Patent Law Outline Table of Contents

I. Introduction to Patent Law a. What is a patent A legal right to exclude others from making, using, offering to sell, selling or importing(into the US) an invention for a period of 20 years from the date of filing i. Negative right, not affirmative right to practice invention ii. Blocking patents - Neither party can use the combined drug without the others permission iii. Policy to promote science and useful arts b. Types of patents i. Utility - Technological products and process ii. Design - For ornamental rather than functional elements 1. Can overlap w/ copyright iii. Plant 1. Plant Patent Act (asexually reproducing) 2. Plant Variety Protection Act (sexually reproducing) c. Intellectual Property i. 35 U.S.C. 101- Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. ii. Copyright software, literary, musical art, choreographic, artistic works, aesthetic element of useful design - 17 USC 102 iii. Trademarks source identifiers - 15 USC 102-104 iv. Tradesecrets valuable information in business and technology; State law regulated 1. Choice of IP - Patents v. tradesecret cant have both, E.g. Coca-Cola recipe protected by tradesecret d. Overview of Patent System i. Patent prosecution

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3. Interferences - Administrative proceedings to determine priority of invention between multiple applications for the same or similar invention. 4. Restrictions and divisional applications - Administrative processes for ensuring that each application contains only one invention 5. After grant of patent a. Reissue (with USPTO or Board of Patent Appeals and Interferences), only by patentee, can broaden or narrow claims, broadening is rare, may only occur absent deceptive intent b. Re-examination - (with USPTO or Board of Patent Appeals and Interferences), by anyone, based on prior art patents or printed publications. 6. Patent Term a. U.S. patent term is 20 years from the date of filing, not 17 years from the date of issuance b. Term extensions for FDA and PTO delays 7. Provisional Applications a. Establishes a right of priority for a regular application filed within one year of the provisional b. Time during which provisional application is pending does not count towards the 20-year patent term

c. Publication of Applications - Patent applications pending for 18 months are published unless the applicant certifies that the invention will not be the subject of any foreign or international applications in jurisdictions that provide 18-month publication. Changes the patent quid pro quo now you only get the chance of exclusive rights in return for disclosure where you before would only disclose if you got the exclusive rights by a granted patent. ii. Territorial in enforcement 1. Infringement US District Courts a. defense to infringement, commonly, Patent invalid, or No infringement. Note, statutory presumption of validity for issued patent b. Declaratory action to challenge validity of patent US District Courts, brought by potential infringer 2. Appeal to Federal Circuit, then to US Supreme Court iii. Policy to promote technological progress. 1. Article I, Section 8. cl. 8 The Congress shall have Power To lay and collect Taxes, Duties, Imposts and Excises, to pay the Debts and provide fro the common Defense and general Welfare of the United States; but all Duties, Imposts and Excises shall be uniform throughout the United States; a. [8] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. b. Utilitarian rationale Authorize power to grant exclusive rights to promote progress i. However, grant of exclusive rights may be inhibiting, not promoting, progress in stem cell research. c. Utilitarian rational information is a public good. i. Non-rivalrous public good my consumption of a resource does not diminish it for others to use, e.g. air, national defense, information ii. non-excludable I cant exclude others from utilizing a resource, e.g. air, national defense, information i. ocean fishing rivalrous, but nonexcludable ii. information in general is nonrivalrous by excludable (patent system)

iii. Problem with a public good 1. free riders copiers free ride on investment, undermines incentive to invest 2. market failure - market will not produce optimum level of public good 3. Solutions = Patent system, or a. Govt funded RandD, no patent system, open-source (Linux), tax breaks d. Bad policy - Patent trolls- $ from licensing fees or infringement suits, but not adding to the library of knowledge. i. An industry has developed in which firms use patents not as a basis for producing and selling goods but, instead, primarily for obtaining licensing fees. eBay v. MercExchange, 126 S. Ct. 1837, 1842 (2006) (Kennedy, J., concurring) 2. Incentive a. Ex ante encourage original act of invention; also to disclose, patent law as a public education initiative b. Ex post incentive to innovate, where innovate means bring invention to market even after conceived. c. Creative destruction - Monopolies are conducive to innovation, describes the process of transformation that accompanies radical innovation, innovative entry by entrepreneurs was the force that sustained long-term economic growth, even as it destroyed the value of established monopoly power. d. Prospect theory - Patents, like mining claims, allow more socially efficient development of a particular prospect e. Other incentives outside patent system prestige, need, benevolence, altruism, competitive advantage 3. History a. Industrial Revolution: the primary benefit of patents shifted from the invention to the dissemination of technical knowledge b. 1952: Modern Patent Act codified c. 1982: Congress created the Court of Appeals for the Federal Circuit d. Key points i. Greater emphasis on disclosure

ii. Rise of examination system iii. Emergence of nonobviousness requirement iv. Rise in administrative and judicial infrastructure 4. Globalization Harmony of Patent Law a. 1883: Paris Convention for the Protection of Industrial Property i. Each country shall afford national treatment to the citizens of all other countries ii. One-year rule of international priority for patent applications in other signatory states. Date is only used to determine priority, not to calculate patent term, therefore can get 21 effective years of protection b. Patent Cooperation Treaty i. Establishes an international application process by which inventors may file a single PCT application in any signatory nation ii. Consolidated international phase of searching prior art iii. Separate national phase prosecution c. European Patent Convention i. Establishes a centralized European Patent Office ii. No additional prosecution in national offices is necessary iii. Enforcement still handled by national courts d. 1994: Trade Related Aspects of Intellectual Property (TRIPs) i. Requires patentable subject matter to include virtually all important commercial fields, including pharmaceuticals ii. Requires an inventive step, similar to nonobviousness iii. Requires industrial application, similar to utility iv. Grants the exclusive right of importation to the patentee v. Curtails compulsory licenses 5. Scientific Discoveries a. Epoch-making discoveries of mere general scientific laws, without more, cannot be patented. So the great discoveries of Newton or Faraday could not have been rewarded with such a grant of monopoly. Interestingly enough, apparently many scientists like Faraday care little for monetary

rewards; generally the motives of such outstanding geniuses are not pecuniary. Katz v. Horni Signal Mfg. Corp. (2d Cir. 1944) 6. Pioneer inventions and improvement patents a. Policy balancing interests between giving a massive incentive to pioneer inventions. If this incentive is too great by allowing too broad of claims, there will be no incentive for improvement. Likewise, if there is more of an incentive to improve, there incentive to innovate pioneer inventions will be under-cut. 7. Cannot patent a principle, fundamental fact, a. Not useful, not productive for progress, not inventions, breadth problematic b. Licensing issues when the basic tools of intellectual inquiry are patented. Impedes progress. Liberal access to natural laws and information, enable wide modes of downstream applications. e. Patent Claim Drafting i. 35 U.S.C. 112, 2 1. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. ii. Claims define the metes and bounds of the property right To inform the public during the life of the patent of the limits of the monopoly asserted. Analogous to the meets and bounds of a parcel of property iii. There is a buffer around a patented invention. 1. Doctrine of equivalence iv. 2 Limitations 1. Limited by prior art 2. Limited to what the inventor actually invented and can enable v. Elements 1. Preamble - Describes the basic nature of an invention 2. Transition Defines the breadth/narrowness of the claim a. Open comprising b. Intermediate consisting essentially of i. An invention consisting essentially of A+B+C ii. A+B+C+D infringes if D does not make the second invention essentially different c. Closed consisting of i. Sometimes necessary if lots of prior art, crowded field 3. Body

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a. Lists all elements (i.e., limitations) b. Describes how the elements interact c. Claims do not need to enable i. Enablement is found in the specification 4. Body Formal requirements a. Each claim must be one sentence b. Each claim must set forth how the elements interact with one another c. Internal references must be clear vi. General claim stategy 1. Broad independent claims a. Claim more material, most coverage 2. Narrow dependent claims a. More likely to be valid and enforced, ensure validity vii. Means-plus-function claims 1. General rule: claims must cover a specific invention, not a result or function 2. Exception: 35 U.S.C. 112, 6 allows means-plusfunction claims a. E.g., I claim a means for attaching A to B. b. Exception to the general rule that you cant patent an end result. Constrained by specification or equivalent. 3. Means-plus-function claims are limited by the specification and equivalents thereof. a. E.g. means = glue, tape, staple, nail b. Function = A is attached to B f. 1980 Bayh-Dole Act changed Fed Policy regarding patent. Govt funded research could also patent results of that research. g. Reach through licensing agreements downstream technology is licensed along with the license to use the upstream patented technology. With too many licensors, this problem can be exaserbated. h. Product claim subsequent research gets method of use product claim so subsequent researcher can get method claim but needs to get license to use product. This is a blocking patents situation. i. Constitutional broad definition of patents, statutes are a narrower definition of patents. The Requirements of Patentability a. Patentable Subject Material i. Introduction - Diamond v. Chakarbarty 1. Hybrid bacteria/plasmid, eats oil, useful to clean oil spills, 2. Everything under the sun made by man is patentable but not the laws of nature, physical phenomena 3. Dissent Brennan balance deep seated antipathy to monopolies with the need to encourage progress.

4. Life is patentable - Congress thus recognized that the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions. 5. Scope of patentability: 6. Constraints - The laws of nature, physical phenomena, and abstract ideas have been held not patentable. Thus, a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E = mc2, nor could Newton have patented the law of gravity. a. E = mc2 not patentable, not immediately useful b. No practical utility, Algorithms may have already existed, Abstractions are too broad ii. Variations in Defining Patentable Subject Matter a. Cannot patent a principle or fundamental truth. Le Roy v. Tatham (1853) b. An idea of itself is not patentable.Rubber-Tip Pencil Co. v. Howard (1874) c. Cannot patent [p]henomena of nature, . . . mental processes, and abstract intellectual concepts., Gottschalk v. Benson (1972) d. Can patent anything under the sun that is made by man, but not [t]he laws of nature, physical phenomena, and abstract ideas., Diamond v. Chakrabarty (1980) iii. Spectrum of protection 1. Upstream intellectual infrastructure a. Public domain b. Natural laws c. Natural phenomena d. Abstract principles e. Scientific theories Factual information f. Basic knowledge 2. Downstream applied technologies a. Exclusive rights b. Consumer goods c. End-user applications

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4. Patentable subject matter does not include these 3 categories a. Laws of nature b. Natural phenomena c. Abstract ideas iv. Historical and Conceptual Foundation 1. OReilly v. Morse (1854) claiming a general result or principle not patentable vs. claiming a specific means or mechanism which is patentable. a. Morses Eighth Claim: Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer. b. Claiming a general result or principle versus claiming a specific means or mechanism c. Specification problem since Morse wrongfully tries to assert in his claim that he is not bound by his specification 2. Telephone Cases (1888) a. Bells 5th claim - The method of, and apparatus for, transmitting vocal or other sounds telegraphically, as herein described, by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds, substantially as set forth. b. Compare Morses claim to Bells i. Morses rejected : A claim for an effect produced by the use of electro-magnetism,

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distinct from the process or machinery necessary to produce it. ii. Morses granted - A claim for making use of the motive power of magnetism, when developed by the action of such current or currents, substantially as set forth in the foregoing description, . . . as means of operating or giving motion to machinery . c. Claims must relate to the specification. Bell does this, but Morse does not. 3. Summary of Claims a. An infrastructure theory of patentable subject matter b. Distinction between claiming a general result or principle versus claiming a specific means or mechanism c. Claims must relate to the specification d. Pioneer inventions and subsequent improvements e. Nonpatentability of scientific principles v. Patenting Natural Substances and Living Things 1. Parke-Davis & Co. v. H.K. Mulford & Co. (S.D.N.Y. 1911) a. Extractions and purifications of natural products may be patentable i. Takamine was the first to make it available for any use by removing it from the other gland-tissue in which it was found, and, while it is of course possible logically to call this a purification of the principle, it became for every practical purpose a new thing. ii. Takamine also took over the market with his form of the hormone, this was used as a factor to consider the nonobviousness. 1. *note market failure was not a factor to consider Utility in the incandescent lamp cases. iii. Difference of degree can turn a natural product into an invention. Has enough human intervention occurred to make the natural product an invention. iv. Salt not anticipated by Von Furths ZnSO4 salt form of adrenaline b/c Von Furths is not as pure as claimed by Takemine b. Nonobviousness i. Can consider market failure ii. Commercial success

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[H]e has been author of a valuable invention and has succeeded where the most expert have failed. 2. Funk Bros. Seed Co. v. Kalo Inoculant Co. (1948) a. Invention: co-culture of bacteria used in agriculture, achievement was that his bacteria formulation overcame problem w/ combining bacterial w/o mutual inhibition of combined bacteria b. Patent held invalid - Nonpatentability of natural products i. property of bacteria is free knowledge for all men. Usefulness is not enough ii. The intersection of subject matter and nonobviousness iii. [A] product must be more than new and useful to be patented, it must also satisfy the requirements of invention or discovery. iv. Natures library fiction v. Scientific principles are treated as if they already exist in the prior art c. Frankfurter concurrence agrees that patent is invalid for claiming abstract idea of mutually compatible strains, and not a particular composition of specific strains of bacteria. d. Distinguish from i. Parke-Davis difference of degree of human intervention ii. Chakarbarty q: are these just re-packaging natural substances 1. Its a question of degree 2. Both Funk Bros. and Chakarbarty claiming natural elements 3. Human Beings a. While the PTO recognizes that the scope of protection covered by 35 U.S.C. 101 is expansive and the fact that the claimed invention which embraces a human being is not within one of the exclusions enumerated by the Supreme Court in Chakrabarty, i.e., the laws of nature, physical phenomena, and abstract ideas, the PTO believes that Congress did not intend 35 U.S.C. 101 to include the patenting of human beings. 58 Pat. Trademark & Copyright J. 203 (June 17, 1999) 4. Summary of natural substances

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a. Natural substances in their natural state are not patentable, but their extracted and purified forms may be b. The degree of human intervention and manipulation often determines the patentability of products of nature vi. Software 1. Gottschalk v. Benson (1972) a. Software converts binary decimals to binary, algorithm for converting # symbols relying on a well known mathematical formula b. Not patentable c. Abstract algorithms are not patentable d. Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. e. Natures Library fiction i. Natural phenomena have already existed and are in the prior art; argue nonobviousness 1. but do algorithms really fit this category? Dont men think up algorithms? f. The underlying notion is that a scientific principle, such as that expressed in respondents algorithm, reveals a relationship that has always existed. g. Considering exogenous information - It is noted that the creation of programs has undergone substantial and satisfactory growth in the absence of patent protection and that copyright protection for programs is presently available. 2. The Mental Steps Doctrine Fell out of favor, not strictly followed a. Barred patents on inventions that could be infringed merely by thinking b. No longer strictly followed b/c relatively easy to avoid doctrine by simply converting process patents into product patents c. Illustrates patent laws reluctance to interfere with human thought 3. Diamond v. Diehr a. Invention is related to curing rubber whereby a machine relies on a calculation program to set the ideal time to release the rubber mold. b. Distinguishable from Gottschalk v. Benson invention not inhibiting people from using

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algorithm, just using algorithm as a component of an otherwise patentable process. Does not foreclose all use of the Arhennius eqtn. c. This is patentable subject matter d. The use of forumalae or algorithm does not render an invention unpatentable per se 4. Summary a. Abstract algorithms are not patentable b. Devices and processes that employ algorithms may be patentable c. Consider institutional roles and biases in the debate over software patents i. Courts versus Congress ii. The patent bar, industry, the PTO iii. Institutional deference - If these programs are to be patentable, considerable problems are raised which only committees of Congress can manage, for broad powers of investigation are needed, including hearings which canvass the wide variety of views which those operating in this field entertain. Gottschalk v. Benson (1972) d. Software patents have blossomed, leading to problems that are being addressed through private ordering i. Private Ordering to Break Patent Thickets: Cross-Licenses and Patent Pools ii.

vii. Expansion 1. State Street Bank & Trust Co. v. Signature Financial Group (Fed. Cir. 1998) - Expansion

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a. Means-Plus-Function Claims i. 1. A data processing system for managing financial services comprising: 1. computer processor means for processing data; 2. storage means for storing data on a storage medium; 3. first means for initializing the storage medium; . . . ii. machine claims, product claims, machine w/ means plus function b. invention - Data Processing System for Hub and Spoke Financial Services Configuration c. Controversial expansion of patentable subject matter d. Software is patentable as software e. Narrowing of the mathematical algorithm exception f. Physical transformation no longer needed g. Emphasis on utility - The question of whether a claim encompasses statutory subject matter should not focus on which of the four categories of subject matter is directed to process, machine, manufacture, or composition of matter but rather on the essential characteristics of the subject matter, in particular, its practical utility. Here we have a practical application of math algorithm Touchstone of a patent is not physical transformation, but practical utility viii. Field Restrictions 1. TRIPs, Article 27, Patentable Subject Matter a. 1. [P]atents shall be available for any inventions, whether products or processes, in all fields of technology, . . . b. 2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect ordre public or morality, including to protect human, animal or plant life or health or to avoid serious prejudice to the environment, . . . c. 3. Members may also exclude from patentability i. (a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals; ii. (b) plants and animals other than microorganisms, . . . .

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d. 4. We agree that the TRIPS Agreement does not and should not prevent Members from taking measures to protect public health. Accordingly, while reiterating our commitment to the TRIPS Agreement, we affirm that the Agreement can and should be interpreted and implemented in a manner supportive of WTO Members right to protect public health and, in particular, to promote access to medicines for all. 2. Business tools patentable b/c substitutes still enable practice of business methods 3. Prior user rights a. immunize from infringement applies for tradesecret no public disclosure which would destroy novelty ix. Medical Procedures 1. TRIPS, Art. 27 a. Allows countries to exclude diagnostic, therapeutic and surgical methods for the treatment of humans or animals 2. Pallin v. Singer (D. Vt. 1995) - Dr. Pallin obtained and asserted a patent on a method for making a particular selfsealing incision during eye surgery a. In 1996, Congress passed 35 U.S.C. 287(c) i. [W]ith respect to a medical practitioners performance of a medical activity that constitutes an infringement [various provisions of this title relating to remedies] shall not apply against the medical practitioner or against a related healthcare entity with respect to such medical activity. ii. Only deals with the remedy, not with infringement iii. no remedy for infringement of medical procedures. Could still go after 3rd party who induced doctor to infringe patented medical procedure e.g. company that sells doctors device and induces doctors to infringe patented medical procedure x. Contraction 1. Lab. Corp. of America v. Metabolite Labs., Inc. (2006) a. Claim 13 - A method for detecting a deficiency of cobalamin or folate in warm-blooded animals comprising the steps of: assaying a body fluid for an elevated level of total homocysteine; and correlating an elevated level of total

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homocysteine in said body fluid with a deficiency of cobalamin or folate. b. Patents complicated relationship with progress i. [S]ometimes too much patent protection can impede rather than promote the Progress of Science and useful Arts. c. Natural laws are not patentable i. Not patentable subject material ii. Lack utility iii. Not novel iv. These resources are the fundamental infrastructure of science and technology d. Metabolite sues Lab Corp b/c Lab Corp conducts test infringement i. Really it is the physicians correlating the results, but Lab Corp. provides the instruments that enable the doctors to infringe ii. Similar to suing napster instead of the users of napster in a copyright infringement suit iii. Wrt to medical techniques, Congress removed the remedy for suing doctors. The patent holder can still sue for infringement, and the court can still hold that infringement occurred, but the doctors are not liable to pay damages xi. Summary of Patentable Subject Matter 1. Chakrabarty expansive, anything under the Sun 2. Morse and The Telephone Cases not function, but ok for means-plus function supported by the specification 3. Parke-Davis and Funk Bros. 4. Benson and Diehr 5. State Street and Lab. Corp. b. Utility i. invention must be useful (easy to satisfy) ii. Operational and Beneficial Utility 1. 35 U.S.C. 101 - Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title. 2. 35 U.S.C. 112, 13. The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or

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with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. iii. 3 Kinds of Utility: Operational, beneficial, and Substabtial/practical iv. Operational and Beneficial Utility 1. Operational - does an invention work, do what it is supposed to do a. Often goes unchallenged by USPTO, reasonable doubt wrt to ordinary skill in the art 2. Procedural Aspects of Establishing Operability a. Application has presumption of utility b. PTO has burden of showing reasonable doubt c. Burden shifts to applicant to show utility 3. Beneficial - derived from Lowel v. Lewis, is the invention consistent with public morals. Note in Orange Bang v. Juicy Whip, this standard was reduced to just what is not illegal. a. Institutional aspects USPTO not well suited to say one thing is substantially better than another, also not well suited to determine morality b. Lowel v. Lewis (C.C.D. Mass. 1817) i. The historic requirement of beneficial utility - All that the law requires is that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. The word useful, therefore, is incorporated into the act in contradistinction to mischievous or immoral. ii. Two prongs to Justice Storys statement of the law 1. Utility requirement is modest 2. Utility is concerned with morality iii. Biotechnology has resuscitated debate over beneficial utility 1. Weldon Amendment (2004) prohibits patents on claims directed to a human organism c. Juicy Whip, Inc. v. Orange Bang, Inc. (Fed. Cir. 1999) i. Invention Juicy Whips patent on post-mix dispenser that looks like a pre-mix dispenser ii. Deception is useful 1. Even though deceptive, court upholds patent. Invention is useful;

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it is pleasing to the consumers and assists in the beverage sale. It is useful specifically because it is deceptive. iii. The patent system is not an arbiter of fair trade practices iv. Institutional questions v. Severe erosion of the beneficial utility requirement v. Substantial/practical a specific utility, Not enough to say you are curing a disease, you need to specify which disease 1. Brenner v. Manson (1966) i.

ii. Chemical process for producing steroids. Manson applies for patent 3 months after the Ringold files for a patent 1. must establish a utility prior to Dec. 17, 1956 a. But Manson could only rely on a J. Org. CHem article published by Ringold 2. A patent is not a hunting license iii. Substantial utility requirement is low, but not insignificant 1. Timing of the utility requirement iv. Utility creates an incentive for additional research v. Policy considerations: Utilitys impact on the volume and quality of disclosure 1. High utility threshold less disclosure this is a trade-off vi. Patent denied Not substantially useful. 19

vii. The application was rejected because it lacked specific utility viii. Invention is not useful, utility not established prior to anothers similar invention ix. Ascertaining the metes and bounds of a patent 1. Product patents cover all potential uses 2. Process patents are available for new uses, but these give rise to blocking patents b. Research tools technical input to basic scientific research. i. process to chemical was input to further basic research into the utilty of the produced chemical 2. In re Brana (Fed. Cir. 1995) a. Specific utility and substantial utility b. Invention: set of compounds with alleged antitumor properties c. Board of Patent Appeals and Interferences rejected the patent on two grounds: i. No specific utility because the application did not specify the diseases treatable by these compounds ii. Not substantially useful because there was no indication they would work in humans d. Federal Circuit reversed the Patent Board and held the patent valid: i. Specific utility established in treating mice tumor models ii. Substantial utility does not require utility in humans vi. 2001 PTO Utility Examination Guidelines 1. Specific Utility a. A utility that is specific to the subject matter claimed b. A claim to a DNA sequence as simply gene probe or chromosome marker would not be considered specific in the absence of a disclosure of a specific DNA target 2. Substantial Utility a. Utility that defines a real world use

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b. A claim to an intermediate product that is used in making a final product of no know utility is not substantially useful c. Using a mass of DNA fragments as a paperweight does not establish substantial utility c. Disclosure and enablement quid pro quo grant exclusive rights in exchange for disclosure and enablement i. 4 Requirements of disclosure and enablement 1. Enablement - 112, 1 2. Written description conceptual overlap, but a distinct requirement from enablement 3. Best mode e.g. for an alloy metals, must disclose specific technical details regarding how to make it. 4. Claim definiteness - 112, . Claims define the metes and bounds, get precision by having distinct claims ii. Case Summary 1. Enablement a. The Incandescent Lamp Patent (1895) i. cant have undue experimentation b. In re Strahilevitz (C.C.P.A. 1982) i. prophetic examples can help to enable basic on generally accepted principles 2. The Written description requirement a. The Gentry Gallery, Inc. v. The Berkline Corp. (Fed. Cir. 1998) b. University of Rochester v. G.D. Searle & Co., Inc. (Fed. Cir. 2003) 3. Definite claims a. Orthokinetics, Inc. v. Safety Travel Chairs, Inc. (Fed. Cir. 1988) b. Standard Oil Co. v. American Cyanamid Co. (E.D. La. 1984) 4. Best mode a. Randomex, Inc. v. Scopus Corp. (Fed. Cir. 1986) b. Chemcast Corp. v. Arco Industries (Fed. Cir. 1990) iii. Standard is relative to person of ordinary skill in the art iv. Enablement 1. The Incandescent Lamp Patent (1895) a. Invention filament in light bulb. 2 patents at issue, Sawyer and Man and the Edison patent. In this infringement suit, Edision asserts that Sawyer and Man did not enable w/ their patent disclosure and that Sawyer and Mans patent is not novel. b. *Sawyer and Man failed in the market place, but this is not relevant to utility, may be relevant to non-obviousness (I think)

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c. The Sawyer and Man Patent Claims i. 1. An incandescing conductor for an electric lamp, of carbonized fibrous or textile material and of an arch or horseshoe shape, substantially as hereinbefore set forth. ii. 3. The incandescing conductor for an electric lamp, formed of carbonized paper, substantially as described. iii. Genus in claim1 Carbonized fibrous textile materials. Specie in Claim 3 carbonized paper d. Sawyer and Man actually used carbonized paper, but they are trying to assert with their patent that they have the right to exclude all carbonized fibrous textile materials. e. A patent must enable one to practice a claimed invention by disclosing how to make and use it f. No common principle - If Sawyer and Man had discovered in fibrous and textile substances a quality common to them all, or to them generally, as distinguishing them from other materials . . . and such quality or characteristic adapted them peculiarly to incandescent conductors, such a claim might not be too broad. in fact, most of the members of the genus did not work well. It took Edison great effort to find that particular bamboo that was a good filament material. g. The enablement requirement prevents undue experimentation i. Not possible to know what fibrous or textile material was adapted to the purpose of an incandescent conductor, except by the most careful and painstaking experimentation ii. The anticipation-infringement symmetry 1. That which anticipates, if earlier, (literally) infringes, if later 2. No doctrine of equivalence for anticipation this is why we say literally infringe in refernce to that which infringes, if later, would anticipate if earlier. 2. In re Strahilevitz (C.C.P.A. 1982) a. Invention methods and devices for removing haptens, antigens, or antibody from blood of a living mammal. Useful for detox after overdose.

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b. PTO rejected patent based on insufficient disclosure under 35 USC 112 i. PTO wanted a working example of the invention. However, the Supreme Court says this is not necessary part of 35 USC 112. c. Holding purely conceptual works can meat the requirement of 35 USC 112. d. Prophetic examples may enable the prior art cited by Strahivlevitz was sufficient to enable one skilled in the art to practice the invention. i. if a principle is known, then the prophetic example may enable e. presumption of enablement begins in favor of the applicant. 3. Summary a. Procedural aspects of enablement b. Enablement is relative to a person having ordinary skill in the art c. Prophetic examples may enable v. The Written Description Requirement 1.

2. Must describe what the inventor considers to be her invention 3. Related, but distinct from the enablement requirement: a. [Consider a case] where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B 23

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5. 6. 7. 8.

and C; yet the class consisting of A, B, and C has not been described. Interplay of two statutes a. 35 U.S.C. 120 Benefit of Earlier Filing Date in the United States i. As long as new application relates back to the specification of the 1st application, you get the priority date of the earlier filed application b. An application for patent for an invention disclosed [as per 35 U.S.C. 112, 1] . . . which is filed by an inventor or inventors named in the previously filed application shall have the same effect as to such invention, as though filed on the date of the prior application . . . if it contains a specific reference to the earlier filed application. c. 35 U.S.C. 132 Notice of rejection, Reexamination i. No amendment shall introduce new matter into the disclosure of the invention. ii. No new matter shall be introduced. Cant amend the specification. Can amend the claims. This is a key distinction Evolved as means of preventing patent applicants from unduly amending claims based on subsequent work and market developments Fell into disuse because of redundancy a. Enablement doctrine b. Bar against new matter in amendments Federal Circuit revived the doctrine in the 1990s as a substantive limit on claim scope The Gentry Gallery, Inc. v. The Berkline Corp. (Fed. Cir. 1998) a. The specification must provide a written description of the invention in possession b. Claims must correspond to the written description of an invention c. Prevents capturing later developments d. Standards of review i. Compliance with the written description requirement is a question of fact ii. Enablement is a question of law e. Invention reclining sofa with two reclining seats. f. Substantial utility facilitates watching TV g. Gentry suing Berkline for infringement. Berkline say that Gentrys patent invalid for lack of written description.

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h. Berkline wanted a declaration that Gentry patent was invalid. i. Specification of Gentrys patent stated control mechanism had to be in central console i. The inventor said this was important detail. ii. But the Gentrys claims were too broad. iii. Written description said controls had to be on the center console. However, in the claims, the claims were not limited to placing the controls on the center console. iv. Sproule, the inventor, thought controls should be in the center console, but he watched his competition and wrote his claims to encompass their technology in addition to his own. j. Placing the controls elsewhere was held to be nonobvious 9. University of Rochester v. G.D. Searle & Co., Inc. (Fed. Cir. 2003) a. COX-1 and COX-2; 2 enzymatic pathways. i. COX-1 protects the stomach, COX-2 creates inflammation. ii. what to inhibit COX-2 and not COX-1. iii. Celebrex-type pain killers that selectively inhibit COX-2 b. University of Rochester received a patent 479, methods for identifying compounds that would inhibit COX-2. Then divisional 850, claiming method for inhibit PGHS-2. 850 patent is at issue in this case. i. 850 is a process patent. c. University sues Pfizer, Searle, and others after it receives its patent. d. Pfizer responds and get summary judgment based on i. Validity ii. Patent does not satisfy the written description requirement e. Court finds that patent is indeed invalid for failure to comply with written description. Undue experimentation required to find the compound of interest. f. Here, the specification described the invention but did not enable it. Generally described the compound, but did not specifically enable it.

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g. Enablement and written description are distinct requirements. h. Court views the invention as the compound that identifies the COX-2 inhibitor. i. But university did not identify the actual compound, not in possession of the real invention they were trying to claim. i. Distinguishing from enablement i. Is this invention enabled. Not enabled. Undue experimentation would be required to identify the compound. j. The written description must demonstrate possession of the claimed invention i. It means little to invent a method if one does not have possession of a substance that is essential to practicing that method. Without that substance, the claimed invention is more theoretical than real; it is, as defendants argue, akin to inventing a cure for cancer by utilizing a substance that attacks and destroys cancer cells while leaving healthy cells alone. Without possession of such a substance, such a cure is illusory, and there is no meaningful possession of the method. 10. Some overlap w/ enablement a. Quote presented in the slides could enable and yet not fall within your written description 11. Summary a. Written description requirement requires the applicant to fully describe (as opposed to enable) an invention b. Ties later claims or applications to a prior written description c. Narrows claims based on the disclosure d. Demonstrates that the patentee is in possession of an invention deserving a patent vi. Claim Definiteness 1. Requirement of Claim Definiteness a. 35 U.S.C. 112, 2 i. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. b. Permutit v. Graver Corp. (1931)

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i. The statute requires the patentee . . . to inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not. c. Enablement and the written description requirement concern whether the specification adequately supports the claims d. Claim definiteness deals with whether the claims themselves are clear or ambiguous e. Analogy to the metes and bounds of a parcel of property 2. Orthokinetics, Inc. v. Safety Travel Chairs, Inc. (Fed. Cir. 1986) a. Orthokinetics is assignee of patent for collapsible wheel chair and is suing Safety Travel Chairs for infringement. Safety Travel Chairs asserts patent is invalid. i. Claim 1 so dimensioned as to be insertable through 1. Claim 1- In a wheel chair having a seat portion, a front leg portion, and a rear wheel assembly, the improvement wherein said front leg portion is so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof . . . . 2. District court said this lacked definiteness. b. Patent is valid i. Federal Circuit said claims do not enable. This is the function of the specification. And Claims do not have to describe the invention as carefully as necessary in the specification. ii. Claims are read relative to one of ordinary skill in the art. And that person could figure out what so dimensioned means. 1. Also for the sake of linguistic economy, it would be burdensome to list all the possible dimensions of every car this chair would fit. 2. So dimensioned had meaning to one of ordinary skill in the art

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iii. Who is the audience for the claims here? Person of ordinary skill in the art. And that person would know what the dimensions would be. 1. Claims do not need to enable or fully describe 2. Claim definiteness is assessed relative to a person of ordinary skill in the art 3. Claims are read in light of the specification 4. Would a person of ordinary skill in the art understand what is claimed when the claim is read in light of the specification? c. Claim definiteness is field dependent i. Definiteness is field-dependent ii. [I]f the language is as precise as the subject matter permits, the courts can demand no more. iii. Georgia-Pacific Corp. v. United States Plywood Corp. (2d Cir. 1958) iv. Claim definiteness is a question of law 3. Standard Oil Co. v. American Cyanamid Co. (E.D. La. 1984) a. Claims only fail if insolubly ambiguous i. [I]f the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons may disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds. Exxon Research & Engineering (Fed. Cir. 2001) ii. Claim is indefinite only if it is insolubly ambiguous and that a claim is not insolubly ambiguous if it can be constructed, even with difficulty, in light of the specification and the perspective of one skilled in the relevant art. b. Invention was a catalytic process used to manufacture acrylamide i. problem with claim said partially soluble and this was not definite enough. There was no standard definition and was also not defined in the specification.

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ii. Patentee could have used the phrase slightly soluble 1. Slightly soluble was an accepted term in the field. Partially soluble is not a term of art that was defined. c. Claim held invalid for lack of definiteness. d. All terms in the claims must have a clear meaning i. but other considerations, such as terms used by those skilled in the art, are relevant. ii. Patentee is her own lexicographer 1. Antecedent basis 4. The Relationship of the Specification and Claims a. 1. Courts interpret claims in light of the specification b. When courts construe patent claims, they may not read limitations into the claims from the specification i. Courts can look to the specification to shed light on the claims (for example, by applying terms defined in the specification), but they cannot use the specification to modify the claims as written. ii. Courts cannot modify claims as written based on their reading of the specification 1. An issue of degree c. compare w/ The Gentry Gallery v. Berkline: A specifications description of an essential element of an invention can narrow the range of permissible claims i. Courts may strike down a claim in its entirety if it is not supported by the written description requirement ii. An all-or-nothing issue 5. Means-plus-function (Single means-plus-function claims not allowed, must be in concert with other elements) a. Claim e.g. is just a single means-plus-function. Not allowed b. Can only use means-plus-function in combination with other devices i. See State Street 1. all claims were means plus function, but there was several of them and there was a combination of them c. An element in a claim for a combination may be expressed as a means or step for performing a

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specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. i. 35 U.S.C. 112, 6 ii. I claim a means for attaching A to B. d.
Means Tape Tape Glue Glue Staple Staple Nail Nail Function A Ais isattached attachedto toB B

6. Recap a. 35 U.S.C. 112 1: Specification b. Enablement, the written description requirement, and the best mode requirement c. 35 U.S.C. 112 2: Claim definiteness d. Claims define the metes and bounds of a property right e. Claims do not have to enable or fully describe f. All elements of a claim must have a clear meaning g. Various factors considered in claim construction h. Claims are read in light of the specification, but the specification cannot introduce new limitations vii. The Best Mode Requirement 1. Best Mode a. Goes beyond enablement and allows practice in the best possible manner b. Distinguishing Enablement from Best Mode c. Best mode (most other countries do not have this requirement) - Quid pro quo US more stringent standard for disclosure i. Comparative view of best mode 1. Most other countries do not have best mode may be disadvantage for foreign filers in the US. 2. Randomex, Inc. v. Scopus Corp. (Fed. Cir. 1986) a. The cleaning solution employed should be of a type adequate to clean grease and oil from the disc surface, such as 91 percent alcohol solution or a non-residue detergent solution such as Randomex Cleaner No. 50281.

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b. Best mode satisfied even though only best mode and inferior mode listed, where best mode identified only by the tradename Randomex No. 50281. The nondisclosure of the formula pre se did not rise to the level of violating the statutory requirement to disclose the best mode. c. Invention portable hard drive disk cleaner. Cleaning solution necessary for use, but only trademark name Randomex Cleaner No. 50281 disclosed as the best mode in addition to 91% ethanol, which is actually harmful when operation due to ethanol fumes. Just two cleaning solutions listed, ethanol and Randomex No. 50281 d. Infringement suit, Scopus said it infringed but that its defense is that the patent is invalid. e. Randomex did deliberately refrain from disclosing the composition of the Randomex Cleaner No. 50281 as a way to boost sales for the cleaning solution f. Holding Best mode was satisfied. The claimed invention was not the cleaning solution, the invention was a machine that used the solution. Therefore, the threshold for disclosure was lower wrt to the solution. i. Focus on the invention, the cleaning machine, not the solution g. There is no requirement in 35 USC 112 that an applicant point out which of his embodiments he considers the best mode, that the disclosure includes the best mode contemplated by the applicant is enough to satisfy the statute. Analyze relative to one skilled in the art of cleaning solution. It was relatively easy to reverse engineer the cleaning solution. No need to update the best mode related to no new subject matter. i. The dissent takes issue with the listing of the inferior mode 91% ethanol h. Best mode goes beyond enablement must enable the best mode i. If best mode hidden among 1000 possible choices, the court may consider that it would take undue experimentation to identify the best mode. j. Indiscriminate listing of the best mode among less favorable embodiments is permissible i. There is no requirement in 35 U.S.C. 112 that an applicant point out which of his

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embodiments he considers his best mode; that the disclosure includes the best mode contemplated by the applicant is enough to satisfy the statute. 1. Ernsthausen v. Nakayama (Bd. Pat. App. Int. 1985) k. No need to update the best mode 3. Chemcast Corp. v. Arco Industries (Fed. Cir. 1990) a. Invention is a grommet plug, has a soft base and a hard front face. b. Patent held invalid for failure to disclose the best mode. c. Framework for Best Mode Analysis i. Subjective (necessity) at the time of filing, Did the inventor have a conception of the best mode ii. Objective (adequacy) if inventor contemplated a best mode, did the inventor adequately disclose this to one of ordinary skill in the art. 1. Relative to someone of ordinary skill in the art 2. The scope of the claimed invention is relevant. a. Randomex invention was machine not cleaning solution. d. Two-part test for the best mode requirement i. Subjective (necessity) ii. Objective (adequacy) 1. Relative to someone of ordinary skill in the art 2. The scope of the claimed invention is relevant iii. The best mode may be listed indiscriminately, but intentional fraud is impermissible e. Only need to disclose best mode If you knew of a best mode i. Disclosure requirements are highest for the invention, and less for the ancillary parts (like gasoline for an engine, where the engine is the actual invention, you do not have to disclose the refining process to produce that gasoline)

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ii. If the inventor does not know of a best mode, there is no obligation to disclose one. f. Distinguish from Randomex i. The inventor knew that he needed 75 Shore D, but he just disclose 70 + shore D. This is different from Randomex, because here the inventor knew of only one mode, this was the best mode, and this was not disclosed. ii. In Randomex, the best mode was actually disclosed along with another mode that was an inferior mode. g. The actual claimed invention was this grommet i. In Randomex, the subject of the best mode inquiry was a fluid that was not the actual invention at issue/ ii. Here, the invention is that issue wrt to the best mode. Therefore the threshold for disclosure is higher in Chemcast than in Randomex. 4. Summary a. The best mode requirement mandates disclosure of specific instrumentalities or techniques known to the patentee to best practice an invention b. Increases the disclosure necessary to obtain a patent beyond mere enablement i. Assessed relative to a person of ordinary skill in the art c. Two-part test: i. Subjective ii. Objective d. The best mode may be listed indiscriminately, but intentional fraud is impermissible d. Novelty i. The Identity Requirement and Accidental Anticipation 1. [T]he defense of lack of novelty (i.e., anticipation) can only be established by a single prior art reference which discloses each and every element of a claimed invention. a. Structural Rubber Products Co. v. Park Rubber Co. (Fed. Cir. 1984) b. Single reference, Every element of a claim, Each claim in a patent is analyzed independently 2. In re Robertson (Fed. Cir. 1999) a. Invention fastening and disposal system for diapers

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b. Robertson applies for patent which includes a third fastening means. Interference - diaper with two fastening means - allegedly anticipating i. Identity requirement not satisfied. The Wilson patent did not include the third fastening means. c. Holding Robertsons diaper not anticipated by Wilsons diaper d. Anticipation infringement symmetry i. That which would literally infringes, if later in time, would anticipate if earlier ii. But consider the doctrine of equivalence for infringement, which is not relevant for anticipation e. [A] mechanical fastening system for forming side closures . . . comprising i. A closure member . . . comprising first mechanical fastening means . . . comprising a second mechanical fastening means for forming a closure with said first mechanical means . . . and Disposal means for allowing the absorbent article to be secure in a disposal configuration after use, said disposal means comprising a third mechanical means . . . . f. Anticipation requires that each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference. g. 2 Part Anticipation Test i. Express anticipation ii. Inherent anticipation 1. Extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. h. Comparing what is disclosed in the Wilson patent to what is claimed in the Robertson application i. Anticipation-infringement symmetry - That which infringes, if later, would anticipate if earlier i. (Subject to minor modification) j. Bifurcated novelty and nonobviousness analyses i. Rules versus standards ii. Differing procedural aspects

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3. In re Seaborg (C.C.P.A. 1964) - Accidental and unknown anticipations a. Invention element 95 Americum and process for making it. b. Two process for making product c. Allegedly anticipating reference is Fermis reaction disclosure. The Fermi patent describes a reactor that if operating it would produce a small and undetectable amount of American. d. But court finds the Fermi patent does not anticipate the Seaborg patent. e. No positive evidence that element 95 was produced. In theory, it was produced, but the amount was so small that it would not detectable. f. General rule: anticipating references must enable i. No doctrine of the patent law is better established than that a prior patent or other publication to be an anticipation must bear within its four corners adequate directions for the practice of the patent invalidated. ii. Accidental anticipation may not necessarily constitute legal anticipation g. Two possible interpretations of Seaborg: i. Anticipation requires some prior awareness of the existence of an invention ii. Anticipation does not require awareness, but the anticipating subject matter must have some significant existence prior to the applicants invention in order to anticipate 1. Claim cannot be allowed to enjoin an activity that was previously practiced 4. Summary a. 35 U.S.C. 102 (AGE) b. The identity requirement c. In order to anticipate, a single reference must contain all the elements of a claim d. Express versus inherent anticipation e. Accidental anticipations do not necessarily legally anticipate why not? ii. 35 U.S.C. 102: Three Related Concepts 1. Novelty a. Disclosure prior to invention? b. Novelty deals with AGE 2. Statutory bars a. Disclosure prior to one year before filing? b. Statutory bars are clustered together: BCD

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iii.

iv.

v.

vi.

3. Derivation a. Was the applicant the one who actually invented? b. If you copy from someone else, you get an F Novelty: 35 U.S.C. 102(a) 1. A person shall be entitled to a patent unless 2. (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, . . . Novelty: 35 U.S.C. 102(e) 1. A person shall be entitled to a patent unless 2. (e) the invention was described in 3. (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the [Patent Cooperation Treaty] shall have the effect under this subsection of a national application published under section 122(b) only if the international application designating the United States was published under Article 21(2)(a) of such a treaty in the English language; or 4. (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the [Patent Cooperation Treaty]; . . . Novelty: 35 U.S.C. 102(g) 1. A person shall be entitled to a patent unless 2. (g) 3. (1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such persons invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or 4. (2) before such persons invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. Novelty: 35 U.S.C. 102

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1. This is shorthand learn the statute! 2. A person shall be entitled to a patent unless, before the date of invention, the invention: a. (a) was known or used by others in the U.S. b. (a) was patented or described in a printed publication anywhere 3. a. (e)(1) was described in a U.S. patent application that is subsequently published as per 18-month publication b. (e)(2) was described in a U.S. patent application that subsequently issued as a patent 4. a. g(1) was invented by someone else (who did not suppress the invention) in a WTO country, as established in an interference b. g(2) was invented by someone else (who did not suppress the invention) in the U.S. vii.

viii. Accidental Anticipation and the Enablement Standard for Anticipation 1. Tilghman v. Proctor (1880) a. The doctrine of accidental anticipation 37

i. Those engaged in the art of making candles . . . certainly never derived the least hint from this accidental phenomenon in regard to any practicable process for manufacturing such acids. If the acids were accidentally and unwittingly produced . . . without exciting attention and without its even being known what was done or how it had been done, it would be absurd to say that this was an anticipation of Tilghmans discovery. b. Accidental anticipation gave nothing to the world. i. Edison Elec. Light Co. v. Novelty Incandescent Lamp Co. (3d Cir. 1909) c. New process to break down fats into soaps, candles d. Process involved mixing fat, water, and heat i. Perkins, separately, had lubricated engine with fat that made the product of Tilghman e. Court said Perkins was just accidental formation of fat acid and did not anticipate Tilghman process of treating fat. f. This holding is known as the doctrine of accidental anticipation 2. Schering Corp. v. Geneva Pharmaceuticals, Inc. (Fed. Cir. 2003) a. Awareness or appreciation in the prior art is not necessary for anticipation b. Emphasis on actual, detectable existence of the anticipating item c. Anti-backsliding principle i. [I]f granting patent protection on the disputed claim would allow the patentee to exclude the public from practicing the prior art, then that claim is anticipated. d. Distinguishing Tilghman v. Proctor i. Here there is inherent anticipation where there not inherent anticipation in Tilghman v. Proctor ii. Tilghman did not conclusive show that fatty acids were formed from engine. Just some record that showed engines were lubricated with fats iii. Here, it was conclusive that DCL was formed and was in the prior art. e. Case is really about statutory bars, and not novelty per se. Case discusses 102(b).

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f. Invention at issue i. Schering has 233 patent on antihistimamine loratoadine, Claritan. Issued -1981 ii. Schering also has 716 patent - claims regarding the metabolite, DCL, formed by Claritan. DCL also works as an antihistime. Earliest priority 2-15-84, issued 1987. iii. Scherring uses the 716 to assert infringement against Geneva, generic drug companies, who is acting on the expiration of the 716 patent. Geneva claims 716 is invalid as anticipated g. Court said that 716 was anticipated by the 233 patent h. Inherency test in general, a limitation or the entire invention is inherent and in the public domain if it is the natural result flowing from the explicit disclosure. i. Does not matter that there was no recognition of DCL ii. Where the result is a necessary consequence of what was deliberately intended, it is of no import that the articles author did not appreciate the results. i. Distinguishing from in re Seaborg i. Seaborg element 95 was not readily detectable and only theorized to be present in the Fermi nuclear process ii. Here, DCL forms in detectable amounts upon ingestion of loratadine. It was conclusively found that there was actual and detectable existence of the anticipating item. j. Prior user rights argument if Patent 716 was valid, a patient taking 233 Claritan would be infringing k. Anticipation infringement symmetry helps to bolster argument people were already taking Claritan and making DCL. Thus patients would infringe DCL if DCL were held valid. Thus, taking Claritan which implicitly forms DCL, would infringes later in time, anticipates the 716 DCL patent if earlierand the Claritan 233 patent is earlier in time. i. that which infringes, if later, would anticipate if earlier. 3. In re Hafner (C.C.P.A. 1969)

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a. Enablement standard for anticipation. Anticipatory v. Patent enablement. i. Patent enablement be able to make and use invention ii. Anticipatory enablement In re Hafner gets at anticipatory enablement b. Halfner files for german patents for new chemical compositions but does not disclose a use. Within a year, he files in US, but again no use disclosed. USPTO rejects patent for lack of enablement under 112. i. When he refiles, his own german patents anticipate his later US patent applications. The 1964 now is in accord with 112, but is anticipated under 102 by his prior german patents. ii. Asymmetry between anticipatory enablement and patent enablement 1. the german patents told how to make product and were anticipatory enablement 2. patent enablement is a different standard, have to satisfy 112 c. Timeline i. 1959: Hafner files two German patent applications on new chemicals; no use is described ii. 1960: Hafner files in the U.S.; no use is described iii. PTO rejects because lack of disclosure under 35 U.S.C. 112 iv. 1960: Arnold article, which discloses how to make the compound, is published v. 1961: Hafners applications are published in Germany vi. 1964: Hafner refiles in the U.S. with a new disclosure including the use for the chemical compounds d. Double standard: anticipatory enablement is different than patent enablement i. [A] disclosure lacking a teaching of how to use a fully disclosed compound for a specific, substantial utility or of how to use for such purpose a compound produced by a fully disclosed process is, under the present state of the law, entirely adequate to

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anticipate a claim to either the product or the process and, at the same time, entirely inadequate to support the allowance of such a claim. e. Halfner Summary i. Anticipatory enablement requires disclosure of how to make/practice an invention, but does not require disclosing a use for that invention ii. No product patents on new uses for old products iii. Once one discloses how to make and use a product, any product patents based on new uses are foreclosed 4. Enablement Standard for Anticipation a. A prior art reference does not anticipate an invention unless it is enabling b. This is not the same degree of enablement to patent an invention under 112 i. Anticipatory enablement ii. Patent enablement 5. Summary a. Awareness is not necessary for anticipation b. Inherent anticipation may arise when a prior art article has some significant existence c. Patent enablement: must disclose how to make and use an invention d. Anticipatory enablement: need only disclose how to make an invention ix. The Anticipation-Infringement Symmetry

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x.

xi. References under Section 102(a): Known or Used by Others and Printed Publications 1. Known or used by others (domestic) - 35 U.S.C. 102(a) a. A person shall be entitled to a patent unless b. the invention was known or used by others in this country, or c. patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, . . . d. National Tractor Pullers Assn v. Watkins (N.D. Ill. 1980) i. Invention relates to devices known as tractor pulling sleds. ii. Watkins claims drawings made on tablecloth count as prior art. Court disagrees iii. Tablecloth drawings never printed or otherwise published before being destroyed. No reduction to practice. iv. That which is alleged to be prior art must have its prior art existence and relevancy established by clear and convincing evidence. 1. No physical evidence here. v. Design was known by at least three people (probably), but still not enough. vi. Case about statutory interpretation and does 102(a) require public knowledge or use.

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1. Prior knowledge as set forth in 35 USC 102(a) must be prior public knowledge, that is knowledge which is reasonably accessible to the public. 2. Tablecloth drawing is not reasonably accessible to the public. vii. 2 deficiencies 1. Lack of physical evidence 2. And no evidence that tablecloth, if exited, was reasonably accessible to the public. viii. Statutory interpretation 1. Does 102 require public knowledge or use? ix. Knowledge defined: 1. Prior knowledge as set forth in 35 U.S.C. 102(a) must be prior public knowledge, that is knowledge which is reasonably accessible to the public. x. Presumption of validity of an issued patent 1. 35 U.S.C. 282 xi. Evidentiary issues regarding prior art 1. That which is alleged to be prior art must have its prior art existence and relevancy established by clear and convincing evidence. 2. Testimony challenging the validity of a patent must be corroborated xii. Lost art 1. Invention that once was and then forgotten or lost has been held not to be anticipation. e. Rosaire v. Baroid Sales Division, National Lead Co. (5th Cir. 1955) i. Public use does not require affirmative publicizing ii. Nonsecret use in the ordinary course of business is public use iii. Abandoned experiments iv. Alternate conceptions of public v. All non-secret art can anticipate, even if hard to access. vi. Invention method for prospecting for oil by measuring gases in soil.

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vii. Rosaire holds patent. Teplitz was using this method, but experiments were not successful, and work was not publicly available. viii. Where such work was done openly and in the ordinary course of the activities of the employer, a large producing company in the oil industry, the statute is to be so modified by construction as to require some affirmative act to bring the work to the attention of the public at large. 1. Do not have to affirmatively publish something for it to be prior art. ix. Patent is invalid and anticipated knowledge was publicly accessible. x. Realistically not a lot of people knew of Teplitzs work. But xi. Abandoned experiments do not count as prior art Does not enrich the prior art does not teach how to make a product does not enable 2. Patented or published (international) a. Jockmus v. Leviton (2d Cir. 1928) i. Invention adjustable light bulb holder ii. asserts lack of novelty, anticipated by a picture in a catalog in French iii. Patent is held invalid, 50 issues (at a minimum) was sufficient for anticipation to be satisfied. iv. Not a technical publication, just a catalog. But it was a trade catalog. Just pictures, but court said they could tell from the picture how to make it. 1. Its whole purpose was to be spread broadcast as far as possible v. Do not need a written narrative if you can tell from the diagrams how to make the invention. Printed publications are not limited to formal publications such as widely circulated magazines and newspapers. vi. Printed publications need not be formal publications

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vii. All that is necessary is enough currency to make the work part of the possessions of the art. viii. Figures alone can satisfy the enablement standard of anticipation ix. Complete documentary corroboration of the public nature of prior art is not necessary 3. Summary of References under 102(a) a. Extremely low standard of anticipatory enablement for noninforming products in public use b. A prior art species anticipates a claimed genus, but not necessarily vice versa c. Section 102(a) has two elements i. Domestic knowledge/use inquiry ii. Global patented/published inquiry d. Information must be publicly accessible in order to anticipate, but there is no requirement to publicize affirmatively e. Printed publications are construed liberally xii. Noninforming Products in Public Use 1. Noninforming products a. Do not reveal how they work or how they are produced 2. For noninforming products in public use, the anticipatory enablement requirement essentially does not apply a. E.g., SABRE, the airline reservation system i. Lockwood v. American Airlines (Fed. Cir. 1997) ii. Through use of system, you do not know how the SABRE system works. iii. Noninforming product, but was still deemed to be an anticipatory enablement to a patent for the SABRE system because it iv. Cant use a patent to withdraw information from the prior art. SABRE has been practiced for many years and we wont allow a patent to give exclusive rights to SABRE xiii. Genus Versus Species 1. It is an elementary principle of patent law that when, as by recitation of ranges or otherwise, a claim covers several compositions, the claim is anticipated if one of them is in the prior art.

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2.

3. Prior art specie anticipates genus 4. But a prior art genus does not necessarily anticipate a specie xiv. References under Section 102(a): Printed Publications and Previously-Patented Material 1. Prior Art, Anticipation? a. In re Hall (Fed. Cir. 1986) - Doctoral dissertation indexed in library Yes. The lone copy of a thesis in an obscure library are proper sources under both 102 and 103. b. In re Bayer (C.C.P.A. 1978) - Masters thesis submitted to library but not indexed No c. In re Cronyn (Fed. Cir. 1989) - Undergraduate theses made available in two libraries; theses were indexed by authors name and title, but theses were unavailable No d. Northern Telecom, Inc. v. Datapoint Corp. (Fed. Cir. 1990) - Four reports housed in a corporate library, at least one said not for public release No 2. In re Klopfenstein (Fed. Cir. 2004) a. Same definition of references under novelty and statutory bars b. Public accessibility is the key to a prior art printed publication c. Easy cases: distributed copies or indexed in a depository d. Hard cases: balancing test e. Impacts on patentee behavior f. Conference paper shown for 3 days g. Multi-factored analysis 1. Re-read for this portion ii. Length of time displayed iii. Skill of audience iv. Reasonable expectations that material would be copied v. Easy of copy 46

1. Wrt to # of bullet points, was so concise it h. Holds that presentation does constitute printed publication under 102(a) i. 1 year grace period maybe this strikes the balance j. Case is really about statutory bars k. Public accessibility criterion by which a reference will be judged for 102(b) or 102(a) l. Distinguish from National Tractor pullers i. Here this was a conference, National Tractor was a drawing on a napkin known only to a few people. Poster vs. printed publication. ii. Public accessibility is the key m. Billboard can be a printed publication depends on the circumstances 3. Reeves Bros. v. United States Laminating Corp. (E.D.N.Y 1966) a. Defining patented b. If in effect the foreign document grants a patent right to exclude others from producing, using, or selling the invention, process, or article for a specified period of time, it clearly falls within the accepted definition of a patent which may be considered under Section 102(a) and (b). c. Foreign patents qua patents are limited to their claims d. U.S. patents are references for both their specifications and claims e. Foreign patents are references only for what they claim (unless they also qualify as printed publications) f. Patented references are not an important category of references g. Utility Models i. Not prevalent in US, exlcusive rights but easier to obtain than patents. ii. Differ from country from country 1. novelty required, but nonobviousness is not required iii. easier to get but conferred rights are weaker h. invention at issue lamination of polyurethane to fabric for flame, and improvement for method or apparatus for operation i. all 3 patents assigned to Reeves, and he sues US Laminating for infringement

47

i. argues that gebrauchsmuster GM invalidates patents, j. Wrt to invalidity of patent i. Was GM within view of 102(a) and (b) 1. difference between GM and US Patent are a. GM can only use the claims only i. No nonobvious requirement ii. 6 year term for GM iii. Just for articles not processes. b. US Patent can relate invention back to disclosure 2. Court holds GM to be a patent despite differences for the sake of 102(a) and 102(b). Essential patent quality right to exclude. ii. Scope of anticipation 1. Court only allows the claims to serve as anticipating references 2. Formalistic distinction SC shoring up geographic split. a. Known or used only applies to US b. So for foreign GM, only going to allow a narrow view, just the claims k. patented not an important category because most patents get published. 4. Novely and the economics of research a. Could argue it is wasteful to de-incentivize the Firm to not search the prior art and instead to expend the time and energy to conduct independent research 5. Statutory Invention Registration and Defensive Publication a. Statutory Invention Registration i. 35 U.S.C. 157 ii. Essentially allows filing a patent with a promise not to assert infringement iii. Must meet patent enablement ( 112), not just anticipatory enablement iv. Becomes prior art as of the date of filing v. Allows the registrant to participate in interferences b. Defensive publications

48

i. Pre-emptive disclosure to enrich the prior art and anticipate subsequent inventions ii. Only requires anticipatory enablement iii. Can also anticipate with defensive publication 1. No use needed to disclose, only requires anticipatory enablement. iv. See most prevalently in software industry software dont really need patents, but they do not want to be sued for infringement. v. Calls for similar in biotech with gene patents. 6. Utility Models a. Exclusive rights that are weaker and easier to obtain than patents b. Petty patents or innovation patents c. Differences between utility models and patents i. Novelty is required, but nonobviousness is not ii. Term of protection is shorter (typically 7-10 years) iii. Patent offices do not examine utility model applications; prosecution is much faster (approx. 6 months) iv. Utility models are cheaper to obtain and maintain v. May be limited to certain fields d. Often well-suited for small enterprises that make incremental (obvious) improvements to existing technologies 7. Summary a. Public accessibility is the touchstone of the printed publication inquiry under 102(a) & (b) i. Factors to identify if presentation qualifies as prior art reference 1. Skill of audience 2. Length of time display exhibited 3. Reasonable expectations that material would not be copied 4. Ease of copy b. Statutory Invention Registration and defensive publication can destroy novelty c. Utility models are a weaker, easier-to-obtain kind of patent protection d. The right to exclude is the touchstone of the patented inquiry under 102(a) & (b) 102(a)

49

e. The printed publication prong usually swallows the patented prong f. A foreign patent qua patent only anticipates what it claims g. Novelty can be modulated to achieve optimal search behavior by firms and their competitors xv. 35 U.S.C. 102(a) 1. A person shall be entitled to a patent unless 2. the invention was known or used by others in this country, or 3. patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, . . . xvi. Section 102(e) 1. A person shall be entitled to a patent unless a. (e) the invention was described in b. (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the [Patent Cooperation Treaty] shall have the effect under this subsection of a national application published under section 122(b) only if the international application designating the United States was published under Article 21(2)(a) of such a treaty in the English language; or c. (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the [Patent Cooperation Treaty]; . . . . 2. 102 (a)(g)(e) a. A person shall be entitled to a patent unless, before the critical date, the invention: b. (a) was known or used by others in the U.S. c. (a) was patented or described in a printed publication anywhere d. e. (e)(1) was described in a U.S. patent application that is subsequently published as per 18-month publication f. (e)(2) was described in a U.S. patent application that subsequently issues as a patent

50

i. 102(e) what is disclosed in patent applications can count as prior art 1. 122(b) relates to 18 months publication of applications a. Unless inventor disclaims foreign rights, applications are published. g. g(1) was invented by someone else (who did not suppress the invention) in a WTO country, as established in an interference h. g(2) was invented by someone else (who did not suppress the invention) in the U.S. 3. Alexander Milburn Co. v. Davis-Bournonville Co. (1926) a.

b. Information in patent applications that ultimately issue as patents constitutes prior art i. Anticipating disclosure is not limited to the claims ii. Prior art as of the date the application was filed c. Codification of Milburn i. Section 102(e)(1): Applications subject to 18-month publication ii. Section 102(e)(2): Applications that ultimately issue as patents d. Secret prior art, but on the path to becoming public e. Rule 131 and swearing behind i. There was no evidence carrying Whitfords invention further back.

51

f. Section 102(e) prior art is also used in nonobviousness analysis i. Very different than most other nations g. Various rationales to justify 102(e): i. Applying for a patent is an attempt to publicize; applicant shouldnt be punished for PTO delay 1. Applications, unlike most prior art references, are very easy to search 2. If something is described but not claimed, it is probably not very valuable a. (If something is claimed in both an earlier- and later-filed application, an interference arises) 3. Information disclosed in a patent application is probably necessary to practice that invention a. Unfair to deprive the earlier filer of that in formation by granting a patent to a later filer h. Invention is for improvements in welding and cutting apparatus i. Inventor of the patent challenged is Whit ford. i. validity of this patent is being examined in the infringement action. ii. in infringement asserts Whitman was not the first to invent and Clifford invented it first. iii. District Court held Clifford not prior inventor and Whitford patent is valid, reason is that Clifford did not claim invention just disclosed in the specification. Supreme Court in this opinion reverses this. j. If Whitford had priorty of invention, then he would be first to invent. But he could not prove this. Clifford does not claim the invention, but all the elements were disclosed in the specification of Clifford. k. Exceptions to giving first inventor priority i. If inventor concealed or , then does not count as prior art l. Supreme Court hold that Whitfords patent is not novel..

52

i. The act of filing a patent application makes the invention public property. m. Swearing behind i. Rule 131 try to establish earlier date of invention. ii. There was no evidence carrying Whitfords invention further back 4. Foreign Filings and 102(e) a. Disclosures in foreign applications for foreign patents generally do not get 102(e) treatment b. If applicant files overseas, and then files in the U.S. one year: i. Application gets the foreign filing date for priority purposes. 35 U.S.C. 119. ii. Application gets the U.S. filing date for anticipation purposes under 35 U.S.C. 102(e). iii. Exception: 1. If the applicant files a PCT application anywhere, it qualifies for 102(e) treatment as of the date of foreign filing if it designates the U.S. as a country wherein patent rights are sought and it is published in English xvii. Section 102(f) 1. A person shall be entitled to a patent unless . . . he did not himself invent the subject matter sought to be patented. 2. Campbell v. Spectrum Automation Co. (6th Cir. 1975) a. Invention flexible feed track for delivering .frame members b. At outset of litigation, Campbell held patent on invention. Campbell sues Spectrum Automation Co. which is run by Zimmerman. i. Zimmerman argues that he was first to invent based on an idea inspired by his fathers belt buckle. A picture of the belt buckle was accepted as evidence by the Court. c. Presumption of validity of Campbells patent is overcome by belt buckle corroborating Zimmermans story. d. Campbell is not true inventor and his patent is held invalid. Spectrum wins and does not infringe. e. Section 102(f): patent invalid if derived from another

53

f. Derivation is a simpler inquiry than novelty i. Global scope g. Presumption of validity for issued patents i. Generally, clear and convincing evidence for issued patents ii. (Interferences treated differently) h. Corroboration requirement for testimony supporting patent invalidation i. xviii. Summary of 120(e) & (f) 1. Under 102(e), information disclosed in patent applications that are ultimately (1) published or (2) issued as patents constitutes prior art 2. Allows for secret prior art 3. Becomes prior art as the date of the filing of the patent application 4. Under 102(f), no patent if the inventor derived the invention from someone else xix. 18-Month Publication of U.S. Patent Applications 1. 35 U.S.C. 122(b)(1)(A) a. [E]ach application for a patent shall be published . . . promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. 2. Does not apply to: a. Applicants not seeking patents in foreign jurisdictions with 18-month publication b. Abandoned applications c. Provisional applications xx. Section 102(g): prior invention 1. Section 102(g)(1) Interferences a. Applies in: inter partes interferences between two parties claiming priority of invention b. Includes any invention from a WTO county involved in the interference 2. Section 102(g)(2) Anticipation a. Applies in: b. Ex parte patent prosecution c. Patent litigation d. No other party is necessarily trying to patent the same invention e. Only includes inventions made in the United States

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3.

4. Brown v. Barbacid (Fed. Cir. 2002) - the exception. The 1st to conceive was the 2nd to reduce to practice. a.

b. Burden of proof in an interference i. Any party attempting to prove an inventive activity prior to his filing date: 1. Preponderance of the evidence ii. If junior partys filing date is after the senior partys patent application is published or issues as a patent: 55

c. d. e. f.

g.

h.

i.

1. Clear and convincing evidence iii. Corroboration requirement for inventive activities 1. Independent evidence is necessary Interference proceedings to determine priority. Count = contested claim under review in an interference. Count (the disputed claim) assay to identify anti-cancer compounds. Both parties claim to be first to invent. Experiments by Brown may have established priorty i. Evidence lacked explanation allegedly by the Board. But the court said that one skilled in the art would have understood what was going on if they had seen the autoradiographs. This is the evidentiary threshold to pass. Brown wants to show that on Sept. 25, 1989 he conceived fist. Because if he conceived fist, and 2nd to reduce to practice, he can win the dispute by proving diligence over the relevant time frame (before Barbacid conception but only have evidence of Barbacids reduction to practice until Browns reduce to practice Holding b/c the Board did not consider evidence that Brown conceived the invention before Barbacid reduced it to practice and diligently pursued the invention from the time of Barbacids reduction to practice through Browns filing date, this court vacates the award of priorty to Barbacid and remands. In order to conceive, or reduce to practice, you need all the elements of the invention. i. The Sept. 20 experiment lacked all the elements of the invention ii. However, the Sept. 25 experiment did contain all the elements of the invention. 1. But need corroboration. Dr. Casey offers some corroboration, but no direct testimony regarding Sept. 25. All he could say was conception in late Sept 2. this is the issue the courts are to focus on during remand.

56

j. What do you need to satisfy to have reduction to practice i. In order to reduce to practice, need to recognize the invention as such at that time. ii. This was not established by the 9-25-89 experiment by Reiss 5. Griffith v. Kanamaru (Fed. Cir. 1987) - Diligence a.

b. Diligence only matters when the first to conceive was the second to reduce to practice c. Diligence is strictly interpreted, and only genuine hardships will excuse delay d. The impact of the diligence requirement on behavior e. Invention = compound (aminocaritine) used to treat diabetes i. Interference proceed f. Griffith must estb. Diligence from a time before Nov. 17, 1982 (others conception) through Griffits reducetion to practice on 1-11-84 i. Diligence not established. g. Not reasonable for Cornell to require the public to wait for the innovation, given the well settled policy in favor of early disclosure h. Court does not agree that unique University circumstances warrant exceptions in the diligence requirement i. Prof. had to wait for fund ii. For a graduate student iii. Court does not care about these reasons.

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i. Record showed that between 11-17-82 and 9-13-83 (When Griffith renewed his efforst towards reduction to practice), Griffith interrupted and often put aside the aminocarnitine project to work on other experiments. j. Some valid excuses would have been i. Illness, ii. Hardship of a more genuine variety 0poverty, family illness k. No special treatment for Universities 6. What is invention a. Invention is a process spanning conception and reduction to practice; priority is generally determined based on reduction to practice (though with significant exceptions) i. Conception - Definite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice ii. Reduction to practice 1. Actual: building a working version of the invention a. Practicing an embodiment of the invention compassing all elements in dispute b. Appreciation that the invention worked for its intended purpose 2. Constructive: filing a patent application that satisfies 112 3. 7. Priority Rules a. The first to reduce the invention to practice usually has priority b. Filing a valid application constitutes constructive reduction to practice c. The first to conceive may have priority over the first to reduce to practice if d. the first to conceive was diligent from a time prior to the other inventors conception through to her own reduction to practice e. Any reduction to practice that has been abandoned, suppressed, or concealed is disregarded 8. Priority - The first to conceive may have priority over the first to reduce to practice if the first to conceive was diligent from a time prior to the other inventors conception through to her own reduction to practice

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xxi. Reduction to Practice 1. DSL Dynamic Sciences Ltd. v. Union Switch & Signal, Inc. (Fed. Cir. 1991)

a. b. General rule for reduction to practice: i. The embodiment actually worked for its intended purpose. c. However: i. [T]ests performed outside the intended environment can be sufficient to show reduction to practice if the testing conditions are sufficiently similar to those of the intended environment. d. Alleged reduction to practice must have all elements of a count e. Subsequent activities can cast doubt on reduction to practice i. E.g., delay in filing (abandoned experiment) f. Reduction to practice requires knowledge that an invention works i. Consistent with constructive reduction to practice and 112 requirements g. No requirement of commercial viability i. [T]here is certainly no requirement than an invention, when tested, be in a commercially satisfactory stage of development in order to reduce the invention to practice. h. Invention is a coupler mounted assembly for train engineering i. brake pressure monitor is part of the assembly i. Interference j. DSL lost at interference, and at district court

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k. To establish priority, need to show reduction to practice prior to l. Union argues it R2P before DSL based on prior experiments. i. experiments were not exactly as they were to be marketed ii. conditions did not exactly approximate as would be used iii. But, court said this is close enough. They were tested to 15G and they were intended for 20G. m. Even though Union later modified the prototype, the Court said it was still close enough. n. Generally invention must work for intended purpose o. Testing that is close enough is permissible. xxii. Abandonment, Suppression, Concealment 1. Abandonment, suppression, and concealment apply after reduction to practice 2. Indicate an attempt to keep a fully-formed invention away from the public 3. Generally, an invention that is abandoned, suppressed, or concealed will not serve as anticipating prior art a. (Unless it is otherwise made publicly accessible) 4. Abandoned Experiment Versus Abandonment a.

b. Abandoned experiment never reduced to practice. Calls reduction to practice into question 5. Abandoned, Supressed, Concealed

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a. Peeler v. Miller (C.C.P.A. 1976) b.

c. Abandoned experiment: questionable reduction to practice i. Different than abandonment ii. Delay in filing gives rise to an inference of an abandoned experiment d. Abandonment, suppression, and concealment: after reduction to practice i. Lower standard than diligence ii. Distinguish from statutory bars iii. Generally must be intentional 1. No specific intent required 2. Mere delay is permissible 3. Long delay between reduction and filing can give rise to an inference of abandonment 4. Inference may be overcome by postreduction efforts to perfect the invention iv. May be imputed from assignee to patentee

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e.

f. Invention improved hydraulic fluid that reduces cavitation. g. Priority dispute. PTO found for Miller b/c Miller R2P first i. Did Miller R2P 1st? yes. Even though intended for airline hydraulic fluid, the invention just claimed ability to reduce cavitation. Therefore, Miller did R2P b/c he R2P invention and passed it on to the corporate patent attorneys. ii. If so, was there suppression before filing for patent application (4 year gap)? 1. De facto inventor Legal considered to be inventor, under 102(g), Peeler. 2. de jour first inventor Miller, actual inventor. Miller deemed to have h. 4 year delay due to Monsantos patent department in-efficient operations. Personnel shortages. i. These reasons not reasonable. 4 years is prima facie unreasonable. Miller did all he could, but he is not to be deemed to the inventor. i. To abandon, suppress, or conceal, need intent, not specific intent though. j. Spurring can give impression of suppression, concealment, or abandonment. You were spurred on to file by your competitors, so it is presumed that you were concealing the knowledge before that. 6. Summary

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a. Diligence is strictly interpreted, and only genuine hardships will excuse delay b. Reduction to practice i. Generally, invention must work for intended purpose ii. Testing that is close enough is permissible c. Abandoned experiment versus abandonment xxiii. Prior art uses of section 102(g) 1. Dow Chemical Co. v. Astro-Valcour, Inc. (Fed. Cir. 2001) a. Differences between 102(g)(1) and 102(g)(2) b. Burdens of proof and production c. Anticipation-infringement symmetry i. Because the foam made by AVI would infringe the Park patents if made after the Park invention, it anticipated in fact the relevant claims of the Park patents, since it was made before Parks invention. d. Invention and awareness i. Awareness of invention need not require awareness of its patentability e. Filing a patent application is not the only way to counteract abandonment, concealment, and suppression i. Commercialization ii. Making an invention publicly accessible 1. Applies even to noninforming products in public use f. Invention Foam blowing agent g. Dow (patent) held invalid, anticipated by AVI, AVI established prior invention as prior art. AVI is not seeking to patent this subject matter. h. AVI licensed a patent (Japan) using isobutene to blow up foam. Doing some inventive activity using this license agreement. i. On Appeal, Dow argues i. AVI not inventor. Can AVI be inventor is not recognizing they had invented? Court rejects Dows argument 1. Court said they did not need to know ; they need to know that they invented something. AVI did recognize 2. do not need to appreciate the patentability of invention, just need to recognize that you have an invention to be deemed the inventor.

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3. testimony substantiated that they knew they invented something. ii. Under 102(g), Dow argues AVI abandoned if they are the inventor. 1. Court does not buy this argument either. j. Dows patent is invalid as anticipated by AVI. No one gets the patent. k. Burden of proof and production i. AVI challenging issued patent: burden of production on AVI, and must show anticipation by 1. clear and convincing evidence. l. Invention and awareness need to be aware that you invented something, do not have to be aware of the patentability of the subject matter. xxiv. Prior Art References for Novelty 1. Section 102(a) a. Known or used in the United States b. Patented or described in a printed publication globally 2. Section 102(e) a. Information in United States patent applications b. (1) Applications subject to 18-month publication c. (2) Applications that ultimately issue as patents 3. Section 102(g) a. Prior invention b. (1) as established in an interference by any competing invention from a WTO country c. (2) in the United States xxv. Relationship of Prior Art Provisions 1. Section 102(g) does not swallow up all the other sources of prior art a. Section 102(g) requires prior invention i. Mere information can constitute prior art under 102(a) and 102(e), even if the disclosed invention is never reduced to practice b. Section 102(e) extends to information disclosed but not claimed in patent applications, unlike 102(g) (1) c. Section 102(g)(2) does not reach inventions made in a foreign country, unlike 102(a) xxvi. Prior Art: Publicly Accessible or on a Trajectory to Becoming Publicly Accessible

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1. Section 102(a): public knowledge or use; patented or published 2. Section 102(e) a. Section 102(e)(1): applications that will be published within 18 months b. Section 102(e)(2): applications that eventually become issued patents 3. Section 102(g) a. Prior inventions that have not been abandoned, suppressed, or concealed b. xxvii. Rule 131: 37 C.F.R. 1.131 1. In the context of PTO reexamination, allows a patent applicant to show invention before the date of a prior art reference 2. Swear behind or antedate the prior art reference 3. No corroboration requirement 4. Exceptions: a. Cannot be used where the allegedly anticipating reference is a U.S. patent or U.S. patent application that claims the same invention b. If so, an interference is appropriate c. Compare with Alexander Milburn Co. v. DavisBournonville Co. i. Wrt (102(e)) ii. Whitfords application was anticipated by Clifford application, which discloses B, iii. Whitford could have swear behind Clifford b/c Clifford not claiming B under Rule 131 5. Cannot be used where the basis for rejection is a statutory bar (date of invention is irrelevant) 6. Cant use w/ US patent or patent application 7. Cant be use against statutory bar a. This date is relevant to date of filing of application 8. In re Moore (Fed. Cir. 1987) a. Rule 131 allows antedating prior art b. Different policy concerns apply to interferences and Rule 131 proceedings i. Interference: 1. Dispute between two applicants 2. A patent will issue 3. Policy: award the patent to the party who satisfied all requirements first c. Rule 131: i. Ex parte proceeding with one applicant

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d. e. f. g.

h. i.

j.

k. l.

ii. Policy: award patent if applicant can antedate whatever was disclosed by prior art reference iii. Otherwise, society will not benefit from the additional disclosure in the applicants patent Recall: asymmetry between anticipatory enablement and patent enablement Rule 131 ameliorates this asymmetry i. Rule 131 applicant need only show as much as the prior art reference No corroboration required for a Rule 131 affidavit Genus-species revisited i. A prior art species anticipates a claimed genus ii. To antedate that prior art, one need only show prior invention of the species, not the entire genus Invention chemical compound Earl Moore files for patent Nov. 24, 1964 i. rejected under 102(a) printed publication 1. International prong British Journal (Dec. 1963) ostensibly anticipates patent, but disclosed no utility for chemical compound. a. Anticipatory enablement v. Patent enablement i. just need to know how to make, do not need utility for AE Moore files Rule 131 affidavit, but he did not disclose utility, only how to make it. i. See Brenner v. Manson need utility, more than just a chemical process needs to be disclosed, this is why patent failed in Brenner v. Manson Moore gets priority by antedating, but to a time when he did not have a utility. Distinguishing Brenner v. Manson and the present case procedural posture Brenner v. Manson (was interference), this is not an interference, this is ex parte patent prosecution wrt Rule 131 i. interference priority goes to praty first to satisty Patent act, including utitlity ii. ex parte proceeding British journal had no utitlity, but Moore could antedate by

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showing what the British journal showed. Not all the requirements of the patent act. Have to disclose as much as the anticipating reference. iii. Policy different different threshold to establish invention in interference v. priority proceedings. Asymmetry here. xxviii. International Considerations a. Two potential uses of foreign activity: i. Establishing a U.S. priority date for a foreign patent application 1. Patent validating b. Using foreign prior art to anticipate a U.S. patent i. Patent defeating c. Establishing a U.S. Priority Date i. Paris Convention for the Protection of Industrial Property 1. Up to one year after an initial filing, an inventor may file a patent application in any member state and obtain the benefit of the initial filing date 2. 35 U.S.C. 119 ii. 35 U.S.C. 119 1. An application for patent . . . filed in this country by any person who has . . . previously regularly filed an application for a patent for the same invention in a . . . [WTO or reciprocating nation], 2. shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, 3. if the application in this country is filed within twelve months from the earliest date on which such application was filed, . . . . iii. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) 1. Requires member states to award patent rights without discrimination as to the place of invention 2. 35 U.S.C. 104

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3. Inventors can rely on foreign inventive activity in a WTO country to establish priority or overcome prior art references 4. 35 U.S.C. 102(g)(1) 5. Inventors from any WTO country can participate in interferences iv. Under TRIPS, member states 1. May not discriminate as to place of invention 2. May discriminate as to place of prior art v. Several U.S. provisions strictly limit the use of foreign material as prior art 1. 102(a) 2. 102(e) 3. 102(g)(2) 2. Westinghouse Machine Co. v. General Electric Co. (2d Cir. a.

b. Waterman learned about invention from De Kando in Europe and brought knowledge back to the US, earliest of May 1904. i. De Kando wants date of invention to be when Waterman came back to US. The Court does not allow this c. De Kando loses because only printed foreign applications can defeat patent, not know or used d. Court says that even though Waterman came to US and disseminated info before Armstrongs constructive reduction to practice, this will not defeat the patent. Knowledge came from outside US and was not disclosed in a way to benefit US. 68

e. Armstrong (US knowledge) not anticipated from foreign-derived knowledge that was present in the US prior to Armstrong. f. Armstrong did conceive first, but he cant rely on conception w/ diligence. g. Interference is now the more appropriate path to take (102(g)) for WTO countries h. Historical antipathy to allowing foreign activity to anticipate U.S. patent applications i. The problem of imported knowledge under 102(a) is unresolved j. Frequency of 102(a) imported knowledge scenarios is decreasing i. More countries are joining WTO (see 102(g)(1)) ii. Under Paris Convention, can obtain a U.S. filing date based on a prior foreign filing date 3. In re Hilmer (C.C.P.A. 1966) a.

b. Hilmer files German patent for chemical compound and then a US application about a year later. c. Uses 119 d. Does Habright application anticipate Hilmer e. What is the operative date of the Habricht US application wrt to a 102(e) rejection of Hilmers US application i. Back-date to Swiss filing

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f.

g. h. i. j. k. l.

m.

n.

1. PTO back-date to 1-24-57 and thought it anticipated Hilmers US application ii. Of date of filing of US application 1. Court says cant read 119 w/ 102(e), and PTO was wrong. 119 was just means to implement Paris convention and has nothing to do with 102(e). 102(e) originated after 119 i. Secret Art and 102(e) application on its way to public disclosure is considered to be in the public doman wrt to 102(e) 1. Prior Art as of the day of filing. 2. during the 18 months after filing, the application is considered secret prior art. Do not back-date prior art, But you do back-date your filing date according to 119. US Priority date is back-date one year under 119 But use same logic for anticipating refernces? i. No Do not apply 119 to prior art references for purposes of 102(e) No anticipation of Hilmer by Habricht Asymmetry i. Under 119, an inventor can use a prior foreign filing date as his U.S. filing date ii. Under 102(e), for purposes of serving as prior art, the effective date of a foreign-filed application is the date it was filed in the U.S., not the foreign date iii. Mitigates 102(e) problem of secret prior art iv. 102(e) gives rise to secret prior art as of the date of filing the application, when technically that information was not public. v. Do not extend this treatment to foreign applications. Statutory construction and legislative history i. 119 only affects the priority date of the application considered for patenting, not prior art references ii. 102(e) was intended to codify Milburn and has nothing to do with priority dates Milburn and the problem of secret prior art i. An intermediate approach to 102(e)

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o. The paramount principle of settled practice 4. Summary of 131 and dates of prior art a. Rule 131 allows antedating prior art i. Only requires disclosing as much as the anticipating prior art reference b. For international considerations, distinguish: i. Establishing a U.S. priority date for a foreign application 1. Under 119, one can get the priority date of a foreign filing ii. Using foreign activity to establish prior art 1. Historical antipathy to using foreigngenerated knowledge or use to anticipate under 102(a) c. Under 102(e), foreign filing will only constitute prior art as of the date of U.S. filing e. Statutory bar delay. Focus on activities prior to one year before filing a patent application i. Introduction 1.

2. Policy Objectives of Statutory Bars a. Minimize detrimental reliance i. Prevent removal of inventions from the public domain that the public justifiably believes are freely available b. Encourage prompt dissemination i. Favor prompt and widespread disclosure

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c. Prohibit undue commercial exclusivity i. Prevent inventor from commercially exploiting the exclusivity of his invention substantially beyond the 20 year patent term d. Allow evaluation of market conditions i. Reasonable amount of time following sales activity to determine if applying for a patent is worthwhile 3. Statutory Bars a. Policy i. Early disclosure 1. dont want to later grant a patent for activities that multiple parties are practicing. This would withdraw activities and knowledge from public domain. Minimize detrimental reliance. ii. Faster dissemination of information iii. Earlier termination of patent rights iv. Grace period allows for evaluation of market conditions. b. Section 102(b) i. A person shall be entitled to a patent unless the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States ii. [1] No patent if, more than one year prior to application, invention 1. [A] patented or 2. [B] described in printed publication a. [C] anywhere, or iii. [2] invention 1. [A] in public use or 2. [B] on sale a. [C] in this country iv. Public use, on sale, patented, printed publication c. Section 102(c) i. Abandonment d. Section 102(d) i. Prior foreign filing e. Patented and printed publication have the same meaning in 102(a) and 102(b)

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f. Critical date: i. Novelty: Date of invention ii. Statutory bars: 1 year before date of filing 1. 1 year grace period 2. 1839 1939, grace period was 2 years 4. Pennock v. Dialogue (1829) a. Two possible bases for Justice Storys decision i. Abandonment 1. [A]n inventor may abandon his invention, and surrender or dedicate it to the public. This inchoate right, thus once gone, cannot afterwards be resumed at his pleasure. 2. 102(c) ii. Public Use 1. The first section of the Patent Act required that the applicant had invented a new and useful art, machine, etc. not known or used before the application. 2. 102(b) b. Invention and inchoate rights c. Policy considerations i. Detrimental reliance ii. [L]imited times and curtailing the period of exclusivity d. Invention hose connections that do not leak e. Cant see 13,000 ft of hose for 7 years and then ask for a patent and deprive public of that which the public is using. f. Issue abandon inchoate right to exclusive right of invention? i. Yes, he did. Patentee loses. g. Detrimental reliance for public i. cant withdraw info from public with patent h. Patents are a utilitarian system need to maximize public good i. Justice Story reads in the word public into the phrase not known or used before the application j. Trade secret versus patent i. statutory bars preclude extension of period of exclusivity ii. at some point, inventor must choose between trade secret protection versus patent protection.

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5. Egbert v. Lippmann (1881) a. Public use as a statutory bar b. Number of items i. [T]o constitute the public use of an invention it is not necessary that more than one of the patented articles should be publicly used. c. Number of observers i. [W]hether the use of an invention is public or private does not necessarily depend upon the number of persons to whom its use is known. d. Non-informing uses i. [S]ome inventions are by their very character only capable of being used where they cannot be seen or observed by the public eye. e. Consent f. Confidentiality agreements and nonpublic use i. Did Egbert and Barnes have a confidentiality agreement? ii. Implicit confidentiality for employees g. Invention corset springs i. Inventor is Barnes, Egbert is assignee 1. Egbert (wife while Barnes was alive) and Barnes (H) were dating and then they inter-married h. Evidence establishes beyond controversy that infringement of def is clear, but still need to determine if the patent was valid in the first place. i. Lippman claims that patent is not valid, w/ consent of inventor, the invention was used for more than 2 years before filing. His wife wore the corset springs, he made multiple copies i. barnes allowed friend and another witness to see invention ii. arguable that public could not see corset springs since they were worn beneath ones clothing, yet this still constituted public use. j. Patent is not valid i. 11 years after invention file for patent ii. corset springs were in mass production at the time of the application k. public use i. can be just one protype of invention in the public and

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l. m. n. o.

ii. number of persons not relevant. iii. character of invention. 1. Gears of watch, no going to take these away from the public even if they were hard to notice within the inner workings of the watch Non-informing uses i. No-one could tell how they were used, but they Consent is not a requirement today Egbert and Barnes were married so arguably they had a confidentiality agreement There is detrimental reliance on the part of the other corset manufacturers, b/c they were mass producing the corset springs, and to award Egbert a patent would lead to massive infringement by those who detrimentally relied.

6. Recap a. Statutory bars can prevent patentability even when the inventor invented first b. Policies: minimize detrimental reliance, promote early disclosure, limit exclusivity, allow market evaluation c. Inventors must choose trade secret or patent d. Expansive understanding of public use ii. Public Use and On-sale Bar 1. Moleculon Research Corp. v. CBS, Inc. (Fed. Cir. 1986) a. Public use i. Control 1. Retaining control is critical for maintaining nonpublic status ii. Confidentiality agreements 1. Presence/absence is not dispositive of public use iii. On sale 1. Sale of an invention versus assignment or licensing of patent rights b. Invention puzzle that is similar to the rubix-cube toy. c. Nichols invents the puzzle, and creates models i. he maintained control, even when showing people, he did not let they take the model away. Nichols used for his own private enjoyment 1. no public use

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d. Nichols shows puzzle to boss, they agree to share proceeds and Moleculon will market it. i. lack of express confidentiality agreement not dispositive of public use. e. An assignment or sale of the righs in the invention and potential patent rights is not a sale of the invention within the meaning of 102(b) i. No public sale f. Standard of proof that CBS must satisfy to show public use or public sale is clear and convincing evidence. i. This is high standard, b/c patent has presumption of validity. g. Distinguish from Egbert v. Lippman i. Egbert control, she was wearing the device around so Barnes (H) relinquished contorl ii. Moleculon Nichols maintained control 2. Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (2d Cir. 1946) a. Public use versus abandonment b. Secret, commercial use of an invention: i. Can statutorily bar that inventor from obtaining a patent ii. Does not statutorily bar another inventor from obtaining a patent c. Range of uses that give rise to 102(b) bar i. Informing public use ii. Noninforming public use (Eggbert) iii. Secret commercial use (Metallizing) d. Barred by commercial use beforehand e. Invention process of metalizing, to prepare surface for f. Issue public use of the patented process more than one year before filing? g. If the public, with the knowledge, and tacit consent of the inventor, be permitted to use the invention without opposition, it is a fraud on the public afterwards to take out a patent h. Commercial use of the invention i. selling product, but process to make product was kept a secret i. Secret use of a commercial invention did constitute a public use for statutory bar purposes. Patent is held invalid. i. policy 1. see Pennock

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2. shall not exploit discovery after it ready for patentability. Inventor must choose btwn trade secrecy or a patent 3. Cant extend commercial exclusivity by tacking trade secrecy w/ patent rights. j. Threshold for patentability i. Abandonment versus Public Use 1. Here is it public use, not abandonment ii. Abandonment deliberate surrender iii. Public use is different 3. Pfaff v. Wells Electronics, Inc. (1998) a.

b. For on-sale bar to apply: i. Invention must be the subject of a commercial offer for sale ii. Invention must be ready for patenting 1. Reduction to practice 2. [D]rawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention. c. The value of certainty i. Complete versus substantially complete invention d. Public use and on-sale bars i. Egbert: Public use before any sale ii. Pfaff: Sale before any public use e. Policy balances

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f. g.

h.

i.

i. The patent laws therefore seek both to protect the publics right to retain knowledge already in the public domain and the inventors right to control whether and when he may patent his invention. Invention computer chip socket Complete invention was described in the offer to sell, which occurred more than one 1 year before filing i. offer included engineering drawings. ii. Court deemed invention complete at the time of sale 1. Either reduce to practice 2. Drawings that enable Issue whether the commercial marketing ofa newly invented product may mark the beginning of the 1 year period even though the invention has not yet been reduced to practice. i. is there a sale before reduction to practice? ii. Yes. For on-sale bar to apply (2-part Test, p. 542) i. Invention must be the subject of a commercial offer for sale ii. Invention must be ready for patenting (2 ways to satisfy) 1. Reduction to practice, or 2. Proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.

4. Recap a. Noninforming products in public use give rise to a statutory bar b. Retaining control is key to maintaining nonpublic status c. Secret commercial use i. Bars ones own patent ii. Does not bar someone elses patent d. An invention can be on sale even before it is reduced to practice iii. The Experimental Use Negation for Statutor Bars 1. 2. Experimental Use Negation

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a. Public uses and even sales prior to the critical date do not trigger a statutory bar if experimental b. Balances: i. The desire to provide enough time to an inventor to perfect her invention and ii. The desire to prevent delay in filing patent applications c. Pushes back the date of reduction to practice d. Experimental use negation is asserted by the patentee e. Different than experimental use defense asserted by an alleged infringer 3. City of Elizabeth v. American Nicholson Pavement Co. (1877) a.

b. Experimental use negation i. The use of an invention by the inventor himself, or of any other person under his direction, by way of experiment, and in order to bring the invention to perfection, has never been regarded as [public] use. c. The inventor controls if and when to make the invention public i. So long has he does not voluntarily allow others to make and use it, and so long as it is not on sale for general use, he keeps the invention under his own control, and does not lose title to the patent. d. Nature of the technology is relevant i. Now, the nature of the street pavement is such that it cannot be experimented upon satisfactorily except on a highway, which is always public. 79

e. Public use or sale, not knowledge f. Experimental sales i. [A] sale that is primarily for experimental purposes, as opposed to commercial exploitation, does not raise an on sale bar. g. Experimental use and reduction to practice i. Federal Circuit: experimental use can not occur after a reduction to practice. ii. Experimental use pushes back the date of reduction to practice h. Reasonableness of extended testing i. Analysis depends on whether the invention had indeed been shown to work for its intended purpose and whether the inventor was acting reasonably in continuing to evaluate the invention. i. Invention checkboard pavement, conceived by Nicholson in 1847-48 j. Constructed stretch of pavement 1848, applied for patent 1854. Pavement used on bridge for 6 years in the public. k. Issue Whether invention was in the public use or on sale, for i. SB public use ii. Novelty 1. Is the Hosking 1850 patent 102(a) prior art? No. Nicholson can antedate behind this reference. l. The use of an invention by the inventor himself, or of any other person under his direction, by way of experiment, and in order to bring the invention to perfection has never been regarded as such a use. m. No intention to abandon. Inventor was continuously monitoring the road. n. The nature of a street pavement is such that it cannot be experimented upon satisfactorily except on a highway, which is always public. o. Holding this is not public use within the meaning of statutory bar. p. Public knowledge does not give rise to a statutory bar. Just Public use and sale. q. Compare to Egbert v. Lippman i. Nature of technology is different ii. Issue of control 4. Lough v. Brunswick Corp (Fed. Cir. 1996) a. Experimental use negation

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b. Provides an inventor time to determine if the invention is suitable for its intended purpose, i.e., to reduce the invention to practice. c. Tests can take place in a variety of settings, but the inventor must maintain some degree of control and feedback over those uses of the prototypes if those tests were to negate public use. d. Factors relevant to the totality of the circumstances i. Maintenance of control ii. Number of prototypes and duration of testing iii. Progress reports iv. Confidentiality agreements v. Tailoring of testing to specific features vi. Degree of public access e. Experimental use is a question of law f. Amateur inventors versus corporate research and development g. Market testing and experimental use h. Experimental use negation only applies to claimed features of an invention i. Invention is seal assembly for the stern drive in certain inboard-outboard boat motors j. Lough, high school educated, laborer, is the inventor. Not sophisticated. i. Makes 6 prototypes in 1986, prior to the critical date. k. Brunswick claims patent invalid, Lough says it was experimental l. Issue whether Loughs alleged experiments lacked enough of these required indicia so that his efforts cannot, as a matter of law, be recognized as experimental. i. No control over the prototypes. m. Holding not experimental, this was public use n. When one distributes the invention to members of the public under circumstances that evidence a near total disregard for supervision and control concerning its use, the absence of these minimal indicia of experimentation require a conclusion that the invention was in public use. o. Factors i. control ii. # of prototypes iii. Progress reports

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iv. Compensation p. Dissent i. Give more leaway to unsophisticated inventors. q. Experimental use is a question of law, but it depends on the totality of the circumstances which is very fact dependent. 5. Recap a. Experimental use can negate public use b. Experimentation can occur in many contexts, but maintaining control is key c. Experimentation pushes back the date of reduction to practice d. Question of law but depends on the totality of circumstances e. Little leeway in applying standards differently to amateur inventors iv. Third Party Statutory Bar Activity 1. Baxter Intl v. COBE Labs., Inc. (Fed. Cir. 1996) a. Third-party statutory bar i. Consent by the patentee is not necessary to give rise to a statutory bar b. Inventors cannot completely control when their inventions are made public c. Experimentation versus fine-tuning d. Public use or secret prior art? e. Policy rationales behind the statutory bar f. Finding third party prior art g. Stolen inventions and public use h. Invention centrifuge for spinning blood i. Public use of centrifuge before critical date and after R2P. Use was not experimental;. Feel flow of people in and out of NIH lab lead to conclusion that there was lack of control. j. Cullis applied for patent in 5-14-76, critical date 514-75 k. Baxter sued Cobe for infringement i. Cobe defense is public use, 102(b) rejection 1. l. Whether public use has occurred is a question of law. In considering whether a particular use was a public use within the meaning of 102(b), we consider the totality of the circumstances in conjunction with the policies underlying the public use bar. m. Cullis, Baxter, Cobe relationship?

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n.

o.

p. q.

r. s. t.

i. 3rd part statutory bar activity, Particular use desired by Soto is not the same use as disclosed in the patent. i. So experimental use was not the use claimed by the patent. This allowed the court to knock out the exerpimental use doctrine. As claimed, the invention was ready to use at the time it was publicly used in the NIH lab. Dissent i. Normally, we just allow secret prior art for 102(e), the dissent worries that Creates a new category of secret prior art 3rd party activities become a bar to inventor who does not know about their activities. Experimentation versus fine-tuning i. Soto recognized invention was ready for its purpose, thereafter he was just fine-tuning Policy i. Public detrimental reliance ii. Prompt and widespread disclosure of inventions 1. grace period is enough iii. statutory bar prevent patent rights being extended Stolen inventions can give rise to a statutory bar, and breaches of confidentiality agreements, can also give rise to a statutory bar.

2. W.L. Gore & Assocs., Inc. v. Garlock, Inc. (Fed. Cir. 1983)

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a. b. Party-specific bar i. Secret commercial use by a patentee will bar that patentee ii. Secret commercial use by a third party will not bar another patentee c. Favoring early disclosure i. As between a prior inventor who benefits from a process by selling its product but suppresses, conceals, or otherwise keeps the process from the public, and a later inventor who promptly files a patent application from which the public will gain a disclosure of the process, the law favors the latter. d. Third party sale of a secret invention will not bar another patentee e. District court erred to hold that secret use by Cropper (3rd party) as public use over Gores patent for Goretex (patent filed in 4-21-70). i. 1966, Cropper sends letter to Company in MA, content of letter was an offer for sale, this offer is rejected. No public use or disclosure so far. ii. 1968, Cropper of New Zealand sold his machine to another (BUDD)w/ confidentiality agreement. 1. Not a statutory bar to Gore. 2. If BUDD offered and sold anything, it was only tape, not whatever process was used in producing it. Neither party contends, and there was no evidence, that the public could learn the claimed process by examing the tape

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f. Invention process for rapidly stretching Teflon g. See Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. i. Metallizing secret public use bar inventor himself. rd h. 3 party v. 1st Party i. We do not want to allow period of exclusivity to be too long, Gore is not benefiting from activities by BUDD, so same rationale would not apply. ii. Public has no benefit of knowledge since process not able to be reverse engineered. 3. Recap a. Third party activity may trigger a statutory bar for an unrelated patentee b. Inventors cannot completely control when inventions are made public c. Experimentation versus fine-tuning d. Secret commercial use by a prospective patentee bars her own patent e. Secret commercial use by a third party does not bar anothers patent v. Abandonment and Prior Foreign Filing 1. Macbeth-Evans Glass Co. v. General Electric Co. (6th Cir. 1917) a. The doctrine of election i. Trade secrets 1. [T]he first is in its nature and essence susceptible of exercise only in a way to evade, or at least unduly delay, a disclosure of the invention in the interest of science and the useful arts, and with an intent to expand the statutory period of monopoly and thereby reap additional profits. ii. Patents 1. The second is a means simply to acquire a monopoly subject to all the conditions and limitations of the patent laws. iii. Such rights in our opinion are inconsistent in themselves. . . . b. Abandoning the invention or the right? i. Inchoate rights

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ii. Abandonment in this sense must have been intended to signify a relinquishment of patent privileges. c. Two theories of statutory bars based on secret commercial exploitation by the patentee i. Abandonment 1. Requires defining abandonment as referring to patent rights ii. Public use 1. Requires regarding a secret use as public 2. Odd asymmetry of party-specific bars d. Section 102(c) has relatively few applications i. Secret commercial exploitation by patentee 1. Covered by 102(b) as public use ii. Secret use without commercialization 1. Generally not held to be abandonment iii. Abandoned application 1. Not abandonment iv. Abandonment via unclaimed disclosure in patent 1. Not abandonment unless the earlier application is prior art under 102(b) e. Comparing abandonment for novelty and statutory bars i. Novelty: 1. Abandonment relevant for prior art references 2. Section 102(g)(2): A person is entitled to a patent unless before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. ii. Secrecy can constitute suppression 1. Statutory bars: 2. Abandonment relevant for the invention itself 3. Secrecy, with no commercial exploitation, does not constitute abandonment

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f. Invention process for making glass for illuminating purposes as in electric and other shades and globes g. Perfected in 1903, marketed and selling the products of the process i. During this 10 year period, process kept secret by tradesecret h. Filed for patent in May 9, 1913 i. Inconsistency between the right to a trade secret and the right to a patent j. Whether there is inconsistency between the right to practice an invention in secret without limit of time and for profit and the right to obtain a patent on the invention? Yes. Cant have both tradesecret and patent protection. k. GE asserts patent invalid i. For abandonment ii. And for public use l. Holding there is public use and abandonment m. Macbeth argues that only product was in public use, and the process was not in the public use. Court does not agree with this argument. i. So court focuses on abandonment instead of public use so as not to have to directly address this. The court is assuming that the process was not public use just by putting the product on the market. n. Underlying assumption not consistent with precedent i. See Metallizing there was public use even though you could not figure out the process from the product. ii. See Gore v Garlock commercializing product is public use of underlying process. o. Here te choice made was deliberate and is unmistakable; it was the secret use for profit and was persisted for years. If the right to secure protection of the patent laws can be effectively repudiated, it certainly has been here. p. Compare to Pennock q. Patent held invalid for abandonment. 2. In re Kathawala (Fed. Cir. 1993) a. Section 102(d): Delayed Foreign Filing i. A person shall be entitled to a patent unless

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1. (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, 2. by the applicant or his legal representatives or assigns in a foreign country 3. prior to the date of the application for patent in this country 4. on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States 3. 102(d) 3 conditions for satisfying a. Application filed on the same invention b. Foreign Application filed before the US Application filed c. And Foreign patent issued before the US application filed d.

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e.

f. U.S. claims i. 1, 2: ester compounds ii. 19: pharmaceutical composition containing the compounds iii. 20,21: methods of use g. Greek claims i. Compounds ii. Compositions iii. Methods of use iv. Process for making compounds h. Spanish claims i. Process for making compounds i. 102(b) foreign patent can statutory bar a US patent, but it must publish 1 year prior to the date of US filing. j. Invention a group of new compounds having the ability to inhibit a key enzyme in the biosynthesis of cholesterol. k. Patent rejected under 102(d) l. K argues that the foreign patent law should excuse the manner (delayed US filing) in which he filed his invention, but Court rejects this i. Regardless of whether it is patentable subject matter in the JX, m. 102(d) bars not very likely to come up. n. Broad definitions under 102(d) i. Patented: If a patent issues, its patented ii. Patented: Publication unnecessary 1. It is irrelevant under section 102(d) whether the Spanish patent was

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publicly available prior to the U.S. filing date. iii. Invention: Claims directed to the same invention 1. When a foreign patent issues with claims directed to the same invention as the U.S. application, the invention is patented within the meaning of section 102(d); validity of the foreign claims is irrelevant to the section 102(d) inquiry. o. Section 102(d) bars are infrequent i. Require more than one year between foreign and U.S. filing 1. Unlikely because patentees will take advantage of Paris Convention / Section 119 and file in the U.S. within a year ii. Require issuance of foreign patent prior to U.S. filing 1. Long delays in most patent offices 4. Recap a. Section 102(c): Abandonment i. Relinquishment of patent privileges ii. Illustrates the incompatibility of trade secrets and patents iii. A relatively narrow statutory bar b. Section102(d): Delayed U.S. filing i. Triggered by 1. Filing of a foreign application more than one year before the filing of a U.S. application 2. Issuance of the foreign patent before the U.S. application ii. Adopts broad definitions of invention and patented iii. Unlikely to arise vi. General Anticipation Principles 1. The identity requirement a. In re Robertson (Fed. Cir. 1999) 2. Inherent anticipation a. Schering Corp. v. Geneva Pharmaceuticals (Fed. Cir. 2003) 3. The enablement standard for anticipation a. In re Hafner (C.C.P.A. 1969) vii. 102-Summary

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1. Novelty a. Section 102(a): Knowledge, Use, Patents, Publications i. Known or Used By Others (Domestic Inquiry) 1. National Tractor Pullers Assn v. Watkins (N.D. Ill. 1980) 2. Rosaire v. Baroid Sales Division, National Lead Co. (5th Cir. 1955) ii. Patented or Described in a Printed Publication (Global Inquiry) 1. Jockmus v. Leviton (2d Cir. 1928) 2. In re Klopfenstein (Fed. Cir. 2004) 3. Reeves Bros. v. United States Laminating Corp. (E.D.N.Y. 1966) b. Section 102(e): U.S. Patent Applications i. Section 102(e)(1): applications subject to 18-month publication ii. Section 102(e)(2): applications that are eventually issued as patents iii. Alexander Milburn Co. v. DavisBournonville Co. (1926) c. Section 102(g): Prior Invention i. Section 102(g)(1): Interferences 1. Brown v. Barbacid (Fed. Cir. 2002) 2. Griffith v. Kanamaru (Fed. Cir. 1987) 3. DSL Dynamic Sciences Ltd. v. Union Switch & Signal, Inc. (Fed. Cir. 1991) 4. Peeler v. Miller (C.C.P.A. 1976) ii. Section 102(g)(2): Anticipation 1. Dow Chemical Co. v. Astro-Valcour, Inc. (Fed. Cir. 2001) 2. Statutory Bar a. Section 102(b) i. Public use or on sale in the U.S. ii. Patented or described in a printed publication anywhere b. Section 102(c) i. Abandonment c. Section 102(d) i. Delayed U.S. filing viii. Statutory Bar Summary 1. Policy objectives

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2.

3. 4. 5.

6.

a. Minimize detrimental reliance b. Encourage prompt dissemination c. Prohibit undue commercial exclusivity d. Allow evaluation of market conditions Section 102(b) a. Public use i. Egbert v. Lippmann (1881) ii. Moleculon Research Corp. v. CBS, Inc. (Fed. Cir. 1986) iii. Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (2d Cir. 1946) b. On sale i. Pfaff v. Wells Electronics, Inc. (1998) c. Experimental use negation i. City of Elizabeth v. American Nicholson Pavement Co. (1877) ii. Lough v. Brunswick Corp. (Fed. Cir. 1996) d. Third party statutory bar activity i. Baxter Intl v. COBE Labs., Inc. (Fed. Cir. 1996) ii. W.L. Gore & Assocs., Inc. v. Garlock, Inc. (Fed. Cir. 1983) Section 102(c): Abandonment a. Macbeth-Evans Glass Co. v. General Electric Co. (6th Cir. 1917) Section 102(d): Delayed U.S. filing a. In re Kathawala (Fed. Cir. 1993) Overarching Themes for Statutory Bars a. Statutory bars vs. novelty b. Exercising control vs. making an invention public c. Experimentation vs. fine-tuning d. Noncommercial vs. commercial use e. Third party vs. self Hypos

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a. i. Novelty problem can be ameliorated 1. Ruth would have to swear behind (Rule 131) the allegedly anticipating reference 102a ii. Publication is a statutory bar 1. No way to get around, barred by 102(b) b.

i. Case we read said German GM is patent for purposes of 102a ii. So we can presume the same definition applies to 102b iii. German GM came out 1 year before critical date, so Ruth is barred iv. Also a 102(d) 1. Filed more than 1 year before 2. And came out before filing of US application 93

v. Ruths invention is novel, but it is statutorily barred from being issued

c. i. Discloses but does not claim ii. Info disclosed in applications is prior art for 102(e) iii. But this is not a source of prior art for 102(b) 1. Use or on sale 2. Or info describe in patent or printed publication anywhere iv. Since this not published, does not count as prior art for 102(b)

d. i. Not barred if like City of Elizabeth 1. Need to determine if experimental 2. Issue of control ii. If she does reduce to practice before critical date, then she will be statutorily barred

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e. i. Yes, she is barred ii. She is benefiting even though keeping it secret

f. i. No. Third party using in secret, does not barr Ruths patent application g.

i. Prior foreign filing, does this trigger a 102d? ii. No 102d barr 1. Is filed more than I year

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2. But foreign patent in this hypo was not issued before the US filing f. Nonobviousness KSR, some measure of technological achievement i. Introduction to Nonobviousness 1. Nonobviousness asks whether a development is a significant enough technical advance to merit the award of a patent. 2. Additionally, do not want to burden PTO with frivolous applications. Not cost effective. 3. A measure of technical accomplishment, not economic significance 4. Evaluated from the perspective of a PHOSITA 5. Standards versus rules a. Policy b. Economic justifications i. Society benefits more from significant technological advances ii. Patents on obvious inventions would compromise incentives to develop nonobvious inventions iii. Incentives may be unnecessary for obvious inventions c. Administrative costs i. Prevents proliferation of obvious patents that are costly to process, search, and license 6. Nonobviousness is the ultimate condition of patentability b/c (different from novelty and utility) a. More difficult to satisfy than novelty and utility i. Utility is easy to satisfy ii. Novelty needs to contain each element. Novelty is a formalistic and technical requirement. b. Assessed relative to a person with technical knowledge ordinary skill in the art ordinary mechanic aquainted with the business 7. Seldens Patent on the Automobile a. Seldens combination was probably novel i. Gasoline engines were relatively new ii. Selden may have been first to mount one on a car b. Development was likely obvious i. Many individuals independently thought to use gasoline engines for cars c. Economic effects: i. Imposed an unnecessary output constraint

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d. Decreased royalties to patentees of early automotive technology 8. Hotchkiss v. Greenwood (1851) a. Invention doorknob made of potters clay that combines a screw and a knob i. Substantial utility is better, harder, cheaper b. Hotchkiss suing Greenwood for infringement i. Greenwoods defense is that patent lacks originality. c. Shank and spindle design were in the prior art, and clay doorknobs were in the prior art. d. The only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement. e. Unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. f. The nascent nonobviousness doctrine i. [U]nless [there is proof of] more ingenuity and skill . . . than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor. ii. The difference is formal, and destitute of ingenuity or invention. g. Commercial success is not a measure of obviousness i. Tin-covered buttons has huge economic success, but this was not enough to determine invention. h. Standard of innovation i. But secondary considerations can be relevant (put forth by the dissent) i. Commercial success in the absence of business tactics that led to the market success. j. Differing approaches to patentability

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i. Majority 1. Standard of innovation 2. Merits of the resulting invention are less relevant ii. Dissent 1. The merits of the resulting invention 2. Skill involved is much less relevant 3. It is of no consequence whether the thing be simple or complicated, whether it be by accident or by long laborious thought, or by an instantaneous flash of the mind, that it was first done. iii. Difficulty of timing 1. Dissent looks to market success 2. @ time of patent issuance you do not know if the invention will be successful. 3. But later, during litigation, there will be market history to determine if the invention was successful or not. ii. Development of Nonobviousness 1. Conflating invention with patentable subject matter a. Rubber-Tip Pencil Co. v. Howard (1874) 2. 3. Early twentieth century distrust of patents a. Progressive and antitrust movements 4. 5. [T]he new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. a. Cuno Engg Corp. v. Automatic Devices Corp. (1941) 6. National Patent Planning Commission criticized invention standards as too stringent in 1943 7. 8. [T]he only patent that is valid is one which this Court has not been able to get its hands on. a. Jungersen v. Ostby & Barton Co. (1949) 9. 10. [O]nly when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable. a. Great A. & P. Tea Co. v. Supermarket Equip. Corp. (1950) iii. 35 USC 103(A)

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1. 2. 3. 4. 5.

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

6. iv. The Graham Framework 1. [T]he ultimate question of patent validity is one of law. 2. Primary factual inquiries: a. Determine the scope and content of the prior art b. Ascertain the differences between the prior art and the claims at issue c. Resolve the level of ordinary skill in the pertinent art 3. Graham v. John Deere Co. Trilogy of Cases a. Graham v. John Deere Co. (1966) i. Invention combination of old mechanical elements; involves a device designed to absorb shock from plow shanks as they plow through rocky soil and thus to prevent damage to the plow. ii. Patent held invalid under 103 iii. Infringement action, Graham is suing John Deere Co. 1. John Deere Co says the 811 anticipates the 798 patent. This is Grahams own invention being used as anticipatory prior art. 2. The sole element in patent 798 which petitioners argue before us is the interchanging of the shank and hinge plate and the consequences flowing from this arrangement. iv. Certainly a person having ordinary skill in the prior art, given the fact that the flex in the shank could be utilized more effectively if allowed to run the entire length of the shank, would immediately see that the thing

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to do was what Graham did, i.e., invent the shank and the hinge plate. 1. this presents no operative mechanical distinctions, much less nonobviousness differences. v. Instinctive aversion to monopolies, but willalow to create an incentive vi. Jefferson 1. The Nature of Ideas a. Think back to non-rival and non-excludable. Jefferson is recognizing that ideas are a type of public good i. Non excludable and ii. Non rival b. Ideas may be underproduced, so we need patent system. c. Utilitarian basis for the patent system i. Contrast this with the moral rights basis for copyright protection. vii. Graham Framework 1. Nonobviousness is a question of law, but there are primary factual inquiries that underlie the nonobviousness analysis. viii. Instrumentalist origins of the patent system a system designed to promote ideas, utilitarian, not a natural rights theory b. Instrumentalist origins of the patent system c. Manner of invention irrelevant d. Relationship of 1952 Patent Act to Hotchkiss and other precedents e. The Graham framework f. Primary factual inquiries g. Secondary characteristics h. Ones own earlier inventions can render later ones obvious 4. Calmar, Inc. v. Cook Chemical & Colgate v. Cook a. Invention the device here combines a fingeroperated pump sprayer, mounted in a container or bottle by means of a container cap, with a plastic overcap which screws over the top of and depresses the sprayer.

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b. Useful aids in shipping of containers of insecticides and protects sprayer from damage c. Cook, patent assignee, acknowledges that all elements are in the prior art, but asserts that combination is nonobvious. d. Court of appeals impressed with commercial success and finds nonobvious. e. Supreme Court reverses and rejects the patent i. Technical determination of what is the claimed invention 1. Looks to file wrapper or prosecution history ii. minor elements space between cap and bottle neck and the sealing rib 1. not patentable, just descriptive element of invention. f. File Wrapper or Prosecution History i. It is, of course, well settled that an invention is construed not only in the light of the claims, but also with reference to the file wrapper or prosecution history in the patent office. ii. Helps construe the claims g. Newly discovered prior art and the presumption of validity i. statutory presumption of validity for issued patent ii. but in Graham and Cook Chemical, prior art considered that was not considered during prosecution. h. Reiteration of secondary characteristics i. Commercial success ii. Satisfaction of long-felt need i. Newly-discovered prior art and the presumption of validity j. Not much discussion about PHOSITA. Perhaps S.C. not applying its own framework in this opinion. 5. secondary considerations a. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

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6. US v. Adams (1966) a. Invention water activated battery that b. Utility - Continuous charge can be drained during operation. c. Prior art taught away from using Mg electrode in cuprous (Cu1+) chloride d. Adams suing US government i. Adams first showed invention to Army. Army later reverse thinking and uses battery without a license. e. US argues i. Obvious and ii. Novelty issues 1. wrt to novelty, water-activated battery was new f. Court holds invention is nonobvious invention i. Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person skilled in the prior art must ignore 1. open circuit issue 2. water-activated batteries had only been successful with electrolytes that were detrimental to Mg electrodes g. Teaching away from pursuing an unlikely result 7. Summary of the Trilogy of cases a. Given that standard if based in the Constitution, and frames nonobviousness 8. Hindsight Bias a. In re Dembiczak (Fed. Cir. 1999) i. The solution: the Teaching, Suggestion, and Motivation (TSM) test 1. Our case law makes clear that the best defense against the subtle but powerful attraction of a hindsightbased obviousness analysis is rigorous application of the requirement for a showing of the teaching or motivation to combine prior art references. ii. Sources of teachings, suggestions, and motivations 1. Explicit a. Prior art references 2. Implicit

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a. Knowledge of ordinary skill in the art b. Nature of the problem to be solved v. Teachings, Suggestions, and Motivations to Combine 1. 35 USC 103(a) a. If part of the invention is obvious, that does not necessarily indicate that the rest of the invention is obvious. b. Determined at the time the invention is made c. Patentability shall not be negatived by the manner in which the invention was made. i. Do not need a flash of creative genius to satisfy. d. Teaching, Suggestion, Motivation Test Developed by Federal Circuit and addressed in KSR Intl Co. v. Teleflex Inc. (2007) e. How to distinguish between obvious and nonobvious i. Graham framework f. In addition, Fed Circuit made TSM test i. In re Dembiczak garbage bag meant to look like jack-o-lantern 1. PTO rejects as obvious. 2. Problem with hindsight bias which tends to make all inventions look obvious 3. To counter-act this hindsight bias, Fed Circuit articulates in this case the TSM test. a. Only on some teaching, suggestion, or motivation in the prior art will invention be deemed obvious. g. Strict application of TSM test makes it easier to get a patent. i. Some cases where it is so obvious, it would not even have been written down in the prior art. 2. KSR Intl Co. v. Teleflex Inc. (2007)

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a.

b. Background i. Engelgau obtained a patent, assigned patent to Teleflex ii. Teleflex sued KSR for infringement c. District court: patent is invalid i. Applied Graham and TSM tests and found the invention obvious d. Federal Circuit: patent is valid i. The district court did not specify the teachings that would have motivated combining references ii. Prior art reference (Asano) did not address the precise problem that Engelgau was trying to solve e. Teleflex sued KSR for infringement on patent which Teleflex is the exclusive license holder. i. KSR manufactured auto parts, took electronic sensor and put it on the foot pedal. f. Invention adjustable pedal assembly with electronic throttle control. i. Combines 2 elements: adjustable automobile pedal and an electronic sensor to control the throttle (located on a fixed point on the pedal assembly). g. Patent for a combination which only unites old elements with no change in their respective functionsobviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.

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h. If a person or ordinary skill in the art can implement a predictable variation, 103 likely bars its patentability. i. One of the ways in which a patents subject matter can be proved obvious is by noting that there existed at the time of the invention a known problem for which there was an obvious solution encompassed by the patents claim. j. Fed Circuit said invention was nonobvious because no TSM in the prior art. Because Asano solving a different technical problem, Federal Circuit said Asano not appropriate to anticipate Engelgau. i. Supreme Court rejects this line of reasoning. k. Supreme Court i. The invention is obvious ii. The TSM test is not consistent with Graham framework 1. Federal Circuit applying it too rigidly. l. Not rejecting TSM, just saying not to apply it so rigidly. m. Adopts a functional, expansive and flexible framework for nonobviousness i. A common sense approach n. Predictability is key i. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. o. Liberal notion of motivations to combine i. Interrelated teachings of many patents ii. Design incentives iii. Market demand iv. Exogenous technical developments v. [T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. p. A new conception of the inventor i. Not an automaton ii. Inventors routinely look beyond the narrow technical problem they are addressing q. Nonobviousness is objective

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r.

s. t. u. v. w.

x.

y.

z.

i. In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. Rejects a rigid application of the Federal Circuits Teaching, Suggestion, and Motivation test i. But does not overrule the TSM test ii. The TSM test captured a helpful insight Obvious to try Question of law Presumption of validity Hindsight bias Implications of KSR i. With a less rigid TSM requirement, it is easier to establish that inventions are obvious and thus not patentable 1. Patent examiners have greater flexibility to deny claims 2. Courts have more leeway to find inventions obvious ii. Greater subjectivity and less certainty in nonobviousness determinations iii. Winners 1. Chemistry and pharmaceutical firms 2. Highly unpredictable arts 3. Technology and financial services companies iv. Losers 1. Firms engaged in predictable arts 2. Adapting old technologies to new platforms 3. Internet-related patents with a nonInternet corollary v. Patent trolls Remember Adams i. All elements were in the prior art, but the invention was still held to be nonobvious 1. prior art taught away 2. and secondary considerations were also in Adams favor TSM was designed to protect against hind-sight bias, and some now wonder if hindsight bias will be a problem in the future now that the TSM test will not to be applied as rigidly before. Sometimes obvious to try can render an invention obvious

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aa. Nonobviousness is a question of law i. But the nonobviousness inquiry is very fact sensitive. bb. Presumption of validity changes when new prior art comes up during litigation that was not reviewed during prosecution. vi. Secondary Characteristics 1. Hybritech, Inc. v. Monoclonal Antibodies, Inc. (Fed. Cir.1986)

a. b. Monoclonal Antibodies i. Polyclonal antibodies 1. A mixture of antibodies derived from many different B-cell lymphocytes ii. 1975 Kohler and Milstein invent process for producing monoclonal antibodies 1. Derived from only one kind of B-cell lymphocyte iii. Hybridoma 1. Cancer cell (myeloma) + spleen cells of mouse injected or immunized with a particular antigen iv. Sandwich assay 1. Advantages a. Fast and simple diagnosis 2. Disadvantages a. Requires an enormous quantity of a particular antibody b. (Well-suited for monoclonal antibodies)

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3.

c. Characteristic of modern patent disputes d. Invention involves monoclonal antibodies. i. Useful in immunoassays 1. at issue in this case is the sandwhich assay used to detect presence of antigens. 2. Essentially a combination invention. e. Invention is a sandwich immunoassay that uses monoclonal antibodies useful in medical diagnostics. f. Hybritech suiing Monoclonal for infringement, but Monoclonal defends itself by saying that patent is obvious. g. The district courts finding that Hohler and Milstein developed a method for producing monoclonal antibodies in vitro is correct, but that finding proves no more; although it made possible all later work in that it paved the way for a supply of monoclonal antibodies, it indisputably does not suggest using monoclonal antibodies in a sandwich assay in accordance with the invention claimed in the 110 patent. h. This is a combination invention that combines i. Combining sandwich assays and monoclonal antibodies ii. All elements known in the prior art. i. Does the fact that it was obvious to try monoclonal antibodies with the previous sandwich assay i. Later KSR changes this and now the law is such that obvious to try is a reason for an invention being obvious ii. KSR changed the obvious to try jurisprudence

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j. k.

l.

m. n.

o.

p.

q.

r.

iii. Obvious to try does mean obvious today whereas it used not to. iv. If there are a finite # of technical solutions, and exogenous factors for a reason to try, then obvious to try will deem an invention obvious. Patent here is nonobvious Secondary Characteristics i. Hybritech, Inc. is commercially successful, they obtain a 25% market share. ii. Court rejects argument that this success is due to business tactics. Based on the prior art slide presented by Prof Lee. Seems like the prior art got very close. How do we rationalize this with the patent being held nonobvious? Determining the level of skill in the art Is Commercial success a good proxy for nonobviousness? i. Long felt need ii. Unexpected results iii. Commercial success Strict application of the suggestion test i. The prior art references skirt all around but do not as a whole suggest the claimed invention. ii. Different result under KSR? High emphasis on secondary considerations i. Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on nonobviousness is reached and is not merely icing on the cake. ii. Supreme Court: relevant iii. Federal Circuit: objective evidence of nonobviousness Is the objective factor of commercial success really objective? i. Nexus requirement between inventions merits and commercial success Determining the level of skill in the art i. Educational level ii. Types of problems encountered iii. Prior art solutions to problems iv. Rapidity with which innovations are made

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v. Sophistication of technology vi. Educational level of active workers in the field s. Skilled artisan is expected to know everything that is in the prior art vii. Recap 1. 1952 Patent Act a. Nonobviousness assessed relative to the prior art and a PHOSITA b. Manner of invention irrelevant 2. Constitutional Foundations a. The clause is both a grant of power and a limitation. b. Nor may [Congress] enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. 3. Natural Rights Versus Instrumentalism a. Jefferson rejected a natural-rights theory in intellectual property and clearly recognized the social and economic rationale of the patent system. i. Public good 1. If nature has made any one thing less susceptible than all others of exclusive property, it is the action of the thinking power, called an idea, which an individual may exclusively possess as long as he keeps it to himself. 2. Its peculiar character, too, is that no one possesses the less, because every other possesses the whole of it. b. The Graham framework i. Primary factual inquiries 1. Scope and content of prior art 2. Differences between the prior art and the claims 3. Level of ordinary skill ii. Secondary characteristics c. Relationship of nonobvious standard to precedent d. Ones own invention can render later ones obvious viii. Prior Art for Nonobviousness 1. What actually is prior art for nonobviousness purpose? a. 103a i. (a) A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are

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such that the subject matter as a whole would have been obvious . . . . b. 102a i. Known or used in US ii. Printed or patened foreign c. 102e counts for nonobviousness too see Hazeltine i. Applications ii. Secret art d. 102g i. Abandoned, suppressed, 2. In re Winslow (C.C.P.A. 1966) a. Invention jet-air packaging system for plastic bags b. This invention was rejected for patent because it was just a combination of prior art. i. affirming rejection in this case. c. Winslow argues that his invention was rejected b/c of hindsight bias i. Presume ordinary mechanic is aware of all relevant prior art. d. Dissent i. The beauty was in the simplicity of the invention and this eventually hurt the potential patentee ii. Dissent thinks that Winslow solved a need in the bag filling industry. e. Prior Art i. Law presumes knowledge of all pertinent art, does not mean all prior art, just the pertinent art. ii. Second caveat is that the 103 nonobvious inquiry is focused on an objective standard. 3. a. The Winslow Tableau i. [F]irst picture the inventor as working in his shop with the prior art references which he is presumed to know hanging on the walls around him. b. The legal fiction of the PHOSITA i. Inventors actual knowledge is irrelevant ii. Superperson? c. Two issues regarding prior art for nonobviousness i. Legal: what is prior art for 103? ii. Field-specific: what is the pertinent prior art for this field? iii. The law presumes knowledge of pertinent prior art

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4. Hazeltine Research, Inc. v. Brenner (1965) a.

b. Invention improvements on microwave switches c. PTO rejected patent d. Secret prior art 102(e) can be used to invalidate another patent based on obviousness i. must be of another inventive entity e. issue whether or not the Carlson and Wallace patent and patent application can be used as prior art for the nonobviousness analysis i. really of issue of the Wallace patent which was secret art at the time that Regis filed his patent application f. Court relies on Milburn i. Holding of Milburn 1. Disclosures in prior art is dated as of the date of filing the patent application not the date of issue a. 102e 2. Leads to secret prior art g. The first filing inventor should not be punished for the delay of the PTO h. Demanding that Regis be aware of secret prior art which could be argued to be a bit unfair. i. 102(e) references are prior art for nonobviousness i. Consistency between prior art for novelty and nonobviousness j. The problem of secret prior art k. The Superperson revisited

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i. Inventors are assessed against a standard of knowing 102(e) prior art that is not even publicly available l. m. Recap problem i. Ruth, Clarence, and Antonin ii. Wrt Hazeltine iii. Ruths patent is invalid b/c obvious under 103 1. Pursuant to Hazeltine, info in 102e prior art, info disclosed in applications, 2. At time of invention assess obviousness a. @ this time b. have A and B disclosed c. so A+B is obvious iv. is this statutorily barred as well? 1. Hypo if Antonin issued before critical date 2. Implicit nonobvious analysis to statutory bars 3. SB through implicit nonobviousness a. not through identify invention and novelty n. 5. In re Bass (C.C.P.A. 1973) - Prior art for nonobviousness a.

b. Rule 131 affidavit got rid of the 102e prior art issue

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c. But the 102 g prior art still remains to be determined. d. Bass Jenkins Horvat application on vacuum system in dispute wrt to validity i. prior art 1. Bass/Horvat nozzle 2. Jenkins screene 3. Info in applications is prior art for novelty and nonobviousness pursuant to Hazeltine ii. Rule 131 ot antedate such that vacuum invented at same time as nozzle. 1. Gets rid of the 102e prior art iii. But wrt to Jenkins screen (102g prior art) 1. Are 102g refernces not arising from an intereference, valid prior art for nonobviousness analysis? iv. 102g (symmetry with 102a and 102e) are prior at for novelty and nonobviousness e. Concurrence takes issue with secret prior art i. see in re Hilmer, noted by the concurrence, to illustrate the issue of prior art 1. did not backdate Habricht to defeat Hilmer even though Hilmer got the benefit of earlier filing date pursuant to 119 ii. problematic to create a lot of secret prior art f. Invokes Hazeltine i. Patent applicant argued in that case that 102(e) only establishes prior art for novelty, not nonobviousness ii. Hazeltine court rejected this distinction: that which is 102(e) prior art for novelty is also prior art for nonobviousness g. Similar to Hazeltine, that which is 102(g) prior art for novelty is also prior art for nonobviousness h. Section 102(g) prior art is prior art for nonobviousness, even without an interference i. Uses of precedent i. Principal opinion: ii. Hazeltine (consistent treatment of prior art between novelty and nonobviousness) iii. Concurring opinion: iv. Hilmer (concerns over secret prior art) j. Lost counts doctrine

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i. Counts lost in an interference under 102(g) (1) are held against the loser for purposes of nonobviousness ii. Bass resolves the question of whether 102(g)(2) prior art outside of an interference qualifies as nonobviousness prior art (yes) k. Maintains consistency between novelty and nonobviousness prior art l. Bass involved overlapping, but distinct inventive entities that rendered each others inventions obvious i. Modern patent law remedies this type of situation ii. 35 U.S.C. 103(c) iii. Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person. iv. Reduces likelihood that inventions by one corporate team of researchers will render obvious inventions from other researchers within the same corporation m. ix. Hypo

1. x. Statutory Bars and Nonobviousness 1.

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2. In re Foster (C.C.P.A. 1965) a.

b. There is an intrinsic nonobviousness component to the 102(b) statutory bar i. If the reference contains enough disclosure to make his invention obvious, the principle of the [statutory bar] statute would seem to require denial of a patent to him. The same is true where a combination of publications or patents makes the invention obvious and they both have dates more than a year before the filing date. ii. Independent of 103 nonobviousness c. Lack of novelty versus loss of right d. Combining references i. Not permissible in the novelty context ii. Permissible in the 103 nonobviousness context iii. And permissible in the obviousness within 102(b) context e. An inventor must file an application within one year of the invention becoming obvious

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f.

g. Invention new synthetic rubber compounds h. Patentee is Foster, applied for patent in 8-21-56 and rule 131 antedate do dec 52. Binder published in 54 i. Although no exact anticipation, the patent is rejected because fosters patent application was obvious in light of the Binder article. i. this occurred after the date of Fosters invention ii. but this still takes away Fosters right to a patent. j. Court affirms rejection, not under a 103 rationale, but rather under a 102b rationale k. Statutorily barred, even though no exact identify between Binder and Foster, by importing a nonobviousness analysis into 102b l. If the public comes to possess the invention more than one year before filing for a patent, then the patent is statutorily barred i. whether by anticipation or ii. implicitly by nonobviousness in 102b m. Dissent i. thinks that exact identity is necessary for statutory bar and does not like this expansive view of statutory bar to include obviousness analysis 3. Recap a. Prior art for nonobviousness i. 102(a) ii. 102(e) Hazeltine 117

iii. 102(g) Bass b. There is an intrinsic nonobviousness component to the 102(b) statutory bar c. Loss of right: anticipation or obviousness d. For nonobviousness analysis, combining references is permissible xi. The Nonanalogous Arts Limitation 1. In re Clay (Fed. Cir. 1992) a. Clays invention: Process for storing liquid hydrocarbon product in a storage tank having a dead volume using a gel b. The analogous arts requirement for nonobviousness analysis Two inquiries: i. Same field? 1. [W]hether the art is from the same field of endeavor, regardless of the problem addressed ii. Reasonably pertinent to solving a particular problem? 1. [I]f the reference is not within the field of the inventors endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. c. Problem-solving approach can transcend fields d. Nonanalogous arts doctrine remains important for implicit suggestions e. The impact of KSR f. Provides a more expansive notion of relevant prior art g. Invention is a process for storing refined liquid hydrocarbon product in a storage tank having a dead volume between the tank bottom and its outlet port. i. Court says references used to reject patent are not pertinent. h. Two criteria for determining whether prior art is analogous (Question of Fact): i. whether the art is from the same field of endeavor, regardless of the problem addressed, and (Field specific: is this from the same field) ii. if the reference is not within the field of the endeavor, whether the references still is reasonably pertinent to the particular

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problem with which the inventor is involved (pertinent to the particular problem) i. Holding this is not analogous art i. not the same field of endeavor merely b/c both relate to the petroleum industry. Distinguish between storing and extracting petroleum. ii. and not drawn to the same problem. 1. But consider KSR v. Teleflex this is shifting ground now. KSR v. Teleflex took more expansive view of art to be considered. j. a person having ordinary skill in the art would not reasonably have expected to solve the problem of dead volume in tanks for storing refined petroleum by considering a reference dealing with plugging underground formation anomalies. xii. Novelty v. Nonobviousness 1.

III.

Infringement claim construction, clear parameters of invention a. 35 U.S.C. 271(a) i. Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent. b. Two-part infringement analysis i. Construe claims

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1. Interpretive aids ii. Compare claims to allegedly infringing invention 1. Literal infringement - For a product to literally infringe a patent, every element contained in the patent claim must also be present in the infringing product 2. Doctrine of equivalents

c. d. Introduction to Infringement i. Merrill v. Yeomans (1877) 1. The primacy of patent claims a. The distinct and formal claim is, therefore, of primary importance, in the effort to ascertain precisely what it is that is patented to the appellant in this case. 2. The role of the specification a. [T]he language in the specifications aids us in construing the claim. 3. Policy objective a. The public should not be deprived of rights supposed to belong to it without being clearly told what it is that limits these rights. 4. Claim construction. Claims are important are define what the invention is. Specification can aid in interpretation. a. identity of the invention i. patent relates to hydrocarbon oils 1. Court finds this patent is about a process to deodorize hydrocarbon oils

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b. In this infringement suit, claims the word manufacture means process. , patentee, claims this covers product as well as the process claim. ii. Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc) 1. Claim Construction 2. invention is modular steel-shell panels that can be welded together to form vandalism-resistant walls. Use in prisons. a. At issue is word baffles 3. principal legal issue considered en banc what types of information should be brought to bear in construing the claims. 4. Court distinguishes between evidence types, w/ preferences for intrinsic evidence 5. Privileging intrinsic over extrinsic evidence 6. Intrinsic evidence a. Claims themselves b. Specification c. Prosecution history 7. Intrinsic sources are better for construing claims than extrinsic sources a. Extrinsic is by definition not part of the patent b. Extrinsic evidence not necessarily created at the time of the patent filing. c. Claims are written for person of ordinary skill in the art and extrinsic sources may not be written for skilled artisans d. Expert testimony and reports developed for litigation are biased. 8. Extrinsic evidence a. Dictionaries b. Learned treatises c. Inventor testimony d. Relevant scientific principles e. Generally-accepted meanings of technical terms f. State of the art iii. Recap 1. Only pertinent prior art is considered in nonobviousness analysis 2. Same field 3. Reasonably pertinent to solving a particular problem 4. Two-part infringement analysis 5. Construe claims 6. Apply claims to allegedly infringing invention 7. The primacy of claims in infringement analysis 8. Claim construction: privileging intrinsic over extrinsic evidence

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e. Claim Interpretation i. Markman v. Westview Instruments, Inc. (1996) 1. Claim construction is solely the province of courts, not juries 2. Reasoning a. Historical: Seventh Amendment b. Precedential: distinguishes away prior precedent c. Functional: The construction of written instruments is one of those things that judges often do and are likely to do better than jurors unburdened by training in exegesis. d. Policy: Desire for greater uniformity 3. Markman hearings 4. Standard of review: de novo 5. As between judges and jurys, judges are better suited to construe claims. Judges, not juries, are the better suited to find the acquired meaning of patent terms. 6. Principle question claim construction, Markman argues 7th Amendment violation of right to jury a. 2 part test for 7th Amendment Violation i. Is this a cause of action tried at law at founding or analogous 1. historically, tried at law issues were tried by juries. Now, court of Equity and Court of law have merged. 2. In the present case, the history shows Judges construe claims. ii. Whether issue occurng in jury trial is necessarily a jury issue 1. judges better suited than juries. a. Judges trained in interpreting written documents. 7. Markmen suing infringement against Westview for Inventory Control and Reporting System for Drycleaning Stores. term at issue is inventory ii. Cybor Corp. v. FAS Technologies, Inc. (Fed. Cir. 1998) (en banc) 1. Claim construction is a question of law, reviewed de novo by the Federal Circuit a. Extremely controversial holding 2. Holding extended to reviewing the PTOs claim construction 3. Institutional issues in claim construction a. Judges over juries b. The Federal Circuit over district courts 4. Claim construction is a pure question of law and therefore on appeal the standard of review is de novo.

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5. dissent the majority (adhering to a strict de novo review) undermines the benefits (relatively early claim construction early in the litigation) because of the near 50% reversal rate. Attorneys therefore focus their efforts on the appeal process and not on the trial. Original claim constructions are so often reversed that the initial stages of the judicial process seem less relevant compared to the Appeal stage. 6. Majority said no deference to District Court, and dissent and concurrence suggest that District Courts are closer to the material and have better fact finding resources and therefore should be afforded some degree of deference. f. The Doctrine of Equivalents i. Equivalency Assessed at the Time of Infringement 1. [T]he proper time for evaluating equivalency and thus knowledge of interchangeability between elements is at the time of infringement, not at the time the patent was issued. 2. After-arising technologies can be equivalents ii. Limitations 1. All elements rule 2. Prosecution history estoppel 3. Prior art 4. May not extend to subject matter that is disclosed in the patent but not expressly claimed a. Abandoned to the public b. Public dedication iii. Winans v. Denmead (1854) 1. The Doctrine of Equivalents a. [W]hen a patentee describes a machine, and then claims it as described, . . . he is understood to intend to claim, and does by law actually cover, not only the precise forms he has described, but all other forms which embody his invention; b. it being a familiar rule that, to copy the principle or mode of operation described, is an infringement, although such copy should be totally unlike the original in form or proportions . . . . 2. Policy justifications a. Patentee intent b. Easy to evade literal infringement 3. Policy concerns a. Uncertainty b. Notice function of patents c. Expanded monopoly d. Detrimental reliance 4. central claiming

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a. claim a central core and then patentee given rights beyond the claim 5. Peripheral a. Some countries say claims give outer bounds of invention b. No doctrine of equivalence in these countries. c. Not the US iv. Graver Tank & Mfg. Co. v. Linde Air Products Co. (1950) 1. General invention: a. Process of electric welding and fluxes to be used with it 2. Patented: a. A flux comprised of a combination of calcium and an alkaline earth metal 3. Allegedly infringing invention: a. A flux comprised of a combination of calcium and manganese (not an alkaline earth metal) 4. Held: infringement under the doctrine of equivalents 5. The Triple Identity Test a. Equivalence exists where the accused device performs: b. substantially the same function, c. in substantially the same way, d. to achieve substantially the same result as the patented device 6. Intent and the Doctrine of Equivalents a. Clarification of Graver Tank: i. Application of the doctrine of equivalents, therefore, is akin to determining literal infringement, and neither requires proof of intent. v. Warner-Jenkinson Co. v. Hilton Davis Chemical Co. (1997) 1. The All Elements Rule - DOE determined on element by element basis not based on the invention as a whole a. Mitigates the expansiveness of the doctrine of equivalents b. Equivalence is determined on an element-byelement basis, not by comparing the entire patented and allegedly infringing inventions c. Justice Thomas: d. Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not the invention as a whole.

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2. Hilton davis had patented a process for purifying dyes at pH of 6.0 to 9.0 a. Hilton included this upper limit to avoid prior art during prosecution b. Inclusion of lower limit is unclear, no reason is given. 3. Warner Jenkins, Alleged infringer purifies dyes at pH = 5.0 a. Argues wrt to prosecution history estoppel 4. No explanation for the lower limit of 6.0 5. Presumption goes against the patentee 6. Case is remanded to determine reasons for amending. 7. Wrt to intent and the DOE court holds doctrine of equivalence applies even without proof of intent. 8. Prosecution history estoppel a. Applicability depends on the reason behind a particular amendment b. If no reason, presumption goes against patentee 9. Defendants intent is irrelevant 10. Doctrine of equivalents is assessed at the time of infringement 11. Linguistic framework unimportant - Particular linguistic framework is less important than whether the test is probative of the inquiry, does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention. g. Prosecution History Estoppel 1. Only applies to particular kinds of claim modifications, such as those to avoid prior art 2. If it is unclear why the amendment was added, the patentee has the burden of establishing a reason that does not trigger prosecution history estoppel 3. Curtails application of the doctrine of equivalents ii. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (2002) 1. DOE and prosecution history estoppel 2. Invention improved magnetic rodless cylinder, used in machines like roller coasters 3. At issue here is that Festo narrowed claims wrt to # of seals on piston. 4. When amendment is made to obtain a patent And amendment narrows the claims scope, then this triggers prosecution history estoppel a. Threshold criteria for applying prosecution history estoppel: b. Amendment is made to secure the patent c. Amendment narrows the patents scope

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d. Not limited to amendments made to avoid the prior art e. Flexible bar f. Reason for the narrowing amendment is relevant 5. Do not apply PHE a. The equivalent may have been unforeseeable at the time of the application; b. the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; c. or there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. 6. After-arising technology h. The Experimental Use Exception i. Madey v. Duke University (Fed. Cir. 2002) 1. [S]o long as the act is in furtherance of the alleged infringers legitimate business and is not solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry, the act does not qualify for the very narrow and strictly limited experimental use defense. 2. these projects unmistakably further the institutions legitimate business objectives, including educating and enlightening students and faculty participating in these projects. 3. These projects also serve, for example, to increase the status of the institution and lure lucrative research grants, students and faculty ii. Congresss response: 35 U.S.C. 271(e)(1) 1. Exempts from infringement uses reasonably related to the development and submission of information under a Federal Law which regulates the manufacture, use, or sale of drugs or veterinary biological products. 2. Has been interpreted broadly i. Indirect Infringement i. 35 U.S.C. 271 (first codified 1952) 1. (b) Whoever actively induces infringement of a patent shall be liable as an infringer. 2. (c) Whoever offers to sell or sells within the United States or imports into the United States a. a component of a patented machine, manufacture, combination or composition, b. or a material or apparatus for use in practicing a patented process, constituting a material part of the invention,

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c. knowing the same to be especially made or especially adapted for use in an infringement of such patent, d. and not a staple article or commodity of commerce suitable for substantial noninfringing use, e. shall be liable as a contributory infringer. ii. Aro Manufacturing Co. v. Convertible Top Co. (1964) 1. Exhaustion or the first sale doctrine a. But distinguish between repair and reconstruction. 2. contributory infringement a. no intent needed for direct infringement b. but there is a scienter or intent requirement for contributory infringement. 3.

4. Question whether replacement of the fabric portions of the convertible tops constituted infringing reconstruction or permissible repair. 5. Contributory infringement must be derived from direct infringement 6. Scienter requirement 7. Direct infringement: none 8. Indirect infringement: 9. 271(a) does require a showing that the alleged contributory infringer knew that the combination for which his component was especially designed was both patented and infringed. 10. Scienter - Intent requirement for indirect infringement a. 271(c) does require a showing that the alleged contributory infringer knew that the combination for

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IV.

which his component was especially designed was both patented and infringing. b. high standard of intent. j. Infringement and Foreign Activity i. Microsoft v. AT&T (2007) 1. 35 U.S.C 271(f)(1) 2. Whoever without authority supplies . . . in or from the United States . . . components of a patented invention, where such components are uncombined . . . , in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer. 3. Microsoft windows has potential to infringe ATT, enables user of computer to copy speech the way that ATT and patented. 4. Uninstalled windows software does not infringe ATT. It must be installed on a computer a. windows is electronically transmitted 5. Abstract software code is an idea without physical embodiment and as such, it does not match 271(f)s catergoization: components amendable to combination 6. Statutory construction: the physicality requirement 7. Components amenable to combination 8. software does not violate provision for exporting components that is sent overseas and combined overseas 9. software, abstract set of instructions, does not qualify for the physicality requirement. Remedies recent Supreme Court activity wrt to remedies a. 35 U.S.C. 283 Injunctive Relief b. The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by the patent, on such terms as the court deems reasonable. c. Equitable factors to be considered: i. Plaintiff has suffered an irreparable injury ii. Remedies at law are inadequate iii. Balance of hardships between plaintiff and defendant warrants an equitable remedy iv. Public interest would not be disserved by a permanent injunction d. eBay Inc. v. MercExchange, LLC (2006) 1. business method patent for the business the eBay is involved in. 2. MercExchange is a patent troll suing eBay 3. District court erred in not applying the traditional 4 factor test

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4. In his concurrence, Chief Justice Roberts says that in most cases these types of cases will continue to grant injunctions 5. Is intellectual property property? 6. [T]he creation of the right is distinct from the provisions of remedies for violations of that right. ii. Equitable framework for granting or denying injunctions 1. Irreparable Harm: Has the suffered an irreparable injury? 2. Adequacy of remedies available at law 3. The balance hardships between and warrants an equitable remedy 4. The public inteterest iii. eBay as a solution to patent holdup 1. where someone patents small component of large invention and this patetee uses his leverage to holdup manufacturing of much broader and presumably more valuable invention. 2. eBay weakens this right to exclude, with a liability rule iv. Tragedy of the anticommons and patent thickets 1. Cross-licensing 2. patent pools 3. eBay e. z4 Technology v. Microsoft Corp. (E.D. Tex 2006) i. invention product activating software. Related to DRM. ii. When considering whether to award permanent injuctive relief, apply the tradiatoinal four factor test used by the Court of Equity developed in eBay. iii. Microsoft infringed the patents of z4 1. z4 moves for an injunction to stop making software and turn off servers and for micrososft to redesign their software iv. Injunction is not granted. v. In eBay, Justice Kennedy specifically mentined that sitatoin where a patented invention is but a small component of the product, that companies seek to produce and states that in such a situation, legal damages may well be sufficient to compensate the infringement and an injunction may not serve the public interest. vi. Finite period of infringement versus ongoing royalties 1. Microsoft said they were voluntarily phasing out the infringing product. vii. Downstream productivity productivity concerns factored into four factor injunctive relief inquiry. 1. balance of hardship 2. speak to public interest f. 35 U.S.C 284 Damages i. Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the

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invention by the infringer, together with interest and costs as fixed by the court. ii. The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances. g. Panduit Corp. v. Stahlin Bros. Fibre Works, Inc. (6th Circuit 1978) i. Two measures of lost profits: 1. Actual lost profits 2. Demand for the patented product 3. Absence of acceptable noninfringing substitutes 4. Patentees manufacturing and marketing capability to exploit the demand 5. The amount of profit the patentee would have made ii. Reasonable royalty 1. Legal fiction of a hypothetical license iii. Panduit has patented duct for covering wires in electrical control systems iv. Stahlin infringed 1. he disregarged the initial injunction v. Determination of damages wrt to 35 U.S.C. 284 Danages vi. Wrt to damages the master of the court based it on reasonable royalty which was 2.5% of gross sales price. vii. Court disagrees with this method of calculation b/c of acceptable noninfringing substitutes. viii. Patent issued in 1962, ix. Patent damages are not meant to be punitive x. General principle is that patent damages are compensatory for the infringement xi. To show lost profits, must show 1. demand for patented product 2. absence of acceptable noninfringing substitutes 3. patentee manufacturing and marketing capability to exploit the demand 4. and the amount of the profit the patentee would have made xii. Panduit did not show lost profits xiii. Damages calculated based on a reasonable royalty 1. go back in time to hypothetical negotiation between patentee and licensor 2. legal fiction of a hypothetical licensee h. Property Rules and Liability Rules i. Think back to Brenner v. Manson ii. 2 ways to protect a resource 1. Property rule a. Owner can prohibit all access to a resource b. The right to exclude c. Resource is protected by an injunction

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V.

2. Liability rule (eBay raise this rule) a. Owner cant prevent access to a resource, but compensation to the owner is mandatory b. The right to compensation c. Similar to eminent domain d. Resource protected by awarding damages i. Ongoing royalties i. When should eBay apply? j. Multiple public interests: i. Advancing basic scientific research ii. Providing access to essential medicines iii. Maintaining the availability of goods iv. Preventing bankruptcy and unemployment v. Maintaining incentives to invent Summary a. Early application of eBay b. Downstream productivity concerns justify relaxing the upstream right to exclude c. Damages d. Lost profits e. Reasonable royalty f. Property rules, liability rules, and promoting progress

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VI. VII.

VIII.

IX.

Summary and Review of Course Introduction a. Theory i. Public goods ii. Incentives b. History c. What is a patent? i. Right to exclude ii. Blocking patents iii. Patent trolls d. Procedure and institutions i. Prosecution ii. Interferences iii. The structure of patent process 1. Specialization and bias e. Globalization and patent law i. Procedural and substantive harmonization f. Claim drafting i. Elements ii. Transitions iii. Claiming strategy Patentability a. Patentable Subject Material i. 35 U.S.C. 101 1. Natural human-made 2. What institution should decide? 3. General effects versus specific means 4. Natural substances versus purifications 5. Pure algorithms versus software 6. Limitations and field restrictions a. Business methods b. Medical procedures c. Essential medicines? b. Utility i. Operability 1. Impracticality is not a bar ii. Beneficial utility iii. Substantial and specific utility iv. The tragedy of the anticommons Disclosure and Enablement a. Enablement i. Undue experimentation b. The written description requirement i. Essential elements can constrain claims c. Definite claims i. Lexicography

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X.

XI.

XII.

d. Best mode i. Subjective and objective prongs Novelty a. The identity requirement b. Anticipation-infringement symmetry c. Inherent anticipation d. Enablement standard for anticipation e. References i. 102(a) a. Known or used in the United States b. Patented or described in a printed publication anywhere ii. 102(e): U.S. patent applications iii. 102(g): prior invention f. 102(f) derivation g. Priority rules i. Conception ii. Reduction to practice iii. Diligence h. Abandonment, suppression, and concealment i. Rule 131 j. Paris Convention: 119 Statutory Bars a. Policy objectives b. One-year grace period c. 102(b) use, on sale, patented, printed publication i. Public use ii. On-sale bar iii. Experimental use negation iv. Third-party statutory bar activity d. 102(c) abandonment e. 102(d) delayed U.S. filing Nonobviousness a. Why nonobviousness? b. Historical origins: ingenuity and invention c. The 1952 patent act d. PHOSITA e. The Graham framework f. Secondary considerations g. The Federal Circuits TSM test h. KSR v. Teleflex i. The Winslow tableau j. Statutory bars and 102(b) nonobviousness k. Nonanalogous arts limitation l. The primacy of claims m. Infringement analysis

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i. Claim construction 1. Intrinsic and extrinsic evidence 2. Judges versus juries ii. Compare the patent claims to the allegedly infringing invention 1. Literal 2. Doctrine of equivalents XIII. Infringement a. The doctrine of equivalents i. All elements rule ii. Prosecution history estoppel b. Experimental use exception c. Exhaustion or first sale doctrine d. Repair reconstruction dichotomy e. Contributory infringement f. Infringement and foreign activity XIV. Remedies a. Injunctive relief i. Damages ii. Lost profits b. Reasonable royalty c. Property rules and liability rules d. eBay XV. U.S. Const. art. I, 8, cl. 8 - The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries . . . . XVI. THE END

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