Professional Documents
Culture Documents
Patenting Biomedical Inventions- classes five (BIOMED)and six (Myriad)9/9 and 9/14 23
Non-patentable categories......................................................................................................... 23
35 U.S.C. 101 Inventions patentable.......................................................................................... 23
Diamond v. Chakrabarty............................................................................................................. 24
Funk Brothers (1948)- Funks ingenious discovery is merely the handiwork of nature........24
Mayo v. Prometheus (2012)........................................................................................................ 24
MYRIAD......................................................................................................... 25
Myriad Case............................................................................................................................ 25
Ariosa Diagnostics v. Sequenom-............................................................................................... 25
Harvard College v. Canada......................................................................................................... 25
Bowman v. Monsanto................................................................................................................. 25
Software/Methods- class seven- 9/16.......................................................................25
Alice v. CLS Bank........................................................................................................................ 26
Chakarbadi you can patent life.............................................................................................. 27
Alice, Mayo, Bilski, Miriam SCOTUS dials it back (no abstract ideas or laws of nature)..........27
The Utility Requirement class eight- 9/21.............................................................27
U.S.C. 101 Inventions patentable............................................................................................... 27
Two Trouble areas- operability and beneficial utility...................................................................27
Operability In re Schwartz...................................................................................................... 28
Beneficial utility; juicy whip, inc................................................................................................ 28
Chimeric embryo- rejected for utility.......................................................................................... 28
Weldon amendment- no claims encompassing a human organism........................................28
Third trouble area= Chemical, pharmaceutical and biotech-related inventions.........................28
Substantial utility Brenner v. Manson (Fortas)........................................................................29
Promising clinical results= enough to get a patent....................................................................29
Substantial (and Specific) Utility: In Re Fisher............................................................................30
Cannot patent genes but you can patent CDNA; if you have utility for EST can you still get
a patent??.................................................................................................................................. 30
types of utility......................................................................................................................... 30
BLOCKING PATENTS.................................................................................................................... 31
35 U.S.C. 101 Inventions patentable.......................................................................................... 31
35 U.S.C. 112.............................................................................................. 31
35 U.S.C. 102.............................................................................................. 43
.......................................................................................................... 63
Public-Use Bar- / PUBLIC USE, EXPERIMENTAL USE- class sixteen- 10/21....................63
REVIEW OF SEC. 102.................................................................................................................. 64
35 U.S.C. 102............................................................................................................................. 64
AIA- if you do any of these things before you file for your patent its invalid.........................64
DISCLOSURE EXCEPTION WITHIN A YEAR................................................................................... 64
DISCLOSURE= DIFFERENT FROM PUBLIC DISCLOSURE- NO CLEAR THRESHOLD ON HOW MUCH
MORE DISCLOSURE NEEDED TO REACH PUBLIC.........................................................................64
AFTER YOU DISCLOSE YOU HAVE ONE YEAR TO DO A LOT OF THINGS OLD ACT- CARES ABOUT
CONCEPTION; AIA- WE DON'T CARE ABOUT CONCEPTION.........................................................64
GOAL= trying to limit monopoly powers with patents................................................................65
Pg.458 Egbert v. Lippmann (1881)- PUBLIC USE DOES NOT MEAN PUBLICITY- IT MEANS LACK OF
CONTROL AND LACK OF ABANDONMENT................................................................................... 65
IMPORTANT: DOES NOT HINGE NO THE NUMBER OF USERS; DOES NOT NEED TO BE
KNOWN/SHOWN ?????................................................................................................................ 65
Pg.460 Motionless keyboard v. Microsoft- CLAIMS ENCOMPASS MORE THAN YOUR INVENTION. 65
2 LAYERS (SECRECY + PURPOSE)............................................................................................... 65
MOLECULON RESEARCH V. CBS (fed. Cir. 1986)- implied control (CASE NOT IN BOOK)..............66
Metallizing Engineering (2nd Circ) - Judge Learned Hand- had control over friends- implied
from their relationship........................................................................................................... 66
What is the main issue?............................................................................................................. 66
Public Use Summary................................................................................................................... 66
EXPERIMENTAL USE- Pg. 482 City of Elizabeth v American Nicholson pavement co.............66
FACTORS..................................................................................................................................... 66
Lisle v. AJ Manufacturing- Justice Lourie- We conclude that convincing evidence was presented
whereby a reasonable jury could have found A.J.s prima facie case of public use was rebutted.
................................................................................................................................................... 67
Pg. 494 Lisle Corp v. A.J. - Exception to public use b/c prior working relationship and called for
feedback every 2-4 weeks..................................................................................................... 67
HYPO: Sobicinski v. Walgreens: Claim number 7- kit (glove and lotion)....................................67
WHAT DOES THE PATENT CALIM?............................................................................................... 67
OBVIOUSNESS- SECTION 103..................................................................................................... 67
Section 102.............................................................................................................................. 67
Hypo: Sobicinski v. Walgreens.................................................................................................... 68
Anticipated?-glove lotion method............................................................................................... 68
Electromotive Division of GM v. Transportation Systems Division of GE- Justice Michel- We
conclude that control and customer awareness ordinarily must be proven if experimentation is
to be found................................................................................................................................. 69
35 U.S.C. 103.............................................................................................. 69
Historical Obviousness- class seventeen- 10/26.......................................................69
INTRO TO OBVIOUSNESS................................................................................69
35 USC Sec 103 103. Conditions for patentability; non-obvious subject matter.....................69
PHOSITA Factors that may be considered:.................................................................................. 69
SEC/ 103- DIFFERENCES THAT SHOULD BE OBVIOUS TO SOMEONE IN ORDINARY SKILL IN THE
ART MEASURED BY HOW SOMEONE IN THE FIELD THINKS ABOUT THIS.................................69
ALWAYS TALK ABOUT GRAHAM FOR OBVIOUSNESS....................................................................70
Basic Conundrum- Why is the doctrine necessary? Economic rationale, Investment rationale,
Output constraints: patent thicket............................................................................................. 70
Pg. 349 Hotchkiss v. Greenwood................................................................................................ 70
SCOTUS Standard....................................................................................................................... 70
35 USC Sec 103- 103. Conditions for patentability; non-obvious subject matter.....................71
pg. 354 Graham v. John Deere- Justice Clark- Holding= a farmer would have done this....71
THE GRAHAM TEST..................................................................................................................... 71
With obviousness- you have to go back to date and time of invention time..............................71
Adams: elevation of Secondary considerations?.....................................................................72
Might be utilized (Graham)....................................................................................................... 72
pg. 360 U.S. v. Adams - Justic Clark (FILLS IN THE GAPS FROM GRAHAM)..................................72
3RD PART WHAT IS THE LEVEL OF ORDINARY SKILL HERE? Court does not say who this person
neds to be (how to qualify)......................................................................................................... 72
FACTORS TO CONSIDER.............................................................................................................. 72
Extraordinary knowledge- regardless of skill elvel they know everything in the prior art....72
Adams- elevation of secondary considerations.......................................................................72
HYPO- Leapfrog v. Fischer-price.................................................................................................. 73
Modern Obviousness-/KSR- class eighteen-10/28.....................................................74
THE HISTORY OF THE NON-OBVIOUS REQUIREMENT- Federal Circuits Teaching, Suggestion,
Motivation test.......................................................................................................................... 74
Apple Patent Application............................................................................................................ 74
KSR (changed the law on obviousness)...................................................................................... 74
The history of non- obvious requirement- TYPE THIS FROM SLIDES...........................................74
In re Demiczak- THERE IS NO OBIVOUSNESS TEST UNDER KSR.................................................74
Pg. 373 KSR ** VERY IMPORTANT................................................................................................ 75
KSR Intl v. Teleflex prior art-Asano Pedal............................................................................... 75
KSR - Prior art combination- Test should be flexible..............................................................75
Perfect Web Technologies v. InfoUSA- judge says I can use my common sense used to be
confined t saying show me proof this is obvious (now judges are focus of obviousness)...........75
HYPO: Akie Lures........................................................................................................................ 75
102= VERY RULE BASED obviousness= more about arguing your side.............................76
Proctor & Gamble v. Teva Obviousness test............................................................................76
ELECTRONIC PATENTS CRITICIZED MORE THAN CHEMISTRY......................................................76
In Re Kubin: Obviousness and DNA............................................................................................ 76
Other Obviousness Considerations/ SECONDARY CONDITIONS, PHOSITA- nineteen11/02..................................................................................................................... 76
Obviousness abroad................................................................................................................ 77
Daiichi Sankyo v. Apotex (Pg. 408 )- Justice Sen. Archer- Obviousness is a question of law
based on underlying questions of fact. [De novo review and clear error].................................77
PHOSITA- FACTORS THAT MAY BE CONSIDERED:........................................................................77
Obviousness: Sec. 102 prior art General Rule: Anything that qualifies as prior art under Sec
102 counts as prior art under Sec 103....................................................................................... 77
Importance of contract! You can contract out of prior art!......................................................78
OBVIOUSNESS- SEC 102 PRIOR ART **REMEMBER FOR EXAM....................................................78
Section 102b(2)(c)- AIA (obama act).......................................................................................... 78
Pg. 414 In re Icon Health & Fitness- Justice Prost- If reasonably pertinent to the problem
addressed by Icon, Teague may serve as analogous art............................................................78
HYPO- in re clay.......................................................................................................................... 78
Pg. 427 Transocean Offshore Deepwater Drilling v. Maersk- Justice Moore- This is precisely the
sort of case where objective evidence establishes that an invention appearing to have been
obvious in light of the prior art was not....................................................................................78
6 FACTORS OF SECONDARY CONSIDERATIONS...........................................................................78
INITIAL INFRINGEMENT..................................................................................89
Patent Litigation: Arguments...................................................................................................... 90
35 U.S.C. 271 - Infringement of patent....................................................................................... 90
Without authority...................................................................................................................... 90
Makes, uses, offers to sell, sells, or imports invention..............................................................90
Within the U.S........................................................................................................................... 90
During the patent term............................................................................................................. 90
What If There Is No Single Direct Infringer?................................................................................ 91
INFRINGEMENT RULES................................................................................................................ 91
BMC- Courts faced with a divided infringement theory have also generally refused to find
liability where one party did not control or direct each step of the patented process..............91
Solving the problem by drafting................................................................................................. 91
35 U.S.C. 271 - Infringement of patent....................................................................................... 91
NTP v. Research in Motion.......................................................................................................... 92
271(a): Use............................................................................................................................. 92
Extraterritorial Reach:Deepsouth............................................................................................... 92
Eli Lilly v American Cynamid...................................................................................................... 92
35 U.S.C. 271(g)......................................................................................................................... 92
(1) IT IS MATERIALLY CHANGED BY SUBSEQUENT PROCESSES; OR............................................92
(2) IT BECOMES A TRIVIAL AND NONESSENTIAL COMPONENT OF ANOTHER PRODUCT..............92
What is the U.S. ITC?.................................................................................................................. 92
What are 337 Investigations?.................................................................................................. 93
337 Investigation: Elements.................................................................................................... 93
337 Investigation: Remedies................................................................................................... 93
337 Enforcement..................................................................................................................... 93
Defenses....................................................................................................... 93
Damages..................................................................................................... 100
The two concurrences clash; whether they should or should not lawaays issue......................105
NEW FACTOR= MONETARY DAMAGES WOULD NOT BE ENOUGH..............................................105
Edwards Lifesciences v. CoreValve- Judge Newman- THE COURT (IN EBAY) DID NOT CANCEL 35
U.S.C. 154 NOR DID THE COURT OVERRULE ARTICLE I SECTION 8 OF THE CONSTITUTION. 105
Robert Bosch v. Pylon Manufacturing- Judge OMalley- ALTHOUGH EBAY ABOLISHES OUR
GENERAL RULE THAT AN INJUNCTION NORMALLY WILL ISSUE , IT DOES NOT SWING THE
PENDULUM IN THE OPPOSITE DIRECTION.................................................................................105
eBay v. MercExchange: Concurrence #2- Justice Roberts-.......................................................105
Z4 v. Microsoft.......................................................................................................................... 105
Pg. 940 Edwards lifesciences v. corevalve, inc.........................................................................105
DIFFERENCES FROM EBAY PRACTICES THE INVENTION AND IS A DIRECT MARKET
COMPETITIOR........................................................................................................................... 105
EBAY CONCURRNECE (Kennedy, Stevens, Souter, Breyer).......................................................106
Z4 v. MICROSOFT - Product activation is a very small component of the products// monetary
damages are sufficient latching onto the concurrence from Kennedy...................................106
Who is a troll? ?- HARD TO IDENTIFY WHO THEY ARE AND GET RID OF THEM..........................106
Apple v. Samsung- (Fed. Cir. 11/20/13)- UTILITY PATENTS........................................................106
Apple v. Samsung (Fed. Cir. 11/20/13) Irreparable Harm ....................................................106
for an injunction must show........................................................................................... 106
MULTICOMPONENT IDEA- THINGS WITH MULTICOMPONENT LESS LIKELY TO GET AN INJUNCTION
(B/C OF THE IRREPARABLE HARM FACTOR).............................................................................. 106
THE MORE THEY SELL THE BETTER FOR YOU; YOU CANNOT SUE THEM AGAIN LATER IF THEY
CONTINUE TO INFRINGE AND PAY FINE AND YOU HAVE NO INJUNCTION..................................106
Design Patents- 11/30..........................................................................................107
PRIOR ART- Egyptian Goddess v. Swisa- whether an ordinary observer, familiar with the prior
art, would be deceived into thinking that the accused design was the same as the patented
design. Egyptian Goddess at 681............................................................................................ 107
DESIGN PATENT= COPYRIGHT/ TRADEMARK HYBRID NO SUBJECT MATTER LIMITS..............108
Design of useful articles- 35 usc 171....................................................................................... 108
Requirements for protection..................................................................................................... 108
**DESIGN PATENTS- EASY WORK ALL ABOUT DESIGN- ARTISTIC EXPRESSION....................109
how narrow are these things?.................................................................................................. 109
DESIGN: THE NEW FRONTIER OF IP ORNAMENTALITY VS. FUNCTION....................................109
THIS ALL CHANGES- Apple vs. Samsung............................................................................... 110
INFRINGEMENT STANDARD= ORDINARY OBSERVER: PURCHASER OF THINGS OF SIMILAR
DESIGN OR ONE INTERESTED IN THE SUBJECT....................................................................110
Gorham v. White- fork design (white infringed b/c ordinary observer would be confused with the
source of the forks).................................................................................................................. 110
Egyptian goddess vs. swisa, 543 f.3d 665 (fed. Cir. 2008) (en banc)- Would an ordinary observer
think theyre the same thing? Look at prior art (tropical shine doesn't look hollow nailco has 3
sides)........................................................................................................................................ 110
Whether an ordinary observer.................................................................................................. 110
doing 3 prong test.................................................................................................................... 110
Braun-Claiming infringement of the shape of their tool...........................................................111
All youre doing is comparing pictures for similarities..............................................................111
The whole claim is the picture.................................................................................................. 111
Crocs- A side by side comparison- would ordinary person be confused? Is it more like patented
design or prior art?................................................................................................................... 112
Obviousness: High Point v. Buyers Direct- Judge OMalley- The ultimate inquiry in an
obviousness analysis is whether the claimed design would have been obvious to a designer of
ordinary skill who designs articles of the type involved...........................................................113
NOTE FROM FINAL REVIEW The question about on-sale bar in the notes (page 456)
is what I thought it was. To clarify, under Plumtree you should ask whether the
contract for sale necessarily infringes the patent claims? If no, the contract, absent
more, is not a sale...............................................................Error! Bookmark not defined.
Nard 1-6
o Patent right to exclude
Nard 16-29
o Creation of USPTO from 1836 Act (pg. 20)
o US Court of Appeals for the Federal Circuit (pg. 24)
When Patents Attack- NPR (MyWCL, 1 hr) patent trolls and shell companies being used to infringe
technological and scientific development when patents are supposed to facilitate sharing and growth
Comb-over patent (MyWCL)
Note: homework for next class
Overview
What is a patent?
o What rights does it give you? Negative rights
No affirmative rights to do anything
What institutions craft patent policy?
o Federal circuit= where originated
o USPTO and US Commerce influences it
Does the patent system work?
o Tricky question
o For:
o Against:
Why Study Patent Law? Patent law concerns technology, Patent Law is a growth business, Patent Law is
International, New cases from the Supreme Court:
1.Teva v. Sandoz
2.Commil USA v. Cisco Systems
3. Kimble v. Marvel Enterprises
Future Cases
Oct 2 In re Tam Federal Circuit
It Involves Big Companies (sometimes)
Focus on substantive law not litigation or prosecution
Class divided into three sections
Panel system +
Open-book exam
Prof. Andersons chair patent
1. Seat portion
2. Back portion
3. A number of legs
Sources of Patent Law: Text
U.S. Const. Art 1, Sec 1, Cl 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;
Patent Act (1952): 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
Sources of Patent Law: Institutions
USPTO- Department of Commerce; US court of appeal for federal circuit, US Congress
Patent trolls
Patent aggregators, bankrupt innovators, universities
The Patent Document and the Process of Obtaining Patent Rights- class
two: 8/26
Nard 39-51;
o The process of applying for a patent= patent prosecution
o Record of prosecutin before PTO= prosecution history
o 3 sets of rules and regulations govern the prosecution: patent code in Title 35; (2) title 37 of the code of
federal regulations (USPTO rulemaking); (3) Manual of Patent examining procedure (MPEP)
guidance but no force of law
o proceeding is ex parte = between applicant and examiner only
AIA allows 3rd parties to challenge issuance and validity of a patent
Pre-issuance submission of prior art
o 3rd part can submit any published patent application, or printed publication of
potential relevance to the examination of the application
o overturns that 3rd party needs concise description of prior art relevance
o submission period exetnded to the later of 6 months after publication of
application or date of first rejection under section 132 (CITE 35 usc 122e)
Post-grant review
o Anyone can challenge patent validity within 9 months of issuance (CITE 35 usc
321c)
o Opportunity to improve patent quality and restore presumption of validity
o Challenge under paragraph (2) or (3) of section 282(b)
Ie. Lack of novelty, on-sale and public use e events (section 102)
Obviousness (section 103)
Lack of enablement or other description deficiency (section 112)
o NOT UNLESS more likely than not that at least 1 of the claims challenged in
the petition is unpatentable (CITE 35 usc 324a)
Inter partes review
Patent Claim Drafting Exercise [homework]
CLAIM DRAFTING
1. What is the process for obtaining a patent?
2. What is the process for patent appeals? both pre- and post- issuance
3. Why are claims so important?
o Patent have to prove that there was an infringement of the claim
o USPTO wants narrow claims w/ broad descriptions
Do not want the first claim to be too specific
patent term
o For patents filed before June 8, 1995: the longer of
17 years from the date of issuance
20 years from the date of filing
o For patents filed since:
20 years from the date of filing
this is because of submarine patents the longer it takes to get approved this buys you more time of
protection?
Jerome Lemelson owns tons of patents (original patent troll)
o Keeps them in USPTO for years and then springs on them?
USPTO started publishing patents after 18 months
patent elements
Specification
Claims
o Specifications teach. Claims claim.
-Federal Circuit (too many cases to count)
Prosecution History
Patent Claims
o The name of the game is the claim- Giles Rich (1904-1999), Author of the 1952 Patent Act,
Federal Circuit judge
Specification is everything before I claim:
Claims are at the end
Prior- art
o Comparing new patent claims to what is already out there
o References cited= similar patents that were relevant
preamble = Beginning of claim (a method for)
o Part of the claim but not a lot of patentability
Large area that needs work
Transition
o Comprising
All elements of patent present = infringement
o Consisting of
Catches everything in the claims but if there is anything additional it is not covered
Combover patent
o First claim = 3 sections
Draft one really broad claim
o Will catch most but be susceptible to attack
Also make more and more narrow claims
HW good to leave off the eraser; that means anything w/o an eraser would not infringe the patent
o Claim 1 is broad
Comprising
Material of the pencil
o Keep it broad but avoid prior art
Relationship of the materials
o Claim 2 gets more specific
Materials : wood w/ other material of graphite
This is easier to patent but is less valuable
o Claim 3
Review of claims
1. A writing device used for marking material in various shades comprising a cylindrical piece of
graphite-clay composite material encased in a wooden sheath and including a rubber tip attached at
one end of the device for erasing the marks made by the device.
2. The writing device of claim 1 wherein said sheath is attached to a substance capable of partially erasing
marks.
1. How is claim construction performed? What sources can courts look to when performing claim construction?
2.How do the spec and the claims interact in claim construction?
3.What are common issues in claim consrtuction? Who interprets claims?
USPTO specialist agency science/engineering training 100 patents/year
USPTO overworked- specialist agency
o 100 patents/ year
US District Court- non-specialist court
US Court of Appeals for the federal circuit- specialist court
Patent office does not define claims
o Don't know what terms will be problematic before a lawsuit
Timing issue
o Try to get a meaning but wont define terms
NEXT go to district courts
o Patent should be interpreted by a person w/ regular knowledge
Good at interpreting documents as someone else would
Federal court looks at everything de novo
o Supreme Court then said NO.. they have to take into account what district court says
Markmans patent Inventory
o Claim construction is issue for judge not jury
Markman alleged that inventory could mean receipts, as well as clothing
Westview alleged that inventory meant items of clothing
After Markman= wide spread of Patent local rules
o Varying Rules that apply for cases in certain areas
Markman= trial before the trial
Summary judgement often after a markman hearing
o b/c it has been decided what claim means
end of trial = infiringement or not (in 60% of cases)
o rocket docket huge development in patent law (does not exist anymore?)
o cases often decided once you construe a claim
being formed of an integral one piece plastic material of sufficient elasticity to permit dilation of said inlet
whereby said inlet may be temporarily expanded to admit said excess material and then contracted to retain
said excess material in said storage channel.
These arguments are still made today
Fighting over border pieces
assembly comprising of linear border pieces and right angle corner border pieces
o do not sell any right angle corners
BROWN says they dont need to cut the corners precisely
o Dont use the term corners
Right angle pre-formed pieces
o Other says no: you dont need pre-formed pieces to make a corner
Use claim construction and patent history
o Also use experts
o HERE: what supports pre-formed corner angle?
Claim and specification
o What is the evidence from the patent?
Majority (Lourie)
o Its just claim one
Right angle corner pieces
o Spec. only talks about pre-formed
o Language is clear
o Right- angle corner pieces sounds like pre-formed
Dissent (Rich he wrote a lot of patent law)
o Look at all claims
o Claim 9 was rejected
No explanation as to why it was not put in by the examiner
Rejected because not supported by claim 1?
o Too broad?
o Claim 1 was too broad to give insight into what the claim is
o The spec mentions corner pieces
** Professor agrees w/ Judge Rich!!
o The majoritys assumption as to why it was rejected is largely speculation
o You cannot ignore that the term is mentioned in the spec(ification)
You cannot change the spec!
This one sentence alone could save your patent
Unique Concepts v. Brown (Lourie, J) (Rich)
Claim construction doctrines to know about
1. Claim differentiation each dependent claim is presumed to encompass unique subject matter
2. Dont import limitations from the spec
3. Dont ignore a claim limitation in order to include elements of the spec
a. Must use spec to interpret the claim
b. This is tricky!!
4. The patentee can be his own lexicographer
a. He can define claims however he wants
5. Claims are interpreted from the perspective of a Person Having Ordinary Skill in the Art
(PHOSITA)
a. Lawyers come in here to resolve ambiguities
Define bald area in claim one
Smiths: (want broad): Reduction in hair reproduction
o Evidence:
l.Theotherreasonisthatsharingbringshuge
benefitstosociety.innovationtodayislessaboutentirelynovelbreakthroughs,andmoreabouttheclevercombinationandextension
ofexistingideas.regimeislikelytofallvictimtolobbyingandspecialpleading.Henceaclear,roughandreadypatentsystemis
betterthananelegantbutcomplexone.Ingovernmentasininvention,simplicityisastrength.Patentsshouldcomewithablunt
useitorloseitrule,sothattheyexpireiftheinventionisnotbroughttomarket.Patentsshouldalsobeeasiertochallengewithout
theexpenseofafullblowncourtcase.Theburdenofproofforoverturningapatentincourtshouldbelowered.
governments
shouldgraduallyreducethelengthofpatents.Evenpharmaceuticalfirmscouldlivewithshorterpatentsiftheregulatoryregime
allowedthemtobringtreatmentstomarketsoonerandforlessupfrontcost.
ECONOMICS, TROLLS
1. What are the main theories supporting the patent system?
a. Why have one at all?
2. Does the patent system overcome the publics goods problems for inventions?
a. What are public goods? What does it mean?
3. What are the societal costs associated with the patent system? Do they outweigh the benefits?
IP goal: promote innovation
o U.S. constitution art. 1 sec. 8 cl. 8 promote the progress of science and the useful arts
Patents propertize information
o Property- to internalize the externalities
We assign rights giving someone all the costs and benefits of their property
o Public good = information, lighthouse
Nonrivalrous- one person using it doesn't preclude anyone else form using it
Nonexcludable- once the info is out there you cannot charge for it or control who gets access to
it
Ie. Interstate
Problem= freeriders
They don't pay for what theyre using; get the benefit with no cost
Government combats this through
o taxes
o giving prizes for innovation
deadweight loss is caused by government intervention
the market has to demand what you invent
o no required supervision determining what is a good versus bad invention
patent trolls
U.S. District Courts
1.
2.
Non-patentable categories
1.Laws of Nature
2.Physical Phenomenon
3.Abstract Ideas
You will have too much power if you patent really basic science
Patent= control for 20 years
New this has not been invented or existed before
o Used to negate abstract ideas
c. the Mayo test measured the same metabolites, but used higher
metabolite levels to determine toxicity.
6-Thiopurine Originally used in chemotherapy for leukemia. Now used in inflammatory bowel disease
and some autoimmune diseases. It is incompletely metabolized by the body.
claim:
a. 1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated
gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated
gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject having said immune-mediated
gastrointestinal disorder, wherein the level of 6-thioguanine less than about 230 pmol per
8.times.10.sup.8 red blood cells indicates a need to increase the amount of said drug
subsequently administered to said subject and wherein the level of 6-thioguanine greater than
about 400 pmol per 8.times.10.sup.8 red blood cells indicates a need to decrease the amount of
said drug subsequently administered to said subject.
2. The method of claim 1, wherein said immune-mediated gastrointestinal disorder is
inflammatory bowel disease (IBD).
3. The method of claim 2, wherein said subject having IBD is a pediatric subject.
MYRIAD
Myriad Case
BRCA-1 Claim 1 of U.S. Pat. No. 5,747,282 (issued 1998)
35 An isolated DNA coding for a BRCA1 polypeptide, said polypeptide having the amino acid
sequence set forth in SEQ ID NO: 2.
Assoc. for Molecular Pathology v. Myriad Genetics (Thomas)
HYPO: Personalized Hygenics
Patent on genetic test for breast cancer patients that will provide a recurrence risk evaluation number.
What is the broadest patent available?
Ariosa Diagnostics v. Sequenom- 1. A method for detecting a paternally inherited nucleic acid of fetal
origin performed on a maternal serum or plasma sample from a pregnant female, which method
comprises amplifying a paternally inherited nucleic acid from the serum or plasma sample and detecting the
presence of a paternally inherited nucleic acid of fetal origin in the sample.
1.Patent for a hormone extracted from human tissue. (NOT VALID)
2. Patent for a new method of purifying the hormone. (VALID)
Used for women who have passed menopause and have not had a hysterectomy (surgery to remove uterus)
There has been an increase in the number of cases invalidating patents on subject-matter grounds since 2010
o PTO Commissioner: There will be no patents on monsters, at least not while Im commissioner.
o Weldon Amendment: None of the funds appropriated or otherwise made available under this Act
may be used to issue patents on claims directed to or encompassing a human organism.
Defense weapons- Secret department
Effects of rejecting a patent application
o Allows people to make it
o Using patent- can be a way of policing some things?
Weldon amendment- no claims encompassing a human organism
Third trouble area= Chemical, pharmaceutical and biotech-related inventions
Why? The nature of chemistry-related research
o Structures (molecules) and their uses . . .
Anything thats physical- you can find a use for
Chemicals are different- no use except as experimental
o Utility is really important in this area
types of utility
o operability
o beneficial utility
o substantial utility
o specific utility
Hypo: CCR5- nChemical inventions
I invent a new chemical used as a bleach.
o Patentable?
Bleach = patentable
Inventor B discovers that the chemical also cures AIDS in certain populations.
o Does my patent cover this use?
Cures aids- this gets a new patent
This inventor can have exclusive use to use the chemical in that way , but he needs
the first inventor to license rights to use the original bleach
o Makes it harder for some diseases to get into cell (AIDS immunity)
o Could trst to determine likeliness of AIDS
IN HYPO ASSUME DON'T KNOW PROTEIN OR GENE (JUST TAGS TO
NUCLETIDES)
o This is a step forward in a study but its reason is unknown unpatentable
There is information that could be known in the future from it but not currently
patentable; it must have a purpose
ANSWER: we can see gene but not the protein its coding what would claims be
about? CANNOT CLAIM WHAT IT MAKES (PROTEIN/ MOLECULE); you would
be claiming a portion of the gene (Suspct from cases)/ need utility to do this
Utility here: unknown;
COULD PATENT THIS IF FRAMED AS A TEST FOR SEPARATING THOSE
WHO COULD BE CONTAMINATED VERSUS NOT
You want to have a concrete result
BLOCKING PATENTS
Quick HYPOS: What type of utility is problematic?
1.A new method of freebasing cocaine
o - Beneficial utility. Probably wont pass (Chimera)
2.A new method of operating a brothel
35 U.S.C. 112
Enablement- class nine- 9/28
35 U.S.C. 112(a) (Nard 976-77);
Nard 91-108 (notes 1-3);
Nard 116-124 (note 1)
ENABLEMENT
What is the function and purpose of the enablement requirement
How much precision is required in the specification to establish the claims?
How do we determine undue experimentation?
Enablement requirement
o How much work do you need to do?
o Is there undue experimentation?
o Subjective inquiry
Written description= objective
35 U.S.C. Sec. 112, Para. 1
The specification shall contain a written description of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art
to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth
the best mode contemplated by the inventor of carrying out his invention
35 usc section 112= three requirements
written description
different from an enablement
best mode requirement
best way of using patent
kind of eliminated
enable someone skilled in art of practicing invention ***this is today
disclosure must enable one of ordinary dikill to make invention eithout undue
experimentation (find it online as enable explananation)
Enablement Summary Disclosure must enable one of ordinary skill in the art to make
and use the claimed invention without undue experimentation.
The Telegraph Morse Telegraph Key (circa 1844)
o Morse makes new best standard
o Telegraph and civil war
Intercepting telephone lines
Telegraph and journalism
Most newsworthy info, important details and then general/ background info
o Wants anyway to use electro-current to spell words
o 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.
OReilly v. Morse- You get what you invent and nothing more
Patent would give a monopoly
ENABLEMENT: OVERVIEW
Enabling a single embodiment is not always sufficient to capture all possible embodiments
Enabling all embodiments within the claims is not necessary
Disclosure must be commensurate with the scope of the claims
HYPO: drug testing/ drug patent- Caucasian snowdrop
o Animal testing
o License it
o Then FDA approved
Janssen v. Tiva There is no hardship excuse for not enabling
Says it treats Alzheimers
Vague paperwork
Reasons why not enabled:
Ideas are not enough
Research proposal is not enough
Harm from granting patents too early
CLAIM: 1. A method of treating Alzheimer's disease and related dementias which comprises
administering to a patient suffering from such a disease a therapeutically effective amount of
galanthamine or a pharmaceutically-acceptable acid addition salt thereof.
Caucasian Snowdrop Galantamine, a tertiary alkaloid, has been isolated from the bulbs of the
Caucasian snowdrops Galanthus woronowi (Proskumina, N. F. and Yakoleva, A. P. 1952,
Alkaloids of Galanthus woronowi. II. Isolation of a new alkaloid. (In Russian.) Zh. Obschchei
Khim. (J. Gen. Chem.) 22, 1899 1902). It has also been isolated from the common snowdrop
Galanthus nivalis (Boit, 1954).
Utility and Enablement- If a patent claim fails to meet the utility requirement
because it is not useful or operative, then it also fails to meet the how-to-use
aspect of the enablement requirement.
Cedarapids v. Nordberg -Using throw rather than force allows the pressure and gyrational
speed to create fairly uniform particles used in asphalting.
Telnit Techs. V. Jive Communications (EdTX, Sep. 24, 2015)
Method for initiating phone calls
Sued everyone w/ electronic phone calls
o Would it be patentable in its time
Subject-matter
ALLIS CASE- abstract idea is not patentable
o Putting something online is not enough
o Not a lot of doctrine
101 has a life of its own
o few steps are not enough
1. A method for initiating telephone calls on a voice network in response to requests from a data network
comprising the steps, performed by a processor, of:
receiving a data network request to initiate a telephone call, including a user telephone number;
identifying a stored telephone number corresponding to the request;
signaling a switch to make a call on the voice network to an instrument identified by the stored telephone
number;
monitoring a status of the call; and
providing a user with an indication of a change in the status of the call.
Taking an otherwise abstract idea and applying it to the Internet does not transform the claim
into patentable subjection matter. Remaining, then, are 'receiving a data network request' and 'monitoring
a status of the call,' which are tasks that human beings, such as telephone operators, have been doing for
the past century.
a lot of big companies settle but one challenged the patent in this case
understand 101- it comes up in everything
ENABLEMENT: Disclosure must enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation.
1.Claims requiring some experimentation are permitted
2.Level of specificity required in the specification differs between technologies
3.Enablement is an objective analysis
4.Specification must be commensurate with the scope of the claims
5.Examples of enabled/non-enabled inventions
o Once the patent issues you are set; you cannot claim something more
During prosecution you can (usually takes years)
Cannot enforce patent until it issues
Bottom line: holding Without such disclosure [of specific peptides to selectively inhibit Cox 2] the
claimed methods cannot be said to have been described.
In University of Rochester the court held that the description of the COX-2 enzyme did not also serve to
describe all unknown compounds capable of inhibiting the enzyme. Precedent in evolving science is attuned
to the state of the science, but remains bound by the requirement of showing that the inventor actually
invented the invention claimed.
CELEBreX- enablement/written description
Cox1- new method for testing ability to impact chemical in gene- no examples provided
Cox2- inhibiting formation from inhibiting a compound- not specified
no specified compound in both do they meet enablement and written description requirement?
o Enablement- Must enable ordinary skilled- enough info to practice invention?
o Description- give notice you are in possession
o System for transforming and exchanging data between distributed heterogeneous computer
systems
o A distribution system for transforming and exchanging data between heterogeneous computer
systems, comprising:
a) a systems interface for defining logical import and export data interfaces, data
transformation rule sets and scripts;
b) a metadata database for storing said logical import and export data interfaces, data
transformation rule sets and scripts;
c) a script processor for utilizing metadata from the metadata database to control data
transformation within said systems interface and movement of said data into and out of
said distribution system; (INDEFINITE)
Juxtacomm went bankrupt and sold patent to Teilhard technologies
o Teillhard Technologies, IBM, Microsoft, Akin Gump, Cognos, redhat, british airways
o Appraised at 112 billion
Validity of claim + who they can sue
o Declared invalid b/c indefinite we cant tell what the patent covers/ scope of patent right is
unknown therefore invalid
Usc 35 sec 112 para. 2 distinct claim pointing out what youre doing
o How distinct do you need to be?
o U.S.C. 35 Sec. 112, Para. 2 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.
Nautilus v. Biosig (2014) heart monitor mounted in spaced relationship
o mounted . . . in spaced relationship with each other
o Greater than the width of each electrod w/o saying width= indefinite
o Insolubly ambiguous standard- not too ambiguous to be defined = definite
o NEED REASONABLE CERTAINTY OF SCOPE OF INVENTION
o SCOTUS created new standard and remanded it to see how it was applied
HAS NO IMPACT ON FEDERAL CIRCUIT
SCOTUS worried about impact on industries
Insolubly ambiguous standard is lower than reasonable certainty but not by much
REASONABLE CERTAINTY= NEW STANDARD
o you can tell after you infringe even if you cannot tell before
you can change definition of well known terms- so long as you define term; you do not need to inform
person if they are infringing or not
HYPO:
The process for hydrolyzing a nitrile . . . comprising contacting said nitrile with water . . . in the presence of
copper ion, said copper ion being at least partially soluble in water, the nitrile or in both water and nitrile
and said copper ion being composed of copper in a combined valence state of Cu + Cu+, Cu + Cu++, or
Cu + Cu+ + Cu++
HYPO:
o No standard definition of partially soluble in (1) the spec, or (2) the art, the relevant field
o Slightly soluble is defined in the art; but not specifically related to the phrase partially
soluble
o Held indefinite no generally acceptable meaning
o (THIS IS NOT GOOD)
partially soluble- no standard definition in the relevant field
slightly soluble= defined
o not specifically related to partially soluble
o held indefinite- no generally acceptable meaning
UNCLEAR INDICATION OF AMOUNT
DEFINITENESS IS NOT ENABLEMENT- this about knowing the bounds of the invention
MEETING ENABLEMENT MAY NOT BE ENOUGH TO MEET DEFINITENESS
Stays- big weapon in patent law- we wont discuss
Haliburton v. M-I (2008)
o A fragile gel
Used for fracking
Gel easily disrupted or thinned
o Invalid- degree of improved speed= ambiguous
No threshold provided
Viscous- thickness or flow of liquid
Jello more/water less
o 1. A method for conducting a drilling operation in a subterranean formation using a fragile
gel drilling fluid comprising:
(a) an invert emulsion base;
(b) one or more thinners;
(c) one or more emulsifiers; and
(d) one or more weighting agents, wherein said operation includes running casing in a
borehole.
o Spec: A fragile gel as used herein is a gel that is easily disrupted or thinned, and that
liquifies or becomes less gel-like and more liquid-like under stress, such as caused by moving the
fluid, but which quickly returns to a gel when the movement or other stress is alleviated or removed,
such as when circulation of the fluid is stopped, as for example when drilling is stopped.
o Haliburton: Holding The fluids of the 832 invention may provide less resistance to shear
(i.e., break more quickly) than the prior art fluids, but the degree of improved speed remains
ambiguous. Thus, it is unclear whether a person of ordinary skill in the art would have
interpreted this claim as having an upper bound of fragility. (THIS IS NOT GOOD)
o Haliburton- fragile gel = not definite (it was defined in spec. but definition wasn't certain
enough to use for classification)
You cannot patent something that you cannot describe
35 U.S.C. 102
Introduction to Novelty-/ NOVELTY INTRO AIA- class twelve- 10/07
35 U.S.C. 102(a) (Pre-AIA); 35 U.S.C. 102(a)(1) (Nard 975)
Nard 265-285
NOVELTY INTRO AIA
Novelty: 3 Questions
Quality: how similar does a prior art reference have to be to anticipate a patent? (Atlas)
Timing Issues: What is in, and out, of the prior art?
Identity: What types of things are references?
This class novelty = is this the first invention?
1.What are the basic rules for determining novelty?
2.What is meant by known or used?
3.How have the rules for prior art changed under the American Invents Act?
BASIC RULES OF NOVELTY- determining whether something is new
Basic rules to determine novelty/ whats prior art?
o March 2013 affects which act
PATENTABILITY
o Sec. 101- statutory subject matter
o Sec. 102- novel
Novelty- are you 1st to invent
3 questions:
o quality (novelty question w/ utility analysis) - similar enough to anticipate
o timing issue- what is the prior art
o identity- what types of things are reference
Priority- if 2 invent at about same time how do we determine date of invention
Statutory bar- youre 1st inventor but you did something that prevents u from patenting
Took too long
Sold it on the market early
o Sec. 103 non-obvious
o Sec. 112- enablement, written description and definiteness
KNoWN OR USED- MEANING IN STATUTE
RULES CHANGED BY AMERICAN INVENTS ACT
Just because you don't know and don't claim it, its enough; discovering a new principle
that existed before is not enough
o Had not stated air as a requirement; others used the air inherently
TYPES OF PRIOR ART
o Physical things
o Printed publications
o Old patents
o Use or knowledge
Used less/ less useful
o Inherent features
Unclear
General principles of novelty
o All limitation test
To anticipate, the prior art must meet every limitation of the claimed invention, either
explicitly or inherently.
o Four corners doctrine
To anticipate, all of the claimed elements must appear in a single prior art reference.
o Enablement
To anticipate, the prior art must enable one of ordinary skill to make and use the invention
(can practice w/o undue experimentation)
Anticipation HYPO
1.An aircraft that travels faster than light
2.An aircraft of claim 1, wherein the engine is fueled by alcohol and mouthwash
Claim 2- we dont know about fuel
Claim 1- does not meet enablement b/c doesn't teach how to do it
o Must enable prior art and the invention to qualify at prior art
Not a prior art reference
Novelty- what anticipates
A slicing device for cheese and the like, comprising:
A base providing a flat cutting surface with a passageway for a cutting element;
a bar having a general U-shape;
A cutting element;
and a rotating handle
Prior art has to have everything you have to knock you out
o Jones- no handle (he wouldn't infringe if he invented it later)
o Smith- has a handle but does not rotate
o Article- no mention of passage in cutting board
Maybe could win for obviousness
Anticipation
Swing side to side- no one can prove prior art
Food and activities hard to knock out b/c not a record of them
critical date- invention date
everything before= prior art
invention date is not the filing date
o new act= filing date
o old act= invention date
AIA: Effective Mar 16, 2013
102(a) NOVELTY; PRIOR ART.
A person shall be entitled to a patent unless
o the claimed invention was patented, described in a printed publication, or in public use, on sale,
or otherwise available to the public before the effective filing date of the claimed invention; or
o the claimed invention was described in a patent issued [to another] or in [anothers] application
for patent published [that] was effectively filed before the effective filing date of the claimed
invention.
Five categories of prior art in 102(a)(1) and a sixth category in 102(a)(2).
AIA: Prior Art
Now lets examine the 5 categories of prior art in section 102(a)(1):
Patents
Printed publications
Public uses
On sale material
Otherwise available to the public
Questions: Whats new? Whats old?
Whats new in these five categories of prior art?
Answer:
Timing (of course) art is now prior if it is before the effective filing date, not the invention date
(consistent w/ first-to-file philosophy).
End of Geographic Restrictions all categories are global, including public use and on sale.
Addition of otherwise available to the public similar to old known by others.
Whats old in these five categories of prior art?
Answer:
Much is old.
E.g., old printed publication cases still apply, though the addition of otherwise available to the
public category might make some cases easier.
o How has the America Invents Act changed the novelty inquiry?
102 a, e, g
102 (a and b)
patented or described in a printed publication in this or a foreign country
something patented anywhere before you is prior art
Patent Reform: America Invents Act
AIA: Prior Art
102(a) NOVELTY; PRIOR ART
AIA: Exceptions/Grace Period
AIA HYPOS
barred in both cases because the second one to apply was not the first inventor. The first applicant has done
everything he could to make the description public. The Patent Office now needs to do its work. Under the
rule already mentioned, the Clifford application served as a bar to a patent being issued to Whitford on the
same invention. Reversed.
Discussion. THE MILBURN RULE HAS BEEN CRITICIZED FOR USING INFORMATION AS PRIOR
KNOWLEDGE WHICH WAS SECRET AT THE TIME IT WAS USED, THAT IS, PATENT
APPLICATIONS WITH SECRET CONTENT. EVEN SO, IT HAS BEEN CODIFIED IN 102(E) OF
THE 1952 PATENT ACT
Alexander Milburn v. Davis Bournonville- Justice Holmes- Oliver Wendell Holmes, Jr. (18411932)
Justice Holmes Reasoning:
o EMPHASIS ON WHO WAS PRIOR INVENTOR
o Is Whitfords patent anticipated by Clifford reference?
2.Who has priority
o ONLY RELEVANT IF WHITFORD AND CLIFFORD BOTH CLAIM THE SAME
INVENTION
The delays of the patent office ought not to cut down the effect of what has been done.
novelty:102 (e) hypo
o no patent for Anderson if Jones publishes before his applicatino
o FILING DATE OF PUBLICATION= DATE OF PRIOR ART
o if earlier filed patent is issued tha later filed one is invalid
CANNOT GET PATENT FOR SOMETHING YOU DESCRIBE BUT DON'T CLAIM
ONCE PATENT ISSUES IT KNOCKS OUT OTHER
Codified in Section 102(e)(2):
No patent if
o (e) Invention was DESCRIBED [but NOT claimed] in . . .
o A [published] application for patent by another filed in the US before the [date of]invention
o a patent granted on an application for patent by another filed in the US before the [date of]
invention, except that an international application[shall be treated as a U.S. application]
only if the international application designated the US and was published in the English
language
Why would anyone disclose but not claim an invention?
Unclaimed matter is in an unrelated field
Interested only in one application
Oversight
Thomson v. Quixote - Justice Rich- Corroboration is required only when the testifying
inventor is in a position to directly and substantially gain
Can be prior art if do not actively try to keep it secret
102 g 2 no publicity requirement
o something that would fail 102a could pass here
o 102g- must consistently use it
CONCEALMENT- if youre doing something and using it openly but in secret that is
enough for 102(g) (2)
abandon, suppress or conceal
o must demonstrate it to the public in some form
making something to sell but cant see the process- can be 102g2 prior art
TRIPs compliance?
27(1): ..patents shall be available and patent rights enjoyable without discrimination as to place of invention.
4: With regard to the protection of intellectual property, an advantage, favour, privelege or immunity granted by
a Member to the nationsl of any other country shall be accorded immediately and unconditionally to the nationals
of all other Members.
STATUTORY BAR- WHAT INVENTOR CAN DO THAT KNOWS THEMSELVES OUT FROM
PATENTING
Mahurkar v. C.R. Bard (Justice Rader)- Good prior art from 102(a) b/c it's a printed
publication
o catheters are a huge business (lots of money and patent litigation)o Mahurkar needs to show he invented before the publication
Conception
o - The formation in the mind of the inventor of a definite idea of a complete and operative
invention as it is thereafter reduced to practice
o - A person of ordinary skill in the art could reduce to practice without excessive
experimentation
o date of conceiving of conception= earliest you can get
Reduction to Practice Show that the invention is suitable for its intended purpose
o reduction to practice- why does It matter? Helps prove inventor could carry it out (evidentiary)
FIRST TO REDUCE TO PARACTICE GETS THE INVENTION (EXCEPT THERE
IS AN EXCEPTION)
o reduction to practice- choose first date of these two
actual
building model
making drawing
constructive
filing an enabling patent application
useful for foreign patents that cannot use foreign experimentation for their date under
the old rule
Simultaneous Conception and Reduction to Practice- post-it notes
o post-it noted inventing tacky sticky substance that doesn't leave residue
someone saw presentation and had idea to use it for a bookmark
EVERY PATENT ISSUED IS PRESUMED TO BE ENABLED AND VALID
Funding- school policy unreasonable don't want to compare public vs. private
funding
35 U.S.C. 102(g)(1)
Not entitled to a patent if
(g)(1) during the course of an interference another inventor involved therein establishes, to the extent
permitted in section 104, that before such person's invention thereof the invention was made by such other
inventor and not abandoned, suppressed, or concealed, or
(2) [Inventive activity in U.S.]
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.
102((g)(1) priority goes to first to reduce practice
unless another is first conception
reasonable diligence from before first inventors conception date
reasonable diligence
o valid excuses
need to develop closely related invention to test primary invention
serious illness
lab burns down
o invalid excuses
extended vacation/ hiatus
insufficient money
company relocation
this is conception
o 1987 renewed interest
o 3/89 Wattanasin files
august 1987- Fujikawa patent filed
o stuck with this date because it is a foreign filing
when and where did you conceive?
It was all in Japan so they couldn't show they conceived first
o Contruction reduction??
Fujikawa
o 10-12/ 87 human testing= reduction to practice date
o Close enough that they can see that it works
FIX THESE FACTS.. THEYRE WRONG
KEY DIFFERENCE BETWEEN THIS CASE AND THE PRIOR: REDUCTION OF PRACTICE
OCCURERED BEFORE THE GAP
o Conception, RTP and filing
Conception RTP = diligence
RTP filing= abandonment
It is harder to get to abandonment with 3 months whereas it is easier with diligence
o 3 month gap between his data collection and drafting of patent and another 4 month gap
before filing
IF YOU INVENT SOMETHING YOU HAVE TO PUBLISH IT
PUBLICITY DOESN'T MATTER FOR INVENTORSHIP
o Suppression- framed as abandonment or doing something to keep invention down to buy time
35USC102- publically, effective date is date of filing for publish issued applications
FIRST TO REDUCE TO PRATICE UNLESS FIRST CONCEIVER IS DILIGENT
102 b invention patented/ described/ in public use (more than one yaer prior to application)
o VERY DIFFERENT FROM 102a
a says- used by others (not the inventor)
o b what inventor does with invention
Pennock v. Dialogue **NOT IN BOOK (Daniel Webster)- Justice Joseph Story moved
away from undue reliance on English law in the direction of an American patent
law that would favor inventors
Justice Story- Opinion It would materially retard the progress of science and the useful arts, and
give a premium to those who should be least prompt to communicate their discoveries.
They were using an selling hose for 7 years before filing for patent (while keeping it secret)
Webster argument (plaintiff- patentee)
o Invention was under control of patentees at all times; no intent to abandon it
o Policy: dont dwell on technicalities regarding use; dont be like the British!
- should focus too much on procedure
Argument for defendant
o That mere invention gives no right to an exclusive use, unless a patent is obtained; and that if
at a time when no right is infringed, the public fairly acquire possession of it, the inventor
cannot, by subsequently obtaining a patent, take it away.
American law favoring inventor
o Policy behind statutory bar= prevent extension of monopoly
(Dec 7, 1736: 1st Volunteer Fire Dept., Ben Franklin, Philadelphia)
o In 1807, two of Reuben Haines fellow company men, James Sellers and Abraham Pennock,
invented a riveted leather hose that revolutionized the design and again put Philadelphia in
the forefront of firefighting ingenuity. [T]he riveted Sellers & Pennock hose worked well
enough to allow suction engines to be created, changing forever the design and power of
pumpers, which could be linked in tandem to bring water from a distance and without a
bucket brigade.
102 a v. 102 b
INVENTORS ACTIVITY WAS THEIR PRIOR ART in 102b (Pennock)
known or used by others = 102a
YOU CANNOT DESTROY YOUR OWN NOVELTY BUT YOU CAN CREATE STATUTORY BARS
CANNOT PUBLICALLY USE OR SELL INVENTION MORE THAN A YEAR BEFORE PATENTING
pfaff
Plumtree software v. datamize (2006)- Justice Dyk- A commercial offer is one which the
other party could make into a binding contract by simple acceptance
o 1.Offering to perform method before critical date
o 2.Performing the method before critical date in exchange for future compensation
When did sale occur?
o If he is selling button or kiosk
o Patent= method of software- pushing buttons and getting results
Dec. 1994- reduced to practice
o Completed development- gave a presentation w/ examples in January 1995
Going to make a kiosk as it was presented in January specific
march 3 make kiosk
file feb. 1996
critical date= feb. 1995
o display of kiosks does not create bar
2 PRONG TEST***: 1: DEMONSTRATE A COMMERCIAL OFFER WAS MADE BEFORE
CRITICAL DATE + 2: PERFORMED PATENT METHOD BEFORE CRITICAL DATE IN
EXCHANGE FOR FUTURE COMPENSATION
they agreed to kiosk that performs certain functions
o they did not perform the function before date
o close- contract for kiosk to do what it solud do from resentation
PLumtree HYPOS
o Perform process before critical date and get paid after sale
o Agree to perform process but perform after critical date sale (if specific about patented steps of
process)
o Agree to perform process before critical date but do not perform sale
Not relevant whether you perform process if you agree to do it
o Advertise process before critical date and then agree to perform and perform after critical date no
sale (no binding agreement)
This could be problematic for reasons other than 102b
o IF:Agree to provide kiosk (doesn't say how), perform process, then critical date, then provide
kiosk FOR SALE B/C PERFORMED PROCESS
Agreement is not enough b/c it can be done in different ways
(plumtree) agreement to provide kiosk, critical date, then perform, then provide kiosk not
a sale
NEED A CONTRACT BFORE AGREEMENT TO PEROFRM PROCESS (NEEDED BEFORE YOU CAN
PERFORM PROCESS) UNLESS NEEDED TO PERFORM AN AGREEMENT TO PROVIDE A
SERVICE USING THE TECHNOLOGY(CAN PERFORM PROCESS BEFORE PROVIDING
TECHNOLOGY)
Pg.458 Egbert v. Lippmann (1881)- PUBLIC USE DOES NOT MEAN PUBLICITY- IT MEANS
LACK OF CONTROL AND LACK OF ABANDONMENT
Justice Woods- William Burnham Woods Civil War General (Northerner) who after the
war settled in Alabama to farm cotton. Does this background tell us anything about
how he might have viewed Egberts and Frances intimate relationship?
NOTE SOLE DISSENT FROM MILLER DOESNT THINK THIS WAS PUBLIC ENOUGH.
MILLER IS THE MOST POWERFUL MEMBER OF THE COURT DURING THIS PERIOD,
FLOATED AS A CANDIDATE FOR PRESIDENT. HE IS A RELIGIOUS LIBERAL.
- Egbert= exwife remarried (was his intimate friend at the time??)
- 1855- wearing a corset is not public at all
- gives 2 pairs to Frances Lee and shows Sturgis
o not concerned w/ Sturgis
IMPORTANT: DOES NOT HINGE NO THE NUMBER OF USERS; DOES NOT NEED TO BE
KNOWN/SHOWN ?????
- Negative norms against unmarried girls being shred between people; slept on his rights= pun; court is
worries about morality so they want to find public use even though this is very private)
- Dissent if this is public then what is private?
o Key point: did not abandon to the public
- This guy would win if he made her sign a NDA
- If someone independently invents it it does not preclude you if they were independent
Pg.460 Motionless keyboard v. Microsoft- CLAIMS ENCOMPASS MORE THAN YOUR
INVENTION
- Showed it to
o Investors (NDA)
o Friend (noo agreement)
o Testor (NDA)
- NDAs show due diligence in trying to maintain control for himself
o If these dnt help then you wouldnt be able to disclose to anyone
- NDAS PROTECT HIM FROM PUBLIC USE BAR
- The intended use was made only by one person and no one else saw its use
- DID YOU MAINTIAIN CONTROL AND WAS IT USED FOR INTENDED PURPOSE?
o IF IT IS USED FOR INTENDED PURPOSE WITHOUT CONTROL= PUBLIC USE
THIS IS DIFFERENCE FROM EGGBERT
o IF IT IS INTENDED USE AND WITH CONTROL- NOT PUBLIC
2 LAYERS (SECRECY + PURPOSE)
MOLECULON RESEARCH V. CBS (fed. Cir. 1986)- implied control (CASE NOT IN BOOK)
Metallizing Engineering (2nd Circ) - Judge Learned Hand- had control over friendsimplied from their relationship
- letting friends play with it and demonstrated invention to boss
- In Eggbert he gave it to her and let her have it; here it did nt rise to that level
What is the main issue?
Sale of output from a machine does not disclose the machine to the public; is it nevertheless a public use?
Extension of monopoly is the key policy; public use found here, patent invalid
Public Use Summary
Giving invention to another without limitation or restriction is public use (Egbert)
CANNOT GIVE TO ANOTHER W/O RESTRICTION- EGBERT
EXPERIMENTAL USE- Pg. 482 City of Elizabeth v American Nicholson pavement co.
Justice Bradley- City of Elizaberth Holding- Public use permitted when the delay [in
filing] is occasioned by a bona fide effort to bring his invention to
perfection or to ascertain whether it will answer the purpose intended
Exception= experimental use
DILIGENCE HERE (constantly keeping tabs on it)
Durability
Kept this as secret as possible
o Only on one road
FACTORS
Invention cannot feasibly be tested in private
Due diligence
IS IT A GOOD FAITH EFFORT TO REDUCE TO PRACTICE OR A DELAY?
Under control of the inventor
o This is key!! (how much is it in the inventors control? The moe the better)
This case is limites to reducing invention to practice; not renfinement
o Once it is reduced t practice once it cannot be publically used and no exception granted for
experimental use
Refinement- fine line on what is reduced to practice?
o If it works for its intended purpose
After this you cannot make changes publically
o - it has clearly been reduced to pactice here they do not get the patent!!
HYPO: Sobicinski v. Walgreens: Claim number 7- kit (glove and lotion)
Balm made of 2 properties
Glove- on hand for predetermined time (a day? An hour? Question for court)
Filed- jan 22, 1997
Feb. 1995- selling lotion on ebay
Dec. 1995- sampling booth for gloves
Jan. 1996- pays for a booth at a trade show
June 1996- sells 45 kits
And 1990 printed publication
WHAT DOES THE PATENT CALIM?
- LOOK AT ELEMENTS AND COMPARE THEM TO REFERENCES? (DOES IT HAVE ALL
ELEMENTS OF THE CLAIM?)
- IS THIS PRIOR ART?
- FIND CRITICAL DATE
posted add- doesn't have all ingredients; no particular method is cared about
o ALL ELEMENTS THERE BECAUSE ONE OF THE LISTED LOTIONS CONTAINS THE
OTHER ELEMENTS
DOES IT MEET ELEMENTS OF CLAIM???? IS THIS ONE REFERENCE????? SHOW WHERE
ITS A GREY AREA
HERE IT IS NOT EXPLICIT! SAYING OPTIONS
Selling it june 1996 is ok bc within year (after critical date) look at plumtree case; securing both in 1996
is ok
Dec. 1995- this was in Canada (does not matter)
IF THIS WAS IN THE U.S>- this was not sold but it was used
No experimental use once reduced to practice
Sale of lotion= not sale of the patent item
OBVIOUSNESS- SECTION 103
AFTER REDUCTION TO PRATICE- HAVE TO SHOW ABANDONMENT; IF NO REDUCTION
TO PRACTICE- WERE YOU DILIGIENT?
Section 102
- What does the patent claim?
- What section of statute might this reference cover?
- Is the reference prior to the critical date?
- Does it meet all requirements for anticipation?
o All limitations
o 4 corners
o enabled
if its not all in one document- its not prior art
- once it Is prior art for 102 and 103
o does it anticipate?? (102- prior art and anticipation)
- Then ask would it be obvious after this?
35 U.S.C. 103
Historical Obviousness- class seventeen- 10/26
35 U.S.C. 103 (Nard 976)
Nard 347-372
INTRO TO OBVIOUSNESS
What are the historical roots of Section 103?
What are the policy reasons for having a non-obviousness requirement?
How does one apply the Graham factors
35 USC Sec 103 103. Conditions for patentability; non-obvious subject matter
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.
SCOTUS Standard
- 1941 Cuno Engineering Corp. v. Automatic Devices- flash of genius test
- PATENT ATCT OF 1952
o Non-obviuos test made express; no flash of genius requirement
- 35 USC section 103
o differences would have been obvious to someone skilled in the art
35 USC Sec 103- 103. Conditions for patentability; non-obvious subject matter
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.
pg. 354 Graham v. John Deere- Justice Clark- Holding= a farmer would have done this
o Justice Tom Clark (1899-1977) It's not that he's a bad man. It's just that he's the dumbest sonofabitch I
ever met.- Harry S. Truman
1. improved design puts hnige plate on top of the shank more flexiblility
2. obviousness- need context
a. different from anticipation in novelty
3. FIRST: TAKE PRIOR ART AND LOOK AT SCOPE BEFORE INVENTION HAPPENED
4. THEN: LOOK AT DIFFERENCES BETWEEN PATENT AND PRIOR ART
5. THEN: WHAT IS THE ORDINARY SILL IN THE ART?
Grahams First improved design: Figure 3: Grahams first improved clamp for the Hoeme chisel plow. The
added brace (13) distributes the forces from the plow shank (11) toward the upper portion of the I-beam
(10) and thereby protects the lower flange of the I-beam (10a).
The 811 Graham Plow: Figure 4: Graham 811 Spring Clamp. The spring (66) at the front end of the clamp
holds the plow shank flat against the I-beam frame. The shank is pivoting against the rear of the clamp and
the pivoting compresses the spring.
THE GRAHAM TEST
- 1. Scope and content of the prior art
- 2. Difference between the prior art and the claims at issue
- 3. Level of ordinary skill in the pertinent art
- *implicit
o (4). Analyze obviousness
o (5)? Secondary considerations may be relevant AND CAN OVERCOME A FINDING OF
OBVIOUSNESS
o Note: Situates obviousness as a constitutional requirement.
With obviousness- you have to go back to date and time of invention time
- hindsight bias- can be limited from secondary considerations
- nothing is obvous unless explicitly declared in a document?? This is the new idea?
Niaudet treatise zinc anode, silver chloride cathode; ammonium chloride electroltye: continuous
current
Wood: substitute magnesium for zinc; use neutral electrolyte
Wensky: copper terminal, cuprous chloride in electrolyte solution
4. Headrest
Pg. 427 Transocean Offshore Deepwater Drilling v. Maersk- Justice Moore- This is precisely
the sort of case where objective evidence establishes that an invention appearing to have
been obvious in light of the prior art was not.
Rare case- giving obviousness to jury
Judge decides opposite JMOL after jury finding
6 FACTORS OF SECONDARY CONSIDERATIONS
1.Commercial Success (Nexus)
o nexus- success and merits of claim
example- 2 contracts one day
one has add on and premium for it
2.Industry Praise and Unexpected Results
o example- competitor
3.Copying
o everyone tryng to copy
4.Industry Skepticism
o show no ne believed in you
clashing
5.Licensing
o example- merits or threat of litigation
o value of license relaive to litigation cost
o licenses with no threat of litigation
6.Long-Felt but Unsolved Need
o need for efficiency
SECONDARY CONSIDERATIONS- RLE WHEN THERE IS OBJECTIVE EVIDENCE INVENTION
Hypo: Crocs court found this is not obvious (SO MUCH copying and commercial success)
o prior art said you could not do it
CLAIM: A footwear piece comprising:
o (1) A base section [of] moldable foam material; and
o (2) A strap section formed of moldable material .attachedwith plastic connectors
Secondary Considerations:
o Prior art depicts foam as unsuitable for straps
1.Causes abrasions on Achilles tendon
2.Has bad memory (stretches and deforms)
o Commercial success of Crocs
o Industry praise for Crocs
o Massive copying
2 pieces of fam and plastic
secondary considerations help
infringement argument
o direct
literal
non-literal (DOE)
o indirect
inducement
contributory
INFRINGEMENT CHECKLIST
o Single entity?
o Perform infringing act?
o In US?
Dealing with missing pieces
o Infringement Checklist
o Single entity?
o Perform infringing act?
o In US?
WHAT IS REQUIRED FOR DIRECT INFRINGEMENT? ALL OF THE ELEMENTS OF THE CLAIM ARE
MET BY THE ACCUSED DEVICE/PROCESS.
INFRINGEMENT CHECKLIST (3 LITERAL REQUIREMENTS)
o SINGLE ENTITY?
o perform infringing act?
**All of the elements of the claim are met by the accused device/ process
intent does not matter for literal infringement
inducement and contributory have a knowledge requirement
otherwise until now in class notes intent does not matter
every indirect infringer has a direct infringer; (a lot of the time consumers are the ones
infringing but business liable from promoting it);
there has to be a literal infringer before the ther theories
o in U.S.?
apple realys to Canada; does infringe systems claim; about control and beneficial use
Larami v. Amron (supersoaker case)
o Had a chamber thereout; not a chamber therein
o WILL BE CONTINUED NEXT CLASS
INFRINGEMENT (purely for litigation)
Goal= Less likely to be made invali but more likely to capture more
complex
(RANDOM SIDE NOTE: defininiteness= question about claims; do dclaims deifne things in a way that a
PHOSITA would know what they mean; SCOTUS changed standard to if a reasonable person would have a
good basis for that definition)
INFRINGEMENT- WE ONLY CARE ABOUT YOUR PATENT AND WHAT IT SAYS (WHAT DO YOUR
CLAIMS COVER)
- HOW DOES OTHER INFRINGE ON YOUR CLAIMS?
o WE DO NOT CARE IF THEY HAVE PATENTS
JUST YOUR PATENT AND THE INFRINGING PRODUCT OR PROCESSES
****REMEMBER THIS FOR EXAM
PATENT LITIGATION: PRODUCTS Apple Sues RIM: What matters for infringement?
o Utility
o Subject matter (101)
o Written description (112)
infringement- needs infringed device
- Lesser burden here- show me why I infringe
- direct vs. indirect (COPY NTES FROM SLIDE)
patent litigation case mamangement
- 3 phases
o claim construction
what do claim cover
o validity analysis
covered in prior 20
o infringement analysis
is accused device covered by the claims
Claim Construction: Review- Phillips v. AWH Corp.
35 U.S.C. 271 - Infringement of patent.
(a) 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.
- 271(a)
o Whoever
singular; what if more than one person/entity involved?
o Makes, uses, sells, offers to sell, or imports
what are the limits of these categories?
o Any patented invention
what if only PART OF claimed invention?
o Infringes
Larami v. Amron squirt guns- Justice Reed- Eastern District of Pennsylvania
[a] toy comprising
An elongated housing having a
chamber therein for a liquid [tank],
a pump including a piston having an exposed rod and
extending rearwardly of said toy facilitating manual operation for building up an appreciable
amount of pressure in said chamber
- need all claims met
- one not met so it is not infringing
- if you meet all elements and more- you still infringe
- if missing one element it does not infringe
- where it is located
o construction or written description
Infringement checklist
o Single entity?
o Perform infringing act?
o In US?
NTP v. Research in Motion - Justice Linn- THE USE OF A CLAIMED SYSTEM UNDER SECTION
271(A) IS THE PLACE AT WHICH THE SYSTEM AS A WHOLE IS PUT INTO SERVICE.
blackberry emailing
what was unique about how/ where they did it?
Blackberry from Canada
Methods- must perform all steps in the U.S. (methods have to be in U.S. )
System- where is place that system as a whole is put into service
o This is the KEY (how you infringe a system)
Who has beneficial control and beneficial use of system??
o Black berry users controlled it and got the sue
It shouldnt matter where it happens// they were using it
Process/ method
o Each of the steps must be done in the U.S.
They want injunction- you cannot do this without authorization
o Blackberry had to settle for system claim and process claim
271(a) use HYPO- calls in India
where is beneficial use (if not in US no infringement)
does claimed use and control seem confined to U.S>??
where things happen and how important they are in the scheme of things
IF IT IS JUST A ROUTE THROUGH; MORE USE AND CONTRL IS US (MORE LIKELY TO BE
INFRINGED)
271(a): Use- system/ process
System Claims: The test is not whether the infringement took place within the United States, but whether control
and beneficial use of the infringing system was within the United States.
Process Claims: Because a process is nothing more than the sequence of actions of which it is comprised, the use
of a process necessarily involves doing or performing each of the steps recited [in the U.S.]
A patented system that routes calls and requires call centers in India.
Where is control of the system exercised and beneficial us of the system obtained?
What about a process?
Infringement:
o Direct
Literal
Non-literal (DOE)
o Indirect
Inducement
Contributory
35 U.S.C. 271 - Infringement of patent.
(a) 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.
Without authority
Makes, uses, offers to sell, sells, or imports invention
Within the U.S.
During the patent term
Definiteness in Real Property- If scope of land size is unclear you negotiate for a lower price
o Theres no certainty in notice if we dont know the scope; the patent system is supposed to give
notice of what you patent and now we dont know here
ESTABLISHES DOE
DOE Review
o I claim a process of purchasing items comprising
o -Selecting an item for purchase
o -Obtaining price information
o -Paying via credit card
o -Processing payment
o **via telephone
HYPO
9.5 ph- no infringement under DOE
o gave that up in prosecution
unellss Hilton davis (trying to get the lower bound)
if it waw to avoid prior art you area foreclosed
if for other reason- DOE is available
o presumption= change was to avoid prior art
show evidence it was not to avoid prior art
o patent suing patent= interference; do these differ? (booth has aptent)
could extend it to 8.5?
LIMITED BY PROSECUTIO NISTORY ESTOPPEL******
LIMITED BY PROSECUTIO NISTORY ESTOPPEL******
o Presumption: claim amendments made in prosecution were made to escape prior art
Presumption in rebuttable: by evidence that the . COPY FROM SLIDE
Festo v. Shoketsu Kinzoku Kabushiki (magnetized rails 2 magnetized rings) (2002)Justicce Kennedy- PRESUMPTION FROM JENKINSON: AMENDMENTS RELATED TO
PATENTABILITY FORECLOSE DOE ON AMENDED ELEMENTS STANDARD FOR REBUTTING
PRESUMPTION
Infringer using 1 magnetized ring Can festo pursue if claiming 2 rings?
Not reasonably foreseeable by PHOSITA at time of amendment
o Ie- Could not forsee technology change
Rationale= only tangentially related to equivalent
Other reasons
SCOTUS doesn't give good patent law cases
Presumption: amendments related to patentability foreclose DOE on amended elements
Standard for rebutting presumption of estoppel
1. Alleged equivalent not reasonably foreseeable by PHOSITA at time of amendment (and thus could not
have been placed in claims)
2. Rationale underlying amendment only tangentially related to equivalent
3. Some other reason suggesting the patentee could not have described the insubstantial substitute
* Applies to any reason related to patentability: not just amendments to avoid prior art
Exception to the Exception to the Exception to the Rule
Rule= Literal Infringement
o Exception= Doctrine of Equivalents
Exception= Prosecution History Estoppel
Exception= Un-foreseeability, etc
Rule: literal infringement (must paractice all of claim)
o Exception: DOE: expanding scope of claim to capture what was not calimed
Restrictions: Prosecution History Estoppel (if limited b/c of prior art cannot change)
(presume amendments are for patentability)
Exception: un-forseeability, etc.
IF YOU HAVE AN AMENDED CLAIM YOU RUN INTO PROSECUTION HIDTORY ESTOPPE
LBUT YOU CAN STILL USE SEXCEPTIONS
DOCTRINE OF EQUIVALENTS- If it performs substantially the same function in
substantially the same way to obtain the same result. Graver Tank, 339 U.S. 605, 608
(1950)
LIMITED BY PROSECUTION HISTORY ESTOPPEL
o PRESUMPTION: Claim amendments made in prosecution were made to escape prior art
o PRESUMPTION IS REBUTTABLE: by evidence that the reason for the amendment was unrelated
to patentability
Element by Element Comparison: 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 to the invention as a
whole. - Warner-Jenkinson v. Hilton Davis, 520 U.S. 17 (1997)
Can apply to later developed technologies
DOE assessed at time of infringement
Hypo: Wright Brothers
Original claim:
A machine powered flying device Comprising a winged structure.
Amended claim:
A machine powered flying device comprising a winged structure covered with cotton fabric.
**Consider: Nylon Flying Machines Inc., Linen Flying Machines Corp.
o Nylon
Not literal infringement
Altered to say cotton- so no DOE
Nylon was invented way later so it is unforeseeable
o Linen
This is more predictable
o Presumption: claim amendments made in prosecution were made to escape prior art
Presumption in rebuttable: by evidence that the . COPY FROM SLIDE
35 U.S.C. 271 - Infringement of patent.
(a) 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) Whoever actively induces infringement of a patent shall be liable as an infringer.
(c) Whoever offers to sell or sells within the United States or imports into the United States a component of a
patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a
patented process, constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce
suitable for substantial noninfringing use, shall be liable as a contributory infringer.
Infringement checklist
Single entity?
Perform infringing act?
In US?
Hypo: Software
Claim 1: A method of calculating payments comprising
A patient entering medical data
Sending the data to a provider
Said provider calculating payment amount
What is required for indirect infringement?
Someone has to directly infringe
If someone sells them abroad and you bring them here no contributory infringe; but you can induce
someone from abroad to infringe in the U.S. and that counts ?
DOE REVIEW
I claim a process of purchasing items comprising
-Selecting an item for purchase
-Obtaining price information
-Paying via credit card via telephone
-Processing payment
Patent Litigation: Arguments
Validity:
o Obviousness
o Novelty
o Utility
o Subject Matter (101)
o Written Description (112)
o Etc.
Infringement:
o Direct
Literal
Non-literal (DOE)
o Indirect
Inducement
Contributory
35 U.S.C. 271 - Infringement of patent.
(a) 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.
Without authority
Makes, uses, offers to sell, sells, or imports invention
Within the U.S.
During the patent term
Extraterritorial Reach:Deepsouth
(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial
portion of the components of a patented invention, where such components are uncombined in whole or in part, 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.
Eli Lilly v American Cynamid
35 U.S.C. 271(g)
(g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United
States a product which is made by a process patented in the United States shall be liable as an infringer, if the
importation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for
infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use
or retail sale of a product unless there is no adequate remedy under this title for infringement on account of the
importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will,
for purposes of this title, not be considered to be so made after (1) IT IS MATERIALLY CHANGED BY SUBSEQUENT PROCESSES; OR
(2) IT BECOMES A TRIVIAL AND NONESSENTIAL COMPONENT OF ANOTHER PRODUCT.
Administrative proceedings
Appeals to Federal Circuit
337 Investigation: Elements
Importation (or sale for importation; sale by importer)
Domestic Industry Requirement
o Economic Prong
(A) Significant investment in plant and equipment
(B) Significant employment of labor or capital; or
(C) Substantial investment in exploitation, including engineering, r&d, or licensing
o Technical Prong
domestic article protected by patent
Patent Infringement
Defenses
Inequitable Conduct and Experimental Use-class twenty three- 11/16
Nard 799-823
ONE OF THE LAST CLASSES 11/16
Go to the last class there is something on the test from design patents (MONDAY after thanksgiving)
o Not going to need to know AIA rules for design patents
1. What is the standard for determining inequitable conduct? What are the penalties?
Materiality (but/for) and intent (knew, not whould have known)/// invalidation of entire patent
o **KNOWLEDGE is the standard
o standard= clear and convincing (greater than 50 percent; like 75) for materiality and for
intent
Material prejudice
Bars all damages prior to suit
o Equitable estoppel
Conduct indicating no enforcement
Reliance + material prejudice
Reliance is key!
Bars all suits against particular infringer
Check slides for aquamine
Therasense case
Involves status of arguments made before the European patent office in an opposition heainrg
Statements involved a prior patent on the same technology claimed in the aptent at issue in the federal
circuit case
What makes it patentable? They have an electrode with no intervening membrane and theyre the only one
without that; (accused device= diabetes testing)
Specification included dstamtent that lack of membrane was a preferred embodiment
They made two different representations one at EPO and one at USPTO
O One saying it is optional and the other saying it is not
O Is there enough to prove the attornery is trying to deceive the PTO and we should destroy the
patents?
2 tests
O specific INTENT to deceive the PTO
O materiality
sliding scale
if this one reference that was not disclosed would bury the patent????
O But for this action the patent would not have issued= new standard?
Majority- intent
O Must show specific intent to device PTO (this is hard because you have to prove it)
Negligence is not enough
THERE IS NO SLIDING SCALE- high materiality cannot substitute for intent
Circumstantial evidence OK but must be single most reaonsable inference
O Multiple reasonable inferences- intent cannot be found
Patentee need not offer good faith explanation
O Burden on party alleging deception
Rarely used doctrine when it used to always be used- really hard to do this
Majority-materiality
Rejected PTO rule 56 standard
O Overly broad and set a low bar for materiality
Adopted a but-for standard
O Exception for affirmative egregious misconduct
Have to show you knew it was relevant and chose not to tell the PTO
Pre- Therasene examples!
O First one
Is not)
O Burying
Unless you can show it is happening- the inference alone is not inequitable conduct
O Last 2 are inequitable conduct- you could get in trouble
The aftermath: Therasense on remand **** COPY SLIDE
O Intent
Specific intent to deceive PTO
singl
O materiality
Aftermath of Lawrence Pope
O THIS IS A SCARLET LETTER
PATENT ATTORNEYS HATED THIS DOCTRINE AND ESSENTIALLY KILLED IT
Claritin- What a drug should do
Took 11 year fro FDA approval and then you recoop costs during this window??????
While patented made 3 bilion a year, still making money w/o patent
o 1: Drug discovery and development
o 2: pre-clinical trial
o 3: Clinical trials
Takes years and is very expensive
This is an investigational new drug application
o 4: FDA Review
o 5: Post Market Surveilllance
When they can get sued for drugs that area approvaed but are actually not safe
o Only big companies with losts of money can do this
35 USC 271(e)- hatch Waxman act- agreement relating to drugs
drugs get longer lifespan inexchange for the abbreviated new drug application
prior to the act you had to wait until patent expired to start experimenting in ways that infringe
o the act says people can piggyback off of data if they prove drug is similar in structure to the drug
that exists to save money on new tests
the extension is extra time depending on how long the FDA takes
patent usually files around pre-clinical trials ; now people file as soon as ready
Merck v. Integra Lifesciences
o Cancer creates tons of blood vesseas and takes fluid to feed tumors, if body restricts this the tumor
cannot grow as well
o 271e case
o debate: = under 271 e to be reasonably related has to be under an ADNA filing
o SCOPE OF 271(E) VERY BROAD
allows exception for infringement of all uses
o used to be only ANDA/// now anything used for ANDA???
o Negative information- that it does not work
This is also reasonable
Madey v. Duke- no one could perform but him or selse the patent is infringed; the
experiments were his patent
o No legislative purpose to punish those just trying to develop knowledge justice Story (precedence)
o Duke not under exception b/c it can only be used for amusement or philosophical inquiry
so long as the act is in furtherance of the alleged infringers legitimate business
you do not get experimental use exception b/c Duke is making money
NEVER found case- getting someone out of infringement
o Common law version= dead
o 271e has life in drug business
o academic institutions do not fall under this
class twenty three- inequitable conduct, experimental use
Therasense Justice Rader
Involves status of arguments made before the European Patent Office in an opposition hearing
Statements involved a prior patent on the same technology claimed in the patent at issue in the Federal
Circuit case
Claim 1, 551 Patent
Accused Device
Prior Abbott patent: 4,545,382
Specification included statement that lack of membrane was a preferred embodiment:
Optionally, but preferably when being used on live blood, a protective membrane surrounds both the
enzyme and the mediator layers, permeable to water and glucose molecules.
Abbotts Representations to the PTO Dr. Gordon Sanghera- [O]ne skilled in the art would not read
lines 63 to 65 of column 4 of U.S. Patent No. 4,545,382 to teach that the use of a protective membrane with
a whole blood sample is optionally or merely preferred.
Lawrence Pope, esq.- One skilled in the art would not have read the disclosure of the [382 patent] as
teaching that the use of a protective membrane with whole blood samples was optional.
Abbotts Representations to the European Patent Office It is submitted that this disclosure [of the
382 patent] is unequivocally clear. The protective membrane is optional, however, it is preferred when
used on live blood in order to prevent the larger constituents of the blood, in particular erythrocytes from
interfering with the electrode sensor.
MAJORITY- INTENT
Must show specific intent to deceive PTO
o Negligence not enough
No sliding scale
o High materiality cannot substitute for intent
Circumstantial evidence OK, but must be single most reasonable inference
o Multiple reasonable inferences - intent cannot be found
Patentee need not offer good faith explanation
MAJORITY MATERIALITY
Rejected PTO Rule 56 standard
o overly broad and set a low bar for materiality
Adopted but-for standard
o Exception for affirmative egregious misconduct
Equitable Defenses
Inequitable conduct
o Duty of Candor
Pre-Therasense Examples:
o Failure to cite a known prior art reference (unless it is cumulative of those already cited)
o Burying a material reference in a stack of irrelevant information
o Submitting false or misleading declarations relating to dates of invention and enablement
o Failure to disclose offers for sale and public uses relevant to 102(b) statutory bars
The aftermath: Thereasense on remand
1. Intent
a. Specific intent to deceive PTO
b. Single most reasonable inference
2. Materiality
a. But/for standard
35 U.S.C. 271(e)
(1) It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into
the United States a patented invention ... solely for 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.
to be Attributed to- the contract needs to bind the other party , not merely describe the
services offered
do you have enough control in the situation that you get responsibility- CONTROL
lots of people come out differently- it is all about control
direct infrginement is different from inducement; if there is no direct infringement we do not get to
inducement
o if yes theres infringement then you can move to say who induces them
Damages
Money Damages- class twenty four- 11/18
35 U.S.C. 284 (Nard 978);
Nard 889, 895-919
DAMAGES
1.What are the requirements for proving lost profits in patent cases?
1. WHAT WOULD PROFITS HAVE BEEN ABSENT INFRINGEMENT
a. How many sold aand stuff about you the infringer desnt matter just matters how mnay did
you stop me from selling?
b. Lost profits dont have to be tied to infringement- case w/ recovery for unpatented item
c. Is there an infringement? If YES- we dont care how much of sales were of patented vs. not///
we only care how much sales did we lose from their infringement
d. Have to find a comprable license to get reasonable royalties; otherwise must depend on lost
profits
2.What are the parameters of the reasonable royalty evaluation?
2. NEGOTIATION PRE-INFRINGEMENT. MUST BE ABLE TO DEMONSTRATE RATIONALE
FOR DAMAGE AWARD.
3.What are some evidentiary problems with proving reasonable royalties?
Secret licenses (most licenses are secret). TRYING TO PROVE A NEGOTIATION THAT DIDNT
HAPPEN WOULD HAVE HAPPENED. MULTIPLE FACTORS- NONE PREDOMINATES.
DAMAGES
Monetary Damages
Actual damages: Lost Profits
Reasonable royalty
Injunctive Relief
Preliminary
Permanent
35 U.S.C. 284-[T]he court shall award [the patentee] damages adequate to compensate
for the infringement but in no event less than a reasonable royalty for the use made of the
invention by the infringer.
Timeline
Starts- date of issuance of patent
Complaint filed in district court
Preliminary injunction hearing
o Cant get damages for dates after this
Final injunction issues
Damages assess if marking (or actual notice) to infringers about your patent (issuance of patent until
preliminary injunction hearing)
o Damages start when they have notice of your patent and that they may be infringing
AFTER preliminary injunction= prospective effect
o Reasonable royalty until certain time period or until patent ends
35 USC 284- damages adequate to compensate for infringement but in no event less than
a reasonable royalty for the use made of the invention by the infringer
LOST Profits
but for the defendants infringing sales, what would the patentees profits have been?
o How much did I lose because of that sale?
NOT a disgorgement remedy: a patentees loss, NOT infringers gain
Reasonable royslty- how much would he have paid if he had to ngotiate with meup front
Usually 2 small companies suing eachother
Accordingly, Justice Kennedy's comments support the conclusion that monetary damages would be sufficient to
compensate z4 for any future infringement by Microsoft.
Pg. 940 Edwards lifesciences v. corevalve, inc.
Edward lifescience manufacures little metal heartvalves
They didn't get the injunction but won money
Federal circuit- case law supports them getting an injunction
Fulfilled the 4 factor test almost exactly
o Loss of exclusivity (here this is important b/c the market is so small)
DIFFERENCES FROM EBAY PRACTICES THE INVENTION AND IS A DIRECT MARKET
COMPETITIOR
o This gets them an injunction
Vacated judgemenet and remanded it back to the district court
In a competitior type situation we typically give an injunction (THIS ALIGNS WITH THE FIRST
CONCURRENCE from the ebay case)
Ebay court did not cancel 35 usc 154 or overrule article 1 section 8
You get your rights in patent law and this is done through an injunction
If they move manufacturing to Mexico they are fine and not infringing; seems they had not moved to
Mexico
Pg. 942 Robert Bosch LLC v. Pylon Manufacturing Corp.
Window wiper blades Theyre both making these
Bosch wants the injunction (loss in market share and access to customers)
Pylon went to Bosch customers and is infringing on product (ie. Walmart)
Bosch- getting money is not enough
This is his patent so he has a right to enforce his patent, by excluding the other manufacturer
EBAY case abolished the general rule but does not make things happen the other way
THIS IS TENDENCY IN COMPETITOR CASES
EBAY CONCURRNECE (Kennedy, Stevens, Souter, Breyer)
Apply 4 factor test Kennedy- concerned if youre infringing just a small component
Bargaining poewer to ask for more money
If oyou give injunctin to a small entitity they get the bargaining power of a much larger entity
Z4 v. MICROSOFT - Product activation is a very small component of the products// monetary
damages are sufficient latching onto the concurrence from Kennedy
NO INJUNCTION HERE- just damages
If you have an injunction you can offer to seell them your rights for 90% of their profits
HAVE you patented the whole product or a small component????
Who is a troll? ?- HARD TO IDENTIFY WHO THEY ARE AND GET RID OF THEM
Research Institutions?
Former Research Companies?
Independent Inventors?
Technology Holding Companies?
Apple v. Samsung- (Fed. Cir. 11/20/13)- UTILITY PATENTS
1.Irreparable Harm
(1) that absent an injunction, patentee will suffer irreparable harm, and
(2) that a sufficiently strong causal nexus relates the alleged harm to the alleged infringement.
$1,000,000,000 in damages (subsequently reduced)
No injunction
As is seen from the visual comparison, there were noticeable differences between (1) the handle silhouettes, and
(2) the engraving, including the ribbing, curls, points, etc. Nevertheless, and despite these differences, the Court
found that the accused White products incorporated a design that was substantially the same as the patented
design.
Thus, from the outset, the Court has made clear that the design patent infringement test is not a minute analysis of
detail but rather a test that asks whether the overall appearance of the patent and accused designs are substantially
same in the eyes of an ordinary observer. Id. at 528 (The purpose of the law must be effected if possible; but,
plainly, it cannot be if, while the general appearance of the design is preserved, minor differences of detail in the
manner in which the appearance is produced, observable by experts, but not noticed by ordinary observers, by
those who buy and use, are sufficient to relieve an imitating design from condemnation as an infringement.)
PRIOR ART- Egyptian Goddess v. Swisa- whether an ordinary observer, familiar with the
prior art, would be deceived into thinking that the accused design was the same as the
patented design. Egyptian Goddess at 681
Judge Bryson- In light of the similarity of the prior art buffers to the accused buffer, we conclude that no
reasonable fact-finder could find that EGI met its burden of showing, by a preponderance of the evidence,
that an ordinary observer, taking into account the prior art, would believe the accused design to be the same
as the patented design.
The Federal Circuits 2008 en banc decision in Egyptian Goddess is instructive on the limits that prior art
can place on the scope of design patents. Egyptian Goddess v. Swisa, 543 F. 3d 665 (Fed. Cir. 2008). In
Egyptian Goddess, the court abrogated the nettlesome point of novelty test, and in its place laid down a
rule requiring that the ordinary observer test be conducted, not in a vacuum, but rather in view of the prior
art. A visual analysis of the closest prior art, the patented design and the accused product is set forth below.
Here, the court felt that the prior art was quiet close in appearance to the patented design and thus the
difference between the patented and accused designs were accentuated. Ultimately the court concluded: In
light of the similarity of the prior art buffers to the accused buffer, we conclude that no reasonable factfinder could find that EGI met its burden of showing, by a preponderance of the evidence, that an ordinary
observer, taking into account the prior art, would believe the accused design to be the same as the patented
design. To stay true to the edict of Egyptian Goddess, before giving advice on the issues of infringement,
practitioners should always collect the prior art on the face of the design patent (at minimum), and use this
art as a frame of reference when conducting the ordinary observer analysis.
******************
DESIGN PATENT= COPYRIGHT/ TRADEMARK HYBRID NO SUBJECT MATTER LIMITS
Design of useful articles- 35 usc 171
Requirements for protection
- 102- novelty (is design new as a whole; with a new observer perspective- not same as PHOSITA (lower
standard))
- 103 non-obiviousness- like PHOSITA
- ornamentality/ nonfunctionality- new standard- cant be governed for function only
o cant be functional; must be ornamental (this is a copyright issue)
- 112- written description
- process- same PTO process w/ examiner (you can fihgt back on examiners opinion and then they allow or
don't)
- get 14 years from the grant (not 20 like other patents) ** 15 years NOW
David Kappos, Design: The New Frontier of Intellectual Property, National Law Journal, Apr. 22, 2013
D. 624,501 a dual USB adapter owned by Ever Win International. Ever Win's product is available from
Amazon for $20 and is allegedly being infringed by similar devices being sold at CVS and other locations.
Ever Win Intl. Corp. v. CVS Corp., No. 2:12-cv-09594 (C.D. Ca. Nov. 8, 2012)
Plaintiff Ever Win filed suit against CVS alleging infringement of U.S. Design Patent No. 624,501 for a
Dual USB Active Cigarette Lighter Adapter Plug. Ever Win accuses CVSs Duracell Dual Mini USB
Car Charger, Model No. DU6117. Below is a comparison of the 501 Patent with the accused product as it
appears on the internet:
-
Mr. BD Kidd has sued Home Depot and others for infringing his Patent No. D.646,537 covering a crimping
tool that fits in your pocket.
Nebo's No. D.659,869 covers these funky flashlights that are allegedly being infringed.
Jugs Inc. owns No. D.451,566 that covers a five-position batting practice tee that is allegedly being
infringed by Wilson's and others. Wilson's has asked for a declaratory judgment of invalidity alleging that it
began using its version of the product (shown in yellow) in 1996, five years before the patent's 2001
priority date.
.
Oakley has again asserted its D. 397,350 that covers eyeglass fronts.
Lulumon has asserted its Design Patent No. D.645,644 against Calvin Klein. Klein immediately caved.
-if claimed or accused deisgn is closer to each other than prior art (d1 <d2) infringement is more likely
- if claimes or accused design is closer to prior art than each other d2 <d1 infringement is less likely
- if its like design= infringes; it like prior art= on infringement
These are very subjective- discussing images and why similar or not (prioritizing hollowness versus number
of sides)
Braun-Claiming infringement of the shape of their tool
Are lower holes functional ?
This was found to infringe
All youre doing is comparing pictures for similarities
Sugar on pretzel- would infringe salted pretzel patent
The whole claim is the picture
If you can show functionality doesn't infringe
D889- border with slight difference around edge and corners (biffled/ buffled?)
If there is any function at all this is not ornamental
there is clearly substantial evidence to support the jury's finding of infringement. In arguing that the jury
erroneously determined that it infringed Braun's design patent, Waring relies on certain differences
between its design and Braun's design. However, examination of Braun's and Waring's respective designs, in
addition to the blenders themselves, tells us a jury could reasonably find they are, when viewed as a whole
and compared to pre-existing hand held blenders, similar. FN8 For instance, in contrast to pre-existing hand
held blenders, which had a utilitarian, mechanical appearance, both Waring's blender and Braun's blender
share a fluid, ornamental, aerodynamic overall design. The shafts of both blenders are encased in a housing
that gradually tapers away from the motor housing. The top portion of each blender, when viewed from the
front, is tapered at the top to integrate the handle into the motor housing. The shaft housing of each blender
gradually expands to form a blade housing, which is punctured by four elongated, essentially rectangular
ports.
Crocs- A side by side comparison- would ordinary person be confused? Is it more like
patented design or prior art?
http://www.theordinaryobserver.com/2010/04/itc-v-crocs.html
There are a few noteworthy aspects of this decision. First is the Federal Circuits enthusiasm for
discouraging the reliance on overly-detailed verbal descriptions of designs. It seems misdirected here. The
issue is not that the claim construction was overly detailed; the fatal flaw with the ITCs decision was that
the finding of infringement was premised on a claim construction that was just plain wrong, at least with
respect to the strap of uniform width and the evenly-spaced holes.
Furthermore, the court did not remark on other less-than-optimal phrases in the claim construction. How
can a design feature be an element of a claim if it "may or may not" be present? What limitation does a
"systematic pattern" of hole placement really add? It would be interesting to know how the ITC would have
ruled had its claim construction been a bit more accurate and precise.
In my opinion, the court got at least part of the infringement analysis wrong. Compare, for example, the
Crocs patent (left) with the accused "Effervescent" product (right):
The court found that the Effervescent product infringed the Crocs patent. But I think the oversized
rectangular holes on the upper of the Effervescent product clearly avoid deception. Almost everything about
the Crocs design is rounded, swooping, and curved. Even the court noted that fact:
[An] overall effect of the design is a visual theme of rounded curves and ellipses throughout the design,
including the strap forming a sort of continuation of the sidewall of the base to create a visually continuous
ring encircling the entire shoe. Other examples of rounded curves or ellipses in the design are the ellipses
formed by the strap and the foot opening in the base.
I just dont see how the court can find that the Effervescent product (with its large rectangular holes on the
upper) is deceptively similar to the overall appearance of the Crocs design, which the court acknowledges is
a "visual theme of rounded curves and ellipses" including small round holes on the upper.
Finally, if you looked up the section of the Tariff Act referenced by Judge Rader in the first sentence of the
opinion, you may have noticed that it was repealed over 80 years ago. This is a typo. Section 337 was
originally encoded at 19 U.S.C. 337 (the section cited by Judge Rader), but that section was repealed, and
Section 337 was amended to its current form and moved to 19 U.S.C. 1337.
D677
Obviousness: High Point v. Buyers Direct- Judge OMalley- The ultimate inquiry in an
obviousness analysis is whether the claimed design would have been obvious to a designer
of ordinary skill who designs articles of the type involved.
o Fuzzy Babba (accused infringer)
o Prior Art and D183 Patent
[Federal Circuit] precedents teach that the ultimate inquiry under section 103 is whether the claimed design
would have been obvious to a designer of ordinary skill who designs articles of the type involved. Durling v.
Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (citing In re Rosen, 673 F.2d 388, 390 (CCPA 1982)).
Durling explains that this general principle translates into whether one of ordinary skill would have combined
teachings of the prior art to create the same overall visual appearance as the claimed design, id. (citing In re
Borden, 90 F.3d 1570, 1574 (Fed Cir 1996)), and that this in turn requires that one must find a single reference, 'a
something in existence, the design characteristics of which are basically the same as the claimed design.' Id.
(quoting In re Rosen, 673 F.2d at 391). Once the primary reference is found, other secondary references may be
used to modify it to create a design that has the same overall visual appearance as the claimed design. Id. Further,
these secondary references must be 'so related [to the primary reference] that the appearance of certain ornamental
features in one would suggest the application of those features to the other.' Id. (quoting In re Borden, 90 F.3d at
1575 (alteration in original)). Titan Tire Corp., supra, at 1380-1381.
For design patents, the role of one skilled in the art in the obviousness context lies only in determining
whether to combine earlier references to arrive at a single piece of art for comparison with the potential
design or to modify a single prior art reference. Once that piece of prior art has been constructed,
obviousness, like anticipation, requires application of the ordinary observer test, not the view of one skilled
in the art. Intl Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009)
For design patents, the role of one skilled in the art in the obviousness context lies only in determining whether to
combine earlier references to arrive at a single piece of art for comparison with the potential design or to modify a
single prior art reference. [footnote 5]. Once that piece of prior art has been constructed, obviousness, like
anticipation, requires application of the ordinary observer test, not the view of one skilled in the art. Int'l Seaway
Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009).
[footnote 5 to above quote] That combination or modification would not necessarily yield a single piece of prior
art identical to a patented design since there may be no motivation to change the prior art to achieve such identity.
Intl Seaway Trading Corp., supra, at 1241.
[A] person of ordinary skill in the art, or stated otherwise, a designer of ordinary capability who designs articles
of the type presented, id., 1 USPQ2d at 1663 (citing In re Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782, 784
(CCPA 1981)), need not necessarily study the prior art in order to understand the potential use of a symmetrical
design. In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir. 1992). In a field of art where products are deliberately
designed as asymmetrical in order to create distinctive, memorable images, it would have been obvious to one of
ordinary skill in the art to create a "normal" or symmetrical orientation for a design. Id. at 1038, 1039 (citing Cf.
In re Wilson, 52 C.C.P.A. 1394, 345 F.2d 1018, 1020, 145 USPQ 558, 559 (CCPA 1965) (pleasing symmetry is not
nonobvious where it represents no more than obvious symmetry with convenience in mind).
1. We hold that the district court erred in finding that the Fidler tablet created the same visual
impression as the D889 patent. A side-by-side comparison of the two designs shows substantial
differences in the overall visual appearance between the patented design and the Fidler reference:
2. First, the Fidler tablet is not symmetrical: The bottom edge is noticeably wider than the others.
More importantly, the frame of the Fidler tablet creates a very different impression from the
unframed D889 design. In the Fidler tablet, the frame surrounding*1331 the screen contrasts
3.
4.
5.
6.
7.
sharply with the screen itself. The Fidler screen appears to sink into the frame, creating a picture
frame effect and breaking the continuity between the frame and the screen embedded within it. The
transparent glass-like front surface of the D889 patent, however, covers essentially the entire front
face of the patented design without any breaks or interruptions. As a result, the D889 design creates
the visual impression of an unbroken slab of glass extending from edge to edge on the front side of
the tablet. The Fidler reference does not create such an impression.FN5
FN5. By its use of oblique lines, the D889 patent indicates that the front surface of the device is
reflective and glass-like. See Manual of Patent Examining Procedure 1503.02 (8th ed. 2006)
(Oblique line shading must be used to show transparent, translucent and highly polished or
reflective surfaces....).There are other noticeable differences between the Fidler tablet and the D
889 patent that contribute to the distinct visual appearance of the two designs. Unlike the D889
patent, the Fidler reference contains no thin bezel surrounding the edge of the front side.
Additionally, one corner of the frame in the Fidler reference contains multiple perforations. Also in
contrast to the D889 patent, the sides of the Fidler reference are neither smooth nor symmetrical; it
has two card-like projections extending out from its top edge and an indentation in one of its sides.
And the back of the Fidler reference also conveys a visual impression different from that of the D
889 design.
In design patent obviousness analysis, a primary reference must be something in existence, the
design characteristics of which are basically the same as the claimed design in order to support a
holding of obviousness. In re Rosen, 673 F.2d at 391 (concluding that two glass coffee tables were
significantly different in concept because the primary reference does not give the same visual
impression of lightness and suspension in space conveyed by appellant's table). Based on the
differences between the Fidler tablet and the D889 design, we hold that the Fidler tablet does not
give the same visual impression as the D889 patent, and therefore the district court erred in looking
to Fidler as the primary reference against the D889 patent.
[10] Even assuming that Fidler qualified as a primary reference, the TC1000 secondary reference
could not bridge the gap between Fidler and the D889 design. First, while the TC1000 has a flat
glass front, the screen area of that device is surrounded by a gray area that frames the screen. In
addition, the perimeter of the TC1000 is encircled by a wide rounded-over metallic rim. And the
screen area contains indicator lights in several places, unlike the minimalist design claimed in the D
889 patent. [T]he teachings of prior art designs may be combined only when the designs are so
related that the appearance of certain ornamental features in one [design] would suggest the
application of those features to the other. In re Borden, 90 F.3d at 1575, quoting In re Glavas, 43
CCPA 797, 230 F.2d 447, 450 (1956). The TC1000 is so different in visual appearance from the
Fidler reference that it does not qualify as a comparison reference under that standard. See In re
Rosen, 673 F.2d at 391 (rejecting the primary reference where modifications of [it] necessary to
achieve [the patented] design would destroy the fundamental characteristics of that reference).
Samsung contends that the district court properly focused on overall visual appearance rather than
on the design concepts highlighted by Apple. In our assessment, however, the district court's error
was to *1332 view the various designs from too high a level of abstraction. Fidler does not qualify
as a primary reference simply by disclosing a rectangular tablet with four evenly rounded corners
and a flat back. See Durling, 101 F.3d at 104 (The error in the district court's approach is that it
construed [the] claimed design too broadly.). Rather than looking to the general concept of a
tablet, the district court should have focused on the distinctive visual appearances of the reference
and the claimed design. Id. When those visual impressions are compared, it becomes apparent that
the Fidler reference, with or without the TC1000, cannot serve to render the D889 patent invalid for
obviousness.
In the alternative, Samsung urges us to consider several other tablet and tablet-like designs as
suitable primary references. All of those references consist of rectangular designs with rounded
corners dominated by a display area. But those designs all suffer from the same problems as the
Fidler reference, because all of them show either a thick surrounding frame in which a display is
embedded or contain extensive ornamentation on the front of the tablet. The offered designs do not
create the same visual impression as Apple's claimed design and thus do not qualify as primary
references. In the absence of a qualifying primary reference, we hold that the district court erred in
concluding that there is likely to be a substantial question as to the validity of the D889 patent.FN6
See Durling, 101 F.3d at 105.
8. FN6. Our holding that the alternative prior art references do not invalidate the D889 patent is
limited to our evaluation of the record at this preliminary stage of the litigation.
Invalidity due to functionality is an affirmative defense to a claim of infringement of a design patent, and
must be proved by the defendant at trial. See LA. Gear, 988 F.2d at 1123.
A VARIETY OF TESTS (AND SUBTESTS)
Good Sportsman Marketing LLC v. Li & Fung Ltd.- Not Reported in F.Supp.2d, 2010 WL 2640385E.D.Tex.,2010.- June 29, 2010
The district court found [t]he overall configuration of these four elements is dictated by the functional
purpose of the tool and therefore is not protected by [Richardson's] design patent. 610 F.Supp.2d 1046,
1050 (D.Az.2009) (emphasis added). The court did not, however, eliminate from the patent the handle,
hammer-head, jaw, or crowbar. On the contrary, the court held the patent included ornamental qualities
including the standard shape of the hammer-head, the diamond shaped flare of the crow-bar and the top of
the jaw, the rounded neck, the orientation of the crowbar relative to the head of the tool, and the plain,
undecorated handle. Id. The court also recognized that, although the teeth of the jaw were functional, the
particular number and size of teeth can be altered without adversely affecting that function and thus
Richardson's choice in those respects can reasonably be said to be dictated by ornamental considerations.
Id. at 105051. On appeal, the Federal Circuit affirmed this construction, likewise observing function
dictated the configuration of the tool. 597 F.3d at 1294 (observing the relative locations of the jaw,
hammer-head, crowbar, and handle were dictated by function). Like the district court, the Federal Circuit
did not completely eliminate those components from the claimed design and leave an empty figure. Indeed,
both courts engaged in infringement analyses after performing their constructions and neither found the
patent invalid. See 597 F.3d at 129496, 610 F.Supp.2d at 105152; cf. Lee v. DaytonHudson Corp., 838
F.2d 1186, 1188 (Fed.Cir.1988) (observing if the claimed design is primarily functional rather than
ornamental, the patent is invalid (quoting Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238
(Fed.Cir.1986))).
Relying on its reading of Richardson, Defendant identifies four primary components of the claimed design:
1) the clip; 2) the head lamp, containing the light and battery; 3) the on-off switch on the headlamp; and 4)
the flexible wire. Def.'s Resp. at 47. Defendant argues each component is primarily functional and
contends they should be wholly factored out of the claim. Id. at 1011. [T]he fact that [an] article of
manufacture serves a function is a prerequisite of design patentability, not a defeat thereof. Hupp v.
Siroflex of Am., Inc., 122 F.3d 1456, 1460 (Fed.Cir.1997). A design is only functional and invalid when the
appearance of the claimed design is dictated by the use or purpose of the article. L.A. Gear, 988 F.2d at
1123. If the particular design is essential to the use of the article, it can not be the subject of a design
patent. Id. However, [w]hen there are several ways to achieve the function of an article of manufacture,
the design of the article is more likely to serve a primarily ornamental purpose. Id. Finally, the utility of
each of the various elements that compromise the design is not the relevant inquiry.... The elements of the
design may indeed serve a purpose, but it is the ornamental aspect that is the basis of the design patent. Id.
*4 Contrary to Defendant's reading of Richardson, nothing compels the Court to wholly factor out any
element that serves a functional purpose. An article of manufacture necessarily serves a utilitarian
purpose. L.A. Gear, 988 F.2d at 1123. The utility of individual elements is irrelevant to the question of
functionality, as it is the design in its entirety that provides the basis for the patent. Id. When there are
several ways to achieve the function of an article of manufacture, the design of the article is more likely to
serve a primarily ornamental purpose. Id. While the identified components may have functions, they need
not be excluded simply because they perform functions, e.g., the clip need not be excluded because it
fulfills the clipping function, and the same rationale applies to the other elements. FN1
FN1. The Court expresses no opinion as to whether the patented design incorporates functional elements.
See PHG Techs., LLC v. St. John Cos., 469 F.3d 1361, 1365 (2006) (Whether a patented design is
functional or ornamental is a question of fact). Of course, where the overall design and configuration is
dictated by the function, those aspects are not the subject of the patent. See, e.g., Richardson, 597 F.3d at
1294; see also Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148, 109 S.Ct. 971, 103
L.Ed.2d 118 (1989) (holding a patentable design must present an aesthetically pleasing appearance that is
not dictated by function alone). Here, however, there is no evidence that the claimed configuration is the
only configuration for a clip on book light. The relative locations of the elements are not necessarily
dictated by the function of the article.
Having resolved the parties' functionality dispute, the Court finds the claimed design is best represented by
the illustration contained in the patent. See Egyptian Goddess, 543 F.3d at 679. As this Court has observed
in other design patent cases, [t]o provide a detailed verbal description as Defendant solicits would entail a
significant risk that the jury would place undue emphasis on particular features of the claimed designs or
otherwise focus on distinct features rather than on the designs as a whole. Dexas Int'l, Ltd. v. Office Max,
Inc., No. 6:07cv396, 2009 U.S. Dist. LEXIS 6642, at * 12 (E.D.Tex. Jan. 30, 2009). The Court may
provide guidance on other issues of claim scope and figure interpretation when instructing the jury.
Egyptian Goddess, 543 F.3d at 680.
10. Richardson decided some things are functional and some things are not. It's very difficult for
practitioners to look in their crystal ball and predict what the judge is going to say about certain
elements, Stockton said.
11. The varying tests for functionality that have emerged exemplify dysfunctions, Stockton argued.
12. When I look at these cases, I think a lot of them contain very bad language. One problem is
that there's a dearth of case law and so what happens is as cases carry on, a lot of dicta all of a
sudden turns into the rule of law and is followed. And I think there are a lot of unintended
consequences that come out. In the Richardson case, one thing that has driven me crazy since
the first moment I read the case is that the court is just not precise in its language, he said.
13. What the Heck ?
14. Citing phrases from decisions such as discounting functional elements, ignoring functional
elements, and factoring out functional elements, a palpably frustrated Stockton said: What
the heck does this mean?
15. Because the language is as not precise, you have the appeal board sort of struggling with
exactly what it's supposed to do, he said.
16. And it's not just the appeal board that is at a loss, Stockton said.
17. I think there is too much discretion given to district courts here. It's impeding our ability to
advise our clients, he said. And I think it's creating a lot of unnecessary litigation. You just
simply don't know where you are going to wind up. You don't know if you have a winner case or
a loser case. Hopefully we'll see some more clarity on functionality at some point.
18. Given the state of confusion in current law, he had this advice: Look at the tests. Look at the
timing of these things. Look at the vehicles and figure out what favors your client. I mean be
good lawyers. Always keep in mind alternative designs, which he said always seems to come
up despite what the test is. And remember, if you are going to assault functionality as an
accused infringer, the requirement for proof is higher. It's clear and convincing evidence versus
if it is brought up in construction.