outline patents

8/3/2019 Outline Patents

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Patent law requires the public disclosure of an invention w sufficient specificity to enable one of

ordinary skill in the art to make itThus, it is impossible for patent and ts protection to exist simultaneously

PATENT LAW

Cause of Action Protectable matter Duration PurposePatent Infringement

even if inventor

developedproduct/process

independently

Novel, useful, non-

obvious inventions

Term of

years; 20 yrs

minus the amtof time the

patent spent

in app process

I. BACKGROUNDa. Introduction

i. Grounded in property and K lawii.

Requires the public disclosure of an invention with sufficient specificity toenable one of ordinary skill in the art to make it

1. Thus, it is impossible for patent and ts protection to existsimultaneously

iii. Inventions occur in 2 ways1. Flash of genius2. Cumulative invention

a. The problem is that 1 system is trying to accommodate bothkinds of invention simultaneously

iv. Factors to consider when trying to figure out whether patent is the rightlaw when confronted with new fact pattern:

1.

How important is patent protection to the industry (in some likepharmaceuticals, it is critical)

2. What other incentives exist3. How much does research cost4. Should we protect accidental inventions5. How important is disclosure

v. What does a patent look like?1. Specification:

a. Description of the technical problem faced by the inventorand how inventor solves the problem

b. Drawings if necessaryc.

Claims in single sentence onlyb. Underlying Theory

i. Inventions are public goodsii. Incentivizes investment in creating, developing, and marketing new

products

iii. Promotion of science and useful artsc. Procedural Requirements

i. Submit application to US Patent and Trademark Office


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ii. Timing: right for patent disappears if in public use for more than a yeard. 5 Substantive Requirements for Patentability:

i. The 5 requirements are: patentable subject matter, novelty, utility, non-obviousness, and enablement

ii. Patentable subject matteriii.

Novelty1. Invention has not been preceded in identical form in the public

prior art

2. Must be first to make the invention you are claimingiv. Utility

1. Minimal obstacle2. Requires practical and operable3. Can meet this even if invention works only in an experimental

setting

v. Non-obviousness1. Non-triviality: Represents a nontrivial extension of what was

known2. This is the most important requirement3. Inquiry: whether an invention is a big enough technical advance

over the prior art.

a. Even if an invention is new and useful, it will not get apatent if it represents merely a trivial step forward in the art

vi. Enablement1. Disclosed and described by applicant in such a way as to enable

others w skill in the art to make and use the invention

e. Rights Conferredi. Right to exclude others from making, using, selling, offering for sale, or

importing the claimed invention for a specific term of years

1. In return for this grant of rights there are high procedural andsubstantive standards

ii. Indirect rights1. Invention may be a market itself (drug)2. Patent may serve a barrier to entering the market3. Licensing fees from others who make and sell products/processes

falling within patent claims

f. Vocabularyi. Invention = both invention and discovery (as used in Patent Act)

ii. Claims = defined the boundaries of the property right that the patentconfers; this is the precise legal definition of the invention

1. Define the patented inventioniii. Comprising =

1. You will be infringing if you have all of my elements, even if youadd some others

iv. Consisting of =1. You are infringing only if you have my elements and no others2. Narrow, closed claim


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3. My invention are these elementsg. Filing causes of action

i. If patent refused: board of patent and appeals circuit SCii. If claim for patent infringement: district ct circuit SC

II.

#1 PATENTABLE SUBJECT MATTERa. What types of inventions will be considered for patent protectionb. 35 USC 101: Whoever invents or discovers any new and useful

i. Processii. Machine

iii. Manufactureiv. Composition of matter ORv. Any new and useful improvement thereof

c. First distinguish, is it a process of product claimi. Note that the categories are not mutually exclusive, can be both

d. Invents or discovers makes it clear you can receive protection for discoveringand not only creating something new and usefule. Whats not patentable?

i. Laws of nature (DNA sequences, gravity, theory of relativity)ii. Physical phenomena

iii. Things found in nature Funkiv. Abstract ideasv. *What IS patentable is application of these thingse.g. gravity to solve

problems

f. A process is patentablei. 35 USC 100(b)

1. RULE: Means process, art, or method, and includes a new useof a known process, machine, manufacture, or composition of

matter, or materialii. Examples (from ee)

1. Method for making something2. Method for using something3. Method for doing something

iii. See also Bilski (below)g. Composition of Matter is patentable:

i. Diamond v. Chakrabarty (SC 1980)1. Facts: pl seeking to patent a non-naturally occurring (human-

made) genetically engineered bacterium capable of breaking down

multiple components of crude oil

2. Issue: Whether a live, human-made micro-organism is patentablesubject matter

a. Specifically, whether applicants micro-organismconstitutes a manufacture or composition of matter withinthe meaning of 101


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3. HELD: Yes. The process for making the microorganism: Agenetically altered micro-organism, as well as the organism itself,is eligible for patent protection

a. Applicant invented new bacterium with markedly diffcharacteristics from any found in nature and one having

potential for sig utility (oil spills)i. This organism is not naturally occurringb. Process for making the microorganism (adding genetic

material to naturally occurring bacterium) eligible forpatent as is the microorganism itself

i. Ct refuses to read an exception for living things intothe Patent Act, this is for Congress to amend

4. RULE: a composition of matter includes all compositions oftwo or more substances andall composite articles, whether

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

5.

RULE: a manufacture = the production of articles for use fromraw or prepared materials by giving to these materials newforms, qualities, properties, or combinations, whether by hand-

labor or by machines.a. Laws of nature, physical phenomena, abstract ideas are not

patentable6. Take: if new, and made by humans, its patentable

ii. Parke-Davis v. HK Mulford(1911)1. Facts: inventor of 2 patents at issue discovered how to isolate a

purified substance of significant medical use from the suprarenalglands of animals. Pl suied def for infringement when def made

and sold a similar product and def appealed claiming the patents

were invalid bc they were not a new composition of matter

2. Patent: the purified form of a substance found in nature (adrenalin)3. Issue: whether these patents are invalid as products of nature4. HELD: purified adrenaline extracted from animal tissue qualifies

as a new producta. Even if adrenaline occurs in nature, the purified form for

every practical purpose is a new thing commercially andtherapeutically

b. Key was the extracted products commercial andtherapeutic value

5. BL TEST: Was invention required to isolate the naturalsubstance into a purified form

a. This is really a novelty questionb. Is the thing being claimed the same as whats in nature or

something different?c. When I isolate and purify, am I creating something that is

the same or different as something in nature

6. We know something is new if:


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a. Brings different therapeutic/commercial benefits7. 2 part TEST for patenting product of nature:

a. Was human intervention required?b. Does result have characteristics/advantages that differ

from the natural product commercially or

therapeuticallyiii. Funk Brothers (note case)1. Product was a combination of bacteria. It did not involve a claim

on a process but just for the resulting product2. HELD: the combo of nonmutually inhibiting strains of bacteria

was not patentable

a. Bc the combo occurred in nature, the applicant was simplyclaiming a newly discovered natural principle

3. Patents cannot issue for phenomena of nature4. The qualities of the bacteria at issue, like the heat of the sun,

electricity, or the quality of metals, are part of the storehouse of

knowledge of all meniv. Patenting of living things:1. Generally no objection to patent claims covering aprocess for

extracting a natural product as opposed to claims to the product

itself

2. No parent for discovering a previously unknown plant or animal(or mineral).

3. Human creation of an entirely new bacterium does qualify forpatent protection under Chakrabarty

4. Patenting human DNA sequences are considered valid bc theytypically claim isolated and purified gene sequences Parke-Davis

a. Substances occurring in nature like genes, chemicals etcmay be patentable subject matter if they are purified or

isolatedb. Traditional rule is that a new and useful purified and

isolated DNA compound described by the sequence of base

is eligible for patenting, subject to satisfying the othercriteria for patentability

i. A patent on a gene covers the isolated and purifiedgene but does not cover the gene as it occurs innature

h. Abstract ideas are not patentable Chakrabartyi. How to tell if an idea is abstract

1. Profdoesnt knowii. Examples: business methods, software

iii. Point of novelty analysisi. Issue: Is a claim to a process patentable under 101

i. In re Bilski (SC 2008)


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1. Claim: a method for managing the consumption risk costs of acommodity provider at a fixed price (prof says incredibly broad,not new)

a. Concerns method claims, specifically business methods forhedging risk in commodities market

b.

No machine involved and no transformation of subjectmatter

2. Issue: whether applicants invention as claimed meets 101requirements as a new and useful process

a. Whether applicants are seeking to claim a fundamentalprinciple (such as an abstract idea) or a mental process

AND what test or set of criteria governs the determinationas to whether a claim to a process is patentable under 101

3. Held: applicants claim is rejected bc it is unpatentable subjectmatter as an abstract idea

4. Rejected machine or transformation test as sole test for whethersubject matter is patentablea. This test is a useful tool for determining whether some

claims are processes under 101b. TEST: A claimed process is surely patent-eligible under

101 if:

i. It is tied to a particular machine or apparatus ORii. It transforms a particular article into a different state

or thing

5. Business method patents are not per se unavailable6. Take: Process has a broad definition

III. #3 UTILITYa. Patent Act protects all inventions that are novel, useful, and nonobviousb. Utility must be: (PTO Guidelines)

i. Specificii. Credible AND

iii. Substantialc. Must show 3 kinds of utility:

i. Practicalii. Moral

iii. Operable (does invention do what it claims to do)d. Met if:

i. The invention provides some identifiable benefit (not difficult to meet)1. The benefit need not be beneficial to the public Juicy Whip2. The benefit must be functional in nature, aesthetics do not provide

utility

ii. Invention must be operable / capable of carrying out its described function1. This prevents applicants from evading this requirement by

manufacturing a use for an invention that does not work


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2. We dont want to let a person who doesnt know what somethingdoes lock it up from someone who could make good use of it

e. Utility is a relatively rare issue in granting a patent or in an infringement suiti. Can be an issue in areas like scientific research where researcher may have

a promising new product or process but no practical application for it yet

f.

Brenner v. Manson (SC 1966)i. This is a practical utility caseii. Facts: applicants claim was a process to produce a chemical compound

(steroid). Similar steroids had tumor-inhibiting effects in mice andapplicant hoped his would have the same effect though this had not been

determined.

iii. Claim: process to make a steroid, but he doesnt know what it does yetiv. Issue: is a chemical process useful within the meaning of 101 either (1)

bc it worksi.e. produces the intended product or (2) bc the compoundyielded belongs to a class of compounds now the subject of serious

scientific investigation?

1.

If a claim is useful for research purposes (but has no independentascertained use) does it satisfy the utility requirement for

patentability?v. HELD: No A process which has no known use or is useful only in the

sense that the resulting product may be useful in scientific research does

not meet the utility requirement

1. RULE: to receive patent protection, a process must be refinedand developed to the point where specific benefit exists in the

products currently available form

2. RULE: an invention is not complete until you know the use3. RULE: if you have a process that produces a useless product,

the process is also deemed useless bc of policy reasonsa. Why? Concern for windfallgiving inventor rights to all

possible uses just bc they discovered one of them

4. TEST: Specific and substantial utility must be showna. Object of scientific research exclusion: an invention that is

only useful to study itself lacks 101 utiltiyb. A process that merely produces an intended product is not

useful unless the product is useful

c. Need particular, practical purposei. Real world utility is requiredwhich in the

pharmaceutical field implies an association with a

disease or physiological process or condition

5. Policy supports this decision: if patent on this was allowed upononly a demonstration that it may be helpful in research, holder

would have power to block areas of scientific development without

compensating the public with a benefitsa. If gave patent (w all the exclusive rights) absent a showing

of the usefulness, could prevent others from discovering the

benefits


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6. Take:a. Until an invention is shown to be useful, the inventor has

not supplied the utility requisite for a patent

b. The process to produce the steroid did not have utilityeither bc it produced a product without utility

c.

Utility hurdles:i. Credible utility: whether person of skill in the artwould accept that the invention is currently

available for its purported useii. Whether its illogical, not factually supported

iii. Specific and substantial utility1. Must show a particular practical purpose2. Substantial = real world use3. Not trivial use

d. Dont get carried away by this case, a lot of arguablyfrivolous things get patents

g.In re Fisher(Fed Cir 2005)i. Claim: 5 purified nucleic acid sequences that encode proteins in maize

plants. Not claiming an entire gene, only a piece of the gene (an expressedsequence tag [EST] or gene fragment)

ii. Issue: is there utility?iii. HELD: No. the claimed invention lacks a specific and substantial utility

and does not enable one of ordinary skill in the art to use the invention

1. The claimed ESTs act as no more than research intermediatesa. They are objects of use-testingobjects upon which

scientific research could be performed with no assurancethat anything useful will be discovered in the end

2. The claimed ESTs have not been researched and understood tothe point of providing an immediate, well-defined, real worldbenefit to the public meriting the grant of a patent

3. RULE: A claimed invention must have specific, substantial,and credible utility

a. Specific = more than a random fragment of nucleic acidi. Excludes gene probes, other basic research tools

unless the inventor identifies particular

gene/chromosome targetsii. Idea: if you dont know what the gene does,

underlying purpose in finding it is not considered

useful

b. Substantial = real world usei. A general process that doesnt get you anywhere

isnt patentablec. Credible = whether person w ordinary skill in the art would

accept that the invention is currently available for its

purported use


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4. The asserted uses/benefits must align with what you are claimingnovelty on

h. Juicy Whip, Inc. v. Orange Bang (Fed cir 1999)i. Moral utility case; that inventions have the capacity to fool some members

of the public will not prevent a patent from issuing

1.

Moral utility requirement is really that the invention cannot bewholly devoid of moral utilityaka completely frivolousii. HELD: the fact that one product can be altered to make it look like

another is in itself a specific benefit sufficient to satisfy the statutoryrequirement of utility

1. There is both practical and operable utilitya. Operable: it works, it pour juiceb. Practical: it keeps things clean, keeps people safec. Moral: OK to be a little bit deceptive

2. In each case (e.g. cubic zirconium, imitation leather) the inventionof the product or process that makes such imitation possible has

utility within the meaning of the patent statute3. The fact that one product can be altered to make it look likeanother is in itself a specific benefit sufficient to satisfy therequirement of utility

4. Here, the dispenser meets the statutory requirement of utility byembodying the features of a post-mix dispenser while imitating thevisual appearance of a pre-mix dispenser

a. The fact that customers may believe they are receivingfluid directly from the display tank does not deprive the

invention of utilityb. Even if the use of a reservoir containing fluid that is not

dispensed is considered deceptive, that is not by itself

sufficient to render the invention unpatentable

5. Take: general RULE re beneficial utility:a. Is there any tiny amount or is it entirely frivolousb. Perhaps easiest of all utility requirements to meet

i. PROBLEM 3-5i. Acid Look Inc. is a fabric design co that specializes in designing jeans for

the high-end fashion market. ALI develops a process for producing a

random faded effect on the fabric of new jeans, catering to the market fornew jeans that appear to be pre-worn. ALI seeks a patent not only on the

process of treating the jeans to produce a random faded effect, but on jeans

treated by this process. Is rejection for lack of utility proper?

1. Yes. The jeans themselves have no NEW benefit and thus do notmeet the utility requirement

2. The way something looks generally does not count as utility unlesstheres some useful aspect/public benefit (aesthetics)

3. The utility MUST be related to the noveltymust be tied todifferences from the prior art


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4. If actual jeans dont wear differently, not made of material thatprovides a new benefit, no real benefit over jeans from beforeoutside of aesthetics

5. Value bc it DOES somethingjeans must DO something newIV.

ENABLEMENT / DESCRIPTION / DISCLOSUREa. 112: The specification shall contain a written description of the invention, and of the

manner and process of making and using it, in such full, clear, concise, and exact terms

as to enable anyperson skilled in the art to which it pertains, or with which it is most

nearly connected, to make and use the same, and shall set forth thebest mode

contemplated by the inventor of carrying out his invention.

i. The specification shall conclude with one or more claims particularly pointingout and distinctly claiming the subject matter which the applicant regards as his

inventionb. Description (e.g. chef thinks of a new cake):

i. (1) Written Description1. Type of cake

ii. (2) Enablement1. Recipe/ingredients

iii. (3) Best mode (best way to achieve the invention) (*we did not read thismaterial)

1. Preferred oven temp, preferred ingredient brands etc.c. Overall goal when drafting patent claims = make them as broad as Patent Office

will allow

i. But, patentees try and disclose as little as possible in order to avoidcompetitors inventing around their invention

1. You must disclose enough to justify the vast rights you get from apatent

d. There are 2 constraints:i. The existence of prior art (publicly available info on your problem)ii. The actual work, holder may not claim anything beyond what he

discovered

1. E.g. Morse who created the telegraph may not claim all forms ofcommunicating at a distance

e. Disclosure Doctrines: Enablement and Written Descriptioni. (1) Written Description:

1. 112: the specification shall contain a written description of theinvention, and of the manner and process of making and using it,

in such full, clear, concise, and exact terms as to enable any

person skilled in the art to which it pertainsto make and use thesame, and shall set forth the best mode [for] carrying out [the]

invention2. Written description shows the inventor was in possession of the

invention as later claimed; it describes exactly what it is and doesnot claim more

a. Courts compare the original disclosure w the final claims ofan issued patent and ask whether the applicant signified


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that the specific features and embodiments later claimed

were in fact important aspects of the inventionb. The doctrine is a way to prevent applicants from claiming

subject matter they werent away of3. It is possible to enable but not possess (fail the written description

requirement)a. The enablement standard allows person skilled in the art tobridge the gap btw the description and claim

4. Issue: how can something be enabled but not described?a. The Gentry Gallery, Inc. v. The Berkline (Fed Cir 1998)

i. Facts: pl owned a patent to a sectional sofa withbuilt in recliners on the same section separated by aconsole with controls on it. Pl brought suit against

def who was manufacturing and selling sofas with

similar recliners however def sofa does not have a

fixed console, the recliners are separated by a seat

which has a back cushion that can be pivoted downonto the seat so that the back can serve as a table

top btw the reclines.ii. Issue: Whether disclosure supports a claim in

which location of the recliner controls is other than

on the console

iii. RULE: No. Patent claims may be no broaderthan the supporting disclosure

1. Here, the limited disclosure does not supportclaims to sofas where to location of thecontrols are elsewhere besides the console.

2. Locating the controls anywhere but on theconsole is outside the scope of the invention

bc one skilled in the art would clearlyunderstand that it was not only important but

essential to the invention, for the controls to

be on the console (bc of how it wasdescribed)

ii. (2) Enablement:1. Easier to meet than written description bc it doesnt require the

inventor to EXPLICITLY say how to make the invention, just

requires that the specifications would allow someone skilled in the

art to do it without undue experimentation

2. 3 purposes:a. Bars inventors from obtaining protection for inventions that

do not work

b. Prevents overly broad claimsc. Serves the disclosure purpose of patent law


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i. What is disclosed must correlate with the scope ofthe claim; disclosure of a single working example isunlikely to be able to support a broad claim

ii. E.g. you cant claim every possible analog of a genecontaining 4000 nucleotides with a disclosure of

only how to make EPO protein and a very fewanalogues

3. Definition: enablement defines the scope of what the applicant canclaim; it must enable the ENTIRE breadth of the claim, not justsome of it

4. TEST: whether a person of ordinary skill in the art would berequired to engage in undue experimentation in order to makeand use the inventionIn re Wands

a. Who must be enabled / who is the specification addressedto? A person skilled in the art must comprehend it

b. That experimentation is required to get there does NOTmean that it is undue experimentationc. Factors as to whether a disclosure would require undueexperimentation and thus deficient enablementIn re

Forman:

i. Quantity of experimentation necessaryii. Amount of direction/guidance presented

iii. Presence or absence of working examplesiv. Nature of the inventionv. State of prior art at time of filing

1. What do we know about the technologyvi. Relative skill of those in the art

vii. Predictability of the artviii. Breadth of claims

1. Reasonable correlation w thepredictability/unpredictability of the art

5. The quid pro quo for a patent grant is contribution to humanknowledge; the inventor must inform the public what hesubjectively believes is the best way to practice the invention

a. Injects info into public domain that can be used after theexpiration of the patent

b. Injects info that can be used to invent around the patent toinspire other inventions or to invent around the current one

c. Lowers barriers of entry to new comers by providing info(i.e. if theres already one out there, wont waste $ trying toget a patent that is already taken)

6. The Incandescent Lamp Patent(SC 1895)a. Facts: Electric Light Co. filed suit against another light co

to recover damages for alleged infringement of patent

issued for an electric light. Def argued the patents lacked

novelty and utility and that it is defective on its face in


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attempting to monopolize the use of all fibrous and textile

materials for the purpose of electrical illuminationb. Held: patent is invalid.

i. Claim not defective simply bc it monopolizes alluses of the materials, it is invalid bc not all

fibrous/textile materials are suitable for the claimedpurpose

c. The point of the enablement requirement is to:i. Apprise the public of what the patentee claims as

his ownii. The courts of what they are called upon to

construe andiii. Competing manufacturers and dealers of exactly

what they are bound to avoid

d. Undue Experimentation RULE: A patent is invalid ifthe description is so vague and uncertain that no one

can tell, except by independent experiments, how toconstruct the patented device. (the inventor is notentitled to a patent)

i. If no one could use the invention without firstascertaining, by experiment, the exact proportion of

the different ingredients required to produce theresult intended to be obtainedno patent

ii. The only thing that matters is the correlationbetween what is being claimed and how it is

described in the patent1. Inquiry = would it take too much

experimentation from whats disclosed inthe patent to get to anything that might work

iii. If youre making a claim this broad, it must beoperable; it must work/be useful for the particular

purpose

e. Defense:i. Patent is defective on its face in attempting to

monopolize all fibrous materials used in lighting

iii. (3) Best mode requirementV. #2 NOVELTYSTATUTORY BARS#4 NONOBVIOUSNESS

a. To be eligible for a patent and to escape a defense of invalidity, claim must meetrequirements of novelty, statutory bars, and nonobviousness

b. Only truly new inventions deserve patentsc. Novelty

i. 35 USC 102: Conditions for Patentability1. A person shall be entitled to a patent unless:

a. [Novelty] the invention was known or used by others in thiscountry, or patented or described in a printed publication


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in this or a foreign country, before the invention thereof by

the applicant for patent

ii. Novelty = new compared to prior art1. Relevant date: Novelty is assessed on the date of invention2. To be new (and thus patentable), it means that on the date of the

invention, the invention had not been published or publicly used orinvented by someone else

a. An invention must somehow be different from all publishedarticles, known techniques, and marketed products

b. A sales brochure = a printed publication even if it wasntactually for sale until after patent issued

iii. Anticipation = non-novel1. If an invention is anticipated the patent claim is invalid2. If a prior art reference has ALL the elements of the claim, then it

anticipates; if it does not, then it does not anticipate

a. RULE: To render an invention non-novel, all elementsmust be present in a single referencei. How is this ascertained? Claim construction

b. Prior art need not be in same field when evaluating whetherthe invention is novel

3. This is the same as saying the claim lacks noveltya. Note that obviousness is only relevant id the prior art

reference does NOT anticipate

iv. 3 questions re invalidating as prior art:1. Is it something that counts as prior art?

a. Does it fall within one of the categories:i. Public use

ii. Publicly knowniii. On sale (*US only)iv. Patented

2. Is it anticipatory?a. Does it have all the elements

3. Is it before the right date?4. *If yes to all 3, you have invalidated something through prior art

v. 2 newness requirements the invention is not considered new if it failsthese requirements

1. Anticipation: the invention must not have already been known tothe public via use or publication on the date of invention

a. To anticipate a patent app under 102, a single prior artreference must disclose every element of what the

patentee claims as his inventioni. If a prior art reference doesnt disclose all the

parts of an invention, it does not anticipate theapplication

b. A nonpublic use would not affect the inventions novelty


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c. For anticipation, every element of the claim must be foundin a single prior art reference

i. E.g. A claim to A B and C is not anticipated by areference that comprises only elements A and B

2. Priority: the invention must not have been invented by someoneelsevi. Rosaire v. National Lead Co. (5th Cir 1955)

1. Facts: pl had 2 patents on methods of prospecting oil. Pl is suingdef for infringement and def is alleging the patents are invalid bcthe patented process previously used by Teplitz. Pl conceded

Teplitz conceived of method before him but said the co did not

apply for a patent and did not publish or otherwise give the publicthe benefit of the experimental work.

a. Pl essentially argues no prior art bc it was a mereabandoned experiment

b. Pl argument was that the process claimed in his patent wasnot used by others prior to the date of invention bc it wasonly used as a trial and not carried forward

2. Relevant statutory language: an invention is not patentable if itwas known or used by others in this country before thepatentees invention; pl admits the corp used the method ofprospecting oil before he patented it

3. Issue: was Teplitzs first in time use of the oil extraction method anunsuccessful experiment or a successful trial of the method inquestion

4. Held: Public use invalidates the patent.a. Though the use of the method was not carried forward, the

corp used the method in oil fields in TX for a year (prior to

pl patent claim) under ordinary conditions without any

deliberate attempt at concealment or effort to exclude thepublic and without any instructions of secrecy to the

employees performing the work

5. RULE: if the invention is known or previously used before theholder obtains a patent, the invention is not patentable

a. A single use, unaccompanied by an obligation ofsecrecy, is a public use

6. RULE: public use does not require an affirmative act to bringthe work to the attention of the public at large

7. Lack of publication does not deprive alleged infringer of prior usedefense: just bc the first user did not publish that doesnt mean thealleged infringer cannot assert defense of prior use

8. Take:a. An invention can be anticipated if it is in public use but not

published

b. This is an expansive view of what it means for a disclosureto be public


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d. Statutory Barsi. 35 USC 102: Conditions for Patentability

1. A person shall not be entitled to a patent unless:a. (b) [Statutory bars] the invention was patented or described

in a printed publication in this or a foreign country or in

public use or on sale in this country,more than one yearprior to the date of the application for patent in the US

ii. Statutory bars = a bar to patentability based on too long a delay in seekingpatent protection

1. Relevant date: date patent app fileda. Must file no less than one year after inventor or someone

else publishes, publicly uses or sells the inventionb. Once the invention becomes public knowledge, the

inventor has 1 year to file the patent app

i. Triggering conditions for necessity to file or riskbeing denied patent = publication, public use (by

inventor or others)2. An inventors own actions (e.g. publishing an article or selling theinvention) can create a statutory bar

3. Policy: encourage inventors to file apps earlya. Contributing info to public andb. Preventing inventor from gaining an unfair monopoly that

extends beyond that granted by the patent (20 yrs from date

of filing) Egbert

iii. A secret use (even if commercial) is not a public useiv. If the reference was published more than a year before filing of patent

application it is a statutory bar1. A printed publication is any medium that makes the reference

publicly accessible (ee)2. RULE: (notes) In general, a publication becomes public when

it becomes available to at least one member of the general

publica. This requirement is interpreted to mean that before the

critical date the reference must have been sufficiently

accessible to the public interested in the art

i. Focus is theoretical accessibilityb. Dissemination and public accessibility are key to the legal

determination whether a prior art reference was published

i. Printing = proxy for publicationii. Indexing = proxy for dissemination

c. Examples:i. Temporary display of scientific research info at

conference is publicationii. Magazine or technical journal is public when

someone first receives it, rather than the date the


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manuscript was sent to the published or date

magazine was mailed3. Printed publication relevant factorsIn re Klopfenstein

a. Length of time display exhibitedb. Expertise of target audiencec.

Existence (or lack thereof) of reasonable expectations thatthe material displayed would not be copied

d. Simplicity or ease with which the material displayed couldhave been copied

e. Copied need not be distributed but:i. An entirely oral presentation that includes neither

slides nor copies of the presentation is not a printedpublication

ii. A presentation that includes a transient display ofslides is likewise not necessarily a printed

publication

4.

In re Hall (Fed Cir 1986)a. Facts: pl patent was rejected based on the prior printedpublication bar. The reference is a doctrinal thesis availablein a library in Germany catalogued in a special dissertations

section, not part of the general stacks.

b. Issue: whether the thesis, in the stacks, is considered aprinted publication (meets the public accessibility

requirement), thus barring pl claims

c. Held: Yes.i. Public accessibility is the touchstone in determining

whether a reference constitutes a printedpublication bar under 35 USC 102

ii. Required for prima facie case forunpatentabiltiy:

1. Must show that prior to the critical date(if 102(b) date of filing) the reference wassufficiently accessible, at least to the

public interested in the art, so that such a

one by examining the reference couldmake the claimed invention without

further research or experimentationiii. A specific date of cataloguing and shelving is not

required to show accessibility

d. Take:i. a chemical invention was published when it was

described in a doctrinal thesis that was placed in the

stacks and listed in the catalog of a universitylibrary in Germany (ee)

ii. Dates are important here bc 1 day matters:1. Doctrinal thesis published in 1977


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2. Patent app filed on 2/27/1979 (critical datefor 102(b))

iii. Critical was that it was catalogued by SUBJECT, ifit was catalogued by author this would not be

considered a publication

v.

If the invention was in public use, this is a statutory bar topatentability1. Egbert v. Lippmann (SC 1881)

a. Facts: pl invented an improvement in corset-springs anddidnt apply for a patent for nearly 11 yrs only aftereveryone in the industry was using it.

b. Issue: whether inventor making corset steels for personalfriends in 1855 amounts to a public use that bars the

issuance of a patent in 1866

c. Held: Yes; the patent is barred bc the inventor allowed hisinvention to be used by a single user for several years and

such use amounts to a public usei. RULE: Whether the use of an invention ispublic or private does not necessarily depend

upon the number of persons to whom its use is

known. If an inventor, having made his device,

gives or sells it to another, to be used by [thatperson], without limitation or restriction, or

injunction of secrecy, and it is so used, such use

is public, even though the use and knowledge ofthe use may be confined to one person

1. # of people using does not so much matter inpublic use assessment, use by greater

number may strengthen proof of public use,

but one well-defined case of such use issufficient for public use

2. The use need not be visible to amount topublic use, bc some inventions by their verycharacter are only capable of being used

where they cannot be seen by the public

(here corset springs)

ii. RULE: If an inventor sells a machine of whichhis invention forms a part, and allows it to be

used without restriction of any kind, the use is apublic one.

1. Here, use was not for experimentationpurposes

d. Factors weighing for finding of public use:i. Invention presented to friend for use

ii. Inventor imposed no obligation of secrecy nor anycondition or restriction whatsoever


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iii. Invention was not presented for purpose ofexperiment nor to test its quality

iv. Invention was complete when it was presented tofriend

1. No evidence it changed or improvedafterwardsv. Friend used the corset strings for years for the

purpose and in the manner designed by the inventor

e. Policy: you cant sit on invention for 11 years and get thebenefit of essentially 31 yrs (if patent protection granted)

when people have already started using it

i. Allowing this patent would prolong a monopolyf. Take:

i. Even private use that cannot be seen or observedmay be considered public for purposes of the

statutory bar if such use is permitted without any

restriction or obligation of secrecyii. Ct is not going to get into the business of decidinghow many people = use by public, 1 is enough

1. Compare w/Rosaire, which also allowed asingle use to constitute a public use provided

there is no obligation of secrecyiii. The Fed Circuit focuses on the nature and purpose

of the use in deciding whether it is public and thus

a statutory bar

1. If commercial public use, even if insecret or only once

2. If person interest or enjoyment generallynot considered public use

vi. If the invention was on sale, it is a statutory bar1. A single sale or offer to sell a product will start the clock, whether

or not it was made in secret

2. If someone steals your invention and sells it, you typically cantget a patent, your remedy is misappropriation of a trade secret

3. Pfaff v. Wells Elec., Inc. (SC 1998) notea. The on sale bar applies when 2 conditions are met before

the critical date:

i. The product is subject of a commercial offer forsale AND

ii. The invention must be ready for patenting1. Invention was actually practiced OR2. Inventor had prepared drawings or other

descriptions sufficiently specific to enable aperson skilled in the art to practice the

invention


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e. Nonobviousnessi. 35 USC 103(a)

1. A patent may not be obtainedif the differences between thesubject matter sought to be patented and theprior art are such thatthesubject matter as a whole would have beenobvious at the time

of the invention was made to aperson having ordinary skill in theart to which said subject matter pertains. Patentability shall notbe negative by the manner in which the invention was made

ii. Background:1. Note that this is only relevant when the prior art reference does not

anticipate

2. The nonobviousness requirement will bar the issuance of apatent if:

a. The invention would be obvious to someone in the fieldin light of all materials published/in use

i. Invention must be something more than a slightimprovement in the prior artii. Whether an invention is nonobvious will depend onhow it is claimed

3. TEST: Would a person skilled in the art, faced with the sameproblem, and with no knowledge of the patent, select the

patented elements to combine4. Pl claim: patent is invalid as obvious5. Policy: weeds out trivial inventions

a. Granting patent protection to advances that would occur inthe ordinary course without real innovation retards progressand may, in the case of patents combining previously

known elements, deprive prior inventions of their value or

utility KSR

b. Desire to avoid limiting downstream work/cumulativeinvention: do not want to lock out other inventors from this

obvious improvement just bc one person happened to do it

firstc. Collectively, a number of trivial patents may generate a

great deal of litigation due to accidental infringements

6. Obviousness kicks in when you dont have a single reference w allthe elements

a. Inquiry concerns how to fill the gapsi. Answer is the Graham test

iii. Analysis:1. First, you do the 3 steps ofGraham

a. Determine: scope of prior art, difference btw that art andthe claim, and the level of skill

2. Second, how to determine whether the combination is obvious?a. One way is whether the artisan would have thought to

combine the prior art:


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i. TEST: Would a person skilled in the art, faced withthe same problem, and with no knowledge of thepatent, select the patented elements to combine

b. Another is to look at whether it was obvious to try everycombination of the prior art

iv.

Nonobviousness Analysis:Graham v. John Deere Co. (SC 1966)1. Framework of analysis:a. (1) Determine scope and content of prior art

i. Why? Bc an invention isnt patentable if it isobvious in light of the prior art

ii. What prior art do we look at?1. Prior art must be in the same field (comp w

novelty, where need not be in same field)

2. Prior art logically related (analogous) to theinvention judged in reference to someone

with ordinary skill in the art

a.

Consider problem facing inventorand whether the prior art is related

b. (2) Ascertain the differences between the prior art and theclaims at issue

i. Must consider the subject matter sought to bepatented as a whole

ii. Must be differences or else it is not novel, let alonenonobvious

iii. 2 types of differences:1. Invention contains elements appearing no

where in prior art

a. Inquiry is whether adding themissing element would be obvious to

person w skill in art2. Claimed inventions elements all exist in

prior art but do not appear in single

referencea. Inquiry is whether someone w skill

would think to combine them in that

wayc. (3) Find the level of ordinary skill in the pertinent art

i. Can get patent for invention that would be obviousto someone w ordinary skill in the art

1. Person of ordinary skill presumed to knowall the art

ii. Factors that may be considered:1. Type of problems encountered in the art2. Prior art solutions to those problems3. Rapidity with which innovations are made4. Sophistication of the technology


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5. Educational level of active workers in thefield

a. BUT extraordinary knowledge: aperson of ordinary sill is presumed to

know all relevant prior art

iii.

It is possible for the invention to be obvious to theactual inventor but not to someone w skill in the art

(and thus not obvious for patent law)

d. (4) Determine the obviousness or nonobviousness of thesubject matter in light of differences between prior art

i. Use KSR: flexible approach to nonobviousness tofigure this out

e. (5) Also secondary considerations are used to determinewhether obvious or not:

i. Commercial success1. If wildly successful commercially, weighs

against obviousness findingii. Long-felt but unsolved needs1. If there has been a lingering problem with

no address, indicates solution not obvious

iii. Failed efforts of others1. Doubt as to obviousness if many people

tried and failed bc means solution wasntobvious

iv. Copying or licensing by othersv. Praise for the invention

vi. Disbelief of experts (i.e. a bunch of people say itcannot be done and then you do it)

1. If experts dont see a solution its likely thatits not obvious

vii. *These are used by ct to decide whether gap btwinvention and prior art has been bridged

2. TEST: obviousness is whether the subject matter sought to bepatented and the prior art are such that the subject matter as a

whole would have been obvious at the time the invention wasmade to a person having ordinary skill in the art

a. First, technical issues compared BUTb. Strong showing of secondary considerations may weigh

against finding that invention was obviousi. Secondary considerations must be related to the

technical merits of the invention

1. E.g. a new sports drink might sell well bc agreat athlete endorses not bc its composition

2. If a seller introduces a new pen, might sellwell bc of sellers


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3. Facts: there is a conflict over the validity of a single patent for aJohn Deere shank plow; the invention involves a device designedto absorb shock from plow shanks as they plow through rocky soil

and prevent damage to the plow (essentially a hinge)

4. Issue: was the new hinge new enough to deserve a patent, i.e.nonobvious?5. Held: No; patent is invalid; it is obvious to move the shank

a. Patentability depends on novelty, utility, and the non-obvious nature of the subject matter sought to be patentedby reference to person having ordinary sill in art

b. Test appliedi. (1) Scope of prior art:

1. Identical but shank above plateii. (2) Diff btw prior art and claims at issue

1. Shank below plateiii. (3) Level of ordinary skill in pertinent art

1.

Person of ordinary skill knows all of the artv. Combining References1. Remember to anticipate a patent app under 102, a single prior art

reference must disclose every element of what the patentee claims

as his invention

2. Under 103, a single reference need not disclose the entireinvention to bar a patent

a. 103 asks whether a researcher who is aware of all theprior art would think to create the claimed invention. In

deciding the question of obviousness, it is sometimespermissible to analyze a combination of ideas from

different sources of prior art (known as prior art references

3. KSR v. Teleflex (SC 2007)a. Facts: Teleflex sued KSR for patent infringement;

invention was a mechanism for combining an electronic

sensor with an adjustable automobile pedal so the pedalsposition can be transmitted to a compute that controls the

throttle in the vehicles engineb. Defense: def KSR asserts one of the claims is invalid bc its

subject matter was obviousc. Issue: Whether a patent claiming the combination of

elements of prior art is obvious

d. Held: invention was obvious bc there existed amarketplace that created a strong incentive to convertmechanical pedals to electronic pedals, and the prior art

taught a number of methods for achieving this advancei. Essential holding: flexible, functional, expansive

approach to nonobviousness

1. Figure out whether the combination wouldbe obvious to a person w skill in the art (not


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the individual patentee), consider broader

context2. Here, it was obvious to try putting the

sensor in 3 or 4 places, even though it

wasnt obvious going in which one would

eventually work3. (aside: useful analogy is a puzzle, the fewerthe pieces, the more obvious it will be to try

each piece to see if it fits)4. Applied Graham test

e. RULE: if a person of ordinary skill can implement apredictable variation, 103 likely bars its patentability

i. Whether the variation was predictable examines:1. Effects of demands known to design

community or present in the marketplace,

2. Background knowledge possessed by personw ordinary kill in artf. RULE: A patent composed of several elements is not

proved obvious merely by demonstrating that each of its

elements was, independently, known in the prior art.g. When there is an unaddressed market pressure and a finite

number of indentified, predictable solutions, person of

ordinary skill has good reason to pursue known optionsifthis leads to the invention it is likely the product not of

innovation but of ordinary skill and common sense

i. Obvious to try applies where there is a finite set ofsolutions but we dont know which one will work

ii. Here, there existed marketplace that created a strongincentive to convert mechanical pedal to electronic

pedals and prior art taught many methods for doingthis (what happened here)

h. An invention is obvious if all the elements of theinvention and a reason to combine them are known. It mayalso be obvious if the innovation was likely to occur in the

ordinary course of events, given market demand etc. eef. ANALYSIS:

i. What is claimedii. Is it novel

1. Does the product/process appear in prior artiii. Does it escape the statutory bars?

1. Is there a sufficiently similar device or process published, knownto public, or on sale on critical date

iv. Is it obvious?v. Is it enabled

1. More narrow the claim, easier it is to enable


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vi. More narrow = more likely to meet these requirements but less rights soeasier for subsequent inventor to design around the patent

vii. More broad = more rights but more likely to be struck downVI. CLAIM CONSTRUCTION

a.

112: The specification shall conclude with one or more claims particularlypointing out and distinctly claiming the subject matter which the applicantregards as his invention

b. Rules:i. Claims determine whether the invention is patentable, if yes, what the

inventor has rights to

ii. To infringe a patent, you must practice the elements of a claim1. To figure out if you practice, must figure out what the claim means

a. Phillips claim constructionc. Format: (via ee)

i. Preamble: identifies invention, is it a product or processii.

Transition phrase: sets stage for body of claim1. Comprising ofgreater rights

2. Consisting ofmore narrowa. A device w elements A B C could infringe a claim reading

comprising A and B but not a claim reading consistingof A and B

iii. Body: lists the elements or limitations of the claim1. The elements distinctly point out and claim the subject matter

which applicant regards as his invention

2. The claims have dual roles:a. Does the person get a patentb. Has the patent been infringed

i. Tension btw getting a valid patent and getting avaluable patent: the more narrow the claim, morelikely the patent will issue and be valid but the less

rights holder will have

d. Claim Constructioni. This is critical for validity and comparison of claimed invention and

accused device

1. Used to: determine infringement; determine whether prior artanticipated the invention

ii. General RULE: words get their ordinary, customary meaning,including technical terms

1. Why? Theyre supposed to give notice as to what the invention isto the public

iii. Claims define a patent owners property right1. Definition: The claims define the invention to which the patentee

is entitled the right to exclude

2. Often, minor variations in phrasing are the difference btw findinginfringement and non-infringement


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3. Purposes served by claims:a. Is the invention new and useful evaluated by comparing the

claims against previous work in the field

b. Whether others infringe the patent is evaluated bycomparing their product or processes against the claims

iv.

Concerns:1. Validity of the patent claimsa. Patentees not only want to have their patents upheld over

the prior art, but they also want those patents to beinterpreted broadly, to cover a wide range of potential

infringements

v. Standards for construing claims; source of construction1. Intrinsic evidence:

a. Specification: what did the inventor describe initiallyb. Embodiments: what did the inventor actually buildc. Other claimsd.

Prosecution historye. Cited prior art

f. Foreign/related patentsg. Preamble

2. Extrinsic evidencea. Expert testimonyb. Dictionaries/treatisesc. Inventor testimony

3. Phillips v. AWH(Fed Cir 2005)a. Facts: Pl Phillips had a patent on an invention for

vandalism-resistant temporary housing walls. Pl brought

an infringement claim against def AWH. Claim 1 of patent

stated: building modules adapted to fit together forconstructionand further means disposed inside the shellfor increasing its load bearing capacity comprising internal

steel baffles extending inwardly from the steel shell walls.Dist ct held no infringement bc allegedly infringing product

didnt baffles as term was used in claim 1. Pl was usingbaffles diagonally, def was using baffles at a right angle.

b. Issue: the extent to which the ct should resort to and rely ona patents specification in seeking to ascertain the properscope of its claims

c. Held: For pl, baffles does not only mean diagonally. Thespecification must be referenced to the greatest extentpossible when construing the claim; there is no rigid

formula for claim construction but it is important for the ct

to attach the appropriate weight to be assigned to intrinsicand extrinsic sources (intrinsic more valuable)

i. Here, ct resolves the term baffles by its use inanother claim


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1. An independent claim should be givenbroader scope than a dependent claim toavoid rendering the dependent claim

redundant

ii. RULE: The specification is the primary basisfor construing the claimsiii. RULE: Extrinsic sources may NOT be used tocontradict a claim meaning that is unambiguousin light of the intrinsic evidence

iv. Why?1. Intrinsic evidence generally takes

precedence bc overreliance on extrinsicevidence poses the risk that it will be used to

change the meaning of the claims

2. Claims should be understood in light ofspecification and prosecution history

3.

Other claims may be useful where terms areused consistently

4. Dictionaries provide an array of meanings,too open ended and prone to manipulation

a. Extrinsic evidence can be consideredwithin the context of intrinsicevidence

b. Generally such evidence is lessreliable bc not created in light of or

at the time of the patentv. Here: claim 2 refers to steel baffles oriented at an

angle, therefore, that cannot be the meaning of

claim 1, bc claim 2 is dependent

1. If we define baffle to mean diagonally whydo we even both having 2

2. Claim differentiation: 2 claims readdifferently must mean different things

d. Take:i. Do not divorce language from spec

ii. Seems to assume the goal of patent claiminterpretation is to obtain the most accurate

interpretation possible, taking into acct the

inventors contribution and the intended audiencefor the patent, those in the same art or field

vi. Analysis re how to construe a claim: WHERE to look1. Claims define the invention to which the patentee is entitled the

right to excludea. Required to determine whether allegedly infringing device

infringes on the claim literally or under doctrine of

equivalents


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b. Required to determine whether invention is novel / notanticipated by prior art

2. Words of a claim are generally given their ordinary and customarymeaning bc their purpose is to put public on notice as to what the

claimed invention is

3.

Ordinary and customary meaning of a claim term is the meaningthat the language would have to a person of ordinary skill in the art

AT THE TIME of the invention

a. Bc this isnt always apparent, ct looks to sources availableto those w skill in the art

i. Words of claims themselves1. The spec acts as a dictionary when it

expressly defines terms used in the claims

2. Consistent use of a term can give a def byimplication

ii. Remainder of specification1.

Drawingsiii. Prosecution history

1. Provides evidence of how the PTO andinventor understood the patent if there were

any exchanges btw them regarding its

meaning2. If an applicant disclaims certain subject

matter during the prosecution process,

cannot argue the claims in the issued patent

covered those thingsiv. Extrinsic evidence considered secondarily (less

valuable)

4. Cts can protect against broad claims by interpreting the claims tocover only the invention to the extent that the app describes it and

enables others to make and use it (ee)vii. How to construe claims HOW to look: Canons of Claim Interpretation

1. Cts have est a set of rules/canons of interpretation to help guide theclaim construction process

2. If claims ambiguous, construe to preserve validity3. Claim differentiation

a. We dont interpret 2 claims to be identical so a narrowerclaim suggests other claims are broader

4. Claims are construed from the person having ordinary skill in thearts point of view as of the patents filing date

5. Evidence outside of the claims can be used ONLY to understandand interpret NOT to vary or limit the terms of the claim

6. If terms are specifically defined in the spec, ct cannot use adictionary to define

7. If 2 alternative meanings equally likely, choose the narrower one


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VII. INFRINGEMENTa. 271: Infringement of Patent

i. Whoever without authority makes, uses, offers to sell, or sells any patentedinvention, within the US or imports into the US any patented invention

during the term of the patent, infringes

ii.

Whoever actively induces infringement of a patent shall be liable as aninfringer

b. Types of infringement:i. Direct v. indirect

1. Direct: literal and non-literal infringement (DOE)a. Satisfy all elements rule

2. Indirect: active inducement (provide instructions); contributory(sell non-staple article of commerce known to be specially

designed for infringing use

a. ***in order to contribute to infringement someone MUSTbe infringing directly***

b.

On exam NEVER jump into this without examining initialinfringement first

c. Can enforce patents against:i. Those who steal the invention

ii. People who have never seen the patentiii. People who reverse engineeriv. People who develop same invention independently

d. How to figure out infringement:i. (1) Construe the claims

1. The right to exclude is limited to the invention as claimed in thepatent

2. This includes equivalentsii. (2) Test for literal infringement

1. Often controlled by the claim interpretationiii. (3) Test for infringement under the doctrine of equivalentsiv. (4) Test for secondary liability/indirect infringement

e. Remedies:i. If patentee prevails: damages or an injunction

f. Defenses to accusation of infringementi. Invalidity: def will claim that the pl claim is not valid due to one of the

above 5 requirements (e.g. the product was in public use before the

invention date, its obvious etc.)ii. Claim interpretation: allege that the subsequent users use falls outside

scope of pl claimiii. Prosecution history estoppel: pl is estopped from making DOE argument

bc of the prosecution history of its patents that narrowed its initial claim

g. Rules:i. To infringe a patent, you must practice the elements of a claim

1. To figure out if you practice, must figure out what the claim meansa. Phillips claim construction


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ii. Does NOT require copyingiii. Does not require any state of mind; can be liable whether if intentionally,

knowingly, recklessly or negligently infringe

iv. Does not need to be public, commercial, or benefit the infringer at all orharm the patent holder

v.

It is only infringement to make, use sell, etc. a product or process that fallswithin the claims

vi. The disclosure requirements raise the possibility that another can designaround the patent

vii. Infringement is not limited to the utility disclosed in the patent1. If you patent a chemical thats useful for cleaning it can still be

infringed if someone uses the chemical as claimed to do somethingelse like make computer chips

h. Literal Infringementi. Issue is usually whether the def product/process fell within scope of pl

claimed invention

ii.

Because a patent is defined in terms of its claims, a patent infringementsuit is resolved by comparing the claims of the patent to the accused

product1. Build a claim chart to compare patented invention w accused

device

iii. RULE: to be found literally infringing a patent under 271, theaccused device must contain every element contained in the patent

claim (every element contained in patent claim must also be present in

accused device)1. Literal infringement test =

a. (1) construe claims to determine scope and meaningb. (2) does the accused device or method have all the

elements of the patented device (literally infringe)iv. What is the device lacks an element of the patent or adds an element?

1. If the accused device lacks an element no literal infringementa. Example: if a claim has 5 parts/elements and the accused

device has only 4 of the 5, it does not literally infringe,even if the def copied these exactly from the patent and

even if the missing element is totally insignificant

2. If the accused device adds an element outcome depends onwording of the patentees claim

a. If open claim (indicated by the term comprising addingelements does not help the infringer

b. If the patentee uses the term consisting of addingelements makes the accused product non-infringing

3. If an accused device has all the elements of a patent claim, it willgenerally be found to infringe

a. In most cases it doesnt matter if def added an element orseveral


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b. But the outcome is case by case based on the precise claimlanguage and nature/significance of added element

c. Implications: patentees who have a valid patent on afundamental technology can assert their patent against

anyone who uses that technology even if def have improve

it or put it to different usev. The broader the claim is, the more rights the holder has against infringersvi. Larami v. Amron (1993)

1. Facts: Pl manufactured toy water guns and held 4 different patentsfor different guns. Pl claimed def guns infringed on a patent it held

for the super soaker that had light and noise components. Def

argued there was no literal infringement nor any substantialequivalence of all elements in the other patents.

2. Issue: Whether the absence of even one element of a patentsclaim in the allegedly infringing device mean there can be no

finding of literal infringement

3.

Held: Yes; no infringement as a matter of lawa. Therein means in NOT on and in bc on is such a bigimprovement, not within the scope of what was invented

b. Test: est infringement requires the interpretation of theelements or limitations of the claim and comparison of the

accused product w those elementsc. Patent infringement can be est in 2 ways:

i. Literal infringementii. Infringement under the doctrine of equivalents

d. RULE: Every element of a claim is essential andmaterial to the claim, so to show infringement, patentee

MUST show the presence of every element or its

substantial equivalent in the accused devicei. If even one element of a patents claim is missing

from the accused product, there can be no

infringement as a matter of lawe. Here, claim 1 requires that the toy gun have an elongated

housing having a chamber therein for liquidi. The accused device plainly has no chamber for

liquid contained within the housing of the water fun1. Thus, bc the absence of even one element of

a patents claim from the accused productmeans there can be no finding of literal

infringement, the accused device does notinfringe pl claim

4. Take:a. The importance of claim constructionthis case came

down to the meaning of therein


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b. All elements RULE: If an identical patent lacks oneelement, that is enough to disqualify it as literallyinfringing

i. Infringement under the doctrine of equivalentsi. Comes in when the accused device does not have all the elements, but is

equivalent to the elementsii. DOE = allows the patentee to claim those insubstantial alterations thatwere not captured in drafting the original patent claim but which could be

created through trivial changes1. BUT, when patentee originally claimed the subject matter alleged

to infringe but then narrowed the claim in response to a rejection,

he may not argue that the surrendered territory comprisedunforeseen subject matter that should be deemed equivalent to the

literal claims of the issued patent Festo citing Exhibit Supply

iii. Graver Tank(SC 1950)1. Held: patent claims must protect the inventor not only from those

who produce devices falling within the literal claims of the patentbut also from copyists who make unimportant and insubstantial

changes and substitutions in the patent which, though addingnothing, would be enough to take the copied matter outside the

claim, and hence outside the reach of law

2. Device is infringing under the doctrine of equivalents if:a. Function-way-result TEST:

i. Device performs substantially the same functionin substantially the same way to obtain the sameresult

3. Considerations:a. Purpose for which an ingredient is used in a patentb. Qualities it has when combined w other ingredientsc. Function which it is intended to perform

4. The function way result test is the test that should be citeda. Take: a device/process may fall outside the literal terms of

the patent claims and still infringe bc it contains each of the

patented devices elements or its substantial equivalenti. Policy: protects holder against efforts of copyists to

evade liability for infringement by making onlyinsubstantial changes to a patented invention

ii. Even an independently developed device caninfringe

iii. Nor is the doctrine limited to applications thatwere disclosed by the patent spec itself, to

equivalents that were known at the time the patent

was issued, or to cases in which applying the

doctrine is deemed equitable (ee)b. This is LIMITED by prosecution history estoppel


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iv. Warner-Jenkinson (SC 1997)1. Overall: infringement will be found if the accused device contains

every element claimed in the patent or its equivalent

a. Overall equivalence is not sufficientever element of theclaim must have its literal/equivalent counterpart (ee)

2.

Def is infringing if patent owner proves accused product/processhas every element/limitation or its substantial equivalenta. Pl must show presence of every element or its substantial

equivalent in the accused deviceb. To be a substantial equivalentthe element substituted in

the accused device for the element set forth in the claim

must not be such as would substantially change the way inwhich the function of the claimed invention is performed

i. Equivalence is measured at the time of infringementnot the time of invention

1. So it depends what the infringing activity is,if its making using or selling, it is when theallegedly infringing device is made, used, orsold

2. And can apply to later developed technology3. All Elements RULE: Element by element comparison is

necessary bc each element in patent claim is deemed material todefining the scope of the patented invention, and thus the doctrine

of equivalents must be applied to individual elements of the claim

not the invention as a whole

a. TEST: does the accused product/process containelements identical or equivalent to each claimed element

of the patented inventioni. If element of accused device viewed as dramatic

improvement over pl design, will likely not be heldto be the substantial equivalent

4. Re prosecution history estoppel: if you amend a claim you cannotclaim an equivalent

a. Rebuttable presumption that claim amendments madeduring prosecution were made to escape prior art

i. This makes sense because you likelyamended/narrowed the claim to bring it within the

realm of patent validity (to eliminate obviousness,

lack of novelty, not supported by written description

etc.) so you shouldnt be able to go backbroadenscope of claim to claim the thing you abandoned in

order for the UPO to issue you a patent

ii. BUT Can rebut w evidence that the reason for theclaim amendment was unrelated to patentability


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v. Festo Corp (SC 2002)1. Essentially: Festo says IF you amend, you lose ALL

equivalents/after arising amendments BUT you can

rebut/overcome that rule by showing the equivalent is

unforeseeable w respect to your amendment

a.

You cannot claim equivalent for infringement if youamended that element for reasons of patentability UNLESS

there is some excuse for it

2. Facts: pl is contending that def device is not identical, but that it isso similar that it infringes under DOE

3. Prosecution history estoppela. What is it: limits the reach of doctrine of equivalents;

limits pl patentees ability to prove infringement utilizingDOE by requiring the claims of a patent be interpreted in

light of the proceedings in the PTO during the application

process

b.

When does it apply: when an amendment is made tosecure the patent and the amendment narrows the patentsscope

i. Anytime a narrowing amendment is made to satisfyany requirement of the patent act

ii. When an applicant narrows claim (either bynarrowing existing claims or adding a claim

limitation) by amendment during the prosecution

process in order to satisfy one of the requirements

of patentability1. E.g. am to avoid prior art, eliminate

obviousness, not supported by written

description etc.

c. Result: when this occurs, patentee is estopped from usingDOE to broaden scope of issued patent to include the claim

that was narrowed/eliminated earlier

i. Pl may not regain through litigation when herelinquished during prosecution of the app

ii. Where original app once embraced the purportedequivalent but the patentee narrowed his claims toobtain the patent or protect its validity, the patentee

cannot assert that he lacked the words to describe

the subject matter in question

1. DOE is premised on languages inability tocapture the essence of innovation but prior

application describing the precise element at

issue undercuts that premiseiii. This makes sense bc if the applicant responds to

rejection of the claim as failing to meet statutory

requirements of patentability, by narrowing his


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having ordinary skill in the art at

time of amendmentb. Policy balance: protect patent holder from people copying

and avoiding liability for changing a minor element while

curbing uncertainty about when patent rights end/the scope

of the patent5. Take: Festo standard, principal scenariosa. Presumption applies:

i. Intentional narrowing of claim to avoid prior artii. Unexplained amendment

b. Presumption rebutted:i. After arising technologythe entire way you do

things changes

ii. Incidental amendment (typos, grammar, doesntreally change the meaning)

VIII. INDIRECT INFRINGEMENTa. You cannot get here before examining ACTUAL infringementb. Indirect infringement = not actually practicing all the elements but helping

someone who is; there are 2 ways to have it:

i. Contributory infringement = sweeps into the net of infringement themaking, use, or sale of less than the entire patented device

1. Provide a material part of the invention w knowledge that use of itwill do whatever it is thats infringing

2. Must know about the patent3. What youre selling cannot be useful for some non-infringing use

a. RULE: if there is a substantial, non-infringing use,cannot be held liable for this

ii. Inducement = involves behavior that omits any making, using, or sellingbut that nevertheless amounts to an attempt to appropriate the value of an

invention1. aids and abets infringement2. It is actively assisting someone else, providing instructions etc.

Non-Literal Infringementthe Doctrine of Equivalents Limiting principles:

o The All Elements Rule

o Prosecution History Estoppel

Festo presumption

Overcoming the presumption

o Unforeseeable equivalents

o Tangential Amendments

o Amendments for other reasons


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a. Requires knowledge of patent and knowledge ofinfringement

iii. Classic example of both is the sale of device components or replacementparts for a patented device

c. Contributory infringement and inducement evolved to address infringing activitythat somehow lacked the element of a direct making, using, or selling of thepatented invention

d. RULE: to infringe a method, you MUST carry out the steps, writing does notcount

e. CR Bard v. Advanced Cardiovascular(Fed Circ 1990)i. Facts: Def ACS was marketing a catheter for use in coronary angioplasty.

Pl Bard sued claiming that def catheter was especially adapted for use by asurgeon in a manner that infringed claim 1 of pl method patent and that

therefore def was a contributory infringer and had actively induced

infringement. Pl successfully alleged there was no evidence that any

procedure using def device would be noninfringing

ii.

Issue: does a person induce infringement by actively and knowingly aidingand abetting anothers direct infringement?iii. RULE: A person induces infringement under 271(b) by actively and

knowingly aiding and abetting anothers direct infringementiv. Held: for def; a reas jury could find there are substantial noninfringing

uses for def product1. Issue on remand: whether device has no use except through

practice of the patented method

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