to the
critical date
o CAFC remanded to lower ct. to determine whether the process contained all
limitations of the later claimed invention
o Held: “If the process that was offered for sale inherently possessed each of the
claim limitations, then the process was on sale whether or not the seller
recognized that his process possessed the claimed characteristics.”
Expermiental Use or Sale
o Experimetns may be needed to detrmine whether an item can work for its
intended purpose
 To be ready for patenting or reduced to practice the inventor must know
that the item can work for its intended purpose (scienter requirement)
 If an inventor is conducting experiments to determine whether an item
will work for its intended purpose, then the inventor is not engaged in
public use or sales of the invention
 Experimental use negates public use or sale
o Issues raised:
 Was the inventor really engaged in experimentation or testing?
 What counts as evidence of this?
 Was the experiment / test really designed to determine whether
the invention would work for its intended purpose, or was the
experiment / test for some other reason?
o Market testing can count as public use for purposes of
102(b) bars. Market testing is not “experimental use”
under § 102(b)
o Experiments aimed at optimizing an invention after it has
been reduced to practice can create 102(b) bars.
-
City of Elizabeth Paving v. American Nicholson Pavement Co. (1877)
o Invention = improvement in wooden street pavement slabs
o Nicholson filed a caveat w/ PTO ,
o Patent app filed by Nicholson on Mar. 29, 1854
o 102(b) critical date, Mar. 29, 1853
o ~5 yrs before, the 102(b) Nicholson constructed a 75 ft. patch on well traveled
road
o I: public use or experimental
o H: experimental
o Reasoning:
 Checked / examined it almost daily
 IN discussion w/ 3rd parties prior to lit. the inventor described the use of
pavement as expt.
 Inventor kept control of invention
o Court appears to apply the totality of the circumstances test
o Perfection (see p. 556) – perfecting the invention means ensuring it works for
the purpose intended
o It is not public knowledge that bars the inventor from obtaining a patent… it is
public use – p. 558
Experimental Sales do not create 102(b) bars
- What is an experimental sale?
- See n. 3 p. 559 – Manville Sales v. Paramount Systems
o Manvill won a K to install weather resistant lighting First assembly failed
o Inventor received permission from the state to try a newly designed assembly
o Inventor conveyed to state that the new design was experimental
o Inventor marked design drawings w/ confidentiality notices before disclosing
them to govt. officials
o WY law prohibited officials from disclosing confidential info, such as these
drawings, to the public.
o Site of use, atop pole, did not disclose the invention
o Held: although Manvill was paid, sale was experimental b/c it had indicia of
experimenting and Manvile never caused the public to believe that the invention
was in the public domain.
- By definition (CAFC) if a use is experimental, then it has not been RPed
Lough v. Brunswick Corp
- Invention was a new seal assembly for boat motors; was less likely to corrode
- Lough was independent inventor w/ high school education
-
-
-
-
-
-
Undisputed that the inventor made and used six prototype prior to his critical date
After learning of Lough’s invention, Burnswick made its own version of an improved seal
(copied?) and sold motors with improved seal assemblies that infringed Lough’s patent
claims
Lough had given 6 prototypes of his seal out to his own boat, a friend’s, owner of a
dealership, installed 4th in a marina customer, and to two friends who installed them in
two other boats, one of which was sold and one of which belonged to a local charter
guide.
I: public use that should bar him from patent claims? Or experimental use?
R: no indicia of experimentation / testing
o Zero indication he was attempting to determine whether the invention worked
for its intended purpose
CAFC held use was a public use, and on these facts no reasonable jury could have found
that Lough’s use was experimental b/c there was absolutely no indicia of
experimentation
o It was public use b/c he completely relinquished control of the prototypes
o It does not matter that people would not see the prototypes that the uses did
not disclose the inner workings of the new seal assembiles – like Lockwood v.
American Airlines (the SABRE reservation booking system); this was a “iddne
public use” not a “secret use.”
Legal standards
o Totality of circumstances test
o Is experimental use a question of fact or law?
 The CAFC judges do not really agree. Probably mixed, but depends on
individual case
Baxter International v. Cobe Laboratories, Inc.
o Held patent and it sued Cobe for infringing ‘089’s claims to a sealless centrifuge
for separating blood into its component cell fractions and liquids
o Prior to Baxter’s critical date, scientists at NIH built and used a a centrifuge
covered by the relevant ’089 claims
 One NIH scientist, Suaudeau, used thi scentrigue in his NIH laboratory to
separate blood into its component parts. He then used it in his own
experiments. He also modified the sealless centrigue to better suit his
purposes
 The NIH scientists were not party to this suit b/w Baxter and Cobe
o I: was this public or experimental use?
o H: public use even thought eh use did not disclose the invention to the public

No restrictions on who could enter the lab, many people visited and
observed the centrifuge
 There were no professional obligations of condifentiality among people
who visited or looked at it
 Worked as separator as Suaudeau first used it; he immediately
comprehended it worked for its intended purpose
o Also held:
 Dist. Ct. found that they weren’t attempting to refine the invention
 b/c he was using it in experiments doesn’t mean he was experimenting
on it or perfecting it.
 Modified it ot better suit his needs does not change the fact that when it
was 1st build and displayed it was cleared the centrifuge worked for
separating blood into its constituents
o Newman dissent:
 Concerned the ruling creates a secret prior art that cannot be found by
other inventors no matter how many resources they put into searching
for prior art
 See not 3, p. 577 – decision in Baxter cannot disadvantage an inventor
who files an application w/in one yer of inventing. Why not?
o
Nonobviousness
-
-
Tries to measure technical accomplishment – more abstract than novelty or utility
Intended to measures technical not economic triviality
o Making a technical advance not the same as marketing something or even
making something better from the consumer perspective
o Also we’re not asking if the invention is not functionally better – just an
accomplishment
Needs to be new, useful and something more
Ossorio says we’re back to a situation similar to Graham
If the differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived by the manner in which the
invention was made
-
Do NOT say would be obvious the correct answer is would have been obvious as of the
date of invention
What does the patentability shall not be negatived language mean?
o Doesn’t matter how long the invention took to invent, how much $$ it took etc.
§ 103 also contains (b) biotech process non-obviousness
( c ) - inventions made by different inventors but owned by a single owner or under
obligation of assignment to one owner do not make each other obvious
Although you can’t defeat your own novelty, you can make your own later invention
obvious by creating prior art that will make it obvious
o Say a prior patent, publication, etc.
- What’s the policy rationale?
-
If we know that there’s going to be a profitable and easy result (i.e. obvious), then
there’s no need to incentivize
We need to incentivize difficult research
Economic theory would say that too many patents on obvious inventions would reduce
patent system’s incentives for inventors to produce non-obvious inventions
o If producer of a patent that includes numerous obvious components they have
to license, costs go up, consumers won’t buy
Cases we didn’t read
- Hotchkiss v. Greenwood
o Doorknob of clay was obvious over doorknobs of wood and metal – simply the
substitution of one material for another
o It was “destitute of originality”
- Cuno Engineering
o Patented invention was cigarette lighters that popped out of your car when it
was ready
o Contained a control to turn it off after it had reached a set temp.
o Said it’s new and useful, but obvious where’s the something more ?
o The case said it “must reveal the flash of creative genius” – which is no longer
the case.
 Explicitly disclaimed by the last sentence of 103
- Great A. & P. Tea Co. v. Supermarket Equip. Corp. (1950)
o A frame that you could put on a table that when pushed or pulled could move
groceries within it to the clerk
o Held: more elongation (change of dimension) of an old device does not count as
“invention”
o “only when the whole exceeds the sum of its parts” is the accumulation of old
devices or parts patentable
o “the aggregation of old parts must produce a new or different function or
operation to be patentable”  the heart of the functionality test
Obvious = unpatentable
- determination that an invention is obvious (and therefore unpatnetable) is ultimately a
determination of law, reviewed without deference to the lower ct., but
o Obviousness determinations rely on many factual findings that the ct. reviews
for clear error.
o Some of the factual findings include:
 Level of skill in the art
 Scope and content of the PA
 Evidence of a motivation or suggestion to combine teachings in PA
references
 Evidence of secondary factors (objective indicia)
Graham v. Deere
-
-
Links § 103 to the constitutional language promote the progress of the useful arts.
Congress added another requirement for obviousness to the Patent Act
There was a plow and a prior art plow
You’re supposed to determine through the prior art whether the invention was obvious or not
This case gets cited a lot in other cases from a philosophy standpoint
Gets cited in novelty, licensing cases
The court really re-enforced the statutes
o Art. I § 8 cl. 8 – needs to promote the invention the useful arts
 The court says the invention passes the limitation part
 Ossorio says the statute has to be interpreted in light of the Constitutional clause
 So part of what they’re saying about the statute is that if the statute can’t be too broad
or it’ll be unconstitutional
 And they basically say it basically re-codifies the old common law
 And they kind of ignore Cuno –
o Also Graham didn’t argue that his new invention had superior characteristics
 So the court says there should be deference to the PTO
o Interestingly the USPTO missed the prior art
 But the court reads it in – which they shouldn’t do
Top of p. 302 – the test of non-obviousness:
o It’s a mixed question of law & fact
 Ultimately a question of law (thus it’s a question of fact), but based on factual
underpinnings:
 Level of skill in the art
 Scope and content of the PA
-
 Evidence of a motivation or suggestion to combine teachings in PA references
 Evidence of secondary factors
 When an appellate ct. reviews, it reviews finding of law de novo, but the facts are given
deference
o Under § 103, you first have to figure out (1) the scope and content of prior art
o (2) Next, identify the differences between the prior art and the claims at issue and the level of
skill in the art
 Under novelty, you’re looking at the similarities – is there something in the prior art
that’s identical to this invention?
 If yes, the this invention is not novel
o Non-obviousness: look at the invention and prior art and determine the differences
 E.g. Snuggie: blanket w/ sleeves, not really like a sweater
 Or in Graham v. Deere the flex arms are on opposite sides of the plow
o (3) identify the level of ordinary skill in the pertinent art –
 Sometimes referred to as the PHOSITA std.
 Person Having Ordinary Skill In The Art
 Similar to the reasonable person std. – but they’re from a technical field
o The court doesn’t give a particular test of how to determine obviousness against this background
 Later CAFC created TSM
o Who would be a person having ordinary skill in the snuggie? Someone in fashion?
The TSM approach
Teach, suggest motivate – found in the KSR case
Perhaps there’s something that suggests or teaches you how to do something and it’s in the prior art,
then not going to fly under non-obviousness
If you challenge under non-obviousness, the challenger had to find something in the prior art that either
taught, suggested or motivated.
If they failed to show this, they failed to show it was obvious
o You have to articulate why this invention becomes obvious
Examples:
o Say a trash bag w/ a jack o’lantern
o What’s the prior art? There’s lots of prior arts in the crafts area with jack o’lanterns
o And lots of garbage bags that have the gusseting and resistance that would form it into a shape
o Bottom line: no combination of the two in prior art – so TSM satisfied
o But a lot of controversy over the TSM test
Calmar Inc v. Cook Chemical Co. – part of Graham
- Cook had a patent for a bottle sprayer cap
- It used a rib and a gasket and had a spray pump attached
- Why didn’t the court say this was a novelty issue?
o When we say all elements, we’re saying that for nonobviousness you’d have to
have all the same elements in the same places
o I.e. if all the pieces aren’t arranged in the same way, then the claims don’t read
on into the same way
- 3 pieces of prior art were looked at by the court
- One was only for a pouring bottle, but had a similar sort of device where the cap wasn’t
sealed using a rib, but using a tongue and groove seal, but the hold-down cap never
contacted the container cap
-
-
-
-
So basically the differences are that one’s a pouring bottle and uses a tongue and
groove seal while the other uses a rib seal and is for a pump spray
Other prior art shows hold down caps that contact the container cap but that spray
The court finds that someone to POSA it would’ve been obvious
The court doesn’t really talk about the level of skill in the art
o If anything they talk about the secondary factors, that all of these people are
searching for solutions to this problem
o The court says yes, secondary factors are present, but they’re not enough to
overcome the obviousness
Another thing the court says is you have to look at the subject matter as a whole
o Interpreted to mean “distinguishing features clearly incorporated not the
claims.” – a very narrow statutory interpretation
Interpreted the “pertinent prior art” as that which solves the same or similar problem 
art from different fields of invention can count
They say “ to us .. the claims are clearly evident”
o This doesn’t focus on POSA!!
About POSA in this context:
o It’s not asking what a real person knew
o And we’re definitely not asking what the inventor knew at the time of invention
o And of course when this happens, it changes in the state of the art matter
Ossorio says this is kind of like Hodgekiss b/c it’s like a substitution
U.S. v. Adams
- Came up from the Ct. of claims – the ct. used to sue the federal govt.
- Patents given an exclusionary right to everyone except the federal govt.
-
You can sue the fed govt. for infringing but all you can get it is $$ damages
No injunctions
Patent was for non-rechargeable battery
The court in its facts gives a cool description of the invention (so you think they’ll uphold
it)
And later it was found that the battery was really good
He told the army about the invention, they entered into K with the army
This was right during WWII
He makes an inquiry and they were totally using it
And the court finds it to be nonobvious
-
-
Issue was whether he’d just substituted magnesium for zinc or merely substituted
cuprous chloride for something else
And the court held it didn’t teach substitution of cuprous chloride for silver chloride
Also it was the first water battery
Even though one claim didn’t have water activated as a limitation, they said the claim
should be interpreted in light of the spec. – which is of course wrong b/c you’re reading
in a limitation
And NO b/c PZOSA doubted that cuprous chloride would be functional
And it had unexpectedly good characteristics
o Therefore not a mere substitution b/c you’d expect similar performance if it
were a ‘mere’ substitution
o This goes to “teaching away”
-
Notes:
- The court also mentioned secondary factors in Graham which included “commercial
success, long but unsolved needs, failure of others, and commercial success.” – and
they’ve had a major impact on the CAFC
Subtests of Nonobviousness
-
CAFC when it was first created began to say that reference to “combination” patents
meaningless
This did not comport with SCOTUS holdings that hold mechanical combination patents
to a more stringent standard
TSM test (pre-KSR)
o First found in ACS Hosp Sys. V. Montefiore Hosp.
o For an invention that combines old features or components in new and useful
ways: teaching of PA reference can be combined by the ct. or PTO to prove
obviousness only if there is some suggestion or incentive to do so.
o If the suggestion or motivation comes from the problem to be solved then
applying the test properly requires a showing that…
 An artisan of ordinary skill in the art at the time of invention, c
 Confronted by the same problems as the inventor, and
 With no knowledge of the claimed invention,
 Would have selected the various elements from the prior art and
combined them in the claimed manner.
o Where is the suggestion or motivation to be found?
-
 The PA (written down or implicit)
 In the amient or tacit knowledge in the art
 In the nature of the problem to be solved
o Need factual findings on nonobviousness to justify the determination and to
facilitate appellate review
Re-examined by SCOTUS in KSR v. Teleflex
o They said only obvious if some motivation or suggestion to combine the PA
teachings can be found in the PA, the nature of the problem, or the knowledge
of a POSA
o CAFC’s Ruiz case actually laid out a pretty broad TSM test – allowed explicit or
implicit suggestion
o PO says that the CAFC was trying to create a rule of evidence. They wanted
something to be able to review – they wanted lower courts to set out findings
for review
o But also the CAFC was not unified on its application of the TSM test prior to KSR
o Why not in accord? Well, if you have a rigid TSM test, then nothing is obvious
KSR v. Teleflex
- Teleflex sued KSR, patentee is Engelgau
- Claim is a mechanism for combining an electronic sensor with adjustable automobile
pedal so the pedal’s position transmitted to computer that controls the throttle
o Tele. Accused KSR of infringing by adding an electronic sensor to their ordinary
pedals
o KSR alleges Teleflex’s patent is invalid b/c obvious
- The art = pedal assembly
- Prior art:
o There were computer controlled pedals already, esp. one that taught that you
should put the sensor on the pedal assembly
o Another that taught you shouldn’t put the sensor on the footpad because the
wires would wear out
o And there were self-contained add-on “modular sensors” that you could add to
any computer-controlled car
 This Rixon patent known to suffer from wire chafing
- POSA = undergrad mech. engineering degree or equiv. work experience w/ pedal
controls systems
- KSR took a normal design and added a modular sensor
- USPTO rejected one of Teleflex’s claims b/c it was similar to but broader than claim 4.
That claim did not include the requirement that the sensor be placed on the pivot point
(to avoid chafing)
- dealt w/ gas pedals on automobiles; could come up or move back to accommodate
someone based on their height
-
-
-
And the gas pedal also has to adjust the amt. of pressure required to push the pedal
The patent Teleflex had wasn’t a retractable version of the pedal, it used electronic
sensors
Is this something that would be deemed non-obvious? The District ct. said it was
obvious
The Fed. Cir. Reversed, saying that TSM test did not indicate prior art
o Nature of the problem solved could not supply the motivation to combine refs.
From the prior art “unless the PA references addressed[ed] the precies problem
that the patentee was trying to solve.”
o Obvious to try does not = obvious under the law
o
So, the Supreme Ct. granted cert.
Held:
o Claim 4 of the Engelgau patent was obvious b/c there was little difference b/w
the claimed invention and the teachings of the Asano adjustable pedal with a
fixed pivot point combined with the Smith electronic sensor mounted on a
pedal’s support structure.
 At the time, market provided strong incentives to convert mechanical
pedals to electronic ones
 Market success of Engelgau’s invention (2ary factor) does not change the
obviousness analysis )
o They said, look at it a bit more common-sensically
o Don’t’ look at TSM so mechanically, sometimes the patent examiner or the court
might have their own common sense
 It’s a useful test, but not the only way to determine
 Analysis of obviousness need not seke out precise teachings directed to
the specific subject matter of the challenged claim.
 The analysis of obviousness need not seek out precise teachings directed
to the specific subject matter of the challeneged claim. Ct (PTO ) can take
account of the inferences and creative steps that a POSA would employ
 “A POSA is also a person of ordinary creativity, not an
automaton”
o And PHOSITA’s common sense might be at play here
o To challenge, might need to show why it was a difficult thing to do, others have
tried and failed
o Note that SCOTUS’s use of the phrase “combination of old elements” does not
necessarily mean “element” as a patent law term of art (i.e. limitation)
They say:
o For 50 years the Court held that a patent for combination… withdraws what is
already known into the field of its monopoly… diminishes resources available to
skillful men.
o “a combination of old elements is obvious if the combo does nomore than the
individual elements would do if used in equence, and if the old elements
-
-
-
perform functions they were already known to perform. From Anderosn’s-Black
Rock and Sakraida
o And if the claimed invention is an improvement of a PA (or a variation??) a court
must ask whether the improvement is more than the predictable use of prior
elements according to their established functions – p. 674
o They cite Adams the battery case
And they touch on Anderson’sBlack Rock
o Where combining a radiant-heat burner with a paving machine did not create a
new synergy. They did no more than sequential operations
And Sakraida
o Simply arranging elements with each performing the same function … it’s
obvious.
Their test:
o When a work is available in one field variations in the same field or a different
one where a POSA can implement a predictable variation, likely bars its
patentability under SS 103
o The court must ask whether the improvement is more than the predictable use
of prior art elements according to their established functions
o Often it will be necessary for the court to look to interrelated teachings of
multiple patents; the effects of demands known to the design community or
present in the marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine whether there
was an apparent reason to combine the known elements in the fashion claimed
by the patent at issue.
 And then you use these factors to determine whether there was “an
apparent reason” for combining existing items as the claimed invention
did
o Analysis of obviousness need not seek out precise finding. PTO can take account
of the inferences and creative steps that a POSA would enjoy
 Where did this come from? An FTC report, which showed that there were
too many obvious patents being granted patents
PO
o Combination of familiar elements, according to known methods, that does no
more than yield predictable results
o OR it claims a structure already known in the PA and does no more than
 Substitute one material or element for another known in the field And
produces a predictable results
Purpose of § 103 is to incentivize investment in risky, uncertain research
o Why?
The analysis should be made explicit. In re Kahn
o But the court need not say the precise teachings directed tow the specific
subject matter of the challenged claim
But Adams teaches that just b/c all elements were independently known in prior art,
doesn’t mean it’s obvious
-
-
And they say: it can be helpful to look to the reason that would’ve prompted a person of
ordinary skill to combine the elements
But helpful insights need not be rigid and mandatory formulas
o Cannot be confined by a formalistic conception of the TSM or overemphasis on
published article and explicit content of issued patents
Errors of the CAFC – they weren’t objective in its analytical framework
o Foreclose this reasoning by looking only the problem the patentee was trying to
solve
o They assumed POSA would only be led by those elements of prior art designed
to solve the same problem
 So they didn’t consider the Asano patent for constant ratio
o They assumed that if a new invention is “obvious to try” then it can’t be obvious
 This factor points to common sense
o They drew the wrong conclusion re: the risk of hindsight bias
SCOTUS reasons for being obvious
o There was a significant advantage to creating a constant ratio pedal and one that
used an electronic sensor
Notes:
o Supposed to focus on the objective breadth of the claim, not the subjective
motives of the inventor
o Also, the POSA is not an “automaton” – give credit to POSA that they could
connect the dots (i.e. easier to prove obviousness)
o Obvious to try:
 Prior CAFC law held that where the prior art makes a wide variety of
combinations “obvious to try”, none of the combinations are patentable
if most or all of them can reasonably be expected to work. Merck v.
Biocraft Labs
o There is still considerable question about what standard should be applied for
obviousness
 Clear and convincing or preponderance?
o Apparently the court also shifted the obviousness question from one of fact to
one of law
o We don’t want to give patents to obvious inventions b/c there’s no public
benefit for inventions that are obvious. We want to reward risk
o What happens to the TSM test?
 The CAFC didn’t just walk away from the test. They just tried to modify it
to be in compliance with KSR
Obvious to Try Standard
- Does not mean obvious, according to SCOTUS
- But the jurisprudence was always more complicated – not clear that KSR changed this
jurisprudence
- KSR said it was obvious IF:
o Obvious to try something
-
o AND the motivation to try b/c it came from design need, market pressure, or
regulatory pressure,
o AND there are a finite number of identified, predictable solutions AND
o One can anticipate success that actually materializes
The unpredictable arts – much harder for obvious
o You have to able to predict not only that you’ll get the gene, but every single
building block of the DNA you’ll get  else not obvious
Ex: In re Bell – entire protein sequence + method of cloning w/ high likelihood of
successfully cloning the DNA does not make it obvious
In re Deuel
o Portion of the sequence + method of cloning w/ high likelihood of success does
not make a DNA sequence obvious
UNTIL… (cases discussed on Wed.)
Also, if the PA makes a large # of combinations obvious to try AND likely to be functional
then the solutions are all obvious
Hindsight Bias
- People consistently exaggerate what could have been anticipated
- Basically, hindsight bias is a huge problem
- TSM test doesn’t work very well to combat hindsight bias
- Ortho McNeil Pharma v. Mylan Laboratories – March 31, 2008
o Patent on anticonvulsant drug. Mylan accused of infringement
o Held: b/c Dist. Ct. correctly ruled on claim construction, inequitable conduct,
obviousness and enablement, … Ct. affirms
o Patients part of experiment for diabetes, noticed a couple of people reported
epilepsy better under control
o Found that a chemical intermediate was very effective in controlling seizures
o Claim was written in a continuation of original disclosure
o Disclosure only disclosed intermediate in a way that was part of a very generic
chemical formula (lots of R’s in it = variables)
o The question is: is it objectively obvious ??
o Held: no. They say: TSM test is a guarantor of nonobviousness
o Also “objective indicia”
 Record shows powerful unexpected results
 Skepticism by POSA that the invention would work or should be pursued
 Copying
 Commercial results
 (these are secondary factors)
o Also there werent’ a ton of possibilities – POSA wouldn’t be likely to start w/ the
chemical compound, so not a small finite # of alternatives
Teaching Away
Arkie Lures v. Gene Larew Tackle (1997)
- Larew appeals from MSJ of Dist. Ct. for Western Dist. Of AR invalidating his patent
-
Larew set out to make a salty lure that would better keep fish on the line
Salt is ordinarily an undesirable additive to plastic. It weakens it and can cause
explosions in manufacturing
- Arkie lures copied it, and brought a declaratory judgment action
- Dist. Ct. granted MSJ for Arkie
- Prior art:
o Fishing fly w/ squirrel hair and yeast and salt baked in
o Plastic lure containing organic compound to attract fish
- Differences in PA
o Doesn’t work by odor, but b/c it keeps them on the bait longer
o And it retains its salty power for life
o Previously thought infeasible
o People thought the salt would ruin the lure’s texture
- Skill in the Art:
o High level of skepticism that the invention would work even by those w/ PhD’s
- Held:
o That nothing taught that invention. It counseled against it
- Dissent:
o Salt is miscible in plastic, and people already knew that
o This is likely a broader construction of prior art
o Also soluble != miscible
- Notes:
o Teaching away from the invention – counts in terms of nonobviousness analysis
o Suggestions can be implicit or explicit
o If the party trying to challenge the patent will be more likely to prevail if they can
show an “exogenous” reason the invention wasn’t patented
 So if you can show that something wasn’t patented b/c there was some
market force not to do so, say FDA approval, then that would work
against the patentee
o PO says teaching away is a good holding even after KSR
How do we take into account the differences in various fields?
Standards of Review
- Underlying factual inquirires (i.e., level of the skill in the art) are reviewed
o For clear error if CAFC hearing an appeal of a Dist ct. case
o For lack of substantial evidence if the CAFC is hearing an appeal from the BPAI
o Obviousness determination is reviewed de novo b/c obviousness is ultimately a
question of law
- Even though obviousness is reviewed de novo, the party challenging an issued patent
claim still has a clear and convincing evidence burden on the obviousness question (and
on all other q’s of patent validity, e.g., novelty and utility).
o Patents are “born valid” - § 282
- New prior art:
o “Product of new PA or other invalidty evidence not before the PTO… eliminate[s]
or at least reduce[s] the elemtn of deference due the PTO, thereby partially if
not wholly discharging the attacker’s burden.” American Hoist & Derrick Co.
o
Hybritech Inc. v. Monoclonal Antibodies, Inc.
-
-
-
Court relied on 2 secondary factors
Graham said utilized “… to give light to the circumstances surrounding the origin of the
claimed subject matter.”
“Objective evidence” … of nonobviousness = secondary factors a.k.a. objective indicia
The list:
o Long-felt, unmet need
o Trial and failure by others
 Comes from the parties - discovery
o Commercial success
 See: the analysis below
o Copying
o Licensing activity
o Unexpected results
 Sometimes teaching away
 Sometimes an unexpected property that no one would’ve expected
 E.g. Adams battery
o Other… (make up your own!)
When should 2ndary factors be considered? What role should they play? Which more
authoritative?
Notes about Hybritech
When you do nonobviousness analysis using POSA’s POV
Determine scope and content of the pertinent PA (In re Clay)
Determine the level of ordinary skill in the pertinent art.
o Consider: (illustrative, not exhaustive)
o Educational level of the inventor; -- PO says often not that crucial
 B/c we want objective analysis
o Education level of active workers in the field
 This is what you want to focus on more than the previous
o Type of problems encountered in the art;
o Prior art solutions to the problems;
o Rapidity of innovations in this art; and
o Sophistication of the technology
The CAFC didn’t like the § 103 analysis of the lower ct.
o Don’t ask whether the invention ‘would be’ obvious
o It’s ‘would have been’ obvious and ‘as a whole would have been obvious’
o
-
-
-
-
-
-
Environmental Designs Ltd v. Union Oil – (Fed. Cir. 1983)
- The court laid out a list of factors relevant to a determination of the level of skill in the
art:
o (1) education level of the inventor;
o (2) type of problems encountered in the art;
o (3) prior art solution to the problems;
o (4) rapidity with which innovations are made;
o (5) sophistication of the technology; and
o (6) education level of active workers in the field
Also, Judge Rich, says that there should be a nexus between the patent and secondary
considerations
o As well as the commercial success of the patentee and the patented product
Alco Standard
So, nonobviousness leads itself to several factual inquiries, but is ultimately a question
law, at least at the present day. Graham
o Justified b/c it allows quick resolution of patent validity without necessitating
that cases be remanded to the trial court
o But, the federal circuit gives deference to a lower court’s factual findings (as per
usual), but not its
Apparently the court underwent a shift after Graham?
o A fourth factor “objective evidence” (of nonobviousness) is now considered a
secondary factor
CAFC has elaborated on a “nexus” requirement, which requires that before secondary
considerations can be used to demonstrate nonobviousness, a showing must be made
that their appearance is attributable to the inventive characteristics of the discovery as
claimed in the patent.
o The “nexus” requirement means that there must be an actual connection
between the invention and the secondary factor. I.e. it must be relevant?
Analysis of why commercial success analysis is rubbish
o It relies on the fact that there was a race, that success was attributable to the
patented invention, that other firms failed b/c another firm was the first to
develop, that success was perceived before development
o Specifically, commercial success might have been due to some non-patented
feature – indeed economic analysis bears this out. It may be due to marketing
and perceived quality, not technological advances
o Also, they would’ve had to have perceived that the patented
What about simultaneous development?
o The federal circuit doesn’t buy this factor
 Maybe there was technology that got released
 But racing can be coincidence
 Implicates hindsight bias
 Could’ve taken a long time to develop, so doesn’t necessarily
show bias
o
IN Re Kubin
- Kubin, Goodwin appeal from decision from USPTO Board
- Rejecting claims of ‘859 app as obvious for lack of written desc.
- What’s patented:
o Isolation and sequencing of a human gene that encodes a particular domain of a
protein
o They claim polynucleotides that encode a protein known as the Natural Killer Cell
Activation Inducing Ligand (NAIL)
o So, they claim the genus that will bind to NK cells, and will cause the natural
killers on
o Why do they do this?
 There’s a binding portion of the protein that they disclose, and if they get
everything that can bind to the protein, then they will get commercial
value
- What does that mean?
o They play a major role in fighting tumors and viruses
o They say the NAIL protein binds w/ CD48, which increases cytotoxicity and
production of interferon
o They disclose 2 sequences of polynucleotides:
 (1) that codes for NAIL
 (2) codes for the full NAIL gene including upstream and downstream noncoding sequences
- The specification also “contemplates” variants of NAIL that have the same binding
properties w/ one insertion, deletion, or substitution
o They comprise from one to ten deletions, insertions or substitutions of amino
acid residues when compared to a native sequence
- PTO:
o You didn’t specify which members of the genus would actually bind to CD48
o This sort of information is normally known about protein binding sites
o Giving only two of the possible sequences in the genus and you don’t dell what
makes something into a CD48 binding site, then that’s not enabled
o You haven’t provided other examples of what will work
- So, they invadidate:
o Valantine patent – discloses the protein which is basically the same thing
 But doesn’t disclose the nucleotide sequence and no knowledge of the
protein sequence
 Sambrook had knowledge of a standard method of making the DNA
sequence, therefore a method of deducing the protein sequence
 Matthew – prior cloning of a ell surface protein gene from NK cells of
mice and determination that human NK cells possessed a similar gene
 PO says: yeah, so all these do add up to this thing

-
-
-
High ex ante likelihood that standard methods could, in fact, be used to
obtain the gene of interest and deduce the protein sequence
 And Motivation to try to clone NAIL b/c of POSA’s prior knowledge of its
important role in the human immune response
 Also note, there’s no knowledge of the underling specific DNA or protein
sequence in humans!!
 So even though we’re talking about the exact sequence of DNA,
apparently having the mouse DNA known is enough
o Under KSR
 High likelihood of success, combination of elements, etc. they’re all here,
so it’s obvious kachoWW!!
 Essentially invalidates Deuel and Bell

What’s the relationship of making the gene vs. the obviousness of the gene sequence
o Even though Kubin disclosed a different way of making the gene,
o That doesn’t go to the question of whether having any known process previously
disclosed, etc. That can make the sequence obvious
But their specification doesn’t include any example variants of NAIL that make these
amino acid substitutions
The board rejected under 112 and 103 – they found claim 73 unsupported by an
adequate written desc.
o B/c they hadn’t disclosed any variant species w/ the amino acid substitutions
The Board also rejected on obviousness grounds
o They found the claims to be cumulative of 3 other patents
Rader says:
o The Board missed the point. They should’ve been looking at whether or not the
gene sequence was obvious, not whether or not the combination of the
inventions would produce the desired result
o
o Instead, Kubin’s claim of a library of sequences is deficient b/c they rely on
standard methods outlined in another patent (Sambrook) while at the same time
they say their invention is not obvious
o They also say that In re Deuel means that “obvious to try” does not mean
obvious in the unpredictable arts, at least. But that KSR casts doubt on Deuel
 Remember that Deuel said that you have know every portion of the DNA
sequence (can’t just know a portion of it w/ a high likelihood of success) –
ergo, obvious to try != obvious b/c there are 100’s of k’s of sequences
Obvious to try analysis:
o They say the rejection of “obvious to try” resurrects CAFC’s analysis in O’Farrell,
which cautioned that “obvious to try” is an incantation whose meaning is often
misunderstood:
 But that, an invention that would have been obvious under 103 would
have been obvious to try
 Presumably the reverse doesn’t hold
-
-
-
o Under O’Farrell, the CAFC outlined two classes of situations where “obvious to
try” is erroneously equated w/ obviousness
o (1)
 Varying parameters or to try each of numerous possible choices until one
possibly arrived at a successful result where the prior art gave no
indication of which parameters or no direction
 I.e. throwing darts != obvious to try
 The inverse of this is KSR, where an artisan pursues “known options”
from a “finite number of identified, predictable solutions”
o (2)
 It’s not obvious where what was “obvious to try” was to explore a new
technology or general approach that seemed to be a promising field of
experimentation, where the prior at gave only general guidance as to the
particular form of the claimed invention or how to achieve it
Again, because they cite to the manual for Valiante, the second nor first classes apply,
so it was obvious to try and was therefore obvious
o Citing KSR, the invention is the product not of innovation, but ordinary skill and
common sense
CAFC also says that KSR does not just apply to the predictable arts, but to unpredictable
as well
o So this is predictable according to the court
o Apparently the court used the wrong metaphor, small molecule chemistry,
And there was a market-driven reason for achieving and expecting success
PO: obvious to try, high likelihood of success, used known and common methods
produced an obvious DNA and protein sequence
Essentially invalidates Deuel and Bell
Bell not as clearly, but if we have the whole protein sequence, then there are so many
well-known ways, then it invalidates it as well
In this case, obvious to try = obvious!
Standards of Review
- factual inquiries reviewed for clear error if a Dist. Ct. case
- For lack of substantial evidence if BPAI
-
obviousness determination is reviewed w/o deference b/c obviousness is ultimately a
question of law
Even though obviousness is reviewed de novo, the party challenging an issued patent
still has a clear and convincing evidence burden on the obviousness question (and on all
other q’s of patent validity, e.g., novelty and utility) on an issued patent
o Patens are “born valid” – presumption of validity § 282
-
What if the challenge is based on PA that was not before the PTO when the application
was issued?
o The CAFC has held: “production of new PA or other invalidating evidence not
before the PTO.. eliminates[s], or at least reduces the elemnt of deference due
the PTO, thereby partially if not wholly discharging the attacker’s burden.”
 American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350
 This question ducked in KSR
D. The Scope and Content of Prior Art
-
Steps:
o (1) decide whether a reference may be considered “prior art” for purposes of
103
o (2) determine whether the reference is part of the pertinent prior art – whether
it is part of the art wto which the invention pertains
In re Winslow – Judge Rich – C.C.P.A., 1966
- Winslow figured out how to take a stack of plastic bags and open the topmost bag in the
stack to fill it
- He used an air jet to open the top bag, held the bags in place w/ a flap on one side of
each bag’s opening
- Flap had one or more hold and rods passed through the holes
- Flap was perforated so it could be torn away after the bag was filled
- PTO
o Rejected claims for opening and filling bags, citing three primary references,
Gerbe, Hellman, and Rhoades
- Gerbe patent disclosed bag filling machine opens bag w/ jet of air
o Used a clamp to hold one side of bags
o Held the bags only by friction, so the bags could blow away
- Hellman used air-blast packaging in which envelopes are hung vertically from a rod
running through the flaps
- Rod is tipped at a slight angle from the horizontal, air blast opens the envelope at the
bottom of the rod, item dropped in, weight of the item tears the envelope free
o Was designed for heavy piston rings, so easy to do the tearing, requires gravity
to tear
-
-
-
The Rhoades patent hangs paper bags from a pin, but they have a crescent cutout so the
pin only pierces one side of the bag, but leaves a cut
Holding:
o It’s still obvious
o If you imagine the POSA inventor working in his workshop with the prior art
references, which he is presumed to know, hanging around him that combining
the three patents would result in the new invention
o POSA knows ALL of the PERTINENT prior art references!!
Smith, J. Dissenting:
o He argues that it’s not so simple to do what Winslow did.
o And that b/c it’s simple technology, the majority was biased
o Goes to show that great minds can differ over nonobviousness
Notes:
o Law does not assume knowledge of all art, but of all pertinent prior art
o Second, the knowledge isn’t about the inventor’s knowledge, but about POSA
 This keeps things objective, not subjective
o With these qualifications, Winslow is good law
Prior Art For the Purposes of Section 103
- Prior art is not limited to the contents of Sec. 102
- So, it’s a bit ambiguous
Hazeltine Research v. Brenner – SCOTUS - 1965
- I: whether an application for patent pending in the PTO at the time a second app. Is filed
constitutes “prior art”
- Regis filed an app. For an improvement on a microwave switch, was denied
o B/c not new or unobvious
o Joint effect of patents by one Carlson and Wallace
o Wallace application was pending when the Regis app. Was filed
- Petitioners argue that Prior art is only what is known, citing the reference to the drafting
history of 102
- H: secret prior art is still prior art. We can’t allow patenting for inventions that aren’t
really patentable
o They uphold a previous case, Milburn
Notes:
- Some countries use secret prior art for anticipation, but not for nonobviousness analysis
-
You can’t anticipate your own work, but if the inventive entity changes, then
anticipation becomes an issue
o There is an exception where a sole inventor discloses something and then joins
up with another to makean invention – no anticipate. In re Land & Rogers
o Though you have to prove that the joint entity was responsible for the work
disclosed in the earlier application
o There’s a further exception to 103(C) that states that you can’t have stuff used in
obviousness analysis when it’s assigned to or owned by the same entity – so
companies can’t compete with themselves, effectively
In re Bass – C.C.P.A. 1973
- Inventors Bass, Jenkins, Horvat, created vacuum system for use on a textile processing
machine known as a “carding machine”
- In ruling it obvious, the court relied on two patents
o One issued to Jenkins in ‘67
o And one to Bass and Horvat in ’67 (filed in ’65 and ’65 respectively)
- B/J/H filed their application in ’65, several months after the filing of the other apps, so
the art could qualify as prior art
- However, they showed that their date of conception and reduction to practice were
before the Jenkins and B/H filing dates
- So, the issue is whether prior art under 102 can be also considered in an obviousness
consideration under 103
- The court holds that it can
- It also finds for the inventors in this case b/c one of the pieces of prior art was found to
be developed simultaneously with the invention in question
- This analysis applies only to what’s claimed in patent applications
o Sun Studs v. ATA Equip. Leasing – p. 742
o You can’t backdate disclosures – only claims
Statutory bars of Sec. 102
In re Foster
- Foster filed a patent application covering new synthetic rubber compounds on Aug. 21
‘56
- Established his date of invention was prior to Dec. 26, 1952
- Claims rejected as unpatentable b/c an article by Binder published in Aug. ‘54
- So, this would be prior art under 102(b) , which requires 1 yr. prior, but Sec. 103 says the
prior art is at the time of invention
- So, do we get to include this as prior art or not?
- Foster contends only Sec. 103 applies, not 102
-
-
It’s not very clear whether the patent was rejected on 102 or 103 grounds
The court first concludes that the Binder article didn’t fully anticipate, so we have to
look at nonobviousness grounds
So they hold that because it’s against public policy to allow patenting something that’s
been disclosed 1 yr. prior to filing. So the language in Sec. 103 effectively reads wrong,
as it should be thought of at the time of filing, not the time of invention
They say it doesn’t have any effect on 103 when a statutory time-bar is not involved!!
o So for other nonobviousness analysis, you do look to the time of invention
They say whether there has been a loss of a right to patent is statutory, not based on
obviousness in this case
Notes:
o 102(b) references can be incorporated together, but Foster does not hold that it
can be combined with (e), (f) and (g) references
o But courts apparently have held that 102(b) references qualify as prior art under
103
Nonanalagous Arts Exception for Nonobviousness
- While all references are included for 102 analysis, the same isn’t true of 103
- References aren’t considered if they pertain to “nonanalagous art”
In re Clay- Fed. Cir. 1992
- Clay appeals ruling by the PTO
- Affirmed rejection of claims 1-11 and 13 as being unpatentable under 103
- Clay worked for Marathon Oil, developed a process for storing refined liquid
hydrocarbon product in a storage tank having a dead volume between the tank bottom
and its outlet port
o Process involves preparing a gelation solution which gels asfter it is placed in the
tank’s dead volume – the gel can be easily removed by adding a degrading agent
- PA
o Hetherington patent, an apparatus for displacing dead space liquid using
impervious bladders and Sydansk patent, also assigned to Marathon, which
discloses a process for reducing the permeability of hydrocarbon-bearing
formations and thus improving oil production using a similar gel
- So, of course they have to look to the prior art and what is exactly constitutes prior art
- The test: whether the art is analogous or not or whether the art is “too remote to be
treated as prior art”
- They say that the Sydansk patent isn’t prior art because
-
o Even though it involves petroleum, it involved using gel to get oil in underground
formations to flow and under extreme conditions – not the same as filling an oil
tank
They note that if an invention has the same purpose as the patent in question, it can still
be prior art, but here we’re dealing with oil flow vs. storage, essentially.
Patent litigation
- The party accused says:
o Your claims are invalid or unenforceable
o
Patent misuse
o Inequitable conduct
- We didn’t’ do it! (argues that he / she does not infringe)
Validity Issues
- Your relevant claims are invalid if
o – 101
 not patentable subject matter, not useful
o 10
 not novel
 barred
o – 103
 Claims obvious
o 112
 claims not properly enabled or described
 claims indefinite or otherwise do not meet something or other
Infringement overview
- Literal equivalents
o What would infringe before would literally infringe after
o 35 U.S.C. § 271
 Whoever makes, uses, offers to sell, or sells any patented invention
within the United States or imports in to the United States any patented
invention during the term of the patent therefore, infringes the patent
o
o Doctrine of equivalents
- Indirect infringement
o Inducement to infringe – 35 U.S.C. § 271
o Contributory infringement: 35 usc § 271
Direct Infringement Analysis - § 271 continued
-
(1) Interpret the claim
(2) Literal infringement – determine whether all elements of the claim read on the
accused device or process
(3) if (2) is no, is there infringement under doctrine of equivalents (DOE)
Interpreting Claims
-
-
-
-
Should be interpreted in accordance with ordinary dictionary meaning
o But apparently there’s quite a battle in the Federal Circuit about this
Should look at:
Claim
Written description
Drawings
Prosecution history – these are all intrinsic evidence
Extrinsic evidence:
o Dictionary
o Practice manuals and textbooks
o Expert testimony
Why do we have claims?
o Claims should give notice to potential infringers
o Uniformity of claim interpretation
 For the same patent in different jurisdictions
 Across different patents in related fields
Fairness (this inventor and others)
o What scope of right does this inventor deserve given her contribution to
knowledge?
Markman
o “it has long been understood that a patent must describe the exact scope of an
invention and its manufacture to secure [to the patentee] all to which he is
entitled [and] to apprise the public of what is still open to them.’” Quoting
McClain v. Ortmayer
o Markman held the patent for an inventory control and reporting system that
could monitor and report the status, location and movement of clothing in a dry
cleaning establishment
 It’s a product patent b/c it’s a product patent!!!!!!!!!
 System = PRODUCT PATENT, machine or device of some sort
o Claim at issue stated that the Markman device would “maintain an inventory
total” and “detect and locate spurious additions to the inventory.”
o Markman sued Wesstview and others for contributory infringement. Westview
made a machine that recorded inventory #’s
o At trial, Westview argued its device didn’t infringe b/c it only tracked the $$
 Whereas Markman did both $$ and the physical location of the clothing
o So the trial centered around the definition of “inventory”
o Dist. Ct. gave JMOL to Westview
o Held: claim construction is a matter of law for the court to decide! A patentee or
accused infringer has a right to a jury trial under the 7th Amendment, but that
right does not include a right to have the jury decide every issue
o The court gave a # of reasons for this:
 Why? Judges are uniquely trained for and experienced in this
 Howver, they also recognized that experts are often required to help the
ct. understandt he technology and the meaning of technical language in
claims does not mean that claim construction is a matter of fact
 Allocating claim construction to judges will promote uniformity in claim
construction
 This really hasn’t been the case
 Now we have Markman hearings
o If the judge doesn’t do the claim construction theory right at the beginning, then
you have to try and lit. some of the claim construction issues under two different
theories of the claim construction
 Also might not know what to ask for in discovery if you have different
theories
- READ the RADER opinion in FAS!!! TODO!!
- Some judges like to have late Markman hearings. Why?
o Why? They want to learn about the tech. before they do the claim construction
o Or, you could have late Markman hearings to bleed your client or opposition out
of $$
After Markman
- Fromson, CAFC ‘97
o Expert evidence showed the meaning “anodization” was more nuanced than the
stated dictionary definition of the process. Enhanced understanding came from
expert guidance as to the finer points of the technology at issue
- Pitney Bowes, CAFC 1999
o Precedent does not prohibit our court from examining extrinsic evidence
Phillips v. AWH Corporation
-
-
-
-
-
-
Phillips invented modular steel-shell panels that can be welded together to form
vandalism-resistant walls
I: how should the court go about claim interpretation?
o 7 questions briefed:
o What evidence should be valuated?
o In what order or with what weight should each typed of evidence be evaluated?
o What role should the spec. play in the court’s claimconstruction?
o What role should prosecution history play?
o What role should dictionaries play?
Useful in prisons, obtained a patent
IN Feb. ’97 Phillips brought suit in Dist. Ct. for the Dist. Of CO
Court focused on the language of claim 1, “further means disposed inside the shell for
increasing its load bearing capacity comprising internal steel baffles extending inwardly
from the steel shell walls.”
o Court interpreted the language as “a means… for performing a specified
function”
o I.e. it was a MPF claim
o § 112 ¶ 6
The court decided that under this interpretation that Phillips could not prove
infringement, so he lost on MSJ
The court notes that the term “means” is used, but…
o “internal steel baffles” are being used as a structure that performs the recited
function of increasing the shell’s load-bearing capacity
o The reference to “baffles” does not use the word “means”
o And the court has held that the absence of the term “means” creates a
rebuttable presumption that § 112 p. 6 does not apply
They further hold:
o Means-plus-function claiming applies only to purely functional limitations that
do not provide the structure that performs the recited function
o And because the baffles “extend[] inwardly” they are structures
The court then moves on to determine the correct construction of the structural term
“baffles”
o Why did the CAFC say it’s not a MPF element?
o “a further means for” is the language in the claim. Normally this creates a
rebuttable presumption the element is MPF. Here it’s not. Why? It says “internal
steel baffles.” This is structural language
Why does the MPF matter?
o B/c if baffles are MPF, the embodiments all had acute or obtuse angles
-
-
-
o So if you’d interpreted it as MPF, then the baffles that were actually disclosed
would be at obtuse and acute b/c you’re limited to the embodiments
 You want to put in as many embodiments as possible
 You do get get equivalents in MPF, as well (112 ¶ 6)
The Fed. Cir construes MPF by looking at the elements, not the claim. This is stupid,
probably.
o This might be on the exam! Step Plus Function!!!
o Don’t’ forget an element can be a MPF or SPF if all it does is recite a function
without anything structural.
o Means can signal something is MPF
Claim terms re generally given their “ordinary and customary meaning.” But for the
CAFC, “ordinary and customary” is a term of art.
o It’s the meaning the term would have to POSA at the time the invention was
made
o POSA is deemed to comprehend the term “in the context of the entire patent”
Principles:
o “the claims of a patent define the invention to which the patentee is entitled the
right to exclude.”
o Because the patentee is required to “define precisely what his invention is,” the
Court explained it is “unjust to the public, as well as an evasion of the law, to
construe it in a manner different from the plain import of its terms.”
o And the terms in the claim are generally given their ordinary and customary
meaning – and that to a person of ordinary skill in the art in question at the time
of the invention
o But POSA is deemed to read the claim term not only in the context of the
particular claim in which the disputed term appears, but in the context of the
entire patent, including the specification
o When language is used idiosyncratically, the court looks to sources available to
the public that show what a POSA would have understood disputed claim
language to mean
o They say the spec. is the single best tool for interpreting the claims
o The court should also consider the patent’s prosecution history if it’s in evidence
 Consists of the complete record of proceedings before the PTO and
includes the prior art cited during the examination of the patent
o Claim termsa re generally given their “ordinary and customary meaning.” But for
the CAFC, “ordinary anc customary” is a term of art.
 Means the meaning that the terms would have to POSA at the time the
invention was made!! [PO is not sure this is correct]
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o
o
o
o
o
o
o
She thinks it should be at the time of the infringement
Also, POSA is deemed to comprehend the term “in the context of the
entire patent”
 For interpretive aid, the court looks at sources of info available to the
public.
 Needs aid b /c:
o Terms may have distinctive meaning or
o Patentees may use terms “idiosyncratically”
 Public sources include:
o Intrinsic and Extrinsic
Claims must be read in view of the specification but the court should not import
limitations (elements) from the spec into the claims
If it was a MPF and it only saw acute + obtuse, it would still have to ask about
equivalents
And extrinsic evidence is allowed:
 Expert testimony, dictionaries, and learned treatises
 Less significant than the “intrinsic record”
What are other reasons that the spec. is the best interpretive guide?
 Ptee can be her own lexicographer
 PTO doctrines, a/a “no antecedent basis” mean that the spec should
contain claim language in a clarifying context.
 The spec may disclaim certain meanings of the word
 Context, such as the purpose of the invention, is found in the spec.
 Intrinsic record must be consulted to determine which if any dict. Term is
appropriate
 (all this really points to the canons of analysis below)
Reasons that extrinsic evidence is or is not great:
 Not generated as part of lit. and therefore “disinterested” sources of info
“objective”
 Courts will be less likely to read limitations into the spec
Courts not barred from any extrinsic meaning as long as it doesn’t contradict any
unambiguous meaning in the intrinsic evidence
Reasoning:
 b/c ther were claims specifically directed to baffles that stop bullets, the
most general claim should not be so restricted or the other, dependent
claims, would be redundant. Canon of claim differentiation

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Here, the meaning of baffles was unambiguous so the court does not use
the interpretive canon that recommends construing language narrowly to
save validity.
The court then goes on to set aside Texas Digital Systems, which emphasized using trade
dictionaries
o Why did that court decide that way? Uniformity
o But it’s counter to the way patent law has been practiced for > 100 yrs.
o Because you can be your own lexicographer
So, the court goes through and analyzes the claim and description language
o One of the claims states the baffles should be at angles for deflecting projectiles
o Others state that the baffles can be filled with
o The basically construe the claims so as not to be redundant and then they find
that his claim for infringement should be reversed and remanded
Notes:
o § 112 p. 6 says an element in a claim for a combination may be expressed as a
means or step for performing a specified function w/o recital of structure,
material, or acts in support thereof and shall be construed to cover the
corresponding structure, material, or acts describe in the spec. and equivalents
thereof
o The author notes that the court essentially read the claims to be broader than
they were by reading a broad definition of baffles that weren’t in the claims
 This is the opposite approach taken in Lizardtech
Notes on Canons of Construction
- When two constructions are possible, choose the one that preserves the validity of the
patent
o Rhine v. Casio – this canon has a long pedigree
o Now said to be a last resort, not a first principle by the Fed. Cir.
- Ordinary v. contextual meaning
o Claims are supposed to be read with their ordinary meaning, but it’s in the light
of POSA, so that’s contextual
- Contextual Meaning may trump Ordinary Meaning
o Big dispute in Nystrom v. TREX
o Over the word “board” – initially MSJ for D’s,
o Fed. Cir said board means a piece of wood
- The “Lexicographer” rule
o Ordinarily courts say that patentees are free to define claim terms as they wish,
but sometimes the words are still ambiguous
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o Jack Guttman v. Kopykake
 System for printing an image on an edible sheet, which then could be
placed ont a take for decoration
 The competing tech. used a scanner w/ inkjet printer
 The patent in question said “photocopy machine”:
 Scanning and an image reproducer need not be in the same
housing…
o Kopykake argued that the definition meant a photocopier with scanning and
printing components in separate housings. The court disagreed
Disclaimer of subject Matter
o Patentee’ statements in the spec. Or more commonly in the prosecution history
may limit or disclaim apparently broad claim language
o Cultor Corp. v. A.E. Staley Mfg. – Cultor was ad ispute over patent on improved
process for making “water-soluble polydextrose” a flour and sugar substitute
o The spec stated:
 “water-soluble polydextrose” … specifically refers to the water-soluble
polydextrose prepared by melting and heating dextrose… preferably with
about 5-15% by weight of sorbitol present in... of citric acid
 The court held that the spec. limited the WSPD to that prepared in the
presence of citric acid
Claim Differentiation: Contextual meaning From Other Claims
o Patent law version of principle requiring written instrument to be interpreted so
as not to render some language mere surplusage
Purpose or goal of the invention
o 3M had a series of patents related to resin-based orthopedic casting systems,
which replaced plaster casts
o Several claims required bandages for forming cast to include a “lubricant”
o Some chemicals identified in the spec. as effective lubricants had been used in
prior art bandages
 D argued claims were anticipated therefore invalid
o 3M found a way of using the lubricant to create a slippery surface –previously
not done
o Court looked to the purpose of the invention:
 To produce a non-sticky resin to permit smoothing and forming of the
casting tapes overcoming the “tacky resin problem in the prior art”
Unique Concepts Inc v. Brown – Fed Cir. 1991
- UC sued Brown for infringement on patent on a frame for hanging fabric
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Brown defended that UC’s patent claims required “right angle corner pieces” and
Brown’s products included no corner pieces preformed at a right angle, but did include 2
pieces that were mitered to be placed together to form a right angle
Dist ct. held that the mitered pieces even though they could be used to create a corner
piece did not meet the language “right angle corner border pieces” either literally or
under the doctrine of equivalents
o Fed Cir. Affirms
Claim is for “assembly of border pieces” consisting of “right angle corner border pieces”
and “linear border pieces”
In reviewing the claims, claim construction is an issue of law, reviewed de novo
They examine the claims, spec. and the prosecution history
The spec says that corner pieces can be mitered, but a preformed piece would be easier
for a do-it-yourselfer to work with
Also, cancelled claims included those for mitered corner pieces
Rich, J. Dissenting:
o He notes the spec outlines mitered corner pieces
o And basically rips the majority a new one
Markman Notes
- “Markman” hearings – a hearing held by a trial judge to decide the meaning of any
disputed matter of claim interpretation
- Typically occur prior to trial b/c the trial court’s view on the meaning of claims is needed
for determining what evidence to introduce at trial and how best to show infringement
- They’re not required by the decision itself, however.
o Because they generally occur before trial, they tend to isolate claim
interpretation from other issues like nonobviousness
- Markman decided that the jury would have no role in claim interpretation
o It didn’t allocate decide the proper allocation between appellate t., trial ct. and
agency
o Most Fed. Cir. Cases they decide the claim interpretations de novo
Cybor Corp. v. FAS Technologies – Fed. Cir. 1998 (en banc)
- Cybor brought declaratory judgment that it was not infringing on FAS’s patent on a
pump;
- I: what standard of review should be used to review claims?
- FAS counterclaimed for infringement. Tried before a jury, Dist. Ct. interpreted FAS’s
patent claims in charging the jury
- Jury found FAS’s claims were valid and infringed
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Cybor argued Dist. Ct. erred in construing the claims
They start off by saying Markman means they decide claim construction de novo on
appeal
Apparently in some cases, courts have been following a “clearly erroneous” standard for
reviewing patent claims
Rader dissent:
o We should defer more to Dist. Ct.’s
o They’re closer to the issues
Also note: PTO stuff reviewed de novo and with deference
Phillips v. AWH Corp.
- The CAFC asked the parties to brief the court on whether it is appropriate for this court
to accord any deference to any aspect of trial court claim construction rulings
o They ducked the issue
- But Mayer, Newman JJ. Dissent
o They say some degree of deference should be paid to the district courts
Warner-Jenkinson co. v. Hilton Davis Chemical Co.
- Graver Tank – laid out the doctrine of equivalents – a product or process that does not
literally infringe can be found to infringe if there is “equivalence” between the elements
of the accused product or process and the claimed elements of the patented invention
- I: proper scope of DOE
- Patent at issue:
o A patent for the purification of dye through a membrane having a certain
diameter and at a certain pressure
o The inventors added the phrase ‘at a PH from 6.0 to 9.0” during prosecution
o This was done to avoid infringing on the “Booth” patent
- Hilton Davis sues, b/c they have the “Booth” patent, and win on DOE
- CAFC affirms ( but they’re divided)
- Test for DOE:
o Whether the substituted element makes the DOE inapplicable; or conversely
whether under the circumstances, the change as so insubstantial that the tiral
court’s invocation of DOE was justified…
o What constitutes equivalency must be determined against the context of the
patent, the prior art, and the particular circumstances of the case. Equivalence in
the patent law, is not the prisoner of a formula and is not an absolute to be
considered in a vacuum. It does not require complete identity for every purpose
and in every respect. In determining equivalents, things equal to the same thing
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may not be equal to each other, and by the same token, things for most
purposes different may sometimes be equivalents. Consideration must be given
to the purpose for which an ingredient is used in a patent, the qualities it has
when combined with the other ingredients, and the function which it is intended
to perform. An important factor is whether persons reasonably skilled in the art
would have known of the interchangeability of an ingredient not contained in
the patent with the one that was.
The accused device or process must be more than “equivalent overall…”
The court also noted that prosecution history, in this case the fact that the PTO made
Warner-Jenkinson change their app w/ the limitation can be read into the DOE analysis
Certain reasons for a claim amendment ma avoid the application of prosecution history
estoppels is not tantamount to holding that the absence of a reason for an amendment
may similarly avoid such an estoppels
o Burden should be on the patent hold to establish the reason for an amendment
required during the patent prosecution. The court then would decide whether
the reason is sufficient to overcome prosecution history estoppels as a bar to
application of the DOE to the element added by that amendment.
The DOE’s purpose is not limited just to thwarting piracy and unscrupulous copying
o The Court argues for a broader interpretation of the doctrine
And finally, the court dismisses the notion that DOE should be limited to equivalents
that are disclosed within the patent itself.
Then the court talks about the “triple identity test” vs. the “insubstantial difference”
test
Notes:
o Infringement is about the comparison between the accused product and the
patentee’s claims, not the accused product and the patentee’s product
o DOE uses the “all elements test” that is, when considering all elements in the
claim, there must be equivalence
o Warner-Jenkins creates a presumption in favor of prosecution history estoppel
for all unexplained amendments, thereby barring DOE
Festo Corp. v. Shoketsu Kzoku Kogoyo Kabushiki Co.
- Festo had a patent on some sort of cylinder-piston combo
- They had amended their claim b/c the PTO said they had to
- Their patent disclosed making the piston out of a magnetizable alloy and that it had to
have a pair of sealing rings
o SMC, the Japanese corp. used one sealing ring and made their product out of
o They had to amend the filings w/ additional prior art and to fix some other issues
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I: is Festo estopped from bringing a suit under DOE?
o I.e. do all sorts of amendments all automatically create prosecution history
estoppel?
 B/c Warner-Jenkinson was about an amendment that read on the prior
art
o In this case, one of the rejections dealt w/ § 125 being multiply dependent and
another due to the claim lacking definiteness
H: no, they’re not, but we need to look at why they had to amend their claims
o Burden’s on the patentee to show that they didn’t surrender the thing in
question
o Any claim-narrowng amendment may give rise to PHE, including amendments
made in response to § 112 rejections
 Courts must take context-specific look at the reason for the amendment
and the type of the amendment made in each case
 Need to look at what was given up
Issue 2:
o If a claim amendment creates PHE, then what range of equivalents, if any, is
available for the claim element so amended?
 Some CAFC judges wanted to say that once a claim has been amended,
the amended element must be held to its literal meaning. The amended
element, or perhaps the entire claim, would have NO equivalents
 This would be PHE as a complete, inflexible bar to DOE
Holding2:
o Amendment does not create a complete bar.
 By narrowing the claim, the inventor is deemed to concede that the
patent does not extend as far as the original claim. “
 It does not follow however, that the amended claim becomes so perfect
in its description that no one could devise an equivalent.”
Held3:
o Patentee bears the burden of showing that she did not surrender a particular
equivalent (so if you’ve amended, you have the burden to show you didn’t give
up that particular equivalent as a matter of PHE)
Estopping prosecution is applied only when claims have been amended for a limited set
of reasons, such as to avoid prior art, otherwise address a specific concern such as
obviousness
Notes:
o Any amendment may give rise to estoppels, but the court has to look at it to see
if there’s actual estoppels
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o One exception is when the equivalent couldn’t have been foreseen. Usually you
get DOE protection even if you’ve amended
Comparing W-J to Festo
o W-J: estoppel arises when the amendment was for a substantial reason related
to patentability
o Festo: “.. a narrowing amendment made to satisfy any requirement of the patent
art may give rise to PHE”
o Emhasis: reason for DoE is the inexactitude of language – sometimes you can’t
write the claim to capture the essence of all the equivalents you did invent
o But PHE is there as part of a public notice function
o Narrowing a claim means surrendering subject matter.
o Gives rise to the question: what counts as narrowing
Narrowing does not relinquish equivalents that…
o Were unforeseeable at the time the amendment was written;
o Were beyond a fair interpretation of what was surrendered
o Have only a peripheral / tangential relation to the reason for the amendment (
no one is quite sure what will count in this amendment)
“The patentee must show that 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 To which POSA is the Ct. referring here?
o Inventor or claim drafter or some fictional combination?
PO says:
o If you could’ve claimed something obvious but you didn’t, you’ve probably given
it up to the public
Remember: literal infringement is judged as of the date of the alleged infringement
o But we construe the claim as of the date of invention (usually the filing date)
o Note that enablement is judged as of the first effective filing date; thus, the
inventor can enable a claim that covers later-developed technologies
DoE is also judged as of the date of alleged infringement
o However, in understanding whether something canb e an equivalent we look
to…
 The Prosecution History (claim construction and PHE)
 Whether a claim covers the accused equivalent could have been written
as of the date of filing (both Festo and Wilson require this, but for
different reasons).
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Wilson: something cannot be an equivalent as of the date of
alleged infringement if a literal claim that covered the equivalent
would have read on the PA as of the date of filing!
I.e. you can’t get by DoE something you couldn’t have gotten w/o
DoE
The Statutory Exception for Experimental Use and Indirect
Infringement
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Overall structure of § 721:
o (a) ordinary infringement
 without authority makes, uses, offers to sell, or sells any patented
invention or imports … infringes the patent.
 Strict liability – no intent
 Note: you don’t have to be engaged in a commercial activity
o (b) inducement
o © contributory
o (d) enforcement not misuse or trying
o (e)(1) safe harbor; (e)(2) orange book
o (f) supplying componenets in or from the US
o (g) importing a product that was made by an infringing process outside of the
U.S.
Infringement Exemption
o Alleged infringer must plead and prove them
o Should not be confused w/ experimental use as an alternative to public use in §
102(b) analysis
o Common law exception:
 Whitemore v. Cutler
 Exception merely for philosophical experiments, or for the purpose of
ascertaining the sufficiency of the machine to produce its described
effects
o Up until the ‘90’s, very few cases on the common law exception
o Pitcairn v. United States, Roche Prods., Inc. v. Bolar Pharm. Co. (Fed. Cir. 1984)
 Pitcairn held that testing helicopters was used for a business purpose, no
exception
 Roche – D was maker of generic drugs, used patented drug to do
experiments to prepare its submissions, so Bolar did some experiments
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and in order to get a generic, you need a functional equivalent, so you’ve
gotta do testing
 The FDA’s rules almost required infringement
 So Bolar argues they should get experimental use exception
 Contrary to Congress’s intent
o In response, Congress passes hatch-Waxman
o Madey v.Duke Univ.
 First application of the research exemption doctrine to a non-profit
institution
 Physicist invents lasers at Stanford, Duke hires him, they had a parting of
ways, Duke continued using patented lasers against Prof’s wishes.
 CAFC said no go. : cognizable and insubstantial commercial purposes”
and Universities are in the business of research
 ON remand, ct. looked for “solely for amusement, to satisfy idle curiosity,
or for strictly philosophical inquiry”
 Under common law, an infringing activity has a definite, cognizable and
not insubstantial commercial purpose if it either:
 Has the slightest commercial implication;” or
 “is in keeping with the illegitimate business of the alleged
infringer.”
 Doing research with the patented invention probably not exempt.
The statutory exception - § 271(e)(1)
o Shall not be an act of infringement … a patented invention .. solely for sues
reasonably related to the development and submission of information under a
Federal law which regulates the manufacture, use or sale of drugs or veterinary
biological products.
Immunized tests not only of drugs, but also of medical devices, provided tests are used
to generate information for FDA regulatory activities
o Eli Lilly & co. v. Medtronic
Applies to any patented invention and that immunity is conferred to research
generating information for submission under a Federal law some part of which
regulates drugs
o Any part of the Food, Drug, and Cosmetics Act even if the particular provision
relates to medical devices b/c some provisions of the Act regulate drugs
o Intermedics Inc. v. Ventritex – doing experimentation on patented devices to
make their own. And the court says it’s OK, as long as it’s reasonably related to
submission to the FDA
 Also implicates clinical activities, and marketing and funding activities
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o Merck v. Integra
 Pre-clinical Activities are covered – they hadn’t done animal studies yet.
Also available in “pre-clinical” tests – to discover a new drug
o However, doesn’t categorically exclude experimentation on drugs that are not
ultimately subject to FDA submission or use of patented compounds in
experiments that are ultimately not submitted to the FDA
o CAFC says Congress exempted all patented compounds “reasonably related” to
FDA submission
How far back does this exemption go?
o Well it depends on whether the researcher has a “reasonable basis” for
believing the compound might work in producing a particular physiological effect
o So the more experimental, the less likely the exemption
2-face law:
o once someone can actually make an application to the FDA, then they can be
sued for infringement and that portion of the research can be held up. Not clear
exactly the degree to which this law helped get generics on the market
Research tools:
o No opinion has been rendered
Indirect Infringement or “contributory” infringement
- Occurs where the infringer sells a key part of the overall device
- Policy justification = free riding!!
- Or what if the infringer merely participates with others in a course of conduct that leads
to infringement?
- Genesis in the Wallace case
o Wallace made a new burner for a lamp, but also patented wick, reservoir,
chimney
o Someone came along and made just the burner,
o Contributory infringement found, and the patent rights were still allowed to be
enforced
- All this stuff is covered under § 271
- (b) whoever actively induces infringement shall be liable as an infringer
- ( c) offers to sell or sells w/in the U.S. or imports a component of a patented machine,
manufacture, combination or composition, or a material or apparatus for use in
practicing a patented process, constituting a material part of the invention knowing
the same to be especially made or especially adapted for use in an infringement of such
patent, and not a staple article or commodity of commerce suitable for substantial
noninfringing use, shall be liable as a contributory infringer.
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2 questions courts ask:
o (1) what actions can trigger indirect infringement liability
o (2) what scienter requirements are imposed by the statute?
Aro Manufacturing Co. v. Convertible Top (Aro II)
- The convertible top is patented by Convertible Top Replacement (CTR)
o The Mackie-Duluk patent, one part of which was the fabric for the top
- Aro manufactures replacement cloth tops for convertibles
o They were not licensed to make or sell these fabrics used to replace worn out
portions of convertible tops
o Aro fabrics were specially tailored for installation in particular makes and
models of cars, including Ford convertibles bade btwn ’52 and ‘54
o Note: you can license in different regions
o Note that: had the end user not been infringing, then Aro wouldn’t have been
infringing
- CTR sues them for patent infringement b/c:
o They licensed the patent to GMC, but not Ford, and Ford knew it was infringing
 In the GMC case, it was held to be permissible repair
o And apparently Aro knew it was infringing too
- Who was the direct infringer?
o Ford during a particular time period and the actual car owners
o Note: no contributory infringement w/o direct infringement
 Also note: has to be a knowing sale of a non-staple item specifically
adopted for infringing activities
- I: if someone repairs the unlicensed convertible top, is it infringement?
- H: yes, it is.
- R:
o The statute under §271 says whoever makes, uses or sells is guilty of
infringement
- Then they look to see if Aro was a contributory infringer and they hold that Aro is
o Looking at § 271(c) the Court says that one who knowingly produces a
component of an unlicensed invention, he is guilty of infringement
o However, the court also holds that the contributory infringer must know the
combination for which his component was designed was both patented and
infringing
- And they find this as well
- Notes:
- Repair v. Reconstruction
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o When you sell a patented article, you sell the right to repair that article, but not
to reconstruct it. This speaks to the intentions of the parties
 And by that, we mean inferring the intention of the parties, the default
expectations of the parties
 Repair = authorized use
 Reconstruction = re-making the thing
o And the parties can always K around this to say exactly what’s covered
The knowledge requirement of contributory infringement
o There’s a N.C. Cal. Opinion in Sandisk that contributory infringement is (1)
knowledge of the activity that is alleged to be infringing and (2) knowledge of the
patent
What knowledge is required for D to infringe under § 271 ( c )
o The sale has to be made knowing that the thing has to be designed for infringing
o According to this case, you need to know it was both patented AND likely
infringing
o CTR had sent a letter to ARO, so they were on notice
Inducing Infringement
Patent Exhaustion
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LGE had a few patents for write forwarding, stale memory, and bus allocation
Intel sold chips to Quanta who turned around and made computers using non-Intel
memory, boards, and sold those
LGE brought an infringement suit alleging that Intel wasn’t licensed to combine these
o Basically, there were 2 separate agreements, a license agreement and a master
agreement
License agreement – permitted Intel to make, use, sell and offer to sell… items covered
by the patents
Generally you license your entire portfolio b/c otherwise it’ll make it obvious what
you’re doing
The license has unusual language saying: these two parties are not granting each other a
license that allows 3rd parties to make combinations w/ other 3rd party components to
make computers
o In another portion of the license, it says Intel’s allowed to sell products to others
In the master agreement, it required Intel to notify its customers of the lack of license
for 3rd party combinations, which it did
Quanta asserted that it was not an infringer b/c the patents were exhausted when the
components were sold to it w/o restriction
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Patented exhaustion doctrine:
If a patented items is sold, without limitation, then the law presumes that all rights to
use and sell have been transferred to the buyer. The patentee’s rights of use and sale
are extinguished w/ respect to that item
I: Does Intel’s limited right under the license agreement mean that it could only transfer
a limited right to use under the sale, or does the ordinary patent exhaustion doctrine
apply?
Held: applies to method patents and patent exhaustion occurred here. Intel sold
(without limitation?) and the patentees rights in those sold components were exhausted
o If a component made by the method substantially embodies the method then
the sale of the component exhausts the patent with respect to that component
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Some courts have held that a defendant could be held liable if he “knew or should have
known his actions would induce actual infringement”
No passive inducement:
o Courts have held no liability for indirect infringement for failing to take action to
stop a corporate affiliate from engaging in infringing acts
o TEA infringed in Tegal Corp v. Tokyo EleectronCorp., had an injunction
restraining them, but another subsidiary of the same parent couldn’t be enjoined
under the same ruling
Pre-Patent Inducement
o Natioal Presto Indus v. West Bend Co. – Presto tried to hold WB liable for
flooding the market w/ soon-to-be patented products on the theory that
customers would continue using the products
o The CAFC established a per se rule against pre-issuance inducement
o They said the issuance of a patent is too speculative and that would be a sort of
ex post facto rule
Paper Converting Mach. Co. v. Magna-Graphics Corp.
o Selling parts of a machine and agreeing not to assemble it until after the patent
expired was held to be infringement b/c doing sell basically stole a sale from the
patent holder
Inducement
- Not covered much by us, but § 271(b) – everything else that’s not contributory
- § 271(d) – aspects of patent law that had been gotten rid of the courts
o Resurrected the opportunity to sue someone for contributory infringement
Extraterritorial Effects
- Brown demonstrates the modern approach of construing patents narrowloy to avoid
extraterritorial effects
- Exporting componenets of a patented combination for quick assembly overseas was not
an infringement. Deepsouth Packaging
- Congress departed from this tradidiotn in ’84 when it enacted § 271(f) which effectively
makes component exporters liable for an infringement where they (i) sell the
components to an invention for foreign assembly and (ii) they would be liable under §§
21 (b) or ( c) had the assembly taken place in the U.S.
o (f) is the section litigated in MSFT v.AT&T
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Later, Congress passed the Process Patent Amendment of ’88 in § 271(g) which changed
the longstanding rule that importation of the product of an infringing process did not
constitute infringement
o This rule grants process patent holders the right to exclude from the U.S. market
products made overseas by their patented processes
o
Microsoft Corp. v. AT&T – SCOTUS 2007 (Brennan, J.)
- MSFT sold master CD’s or electronic masters of their Windows software to other
countries
- I: are the master CD’s components under § 271(f) so that mere transmission / sending
of the master constitutes infringement when foreign manufacturers take the master / ecopy and put it on machines that then do infringing speech recognition functions
- I.e. does MSFT’s shipping of the software on a master disk to China constitute exporting
a significant component
o Background: part of Windows’ speech recognition software infringed
o Interestingly the court got it right that it doesn’t infringe until it’s loaded onto a
computer
o Or rather, is a copy of software a component under the law?
- MSFT conceded that if sold in the U.S. it would infringe if it were installed on a computer
o Uninstalled software does not infringe
o AT&T’s claim was tied to a machine programmed in a particular fashion
- They look at code in the abstract (notes of a symphony) vs. code for production (the
sheet music)
- They say it’s sheet music, so not components
- H: software “in the abstract” cannot qualify as an exported component under § 271(f)
The Corollary - § 271(g)
- Whoever offers to sell.. a product which is made by a process patented in the U.S. shall
be liable as an infringer .. if the importation…. Product occurs during the term of such
process patent…
o A product which is made by a patented process will, for purposes of this title, not
be considered to be so made after
 (1) it is materially changed by subsequent processes; or
 (2) it becomes a trivial and nonessential component of another product
- Eli Lilly had a patent for producing “chemical compound 6” which is an intermediate in
the production of the antibiotic cefaclor,
-
o Lilly argues the product of a process patent should not be considered “materially
changed” if its principal commercial use undercuts the commercial value of the
product patent at issue
o Held: CAFC could not stretch the concept of “materially changed” that far. The
statute refers to changes in the product made by the process, not to how or
whether the activity impairs the economic value of the claims in suit
Biotechnology General v. Genentech
o People in Israel were making HGH, importing it into the U.S.
o Genentech had a process patent on the process of making the piece of DNA that
included the HGH gene
o Genentech used that process patent, sued Biotech. General for importing the
protein HGH
o They hold for Genentech! B/c the legislative history contains this example as an
example of infringement under § 271(g)
 Someone in Genentech actually wrote the legislative history b/c he knew
they were going to sue as soon as the legislation passed
Before and After the Patent
- Once the patent term expires, the patented tech. enters the public domain
- Patent is still enforceable right up until the last day of its term
o See Paper Converting Machine
o They had a sale, but said you can’t assemble until after the patent expires
o The court said this was inducement (though Pilar says it probably doesn’t meet
the inducement requirements b/c there has to be an actual infringement
o It’s about the offer to sell, not the actual sale
- There’s no infringement prior to the existence of a patent, nor is there inducement or
contributory
o National Presto Indus v. West Bend
o One of the parties raced out and sold a bunch of things that were later covered
under a patent
o The Ct. said no infringement b/c you don’t know exactly what their claims will
look like or if it will issue
- But see 35 USC § 154 (d)(1)(A)(1)
o A person who makes, uses, sells, offers to sell, or imports… covered by a
published claim and who had actual knowledge of the published claim, can be
liable for reasonable royalties for the pre-issuance activity after the patent issues
(IFF it issues)
Remedies – Injunctions
- Remedies governed by §§ 283 & 284
- § 283 – injunctive relief
o Principles of equity involved
o Such terms as the court deems reasonable
- § 284 – damages
o No less than a reasonable royalty for use made of the invention by the infringer,
together with interests and costs as fixed by the court
o May treble when there’s willful infringement
Prior to Ebay…
- PI would be granted to holder if:
o Claims were valid, patent was enforceable, and the accused was found to
infringe
o Remember, injunction is an equitable doctrine, so equitable “defenses” apply
 Unclean hands, laches
Ebay v. Mercexchange – 2006, SCOTUS
- Mercexchange wants a permanent injunction b/c there’s found to be infringement on
one of its business method patents
- Fed. Cir said it’s always in the public interest to have the patent system upheld
o B/c we’ll have more new and useful stuff
o They weren’t looking at it instance by instance – a very utilitarian reasoning
instead
- P seeking Perm. Injunction (PI) must establish a four factor test:
o (1) that is has suffered an irreparable injury
o (2) that remedies available at law, such as monetary damages are inadequate to
compensate for that injury
o (3) that considering the balance of hardships between the plaintiff and D, a
remedy in equity is warranted; and
o (4) that the public interest would not be disserved by a permanent injunction
 Note that this is a lot different from what the Ct. said in Amazon
- I: whether PI’s should be favored over damages (i.e. not using the four factor test) b/c
patents provide an exclusionary right
- H: nope. Apply the four factor test
- They also don’t look to eager to overturn their long-established jurisprudence
- Difference between the two camps:
o Chief justice says like cases should be treated alike
o Kennedy on the other hand, doesn’t want people who aren’t using their patent
to be able to get Perm. Injunctions
Z4 Techs v. Microsfot Corp – E.D. Tex. 2006
- Z4 moved for a perm. Injunction, and the ct. denied it
- They sued Autodesk and Mcirosoft for a patent on product activation
- Jury awarded damages to Z4
- They look to the 4 Ebay factors
- Reasoning: Z4 won’t be affected by Microsoft’s infringement b/c MS doesn’t sell any
activation software on its own
- They say that MS can’t deactivate all of its public servers lest the market get flooded w/
pirated software
- And The public interest won’t be served b/c consumers would get nailed and the public
might suffer negative effects
- Note:
o A showing of irreparable hr must be shown by the plaintiff – no presumption is
inferred in the language
o Can’t enjoin the government. Except in states – you can enjoin states
 And you can’t get damages!
Preliminary Injunctions
- Resisting a PI: if the accused raises a substantial question regarding infringement or
validity
o This is a lesser standard than clear and convincing
Amazon.com v. Barnesandnoble.com, Fed. Cir. 2001
- Amazon moved for a prelim. Injunction to prohibit BN’s use of a feature called its
“express lane”
- BN claimed the feature did not infringe and substantial questions exist as to the validity
of Amazon’s patent
o W.D. Wash. Ct. rejected this and granted the prelim. Injunction
o BN appeals
- I: Prelim. Justified? (and what’s the standard?)
- H: no.
- R: So, this is the one-click patent
- Amazon is entitled to a preliminary injunction if it can succeed in showing:
o (1) a reasonable likelihood of success on the merits
o (2) irreparable harm if an injunction is not granted;
o (3) a balance of hardships tipping in its favor;
-
-
-
o (4) the injunction’s favorable impact on the public interest
 If the public interest either favors or will not be harmed by the injunction
Irreparable harm is presumed when a clear showing of patent validity and infringement
has been made
In order to demonstrate success on the merits:
o (1) that P will likely prove that the D infringes on the patent
o and (2) that the infringement claim will likely withstand D’s challenges to the
validity and enforceability of the patent
In this case, the BN challenged the obviousness of the patent (anticipation)
o The court said it’s too early to tell whether or not BN will prevail on its claim, but
this is enough to stop a prelim. Injunction
There was prior art from Compuserve
“validity challenges during preliminary injunction proceedings can be successful on
evidence that would not suffice to support a judgment of invalidity at trial”
Notes:
o If you’re going after a preliminary injunction under a doctrine of equivalents
challenge, the standard is much higher We care v. Ultramark
o Prelim. Injunctions have been available to patentees who don’t actually practice
the invention
 Sometimes they do, sometimes they don’t.
o Also, courts have the ability to tailor preliminary injunctions
 Can require the moving paty to post a bond
 Require the non-moving party to post a bond to avoid an injunction
 Provide “partial relief”
Rebutting the Presumption of Harm
- Rosemount v. U.S. Int’l Trade Comm’n
o Rosemount’s delay in bringing an infringement action
o Grant of two licenses
o Lrge market share
o Presence of 12 major non-infringing substitutes
o Availablility of damages
 All of these factors allowed presumption of harm to be rebutted
Reasonable Royalty Damages
35 USZC § 284
- Upon finding for the claimant, the court shall award the claimant damages adequate to
compenste for the infringement, but in no event less than a reasonable royalty for the
-
use made of the invention by the infringer, together with interest and costs as fixed by
the court.
When the damages are not found by a jury, the court shall assess them. In either event
the court MAY increase the damages up to three times the amount found or assessed…
The court may receive expert testimony as an aid to the determination of damages or of
what royalty what would be reasonable under the circumstances
Reaosnable royalties
Given When
o Actual damages (lost profits) are not determinable or …
Panduit Corp v. Stahlin Bros. Fibre Works
- Dist. Ct. awarded 2.5% royalty
- Panduit sued Stahlin Bros. for infringement on two types of duct
- It ordered an injunction, but they disregarded it, so held in contempt and a royalty was
entered
- Panduit wants damages for lost profits or a 35% royalty b/c this is how much they would
have made
o Stahlin sold $1.788 M worth of product
o They alleged $808k in lost profits for its own sales (Stahlin made)
o And $4,069 for sales it did make (had to lower its prices)
o Dist. Ct. awarded a permanent injunction plus $44,709
- Panduit seeks lost profits, but cannot produce the necessary proof. What did it lack?
- To obtain damages the lost profits on the sales the patentee would have made absent
the infringement:
o (1) demand for the patented product,
o (2) absence of acceptable noninfringing substitutes
o (3) his manufacturing and marketing capability to exploit the demand
o (4) the amount of the profit he would have made.
 But Panduit couldn’t establish #4, b/c it can’t show its fixed costs
 But how is it hard to show fixed costs?
o So the master found that there were acceptable non-infringing substitutes, so
there should be a low royalty rate
o But they say it’s not the bargain the parties would have struck; the infringer
chose to keep selling his product, so the royalty is much higher
o It would also encourage infringers to do just that – infringe, so they could get a
reasonable royalty – that way they don’t get hurt if they get sued, and if they
don’t get sued, they still win
-
-
-
They say that the lower Ct. judge made his findings on the royalty based on the fact that
there were noninfringing substitutes
o But there weren’t, the Ct. says, because the noninfringing substitutes were the
Defendant’s own products that they switched their customers over to once they
couldn’t sell the preferred product
 So really, it was just a sort of necessity for the customers – doesn’t prove
they would’ve chosen the products beforehand
 And that “switching” occurred years after the infringement occurred
 And they admitted that the patented ducts had unique and
desirable attributes
 Also the royalty rate gets calculated as of the day the infringement begins
– so you look at the past market, not at if, say a price drop occurred after
infringement began
o Note: if you’re in licensing negotiations and you walk away, it looks like willful
infringement  treble damages
Reasonable royalty:
o “… an amt which a person desiring to manufacture, sell and a patented article
would be willing to pay as a royalty and yet be able to make and sell the
patented article… in the market, at a reasonable profit” p. 971
o Must be “reasonable under the circumstances” and always tied back to the
statutory notion of “adequate to compensate of the use made of the invention
by the infringer” p. 978
o Setting reasonable royalty is not the equivalent of an actual royalty negotiation
among the parties
 No efficient patent infringement!
 Note that the reasonable royalty is determined at the time of 1 st
infringement
o Also the expert witness had no experience crafting royalties after infringement
under § 35 USC 284 (this was the D’s expert witness)
They remand – factors to consider:
o Panduit’s actual profit margin in Mar. 1962
o Customary profit allowed licenses in the electrical duct industry
 Except that reasonably royalty cases are WAY higher
o (1) the lack of acceptable noninfringing substitutes (contradicts with #2 and
customary licensing rates)
o (2) Policy of not licensing the patent
o (3) the future business and attendant profit patentee would expect to lose by
licensing a competitor, and
-
o (4) that the infringed patent gave the entire marketable value to the infringed
duct [patent]
 I.e. whether the entire market value of product was due to the patented
invention
Notes:
o Fromson v. Western Litho – argues that the bargain should be restitution
o Hanson v. Alpine Valley – Percentages of annual cost savings to infriner of having
that snow machine as opposed to another snow machine
o Analytical method:
 Use infringer’s own profit projection from the infringement
 Subtract overhead from that to get anticipated net profit
 Subtract industry standard net
 Using this method, the court in TWM Mfg v. Dura assessed a 30%
reasonable royalty – p. 982
Lost Profits
- To obtain lost profits, the patent hole rust show (Panduit test), or something similar
(Rite Hite):
o Demand for a product covered by the relevant claims
o Absence of … (see: above)
- Rite Hite: these establish a reasonable inference of but-for causation, but the Panduit
test is not the only way to establish but-for causation
o The ultimate thing you must show is that but-for your infringement, this is what I
would have made
Rite-Hite v. Kelley Co.
- Dist. Ct. determined R-H was entitled to lost profits for lost sales of its devices that were
in direct competition with the infringing devices, but which themselves were not
covered by the patent in suit
- I: are such damages legally compensable?
- H: yes.
- Rite sued Kelley for infringement on it’s patent for a manual device that secured trucks
to a loading dock
- And as for damages, Rite-Hite got both damages for its manual lock and its automatic
lock
o But-for Kelley’s infringement, Rite Hite Would have sold:
 80 more MDL’s
 3,243 more ADL’s
-
-
-
 They give damages for both
The automatic lock wasn’t covered in the infringing patent
o However, there was a patent on the automatic lock hook
Whether profits at issue are legally compensable is an issue of law – de novo
The Ct. says: § 284 requires damages that are “adequate to compensate for
infringement”
o Congress sought to ensure full compensation for damages
o And when Congress wished to limit an element of recovery in a patent
infringement action, it said so explicitly
They affirm the same “but for” test under Panduit
o (1) demand for patented product;
o (2) absence of acceptable non-infringing substitutes;
o 3() manufacturing and marketing capability to exploit the demand
o (4) the amount of the profit it would have made
o AND
 “a showing under Panduit permits a court to reasonably infer that the
lost profits claimed were in fact caused by the infringing sales, thus
establishing a patentee’s prima facie case with respect to “but for’
causation.
 The burden then shifts to the infringer to show that the inference is
unreasonable for some or all of the lost sales
o The question of legal compensability is one “to be determined on the facts of
each case upon mixed considerations of logic, common sense, justice, policy, and
precedent
o And they say “Panduit is not the sine qua non for proving “but for causation””
o They say the only substitute for the infringing product would’ve been the ADL100, the automatic hook
 Why wasn’t this a non-infringing substitute?
 Because it would’ve infringed on another patent, the ADL-100
 Judge Nies (in the dissent) objected to this b/c it wasn’t litigated yet
o Also, whether a patentee sells its patented invention is not crucial in determining
lost profit damages…”
 Meaning if you have another product, you could get damages
o What limits the damages then ?
 Foreseeability
Dissent:
o Argues that the patent rights only extend to what’s claimed, so you’ve effectively
broadened the right of exclusivity
-
o But for shouldn’t encompass any and all damage to the patentee
o And that this doesn’t encourage people to put new products into the market if
they can get damages for their other products –
 What if you don’t really want to invest in building a new kind of scanner
b/c of all sorts of sunk costs, so you just keep the patent
o And they never asserted the claims for the other patented invention against
Kelley
Notes:
o In King Instruments, the patentee did not sell any invention that was infringed,
but did sell other inventions
 They still got lost profits for that other invention
 Note that: something has to be sold to get lost profits
o The majority in Rite-Hite argues that all that matters is whether the products
compete in the same market
o And this sort of protection will gives ex ante incentives to invent
o The dissent on the other hand argues that it’s improper to extend a property
right over a set of claimed embodiments into a mechanism of market exclusivity
o This is b/c it extends the scope of the patent
o Again, however, the majority argues
 (1) it serves the goal of compensating the patentee for foreseeable harm
to the patent, and (2) it is strictly limited to ex post compensation, i.e. no
injunction is available
o Also the scope of Rite-Hite is limited to when the patentee can prove:
 That it is selling unclaimed products;
 That the sale of infringing products has caused a loss in sales of the
patentee’s unclaimed products, and
 That it was reasonably foreseeable on the part of the infringer that sales
of these infringing products would cause the patentee to lose sales of
unclaimed products
o Also the patents on the ADL-100 are important for 2 reasons
 (1) they provide support for the notion that there are no acceptable
noninfringing substitutes
 (2) that the patent in suit is only one of many patents owned by Rite Hite,
so Rite Hite is engaging in a long-term project of R&D
Grain Processing Corp v. American Maize-Products Co. (Fed. Cir. 1999)
- Dist. Ct. in IN denied Gran Processing corp. lost profits for American Maize-Product’s
infringement
-
-
-
-
-
-
-
Dist. Ct. also found that a non-infringing substitute was available
Initially Am-Maize had produced Maltodextrin (called Lo-Dex 10) under three different
processes, all of which were later found to be infringing b/c of the test Am.-Maize used
to measure the “D.E.” value of its maltodextrin
So it took them 2 wks. To develop a new process w/ a new enzyme that didn’t infringe,
and once that patent had run a few months later, they reverted to using the original
processes, which were more efficient and less costly
o The enzyme was known at the time it started making Maltodextrose, i.e. the
70’s, so it could’ve begun making this process in the 70’s
Dist. Ct. found that process iv was available and that it was an acceptable substitute, so
Grain processing could not prove lost profits
But to be an acceptable substitute, the product has to have been on the market at the
time or available at the time of infringement
The test:
o A fair and accurate reconstruction of the “but for” market must take into
account, where relevant, alternative actions the infringer foreseeably would
have undertaken had he not infringed. Without the infringing product, a rational
would-be infringer is likely to offer an acceptable non-infringing alternative, if
available, to compete with the patent owner rather than leave the market
altogether
They note that the cost of the enzyme was sufficiently low as not to prohibit its use in
the market
o Can also get lost profits for your proven market share even when there are noninfringing substitutes in the market (Mor Flo)
When basing alleged lost profits on lost slaes, the patent owner has an initial burden to
show a reasonable probability that it would have made the asserted sales but for the
infringement
o The burden then shifts to the patentee to show …
They affirm the ruling
Notes:
Non-infringing substitutes need not be on the market to be considered available
acceptable alternatives
o After a patentee has proven Panduit Factor (1) demand,
o The infringer can prove that consumers do not demand every claimed feature,
and if they can do this, the infringer may be able to prove its non-infringing
substitute is acceptable to consumers
Effects of Grain Processing
o A. lower Damage awards (better defenses)
-
-
-
-
o B. litigating next-best alternatives – infringers get to show what they would have
done
o C. legal strategy –may affect how inventors seek to patent their inventions
o D. Preemptive litigation – Waiting to sue may lead to less massive awards, so
seeking to enjoin ASAP
o E. Possibly increases the burden on infringers to show that they’re not willfully
infringing
Crystal Semiconductor Corp. v Tritech Microelectronics
o Crystal held patents on computer audio chips
o Had tried to make a damages analysis based on Apple computer’s market share
for audio chips
o This was held to be an inappropriate benchmark b/c Apple held an oligopoly
whereas the PC audio chip market was far more competitive
Micro Chemical v. Lextron
o Fed. Cir. Found that Lextron had infringed micro Chemical’s patent
o After the ruling, Lextron modified its design the next day
o But the Fed. Cir. Held that there wasn’t a readily available alternative b/c the
technology wasn’t known at the time,
Bose v. JBL
o Ct. found that JBL infringed a Bose loudspeaker patent under the Doe
o They held that JBL could have offset or negated lost profits by presenting ‘sound
economic proof” that it could have produced acceptable substitutes during the
“accounting period.”
o It attempted to design around it by creating a virtually indistinguishable
curvature
o And this indicated that no acceptable substitutes existed
Spot the rule, name the test, cite the case, hit the legal issue
o Then 2 more points for creativity
o 102(b) = 103 – nonobviousnes
o 1st name of case, and pg. #
o she likes the IRAC style
 Topic sentence, rule analysis
o If what you have in mind is a note case, it’s helpful if you cite to that and the pg.
#
o It’s your opportunity to show what you learned – shotgun method!!
Myriad Genetics
-
-
-
-
Claims at issue were for
Why is the gene patentable? Isolated and purified
Claim 1: isolated DNA coding for the protein, having protein building block sequence –
Then they claimed particular sequences of DNA that were known to cause mutations
They also had method claims
o There’s a Markoush group – a method for detecting these groups in a human
which comprises analyzing the sequence of the gene – that’s the claim
o Reminds you of metabolite – where SCOTUS backed out of the case
o Case where the claim had to do w/ measuring an amount of a chemical in
people’s blood and correlating it w/ vitamin B deficiency
Metabolite didn’t answer the question of patentable subject matter
o Not argued in the CAFC
Similar to Bilski – nothing is being transformed
o So is this valid? That is the undecided question
That’s why ACLU argued 1st amendment – this is a claim that’s stopping people from
thinking about things
o Why did the judge in Myriad – write so much about the policy argument behind
the gene patents?
o He was teeing it up for the Supreme Court and you’re supposed to interpret the
statute in light of the Constitutional directive to increase progress in the useful
arts
In the end, what the judge said regarding the isolated purified DNA, and said all the case
law that would suggest that something is patentable b/c it’s isolated and purified was
decided before we separated the law into § 101 and § 102, and when we created § 102
– we should think of these cases as novelty cases, not patentable subject matter cases
o So he dismissed them by looking at Chakrabarty
o And another case where a person didn’t transform bacteria – so here the DNA
doesn’t do anything new and exciting
o The judge looked at those kinds of cases and merely isolating something dos not
make it patentable – it’s only patentable if [by isolating and purifying it, it
obtains a new property or is otherwise transformed
 a Bilski argument, IMO
Unfortunately, this is inconsistent with precedent that Hand, j. laid out in Parke-Davis
o It’s a metaphysical argument about whether there’s new use
o So if we need new physical properties, you could make that argument with
respect to DNA
 Myriad made this argument, and the judge didn’t buy it
 Under that analysis, some DNA sequences could be patentable
-
o There’s also a pseudo-gene that hangs around in the human genome that’s like a
o Pilar says the isolated purified argument can go either way b/c there are things
you can’t do w/o isolated, purified DNA
 But on the other hand, it still has exactly the same nucleotide sequence
o If you take judge hand’s focus on the usefulness of the something, then you
wouldn’t agree w/ the patent
 If you look at SCOTUS, CCPA, CAFC, then these sorts of claims definitely
encompass a sequence that is in the body and that actual molecule of
DNA is complex w/ other proteins, but still not really materially changed
the molecule of DNA itself
 And this might bring you back to the progress in the useful arts question
o KSR’s obvious-to-try test
 Best place to look is the slides where Pilar lays out
 = Obvious only when several factors are met
 As a test, it’s more likely now that obvious to try = Obvious
 In re Kubin
 But maybe not soo much more likely
 She doesn’t think the jurisprudence changed that much on
obvious to try
 Method of trying would have be pretty well known, there would have to
be a good likelihood of success
Utility – beneficial utility = moral utility – not used anymore (I’m missing a type)
o Might be used for transgenic human embryos but hasn’t been used
o Operability – cold fusion – incredible under the laws of physics, then you’d have
to bring forward additional evidence that this actually works
o
o In the bio world: to patent it, it has to have use
 How much use? If you’re thinking of it as a drug, you don’t have to go
through clinical trials,
 If you show that drug has some effectiveness, that’s enough
