Dennison

o
Panduit
o
Zurko
o When patents are appealed to the fed. Circuit, the review of the
PTOs factural determines for whether the Offices decision were
supported with substantial evidence
Merck
o
Burroughs
o Test for conception whether the inventor had an idea that was
definite and permanent enough that one skilled in the art could
understand the invention; proven with corroborating evidence
Eli Lilly
o If product of patent process undergoes material changes before
being imported, there is no liability
Ethicon
o Inventors do not need to contribute equally to invention to be
considered co-inventors; contribution to one claim is sufficient to
grant co-inventorship over entire patent; one co-inventor can
grant a license w/o consent of other inventors but cannot grant a
retroactive license
S-2 (1)
Waterman
Filmtec
S-w(2)
Nautilis
Philips
o Claim construction is a question of law
o wright
Wright
Abbot
o
S-2(3)
Limelight
Markman
o Claim interpretation is a question of law and is entirely up to the
court subject to de nove review
S-2(4)
Festo
o Narrowing claim may or may not get rid of DOE
 Equivalent may have been unforeseeable at time of
application
Rationale underlying the amendment may bear no more
than a tangential relation to the equivalent in question
Some other reason that patentee could not reasonable be
expected to have described the insubstantial substitute in
question.
Westinghouse
Aro II
o Convertible top
Repair versus Reconstruction: When sale is authorized,
buyer may repair but may not reconstruct
Reconstruction = dissembling and putting back
together (aka making the invention)
o Policy: not contemplated as possibility when
seller authorized first sale
o Where seller places condition on the sale (e.g.
re: repair), repair constitutes reconstruction
not allowed
Standard of Review Question of Law
Aro II (1964) sells component of convertible top
Direct infringement: Aros product does not contain
all elements of claim
Contributory infringement:
o Direct infringement of 3rd party: even if repair
(v. reconstruction), Ford not licensedcould
not give implied sublicense for repair
o Knowledge: knew combination included patented component
notice letter
Global-tech
Commil
Brown
o No infringement when made and sold in other countries
Microsoft
S-2 (6)
Incandescent Lamp
Janssen
Gentry
o Sofa case need to disclose where the control may be located
o Essential element needs to be sufficiently described
Ariad
Graham
 o Scope of content of prior art are to be determined, difference
btween prior art and the claims at issue are to be ascertained,
and the level of orginary skill in the art resolved, against this
obviousness would be determined, secondary considerations like
commercial success, long felt but unsolved needs, failure of
others.
S-2(7)
S-2(8)
S(2)-9
KSR
o 2007: KSR (pedals) TSM still good law, but NOT only
standard (may not be too rigidly applied)
o Today: post-KSR world Graham, KSR still good law (but some
pre-KSR decisions may be invalidated)
Graham Framework
Who Step
Decides?
Step 1: Determine scope and content of the relevant prior art (as
defined by 102 art that satisfies the geographic, temporal, and
identity of inventor requirements)
Jury
o Initial inquiry: What is in the prior art?
(Question of
Determine filing date, then figure out what prior art came
Fact)
before
Additional limitation (compared to 102)
o Relevant art must be from analogous art area
Jury (QoF) Step 2: Ascertain differences between prior art and claims at issue.
Step 3: Find the level of ordinary skill in the pertinent art.
o PHOSITA standard education/training/knowledge, types of
problems encountered in the art, prior art solutions, rapidity w/
Jury (QoF)
which innovations made, sophistication of technology,
educational level of active workers in the field
o PHOSITA also has ordinary creativity & common sense
Step 4: Determine the obviousness or nonobviousness of the subject
matter as a whole
o Apply various tests: TSM (only test pre-KSR), Predictability,
Obvious to try, Mere updating obvious
Judge
o Ask: Would PHOSITA, facing the wide range of needs created
(Question of
by developments in the field of endeavor, have seen a benefit
Law)
to upgrading/ modifying the primary reference w/ the
difference in order to achieve the invention?
o Determination must be made from POV at time of invention
o Prevents tendency to apply hindsight, which is 20/20
Jury (QoF) Step 5: Consider secondary indicia of nonobviousness (e.g.
commercial success of product on market, long-felt but unsolved
 needs in the industry, failure of othersinability of others to solve the
problem/find solution) (See below**
o Common law development Court uses this step to make sure
that their determination of Step 4 is correct
o Evaluation of failure of others bring in expert testimony

Kubin
Arkie
o Teach away
Hybritech
o Sometimes the court allows infringing product to stay on sale for
the public interest (preventing preliminary injunction)
Winslow
S2-(10)
Clay
o Same field of endeavor? If not, reasonably pertinent to the
particular problem with which the inventor is involved
Festo
S-2(11)
Vogel
Berg
Therasense
S-2(12)
Cuozzo
Quantum
Superior Fireplace
Mentor
Seattle Box