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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 it Thus, it is impossible for patent and ts protection to exist simultaneously PATENT LAW Patent Cause of Action Infringement even if inventor developed product/process independently Protectable matter Novel, useful, nonobvious inventions Duration Term of years; 20 yrs minus the amt of time the patent spent in app process Purpose

I.

BACKGROUND a. Introduction i. Grounded in property and K law ii. Requires the public disclosure of an invention with sufficient specificity to enable one of ordinary skill in the art to make it 1. Thus, it is impossible for patent and ts protection to exist simultaneously iii. Inventions occur in 2 ways 1. Flash of genius 2. Cumulative invention a. The problem is that 1 system is trying to accommodate both kinds of invention simultaneously iv. Factors to consider when trying to figure out whether patent is the right law when confronted with new fact pattern: 1. How important is patent protection to the industry (in some like pharmaceuticals, it is critical) 2. What other incentives exist 3. How much does research cost 4. Should we protect accidental inventions 5. How important is disclosure v. What does a patent look like? 1. Specification: a. Description of the technical problem faced by the inventor and how inventor solves the problem b. Drawings if necessary c. Claims in single sentence only b. Underlying Theory i. Inventions are public goods ii. Incentivizes investment in creating, developing, and marketing new products iii. Promotion of science and useful arts c. 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 year d. 5 Substantive Requirements for Patentability: i. The 5 requirements are: patentable subject matter, novelty, utility, nonobviousness, and enablement ii. Patentable subject matter iii. Novelty 1. Invention has not been preceded in identical form in the public prior art 2. Must be first to make the invention you are claiming iv. Utility 1. Minimal obstacle 2. Requires practical and operable 3. Can meet this even if invention works only in an experimental setting v. Non-obviousness 1. Non-triviality: Represents a nontrivial extension of what was known 2. This is the most important requirement 3. 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 a patent if it represents merely a trivial step forward in the art vi. Enablement 1. 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 Conferred i. 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 and substantive standards ii. Indirect rights 1. Invention may be a market itself (drug) 2. Patent may serve a barrier to entering the market 3. Licensing fees from others who make and sell products/processes falling within patent claims f. Vocabulary i. Invention = both invention and discovery (as used in Patent Act) ii. Claims = defined the boundaries of the property right that the patent confers; this is the precise legal definition of the invention 1. Define the patented invention iii. Comprising = 1. You will be infringing if you have all of my elements, even if you add some others iv. Consisting of = 1. You are infringing only if you have my elements and no others 2. Narrow, closed claim
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3. My invention are these elements g. Filing causes of action i. If patent refused: board of patent and appeals circuit SC ii. If claim for patent infringement: district ct circuit SC II. #1 PATENTABLE SUBJECT MATTER a. What types of inventions will be considered for patent protection b. 35 USC 101: Whoever invents or discovers any new and useful i. Process ii. Machine iii. Manufacture iv. Composition of matter OR v. Any new and useful improvement thereof c. First distinguish, is it a process of product claim i. Note that the categories are not mutually exclusive, can be both d. Invents or discovers makes it clear you can receive protection for discovering and not only creating something new and useful e. Whats not patentable? i. Laws of nature (DNA sequences, gravity, theory of relativity) ii. Physical phenomena iii. Things found in nature Funk iv. Abstract ideas v. *What IS patentable is application of these things e.g. gravity to solve problems f. A process is patentable i. 35 USC 100(b) 1. RULE: Means process, art, or method, and includes a new use of a known process, machine, manufacture, or composition of matter, or material ii. Examples (from ee) 1. Method for making something 2. Method for using something 3. 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 (humanmade) genetically engineered bacterium capable of breaking down multiple components of crude oil 2. Issue: Whether a live, human-made micro-organism is patentable subject matter a. Specifically, whether applicants micro-organism constitutes a manufacture or composition of matter within the meaning of 101

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3. HELD: Yes. The process for making the microorganism: A genetically altered micro-organism, as well as the organism itself, is eligible for patent protection a. Applicant invented new bacterium with markedly diff characteristics from any found in nature and one having potential for sig utility (oil spills) i. This organism is not naturally occurring b. Process for making the microorganism (adding genetic material to naturally occurring bacterium) eligible for patent as is the microorganism itself i. Ct refuses to read an exception for living things into the Patent Act, this is for Congress to amend 4. RULE: a composition of matter includes all compositions of two or more substances andall composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders, or solids. 5. RULE: a manufacture = the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by handlabor or by machines. a. Laws of nature, physical phenomena, abstract ideas are not patentable 6. 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 suprarenal glands 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 nature 4. HELD: purified adrenaline extracted from animal tissue qualifies as a new product a. Even if adrenaline occurs in nature, the purified form for every practical purpose is a new thing commercially and therapeutically b. Key was the extracted products commercial and therapeutic value 5. BL TEST: Was invention required to isolate the natural substance into a purified form a. This is really a novelty question b. 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 benefits 7. 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 therapeutically iii. 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 product 2. HELD: the combo of nonmutually inhibiting strains of bacteria was not patentable a. Bc the combo occurred in nature, the applicant was simply claiming a newly discovered natural principle 3. Patents cannot issue for phenomena of nature 4. 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 men iv. Patenting of living things: 1. Generally no objection to patent claims covering a process 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 for patent protection under Chakrabarty 4. Patenting human DNA sequences are considered valid bc they typically claim isolated and purified gene sequences Parke-Davis a. Substances occurring in nature like genes, chemicals etc may be patentable subject matter if they are purified or isolated b. 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 other criteria for patentability i. A patent on a gene covers the isolated and purified gene but does not cover the gene as it occurs in nature h. Abstract ideas are not patentable Chakrabarty i. How to tell if an idea is abstract 1. Prof doesnt know ii. Examples: business methods, software iii. Point of novelty analysis i. 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 a commodity provider at a fixed price (prof says incredibly broad, not new) a. Concerns method claims, specifically business methods for hedging risk in commodities market b. No machine involved and no transformation of subject matter 2. Issue: whether applicants invention as claimed meets 101 requirements as a new and useful process a. Whether applicants are seeking to claim a fundamental principle (such as an abstract idea) or a mental process AND what test or set of criteria governs the determination as to whether a claim to a process is patentable under 101 3. Held: applicants claim is rejected bc it is unpatentable subject matter as an abstract idea 4. Rejected machine or transformation test as sole test for whether subject matter is patentable a. This test is a useful tool for determining whether some claims are processes under 101 b. TEST: A claimed process is surely patent-eligible under 101 if: i. It is tied to a particular machine or apparatus OR ii. It transforms a particular article into a different state or thing 5. Business method patents are not per se unavailable 6. Take: Process has a broad definition III. #3 UTILITY a. Patent Act protects all inventions that are novel, useful, and nonobvious b. Utility must be: (PTO Guidelines) i. Specific ii. Credible AND iii. Substantial c. Must show 3 kinds of utility: i. Practical ii. 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 Whip 2. The benefit must be functional in nature, aesthetics do not provide utility ii. Invention must be operable / capable of carrying out its described function 1. 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 something does 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 suit i. 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 case ii. Facts: applicants claim was a process to produce a chemical compound (steroid). Similar steroids had tumor-inhibiting effects in mice and applicant 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 yet iv. Issue: is a chemical process useful within the meaning of 101 either (1) bc it works i.e. produces the intended product or (2) bc the compound yielded 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 independent ascertained 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 refined and 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 use 3. RULE: if you have a process that produces a useless product, the process is also deemed useless bc of policy reasons a. Why? Concern for windfall giving inventor rights to all possible uses just bc they discovered one of them 4. TEST: Specific and substantial utility must be shown a. Object of scientific research exclusion: an invention that is only useful to study itself lacks 101 utiltiy b. A process that merely produces an intended product is not useful unless the product is useful c. Need particular, practical purpose i. Real world utility is required which 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 upon only 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 benefits a. 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 utility either bc it produced a product without utility c. Utility hurdles: i. Credible utility: whether person of skill in the art would accept that the invention is currently available for its purported use ii. Whether its illogical, not factually supported iii. Specific and substantial utility 1. Must show a particular practical purpose 2. Substantial = real world use 3. Not trivial use d. Dont get carried away by this case, a lot of arguably frivolous 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 expressed sequence 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 intermediates a. They are objects of use-testing objects upon which scientific research could be performed with no assurance that anything useful will be discovered in the end 2. The claimed ESTs have not been researched and understood to the point of providing an immediate, well-defined, real world benefit 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 acid i. Excludes gene probes, other basic research tools unless the inventor identifies particular gene/chromosome targets ii. Idea: if you dont know what the gene does, underlying purpose in finding it is not considered useful b. Substantial = real world use i. A general process that doesnt get you anywhere isnt patentable c. 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 claiming novelty 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 be wholly devoid of moral utility aka completely frivolous ii. 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 statutory requirement of utility 1. There is both practical and operable utility a. Operable: it works, it pour juice b. Practical: it keeps things clean, keeps people safe c. Moral: OK to be a little bit deceptive 2. In each case (e.g. cubic zirconium, imitation leather) the invention of the product or process that makes such imitation possible has utility within the meaning of the patent statute 3. The fact that one product can be altered to make it look like another is in itself a specific benefit sufficient to satisfy the requirement of utility 4. Here, the dispenser meets the statutory requirement of utility by embodying the features of a post-mix dispenser while imitating the visual appearance of a pre-mix dispenser a. The fact that customers may believe they are receiving fluid directly from the display tank does not deprive the invention of utility b. 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 frivolous b. Perhaps easiest of all utility requirements to meet i. PROBLEM 3-5 i. 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 for new 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 not meet the utility requirement 2. The way something looks generally does not count as utility unless theres some useful aspect/public benefit (aesthetics) 3. The utility MUST be related to the novelty must be tied to differences from the prior art

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4. If actual jeans dont wear differently, not made of material that provides a new benefit, no real benefit over jeans from before outside of aesthetics 5. Value bc it DOES something jeans must DO something new IV. ENABLEMENT / DESCRIPTION / DISCLOSURE a. 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 any person 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 the best mode contemplated by the inventor of carrying out his invention. i. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention

b. Description (e.g. chef thinks of a new cake): i. (1) Written Description 1. Type of cake ii. (2) Enablement 1. Recipe/ingredients iii. (3) Best mode (best way to achieve the invention) (*we did not read this material) 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 avoid competitors inventing around their invention 1. You must disclose enough to justify the vast rights you get from a patent 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 of communicating at a distance e. Disclosure Doctrines: Enablement and Written Description i. (1) Written Description: 1. 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 any person skilled in the art to which it pertainsto make and use the same, and shall set forth the best mode [for] carrying out [the] invention 2. Written description shows the inventor was in possession of the invention as later claimed; it describes exactly what it is and does not claim more a. Courts compare the original disclosure w the final claims of an 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 invention b. The doctrine is a way to prevent applicants from claiming subject matter they werent away of 3. It is possible to enable but not possess (fail the written description requirement) a. The enablement standard allows person skilled in the art to bridge 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 with built in recliners on the same section separated by a console 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 down onto 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 broader than the supporting disclosure 1. Here, the limited disclosure does not support claims to sofas where to location of the controls are elsewhere besides the console. 2. Locating the controls anywhere but on the console is outside the scope of the invention bc one skilled in the art would clearly understand that it was not only important but essential to the invention, for the controls to be on the console (bc of how it was described) 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 claims c. Serves the disclosure purpose of patent law

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3.

4.

5.

6.

i. What is disclosed must correlate with the scope of the claim; disclosure of a single working example is unlikely to be able to support a broad claim ii. E.g. you cant claim every possible analog of a gene containing 4000 nucleotides with a disclosure of only how to make EPO protein and a very few analogues Definition: enablement defines the scope of what the applicant can claim; it must enable the ENTIRE breadth of the claim, not just some of it TEST: whether a person of ordinary skill in the art would be required to engage in undue experimentation in order to make and use the invention In re Wands a. Who must be enabled / who is the specification addressed to? A person skilled in the art must comprehend it b. That experimentation is required to get there does NOT mean that it is undue experimentation c. Factors as to whether a disclosure would require undue experimentation and thus deficient enablement In re Forman: i. Quantity of experimentation necessary ii. Amount of direction/guidance presented iii. Presence or absence of working examples iv. Nature of the invention v. State of prior art at time of filing 1. What do we know about the technology vi. Relative skill of those in the art vii. Predictability of the art viii. Breadth of claims 1. Reasonable correlation w the predictability/unpredictability of the art The quid pro quo for a patent grant is contribution to human knowledge; the inventor must inform the public what he subjectively believes is the best way to practice the invention a. Injects info into public domain that can be used after the expiration of the patent b. Injects info that can be used to invent around the patent to inspire 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 to get a patent that is already taken) 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 illumination b. Held: patent is invalid. i. Claim not defective simply bc it monopolizes all uses of the materials, it is invalid bc not all fibrous/textile materials are suitable for the claimed purpose c. The point of the enablement requirement is to: i. Apprise the public of what the patentee claims as his own ii. The courts of what they are called upon to construe and iii. Competing manufacturers and dealers of exactly what they are bound to avoid d. Undue Experimentation RULE: A patent is invalid if the description is so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device. (the inventor is not entitled to a patent) i. If no one could use the invention without first ascertaining, by experiment, the exact proportion of the different ingredients required to produce the result intended to be obtained no patent ii. The only thing that matters is the correlation between what is being claimed and how it is described in the patent 1. Inquiry = would it take too much experimentation from whats disclosed in the patent to get to anything that might work iii. If youre making a claim this broad, it must be operable; 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 requirement V. #2 NOVELTY STATUTORY BARS #4 NONOBVIOUSNESS a. To be eligible for a patent and to escape a defense of invalidity, claim must meet requirements of novelty, statutory bars, and nonobviousness b. Only truly new inventions deserve patents c. Novelty i. 35 USC 102: Conditions for Patentability 1. A person shall be entitled to a patent unless: a. [Novelty] the invention was known or used by others in this country, or patented or described in a printed publication
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ii.

iii.

iv.

v.

in this or a foreign country, before the invention thereof by the applicant for patent Novelty = new compared to prior art 1. Relevant date: Novelty is assessed on the date of invention 2. To be new (and thus patentable), it means that on the date of the invention, the invention had not been published or publicly used or invented by someone else a. An invention must somehow be different from all published articles, known techniques, and marketed products b. A sales brochure = a printed publication even if it wasnt actually for sale until after patent issued Anticipation = non-novel 1. If an invention is anticipated the patent claim is invalid 2. 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 elements must be present in a single reference i. How is this ascertained? Claim construction b. Prior art need not be in same field when evaluating whether the invention is novel 3. This is the same as saying the claim lacks novelty a. Note that obviousness is only relevant id the prior art reference does NOT anticipate 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 known iii. 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 2 newness requirements the invention is not considered new if it fails these requirements 1. Anticipation: the invention must not have already been known to the public via use or publication on the date of invention a. To anticipate a patent app under 102, a single prior art reference must disclose every element of what the patentee claims as his invention i. If a prior art reference doesnt disclose all the parts of an invention, it does not anticipate the application b. A nonpublic use would not affect the inventions novelty

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c. For anticipation, every element of the claim must be found in a single prior art reference i. E.g. A claim to A B and C is not anticipated by a reference that comprises only elements A and B 2. Priority: the invention must not have been invented by someone else vi. Rosaire v. National Lead Co. (5th Cir 1955) 1. Facts: pl had 2 patents on methods of prospecting oil. Pl is suing def for infringement and def is alleging the patents are invalid bc the 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 public the benefit of the experimental work. a. Pl essentially argues no prior art bc it was a mere abandoned experiment b. Pl argument was that the process claimed in his patent was not used by others prior to the date of invention bc it was only used as a trial and not carried forward 2. Relevant statutory language: an invention is not patentable if it was known or used by others in this country before the patentees invention; pl admits the corp used the method of prospecting oil before he patented it 3. Issue: was Teplitzs first in time use of the oil extraction method an unsuccessful experiment or a successful trial of the method in question 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 the public and without any instructions of secrecy to the employees performing the work 5. RULE: if the invention is known or previously used before the holder obtains a patent, the invention is not patentable a. A single use, unaccompanied by an obligation of secrecy, is a public use 6. RULE: public use does not require an affirmative act to bring the work to the attention of the public at large 7. Lack of publication does not deprive alleged infringer of prior use defense: just bc the first user did not publish that doesnt mean the alleged 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 disclosure to be public
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d. Statutory Bars i. 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 year prior 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 seeking patent protection 1. Relevant date: date patent app filed a. Must file no less than one year after inventor or someone else publishes, publicly uses or sells the invention b. Once the invention becomes public knowledge, the inventor has 1 year to file the patent app i. Triggering conditions for necessity to file or risk being denied patent = publication, public use (by inventor or others) 2. An inventors own actions (e.g. publishing an article or selling the invention) can create a statutory bar 3. Policy: encourage inventors to file apps early a. Contributing info to public and b. 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 use iv. If the reference was published more than a year before filing of patent application it is a statutory bar 1. 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 public a. 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 accessibility b. Dissemination and public accessibility are key to the legal determination whether a prior art reference was published i. Printing = proxy for publication ii. Indexing = proxy for dissemination c. Examples: i. Temporary display of scientific research info at conference is publication ii. 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 mailed 3. Printed publication relevant factors In re Klopfenstein a. Length of time display exhibited b. Expertise of target audience c. Existence (or lack thereof) of reasonable expectations that the material displayed would not be copied d. Simplicity or ease with which the material displayed could have 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 printed publication ii. A presentation that includes a transient display of slides is likewise not necessarily a printed publication 4. In re Hall (Fed Cir 1986) a. Facts: pl patent was rejected based on the prior printed publication bar. The reference is a doctrinal thesis available in 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 a printed 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 printed publication bar under 35 USC 102 ii. Required for prima facie case for unpatentabiltiy: 1. Must show that prior to the critical date (if 102(b) date of filing) the reference was sufficiently accessible, at least to the public interested in the art, so that such a one by examining the reference could make the claimed invention without further research or experimentation iii. 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 university library 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 date for 102(b)) iii. Critical was that it was catalogued by SUBJECT, if it was catalogued by author this would not be considered a publication v. If the invention was in public use, this is a statutory bar to patentability 1. Egbert v. Lippmann (SC 1881) a. Facts: pl invented an improvement in corset-springs and didnt apply for a patent for nearly 11 yrs only after everyone in the industry was using it. b. Issue: whether inventor making corset steels for personal friends 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 his invention to be used by a single user for several years and such use amounts to a public use i. RULE: Whether the use of an invention is public 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 [that person], without limitation or restriction, or injunction of secrecy, and it is so used, such use is public, even though the use and knowledge of the use may be confined to one person 1. # of people using does not so much matter in public use assessment, use by greater number may strengthen proof of public use, but one well-defined case of such use is sufficient for public use 2. The use need not be visible to amount to public use, bc some inventions by their very character 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 which his invention forms a part, and allows it to be used without restriction of any kind, the use is a public one. 1. Here, use was not for experimentation purposes d. Factors weighing for finding of public use: i. Invention presented to friend for use ii. Inventor imposed no obligation of secrecy nor any condition or restriction whatsoever
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iii. Invention was not presented for purpose of experiment nor to test its quality iv. Invention was complete when it was presented to friend 1. No evidence it changed or improved afterwards v. 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 the benefit of essentially 31 yrs (if patent protection granted) when people have already started using it i. Allowing this patent would prolong a monopoly f. Take: i. Even private use that cannot be seen or observed may be considered public for purposes of the statutory bar if such use is permitted without any restriction or obligation of secrecy ii. Ct is not going to get into the business of deciding how many people = use by public, 1 is enough 1. Compare w/ Rosaire, which also allowed a single use to constitute a public use provided there is no obligation of secrecy iii. 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 in secret or only once 2. If person interest or enjoyment generally not considered public use vi. If the invention was on sale, it is a statutory bar 1. 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 cant get a patent, your remedy is misappropriation of a trade secret 3. Pfaff v. Wells Elec., Inc. (SC 1998) note a. The on sale bar applies when 2 conditions are met before the critical date: i. The product is subject of a commercial offer for sale AND ii. The invention must be ready for patenting 1. Invention was actually practiced OR 2. Inventor had prepared drawings or other descriptions sufficiently specific to enable a person skilled in the art to practice the invention

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e. Nonobviousness i. 35 USC 103(a) 1. A patent may not be obtainedif the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time of the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be 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 a patent if: a. The invention would be obvious to someone in the field in light of all materials published/in use i. Invention must be something more than a slight improvement in the prior art ii. Whether an invention is nonobvious will depend on how it is claimed 3. TEST: Would a person skilled in the art, faced with the same problem, and with no knowledge of the patent, select the patented elements to combine 4. Pl claim: patent is invalid as obvious 5. Policy: weeds out trivial inventions a. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and 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/cumulative invention: do not want to lock out other inventors from this obvious improvement just bc one person happened to do it first c. 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 all the elements a. Inquiry concerns how to fill the gaps i. Answer is the Graham test iii. Analysis: 1. First, you do the 3 steps of Graham a. Determine: scope of prior art, difference btw that art and the 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 with the same problem, and with no knowledge of the patent, select the patented elements to combine b. Another is to look at whether it was obvious to try every combination 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 is obvious 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 the invention judged in reference to someone with ordinary skill in the art a. Consider problem facing inventor and whether the prior art is related b. (2) Ascertain the differences between the prior art and the claims at issue i. Must consider the subject matter sought to be patented as a whole ii. Must be differences or else it is not novel, let alone nonobvious iii. 2 types of differences: 1. Invention contains elements appearing no where in prior art a. Inquiry is whether adding the missing element would be obvious to person w skill in art 2. Claimed inventions elements all exist in prior art but do not appear in single reference a. Inquiry is whether someone w skill would think to combine them in that way c. (3) Find the level of ordinary skill in the pertinent art i. Can get patent for invention that would be obvious to someone w ordinary skill in the art 1. Person of ordinary skill presumed to know all the art ii. Factors that may be considered: 1. Type of problems encountered in the art 2. Prior art solutions to those problems 3. Rapidity with which innovations are made 4. Sophistication of the technology
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5. Educational level of active workers in the field a. BUT extraordinary knowledge: a person of ordinary sill is presumed to know all relevant prior art iii. It is possible for the invention to be obvious to the actual 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 the subject matter in light of differences between prior art i. Use KSR: flexible approach to nonobviousness to figure this out e. (5) Also secondary considerations are used to determine whether obvious or not: i. Commercial success 1. If wildly successful commercially, weighs against obviousness finding ii. Long-felt but unsolved needs 1. If there has been a lingering problem with no address, indicates solution not obvious iii. Failed efforts of others 1. Doubt as to obviousness if many people tried and failed bc means solution wasnt obvious iv. Copying or licensing by others v. Praise for the invention vi. Disbelief of experts (i.e. a bunch of people say it cannot be done and then you do it) 1. If experts dont see a solution its likely that its not obvious vii. *These are used by ct to decide whether gap btw invention and prior art has been bridged 2. TEST: obviousness is whether the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art a. First, technical issues compared BUT b. Strong showing of secondary considerations may weigh against finding that invention was obvious i. Secondary considerations must be related to the technical merits of the invention 1. E.g. a new sports drink might sell well bc a great athlete endorses not bc its composition 2. If a seller introduces a new pen, might sell well bc of sellers

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3. Facts: there is a conflict over the validity of a single patent for a John Deere shank plow; the invention involves a device designed to 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 nonobvious nature of the subject matter sought to be patented by reference to person having ordinary sill in art b. Test applied i. (1) Scope of prior art: 1. Identical but shank above plate ii. (2) Diff btw prior art and claims at issue 1. Shank below plate iii. (3) Level of ordinary skill in pertinent art 1. Person of ordinary skill knows all of the art v. Combining References 1. 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 entire invention to bar a patent a. 103 asks whether a researcher who is aware of all the prior art would think to create the claimed invention. In deciding the question of obviousness, it is sometimes permissible 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 pedals position can be transmitted to a compute that controls the throttle in the vehicles engine b. Defense: def KSR asserts one of the claims is invalid bc its subject matter was obvious c. Issue: Whether a patent claiming the combination of elements of prior art is obvious d. Held: invention was obvious bc there existed a marketplace that created a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for achieving this advance i. Essential holding: flexible, functional, expansive approach to nonobviousness 1. Figure out whether the combination would be obvious to a person w skill in the art (not
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e.

f.

g.

h.

the individual patentee), consider broader context 2. 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 work 3. (aside: useful analogy is a puzzle, the fewer the pieces, the more obvious it will be to try each piece to see if it fits) 4. Applied Graham test RULE: if a person of ordinary skill can implement a predictable 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 person w ordinary kill in art 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. 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 optionsif this 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 of solutions but we dont know which one will work ii. Here, there existed marketplace that created a strong incentive to convert mechanical pedal to electronic pedals and prior art taught many methods for doing this (what happened here) An invention is obvious if all the elements of the invention and a reason to combine them are known. It may also be obvious if the innovation was likely to occur in the ordinary course of events, given market demand etc. ee

f. ANALYSIS: i. What is claimed ii. Is it novel 1. Does the product/process appear in prior art iii. Does it escape the statutory bars? 1. Is there a sufficiently similar device or process published, known to 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 so easier for subsequent inventor to design around the patent vii. More broad = more rights but more likely to be struck down VI. CLAIM CONSTRUCTION a. 112: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards 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 claim 1. To figure out if you practice, must figure out what the claim means a. Phillips claim construction c. Format: (via ee) i. Preamble: identifies invention, is it a product or process ii. Transition phrase: sets stage for body of claim 1. Comprising of greater rights 2. Consisting of more narrow a. A device w elements A B C could infringe a claim reading comprising A and B but not a claim reading consisting of A and B iii. Body: lists the elements or limitations of the claim 1. 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 patent b. Has the patent been infringed i. Tension btw getting a valid patent and getting a valuable patent: the more narrow the claim, more likely the patent will issue and be valid but the less rights holder will have d. Claim Construction i. This is critical for validity and comparison of claimed invention and accused device 1. Used to: determine infringement; determine whether prior art anticipated 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 is to the public iii. Claims define a patent owners property right 1. 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 finding infringement 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 by comparing their product or processes against the claims iv. Concerns: 1. Validity of the patent claims a. Patentees not only want to have their patents upheld over the prior art, but they also want those patents to be interpreted broadly, to cover a wide range of potential infringements v. Standards for construing claims; source of construction 1. Intrinsic evidence: a. Specification: what did the inventor describe initially b. Embodiments: what did the inventor actually build c. Other claims d. Prosecution history e. Cited prior art f. Foreign/related patents g. Preamble 2. Extrinsic evidence a. Expert testimony b. Dictionaries/treatises c. 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 for constructionand further means disposed inside the shell for 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 using baffles diagonally, def was using baffles at a right angle. b. Issue: the extent to which the ct should resort to and rely on a patents specification in seeking to ascertain the proper scope of its claims c. Held: For pl, baffles does not only mean diagonally. The specification must be referenced to the greatest extent possible 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 intrinsic and extrinsic sources (intrinsic more valuable) i. Here, ct resolves the term baffles by its use in another claim
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ii. iii.

iv.

v.

1. An independent claim should be given broader scope than a dependent claim to avoid rendering the dependent claim redundant RULE: The specification is the primary basis for construing the claims RULE: Extrinsic sources may NOT be used to contradict a claim meaning that is unambiguous in light of the intrinsic evidence Why? 1. Intrinsic evidence generally takes precedence bc overreliance on extrinsic evidence poses the risk that it will be used to change the meaning of the claims 2. Claims should be understood in light of specification and prosecution history 3. Other claims may be useful where terms are used consistently 4. Dictionaries provide an array of meanings, too open ended and prone to manipulation a. Extrinsic evidence can be considered within the context of intrinsic evidence b. Generally such evidence is less reliable bc not created in light of or at the time of the patent 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 why do we even both having 2 2. Claim differentiation: 2 claims read differently must mean different things

d. Take: i. Do not divorce language from spec ii. Seems to assume the goal of patent claim interpretation is to obtain the most accurate interpretation possible, taking into acct the inventors contribution and the intended audience for the patent, those in the same art or field vi. Analysis re how to construe a claim: WHERE to look 1. Claims define the invention to which the patentee is entitled the right to exclude a. 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 / not anticipated by prior art 2. Words of a claim are generally given their ordinary and customary meaning 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 meaning that 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 available to those w skill in the art i. Words of claims themselves 1. 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 by implication ii. Remainder of specification 1. Drawings iii. Prosecution history 1. Provides evidence of how the PTO and inventor understood the patent if there were any exchanges btw them regarding its meaning 2. If an applicant disclaims certain subject matter during the prosecution process, cannot argue the claims in the issued patent covered those things iv. Extrinsic evidence considered secondarily (less valuable) 4. Cts can protect against broad claims by interpreting the claims to cover 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 the claim construction process 2. If claims ambiguous, construe to preserve validity 3. Claim differentiation a. We dont interpret 2 claims to be identical so a narrower claim suggests other claims are broader 4. Claims are construed from the person having ordinary skill in the arts point of view as of the patents filing date 5. Evidence outside of the claims can be used ONLY to understand and interpret NOT to vary or limit the terms of the claim 6. If terms are specifically defined in the spec, ct cannot use a dictionary to define 7. If 2 alternative meanings equally likely, choose the narrower one

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VII.

INFRINGEMENT a. 271: Infringement of Patent i. Whoever without authority makes, uses, offers to sell, or sells any patented invention, 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 an infringer 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 MUST be infringing directly*** b. On exam NEVER jump into this without examining initial infringement first c. Can enforce patents against: i. Those who steal the invention ii. People who have never seen the patent iii. People who reverse engineer iv. 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 the patent 2. This includes equivalents ii. (2) Test for literal infringement 1. Often controlled by the claim interpretation iii. (3) Test for infringement under the doctrine of equivalents iv. (4) Test for secondary liability/indirect infringement e. Remedies: i. If patentee prevails: damages or an injunction f. Defenses to accusation of infringement i. 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 claim iii. 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 means a. Phillips claim construction
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ii. Does NOT require copying iii. 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 or harm the patent holder v. It is only infringement to make, use sell, etc. a product or process that falls within the claims vi. The disclosure requirements raise the possibility that another can design around the patent vii. Infringement is not limited to the utility disclosed in the patent 1. If you patent a chemical thats useful for cleaning it can still be infringed if someone uses the chemical as claimed to do something else like make computer chips h. Literal Infringement i. 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 infringement suit is resolved by comparing the claims of the patent to the accused product 1. Build a claim chart to compare patented invention w accused device iii. RULE: to be found literally infringing a patent under 271, the accused 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 meaning b. (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 infringement a. 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 on wording of the patentees claim a. If open claim (indicated by the term comprising adding elements does not help the infringer b. If the patentee uses the term consisting of adding elements makes the accused product non-infringing 3. If an accused device has all the elements of a patent claim, it will generally be found to infringe a. In most cases it doesnt matter if def added an element or several

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b. But the outcome is case by case based on the precise claim language and nature/significance of added element c. Implications: patentees who have a valid patent on a fundamental technology can assert their patent against anyone who uses that technology even if def have improve it or put it to different use v. The broader the claim is, the more rights the holder has against infringers vi. Larami v. Amron (1993) 1. Facts: Pl manufactured toy water guns and held 4 different patents for 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 substantial equivalence of all elements in the other patents. 2. Issue: Whether the absence of even one element of a patents claim in the allegedly infringing device mean there can be no finding of literal infringement 3. Held: Yes; no infringement as a matter of law a. Therein means in NOT on and in bc on is such a big improvement, not within the scope of what was invented b. Test: est infringement requires the interpretation of the elements or limitations of the claim and comparison of the accused product w those elements c. Patent infringement can be est in 2 ways: i. Literal infringement ii. Infringement under the doctrine of equivalents d. RULE: Every element of a claim is essential and material to the claim, so to show infringement, patentee MUST show the presence of every element or its substantial equivalent in the accused device i. If even one element of a patents claim is missing from the accused product, there can be no infringement as a matter of law e. Here, claim 1 requires that the toy gun have an elongated housing having a chamber therein for liquid i. The accused device plainly has no chamber for liquid contained within the housing of the water fun 1. Thus, bc the absence of even one element of a patents claim from the accused product means there can be no finding of literal infringement, the accused device does not infringe pl claim 4. Take: a. The importance of claim construction this case came down to the meaning of therein

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b. All elements RULE: If an identical patent lacks one element, that is enough to disqualify it as literally infringing i. Infringement under the doctrine of equivalents i. Comes in when the accused device does not have all the elements, but is equivalent to the elements ii. DOE = allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes 1. 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 comprised unforeseen 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 patent but also from copyists who make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, 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 function in substantially the same way to obtain the same result 3. Considerations: a. Purpose for which an ingredient is used in a patent b. Qualities it has when combined w other ingredients c. Function which it is intended to perform 4. The function way result test is the test that should be cited a. 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 equivalent i. Policy: protects holder against efforts of copyists to evade liability for infringement by making only insubstantial changes to a patented invention ii. Even an independently developed device can infringe iii. Nor is the doctrine limited to applications that were 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 the claim must have its literal/equivalent counterpart (ee) 2. Def is infringing if patent owner proves accused product/process has every element/limitation or its substantial equivalent a. Pl must show presence of every element or its substantial equivalent in the accused device b. To be a substantial equivalent the element substituted in the accused device for the element set forth in the claim must not be such as would substantially change the way in which the function of the claimed invention is performed i. Equivalence is measured at the time of infringement not the time of invention 1. So it depends what the infringing activity is, if its making using or selling, it is when the allegedly infringing device is made, used, or sold 2. And can apply to later developed technology 3. All Elements RULE: Element by element comparison is necessary bc each element in patent claim is deemed material to defining 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 contain elements identical or equivalent to each claimed element of the patented invention i. If element of accused device viewed as dramatic improvement over pl design, will likely not be held to be the substantial equivalent 4. Re prosecution history estoppel: if you amend a claim you cannot claim an equivalent a. Rebuttable presumption that claim amendments made during prosecution were made to escape prior art i. This makes sense because you likely amended/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 back broaden scope 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 the claim 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 you amended 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 is so similar that it infringes under DOE 3. Prosecution history estoppel a. What is it: limits the reach of doctrine of equivalents; limits pl patentees ability to prove infringement utilizing DOE 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 to secure the patent and the amendment narrows the patents scope i. Anytime a narrowing amendment is made to satisfy any requirement of the patent act ii. When an applicant narrows claim (either by narrowing existing claims or adding a claim limitation) by amendment during the prosecution process in order to satisfy one of the requirements of patentability 1. E.g. am to avoid prior art, eliminate obviousness, not supported by written description etc. c. Result: when this occurs, patentee is estopped from using DOE to broaden scope of issued patent to include the claim that was narrowed/eliminated earlier i. Pl may not regain through litigation when he relinquished during prosecution of the app ii. Where original app once embraced the purported equivalent but the patentee narrowed his claims to obtain 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 to capture the essence of innovation but prior application describing the precise element at issue undercuts that premise iii. 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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claims, this bars him from later arguing that the subject matter covered by the original, broader claim was nothing more than an equivalent (bc obviously it wasnt if it had to be eliminated for a patent to issue) d. Can be rebutted: if device/process not reasonably foreseeable i. Standard for rebutting: Pl must show the alleged equivalent was NOT reasonably foreseeable by person skilled in the art at the time of the amendment 1. At time of am one skilled in the art could not reas be expected to have drafted a claim that would have literally encompassed the alleged equivalent ii. Engineered Products another way to rebut: argue the elements of the prior art you amended to avoid are DIFFERENT than the elements of the prior art that are not allegedly infringing 1. Example: inventor invents a blue light bulb and claims a light bulb. PTO says you cant patent that bc the prior art shows a red fluorescent light. You say OK then I claim a BLUE light bulb. Now someone comes out w a red fluorescent light. No equivalents you waived red w your amendment. Someone else comes out w a blue fluorescent light. Engineered says you can argue that the fluorescent light is equivalent to the light bulb bc your am had to do w color, not the form e. Result: patentee barred from seeking DOE protection for any matter it should have known it was giving up by amending its claims. But if PHOSITA could not have foreseen the limiting effect of the amendment, DOE remains available f. Scenarios where absolute bar inappropriate = i. Unforeseeable equivalents such as after arising technology 4. Take: Law as it stands: a. RULE: literal infringement i. Exception: infringement under doctrine of equivalents 1. Exception: Prosecution history estoppel a. Exception: equivalent NOT reasonably foreseeable by person
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having ordinary skill in the art at time of amendment b. 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 patent 5. Take: Festo standard, principal scenarios a. Presumption applies: i. Intentional narrowing of claim to avoid prior art ii. Unexplained amendment b. Presumption rebutted: i. After arising technology the entire way you do things changes ii. Incidental amendment (typos, grammar, doesnt really change the meaning)
Non-Literal Infringement the 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

VIII.

INDIRECT INFRINGEMENT a. You cannot get here before examining ACTUAL infringement b. 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 the making, use, or sale of less than the entire patented device 1. Provide a material part of the invention w knowledge that use of it will do whatever it is thats infringing 2. Must know about the patent 3. 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 selling but that nevertheless amounts to an attempt to appropriate the value of an invention 1. aids and abets infringement 2. It is actively assisting someone else, providing instructions etc.

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a. Requires knowledge of patent and knowledge of infringement iii. Classic example of both is the sale of device components or replacement parts for a patented device c. Contributory infringement and inducement evolved to address infringing activity that somehow lacked the element of a direct making, using, or selling of the patented invention d. RULE: to infringe a method, you MUST carry out the steps, writing does not count 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 a surgeon 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 aiding and abetting anothers direct infringement? iii. RULE: A person induces infringement under 271(b) by actively and knowingly aiding and abetting anothers direct infringement iv. Held: for def; a reas jury could find there are substantial noninfringing uses for def product 1. Issue on remand: whether device has no use except through practice of the patented method

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