Professional Documents
Culture Documents
Table of Contents
Patentable Subject Matter ...................................................................6
Diamond v. Chakrabarty, 447 U.S. 303 (1980) [68]................................. 6
O’Reilly v. Morse, 56 U.S. 62 (1854) [79]..................................................6
The Telephone Cases, 126 U.S. 1 (1888) [92]...........................................7
Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948)
[113]........................................................................................................7
Parke-Davis & Co. v. H.K. Mulford & Co., 189 F.95 (S.D.N.Y. 1911)
[106]........................................................................................................8
Lab Corp. of America v. Metabolite Labs, Inc., 126 S.Ct. 2921 (2006)
[98]..........................................................................................................8
Gottschalk v. Benson, 409 U.S. 63 (1972) [131].......................................8
Diamond v. Diehr, 450 U.S. 175 (1981) [141]........................................... 8
State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149
F.3d 1368 (Fed. Cir. 1998) [156]...........................................................9
Utility......................................................................................................... 9
Lowell v. Lewis, 15 Fed. Cas. 1018 (C.C D. Mass. 1817) [212]................9
Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364 (Fed. Cir. 1999)
[214]........................................................................................................9
Brenner v. Manson, 383 U.S. 519 (1966) [222].......................................10
In re Brana, 51 F.3d 1560 (Fed. Cir. 1995) [230]...................................10
In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005) [240]................................. 10
Disclosure and Enablement .............................................................. 11
The Incandescent Lamp Patent, 159 U.S. 465 (1895) [261]..................11
In re Wands, 858 F.2d 731 (Fed. Cir. 1988) [275]..................................11
In re Strahilevitz, 668 F.2d 1229 (Fed. Cir. 1982) [286]........................11
The Gentry Gallery, Inc. v. The Berkline Corp., 134 F.3d 1473 (Fed.
Cir. 1998) [303]....................................................................................12
University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916 (Fed.
Cir. 2003) [314]....................................................................................12
LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed.
Cir. 2005) [321]....................................................................................13
LizardTech, Inc. v. Earth Resource Mapping, Inc., 433 F.3d 1373 (Fed.
Cir. 2006) (on petition for en banc rehearing) [325].........................13
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565 (Fed.
2 CASE SUMMARIES ON PATENT LAW
The dissent criticized the majority for insisting that every claim had to
be tied to a machine.
Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127
(1948) [113]
The Supreme Court clarified the requirements that a microorganism
must meet in order to fall within the definition of patentable subject
matter under § 101. Kalo sought to enforce a patent on an inoculum
containing multiple strains of nitrogen-fixing bacteria. In perfecting
its inoculum, Kalo had overcome an obstacle which had been impeding
the production of multiple-strain inocula. Previous inocula could con-
tain only a single strain of bacteria because different strains of bac-
teria tended to have an inhibitive effect one each other when placed in
the same inoculum. Kalo solved this problem by identifying combina-
tions of strains that suffered from no such inhibitory effect. The Court,
however, invaliated the claim on the ground that Kalo had merely dis-
covered a natural phenomenon. The Court observed that “[t]he com-
bination of species produces no new bacteria, no change in the six spe-
cies of bacteria, and no enlargement in their utility” and that “[e]ach
species had the same effect it always had.”
The concurrence stated that a multiple-strain inoculum might be pat-
entable, but only if the particular combination of strains resulted in
some useful property that did not exist in each strain individually.
8 CASE SUMMARIES ON PATENT LAW
Parke-Davis & Co. v. H.K. Mulford & Co., 189 F.95 (S.D.N.Y.
1911) [106]
The court established the “purification doctrine.” Takamine (an em-
ployee of Parke-Davis) obtained a patent on purified adrenaline that
was “practically free from inert and associated gland tissue.” Taking a
pragmatic view of Takamine’s achievement, the court upheld the claim
on the ground that Takamine’s purified adrenaline was suitable for
certain therapeutic uses whereas previous forms of adrenaline were
not.
cess for curing rubber. Previous methods for curing rubber used a
mathematical relationship (the Arrhenius equation) to determine ex
ante the curing time for a particular rubber product. The older meth-
ods, however, over- or underestimated the curing time in a substantial
fraction of cases. By contrast, Diehr’s method provided a computer
with constantly updated measurements of the temperature inside the
curing mold. Using the Arrhenius equation, the computer then adjus-
ted the remaining curing time as the curing process progressed. The
Court allowed the claim on the ground that the Arrhenius equation
was but one part of a larger process. Diehr’s process, said the Court,
therefore differed from an attempt to claim a bare mathematical rela-
tionship or natural phenomenon.
The dissent argued that the majority’s position would invite a flood of
software patents.
Utility
Lowell v. Lewis, 15 Fed. Cas. 1018 (C.C D. Mass. 1817) [212]
“Usefulness” for the purposes of patent eligibility requires only that
the claimed invention performs some non-trivial function. The claimed
invention need not be so superior as to replace generally all preceding
devices performing the same function.
Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364 (Fed. Cir.
1999) [214]
“The fact that one product can be altered to make it look like another is
in itself a specific benefit sufficient to satisfy the statutory requirement
of utility.” In evaluating patent claims, courts should confine them-
10 CASE SUMMARIES ON PATENT LAW
nomic DNA. The court disallowed Brana’s claims on the ground that
Brana did not know the functions of the genes targeted by the claimed
ESTs. A patent on Brana’s ESTs, said the court, would amount to a
“hunting license.”
The dissent criticized the majority for adopting an overly demanding
standard of utility. In the dissent’s view, Brana could demonstrate
utility simply by showing that the ESTs were effective in identifying
particular genes.
The Gentry Gallery, Inc. v. The Berkline Corp., 134 F.3d 1473
(Fed. Cir. 1998) [303]
The Federal Circuit clarified the extent to which the written descrip-
tion can limit the scope of a claim. The Gentry Gallery sought to en-
force a patent on a sofa that featured adjacent and parallel reclining
sections. Gentry’s sofa represented a significant advance over previous
reclining sofas, whose reclining sections could be placed only at the
ends because of constraints arising from the lever needed to operate
the reclining mechanism. Gentry’s solution was to place the reclining
mechanism in a “console,” so that parallel sections on either side of the
console could be reclined using controls located on the console.
Gentry’s patent claims were very particular in setting forth the console
as an essential component of the invention. When Berkline invented a
similar sofa that had no consoles, the Federal Circuit held that
Berkline’s sofa fell outside Gentry’s claims.
University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916
(Fed. Cir. 2003) [314]
The Federal Circuit clarified the bounds of constructive reduction to
practice. Researchers at the University of Rochester deduced that
COX-2 inhibitors would make better painkillers than existing drugs,
which inhibited the COX-1 enzyme in addition to COX-2 and thereby
caused side effects. The University sought to patent this discovery
through a claim encompassing “[a] method for selectively inhibiting
[COX-2] activity in a human host, comprising administering a non-
steroidal compond that selectively inhibits activity of the PGHS-2
[COX-2] gene product . . . .” The Federal Circuit held the claim to be
invalid because it failed to provide a written description of any specific
compound exhibiting the described inhibitory effect on COX-2. “Even
with the three-dimensional structures of . . . COX-1 and COX-2 in
hand,” said the court, “it may even now not be within the ordinary skill
in the art to predict what compounds might bind to and inhibit them.”
CASE SUMMARIES ON PATENT LAW 13
Randomex, Inc. v. Scopus Corp., 849 F.2d 585 (Fed. Cir. 1988)
[340]
The Federal Circuit clarified the extent to which a best-mode disclos-
ure must provide specific information. Randomex developed and pat-
ented a portable hard-drive cleaner. The relevant claim covered not
only the cleaning device itself but also the cleaning solution to be used
in conjunction with the device. The claim stated that “[t]he cleaning
solution employed should be of a type adequate to clean grease and oil
from disc surfaces, such as a 91 percent alcohol solution or a non-
residue detergent solution such as Randomex Cleaner No. 50281.” The
court found the claim to be valid even though Randomex’s claim did
not identify which cleaner was the “best.”
The dissent noted that Randomex had intentionally refrained from
identifying the best cleaning solution despite having identified the best
candidate through experimentation.
CASE SUMMARIES ON PATENT LAW 15
Chemcast v. Arco Industries, 913 F.2d 923 (Fed. Cir. 1990) [348]
The Federal Circuit established the standard for determining the ad-
equacy of a best-mode disclosure. “[A] proper best mode analysis has
two components,” said the court. “The first is whether, at the time of
inventor filed his application, he knew of a mode of practicing his
claimed invention that he considered to be better than any other. . . .
If the inventor in fact contemplated such a preferred mode, the second
part of the analysis compares what he knew with what he disclosed—is
the disclosure adequate to enable one skilled in the art to practice the
best mode or [ ] has the inventor ‘concealed’ his preferred mode from
the ‘public’ ”?
Chemcast sought to enforce a patent on a grommet designed to act as a
sealer. The relevant claim stated that one portion of the grommet
should have a hardness of less than 60 Shore A while a different por-
tion should have a hardness of greater than 70 Shore A. The court in-
validated the claim on the ground that Chemcast had failed to disclose
the substance to be used in the harder portion of the grommet. At the
time, Chemcast purchased that substance from a single supplier
(Reynosol). Further, the composition of that substance was Reynosol’s
trade secret. “The question,” said the court, “is not whether those
skilled in the art could make or use [Chemcast’s] grommet without
knowledge of [the Reynosol compound]; it is whether they could prac-
tice [the] contemplated best mode which . . . included specifically the
Reynosol compound.”
Novelty
In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) [361]
The Federal Circuit sharply limited the use of “inherency” in showing
that an existing product anticipates an invention. Robertson sought a
patent on a diaper which had a fastener dedicated to keeping the di-
aper rolled up for disposal. A similar diaper (the Wilson diaper) was
similar to Robertson’s diaper in most respects but lacked a dedicated
fastener for disposal. Reversing the Board of Patent Appeals and In-
terferences, the court allowed Robertson’s claim on the ground that
Wilson’s design contemplated no special fastener for use during dispos-
al. The court criticized the Board for concluding that Robertson’s
design was “inherent” because the existing fasteners on Wilson’s di-
16 CASE SUMMARIES ON PATENT LAW
aper could be used to keep a diaper rolled up. “Inherency,” said the
court, “may not be established by probabilities or possibilities. The
mere fact that a cetain thing may result from a given set of circum-
stances is not sufficient.”
The dissent argued that alternative uses for the fasteners on the
Wilson diaper were sufficiently apparent that Robertson’s diaper con-
stituted no real advance in diaper design.
vention],” said the court, “need not have been acomplished prior to the
date of a reference unless the reference also teaches how to use the
compound it describes.”
Statutory Bars
Pennock v. Dialogue, 27 U.S. 1 (1829) [511]
An inventor may not patent a product that has already entered wide-
spread public use. Pennock had invented a new kind of hose, which
was less prone to leaking than existing types of hoses. Instead of ap-
plying for a patent right away, Pennock practiced the invention as a
trade secret for seven years. During that period, Pennock sold more
than 13,000 feet of his hose and permitted a thid party (Jenkins) to
produce the hose. Although Pennock ultimately obtained a patent on
the hose, the Court invalidated the patent on the ground that the in-
vention was already widely available to the public when the patent
was filed. “If an inventor should be permitted to hold back . . . the
secrets of his invention,” said the Court, “[until] the danger of competi-
tion should force him to secure the exclusive right [of a patent], . . .
[such a rule] would materially retard the progress of science and the
useful arts.”
CASE SUMMARIES ON PATENT LAW 21
Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir.
1986) [528]
Public use does not exist if the inventor has maintained overall control
over the disclosure of the invention. Nichols had invented a 2 x 2 x 2
while attending graduate school, explaining the workings of the cube
to several fellow students. Upon joining Moleculon as a research sci-
entist, Nichols explained the workings of the cube to a supervisor. Mo-
leculon then tried to license the design to “between fifty and sixty” toy
companies but received no interest. About a year after first soliciting a
deal with a toy maker, Nichols (acting on behalf of Moleculon) applied
for a patent on the cube, obtaining the patent two years later. CBS (a
maker of Rubik’s Cube puzzles) sought to invalidate the patent on the
ground that Nichols’s explanations of the cube constituted public use
or sales under § 102(b). Finding that Nichols had not actually relin-
quished or sold his invention to the public, the court upheld the patent.
“Based on [Nichols’s] personal relationships and surrounding circum-
stanes,” said the court, “. . . Nichols at all times retained control over
the puzzle’s use and the distribution of information concerning it.” As
to CBS’s argument that Nichols had sold the cube to the public, the
court said that “an assignment or sale of rights in the invention . . . is
not a sale . . . within the meaning of section 102(b).”
22 CASE SUMMARIES ON PATENT LAW
the parties to the Byron sales did not know which crystalline form of
the compound they had purchased. Only subsequent testing (carried
out by Abbott and Geneav during litigation) showed that the Byron
product fell within the scope of Abbott’s patent claims. The court in-
validated the patent, finding Abbott’s product to have run afoul of the §
102(b) statutory bar. “If a product [ ] offered for sale inherently pos-
sesses each of the limitations of the claims,” said the court, “then the
invention is on sale, whether or not the parties to the transaction re-
cognize that the product possessed the claimed characteristics.”
Abandonment
Macbeth-Evans Glass Co. v. General Electric Co., 246 F. 695 (6th
Cir. 1917) [593]
Keeping an invention secret for an extended period may constitute
abandonment of the right to patent that invention under § 102(c).
Macbeth-Evans had perfect a process for making glass for “illuminat-
ing purposes such as in electric and other shades and globes.”
Macbeth-Evans practiced the process in secret for more than nine
years. After a former Macbeth-Evans employee leaked the secret pro-
cess to a competitor, Macbeth-Evans successfully patented the process.
When the patent was challenged by General Electric, the court found
that Macbeth-Evans’s practicing of the process in secret constituted an
abandonment of patent rights to that process. According to the court,
allowing the practitioner of a secret process to obtain a patent for that
process would present inventors with conflicting incentives. On the
one hand, an inventor would want to avoid disclosing the secret
through a patent application. On the other hand, the inventor might
prefer the explicit protection of patent law to the less certain protection
inherent in a trade secret. The court reasoned that Macbeth-Evans,
having opted to make a trade secret of its process, could not then
change its mind and obtain a patent instead.
tion to the PTO was still pending, Kathawala applied for Greek and
Spanish patents on the compounds, expanding the subject matter to in-
clude ester derivatives of the compounds as well as process claims.
Kathawala received a Greek patent covering the compounds them-
selves, methods of use, and processing for making the compounds. The
Spanish patent covered only the process claims. The American patent
application was still pending when the two foreign patents issued.
When Kathawala filed with the PTO a continuation-in-part which ex-
panded his original claims to include the ester derivatives and certain
methods of use, the PTO rejected the application on the ground that
the foreign applications constituted abandonment of United States pat-
ent rights under § 102(d). Affirming the PTO’s rejection, the court held
that the issuance of any foreign patent containing claims “directed to
the same invention as that [in a] U.S. application” precluded that in-
vention from being patented in the United States. According to the
court, requiring a review of whether particular claims were granted by
foreign governments would unnecessarily embroil the PTO in the de-
tails of foreign law. Finally, the court found that the issuance date of
foreign patents is the date on which patent rights became effective in
those countries.
Non-Obviousness
Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851) [617]
The mere substitution of one material for another does not constitute a
non-obvious invention. Hotchkiss applied for a patent on a doorknob
made of clay or porcelain. Upholding the rejection of the application,
the Court found that Hotchkiss’s idea consisted solely of using a new
material. The court noted that porcelain knobs had been made before
and that no new method was required to mount the porcelain knobs on
doors.
The dissent, taking a more pragmatic approach, found that the porcel-
ain knob might have been patentable had it been cheaper or otherwise
better than existing knobs.
KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) [665]
Teleflex held a patent on a gas pedal with an attached electronic
sensor. The disputed claims stated that the electronic sensor was to be
attached to a stationary support and was to sense the rotation of the
28 CASE SUMMARIES ON PATENT LAW
pedal around its pivot. When KSR upgraded its own mechanical ped-
als with modular electronic sensors attached in more or less the same
way, Teleflex sued for patent infringement. After reviewing the prior
art, the Court found that several existing patents made Teleflex’s ped-
al obvious. One patent (the Asano patent) disclosed a fixed-pivot pedal
similar to Teleflex’s pedal except for the presence of an electronic
sensor. Existing literature disclosed that any electronic sensor would
have to be mounted on a stationary portion of the pedal in order to
avoid chafing the wires connected to the sensor. According to the
Court, these two pieces of knowledge made it obvious that any elec-
tronic sensor would have to be implemented in the way used by Tele-
flex.
Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 353 (Fed.
Cir. 1997) [685]
Refences that teach away from the invention indicate that the inven-
tion is non-obvious. Gene Larew invented a fishing lure which was
made of plastisol (a plastic-like material) and which was impregnated
with salt to attract fish. Although the prior art established that fish
tended to like salty-tasting lures, there was no evidence that a lure like
Larew’s had ever been produced. To the contrary, the prior art warned
that mixing salt with plastisol could cause an explosion and that such
a combination, even if successful, would tend to degrade the smooth
texture of the lure and make it less attractive to fish. Existing meth-
ods of attracting fish included the use of perishable salty baits (such as
pork rinds) and the use of organic attractants (which were not salty).
After reviewing the prior art, the court found the district court to have
erred in concluding that Larew’s lure was obvious on the basis that the
separate components of the lure were known in the prior art. The
court found that obviousness exists only where it would been obvious
to combine those separate components “in light of all the relevant
factors” in the art at the time of invention.
The dissent disagreed, pointing to abundant evidence that salty lures
tended to attract fish. The dissent found the recognized danger of
adding salt to plastisol insufficient to defeat obviousness.
OddzOn Products, Inc. v. Just Toys, Inc., 12 F.3d 1396 (Fed. Cir.
1997) [745]
An invention may be obvious under § 103 if the inventor derived the
idea for the invention within the meaning of § 102(f). OddzOn held a
patent on a football modified with tail fins. Just Toys, which sold a
similar product, argued that OddzOn’s football was obvious because
OddzOn’s inventor had gotten the idea for the football from a confiden-
tial communication with another inventor. Reviewing the language of
§ 103(c)(1), the court found that Congress, in curtailing the applicabil-
ity of § 102 under limited circumstances, implicitly intended § 102 pri-
or art to establish obviousness in all other cases.
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)
[788, 845]
Claims are to be interpreted in the context of the specification. Phil-
lips held a patent on modular wall panels. The panels, which were
made of steel, could be welded together to form barriers that were res-
istant to physical damage and relatively soundproof. A key feature of
the panels was the presence of “baffles,” internal structures that could
deflect bullets and impede the flow of materials used to reinforce the
completed walls. The district court found the claim to be limited to the
32 CASE SUMMARIES ON PATENT LAW
Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir.
1998) (en banc) [839]
In accordance with its status as an issue of law, claim construction is
to be reviewed de novo on appeal. The court rejected the view that
claim construction was a “mongrel practice” which entailed some defer-
ence to the factual findings of the trial court. Dismissing this language
as a mere “prefatory comment,” the court held that appellate courts
had full discretion to review constructions of claims provided by lower
courts.
Concurrence remarked that “with respect to certain aspects of the task
[of claim construction], the distict court may be better situated than we
[appellate courts] are . . . .”
The dissent criticized previous cases for setting up a hair-splitting dis-
tinction between a trial judge’s “understanding” of disputed claims and
CASE SUMMARIES ON PATENT LAW 33
Indirect Infringement
Aro Manufacturing Co. v. Convertible Top Co., 377 U.S. 476
(1964) (Aro II) [909]
Contributory infringement exists where a party knowingly distributes
a product desigend to repair a patented invention. Aro manufactured
and sold fabric fabric tailored to replace the convertible tops of certain
Ford cars. The design of the Ford tops, however, infringed a patent
held by Convertible Top. Upon learning that Aro was manufacturing
such replacement tops, Convertible notified Aro that Ford had no li-
cense to use Convertible’s design. The Court found that any Aro tops
manufactured after the notification date gave rise to contributory in-
fringement.
Willful Infringement
Panduit Corp. v. Stahlin Brothers Fibre Works, Inc., 575 F.2d
1152 (6th Cir. 1978) [969]
The court found that a “reasonable royalty” awarded as compensation
for infringement must necessarily be higher than that attained in an
actual negotiation between the patentee and licensee. Panduit ob-
tained a patent on a covering duct into which wires could be snapped
easily. Stahlin began to manufacture a competing duct of similar
design. After years of litigation, Panduit obtained damages equal to a
royalty of 2.5% on Stahlin’s sales of the infringing duct. Finding the
award too low, the Sixth Circuit emphasized that any award of “reas-
onable royalties” must be sufficiently costly to the infringer to deter
that infringer from appropriating a patented invention and sorting out
the legal ramifications later. If damages were not high enough, said
the court, an infringer would actually profit from its infringement since
the worst result from litigation would be an order to pay the royalties
that would have resulted from ordinary negotiations. The result would
allow a substantial fraction of infringers to escape the payment of roy-
alties altogether.
CASE SUMMARIES ON PATENT LAW 37
Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995) (en
banc) [985]
In infringing a patent, the infringer may become liable for damages
arising from lost sales of products not covered by the patent. Rite-Hite
made two types of hooks designed to hold vehicles against loading
docks. The first type, the MDL-55, was covered by the infringed pat-
ent. The second type, the ADL-100, was not covered by the patent.
Kelley manufactured similar hooks, which infringed the MDL-55 pat-
ent but which also ate away Rite-Hite’s sales of the ADL-100 hook. In
upholding damages to compensate Rite-Hite for lost sales of the ADL-
100, the court applied a standard of proximate causation in determin-
ing which damages were appropriate. Because Rite-Hite had shown
that Kelley’s infringing product was the only substitute for the ADL-
100, one could reasonably conclude that Rite-Hite would have sold ad-
ditional ADL-100 hooks in the absence of Kelley’s infringement.
The dissent criticized the majority for taking an overly broad view of
the damages authorized by the patent statute.
Mentor Corp. v. Coloplast Inc., 998 F.2d 992 (Fed. Cir. 1993)
[1079]
A patentee may not seek to add new substantive claims to a reissue
patent. Mentor held a patent on a condom catheter. As originally is-
sued, the patent contained four claims directed to an adhesive that
could be transferred from the outer surface of the catheter to the inner
surface via rolling and unrolling of the sheath. In seeking the reissu-
ance of the patent, Mentor sought to add four additional claims that
did not address the adhesive. The court disallowed the reissue patent.
A reissue patent, said the court, cannot give the patentee the power to
prosecute the original patent de novo.
Seattle Box Co. v. Industrial Crating & Packing, Inc., 756 F.2d
1475 (Fed. Cir. 1985) [1086]
The Federal Circuit clarified the circumstances under which a reissue
patent may “recapture” an invention from the public domain. Seattle
Box originally obtained a patent on a packaging structure for oil pipes.
CASE SUMMARIES ON PATENT LAW 39
The relevant claims stated that the “spacer blocks” separating each
layer of pipes from the layer above were to be higher than the diameter
of the pipes. Industrial Crating and Packing designed around this lim-
itation by making its own spacer blocks 1/16 of an inch shorter than
the diameter of the pipes. Seattle Box subsequently obtained a reissue
patent, which altered the height requirement to state that the spacer
blocks need only be “substantially equal” in height to the diameter of
the pipes. Applying the doctrine of the personal intervening right, the
court allowed Industrial to continue producing the spacer blocks that
did not fall under Seattle Box’s original patent.
The dissent characterized Industrial’s activities as bad-faith infringe-
ment and concluded that Industrial should not be entitled to equitable
relief.
J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553 (Fed. Cir. 1984)
[1106]
[Inequitable conduct] can be established by any of four
tests: (1) objective “but for”; (2) subjective “but for”; (3)
“but it may have been”; and (4) PTO rule 1.56(a), i.e.,
whether there is a substantial likelihood that a reason-
able examiner would have considered the omitted refer-
ence or false information important in deciding whether
to allow the application to issue as a patent. The PTO
standard is the appropriate starting point . . . . “Inequit-
able conduct” also requires proof of a threshold intent. . . .
Once the thresholds of materiality and intent are estab-
lished, the court must balacne them and determine . . .
40 CASE SUMMARIES ON PATENT LAW
Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220 (Fed. Cir. 1988)
[1299]