smiley patents winter 2011

7/31/2019 Smiley Patents Winter 2011

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PATENT LAW WINTER 2011 (Professor Smiley)

I. INTRODUCTIONA. General

i. Patent K b/w inventor and government; inventor discloses invention in the patentand the government grants a 20 year monopoly from date of filing.

ii. The US uses a first to invent system; only the 1st inventor can obtain a patentregardless of whether a later inventor filed his application earlier.

B. Forms of Patent Protectioni. Utility Patents usual sort of patent, pertaining generally to technological products

or processes (processes, machines, manufactures, & compositions of matter)a. Governed by Patent Act of 1952 (Title 35 of USC)b. Requirements to be patentable:

1. Useful (utility - 101 requirement)i. Satisfied if invention is operable & provides tangible benefit

2. Novel (102 requirement)i. Not fully anticipated by a prior patent, publication, or other

knowledge within the public domain3. Nonobvious (103 requirement)

i. Not readily within the ordinary skills of a competent artisan atthe time the invention was made

c. Protection1. Max term of utility patent protection is 20 years from the date the

application is filed. 35 USC 154(a)(2)2. 271(a) Infringement - exclude others from making, using, selling,

offering to sell, or importing into the US the patented inventionii. Design Patents new, original, & ornamental design for an article of manufacture

(35 USC 171)a. Patent on the way something looks

1. Primarily ornamental in character2. Ex: car manufacturer gets design patent on new fender

b. All that is submitted are pages of views

c. Very little writing claiming the drawingsd. Cannot be something that is functionale. Ordinary Observer Test to determine infringement f. Term = 14 yearsg. D in front of patent # identifies design patent

iii. Plant Patentsa. Not important in this class

1. Ex: cross-pollination, etc.C. Other Forms of IP Protection

i. Trademarksa. Designation of Source something you see or hear that connects goods /

services with the source of those goods / services.1. Word, symbol, device or combination thereof

2. Governed by Lanham Act 15 USC 1127b. Can last forever1. May be extinguished through non-use or loss of distinctiveness

i. Ex: aspirinc. Dont necessarily have to file for TM registration, can have common law TM

protection locally1. May file with USPTO for additional advantages

d. Protects whoever uses it first1. Ex: Chicago Burger King ban around the local BK that was there

first.


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ii. Copyrightsa. May extend to any work of authorship

1. Ex: literary, musical, dramatic, choreographic, graphic, audiovisual,architectural, & sound recordings

b. Must be original created by THAT authorc. Exclusive right to make copies and distribute to publicd. Fair Use Privilege a defense that restricts the rights of copyright owner

1. Allows unauthorized use in such contexts as educational activities,literary and social criticism, parody and news reporting

e. Term = authors life PLUS 70 yearsiii. Semiconductor Chip Protection

a. Semiconductors (SC) get special protection under the SC Chip ProtectionAct of 1984

1. Allows a designer of new SCs to register them at copyright office,obtaining exclusive right to manufacture / distribute in US for 10yrs.

iv. Trade Secretsa. NOT in a public document

1. Ex: coca cola formula, recipe to KFC chicken, etc.b. Cant treat something as trade secret then decide to file for patent; 12

months to decide

c. Misappropriation1. Acquisition of a trade secret by a person who knows or should know

that the trade secret was obtained by improper meansi. Ex: theft, bribery, breach of duty, fraud, etc.

II. PATENT ELIGIBILITYA. 35 USC 101 defines subject matter that may be patented. (distinguish patent eligibility

from patentability which also requires novelty, nonobviousness, and full disclosure)i. Process

a. Definition: Series of acts which are performed upon subject matter toproduce a given result; or so the SM can be transformed & reduced to adifferent state or thing.

1. Mode of treatment of certain materials to achieve certain result

2. Result of inventive process need not be an invention itselfii. Machine

a. Definition: inventive apparatus or thing that does somethingiii. Manufacture

a. Definition: Production of articles for use from raw or prepared materials bygiving these materials new forms, qualities, properties, or combinations;whether by hand labor or by machinery.

iv. Composition of Mattera. Definition: all compositions of 2 or more substances and all composite

articles, whether they be the results of chemical union or of mechanicalmixture or whether they be gases, fluids, powders, or solids.

b. Living organisms are patentable but the inventors discovery m ust not occurnaturally in nature

B. NOT Patentable

natural laws, natural phenomenon, abstract ideasC. Biotechnology & Products of Naturei. Something found in nature is NOT patentable.

a. Distinguish b/w products of nature, living or not, and human made inventionswhich are patentable

ii. Living organisms ARE patentable if they dont occur naturally in naturea. Diamond v. Chakrabarty oil eating organism patentable; anything under

the sun made by man is patentable, including living genetically engineeredorganisms.

D. Computer Related Inventions & Methods of Doing Business


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i. A mathematical formula or algorithm having no substantial practical applicationexcept in connection with a computer can NOT be patented. (Gottschalk v. Benson)

ii. BUT, just because a claim uses a formula doesnt mean it isnt patentablea. Diamond v. Diehr process for curing rubber used well known equation but

method was uniquely applied with computer.1. Claims as a whole should be reviewed to determine patentability,

rather than focusing on whether claim contains formulas / algorithmsb. To be patentable, the algorithm must be applied in a useful way

iii. Business Method Patentsa. Mental steps are not patentableb. Claimed processes (including business methods) ARE patentable

E. Machine or Transformation Testi. Test for patentability of a processii. Definition:

a. Process is implemented with a particular machine or apparatus ORb. Process transforms an article from one thing or state to another

iii. Supreme Court has ruled that the machine or transformation test is NOT the sole testto determine whether a process is patentable. (Bilski v. Kappos)

a. No clear cut rule to determine patentability of processuse gut feeling todetermine if there is something patentable something novel / inventive.

III. UTILITYA. For utility to apply, it doesnt have to be better than anything else; it merely needs to benefit

society and not injure anyonei. Utility must be shown at the time of filingii. No need to show proven utility, sufficient to show a reasonable expectation of utilityiii. Initial burden is on PTO to reasonably rebut the presumptive assertion of utilityiv. Seldom litigated, mostly in chemical / biological cases (see below)

B. Requirements:i. Operable Utility actually works (does what patentee claims it will do)ii. Beneficial Utility benefits society; not socially harmful

a. Ex: cant patent a means to poison people b. Ex: cant patent new way to do cocaine

c. Ex: CAN patent new way to run brothel because it is legal somewhereiii. Practical / Specific Utility not only does it work, but it performs some function or

accomplishes somethinga. Low threshold, a patent to make something look like something else has

utility (Juicy Whip v. Orange Bang)1. Ex: cubic zirconium substituted for diamond

b. Cant avoid the requirement by making the use a paper weightc. Method does not have to be commercially practical; can probably patent a

very expensive process to cook chicken even though no one will ever use itC. Utility Requirement in Chemistry & Biotechnology

i. Utility plays an important role in these fields because new compounds are discoveredbut scientists arent quite sure what, if any, usefulness they will have

ii. There is not utility for a process that produces an unpatentable product.

a. Ex: new process to create a steroid that has no known use (Brenner v.Mason)iii. Inventors cannot use a patent as a hunting license

a. Policy: no purpose served if process does not yield useful result and inhibitsothers from researching further because patentee can enforce the patent onthe process.

iv. HYPO: what if someone is creating a material and selling it in high volume but theydont know what customers are doing with it? They better figure it out and put it inthe patent, otherwise wont be able to get a patent on a material that doesnt have aknown use.


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v. In re Fisher: utility requires real world use with immediate benefit to public

IV. ANTICIPATIONA. Refers to the NOVELTY requirement; if a patent is anticipated by a prior art reference, by

definition it is no longer novel.i. Novelty Requirements = 102(a, e, & g)

a. These look at the date of invention (D.O.I)ii. Statutory Bars = 102(b & d)

a. These look at the date of filing patent application.iii. Abandonment = 102(c)iv. Theft from prior inventor = 102(f)

B. Anticipation is a 4 corners doctrine.i. If the claimed invention can be found within a SINGLE prior art reference, then the

invention has been anticipated.ii. References may NOT be combined during this inquiry.iii. Prior art reference may anticipate without disclosing a feature of the claimed

invention if that missing characteristic is necessarily present or inherent in the singleanticipating reference.

C. Enablement Requirement (note # 3 page 165 of text)i. A prior art reference does not need to disclose a use for a claimed compound.

ii. A new patent CAN be issued for a newly discovered USE of the compound, but notfor the compound itself.

V. STATUTORY BARSA. Statutory bars are found in 102(b & d)

i. Statute references an invention being in public use or on sale these terms needto be analyzed further.

B. Applicant Activities 102(b)i. Public Use

a. Giving the invention to ONE person without any restrictions constitutes publicuse. (Egbert v. Lippman)

1. If 1 person would have been ok, the court would have to figure outhow many people constitutes a public.

b. However, you may show the invention to people on occasion and not violatepublic use so long as you maintain confidentiality and control of it.

1. Ex: inventor of Rubiks cube puzzle conceived of idea and mademodels many years before seeking the patent. (Moleculon)

c. Process Invention even if inventor keeps process secret for years, once theproduct becomes public the inventor may not extend his patent rights bydelaying the filing of a patent application. (Metallizing Engineering)


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d. Policy: government against monopolies and patents are an exception.Inventors have a right to keep secret but doing so will prevent them from laterseeking a monopoly via a patent. Government wants to limit monopoly to 20years. Unfair to extend trade secret with patent. Inventor must decide early.

ii. Experimental Usea. Patent is valid even if the invention is put into public use for the purpose of

experimentation and testing its qualities.1. Experimental use is NOT considered to be public use under the

statute. If the use was experimental, then it was NOT public2. Ex: ok to place pavement into public use for experimental reasons,

even though public benefits from it. (City of Elizabeth)i. Factors: own expense, checked condition daily, asked

others, witness testify that inventor was very engagedb. Experimental use exception does NOT encompass market testing where the

inventor is trying to gauge consumer demand for the invention.iii. On Sale

a. If inventor places invention on sale more than 1 year before filing application,than a valid patent cannot be obtained. (Pfaff v. Wells Electronics)

b. 2 Part Test for the On Sale statutory bar:1. Product must be the subject of a commercial offer for sale

i. A commercial offer for sale will start the 1 year timer,regardless of whether it is accepted.

2. The invention must be ready for patenting. This is satisfied by:i. Proof of reduction to practice before the critical date ORii. Proof that prior to the critical date the inventor had prepared

drawings or other descriptions of the invention that weresufficiently specific to enable a person skilled in the art topractice the invention.

c. Critical Date = 1 year prior to application filingd. Assignment of Patent Rights

1. Assigning rights (exclude others, enforce patent, receive royalties)does NOT constitute a sale and will NOT start the 1 year timer.(Moleculon v. CBS)

C. Abandonment 102(c)i. Abandonment may be express or implied from the acquiescence with full knowledge

in the use of his invention by othersa. May also forfeit rights by a willful or negligent postponement of claims

ii. If knowledge of the invention is obtained secretly and communicated to the public,that will not affect the rights of the inventor

iii. Abandonment does not refer to abandonment of the invention, but to abandonmentof the right to obtain a patent

a. Treating an invention as a trade secret constitutes abandonment because nolonger have right to patent

D. Delayed US Filing 102(d)i. 2 part test:

a. Inventor files a foreign patent application more than 12 months BEFORE

filing the U.S. application ANDb. A foreign patent results from that application prior to the U.S. filing date.ii. Encourages prompt filing in the US to ensure that the term of US patents will not

appreciably extend past the expiration date of parallel foreign patents.

VI. NOVELTYA. Prior Invention under 102(a)

i. First inventor has the right to use his invention, even if a later inventor obtains patentrights to the same invention.(Woodcock v. Parker)


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ii. Secret uses of an invention are NOT public uses and do NOT count as others under102(a)they dont invalidate a patent. (Gillman v. Stern)

a. Known or used requires public knowledge or use1. Public = those skilled in the art

b. Known must be public knowledge that is reasonably accessible to publicc. Described in printed publication readily accessible to the relevant public

1. Includes cards handed out & card catalog at libraryiii. Rule 131 Practice: sworn declaration that the inventor created the invention by a

certain date. Swearing back before a prior art reference.B. Elements of Invention under102(g)

i. Patent Interferencesa. Terms

1. Senior Party party with the earliest filing date2. Junior Party party that filed last; has burden to show by

preponderance of evidence:i. Reduction to practice of invention before senior party ORii. Conception before senior party followed by reasonable

diligence in reducing to practiceii. Reduction to Practice

a. Test for reduction to practice is that invention is suitable for its intended

purpose1. Does NOT require actual use, but only a reasonable showing that

the invention will work to overcome the problem it addresses.b. 2 ways:

1. Constructive filing a patent applicationi. Must fully disclose invention; sufficiently adequate to enable

one skilled in the art to practice the invention w/o exercise ofinventive facilities

2. Actual building & testing a physical embodiment of the inventioniii. Diligence (see note # 2 page 256)

a. Diligence is important where one party claims an earlier conception date buta later reduction to practice date.

1. Inventors who are first to conceive and first to reduce to practice win

without having to show diligenceb. Only 1 partys diligence is important the inventor who was first to conceive

but second to reduce to practice.1. Required period of diligence begins at the time prior to the

conception by the other and ends when the inventor who was first toconceive reduces invention to practice.

c. Junior party must show not only that he was the prior inventor, but also thathe had engaged in reasonable diligence in reducing the invention to practicefrom just before the other inventors filing date up to his own.

C. Summary:i. Party who conceives first will have priority over a party who later conceives, unless

the 2nd

party to conceive:a. Reduced to practice first AND

b. The first to conceive did NOT use continuous diligence from time just prior to2nd

partys time of conceptionii. Junior party will have to claim:

a. Earlier conception and due diligence thereafter ORb. Earlier conception and due diligence at least from just prior to the time of

conception by the Senior partyc. A factually earlier reduction to practice despite the presumption of the filing

dateD. Examples:


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Ex # 1:

Blackstone 1/1/00 conception 6/1/00 R/P 2/1/01 Files application

Maitland 3/1/00 conception 7/1/00 R/P 1/1/01 Files application

Blackstone (junior party) is entitled to patent because he was first to invent; we assume that he did due

diligence and did not abandon the idea along the way.

Ex # 2:

Hectorconception(stops working).Resumes Activity..R/P.Files

Nestor..conceptionR/P.Files ....

Nestor is entitled to patent because Hector was not diligent from the time prior to Nestors conception to

the time he reduced to practice. Hector would have to prove why it took him so long to reduce the idea to

practice.

Ex # 3:

Hotspur 3/31/03 conception12/1/03_File

Margaret4/1/03 conception..5/1/03 R/P8/15/03 Files..

Facts: Hotspur was diligent from 3/31 working on the patent application until 12/1/03.

Interference andHotspur would win because facts tell us he was diligent prior to Margaret conception

all the way until his reduction to practice on 12/1/03.

VII. NONOBVIOUSNESS 103A. Historical Standard of Invention

i. Inventions that are merely the work of a skilled mechanic are not worthy of patentprotection.

a. Ex: substitution of metal knobs with clay knobs (Hotchkiss v. Greenwood)ii. A combination of old elements must contribute something new; patentability exists

only where the whole exceeds the sum of the parts (Great A&P Tea v. Supermarket)B. Modern Standard of Nonobviousness

i. Three part analysis: (Graham v. John Deere)a. Determine scope & content of prior art

1. Look at dates to make sure it is actually prior artb. Determine differences between the claimed invention and the prior artc. Resolve level of ordinary skill in the pertinent art

1. What type of brain would find something to be obvious?i. Factors:

1. Education level of inventor2. Type of problems encountered in the art3. Prior art solutions to those problems4. Rapidity with which inventions are made5. Sophistication of the technology6. Education level of workers in field

2. Accused infringer will seek to prove high level of skill in the artmaking his invention non-obvious; patent holder will argue low levelii. Secondary Considerations / Objective Tests

a. Other factors to prove that idea was not obvious1. Market (commercial) Success / Consumer need for product

i. There must be a connection b/w invention and successii. Counter argument = good marketing campaign

2. Long felt but unsolved need not obvious3. Failure of others not obvious4. Time / Facts before invention was developed


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i. Ex: home depot saw; many people hurt using old saw5. Unexpected Results

i. Ex: the water powered battery6. Skepticism

i. People skilled in the art dont think invention will work7. Licenses

i. Many people licensing product proves need existed8. Copying

i. Another indicator of need in marketplaceb. Applicant / patentee must show a NEXUS b/w the claimed invention and the

objective evidence.1. Commercial success cannot be result of marketing or popularity of

like products.iii. Obviousness is not determined by the method in which the invention was made

a. Not relevant whether it takes years to develop versus a flash of geniusiv. Teaching, Suggestion, Motivation TSM Standard

a. Test dictates that some teaching, suggestion or motivation must haveprovided a person of ordinary skill in the art a cause to combine thereferences to produce the claimed invention with reasonable probability ofsuccess for the invention to be considered obvious.

b. Reason to produce claimed invention may come from:1. The references themselves,2. Knowledge of those skilled in the art, or3. The nature of the problem to be solved, leading inventors to look to

references relating to possible solutions to that problemc. KSR International v. Teleflex

1. Gas pedal case: prior art contained all of the parts of the inventionbut nobody had combined them in this fashion

2. This case rejects the TSM test as being too rigid to determineobviousness

d. However, courts continue to use a flexible TSM test to determineobviousness

C. Prior Art for Obviousness

i. Prior Art under 102a. Prior art subject matter is NOT limited to the field of invention; it can be used

if the claims are described in the prior art.1. For a 103 (obviousness) rejection, prior art must be in the area that

the person would have known aboutb. Recall, for 102 analysis you may NOT combine references, it is a 4 corners

approachc. Where a time bar (1 year) is involved, the actual date of invention becomes

irrelevant and an applicant is NOT able to dispose of a reference having adate more than 1 year prior to his filing by providing an earlier date ofinvention. (In re Foster)

ii. Analogous Artsa. 102 prior art in not enough to render it applicable to nonobviousness

analysisb. Technology must also issue from an analogous art; a technical area relatedto the claimed invention

c. Test:1. Whether the art is from the same field of endeavor, regardless of the

problem addressed, OR2. If not, whether the reference still is reasonably pertinent to the

particular problem with which the inventor is involvedd. Ordinary skill in the art at time the invention was made


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e. Patent may be rejected based on obviousness even though no singlepublication effectively discloses the idea but when taken together with otherpublication(s) the idea would be obvious to one skilled in the art

VIII. THE PATENT SPECIFICATION

112 1

The specification shall contain a written description of the invention, and of the manner andprocess of making and using it, in such full, clear, concise and exact terms as to enable any personskilled 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.

A. Enablementa. Satisfies the how to make and how to use requirementsb. Must enable one of ordinary skill in the art to make and use the inventionc. Enablement must be shown at the time the invention was made

i. Critical date for enabling disclosure is the filing date of application? (review)d. Helps set the boundaries of patent protection by ensuring that the scope of the patent

is in accordance with what the inventor actually inventedi. Leaves adequate room for further improvementsii. If description is so vague and uncertain that no one can tell, except by

independent experiments, how to construct patented device, the patent isvoid

e. Fairly subjective test requires applicant to reveal what he knowsf. Deposit Requirement

i. Some inventions (microorganisms) cannot be enabled by written explanation.Must deposit a sample in a facility open to the public

ii. Budapest Treaty a deposit in one repository will operate as a deposit ineach nation

B. Written Description Proscription on New Mattera. 132no amendment shall introduce new matter into the disclosure of the

inventionb. Inventors are allowed to amend the applications during the patent process and after

the original filing date

c. Written description test requires that the original specification support the new subjectmatter

d. Proof that a later addition was supported in the original disclosurei. Keeps inventors from improperly amending their patents by including

subsequent technological advances in a previously filed applicatione. Gentry Gallery v. Berkline a new claim will be invalidated if the specification clearly

shows that the claimed features did not exist in the initial disclosure. A narrowdisclosure may invalidate a subsequent broader claim.

C. Best Modea. Inventor must disclose the best mode (if any) for carrying out the invention

i. Even if best mode exists, if it was not known by the inventor at the time of thepatent application, the patent is valid

b. No requirement that the inventor specify which of several modes is the best as long

as the best mode is includedi. Burying the best mode among different possibilities does not violate 112c. Two Part Test for best mode requirement (Chemcast v. Arco Industries)

i. At the time of filing the application, did the inventor know of a mode ofpracticing the claimed invention that he believed was better than any other(subjective)

ii. If the inventor did have such a preferred mode, does the application enableone of ordinary skill in the art to practice the best mode (objective)

d. Policy Reasons:i. Ensures public is told the best way to make invention


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ii. Public can compete fairly with patent holder once patent expires

IX. CLAIMSA. Claim Definiteness

i. 112 2 the specification shall conclude with one or more claims particularlypointing out and distinctly claiming the subject matter which the applicant regards ashis invention.

ii. The definiteness standard is whether a person of ordinary skill in the art wouldunderstand what is claimed when the claims are read in light of the specification.(Orthokinetics v. Safety Travel Chairs)

iii. Datamize v. Plumtree Softwarea. Claim was for aesthetically pleasing screen court found indefinite.b. Rules:

1. Clear & convincing evidence to invalidate a patent2. The statutory requirement of particularity and distinctness in claims is

met only when the claims clearly distinguish what is claimed fromwhat went before in the art and clearly circumscribe what isforeclosed from future enterprise.

3. If the meaning of the claim is discernible, even though the task maybe formidable and the conclusion may be one over which reasonable

persons disagree, we have held the claim sufficiently clear to avoidinvalidity on indefiniteness grounds.

4. By finding claims indefinite only if reasonable efforts at claimconstruction prove futile, we accord respect to the statutorypresumption of validity and we protect the inventive contribution ofpatentees, even when the drafting of their patents has been lessthan ideal.

B. Means Claimsi. Means for is usually avoided these days although may be appropriate in some

casesii. These types of claims are restricted to the examples in the patent or there

equivalentsiii. Constructed to cover the corresponding structure, material, or acts described in the

specification and equivalents.

X. PROSECUTIONA. Types of Utility Applications

i. Provisionala. Since 6/8/95, the PTO has offered inventors option of filing a provisional

application for patent which was designed to provide a lower cost first patentfiling in the US.

b. Applicants are entitled to claim the benefit of a provisional application in acorresponding non-provisional application filed no later than 12 months afterthe provisional filing date.

c. The corresponding non-provisional application benefits in 3 ways 119(e)1. Patentability would be evaluated as though filed on the earlier

provisional application filing date2. The resulting publication or patent would be treated as a referenceunder 102(e) as of the earlier provisional application filing date and

3. The 20 year patent term would be measured from the laternonprovisional application filing date. Thus, domestic applicants areplaced on equal footing with foreign applicants with respect to thepatent term. Inventors may file US provisional applicationsregardless of citizenship.

d. Summary1. Gets you proof of the invention date


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2. Patent office doesnt look at it; just sits there3. Never published4. Provisional may be looked at during litigation

i. Filing a crappy provisional that later gets converted canhinder you

ii. Has to support the set of claims that will later be written notsomething you file quickly

ii. Nonprovisionala. An application that is subject to the requirements of 35 USC 112 and

includes a specification, a claim or claims, and drawings, when necessaryiii. Continuation

a. A continuation is a 2nd

application for the same invention claimed in a priornonprovisional application and filed before the original prior applicationbecomes abandoned or patented.

b. The applicant in the continuation application must include at least oneinventor named in the prior nonprovisional application.

c. The disclosure presented in the continuation must be the same as that of theoriginal application; i.e., the continuation should not include anything whichwould constitute new matter if inserted in the original application.

d. Summary:

1. Cant add new matter2. Must be common inventorship

iv. Continuation-in-Parta. An application filed during the lifetime of an earlier nonprovisional application,

repeating some substantial portion or all of the earlier nonprovisionalapplication and adding matter not disclosed in the said earlier nonprovisionalapplication.

1. If you come up with an improvement, can maintain filing date and getpriority back to that date.

2. New invention as of the new filing datev. Divisional

a. A later application for an independent or distinct invention, carved out of apending application and disclosing and claiming only subject matter

disclosed in the earlier or parent application.B. Request for Continuing Application

i. USPTO rejects application, applicant fights it, and then USPTO rejects it againmaking it final. Applicant will have to pay a fee then USPTO will examine it again.

C. Inequitable Conducti. Duty to Disclose Information Material to Patentability 37 C.F.R. 1.56

(a) A patent by its very nature is affected with a public interest. The public interest is best served, and the most effective patentexamination occurs when, at the time an application is being examined, the Office is aware of and evaluates the teachings of allinformation material to patentability. Each individual associated with the filing and prosecution of a patent application has a duty ofcandor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to thatindividual to be material to patentability as defined in this section.

(b) Under this section, information is material to patentability when it is not cumulative to information already of record or beingmade of record in the application, and:

(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or

(2) It refutes, or is inconsistent with, a position the applicant takes in:(i) Opposing an argument of unpatentability relied on by the Office, or(ii) Asserting an argument of patentability.

(c) Individuals associated with the filing or prosecution of a patent application within the meaning of this section are:

(1) Each inventor named in the application;

(2) Each attorney or agent who prepares or prosecutes the application; and


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(3) Every other person who is substantively involved in the preparation or prosecution of the application and who isassociated with the inventor, with the assignee or with anyone to whom there is an obligation to assign the application.

(d) Individuals other than the attorney, agent or inventor may comply with this section by disclosing information to the attorney,agent, or inventor.

a. Duty to disclose exists with respect to each pending claim until the claim iscancelled or withdrawn from consideration, or the application becomesabandoned.

b. No duty to submit info which is not material to the patentability of an existingclaim.

1. No patent will be granted on an application where there was fraudpracticed or attempted OR if the duty of disclosure was violated thrubad faith or intentional misconduct

ii. Tactical Advantages for Defendanta. Practically unlimited discovery into the circumstances of the prosecution,

including potential attorney work product materialsb. In intimidating and embarrassing charge against the competency of the

prosecuting attorneys which often removed them from the defense teambecause they became likely witnesses

1. Removes the person that knew the most from the prosecution team

c. A chance to charge that the patent was tainted by fraudulent procurementa valuable counter to the presumption of validity.

d. s Tactics:1. We dont infringe2. Claims should be invalid because:

i. Inequitable Conductii. Etc.

iii. Intenta. Rule:

1. Inequitable conduct requires:i. Intent to deceive the patent office ANDii. Failure to disclose material information ORiii. Submission of false material information during the patent

application process2. Both elements, materiality & intent, must be proven by clear /

convincing evidencei. Findings on materiality and intent are subject to the clearly

erroneous standard of Rule 52(a) Fed. R. Civ.P. and are notto be disturbed unless appellate court has a definite and firmconviction that a mistake has been committed.

ii. Gross negligence is NOT enough; the conduct must indicatesufficient culpability to require a finding of INTENT todeceive

b. There is nothing improper in filing a patent application for the purpose ofobtaining a right to exclude a known competitors product from the market.

1. Nor is it improper to amend or insert claims intended to cover a

competitors product the applicants attorney has learned aboutduring the prosecution of a patent application.c. When inequitable conduct occurs in relation to one claim, the entire patent is

unenforceable1. Claims are not born, and do not live, in isolation. Each is related to

other claims, to the specification and drawings, to the prior art, to anattorneys remarks, to co-pending and continuing applications, andoften, to earlier or later versions of itself in light of amendments.

2.


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XI. INFRINGEMENT 271. Infringement of patent

(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sellsany patented invention, within the United States or imports into the United States any patented inventionduring the term of the patent therefor, infringes the patent.

(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

A. Basic Concepts:i. No intent required, infringement is strict liabilityii. Patent is presumed to be validiii. Look at the claims to determine if there is infringement

B. Infringement Test does the accused invention have ALL elements of the claims (literalinfringement) or their equivalents (DOE)?

i. Proceed element by element, asking if identical or an equivalent. If any element notsame, no infringement.

ii. To determine the meaning of an ambiguous term, look at:a. Claimsb. Specification (include at least 1 best mode to implement)

c. Drawingsd. Prosecution Historydialogue b/w patentee and patentees attorney and/or

the examiner (file wrapper).e. Extrinsic Evidence dictionary, for example.

iii. Patentee can be his own lexicographer and define new termsC. Literal Infringement

i. Test for Infringementa. Court must determine scope / meaning of the patent claims assertedb. Then, court must compare the supposedly infringing device with the properly

construed claims.1. Note, you cant put your device next to the other device and tell the

jury they are alike so it infringes2. You can have the devices present and then go through the claims.

3. You are comparing claims to an object.i. Compare claims to your device then claims to allegedly

infringing device sneaky way to have jury compare thedevices.

c. NOTE: to find infringement, only need to match 1 independent claim; dontneed to look at independent claims

ii. Claim Construction is a matter of law (no jury) (Markman v. Westview Instruments)a. Judges are skilled in interpreting written instruments where a jury doesnt

have training to do so.b. Claim terminology is reviewed DE NOVO at appellate level (Cybor v. FAS

Tech)1. NO value given to what the district court saw and determined

c. Cannons of Claim Interpretation:

1. When 2 or more interpretations are plausible, choose the one thatpreserves validity2. Ordinary v. Contextual: the words of a claim are given their ordinary

and customary meaning to a person skilled in the art on theapplication date

3. Contextual meaning may trump ordinary meaning if the spec showsthat, in context, a particular word in a patent was meant to have ameaning more narrow than its ordinary meaning.

4. Lexicographer rule: patentees are free to define words to havespecial meaning within their patents


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5. Disclaimer of subject matter patentees may also disclaim a broadscope of meaning for terms and such disclaimers may come in thespec or in representations made during prosecution

6. Claim differentiation: claims should be interpreted to give each claimsome scope different from the scope given to other claims

iii. Markman Hearingsa. Present to judge (before meeting jury)b. What claims are in disputec. Present evidenced. Judge hears both arguments, then writes an opinion as to what he thinks the

terms mean1. Ruling is helpful because patent litigation is expensive and you will

have a good idea of the strength of your caseiv. Hierarchy of Evidence for claim interpretation

a. Claims1. Claims define the invention; they are of primary importance to

ascertain what is patented2. Claims are given their ordinary and customary meaning. This is the

meaning they would have to person of ordinary skill in the art at thetime of the invention; deemed to have read the claim term in the

context of the entire patent.3. Interpret claims similar to statutes such that no section is rendered

meaningless.i. Ex: a dependent claim that further restricts a portion of the

independent claim will mean that the term was NOTrestricted in the independent claim otherwise thedependent claim would be meaningless

b. Specification1. If patentee has given just 1 example, the claims are NOT limited to

that 1 embodiment2. Highly relevant to claim construction analysis

c. Prosecution History1. Like specification, prosecution history provides evidence of how PTO

and inventor understood the patent2. Highly relevant to claim construction analysis

d. Extrinsic Evidence1. Stuff that wasnt there when patent was issued2. Least valuable because parties will pick and chose definitions that

are most favorable to them3. Not discounted but carry low weight

v. Patentee can be his own lexicographer and define whatever he wantsa. May rebut presumption that claim terms are to be given ordinary meaning by

clearly setting forth a definition of the term that is different.D. Doctrine of Equivalents (Non-Textual Infringement)

i. Function Way Result Testa. Infringement if the accused device performs:

1. Substantially the same function2. In the same way3. To achieve the same result

b. Policy Concerns1. We want to encourage people to improve an existing patent the

doctrine of equivalents broadens patent claims and causesproblems.

ii. All Elements Rule


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a. DOE analysis must proceed on an element by element basis. Does theaccused product or process contain elements identical or equivalent to eachclaimed element of the patented invention?

iii. Intent plays no role in the application of the doctrine of equivalentsiv. The proper time for evaluating equivalency and knowledge of interchangeability b/w

elements is at the time of infringement, not at the time the patent was issued.v. It is up to the jury to decide whether the accused product/process is equivalent to the

claimed product/process.E. Limitations on the Doctrine of Equivalents

i. Prosecution History Estoppela. Limits application of DOE, including in cases where there is no reason

apparent for the amendment during prosecution.b. Plaintiff (patentee) bears the burden of proof for demonstrating that an

amendment did not relate to a substantial element of patentability.1. Patentees decision to narrow claims through amendment during

prosecution creates a presumption that the subject matter b/w theoriginal and amended claim is disclaimed.

2. Patentee can rebut the presumption of prosecution history estoppelby showing that at the time of the amendment one skilled in the artcould not reasonably be expected to have drafted a claim that would

have literally encompassed the alleged equivalent.c. Recent developments have contracted the DOE substantially

1. Limitations added during prosecution are most likely going to besubject to prosecution history estoppel unless:

i. The claim language does not capture some newly developedtechnology; and

ii. The claim drafter could not reasonably be expected to havedrafted better claims.

XII. REMEDIESA. Injunctions

i. Statutory Basis:a. 35 USC 283 Injunctive Relief: the several courts having jurisdiction of

cases under this title may grant injunctions in accordance with the principles

of equity to prevent the violation of any right secured by a patent, on suchterms as the court deems reasonable.

ii. Decision to grant or deny permanent injunctive relief rests within the equitablediscretion of the district court; exercised consistent with traditional principles ofequity.

iii. Test for a permanentinjunction (eBay v. MercExchange)a. Plaintiff must demonstrate:

1. It has suffered irreparable injury2. That remedies available at law are inadequate to compensate for the

injury3. That a remedy in equity is warranted after considering the balance of

hardships b/w the and 4. That the public interest would not be disserved by a permanent

injunction being issuediv. Test for temporaryinjunction (Sanofi-Synthelabo v. Apotex)a. Four factors:

1. Whether there is a reasonable likelihood of success on the merits2. Whether there will be irreparable harm if an injunction is not granted3. A balancing of hardships4. Gauging the injunctions impact on the public interest

b. BOND the party seeking a preliminary injunction must post bond in casethey lose and the other party suffers damages by the injunction.

v. Policy in enforcing patents property law v. liability rules


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a. If applying property laws, can make infringer get off property (injunction) b. Under liability rules, person can stay and pay fees

B. Damagesi. Basic Principles

a. Damages are awarded without regard to the question of whether thedefendant has had success by infringing

b. Statutory Basis:1. 35 USC 284 Damages: Adequate to compensate for the

infringement, but in no event less than a reasonable royalty for theuse made of the invention by the infringer, together with interest andcosts fixed by the court.

c. Royalty patent holder allows someone else to do all the work and getspaid for allowing them to do so.

d. Lost Profits profits on sales patent owner would have made absentinfringement (sales by infringer)

1. Patent holder must show:i. Demand for the patented productii. Absence of acceptable non-infringing substitutesiii. Ability (manufacturing + marketing) to meet the full demand

for the products

iv. Actual lost profits2. Patentee need only show a reasonable probability that the sales

would have been made but for the infringement3. Burden then shifts to infringer to show that the inference is

unreasonable for some or all of the sales4. The unpatented components must function together with the

patented component to produce a desired end product or result.i. All of the components together must be:

1. Analogous to components of a single assembly or2. Part of a complete machine or3. Constitute a functional unit

ii. Courts have refused to extend liability to include items thatmay have been sold with an infringing device only as a

matter of convenience or business advantage.5. In special circumstances, patent holder may be able to recover lost

profits for sales of unpatented items if he can prove that profits wouldhave been made but for the infringement. (Rite-Hite v. Kelley)

i. Apply same lost profits test as aboveii. Reasonable Royalties

a. When actual damages in the form of lost profits cannot be proved, the patentowner is entitled to receive a reasonable royalty as payment for infringementby the .

b. Definition amount which a person, desiring to manufacture and sell apatented article, as a business proposition, would be willing to pay as aroyalty and yet be able to make and sell the patented article, in the market, ata reasonable profit.

c. Factors to calculate appropriate royalty:1. Lack of acceptable non-infringing substitutes2. Patent holders policy of not licensing3. Future business lost by licensing competitor4. The infringed patent gave the entire marketable value to the infringed

patentd. Considerations:

1. Setting of royalty after infringement cannot be treated as theequivalent of ordinary, arms length negotiations among a truly willingpatent owner and a potential licensee.


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i. Dont want to encourage infringement by imposing a royaltythe same as if parties had contracted in a normal setting

ii. Infringement would become an easy way to impose acompulsory license upon every patent owner

2. An infringer cannot reduce damages because there are otherproducts that infringe as well.

3. The amount of a reasonable royalty after infringement turns on thefacts of each case, as best they may be determined.

e. MORE Factors for Reasonable Royalties (Georgia PacificFactors)1. Royalties received by the patentee for the licensing of the patent in suit, proving or

tending to prove an established royalty2. Rates paid by the licensee (infringer) for use of similar patents3. Nature and scope of license (whether it is limited in any way)

i. Exclusive or non-exclusive, restricted or non-restricted in terms of territoryor with respect to whom product may be sold

4. Other licensing behavior by the patentee5. Commercial relationship b/w licensor and licensee

i. Are they competitors in same territory and business or are they inventor andpromoter, etc.?

6. The relative value of the patented article to the rest of the infringers sales portfolio7. Duration of the patent and term of the license8. Commercial success of the product9. Improvements in the patented product over prior products10. Nature of the patented invention; character of the commercial embodiment of it as

owned and produced by the licensor; and the benefits to those who have used theinvention

11. The breadth of the infringing activities12. The typical royalty charged per profit for the invention in the particular business or

comparable businesses13. The portion of the realizable profit that should be credited to the invention as

distinguished from non-patented elements, the manufacturing process, business risks,or significant features or improvements added by the infringer.

14. Opinion testimony of qualified experts15. The amount of a reasonable royalty rate if the parties had originally been willing to

negotiate a license.

C. Enhanced Damagesi. 284 the court may increase the damages up to three times the amount found or

assessed.

ii. Damages can only be trebled in cases of willful infringementa. Willfulness requires an assessment of the totality of the circumstancessurrounding the infringement

b. Jury decides willfulness and judge decides amount of damages.1. Relevant Willfulness Factors: (presented to jury)

i. Whether the infringer deliberately copied the ideas or designof another

ii. Whether the infringer, when he knew of the others patentprotection, investigated the scope of the patent and formed agood faith belief that it was invalid or that it was not infringed

iii. The infringers behavior as a party to the litigationiv. The infringers size and financial conditionv. The closeness of the casevi. The duration of the defendants misconduct vii. Remedial action by the viii. The defendants motivation for harmix. Whether the attempted to conceal its misconduct

c. Proof of willful infringement, permitting enhanced damages, requires at leasta showing of objective recklessness

1. A finding of willfulness does NOT require an award of enhanceddamages; it merely permits it.

d. Reckless to act in the face of an unjustifiably high risk of harm that iseither known or so obvious that it should be known.


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1. Requires Clear & Convincing evidence that infringer acted despite anobjectively high likelihood that its actions constituted infringement ofa valid patent.

2. State of mind of the accused infringer is NOT relevant this is anOBJECTIVE inquiry.

3. Patentee must demonstrate that the objectively-defined risk waseither known or so obvious that is should have been known to theaccused infringer.

e. Invoking the attorney-client privilege or work product privilege does not giverise to an adverse inference.

f. An accused infringers failure to obtain legal advice does not give rise to anadverse inference with respect to willfulness.

D. Attorney Feesi. 285 the court in exceptional cases may award reasonable attorney fees to the

prevailing party.ii. Conduct which a court may deem exceptional and a basis for awarding attorney

fees may not qualify for an award of enhanced damages.a. Similarly, where damages are enhanced, a court may decline to award

attorney fees.iii. Two-Step Inquiry:

a. Is there clear & convincing evidence that the case is exceptional; andb. Is an award of attorney fees warranted

iv. Types of conduct that support finding of exceptional circumstances include:a. Willful infringementb. Inequitable conduct before the PTOc. Litigation misconductd. Vexations or unjustified litigation or frivolous suite. Etc. (this list is not exhaustive)

E. Marking287(a) patentees, and persons making, offering for sale, or selling within the US any patented articlefor or under them, or importing any patented article into the US, may give notice to the public that thesame is patented, either by fixing thereon the word patent or the abbreviation pat., together with thenumber of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to

the package wherein one or more of them is contained, a label containing a like notice. In the event offailure so to mark, no damages shall be recovered by the patentee in any action for infringement, excepton proof that the infringer wasnotifiedof the infringement and continued to infringe thereafter, in whichevent damages may be recovered only for infringement occurring after suchnotice. Filing of an actionfor infringement shall constitute such notice.

i. For purposes of this section, actual notice must be of the infringement, not merelynotice of the patents existence or ownership.

a. Actual notice requires the affirmative communication of a specific charge ofinfringement by a specific accused product or device.

b. The correct approach to determining notice under this section must focus onthe action of the patentee, not the knowledge or understanding of theinfringer.

1. The infringers knowledge or state of mind are irrelevantii. If patent expires and you continue to improperly mark the product, you will be liablefor $500 PER OFFENSE.

a. Anyone in public can bring this offense1. of money goes to government and to 2. Law is changing so that has to prove actual damages and the

money will all go to the governmenti. Will probably put an end to all of these suits


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RELEVANT STATUTORY SECTIONS:

101. Inventions patentable

Whoever invents or discovers any new and useful process, machine, manufacture, or composition ofmatter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the

conditions and requirements of this title.

102. Conditions for patentability; novelty and loss of right to patent

A person shall be entitled to a patent unless

(a) the invention was known or used by others in this country, or patented or described in a printedpublication in this or a foreign country, before the invention thereof by the applicant for patent, or

Relates to novelty; key date is the date of invention; includes acts by others (excludes inventor); knownor used requires public knowledge or use; public = skilled in the art; described in printed publication =readily accessible to relevant public

(b) the invention was patented or described in a printed publication in this or a foreign country or in publicuse or on sale in this country, more than one year prior to the date of the application for patent in theUnited States, or

Statutory bar; key date is date of filing; includes acts by anyone (includes inventor); public use can be 1person if not restricted; experimental use is not public use; on sale requires offer for sale & inventionready for patenting

(c) he has abandoned the invention, or

Abandonment of the right to obtain a patent

(d) the invention was first patented or caused to be patented, or was the subject of an inventors

certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date ofthe application for patent in this country on an application for patent or inventors certificate filed morethan twelve months before the filing of the application in the United States, or

Statutory bar; key date is date of filing; see test for delayed US filing in statutory bar section of outline

(e) the invention was described in(1) an application for patent, published under section 122 (b), by another filed in the United Statesbefore the invention by the applicant for patent or(2) a patent granted on an application for patent by another filed in the United States before theinvention by the applicant for patent, except that an international application filed under the treatydefined in section 351 (a) shall have the effects for the purposes of this subsection of anapplication filed in the United States only if the international application designated the United

States and was published under Article 21(2) of such treaty in the English language; [1] or

(f) he did not himself invent the subject matter sought to be patented, or

(g)(1) during the course of an interference conducted under section 135 or section 291, another inventorinvolved therein establishes, to the extent permitted in section 104, that before such persons inventionthereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or(2) before such persons invention thereof, the invention was made in this country by another inventorwho had not abandoned, suppressed, or concealed it. In determining priority of invention under thissubsection, there shall be considered not only the respective dates of conception and reduction to


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practice of the invention, but also the reasonable diligence of one who was first to conceive and last toreduce to practice, from a time prior to conception by the other.

103. Conditions for patentability; non-obvious subject matter

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

(b)(1) Notwithstanding subsection (a), and upon timely election by the applicant for patent toproceed under this subsection, a biotechnological process using or resulting in a composition ofmatter that is novel under section 102 and nonobvious under subsection (a) of this section shallbe considered nonobvious if

(A) claims to the process and the composition of matter are contained in either the sameapplication for patent or in separate applications having the same effective filing date;and

(B) the composition of matter, and the process at the time it was invented, were ownedby the same person or subject to an obligation of assignment to the same person.

(2) A patent issued on a process under paragraph (1)

(A) shall also contain the claims to the composition of matter used in or made by thatprocess, or

(B) shall, if such composition of matter is claimed in another patent, be set to expire onthe same date as such other patent, notwithstanding section 154.

(3) For purposes of paragraph (1), the term biotechnological process means

(A) a process of genetically altering or otherwise inducing a single- or multi-celledorganism to

(i) express an exogenous nucleotide sequence,(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotidesequence, or(iii) express a specific physiological characteristic not naturally associated withsaid organism;

(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as amonoclonal antibody; and

(C) a method of using a product produced by a process defined by subparagraph (A) or(B), or a combination of subparagraphs (A) and (B).

(c)(1) Subject matter developed by another person, which qualifies as prior art only under one ormore of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentabilityunder this section where the subject matter and the claimed invention were, at the time theclaimed invention was made, owned by the same person or subject to an obligation ofassignment to the same person.


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(2) For purposes of this subsection, subject matter developed by another person and a claimedinvention shall be deemed to have been owned by the same person or subject to an obligation ofassignment to the same person if

(A) the claimed invention was made by or on behalf of parties to a joint researchagreement that was in effect on or before the date the claimed invention was made;

(B) the claimed invention was made as a result of activities undertaken within the scopeof the joint research agreement; and

(C) the application for patent for the claimed invention discloses or is amended todisclose the names of the parties to the joint research agreement.

(3) For purposes of paragraph (2), the term joint research agreement means a written contract,grant, or cooperative agreement entered into by two or more persons or entities for theperformance of experimental, developmental, or research work in the field of the claimedinvention.

112. Specification

The specification shall contain a written description of the invention, and of the manner and process ofmaking and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the artto which it pertains, or with which it is most nearly connected, to make and use the same, and shall setforth the best mode contemplated by the inventor of carrying out his invention.

The specification shall conclude with one or more claims particularly pointing out and distinctly claimingthe subject matter which the applicant regards as his invention.

A claim may be written in independent or, if the nature of the case admits, in dependent or multipledependent form.

Subject to the following paragraph, a claim in dependent form shall contain a reference to a claimpreviously set forth and then specify a further limitation of the subject matter claimed. A claim in

dependent form shall be construed to incorporate by reference all the limitations of the claim to which itrefers.

A claim in multiple dependent form shall contain a reference, in the alternative only, to more than oneclaim previously set forth and then specify a further limitation of the subject matter claimed. A multipledependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependentclaim shall be construed to incorporate by reference all the limitations of the particular claim in relation towhich it is being considered.

An element in a claim for a combination may be expressed as a means or step for performing a specifiedfunction without the recital of structure, material, or acts in support thereof, and such claim shall beconstrued to cover the corresponding structure, material, or acts described in the specification andequivalents thereof.

271. Infringement of patent

(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sellsany patented invention, within the United States or imports into the United States any patented inventionduring the term of the patent therefor, infringes the patent.

(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

smiley patents winter 2011

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