Protection of Technology Outline
Winter 2001
Professor Eisenberg
I.
Intro
A. Protection of Ideas
1. INS v. Associated Press
FACTS: Ass. Press sued INS. P claims D pirated news stories (stories appeared
in D newspapers before P papers because bribed employees and induced them to
disclose stories and copy bulletin boards)
RESOLUTION: look to state law of unfair competition (b/c prior to Erie).
Court rules for P stating that copying of news is not permitted. The D is
essentially “reaping what it has not sown.” See this as a quasi-property right
(property between the two competitors but not for public
2. Sears and Roebuck co. v. Stiffel
FACTS: Stiffel conceives of a pole lamp with great commercial success. Soon
after Stiffel put it on the market, Sears came up with its own substantially
identical lamp and sold it cheaper.
RESOLUTION: An unpatentable article, like an article on which a patent ahs
expired, is in the public domain and may be made and sold by whoever chooses
to do so. What Sears did was to copy Stiffel’s design and to sell the lamps
almost identical to those sold by Stiffel. This it had every right to do under the
federal patent laws. To allow a state by use of its own law of unfair competition
to prevent the copying of an article which represents too slight an advance to be
patented would be to permit the state to block off from the public something
which federal law has said belongs to the public. Federal policy preempts state
unfair competition law.
3. Compco v. DayBrite Lighting
FACTS: Both Compco and DB manufacture fluorescent lighting fixtures. DB
secured a design patent on a reflector and sought, but was refused a mechanical
patent on the same device. Compco began making and selling fixture very
similar to DB’s. DB brought action alleging infringement and a second count
charged that the public and the trade had come to associate the particular design
with DB – and that Compcp copied it so as to deceive purchasers i9nto thinking
they were purchasing DB goods.
RESOLUTION: A state of course has the power to impose liability on those
who, knowing that the public is relying upon an original manufacturer’s
reputation for quality and design and integrity, deceive the public by paling off
their copies as the original. But when an article is unprotected by a patent or a
copyright, state law may not forbid others from copying the device. To forbid
copying would interfere with federal policy and the implementing of federal
statutes. Copying is allowed of whatever federal patent and copyright laws leave
in the public domain.
4. Murray v. NBC
FACTS: NBC employee submits idea to company for a “father Knows Best”
type of show with black actors. Four years later, NBC premieres the Cosby
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Show. P sues for breach of implied contract, misappropriation, conversion, and
unjust enrichment.
RESOLUTION: Basic premise underlying the concept of novelty under NY
law is that special protection is afforded only to truly innovative ideas while
allowing the free use of ideas that are merely clever or useful adaptations of
existing knowledge. In this case, the record indicates that the P’s idea for a
situation sitcom featuring the non-stereotypical portrayal of a black family
simply was not uniquely the P’s creation
5. Hamilton National Bank v. Belt
FACTS: D sent, by letter to a Assistant Superintendent of Public Schools, a
plan to select student talent by holding auditions in the high and with talented
thus selected to put on half hour weekly broadcasts. Mr. Belt submitted the idea
to several business establishments in hoped they would sponsor it. None were
interested until P. A Contract was entered, but he school authorities did not at
first give the necessary approval. Later, the school approved the program and
advised P of its willingness to carry on with the program. The P carried the plan
forward with the assistance of someone other than D.
RESOLTUION: A person has such a property right in his own ideas as enables
him to recover damages for their appropriation or use by another when the idea
is original, concrete, useful, and is disclosed in circumstances which reasonably
construed, clearly indicate that compensation is contemplated if it is accepted or
used.
6. Van Rensselaer v. General Motors
FACTS: GM sent around a pamphlet that it would only consider devices
patented or in the process of being patented to add to their cars. P disclosed
ideas (none of which were patented) and later claimed they were used by GM. P
sues GM.
RESOLUTION: there was neither and express contract or a contract implied in
fact between the two parties. The authorities set forth a number of elements
which a P is required to establish as a prerequisite to a right to obtain relief in a
case of the instant character. Those elements generally are: (1) that the idea
disclosed must be novel, (2) that it must be made in confidence, and (3) that it
must be adopted and made use of by the D. As a requisite tot he elements of
novelty, confidentiality and use is a confidential relationship. It is clear that
none existed here. P has no remedy
B. Trade Secrets
1. Trade secrets serve as the primary alternative to the property scheme established
by the patent law. Almost all patentable inventions begin their lives as trade
secrets
2. Substantial efforts to harmonize trade secret law:
a. Restatement Third of Unfair Competition (§39-45)
b. Uniform Trade Secrets Act
3. §39 of Restatement: Definition of Trade Secret: any information that can be
used in the operation of a business or other enterprise and that is sufficiently
valuable and secret to afford an actual or potential economic advantage over
others. Can consist of a formula, pattern, compilation of data, computer
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program, device, method, technique, process, or other form or embodiment of
economically valuable information.
4. Reverse engineering: can figure out what the secret is just by looking at the
product (deconstruct it until you know why/ how it works)
5. To Enforce a Trade Secret: need to show it is something relatively few people
know, there were reasonable measures to keep it secret, and wrongdoing on the
part of the D.
6. Advantages: term of protection is virtually indefinite, begins immediately
(even if you are pursuing a patent, can have trade secret in the meantime), can
get protection for things that are not patentable, costs less than a patent, little
disclosure required,
7. Disadvantages: limited to what you can keep secret, scope of protection limited
to wrongful access, difficult to detect and police misappropriation, vulnerable to
loss from government regulation, potential for loss of secrecy through litigation,
litigation very costly, vulnerable to loss through employee mobility, only works
for inventors that can be exploitative without disclosure to the public
8. Rockwell Graphic Systems v. DEV
FACTS: P is a manufacturer of printing presses used by newspapers and of
parts for those presses. P brought suit against D, a competing manufacturer and
whose president used to work for P. P alleges D employees took piece part
drawing from P and is now using them D business.
REOLUTION: Summary judgment by the lower court was not ok Obviously P
took some precautions, both physical and contractual, to maintain the
confidentiality of its piece part drawings. Obviously it could have taken more
precautions. How the company took care of a trade secret shows it is something
of value and helps provide evidence of how D could have gotten hold of it.
NOTES: b/c US PTO maintains patent applications in secret, the mere filing of
an application does not compromise the availability of a trade secret for any
disclosed information. However, when information is disclosed through the
patenting process, any trade secret protection applicable to that information
terminates
9. Restatement §40: provides for two basic sources of liability: acquisition of a
trade secret though improper means or the use or disclosure of a trade secret
discovered through a breach of confidence, abuse of a confidential relationship,
or by accident or mistake.
10. Restatement §43: Improper Acquisition of Trade Secrets: improper means
of acquiring another’s trade secret under the rule stated in §40 include theft,
fraud, unauthorized interception of communications, inducement of or knowing
participation in a breach of confidence, and other means either wrongful in
themselves or wrongful under the circumstances of the case. Independent
discovery or analysis of publicly available products or information are not
improper means of acquisition.
11. EI Dupont v. Christopher
FACTS: D, photographers, flew over P plant while it was under construction
and took pictures for an undisclosed client. P claims the layout of the plant,
which can be seen from the air, reveals secret, unpatented process.
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RESOLUTION: INS type of analysis here: not unlawful for a member of the
public to fly over the plant, but for a business competitor to do so and take
pictures is unfair. One may use a competitors secret process if he discovers the
process by reverse engineering applied to the finished product; one may use a
competitors process if he discovers it by his own independent research; but one
may not avoid these labors by taking the process from the discoverer without his
permission at a time when he is taking reasonable precautions to maintain its
secrecy.
12. Kubick v. Hull
FACTS: P is a manufacturer of hydrostatic drive units for use in transfer and
conveyor systems. D was employed as a salesman and VP for P corporation. D
abused a confidential relationship by forwarding engineering data on the P
invention to co-defendant Phillips.
RESOLUTION: Court says facts clearly indicate wrongdoing, but it isn’t clear
there was actually a secret. There must be a trade secret before there is relief.
The harm caused Ps by D’s misappropriation is thus diminished to the extent
that other competitors in the industry could, and perhaps have, legally duplicated
the equipment. The award of a permanent injunction in this case prevents D
from doing that which others in the field could lawfully do. WE think it is
obvious that such relief is punitive, rather than compensatory in nature, and
therefore, inappropriate.
NOTES: Restatement §44 states that the duration of the injunctive relief in
trade secret actions should be limited to the time necessary to protect the P from
any harm attributable from the appropriation and to deprive the D of any
economic advantage attributable to the appropriation.
13. Litton v. Sundstrand
FACTS: P makes ring laser gyroscopes. D hired former P employees and got
into Ring laser gyroscope business. P filed suit alleging misappropriation of
unidentified confidential information and trade secrets relating to ring laser
gyroscopes.
RESOLUTION: Court denied P’s motion for preliminary injunction b/c P has
to show irreparable injury and probability of success on the merits to get an
injunction. This, he did not do.
14. Warner-Lambert v. Reynolds
FACTS: D ancestors invented the Listerine Formula and signed a contract with
P to get the royalties from P sales. Formula trade secret was reverse engineered
and public came into possession of it. P sues to try and end royalty payments
now that trade secret is publicly known.
RESOLUTION: court says that P must continue to pay royalties to D. A
contract is still binding even though the trade secret is in public possession now.
There was no condition placed on the contract tying payments to secrecy of
formula. Court will not draft a limitation on contract.
C. Federal Preemption
1. Setting for modern era of federal preemption of state laws was set by Sears v.
Stiffel (state laws struck down as preempted by federal patent laws). Second IP
preemption case was Kewanee Oil where Court held that the federal patent law did
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not preempt state trade secret law. Justice Berger stated that there are unpatentable
inventions, patentable inventions, and those technologies which a legitimate doubt
existed about patentability. Court reasoned that the unpatentable inventions were
unregulated by patent law and borderline technologies might prefer trade secret
protection. Essentially saying that trade secret law can protect IP alongside patent
law. B/c of this decision, several state legislators tried to provide copyist protection
2. Bonito Boats v. Thunder Craft Boats
FACTS: state legislature states that no one can copy boat hulls (in order to
encourage more people to build them).
RESOLUTION: court says federal preemption of state IP law is alive and well
(even after Kewanee Oil). Back to the rule of Sears and Compco
II.
Patent Eligibility
 Used to describe the subject matter open to patenting, as opposed to the word
“patentability.” The latter term implies not just that the subject matter is
appropriate under the statute, but that the invention has been approved
following an individual determination of novelty, nonobviousness, and the
other requisites.
 The focus of patent law is applied technology, referred to in the Constitution
as “the useful arts.” A patent can only issue if an invention achieves a
tangible, practical result. Excluded are the speculative and the abstract, such
as mathematics. Also excluded is the mere articulation of a scientific
principle, as opposed tot he implementation of the principle in a fictional way.
 Basis of patent eligibility is the Patent statute itself. §101 states that:
whoever invents or discovers any new or useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title
 Process: a series of acts which are performed upon subject matter in order to
produce a given result
 Machine: any apparatus
 Composition of Matter: including synthesized chemical compounds and
composite articles
 Manufacture: broadly oriented, residual design
 Invention may fall into multiple categories
A. Scientific Principles and Laws of Nature
 Products of nature limitation on patents: go to mother nature and ask for a
patent; can only patent something that is new and products of nature are not
new
1. Funk Brothers v. Kalo
FACTS: P sought a patent for certain mixed cultures of bacteria that enabled
farmers to inoculate several different plant species at once
HOLDING: discoveries of natural phenomena are not patentable. After a
combination of bacteria, none of the strains affects a different plant or acquires a
different use. The combination does not produce new bacteria or change upon
the previous six strains. The bacteria continue to perform in their natural way
on the plants.
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B. Biotechnology
 Since the 1970’s scientists have been able to cause living organisms to express
genetic material form outside their own species, with extraordinary results.
Applicants quickly sought patent protection for their biotech advances. The
prospect of patents on “living inventions” ultimately provoked a tremendous
outcry with intense public concern over a filed of law often considered
obscure
1. Diamond v. Chakrabarty
FACTS: P sought a patent for an artificially created oil-eating bacterium
HOLDING: Living organisms are patentable. The judiciary must proceed
cautiously when asked to extend patent law to areas that Congress did not
foresee. However, the judiciary shall apply the statute if it is clear, and Title 35
contains no ambiguity in the present case. Contains broad language as to its
subject matter requirements. Here the objective is the promotion of progress of
science and useful arts and limiting it by the PTO’s proposed interpretation fails
this purpose.
NOTES: products created by a genetically engineered object and the processes
of genetic engineering were patentable. Chakrabarty expanded the scope to the
organism itself.
2. In Re President and Fellows of Harvard College
FACTS: A patent application was filed in Europe for the Harvard onco-mouse,
a genetically altered mouse that developed cancer
HOLDING: Claims referring to non-human mammals or rodents do fall within
the classification of “animal variety” so the claims are not precluded by the
Article 53(b) of the EPC. Patenting a non-human mammal is not contrary to
public order or morality in the context of principles of patent law
C. Processes
 difficult category for courts: struggle with propriety and extent of such claims
1. In Re Tarczy- Hornoch
FACTS: An inventor of electrical pulse measuring system sought to overrule
the “function of apparatus” doctrine
HOLDING: a process claim that is otherwise patentable should not be rejected
because the application describes an apparatus that will inherently carry out the
process. Function of apparatus rule (someone who figures out how to solve a
problem shouldn’t have such a broad patent claim as to exclude others from
finding another way to solve the problem) is overruled
NOTES: marks a point of departure of US patent law from protecting the
tangible and discrete to placing more emphasis on an abstract level of function
and technique
D. Computer Software
 formally defined as a set of machine-readable instructions capable of
performing a particular task
 Theme of computer software cases: computer inventions are essentially
mathematical and mathematics are eternal truths rather than inventions of
human ingenuity. Early cases excluded them from patents, but after Diamond
v. Diehr, PTO has been issuing
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1. Gottschalk v. Benson
FACTS: D, the Acting Commissioner of Patents, appealed the reversal of his
rejection of patent claims relating to the programmed conversion of numerical
information
HOLDING: a mathematical formula, having no substantial practical
application except in connection with a digital computer, cannot be patented.
One may not patent an idea. But in practical effect that would be the result if
the formula for converting binary code to pure binary were patented in this case.
A procedure for solving a given type of mathematical problem is called an
algorithm. A patent on the formula would be a patent on the algorithm itself. A
process is patentable only if it amounts to some physical change
2. Diamond v. Diehr
FACTS: In P’s suit against the patent examiner, D, for a rejection of P’s patent
on a process for curing synthetic rubber, D contended that the steps in P’s
claims that were carried out by a computer under the control of a stored program
constituted non-statutory subject matter under §101
HOLDING: patentable claims do not become invalid because they include
mathematical formulas. It is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection. The claims must be considered as a whole. P’s
claims, which contain a mathematical formula, implement a formula in a
process which is performing a function that the patent laws were designed to
protect – that is, transforming an article into a different state or thing.
NOTES: After this case, the PTO loosened up and endorsed the FreemanWalter- Abele Test:
a. Is there an algorithm in the invention?
b. If yes, is the claimed invention as a whole more than just
the algorithm itself?
3. Arrythmia v. Corazonix
FACTS: the inventor of a machine and process to analyze heart functions
appealed a finding that his patent was invalid
HOLDING: if a mathematical algorithm recited in a patent claim only applies
to the physical elements of an apparatus or steps in a process, then the claim is
patentable subject matter. The algorithm itself still remains unpatentable,
though.
NOTES: Court comes pretty close to saying all computer inventions are
patentable because many are capable of transformation. The limitation on
eligibility seems to be whether something is abstract
4. In Re Allapat
FACTS: Allapat claimed that his rasterizer, which smoothed images on the
screen of a digital oscillioscope, was a patentable machine.
HOLDING: a general purpose machine programmed to perform particular
specialized functions may be patentable if it creates a unique machine that
produces a useful, concrete result.
NOTES: court takes a blended approach here. See what is new and then
determine if new part is eligible for patent protection under §101. Not clear
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what threshold inquiry is anymore but we know it is getting easier and easier to
meet.
5. PTO new guidelines:
a. start by presuming patent eligibility for new machines, processes and memory
b. shifts process away from algorithms to data
c. excludes abstract concepts
6. problems/ advantages of using patent law in computer software arena:
notes from class 1/29/01
E. Business Methods???
1. State Street Bank v. Signature
FACTS: D tries to patent an investment structure to pool together mutual funds
organized as a partnership
HOLDING: the patent claims are directed to statutory subject matter.
Mathematical algorithm exception has been determined by the Free Walter
Abele test stating that the invention encompassing an algorithm is patentable is
there is some sort of physical embodiment/ transformation. The tests has little
applicability after Diehr and Chakrabarty. The correct analysis is that
algorithms are unpatentable to the extent that they represent abstract ideas. This
invention is patentable b/c it is a practical application of a math formula that
produces useful results. Whether a claim is within statutory subject matter
should be determined by its utility, not which category it falls into (process,
product, etc). Since the 1952 Act, business methods have been and should have
been subject to the same legal requirements for patentability as applied to nay
other process or method. PTO guidelines state that claims should not be
characterized as methods of doing business. Instead, such claims should be
treated like any other process claims.
NOTES: seems like court is saying that only if the algorithm-invention is
useless can it be excluded from patent protection; concrete and tangible turn out
to be synonyms for useful – repudiate FWA test
2. AT&T v. Excel Communications
FACTS: trying to patent method of billing long distance telephone calls.
Invention solely involves information exchange, not a physical transformation.
HOLDING: invention is eligible for patent protection because it is a useful
invention. Focus is understood to be not on whether there is a mathematical
algorithm at work, but on whether the algorithm- containing invention, as a
whole, produces a tangible, useful result. The scope of §101 is the same
regardless of the form – machine or process- in which the claim is drafted.
F. Medical Processes
 longstanding tradition of exclusion – but there have been surprising decisions
lately
 deep sense that art of physician or surgeon in alleviating human suffering does
not belong to the arena of economic endeavor or trade & commerce
 TRIPS agreement does allow countries to exclude medical techniques
 Congress added §287(c) to Patent Act: provisions that give remedies for
infringement do not apply to medical practitioner or related healthcare entity.
Doctors don’t want to be vulnerable to patent infringement actions
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III.
A.
B.
C.
1. Morton v. NY Eye Infirmary
FACTS: tries to get a patent on method of inhaling ether to anesthetize
HOLDING: court says not patentable b/c it is a medical device. Surgical
methods or methods of treating human body not patentable
Utility
 In addition to setting forth the technological categories of patent eligible
subject matter, §101 requires that an invention be “useful” in order to receive
patent protection.
 The utility requirement is one that is rarely invoked, wither by patent
examiners considering an application or by accused infringers seeking to
strike down an issued patent. Nonetheless, this provision brings forth a host
of policy issues
 “useful” in §101 and §112
 may serve as a kind of subject matter limitation (limits inventions to practical
innovations and delays moment of patentability until inventor is able to
disclose a use)
 Utility requirement DOES NOT:
- limit the scope of patent monopoly (as long as you
describe one use, get patent and other uses are covered
as well)
- limit patents to inventions that represent advances
(doesn’t have to be superior, but it has to work; it has to
do something worth doing; it has to perform a function
and get the desired result)
Origins of the Requirement
1. Lowell v. Lewis
FACTS: Lowell must prove his pump invention is useful
HOLDING: the usefulness requirement of the Patent Act is satisfied as long as
the invention is not frivolous or injurious to the well-being, good policy, or
sound morals of society
NOTES: patent system is not necessarily looking for something better; just
something different.
Chemical Utility
1. Brenner v. Manson
FACTS: The Patent Office found Manson’s process for making certain steroids
unpatentable due to a failure to disclose any utility for the steroids
HOLDING: a process or a product which has no known use or is used only in
the sense that it may be the object of scientific research is not patentable b/c it is
not useful. A patent “is not a hunting license”
The Utility Requirement at the Federal Circuit
 1990’s – PTO started to get strict on utility requirements
 Commissioner held hearing b/c pharmaceutical companies raised hell
 PTO retreated and issued revised utility guidelines in order to lighten up
 Some thought they lightened up too much, so in 2001 guidelines revised
again to tighten the reigns
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-
-
old rules required specific utility or one apparent to the
expert in the art, new rules also require utility to be
substantial.
Throw away utilities: ones broadly possessed that
aren’t real utilities
1. In Re Brana
FACTS: Brana and other applicants claimed their anti-tumor compounds had a
proven utility
HOLDING: Applicants must show a specific use for their substances and
satisfy the evidentiary requirements in order to prove utility. Examiner has the
burden on utility. If utility is stated in an application, it is presumed correct
unless the examiner can show some reason to doubt it. Evidence by applicant
here was sufficient
IV.
Novelty: Statutory Bar
 codified by §102(b)
 patent-eligible subject matter is patentable if the claimed subject matter
possesses utility, and is both novel under §102 and nonobvious under §103.
Of the four general requirements, novelty is probably the patent system’s core
value: to become eligible for the reward of a patent, an inventor must
accomplish something new.
 §102: A person shall be entitled to a patent UNLESS:
(a) invention was known or used by others in this country OR
patented or described in a printed publication in this or a foreign
country, before the INVENTION by the applicant
(b) the invention was patented or described in a printed publication in
this or a foreign country OR in public use or on sale in this country
MORE THAN ONE YEAR PRIOR TO THE DATE OF THE
APPLICATION for the patent in the US
(c) the has abandoned the invention
(d) application for invention was filed in a foreign country more than
12 months before an application was filed in US AND foreign
patent issues before US patent application
(e) invention was described in a patent granted on a n application for a
patent by another filed in the US BEFORE THE INVENRTION
by the applicant
(f) he did not himself invent the subject matter sought to be patented
(g) before the applicant’s invention, the invention was made by
another in this country who had not abandoned, suppressed, or
concealed it In determining priority of invention there shall be
considered not only the dates of conception and reduction to
practice but also the reasonable diligence of the one who was first
to conceive but last to reduce to practice, from a time prior to the
conception of the other
 §102 embraces novelty in (a), (e), and (g) and the statutory bars in (b) and (d).
the difference between them is that novelty is keyed to the time the inventor
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completed the invention and the statutory bars at keyed to the day on which
the inventor submitted the application
 Statutory bars are tied to the filing sate. The point in time one year prior to
the filing date is termed the “critical date” and statutorily specified activities
such as publication or a sale act to bar the applicant from obtaining a patent if
they occur before the critical date.
 §102 thus produces a grace period which allows an inventor to determine
whether patent protection is desirable and, if so, to prepare an application.
 Statutory bars of §102(b) serve a philosophically different role in the first-toinvent regime than in a first-t-file regime. Because 102 keys patent-defeating
activity to the filing date of the application, in isolation it appears much like
the novelty provisions inherent in a first-to-file system. But the role of
§102(b) is limited, as it essentially works to prevent a fundamental defect
within the first-to-file systems. First-to-invent system promote a much more
leisurely interaction with the PTO and without the statutory bars and inventor
could turn tot he patent system at his convenience after publicly employing a
given technology for a n unlimited period of time. Without the statutory bars
there would be nothing to stop a first inventor from delaying filing for a patent
until he absolutely needed one.
 Goal is to bring the inventions into public use as soon as possible
A. Applicant Activities - §102(b)
1. Public Use
 any use that is not just personal by inventor will start statutory bar running
 patent-defeating public use does not have to be in plain view
 focus is on relinquishment of control by the inventor rather than on plain view
 even if the inventor does retain control, commercial exploitation statutory bar
meter running
 trade secret use by inventor constitutes public use
a. Pennock v. Dialogue
FACTS: P, owner of a patent on improving the making of leather hoses,
claimed that the circuit court’s jury instructions on “public use” were incorrect
HOLDING: Only the first and true inventor has a right to a patent, but he is
barred from asserting such a claim if he put or sold the invention into public
use prior to obtaining a patent
b. Egbert v. Lippman
FACTS: Lippman fought a patent infringement charge by asserting that
Barnes, the original patentee, had permitted, the corset steels he had invented
to be in public use long before he patented them
HOLDING: If an inventor gives or sells a device to another without
limitation or restriction, or injunction or secrecy, and it is used, such use is
public and places the invention public use
c. Metallizing Engineering v. Kenyon Bearing
FACTS: Metallizing had commercially utilized their patented process over a
year prior to filing
HOLDING: Commercial exploitation of an invention, even if done in secret,
constitutes a public use
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d. City of Elizabeth v. American Nicholson Pavement
FACTS: D charged P with patent infringement when it laid down a wooden
pavement in conformity with its patented process. City defended by saying D
invention was in public use before patent applied for
HOLDING: Public experimentation does not put an invention in public use.
It is not enough that the public know of the invention: public use or sale must
occur. The nature of the street pavement is that it cannot be experimented
upon satisfactorily without public use.
NOTES: court shows us that the inventor must be actively involved with the
experimentation. Use for profit is not experimental use. Market testing is not
an experimental use
 experimental use negation applies to both “on sale” and “public use.”
Public use focuses more on whether the inventor has given the public a
reason to assume it may freely use the technology. An on sale bar focuses
more on whether the inventor has prematurely exploited his invention
commercially
e. Lough v. Brunswick
FACTS: Lough created a boat motor seal and installed six seals (one on own
boat and the others on boats of friends and third parties). He did not check up
on the workability of the seals or even document use. He did not try to patent
the invention until over a year later.
HOLDING: Failure to maintain control over prototypes during testing will
render the prototypes not experimental and thus, in public use. Whether the
invention was experimental is a question of law and is to be considered in
light of the totality of the circumstances.
2. On Sale
a. In Re Theis
FACTS: P invented an apparatus designed to simulate a conversation with a
respondent and sought to patent the device. Claimed that while there was an
offer to sell and the systems were delivered prior to the critical date, they did
not work properly
HOLDING: an invention may not be patented if it was operative for nay
intended purpose when placed on sale more than one year before the effective
filing date of a patent application. It takes something more than customers not
being satisfied with the product
b. UMC Electronic v. US
FACTS: UMC offered a prototype device to the Navy over a year before the
patent application was filed
HOLDING: the issue of whether an invention is on sale is to be determined
by all circumstances surrounding the sale or offer to sell. It is the offer to sell
that matters, not whether it was accepted or not. Notion of offer to sell as
putting the public in possession of the invention
c. Pfaff v. Wells Electronics
FACTS: P patents an invention and then argues it was infringed by D. D
contests validity of OP patent b/c P offered to sell it Texas Instruments prior
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to critical date. Pfaff’s defense is that the invention was not reduced to
practice when offer was made.
HOLDING: Court says that in order for statutory bar to take effect it is not
necessary for the invention to be reduced to practice when offered for sale.
Criticize the totality of the circumstances approach. While we want to allow
inventors to test and perfect their inventions, when operability is not in doubt,
there is no reason to extend the grace period.
B. Third Party Activities - §102 (b)
1. Informing Uses (informing uses by a third party raise a statutory bar for
inventor)
a. Electric Storage Battery v. Shimadzu
FACTS: American Company D used a process to develop lead powder two
years before Japanese citizen P sought a US patent for it
HOLDING: A third party’s innocent use of an invention in its factory to
create a commercial product is a public use under §102(b), the unhidden use
of a machine in a factory process to produce commercial products for a profit
is public use. The machine was not hidden from employees and no efforts
were made to conceal it from anyone who may have had a legitimate interest.
NOTES: the current statutory bar applies to prior uses and sales by anyone,
regardless of consent
b. Baxter International v. Cobe
FACTS: Third party research scientists used a sealless centrifuge in their
laboratory over a year before a patent application is made
HOLDING: a third party’s innocent use of an invention in his experimental
laboratory is a public use under §102(b). Scientists lacked effort to maintain
confidentiality and the free flow of visitors into and out of the lab.
2. Secret Uses (secret uses by a third party do not raise a statutory bar for the
inventor)
a. Gore v. Garlock
FACTS: TEFLON, developed by a secret process, is sold prior to one year
before Gore applied for a patent on the process
HOLDING: a third party’s secret, commercial use of a process is not pubic
use under §102(b). There is no evidence that someone viewing the machine,
even while in operation could discern the process. This is different than
letting people in and out of law.... there were restrictions on this technology.
C. Patents, Printed Publications, and “in This Country” - § 102(a) and 102(b)
 102(a) asks if described before invention of inventor; 102(b) asks if described
before filing critical date
 statute makes separate references to things patented/ described in printed
publications b/c not all countries print and publish things that count as patents
right away
 We accord prior art status to inventions not yet publicly accessible b/c they
are on their way. Point of prior art rues is to keep from issuing patents on
things that are on their way to public accessibility
 Court looks to accessibility of disclosure to the public
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
Cases say that claimed invention is prior art as of date patented... date
exclusionary rights arise. Rest of patent (disclosures) are prior art as soon as
publicly accessible.
 Obscure references will count as printed publications
1. Patented
a. In Re Carlson
FACTS: Carlson was denied a US patent on his bottle design because a
similar design was registered in Germany
HOLDING: A German Geschmacksmuster is a foreign patent within the
meaning of §102(a), and may therefore qualify as prior art for purposes of
raising the statutory bar to a patent claim.
NOTES: US PTO publishes patents simultaneously with their issuance.
Other patent regimes typically publish applications prior to grant – usually 18
months after they are filed – as well as contemporaneously with their grant.
2. Printed Publication
 Word “printed” doesn’t mean much anymore – now we interpret printed to
mean WebPages, microfilm, etc.
 Reference can be anywhere in the world
a. In Re Hall
FACTS: In Hall’s action to set aside the Patent Office decision rejecting
claims 1-25 of Hall’s patent application, the Patent Office claimed that Hall’s
claims were unpatentable because they were based on a printed publication
more than a year prior to Hall’s filing of his patent application
HOLDING: public accessibility is the key issue in determining whether a
reference constitutes a printed publication
NOTES: Reference does have to be publicly available in some place that is
accessible – even those just available to some group interested in the
invention. Limitations of accessibility on secrecy obligations do not count
(like grant applications)
3. In This Country
 public use and on sale bar only work if in this country, but patent or printed
publication can be anywhere in the world
a. Robins Co. v. Lawrence
FACTS: P sold 50 tunnel-boring machines in one transaction and leased
several others in another by contracts which did not specify that the transfers
were for experimental use of the machines. When P later sued D for
infringement on its patent for machinery, D contended that the prior transfers
precluded patentability bc/ the machines were “on sale” before the alleged
infringement
HOLDING: Whether or not such a sale is consummated in a foreign country,
we hold that the product is on sale” in the US, within the proscription of the
statute, if substantial activity prefatory to a sale occurs in the US.
NOTES: the words “in this country” may sometimes work a benefit on
domestic inventors
D. Abandonment - §102(c)
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
§102(c) does not refer to the relinquishment of the invention itself, but instead
the surrender of the invention to the public (surrender of right to get a patent).
It provides that certain conduct by an inventor can lead to the forfeiture of the
right to obtain a patent on the invention
 contemporary decisions rarely rely upon abandonment under §102(c) as a
basis for defeating a patent right. They instead turn to §102(b), which
provides more specified details on when the patent right is lost. In some
sense, if the conditions of §102(b) are fulfilled, then the law deems the
inventor to have abandoned the right to obtain patent protection
E. Delayed United States Filing - §102(d)
 The original rationale for the statutory predecessor of §102(d) was the public
policy consideration that when patents expire in foreign countries but remain
alive in the US, industry in foreign countries may be encouraged to the
detriment of domestic industry.
 The statute was designed to prevent a foreigner from spending his time and
capital in the development of an invention in his own country, and then
coming to this country to enjoy a further monopoly when the invention had
become free at home
 §102(d) says that if you file in a foreign country and wait longer than 1 year
before filing in the US AND in the meantime, your foreign patent issues, can
not get a patent in the US
 Previous statutes said US patent expired when foreign patent expired, but this
is no longer the rule b/c of US treaty obligations
 Does not come up very much b/c usually patent applications are pending
longer than 12 years. Foreign patent likely will not issue before US filing
UNLESS you really wait a long time. Also, incentive of inventor to file in US
within a year b/c if so, can get §119 priority of first foreign filing date.
 Need to look at three dates:
- foreign file date
- foreign issue date (if there is one)
- US file date
1. In Re Kathawala
FACTS: The inventor of a cholesterol inhibitor received foreign patents before
seeking a US patent
HOLDING: (1) the issuance of a foreign patent, even if invalid, bars a US
patent claim directed at the same invention. (2) For purposes of §102(d) a
foreign patent is in effect when the patentee’s rights become fixed. (3) If an
invention can be claimed in many manners and the foreign patent application
does not list them all, §102(d) still bars a US application for invention
V.
Novelty: Prior Invention
 Three provisions: §102(a), (e), (g) – three tests for newness of an invention
as of the invention date
 (a) known or used by others in this country OR patented/ described in a
printed publication in this or a foreign country (measure as of invention date)
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
(e) deals with a special category of secret knowledge of a first inventor’s
work: a patent application filed prior tot he invention date, which as actually
matured into a granted patent but which does not claim the invention
 (g) is a general provision covering secret work by the first inventor that
becomes known tot he public after the invention by the second inventor.
Serves as a basis for an interference – a proceeding between two or more
inventors each asserting that he was the first inventor and therefore should
obtain a patent
 (f) prevents a patent form issuing to an applicant who did not himself invent
the subject matter sought to be patented
 Straightforwardly states the essential first-to-invent rule which dominates US
novelty analysis. Entirely unique to the system of the US
A. Prior Invention under §102(a)
1. Woodcock v. Parker
FACTS: Woodcock sought to use a machine patented by Parker
HOLDING: If the first inventor of a machine obtains a patent, a second
inventor, regardless of his lack of awareness of the first invention, cannot then
obtain a patent on the machine
NOTES: opinion is among the earliest explaining the first-to-invent system
2. Gillman v. Stern
FACTS: Stern claimed that Gilman’s patent was invalid since Haas had secretly
invented a similar “puffing” machine years earlier
HOLDING: An inventor who strictly conceals the operation and composition
of his machine while operating it commercially is not the first inventor is another
made the first public use. It was held that the first inventor must make his
results public to satisfy this part of the statute. Just as secret use is not a public
use, a secret inventor is not a first inventor.
NOTES: if inventor uses it secretly, the public has nothing; “trade secret use”
does not count as used by others (only used by inventors) and “secret
knowledge” does not count as known by others
3. Rule 131 Affidavits
a. Rule allows applicants to declare an invention date prior to the date of the
prior art reference.
b. Need for the rule arises b/c inventors need not attest to their date of inventive
activity when they file patent applications. Instead, they reveal their invention
dates on an ad hoc basis when the examiner produces a pertinent prior art
reference.
c. Use of the Rule is known as “swearing behind” or “antedating” a reference.
d. Basically, if you made an invention prior to the date of the reference, it won’t
count as prior art against you
e. Limitations:
- 131(a)2: can’t use it to overcome statutory bar
- won’t get you past US patent OR application that
claims that invention
f. Standards of completeness in (b)
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g. Tracks priority rules for interferences: reduction to practice before reference
OR conception with diligence until subsequent reduction to practice
h. Set forth facts in affidavit
i. Now accept proof of prior invention in NAFTA or WTO countries to comply
with our TRIPS obligations
B. The Elements of Invention under §102(g)
 As technologists increasingly engage in a global competition to develop
valuable inventions, they will often develop similar or identical technologies
at approximately the same time.
 Patent system has developed a “winner take all” policy: only the inventor that
was first to complete a particular technology will be awarded a patent. Policy
is implemented through rules in 102(g)
 Exception to Rule of §102(g) is that if the inventor is determined to
abandoned, suppressed or concealed the technology at issue, then he has in
essence forfeited his special status in accordance with §102(g).
 Interferences may occur between two pending patent applications or a pending
application and an issued, unexpired patent
 Senior party: party with the earliest effective filing date; Junior party: the
other party
1. The Rule of Priority
a. The first inventor to reduce an invention to practice wins the priority contest.
But is the inventor who is first to conceive the invention, but second to reduce
the invention to practice, can show diligence from the time prior to the
conception date of the first to reduce to practice, he will displace the first to
reduce the invention to practice as the first inventor at law.
b. First part of §102(g) defines prior art as proven in an interference (can base
priority on acts in US, NAFTA, and WTO countries)
c. Second part of §102(g) prior art as that made by other and not abandoned (w/o
need for interference). Prior invention not patented has to be in this country.
If in this country, prior art if patented or not as long as not abandoned.
2. Conception
 Inventor has to envision the structure and know how to make it
 To show conception, an inventor must present proof showing possession or
knowledge of each feature of the count and communicated to a corroborating
witness in sufficient detail to enable one skilled in the art to replicate the
invention
 Very often evidence of conception is in lab notebooks
a. Oka v. Youssefyeh
FACTS two parties invented the same compound. P was the first to file, but
D filed an interference and claimed he invented it prior to P’s filing.
HOLDING: Conception requires proof that the junior party knew of the
means of carrying out the conception and proof of an exact date of conception
3. Reduction to Practice
 An inventor may reduce to practice in two ways: constructively (by filing a
patent application) and actually (by building and testing a physical
embodiment of the invention
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
If reduction is to be constructive, the filed application must fully disclose the
invention
a. Cooper v. Goldfarb
FACTS: both parties trying to patent more Gore-Tex technology. This time
it is stretching TEFLON to create an artificial graft. Inventors seems to be
collaborating with one another. Cooper says Goldfarb’s activities should be
counted as his activities. Cooper is senior party.
HOLDING: Goldfarb wins because he sustained his burden of proof. On
order to show reduction to practice, must show embodiment of the claim.
Failure of proof that grafts shown to Dr. Sharp by Cooper were successful.
Cooper also could not prove diligence during the relevant time period. No
credit is given for reduction to practice until it is all corroborated. There is a
mental aspect to reduction: you have to test it and know that it works. Don’t
have to understand why it works – just have to know that it works for the
purpose for which it was intended. Have to appreciate what is happening
rather than understand why
4. Diligence
 Person first to conceive but last to reduce can prevail if there is a showing of
diligence during the critical period
 Need to show activity or a legally adequate excuse for inactivity
 Reasonable excuses: sickness, extreme poverty, working, patent attorney
dealt with it in the order it got on his desk
a. Gould v. Schawlow
FACTS: Gould conceived of a laser, but lacked the resources to reduce it to
practice before Schawlow
HOLDING: A party chargeable with diligence must account for the entire
period during which diligence is required and prove reasonable diligence
during that time. Gould made little attempt to identify particular activities at
particular times during the critical period. Gould went wrong b/c his work
wasn’t corroborated and wasn’t detailed enough in description. Need to know
not only that he was slaving away, but what exactly he was doing.
5. Corroboration
 An inventor may make use of the various inventive activities – conception,
reduction to practice, and diligence – only if they have been corroborated
 Inventors say-so is not good enough, but what more is required is not always
clear
a. Hahn v. Wong
FACTS: P claimed to have created a chemical first and submitted plots,
graphs, and two affidavits to support his claim
HOLDING: to make a prima facie showing of priority, a junior party must
show independent corroborating evidence. An inventor’s own statements and
documents are not enough. He must meet this standard with witness
testimony or evidence of facts and circumstances independent of formation of
the inventor. Hahn’s affidavits did not show enough
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NOTES: counsel clients to keep very detailed records of everything done;
cross endorse each other’s notebooks and watch each other if you can. Could
also have lab meeting to report on progress
6. Patent Award to Second Inventor
 Really hostile to prior inventors spurred into activity by subsequent inventors
a. Dunlop Holdings v. Ram
FACTS: P maintained that the patent it claimed D infringed was valid,
although the invention it covered had been first discovered by Wagner, b/c
Wagner had suppressed or concealed the invention.
HOLDING: a public use of an invention which does not disclose the
discovery does not constitute suppression or concealment of the invention. .
Activity will give rise to prior art – exploiting means have not suppressed or
concealed. Prior inventor will be barred, but subsequent inventor cannot
patent it either.
NOTES: if the invention is really stuck in a closet somewhere, it is unfair to
subsequent inventor to penalize him by not allowing a patent. Perhaps notion
of lost art: want patents to issue for these b/c the revival is well worth it to the
public and the public interest is served by offering the patent.
b. Paulik v. Rizkala
FACTS: In P’s suit against D to establish priority of a patent for a catalytic
process for producing alkylidene diesters, Rizkalla contended that P
suppressed or concealed the invention within the meaning of §102(g)
HOLDING: Under US patent law, the patent right is granted tot he first
inventor rather than the first to file the patent application. The mer elapse of
time will not prevent he inventor from receiving a patent. There is no
impediment in the law to holding that a long period of inactivity need not be
fatal forfeiture, if the first inventor resumes work on the invention before the
second inventor enters the field
NOTES: if second inventor does come on the scene and first inventor has
been inactive, first inventor will not get the benefit of early invention date, but
rather will get the benefit of the renewed activity date – date of diligence.
Court justifies this on policy grounds: promoting renewed activity
C. Disclosure in US Patent Applications - §102(e)
 Invention described in a patent application or issued patent in United States
(even if before it is publicly accessible)
 Only for US patents!!!!!
 Rule of §102(e) only applies if the first application ends up issuing as a patent.
1. Alexander Milburn v. Davis
FACTS: Davis defended a patent infringement charge by asserting that the
application for a patent filed by Milburn’s assignor was subsequent to Clifford’s
patent application that disclosed the invention but did not result in a patent until
after Milburn’s assignor applied
HOLDING: a US patent disclosing an invention dates from the date of filing an
application for the purpose of antedating a subsequent invention. The delays in
the PTO ought not to cause a different result to obtain when the first patent is not
actually granted until after the second application is filed. In both cases, the
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second patent should be barred b/c the second one to apply was not the first
inventor and the first applicant has done all he can do to make the first
application public. All that remains is for the PTO to do their work.
NOTES: wasn’t sufficiently available to the public, yet court wants to treat it as
such. In this way, court treat patent applications different from other printed
publications.
D. Derivation – Theft from Prior Inventor - §102(f)
 Unsurprisingly, the patent law seeks not only the first, but the actual inventor
 Derivation: patentee acquired knowledge from another (or at least the
important parts of it)
1. Agawam Wollen Co. v. Jordan
FACTS: P argued that D had infringed on his patent for a weaving apparatus
HOLDING: When an employer is engaged in experiments on a new invention,
any suggestions by employees that do not themselves amount to a new invention
are the property of the employer.
E. A Note on First to File Versus First to Invent
1. Advantages of first to file:
a. Filing date is the constructive reduction to practice date
b. Burden of proof: first to file is designated senior party. Senior party may be
able to avoid burden by resting on filing date if junior party can’t show
reduction to practice. Junior party always retains the burden of persuasion.
- if junior party files while senior party is till pending,
preponderance of the evidence standard
- if junior party files after senior party has issued, clear
and convincing evidence standard
c. Matters how invention is defined in count. In interference actions this is what
is at issue. Second party will copy claims of first in order to provoke an
interference
VI.
Anticipation
 §102 persistently refers to the “invention” itself. So once a particular
technological disclosure has been determined to qualify as a prior art
reference, a comparison of the reference with the claimed invention must
occur to see if both involve the same invention. The standard of comparison is
exacting in the context of anticipation
 Novelty will be destroyed or a statutory bar will be held to apply only if that
single patent, publication, sale or use itself falls within the ambit of the
patent’s claim. That reference must also enable one skilled in the art to
practice the invention without undue experimentation.
 To invalidate, have to find a SINGLE prior art reference that IDENTICALLY
explains/ discloses the invention (prior art reference has to have all elements
of claim)
 Courts tend to construe claims in an effort to uphold validity
 TEST: What would infringe if it came later, would anticipate if it came
before
 For §102(a) things must be exactly the same, but for §102(b) things can be
substantially similar
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 When considering novelty,
 Genus/ Species: pp. 391 of book
A. The Identity Requirement
1. Lewmar Marine v. Barient
FACTS: Lewmar brought an infringement action concerning its sailboat
winches, but Barient claimed it had anticipated that invention
HOLDING: The standard for anticipation is that which would literally infringe
if later in time due to lack of novelty, anticipates if earlier than the date of the
invention. This would not literally infringe claims, so does not anticipate
NOTES: can consider anticipation as a four-corners doctrine. If the claimed
invention can be found within the ambit of a single prior art reference, then the
invention has been anticipated. References may not be combined during this
inquiry, nor may elements which are analogous to the disclosure of a reference
be considered
2. Continental Can Co. v. Monsanto
FACTS: D asserted that all of the claims of P’s patent were anticipated by the
Marcus patent although the references were slight.
HOLDING: When a patent reference is silent about an inherent characteristic,
the missing descriptive matter must be necessarily present and recognized by
persons of ordinary skill. To serve as an anticipation when the reference is silent
about an asserted inherent characteristic, the gap in the reference may be filled
with recourse to extrinsic evidence. The evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference.
NOTES: If prior art meets the claims, but no one knew about it at time ... no
deal. Accidental anticipation and undetectable anticipation will not invalidate a
patent. Prior activity has to involve some level of awareness or appreciation.
Case for inherency is strongest when prior art gave public the benefit but failed
to explain it. Case for inherency is weakest when prior art reference would yield
only sporadically.
B. The Enablement Requirement of Anticipation
1. Titanium Metals v. Banner
FACTS: P claimed he could exclude others from making, using, or selling an
alloy described in a Russian article. Alloy was disclosed but the properties
were not. D contended that P should not receive a patent on the alloy b/c it was
prior art.
HOLDING: Novelty is a fundamental condition for patentability. Can’t get a
patent on an old product just b/c you are the first to recognize the properties.
Perhaps can get a new use patent, but not another product patent. . Enablement
requirement is that if someone of skill in the field could make the invention by
detail in the reference without undue experiment, not novel. This makes the
anticipation requirement much less strict b/c it expands the requirements for
prior art.
VII. Nonobviousness
 Not codified until 1952 Patent Act, but in case law before then
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
Requirement that the invention show “inventiveness” and not be just the work
of a mechanic – Patent system only gives patent to inventors
 System makes a qualitative assessment – asks if the invention is good enough,
new enough, and a big enough advance
 If patents issued in obvious cases, they would be a nuisance and impeded
improvements. Nonobviousness thus creates a “patent-free-zone” around the
state of the art allowing technicians to complete routine work and marginal
improvements
 Fact that we have 103 makes 102 standards less harsh – minimizes the tough
standard of “identically disclosed.” 103 used if 102 doesn’t work b/x prior art
not close enough
 Would invention be obvious to someone of ordinary skill in the filed at the
time of the invention?
A. The Historical Standard of Invention
1. Hotchkiss v. Greenwood
FACTS: P contended that D had infringed upon his patented design for knobs
made of clay and porcelain
HOLDING: a patent will not be held valid if it merely improves an old device
by the substitution of materials better suited to the purpose of the device The
improvement here is the work of a skillful mechanic and not hat of an inventor
NOTES: to decide nonobviousness take the mythical mechanic of ordinary skill
in the field (who has read all in the field and knows all files in the patent office)
and see if it would be obvious to him. Not a genius, but well read with tunnelvision.
2. Great A&P Tea company v. Supermarket Equipment Corp
FACTS: P sued D for infringement of its patent on a rack to move groceries
along a supermarket counter to the checking clerk
HOLDING: A patent will not be sustained if the patentee merely brings
together segments of prior art with no change in their respective functions. The
conjunction of known elements must contribute something; only when the whole
in some way exceeds the sum of its parts is the accumulation of old devices
patentable.
B. The Modern Standard of Nonobviousness
 Supreme Court cases ( the trilogy) said that the standard of nonobviousness
after the Patent Act was the same as before §1-3 was enacted. This standard
was very high and very tough to meet.
 Federal Circuit moved strongly in the other direction with objective test
(standardized rule in favor of patent holders). Generous attitude towards
secondary considerations. In fact, they don’t even use the word “secondary”
anymore. Now call it “objective.”
 Standard of nonobviousness is a mixed question of law and fact. Juries decide
the factual issues on interrogatories an then court decides as a matter of law
whether invention is obvious or not.
1. The Trilogy
a. Graham v. John Deere / Calmar v. Cook Chemical
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FACTS: John Deere’s invention is basically a hinge that he says differed
from prior art b/c of flexibility. Calmar invention is a plastic finger-sprayer
with a hold-down lid.
HOLDING: Determination of the non-obviousness of a claimed invention as
to prior art requires a case by case analysis of:
(1) scope and content of the prior art
(2) differences between the prior art and the claims at issue
(3) the level of ordinary skill in the pertinent art
Secondary consideration may also be relevant to the determination.
NOTES: Court seems to set aside the secondary consideration and focus on
own reading of the prior art. Secondary considerations were not enough to tip
the scale in favor of patentee. Court thinks secondary considerations could be
the result of advertising, not greatness of product. Yet court does not want to
completely ignore these considerations b/c they can be a good reality check or
can be the best evidence available of what was obvious.
b. US v. Adams
FACTS: P invented a highly efficient battery that the US Navy found
unbelievable and rejected, but later hired another companies to manufacture
HOLDING: Known disadvantages in old devices that would naturally
discourage the search for new inventions may be taken into account in
determining obviousness. This patent holder succeeded while others did not
b/c the prior art “taught away” from this particular combo – discouraged this
combination. Court is willing to look outside prior art reference – outside the
four corners for nonobviousness where it will not for novelty.
2. The Objective Tests
 According to Federal Circuit, MUST always consider objective (secondary)
considerations alongside the subjective
a. Newell v. Kenney
FACTS: P’s adjustable window shade was patented, but D, which had
introduced a competing shade, argued that it was obvious
HOLDING: The issue of obviousness is a legal conclusion and secondary
considerations of commercial success, licensing, and adoption by the industry
are not dispositive. There must be a sufficient relationship (nexus) between
the success and the patented invention. Patentee has the burden of
establishing prima facie case of nexus. Once he shows nexus, challenger
needs to show success was due to extraneous factors
3. Case Explorations of Nonobviousness
a. Hybritech v. Monoclonal Antibodies
FACTS: sandwich immunoassays were judges obvious by the lower court
based upon a large number of references
HOLDING: Objective evidence such as commercial success, failure of
others, long-felt need, and unexpected results must be considered before
reaching a conclusion on obviousness. The references considered by the court
must address the issue as a while.
NOTES: Federal Circuit seems to take a generally expansive, permissive
approach to non-obviousness in biotechnology cases.
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b. In RE O’Farrell
FACTS: O’Farrell sought a patent on a method of creating proteins already
suggested in an article
HOLDING: Obviousness does not require absolute predictability of success,
but merely reasonable expectation of success.. evidence of some uncertainty
does not make the invention nonobvious. Buzz word is undue
experimentation: if arriving at invention involves trying lots of different
things with no idea which is likely to succeed, then it is not obvious.
NOTES: three chief requirement for a prima facie obviousness rejection of
particular pertinence to biotechnology:
(1) the prior art must disclose or suggest the modification
in the prior art process that is required for the invention,
without reference to the applicant’s specification
(2) the reference must convey to one skilled in the art that
there is a reasonable expectation of success if the
modification is made
(3) the reference must provide detailed enabling
methodology for practicing the claimed invention
C. Obviousness in Chemistry and Biotechnology
 Federal circuit sees biotech as a subset of chemistry cases
 In Re Hoeksema: trick is to figure out which chemicals to make, not how to
make them (products require no special skill to make, so we look to properties
once made)
a. Composition Claims
 Patenting in the chemical and biotech areas focuses first and foremost on
claiming “new entities”, shorter new molecules constituting “new entities”
and the longer chains from recombinant biotechnology. A structural formula
is best used to identify the structure of the invention
 Proof structure: applicant submits claim, PTO looks at prior art to see if
structurally similar compound, if there is prior art the examiner rejects the
application as prima facie obvious, then applicant meets the showing with
evidence of surprising properties not possessed by the prior art compound.
 If prior art is structurally similar, and is useful, courts assume that there is
motivation for a subsequent invention to tinker with it.
(1) In Re Papesch
FACTS: the applicant claimed that although his compound was
structurally similar to a patented compound, its difference in properties
rendered it patentable.
HOLDING: a prima facie case of obviousness due to structural similarity
of compounds can be overcome by a showing that there is a difference in
the compounds’ properties. In patent law, a compound and its proprieties
are one and the same thing
NOTES: Judge Rich wanted to get away from the practice of saying that
chemical compound structurally similar to prior compound is obvious.
Didn’t wasn’t similarity to preclude a patent. If a new compound has
surprising or advantageous properties, might still be non-obvious.
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(2) In Re Lalu
FACTS: Lalu sought a patent on a structurally similar compound with a
new property, corrosion inhibition, not listed in the prior art compound’s
patent
HOLDING: if a prior patented compound fails to suggest properties of a
claimed similar compound, then the latter compound is patentable.
(3) In Re Dillon
FACTS: A structurally similar fuel additive acted as a dewatering agent,
but the prior art did not suggest or disclose this use
HOLDING: a prima facie case of obviousness does not require both
structural similarity and a suggestion in or expectation from the prior that
the claimed compound will have the same or a similar utility as the one
newly discovered by the applicant. Dillon failed to show that he
compound had different properties than the prior art or that hers performed
to an unexpectedly higher degree
NOTES: can view this as a parallel to inherency principle in novelty
determinations (yet a little bit different b/c in novelty we know the first
product had the property the whole time b/c it is the same product. With
nonobviousness, this is not necessarily the case b/c slight changes can
produce different properties)
(4) In Re Deuel
FACTS: The Patent Board declared Deuel’s discovery of the sequences
of similar tissue growing proteins in human and bovine cells obvious
HOLDING: when a chemical entity is structurally new, a prima facie
case of obviousness requires that the teachings of the prior art suggest the
claimed compounds to a person of ordinary skill in the art. The Board’s
theory that one may have been able to do what Deuel did amounts to
speculation and impermissible hindsight.
NOTES: court see sequence itself as a new chemical compound, so not
even prima facie obvious. This seems to suggest that all new DNA
sequences re nonobvious regardless of how routine the method of making
(5) Eli Lilly
Facts are not important, but case shows that the Federal Circuit approach
to DNA as molecule has a restrictive side as well as an expansive side.
Easy to satisfy nonobviousness standard, but hard to satisfy disclosure
requirements. Since Deuel, court seems to have dropped the ball on
nonobviousness and focusing attention on utility and written description
instead
b. Method Claims
 §103(b) allows applicants to get processes without process claims being
separately examined for obviousness (before this provision, when applying for
both a process claim and a product claim, each was analyzed for novelty and
nonobviousness separately).
- only applies to biotech industry
- product and process claims have to be in the same
application
25
-
both claims have to be owned by the same person
both claims have to expire on the same date
if product claim falls, process claim will fall as well
only obviousness affected
legislative overruling of In Re Durden
(1) In Re Ochiai
FACTS: Ochiai’s application utilizing a standard process but anew
starting agent was rejected
HOLDING: obviousness in method claims is a fact specific inquiry ad
there is no rule that a patent application using old processes but a novel
starting material is per se obvious
VIII. Prior Art for Nonobviousness
 Prior art that applies for novelty applies for nonobviousness (so it is often
possible to take to take the same group of references relevant for novelty and
by combining them or looking past the contents of a single reference,
undertake the nonobviousness inquiry).
 The significant qualification to the general rule that art for novelty applies for
nonobviousness as well is that for nonobviousness, the prior art must come
from and analogous art
A. Analogous Arts
1. In Re Clay
FACTS: Clay argued that his invention displacing the dead volume at the
bottom of a tank with gel was in a technical area too remote from the patented
invented involving a similar gel so as to not be prior art
HOLDING: prior art is analogous if it is in the same field of endeavor or if it is
still reasonably pertinent to the particular problem with which the inventor is
involved
2. In Re Winslow
FACTS: Winslow claimed his bag holding invention was simple, but not
obvious in light of the prior art
HOLDING: §103 presumes full knowledge by the inventor of the prior art in
his field of endeavor. The proper way to apply the §103 obviousness test is to
picture the inventor as working in his shop with the prior art references hanging
on the walls around him. BUT there cannot be hindsight reconstruction
IX.
The Patent Specification: Objective Disclosure
 Wholly objective requirements for disclosure of an invention set forth in the
US Patent statute at §112 par. 1. Provision requires that the applicant disclose
“how to make” and “how to use” the claimed invention as well as that the
specification include a “written description” of the invention. The provision
also requires an inventor to disclose the “best mode contemplated by the
inventor”
 Enablement requirement rationale: as the essential bargain for the
exclusive right of the patent, the patentee must teach the public how the
invention works: the patent instrument itself must “enable” others skilled in
the art to practice the disclosed technology. Another rationale is that the
enabling requirement serves to delimit the boundaries of the patent protection
26
by ensuring that the scope of the patent claim accords with the extent of the
inventor’s technical contribution
 Written description rationale: exists b/c the statute allows he applicants to
amend their applications following the date they first filed for a patent. When
new claims are added after the original filing date, the written description test
requires that the augmented material must find a basis somewhere in the
original application as filed. Ensures that inventors may not improperly
amend their patents by including subsequent technical advances in a
previously filed application
A. Enablement – How to Make
 the specification ideally provides a cookbook-like recipe showing a person
skilled in the art how to make the invention
1. Gould v. Hellwarth
FACTS: P applied for a patent on a Q-switch for a laser although lasers
themselves were still theoretical
HOLDING: a patent application must have adequate disclosure sufficient for
one skilled in the art to make an operable device. In this case, several experts
testified that there is not enough info in the application to reveal the knowledge
necessary to produce an operable laser.
NOTES: tossing out he mere germ of an idea does not satisfy the enabling
requirement. Specification, not the knowledge of one skilled in the art, must
supply the info to make
2. Atlas Powder v. EI DuPont
FACTS: In Atlas’ suit against Du Pont for patent infringement on a blasting
agent, Du Pont claimed that Atlas’ patent disclosure did not enable one skilled in
the art to make and use the claimed invention and thus, the invention was invalid
under §112.
HOLDING: to be enabling under §112, a patent must contain a description that
enables one skilled in the art to make the claimed invention. That some
experimentation is necessary does not preclude enablement; the amount of
experimentation, however, must not be unduly extensive. Determining
enablement is a question of law. Enablement does not require optimality, just
workability
NOTES: use mythical guy to determine what has been enabled and what is
nonobvious. Ennoblement as flip side of nonobviousness
3. In Re Wright
FACTS: Wright discovered a vaccine for a chicken RNA virus and sought a
patent that extended to other vaccines
HOLDING: an application containing a general description of a process, the
subject matter, and methods of use, with only one working example, may be
rejected as unsupported by the enabling disclosure
B. Enablement – How to Use
1. In Re Gardner, Roe and Willey
FACTS: Applicants sought a patent on the antidepressant activity in a group of
compounds, but failed to provide detailed instruction on dosages
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HOLDING: an application must contain clear, sufficient information on how to
use the invention. Undue experimentation is required to figure out how to use
the product to treat patients
NOTES: court may have been a little bit harsh here. The FDA figures this stuff
out, not the PTO or applicant
C. “Written Description” – Proscription on New Matter
 this requirement should be seen in light of the other conditions which an
applicant must fulfil to obtain patent protection (for example the 1 year grace
period allows the inventor to prepare application in light of the advances)
 if applications could be amended freely after filing, inventors could change
their patents and obtain the benefit of the earlier filing date for later advances.
They might even be able to change patent simply to match their competitors
products in the marketplace. The written description requirement keeps al of
this from happening
 Court interprets the written description requirement and the enabling
requirement as two separate requirements
 Way of delineating contribution as of filing date. This is important in combo
with §132 proscription on new matter when amending application
 When amending claims, earlier disclosure has to be sufficient to support new
claims
 Written description also comes into play during an interference: both parties
have to be claiming the same invention and they are defined by the written
description
1. Application of Barker
FACTS: Barker created a panel joining several wooden shingles and attempted
to amend a previous patent
HOLDING: a patent requires both a written description of the invention and a
description of how to use and make the invention. An application may contain a
disclosure that is sufficient to enable one skilled to make and use the invention
yet still fail to comply with the description of invention requirement.
2. Vascath v. Mahurkar
FACTS: D’s original application contained drawings of his catheter invention,
and he later attempted to attach written descriptions
HOLDING: drawings may be sufficient to provide a written description of the
invention. This is ok as long as someone skilled in the art would find it
adequately disclosed
3. Procedure under §112:
a. Enablement is a question of law subject to plenary review (even though it
rests on factual determinations)
b. Written Description requirements is a question of fact (bizarre that one is a
question of fact and the other is law)
X.
The Patent Specification: The Best Mode
 application must state the inventor’s subjective best mode for carrying out he
invention
 measured at the time of filing
 unique to US Patent System
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
A.
B.
XI.
A.
easier to satisfy the earlier you file patent application. Also less meaningful
the earlier you file b/c you presumably don’t know much yet
 good faith quality
 TEST: (1) is there a best mode? And (2) if so, was that best mode disclosed?
 Rationale: limits trade secrecy and may result in higher quality disclosures
 §112 limits disclosure to knowledge of inventor – not assignee
 Requirement satisfied even when best mode is buried in a list of alternatives
 Continuing applications need not be updated with best mode
Chemcast v. Arco
FACTS: Rubright, an inventor for Chemcast, did not disclose his material source
for the dual durometer grommet in his specification, but instead gave a list of
generic potential materials
HOLDING: specifications must satisfy a dual-pronged best mode inquiry:
subjectively, whether the inventor knew of a better mode than the one disclosed, and
objectively, whether the disclosure is adequate to direct those skilled in the art of
practicing the best mode.
NOTES: the court says that the fact that it was a trade secret did not matter – still
have to tell what you think is the best mode
Glaxo v. Nonopharm
FACTS: Crookes, an employee of Glaxo, was unaware of Glaxo’s further
developments on his patented drug, which were not included in the patent
HOLDING: the patent must disclose the best mode contemplated by the inventor
for carrying out his invention. One should not impute knowledge to the inventor.
Claims
 Most significant part of the entire US patent instrument. Claims themselves
set forth the proprietary technological rights possessed by the patentee
 §112 para. 2 : one or more claims pointing out the subject matter of the
invention – claims need to be set forth with distinctiveness
 para. 3: can be in independent, dependent, or multiple dependent form
 claim must be composed as one English sentence (encourages claims that are
more succinct)
 claims are usually a reverse pyramid of successively narrower claims
US Peripheral Claiming Technique
1. Ex Parte Fressola
FACTS: Fressola used an omnibus claim, referring to specifications and
drawings elsewhere in the application, and the examiner rejected it
HOLDING: Claims in utility applications that define the invention entirely by
reference to the specification and/or drawings can be rejected under §112 para.
2. Although these were historically allowed, the conversion from central
definitions to peripheral definitions changed this. Modern claim interpretation
requires that the claim particularly point out and distinctly claim the invention
without reading in the limitations from the specification
NOTES: can use the specification to help understand the language of the claim,
but can’t read specification limitations back into claim b/c specifications often
include much more than is actually claimed)
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B. Patent Claim Format
1. Elemental Claim Structure
a. The preamble: summarizes invention introductory phrase. Sometimes
treated as a separate limitation of claim – depends on how central court
considers preamble to be to claim
b. The transition: connects the preamble to the body using terms of art in
patent law
(1) comprising: open claim – includes elements set forth in claim , but is not
limited to them
(2) consisting of: closed claim – only covers devices with the exact elements
listed in claim and nothing more
(3) consisting essentially of: catchall phrase – includes some additional
elements other than those listed, but excludes major additions that would
alter the invention greatly
c. The body: defines the product or process and contains a list of limitations.
Can be several different kinds of claims:
(1) independent claims: stands on own language. Claim 1 is always
independent, but other can be too
(2) dependent claims: refers back to independent claims and states further
limitations. Narrows scope which limits monopoly but also increases
chances of standing up to a challenge to show infringement of dependent
claims, must show accused device meets limitations of independent claim
and further limitations of dependent claims
2. Functional Claiming
 Paragraph 6 of §112: claim limitations may be stated in functional rather
than structural terms (means plus function)
 Important to know if claim is in fact a means-plus-function claim b/c if so,
specification is read back into claim elements
 Congress added a narrowing rule of construction to this functional claiming in
that claim will be construed to NOT to cover any means of performing the
function BUT ONLY means stated and its equivalents
 Look to specification to determine means stated and then use that means to
determine equivalents
 PTO does not follow this narrowing construction even those it is explicitly
states in §112 para. 6. PTO construes functional language broadly to cover
any means of achieving function (hostile to functional language, so if
language is construed broadly chance of being held valid are slim)
 Use of word “means” in a claim is not always dispositive
a. In Re Donaldson
FACTS: Schuler, on behalf of Donaldson Co., appealed the rejection of his
flexible wall air filter on the grounds that the Board of Patent Appeals and
interferences should have looked to the description in the specification as well
as the claim
HOLDING: In construing means-plus-function language in a claim, one
must look to the specification and interpret the claim’s language in light of the
description given in the specification
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NOTES: equivalent under §112 is NOT to be confused with the doctrine of
equivalents
b. Al-Site v. VSI International
Court takes the position that claim construction is a question of law, but
infringement is a question of fact for the jury.
NOTES: a little bit strange to separate the two, b/c claim construction and
infringement are so related
c. Kemco
Court says when interpreting claim in light of §112 para. 6 look to
specification to identify the means disclosed, then construe claim ton cover it
and its equivalents
C. Claim Definiteness
1. Orthokinetics v. Safety Travel Chairs
FACTS: P’s wheelchair patent’s claims did not specify the size and types of
automobiles in which the wheelchair was an aid in entering
HOLDING: A claim is valid under §112 if those skilled in the art would
understand what is claimed when the claim is read in light of the specification.
The “full, clear, concise, and exact” requirement applies only to the disclosure
portion not the claims.
NOTES: words of degree are ok if there is some standard of measuring that
degree
XII. Prosecution
 refers to the administrative process through which an inventor acquires a
patent
A. Overview
1. Prosecution in the US
a. patent lawyer has to identify invention and inventor
b. search prior art
c. file application
d. Provisional application: abbreviated application b/c it is disclosure only –
no claims. It is a priority place-holder application. Gives the benefits of early
filing date while waiting up to 12 months to file a non-provisional application.
Filing date of this provisional application does not start your patent term. To
get benefits, have to fully comply with disclosure requirements of §112
e. File non-provisional application: includes claims, drawings, inventor’s oath,
filing fee, etc. Gets filing date and serial number
f. Assigned to an examiner in examining group
g. Examiner looks at application for form and then on merits for patentability
h. May ask for more info
i. Notifies applicant of his/her decision – called an Office Action and must give
reasons for rejecting. If rejection based on prior art, must cite references
j. Applicant has time to respond (can amend, can stand on claims and traverse
rejection, or can file a Rule 131 Affidavit to avoid prior art)
2. Continuing Application: Authorized under §120 of Patent Act. Can file a new
patent application that refers back to old earlier application and get the benefit of
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the earlier filing date. Less attractive than it used to be b/c patent term starts
running as of earlier file date
3. Divisional Applications: Can’t have two distinct inventions in a patent
application, so examiner will impose a restriction. Must choose one to prosecute
in this application and prosecute the other later. Basically this means taking one
application and dividing it into two
4. Continuation in Part Applications: Includes some claims supported by parent
disclosure but also adds further disclosures. Claims supported by parent
disclosure get benefit of parent disclosure filing date and those that are not
supported get new filing date.
5. Patent Term:
a. §154(a)(2): patent term is now 20 years from the filing date (used to be 17
from date of issuance). This was done to comply with our TRIPS obligations
b. §154(c): those patents filed after June 8, 1995 get new term of 20 years.
Filings prior to Jun8, 1995 can get the longer of the 17 year term (measured
from date of issuance) or the 20 year term (measured from the date of filing).
The 20 year term is usually longer, but perhaps not in biotech b/c of the
backlog.
c. §154(b): Patent term can be extended for unreasonable delays in FDA
approval, biotech backlog etc.
B. Double Patenting
 Can’t get more than one patent on a single invention
 Concern is prolonged period of monopoly (one issues in year X, then another
patent issue in year Y... monopoly of the invention for longer than just the
term of first patent)
 Rely on §101: states that an inventor may obtain A patent” and courts read
this to mean ONLY ONE. Courts put a huge emphasis on the article “a”
 In §121 states that if applicant required to file two different applications by
examiner (like divisional) the first can’t be used as a reference against
divisional application (for reasons like double patenting)
 Terminal disclaimer: applicant agrees to give up the tail end of his second
patent so that both patents expire at the same time. Cures a double patenting
problem
1. Miller v. Eagle Manufacturing
FACTS: Miller countered Eagle’s charge of patent infringement by asserting
that "“double patenting" rendered the patent at issue invalid
HOLDING: if the matter sought to be covered in a subsequent patent is
inseparably involved in the matter embraced by a former patent, this constitutes
“double patenting” and it renders the subsequent patent void
2. In Re Vogel
FACTS: Patent Board of appeals rules that Vogel’s meat and beef processing
claims double patented his earlier pork claim
HOLDING: analysis of double patenting requires determining whether the
same invention issuing claimed twice, and whether the claim is an obvious
variation of an already disclosed invention. As to the first test, same invention
32
means identical subject matter. As good test for this is whether one of the claims
would be literally infringed by the other.
NOTES: Rule is:
- of two patents claim the same invention, rule is to reject
second patent
- if second invention is not the same as the first, but is an
obvious variation of it, can get a second patent, but only
with a terminal disclaimer
- if second patent claims a totally distinct invention – no
problem, can get two patents
XIII. International Prosecution
 to be effective in an increasingly global economy, inventors often must secure
patent rights within many different jurisdiction
 patents are only national in scope, so treaties facilitate the process of getting
foreign patents
A. The Paris Convention
1. starting point for a consideration of any intellectual property rights in virtually
any part of the world, with the exception of Taiwan, some parts of South
America and some developing countries
2. Most Fundamental Practical Right under Paris Convention: priority right –
by filing in the US (or in any union country) the clock stands still for one year.
By filing in any second union state within that one year period,, the second union
state application is dated back to the original foreign filing
3. Priority Right of Paris convention is codified in US Patent Act §119
a. section 119 closes with the admonition that no patent should be granted on
any application for a patent for an invention which had been patented or
described in a printed publication in any country more than one year before
the date of the actual filing of the application in this country, or which had
been in public use or on sale in this country more than one year prior to such
filing.
4. convention concerned only with the initial filing date, without regard to whether
that filing actually mature into a granted patent. Thus the application could be
rejected over prior art or abandoned, yet the filings would remain valid for
preserving the right of priority in subsequent filings in the US
5. applicant must declare that he is relying on the priority right for it to be effective
under Article 4.
6. Priority is determined on a claim by claim basis, so some of the claims of a
single patent may be entitled to the priority form an earlier application while
others may not.
7. In Re Gostelli
FACTS: Gostelli attempted to antedate his US patent filing date to that of his
Luxembourg filing date
HOLDING: Claims are entitled to the benefit of their foreign priority date
under §119 only if the foreign priority application properly supports them as
regarded by §112
8. The Defensive, Patent Defeating Right
33
a. may interpret the :”third party right” language of Paris Convention article 4B
as providing a patent-defeating right tot he patentee as to whatever is claimed
in his patent, retroactive to his priority date. Commentators sometimes refer
to this entitlement as a senior right (if one person files in one country any
other person filing in another country is denied a patent)
b. Paris convention requires only a “prior claim” approach, so patentee is given a
patent defeating right retroactive to his priority date for what is claimed in the
patent (not what is disclosed) Most provide more protection (whole contents
approach) and provide patent defeating rights for all of it, not just claims
c. In Re Hilmer
FACTS: the decision affirming a rejection of Hilmer’s patent claims
involved the determination that a US patent used as prior art reference is
considered effective as of its foreign convention filing date and not the date
that the US application was filed
HOLDING: the effective date of a US patent used as a prior art reference is
the date of the application filed in the US and not a foreign convention filing
date to which the patentee reference is entitled by the statute.
d. In Re Hilmer II
FACTS: The PTO Board of Patent Appeals concluded that the subject matter
of the Habicht patent was prior art against Hilmer b/c the Habicht patent was
filed before Hilmer’s German filing date
HOLDING: the foreign propriety date of a US patent cannot be used as an
effective filing date of a patent when it is used as a prior art reference
NOTES: seems priority date is only used for priority – not prior art. Only
lets you expand your rights, not expand the prior art
e. In Re Deckler
FACTS: Deckler suppressed his invention until after another filed a foreign
patent and Deckler lost an interference to him, but continued to prosecute his
patent application
HOLDING: if the foreign filing date is used as a priority date in US patent
interference, the interference decision may be cited as the basis for rejection
of further claims
B. Complementary International Agreements
1. Patent Cooperation Treaty of 1970
a. facilitates filing of applications in several countries on the same invention
b. can file a single international application which has the effect of filing several
in member countries
2. TRIPS (Agreement on Trade Related Aspects of Industrial Property
Systems)
a. does not supercede other agreements, just reaffirms basic principles
b. point is prevent one member from giving a better deal to some members than
other members
c. treaty is an effort to fortify national treatment principle
d. member states can’t exclude any field of technology from patent protection as
a whole
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e. member states can’t discriminate on granting of rights based on where
invention occurs (US had to amend 102(g) and 104 for this)
f. Can’t discriminate based on whether products are imported or locally
produced
g. Exhaustion principle: if you sell an article that incorporates your patent, you
exhaust your rights (if you sell to me, I can reseal to others without you
holding me liable for infringement)
XIV. Infringement
 Patent statute address infringement at §271: except as otherwise provided
in this title, whoever, without authority, makes, uses, offers to sell or sell any
patented invention, within the US or imports into the US any patented
invention during the term of the patent therefor, infringes the patent
 (a) direct infringement
 (b) active inducement
 (c) sale of component of patented machine (seller liable as contributory
infringers if component is material of specially made for the patented device)
 (d) patent owner who derives revenue form licenses, does not count as patent
misuse
 (e) permits using patent protected info solely for ht use of FDA (clinical
testing s as required by the FDA not an act of infringement)
 (f) territorial scope of patent monopoly (liability if you use or supply all or
substantial components in US so as to infringe outside US)
 (g) fine tuning of territorial boundaries (use of patented process abroad to get
unpatented product into US for commercial sale – importer liable for
infringement)
 (h) liability of states for infringement (but this was held unconstitutional)
 (I) has to be for sale during patent term
 Patent does not confer a right to do anything – just right to exclude
 Infringement does not have to be knowing or intentional (although these
things may be relevant to damages)
 Autogiro v. US:
FACTS: n/a
HOLDING: determination of patent infringement is a two step process: first,
determine the meaning of the claims; second, read the claims onto the accused
structures. When construing the claims, it is best to look to other parts of the
patent instrument. three parts should be utilized in interpreting claims: the
specification, the drawings, and the file wrapper.
A. Literal Infringement
 determined by construing claims and seeing if the accused product “reads on”
the claim (Reads on – when you can go through language and find
corresponding features in accused product or process
 Jury Question
1. Markman v. Westview
FACTS: D contended the jury verdict of infringement against them applied
incorrect legal standard, necessitating a construction of the claims by the district
court judge
35
HOLDING: The interpretation and construction of patent claims is a matter of
law exclusively for the court
NOTES: Court is motivated by a desire for consistency, yet to determine claim,
must look to evidence, witnesses, experts, etc – all things usually done by a jury.
Procedurally this takes cases out of jury’s hands and all determinations that
matter are subject to plenary review on appeal. Hard to divorce questions of
construction form questions of infringement, but court tries to do so
 Markman Hearings: issues of claim construction decided by judge
2. Unique Concepts v. Brown
FACTS: P claimed mitered corner pieces infringed on its right angle pieces
HOLDING: if the language of the claim is clear, and a different meaning would
render express claim limitations meaningless, there will be no speculative
interpretation of the claims (if claims unambiguous, extrinsic evidence should
be given no weight)
B. The Doctrine of Equivalents
 accused product or process will infringe even if not within the literal words of
claim if it does the same work in substantially the same way to get the same
product
 can also work in reverse – even though a product literally infringes, if not
substantially the same or achieving the same result – no infringement. This is
rare, though
 Jury Question
1. Graver Tank v. Linde Air Products
FACTS: Linde alleged that Graver Tank had infringed its patent even though it
substituted an equivalent chemical for one expressed in the patent
HOLDING: the Doctrine of Equivalents is applied to mechanical or chemical
equivalents in compositions or devices. It offers protection against a device,
process, or composition which performs substantially the same function as the
patented device in substantially the same way to obtain the same result.
2. Warner Jenkinson v. Hilton Davis
FACTS: After its method of removing impurities from dyes was found to have
infringed on Hilton’s patent under the doctrine of equivalents, Warner-Jenkinson
petitioned for cert
HOLDING: the determination of equivalence should be applied as an objective
inquiry on each individual element of the claim, rather than the process as a
whole.
NOTES: Supreme Court left the DOR standing, yet nowhere near same verve
for DOE as there was in Graver Tank. Court seems very worried about the
uncertainty that could arise from the doctrine. Worried that the doctrine
conflicts with public notice requirements.
C. Limitations on the Doctrine of Equivalents
1. All Elements Rule
a. Pennwalt v. Durand-Wayland
FACTS: Pennwalt sued D for infringing upon the patent of the fruit sorter
36
HOLDING: in order to find infringement under the doctrine of equivalents,
the accused device must contain every element or functional equivalent of the
original claim.
NOTES: this approach leaves little difference between DOE and literal
infringement
b. Corning Glass v. Sumitomo
FACTS: D attacked P’s patent for a fiber optic composite used for optical
communications as being anticipated by prior art
HOLDNG: For a claim to fail for being anticipated by prior art, the prior art
claim must disclose all the limitations in the specification of the new claim.
2. File Wrapper Estoppel/ Prosecution History Estoppel
 May not use the Doctrine of Equivalents to expand technological reach of
patent as to recapture coverage deliberately excluded during prosecution to
avoid prior art
 Invocation of this estoppel does not require showing any reliance on it before
hand
 Rationale: (1) places importance on application process (forces parties t
clearly state what patent should be). Administrative remedies exhaustion –
want patent claims to be determined whenever possible by examiner; (2)
perhaps PHE is a good rule of thumb for when prior art steps in – rather than
having the court look to prior art, defer to what examiner thought about it
during the application process; (3) Notice – useful, interpretive text and
source of guidance on how to interpret claims
 PHE can be viewed as a form of administrative deference
 Question of law subject to plenary review on appeal
a. Southwall v. Cardinal
FACTS: P surrendered some embodiments of claims in prosecution of its
patent, but later attempted to raise these in an infringement suit
HOLDING: A patentee may not recapture subject matter surrendered in a
prosecution for purposes of arguing that the patent was infringed. Claims may
not be construed one way in order to obtain their allowance and in a different
way against accused infringers
3. Prior Art Limitations
a. Wilson Sporting Goods v. David Geoffrey
FACTS: Wilson won an infringement suit concerning the design patent on its
golf balls, and Dunlop and D appealed
HOLDING: If the scope of equivalency necessary to find infringement
would cover the prior art, there can be no infringement. Since prior art limits
what an inventor could have claimed, it limits the permissible equivalents of a
claim. Visualize a hypothetical claim sufficient in scope to cover accused
device... if prior art wouldn’t be a bar to the claim, you are ok
4. Festo v. Shoketsu
a. significant departure from prior case law
b. severe limitation on DOE
c. for purposes of determining whether an amendment to a claim creates PHE,
a substantial reason relating to patentability is not limited to overcoming
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d.
e.
f.
g.
prior art but includes other reasons related to the statutory requirements for a
patent.
Voluntary claim amendments are treated the same as other claims
amendments
When a claim amendment creates PHE, no range of equivalents is available
for the amended claim element
Unexplained amendments are not entitled to any equivalents
Implications of this case:
(1) might want to preserve option to use DOE by claiming more narrowly
(2) might claim more broadly since you feel DOE is on shaky ground and
you might not get the benefit of it later
(3) might make applicants argue with examiners and PTO about everything
b/c they don’t want to have to amend
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