Infringement What is the scope of the claim?

Hierarchy for interpretation: (1) claims, (2) specification, drawings, and prosecution history, and (3) extrinsic evidence Unambiguous claims cannot be altered by other evidence The inventor can define terms in the specification CLAIM INTERP To what extent do we rely on spec? Phillips (baffles) look to spec and pros. hist first as intrinsic evidence what are the limitations of the definition? what does the definition leave out? claims may be construed to sustain validity (internally consistent and with spec), but should only be done if terms are still ambiguous after normal tools of claim construction then look to extrinsic dictionaries, encyclopedias and treatises are useful resources to assist court in determining ordinary and customary meanings of claim terms if more than one dictionary definition, claim terms may be construed to encompass all consistent meanings Doctrine of Equiv all elements rule - every element in claim must be found in accused device literally or equivalently subject matter disclosed but not claimed in patent application is dedicated to the public, this happened in Unique Concepts (mitered pieces) Phillips and Unique focus on the notice of what a patentee owns Wright Co (human or machine controlling rudder and wings) with m-p-f language its possible to have any combination of actions be equivalent, as long as you dont need to narrow the patent to save its validity here its for a fair and reasonable scope of a fundamental technology perhaps we should allow broad scope then
Access irrelevant; no independent invention defense Intent irrelevant; willful infringement higher damages Literal infringement Claim construction Accused technology: All elements rule Doctrine of equivalents Claims given ordinary meaning to PHOSITA at time of application Intrinsic evidence generally takes precedence Adopts Texas Digital rationale, but rejects approach: consulting a dictionary first to avoid importing limitations from the spec Extrinsic sources may not be used to contradict claim meaning that is unambiguous in light of the intrinsic evidence

Claims Written for those skilled in the art Expert testimony for background info Principle of claim differentiation Do not import limitations from preamble Vague claims are invalid for indefiniteness Specification Do not import limitations from written description Prior art cited in specification Inventor can define terms (lexicographer) Prosecution History Disclaimers Cancelled claims

INDIRECT/CONTRIBUTORY INFRINGEMENT selling a part of an overall invention participating in conduct that leads to infringement Section 271(a) ... whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent. Section 271(b) INDUCEMENT (everything but contrib.) Whoever actively induces infringement of a patent shall be liable as an infringer. doesn t matter if there is substantial noninfringing use Active Inducement Encourage or aid direct infringement E.g., instructions Intent Actual intent to cause acts which constitute infringement Direct infringement in U.S. C. R. Bard 017 patent covers method of performing coronary angioplasty ACS (defendant) sells catheter Cardiologists use catheter, possibly infringing 017 patent Three possible uses of ACS catheter Allegedly 40-60% procedures won t need the patented method

DSU v. JMS Winged-needle assembly; reduces risk of needle-sticks ITL makes Platypus guard w/o needle Claim 1: A guard slidably enclosing a sliding assembly comprising a needle and a winged needle hub . . . Claim 1 requires a permanent cover for needle JMS makes closed shell needle + Platypus JMS directly infringes ITL no direct or indirect infringement Inducement intent: knew or should have known his actions would induce actual infringements => notice of patent ITL lacked required intent Section 271(c) CONTRIBUTORY Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. Aro II Top for convertible car; tops made by GM and Ford Ford infringing, but not GM (because of license) Aro sells canvas replacements for Ford and GM tops, original canvas wears out after 3 years

Aro I (GM cars) doesn t matter if the manufactured thing is repaired or a replacement because the users didn t infringe in the first place, because there WAS a license by the patentee Aro contrib infring re Ford cars Car owners direct infringers when use and repair infringing Ford tops No contrib. infringement w/o direct infringement Ford infringed by making and selling cars embodying patent, w/o permission Ford selling to customers NO implied license conferred, so they infringed, even when they repaired. no distinction between repair or replacement distinction is really based on intent Aro fabric is non-staple Knowledge: Use in convertible top, not in infringement Convertible top is patented and Ford is infringing before selling to Ford, they might not have had knowledge

Aro II

Section 271(e)(1) It shall not be an act of infringement to [test patented drugs in association with the FDA approval process] [Hatch-Waxman] Section 271(f) (1) Whoever supplies in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer. if someone in U.S. supplies substantial portion of components to foreign country and combination is actively induced, and that would infringe, then liable. (2) Whoever supplies any component that is especially made and not a staple , where such component is uncombined in whole or in part, knowing that such component will be combined outside of the United States in a manner that would infringe if someone supplies anything and it s not a staple and they KNOW it will be combined to infringe Microsoft v. AT&T whether software is a component Patent claims apparatus for digitally encoding and compressing recorded speech MSFT exported Windows to Europe where copy of Windows is loaded on PC Does not supply a component from US b/c component is supplied in Europe when copy made Presumption against extra-territorial patent law component needs to be physically combined together; otherwise it s just software in the abstract, which can t be combined Section 271(g)
Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. ... A product which is made by a patented process will, for purposes of this title, not be considered to be so made after (1) it is materially changed by subsequent processes; or (2) it becomes a trivial and nonessential component of another product.

Section 112: Disclosure

An inventor may protect an invention as a trade secret with the help of state law. If the inventor chooses federal patent protection, then he or she is required to make certain disclosures. The primary requirement is a disclosure that enables others who are skilled in the art to replicate the invention. The goal of this requirement is to encourage a broad contribution by the inventor to the public stock of technical knowledge. This stock is a key to future innovation and diffusion of technology. The written disclosure requirement assures that the inventor was truly in possession of the invention at the date he or she asserts. The best mode requirement complements the enablement requirement. Section 112 also contains a requirement of claim definiteness. A claim should be as clear as possible so the world is on notice of the patentee's alleged property right. disclosure is quid pro quo of the right to exclude public knowledge is enriched by patent spec to a degree that is commensurate with scope ENABLEMENT highlights The scope of the disclosure must correlate with the scope of the claim A disclosure that leads to undue experimentation for one skilled in the art is not enabling Must describe invention clearly enough so that PHOSITA can understand it well enough to make and use Depends on state of prior art (predictability) and what the inventors claim more predictability, less disclosure needed Incandescant Lamp y claimed all fibrous materials, but it was unknown what property made them all work y not possible for someone to know what fibrous or textile material was adapted to purpose of incandescent conductor, except through painstaking experimentation Amgen v. Chugai o claim for any functional substitute or analogs of a protein o 3600 different EPO analogs, unknown which ones would work o some experimentation is ok Wands Factors for undue experimentation: 1) quantity of experimentation 2) amount of direction or guidance presented 3) presence or absence of working examples 4) nature of invention 5) state of prior art 6) relative skill of those in the art 7) predictability or unpredictability of the art 8) breadth of claims y For a process to make antibodies, still may need to enable initial antibodies via deposit Prophetic examples Strahlevitz Enablement inquiry is at time of application filing must enable the invention as it was understood at filing date unlike infringement, where scope of claim is determined at time of infringement 5

Fuzzballs Did you enable a fuzzball as we know it at this time? Did you infringe a fuzzball? here, the meaning of fuzzball may have changed, and the patent may still include the new types of fuzzballs Claims create property rights; written description teaches List of Embodiments Claim Scope Scope of Disclosure Timing Enabling at time of filing Constructive reduction to practice Effective application date Section 120 DEFINITENESS inventor must claim it so that others can easily discern boundaries of legal right demands clarity in claim language would phosita know what is being claimed? Definite Claims Orthoknetics travel chair Claim 1 so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof Insolubly ambiguous OK if PHOSITA can (with difficulty) construe in light of specification meaningfully precise claim scope Notice versus scope In re Miyazaki [W]e employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts. In particular, rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. 112, second paragraph, as indefinite. We don t want to read in limitations into the claims but we want to interpret them in light of the spec

BEST MODE highlights

The best mode required when an inventor subjectively believes there is a best mode Chemcast Test At the time of application did the inventor know of a best mode? Subjective; proof? Best mode of making and using Did the disclosure enable PHOSITA to practice the best mode? Objective compare what he knew with what was disclosed depends on: scope and level of skill in art 6

Subjective Analysis Timing Transco Transco The invention covered thermal insulation for vessels and piping within nuclear power plants. Should inventor update the best mode disclosure at the time of a continuing application? The inventor learned that the best mode for fastener hooks should be stainless steel rather than nylon. The inventor also learned that the hooks should be positioned longitudinally rather than circumferentially. No best mode regarding the fasteners was contemplated at the time of the original application. no need to update best mode Disagreement Scale Multiple uses Assignee knowledge Glaxo Glaxo v. Novopharm Corporate research and development development steps, invention, best mode Zantac product patent; best mode of making Azeotroping process invented by employees in another department Intentional isolation of inventor Objective Analysis Does the applicant need to identify one mode as best? Production detail Commercial reasons Routine Trade secret and best mode disclosure? Randomex: The invention was a portable machine for cleaning packs of discs housed in a mainframe computer. The machine required a cleaning solution and the patent disclosed a solution such as a 91 percent alcohol solution or a non-residue detergent solution such as Randomex Cleaner No. 50281.  The court says that it is enough to disclose the best mode along with other modes even though alcohol might cause an explosion. Commercial reason = equipment on hand Chemcast: The hard layer was made of a substance that was a trade secret and the formula was only know to its manufacture (a third party). Although the patent discloses the specifications of the hard layer, one S/A could not divine the preferred composition or hardness without undue experimentation. What if the patentee cannot induce the supplier to reveal the formula? The patentee was obligated to disclose the trade name of his preferred material. The patentee argues that at least eight other suppliers could make the material. This again confuses enablement with best mode.  A trade name alone may be inappropriate when suitable substitutes are not available. Glaxo: keep azeotroping as trade secret Transco: The other issue is whether a functional disclosure of the best mode is adequate when a trade name that could have been disclosed was not. Burlington 603A cloth.

Written description highlights

The Federal Circuit has not offered a clear statement about the purpose of the written description requirement. main function is to guard against attempts by patent owners to claim inappropriately early effective patent application dates. issue arises when inventor amends Written Description and Earlier Effective Application Dates Written description regulates applicants attempt to get earlier effective application date Did the inventor possess the invention at the earlier date? Test: Would PHOSITA recognize the invention had been accomplished? What is the Value of an Earlier Effective Application Date? Priority disputes 102(g) Antedate prior art Novelty 102(a), 102(e) Statutory Bar 102(b) How Can I Get an Earlier Effective Application Date? Section 119 102(a), 102(e), 102(g) Section 120 102(a), 102(b), 102(e), 102(g) Vas-Cath v. Mahurkar Statutory bar resulting from a Canadian design patent Earlier effective application date based on a U.S. design patent application Drawings in 081 design patent = written description? Gentry Gallery v. Berkline Corp. Original Claim: A sectional sofa comprising a pair of reclining seats, a fixed console, and a pair of control means mounted directly on the console. C-I-P Claim: A sectional sofa comprising a pair of reclining seats, a fixed console, and a pair of control means mounted on the double reclining sofa seat section. [D]isclosure unambiguously limited the location of the controls to the console. No support for claims with controls located elsewhere Tension: claim is not limited to preferred embodiment Univ. of Calif. v. Eli Lilly Claim 5: recombinant microorganism containing cDNA encoding human insulin Invalid for inadequate written description Whether or not it provides an enabling disclosure, it does not provide a written description Prophetic example describing preparation of claimed organism Example 6: provides amino acid sequence of the human insulin A and B chains but not cDNA Must recite cDNA sequence 1. An isolated human gene encoding insulin. 2. The gene according to claim 1, wherein the gene hybridizes to [a fragment of the mouse gene] under moderately stringent conditions. Surprise! Mouse gene fragment does not hybridize to the human gene under moderately stringent conditions Searle 8

 NSAIDs aspirin, ibuprofen, etc. inhibit COX-1 and COX-2 Assay does drug inhibit COX-2 (good) but not COX-1? Attempted to patent method of use of drug (as yet unknown) that satisfies assay LizardTech Method for digital image compression technology Claim 1 limits the process by requiring: maintaining updated sums Claim 21 is a broader independent claim that omits this limitation Violates written description (or enablement) b/c generic claim based on one embodiment Written Description Timeline

UTILITY 112

Brenner v. Manson Process for producing a steroid S Homologue S achieves tumor-inhibition in mice, but actual use of steroid unknown S is subject of research relating to tumor-inhibiton, tried to patent, point to utility of homologue, but it s unpredictable that actual steroid would have same utility A patent is not a hunting license. Without utility there isn t a precise definition of monopoly quid pro quo for granting patent monopoly is benefit derived by public of the invention's utility perhaps this is just for utility in chemical process claims need proof of utility at time of application

In re Brana try to patent Compound X as antitumor in humans Homologue X chemotherapeutic in mice distinguish from in re kirk: applicants there claimed class of steroid with high biological activity; spec failed to disclose which bio properties made it useful Presumption of utility; PTO must show PHOSITA would doubt asserted utility (show unpredictability Burden then shifts to applicant PTO Utility Guidelines 2001 Specific, substantial, and credible Specific: particular to the subject matter claimed Substantial = real world Credible PHOSITA would believe invention is currently available for such use. Gene Fragments NIH, ESTs, and the Human Genome Project EST = fragment of cDNA clone cDNA synthesized from mRNA mRNA produced by gene cDNA libraries from cell of interest Tragedy of the Anti-Commons In re Fisher Five maize ESTs, leaf tissue during anthesis, i.e., flowering Fisher lacked knowledge of structure or function of gene or protein Seven asserted utilities, including: Identify polymorphisms or promoters Vague & no immediate benefit Research tools Commercial success and Enablement 10

NOVELTY AND STAT BARS Policy Issues Avoid detrimental reliance Encourage prompt disclosure Force an election of trade secret or patent protection Reduce independent invention

102(a) critical date: date of invention No patent if known or used [by others in this country], or invention patented or, [described in printed publication anywhere]

102(b)
critical date: one year prior to application No patent if patented or [described in printed publication anywhere] or invention in public use or, [on sale in this country] Policy: Pennick don t want to take back inventions that are already in public domain Public Use (102(b)) Even if not in public, a use for several years before the application may bar patent (Egbert corset) esp if invention is allowed to be used without restriction [policy: could have told others about it] but if there is confidentiality or implicit confidentiality, might not be public If inventor retains control might not be public (Moleculon) like showing invention to colleagues or friends Policy: want to encourage prompt filing and prevent detrimental reliance On sale bar does not mean sale of IP rights Even if secret use (no one knows how to use process, but you sell the stuff from the process), if commercial, then it can be a bar (Metallizing) must choose between using invention as trade secret or patent Judge Hand in Metallizing said perhaps we should be mindful of different policies between first and third person use if public and first person use, then public use, if third person, maybe not On Sale If it s ready for patenting enabled, sufficiently disclosed and described

11

Pfaff inventor sold invention 1 year before app, even though reduction to practice occurred later NO reduction to practice req for on sale bar invention may be patented before reduced to practice, as long as you can enable phosita to practice giving TI a manufacturer description and drawing was enough thus you can prove ready for patenting through red to prac OR enablement, at time it was sold inventors don t even have to know what it is that they re selling; even if third parties sold and don t know what s in it, still a sale (Abbott) pennick arg. Even though parties didn't know it, chemical was the subject matter of 3 commercial sales before the critical date invention was "ready for patenting because two foreign manufacturers had already reduced it to practice sale is different from patent license or sale of patent rights Use UCC to determine when offer is made uniformity in rules Exceptions to On Sale and Public Use Bar experimental use see nature of invention and whether it can be experimented on in private if inventor retained control over the use, might be more experimental not a public use as long as inventor is testing it in good faith sale might be experimental, as long as inventor never led on that it was something to be in public domain Third Party Activity Baxter patent for sealless centrifuge with prior public use by third party unaffiliated with inventor y third party use was never concealed, people were free to look at it, and NIH had an anti secrecy policy y doesn t matter that third parties themselves didn t think it was public use Gore guy sold machine to manufacture thread seal tape to Budd, with trade secret agreement won t copy machine, and try to keep it confidential; machine was kept confidential viewer of machine wouldn t know how it works Budd sold tape but no one would figure out process from tape

102(g)

priority, for interference

(g)(1) no patent if another inventor establishes that -before such person s invention the invention was made by such other inventor and not abandoned, suppressed, or concealed, inventors in interferences must overcome all non-suppressed inventions made in WTO countries by other inventors OR (g)(2) [more general than 1] - before such person s invention, invention was 12

made in this country by another who had no abandoned suppressed or concealed it all inventors (part of interference or not) must overcome all non-suppressed inventions made in U.S. by any other inventor filing valid app constitutes constructive reduction to practice first to conceive may prevail over first to reduce if first to conceive was diligent from a time prior to other inventor s conception through to her own reduction to practice (actual or constructive) Conception = definite and permanent idea of the complete and operative invention does not require reasonable expectation of success, but does require more than mere hope R/P practiced an embodiment of the invention and appreciated result Must have corroboration (Brown v. Barbacid) result shown to someone else who confirms it, or it s authenticated somehow, needs to be more than just the inventor s records (for BOTH conception and R/P) but if there is physical evidence of reduction, no corroboration needed junior party has burden of proof Abandonment, Suppression, Concealment four year delay from time inventor is satisfied with invention and time of filing is unreasonably long --> raises inference of suppression; presumption this was not a "mere" delay we determine what a mere delay in light of policy: may be excused by activities of inventor or assignee; may be ok if inventor or assignee expeditiously starts invention on path to public disclosure once inventor actually reduces invention to practice, inventor just needs to progress toward filing without any extreme period of delay Cure and Spurring Suppression cured if first inventor resumes quest for patent before second inventor conceives Paulik v. Rizkalla Spurring is factor that weighs against first inventor

Prior Art (for g(2)) Dow Chemical inventor does not have to know that what they conceived of was patentable inventor is allowed to take time to improve their invention to bring it to market even after if they already reduced here, the D actively and continuously took steps toward commercialization Two types of abandonment i) when inventor actively abandons ii) when abandonment, s, or c may be inferred based on prior inventor's unreasonable delay in making invention publicly known in Dow: AVI took 2.5 years to make it public but they were actively taking steps toward commercializing, so they did not conceal 13

102(g) v 102(a) prior art in 102(g) requires prior invention, defined as conception plus r/p distinguish 102(a) where prior art is publication, even if no r/p 102(e) applies for prior-filed application discloses but doesn t claim invention 102(a) has no territorial limit on prior art patents and printed publications 102(g) prior inventions are prior art only if they were made in this country Rule 131 Quasi Interference Swearing behind a reference for 102(a) can t swear behind reference if reference is a U.S. patent or application that claims same invention y would need to go through interference y same invention means: if subject matter of one patent would anticipate or render obvious subject matter of opposing party s patent can t swear behind if examiner has rejected application based on stat bar [102(b, c, d)] In re Moore reference under 102(a) is not considered as evidence of prior act of invention, but it's evidence that subject matter is not new if applicant can prove invention prior to reference, then reference will be overcome as bar to patentability identified and knew how to make chemical before publication of reference (British chemistry article); did not learn of utility until after publication; OK, not novelty bar distinguish Brenner v. Manson chemical process is not useful unless it has a specific practical utility could also be interpreted to say that claimed process can't be fully reduced to practice to justify a patent if there is no use [need three things: structure, how to make, how to use] but it was in context of priority contest y y if applicant claims more subject matter than a reference discloses, then applicant only need to show that they possessed what was in the reference before the reference date no need to show corroboration

Section 102(f) highlights You can't get a patent if you steal a concept Section 102(g) highlights Specifies a winner-take-all patent system in which the first inventor wins the patent Priority rules are used in interference proceedings An inventor must elect trade secret or patent protection 102(g) rules about the date of invention apply to 102(a) and 102(e)

PRIORITY see pat interference slides NOVELTY Identity Requirement Literal infringement; all elements rule Claim construction Robertson third mechanical fastening means 14

Inherency PHOSTIA would recognize missing info is necessarily present; Wilson suggests crosssnap Wilson's invention was inherently capable of making the third fastening elements engageable with other fasteners, which is what the patentee tried to claim If prior art does not expressly set forth a particular element of claim, the reference may still anticipate if that element is "inherent" in the disclosure establishing inherence: extrinsic evidence must make clear that missing description is necessarily present in the thing described in the ref and would be recognized by phosita but, can't be established by probabilities or possibilities; Accidental Anticipation In re Seaborg Americium claim Fermi reactor produces one billionth gram in forty tons of radioactive fuel no positive evidence that americium was produced inherently would have been undetectable, so not an anticipation Tilghman v. Proctor steam engine with tallow and olive oil identical to later discovered chemical process process by which the fat acid formed was never fully understood, no anticipation Schering drug metabolite substance formed in patient s body when taking loratadine, called DCL, patentee tried to patent it inherency doesn t have to be recognized at time of invention DCL necessariliy and inevitably forms under normal conditions the prior art does not need to enable to later invention, it just needs to be enabled to do what it does Identity Requirement 2 Extrinsic evidence Four corners rule Evidence of how PHOSITA would read the reference Combination allowed in Section 103 Genus and species Claim = {A, B, C}; Prior Art = C Claim = {a+b+c}; Prior Art = a+b Claim = {a1+b+c, a2+b+c}; Prior Art = a2+b+c Enablement for anticipation Accidental anticipation not enabled Section 112 vs. Section 102(a); In re Hafner New chemicals, Aug. 1960 application rejected b/c no utility, 112 July 1964 application disclosed utility but could not claim priority based on earlier German application Arnold publication May 1960 discloses chemicals but not utility Double standard Aug. 1960 disclosure not good enough to meet 112, then Arnold (which discloses even less) should not be good enough to meet 102(a) enablement For 102(a) must describe chemical and teach how to make product, or describe how to practice process, not necessary to explain utility of product or process 112 needs utility, 102(a) does not Enablement 3

15

Titanium alloy consisting essentially by weight of about 0.6% to 0.9% nickel, 0.2% to 0.4% molybdenum, up to 0.2% maximum iron, balance titanium Ni = 0.75%, Mo = 0.25%, Fe = 0%; Russian graph Recipe sufficient to enable Patent specification little detail Patentee s expert could make without trouble 102(a) References known by others National Tractor drawings on tablecloth NOT prior art drawings never available to public, drawn on underside, never printed or published before being destroyed, device never constructed or reduced to practice, and drawings couldn't really be built prior public knowledge must be reasonably accessible to the public not satisfied by knowledge of a single person or a few people working together used by others Rosaire method of prospecting oil, done in a hole on worksite work done under ordinary conditions without any attempt to conceal or exclude public, no instructions of secrecy, counts as prior art printed publications Jockmus - Commercial catalogue distributed generally to a trade counts as publication even though not distributed widely, not limited to widely circulated magazines and newspapers Klopfenstein presentation printed on poster for 2.5 days for meeting of chemistry association IS publication even though not distributed and indexed, it was sufficiently accessible to public interested in the art, shown to people with ordinary skill distinguish Cronyn college student presentation of undergrad these to defense committee of 4 faculty was NOT publication, even though indexed, it wasn t catalogued in a meaningful way: only the name and title of thesis were catalogued, no information about invention attached distinguish In re Hall thesis filed and indexed in university library was publication copies were freely available to public also a factor: whether party had reasonable expectation that it won t be copied, ease of display patented Reeves IF in effect the foreign document grants patent to exclude others from producing, using, or selling, it clearly falls within accepted definition of a patent which may be considered under 102(a) so GM must be deemed an effective patent GM, which is a foreign patent but not a printed publication, is a ref only for what is patented, for what it claims and not for what is disclosed in its specs, consistant with language --> "patented... in a foreign country" might also be publication Use, Printed, Published, Knowledge Section 102(e) disclosures in earlier-filed U.S. apps 16

Critical date invention Patent application filed before critical date Publication Issue Foreign Milburn - patent gave complete and adequate description of applicant s invention but didn t claim it Section 102(f) Derivation Communication of conception Enable PHOSITA; incorporates Section 112 No geographic limitation Secret Prior Art Novelty bar obscure use (Rosaire), publication (Hall, Jockmus); application (102(e)); prior invention Prior art for Section 103 Relation to trade secret law

17

Section 103: Nonobviousness

The key hurdle to patenting an invention is the nonobviousness requirement. The basic test from Graham states that an invention must represent a nonobvious advance over the prior art when judged by a person skilled in the art. The law assumes that the hypothetical person skilled in the art knows the entire prior art. The content of the prior art is any reference that qualifies against the invention through one of the Section 102 "gateways." (As long as the reference is in the same or an analogous field.) Nonobviousness highlights An imaginative combination of known elements may be nonobvious Objective secondary factors supplement the Graham test Distinct references cannot be combined unless there is a suggestion in the prior art Tailoring 103 to the R&D process Two stages: (1) Motivation (2) Implementation or problem solving Public domain motivation Obvious to try, trend, long felt unmet need Private motivation Theory, discovery, insight Insight Recognize problem, recognize advantage Section 103 Factual Questions  What is the scope and content of the prior art?  What are the differences between the prior art and the claims at issue?  What is the level of ordinary skill in the art? Graham Test Whether at the time of the invention the differences between the prior art and the claims are obvious to one skilled in the art. Patentability cannot be negatived by the manner of invention. Secondary factors: commercial success, long felt unmet need, failure of others, etc. Graham s Plow Improved plow designed to absorb shocks when the plow hits rocks Prior art: Graham s 811 patent Glencoe clamp device Difference b/w 798 invention and 811 invention: stirrup and bolted connection shank above hinge plate disagree with Graham tendency of shank to flex is the same in all cases person having OSITA, given fact that flex could be utilized more effectively if allowed to run entire length of shank, would see that they should do what Graham patent does: --> invert shank and hinge plate all elements of '798 patent is present in Glencoe structure Calmar v. Cook Chemical 18

Hold down lid for a spray bottle; claim indicates use of a rib seal, and overcap whose edge does not contact the container cap Prior art Lohse overcap seal = gasket Mellon seal above the threads; seal = gasket Livingstone seal above the threads; tongue and groove seal

in patent prosecution, Scoggin relied on sealing arrangement as exclusive patentable difference and Examiner allowed claims based on that feature limitations specifically spelled out as 1) use of a rib seal and 2) overcap whose lower edge did not contact container cap Scoggin invention limited to use of a rib, rather than washer or gasket, and existence of a slight space between overcap and container cap patentee got his patent only by accepting the limitations imposed by examiner subject matter as a whole reduces to the distinguishing features clearly incorporated into the claims in dist court: the space between seal and cap was just a description, and the space was necessary to form the seal U.S. v. Adams Anode = magnesium; cathode = cuprous chloride; electrolyte = water Prior art: Niaudet anode = zinc; cathod = silver chloride; water (?), ammonium chloride solution Wood magnesium substitutes for zinc Prior art: Codd magnesium substitutes for zinc; cuprous ion mentions magnesium, but only as something that electropositive, and indicates that magnesium is theoretically desirable by electropositiveness does not teach that magnesium could be combined with water, and doesn't say that cuprous chloride could be substituted for silver chloride Wensky cuprous chloride electrolyte solution Skrivanoff magnesium anode; copper or carbon cathode in a paste containing cuprous chloride Substitution of magnesium for zinc in the positive electrode Substitution of cuprous chloride for silver chloride in the negative electrode Unexpected characteristics: operates over a broad temperature range, without the use of acids, at a constant voltage, generates a large current for its size, and cannot be shut off once activated for someone to combine elements as Adam did, must ignore that long-accepted factors but, doesn't mean that someone who finds new uses for old inventions by ignoring previous disadvantages has discovered something patentable these disadvantages that discourage a combination should be taken into account Combining References To combine references there must be a suggestion to combine a reasonable expectation of success Suggestion may be found expressly in reference 19

 knowledge of PHOSITA nature of the problem to be solved Suggestion test also applies to single reference cases In re Dow Chemical High impact rubber resin + Improved resistance to heat distortion Made from A (styrene), B (maleic anhydride), and C (synthetic diene rubbers) M-K discloses a high impact rubber made from A and C. Baer makes a rubber with improved heat resistance by combining A and B.; Decades of experimentation and recognition of need; Other attempts with similar combinations Pro-Mold Squeeze Tite -- friction fit cover; Classic Line Thin -- only slightly larger than a card; Commercial success; Suggestion card size KSR v. Teleflex Obvious if the invention is the combination of familiar elements according to known methods [that] does no more than yield predictable results or if there was a known problem for which there was an obvious solution encompassed by the patent s claims. [A]ny need or problem known in the field...and addressed by the patent can provide a reason for combining the [prior art]. Criticized rigidity, but did not reject TSM Obvious to try; predictability Greater role for PHOSITA, competitive innovation marketplace created strong incentive to convert mechanical pedals to electronic pedal and prior art taught a number of methods for achieving advance must consider what knowledge resources the person of ordinary skill would have in facing the range of needs in the field tech developments made it clear that engines using computer-controlled throttles would become standard Incentive to Invest Research project and expected cost hurdle Incentives in R&D management Other means of appropriating value Absorptive capacity User innovation Arkie Lures Salt impregnated fishing lure Differences from prior art Salty taste, not odor Retains salty taste and does not spoil Salt in plastisol thought unsafe Salt in plastisol thought to roughen surface Experts doubted Objective indicators Commercial success, licensing, copying Obvious to use salt in plastic lure? Teaching away, not motivation to combine not whether or not salt could be used but whether it's obvious to do so in light of all factors years of the salty baits and plastic lures without combining, weighs on side of unobviousness Dissent says majority misreads 778 patent and prior art does not teach away from salt; two others had added salt to lures before 20

Hybritech Competitive immunoassays; slow but require little antibody Sandwich assay; fast but requires a lot of antibody Invention claims use of high affinity monoclonal antibodies in a sandwich assay Kohler and Milstein: monoclonal antibodies using hybridomas Oi and Herzenberg: mapped the number and location of epitopes on a particular antigen using monoclonal antibodies Cuello: monoclonal antibodies + competitive radioimmunoassay to detect neurotransmitters Jeong, et al.: sandwich assay + polyclonal antibodies Frankel: determination of affinity constants for monoclonal antibodies Secondary Considerations Long felt unmet need Licensing Failure by others Experts doubt, prior art teaches away inverse Graham test NOT: Contemporaneous discovery Commercial success commercial failure Nexus requirement Commercial Success Long inferential trail Success due to innovation Success perceived before invention Perception of commercial reward induced others to try to invent The others failed so it must have been a nonobvious invention In re Clay Obvious in light of the Sydansk patent and the Hetherington patent Sydansk patent not analogous art Gel similar Clay; process for reducing the permeability of oil bearing rocks PTO: Same field -- withdrawing petroleum from a reservoir. Fed. Cir.: Different fields --Sydansk pertains to extraction. Clay pertains to storage. Fed. Cir. says: Not pertinent. Purpose of Sydansk -- to improve flow profiles. Purpose of Clay -- to displace gasoline from dead volume in a storage tank.

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Adjusting the Scope of Patent Claims In the first instance, the scope of patent claims is set during patent prosecution. At trial, the courts can adjust the literal scope of the claims through the interpretive process. There are two other possibilities for adjustment of the scope of claims: the doctrine of equivalents, and a reissue proceeding. We will try to understand why patent claims should ever be adjusted, and which procedure is best suited to the task(s). We will also consider reexamination, a process that allows reconsideration of validity in the PTO. Doctrine of equivalents highlights: The inventor is estopped from claiming subject matter ceded during prosecution The set of equivalents is greater for pioneering inventions An equivalent must be shown for each element of the claim Adjustments to Claim Scope Claim amendment during prosecution Reissued patents after issuance DOE at trial DOE Overview No literal infringement Test of equivalence Screens All elements PHE 102/103 Dedication to public Purpose of DOE Fair reward Block unjust enrichment Smooth Frictions Language Foreseeability Mistake Regulate Claim Refinement Winans RR car, upper part cylindrical, lower part cone with tip of cone cut off Advantages: (1) circle bears weight better than square, (2) cone fits b/w wheels of car Defendant octagonal Is a polygon with many sides equivalent to a circle? Graver Tank Combination of alkaline earth metal silicate and calcium fluoride Accused flux contains calcium flouride, calcium silicate (an alkaline earth metal silicate), and manganese silicate (not an alkaline earth metal silicate) Insubstantial difference test Lack of independent invention Manganese silicate in written description Interchangeability Warner-Jenkinson 1 22

Process for purifying dye operating at pH levels between 6.0 and 9.0 Defendant s process operates at pH of 5.0 Objective inquiry on an element-by-element basis Intent plays no role Evaluate equivalency at time of infringement Triple identity test or the insubstantial differences test Question of fact Triple Identity Test Function/Means/Result Device for checking cleanliness of bottles: conveyor belt + optical scanner + hardwired control circuits Alleged infringing device replaces hardwired control with software & PC Obviousness test Festo Pair of one-sided sealing rings Magnetizable sleeve  Policy - Boundaries of a property right should be clear to promote progress, enables efficient investment in innovation nature of language makes it impossible to capture essence of thing in patent application inventor bears the risk that others will exploit limits of patent if patent were always interpreted by literal terms, value would be diminished literal interpretation may conserve judicial resources but it not necessarily most efficient Doc. of Equiv. makes scope of patents less certain, and may chill legitimate competitive behavior or inefficient investment, may also lead to wasteful litigation but this is price of ensuring appropriate incnetives for innovation Range of equivalents for element subject to prosecution history estoppel If patents were always interpreted by their literal terms, their value would be greatly diminished. Unimportant and insubstantial substitutes for certain elements could defeat the patent, and its value to inventors could be destroyed by simple acts of copying. For this reason, the clearest rule of patent interpretation, literalism, may conserve judicial resources but is not necessarily the most efficient rule. The patentee, as the author of the claim language, may be expected to draft claims encompassing readily known equivalents. A patentee's decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim There are some cases, however, where the amendment cannot reasonably be viewed as surrendering a particular equivalent. The equivalent may have been unforeseeable at the time of the application. Foreseeability Tangential relation to the equivalent in question [S]ome other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. DOE Policy Choices Abolish D.O.E. Limit to later developed technology Expanded reissue proceedings

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REISSUE Section 251 authorizes reissue Section 252 describes effect of reissue Term of original patent Original claims enforceable from original issue date New or amended claims enforceable from reissue date Defect exists Error In patent In conduct Distinguish correction (254-56) from reissue Superior Fireplace Without deceptive intent No recapture Mentor; invention disclosed in original patent No new matter 2 years to enlarge scope of claims Meet patentability requirements Intervening rights Seattle Box Non-infringing before reissue; freely use or sell after reissue Equitable judgment about continued manufacture or sale to protect investments made prior to reissue when certain conditions are present, a reissue shall not abridge or affect certain rights of those who acted before reissue rationale: public has right to use what is not specifically claimed in original patent Reexamination Ex parte No expansion of claim Quantum v. Rodime Inter partes Oppositions

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LICENSING License Terms Tying Monsanto Patent term extension Brulotte

using leverage of patent monopoly to get further monopoly is enlarging the patent monopoly, so not allowed dissent: court is basing decision on technical framing of contract and would have treated case differently if title had been declared to pass at termination instead of outset of contract term, or even if use payments were verbally disassociated from payments for machine licenses had payable minimum royalty of $500 for each hop-picking season or 3.33/200 lbs of dried hops harvest by the machine, whichever is greater licenses continued beyond term of patent rights become public property once term expires R: patentee's use of a royalty agreement that projects beyond expiration date of patent is unlawful per se distinguish case: automatic radio v. hazeltine, where license covered several hundred patents and royalty was based on licensee's sales, even when no patents were used; not all of the patents were expired

Exhaustion Quanta Purposes of Tying Enforcement Convenience Quality control Leverage Price discrimination Leverage Monopoly on left shoes, leverage to right shoe market Monopoly on operating systems, leverage to browser market Price Discrimination IBM rents patented tabulator and requires purchase of punch cards from IBM A.B. Dick sold patented printed machine with tie covering ink and paper Monsanto v. Scruggs Monsanto makes Roundup herbicide and sells Roundup Ready cotton and soybean seeds that survive application of Roundup Patents on Roundup Ready seeds Scruggs did not sign license, but still infringed by re-planting seeds First sale doctrine does not apply: restricted sale and replication Not misuse: field of use restriction (no research), charging royalties, limited use (no replant) Section 1 tying: separate products; conditional sale; market power in tying product; tied product not insubstantial Tie OK b/c only Roundup approved by EPA Patent Licenses and Leveraging Output based royalty after patent expired Brulotte v. Thys Do post-expiration royalties deter entry after patent expires (tie use during patent to use after patent)? How do you get buyers to agree with the incumbent to block entry when entry is good for buyers? Normally, Exclusion Fails 25

Consumers foresee high prices next period if exclusion succeeds, they should seek compensation Incumbent cannot afford to compensate Entry makes pie larger Incumbent cannot divide smaller pie to raise its profit and also satisfy consumers incumbent can t deter entry Exclusion might work Subset (possibly all) of buyers promise to continue to use and pay for the patented invention after patent expiration Potential entrant must achieve threshold sales to achieve efficient operating scale or to cover start-up costs Exclusion is feasible b/c free-rider problem Exhaustion Suppose a patented scientific instrument is sold at a low price to universities and a high price to businesses Suppose X purchases the patented devices from universities and resells to businesses arbitrage Exhaustion = the initial authorized sale of a patented item terminates all patent rights to that item. Quanta LG Electronics LG patent claims relating to personal computer systems and processes (basic PC technology) Intel license from LG under all patents Intel made and sold microprocessors and chipsets to defendants Intel was required by LG to notify Intel s customers (defendants): not authorized to combine Intel products w/ non-Intel products Effect of restriction defendants could not use Intel products w/o permission from LG Fed Cir: Exhaustion does not apply to process claims; exhaustion also does not apply to system claims b/c exhaustion only applies to unconditional sale Sup Ct: Exhaustion does apply to process claims; too easy to draft device as process [S]ale of components that essentially, even if not completely, embody an invention. [O]nly reasonable and intended use was to practice the patent Exhaustion triggered by sale authorized by patentee; provision concerning notice to Intel customers did not restrict Intel s right to sell; disclaimer of implied license irrelevant b/c exhaustion applies

Lear v. Adkins

as long as licensee is operating under license agreement, he is estopped to deny validity of licensor's patent in a suit for royalties under the agreement licensee can't enjoy benefits of agreement while simultaneously urging that patent is void Lear and Adkins had agrees that any inventions related to vertical gyros was property of Adkins, but that he granted Lear a license to all ideas on royalty basis new agreement said that if Patent Office refuses to issue patent, or if patent is held invalid, then Learn can terminate the license 26

Adkins didn't get final PO decision about patentability when contract written, but got one 5 years later; narrowed in subject matter to just include design of apparatus used to achieve gyroscope accuracy --> patent granted on this basis took 5 years; Lear was convinced that Adkins couldn't get a patent, and shouldn't pay royalties on ideas Adkins patent was rejected twice, then Lear found a patent that they thought fully anticipated Adkins' invention then Adkins got patent in 1960, sued licensee estoppel is general rule but unevenly applied and rational unclear overruled Hazeltine about per se illegality of licensee estoppel any benefit from contract and bargained for should enforce the patent but it would be unfair if licensor got benefit of contract without good faith dealing with patent office even if not conscious wrongdoing, it shouldn't be unfair to require patentee to defend the PO's judgment when his licensee places the question in issue, because patent office has to reach conclusion by ex parte hearings, and doesn't get to hear arguments from all interested parties by promising Adkins to pay royalties from the beginning, Lear had immediate access to ideas which it might not have learned until Patent Office published details of Adkins' invention Lear is allowed to raise question of validity but still has to comply with contract and pay royalties until claim is vindicated in court but this may be against federal policy - would disincentivize licensee's to challenge validity because it would be expensive and would give licensor incentive to postpone the day of final judgment this would be bad for areas where invention proceeds rapidly Holding: Learn must be permitted to avoid payment of all royalties accrusing 1960 patent if Lear can prove patent invalidity

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