advanced patent

7/30/2019 Advanced Patent

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Advanced Patent Law

Prof Cohen

Work phone 646-380-2084

Assistant 646-380-2087 (?)

Final: traditionally a take-home, open book final, will probably do the same now

The whole process:

Somebody calls you with an idea:

Ask:

What is your invention?

(do a conflicts check)

ask about relevant prior art do a google patent search.

Or: have a search firm do it.

Members of the public can go use search room at PTO officesElectronic search vs. manual search (Shoes look at patents chronologically)Electronic search lots of false positives.

Manual may miss references if they arent classified in the shoe youre looking in.

Electronic searches not all patents have full-text search (back to the 70s?)

Caveats about searches:

Wont find secret priority (i.e. pending applications)

Some applications arent published if you request to opt-out of publication

Some foreign patents wont be searchableSome prior art is in form of scientific articles, letters to the editor, etc.

Some is in form of public use, which wouldnt show up in search.Offers for sale, sales, etc wont be

Your inventors own work can be prior art if it is more than one year before filing.

Instead of searching, can also just file the application, and then the PTO does the

search.

There is no ethical or legal obligation to do a search. However, if you KNOW of a

reference, you must disclose it.

Why do a search?

Avoid paying a lot of fees if there is one knockout piece of prior art

Better claims up frontBetter application overall

So: inventor decides to do an application:

Provisional or non-provisional utility

Options:

3 categories, broadly, of patents


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utility: the way something works (method, structure, composition of matter)

provisional and non-provisional

provisional basically a placeholder, gets you filing date, just need enabling

disclosure, no claims. (mini-application) instituted in 1965within 12 mos, must file non-provisional application non-pro is entitled to earlier

filing date for any overlapping subject matter.-Gets you one extra year on patent term

-Easier to produce/submit than non-pro

-cheaper to produce/file

-year to test the market for the product

-can start to file the provisional while youre still perfecting

provisionals only become available to the public if there is a later non-pro that

claims priority of them

what is advantage to NOT filing a provisional, and filing a non-pro immediately?

-will get examined quicker

design: the appearance of something can be patented

so, what happens next?

Non-pro must have at least one claim

You get an office action: usually a rejection under 102, 103, and/or 112.

6 months to respond

must file a response w/in 6 months , or it becomes abandoned.

Can argue or make amendments.

Suppose the examiner rejects you again, and you get a final office action:

One option is an RCE: Request for Continued Examination pay fee, startsexamination over.

1/27/12

after RCE, PTO will issue another OA, prosecution continues, using the exact same

file you had before.

Another option continuation application get new serial numberSimilar to RCE, in effect, except you start over from the beginning

Another, terrible option filing new application lose priority, more referencescome in.

Another option file an amendment if that amendment puts claims in allowance,

then its over. Sometimes examiner will say if you do this, Ill allow it you can justget the claims allowed, and avoid paying any new fees.


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Disadvantage only have a 6 mo period if examiner doesnt allow them within 6

mo, app goes abandoned.

Another option file an appeal.Appeal to BPAI 3 administrative law judges in PTO will review your arguments.

(BPAI also does interferences, when 2+ people try to claim something at the sametime)

if BPAI rejects you one option is to appeal to the CAFCanother option is to appeal to the D.Ct. of DC (can then appeal to CAFC after).

After that, can appeal to the SC

Why appeal to DC court? -its a trial court can bring in new evidence (cant do that

in appellate court)

Why appeal straight to CAFC? Quicker, cheaper than doing 2 trials.

Suppose something goes well and you get a notice of allowance 3 months (non-

extendable) to respond

If you pay the issue fee you get a patent

Continuation why file one?

-can take patent with allowed claims while continuing to argue for other claims

can file a CIP to bring in new matter

can keep one application pending to always be able to claim early priority date

especially helpful if your original patent claims get invalidated during litigation

with a pending application, can file a new app

may want to get around restriction requirement you paid a fee that lets youpursue claims to 1 invention. file DIV

another option get a reissue (RE) if there are errors in the patent, you can

reprosecute

reexam and reissuereissue used to correct errors in an issued patent can do reissue at any time, butcan only do a broadening reissue within 2 years of issue

reexam look at again with new prior artthese have limitations, Continuations do not.

Continuations can be filed as a matter of right, RE and reexams cannot.


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Also during litigation use CON to pursue claims that cover the accused product,

to improve your position.

So, you have a patent issued how long do you have it for?20 years from earliest filing date (NOT counting PRO)

used to be 17 years from issue, changed June 8 1995 anything enforced as of thatdate, still uses 17 years from issue (anything pending PTO said you can use

whichever law is better for you)

everything filed after june 8, 1995 20 years from issue

good if you prosecute quickly bad if you prosecute slowly.

Why was it changed?

Bring US into line with the rest of the world

Prevent submarine patenting (like Lemelson)

Prevent continuation abuse

For Con patent term is calculated from the first date

PCT international patent treaty

Most countries are members

Why is it so powerful?

Section 119 Paris convention guarantee certain mutual rights among membercountries

Can file an application in a foreign country and get benefit of another countrysapplication, as long as you file within one year

Each country has different requirements

Each country has fees

An inventors own acts can bar his patent if they are more than one year before thepatent, for US patent

Most countries are much more strict than the US have absolute novelty or relativenovelty rule

Says you have to file app before you start selling invention, etc there is no graceperiod.

Current system PCT serves same purpose as Paris convention, but better

0 mo file priority app in any member country. Can be a US PRO or a China non-PRO


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12 mo file single PCT app claiming priority to earlier app preserves your rights in

every PCT country for 30 mo filed in receiving officefor our purposes Ch. I (request) US receiving office.

16 mo -

less fees up front

EPO covers all members of the EU

Administrative benefits - can only prepare one app

In US applicant is inventor

In other countries applicant can be corporation

2/3/12 PCT, continued

centralizes all administrative tasks just send stuff to one office.

ISA international searching authority many countries have one

PCT request chapter I

(PCT process starts with priority app or PCT app) all relevant dates are from the

earliest filing date)

16 months get an ISR international search report anything the examiner thinks

is relevant will be disclosed to you

18 months intl publication can decide to abandon between receipt of ISR and the

publication date.

ISR relevant documents are listedDifferent categories:

X = anticipatory (102)

Y = obvious when combined with 1+ other docs (103ish)

A = state of the art background refs, not to be worried about except maybe in

connection with a Y ref.

Cover page of publication lots of identifying info, classification, inventors, abstract,

a figure, etc

Lists designating states/regions in which rights are being preserved

Old way, not done anymore:Chapter II if you wanted to enter natl phase at 30 months, had to file a chapter IIdemand

19 months option of filing a chapter II demand get the full 30 month period ifyou file Chapter II demand by 19 months

if you didnt file a Chapter 2 demand then your deadline for entering natl phase

was 20 months.


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What is a chapter II demand?

Upon filing, examiner went on to do a further step like an office action

International Preliminary Examination

At this point Article 34 can amend claims, spec, drawing

20 months - Written opinion equivalent of first OA

if they think all are allowable, skip WO, go right to an IPER international

preliminary examination report

this report is not binding on countries, however no countries are obligated to

abide by the IPER, but many do.

April 1, 2002 PCT adopted System II

Elimination of the requirement of chapter 2 to get the full schedule

Change that any particular country had the right to adopt some countries adoptedthis, some didnt.

Remember 30 months is always from earliest effective date

Some countries give you an extra month if you file a chapter II request

PCT system III came into effect in January 2004

EISPE system apps filed on/after Jan 1 2004 (see powerpoint on Angel)

Chapter I

Chapter II

Flowchart

Designation system all-inclusive system as soon as you file PCT app, you get allthe countries

So, now weve discussed filing priority/PCT and going into the national phase

2/10/12

National phase in US:

Two options section 365, and section 371

371 allows you to go into national phase, directly says that I have a PCT app and Iwant that to go into US as national phase


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priority appPCTUS

365

brand new US non-pro, gets benefit of PCTs filing date, as a continuation of the PCT

requirements for claiming benefit:

1.same invention

2. same inventor (at least one, dont all have to be identical)3. co-pendency

4. reference to earlier application (have 4 months from date of app or 16 months of

the date of the app youre claiming priority to)

-if unintentional, can pay fee and get the date.

102e US patent is prior art as of its filing date, if it issues

if it is published, that patent publication is prior art as of its filing date

371(c)(1)(2) and (4) date

must fulfill four subsections of 371 to enter national phase:

1. national fee

2. copy of PCT app (unless already transferred)

3. amendments made to PCT app, if any

4. oath/dec

what happens under 102e?

Cunningham - US patent app filed July 13, 2007, issued Nov 1, 2009Discloses pencil and eraser, but only claims pencil

Somebody else - White files similar app on Sept 10, 2007Claims eraser

Can file declaration that he invented eraser before Cunninghams filing date

102e only applies to US published apps/patents

how do PCT apps work for 103? It depends. Also, the law has changed

see post on Angel from MPEP 706.02(f)

paragraph C

if the potential reference resulted from, or claimed benefit of PCT, the following

must be determined:

1. following 3 conditions met:

a. filed on/after 11/29/2000

b. designate the US

c. published in English


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if it satisfies these three things, then it qualifies as a 102e ref.

paragraph 2 if it doesnt fulfill all conditions dont treat it as 102e ref.

even if defective, may be 102a or b ref as of publication date (instead of filing date

so, 18 months later), or 102e ref as of any later US filing date of an application thathas properly claimed the benefit of the intl app.

If defective PCT app goes into national phase, the important date for 102e is the 371

date

Old law:

PCTUS natl phaseUS patent issued371 date

PCT---------

US CON----------US patent issued365 date

whenever you have a US CON filed everything forward of that has 102e)

significance (like in 365 app)

skipping D for the moment codifies the hillmer rule

2/17/12

Movie

2/24/12

Discussion of movie:

Experimental use of wiper? Did it need to be used in public?

-why not willful infringement?

INEQUITABLE CONDUCT

What is Inequitable Conduct?

Example not disclosing a material reference during PTO

Why is there a duty of omission?-youre under no burden to apply for a patent, but once you do, you have certainresponsibilities

-you are asking govt to take affirmative steps to enforce your rightsQuid pro quo duty of candor

-imbalance of information examiner (applicant? I think this should be applicant)knows much more than the PTO does about the invention prior art, uses, best

mode, etc


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-PTO is not supposed to be an adversarial system dialectic

-ex parte basis one party arguing before the patent office. Since there isnobody countering them, they have the duty of the other side, who would normally

tell them what the prior art is

-in litigation, you dont need to volunteer information to the other side

1. Nondisclosure1.56 patents have a relation to the public interest, which is best served by

disclosure of relevant materials.

Every individual associated with filing and prosecution of application

has this duty.

Duty applies to all material information material to claims

p. 1110-11 standard for materialityprima facie case shifts burden to applicant to show that claim is patentable

prima facie case compels conclusion under preponderance of the evidence

standard (>50%), BEFORE you look at the rebuttal argumentclaim is given the broadest possible reading consistent with the specification

make disclosures via IDS

this duty applies to claims until they are withdrawn from consideration, or cancelled

hypothetical case representing patentee in litigation against an infringer. Infringer

claims a reference was not disclosed to the PTO. You concede this.

They are looking for inequitable conduct need to show two prongs:1. Materiality2. Intent

Assume it is material argue that it was cumulative to the art of record, so it didntmake a difference

J.P. Stevens & Co v. Lex Tex (CAFC 1984) p. 1113 Inequitable conduct isbroader than common law fraud

Common law fraud requires 1. Misrepresentation of a material fact, 2. Intent to

deceive or a state of mind so reckless as to be the equivalent of intent, 3. Justifiable

reliance on the misrep by the party deceived, inducing him to act thereon, and 4.

Injury.

Inequitable conduct is broader than common law fraud-includes duties of commission and omission

-must prove materiality by clear and convincing evidence

Intent must intend to deceive PTO in order to get patentUnenforceability not only the claim at issue, but the entire patent is unenforceable,

even if the other claims are not related to the material reference

-even if claim is not shown invalid by the reference, it may be made unenforceable.


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Critikon v. Becton Dickinson Vascular Access (CAFC 1997) p. 1118 Intent

may be inferred from surrounding circumstances, even if there is no direct evidence.

Information is material to patentability when it is not cumulative to information

already of record or being made of record in the app, andit refutes or is inconsistent

with a position the applicant takes in asserting an argument of patentability. Not just

patent documents are material.

Stickless catheters

Critikon had Lemieux patent and Lemieux reissue patent sued Becton for

infringement

Becton claimed there was inequitable conduct 2 grounds

1. Critikon didnt provide McDonald patnet during prosec of original patent2. Critikon didnt reveal during the RE prosecution that there was litigation

going on in the original patent

Critikon said that McDonald patent was different, for 3 reasons CAFC rejects theirarguments.

They were obligated to disclose the reference and explain the difference to the PTO,

not wait for litigation

2. intent:

Critikon was well aware of Mcdonald patent

close cases should be resolved by disclosure, not unilaterally by the applicant

things should be disclosed, to avoid the issue.

INTENT:

Kingsdown Medical Consultants v. Hollister (CAFC 1988) p. 1128 To beguilty of inequitable conduct, one must have intended to act inequitably. Finding that

particular conduct amounts to gross negligence does not of itself justify an inference

of intent to deceive.

Patentee had a claim 50, which was rejected. They amended it, and it was held

allowable. They later submitted new claims in a continuation, and said that claim 43

corresponded to the old, allowable claim 50, where it actually corresponded to the

unamended, rejected claim 50.

Long story short no intent to deceive.

Issue, here: can gross negligence be sufficient to infer intent?

Held: no. they needed an en banc rehearing to overturn precedent

Used to have sliding scale had balancing test of intent and materiality to come up

with a final decision

3/2/11 THERASENSE AND LACHES


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Now, in Therasense, they say that it is a but-for standard as in, a claim would

likely not have been granted if the PTO had been aware of the reference.

Dissent thinks we should use the rule 56 standardPTO has a standard for materiality, why should the court be diverging from that

standard

Incentives that doctrine was intended to provoke

-if you only invalidate for inequitable conduct for things that would have prevented

patent from being granted anyway, then you remove the incentive to disclose stuff.

Materiality changed from clear and convincing standard to preponderance of the

evidence

Exception affirmative egregious misconduct but-for is not necessary

Also no more sliding scale both intent and materiality must be satisfiedindividually, and they dont affect each other

New standard for intentHowever, to meet the clear and convincing evidence

standard, the specific intent to deceive must be "the single most reasonable

inference able to be drawn from the evidence."

You can still infer intent, but it must be, really, the only reasonable inference.

Why did they need an en banc decision?

Overruling precedent

Important issue 80% of cases involved inequitable conduct, court felt it was beingabused.

PROSECUTION LACHES

Symbol Technologies v. Lemelson Medical (CAFC 2002) p. 1137 Even if it

wasnt wordfor word in the law, Congress intended to make available the defense of

prosecution laches.

Applications filed in 1954 and 1956 not issued for 40 years.

Court says that they waited too long

Look to Woodbridge and Webster cases

Woodbridge patent unenforceable where there was an unexplained 9 year delayWebster unreasonable 8 year delay rendered patent unenforcea ble

Intervening rights

Dissent says that if patent issues and they followed all the rules, there is a

presumption of validity, and you shouldnt be able to attack a statutorily sound

patent this way


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3/9/12 AMERICA INVENTS ACT

First to invent first to file

Eliminated all sections of patent statutes saying anything about prior to theinvention thereof

No more interferences

Can file in the name of a corporation, if rights have been assigned

Geographic provisions of new 102

-gets rid of some in this country language

Printed publication anywhere in the world could be used under 102a or 102b;

-information is more easily available anywhere in the world, now

Added otherwise available to the public language

What does available mean? What about public?What about old cases? They are still valid

Exceptions: under 102b

-If you publish something w/in one year of filing date, this isnt bar

Other countries some have absolute bar-same if somebody else published it but they got it from you

b)(1)(A)

new act abolishes Hillmer situations

swiss app Jan 1957

US app claiming priority Jan 1958Patented 1960

Other party filed in late 1957

So: when is priority date?

USPTO says that Swiss date is actual date

Courts say no. only gets US date of prior art

AIA says that reference has prior art date as of its filing date removes Hillmersituations

103

Now is obvious to PHOSITA at time of filing, used to be at time of invention

Filing date is critical inquiry under new 102 AND 103

103d) repals 104

Something used in foreign country could not be used in US proceeding

US interference practice events were given more significance if they occurred in

US than if they occurred in foreign country. This disadvantaged foreign applicants.


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Spawned caselaw that tried to mitigate this to some degree

1993 yrs ago NAFTA changed law any event in NAFTA country had samesignificance

1996 changed to put WTO countries on same levelAIA any distinction abolished

SIRs abolished invention was dedicated to the public

135 Derivation proceedingsLet somebody say that other inventor derived their invention from the other

1 year from publication date is deadline

What if two people file on the same day?

MYSTERY.

p. 11 can get dec from corp and not inventor

118

311 - Inter partes review v. 321 - post grant review (p 18 v p 23)

Generally, allow 3rd parties to come in and request review of a patent

So: what are the differences?

IP PG

102/103 on basis of prior art Anything under 282 paragraphs 2 or 3,

invalidity of patent, or any claim

w/in 9 months

Old law somebody could anonymously attack a patent. Now, the party attackingthe patent must disclose their identity

315 (a) cant file declaratory judgment actionAND do another action (cant

double dip)

(b) time limit on filing person being sued for infringement cant file for IP reviewafter 1 year from being sued.

(d) Director can consolidate/stay/whatever multiple actions.

(e) estoppel after written decision, in later action, cantraise again an issue

already raised, or that you could reasonably have raised.


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314 standard for IP reva) Must be likely that applicant will succeed on at least one claim (old standard:

reasonable question)

d) decision to grant/not grant IP review is not appealable. (318 if dismissed, then

this is not a written decision (?))324- Post-grant

a) Same standard except NO REBUTTALb) Can also show that there is an unsettled novel quesitn applicable to other

patents/apps.

317 settlements must be disclosed to the patent office. May be held confidential

319 strong indication that dismissal of IP review request is NOT a final writtendecision.

Can appeal to CAFC not to DC (?) DC is relitigation of entire case

p. 30 Patent Trial and Appeal Board

257 Supplemental Examination by patentee

-preempt challenger

-avoid charges of inequitable conduct

standard of review substantial new question

3/16/12

Supplemental examination procedure, continued

Old standard -

New standard

Several types:

Under old standard: patentee might be admitting materiality, inequitable conduct,

possible invalidity of claims

new and substantial question of patentability

New standard (in 257) believed to be relevant very neutral.

Director will indicate if there is a substantial question of patentability

Effect:

(c) EFFECT. (1) IN GENERAL.IN GENERAL.A patent shall not be held unenforceable

on the basis of conduct relating to information that had not been considered,


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was inadequately considered, or was incorrect in a prior examination of the

patent if the information was considered, reconsidered, or corrected during a

supplemental examination of the patent. The making of a request under

subsection (a), or the absence thereof, shall not be relevant to enforceability

of the patent under section 282.

-inequitable conduct is cured by requesting supplemental exam

Exceptions: (THESE ARE OLD STATUTES, CHECK FOR NEWER ONE)

A:

(A) PRIOR ALLEGATIONS.Paragraph (1) shall not apply to an allegation pled

with particularity in a civil action, or set forth with particularity in a notice received

by the patent owner under section 505(j)(2)(B)(iv)(II) of the Federal Food, Drug,

and Cosmetic Act (21 U.S.C. 355(j)(2)(B)(iv)(II)), before the date of a supplemental

examination request under subsection (a) to consider, reconsider, or correct

information forming the basis for the allegation.

-ex: patentee sues. Counterclaim includes allegation of inequitable conduct,because document X was not disclosed. Patentee then files request for supp exam,

B:(B) PATENT ENFORCEMENT ACTIONS.In an action brought under section

337(a) of the Tariff Act of 1930 (19 U.S.C. 1337(a)), or section 281 of this title,

paragraph (1) shall not apply to any defense raised in the action that is based upon

information that was considered, reconsidered, or corrected pursuant to a

supplemental examination request under subsection (a), unless the supplemental

examination, and any reexamination ordered pursuant to the request, are

concluded before the date on which the action is brought. (much narrower)

(e) FRAUD.If the Director becomes aware, during the course of a supplementalexamination or reexamination proceeding ordered under this section, that a

material fraud on the Office may have been committed in connection with the patent

that is the subject of the supplemental examination, then in addition to any other

actions the Director is authorized to take, including the cancellation of any claims

found to be invalid under section 307 as a result of a reexamination ordered

under this section, the Director shall also refer the matter to the Attorney General

for such further action as the Attorney General may deem appropriate. Any such

referral shall be treated as confidential, shall not be included in the file of the patent,

and shall not be disclosed to the public unless the United States charges a person

with a criminal offense in connection with such referral.

Ambiguities: A and B both mention civil actions, in some way, but have differenttimeframes.

What did the rules used to be?

P. 1099

Ex parte reexamination

Existed for a long time (inter partes only made in 1999)


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Old interpartes other party couldnt appealNew IP: they can.

Quantum Corp v. Rodime (CAFC 1995) p. 1102 cant broaden claims during

reexam, or you will get all of your claims canceled.(note that reexam puts entire patent at risk, but a reissue, if bad, just results in the

reissue being canceled and the original patent being reinstated.

Two new reviews: IP and post-grant

Other thing to know: sua sponte review Director of PTO can initiate review.

~10/year? Not many but they do happen.

Sec. 8 - Preissuance submissions by third parties

(1) IN GENERAL.Any third party may submit for consideration and inclusion in

the record of a patent application, any patent, published patent application, or other

printed publication of potential relevance to the examination of the application, ifsuch submission is made in writing before the earlier of

(A) the date a notice of allowance under section 151 is given or mailed in the

application for patent; or

(B) the later of

(i) 6 months after the date on which the application for patent is first publishedunder section 122 by the Office, or

(ii) the date of the first rejection under section 132 of any claim by the examiner

during the examination of the application for patent.

this doesnt require that the USPTO actually considerthe submission.

(2) OTHER REQUIREMENTS.Any submission under paragraph (1) shall

(A) set forth a concise description of the asserted relevance of each submitted

document;

(B) be accompanied by such fee as the Director may prescribe; and

(C) include a statement by the person making such submission affirming that thesubmission was made in compliance with this section.

SEC. 15. BEST MODE REQUIREMENT.

(a) IN GENERAL.Section 282 of title 35, United States Code, is amended in thesecond undesignated paragraph by striking paragraph (3) and inserting the

following:(3) Invalidity of the patent or any claim in suit for failure to comply with

(A) any requirement of section 112, except that the failure to disclose the best

mode shall not be a basis on which any claim of a patent may be canceled or held

invalid or otherwise unenforceable; or

(B) any requirement of section 251..(b) CONFORMING AMENDMENT.Sections 119(e)(1) and 120 of title 35, United

States Code, are each amended by striking the first paragraph of section 112 of this


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title and inserting section 112(a) (other than the requirement to disclose the best

mode).(c) EFFECTIVE DATE.The amendments made by this section shall take effect upon

the date of the enactment of this Act and shall apply to proceedings commenced on

or after that date.

Now: cant invalidate a patent for failure to disclose a best mode. Before, you could.

Didnt want people disclosing something that wasnt so good, but covered

something that was.

Why get rid of it?

Commonly used defense very subjective, difficult to litigate

Requirement technically still exists for applications, but its very weak, since theres

no penalty

SEC. 16. MARKING.(a) VIRTUAL MARKING.(1) IN GENERAL.Section 287(a) of title 35, United States Code, is amended by

striking or when, and inserting orby fixing thereon the word patent or the

abbreviation pat. together with an address of a posting on the Internet, accessible

to the public without charge for accessing the address, that associates the patented

article with the number of the patent, or when,.

(2) EFFECTIVE DATE.The amendment made by this subsection shall apply to any

case that is pending on, or commenced on or after, the date of the enactment of this

Act.

(3) REPORT.Not later than the date that is 3 years after the date of the enactment

of this Act, the Director shall submit a report to Congress that provides(A) an analysis of the effectiveness of virtual marking, as provided in theamendment made by paragraph (1) of this subsection, as an alternative to the

physical marking of articles;

(B) an analysis of whether such virtual marking has limited or improved the ability

of the general public to access information about patents;

(C) an analysis of the legal issues, if any, that arise from such virtual marking; and

(D) an analysis of the deficiencies, if any, of such virtual marking.

(b) FALSE MARKING.

(1) CIVIL PENALTY.Section 292(a) of title 35, United States, Code, is amended byadding at the end the following:

Only the United States may sue for the penalty authorized by thissubsection.. (2) CIVIL ACTION FOR DAMAGES.Subsection (b) of section 292 of title 35, United

States Code, is amended to read as follows:

(b)A person who has suffered a competitive injury as a result of a violation of

this section may file a civil action in a district court of the United States for

recovery of damages adequate to compensate for the injury..


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(3) EXPIRED PATENTS.Section 292 of title 35, United States Code, is amended by

adding at the end the following:

(c) The marking of a product, in a manner described in subsection (a), with

matter relating to a patent that covered that product but has expired is not a

violation of this section..

(4) EFFECTIVE DATE.The amendments made by this subsection shall apply to allcases, without exception, that are pending on, or commenced on or after, the date of

the enactment of this Act.

Marking: if you didnt mark, you could only collect damages after notice. Marking

was considered constructive notice, allowing for more damages.

Virtual marking new way of marking put link to free website on product, wheresite shows patent numbers

-allows for adding new patents later without changing packaging/product markings

False marking old provisions for qui tam actions 50% of money goes to you, 50%goes to govt.Cottage industry of false marking suits sprung up

Now: only US may sue for larger penalty

Only those actually injured may sue, for damages adequate to compensate for the

injury

Also, correctly marked but expired patents are no longer grounds for suit, because

anybody can go check if theyre still valid.

299. Joinder of parties

(a) JOINDER OF ACCUSED INFRINGERS.With respect to any civil action arising

under any Act of Congress relating to patents, other than an action or trial in whichan act of infringement under section 271(e)(2) has been pled, parties that are

accused infringers may be joined in one action as defendants or counterclaim

Defendants, or have their actions consolidated for trial, or counterclaim defendants

only if

(1) any right to relief is asserted against the parties jointly, severally, or in thealternative with respect to or arising out of the same transaction, occurrence, or

series of transactions or occurrences relating to the making, using, importing into

the United States, offering for sale, or selling of the same accused product or

process; and

(2) questions of fact common to all defendants or counterclaim defendants will

arise in the action.(b) ALLEGATIONS INSUFFICIENT FOR JOINDER.For purposes of this subsection,accused infringers may not be joined in one action as defendants or counterclaim

defendants, or have their actions consolidated for trial, based solely on allegations

that they each have infringed the patent or patents in suit.

(c) WAIVER.A party that is an accused infringer may waive the limitations setforth in this section with respect to that party..


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(2) CONFORMING AMENDMENT.The table of sections for chapter 29 of title 35,

United States Code, as amended by this Act, is further amended by adding at the end

the following new item:

299. Joinder of parties..

(e) EFFECTIVE DATE.The amendments made by this section shall apply to anycivil action commenced on or after the date of the enactment of this Act.

Gets rid of situation where only connecting thread for patent infringement suit is

that same patent was infringed, and many defendants were joined.

This makes it tougher for trolls to sue many defendants at once.

SEC. 18. TRANSITIONAL PROGRAM FOR COVERED BUSINESS METHOD

PATENTS.

(a) TRANSITIONAL PROGRAM.

(1) ESTABLISHMENT.Not later than the date that is 1 year after the date of the

enactment of this Act, the Director shall issue regulations establishing andimplementing a transitional post-grant review proceeding for review of the validity

of covered business method patents. The transitional proceeding implemented

pursuant to this subsection shall be regarded as, and shall employ the standards and

procedures of, a postgrant review under chapter 32 of title 35, United States Code,

subject to the following:

(way to challenge business method patents)

SEC. 5. DEFENSE TO INFRINGEMENT BASED ON PRIOR COMMERCIAL

USE.

(a) IN GENERAL.Section 273 of title 35, United States Code, is amended to read asfollows:

273. Defense to infringement based on prior commercial use

(a) IN GENERAL.A person shall be entitled to a defense under section 282(b)with respect to subject matter consisting of a process, or consisting of a machine,

manufacture, or composition of matter used in a manufacturing or other commercial

process, that would otherwise infringe a claimed invention being asserted against

the person if

(1) such person, acting in good faith, commercially used the subject matter in the

United States, either in connection with an internal commercial use or an actual

arms lengthsale or other arms length commercial transfer of a useful end result of

such commercial use; and(2) such commercial use occurred at least 1 year before the earlier of either

(A) the effective filing date of the claimed invention; or

(B) the date on which the claimed invention was disclosed to the public in amanner that qualified for the exception from prior art under section 102(b).

3/23/12 guest lecture


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Pharmaceutical industry lobbied for supplemental examination procedures way to

reexamine patents bought from smaller companies (caused by lack of drugs in

pipeline)

Estoppel for post grant review is broader than estoppel for inter partes review?

May be less risky to wait until after post-grant review period, and then do an interpartes review. (because PG allows for more things that you could have brought up

(?))PGR:The petitioner in a post-grant review of a claim in a patent under this chapter

that results in a final written decision under section 328(a), or the real party in interest

or privy of the petitioner, may not request or maintain a proceeding before the Office

with respect to that claim on any ground that the petitioner raised or reasonably could

have raised during that post-grant review.

IPR:The petitioner in an inter partes review of a claim in a patent under this

chapter thatresults in a final written decision under section 318(a), or the real

party in interest or privy of the petitioner, may not request or maintain a proceeding

before the Office with respectto that claim on any ground that the petitionerraised or reasonably could have raised during that inter partes review.

317: If the inter partes review is terminated with respect to a

petitioner under this section, no estoppel under section 315(e) shall attach to

the petitioner, or to the real party in interest or privy of the petitioner, on the basis

of thatpetitioners institution of that inter partes review.

Few derivations because they are usually university settings, try to settle those

things without getting lawyers involved universities dont have a lot of money

In September no more inter partes reexamination replaced by inter partes

review

181, 182, 183 petitions that make reexaminations difficult/more time-consuming

(lawyers do it a lotwhy?)

THRESHOLDS keep track of these for IPR, PGR, CBM (covered business method)and derivation

Must always identify real parties in interest to properly enforce estoppel

If you only have a 102/103 PA, maybe better to wait for IPR and not do PGR,

estoppel may be narrower for IPR-there has never been a case where estoppel has been a problem.

Can challenge claim by claim estoppel is done by CLAIM, so you can contain theeffect of estoppel

3/30/12 INVENTORS AND OWNERS


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Owner != inventor, necessarily

Inventors can assign their rights

Section 116 (already outdated in book)

1stparagraph:

Talks about joint inventorshipInventors may apply for a patent jointly even though

1. They did not physically work together or at the same time2. Each did not make the same type/amount or contribution3. Each did not make a contribution to the subject matter of every claim of the

patent

Implied in this the invention is the claim.

2nd paragraph:

If joint inventor refuses to join in an application or cannot be found/reached after

diligent effort, application can be made by other inventor on behalf of himself and

the omitted inventor. Can be added later.

Burroughs Wellcome v. Barr Laboratories (CAFC 1994) p. 1148 Test forconception is whether the inventor had an idea that was definite and permanent

enough that one skilled in the art could understand the invention. An inventor need

not know that his invention will work for conception to be complete; he need only show

that he had the idea.

Named inventors received assistance AFTER conception.

Here: no prolonged period of extensive research, experiment and modification

followed the alleged conception, just the usual clinical trials. Because the testing

confirmed the operability of the inventions, it showed that the BW inventors had a

definite and permanent idea of the inventions.

AZT drug that fights HIVBurroughs believed AZT would fight HIV

Feb 4, 1985 sent AZT to NIH (Broder)

Feb 6, 1985 had draft UK patent appFeb 20 NIH (Broder and Mitsuya) informs BW of results showing AZT fought HIV

UK app filed March 1985

US app filed Sept 1985

1987 get FDA approval to market AZT

1991 Barr seeks approval to manufacture generic AZT

BW sues b/c is act of infringement to seek FDA approval for patented drug

Barr had gotten license from NIH (Broder and Mitsuya)

Test for conception: whether the inventor had an idea that was definite andpermanent enough that one skilled in the art could understand the invention; the

inventor must prove his conception by corroborating evidence, preferably by

showing a contemporaneous disclosure.


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Barr argues: BWs conception was not complete without learning of results from

NIH duo would not have had a reasonable expectation of success without their testresults

Court says: nope. They had a good idea it would work, as evidenced by the UK

patent.

BW were screening it using mouse cells, NIH had a unique cell line, human cells

closer to testing in vivo

BW says that sending it to NIH was just verifying that it worked part of the

reduction to practice unrelated to the conception.

They already had a reasonable expectation of success.

an inventor need not know that his invention will work for conception to be

completehe need only show that he had the idea; the discovery that an invention

actually works is part of its reduction to practice.

Part not in book: Barr raises doctrine of simultaneous conception and reduction topractice some inventions, you cant even conceive of until you do it.

Ex: isolate the DNA responsible for production of insulin

-synthesis of chemicals

Court says: NIH scientists did not act merely as pair of hands

but because the testing confirmed the operability of the inventions, it showed that

the Burroughs Wellcome inventors had a definite and permanent idea of the

inentions.

Brown v. Regents of U. of C (A Cat Tale) (CAFC 1994) p. 1153 Named inventors received assistance BEFORE conception.

P had shelter for cats observed that several cats were exhibitingimmunodeficiency symptoms. Took detailed observations and told Pedersen that

she believed that her cats were infected with a virus like the human AIDS virus.

Pederson and a colleague eventually get patents on methods of isolating new virus,

and methods for detecting FIV in cats, and methods for vaccinating them against the

virus.

Court says: P is NOT a coinventor of these. As the patents cover biochemical

substances, they cannot have been conceived prior to their reduction to practice in

the lab of inventors. Patents were all for methods, so even if she led them to virus,she had nothing to do with the lab methods

Stark v. Advanced Magnetics (CAFC 1997) p. 1155 correction of inventorshiponly requires an inquiry into the intent of the NONJOINED inventor, not the named

inventors.

Start collaborated with AMI to develop MRI technologies claims he should have

been an inventor


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Section 256: permits correction of issued patents by application to the

commissioner, or in federal court.

Difference between 116 and 256: 116 is about application, 256 is about issued

patents

Misjoinder erroneously adding somebody as an inventorNonjoinder erroneously leaving somebody off as an inventor

They say that 116 requires lack of deceptive intent for both, but 256 requires lack of

deceptive intent for only nonjoinder NOTICE THE COMMA could have just been a

typo.

Congress has just changed the law, and eliminated the deceptive intent languagefrom both provisions. So, were moving on.

Eli Lilly and Co v. Aradigm Corp (CAFC 2004) p. 1164 clear and convincing

standard for proving inventorshipInvention was about aerosol delivery of lispro in lieu of insulin

Lots of circumstantial evidence about Eli providing Aradigm with information

Eli says they should only have to prove it by preponderance of the evidence

Court says no: standard is clear and convincing

Ethicon v. US Surgical (CAFC 1998) p. 1169

Contribution of any disclosed means of a means plus function claim element is a joint

inventor as to that claim, unless one asserting sole inventorship can show that the

contribution of that means was simplya reduction to practice of the sole inventors

broader concept.

Invention is a device that allows for safer surgical incisionsYoon asked Choi for help they worked on this invention for a while, then stoppedYoon got patent in his own name

Choi gave retroactive license to US Surgical

Ethicon sued US Surgical

Possible evidence of corroboration:

Drawings, e-mails, third party testimony (see p 1172)

Neither party disputes that Choi made the drawings

Yoons testimony/credibility was suspect

Now, after finding that Choi is a coinventor of 2 of 55 claims - he has an undivided

interest in the ENTIRE PATENT

Dissent: this is stupid.

Options:


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-Buyout

-File divisional: one with joint claims, one with individual invention (or whatever)

-Agreement for automatic assignment of both to company

-Agreement between coinventors even though patent law doesnt require foraccounting of profits, they can contract for this.

Retroactive license:

Choi cannot release U.S. Surgical from past damages, but the suit has to be dismissed

anyway because Choi refuses to join as plaintiff.

An action for infringement must include all owners as plaintiffs.

From POV of accused infringer:

-dont want other owners coming in later and suing you, again

From POV of absent co-owner:

-maybe present co-owner wont do as good a job-dont want validity of patent being litigated without his participation

4/20/12 Inventors and Owners

Waterman v. MacKenzie (US 1891) p. 1187 Waterman had patent on fountain pen. Assigned patent to his wife. Wife granted

husband an exclusive license to manufacture and sell. Next, she assigned patent to

Shpman.

Waterman sued MK for infringement. MK responded that Shipman was true owner

and Waterman had no standing.

Held: suit dismissed, Waterman was not true owner of patent.

Licenses v. assignments

Patentee may convey:

1. Whole patent2. Undivided part/share of that exclusive right3. The exclusive right of the patent within a specified part of the US.

Anything short of one of these is a license, giving the licensee no title in the patent.

Factors:

Can rights be transferred?

Does it convey all substantial rights?

What was reserved to transferor?


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Court determined that Shipman had title because she used it to mortgage a debt

this fit the characteristics of an assignment

Section 261 Patent Recording Statute

FilmTec v. Allied-Signal (CAFC 1991) p. 1191 For FT to be subsequent purchaser entitled to rights of protection under 261 Must

be in fact a purchaser for valuable consideration. Must be without notice of any

prior assignment.

US v. Dublier Condenser (US 1933) p. 1200 Somebody who invents something

during work, when they are not employed to invent such things, must assign shop

rights to the employer, but not the patent.

Shop rights: if somebody invents something using their employers space/tools, but

not in the scope of their employment, then the employer gets a shop right

basically a nonexclusive license. Employees are NOT obligated to assign theinvention to the employer, however.

inventors were working on airplane radios. They had idea related to applying

alternating current to broadcast receiving sets, which was not their groups task.

They completed it without getting instructions from employer.

employed to invent rights of patent should go to employer, if invention was

made in course of work.

Best practice- have agreement employment in case

Stanford v. Roche (CAFC 2011) on computer -HIV testing kit

Holodniy worked at Stanford, went to Cetus to learn PCR, signed agreement

assigning rights to Cetus. Cetus later sells rights to Roche.

Stanford then gets rights Does invention of contractor mean invention of contractors employees?

Better to have language saying I hereby assign than I will assign or I hereby

agree to assign (CAFC has upheld former) latter just gives equitable interest andnot actual title to rights

SC says: Stanford agreement agree to assign not good enough, Cetus agreement

hereby assign is good. Roche is valid part owner

Bayh-Dole actfederally funded patents, govt retain some rights

4/27/12 DESIGN PATENTS


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Design patents, in general: what are they?

Patents as to the way something looks, irrespective of the way it works

35 USC 171 - Whoever invents any new, original, and ornamental design for an

article of manufacture may obtain a patent therefor, subject to the conditions and

requirements of this title.The provisions of this title relating to patents for inventions shall apply to

patents for designs, except as otherwise provided.

Can you have a utility patent and a design patent on the same article? Yes.

Egyptian Goddess v Swisa (CAFC 2008) on computer

The patent claimed a design for a nail buffer, consisting of a rectangular, hollow tube

having a generally square cross-section and featuring buffer surfaces on three of its four

sides. Swisa's accused product consists of a rectangular, hollow tube having a square

cross-section, but featuring buffer surfaces on all four of its sides.

Different sides of the same buffers are different grits

Lower court:

-construed claims

-said that claim was not invalid for covering a functional purpose

-granted SJ of noninfringement to Swisa, noting that the plaintiff in a designpatent case must prove both

(1) that the accused device is "substantially similar" to the claimed design

under what is referred to as the "ordinary observer" test, and

(2) that the accused device contains "substantially the same points of novelty

that distinguished the patented design from the prior art."

said thatSwisa's allegedly infringing product did not incorporate the"point of novelty" of the '389 patent, which the court identified as "a fourth, bare

side to the buffer."

A design patent has one claim, claiming the drawings.

Claim construction in utlity, arguing what words mean

In drawing, explaining what pictures mean.

Next: appealed to CAFC, affirmed.- no issue of material fact as to whether the accused Swisa buffer "appropriates

the point of novelty of the claimed design."the point of novelty in a patented design "can be either a single novel

design element or a combination of elements that are individually known in the prior art."

CAFC granted hearing en banc:

asked the parties to address several questions, including whether the "point of

novelty" test should continue to be used as a test for infringement of a design patent;

whether the court should adopt the "non-trivial advance test" as a means of determining


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whether a particular design feature qualifies as a point of novelty; how the point of

novelty test should be administered, particularly when numerous features of the design

differ from certain prior art designs; and whether district courts should perform formal

claim construction in design patent cases.

Main case on design patents:Gorham Co. v White (SC)

Ordinary observer test:

the test of identity of design "must be sameness of appearance, and mere difference oflines in the drawing or sketch . . . or slight variances in configuration . . . will not destroy

the substantial identity."

the two need not be the same "to the eye of an expert," because if that were the

test, "[t]here never could be piracy of a patented design, for human ingenuity has never

yet produced a design, in all its details, exactly like another, so like, that an expert could

not distinguish them."

Gorham Court then set forth the test that has been cited in many subsequent cases: [HN2]

"[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usuallygives, two designs are substantially the same, if the resemblance is such as to deceive

such an observer, inducing him to purchase one supposing it to be the other, the first one

patented is infringed by the other."

HOWEVER:

in a series of cases tracing their origins to Litton Systems, Inc. v. Whirlpool Corp., 728

F.2d 1423 (Fed. Cir. 1984), [**12] this court has held that proof of similarity under

the ordinary observer test is not enough to establish design patent infringement.

Rather, the court has stated that the accused design must also appropriate the

novelty of the claimed design in order to be deemed infringing

so: Litton adopted the POINT OF NOVELTY TEST

did accused article adopt point(s) of novelty from the patented design.-test was hard to use if there were multiple points of novelty

-also hard to use if there were multiple references

This case was taken en banc to determine if they would keep the Litton test.

They dont.

What do they do instead?

heightened ordinary observer test three way test accused design, patented

design, prior art

OO who is familiar with the prior art

How does product fit in between patented design and the prior art?

If the accused design has copied a particular feature of the claimed design thatdeparts conspicuously from the prior art, the accused design is naturally more likely

to be regarded as deceptively similar to the claimed design, and thus infringing.

(this is a test for infringement, not validity)

Should trial courts conduct claim construction?

Criticism of claim construction in lower court decisions:


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-there is no better description of the drawings than the drawings themselves.

Translating them into words loses a lot.

In general: preferable not to give verbal descriptions of designs.

Some design patents have broken lines in them indicate that something is not part

of the claim.

Trade dress v. design patents kind of complementary

Both bar functionality

Timeframe is different design patent is 14 years from issue, trade dress is in

perpetuityPackaging trade dress v product configuration trade dress

Wal mart v samara slightly different standard

Packaging must show distinctiveness (on own, or acquired)

Product configuration, - must show secondary meaning (acquired

distinctiveness

You can have trade dress protection without registering, but you only get design

patent protection from the PTO

Hupp v SiroflexAlthough the design patent is directed to the ornamental aspect of a useful article, that the

design of a particular article is related to the article's use may not defeat patentability.When the design is primarily ornamental, although it also serves a utilitarian

purpose, this design patent condition is met. As explained inBonito Boats, Inc. v.

Thunder Craft Boats, Inc.,to qualify for design patent protection, a design must have

an ornamental appearance that is not dictated by function alone.

The fact that a product has function does not destroy the design patentability of the

patent. In fact, you need function.

Trade dress general appearance of a product.

Need to show secondary meaning acquired distinctiveness

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