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Patent Law Overview1. Promoting Innovation - the problem of "public goods"

a. Intangible property (e.g. information, ideas, inventions, expressiveworks)b. Cannot be exhausted or divided

c. Cannot exclude "free rides" --> market failure (under-development ofinventions)d. Legal system needed to make inventions appropriable --> assign aproperty right

2. U.S. Const. Art. 1, Cl. 8a. "Congress shall have power...To promote the Progress of Science anduseful Arts, by securing for limited Times to Authors and Inventors theexclusive Right to their Respective Writings and Discoveries. . . .

3. Patent=Property Right = Negative Right to Exclude

a. See 35 USC 154(a)(1)i. granting to the patentee the right to exclude others

from making, using, offering for sale, or selling the inventionthroughout the United States or importing the invention intothe United States . . . .

4. Ebay v. MercExchangea. Permanent Injunction Factors:

i. 1) Patentee has suffered an irreparable injury;ii. 2) Remedies available at law, such as monetary damages, are

inadequate to compensate patentees injury;iii. 3) Balance of hardships in patentees favor;iv. 4) Public interest not dis-serviced by permanent injunction

5. Philosophical Rationale for IP protectiona. Natural Rights

b. Reward for Services Renderedc. Monopoly Profits Incentived. Exchange for Secrets

6. Economics of Patentsa. Costs

i. Short term societal cost: sole-source pricing, reduced supplyii. Administrative costsiii. Duplicative R&Div. Foregone/blocked/chilled R&D in improvements

b. Benefitsi. New inventions introduced into marketplaceii. Post-expiration entry into public domain

iii. Dissemination of information through publication of issuedpatents and most pending applications

1. Patent = Monopoly

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Good vs. bad uses of potential monopoly powerU.S. Antitrust law: Sherman Act sect. 2 criminalizes monopolization:

1) possession of monopoly power in relevant market; and2) acquisition or maintenance of monopoly power in anticompetitive

manner

2. Patent Law Territorialitya. a U.S. patent generally prohibits only those acts of infringement thatoccur within U.S. borders.b. International treaties/agreements (e.g., Patent Cooperation Treaty)make it easier (but not automatic!) to get patents in foreign countries

3. Determining U.S. Utility patent terma. "Old" system: Prior to June 8, 1995:

i. All U.S. patents expired 17 years after issue dateb. "New" System: Application filed on/after June 8, 1995:

i. See 35 U.S.C. Sec. 154(a)(2)

ii. Patent expires 20 years after filing date1. i.e., 20 years after earliest U.S. effective filing date

c. Transition Applications/patentsi. See 35 U.S.C. 154(c)(1)ii. Any patent application already pending or issued patent already

in force on June 8, 1995iii. Gets the greater of 17 years from issue of 20 from filing

4. Filing a U.S. Patent Applicationa. Non-provisional (regular/full service) application:

i. 35 USC 111(a)ii. FY 2007: 438,576 filediii. Fees: filing fee ($310/155), search fee ($510/255), examination

fee ($210/105), issue fee ($1440/720)b. Provisional application:

i. Option first available 1995ii. 35 USC 111(b)iii. Quick and cheap: $210/$105iv. No patent claims or inventor oath requiredv. Preserve priority date for subject matter adequately disclosedvi. Does not cost patent term

5. 18-Month Publication of Pending Applicationsa. Since ~2001, publication of pending applications is the default rule[see 35 USC 122(b)(1)]b. Currently about 85% of applications filed in USPTO are published

i. Can opt-out if purely domestic protection soughtc. Provisional compensation remedy [reasonable royalty] for certaininfringements between publication date and patent issue date [see 35 USC154(d)]

6. Continuing Application Practicea. Continuation application

i. See 35 USC 120b. Continuation-in-part (CIP) application

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i. See 35 USC 120c. Divisional application

i. See 34 USC 121h

1. 35 USC 119(e)(1): Claiming Domestic Prioritya. An application for patent filed under section 111(a) . . . of this title foran invention disclosed in the manner provided by the first paragraph ofsection 112 of this title in a provisional application filed under section111(b) of this title, by an inventor or inventors named in the provisionalapplication, shall have the same effect, as to such invention, as thoughfiled on the date of the provisional application filed under section 111(b) ofthis title,b. if the application for patent filed under section 111(a) . . . of this title isfiled not later than 12 months after the date on which the provisionalapplication was filedc. and if it contains or is amended to contain a specific reference to theprovisional application. . . .

2. 35 USC 117: Death or incapacity of inventora. Legal representatives of deceased inventors and of those under legalincapacity may make application for patent upon compliance with therequirements and on the same terms and conditions applicable to theinventor.

3. Patent Claims - Single sentence definitions of the scope of patentee's right toexclude

a. Not necessarily the same as what the inventor invented!b. Parts of a Claim

i. Preamble1. Do words in the preamble represent a material limitationin a claim?

ii. Transitioniii. Body

c. How many elements to include in the body of a claim?i. Enough to define an operable invention that is novel andnonobvious

ii. Trade-off: the more elements included in a claim, the narrowerits scope (more likely valid), and the fewer elements included, thebroader its scope (more likely infringed)

4. Claim Transitionsa. "Comprising" = open in scopeb. "Consisting of" = closed in scopec. "Consisting Essentially of" = closed in scope, except for the addition ofelements that do not change the essential function or properties of theinvention

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Notes1. Independent Claim v. Dependent Claim

a. 35 USC 112 Paragraph 3i. A claim may be written in independent or if the nature of thecase admits, in dependent or multiple dependent form

b. 35 USC 112 Paragraph 4i. Subject to the following paragraph, a claim in dependent formshall contain a reference to a claim previously set forth and thenspecify a further limitation of the subject matter claimed. A claim independent form shall be construed to incorporate by reference all thelimitations of the claim to which it refers

c. Why do you need to create dependent ? The examiner may think thatthe claim is so broad that it reads on the prior art. You aren't definingsomething newd. In litigation why is this a good idea?

i. Dependent is a signal that the parent claim is not just a specifictype

ii. If prior art does teach on independent claim the dependentclaims might be an insurance policy against the prior art even if youlose the independent claim

2. Claim Definiteness Requirementa. 35 U.S.C. Section 112/2

i. The specification shall conclude with one or more claimsparticularly pointing out and distinctly claiming the subject matter

which the applicant regards as his inventionb. Claims can't be ambiguous or they will be invalidc. "Jepson" claim - preamble language that concedes prior art, then yousay the improvement whereind. A patent is not suppose to be a production specification

3. Datamize LLC v. Plumtree Software

a. Claims required that user could vary screen element types "inconformity with a desired uniform and aesthetically pleasing look andfeel for" a screen."

i. This may have worked if they would have describedaesthetically pleasing in the specification

ii. This claim was considered indefiniteness

4. Means-Plus-Function Claiming Format: 35 USC 112/6a. "An element in a claim for a combination may be expressed as ameans or step for performing a specified function without the recital ofstructure, material, or acts in support thereof,And such claim shall be construed to cover the corresponding structure,material, or acts described in the specification and equivalents thereof."b. Court usually will look at what was available at the time of the patentwhen look at a means plus function

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2. Public in Possession: the teaching of the patent mustput the public in possession of the invention so that those orordinary skill in art can make and use it (if licensed duringpatent term, or freely after patent expires) without undueexperimentation.

viii. What could he have done?

1. Any other procedural options:2. Could have filed a civil action to obtain patent 35 U.S.C.145

a. File lawsuit against the head of the patentoffice, Directorb. What you get is a trial de nuvo, or get tobring in new informationc. You are seeking the head of the patent officeto grant a patent

ix. In re Wands (Fed. Cir. 1988)

x. Factors: Undue Experimentations

1. The quantity of experimentation necessary;2. The amount of direction or guidance presented3. The presence or absence of working examples4. The nature of the invention5. The state of the prior art6. The relative skill of those in the art7. The predictability or unpredictability of the art; and8. The breadth of the claims

a. Scope of disclosure v. scope of claims

b. There must be a reasonable correlation betweenscope of the disclosure and scope of protection sought

c. ATI v. BMW(Fed. Cir. 2007)

i. ATI seemed to throw in a electrical sensor forside impact airbags, most of the patent focused on amechanical sensor

ii. Asking for the broadest scope of theclaim, you may run into enablement and bestmode issues and lose the patent

c. Best Mode Requirementi. "shall set forth the best mode contemplated by the inventor ofcarrying out his invention."

ii. The issue real turns on what the inventor contemplated at thetime of the invention

1. Purely subjective, what is in the inventors head, the

defense attorney can try to paint the inventor in a bad lightiii. The U.S. is one of a small group of countries that have a best

mode requirement, and there is a movement to repeal the best moderequirement

iv. Subjective inquiry: did the inventor consider one mode ofpracticing the invention to be the best mode, as of the filing date? Ifyes, then:

v. Objective inquiry: does the application as filed provide anenabling disclosure of that best mode?

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vi. Young Dental v. Q3 prods.1. Why does court distinguish between "true productiondetails" and routine details" if neither are required to satisfy bestmode?

1. 35 USC Section 112/1

a. The specification shall contain a written description of theinvention, and of the manner and process of making and using it, in suchfull, clear, concise, and exact terms as to enable any person skilled in theart to which it pertains, or with which it is most nearly connected, to makeand use the same, and shall set forth the best mode contemplated by theinventor of carrying out his invention

2.Best mode

a.Use of the words "

preferred embodiment" is code language for best

modeb. In some cases, even though lacking specific details, patentsapplications will satisfy the best mode requirementc. Best mode of "carrying out the invention"

i. Maybe the scope is a little broader than what is just in theclaims

d. Bayer

i. Best mode challenge: Bayer's patent did not disclose theinventor'spreferred mode of making a certain novel syntheticcompound [X] that he had used as a chemical intermediate in order tosynthesize the claimed invention [CIPRO]

ii. COURT: grouped its precedent finding best mode violations intotwo categories:

1. Failure to adequately disclose a preferred embodiment ofthe invention; and (Young Dental case)2. Failure to disclose aspects of making or using the claimedinvention where the non-disclosed matter materially affected theproperties of the invention

e. Open issuesi. Is there any requirement for deliberate concealment i.e. activeintent

ii. What is the scope of the best mode disclosure obligation vis-a-

vis the scope of the claimsiii. Is best obligation limited to inventor

1. See Glaxo v. Novopharm (fed cir 1995)2. Patent owner Glaxo walled off the research chemist fromthe development department3. Turned out the development department came up withthe inventor4. Best mode known to the inventor only needs to beknown

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iv. Should the best mode requirement be eliminated?3.Written description of the invention requirement

a. Can best be understood as timing or "priority policing" mechanism.b. Terminology

i. "written description" as part of the patent specification, alongwith the drawings and claims

ii. "written description of the invention requirement" as a legalrequirement for patentability

c. WDR: Common "time Gap" Scenariosi. New claims added during prosecution of a single applicationii. Claims substantively amended during prosecutioniii. Claiming benefit of a parent application's earlier filing date for

claims in a later-filed continuation (or CIP) application 35 USC 120(Vas-Cath v. Mahurkar)

d. Distinguishing WDR from Enablement:i. Application as filed discloses that "the widget of this invention ismade of wood or metal" (with no other broadening language)

ii. Applicant thereafter learns that a competitor has begun to sellsimilar widgets made ofplastic.

1. Looking strictly at if how much R&D (effort) one ordinaryperson skilled in the art would have to do

iii. Applicant thereafter attempts to add to her pending applicationa genus claim reciting "widget comprising a solid material."

1. Absent any broadening language you will probably not getthis claim

e. WDR Testi. Does the application show that as of its filing date inventor was"in possession" of the invention as it is later claimed?

ii. In other words does the as-filed application "support" the later-

claimed invention?iii. Prohibition against adding "new matter" to pending applicationf. WDR Underlying Theory

i. Application filing date - CRP - presumptive invention date for thesubject matter of the claims included in the application when filed

ii. WDR inquiry is whether subject matter newly claimed after thefling date was sufficiently disclosed in the application when filed, sothat the presumptive invention date for the later claimed subjectmatter can fairy be held to be the application filing date.

g. Vas-Cath v. Mahurkari. 35 USC 120. Benefit of Earlier Filing Date in the US

An application for patent for an invention disclosed in the manner

provided by the first paragraph of section 112 of this title in anapplication previously filed in the United States, or as provided bysection 363 of this title, which is filed by an inventor or inventorsnamed in the previously filed application shall have the same effect,as to such invention, as though filed on the date of the priorapplication, if filed before the patenting or abandonment of ortermination of proceedings on the first application or on an applicationsimilarly entitled to the benefit of the filing date of the first applicationand if it contains or is amended to contain a specific reference to the

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i. (1) an application for patent, published under section 122(b),by another filed in the United States before the invention by theapplicant for patent or

ii. (2) a patent granted on an application for patent byanother filed in the United States before the invention by theapplicant for patent, except that an international application filedunder the treaty defined in section 351(a) shall have the effects forthe purposes of this subsection of an application filed in the UnitedStates only if the international application designated the UnitedStates and was published under Article 21(2) of such treaty in theEnglish language; or

b.

Section 102

1. Section 102(g)

a. (1) during the course of an interference conducted under section 135or section 291, another inventor involved therein establishes, to the extentpermitted in section 104, that before such person's invention thereof theinvention was made by such other inventor and not abandoned,suppressed, or concealed, or

b. (2) before such person's invention thereof, the invention was made inthis country by another inventor who had not abandoned,

suppressed, or concealed it.c. In determining priority of invention under this subsection, there shallbe considered not only the respective dates ofconception andreduction to practice of the invention, but also the reasonablediligence of one who was first to conceive and last to reduce to practice,from a time prior to conception by the other.

2. Section 102(b) the invention was patented or described in a printedpublication in this or a foreign country or in public use or on sale in this country,more than one year prior to the date of the application for patent in the UnitedStates, or

3. Patent-obtaining (affirmative) use of prior inventive activity:a. In interferences under 102(g)(1)b. In antedating 102(a) or 102(e) prior art (in PTO under rule 131, or infederal court litigationc. Activity outside the U.S. courts

4. Patent-defeating use of prior inventive activity:

a. Proving anticipation under 102(g)(2)(more often raised in federal courtlitigationApotex v. Merck

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b. Only activity in the U.S. counts

5. Continuation Application -

a. Section 35 USC 120 - allows you to file a continuation, before theparent patent issues, and by the same inventor . The term does notextend beyond the term of the parent patent

6. Apotex v. Mercka. Apotex argues that Merck kept the process a trade secret (suppressedor concealed), but then it publicized itb. Merck argue that it did not, the court agreed with Merckc. Distinguish burden of proof (persuasion) [section 282 presumption ofvalidity]vs. burden of production (going forward)

1. Apotex v. Mercka. Apotex argues that Merck kept the process a trade secret (suppressed

or concealed), but then it publicized itb. Merck argue that it did not, the court agreed with Merckc. Distinguish burden of proof (persuasion) [section 282 presumption ofvalidity]vs. burden of production (going forward)

d. Rule: Prior invention is deemed"suppressed or concealed" under102(g) if prior artisan does not take steps to make invention publiclyknown within a reasonable time after it has actually reduced theinvention to practicee. Policy: U.S. "first to invent" system actually favors the later-in-timeinventor, who first brings invention to the public, over earlier-in-timeinventor, who keeps invention secretf. Why didn't Merck raise some other possibly easier 102 anticipation

theory besides 102(g)(2) prior makingi. Maybe able to raise a 102(a)/(b), printed prior publications,French Dictionary

1. Why didn't the court talk about this? Because the sourcesdidn't set out the specific process

a. And a problem with enablement

g. 35 U.S.C. 102(g)(2) making in this country requirement:Continued U.S. Discrimination Against Foreign Inventors?

2. Patent-obtaining (affirmative) use of prior inventivea. activity:

i. Activity outside the U.S. counts (in WTO countries)ii. E.g., in interferences under 102(g)(1

iii. E.g., in antedating 102(a) or 102(e) prior art (in PTO under Ruleiv. 131, or in federal court litigation as in Mahurkar v. Bard)v. See 35 USC 104

3. Patent-defeating (defensive) use of prior inventivea. activity:b. Only activity in the U.S. countsc. E g 16d. E.g, proving anticipation under 102(g)(2) (more often raised in federalcourt litigation, e.g., Apotex v. Merck, than in USPTO)

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4.Determining Priority of Invention under 35 USC 102(g)(1)a. Interferenceb. (g) (1) during the course of an interference . . ., another inventorinvolved therein establishes, to the extent permitted in section 104, thatbefore such person's invention thereof the invention was made by suchother inventor and not abandoned, suppressed, or concealed, or

c. Two Step Processi. Conception of the inventionii. Reducing the invention to practice

1. Actual 2. Constructive

d. Rule:i. GENEREALLY the first to reduce to practice is the first to

invent [assuming no abandonment/suppression/concealment]ii. UNLESS the last to reduce to practice was also

1. The first to conceive and2. Sufficiently diligent [i.e. diligent from a time just

prior to first reducer's conception through to the last

reducer's own reduction to practice]iii. In determining priority of invention under this subsection, there

shall be considered not only the respective dates of conception andreduction to practice of the invention, but also the reasonablediligence of one who was first to conceive and last to reduce to

practice, from a time prior to conception by the other.5. Section 104 (a)(1) Proceedings.--In proceedings in the Patent andTrademark Office, in the courts, and before any other competent authority,an applicant for a patent, or a patentee, may not establish a date ofinvention by reference to knowledge or use thereof, or other activity withrespect thereto, in a foreign country other than a NAFTA country or a WTOmember country, except as provided in sections 119 and 365 of this title. .

Loss or Right under the 35 USC 102(b) "Statutory Bars"35 USC 102(b) Types1.What:

a. Patenting of claimed invention anywhere in the world, orb. Description of claimed invention in a printed publicationanywhere in world;c. Invention in public use in U.S., or

d. Invention on sale in U.S.2.When: more than one year before Applicant's earliest effective U.S.filing date

3.Statutory bar clocka. Once an invention has been patented, described in a printedpublication, or put in a public use or on sale in the U.S., this startsthe running of a one-year "clock"

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i. Similar to a statute of limitationsb. Inventor must file U.S. patent application within one year, orshe loses the right to a patent [even if invention is truly novel]

4.European Patent Convention (EPC) EPC Art 54. Noveltya. An invention shall be considered to be new if it does not formpart of the state of the art.

b. The state of the art shall be held to comprise everything madeavailable to the public by means of a written or oral description,by use, or in any other way, before the date of filing of theEuropean patent application

5.Policy Basesa. Minimize detrimental reliance of the public

i. Once the invention is out there if thereafter if we allowan inventor to get an patent more than a year outis that fairto the people that thought the invention was out

b. Encourage prompt dissemination of inventionsc. Prohibit undue commercial exploitation by inventor; andd. Give the inventor a reasonable amount of time following initial

sales activity or public uses to determine whether a patent is aworthwhile investment

6.Public use in this countrya. Egbert v.Lippman

i. [W]hether the use is public or private does notnecessarily depend on number of persons to whom its use isknown. If an inventor, having made his device, gives or sells itto another, to be used by the donee or vendee, withoutlimitation or restriction, or injunction of secrecy, and it is soused, such use is public, even though the use and knowledgeof the use may be confined to one person.

b. Moleculon Research v. CBSi. The district court distinguished Egbert because here

Nichols had not given over the invention for free andunrestricted use by another person. Based on the personalrelationships and surrounding circumstances, the court foundthat Nichols at all times retained control over the puzzle's useand the distribution of information concerning it. The courtcharacterized Nichols' use as private and for his ownenjoyment. We see neither legal error in the analysis nor clearerror in the findings.

c. Broadly speaking a public use occurs when the inventor "releasescontrol" over her invention effectively dedicating it to the public.

d. The key criterion of 102(b) public use is whether the inventor kept"control" over the use of her inventione. Pennock v. Dialogue

i. Voluntary act or acquiescence in the public sale and useis an abandonment of his right; or rather creates a disabilityto comply with the terms and conditions on which alone thesecretary of state is authorized to grant him a patent

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(10)whether the invention reasonably requires evaluationunder actual conditions of use;(11)whether testing was systematically performed;(12)whether the inventor continually monitored the inventionduring testing; and(13)the nature of the contacts made with potential customers.

7.No public knowledge bar in 102(b)

102(b) con't

1. 102(b) Loss of Right Based on Invention "Described in a PrintedPublication" before the critical date2.A year before the filing date, before the critical date "described in aprinted publication"

a. What counts as a printed publication?b. SRI v. Internet Security

i. How skillful would a person in the art be inii. Public accessibility is the touchstone for determine

102(b) "printed publication"iii. Test: has the document been disseminated or otherwise

made available to the extent that person interested andordinarily skilled in the subject matter or art exercisingreasonable diligence, can locate it

iv. But, proof of actual retrieval of document is not arequirement of public accessibility

v. Should author's "intent to disseminate" (or not) count?vi. Dissent: the navigable FTP directory itself was a

"research aid" or "customary research tool"

c. Jockmus v. Leviton (is a picture of an invention in a catalogue a"printed publication" under 102(b)

i. While it is true that the phrase,'printed publication,'presupposes enough currency to make the work part of the

possessions of the art, it demands no more. A single copy ina library, though more permanent, is far less fitted to informthe craft than a catalogue freely circulated, howeverephemeral its existence; for the catalogue goes direct tothose whose interests make them likely to observe andremember whatever it may contain that is new and useful.

d. In re Klpfensteini. Academic conference poster displayii. Relevant factors include:

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1. The length of time that the display was exhibited2. The expertise of the target audience3. The existence of reasonable expectations that thematerial displayed would not be copied; and

4. The simplicity or ease with which the materialdisplayed could have been copied

iii. Speeches or Presentations1. With regard to scientific presentations, it isimportant to note than an entirely oral presentation at ascientific conference that includes neither slides norcopies of the presentation is without question not a

printed publication for the purposes of 102(b)2. Furthermore, a presentation that includes atransient display of slides is likewise not necessarily a

printed publication3.102(b) loss of right based on placing the invention "on sale" in thiscounty

a. Pfaff v. Wells

i. The on-sale bar applies when two conditions are satisfiedbefore the critical date:

1. The product must be the subject of a commercialoffer sale; and

a. Group One, Ltd. v. Hallmark Cards Inc.2. The invention must be ready for patenting

a. Conditions may be satisfied in at least twoways

i. By proof of reduction to practice [ARP]before critical date; or

ii. By proof that prior to the critical datethe inventor had prepared drawings or otherdescriptions of the invention that weresufficiently specific to enable a person skilled inthe art to practice the invention

b. Dippin Dots v. Moseyi. The public sale of goods produced by a process more

than one year before a patent is filed places that process inthe 102(b) prior art

ii. Is this case clearly an "on sale" event, as FedCirsuggests, or could is also be construed as a public use

1. See Metallizing (secret commercialization ofprocess through sale of product before critical date waspublic use

c. Inequitable Conduct Defensei. Elements:

1. Materialitya. Omission or affirmative commissionb. Important to a reasonable examiner standard

2. Intent to deceiveii. Balancing

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iii. Result if proven: all claims of patent renderedunenforceable

d. Antitrust Counterclaims in patent casesi. Elements of monopolizations/attempted monopolization

under 15 USC 21. Market power; and

a. Not presumed from ownership of patent inSection 2 context

2. Unitherm v. Swift-Echkricha. Patent on method of browning pre-cookedmeatsb. In defining relevant market, AT claimantmust provide evidence of economic substitutability;cannot rest on technological uniqueness

3. Anticompetitive conduct, e.g.a. Enforcement of fraudulently obtained patentb. Sham patent litigationc. Refusals to deal

d. Refusals to provide access to and essentialfacility

e. Honeywell v. Universal Avionici. Experimental Use Negation of Pre-Critical Date

Offers/Sales1. Were the sales/offers to sell primarily forexperimental rather than commercial purposes?2. Does the experimental use question comfortably fitwithin prong (1) of Pfaff? Within prong (2)3. Must customer know of experimental purpose

4. What other experimentation factors are importantf. Summary

i. 102(b)-triggering activity includes offers for sale;consummated sales not required

ii. Must be placed on sale in U.S.; foreign sales/offers donot count

iii. Confidential or secret offers/sales can trigger the bariv. Strict identity: between subject matter of the offer/sale

and the later-claimed invention [for pure 102(b) bar]v. Offeree need not be cognizant that subject matter being

offered is the claimed inventionvi. Subject matter of sale need not have been actually

reduced to practice at time of offer (Pfaff v. Wells)

35 USC 103(a)A patent may not be obtained

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Though the invention is not identically disclosed or described as set forthin section 102 of this titleIf the differences between the subject matter sought to be patented andthe prior art are such that

The subject matter as a whole would have been obviousAt the time the invention was made

To a person having ordinary skill in the art to which said subjectmatter pertainsPatentability shall not be negative by the manner in which the inventionwas made

1. What's the difference between Anticipation (35 USC 102) and Obvious (35USC 103)

a. Anticipation - A single prior art reference discloses the widget

b. Obvious - usually involves combining prior art2. What is "Prior Art" for purposes of Sec. 103

a. Any reference used to prove obviousness under Sec. 103 must qualify(as far as its effective date) under some part of Sec. 102

b. Plus, the prior art reference must be from the "analogous art"i. Same field of endeavor as claimed invention,ii. OR difference field of endeavor BUT addresses the same

problem as claimed inventioniii. TEST: reasonable to assume PHOSITA would have consulted this

art?3. In re Paulsen

a. Applicant claimed a laptop computer having a clam-shell physicalstructure, using hinges to secure processor ...

b. Holding: prior art printed publications that taught various hinges andlatches as used in a piano lid, a kitchen cabinet, and a washing machine

were analogous art4. Historical Development of Nonobviousness Requirementa. Hotchkiss v. Greenwood

i. "ordinary mechanic" = legal ancestor of the PHOSITA [personhaving ordinary skill in the art] 35 USC 103 perspective

5. Graham v. Deere (U.S. 1966)a. Factual Inquiries ("Graham's four factor test") underlying thelegal determination of Nonobviousness

i. Scope and content of the prior art1. Section 102 sets forth the universe of prior art potentiallyavailable...

ii. Difference between that prior art and the claims at issue

iii. Level of ordinary skill in the pertinent art; andiv. "secondary Considerations as commercial success, long felt but

unsolved need, failure of others, etc.

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Graham v. Deere (U.S. 1966)Factual Inquiries ("Graham's four factor test") underlying the legal

determination of Nonobviousnessi. Scope and content of the prior art

1. Section 102 sets forth the universe of prior art potentiallyavailable...

ii. Difference between that prior art and the claims at issueiii. Level of ordinary skill in the pertinent art; andiv. "secondary Considerations as commercial success, long felt but

unsolved need, failure of others, etc.

KSR International v. Teleflexa. The "Teaching/Suggestion/Motivation to Combine" [TSM] Testb. Pre-KSR meaning v. Supreme Courts View:

i. When there is a design need or market pressure to solve a problemand there are a finite number of identified, predictable solutions, aperson or ordinary skill has good reason to pursue the known optionswithin his or her technical grasp. If this leads to the anticipated success, itis likely the product not of innovation but of ordinary skill and commonsense. In that instance the fact that a combination was obvious totry might show that it was obvious under Sec. 103

c. Is the T/S/M test still alive? Yes, but it was too rigid or too narrow. Mustthink about TSM in a broader wayd. PHOSITA = person of "ordinary creativity , not an automation": whatare the implications of this?

e.Use of "common sense" encouraged - how does USPTO find evidence of this?[compare In re Lee (Fed Cir. 2002)]

f.Should the fact that USPTO did not know about Asano during prosecution ofthe Engelgau patent void the presumption of Engelgua's validityi. Seems to suggestion, section 282, only really only applies to the priorart know to the PTO. The SCOTUS seems to suggestion that somethingelse comes along it may lower the standard of what the objector needs toshow

ii. Would be contrary to the statuteg. Rationales to support 103 Rejections [from Oct. 2007 PTOGuidelines

i. (A) Combining prior art elements according to known methods to yieldpredictable results;

ii. (B) Simple substitution of one known element for another to obtain

predictable results;iii. (C) Use of known technique to improve similar devices (methods, orproducts) in the same way;

iv. (D) Applying a known technique to a known device (method, orproduct) ready for improvement to yield predictable results;

v. (E) Obvious to trychoosing from a finite number of identified,predictable solutions, with a reasonable expectation of success;

vi. (F) Known work in one field of endeavor may prompt variations of it foruse in either the same field or a different one based on design incentives

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or other market forces if the variations would have been predictable toone of ordinary skill in the art

vii. (G) Some teaching, suggestion, or motivation in the prior art thatwould have led one of ordinary skill to modify the prior art reference or tocombine prior art reference teachings to arrive at the claimed invention.

In re Sullivan (Fed. Cir. 2007)Daiichi Sankyo v. Apotex (Fed. Cir. Sept 12, 2007)

a.

Potentially Patentable Subject Matter1. Potentially Patentable Subject Matter [aka statutory subject matter]

a. 35 USC Sec. 101 - what kind of inventions are patentablei. "Whoever invents or discovers any new and useful process,machine, manufacture, or composition of matter, or any new anduseful improvement thereof, may obtain an patent therefore, subjectto the conditions and requirements of this title."

b. 35 USC 100i. The term "process" means process, art or method, and includesa new use of a known process, machine, manufacture, composition ofmatter, or material

2. In re Bergy (CCPA 1979) (Rich, J.)a. "...for if he has not invented something, if he comes with something heknows was invented by someone else, he has no right even to approachthe door"

b. "In dealing with the question of kind, as distinguished from thequalitative conditions which make the invention patentable, 101 is broadand general; its language is: "any * * * process, machine,manufacture, or composition of matter, or any *** improvementthereof."

c. "Notwithstanding the words "new and useful" in 101, the invention isnot examined under that statute for novelty because that is not thestatutory scheme of things or the long-established administrative practice."

3. Patentable subject matter: litigated areasa. Life sciencesb. Computer software-implemented inventions

c. Methods of doing business

4. Diamond v. Chakrabarty (U.S. 1980)a. U.S. Plant Protection Statutes

i. Plant Patent Act (1930)1. -35 USC 161 (administered by USPTO)2. Distinct and new varieties of asexually reproduced plants[other than tuber-propagated or found uncultivated

ii. Plant Variety Protection Act (1970)

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1. 7 USC 2321 et seq. (administered by USDA)2. New varieties of sexually reproduced plants3. Excludes bacteria, fungi, 1st-gen hybrids

b. These Acts were not seem as limiting

c. Parker v. Flook(US 1978)i. Held that a claimed method of computing an alarm limit in an

industrial process control system was not within patentable subjectmatter under 35 USC 101

ii. State that the judiciary "must proceed cautiously whenaskedto extend patent rights into areas wholly unforeseen by Congress."

5. Non-patentable Subject Mattera. Judicial decisions have established that the following are notpatentable subject matter in U.S.

i. Law of natureii. Natural phenomenaiii. Products of natureiv. Abstract ideas; andv. Unapplied mathematical algorithms

b. These seem to be fundamental building blocks, that seemed to beused for other inventions

6. 42 USC 2181 - inventions relating to atomic weapons, and filing reportsa. "useful solely in the utilization of special nuclear material or atomicenergy in an atomic weapon"

7. Higher Life Formsa. Patent office seems to allow these types of patents if the claimsinclude "non-human"

8. Computer Software - Implemented Inventions & Business Methods

a. Diamond v. Diehr(1981)

i. Transformation requirement- transformation and reductionof an article "to a different state or thing is the clue to thepatentability of a process claim that does not include particularmachines

ii. [W]e think that a physical and chemical process for moldingprecision synthetic rubber products falls within the 101 categories ofpossibly patentable subject matter. That respondents' claims involvethe transformation of an article, in this case raw, uncured syntheticrubber, into a different state or thing cannot be disputed.

b. State Street v. Signature Financial

i. Today, we hold that the transformation of data, representingdiscrete dollar amounts, by a machine through a series of

mathematical calculations into a final share price, constitutes apractical application of a mathematical algorithm, formula, orcalculation, because it produces "a useful, concrete andtangible result"--a final share price momentarily fixed for recordingand reporting purposes and even accepted and relied upon byregulatory authorities and in subsequent trades.

c. In re Comiskey(Fed. Cir. 2007)

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i. Holding unpatentable under section 101 claims to method formandatory arbitration involving legal documents such as wills orcontracts

ii. Is this decision consistent with State Street? Is it distinguishableiii. Different treatment of system claimsiv. Why is the appellate court deciding issues never considered

below by USPTOv. "Mental processes - or processes of human thinking - standing

alone are not patentable even if they have practical application"vi. "The present statute does not allow patents to be issues on

particular business systems - such as a particular type of arbitration -that depend entirely on the use of mental processes"

vii. The routine addition of modern electronics to an otherwiseunpatentable invention typically creates a prima facie case ofobviousness

d. In re Bilksii. Whether claim 1 of the Bilski patent application claims patenteligible subject matter under 25 USC 101

35 USC 101 Inventions patentable UtilityUtility Requirement

1. Whoever invents or discovers any new and useful process, machine,

manufacture, or composition of matter, or any new and useful improvementthereof, may obtain and patent therefor, subject to the conditions andrequirements of this title

2. Bedford v. Hunt (Justice Story) - old casea. Some beneficial use in society

b. Not necessary to establish, that the invention is such general utility,as to supersede all other inventions now in practice

i. The invention just has to workc. If its practical utility be very limited, it will follow, that it will be of littleor no profit to the inventor; and if it be trifling, it will sink into utter neglect.d. The law, however, does not look to the degree of utility

3.Juicy Whip v. Orange Bang

a. Patent office no longer looks at the morality of the inventioni. "even if the use of a resvoir containing fluid that is not

dispensed is considered deceptive, that is not by itselfsufficient to render the invention unpatentable"

ii. "congress never intended that the patent law shoulddisplace the police powers of the states, meaning by thatterm those powers by which the health, good order, peaceand general welfare of community are promoted

4. Brenner v. Manson (U.S. 1966)

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a. The basic quid pro quo contemplated by the Constitution and theCongress for granting a patent monopoly is the benefit derived by thepublic from an invention with substantial utility. Unless and until aprocess is refined and developed to this point --where specific benefitexists in currently available form --there is insufficient justification forpermitting an applicant to engross what may prove to be a broad field. . .

b. A patent is not a hunting license. It is not a reward for the search, butcompensation for its successful conclusion

5. In re Branaa. FDA approval, however, is not a prerequisite for finding a compounduseful within the meaning of the patent laws. . . . Usefulness in patent law,and in particular in the context of pharmaceutical inventions, necessarilyincludes the expectation of further research and development. The stageat which an invention in this field becomes useful is well before it is readyto be administered to humans

6.In re Fishera. Is where we are at right nowb. Asserted utilities

i. (1) serving as a molecular marker for mapping the entiremaize genome, which consists of ten chromosomes thatcollectively encompass roughly 50,000 genes;

ii. (2) measuring the level of mRNA in a tissue sample viamicroarray technology to provide information about geneexpression;

iii. (3) providing a source for primers for use in thepolymerase chain reaction ("PCR") process to enable rapidand inexpensive duplication of specific genes;

iv. (4) identifying the presence or absence of apolymorphism;

v. (5) isolating promoters via chromosome walking;vi. (6) controlling protein expression; andvii. (7) locating genetic molecules of other plants and

organisms.

c. "[T]o satisfy the substantial utility requirement, an asserted usemust show that that claimed invention has a significant and presentlyavailable benefit to the public."

d. The specific utility requirement means that the claimed inventioncan be used to provide a well-defined and particular benefit to the public.

e. Is Fisher limited to ESTs or will it be applied more broadly

Patent Enforcement, Part One: Claim Interpretation1. Patent Claims v. Specification

a. Compare claims to real property deed setting the boundaries of theinvention.

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b. It is legally erroneous to refer to paten claims as describing aninvention

2. 35 USC 271 (2008)

a. (a) Except as otherwise provided in this title, whoever withoutauthority makes, uses, offers to sell, or sells any patentedinvention, within the U.S. or imports into the United States any

patented invention during the term of the patent therefore, infringesthe patent."b. i.e. what, where, and when

3. Two Step Analysis for determining patent infringementa. Interpret the patent's claims; andb. Compare the properly-interpreted claims to the defendant's accuseddevice

4. Infringementa. Literalb. DOE - doctrine of equivalence

5. Autogiro Co. v. United Statesa. The inability of words to achieve precision is [probably more acute]with patent claims than it is with statutesAn invention exists mostimportantly as a tangible structure or a series of drawings. A verbalportrayal is usually an afterthought written to satisfy the requirements ofpatent law

b. "..Often the invention is novel and words do not exist todescribe itThings are not made for the sake of words, but words forthings. To overcome this lag patent law allows the inventor to be his ownlexicographer"

6.Step 1) Interpreting Patent Claimsa. Claim construction "canons" [basic rules]

i. Generally rule: claim terms are to be interpreted according to

their "ordinary and customary" meaning to the PHOSITAii. Exception: patentee may be her "own lexicographer"1. Example: a patent's written description states that "[a]sused herein, the phrase 'one meter' means 99 centimeters."

2. See also Dippin Dots v. Moseya. Patent's written description supplied specific, anarrow definition of "bead" as limited to sphere"

iii. "Claims should be interpreted in light of the specification, butclaims should not be improperly narrowed by reading limitations intothe claims from the specification"

iv. Phillips v. AWH1. "[W]e have expressly rejected the contention that if a

patent describes only a single embodiment, the claims of thepatent must be construed as being limited to that embodiment."2. [T]he presence of a dependent claim that adds aparticular limitation gives rise to a presumption that thelimitation in question is not present in the independent claim.

v. "Courts should generally not adopt a claim interpretation thatwould exclude the preferred embodiment of an invention

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vi. Claim differentiation provides that the existence of the narrowerdependent claim shows that the broader claim from which it dependsis not so limited

vii. Unique Concepts v. Brown

b. Who performs the claim interpretation task in a jury trial?

i. Really a constitutional case and a right to a jury trial1. 7th amendment (1791)- "in suits at common law,where the value in controversy shall exceed twenty dollars, theright of trial by jury shall be preserved"

2. Policy: functional consideration III, part B

b. Standard of review on appealc. Elements of Collateral Estoppel(Issue Preclusion)

i. (1)the issue at stake must be identical to the one involved in theprior litigation;

ii. (2)the issue must have been actually litigated in the prior suit;iii. (3)the determination of the issue in the prior litigation must

have been a critical and necessary part of the judgment in thataction; and

iv. (4)the party against whom the earlier decision is asserted musthave had a full and fair opportunity to litigate the issue in theearlier proceeding.

d. Impact ofMarkman:

i. Post-Markman: we routinely have pre-trial (i.e., no juries)claim interpretation hearings (typically referred to asMarkman hearings)

ii. No interlocutory appeals, but large increase in appeals fromsummary judgment

e. Judge v. Juryi. ROLE OF JUDGE: Interprets the claims (q of law, per FederalCircuit)

1. Remedies: injunctive relief

ii. ROLE OF JURY: Decides whether the claim as interpreted byjudge covers accused product (q of fact) and

1. Remedies: determines damagesf. Fed Cir's Standard of Review for Patent ClaimInterpretation

i. Cyborv. FAS Techs. (Fed. Cir. 1998) (en banc) (claiminterpretation is entirely legal; no subsidiary factquestions; SOR is de novo)

ii. Federal Circuit reverses District Courts on at least one claimconstruction issue in ~40% of appeals

1. Creates a high level of uncertaintyiii. some members of the FC appear to take a more pragmatic,

"common sense" position.1. Where in practice the FC will give weight to a districtcourt's claim interpretation commensurate with the degreeof care taken by the district court in its analysis and the

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informational value of the record that the district courtconsidered

c. Evidentiary Sources?i. Order in which to consult?ii. Weight to be given

1.Evidentiary Sources?i. Order in which to consult?ii. Weight to be given

2. The Saga ofPhillips: What is the proper evidentiary foundation forclaim interpretation?3.Evidentiary Sources for Patent Claim Interpretation

i. Intrinsic Evidence:i. Language of the claims themselvesii. Remainder of the specification (i.e., written description

and drawings)iii. Prosecution history (including prior art of record)

ii. Extrinsic Evidence:i. Dictionaries, treatises, other technical documentationii. Prior art not in the prosecution historyiii. Expert testimonyiv. Inventor testimony (??)

4.Federal Circuit Split: Two Philosophies of Patent Claim Interpretationi. Contextualist/Holistic approach:

i. Focus on the specification and prosecution historyii. E.g., Phillips v. AWH(Fed. Cir. 2004) (Lourie, J., joined by

Newman, J.) [3-judge panel decision]ii. Literalist/Proceduralist approach:i. Focus on dictionaries first; use spec to weed outii. Phillips v. AWH(Fed. Cir. 2004) (Dyk, J., dissenting)iii. Texas Digital v. Telegenix(Fed. Cir. 2002)

5.Texas Digital v. Telegenixi. When a patent is granted, prosecution is concluded, the

intrinsic record is fixed, and the public is placed on notice of itsallowed claims. Dictionaries, encyclopedias and treatises, publiclyavailable at the time the patent is issued, are objective resourcesthat serve as reliable sources of information on the establishedmeanings that would have been attributed to the terms of the

claims by those of skill in the art. . . .ii. Such references are unbiased reflections of commonunderstanding not influenced by expert testimony or eventssubsequent to the fixing of the intrinsic record by the grant of thepatent, not colored by the motives of the parties, and not inspiredby litigation. Indeed, these materials may be the most meaningfulsources of information to aid judges in better understanding boththe technology and the terminology used by those skilled in theart to describe the technology. . . .

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iii. Consulting the written description and prosecution history asa threshold step in the claim construction process, before anyeffort is made to discern the ordinary and customary meaningsattributed to the words themselves, invites a violation of ourprecedent counseling against importing limitations into theclaims. . . .

6. Use of Dictionaries: Phillips v. AWH Corp.i. Although the concern expressed by the court in Texas Digital

was valid, the methodology it adopted placed too much relianceon extrinsic sources such as dictionaries, treatises, andencyclopedias and too little on intrinsic sources, in particular thespecification and prosecution history.

7. Use of Specification: Phillips v. AWH Corp.i. Shortly after the creation of this court, Judge Rich wrote that

"the descriptive part of the specification aids in ascertaining thescope and meaning of the claims inasmuch as the words of theclaims must be based on the description. The specification is,thus, the primary basis for construing the claims." Standard OilCo. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985). Onnumerous occasions since then, we have reaffirmed thatpoint . . . ."

8. Use of Prosecution History: Phillips v. AWH Corp.i. The prosecution history, which we have designated as part of

the "intrinsic evidence," consists of the complete record of theproceedings before the PTO and includes the prior art cited duringthe examination of the patent. . . . . Yet because the prosecutionhistory represents an ongoing negotiation between the PTO andthe applicant, rather than the final product of that negotiation, itoften lacks the clarity of the specification and thus is less useful

for claim construction purposes.9. Timing for Claim Interpretation: Phillips v. AWH Corp.

i. We have frequently stated that the words of a claim aregenerally given their ordinary and customary meaning. . . . Wehave made clear, moreover, that the ordinary and customarymeaning of a claim term is the meaning that the term would haveto a person of ordinary skill in the art in question at the time ofthe invention, i.e., as of the effective filing date of the patentapplication. . . .

Compare the properly-interpreted claims to the accused device

Apply All-Elements Rule: to find infringement, each and every limitation of theproperly interpretedclaim must be met in the accused device, either literally or under the Doctrine ofEquivalents

Two Theories of Infringement1) Literal Infringement:- Accused device is clearly inside the boundaries of the properly-interpreted claim

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2) Doctrine of Equivalents Infringement:- Judge-made doctrine- Accused device is outside the literal boundaries of the claim (non-textualinfringement)- Important safety valve/insurance policy

Maxim"That which anticipates if earlier in time, would literally infringe if later intime.There can be no denying that the doctrine of equivalents, when applied broadly,conflicts with the definitional and public notice functions of the statutoryclaiming requirement.Graver Tank v. Linde Air Prods.(U.S. 1950) Determining technologic equivalency (a fact question):

Merely insubstantial differences between claimed invention and accuseddevice Function-Way-Result Test : does the accused device perform substantiallythe same function as claimed invention, in substantially the same way, to achievesubstantially the same result?Probative Evidence for Equivalency: Patent itself Prior art Particular circumstances of the case Expert testimony

Technical treatises Purpose of an ingredient in the invention Qualities of ingredient in combination with other ingredients Intended function of ingredient Known interchangeability an important factorCourt emphasizes that the record contained no explanation or indication thatLincolnweld [the accusedcomposition] was developed by independent researchIs an intent to copy a prerequisite for finding liability under DOE ???

Recognized Reverse Doctrine of Equivalents (RDOE) Wholesome realism of DOE is that it can work for the patentee or for theaccused infringer RDOE = Defense to literal infringement

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Test: RDOE applies where the accused product falls within the literal words of apatent claim, but the accused product has been so changed that it is no longer thesame invention

Warner-Jenkinson v. Hilton Davis Chem. Co. (U.S. 1997)Implied Congressional negation of DOE through enactment of section 112, 6 in the1952 Act ?Section 112/6 as application of the DOE in a restrictive role ?Should DOE be applied to invention-as-awhole, or to individual claim limitations? Court adopts All-Elements Rule More accurately, All-Limitations RuleGoal: to minimize the tension/uncertainty between notice function of claims and theDOETiming: when do we evaluate equivalency? Insofar as the question under the [DOE] is whether an accused element isequivalent to a claimed element, the proper time for evaluating equivalency . .. isat the time of infringement, not at the time the patent was issued. Thus, after-arising technology can still infringe under DOE [e.g., Hughes Aircraftv. U.S.]Famous Footnote 8: Recognizes various legal limitations on DOE, to be decided by the court (so thatsome cases may beresolved on summary judgment of non-infringement and never reach the jury)Legal limitations on DOE include: Prosecution History Estoppel (PHE) [see Festo] Dedication to Public doctrine [ see J&J v RE Service]

Vitiation of claim limitationsProsecution History Estoppel (PHE) as a legal limitation on the availability of DOE D asserts PHE as a defense to Ps assertion of infringement under DOEWhat is the scope of the estoppel?Absolute vs. flexible bar to equivalents

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Court establishes a silent record presumption of PHE, which would bar anyequivalents as to the amended limitation in question But this presumption may be rebutted

Prosecution History Estoppel (PHE)1. General concept: if, during patent prosecution, an applicant surrenderedsome par t of its claimed territory in order to obtain its patent, then thepatentee should not be able to later recapture that surrendered territory thoughreliance on the DOE2. PHE operates as a defense to DOE [reliance argument]3. Like DOE, the doctrine of PHE is judge-made law4. Distinguish: PHE from use of prosecution history as a tool in claiminterpretation (determini.History of PHE1. Hughes Aircraft v. U.S.

a. "Amendments may be of different types and may serve differentfunctions. Depending on the nature and purpose of an amendment, it mayhave a limiting effect within a spectrum ranging from great to small tozero.

2. Festo (en banc)a. Majority rejects flexible bar rule as "unworkable"b. Adopts bright-line "complete bar" rulec. Complete bar rule devalues existing patents

3.Festo (U.S. 2002)a. Fed. Cir. Erred in adopting rigid un-rebuttable "complete bar" ruleb. SCT announces "presumptive bar" rulec. SCT identifies three ways to rebut presumptiond. Three possibilities for rebutting Festo's presumptive bar to equivalents:

i. Alleged equivalent was "unforeseeable" at time of claimamendment

ii. Reason for the amendment was "merely tangential" [i.e.unrelated or merely peripheral] to the alleged equivalent; or

iii. Some other reason

4. Fresto (Fed. Cir. 2003) (en banc)a. Rebuttal of Festo presumption is for court, not jury

b. Rebuttal criteria (1): unforeseeability: objective inquiry, fact question,can admit extrinsic evidencec. Rebuttal criteria (2): Mere tangentialness (merely tangential): can relyonly on persecution history

i. Look at the amendment and the prior art that patentee wastrying to avoid.

ii. So if prior art that patentee was trying to distinguish away fromthe accused device is not similar, you have a stronger argument.

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d. Rebuttal Criteria (3): "Some Other Reason": ideally limited toprosecution history

Festo PHE Analysis1. This diagram is done by the court, before anything even goes to the jury.http://www.lexisnexis.com/practiceareas/ip/pdfs/chisumfesto.pdf1. Presto

a. When you make a amendment that further defines something that isinherent then you are not narrowing the claim and don't have a DOEproblem.b. Exclusion of the Aluminum Call Flap" prior art - why?c. Public policy arguments for admittingd. Standard of review on exclusion order?e. Anything Def. can do now?

1. "Vitiation" of a claim limitation:a. Another legal limitation on Application DOE

Topics

1. Direct Infringement by Multiple Entities under a Theory of "Joint Infringement"2. Liability for Indirect Infringement - Inducing Infringement or ContributoryInfringement

a. Must have direct infringement to have indirect infringement3. Equitable Defenses - Inequitable Conduct

35 USC 271 Infringement of Patent(a) Except as otherwise provided in this title, whoever without authority makes,uses, offers to sell, or sells any patented invention, within the United

States, or imports into the United States any patented invention during theterm of the patent therefor, infringes the patent.(b) Whoever actively induces infringement of a patent shall be liable as aninfringer.(c) Whoever offers to sell or sells within the United States or imports into theUnited States a component of a patented machine, manufacture, combination,or composition, or a material or apparatus for use in practicing a patented

http://www.lexisnexis.com/practiceareas/ip/pdfs/chisumfesto.pdfhttp://www.lexisnexis.com/practiceareas/ip/pdfs/chisumfesto.pdf

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process, constituting a material part of the invention, knowing the same to beespecially made or especially adapted for use in an infringement of such patent,and not a staple article or commodity of commerce suitable for substantialnoninfringing use, shall be liable as a contributory infringer.1. "Joint" Direct Infringement Liability under 271(a)?

a. [a/k/a "Divided" Infringement]2. BMC Resources v. Paymentech (Fed. Cir. 2007)

a. Is Paymentech liable under 271 (a), (b), or ?b. What is the proper standard for finding Paymentech "vicariously liable"under 2719a) for the acts of other method participantsc. How could parties avoid liability by entering into "arms-lengthagreements to avoid infringement"?

i. What about formal contractsd. Could claim be rewritten to avoid result in this case? Can all inventionsbe claimed such that only a single entity performs entire inventione. No Direct Liability

i. "Arm Length Relationship" between D and other actors

f. Direct Liabilityi. Direction and control over all other actorsii. What you really need is the D to be the "Mastermind"

3. MuniAuction Inc. v. Thomson Corp.a. Patent covered methods for conducting original issuer municipal bondauctions over an electronic network such as the internetb. DC found (pre-Paymentech) "joint infringement" where multiple partiesperformed differing steps of method claim; awarded 77M damagesc. Appeal based on Paymentech - appellant contends that accusedinfringer did not direct or control all stepsd. "Where the actions of multiple parties combine to perform every stepof a claimed method, the claim is directly infringed only if one party

exercises "control or direction" over the entire process such that everystep is attributable to the controlling party i.e. the "mastermind"at theother end of the is multi-party spectrum, mere "arms-length cooperation"will not give rise to direct infringement by an party

4. Symantec v. Computer Associatesa. Symantec's method claims required that its anti-virus program runs inconjunction with an end-user's downloading programb. FedCir reverses DCt's SJ of no inducing infringement by accusedinfringer CA, which sold an anti-versus programc. Symantec has produced sufficient circumstantial evidence of directinfringement to create a genuine issue of material fact, even thoughSymantec has not produced evidence that any particular customer hasdirectly infringed the patent"

International Patenting Issues1. No international patent2. PCT

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3. But a number o international and regional treaties and conventions exist thatmake it easier to obtain patents in multiple foreign countries

Major multinational agreements pertaining to patent rights1. Paris convention for the protection of industrial property 1883

2. Patent Cooperation Treaty (PCT) 19703. Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) 1995Leading International IP Organizations: WTO (TRIPS) & WIPO (Paris/PCT)Paris Convention for the Protection of Industrial Property (1883)1. First international IP agreement:

a. Focus: patents & trademarks2. U.S. played leading role, in contrast to Berne (Copyright) Convention (why?)3. No min right regarding availability and scope of patents

a. Compare TRIPS 1995)

4.National Treatmenta. Must treat foreign seeking industrial property protection in that countryas well as or better than it treats its own nationals

5.Right of Prioritya. Article 4 of the Paris Conventionb. By filing a patent application in the inventor's home country aninventor can obtain the benefit of that same initial filing date (priority date)in any other Paris Convention signatory countries in which she filedadditional applications on the same invention, within the period of timecalled priority periodc. Doesn't reduce the term of protection by the length of thepriority period

6. Article 4 (A)(1) Any person who has duly filed an application for a patent, or for theregistration of a utility model, or of an industrial design, or of a trademark,in one of the countries of the Union, or his successor in title, shall enjoy, forthe purpose of filing in the other countries, a right of priority during theperiods hereinafter fixed.

(2) Any filing that is equivalent to a regular national filing under thedomestic legislation of any country of the Union or under bilateral ormultilateral treaties concluded between countries of the Union shall berecognized as giving rise to the right of priority.

(3) By a regular national filing is meant any filing that is adequate toestablish the date on which the application was filed in the countryconcerned, whatever may be the subsequent fate of theapplication.

Impact re Patent Term

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U.S. Implementation of Paris Convention art. 4 Right of Priority

1. 35 USC 119(a) ("Benefit of Earlier Filing Date; Right of Priority")a. Inventor files foreign application ("priority application) for invention X(in any paris convention or WTO member country)

b. Inventor files US application for "same invention" X within the priorityperiod (12 month)

c. US application "shall have the same effect" [i.e. be entitled to samefiling date] as foreign priority application/assuming 35 USC 112/1satisfied]

d. Part of119 (a) "...but no patent shall be granted on any applicationfor patent for an invention which had been patented or described in aprinted publication in any country more than one year before thedate of the actual filing of the application in this country, or whichhad been in public use or on sale in this country more than oneyear prior to such filing."

i. Similar to the 102(b) requirement2.In re Hilmer

a. States that when a US patent (or published application) is being reliedon as a prior art reference under 35 USC 102(e), its effective date is its USfiling date, not any earlier foreign priority date the benefit of which wasclaimed in the process obtaining the reference patent.b. Patent obtaining use v. patent defeating use (conflict between119 and 102(e))

i. 119 shall have the same effect vs.

ii. 35 U.S.C. Section 102(e)a. the invention was described in -

i. (1) an application for patent, published under

section 122(b), by another filed in the United Statesbefore the invention by the applicant for patent orii. (2) a patent granted on an application for

patent by another filed in the United States beforethe invention by the applicant for patent, except thatan international application filed under the treatydefined in section 351(a) shall have the effects forthe purposes of this subsection of an application filedin the United States only if the internationalapplication designated the United States and waspublished under Article 21(2) of such treaty in theEnglish language; or

b. Note "filed in the United States"c. Distilled Essence of In re Hilmeri. The Hilmer rule provides that when the disclosure of a US patentis relied on as prior art, its effective date is its US application filingdate, not any earlier foreign filing date to which the reference patentmay have been entitled under 119(a)

d. Criticism of Hilmer Rule

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i. Does the rule violate TRIPS 27.1 which requires that "patentsshall be available and patent rights enjoyable without discriminationas to the place of invention"?

3. Patent Cooperation Treaty ("PCT") - special agreement under Paris