Table of Contents

I. Introduction to the Patent System..............................................................11

Overview and History of the Patent System - class one: 8/24....................................11

Sources of Patent Law: Text........................................................................................................ 11
Sources of Patent Law: Institutions............................................................................................. 12
Patent trolls................................................................................................................................ 12
The Patent Document and the Process of Obtaining Patent Rights- class two: 8/26....12
U.S. Patent and Trademark Office and Patent Prosecution at the PTO........................................12
patent elements......................................................................................................................... 14
Claim Interpretation-/ CLAIM CONSTRUCTION - class three 8/31................................15
Markmans patent Inventory............................................................................................... 16
Phillips v. AWH Corp. (Bryson) Claim Construction Evidence..................................................16
Unique Concepts v. Brown (before Phillips)................................................................................ 18
The Economis of Patent Law/ ECONOMICS, TROLLS-class four- 9/2...........................20
IP goal: promote innovation....................................................................................................... 20
Arrows information paradox - Conflict between desire to disclose information and the
need to limit use and access to those whom the inventor has authorized..................20
trade secrets.............................................................................................................................. 20
Theories of IP.............................................................................................................................. 21
patent trolls................................................................................................................................ 22

II. Requirements for Patentability...................................................................23

35 U.S.C. 101.............................................................................................. 23

Patenting Biomedical Inventions- classes five (BIOMED)and six (Myriad)9/9 and 9/14 23
Non-patentable categories......................................................................................................... 23
35 U.S.C. 101 Inventions patentable.......................................................................................... 23
Diamond v. Chakrabarty............................................................................................................. 24
Funk Brothers (1948)- Funks ingenious discovery is merely the handiwork of nature........24
Mayo v. Prometheus (2012)........................................................................................................ 24

MYRIAD......................................................................................................... 25

Myriad Case............................................................................................................................ 25
Ariosa Diagnostics v. Sequenom-............................................................................................... 25
Harvard College v. Canada......................................................................................................... 25
Bowman v. Monsanto................................................................................................................. 25
Software/Methods- class seven- 9/16.......................................................................25
Alice v. CLS Bank........................................................................................................................ 26
Chakarbadi you can patent life.............................................................................................. 27
Alice, Mayo, Bilski, Miriam SCOTUS dials it back (no abstract ideas or laws of nature)..........27
The Utility Requirement class eight- 9/21.............................................................27
U.S.C. 101 Inventions patentable............................................................................................... 27
Two Trouble areas- operability and beneficial utility...................................................................27
Operability In re Schwartz...................................................................................................... 28
Beneficial utility; juicy whip, inc................................................................................................ 28
Chimeric embryo- rejected for utility.......................................................................................... 28
Weldon amendment- no claims encompassing a human organism........................................28
Third trouble area= Chemical, pharmaceutical and biotech-related inventions.........................28
Substantial utility Brenner v. Manson (Fortas)........................................................................29
Promising clinical results= enough to get a patent....................................................................29
Substantial (and Specific) Utility: In Re Fisher............................................................................30
Cannot patent genes but you can patent CDNA; if you have utility for EST can you still get
a patent??.................................................................................................................................. 30
types of utility......................................................................................................................... 30
BLOCKING PATENTS.................................................................................................................... 31
35 U.S.C. 101 Inventions patentable.......................................................................................... 31

35 U.S.C. 112.............................................................................................. 31

Enablement- class nine- 9/28..................................................................................31

Enablement requirement............................................................................................................ 31
35 U.S.C. Sec. 112, Para. 1......................................................................................................... 32
35 usc section 112= three requirements................................................................................... 32
Enablement Summary Disclosure must enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation.......................................................32
OReilly v. Morse- You get what you invent and nothing more....................................................32
Consolidated Electric Light Co. v. McKeesport Light Co. (Brown) (pg. .96)-...............................33
Automotive Technologies v. BMW- means +function..................................................................33
Automotive Technologies v. BMW (pg. 116)...............................................................................34
Factors in Undue Experimentation- pg. 122............................................................................ 34
ENABLEMENT: OVERVIEW........................................................................................................... 34
Janssen v. Tiva There is no hardship excuse for not enabling..................................................34
Utility and Enablement- If a patent claim fails to meet the utility requirement because
it is not useful or operative, then it also fails to meet the how-to-use aspect of the
enablement requirement...................................................................................................... 35
Cedarapids v. Nordberg -Using throw rather than force allows the pressure and gyrational
speed to create fairly uniform particles used in asphalting........................................................35
Telnit Techs. V. Jive Communications (EdTX, Sep. 24, 2015)......................................................35
ENABLEMENT: Disclosure must enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation....................................................................36
Written Description- class ten- 9/30........................................................................36
35 U.S.C. Sec. 112, Para. 1......................................................................................................... 36
Gentry Gallery, Inv. V. Berkline Corp. (L-shaped sectional).........................................................36
Ariad v. Eli Lilly (2010)- Keyword: comprising............................................................................. 38
Univ. of Calif. v. Eli Lilly (1997)- if theres enough and common structural features....................38
Disclose sufficient numbers OR Disclose common structural features.....................................38
university of Rochester v. Searle - enablement vs. written description you can do something
but you must possess it............................................................................................................. 38
CELEBreX- enablement/written description................................................................................39
Definiteness- class- eleven 10/05............................................................................40
Breaking News in Canadian Patent Trolling- Canadian patent trolling the internet and
everything on it....................................................................................................................... 40
Usc 35 sec 112 para. 2 distinct claim pointing out what youre doing......................................40
Nautilus v. Biosig (2014) heart monitor mounted in spaced relationship......................40
Young v. Lumenis (2007) surgical procedure on a cat (declawing cats)...................................41
Orthokinetiics v. Safety Travel Chair- so dimensioned holding- phrase is as accurate as the
subject matter permits............................................................................................................... 41
TERMS OF DEGREE: permissible- these are ok when an ambiguity makes it hard to be precise 41
Datamize v. Plumtree Software (2005)- ..a desired uniform and aesthetically pleasing look and
feel for said interface screens (THIS IS BAD).........................................................................41
interval licensing v. AOL (2014).................................................................................................. 41
THESE CASES ARE OFTEN SOFTWARE CASES............................................................................. 41
DEFINITENESS IN REAL PROPERTY.............................................................................................. 41
DEFINITENESS IN PATENT........................................................................................................... 42
Star scientific v. RJ Reynolds (2008)........................................................................................... 42
Haliburton v. M-I (2008).............................................................................................................. 42
LAST QUESTION: Why permit M+F?- 35 U.S.C. 112.................................................................43

35 U.S.C. 102.............................................................................................. 43

Introduction to Novelty-/ NOVELTY INTRO AIA- class twelve- 10/07............................43

Novelty: 3 Questions.................................................................................................................. 43
BASIC RULES OF NOVELTY- determining whether something is new..........................................43
KNoWN OR USED- MEANING IN STATUTE.................................................................................44
SEE SECTION 102:...................................................................................................................... 44
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent..........................44
35 USC 102 (a) old act didn't not include certain uses in other countries...............................44

New one with Obama New American Invents Act....................................................................44

35 U.S.C. 102(a) NOVELTY; PRIOR ART.A person shall be entitled to a patent unless....44
Atlas Powder v. IRECO............................................................................................................... 44
TYPES OF PRIOR ART.................................................................................................................. 45
General principles of novelty...................................................................................................... 45
Novelty- what anticipates........................................................................................................... 45
Novelty = Pre AIA....................................................................................................................... 46
NOVELTY AIA- FIRST TO FILE GETS THE PATENT NOW (NOT BASED ON INVENTION DATE).........46
Pre- AIA: References under 102(a)............................................................................................. 46
Gayler v Wilder (1850)- invention being made before isnt enough to knock you out; no public
use of first.................................................................................................................................. 47
Hypo: Natl Tractor Pullers Assn v Watkins................................................................................ 47
Rosaire v. Baroid Sales Division.................................................................................................. 47
Blocking Patents and Novelty/ Novelty: Incandescent Lamp Case..............................................47
Patentability: AN overview.......................................................................................................... 48
Anticipation................................................................................................................................ 48
critical date- invention date.................................................................................................... 48
AIA: Effective Mar 16, 2013........................................................................................................ 48
102(a) NOVELTY; PRIOR ART............................................................................................... 48
Five categories of prior art in 102(a)(1) and a sixth category in 102(a)(2)...............................48
AIA: Prior Art............................................................................................................................... 49
Reduction to practice (Two types):............................................................................................. 49
Novelty Defeating Disclosures- class thirteen- 10/12................................................49
102. Novelty and loss of right to patent.................................................................................. 50
In re Klopfenstein- Judge Prost dissemination and public accessibility are the keys to the
legal determination whether a prior art reference was published..............................................50
in re cronyn- accessibility and availability to the public.............................................................50
in re hall- if its indexed it counts towards printed publication....................................................50
printed publication relevant factors:.......................................................................................... 50
printed publications- anywhere in the world regardless of date.................................................51
Alexander Milburn Co. v. Davis-Bournonville Co. (Citation. 270 U.S. 390 (1926))- NO
PATENT IF YOU DIDN'T DO IT FIRST...................................................................................... 51
102(E)(1)- MUST BE PUBLISHED PATENT APPLICATIONS.............................................................51
102(E)(2).................................................................................................................................... 51
PATENT CAN PUBLISH AFTER FILING BEFORE ISSUING OF PATENT (18 MONTHS).......................51
Alexander Milburn v. Davis Bournonville- Justice Holmes- Oliver Wendell Holmes, Jr. (1841-1932)
................................................................................................................................................... 52
novelty:102 (e) hypo.................................................................................................................. 52
Codified in Section 102(e)(2):..................................................................................................... 52
Why would anyone disclose but not claim an invention?...........................................................52
Thomson v. Quixote - Justice Rich- Corroboration is required only when the testifying inventor
is in a position to directly and substantially gain....................................................................53
102 g 2 no publicity requirement............................................................................................. 53
CONCEALMENT- if youre doing something and using it openly but in secret that is enough
for 102(g) (2)........................................................................................................................... 53
TRIPs compliance?...................................................................................................................... 53
Priority- class fourteen- 10/14.................................................................................54
PRIORITY= 2 PEOPLE SAME CLAIM (SAME INVENTION) MADE ABOUT THE SAME TIME..............54
AIA- prior art............................................................................................................................... 54
102(e)- date it publishes or issues???........................................................................................ 54
EXCEPTIONS in 102(b) changed limited to one year only (FIRST TO FILE EXCEPT 1 YEAR OF
GRACE AFTER DISCLOSURE)....................................................................................................... 54
ALL CLAIM ELEMENTS SHOULD BE IN ARTICLE; ARTICLE SHOULD BE ENABLING........................54
WHAT WE KNOW ABOUT PRIOR ART........................................................................................... 54
STATUTORY BAR- WHAT INVENTOR CAN DO THAT KNOWS THEMSELVES OUT FROM PATENTING
................................................................................................................................................... 55
AIA 102(b)(2) prior art chart....................................................................................................... 55

DATE OF INVENTION: CRITICAL DATE.......................................................................................... 55

35 USC 102(G)(1)- SUPPRESSED ABANDONED OR CONCEALED.................................................55
Mahurkar v. C.R. Bard (Justice Rader)- Good prior art from 102(a) b/c it's a printed publication
................................................................................................................................................... 55
Conception................................................................................................................................. 56
Reduction to Practice Show that the invention is suitable for its intended purpose................56
Simultaneous Conception and Reduction to Practice- post-it notes...........................................56
EVERY PATENT ISSUED IS PRESUMED TO BE ENABLED AND VALID.............................................56
Griffith v. Kanamaru (Justice Nichols)...................................................................................... 56
35 U.S.C. 102(g)(1)..................................................................................................................... 57
102((g)(1) priority goes to first to reduce practice..................................................................57
reasonable diligence.................................................................................................................. 57
abandonment Fujikawa v. Wattanasin (pg. 336) (Justice Clevenger)...............................57
KEY DIFFERENCE BETWEEN THIS CASE AND THE PRIOR: REDUCTION OF PRACTICE OCCURERED
BEFORE THE GAP........................................................................................................................ 58
IF YOU INVENT SOMETHING YOU HAVE TO PUBLISH IT...............................................................58
On-Sale Bar-class fifteen- 10/19..............................................................................59
35USC102- publically, effective date is date of filing for publish issued applications................59
NOVELTY V. STATUTORY BARS..................................................................................................... 59
Pennock v. Dialogue **NOT IN BOOK (Daniel Webster)- Justice Joseph Story moved
away from undue reliance on English law in the direction of an American patent law
that would favor inventors.................................................................................................... 60
KEY POLICY BEHIND THE STATUTORY BAR: PREVENT EXTENSION OF MONOPOLY......................60
STATUTORY BAR DATES IF THERE WAS AN ADDITIONAL DAY ON TOP OF THE ONE YEAR YOU
GET NO PATENT.......................................................................................................................... 61
DATE OF PUBLICATION IS WHEN IT BECAME ACCESSIBLE TO PUBLIC (NOT DATE OF SUBMISSION
TO EDITORS).............................................................................................................................. 61
102 whether this was accessible to the public.......................................................................61
102b- patented or described in a printed publication in this or a foreign country......................61
MORE THAN A YEAR NKOCKS YOU OUT; WITHIN THE YEAR IS GOOD.........................................61
PLEASE NOTE: 102(A) V. (B)....................................................................................................... 61
102 a v. 102 b............................................................................................................................ 61
pfaff v. wells electronics (pg. 439) (Justice Stevens)- reduced to practice..................................61
SALE OR OFFER FOR SALE NOW NO REDUCTION TO PRACTICE- READY TO PATENT IF
REDUCED TO PRACTICE OR IF HAVE DRAWINGS/ DESCRIPTIONS THAT ENABLE...........62
ON-SALE BAR= SALE OR OFFER FOR SALE NO REDUCTION TO PRACTICE REQUIRED- IF
YOU SELL AN UNCOMPLETED PRODUCT, IT MAY BAR A PATENT IF THE APPLICATION IS
FILED MORE THAN 1 YEAR LATER......................................................................................... 62
READY TO PATENT IF: (1) REDUCED TO PRACTICE+ (2) DRAWINGS OR DESCRIPTIONS
THAT ENABLE........................................................................................................................... 62
Space systems/loral v. Lockheed martin - Justice Newman- To be ready for patenting the
inventor must be able to prepare a patent application, that is, to provide an enabling disclosure
as required by 35 U.S.C. 112...................................................................................................... 62
INVENTOR: ALWAYS SAY I AM SURPRISED THIS WORKED THE MORE COMPLEX IT LOOKS THE
BETTER OFF YOU ARE................................................................................................................. 62
Plumtree software v. datamize (2006)- Justice Dyk- A commercial offer is one which the other
party could make into a binding contract by simple acceptance...............................................62
2 PRONG TEST***: 1: DEMONSTRATE A COMMERCIAL OFFER WAS MADE BEFORE
CRITICAL DATE + 2: PERFORMED PATENT METHOD BEFORE CRITICAL DATE IN
EXCHANGE FOR FUTURE COMPENSATION...........................................................................63
**** ASK ABOUT CRITICAL DATE................................................................................................. 63
(plumtree) agreement to provide kiosk, critical date, then perform, then provide kiosk not a
sale............................................................................................................................................. 63
NEED A CONTRACT BFORE AGREEMENT TO PEROFRM PROCESS (NEEDED BEFORE YOU CAN
PERFORM PROCESS) UNLESS NEEDED TO PERFORM AN AGREEMENT TO PROVIDE A SERVICE
USING THE TECHNOLOGY(CAN PERFORM PROCESS BEFORE PROVIDING TECHNOLOGY)...........63

.......................................................................................................... 63
Public-Use Bar- / PUBLIC USE, EXPERIMENTAL USE- class sixteen- 10/21....................63
REVIEW OF SEC. 102.................................................................................................................. 64
35 U.S.C. 102............................................................................................................................. 64
AIA- if you do any of these things before you file for your patent its invalid.........................64
DISCLOSURE EXCEPTION WITHIN A YEAR................................................................................... 64
DISCLOSURE= DIFFERENT FROM PUBLIC DISCLOSURE- NO CLEAR THRESHOLD ON HOW MUCH
MORE DISCLOSURE NEEDED TO REACH PUBLIC.........................................................................64
AFTER YOU DISCLOSE YOU HAVE ONE YEAR TO DO A LOT OF THINGS OLD ACT- CARES ABOUT
CONCEPTION; AIA- WE DON'T CARE ABOUT CONCEPTION.........................................................64
GOAL= trying to limit monopoly powers with patents................................................................65
Pg.458 Egbert v. Lippmann (1881)- PUBLIC USE DOES NOT MEAN PUBLICITY- IT MEANS LACK OF
CONTROL AND LACK OF ABANDONMENT................................................................................... 65
IMPORTANT: DOES NOT HINGE NO THE NUMBER OF USERS; DOES NOT NEED TO BE
KNOWN/SHOWN ?????................................................................................................................ 65
Pg.460 Motionless keyboard v. Microsoft- CLAIMS ENCOMPASS MORE THAN YOUR INVENTION. 65
2 LAYERS (SECRECY + PURPOSE)............................................................................................... 65
MOLECULON RESEARCH V. CBS (fed. Cir. 1986)- implied control (CASE NOT IN BOOK)..............66
Metallizing Engineering (2nd Circ) - Judge Learned Hand- had control over friends- implied
from their relationship........................................................................................................... 66
What is the main issue?............................................................................................................. 66
Public Use Summary................................................................................................................... 66
EXPERIMENTAL USE- Pg. 482 City of Elizabeth v American Nicholson pavement co.............66
FACTORS..................................................................................................................................... 66
Lisle v. AJ Manufacturing- Justice Lourie- We conclude that convincing evidence was presented
whereby a reasonable jury could have found A.J.s prima facie case of public use was rebutted.
................................................................................................................................................... 67
Pg. 494 Lisle Corp v. A.J. - Exception to public use b/c prior working relationship and called for
feedback every 2-4 weeks..................................................................................................... 67
HYPO: Sobicinski v. Walgreens: Claim number 7- kit (glove and lotion)....................................67
WHAT DOES THE PATENT CALIM?............................................................................................... 67
OBVIOUSNESS- SECTION 103..................................................................................................... 67
Section 102.............................................................................................................................. 67
Hypo: Sobicinski v. Walgreens.................................................................................................... 68
Anticipated?-glove lotion method............................................................................................... 68
Electromotive Division of GM v. Transportation Systems Division of GE- Justice Michel- We
conclude that control and customer awareness ordinarily must be proven if experimentation is
to be found................................................................................................................................. 69

35 U.S.C. 103.............................................................................................. 69
Historical Obviousness- class seventeen- 10/26.......................................................69

INTRO TO OBVIOUSNESS................................................................................69

35 USC Sec 103 103. Conditions for patentability; non-obvious subject matter.....................69
PHOSITA Factors that may be considered:.................................................................................. 69
SEC/ 103- DIFFERENCES THAT SHOULD BE OBVIOUS TO SOMEONE IN ORDINARY SKILL IN THE
ART MEASURED BY HOW SOMEONE IN THE FIELD THINKS ABOUT THIS.................................69
ALWAYS TALK ABOUT GRAHAM FOR OBVIOUSNESS....................................................................70
Basic Conundrum- Why is the doctrine necessary? Economic rationale, Investment rationale,
Output constraints: patent thicket............................................................................................. 70
Pg. 349 Hotchkiss v. Greenwood................................................................................................ 70
SCOTUS Standard....................................................................................................................... 70
35 USC Sec 103- 103. Conditions for patentability; non-obvious subject matter.....................71
pg. 354 Graham v. John Deere- Justice Clark- Holding= a farmer would have done this....71
THE GRAHAM TEST..................................................................................................................... 71
With obviousness- you have to go back to date and time of invention time..............................71
Adams: elevation of Secondary considerations?.....................................................................72
Might be utilized (Graham)....................................................................................................... 72
pg. 360 U.S. v. Adams - Justic Clark (FILLS IN THE GAPS FROM GRAHAM)..................................72
3RD PART WHAT IS THE LEVEL OF ORDINARY SKILL HERE? Court does not say who this person
neds to be (how to qualify)......................................................................................................... 72
FACTORS TO CONSIDER.............................................................................................................. 72
Extraordinary knowledge- regardless of skill elvel they know everything in the prior art....72
Adams- elevation of secondary considerations.......................................................................72
HYPO- Leapfrog v. Fischer-price.................................................................................................. 73
Modern Obviousness-/KSR- class eighteen-10/28.....................................................74
THE HISTORY OF THE NON-OBVIOUS REQUIREMENT- Federal Circuits Teaching, Suggestion,
Motivation test.......................................................................................................................... 74
Apple Patent Application............................................................................................................ 74
KSR (changed the law on obviousness)...................................................................................... 74
The history of non- obvious requirement- TYPE THIS FROM SLIDES...........................................74
In re Demiczak- THERE IS NO OBIVOUSNESS TEST UNDER KSR.................................................74
Pg. 373 KSR ** VERY IMPORTANT................................................................................................ 75
KSR Intl v. Teleflex prior art-Asano Pedal............................................................................... 75
KSR - Prior art combination- Test should be flexible..............................................................75
Perfect Web Technologies v. InfoUSA- judge says I can use my common sense used to be
confined t saying show me proof this is obvious (now judges are focus of obviousness)...........75
HYPO: Akie Lures........................................................................................................................ 75
102= VERY RULE BASED obviousness= more about arguing your side.............................76
Proctor & Gamble v. Teva Obviousness test............................................................................76
ELECTRONIC PATENTS CRITICIZED MORE THAN CHEMISTRY......................................................76
In Re Kubin: Obviousness and DNA............................................................................................ 76
Other Obviousness Considerations/ SECONDARY CONDITIONS, PHOSITA- nineteen11/02..................................................................................................................... 76
Obviousness abroad................................................................................................................ 77
Daiichi Sankyo v. Apotex (Pg. 408 )- Justice Sen. Archer- Obviousness is a question of law
based on underlying questions of fact. [De novo review and clear error].................................77
PHOSITA- FACTORS THAT MAY BE CONSIDERED:........................................................................77
Obviousness: Sec. 102 prior art General Rule: Anything that qualifies as prior art under Sec
102 counts as prior art under Sec 103....................................................................................... 77
Importance of contract! You can contract out of prior art!......................................................78
OBVIOUSNESS- SEC 102 PRIOR ART **REMEMBER FOR EXAM....................................................78
Section 102b(2)(c)- AIA (obama act).......................................................................................... 78
Pg. 414 In re Icon Health & Fitness- Justice Prost- If reasonably pertinent to the problem
addressed by Icon, Teague may serve as analogous art............................................................78
HYPO- in re clay.......................................................................................................................... 78
Pg. 427 Transocean Offshore Deepwater Drilling v. Maersk- Justice Moore- This is precisely the
sort of case where objective evidence establishes that an invention appearing to have been
obvious in light of the prior art was not....................................................................................78
6 FACTORS OF SECONDARY CONSIDERATIONS...........................................................................78

SECONDARY CONSIDERATIONS- RLE WHEN THERE IS OBJECTIVE EVIDENCE INVENTION...........79

Hypo: Crocs court found this is not obvious (SO MUCH copying and commercial success)....79
SUMMARY OF NONOBVIOUS ANALYSIS....................................................................................... 79
Iron Grip Barbell v. USA Sports- Justice Dyk- A NEXUS MUST BE ESTABLISHED BETWEEN THE
MERITS OF THE CLAIMED INVENTION AND EVIDENCE OF COMMERCIAL SUCCESS.....................79

III. Enforcing Patent Rights............................................................................80

Infringement................................................................................................. 80

Direct Infringement- class twenty- 11/4...................................................................80

literal infringement most cases................................................................................................ 80
patent infringement (make 2 arguments).................................................................................. 80
INFRINGEMENT CHECKLIST......................................................................................................... 80
WHAT IS REQUIRED FOR DIRECT INFRINGEMENT? ALL OF THE ELEMENTS OF THE CLAIM ARE
MET BY THE ACCUSED DEVICE/PROCESS................................................................................... 80
INFRINGEMENT CHECKLIST (3 LITERAL REQUIREMENTS)............................................................80
INFRINGEMENT (purely for litigation).......................................................................................... 81
Goal= Less likely to be made invali but more likely to capture more.........................................81
HYPO - Chair w/ headrest= blocking patent...............................................................................81
Types of infringement................................................................................................................. 81
INFRINGEMENT- WE ONLY CARE ABOUT YOUR PATENT AND WHAT IT SAYS (WHAT DO YOUR
CLAIMS COVER).......................................................................................................................... 81
Patent Litigation: Case Management- Three Phases:.................................................................82
PATENT LITIGATION PATH............................................................................................................ 82
INVALIDITY- NO NEED FOR INFRINGED DEVICE...........................................................................82
Claim Construction: Review- Phillips v. AWH Corp......................................................................82
35 U.S.C. 271 - Infringement of patent....................................................................................... 82
Larami v. Amron squirt guns- Justice Reed- Eastern District of Pennsylvania..........................83
Infringement checklist................................................................................................................ 83
35 U.S.C. 271 - Infringement of patent.- USE..........................................................................83
NTP v. Research in Motion - Justice Linn- THE USE OF A CLAIMED SYSTEM UNDER SECTION
271(A) IS THE PLACE AT WHICH THE SYSTEM AS A WHOLE IS PUT INTO SERVICE.....................83
271(a) use HYPO- calls in India.............................................................................................. 84
IF IT IS JUST A ROUTE THROUGH; MORE USE AND CONTRL IS US (MORE LIKELY TO BE
INFRINGED)................................................................................................................................ 84
271(a): Use- system/ process.................................................................................................. 84
271(a): offered for sale- Process Claims.................................................................................. 84
Extraterritorial Reach: Deepsouth 271(f)................................................................................ 84
Eli Lilly v American Cynamid...................................................................................................... 84
35 U.S.C. 271(g)......................................................................................................................... 84
Doctrine of Equivalents/ INITIAL INFRINGEMENT- class twenty one- 11/9....................85
Patent Litigation: Arguments validity/ infringement................................................................85
35 U.S.C. 271 - Infringement of patent....................................................................................... 85
** LOOK AT IF IT IS NARROWED BY ELEMENT OF THE PART OR NO MATERIAL............................86
Pg. 526 Graver Tank v. Linde Air Products (1950)- Justice Jackson - if it performs substantially
the same function in substantially the same way to obtain the same result..........................86
Definiteness in Real Property- If scope of land size is unclear you negotiate for a lower price. .86
ESTABLISHES DOE...................................................................................................................... 86
Definiteness in Real Property- Justice Thomas............................................................................86
Warner- jenkinson co. v. Hilton davis.......................................................................................... 86
Can apply to later developed technologies................................................................................87
LIMITED BY PROSECUTIO NISTORY ESTOPPEL******...................................................................87
Festo v. Shoketsu Kinzoku Kabushiki (magnetized rails 2 magnetized rings) (2002)- Justicce
Kennedy- PRESUMPTION FROM JENKINSON: AMENDMENTS RELATED TO PATENTABILITY
FORECLOSE DOE ON AMENDED ELEMENTS STANDARD FOR REBUTTING PRESUMPTION...........87
Exception to the Exception to the Exception to the Rule............................................................88
DOCTRINE OF EQUIVALENTS- If it performs substantially the same function in substantially
the same way to obtain the same result. Graver Tank, 339 U.S. 605, 608 (1950)...................88

LIMITED BY PROSECUTION HISTORY ESTOPPEL..........................................................................88

Element by Element Comparison: Each element contained in a 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 to the invention as a whole. - WarnerJenkinson v. Hilton Davis, 520 U.S. 17 (1997)............................................................................88
Can apply to later developed technologies..............................................................................88
DOE assessed at time of infringement..................................................................................... 88
35 U.S.C. 271 - Infringement of patent....................................................................................... 88
What is required for indirect infringement?...........................................................................89
INDIRECT INFRINGEMENT- contributory/ inducement.................................................................89
35 USC 271: Indirect Infringement............................................................................................. 89
Indirect Infringement/ INITIAL INFRINGEMENT- twenty two- 11/11............................89

INITIAL INFRINGEMENT..................................................................................89
Patent Litigation: Arguments...................................................................................................... 90
35 U.S.C. 271 - Infringement of patent....................................................................................... 90
Without authority...................................................................................................................... 90
Makes, uses, offers to sell, sells, or imports invention..............................................................90
Within the U.S........................................................................................................................... 90
During the patent term............................................................................................................. 90
What If There Is No Single Direct Infringer?................................................................................ 91
INFRINGEMENT RULES................................................................................................................ 91
BMC- Courts faced with a divided infringement theory have also generally refused to find
liability where one party did not control or direct each step of the patented process..............91
Solving the problem by drafting................................................................................................. 91
35 U.S.C. 271 - Infringement of patent....................................................................................... 91
NTP v. Research in Motion.......................................................................................................... 92
271(a): Use............................................................................................................................. 92
Extraterritorial Reach:Deepsouth............................................................................................... 92
Eli Lilly v American Cynamid...................................................................................................... 92
35 U.S.C. 271(g)......................................................................................................................... 92
(1) IT IS MATERIALLY CHANGED BY SUBSEQUENT PROCESSES; OR............................................92
(2) IT BECOMES A TRIVIAL AND NONESSENTIAL COMPONENT OF ANOTHER PRODUCT..............92
What is the U.S. ITC?.................................................................................................................. 92
What are 337 Investigations?.................................................................................................. 93
337 Investigation: Elements.................................................................................................... 93
337 Investigation: Remedies................................................................................................... 93
337 Enforcement..................................................................................................................... 93

Defenses....................................................................................................... 93

Inequitable Conduct and Experimental Use-class twenty three- 11/16......................93

Defenses- Clear and convincing evidence standard (Sec. 282 -Presumption of validity 20
years from filing)........................................................................................................................ 94
Equitable Defenses..................................................................................................................... 94
Check slides for aquamine......................................................................................................... 95
Therasense case........................................................................................................................ 95
THERE IS NO SLIDING SCALE- high materiality cannot substitute for intent...............................95
Majority-materiality.................................................................................................................... 95
Have to show you knew it was relevant and chose not to tell the PTO......................................95
Pre- Therasene examples!.......................................................................................................... 95
Claritin- What a drug should do.................................................................................................. 96
35 USC 271(e)- hatch Waxman act- agreement relating to drugs..............................................96
patent usually files around pre-clinical trials ; now people file as soon as ready.......................96
Merck v. Integra Lifesciences..................................................................................................... 96
Madey v. Duke- no one could perform but him or selse the patent is infringed; the experiments
were his patent.......................................................................................................................... 96

class twenty three- inequitable conduct, experimental use..............................96

Therasense Justice Rader......................................................................................................... 96

MAJORITY- INTENT...................................................................................................................... 97
MAJORITY MATERIALITY............................................................................................................ 97
Equitable Defenses..................................................................................................................... 97
The aftermath: Thereasense on remand.................................................................................... 97
The aftermath: Lawrence Pope................................................................................................... 97
Does the Patent System Work? Drugs and chemicals- Yes; Computer software- No...................97
35 U.S.C. 271(e)......................................................................................................................... 98
Merck v. Integra Lifesciences I- Justice Scalia............................................................................. 98
Madey v Duke- Justice Story- It could never have been the intention of the legislature to
punish a man, who constructed [an infringing device] merely for philosophical experiments, or
for the purpose of ascertaining the sufficiency of the machine to produce it its described
effects....................................................................................................................................... 98
Whitemore v. Cutter (1813)- Judge Gajarsa- So long as the act is in furtherance of the alleged
infringers legitimate business and is not solely for amusement, to satisfy idle curiosity, or for
strictly philosophical inquiry, the act does not qualify for . . . The experimental use defense..98
Akamai Tech. v. Limelight- Judge Linn- Direct infringement liability of a method claim exists
when all of the steps of the claim are performed by or attributed to a single entity..................99
You cannot contribute to someones infringing when there is no full direct infringer..................99

Damages..................................................................................................... 100

Money Damages- class twenty four- 11/18.............................................................100

DAMAGES................................................................................................................................. 100
35 U.S.C. 284-[T]he court shall award [the patentee] damages adequate to compensate for
the infringement but in no event less than a reasonable royalty for the use made of the
invention by the infringer......................................................................................................... 100
Timeline.................................................................................................................................... 100
35 USC 284- damages adequate to compensate for infringement but in no event less than a
reasonable royalty for the use made of the invention by the infringer....................................101
LOST Profits.............................................................................................................................. 101
Reasonable royslty- how much would he have paid if he had to ngotiate with meup front. 101
Rite-Hite v. Kelley (truck brakes)- Panduit 4-factor test.......................................................101
Panduit 4 factor test................................................................................................................. 102
YOU SAY- WE CANNOT PROVE LOST PROFITS SO THE STATUTE SAYS YOU CAN USE REASONABLE
ROYALTY................................................................................................................................... 102
Pg. 895 Lucent v. Gateway- Judge Michel- damages............................................................102
Georgia- Pacific- 15 factor test................................................................................................. 102
Pg. 907 Uniloc v. Microsoft- Judge Linn- The use of [the 25%] rule fails to pass muster under
Daubert and taints the jurys damages calculati......................................................................103
NEW APPLE SAMSUNG CASE.................................................................................................... 103
Permanent Injunctions-class twentyfive- 11/23......................................................103
INJUNCTIONS............................................................................................................................ 103
REMEDIES: PRELIMINARY INJUNCTIONS- Injunction -- 4 Factors:...............................................103
NOT GIVING INJUNCTIONS TO PATENTEES HURTS PATENTS; IF PRODUCT NOT AVAILABLE IT
HARMS CONSUMERS (THESE ARE PRESENT IN ALL CASES; ONE USUALLY DOMINATES)..........103
DAMAGES................................................................................................................................. 103
DAMAGES Preliminary injunction hearing back to issuance = damages if marking or actual
notice....................................................................................................................................... 103
Requirements for obtaining preliminary injunctions.................................................................103
35 U.S.C. 283........................................................................................................................... 104
Amazon.com v. [bn].com, Inc (pg. 919)- 1-click patent. (Fed. Cir. 2001)..................................104
***INFRINGEMENT? VALIDITY?.................................................................................................. 104
REMEDY: PRELIMINARY INJUNCTION (4 FACTORS).....................................................................104
KEY FACTOR= likelihood of success.......................................................................................... 104
Pg. 936 EBAY vs. MercExchange- Justice Thomas- Remedies: Preliminary Injunctions- Injunction
-- 4 Factors............................................................................................................................... 104
Concurrence #1- Justice Thomas-............................................................................................ 104

The two concurrences clash; whether they should or should not lawaays issue......................105
NEW FACTOR= MONETARY DAMAGES WOULD NOT BE ENOUGH..............................................105
Edwards Lifesciences v. CoreValve- Judge Newman- THE COURT (IN EBAY) DID NOT CANCEL 35
U.S.C. 154 NOR DID THE COURT OVERRULE ARTICLE I SECTION 8 OF THE CONSTITUTION. 105
Robert Bosch v. Pylon Manufacturing- Judge OMalley- ALTHOUGH EBAY ABOLISHES OUR
GENERAL RULE THAT AN INJUNCTION NORMALLY WILL ISSUE , IT DOES NOT SWING THE
PENDULUM IN THE OPPOSITE DIRECTION.................................................................................105
eBay v. MercExchange: Concurrence #2- Justice Roberts-.......................................................105
Z4 v. Microsoft.......................................................................................................................... 105
Pg. 940 Edwards lifesciences v. corevalve, inc.........................................................................105
DIFFERENCES FROM EBAY PRACTICES THE INVENTION AND IS A DIRECT MARKET
COMPETITIOR........................................................................................................................... 105
EBAY CONCURRNECE (Kennedy, Stevens, Souter, Breyer).......................................................106
Z4 v. MICROSOFT - Product activation is a very small component of the products// monetary
damages are sufficient latching onto the concurrence from Kennedy...................................106
Who is a troll? ?- HARD TO IDENTIFY WHO THEY ARE AND GET RID OF THEM..........................106
Apple v. Samsung- (Fed. Cir. 11/20/13)- UTILITY PATENTS........................................................106
Apple v. Samsung (Fed. Cir. 11/20/13) Irreparable Harm ....................................................106
for an injunction must show........................................................................................... 106
MULTICOMPONENT IDEA- THINGS WITH MULTICOMPONENT LESS LIKELY TO GET AN INJUNCTION
(B/C OF THE IRREPARABLE HARM FACTOR).............................................................................. 106
THE MORE THEY SELL THE BETTER FOR YOU; YOU CANNOT SUE THEM AGAIN LATER IF THEY
CONTINUE TO INFRINGE AND PAY FINE AND YOU HAVE NO INJUNCTION..................................106
Design Patents- 11/30..........................................................................................107
PRIOR ART- Egyptian Goddess v. Swisa- whether an ordinary observer, familiar with the prior
art, would be deceived into thinking that the accused design was the same as the patented
design. Egyptian Goddess at 681............................................................................................ 107
DESIGN PATENT= COPYRIGHT/ TRADEMARK HYBRID NO SUBJECT MATTER LIMITS..............108
Design of useful articles- 35 usc 171....................................................................................... 108
Requirements for protection..................................................................................................... 108
**DESIGN PATENTS- EASY WORK ALL ABOUT DESIGN- ARTISTIC EXPRESSION....................109
how narrow are these things?.................................................................................................. 109
DESIGN: THE NEW FRONTIER OF IP ORNAMENTALITY VS. FUNCTION....................................109
THIS ALL CHANGES- Apple vs. Samsung............................................................................... 110
INFRINGEMENT STANDARD= ORDINARY OBSERVER: PURCHASER OF THINGS OF SIMILAR
DESIGN OR ONE INTERESTED IN THE SUBJECT....................................................................110
Gorham v. White- fork design (white infringed b/c ordinary observer would be confused with the
source of the forks).................................................................................................................. 110
Egyptian goddess vs. swisa, 543 f.3d 665 (fed. Cir. 2008) (en banc)- Would an ordinary observer
think theyre the same thing? Look at prior art (tropical shine doesn't look hollow nailco has 3
sides)........................................................................................................................................ 110
Whether an ordinary observer.................................................................................................. 110
doing 3 prong test.................................................................................................................... 110
Braun-Claiming infringement of the shape of their tool...........................................................111
All youre doing is comparing pictures for similarities..............................................................111
The whole claim is the picture.................................................................................................. 111
Crocs- A side by side comparison- would ordinary person be confused? Is it more like patented
design or prior art?................................................................................................................... 112
Obviousness: High Point v. Buyers Direct- Judge OMalley- The ultimate inquiry in an
obviousness analysis is whether the claimed design would have been obvious to a designer of
ordinary skill who designs articles of the type involved...........................................................113
NOTE FROM FINAL REVIEW The question about on-sale bar in the notes (page 456)
is what I thought it was. To clarify, under Plumtree you should ask whether the
contract for sale necessarily infringes the patent claims? If no, the contract, absent
more, is not a sale...............................................................Error! Bookmark not defined.

ESSAYS- dont worry about format

o Show issue and applying new facts to old law
o Enablement??
o Dont need case names- explain details of case and explaniwhat you mean

I. Introduction to the Patent System

Overview and History of the Patent System - class one: 8/24

Nard 1-6
o Patent right to exclude
Nard 16-29
o Creation of USPTO from 1836 Act (pg. 20)
o US Court of Appeals for the Federal Circuit (pg. 24)
When Patents Attack- NPR (MyWCL, 1 hr) patent trolls and shell companies being used to infringe
technological and scientific development when patents are supposed to facilitate sharing and growth
Comb-over patent (MyWCL)
Note: homework for next class

Overview
What is a patent?
o What rights does it give you? Negative rights
No affirmative rights to do anything
What institutions craft patent policy?
o Federal circuit= where originated
o USPTO and US Commerce influences it
Does the patent system work?
o Tricky question
o For:
o Against:
Why Study Patent Law? Patent law concerns technology, Patent Law is a growth business, Patent Law is
International, New cases from the Supreme Court:
1.Teva v. Sandoz
2.Commil USA v. Cisco Systems
3. Kimble v. Marvel Enterprises
Future Cases
Oct 2 In re Tam Federal Circuit
It Involves Big Companies (sometimes)
Focus on substantive law not litigation or prosecution
Class divided into three sections
Panel system +
Open-book exam
Prof. Andersons chair patent
1. Seat portion

2. Back portion
3. A number of legs
Sources of Patent Law: Text
U.S. Const. Art 1, Sec 1, Cl 8: To promote the Progress of Science and useful Arts, by securing for limited Times
to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;
Patent Act (1952): Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may obtain a patent therefor
Sources of Patent Law: Institutions
USPTO- Department of Commerce; US court of appeal for federal circuit, US Congress
Patent trolls
Patent aggregators, bankrupt innovators, universities

The Patent Document and the Process of Obtaining Patent Rights- class
two: 8/26

Nard 39-51;
o The process of applying for a patent= patent prosecution
o Record of prosecutin before PTO= prosecution history
o 3 sets of rules and regulations govern the prosecution: patent code in Title 35; (2) title 37 of the code of
federal regulations (USPTO rulemaking); (3) Manual of Patent examining procedure (MPEP)
guidance but no force of law
o proceeding is ex parte = between applicant and examiner only
AIA allows 3rd parties to challenge issuance and validity of a patent
Pre-issuance submission of prior art
o 3rd part can submit any published patent application, or printed publication of
potential relevance to the examination of the application
o overturns that 3rd party needs concise description of prior art relevance
o submission period exetnded to the later of 6 months after publication of
application or date of first rejection under section 132 (CITE 35 usc 122e)
Post-grant review
o Anyone can challenge patent validity within 9 months of issuance (CITE 35 usc
321c)
o Opportunity to improve patent quality and restore presumption of validity
o Challenge under paragraph (2) or (3) of section 282(b)
Ie. Lack of novelty, on-sale and public use e events (section 102)
Obviousness (section 103)
Lack of enablement or other description deficiency (section 112)
o NOT UNLESS more likely than not that at least 1 of the claims challenged in
the petition is unpatentable (CITE 35 usc 324a)
Inter partes review
Patent Claim Drafting Exercise [homework]
CLAIM DRAFTING
1. What is the process for obtaining a patent?
2. What is the process for patent appeals? both pre- and post- issuance
3. Why are claims so important?
o Patent have to prove that there was an infringement of the claim
o USPTO wants narrow claims w/ broad descriptions
Do not want the first claim to be too specific

o No adjectives! (dont say material or shape)

As few defining words as possible
o Want it to be as broad as possible
Add details in subsequent claims
U.S. Patent and Trademark Office and Patent Prosecution at the PTO
USPTO
o Director: Michelle Lee came from Google so she is less patent friendly
o Huge bureaucracy very hard to get change to occur
o Patent prosecution at the PTO
(Book ignores design patents?)
these workers have lots of experience b/c not so easy to transfer
file an application
patents get 14 hours of examination
o examiners are overworked
possible outcome of bad examination: say yes you can get the patent
initial rejection talk for 2 months about deficiencies
patent attorney talks with examiner and can help alleviate their concerns or change
the patent
Amendment
can only change the claims
o not the descriptions!!
Allowance or final rejection
Final rejection you have to do something
o Abandonment= investors choice at any stage of rejection
Continuation
Continue in fight
o All claims will have same issue date
Continuation-in-part
Separating two claims
o This will lead to different claims with different dates
Request for continued examination
Appeal

patent term
o For patents filed before June 8, 1995: the longer of
17 years from the date of issuance
20 years from the date of filing
o For patents filed since:
20 years from the date of filing

this is because of submarine patents the longer it takes to get approved this buys you more time of
protection?
Jerome Lemelson owns tons of patents (original patent troll)
o Keeps them in USPTO for years and then springs on them?
USPTO started publishing patents after 18 months

Patent appeal process (rejected)

o Patent trial and appeal board
If don't like decision can go to the federal circuit
If don't like that can go to U.S. supreme court (not likely)

Patent appeal process (granted) where to bring claims against an infringer??

o Federal district court
Costs like 5 million
o Patent Trial and Appeal Board (PTAB) (USPTO (board that reviews issue and non-issue patents))
whether the patent should have been issued
Post-grant review
Before 9 months = any issue of patentability
Inter partes review
After 9 months (section 102 and 103 only)
o International trade commission (ITC)
Policing imports block products at the border
Fast (decision must be made in 18 months)
No damages
o You could go to ITC/PTAB and then go to Federal District Court (sometimes can go to all 3?)
Cannot go to district court about patentability after having gone to the patent trial and appeal
board
o All roads lead to the federal circuit and then maybe the supreme court
o PTAB is new thing being used a lot; most cases are from federal district court

USPTO used to appoint the judges but that was unconstitutional

Had to fire and rehire still internal

patent elements
Specification
Claims
o Specifications teach. Claims claim.
-Federal Circuit (too many cases to count)
Prosecution History
Patent Claims
o The name of the game is the claim- Giles Rich (1904-1999), Author of the 1952 Patent Act,
Federal Circuit judge
Specification is everything before I claim:
Claims are at the end
Prior- art
o Comparing new patent claims to what is already out there
o References cited= similar patents that were relevant
preamble = Beginning of claim (a method for)
o Part of the claim but not a lot of patentability
Large area that needs work
Transition
o Comprising
All elements of patent present = infringement
o Consisting of
Catches everything in the claims but if there is anything additional it is not covered
Combover patent
o First claim = 3 sections
Draft one really broad claim
o Will catch most but be susceptible to attack
Also make more and more narrow claims
HW good to leave off the eraser; that means anything w/o an eraser would not infringe the patent
o Claim 1 is broad
Comprising
Material of the pencil
o Keep it broad but avoid prior art
Relationship of the materials
o Claim 2 gets more specific
Materials : wood w/ other material of graphite
This is easier to patent but is less valuable
o Claim 3

Claim Interpretation-/ CLAIM CONSTRUCTION - class three 8/31

Nard 60-90
CLAIM CONSTRUCTION
PAY CLOSE ATTENTION TO NEXT CLASS READING!!!!
o VERY IMPORTANT TO UNDERSTAND

Review of claims
1. A writing device used for marking material in various shades comprising a cylindrical piece of
graphite-clay composite material encased in a wooden sheath and including a rubber tip attached at
one end of the device for erasing the marks made by the device.

2. The writing device of claim 1 wherein said sheath is attached to a substance capable of partially erasing
marks.
1. How is claim construction performed? What sources can courts look to when performing claim construction?
2.How do the spec and the claims interact in claim construction?
3.What are common issues in claim consrtuction? Who interprets claims?
USPTO specialist agency science/engineering training 100 patents/year
USPTO overworked- specialist agency
o 100 patents/ year
US District Court- non-specialist court
US Court of Appeals for the federal circuit- specialist court
Patent office does not define claims
o Don't know what terms will be problematic before a lawsuit
Timing issue
o Try to get a meaning but wont define terms
NEXT go to district courts
o Patent should be interpreted by a person w/ regular knowledge
Good at interpreting documents as someone else would
Federal court looks at everything de novo
o Supreme Court then said NO.. they have to take into account what district court says
Markmans patent Inventory
o Claim construction is issue for judge not jury
Markman alleged that inventory could mean receipts, as well as clothing
Westview alleged that inventory meant items of clothing
After Markman= wide spread of Patent local rules
o Varying Rules that apply for cases in certain areas
Markman= trial before the trial
Summary judgement often after a markman hearing
o b/c it has been decided what claim means
end of trial = infiringement or not (in 60% of cases)
o rocket docket huge development in patent law (does not exist anymore?)
o cases often decided once you construe a claim

Phillips v. AWH Corp. (Bryson) Claim Construction Evidence

o Intrinsic Evidence- Claims, Specification, Prosecution History
o Extrinsic Evidence- Dictionaries, Experts
Phillips v. AWH Corp. (Mayer)
Phillips case= baffles - Baffles make up inner- walls
o Deflecting bullets just a purpose and should not limit invention
Not the only purpose of the invention
Baffle can be at 90 degrees
o AWH Corp. baffle = wall that must be at something other than 90 degress
Selling products that are at 90 degrees (straight angles)
o BRYSON (from federal circuit)
PARTS of a federal claim (intrinsic evidence)
1. Claims
2. Spec
3. Prosecution history
Publically available but hard to find (and confusing)
o Claim construction evidence= intrinsic or extrinsic
Extrinsic evidence is helpful but not as much as intrinsic evidence (Does not form
a part of the patent)
o Dictonaries useful but must be used in context
What does court say about dictionaries? (In Phillips)
Dictionary must be read in the context of the claim
o Sometimes it can make the claim narrower which hurts
a claim
o Trade journals
o Experts
Intrinsic evidence
Claims have different parts
o Judges can look at how a phrase is used in different claims
Claim differentiation
Each claim has a different meaning
Spec description of invention so that someone could go out and do it
o Gives structure and life to the claims in a single sentence
What its trying to do
What it doesn't do
o Patentee can be his own lexicographer
Can define terms as he wants
Ie. Can say red means yellow
Prosecution history
o History of patenting for the patent office
Claims rejected
Does not say why
Claim construction studies
o Moore (2005)
Years studied: 1996- 2003
Case reversal rate: 29.7%
Claim reversal rate: 34.5%
Cases w/ a reversed claim: 37.5%
o Schwartz (2008)

Years studied: 1996- 2007

Case reversal rate: 29.3%
Claim reversal rate: 33.9%
Cases w/ a reversed claim: 38.8%
Claim Construction Reversal Rates: 2000-2010 (trend of slight decline after 2006) , Dictionaries: 20002010 (trend of drastic after before 2006)

o Evolution of claim construction (UNTIL APRIL)

Markman- no extrinsic
Triborn- de novo review for federal
NOW SINCE PHILLIPS less reliance on dictionary
o Case reversal rate = 30% this is very high
High chance of a new trial
o Dictionaries used in 5% of cases even though federal circuits have said theyre good to use
o 2002- was the height of using dictionaries
battle of the dictionaries
federal circuit killed this
o Dissent and Newman = DISSENT
Claim should be interpreted both from the person and the PHOSITA
Uniformity in looking at cases
Any fact question should not be brought to federal court
Want to look at legal questions
Claim consrtruciton = deferential review
o Appellate courts must give deference when using extrinsic sources
Unique Concepts v. Brown (before Phillips)
UNIQUE CONCEPTS CLAIM
1. An assembly of border pieces for creating a framework attachable to a wall or other flat surface for
mounting a fabric sheet which is cut to dimensions at least sufficient to cover the surface, said assembly
comprising linear border pieces and right angle corner border pieces which are arranged in end-to-end
relation to define a framework that follows the perimeter of the area to be covered, each piece including a
raised outer edge of the piece and having a narrow inlet communicating with said face, the portion of the
selvage of said sheet which includes fabric material in excess of that necessary to cover said surface being
stuffed in said storage channel so that the exposed selvage of the sheet lies against said face to present a
smooth appearance which extends to said inlet and is directly adjacent said perimeter, said linear pieces

being formed of an integral one piece plastic material of sufficient elasticity to permit dilation of said inlet
whereby said inlet may be temporarily expanded to admit said excess material and then contracted to retain
said excess material in said storage channel.
These arguments are still made today
Fighting over border pieces
assembly comprising of linear border pieces and right angle corner border pieces
o do not sell any right angle corners
BROWN says they dont need to cut the corners precisely
o Dont use the term corners
Right angle pre-formed pieces
o Other says no: you dont need pre-formed pieces to make a corner
Use claim construction and patent history
o Also use experts
o HERE: what supports pre-formed corner angle?
Claim and specification
o What is the evidence from the patent?
Majority (Lourie)
o Its just claim one
Right angle corner pieces
o Spec. only talks about pre-formed
o Language is clear
o Right- angle corner pieces sounds like pre-formed
Dissent (Rich he wrote a lot of patent law)
o Look at all claims
o Claim 9 was rejected
No explanation as to why it was not put in by the examiner
Rejected because not supported by claim 1?
o Too broad?
o Claim 1 was too broad to give insight into what the claim is
o The spec mentions corner pieces
** Professor agrees w/ Judge Rich!!
o The majoritys assumption as to why it was rejected is largely speculation
o You cannot ignore that the term is mentioned in the spec(ification)
You cannot change the spec!
This one sentence alone could save your patent
Unique Concepts v. Brown (Lourie, J) (Rich)
Claim construction doctrines to know about
1. Claim differentiation each dependent claim is presumed to encompass unique subject matter
2. Dont import limitations from the spec
3. Dont ignore a claim limitation in order to include elements of the spec
a. Must use spec to interpret the claim
b. This is tricky!!
4. The patentee can be his own lexicographer
a. He can define claims however he wants
5. Claims are interpreted from the perspective of a Person Having Ordinary Skill in the Art
(PHOSITA)
a. Lawyers come in here to resolve ambiguities
Define bald area in claim one
Smiths: (want broad): Reduction in hair reproduction
o Evidence:

Says partially bald twice

Purpose give appearance of full head of hair
Trump: area with permanent absence of hair
o Evidence:
Abstract partial baldness
Baldness is used to describe the absence of hair
Description clear difference between what is and is not bald
Drawings there is nothing in the bald areas
Evidence for and against both in this patent
Come up w/ best definitions and sources

The Economis of Patent Law/ ECONOMICS, TROLLS-class four- 9/2

Nard 31-38;
Time to fix patents (MyWCL)
Time to fix patents
stronger patent systems seem not to lead to more innovation
argumentthatthegovernmentshouldforcetheownersofintellectualpropertytoshareisespeciallystrong.Onereasonisthat
sharingideaswillnotcauseasmuchharmtothepropertyownerassharingphysicalpropertydoes.Twofarmerscannotharvestthesame
crops,butanimitatorcanreproduceanideawithoutdeprivingitsowneroftheorigina

l.Theotherreasonisthatsharingbringshuge
benefitstosociety.innovationtodayislessaboutentirelynovelbreakthroughs,andmoreabouttheclevercombinationandextension
ofexistingideas.regimeislikelytofallvictimtolobbyingandspecialpleading.Henceaclear,roughandreadypatentsystemis
betterthananelegantbutcomplexone.Ingovernmentasininvention,simplicityisastrength.Patentsshouldcomewithablunt
useitorloseitrule,sothattheyexpireiftheinventionisnotbroughttomarket.Patentsshouldalsobeeasiertochallengewithout
theexpenseofafullblowncourtcase.Theburdenofproofforoverturningapatentincourtshouldbelowered.
governments
shouldgraduallyreducethelengthofpatents.Evenpharmaceuticalfirmscouldlivewithshorterpatentsiftheregulatoryregime
allowedthemtobringtreatmentstomarketsoonerandforlessupfrontcost.

ECONOMICS, TROLLS
1. What are the main theories supporting the patent system?
a. Why have one at all?
2. Does the patent system overcome the publics goods problems for inventions?
a. What are public goods? What does it mean?
3. What are the societal costs associated with the patent system? Do they outweigh the benefits?
IP goal: promote innovation
o U.S. constitution art. 1 sec. 8 cl. 8 promote the progress of science and the useful arts
Patents propertize information
o Property- to internalize the externalities
We assign rights giving someone all the costs and benefits of their property
o Public good = information, lighthouse
Nonrivalrous- one person using it doesn't preclude anyone else form using it
Nonexcludable- once the info is out there you cannot charge for it or control who gets access to
it
Ie. Interstate
Problem= freeriders
They don't pay for what theyre using; get the benefit with no cost
Government combats this through
o taxes
o giving prizes for innovation
deadweight loss is caused by government intervention
the market has to demand what you invent
o no required supervision determining what is a good versus bad invention

Arrows information paradox - Conflict between desire to disclose information and

the need to limit use and access to those whom the inventor has authorized
Inventor choice: patent or trade secret?
o Key differences between patents and trade secrets\
duration
Scope
disclosure
trade secrets
o No distortion
o Act in a way of self-help (guards, secrecy, etc.)
You can get trade secrets for lots of things you cannot get a patent for
o Damages can only be sought from person you shared it with
Whereas with patents you have rights against the world
Who uses trade secrets?
o Companies love them!
Manufacturing processes are usually trade secrets
Methods of doing business
Have to share patents with the world
o Hard to find out who is infringing your patent
Theories of IP
o Natural rights John Locke
life, liberty, estate everybody is entitled to own all they create so long as it doesn't conflict
with the first two rights
janitor and chemist get it
o Utilitarian/ Consequentialist- Jeremy Bentham
The greatest happiness of the greatest number is the proper measure of the right and wrong
Janitor gets it
THE PATENT SYSTEM IS UTILITARIAN
We don't care how theyre made; just that they are made
o Was first to invent now its first to patent (post- AIA?)
o Who brings invention to the world first?
Patent theories
o Disclosure theory
Enablement and disclosure ???
o Invention theory
Internalization of externalities
Freeriders always win so no one will invent
Time spent inventing is lost money and the patent system offers them a form of
protection
WEAKNESS: this theory assumes people get patents only to protect from
freeriders
o Commercialization theory
Innovation versus invention
o ALL THEORIES do not really consider why people take patents and what people do with them
Do patents actually impede innovation?
Litigation damages are minimal compared to what the damaging effects on stock that can come from
expected value
o Apple-Samsung Damages- $1,050,000,000
Apple Stock 8/24-8/30, 2012

Market Cap Increase on 8/27: $11,000,000,000

o Samsung Stock 8/24-8/30, 2012
o Market Cap Decrease on 8/27: $12,000,000,000
Shark tank Episode 7, season 3 Sharktank: Guy w/ patent plans to make money with licensing
o Making money from suing companies for infringing on his patent
Whenever they sell something like that they pay him
Business are settling: looks good and valid
o How much are the agreements for?
Nuisance settlements or large lump sums?
o Licensing out the patent makes it less valuable
o Re-examination
Someone challenged it in court and patent office again sealed it with approval (known that it is
valuable)
o How do you value companies? 5-6x the value of sales

Societal Costs of Patents

1. Static Inefficiencies deadweight loss
2. Dynamic inefficiencies Impede others
3. Rent-seeking behavior
4. Administrative costs
5. Overinvestment in R&D

patent trolls
U.S. District Courts

Patent damages in CD Cal are very low! Because of low pharma?

Preliminary -- Filed After Jan 1, 2000 and Terminated Before July 30, 2009
District Court Claimant Wins on Trial & Judgment
CD Cal Avg: 2.6, median 4.0
ND Cal Avg 14.3, mean 7.5

DED 28.8, 8.1

ED Tex 90.8, 17.7
All districts 25.1, 2.5

II. Requirements for Patentability

35 U.S.C. 101
Patenting Biomedical Inventions- classes five (BIOMED)and six (Myriad)9/9
and 9/14
35 U.S.C. 101 (Nard 975);
Nard 165-188
35 U.S.C. 101 (Nard 975);
Nard 188-202;
Nard 212-214
BIOMED
1.How have courts interpreted composition of matter and manufacture in Section 101?
-Everything is patentable except:
-abstract ideas, physical phenomenon, laws of nature
2.What are the limits on patenting living organisms?
-Must be compositions of matter or manufactures; Should have markedly different
characteristics than nature
-Must be made by man
3.What do you have to do to protect a law of nature?
- Tie it to an application
- How specific you have to be is an open question

Monster cannot be patented

o Non statutory reading of statute
New law says- no claiming anything directed to a human organism
Bacteria can be patented/ same w/ genetically modified mice

1.
2.
Non-patentable categories
1.Laws of Nature
2.Physical Phenomenon
3.Abstract Ideas
You will have too much power if you patent really basic science
Patent= control for 20 years
New this has not been invented or existed before
o Used to negate abstract ideas

o Basic discoveries needed in science and art

Why dont we want to allow patents on these categories of discoveries? Does the exclusion have a statutory
basis?
Patentability: An overview
Sec. 101 Statutory Subject Matter; useful
Sec. 102 Novel
Novelty
Statutory bar
Priority
Sec. 103 Non-obvious
Sec. 112 Adequately disclosed and claimed
35 U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.
Ananda Chakrabarty PhD is a distinguished professor of microbiology and immunology at the University of
Illinois College of Medicine. His most notable creation is a biology-based solution for cleaning up toxic spills
using the generically engineered Pseudomonas (today classified as Burkholderia cepacia or B. cepacia).
Diamond v. Chakrabarty
Chakrabarty claims:
Process claims
Inoculum including a carrier (combination claim)
the bacteria themselves
Chakrabarty claims (pg. 129) : 1. A bacterium from the genus Pseudomonas containing therein at least two
stable energy-generating plasmids, each of said plasmids providing a separate hydrocarbon degradative
pathway.
Chakrabarty: Majority (Burger)
Chakrabartys discovery is not natures handiwork, but his own; accordingly it is patentable subject matter under
Sec. 101. -447 U.S. 303
Chakrabarty: Dissent (Brennan)
H.R. Rep No. 1923- A person may have invented a machine or a manufacture, which may include anything
under the sun made by man
But it is not necessarily patentable under section 101 unless the conditions of this title are fulfilled.
Funk Brothers (1948)- Funks ingenious discovery is merely the handiwork of nature.
[H]ardly more than an advance in the packaging of inoculants.
Mayo v. Prometheus (2012)
Plaintiffs- Prometheus Labs, Inc.
a. sole and exclusive licensee of the 623 and 302 patents
b. sells diagnostic kits that embody the process the patents describe.
Defendants- Mayo Clinic Rochester and Mayo Collaborative Services
a. bought and used tests from Prometheus.
b. in 2004 Mayo announced it intended to begin using and selling its own tests.

c. the Mayo test measured the same metabolites, but used higher
metabolite levels to determine toxicity.
6-Thiopurine Originally used in chemotherapy for leukemia. Now used in inflammatory bowel disease
and some autoimmune diseases. It is incompletely metabolized by the body.
claim:
a. 1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated
gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated
gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject having said immune-mediated
gastrointestinal disorder, wherein the level of 6-thioguanine less than about 230 pmol per
8.times.10.sup.8 red blood cells indicates a need to increase the amount of said drug
subsequently administered to said subject and wherein the level of 6-thioguanine greater than
about 400 pmol per 8.times.10.sup.8 red blood cells indicates a need to decrease the amount of
said drug subsequently administered to said subject.
2. The method of claim 1, wherein said immune-mediated gastrointestinal disorder is
inflammatory bowel disease (IBD).
3. The method of claim 2, wherein said subject having IBD is a pediatric subject.

Mayo v Prometheus (2012) (Breyer)

Justice Breyer uses precedent to decide the case
(Flook (rejected) and Diehr (accepted))
Suppose I discover that people with high cholesterol are 10x more likely to get colon cancer if they eat 3
ounces of chocolate per day. Which of the following is patent-eligible?
1. The correlation itself
2. Measuring cholesterol and informing patient of risk
3. Measuring cholesterol via a blood test and informing patient of risk
4. Measuring cholesterol via a blood test and placing the patient on a particular diet that is described
5. Nothing related to the correlation is patent-eligible
FINAL POINT- Getting past the 101 hurdle DOES NOT mean that you can obtain a patent. The other areas of the
patent statute (102, 103, 112) are much more likely to stop you from getting a patent than 101.

MYRIAD
Myriad Case
BRCA-1 Claim 1 of U.S. Pat. No. 5,747,282 (issued 1998)
35 An isolated DNA coding for a BRCA1 polypeptide, said polypeptide having the amino acid
sequence set forth in SEQ ID NO: 2.
Assoc. for Molecular Pathology v. Myriad Genetics (Thomas)
HYPO: Personalized Hygenics
Patent on genetic test for breast cancer patients that will provide a recurrence risk evaluation number.
What is the broadest patent available?
Ariosa Diagnostics v. Sequenom- 1. A method for detecting a paternally inherited nucleic acid of fetal
origin performed on a maternal serum or plasma sample from a pregnant female, which method
comprises amplifying a paternally inherited nucleic acid from the serum or plasma sample and detecting the
presence of a paternally inherited nucleic acid of fetal origin in the sample.
1.Patent for a hormone extracted from human tissue. (NOT VALID)
2. Patent for a new method of purifying the hormone. (VALID)
Used for women who have passed menopause and have not had a hysterectomy (surgery to remove uterus)

Harvard College v. Canada

European Article 57
No patents issued for
inventions the publication or exploitation of which would be contrary to ordre public or morality
PTO Commissioner-Bruce Lehman There will be no patents on monsters, at least not while Im commissioner
PTO: Congress did not intend 35 USC 101 to include the patenting of human beings.
AIA prohibits patents on a claim directed to or encompassing a human organism
Bowman v. Monsanto

Software/Methods- class seven- 9/16

35 U.S.C. 101 (Nard 975);
Supplement 11-32 (MyWCL)
SOFTWARE
1.What are the limitations on patenting methods?
2.What judicial tests exist for method patentability?
3.How is software patenting handled by courts and the PTO?
Limits on patenting methods
Judicial test for patentability= 2 steps
o Is this an abstract idea
o Have they done enough to make It patentable
THIS IS A BIG AREA OF LAW
Section 101- 35 U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of
this title.
Patentable matter
1. What are the limitations on patenting?
o Historical Background
i. 3 Supreme Court cases: 1972-1980 1 Federal Circuit case: 1998 Bilski Alice
Alice v. CLS Bank (Fed Cir. 2013): computerized method of reducing settlement risk by using third-party
escrow
7 opinions from 10 judges (135 pages)
o Fed. Circuit uses Mayo framework ineligible under 101
o No majority opinion BUT, not patent eligible most felt not patentable but couldn't agree on
why
(Thomas)- 9-0 opinion not patentable
o we need not labor to delimit the precise contours of the abstract ideas category in this case. It is
enough to recognize that there is no meaningful distinction between the concept of risk hedging
in Bilski and the concept of intermediated settlement at issue here./// if a patent's recitation
of a computer amounts to a mere instruction to implemen[t] an abstract idea on a
computer, that addition cannot impart patent eligibility.
Mayo Two-step
o Determine whether the claims at issue are directed to a patent-ineligible concept.
o Examine the elements of the claim to determine whether it contains an inventive concept
sufficient to transform the claimed abstract idea into a patent-eligible application.
Bilski: Majority (Kennedy)-

o Software Patents after Bilski- No categorical bans

o Tying software to a computer MAY meet the machine or transformation test
Mayo two-step test applied to all abstract ideas
o Step one: whether claims at issue are directed to a patent- ineligible concept
Bilski- hedging= fluctuation of the market
Software patents after Bilski
o No categorical bans
Tax method patents NOT PATENTABLE
Surgical method patents maybe (depends on tie to a machine; if robot surgery ore likely
to be yes)
Business method patent YES
Software patent YES (just dont claim an abstract idea)
o Step twoinventive step transforming the matter
Cases are from 70s when computers were new
Gottschalk v. Benson- data expressed digits converting decimals to binary
Patent would be on algorithm itself (pre-emption)
Parker v Fllok
Not inventive; only limiting how alarm is used
Mental process
Diamond v. Diehr (S Ct. 1980)
Equation not new but the temperature measurements were
o Thermocouple- as distinguishing aspect (inventive concept)
Process being done to rubber
Arrhenius Equation: ln V = CZ + x
o where V = cure time and Z = temperature
Method Hypo process of relaying a story
o Step 1 This is abstract idea- storytelling
o Step 2 essence would lead to preemption on other types of stories
Pre-empting something not new or unique?
Chakarbadi you can patent life
Alice, Mayo, Bilski, Miriam SCOTUS dials it back (no abstract ideas or laws of nature)
o It is unclear what these are

There has been an increase in the number of cases invalidating patents on subject-matter grounds since 2010

The Utility Requirement class eight- 9/21

35 U.S.C. 101 (Nard 975);
Nard 240-260
UTILITY
1.What are the three types of utility in patent law?

 chemical and gene industry

2. How do courts employ the various tests for utility?
tests used in different ways
3. In what industries does utility have a large impact?
LOOKING AT A NEW PATENT??
U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title.
Section 101 a patent has to be new and useful
o How much useful needs to be shown
How can this be proved
Two Trouble areas- operability and beneficial utility
o Operability- hard to prove it does not work right or does not work at all
Newman v. Quigg, 877 F.2d 1575 (Fed. Cir. 1989) (claims to a perpetual motion machine
ruled inoperable)
o Beneficial utility- not good for society (ie. Slot machines)
Courts not very comfortable making these distinctions
a "useful" invention is one "which may be applied to a beneficial use in society, in
contradistinction to an invention injurious to the morals, health, or good order of society, or
frivolous and insignificant"
Operability In re Schwartz
Claims to have invented: cold fusion (process of fusing hydrogens to form helium; suns power at room
temperature)
o USPTO says he didn't
They have the initial burden to prove someone would doubt its operability
o Patentee can
Key question: does the invention work? (Procedure):
1. Patent applications presumed to be operable
2.PTO must provide evidence showing that one of ordinary skill in the art would reasonably doubt the
asserted utility.
3. Only then does burden shift to applicant to demonstrate operability
Why not leave it to market?
Preventing future innovation / claim of right to future innovation
There is nothing of value in the patent (don't want junk patents)
If it obviously doesn't work no patent
Beneficial utility
Used to be important to prove invention works and does something good
o Gambling industry
may be applied to some beneficial use in society, in contradistinction to an invention, which is injurious to
the morals, the health, or the good order of society.
-Justice Story
Beneficial utility; juicy whip, inc.
o Judges dont get to decide what is good or bad for society
That decision is up to the laws
Chimeric embryo- rejected for utility
o Morality aspects of the utility requirement are no dead
Chimera Patent History
o PTO statement: inventions directed to human/non-human chimera could, under certain
circumstances, not be patentable becausethey would fail to meet the public policy and morality
aspects of the utility requirement

o PTO Commissioner: There will be no patents on monsters, at least not while Im commissioner.
o Weldon Amendment: None of the funds appropriated or otherwise made available under this Act
may be used to issue patents on claims directed to or encompassing a human organism.
Defense weapons- Secret department
Effects of rejecting a patent application
o Allows people to make it
o Using patent- can be a way of policing some things?
Weldon amendment- no claims encompassing a human organism
Third trouble area= Chemical, pharmaceutical and biotech-related inventions
Why? The nature of chemistry-related research
o Structures (molecules) and their uses . . .
Anything thats physical- you can find a use for
Chemicals are different- no use except as experimental
o Utility is really important in this area

Substantial utility Brenner v. Manson (Fortas)

But a patent is not a hunting license. It is not a reward for the search, but compensation for its
successful conclusion. "[A] patent system must be related to the world of commerce rather than to
the realm of philosophy. * * *"
Priority contest to prove he (1) created process and (2) established utility before the other guy who
patented first
He is claiming the process of making the chemical, not the chemical
o He has a process that makes a known chemical
If you make a known chemical you can patent the process - this is controversial
He argues it is useful b/c could have a tumor reducing effect based on similar compounds
Court says its ok b/c not detrimental to society
o Hes not even sure of what the compound will do
Cant prove it does anything but looks promising
This is not enough to get a patent!
DISSENT (Harlan) - A single potential use is enough
Once you claim a use and get a patnet it is not limited to that use
The patent would give him every possible use there must be a successful conclusion
Promising clinical results= enough to get a patent
o Promising experimental results are not enough
Impact on drug companies- more expensive to develop late-stage research
HYPO- Acme chemical creates and manufactures a new chemical. They do not know what their customers do
with the chemicals. Can they satisfy the substantial utility rqmt?
o 1.For the chemical?
o 2. For the process?
Brenner v. Manson (Harian)

 Expressed sequence tags- EST= short section of DNA for protein

In Re Fisher
Utility of EST- 7 uses in basic research
o Clear way to identify which genes are being expressed and which are not
Michel these are not useful
o These are not the only EST
There are multiple ones for the same gene
o Specific gene expressed is unknown
Functionality not known
Substantial (and Specific) Utility: In Re Fisher
o Substantial Utility: "an asserted use must show that the claimed invention has a significant and
presently available benefit to the public."
o Specific Utility: "an application must disclose a use which is not so vague as to be meaningless"
and "an asserted use must [] show that the claimed invention can be used to provide a well-defined
and particular benefit to the public."
Utility test= Brenner
o Substantial- Patent is not a hunting license
o Specific- well-defined benefit and not vague
ESTs dont do this- it is too early in the discovery process
o Different markers could be for the same gene
o Transaction costs are too high for the end product
Dissent (Rader) Research is incremental- if you can only patent the end product a lot of research will
be thrown out or not done b/c there is no patent reward
Cannot patent genes but you can patent CDNA; if you have utility for EST can you still
get a patent??
EST= more CDNA than a DNA
Short CDNA= more like DNA
CDNA= patenatable b/c it is different from DNA
if it is identical it is not patentable

types of utility
o operability
o beneficial utility
o substantial utility
o specific utility
Hypo: CCR5- nChemical inventions
I invent a new chemical used as a bleach.
o Patentable?
Bleach = patentable
Inventor B discovers that the chemical also cures AIDS in certain populations.
o Does my patent cover this use?
Cures aids- this gets a new patent
This inventor can have exclusive use to use the chemical in that way , but he needs
the first inventor to license rights to use the original bleach
o Makes it harder for some diseases to get into cell (AIDS immunity)
o Could trst to determine likeliness of AIDS
IN HYPO ASSUME DON'T KNOW PROTEIN OR GENE (JUST TAGS TO
NUCLETIDES)
o This is a step forward in a study but its reason is unknown unpatentable
There is information that could be known in the future from it but not currently
patentable; it must have a purpose
ANSWER: we can see gene but not the protein its coding what would claims be
about? CANNOT CLAIM WHAT IT MAKES (PROTEIN/ MOLECULE); you would
be claiming a portion of the gene (Suspct from cases)/ need utility to do this
Utility here: unknown;
COULD PATENT THIS IF FRAMED AS A TEST FOR SEPARATING THOSE
WHO COULD BE CONTAMINATED VERSUS NOT
You want to have a concrete result
BLOCKING PATENTS
Quick HYPOS: What type of utility is problematic?
1.A new method of freebasing cocaine
o - Beneficial utility. Probably wont pass (Chimera)
2.A new method of operating a brothel

- Beneficial utility. Probably patentable (Nevada)

3.A method for traveling back in time
o - Operability .(no patent)
5.Method for cooking chicken in a nuclear reactor
o - Substantial utility. Probably patentable
7.Isolated fragment of DNA, used as landfill
o - Specific/substantial utility. Unpatentable (vague)

Blocking patents ***UNDERSTAND THIS

o Chemical patent
o Using it as a therapy patent
o They can block eachother
Later patent is within the prior
Experimental w/ no research purpose= ore likely to get a patent
If you try to patent too soon you can be prevented from patentning at all
o Make sure it is eligible

35 U.S.C. 101 Inventions patentable.

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.

35 U.S.C. 112
Enablement- class nine- 9/28
35 U.S.C. 112(a) (Nard 976-77);
Nard 91-108 (notes 1-3);
Nard 116-124 (note 1)
ENABLEMENT
What is the function and purpose of the enablement requirement
How much precision is required in the specification to establish the claims?
How do we determine undue experimentation?
Enablement requirement
o How much work do you need to do?
o Is there undue experimentation?
o Subjective inquiry
Written description= objective
35 U.S.C. Sec. 112, Para. 1
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
35 usc section 112= three requirements
written description
different from an enablement
best mode requirement
best way of using patent
kind of eliminated
enable someone skilled in art of practicing invention ***this is today
disclosure must enable one of ordinary dikill to make invention eithout undue
experimentation (find it online as enable explananation)
Enablement Summary Disclosure must enable one of ordinary skill in the art to make
and use the claimed invention without undue experimentation.
The Telegraph Morse Telegraph Key (circa 1844)
o Morse makes new best standard
o Telegraph and civil war
Intercepting telephone lines
Telegraph and journalism
Most newsworthy info, important details and then general/ background info
o Wants anyway to use electro-current to spell words
o Eighth. I do not propose to limit myself to the specific machinery or parts of machinery
described in the foregoing specification and claims; the essence of my invention being the use
of the motive power of the electric or galvanic current, which I call electro-magnetism,
however developed for marking or printing intelligible characters, signs, or letters, at any distances,
being a new application of that power of which I claim to be the first inventor or discoverer.
OReilly v. Morse- You get what you invent and nothing more
Patent would give a monopoly

o Philosophical view of patent law (Taney)

Grier- more focused on novelty
o He should get portion of field he has helped to create
o Taney response- then no one could use invention without Morses permission
Morse invented smaller circle and wanted big circle rights
o Patent on elcetomagnt-used writing is too broad
Enablement Act
OReilly v. Morse (Taney)- to misunderstand the extent of this claim[If anyone develops a new
method of communicating via electricity] the inventor could not use it, nor the public have the benefit
of it without the permission of [Morse].; (Grier)- An improvement in a known art is as much the
subject of the patent as the art itself.
o Both voted for Dred Scott (Taney wrote it). Taney was Lincolns arch-rival, buried in Frederick,
MD. He was very influential and somewhat anti-patent.

o Incandescent Lamp Case

1. The combinationof an electric circuit and an incandescing conductor of carbonized fibrous material,
included in the forming part of said circuit, and a transparent, hermetically sealed chamber, in which the
conductor is enclosed
Impact of invention should not impact scope but it does
Edison- did not invent the light-bulb
o He improved the materials sued
Bamboo is better than carbonized paper
Used to last 16 hours for most expensive
Edisons lasted 2000 hours
Sawyer and Man had a lightbulb patent- with carbonized fibrous material
o Not successful because too expensive
Consolidated Electric Light Co. v. McKeesport Light Co. (Brown) (pg. .96) Brown wrote plessy v Ferguson
Brown patent covers too many materials they never tested or used
o Court clearly favors Edison
All that matters= patent and use of device; how the patent was used should not matter
o 2 things you can do
Describe properties of material you want to cover and what makes it good
for that use (even if cant test htem all talk about what generlallly makes tham all
useful and functional/ whats common to the entire genus )
Unique/ useful qualities for the purpose defined
Get enough working examples

Claim enough that it looks like you have looked at everything

o Don't have to cover them all but a significant portion
Brown- emphasizes Edisons work
Only lucky because he was successful
o The result matters; not the amount of work going into it
Automotive Technologies v. BMW- means +function
Claim: 1. A side impact crash sensor for a vehicle having front and rear wheels, said sensor comprising:
o (a) a housing;
o (b) a mass within said housing movable relative to said housing in response to
Means +
accelerations of said housing;
function
o (c) means responsive to the motion of said mass upon acceleration of said
housing in excess of a predetermined threshold value, for initiating an occupant
protection apparatus; and
(Lourie) - [O]NLY ONE SHORT PARAGRAPH AND ONE FIGURE RELATE TO AN
ELECTRONIC SENSOR. Importantly, that paragraph and figure do little more than provide an overview
of an electronic sensor without providing any details of how the electronic sensor operates. Figure 11 shows
a very general view of an electronic side impact sensor.
Automotive Technologies v. BMW (pg. 116)
o Technology: side sensors for side airbags
o Issue: tricky
o Breed has mechanical invention patent
o Means+ function claim
Claiming its function and any means of doing it
Mechanical vs. electronic
o Look at what is covered in the specification
What means are defined and explained
If not there, you don't get it
This is broad but you only get what you describe
Moves burden from claim to spec.
Looks like a placeholder
No details
They needed for electro
How it works, how its triggered
COME UP WITH FACTORS FOR UNDUE EXPERIMENTATION
Pg. 122 **know these
Look at predictability- the result was unpredictable
o Chemicals are unpredicatable when changed
o Predictable arts- mechanic, electric
It is RARE BUT THIS WAS STRUCK DOWN FOR ENABLEMENT EVEN
THOUGH ELECTRONIC
Factors in Undue Experimentation- pg. 122
1.Quantity of experimentation necessary
2.Amount of direction or guidance presented
3.Presence of absence of working examples
4.Nature of the invention
5.State of the prior art
6.Relative skill of the art
7.Predictability or unpredictability of the art
8.Breadth of the claims

ENABLEMENT: OVERVIEW
Enabling a single embodiment is not always sufficient to capture all possible embodiments
Enabling all embodiments within the claims is not necessary
Disclosure must be commensurate with the scope of the claims
HYPO: drug testing/ drug patent- Caucasian snowdrop
o Animal testing
o License it
o Then FDA approved
Janssen v. Tiva There is no hardship excuse for not enabling
Says it treats Alzheimers
Vague paperwork
Reasons why not enabled:
Ideas are not enough
Research proposal is not enough
Harm from granting patents too early
CLAIM: 1. A method of treating Alzheimer's disease and related dementias which comprises
administering to a patient suffering from such a disease a therapeutically effective amount of
galanthamine or a pharmaceutically-acceptable acid addition salt thereof.
Caucasian Snowdrop Galantamine, a tertiary alkaloid, has been isolated from the bulbs of the
Caucasian snowdrops Galanthus woronowi (Proskumina, N. F. and Yakoleva, A. P. 1952,
Alkaloids of Galanthus woronowi. II. Isolation of a new alkaloid. (In Russian.) Zh. Obschchei
Khim. (J. Gen. Chem.) 22, 1899 1902). It has also been isolated from the common snowdrop
Galanthus nivalis (Boit, 1954).

318 Patent Specification

Just over 1 page long . . .
6 Prior art references cited and discussed
2 Papers showed that galanthamine affected nervous system activity
4 papers on animal studies and galanthamine
Why is this invention not enabled?
Tossing out mere ideas not enough
Mere research proposals not enough
Harm from granting patents too early

Utility and Enablement- If a patent claim fails to meet the utility requirement
because it is not useful or operative, then it also fails to meet the how-to-use
aspect of the enablement requirement.
Cedarapids v. Nordberg -Using throw rather than force allows the pressure and gyrational
speed to create fairly uniform particles used in asphalting.
Telnit Techs. V. Jive Communications (EdTX, Sep. 24, 2015)
Method for initiating phone calls
Sued everyone w/ electronic phone calls
o Would it be patentable in its time
Subject-matter
ALLIS CASE- abstract idea is not patentable
o Putting something online is not enough
o Not a lot of doctrine
101 has a life of its own
o few steps are not enough
1. A method for initiating telephone calls on a voice network in response to requests from a data network
comprising the steps, performed by a processor, of:
receiving a data network request to initiate a telephone call, including a user telephone number;
identifying a stored telephone number corresponding to the request;
signaling a switch to make a call on the voice network to an instrument identified by the stored telephone
number;
monitoring a status of the call; and
providing a user with an indication of a change in the status of the call.
Taking an otherwise abstract idea and applying it to the Internet does not transform the claim
into patentable subjection matter. Remaining, then, are 'receiving a data network request' and 'monitoring
a status of the call,' which are tasks that human beings, such as telephone operators, have been doing for
the past century.
a lot of big companies settle but one challenged the patent in this case
understand 101- it comes up in everything
ENABLEMENT: Disclosure must enable one of ordinary skill in the art to make and use the
claimed invention without undue experimentation.
1.Claims requiring some experimentation are permitted
2.Level of specificity required in the specification differs between technologies
3.Enablement is an objective analysis
4.Specification must be commensurate with the scope of the claims
5.Examples of enabled/non-enabled inventions

Written Description- class ten- 9/30

35 U.S.C. 112(a) (Nard 976-77);
Nard 125-142
WRITTEN DESCRIPTION
1.What is the written description requirement?
2.Does the written description requirement differ from enablement? How? When?
3.What are the problems with claiming a genus?
35 U.S.C. Sec. 112, Para. 1
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.

written description as separate from manner and process making

o one or two requirements

Gentry Gallery, Inv. V. Berkline Corp. (L-shaped sectional)

A sectional sofa comprising:
o
a pair of reclining seats
o
a fixed console(with armrests)
o
a pair of control meansmounted
on the sofa
(Lourie)- [A] claim need not be limited to a preferred embodiment. However, in a given case, the
scope of the right to exclude may be limited by a narrow disclosure
Gentry had controllers in console for chairs
Filed claim
o Then amended claim to capture more
Can only alter the claims
Lourie spec. says it has to be located on the console
o Court is limiting claims to what the spec. said
Disclosure- what you disclosed to the public was not what you claimed so the court can
limit you to what you claimed
Claim is embodied
Essential elements test
Claim 1 falls outside of what is described and is therefore invalid
They should not have limited themselves to the console
FAILS IF WRITTEN CLAIMS- ON PATENTS AMENDED
ALWAYS PUT IN A CATCH-ALL TO ENSURE WRITTEN DESCRIPTION REQUIREMENT

Filing a CIPA (Continuation in part)- a new application and a new date

o New claims have new date unless linked to original description
o A continuation in part lets you keep your priotity from the date but the description can change
o You can file a new specification but claims relying on that have the new filing date
o If you do not change the spec. you get to keep the original day (date of filing)
PATENT PENDING- THE SPEC. IS MORE IMPORTANT THAN THE CLAIMS
o When there are issues- worry about the claim

o Once the patent issues you are set; you cannot claim something more
During prosecution you can (usually takes years)
Cannot enforce patent until it issues

Ariad v. Eli Lilly (2010)- Keyword: comprising

o Ariad gets a patent for the science
Then a drug comes out and he gets a patent
o En Banc- Lourie why we have written description requirement
Disclosure is not enough here
Does not say what does this specifically
o 3 general classes of molecules
o not enough on the characteristics of the genus
he wants to see possession description
written decxritpion= objective test
o Patent 6,410,516 1. A method for inhibiting expression, in a eukaryotic cell, of a gene whose
transcription is regulated by NF-KB, the method comprising reducing NF-KB activity in the
cell such that expression of said gene is inhibited.
Univ. of Calif. v. Eli Lilly (1997)- if theres enough and common structural features
o a sufficient description of genus requires[:] the disclosure of either a representative
number of species falling within the scope of the genus OR structural features common to the
members of the genus so that one of skill in the art can visualize or recognize the members of
the genus.

Disclose sufficient numbers OR Disclose common structural features

university of Rochester v. Searle - enablement vs. written description you can do

something but you must possess it
this was too early in the research process
Patent in suit, owned by University of Rochester, was for a method of treating inflammation using
inhibitors of prostaglandin H synthase-2 (PGHS-2) enzyme activity, also known as COX-2
Dr Donald Young, Dr Virginia Winn, and Dr Kerry O'Banion (U. Rochester)
Cyclo-oxygenase Enzyme (COX)
o cox 2 inhibitors
high-throughput screening
Traditional Painkillers: block Cox enzyme from producing prostaglandins antagonist
Rochester discovery: selective Cox 1 inhibition selective antagonist
Cox 1 is responsible for stomach lining; aspirin upsets stomach because in addition to blocking pain, it
cant repair the lining of the stomach leading to ulcers.
Cox-2 Inhibitors/ Celebrex/ COX-2 Inhibitors: $13 billion mkt!

Claim 1: 850 Patent

1. A method for selectively inhibiting PGHS-2 activity in a human host, comprising administering a non-steroidal
compound that selectively inhibits activity of the PGHS-2 gene product to a human host in need of such
treatment.
850 Patent Spec
The present invention provides a simple in vitro system for the screening of drug actions on both the constitutive
and the inflammatory cyclooxygenase, which will be useful for the development of drugs that selectively
inhibit inflammation without producing the side effects due to inhibition of constitutive prostaglandin
production.

Bottom line: holding Without such disclosure [of specific peptides to selectively inhibit Cox 2] the
claimed methods cannot be said to have been described.
In University of Rochester the court held that the description of the COX-2 enzyme did not also serve to
describe all unknown compounds capable of inhibiting the enzyme. Precedent in evolving science is attuned
to the state of the science, but remains bound by the requirement of showing that the inventor actually
invented the invention claimed.
CELEBreX- enablement/written description
Cox1- new method for testing ability to impact chemical in gene- no examples provided
Cox2- inhibiting formation from inhibiting a compound- not specified
no specified compound in both do they meet enablement and written description requirement?
o Enablement- Must enable ordinary skilled- enough info to practice invention?
o Description- give notice you are in possession

Application 1 probably goes through- tests any compound you put in it

o You could show it works w/o compound
Method tells you if inhibiting
o Method+ chemical= unknown compound inhibit
Application 2- probably doesn't pass
o Need compound for this to show that it works (theoretical)
o Method+ unknown compound= unknown compound inhibit
Enablement/Written Description: Review
o Patent App 1: New method for testing chemicals ability to inhibit COX-2 but not COX-1 (no
compounds identified) (THIS ONE IS GOOD)
o Patent App 2: New method for inhibiting COX-2 formation in humans by administering a
compound (no compounds identified) (THIS ONE IS BAD)

Definiteness- class- eleven 10/05

35 U.S.C. 112(b) (Nard 977);
Supplement 1-11 (MyWCL)
DEFINITENESS
1.What is the role of the definiteness requirement?
2.What standards determine definiteness (or the lack thereof)?
3.What is the status of definiteness law post-Nautilus?
o Definiteness post- Nautilus- can use words of degree (careful w/ aesthetically pleasing, doesn't
distract very subjective)
Scientific is harder/ if use scientific term not as defined in spec. or field youre in
trouble
Breaking News in Canadian Patent Trolling- Canadian patent trolling the internet and
everything on it
Patent #6195662

o System for transforming and exchanging data between distributed heterogeneous computer
systems
o A distribution system for transforming and exchanging data between heterogeneous computer
systems, comprising:
a) a systems interface for defining logical import and export data interfaces, data
transformation rule sets and scripts;
b) a metadata database for storing said logical import and export data interfaces, data
transformation rule sets and scripts;
c) a script processor for utilizing metadata from the metadata database to control data
transformation within said systems interface and movement of said data into and out of
said distribution system; (INDEFINITE)
Juxtacomm went bankrupt and sold patent to Teilhard technologies
o Teillhard Technologies, IBM, Microsoft, Akin Gump, Cognos, redhat, british airways
o Appraised at 112 billion
Validity of claim + who they can sue
o Declared invalid b/c indefinite we cant tell what the patent covers/ scope of patent right is
unknown therefore invalid
Usc 35 sec 112 para. 2 distinct claim pointing out what youre doing
o How distinct do you need to be?
o U.S.C. 35 Sec. 112, Para. 2 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.
Nautilus v. Biosig (2014) heart monitor mounted in spaced relationship
o mounted . . . in spaced relationship with each other
o Greater than the width of each electrod w/o saying width= indefinite
o Insolubly ambiguous standard- not too ambiguous to be defined = definite
o NEED REASONABLE CERTAINTY OF SCOPE OF INVENTION
o SCOTUS created new standard and remanded it to see how it was applied
HAS NO IMPACT ON FEDERAL CIRCUIT
SCOTUS worried about impact on industries
Insolubly ambiguous standard is lower than reasonable certainty but not by much
REASONABLE CERTAINTY= NEW STANDARD

Young v. Lumenis (2007) surgical procedure on a cat (declawing cats)

Holding not rendered indefinite by use of term near, since near, as used in claims, is not
insolubly ambiguous and does not depart from its ordinary and customary meaning of close to or
at edge of. (THIS IS GOOD)
term describes location on animal, and size of appendage and amount of skin required to be incised
will vary from one animal to another based on size.
o Says near the edge but not how near is this definite enough? YES because near is not
insolubly ambiguous; doesn't depart from ordinary meaning
o Location of animal is relative depending on animal but person skilled in art would be assumed
reasonably certain in making determination

Orthokinetiics v. Safety Travel Chair- so dimensioned holding- phrase is as accurate as

the subject matter permits
wherein said front leg portion is so dimensioned as to be insertable through the space between the
doorframe of an automobile and one of the seats thereof
Orthokinetics holding The phrase so dimensioned is as accurate as the subject matter permits,
automobiles being of various sizes. As long as those of ordinary skill in the art realized that the
dimensions could be easily obtained, 112, 2d requires nothing more. The patent law does not
require that all possible lengths corresponding to the spaces in hundreds of different automobiles be
listed in the patent, let alone that they be listed in the claims.
TERMS OF DEGREE: permissible- these are ok when an ambiguity makes it hard to be
precise
about
approximately
near
around
substantially
similar to
Datamize v. Plumtree Software (2005)- ..a desired uniform and aesthetically pleasing look
and feel for said interface screens (THIS IS BAD)
using terms not known in art= shady; terms known in the art= usually ok
patent for an electronic kiosk
o personalizable kiosk
uniform and aesthetically pleasing look and feel for said interace screens = too
indefinite and subjective
interval licensing v. AOL (2014)
o Displays images in an unobstrusive manner that does not distract the user.
o HELD: Invalid. highly subjective language depends on the preferences of the particular
user.
o unobstrusive manner that does not distract the user
o standard: reasonable certainty
INDEFINITE highly subjective
depends on the preferences of the particular user
THESE CASES ARE OFTEN SOFTWARE CASES
DEFINITENESS IN REAL PROPERTY
a surveyor tells you limits of land, as well defined by deed
o people don't want to buy if they don't know what theyre getting exactly
DEFINITENESS IN PATENT
find who has patent
o will they sell it?
o what exactly do they own?
Problems with patents
o Write your own deeds- make them vague to capture more
o Scope changes as new rights come about (its constant in property)
o Language less clear in defining intellectual assets
Star scientific v. RJ Reynolds (2008)
Growing tobacco indoors heat and labor intensive
anaerobic conditions (THIS IS GOOD) means no oxygen
o claim said- limited amount of air
court says this is alright- patent says what is sufficient air

o you can tell after you infringe even if you cannot tell before
you can change definition of well known terms- so long as you define term; you do not need to inform
person if they are infringing or not

HYPO:
The process for hydrolyzing a nitrile . . . comprising contacting said nitrile with water . . . in the presence of
copper ion, said copper ion being at least partially soluble in water, the nitrile or in both water and nitrile
and said copper ion being composed of copper in a combined valence state of Cu + Cu+, Cu + Cu++, or
Cu + Cu+ + Cu++
HYPO:
o No standard definition of partially soluble in (1) the spec, or (2) the art, the relevant field
o Slightly soluble is defined in the art; but not specifically related to the phrase partially
soluble
o Held indefinite no generally acceptable meaning
o (THIS IS NOT GOOD)
partially soluble- no standard definition in the relevant field
slightly soluble= defined
o not specifically related to partially soluble
o held indefinite- no generally acceptable meaning
UNCLEAR INDICATION OF AMOUNT
DEFINITENESS IS NOT ENABLEMENT- this about knowing the bounds of the invention
MEETING ENABLEMENT MAY NOT BE ENOUGH TO MEET DEFINITENESS
Stays- big weapon in patent law- we wont discuss
Haliburton v. M-I (2008)
o A fragile gel
Used for fracking
Gel easily disrupted or thinned
o Invalid- degree of improved speed= ambiguous
No threshold provided
Viscous- thickness or flow of liquid
Jello more/water less
o 1. A method for conducting a drilling operation in a subterranean formation using a fragile
gel drilling fluid comprising:
(a) an invert emulsion base;
(b) one or more thinners;
(c) one or more emulsifiers; and
(d) one or more weighting agents, wherein said operation includes running casing in a
borehole.
o Spec: A fragile gel as used herein is a gel that is easily disrupted or thinned, and that
liquifies or becomes less gel-like and more liquid-like under stress, such as caused by moving the
fluid, but which quickly returns to a gel when the movement or other stress is alleviated or removed,
such as when circulation of the fluid is stopped, as for example when drilling is stopped.
o Haliburton: Holding The fluids of the 832 invention may provide less resistance to shear
(i.e., break more quickly) than the prior art fluids, but the degree of improved speed remains
ambiguous. Thus, it is unclear whether a person of ordinary skill in the art would have
interpreted this claim as having an upper bound of fragility. (THIS IS NOT GOOD)
o Haliburton- fragile gel = not definite (it was defined in spec. but definition wasn't certain
enough to use for classification)
You cannot patent something that you cannot describe

LAST QUESTION: Why permit M+F?- 35 U.S.C. 112

35 U.S.C. 112- An element in a claim for a combination may be expressed as a means or step for performing
a specified function without the recital of structure, material, or acts in support thereof, and such claim shall
be construed to cover the corresponding structure, material, or acts described in the specification and
equivalents thereof
Means + Function Claiming
1. A gaming machine having display means arranged to display a plurality of symbols in a display
format having an array of n rows and m columns of symbol positions, game control means arranged to
control images . . . .
Limited to the disclosed structure
Need to disclose more than just computer; perhaps algorithm; code; etc.

35 U.S.C. 102
Introduction to Novelty-/ NOVELTY INTRO AIA- class twelve- 10/07
35 U.S.C. 102(a) (Pre-AIA); 35 U.S.C. 102(a)(1) (Nard 975)
Nard 265-285
NOVELTY INTRO AIA
Novelty: 3 Questions
Quality: how similar does a prior art reference have to be to anticipate a patent? (Atlas)
Timing Issues: What is in, and out, of the prior art?
Identity: What types of things are references?
This class novelty = is this the first invention?
1.What are the basic rules for determining novelty?
2.What is meant by known or used?
3.How have the rules for prior art changed under the American Invents Act?
BASIC RULES OF NOVELTY- determining whether something is new
Basic rules to determine novelty/ whats prior art?
o March 2013 affects which act
PATENTABILITY
o Sec. 101- statutory subject matter
o Sec. 102- novel
Novelty- are you 1st to invent
3 questions:
o quality (novelty question w/ utility analysis) - similar enough to anticipate
o timing issue- what is the prior art
o identity- what types of things are reference
Priority- if 2 invent at about same time how do we determine date of invention
Statutory bar- youre 1st inventor but you did something that prevents u from patenting
Took too long
Sold it on the market early
o Sec. 103 non-obvious
o Sec. 112- enablement, written description and definiteness
KNoWN OR USED- MEANING IN STATUTE
RULES CHANGED BY AMERICAN INVENTS ACT

SEE SECTION 102:

o Novelty- a, e, g
Date of invention
o Statutory b, c, d
Date of filing
DATE OF INVENTION COMES BEFORE DATE OF FILING
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless
(a) the invention was known or used by others in this country, or patented or described in a printed
publication in this or a foreign country, before the invention thereof by the applicant for patent, or
(b) 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 United States,
or
(c) he has abandoned the invention, or
(d) [One-year patent bar]
(e) [Third-party patents]
(f) he did not himself invent the subject matter sought to be patented, or
(g) [Interference proceedings]
35 USC 102 (a) old act didn't not include certain uses in other countries
o (part (a))- you could patent foreign patents without exclusion
o part b/c? - have to use it in a year????
New one with Obama New American Invents Act
o When you file it is effective; geographic limits removed (other countries included)
o Known or used by others replaced w/ otherwise available to the public
35 U.S.C. 102(a) NOVELTY; PRIOR ART.A person shall be entitled to a patent unless
o (1) the claimed invention was patented, described in a printed publication, or in public use, on sale,
or otherwise available to the public before the effective filing date of the claimed invention; or
o (2) the claimed invention was described in a patent issued [to another] or in [anothers] application
for patent published [that] was effectively filed before the effective filing date of the claimed
invention.
Atlas Powder v. IRECO
o Judge Rader
o Types of prior art
o Inherent features
o Physical things, printed publications, old patents, use or knowledge
o Ammonium nitrate they have different ranges but most of his encompass the original guy
o If within someones range they knock you out
Range issue- if someone has a zebra and u wanted all mammals their patent takes out your
whole patent
o Inherency issue whats inherent in application? Is it enough?
One guy claimed air and its not required by the other guys
Prior art already referenced it and its inherent

Just because you don't know and don't claim it, its enough; discovering a new principle
that existed before is not enough
o Had not stated air as a requirement; others used the air inherently
TYPES OF PRIOR ART
o Physical things
o Printed publications
o Old patents
o Use or knowledge
Used less/ less useful
o Inherent features
Unclear
General principles of novelty
o All limitation test
To anticipate, the prior art must meet every limitation of the claimed invention, either
explicitly or inherently.
o Four corners doctrine
To anticipate, all of the claimed elements must appear in a single prior art reference.
o Enablement
To anticipate, the prior art must enable one of ordinary skill to make and use the invention
(can practice w/o undue experimentation)
Anticipation HYPO
1.An aircraft that travels faster than light
2.An aircraft of claim 1, wherein the engine is fueled by alcohol and mouthwash
Claim 2- we dont know about fuel
Claim 1- does not meet enablement b/c doesn't teach how to do it
o Must enable prior art and the invention to qualify at prior art
Not a prior art reference
Novelty- what anticipates
A slicing device for cheese and the like, comprising:
A base providing a flat cutting surface with a passageway for a cutting element;
a bar having a general U-shape;
A cutting element;
and a rotating handle
Prior art has to have everything you have to knock you out
o Jones- no handle (he wouldn't infringe if he invented it later)
o Smith- has a handle but does not rotate
o Article- no mention of passage in cutting board
Maybe could win for obviousness

GOOD< BAD< BAD

Novelty = Pre AIA

Important dates
o before invention date
102 a, e, g, f
o 1 year prior to filing date everything before this date = statutory bars
102 b, c, d
o filing date
if you can demonstrate you invented it first you are fine // you can take reasonable period to file it
don't get what comes before your invention
invention date 6 months before filing and prior art= 7 months
o cannot get it b/c invented after patent made
AIA need to know when filed and which came before
NOVELTY AIA- FIRST TO FILE GETS THE PATENT NOW (NOT BASED ON INVENTION DATE)
Now there is more favor for corporations
MARCH 2013 = KEY DATE
o FILED BEFORE THEN = OLD ACT
o FILED AFTER= NEW ACT
TYPE UP SLIDE ON PRE AND POST AIA ANTICIPATION before and after march 16

Pre- AIA: References under 102(a)

Statute says that applicant is not entitled to a patent if:
a) the invention was
known or used by others in this country, [domestic]

or patented or described in a printed publication in this or a foreign country, [global inquiry]

before the invention thereof by the applicant for patent, or
Gayler v Wilder (1850)- invention being made before isnt enough to knock you out; no
public use of first
Nobodoy knew how to build it or used it
KNOWN OR USED REQUIREMENT HAS A PUBLICITY ELEMENT (102(A))
o PRIVATE USE WAS NOT ENOUGH
JUSTICE TANEY- KNOWN OR USED HAS A PUBLICITY REQUIREMENT
Hypo: Natl Tractor Pullers Assn v Watkins
1963-64: Huls, Harms and Sage claim to have drawn the invention at issue on the back of a tablecloth in Huls
mothers kitchen.
Sometime later: Watkins invents and patents.
1977: Huls tries to recreate tablecloth drawing from memory.
National Tractor Pullers v. Watkins - FALSE
The court holds that
Prior knowledge as set forth in 35 U.S.C. 102(a) must be prior public knowledge, that is knowledge which
is reasonably accessible to the public.
Why? The statute says only that it must be known by others.

Rosaire v. Baroid Sales Division

method is used and known by employees/ seems private
o doesn't matter if abandoned or unsuccessful; known or used publically= unavailable
o key here: used it in typical line of business and had no attempt to exclude the public
could have been seen by someone= public use
bar for publically available is very low (KNOWN AND USED)
o must be obtainable to know about it
used in public and not kept secret
trade secret as prior arto risk exists to lose it to person who patents secret later
Blocking Patents and Novelty/ Novelty: Incandescent Lamp Case
The combinationof an electric circuit and an incandescing conductor of carbonized fibrous material,
included in the forming part of said circuit, and a transparent, hermetically sealed chamber, in which the
conductor is enclosed.
o conductor of carbonized bamboo THIS IS GOOD
o carbonized fibrous materials THIS IS BAD
novelty review- smuckers uncrustables

what does crimped mean? same as smashed?

If theres no crust it cannot be removed
Claim construction knocked it out
Nothing meets all of the elements of the claim so they don't knock it out as prior art
Patent No. 6,004,596.
o 1. A sealed crustless sandwich, comprising:
o a first bread layer having a first perimeter surface coplanar to a contact surface;
o at least one filling of an edible food juxtaposed to said contact surface;
o a second bread layer juxtaposed to said at least one filling opposite of said first bread layer,
wherein said second bread layer includes a second perimeter surface similar to said first perimeter
surface;
o a crimped edge directly between said first perimeter surface and said second perimeter surface for
sealing said at least one filling between said first bread layer and said second bread layer;
o wherein a crust portion of said first bread layer and said second bread layer has been removed.
COMPARED TO
o My lunch from 9th grade which I photographed. I cut the edges off the sandwich and smashed the
bread so that it sealed on the sides.
o Pizza joint in Indianapolis that had a two-week promotion for breaded ravioli.
How would you prove anticipation?
Patentability: AN overview
o Sec. 101 Statutory Subject Matter; useful
o Sec. 102 Novel
Novelty
Priority
Statutory bar
o Sec. 103 Non-obvious
o Sec. 112 Adequately disclosed and claimed

Anticipation
Swing side to side- no one can prove prior art
Food and activities hard to knock out b/c not a record of them
critical date- invention date
everything before= prior art
invention date is not the filing date
o new act= filing date
o old act= invention date
AIA: Effective Mar 16, 2013
102(a) NOVELTY; PRIOR ART.
A person shall be entitled to a patent unless
o the claimed invention was patented, described in a printed publication, or in public use, on sale,
or otherwise available to the public before the effective filing date of the claimed invention; or

o the claimed invention was described in a patent issued [to another] or in [anothers] application
for patent published [that] was effectively filed before the effective filing date of the claimed
invention.
Five categories of prior art in 102(a)(1) and a sixth category in 102(a)(2).
AIA: Prior Art
Now lets examine the 5 categories of prior art in section 102(a)(1):
Patents
Printed publications
Public uses
On sale material
Otherwise available to the public
Questions: Whats new? Whats old?
Whats new in these five categories of prior art?
Answer:
Timing (of course) art is now prior if it is before the effective filing date, not the invention date
(consistent w/ first-to-file philosophy).
End of Geographic Restrictions all categories are global, including public use and on sale.
Addition of otherwise available to the public similar to old known by others.
Whats old in these five categories of prior art?
Answer:
Much is old.
E.g., old printed publication cases still apply, though the addition of otherwise available to the
public category might make some cases easier.

Reduction to practice (Two types):

Constructive patent application filed that meets the requirements of Section 112
Actual date that invention works for an intended purpose (no prototype needed)
NOTE: Actual reduction to practice usually occurs before constructive

Novelty Defeating Disclosures- class thirteen- 10/12

35 U.S.C. 102(a),(b),(e) (Pre-AIA);
Nard 286-299;
Nard 310-318
NOVELTY II
TODAYS CLASS- Secret prior art edition
o What constitutes a printed publication for purposes of Section 102?
printed publication in section 102
speech w/ no slides is not
speech w/ slides distributed/ a few copies= enough
o What sorts of secret inventive activity counts as prior art?
patent that issues or publishes (go back to date filed)
ALL 102 DOES= IS IT PRIOR ART OR NOT?
102a- printed publication/ prior use

o How has the America Invents Act changed the novelty inquiry?
102 a, e, g
102 (a and b)
patented or described in a printed publication in this or a foreign country
something patented anywhere before you is prior art
Patent Reform: America Invents Act
AIA: Prior Art
102(a) NOVELTY; PRIOR ART
AIA: Exceptions/Grace Period
AIA HYPOS

102. Novelty and loss of right to patent

o A person shall be entitled to a patent unless
o (a) the invention was known or used by others in this country, or patented or described in a printed
publication in this or a foreign country, before the invention thereof by the applicant for patent, or
o (b) 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 United States, or . . . .
In re Klopfenstein- Judge Prost dissemination and public accessibility are the keys to the
legal determination whether a prior art reference was published
On appeal, Appellants argued that precedent required (1) distribution of copies or (2) indexing in a library
or database for a reference to constitute a printed publication. The Federal Circuit rejected this assertion,
noting that the key inquiry is whether a reference has been made publicly accessible. To make this
assessment, the Court analyzed (1) the length of time Appellants displayed the presentation, (2) the
expertise of the target audience, (3) the lack of reasonable expectation that the audience would not
copy the displayed material, and (4) the relative ease of copying the displayed material. The Court
stressed that Appellants displayed their presentation for three days to an audience including cereal chemists
and took no measures to protect the information it contained. Moreover, the slides contained easily
understood bullet points, which a person of skill in the art could easily copy or remember. Given these
factors, the Court affirmed the Boards decision.
double extrusion (extra processing of foods)
posterboard with all relevant info at conference
did not attempt to make anything secret
did not print copies or distribute them
THIS WAS A PRINTED PUBLICATION

in re cronyn- accessibility and availability to the public

in re hall- if its indexed it counts towards printed publication
printed publication relevant factors:
length of time the display was exhibited
the expertise of the target audience
reasonable expectations the matieral displayed wont be copied
simplicity or ease the material displayed could be copied
INDEXING MUST BE IN A MEANINGFUL WAY- MUST BE SEARCHABLE
LECTURE WITHOUT A PRESENTATION IS NOT PRINTED NOT PRIOR ART
lecture with slides go to factors
printed publications- anywhere in the world regardless of date
o same before and after
o disemmination and public accessibility = keys to wether prior art reference was published
Alexander Milburn Co. v. Davis-Bournonville Co. (Citation. 270 U.S. 390 (1926))- NO
PATENT IF YOU DIDN'T DO IT FIRST
whitford not first and claims something different
o you didn't invent it Clifford did
if you don't invent first youre out of luck; even if he looked and didnt find it
prior inventor
o anticipated
o priority
applies if same invention is being claimed
102(E)(1)- MUST BE PUBLISHED PATENT APPLICATIONS
102(E)(2)
o GRANTED (ISSUES: DATE IS PRIOR ART) (GRANTED BUT NOT PUBLISHED)
o PRIOR ART FROM THE DATE IT WAS FILED IF ITS PUBLISHED OR ISSUED
PATENT CAN PUBLISH AFTER FILING BEFORE ISSUING OF PATENT (18 MONTHS)
Brief Fact Summary. Milburn (Plaintiff) charged Davis (Defendant) with patent infringement and
Defendant defended the charge by claiming that the application for patent filed by Plaintiff"s assignor
followed Clifford"s patent application that disclosed the invention but did not result in a patent until
after Plaintiff"s assignor applied.
Synopsis of Rule of Law. For the purposes of anticipating a later invention, a United States patent
disclosing an invention dates from the date of filing of the application.
Facts. Plaintiff had been assigned the Whitford patent and claimed that Defendant infringed upon it. As a
defense, Defendant claimed that Clifford had filed a patent application which disclosed the invention prior
to the date when Whitford filed his patent application, although the patent was not issued to Clifford until
after Whitford filed his application. It therefore argued that Whitford was not the first inventor of the thing
patented. The district court ruled in favor of the Plaintiff and found the Whitford patent valid. The court of
appeals affirmed. Both courts considered the effective date of the Clifford patent to be the date it was
granted, which followed the Whitford application date. Therefore, it would not be available as a reference
to bar a patent being issued to Whitford. Defendant appealed.
Issue. For the purposes of anticipating a later invention, does a United States patent disclosing an
invention date from the date of the filing of the patent application?
Held. (Holmes, J.) Yes. For the purposes of anticipating a later invention, THE EFFECTIVE DATE OF
A UNITED STATES PATENT IS CONSIDERED TO BE THE DATE WHEN THE PATENT
APPLICATION WAS FILED. If an invention is disclosed by a patent where the application and patent
grant both took place before a patent application followed covering the same invention, the second patent
would clearly be barred. The delays of the Patent Office should not cause a different result when the first
patent is not actually granted until after the second patent application is filed. The second patent should be

barred in both cases because the second one to apply was not the first inventor. The first applicant has done
everything he could to make the description public. The Patent Office now needs to do its work. Under the
rule already mentioned, the Clifford application served as a bar to a patent being issued to Whitford on the
same invention. Reversed.
Discussion. THE MILBURN RULE HAS BEEN CRITICIZED FOR USING INFORMATION AS PRIOR
KNOWLEDGE WHICH WAS SECRET AT THE TIME IT WAS USED, THAT IS, PATENT
APPLICATIONS WITH SECRET CONTENT. EVEN SO, IT HAS BEEN CODIFIED IN 102(E) OF
THE 1952 PATENT ACT

Alexander Milburn v. Davis Bournonville- Justice Holmes- Oliver Wendell Holmes, Jr. (18411932)
Justice Holmes Reasoning:
o EMPHASIS ON WHO WAS PRIOR INVENTOR
o Is Whitfords patent anticipated by Clifford reference?
2.Who has priority
o ONLY RELEVANT IF WHITFORD AND CLIFFORD BOTH CLAIM THE SAME
INVENTION
The delays of the patent office ought not to cut down the effect of what has been done.
novelty:102 (e) hypo
o no patent for Anderson if Jones publishes before his applicatino
o FILING DATE OF PUBLICATION= DATE OF PRIOR ART
o if earlier filed patent is issued tha later filed one is invalid
CANNOT GET PATENT FOR SOMETHING YOU DESCRIBE BUT DON'T CLAIM
ONCE PATENT ISSUES IT KNOCKS OUT OTHER
Codified in Section 102(e)(2):
No patent if
o (e) Invention was DESCRIBED [but NOT claimed] in . . .
o A [published] application for patent by another filed in the US before the [date of]invention
o a patent granted on an application for patent by another filed in the US before the [date of]
invention, except that an international application[shall be treated as a U.S. application]
only if the international application designated the US and was published in the English
language
Why would anyone disclose but not claim an invention?
Unclaimed matter is in an unrelated field
Interested only in one application
Oversight

Thomson v. Quixote - Justice Rich- Corroboration is required only when the testifying
inventor is in a position to directly and substantially gain
Can be prior art if do not actively try to keep it secret
102 g 2 no publicity requirement
o something that would fail 102a could pass here
o 102g- must consistently use it
CONCEALMENT- if youre doing something and using it openly but in secret that is
enough for 102(g) (2)
abandon, suppress or conceal
o must demonstrate it to the public in some form
making something to sell but cant see the process- can be 102g2 prior art

TRIPs compliance?
27(1): ..patents shall be available and patent rights enjoyable without discrimination as to place of invention.

4: With regard to the protection of intellectual property, an advantage, favour, privelege or immunity granted by
a Member to the nationsl of any other country shall be accorded immediately and unconditionally to the nationals
of all other Members.

Priority- class fourteen- 10/14

35 U.S.C. 102 (g)(1) (Pre-AIA); 35 U.S.C. 102 (b) (Nard 975-76)
Nard 323-344
PRIORITY
1.How do we determine the critical date of an invention?
o Old act- usually before the date you file (1-7 years)
o Generally we give to person who reduces to practice first
Unless you conceived first and were diligent (must have evidence of this)
Need diligence before the other person conceived
2.How is priority determined under 102(g)(1)?
3.What are the new rules for priority under the America Invents Act?
o critical date of an invention
PRIORITY= 2 PEOPLE SAME CLAIM (SAME INVENTION) MADE ABOUT THE SAME TIME
AIA- prior art
Patented, printed, public use, on sale, otherwise available to the public
o Essentially the same except gets rid of geographic restrictions
o WIPO has some; much harder to monitor
102(e)- date it publishes or issues???
AIA exceptions/ grace perios
Prior art in 102a doesn't change a lot
EXCEPTIONS in 102(b) changed limited to one year only (FIRST TO FILE EXCEPT 1 YEAR
OF GRACE AFTER DISCLOSURE)
o 102(b)(1)(A) date of filing unless there was disclosure in the previous twelve months
o 102(b)(1)(B)- disclosures by other after applicant disclosure
o 102(b)(2)
(A)
(B)
(c)
AIA HYPOS
ALL CLAIM ELEMENTS SHOULD BE IN ARTICLE; ARTICLE SHOULD BE ENABLING
o Everything has to be enabling; need to be able to do this w/o undue experimentation
Provisional patent give you a year to decide what to claim
WHAT WE KNOW ABOUT PRIOR ART
o 102a- known used and printed (only in U.S.)
Obama- otherwise available to public; includes everywhere
o 102e- patents effective as of filing
Obama- gets rid of this

STATUTORY BAR- WHAT INVENTOR CAN DO THAT KNOWS THEMSELVES OUT FROM
PATENTING

AIA 102(b)(2) prior art chart

o Old act (lots of dates)
o New act (one date)

DATE OF INVENTION: CRITICAL DATE

o EARLIER INVENTION/ EARLIER CRITICAL DATE FIND CLASS SLIDE
35 USC 102(G)(1)- SUPPRESSED ABANDONED OR CONCEALED
o WHEN DID I REDUCE TO PRACTICE; WHEN DID I CONCEIVE OF IT, REASONABLE
DILIGENCE (102(G)(2))

Mahurkar v. C.R. Bard (Justice Rader)- Good prior art from 102(a) b/c it's a printed
publication
o catheters are a huge business (lots of money and patent litigation)o Mahurkar needs to show he invented before the publication

Correspondence (letters), writings in scientific journals, inventor testimony (need to

corroborate)
CORROBORATION- IMPORTANT IT CAN WORK AS YOU INTENDED

Conception
o - The formation in the mind of the inventor of a definite idea of a complete and operative
invention as it is thereafter reduced to practice
o - A person of ordinary skill in the art could reduce to practice without excessive
experimentation
o date of conceiving of conception= earliest you can get
Reduction to Practice Show that the invention is suitable for its intended purpose
o reduction to practice- why does It matter? Helps prove inventor could carry it out (evidentiary)
FIRST TO REDUCE TO PARACTICE GETS THE INVENTION (EXCEPT THERE
IS AN EXCEPTION)
o reduction to practice- choose first date of these two
actual
building model
making drawing
constructive
filing an enabling patent application
useful for foreign patents that cannot use foreign experimentation for their date under
the old rule
Simultaneous Conception and Reduction to Practice- post-it notes
o post-it noted inventing tacky sticky substance that doesn't leave residue
someone saw presentation and had idea to use it for a bookmark
EVERY PATENT ISSUED IS PRESUMED TO BE ENABLED AND VALID

Griffith v. Kanamaru (Justice Nichols)

o Kanamaru stuck w/ filing date inventive activity happened in Japan which was not
recognized until AIA
o Did Griffith use due diligence for his conception to reduction to practice?
Must have been diligent before Kanamarus filing date
Looking after filing date until reduction to practice
o THIS IS SETTLED LAW- ONLY CASE ON THIS ISSUE
o Reasons for his delays: university funding issue, waiting for particular grad student to help on the
project who was not enrolled yet
Court did not give it to Griffith
Didn't show why he needed that particular grad student
HAD TO EXPLAIN EVERY 3 MONTH PERIOD
Public should not be withheld from this discovery when it could have come to light

Funding- school policy unreasonable don't want to compare public vs. private
funding

35 U.S.C. 102(g)(1)
Not entitled to a patent if
(g)(1) during the course of an interference another inventor involved therein establishes, to the extent
permitted in section 104, that before such person's invention thereof the invention was made by such other
inventor and not abandoned, suppressed, or concealed, or
(2) [Inventive activity in U.S.]
In determining priority of invention under this subsection, there shall be considered not only the respective
dates of conception and reduction to practice of the invention, but also the reasonable diligence of one
who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
102((g)(1) priority goes to first to reduce practice
unless another is first conception
reasonable diligence from before first inventors conception date
reasonable diligence
o valid excuses
need to develop closely related invention to test primary invention
serious illness
lab burns down
o invalid excuses
extended vacation/ hiatus
insufficient money
company relocation

abandonment Fujikawa v. Wattanasin (pg. 336) (Justice Clevenger)

Wattanasin
o 1979-85 company is searching (idea of 3 chemicals)

this is conception
o 1987 renewed interest
o 3/89 Wattanasin files
august 1987- Fujikawa patent filed
o stuck with this date because it is a foreign filing
when and where did you conceive?
It was all in Japan so they couldn't show they conceived first
o Contruction reduction??
Fujikawa
o 10-12/ 87 human testing= reduction to practice date
o Close enough that they can see that it works
FIX THESE FACTS.. THEYRE WRONG

KEY DIFFERENCE BETWEEN THIS CASE AND THE PRIOR: REDUCTION OF PRACTICE
OCCURERED BEFORE THE GAP
o Conception, RTP and filing
Conception RTP = diligence
RTP filing= abandonment
It is harder to get to abandonment with 3 months whereas it is easier with diligence
o 3 month gap between his data collection and drafting of patent and another 4 month gap
before filing
IF YOU INVENT SOMETHING YOU HAVE TO PUBLISH IT
PUBLICITY DOESN'T MATTER FOR INVENTORSHIP
o Suppression- framed as abandonment or doing something to keep invention down to buy time

On-Sale Bar-class fifteen- 10/19

35 U.S.C. 102 (b) (Pre-AIA); 35 U.S.C. 102 (a)(1) (Nard 975)
Nard 437-457
ON SALE BAR
NOVELTY WHEN HAVE YOU REDUCED YOUR INVENTION TO PRACTICE?
YOU CAN GET A NON-PUBLIC DISCLOSURE THAT YOU CAN SWEAR BEHIND
Why do statutory bars exist?
When is an invention on sale?
When is an on sale invention ready for patenting?

35USC102- publically, effective date is date of filing for publish issued applications
FIRST TO REDUCE TO PRATICE UNLESS FIRST CONCEIVER IS DILIGENT
102 b invention patented/ described/ in public use (more than one yaer prior to application)
o VERY DIFFERENT FROM 102a
a says- used by others (not the inventor)
o b what inventor does with invention

NOVELTY V. STATUTORY BARS

o novelty (based on invention date
102 a, e, g2, f
o statutory bars ( 1 year prior to filing date)
102 b, c, d
AIA- EVERYTHING BEFORE FILING DATE KNOCKS YOU OUT (UNLESS W/ PUBLIC
DISCLOSURE GET UP TO A YEAR)
STATUTORY BAR GIVES YOU THAT YEAR AUTOMATICALLY- MUST PUBLISH TO GET IT
UNDER AIA

Pennock v. Dialogue **NOT IN BOOK (Daniel Webster)- Justice Joseph Story moved
away from undue reliance on English law in the direction of an American patent
law that would favor inventors
Justice Story- Opinion It would materially retard the progress of science and the useful arts, and
give a premium to those who should be least prompt to communicate their discoveries.
They were using an selling hose for 7 years before filing for patent (while keeping it secret)
Webster argument (plaintiff- patentee)
o Invention was under control of patentees at all times; no intent to abandon it
o Policy: dont dwell on technicalities regarding use; dont be like the British!
- should focus too much on procedure
Argument for defendant
o That mere invention gives no right to an exclusive use, unless a patent is obtained; and that if
at a time when no right is infringed, the public fairly acquire possession of it, the inventor
cannot, by subsequently obtaining a patent, take it away.
American law favoring inventor
o Policy behind statutory bar= prevent extension of monopoly
(Dec 7, 1736: 1st Volunteer Fire Dept., Ben Franklin, Philadelphia)
o In 1807, two of Reuben Haines fellow company men, James Sellers and Abraham Pennock,
invented a riveted leather hose that revolutionized the design and again put Philadelphia in
the forefront of firefighting ingenuity. [T]he riveted Sellers & Pennock hose worked well

enough to allow suction engines to be created, changing forever the design and power of
pumpers, which could be linked in tandem to bring water from a distance and without a
bucket brigade.

KEY POLICY BEHIND THE STATUTORY BAR: PREVENT EXTENSION OF MONOPOLY

Policies
o Invention must be perfected (statute of limitations) (invention)
o Extension of monopoly: long period of secret use then patent term (inventor)
o Public reliance; reliance on nonexistence of patent (public)
STATUTORY BAR DATES IF THERE WAS AN ADDITIONAL DAY ON TOP OF THE ONE YEAR
YOU GET NO PATENT
DATE OF PUBLICATION IS WHEN IT BECAME ACCESSIBLE TO PUBLIC (NOT DATE OF
SUBMISSION TO EDITORS)
102 whether this was accessible to the public
102b- patented or described in a printed publication in this or a foreign country
o COUNT ONE YEAR PRIOR TO APPLICATION (PRIOR ART)
o NEW HERE PUBLIC USE AND ON SALE
TODAY ON SALE; TOMORROW PUBLIC USE
MORE THAN A YEAR NKOCKS YOU OUT; WITHIN THE YEAR IS GOOD
PLEASE NOTE: 102(A) V. (B)
The prior art event in Pennock was the activity of the inventors themselves
Contrast with section 102(a): known or used by others . . .
You cannot destroy your own novelty, but you can (and inventors often do) create statutory bars

102 a v. 102 b
INVENTORS ACTIVITY WAS THEIR PRIOR ART in 102b (Pennock)
known or used by others = 102a
YOU CANNOT DESTROY YOUR OWN NOVELTY BUT YOU CAN CREATE STATUTORY BARS
CANNOT PUBLICALLY USE OR SELL INVENTION MORE THAN A YEAR BEFORE PATENTING

pfaff

v. wells electronics (pg. 439) (Justice Stevens)- reduced to practice

pfaff submits drawings- march 1981
receives a purchase order for the invention
filing date- april 1982
reduced to practice- when it was priced???
o Has to be functional to sell
o Had drawings to enable but did not make a prototype or tst it
Critical date= april 19 1981???? 1 year grace period starts after that?
Stevens ON SALE (2 THINGS MUST BE SATISFIED)
o Reduced to practice or detilaed enough description/ drawing to enable someone skilled in art
to practice invention
o Has to be offered for sale
QUESTION HERE: HOW FAR IN INVENTIVE PROCESS DO YOU NEED OT BE BEFORE IT
CAN BE OFFERED FOR SALE?
Texas instruments thinks its good enough so it works for them; manufacturer couls use just drawings to
make it
Wells electronics- found out from deposition (discovery)
o FOOTNOTE 3 ON PAGE. 440
NO WORKING EMBODIMENT
DO NOT ANSWER BOOM BOOM ASK THEM TO REPEAT THE QUESTION
SALE OR OFFER FOR SALE NOW NO REDUCTION TO PRACTICE- READY TO PATENT
IF REDUCED TO PRACTICE OR IF HAVE DRAWINGS/ DESCRIPTIONS THAT ENABLE
o THIS IS THE STANDARD WE HAVE

ON-SALE BAR= SALE OR OFFER FOR SALE NO REDUCTION TO PRACTICE

REQUIRED- IF YOU SELL AN UNCOMPLETED PRODUCT, IT MAY BAR A PATENT IF
THE APPLICATION IS FILED MORE THAN 1 YEAR LATER.
Traditionally, required (1) reduction to practice, and (2) sale or offer for sale
READY TO PATENT IF: (1) REDUCED TO PRACTICE+ (2) DRAWINGS OR
DESCRIPTIONS THAT ENABLE
Space systems/loral v. Lockheed martin - Justice Newman- To be ready for patenting the
inventor must be able to prepare a patent application, that is, to provide an enabling
disclosure as required by 35 U.S.C. 112.
Was this ready at the time it sold? NO
It worked well but he wasn't sure- HE NEEDED TO D OMORE EXPERIMENTATION
The oteher cases inventor knew it would work
NOT READY FOR PATENTING AT TIME OF SALE
o DIFFERENCE FROM PRIOR CASE: DEGREE OF SPECIFICITY AND CERTAINTY THE
INVENTION WOULD WORK
INVENTOR MUST BE ABLE TO PREPARE A PATENT APPLICATION
This is a more complex invention ; both cases were selling to a company based on drawings
INVENTOR: ALWAYS SAY I AM SURPRISED THIS WORKED THE MORE COMPLEX IT LOOKS
THE BETTER OFF YOU ARE
If someone could patent/ file a disclosure

Plumtree software v. datamize (2006)- Justice Dyk- A commercial offer is one which the
other party could make into a binding contract by simple acceptance
o 1.Offering to perform method before critical date
o 2.Performing the method before critical date in exchange for future compensation
When did sale occur?
o If he is selling button or kiosk
o Patent= method of software- pushing buttons and getting results
Dec. 1994- reduced to practice
o Completed development- gave a presentation w/ examples in January 1995
Going to make a kiosk as it was presented in January specific
march 3 make kiosk
file feb. 1996
critical date= feb. 1995
o display of kiosks does not create bar
2 PRONG TEST***: 1: DEMONSTRATE A COMMERCIAL OFFER WAS MADE BEFORE
CRITICAL DATE + 2: PERFORMED PATENT METHOD BEFORE CRITICAL DATE IN
EXCHANGE FOR FUTURE COMPENSATION
they agreed to kiosk that performs certain functions
o they did not perform the function before date
o close- contract for kiosk to do what it solud do from resentation

NO DESCRIPTION OR REQUIREMENT FOR HOW IT DOES IT

NOTHING IN CONTRACT REQUIRES THEM TO USE THAT PATENTED METHOD BEFORE
THAT DATE
o they did create it after the critical date but did not
it was not required to be performed in a way to meet the patent
**** ASK ABOUT CRITICAL DATE

PLumtree HYPOS
o Perform process before critical date and get paid after sale
o Agree to perform process but perform after critical date sale (if specific about patented steps of
process)
o Agree to perform process before critical date but do not perform sale
Not relevant whether you perform process if you agree to do it
o Advertise process before critical date and then agree to perform and perform after critical date no
sale (no binding agreement)
This could be problematic for reasons other than 102b
o IF:Agree to provide kiosk (doesn't say how), perform process, then critical date, then provide
kiosk FOR SALE B/C PERFORMED PROCESS
Agreement is not enough b/c it can be done in different ways
(plumtree) agreement to provide kiosk, critical date, then perform, then provide kiosk not
a sale
NEED A CONTRACT BFORE AGREEMENT TO PEROFRM PROCESS (NEEDED BEFORE YOU CAN
PERFORM PROCESS) UNLESS NEEDED TO PERFORM AN AGREEMENT TO PROVIDE A
SERVICE USING THE TECHNOLOGY(CAN PERFORM PROCESS BEFORE PROVIDING
TECHNOLOGY)

Public-Use Bar- / PUBLIC USE, EXPERIMENTAL USE- class sixteen- 10/21

35 U.S.C. 102 (b) (Pre-AIA); 35 U.S.C. 102 (a)(1) (Nard 975)
Nard 457-470
Nard 482-485
Nard 494-499
PUBLIC USE, EXPERIMENTAL USE
1.What does public use under 102(b) mean?
2.What are the contours of the experimental use exception?
3.What policies inform the public use bar and the experimental use exception?

REVIEW OF SEC. 102

1.Who invented first (priority)
2.What counts as prior art (novelty)
3.Has the inventor filed in a timely manner (statutory bar)
35 U.S.C. 102
AIA- if you do any of these things before you file for your patent its invalid
o Unless you discose a year before
o No interferences but interference-like procedure
-

PUBLIC USE- 102B??

MARCH 2013= DATE THAT DECIDES WHETHER AIA OR OLD LAW

DISCLOSURE EXCEPTION WITHIN A YEAR

-if someone else makes it before you they knock you out unless you have a public disclosure that precedes
their disclosure
-after disclosing it you have one year to file
AIA Hypo
- Romney publishes in june before the patent application
- Secret deal= not public disclosure (no grace period)
- - if he publishes before Romney he can get patent
- if no one else publishes you have a year to file
- (random fact: interferences are gone under AIA)
DISCLOSURE= DIFFERENT FROM PUBLIC DISCLOSURE- NO CLEAR THRESHOLD ON HOW
MUCH MORE DISCLOSURE NEEDED TO REACH PUBLIC
AFTER YOU DISCLOSE YOU HAVE ONE YEAR TO DO A LOT OF THINGS OLD ACT- CARES
ABOUT CONCEPTION; AIA- WE DON'T CARE ABOUT CONCEPTION
1.What does public use under 102(b) mean?
2. What are the contours of the experimental use exception?
3. What policies inform the public use bar and the experimental use exception?
GOAL= trying to limit monopoly powers with patents

Pg.458 Egbert v. Lippmann (1881)- PUBLIC USE DOES NOT MEAN PUBLICITY- IT MEANS
LACK OF CONTROL AND LACK OF ABANDONMENT
Justice Woods- William Burnham Woods Civil War General (Northerner) who after the
war settled in Alabama to farm cotton. Does this background tell us anything about
how he might have viewed Egberts and Frances intimate relationship?

NOTE SOLE DISSENT FROM MILLER DOESNT THINK THIS WAS PUBLIC ENOUGH.
MILLER IS THE MOST POWERFUL MEMBER OF THE COURT DURING THIS PERIOD,
FLOATED AS A CANDIDATE FOR PRESIDENT. HE IS A RELIGIOUS LIBERAL.
- Egbert= exwife remarried (was his intimate friend at the time??)
- 1855- wearing a corset is not public at all
- gives 2 pairs to Frances Lee and shows Sturgis
o not concerned w/ Sturgis
IMPORTANT: DOES NOT HINGE NO THE NUMBER OF USERS; DOES NOT NEED TO BE
KNOWN/SHOWN ?????
- Negative norms against unmarried girls being shred between people; slept on his rights= pun; court is
worries about morality so they want to find public use even though this is very private)
- Dissent if this is public then what is private?
o Key point: did not abandon to the public
- This guy would win if he made her sign a NDA
- If someone independently invents it it does not preclude you if they were independent
Pg.460 Motionless keyboard v. Microsoft- CLAIMS ENCOMPASS MORE THAN YOUR
INVENTION
- Showed it to
o Investors (NDA)
o Friend (noo agreement)
o Testor (NDA)
- NDAs show due diligence in trying to maintain control for himself
o If these dnt help then you wouldnt be able to disclose to anyone
- NDAS PROTECT HIM FROM PUBLIC USE BAR
- The intended use was made only by one person and no one else saw its use
- DID YOU MAINTIAIN CONTROL AND WAS IT USED FOR INTENDED PURPOSE?
o IF IT IS USED FOR INTENDED PURPOSE WITHOUT CONTROL= PUBLIC USE
THIS IS DIFFERENCE FROM EGGBERT
o IF IT IS INTENDED USE AND WITH CONTROL- NOT PUBLIC
2 LAYERS (SECRECY + PURPOSE)

MOLECULON RESEARCH V. CBS (fed. Cir. 1986)- implied control (CASE NOT IN BOOK)
Metallizing Engineering (2nd Circ) - Judge Learned Hand- had control over friendsimplied from their relationship
- letting friends play with it and demonstrated invention to boss
- In Eggbert he gave it to her and let her have it; here it did nt rise to that level
What is the main issue?
Sale of output from a machine does not disclose the machine to the public; is it nevertheless a public use?
Extension of monopoly is the key policy; public use found here, patent invalid
Public Use Summary
Giving invention to another without limitation or restriction is public use (Egbert)
CANNOT GIVE TO ANOTHER W/O RESTRICTION- EGBERT

Must be used for its intended purpose. (Motionless)

Commercial exploitation of a secret method can constitute public use (Metallizing)
MUST BE USED FOR INTENDED PURPOSE- MOTIONLESS
Wood Block technology

EXPERIMENTAL USE- Pg. 482 City of Elizabeth v American Nicholson pavement co.
Justice Bradley- City of Elizaberth Holding- Public use permitted when the delay [in
filing] is occasioned by a bona fide effort to bring his invention to
perfection or to ascertain whether it will answer the purpose intended
Exception= experimental use
DILIGENCE HERE (constantly keeping tabs on it)
Durability
Kept this as secret as possible
o Only on one road
FACTORS
Invention cannot feasibly be tested in private
Due diligence
IS IT A GOOD FAITH EFFORT TO REDUCE TO PRACTICE OR A DELAY?
Under control of the inventor
o This is key!! (how much is it in the inventors control? The moe the better)
This case is limites to reducing invention to practice; not renfinement
o Once it is reduced t practice once it cannot be publically used and no exception granted for
experimental use
Refinement- fine line on what is reduced to practice?
o If it works for its intended purpose
After this you cannot make changes publically

Lisle v. AJ Manufacturing- Justice Lourie- We conclude that convincing evidence was

presented whereby a reasonable jury could have found A.J.s prima facie case of public use
was rebutted.
Pg. 494 Lisle Corp v. A.J. - Exception to public use b/c prior working relationship and called
for feedback every 2-4 weeks
Experimental Use?- Dippin Dots v. Mosey- method for producing ice cream:
o Method for producing ice cream
o Method produced dots sold at Ky. state fair to test marketability
o Experimental Use? Not experimental Reduced to practice already. Market testing is not
experimental.
o sold method at state fair to test marketability

o - it has clearly been reduced to pactice here they do not get the patent!!
HYPO: Sobicinski v. Walgreens: Claim number 7- kit (glove and lotion)
Balm made of 2 properties
Glove- on hand for predetermined time (a day? An hour? Question for court)
Filed- jan 22, 1997
Feb. 1995- selling lotion on ebay
Dec. 1995- sampling booth for gloves
Jan. 1996- pays for a booth at a trade show
June 1996- sells 45 kits
And 1990 printed publication
WHAT DOES THE PATENT CALIM?
- LOOK AT ELEMENTS AND COMPARE THEM TO REFERENCES? (DOES IT HAVE ALL
ELEMENTS OF THE CLAIM?)
- IS THIS PRIOR ART?
- FIND CRITICAL DATE
posted add- doesn't have all ingredients; no particular method is cared about
o ALL ELEMENTS THERE BECAUSE ONE OF THE LISTED LOTIONS CONTAINS THE
OTHER ELEMENTS
DOES IT MEET ELEMENTS OF CLAIM???? IS THIS ONE REFERENCE????? SHOW WHERE
ITS A GREY AREA
HERE IT IS NOT EXPLICIT! SAYING OPTIONS
Selling it june 1996 is ok bc within year (after critical date) look at plumtree case; securing both in 1996
is ok
Dec. 1995- this was in Canada (does not matter)
IF THIS WAS IN THE U.S>- this was not sold but it was used
No experimental use once reduced to practice
Sale of lotion= not sale of the patent item
OBVIOUSNESS- SECTION 103
AFTER REDUCTION TO PRATICE- HAVE TO SHOW ABANDONMENT; IF NO REDUCTION
TO PRACTICE- WERE YOU DILIGIENT?
Section 102
- What does the patent claim?
- What section of statute might this reference cover?
- Is the reference prior to the critical date?
- Does it meet all requirements for anticipation?
o All limitations
o 4 corners
o enabled
if its not all in one document- its not prior art
- once it Is prior art for 102 and 103
o does it anticipate?? (102- prior art and anticipation)
- Then ask would it be obvious after this?

Hypo: Sobicinski v. Walgreens

- 1.What does the patent claim?
- 2.What section of the statute might this reference cover?
- 3.Is the reference prior to the critical date?
- 4.Does the reference meet all the requirements for anticipation?
o 1.All limitations
o 2.Four corners
o 3.Enabled
Anticipated?-glove lotion method
US patent filed by Nurihama, Jan.1, 1997
first one -102d??b??
reduction to practice is important and we don't know it
-- we can swear behind that date???? Need to prove who invented first and who can prove
it??
Russian academic paper, Jan. 1, 1990
Second one- does not matter where
(unrelated note: pre AIA what is limited to US?? publically used or known, sales or use)
Person using the glove lotion method in Canada, Aug 1998
third person- we can sue them
Used by the inventors mother, Aug. 1998
last one- it matters that this was in the U.S. ; we can sue them; how much control do we have on
patent?
Patentability: An Overview
Sec. 101 Statutory Subject Matter; useful
Sec. 102 Novel
Novelty
Priority
Statutory bar
Sec. 103 Non-obvious
Sec. 112 Adequately disclosed and claimed

Electromotive Division of GM v. Transportation Systems Division of GE- Justice Michel- We

conclude that control and customer awareness ordinarily must be proven if
experimentation is to be found.

35 U.S.C. 103
Historical Obviousness- class seventeen- 10/26
35 U.S.C. 103 (Nard 976)
Nard 347-372

INTRO TO OBVIOUSNESS
What are the historical roots of Section 103?
What are the policy reasons for having a non-obviousness requirement?
How does one apply the Graham factors
35 USC Sec 103 103. Conditions for patentability; non-obvious subject matter
A patent may not be obtained though the invention is not identically disclosed or
described as set forth in section 102 of this title, if 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 the invention was made
to a person having ordinary skill in the art to which said subject matter
pertains. Patentability shall not be negatived by the manner in which the invention
was made.

PHOSITA Factors that may be considered:

_Educational level of the inventor
_Type of problems encountered in the art
_Prior art solutions to the problems
_Rapidity with which innovations are made
_Sophistication of the technology
_Educational level of active workers in the field
But Extraordinary Knowledge: A person of ordinary skill is presumed to know of all relevant prior art.
SEC/ 103- DIFFERENCES THAT SHOULD BE OBVIOUS TO SOMEONE IN ORDINARY SKILL IN
THE ART MEASURED BY HOW SOMEONE IN THE FIELD THINKS ABOUT THIS
Patentability an Overview:
Sec. 101 Statutory Subject Matter; useful
Sec. 102 Novel
Novelty
Priority
Statutory bar
Sec. 103 Non-obvious

Sec. 112 Adequately disclosed and claimed

ALWAYS TALK ABOUT GRAHAM FOR OBVIOUSNESS
Obviousness
A slicing device for cheese and the like, comprising:
A base providing a flat cutting surface with a passageway for a cutting element;
a bar having a general U-shape;
A cutting element;
and a rotating handle

Basic Conundrum- Why is the doctrine necessary? Economic rationale, Investment

rationale, Output constraints: patent thicket
- Economic rationale patents should induce inventors to invent
o No patent necessary for inducement of obvious inventions
- Investment rationale
o If its too easy to get patents it will harm [patent law
- Output constraints
o Patent thicket- proliferation of patents that are impossible to invent around

Pg. 349 Hotchkiss v. Greenwood

- First to put porcelain doorknob with a dovetail design
- No skill or ingenuity required- this can be hard to apply in later cases
- A change outside of his control enabled him to do this
- ordinary mechanic would have been asily able to accomplish this

SCOTUS Standard
- 1941 Cuno Engineering Corp. v. Automatic Devices- flash of genius test
- PATENT ATCT OF 1952
o Non-obviuos test made express; no flash of genius requirement
- 35 USC section 103
o differences would have been obvious to someone skilled in the art
35 USC Sec 103- 103. Conditions for patentability; non-obvious subject matter
A patent may not be obtained though the invention is not identically disclosed or described as set forth in
section 102 of this title, if 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 the invention was made
to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall
not be negatived by the manner in which the invention was made.

pg. 354 Graham v. John Deere- Justice Clark- Holding= a farmer would have done this
o Justice Tom Clark (1899-1977) It's not that he's a bad man. It's just that he's the dumbest sonofabitch I
ever met.- Harry S. Truman
1. improved design puts hnige plate on top of the shank more flexiblility
2. obviousness- need context
a. different from anticipation in novelty
3. FIRST: TAKE PRIOR ART AND LOOK AT SCOPE BEFORE INVENTION HAPPENED
4. THEN: LOOK AT DIFFERENCES BETWEEN PATENT AND PRIOR ART
5. THEN: WHAT IS THE ORDINARY SILL IN THE ART?
Grahams First improved design: Figure 3: Grahams first improved clamp for the Hoeme chisel plow. The
added brace (13) distributes the forces from the plow shank (11) toward the upper portion of the I-beam
(10) and thereby protects the lower flange of the I-beam (10a).
The 811 Graham Plow: Figure 4: Graham 811 Spring Clamp. The spring (66) at the front end of the clamp
holds the plow shank flat against the I-beam frame. The shank is pivoting against the rear of the clamp and
the pivoting compresses the spring.
THE GRAHAM TEST
- 1. Scope and content of the prior art
- 2. Difference between the prior art and the claims at issue
- 3. Level of ordinary skill in the pertinent art
- *implicit
o (4). Analyze obviousness
o (5)? Secondary considerations may be relevant AND CAN OVERCOME A FINDING OF
OBVIOUSNESS
o Note: Situates obviousness as a constitutional requirement.
With obviousness- you have to go back to date and time of invention time
- hindsight bias- can be limited from secondary considerations
- nothing is obvous unless explicitly declared in a document?? This is the new idea?

Adams: elevation of Secondary considerations?

The court below found, and the Government apparently admits, that the Adams battery wholly
unexpectedly has shown certain valuable operating advantages over other batteries while those from
which it is claimed to have been copied were long ago discarded.
Adams: Elevation of Secondary Considerations?
Might be utilized (Graham)
Commercial Success
Long felt need
Failure of others
The governments argument in the merits brief is only eight and a half pages long, with more than half of
that space being devoted to the argument that the Adams battery was not novel a position the
government had conceded away in its petition!
pg. 360 U.S. v. Adams - Justic Clark (FILLS IN THE GAPS FROM GRAHAM)
Device w/ water, Cuprous Chloride, and magnesium
Bert Adams battery: claim elements
o 1.Magnesium (positive) electrode
o 2.Cuprous Chloride (negative) electrode
o 3.Liquid container
- tried to sell invention by presenting it to the army (waterproof battery)
- government goes behind his back and uses it
- this is patentable
o experts in the same field did not consider it possible it had unexpected value
3RD PART WHAT IS THE LEVEL OF ORDINARY SKILL HERE? Court does not say who this
person neds to be (how to qualify)
Hobbyist, bench scientist, vs. nobel laureate
FACTORS TO CONSIDER
o Educational level of inventor
o Type of problems encountered by inventor in the art
o Prior art solutions to the problem
o Rapidity with which inventions are made
o Sophistication of technology
o Educational level of active workers in the field
Arguing for the patent hobbyist wouldn't know
Against patent- this nobel laureate would know
Extraordinary knowledge- regardless of skill elvel they know everything in the prior art
Adams- elevation of secondary considerations
o Might be utilized (Graham)
Commercial success
Long felt need
Failure of others
Look at secondary considerations if it is obvious; if its not obvious youre done and secondary
considerations dont matter
Quick Review- Prior Art

Niaudet treatise zinc anode, silver chloride cathode; ammonium chloride electroltye: continuous
current
Wood: substitute magnesium for zinc; use neutral electrolyte
Wensky: copper terminal, cuprous chloride in electrolyte solution

Leapfrog v. Fisher-Price (Fed Cir 2007)

25. An interactive learning device, comprising:
o a housing including a plurality of switches;
o a sound production device in communication with the switches and including a processor and a
memory;
o at least one depiction of a sequence of letters, each letter being associable with a switch; and a
reader configured to communicate the identity of the depiction to the processor,
o wherein selection of a depicted letter activates an associated switch to communicate with the
processor, causing the sound production device to generate a signal corresponding to a sound
associated with the selected letter, the sound being determined by a position of the letter in the
sequence of letters.
Accused Device: Fisher Price
o Obvious?
Bevan: Voice puzzle of mechanical operation
TI: Digital reader, doesnt read letters
o + Texas Instrument: Super Speak & Read
HYPO- Leapfrog v. Fischer-price
-comprising
o housing
o sound production
o processor and memory
o sequence of letters
o reader
o says a letter
references
o patent: about puzzle that speaks (no micro-processor- its all mechanical (different switch for each
letter))
o digital reader: does sounds not letters
first do Graham
o 1. scope and content
o 2. level of skill
mechanic in kids toys
o 3. Differences
nothing else w/ talking letters and a cmputer
o 4. Objective evidence
economic motivations
turning point of computers becoming affordable= more motivation to have device
more obvious

there are too many reasons why you would so this

o don't get into secondary considerations if it is not obvious
for patentee- im first, noone else did it, no reason to cmbine these pieces in the art; why not obvious)
o want it to be low
obviousness- secondary considerations, KSR, etc.
IF DATE OF PRIOR ART IS CLOSE TO DATE OF PTAENT- LOOKS MORE LIKE ITS
OBVIOUS
whats the oldest w/ all the elements minus 1 (why combine?) this is a market driven invention

Modern Obviousness-/KSR- class eighteen-10/28

35 U.S.C. 103 (Nard 976);
Nard 372-397
KSR
Did KSR change the law on obviousness? If so, in what way?
o YES 4 steps on if its obvious
After KSR, what is required in order to demonstrate obviousness?
o Captures more now??
How is the obviousness test applied in chemical and biotech?
o Difficult to say something is predictable in these fields
KSR video- https://www.youtube.com/watch?v=eVQLg7DFocY

THE HISTORY OF THE NON-OBVIOUS REQUIREMENT- Federal Circuits Teaching,

Suggestion, Motivation test
Required that a patent examiner (or accused infringer) must show that a teaching or
motivation to combine references existed at the time of invention.

Apple Patent Application

Apple patent application for a smart-ring (may just be a decoy)
o 18 months since filed so they had to publish
KSR (changed the law on obviousness)
After KSR- we still have the Graham factors but now we also have more how do we factor obviousness?
How is it appled to electrical vs. biotech?
The history of non- obvious requirement- TYPE THIS FROM SLIDES

FEDERAL CIRCUITS TEACHING, SUGGESTION, MOTIVATION TEST

o WHAT IS THE TEACHING OR MOTIVATION TO COMBINE EXISTING REFEERENCES?
This is very specific and requires a lot of evidence

 Very hard to have documentary proof of obviousness

In re Demiczak- THERE IS NO OBIVOUSNESS TEST UNDER KSR
o First step to applying Graham test
Scope of invention + prior art
Prior art= black trashbag, pumpkin, trashbag with designs, arts of crafts of pumpkins
o Step two
Difference between prior art and invention
Not so different from arts and crafts and don't want to
o Teaching/ motivation test w/ test
Something where people are painting trash bags like a jackolantern
THIS WAS NOT OBVIOUS HERE
No proof of motivation to combine these two elements.
Pg. 373 KSR ** VERY IMPORTANT
Car pedalo Both can be adjusted and move bad=ck and forth
o Only difference= sensor
Most cases don't present something new; is the combo obvious?
Unexpected results; no one would think to combine this
It was considered an expensive waste of time this is an argument for non-obviousness
Kennedy (majority) Test should be flexible
o Predictable results are generally obvious
Known methods using known prior art = generally obvious if do nothing more than predictable
results
2 things to think about
what are non-predictable results?
o PHOSITA is creative and able to combine insights from other fields
o Ocmbination patents should be analyxedw ith care (90% of patents)
o Onferences are permissible
o obvious to try
KSR Intl v. Teleflex prior art-Asano Pedal
o The claimed invention at issue in this case is a straightforward combination of
(i) a pre-existing type of adjustable pedal, and (ii) a pre-existing type of
electronic control that is commonly used on newer cars.
o Is the combination obvious?
KSR - Prior art combination- Test should be flexible
Predictable results are generally obvious
PHOSITA is creative and able to combine insights from other fields
Combination patents should be analyzed with special care
Inferences are permissible
Obvious to try might be useful in analysis
Perfect Web Technologies v. InfoUSA- judge says I can use my common sense used to
be confined t saying show me proof this is obvious (now judges are focus of obviousness)
1. A method for managing bulk e-mail distribution comprising the steps:
o (A) matching a target recipient profile with a group of target recipients;
o (B) transmitting a set of bulk e-mails to said target recipients in said matched
group;
o (C) calculating a quantity of e-mails in said set of bulk e-mails which have
been successfully received by said target recipients; and,
o (D) if said calculated quantity does not exceed a prescribed minimum quantity

of successfully received e-mails, repeating steps (A)-(C) until said calculated

quantity exceeds said prescribed minimum quantity.
HYPO: Akie Lures
Fish bait hooks+ salt = obvious?
salt and lures
commercial success
o counter= success can result from a lot of things
did people know fish like salt?
o YES- hard to combine salt with plastic
o Dangerous to manufacture
No reason why no one has done this before- no prior art that it based off of- makes it look less obvious
102= VERY RULE BASED obviousness= more about arguing your side
Proctor & Gamble v. Teva Obviousness test
1.Would a PHOSITA identify prior art compound as lead compound or starting point
for modification?
2.If so, would PHOSITA
o -Have a reason to modify lead compound in order to arrive at claimed
compound, AND
o -Have a reasonable expectation of success
Huff= district judge visiting circuit
Would PHOSITA identify prior art as lead compund or starting pont?
If so.. is there a reason to modify AND have reasonable expectation of success?
Unexpected result= not obvious
ELECTRONIC PATENTS CRITICIZED MORE THAN CHEMISTRY

In Re Kubin: Obviousness and DNA

Other Obviousness Considerations/ SECONDARY CONDITIONS, PHOSITAnineteen- 11/02

35 U.S.C. 103 (Nard 976);
Nard 408-416;
Nard 424-436
SECONDARY CONDITIONS, PHOSITA
How do courts determine the attributes of the Person of Ordinary Skill?
Multi factor test. Usually based on the inventor.
o DAIICHI- only case coming out lke it did about PHOSITA
How do we determine what constitutes prior art for purposes of Section 103?
Same rules as section 102.
How do secondary conditions impact obviousness?
They can impact obviousness on the margins. Can overcome a finding of prima facie obviousness.
a. They can overcome prima facie obviousness finding; High hurdle to get over
Professor Andersons Chair Patent
1. Seat portion
2. Back portion
3. A number of legs

 4. Headrest

how do courta determine PHOSITA?

Whats prior art in 103?
How do secondary considerations impact obviousness?
o Only on margins do we consider them
Obviousness abroad
o European Patent Office: inventive step
(i)Determine closest prior art
(ii)Establish the objective technical problem to be solved by invention
(iii)Consider whether invention would have been obvious in light of prior art and problem to
be solved.
o United Kingdom Patent Act: inventive step
(i) Identify inventive concept in patent
(ii) Identify PHOSITA and prior art
(iii) Identify differences between prior art and patent
(iv) Non-obvious? In other words, does patent require degree of invention
o Other considerations (from case law): Problem to be solved, significance of problem, time problem
remained unsolved, knowledge of problem.
Daiichi Sankyo v. Apotex (Pg. 408 )- Justice Sen. Archer- Obviousness is a question of law
based on underlying questions of fact. [De novo review and clear error]
o What is PHOSITA
o Method of putting an eardrop with a certain composition
o Specialist in ear medicine or researcher in treatment- one side
o General Doctor- other side (APOTEX- want it to seem not obvious)
o HOLDING= it was obvious
o Obviousness= question of law
De novo review
o Lots of underlying questions of fact are reviewable but get some deference
This is how appellate courts do whatever they want
Have to give some deference but no deference for final answer
If parties agree on level of skill the courts cant touch it

PHOSITA- FACTORS THAT MAY BE CONSIDERED:

Educational level of the inventor

Type of problems encountered in the art

Prior art solutions to the problems
Rapidity with which innovations are made
Sophistication of the technology
Educational level of active workers in the field
But Extraordinary Knowledge: A person of ordinary skill is presumed to know of all relevant prior
art.
MST THINGS OBVIOUS TO SUPER SMART
MOST THINGS NOT IF A HOBBYIST
Obviousness: Sec. 102 prior art General Rule: Anything that qualifies as prior art under
Sec 102 counts as prior art under Sec 103.
Section 102(b) (AIA)
o 2. DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not
be prior art to a claimed invention under subsection (a)(2) if-o C. the subject matter disclosed and the claimed invention, not later than the effective filing date
of the claimed invention, were owned by the same person or subject to an obligation of assignment
to the same person.
Importance of contract! You can contract out of prior art!
OBVIOUSNESS- SEC 102 PRIOR ART **REMEMBER FOR EXAM
ALL SEC. 102 PRIOR ART= SEC. 103 PRIOR ART
IN 103- FIRST SAY IS IT PRIOR ART UNDER 102
o THEN ADDRESS OBVIOUSNESS UNDER 103
Section 102b(2)(c)- AIA (obama act)
o Disclosure not prior art if owned by same person
Your prior work cannot be used against you for obviousness
o YOU CAN BUY PRIOR ART OR THE PERSON BEFORE YOU FILE
BEFORE FILING LOOK AT WHATS OUT THERE
BUY OR LICENSE PATENT BEFORE YOU FILE
YOU CAN CONTRACT OUT OF PRIOR ART
Pg. 414 In re Icon Health & Fitness- Justice Prost- If reasonably pertinent to the problem
addressed by Icon, Teague may serve as analogous art.
ANALOGOUS ARTS: TESTS
o From same field?
o Pertinent to problem solved?
Prior art= treadmill and folding bed with dual spring action
Is this analogous t the problem we are trying to solve?
o Is it from the same field?
If not is it pertinent to problem being solved?
REASONABLY PERTINENT= PRIOR ART
Claims solving problem of dual spring action
KEY QUESTION: what is the problem being solved?
If they were solving a different problem and its different how we solve it
o Then the bed is not pertinent
Same problem solved= analogous art
o If not= not pertinent
HYPO- in re clay
Prior art
o Inflatable device
o Way to normally get oil (drill well)

Drilling well= different from storage

o One is getting from ground other is getting from tank
Problem here= oila t bottom of barrel that cannot come up
o Different from oil in open that needs to get extracted
Both= trying to solve problem of gravity
o More general = more obvious
o More specific= less obvious
Patentee- wants to say specific (extraction v. tanking)
Othe says- dealing with same thing; its obvious
Context specific how you frame the question

Pg. 427 Transocean Offshore Deepwater Drilling v. Maersk- Justice Moore- This is precisely
the sort of case where objective evidence establishes that an invention appearing to have
been obvious in light of the prior art was not.
Rare case- giving obviousness to jury
Judge decides opposite JMOL after jury finding
6 FACTORS OF SECONDARY CONSIDERATIONS
1.Commercial Success (Nexus)
o nexus- success and merits of claim
example- 2 contracts one day
one has add on and premium for it
2.Industry Praise and Unexpected Results
o example- competitor
3.Copying
o everyone tryng to copy
4.Industry Skepticism
o show no ne believed in you
clashing
5.Licensing
o example- merits or threat of litigation
o value of license relaive to litigation cost
o licenses with no threat of litigation
6.Long-Felt but Unsolved Need
o need for efficiency
SECONDARY CONSIDERATIONS- RLE WHEN THERE IS OBJECTIVE EVIDENCE INVENTION
Hypo: Crocs court found this is not obvious (SO MUCH copying and commercial success)
o prior art said you could not do it
CLAIM: A footwear piece comprising:
o (1) A base section [of] moldable foam material; and
o (2) A strap section formed of moldable material .attachedwith plastic connectors
Secondary Considerations:
o Prior art depicts foam as unsuitable for straps
1.Causes abrasions on Achilles tendon
2.Has bad memory (stretches and deforms)
o Commercial success of Crocs
o Industry praise for Crocs
o Massive copying
2 pieces of fam and plastic
secondary considerations help

o foam= unsuitable for straps

causes abrasions
bad memory
o commercial success- made tons of money
o industry praise
o massive copying
always get to secondary considerations
SUMMARY OF NONOBVIOUS ANALYSIS
1.Determine the scope and content of prior art
-Decide whether a reference fits within a subsection of Section 102
-Determine whether the reference is analogous
2.Ascertain differences between prior art and claims at issue
3.Find the level of ordinary skill in the artPerson of skill knows all of the pertinent art
4.Determine whether subject matter is obvious (KSR)
5.(?) Secondary considerations
Iron Grip Barbell v. USA Sports- Justice Dyk- A NEXUS MUST BE ESTABLISHED BETWEEN THE
MERITS OF THE CLAIMED INVENTION AND EVIDENCE OF COMMERCIAL SUCCESS
Secondary considerations
1.Commercial success
3.Long-felt need
5.Copying
6.Licensing
7.Failure of others

III. Enforcing Patent Rights

Infringement
Direct Infringement- class twenty- 11/4
35 U.S.C. 154(a), 271(b),(c) (Nard 977);
Nard 501-507;
Nard 517-523;
Nard 630-641
INFRINGEMENT
1.What are the different types of infringement and how do they differ?
2.How is literal infringement shown?
3.What does within the United States mean in the context of 271(a)?
4.What are the different standards for indirect infringement?

literal infringement most cases

patent infringement (make 2 arguments)
validity argument

infringement argument
o direct
literal
non-literal (DOE)
o indirect
inducement
contributory
INFRINGEMENT CHECKLIST
o Single entity?
o Perform infringing act?
o In US?
Dealing with missing pieces
o Infringement Checklist
o Single entity?
o Perform infringing act?
o In US?
WHAT IS REQUIRED FOR DIRECT INFRINGEMENT? ALL OF THE ELEMENTS OF THE CLAIM ARE
MET BY THE ACCUSED DEVICE/PROCESS.
INFRINGEMENT CHECKLIST (3 LITERAL REQUIREMENTS)
o SINGLE ENTITY?
o perform infringing act?
**All of the elements of the claim are met by the accused device/ process
intent does not matter for literal infringement
inducement and contributory have a knowledge requirement
otherwise until now in class notes intent does not matter
every indirect infringer has a direct infringer; (a lot of the time consumers are the ones
infringing but business liable from promoting it);
there has to be a literal infringer before the ther theories
o in U.S.?
apple realys to Canada; does infringe systems claim; about control and beneficial use
Larami v. Amron (supersoaker case)
o Had a chamber thereout; not a chamber therein
o WILL BE CONTINUED NEXT CLASS
INFRINGEMENT (purely for litigation)
Goal= Less likely to be made invali but more likely to capture more

HYPO - Chair w/ headrest= blocking patent

SOLUTION= CROSS-LICENISNG AGREEMENT
o Mutually beneficial negotiation exchanging patents and sometimes money
What about w/ lots of patents?? Patent pools
o They put their patents with a 3rd party agent
o Give out royalty based n patent
o DOJ has signed off on this
There are ant-cmopetititve effects
This is collusion
Types of infringement
o Literal infringement
o within the US in context of 271(a)

complex
(RANDOM SIDE NOTE: defininiteness= question about claims; do dclaims deifne things in a way that a
PHOSITA would know what they mean; SCOTUS changed standard to if a reasonable person would have a
good basis for that definition)

INFRINGEMENT- WE ONLY CARE ABOUT YOUR PATENT AND WHAT IT SAYS (WHAT DO YOUR
CLAIMS COVER)
- HOW DOES OTHER INFRINGE ON YOUR CLAIMS?
o WE DO NOT CARE IF THEY HAVE PATENTS
JUST YOUR PATENT AND THE INFRINGING PRODUCT OR PROCESSES
****REMEMBER THIS FOR EXAM
PATENT LITIGATION: PRODUCTS Apple Sues RIM: What matters for infringement?

Patent Litigation: Case Management- Three Phases:

o 1. Claim Construction (Markman hearing)
- What do the claims cover?
o 2. Validity Analysis
- Covered in prior 20 classes
o 3. Infringement Analysis
- Is the accused device covered by the claims?
PATENT LITIGATION PATH
were in federal court (patentee v. infringer)
start in federal district court (other choice is the U.S. International trade commission; you could also go to
patent office but not for infringement)
then g oto court of appeals for federal circuit
then go to SCOTUS
INVALIDITY- NO NEED FOR INFRINGED DEVICE
- have to show why not valid even though it issued (person being sued saying their patent not valid) heavy
burden
- ADDRESS
o Obviousness
o Novelty

o Utility
o Subject matter (101)
o Written description (112)
infringement- needs infringed device
- Lesser burden here- show me why I infringe
- direct vs. indirect (COPY NTES FROM SLIDE)
patent litigation case mamangement
- 3 phases
o claim construction
what do claim cover
o validity analysis
covered in prior 20
o infringement analysis
is accused device covered by the claims
Claim Construction: Review- Phillips v. AWH Corp.
35 U.S.C. 271 - Infringement of patent.
(a) Except as otherwise provided in this title, whoever without AUTHORITY MAKES, USES, OFFERS TO
SELL, OR SELLS any patented invention, within the United States, or imports into the United States any
patented invention during the term of the patent therefor, infringes the patent.
- 271(a)
o Whoever
singular; what if more than one person/entity involved?
o Makes, uses, sells, offers to sell, or imports
what are the limits of these categories?
o Any patented invention
what if only PART OF claimed invention?
o Infringes
Larami v. Amron squirt guns- Justice Reed- Eastern District of Pennsylvania
[a] toy comprising
An elongated housing having a
chamber therein for a liquid [tank],
a pump including a piston having an exposed rod and
extending rearwardly of said toy facilitating manual operation for building up an appreciable
amount of pressure in said chamber
- need all claims met
- one not met so it is not infringing
- if you meet all elements and more- you still infringe
- if missing one element it does not infringe
- where it is located
o construction or written description
Infringement checklist
o Single entity?
o Perform infringing act?
o In US?

35 U.S.C. 271 - Infringement of patent.- USE

(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any
patented invention, within the United States, or imports into the United States any patented invention during the
term of the patent therefor, infringes the patent.
- Without authority
- Makes, uses, offers to sell, sells, or imports invention
- Within the U.S.
- During the patent term

NTP v. Research in Motion - Justice Linn- THE USE OF A CLAIMED SYSTEM UNDER SECTION
271(A) IS THE PLACE AT WHICH THE SYSTEM AS A WHOLE IS PUT INTO SERVICE.
blackberry emailing
what was unique about how/ where they did it?
Blackberry from Canada
Methods- must perform all steps in the U.S. (methods have to be in U.S. )
System- where is place that system as a whole is put into service
o This is the KEY (how you infringe a system)
Who has beneficial control and beneficial use of system??
o Black berry users controlled it and got the sue
It shouldnt matter where it happens// they were using it
Process/ method
o Each of the steps must be done in the U.S.
They want injunction- you cannot do this without authorization
o Blackberry had to settle for system claim and process claim
271(a) use HYPO- calls in India
where is beneficial use (if not in US no infringement)
does claimed use and control seem confined to U.S>??
where things happen and how important they are in the scheme of things
IF IT IS JUST A ROUTE THROUGH; MORE USE AND CONTRL IS US (MORE LIKELY TO BE
INFRINGED)
271(a): Use- system/ process
System Claims: The test is not whether the infringement took place within the United States, but whether control
and beneficial use of the infringing system was within the United States.
Process Claims: Because a process is nothing more than the sequence of actions of which it is comprised, the use
of a process necessarily involves doing or performing each of the steps recited [in the U.S.]
A patented system that routes calls and requires call centers in India.
Where is control of the system exercised and beneficial us of the system obtained?
What about a process?

271(a): offered for sale- Process Claims

Extraterritorial Reach: Deepsouth 271(f)
(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial
portion of the components of a patented invention, where such components are uncombined in whole or in part, in
such manner as to actively induce the combination of such components outside of the United States in a manner
that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
AT&T v. Microsoft
Justice Ginsburg-

Eli Lilly v American Cynamid

35 U.S.C. 271(g)
(g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United
States a product which is made by a process patented in the United States shall be liable as an infringer, if the
importation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for
infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use
or retail sale of a product unless there is no adequate remedy under this title for infringement on account of the
importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will,
for purposes of this title, not be considered to be so made after (1) it is materially changed by subsequent processes; or
(2) it becomes a trivial and nonessential component of another product.

Doctrine of Equivalents/ INITIAL INFRINGEMENT- class twenty one- 11/9

35 U.S.C. 112 6;
Nard 523-524;
Nard 526-547
INITIAL INFRINGEMENT

1. How do we apply the doctrine of equivalents?

2. What are the presumptions and exceptions to the doctrine of equivalents?
3. What are the policy goals that animate the doctrine?
Patent Litigation: Arguments validity/ infringement
Validity:
o Obviousness
o Novelty
o Utility
o Subject Matter (101)
o Written Description (112)
o Etc.

Infringement:
o Direct
Literal
Non-literal (DOE)
o Indirect
Inducement
Contributory
35 U.S.C. 271 - Infringement of patent.
(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any
patented invention, within the United States, or imports into the United States any patented invention during the
term of the patent therefor, infringes the patent.
Without authority
Makes, uses, offers to sell, sells, or imports invention
Within the U.S.
During the patent term

HYPO: Andersons cheese slicer

o Professor Andersons Cheese Slicer: Infringement
o A slicing device for cheese and the like, comprising:
o A base providing a flat cutting surface with a passageway for a cutting element;
o a bar having a general U-shape;
o A cutting element;
o and a rotating handle
Device comprising of 4 elements
Infringer needs to have all 4 elements
o Jones- does not infringe b/c missing an element
o Smith- has all elements but does something different- this infringes
** LOOK AT IF IT IS NARROWED BY ELEMENT OF THE PART OR NO MATERIAL
o even w/ wood base- DOE says doesn't matter; I forgot to include that elemt; don'tt penalize me,
ppenalize him
o Smith under DOE
Pg. 526 Graver Tank v. Linde Air Products (1950)- Justice Jackson - if it performs
substantially the same function in substantially the same way to obtain the same result.
o THIS CASE- WHO DO WE PUT BURDEN ON? PATENTEE OR DEFENDANT?
Unionmelt: Calcium and Magnesium silicates
Lincolnweld: Calcium and Manganese silicates
Patent: Alkaline earth metal silicate
Alkali earth metals on periodic table Alkali earth metals doe not include manganese
o Court says they are substitutable
o Dissent- if known as interchangeable why didn't claim it?
Notice function disserved
Ability to reissue (this can be fixed by patentee not the court)
Limitation only 2 years to broaden (must spot error quickly)

Definiteness in Real Property- If scope of land size is unclear you negotiate for a lower price
o Theres no certainty in notice if we dont know the scope; the patent system is supposed to give
notice of what you patent and now we dont know here
ESTABLISHES DOE
DOE Review
o I claim a process of purchasing items comprising
o -Selecting an item for purchase
o -Obtaining price information
o -Paying via credit card
o -Processing payment
o **via telephone

Definiteness in Real Property- Justice Thomas

Warner- jenkinson co. v. Hilton davis
o (to go to PTO must:
create something- way of purifying dye
o Hilton Davis Application= no initial range or ph/ process w/ specification on prssure and process)
rejected
o There is prior art (bboth patent) operates at a ph level above 9
You can amend claims
Quit
Can go to court
o Hilton Davis amends claim from ph of aabout 6-9
Goes after a person using a process with a ph of 5
o Thomas (always get patent, sometimes Breyer)
Want to protect patentees from minor changes that dont make al ot of a difference
o DOE- performs substantially the same funtion in same way for same result- Graver
o Warner- Jenkinson: element by element comparison
Ehat are elemsnts
Met literal or equivalent?
If yes each element met- infringed
Cheese cutter hypo
Graver tank: infringes
o Warner- jenkin: what are differences and are they material??
Court would say they are different he couldve seen marble as base
Maybe if it was a natural materials: wood vs. aluminum
SCOTUS- changes test to be applied by element
Can apply to later developed technologies
o Time of filing- obvious, novel, infringement
o DOE- can capture later arising technologies

Assessed at the time of finfringement, not at the time of filing

Can capture technologies you could not knowa bout at the time

HYPO
9.5 ph- no infringement under DOE
o gave that up in prosecution
unellss Hilton davis (trying to get the lower bound)
if it waw to avoid prior art you area foreclosed
if for other reason- DOE is available
o presumption= change was to avoid prior art
show evidence it was not to avoid prior art
o patent suing patent= interference; do these differ? (booth has aptent)
could extend it to 8.5?
LIMITED BY PROSECUTIO NISTORY ESTOPPEL******
LIMITED BY PROSECUTIO NISTORY ESTOPPEL******
o Presumption: claim amendments made in prosecution were made to escape prior art
Presumption in rebuttable: by evidence that the . COPY FROM SLIDE

Festo v. Shoketsu Kinzoku Kabushiki (magnetized rails 2 magnetized rings) (2002)Justicce Kennedy- PRESUMPTION FROM JENKINSON: AMENDMENTS RELATED TO
PATENTABILITY FORECLOSE DOE ON AMENDED ELEMENTS STANDARD FOR REBUTTING
PRESUMPTION
Infringer using 1 magnetized ring Can festo pursue if claiming 2 rings?
Not reasonably foreseeable by PHOSITA at time of amendment
o Ie- Could not forsee technology change
Rationale= only tangentially related to equivalent
Other reasons
SCOTUS doesn't give good patent law cases
Presumption: amendments related to patentability foreclose DOE on amended elements
Standard for rebutting presumption of estoppel
1. Alleged equivalent not reasonably foreseeable by PHOSITA at time of amendment (and thus could not
have been placed in claims)
2. Rationale underlying amendment only tangentially related to equivalent
3. Some other reason suggesting the patentee could not have described the insubstantial substitute
* Applies to any reason related to patentability: not just amendments to avoid prior art
Exception to the Exception to the Exception to the Rule
Rule= Literal Infringement
o Exception= Doctrine of Equivalents
Exception= Prosecution History Estoppel
Exception= Un-foreseeability, etc
Rule: literal infringement (must paractice all of claim)
o Exception: DOE: expanding scope of claim to capture what was not calimed
Restrictions: Prosecution History Estoppel (if limited b/c of prior art cannot change)
(presume amendments are for patentability)
Exception: un-forseeability, etc.

IF YOU HAVE AN AMENDED CLAIM YOU RUN INTO PROSECUTION HIDTORY ESTOPPE
LBUT YOU CAN STILL USE SEXCEPTIONS
DOCTRINE OF EQUIVALENTS- If it performs substantially the same function in
substantially the same way to obtain the same result. Graver Tank, 339 U.S. 605, 608
(1950)
LIMITED BY PROSECUTION HISTORY ESTOPPEL
o PRESUMPTION: Claim amendments made in prosecution were made to escape prior art
o PRESUMPTION IS REBUTTABLE: by evidence that the reason for the amendment was unrelated
to patentability
Element by Element Comparison: Each element contained in a 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 to the invention as a
whole. - Warner-Jenkinson v. Hilton Davis, 520 U.S. 17 (1997)
Can apply to later developed technologies
DOE assessed at time of infringement
Hypo: Wright Brothers
Original claim:
A machine powered flying device Comprising a winged structure.
Amended claim:
A machine powered flying device comprising a winged structure covered with cotton fabric.
**Consider: Nylon Flying Machines Inc., Linen Flying Machines Corp.
o Nylon
Not literal infringement
Altered to say cotton- so no DOE
Nylon was invented way later so it is unforeseeable
o Linen
This is more predictable
o Presumption: claim amendments made in prosecution were made to escape prior art
Presumption in rebuttable: by evidence that the . COPY FROM SLIDE
35 U.S.C. 271 - Infringement of patent.
(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any
patented invention, within the United States, or imports into the United States any patented invention during the
term of the patent therefor, infringes the patent.
(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
(c) Whoever offers to sell or sells within the United States or imports into the United States a component of a
patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a
patented process, constituting a material part of the invention, knowing the same to be especially made or
especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce
suitable for substantial noninfringing use, shall be liable as a contributory infringer.

Infringement checklist
Single entity?
Perform infringing act?
In US?
Hypo: Software
Claim 1: A method of calculating payments comprising
A patient entering medical data
Sending the data to a provider
Said provider calculating payment amount
What is required for indirect infringement?
Someone has to directly infringe

The indirect infringer must contribute to or induce the infringers actions

INDIRECT INFRINGEMENT- contributory/ inducement
CONTRIBUTORY 271(C)
o (1)PROVIDE COMPONENT THAT IS A MATERIAL PART OF THE INVENTION
o (2)NO SUBSTANTIAL, NON-INFRINGING USES
o (3)SCIENTER KNEW THAT PATENT WAS INFRINGED
o (4)ONLY ACTIONS WITHIN U.S.
INDUCEMENT 271(B)
o (1)ENCOURAGE SOMEONE TO INFRINGE
o (2)SCIENTER WILLFUL BLINDNESS:
(A)BELIEF THAT A PATENT EXISTS AND IS INFRINGED
(B)ACTIONS TO AVOID LEARNING OF PATENT
o (3)NO GEOGRAPHIC RESTRICTIONS (BUT, U.S. DIRECT INFRINGEMENT)
Infringement checklist
Single entity?
Perform infringing act?
In US?
Hypo: Medical Methods
Patented method of using needle with needle guard
1.A makes needle guards in Canada and sells to B in Canada
2.B ships needle guards to the U.S.
3.C uses needle/needle guard devices in U.S.
35 USC 271: Indirect Infringement
(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
(c) Whoever offers to sell or sells within the United States or imports into the United States a component of a
patented machine, manufacture, combination or composition . . .

Indirect Infringement/ INITIAL INFRINGEMENT- twenty two- 11/11

35 U.S.C. 271 (a),(f),(g) (Nard 977);
Nard 603-613
Supplement 46-54 (MyWCL);
Nard 619-620 (notes 1-2)
INITIAL INFRINGEMENT
1. What is covered by 271(b)?
Inducement. Someone that doesnt directly infringe a patent, yet causes or encourages someone else to
directly infringe
o SOMEONE HAS TO DIRECTLY INFRINGE
o INDUCING PEOPLE TO INFRINGE BY CREATING A PRODUCT
2. What is covered by 271(c)?
Contributory infringement. Supplying a component of a patented invention
3.What is the difference between the two? (2 differences)
SCIENTER AND GEOGRAPHY
o Scienter- the knowledge
o Geography
One is U.S. only- look up which one is which!!
Geography- only actions that occur in the U.S. (for c); can happen anywhere (for b)
o InduceHave to know about it or be willfully blind of its existence
o Contributory- doesn't rise to level of willfull blindlness (less)

If someone sells them abroad and you bring them here no contributory infringe; but you can induce
someone from abroad to infringe in the U.S. and that counts ?
DOE REVIEW
I claim a process of purchasing items comprising
-Selecting an item for purchase
-Obtaining price information
-Paying via credit card via telephone
-Processing payment
Patent Litigation: Arguments
Validity:
o Obviousness
o Novelty
o Utility
o Subject Matter (101)
o Written Description (112)
o Etc.
Infringement:
o Direct
Literal
Non-literal (DOE)
o Indirect
Inducement
Contributory
35 U.S.C. 271 - Infringement of patent.
(a) Except as otherwise provided in this title, whoever without authority makes, uses,
offers to sell, or sells any patented invention, within the United States, or imports into
the United States any patented invention during the term of the patent therefor, infringes
the patent.
Without authority
Makes, uses, offers to sell, sells, or imports invention
Within the U.S.
During the patent term

1. What actions outside of the U.S. are covered under 271(a)?

2. What is a component under 271(f)?
3. What rights do process patent holders have to restrict imports under 271(g)?
Infringement Checklist
Single entity?
Perform infringing act?
In US?
Hypo: Software
Claim 1: A method of calculating payments comprising
A patient entering medical data
Sending the data to a provider
Said provider calculating payment amount
What If There Is No Single Direct Infringer?
1.A method of paying bills using a telephone connectable to at least one remote
payment card network via a payee's agent's system, wherein
[1] a caller places a call using said telephone to initiate a spontaneous payment

transaction that does not require pre-registration,

[2] to a payee, who performs the steps of:
- accessing callers records
- analyzing credit history
- determining credit risk
INFRINGEMENT RULES
1.DIRECT INFRINGEMENT REQUIRES A PARTY TO PERFORM OR USE EACH AND
EVERY STEP OR ELEMENT OF A CLAIMED METHOD OR PRODUCT.
2.INDIRECT INFRINGEMENT REQUIRES, AS A PREDICATE, A FINDING THAT SOME
PARTY AMONGST THE ACCUSED ACTORS HAS COMMITTED THE ENTIRE ACT OF
DIRECT INFRINGEMENT.
3. FOR PROCESS PATENT OR METHOD PATENT CLAIMS, INFRINGEMENT OCCURS
WHEN A PARTY PERFORMS ALL OF THE STEPS OF THE PROCESS.
1. What actions outside of the U.S. are covered under 271(a)?
2. What is a component under 271(f)?
3. What rights do process patent holders have to restrict imports under 271(g)?
BMC- Courts faced with a divided infringement theory have also generally refused to find
liability where one party did not control or direct each step of the patented process.
Solving the problem by drafting
1.A method of paying bills using a telephone connectable to at least one remote payment card network via a
payee's agent's system, wherein
[1] a caller places a call [a payee receives a call from a caller] using said telephone to initiate a spontaneous
payment transaction that does not require pre-registration,
[2] to a payee, [the caller receives information obtained from the following] steps:
- accessing callers records
- analyzing credit history
- determining credit risk
Infringement checklist
Single entity?
Perform infringing act?
In US?
35 U.S.C. 271 - Infringement of patent.
(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any
patented invention, within the United States, or imports into the United States any patented invention during the
term of the patent therefor, infringes the patent.
Without authority
Makes, uses, offers to sell, sells, or imports invention
Within the U.S.
During the patent term
NTP v. Research in Motion
271(a): Use
Systems Claims- The test is not whether the infringement took place within the United States, but whether
control and beneficial use of the infringing system was within the United States.
Process Claims- Because a process is nothing more than the sequence of actions of which it is comprised,
the use of a process necessarily involves doing or performing each of the steps recited [in the U.S.]

Extraterritorial Reach:Deepsouth
(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial
portion of the components of a patented invention, where such components are uncombined in whole or in part, in
such manner as to actively induce the combination of such components outside of the United States in a manner
that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
Eli Lilly v American Cynamid
35 U.S.C. 271(g)
(g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United
States a product which is made by a process patented in the United States shall be liable as an infringer, if the
importation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for
infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use
or retail sale of a product unless there is no adequate remedy under this title for infringement on account of the
importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will,
for purposes of this title, not be considered to be so made after (1) IT IS MATERIALLY CHANGED BY SUBSEQUENT PROCESSES; OR
(2) IT BECOMES A TRIVIAL AND NONESSENTIAL COMPONENT OF ANOTHER PRODUCT.

What is the U.S. ITC?

Created in 1916 originally the U.S. Tariff Commission for providing, studies, reports, and trade
recommendations
6 commissioners split between political parties
investigates unfair practices in imports (ALJs)
What are 337 Investigations?
Part of the Tariff Act of 1930 (the Smoot-Hawley Act) -- 19 U.S.C. 1337
Trade statute not IP as such to deal with unfair imports

 Administrative proceedings
Appeals to Federal Circuit
337 Investigation: Elements
Importation (or sale for importation; sale by importer)
Domestic Industry Requirement
o Economic Prong
(A) Significant investment in plant and equipment
(B) Significant employment of labor or capital; or
(C) Substantial investment in exploitation, including engineering, r&d, or licensing
o Technical Prong
domestic article protected by patent
Patent Infringement

337 Investigation: Remedies

EXCLUSION ORDERS (no damages awards); ebay does not apply (according to ITC)
o Limited applies to parties found to be infringing
o General applies to all infringing products (rarely granted)
CEASE AND DESIST ORDERS (to deal with inventory in the U.S.)
337 Enforcement
1. Distinctive fast-track process
2. Limited exclusion orders and downstream products
3. The rise of NPE complaints at the ITC

Defenses
Inequitable Conduct and Experimental Use-class twenty three- 11/16
Nard 799-823
ONE OF THE LAST CLASSES 11/16
Go to the last class there is something on the test from design patents (MONDAY after thanksgiving)
o Not going to need to know AIA rules for design patents
1. What is the standard for determining inequitable conduct? What are the penalties?
Materiality (but/for) and intent (knew, not whould have known)/// invalidation of entire patent
o **KNOWLEDGE is the standard
o standard= clear and convincing (greater than 50 percent; like 75) for materiality and for
intent

 ***maybe not materiality- will say later if not

2. What is the scope of the 271(e) experimental use exception?
All use of patented invention reasonably related to submission under the FDCA
3. What is the scope of the common law experimental use exception?
Almost non-existent/// amusement, curiosity, philosophy
Defenses- Clear and convincing evidence standard (Sec. 282 -Presumption of validity
20 years from filing)
Invalidity- - presumption of validity when patent filed (lasts 20 years)
o Must show something is lacking w/ clear and convincing evidence (accused infringer has burden of
proof to prove invalidity)
Equitable defenses- - patent valid and I infringe but you should not enforce it
Experimental Use
o Common law
o 271(e)
Authority Issues
o Exhaustion/First Sale
o Implied License
Shop Right
Repair (not reconstruction)
Prior User Rights (business methods)
Medical Activities (suits against doctors or hospitals)- not allowed
State sovereign immunity- - cannot sue a state for patent infringement unless they give permission to do so
Statute of limitations (6 years)
o Starts when ifringement happens for 6 years
If a continuing infringement , restarts every time its used
Each infringement- another 6 years from then
Equitable Defenses
Inequitable conduct- Duty of Candor
Patent Misuse (limited by 271(d))
Double Patenting
Laches- Bars all damages prior to suit
o Unreasonable delay in bringing suit
o Material prejudice
Equitable estoppel- Bars all suits against particular infringer
o Conduct indicating no enforcement
o Reliance + material prejudice
Equitable defenses
o Inequitable conduct
Duty of candor
You can lose all of your rights to your claims
One claims affects the whole patent (or family)
This kills the whole patent so you cannot sue anyone else for it
o Patent misuse (limited by 271(d))
If you have a patent you cannot tie it to a nonpatented product
(ie. Cannot sell patented toothpaste only w/ nonpatented toothbrush as a combo)
o double pantnting- obvious its your own??
o Laches
Bring suit in unreasonable amount of time

 Material prejudice
Bars all damages prior to suit
o Equitable estoppel
Conduct indicating no enforcement
Reliance + material prejudice
Reliance is key!
Bars all suits against particular infringer
Check slides for aquamine
Therasense case
Involves status of arguments made before the European patent office in an opposition heainrg
Statements involved a prior patent on the same technology claimed in the aptent at issue in the federal
circuit case
What makes it patentable? They have an electrode with no intervening membrane and theyre the only one
without that; (accused device= diabetes testing)
Specification included dstamtent that lack of membrane was a preferred embodiment
They made two different representations one at EPO and one at USPTO
O One saying it is optional and the other saying it is not
O Is there enough to prove the attornery is trying to deceive the PTO and we should destroy the
patents?
2 tests
O specific INTENT to deceive the PTO
O materiality
sliding scale
if this one reference that was not disclosed would bury the patent????
O But for this action the patent would not have issued= new standard?
Majority- intent
O Must show specific intent to device PTO (this is hard because you have to prove it)
Negligence is not enough
THERE IS NO SLIDING SCALE- high materiality cannot substitute for intent
Circumstantial evidence OK but must be single most reaonsable inference
O Multiple reasonable inferences- intent cannot be found
Patentee need not offer good faith explanation
O Burden on party alleging deception
Rarely used doctrine when it used to always be used- really hard to do this
Majority-materiality
Rejected PTO rule 56 standard
O Overly broad and set a low bar for materiality
Adopted a but-for standard
O Exception for affirmative egregious misconduct
Have to show you knew it was relevant and chose not to tell the PTO
Pre- Therasene examples!
O First one
Is not)
O Burying
Unless you can show it is happening- the inference alone is not inequitable conduct
O Last 2 are inequitable conduct- you could get in trouble
The aftermath: Therasense on remand **** COPY SLIDE
O Intent
Specific intent to deceive PTO

 singl
O materiality
Aftermath of Lawrence Pope
O THIS IS A SCARLET LETTER
PATENT ATTORNEYS HATED THIS DOCTRINE AND ESSENTIALLY KILLED IT
Claritin- What a drug should do
Took 11 year fro FDA approval and then you recoop costs during this window??????
While patented made 3 bilion a year, still making money w/o patent
o 1: Drug discovery and development
o 2: pre-clinical trial
o 3: Clinical trials
Takes years and is very expensive
This is an investigational new drug application
o 4: FDA Review
o 5: Post Market Surveilllance
When they can get sued for drugs that area approvaed but are actually not safe
o Only big companies with losts of money can do this
35 USC 271(e)- hatch Waxman act- agreement relating to drugs
drugs get longer lifespan inexchange for the abbreviated new drug application
prior to the act you had to wait until patent expired to start experimenting in ways that infringe
o the act says people can piggyback off of data if they prove drug is similar in structure to the drug
that exists to save money on new tests
the extension is extra time depending on how long the FDA takes
patent usually files around pre-clinical trials ; now people file as soon as ready
Merck v. Integra Lifesciences
o Cancer creates tons of blood vesseas and takes fluid to feed tumors, if body restricts this the tumor
cannot grow as well
o 271e case
o debate: = under 271 e to be reasonably related has to be under an ADNA filing
o SCOPE OF 271(E) VERY BROAD
allows exception for infringement of all uses
o used to be only ANDA/// now anything used for ANDA???
o Negative information- that it does not work
This is also reasonable
Madey v. Duke- no one could perform but him or selse the patent is infringed; the
experiments were his patent
o No legislative purpose to punish those just trying to develop knowledge justice Story (precedence)
o Duke not under exception b/c it can only be used for amusement or philosophical inquiry
so long as the act is in furtherance of the alleged infringers legitimate business
you do not get experimental use exception b/c Duke is making money
NEVER found case- getting someone out of infringement
o Common law version= dead
o 271e has life in drug business
o academic institutions do not fall under this
class twenty three- inequitable conduct, experimental use
Therasense Justice Rader
Involves status of arguments made before the European Patent Office in an opposition hearing

Statements involved a prior patent on the same technology claimed in the patent at issue in the Federal
Circuit case
Claim 1, 551 Patent

Accused Device
Prior Abbott patent: 4,545,382
Specification included statement that lack of membrane was a preferred embodiment:
Optionally, but preferably when being used on live blood, a protective membrane surrounds both the
enzyme and the mediator layers, permeable to water and glucose molecules.
Abbotts Representations to the PTO Dr. Gordon Sanghera- [O]ne skilled in the art would not read
lines 63 to 65 of column 4 of U.S. Patent No. 4,545,382 to teach that the use of a protective membrane with
a whole blood sample is optionally or merely preferred.
Lawrence Pope, esq.- One skilled in the art would not have read the disclosure of the [382 patent] as
teaching that the use of a protective membrane with whole blood samples was optional.
Abbotts Representations to the European Patent Office It is submitted that this disclosure [of the
382 patent] is unequivocally clear. The protective membrane is optional, however, it is preferred when
used on live blood in order to prevent the larger constituents of the blood, in particular erythrocytes from
interfering with the electrode sensor.

MAJORITY- INTENT
Must show specific intent to deceive PTO
o Negligence not enough
No sliding scale
o High materiality cannot substitute for intent
Circumstantial evidence OK, but must be single most reasonable inference
o Multiple reasonable inferences - intent cannot be found
Patentee need not offer good faith explanation
MAJORITY MATERIALITY
Rejected PTO Rule 56 standard
o overly broad and set a low bar for materiality
Adopted but-for standard
o Exception for affirmative egregious misconduct
Equitable Defenses
Inequitable conduct
o Duty of Candor
Pre-Therasense Examples:
o Failure to cite a known prior art reference (unless it is cumulative of those already cited)
o Burying a material reference in a stack of irrelevant information
o Submitting false or misleading declarations relating to dates of invention and enablement
o Failure to disclose offers for sale and public uses relevant to 102(b) statutory bars
The aftermath: Thereasense on remand
1. Intent
a. Specific intent to deceive PTO
b. Single most reasonable inference
2. Materiality
a. But/for standard

The aftermath: Lawrence Pope

Does the Patent System Work? Drugs and chemicals- Yes; Computer software- No

35 U.S.C. 271(e)
(1) It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into
the United States a patented invention ... solely for uses reasonably related to the development and submission of
information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological
products.

Merck v. Integra Lifesciences I- Justice Scalia

Madey v Duke- Justice Story- It could never have been the intention of the legislature to
punish a man, who constructed [an infringing device] merely for philosophical experiments,
or for the purpose of ascertaining the sufficiency of the machine to produce it its described
effects.
Whitemore v. Cutter (1813)- Judge Gajarsa- So long as the act is in furtherance of the
alleged infringers legitimate business and is not solely for amusement, to satisfy idle
curiosity, or for strictly philosophical inquiry, the act does not qualify for . . . The
experimental use defense.
LAST CLASS
1. What is the standard for determining inequitable conduct? What are the penalties?
2. What is the scope of the 271(e) experimental use exception?
3. What is the scope of the common law experimental use exception?

CDN Content Delivery Network/ LIMELIGHT NETWORKS/ AKAMI

Limelight has big customers, like Microsoft, Amazon, and Oprah, in which it serves as the content service provider
Claim 34 of Patent No. 6,108,703
A content delivery method, comprising:
distributing a set of page objects across a network of content servers managed by a domain other than a content
provider domain, wherein the network of content servers are organized into a set of regions;
for a given page normally served from the content provider domain, tagging at least some of the embedded
objects of the page so that requests for the objects resolve to the domain instead of the content provider domain;
in response to a client request for an embedded object of the page;
resolving the client request as a function of a location of the client machine making the request and current
Internet traffic conditions to identify a given region; and
returning to the client an IP address of a given one of the content servers within the given region that is likely to
host the embedded object and that is not overloaded.
Akamai Tech. v. Limelight- Judge Linn- Direct infringement liability of a method claim exists
when all of the steps of the claim are performed by or attributed to a single entity.
Single entity rule still governs
But, certain relationships imply a single actor
Attributed to a single entity
o Principal-agent relationship
o Contractual relationship*
o Joint enterprise
Note, there was a contract here. To be attributed to, the contract needs to bind the
other party, not merely describe the services offered.
GETTING BACK TO AKAMI V. LIMELIGHT
CDN- all Netflix movies stored on a server system all around the world (CDN- content delivery network)
Llimelight= big CDN providor
Akami is patentee; MIT is licensee?? (or vice versa///CHECK)
Distributing, tagging, resolving, returning;
o Limelight says we do not do tagging; our customers make that choice when they log into the
database
Claim this does not entirely infringe
o Response: theyre responsible for customers doing this so they are infringer
Holding- no heyre not; only infringed when all steps of claim are performed by single entitiy or attributed
to a single entity
There has to be someone who completely infringes the patent
o Here there is not that person
You cannot contribute to someones infringing when there is no full direct infringer
o THERE IS A BIG EXCEPTION
Certain relationships imply a single actor
attributed to a single entity
o principal-agent relationship
o contractual relationship
ie. Employee doing half and boss doing half
o joint enterprise
2 corporations working together
you can probably get both (joint and single liability)
o * there was a contract here

to be Attributed to- the contract needs to bind the other party , not merely describe the
services offered
do you have enough control in the situation that you get responsibility- CONTROL
lots of people come out differently- it is all about control
direct infrginement is different from inducement; if there is no direct infringement we do not get to
inducement
o if yes theres infringement then you can move to say who induces them

Damages
Money Damages- class twenty four- 11/18
35 U.S.C. 284 (Nard 978);
Nard 889, 895-919
DAMAGES
1.What are the requirements for proving lost profits in patent cases?
1. WHAT WOULD PROFITS HAVE BEEN ABSENT INFRINGEMENT
a. How many sold aand stuff about you the infringer desnt matter just matters how mnay did
you stop me from selling?
b. Lost profits dont have to be tied to infringement- case w/ recovery for unpatented item
c. Is there an infringement? If YES- we dont care how much of sales were of patented vs. not///
we only care how much sales did we lose from their infringement
d. Have to find a comprable license to get reasonable royalties; otherwise must depend on lost
profits
2.What are the parameters of the reasonable royalty evaluation?
2. NEGOTIATION PRE-INFRINGEMENT. MUST BE ABLE TO DEMONSTRATE RATIONALE
FOR DAMAGE AWARD.
3.What are some evidentiary problems with proving reasonable royalties?
Secret licenses (most licenses are secret). TRYING TO PROVE A NEGOTIATION THAT DIDNT
HAPPEN WOULD HAVE HAPPENED. MULTIPLE FACTORS- NONE PREDOMINATES.
DAMAGES
Monetary Damages
Actual damages: Lost Profits
Reasonable royalty
Injunctive Relief
Preliminary
Permanent

35 U.S.C. 284-[T]he court shall award [the patentee] damages adequate to compensate
for the infringement but in no event less than a reasonable royalty for the use made of the
invention by the infringer.
Timeline
Starts- date of issuance of patent
Complaint filed in district court
Preliminary injunction hearing
o Cant get damages for dates after this
Final injunction issues
Damages assess if marking (or actual notice) to infringers about your patent (issuance of patent until
preliminary injunction hearing)
o Damages start when they have notice of your patent and that they may be infringing
AFTER preliminary injunction= prospective effect
o Reasonable royalty until certain time period or until patent ends
35 USC 284- damages adequate to compensate for infringement but in no event less than
a reasonable royalty for the use made of the invention by the infringer
LOST Profits
but for the defendants infringing sales, what would the patentees profits have been?
o How much did I lose because of that sale?
NOT a disgorgement remedy: a patentees loss, NOT infringers gain
Reasonable royslty- how much would he have paid if he had to ngotiate with meup front
Usually 2 small companies suing eachother

Rite-Hite v. Kelley (truck brakes)- Panduit 4-factor test

1.Demand for patented product
2.Absence of non-infringing substitutes
3.Manufacturing and marketing capability
4.Amount of profits that would have been made (accounting evidence)
Can you get damages on both or just the patentes??
Court said you can get sales from both
If infringer not there how many sales would you have made?
Doesn't matter if one not patented, so long as a patent was infringed
This shows how lost profits works
o Focusing on how much was lost (not how much was made)

INFRINGER MARKET SHARE= LOST PROFITS/ DAMAGES AREA

Lost profits: 2 competitor marketplace

o 1:1 every sale you made took from one I would ve made
multicompetitor marletplace
o part of infringer market share (divied by other competitiors)
ie. If 3 businesses and one is infringer; half of what it makes would have maybe gone to me
and the other half coulve gone to the competitior
Panduit 4 factor test
o Demand for patented product
Would it go completely to patentee?
o Absence of non-infringing substitutes
If an absence, all to me; if theres another person it gets split
o Manufacturing and marketing capability
o Amount of profits that would have been made (accounting evidence)
Hypo: - BMW headlights/ NISSAN
I manufacture patented headlight. Sell to BMW.
o Can I sue Nissan?
o Can I get lost profits?
Infringer licenses tail-light to
Make headlights for BMW and Nissan infringes to use it for a taillight
YOU can sue get them as direct infringer
o They have the lights in their cars
Can you get lost profits???
o Manufacturing capability- are they so different (headlights vs. taillights)
Saying Nissan need taillights and I could have supplied them for them; not about selling less BMWs
YOU SAY- WE CANNOT PROVE LOST PROFITS SO THE STATUTE SAYS YOU CAN USE
REASONABLE ROYALTY
Pg. 895 Lucent v. Gateway- Judge Michel- damages
Method to enter data w/o a keyboard (its a date planner)
Calculating damages
o Reasonable royalty
Analytic
Hypothetical negotiation (most cases are this)
Georgia- Pacific- 15 factor test
2.Rates paid by licensee for similar patents
10. The nature of the patented invention
11. Extent to which the infringer made use of the invention
13. The portion of profit attributable to the invention
original damages based on 8?
test starts for negitiation at the time of infrgement
hard to eliminate hindsight bias
creating a hypothetical that never happened w/o guidance

LOOK at comparable licenses in the market

o Problematic b/c licenses are generally kept a secret
FACTOR 2- rates paid by licensee ; they were not comparable
FACTOR 10- nature of patented invention
o Relatively small feature of the whole program
FACTOR 13- portion of profit attributable to the invention
FACTPR 11 Actual Award: $357,693,056.18
o Lucent wanted $561,900,000 (561 milion)
o Microsoft argued for $6,500,000 (6.5 million)
And now? $26,500,000 (+$15,000,000 interest)
WHAT LICENSE WOULD THEY HAVE AGREED TO?
o JURY GAVE 357 MILLION; THEN FINAL AMOUNT IS 26.5 MILLION AND 15 MILLION
INTEREST
Pg. 907 Uniloc v. Microsoft- Judge Linn- The use of [the 25%] rule fails to pass muster under
Daubert and taints the jurys damages calculati
Uniloc came up with this for magazines
Originally won 388 million
Damages based on 8%
Rule of thumb
How do we make negotiation more realistic?
THROWS OUT the 35% Rule
Entire market value rule- only if the patent is a large part of reason
UNFAIR TO ENTER THIS because you BIAS THE JURY
o Juries split the baby
o Cannot introduce it in cases when the product doesn't add value
Admitting this into evidence could bias the jury
Judge totally threw the case out

NEW APPLE SAMSUNG CASE

Permanent Injunctions-class twentyfive- 11/23

35 U.S.C. 283 (Nard 977);
Nard 936-956
INJUNCTIONS
- What are the requiremenrs for obtaining preliminary injunctions?
o Four factors, focused on likelihood of success
- After ebay what re the standards for permanent injunctions?
o Four (similar) factors, none predominates
- How has the federal circuit modified its approach to injunctions in light of ebay?
o No presumption; more likely to grant in cases of competitors; less likely in cases of multiple
components
REMEDIES: PRELIMINARY INJUNCTIONS- Injunction -- 4 Factors:
1. Reasonable likelihood of success
2. Irreparable harm
3. Balance of hardships
4. Impact on public interest

NOT GIVING INJUNCTIONS TO PATENTEES HURTS PATENTS; IF PRODUCT NOT AVAILABLE IT

HARMS CONSUMERS (THESE ARE PRESENT IN ALL CASES; ONE USUALLY DOMINATES)
DAMAGES
Monetary damages
Royalty
Lost profit
Injunctive relief
Preliminary
Permanenet
DAMAGES Preliminary injunction hearing back to issuance = damages if marking or actual
notice
1. Preliminary up to final injunction issues= prospective effect
Requirements for obtaining preliminary injunctions
After ebay, what are standards for permanent injunction
How has the federal circuit modified it approach to injunctions in light of ebay?
35 U.S.C. 283
[Courts] may grant injunctions in accordance with the principles of equity to prevent the violation of any right
secured by patent, on such terms as the court deems reasonable.
what is reasonable?
Up to district courts
Amazon.com v. [bn].com, Inc (pg. 919)- 1-click patent. (Fed. Cir. 2001)
Facts:
1997: Amazon debuted 1-Click purchasing feature.
1997: Amazon filed for a patent on technology
1998: barnesandnoble.com debuted one-click Express Lane feature.
1999: Amazon issued its patent and filed a lawsuit vs. bn.com.
Gets patent and sues Barnesandnoble.com
CLAIM= single action without using a shopping cart
***INFRINGEMENT? VALIDITY?
Infringement- looks at amazon site
Validity- look at prior art references
Reference 1- Compuserve (buying stock?)
Reference 2- Web-Basket; Draft Cookie Specification
Reference 3- book appendix
Referene 4- website using feature and explaining it
Infringement? Validity?
Ask for a preliminary injunction- injunction before the case is over
Appeals to federal circuit before case over
Circuit care how likely are they to win?
Amazing likely to win
Validity??
Compuserve reference (not outside of claim- buying stock information)
Web-basket reference and draft cookie specfication
Instant buy option in a book
Are these references enabled??? Does it say how to do this for a person skilled in the ordinary art??
Olivers market- ordering system (click on a picture to irder an item)
REMEDY: PRELIMINARY INJUNCTION (4 FACTORS)
Reasonable likelihood of success (here there is a lot f potentially invalidating prior art)
Irreparable harm

 Balance of hardships (balancing equities; who is it harder on?)

Impact on public interest (important for drugs or something like that)
KEY FACTOR= likelihood of success
Removed injunction bc not reasonable likelihood of success and amazon lost patent
This was an example for business method patents
Pg. 936 EBAY vs. MercExchange- Justice Thomas- Remedies: Preliminary InjunctionsInjunction -- 4 Factors
Concurrence #1- Justice Thomas Mercexchange was working on a license agreement with ebay
Mercexchange owns patent for the way ebay does its business
Court finds it is valid and infringed
REMEDY= INJUNCTION
Reasoning= categorical rule you get an injunction if you can show someone used your patent
Defender has to prove that it shouldnt; otherwise there is an automatic injunction
Patent= personal property right to exclude; we dont take that away ever!
Taking out propr licneses does not preclude you from challenging validity
SCOTUS (Thomas) there shouldn't be a presumption in favor of anyone; you should use 4 factor test
The two concurrences clash; whether they should or should not lawaays issue
1. Both agree with majority
2. There is no majority out of 8 because 4/8 were in the concurrence
4 facotrs for injunction
irreprabale harm
monetary damages are inadequate
balance of hardships
impact on public interest
GOT RID OF REAONSBALE LIKELIHOOD OF SUCCESS TIS IS EVIDENT FROM YOUR
ACTUAL SUCCESS
NEW FACTOR= MONETARY DAMAGES WOULD NOT BE ENOUGH
court doesnt use factors; just provides them
CONCURRENCE #1 (Roberts, Scalia, Ginsburg)
Historic practice there is no entitlement to an injunction but theres a difference between equitable
discretion and getting a clean slate
Go by 4 factors and you should not automatically get it even though history says most people do
Patent rights should be ilke property??
Edwards Lifesciences v. CoreValve- Judge Newman- THE COURT (IN EBAY) DID NOT CANCEL
35 U.S.C. 154 NOR DID THE COURT OVERRULE ARTICLE I SECTION 8 OF THE
CONSTITUTION.
Robert Bosch v. Pylon Manufacturing- Judge OMalley- ALTHOUGH EBAY ABOLISHES OUR
GENERAL RULE THAT AN INJUNCTION NORMALLY WILL ISSUE , IT DOES NOT SWING THE
PENDULUM IN THE OPPOSITE DIRECTION.
eBay v. MercExchange: Concurrence #2- Justice RobertsZ4 v. Microsoft
In his concurrence, Justice Kennedy specifically mentioned the situation where a "patented invention is but a
small component of the product the companies seek to produce" Here, product activation is a very small
component of the Microsoft Windows and Office software products that the jury found to infringe z4's patents.

 Accordingly, Justice Kennedy's comments support the conclusion that monetary damages would be sufficient to
compensate z4 for any future infringement by Microsoft.
Pg. 940 Edwards lifesciences v. corevalve, inc.
Edward lifescience manufacures little metal heartvalves
They didn't get the injunction but won money
Federal circuit- case law supports them getting an injunction
Fulfilled the 4 factor test almost exactly
o Loss of exclusivity (here this is important b/c the market is so small)
DIFFERENCES FROM EBAY PRACTICES THE INVENTION AND IS A DIRECT MARKET
COMPETITIOR
o This gets them an injunction
Vacated judgemenet and remanded it back to the district court
In a competitior type situation we typically give an injunction (THIS ALIGNS WITH THE FIRST
CONCURRENCE from the ebay case)
Ebay court did not cancel 35 usc 154 or overrule article 1 section 8
You get your rights in patent law and this is done through an injunction
If they move manufacturing to Mexico they are fine and not infringing; seems they had not moved to
Mexico
Pg. 942 Robert Bosch LLC v. Pylon Manufacturing Corp.
Window wiper blades Theyre both making these
Bosch wants the injunction (loss in market share and access to customers)
Pylon went to Bosch customers and is infringing on product (ie. Walmart)
Bosch- getting money is not enough
This is his patent so he has a right to enforce his patent, by excluding the other manufacturer
EBAY case abolished the general rule but does not make things happen the other way
THIS IS TENDENCY IN COMPETITOR CASES
EBAY CONCURRNECE (Kennedy, Stevens, Souter, Breyer)
Apply 4 factor test Kennedy- concerned if youre infringing just a small component
Bargaining poewer to ask for more money
If oyou give injunctin to a small entitity they get the bargaining power of a much larger entity
Z4 v. MICROSOFT - Product activation is a very small component of the products// monetary
damages are sufficient latching onto the concurrence from Kennedy
NO INJUNCTION HERE- just damages
If you have an injunction you can offer to seell them your rights for 90% of their profits
HAVE you patented the whole product or a small component????
Who is a troll? ?- HARD TO IDENTIFY WHO THEY ARE AND GET RID OF THEM
Research Institutions?
Former Research Companies?
Independent Inventors?
Technology Holding Companies?
Apple v. Samsung- (Fed. Cir. 11/20/13)- UTILITY PATENTS
1.Irreparable Harm

(1) that absent an injunction, patentee will suffer irreparable harm, and

(2) that a sufficiently strong causal nexus relates the alleged harm to the alleged infringement.
$1,000,000,000 in damages (subsequently reduced)
No injunction

MORE INJUNCTION QUESTIONS

1.What are the parameters of the reasonable royalty evaluation?
2.What are the standards for receiving a permanent injunction?
Apple v. Samsung (Fed. Cir. 11/20/13) Irreparable Harm
o (1) that absent an injunction, patentee
will suffer irreparable harm, and
o (2) that a sufficiently strong causal nexus relates the alleged harm to the alleged
infringement.
zooming screen feature
jury awards them a billion dollars and no injunction; they appeal to federal circuit b/c they want injunction
injunction denied b/c of irreparable harm factor
for an injunction must show
that you were irreparably harmed (absent injunction will suffer harm)
sufficiently strong nexus between infringement and alleged harm (THIS IS WHAT THEY
COULDN'T SHOW)
MULTICOMPONENT IDEA- THINGS WITH MULTICOMPONENT LESS LIKELY TO GET AN
INJUNCTION (B/C OF THE IRREPARABLE HARM FACTOR)
THE MORE THEY SELL THE BETTER FOR YOU; YOU CANNOT SUE THEM AGAIN LATER IF THEY
CONTINUE TO INFRINGE AND PAY FINE AND YOU HAVE NO INJUNCTION

Design Patents- 11/30

High Point Design (MyWCL)

Egyptian Goddess (MyWCL)

1.What is the standard for design patent infringement?

- 2 doctrinal standards
2.How do we judge validity of design patents?
3.How do the infringement/validity standards differ between design and utility patents?

As is seen from the visual comparison, there were noticeable differences between (1) the handle silhouettes, and
(2) the engraving, including the ribbing, curls, points, etc. Nevertheless, and despite these differences, the Court
found that the accused White products incorporated a design that was substantially the same as the patented
design.
Thus, from the outset, the Court has made clear that the design patent infringement test is not a minute analysis of
detail but rather a test that asks whether the overall appearance of the patent and accused designs are substantially
same in the eyes of an ordinary observer. Id. at 528 (The purpose of the law must be effected if possible; but,
plainly, it cannot be if, while the general appearance of the design is preserved, minor differences of detail in the
manner in which the appearance is produced, observable by experts, but not noticed by ordinary observers, by
those who buy and use, are sufficient to relieve an imitating design from condemnation as an infringement.)
PRIOR ART- Egyptian Goddess v. Swisa- whether an ordinary observer, familiar with the
prior art, would be deceived into thinking that the accused design was the same as the
patented design. Egyptian Goddess at 681
Judge Bryson- In light of the similarity of the prior art buffers to the accused buffer, we conclude that no
reasonable fact-finder could find that EGI met its burden of showing, by a preponderance of the evidence,
that an ordinary observer, taking into account the prior art, would believe the accused design to be the same
as the patented design.

The Federal Circuits 2008 en banc decision in Egyptian Goddess is instructive on the limits that prior art
can place on the scope of design patents. Egyptian Goddess v. Swisa, 543 F. 3d 665 (Fed. Cir. 2008). In
Egyptian Goddess, the court abrogated the nettlesome point of novelty test, and in its place laid down a
rule requiring that the ordinary observer test be conducted, not in a vacuum, but rather in view of the prior
art. A visual analysis of the closest prior art, the patented design and the accused product is set forth below.
Here, the court felt that the prior art was quiet close in appearance to the patented design and thus the
difference between the patented and accused designs were accentuated. Ultimately the court concluded: In
light of the similarity of the prior art buffers to the accused buffer, we conclude that no reasonable factfinder could find that EGI met its burden of showing, by a preponderance of the evidence, that an ordinary
observer, taking into account the prior art, would believe the accused design to be the same as the patented
design. To stay true to the edict of Egyptian Goddess, before giving advice on the issues of infringement,
practitioners should always collect the prior art on the face of the design patent (at minimum), and use this
art as a frame of reference when conducting the ordinary observer analysis.
******************
DESIGN PATENT= COPYRIGHT/ TRADEMARK HYBRID NO SUBJECT MATTER LIMITS
Design of useful articles- 35 usc 171
Requirements for protection
- 102- novelty (is design new as a whole; with a new observer perspective- not same as PHOSITA (lower
standard))
- 103 non-obiviousness- like PHOSITA
- ornamentality/ nonfunctionality- new standard- cant be governed for function only
o cant be functional; must be ornamental (this is a copyright issue)
- 112- written description
- process- same PTO process w/ examiner (you can fihgt back on examiners opinion and then they allow or
don't)
- get 14 years from the grant (not 20 like other patents) ** 15 years NOW

**HOW ARE THESE DIFFERENT

- OBSERVER IS DIFFERENT
- TAKE LESS TIME TO
**DESIGN PATENTS- EASY WORK ALL ABOUT DESIGN- ARTISTIC EXPRESSION
how narrow are these things?
Dashed lines mean nothing; only the solid lines are patentable
Design patents= really weak; they do not cover much
Examples
o Chair patent (can stop chairs, couches, love seat, bench)
Under a design patent- these are not all covered
o Design patent on peace sign pretzel and the salt
DESIGN: THE NEW FRONTIER OF IP ORNAMENTALITY VS. FUNCTION
- OTHER PATENTS ABOUT FUNCTION; THIS IS ABOUT MAKING IT PRETTY
- FUTURE OF INNOVATION IS IN DESIGN PATENTS (MORE LIKE COPYRIGHT AND
TRADEMARK)
o YOU CAN HAVE BROAD RIGHTS FOR AN INVENTION THAT DOES NOT DO MUCH
- David Kappos, Design: The New Frontier of Intellectual Property, National Law Journal, Apr. 22,
2013
- Inherent Tension: design patents govern ornamental features; but not functionality
- To determine whether a design patent is infringed, we need to look to the decision in the Federal Circuit's
en banc rehearing of Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir. Sept. 22, 2008). In this decision, the
CAFC rejected the "point of novelty" test (i.e., "the accused device must appropriate the novelty in the
patented device which distinguishes it from the prior art") and re-established the "ordinary observer" test as
the exclusive test for determining infringement of a design patent:
- if, in the eye of the ordinary observer, giving such attention as a purchaser usually gives, two designs are
substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase
one supposing it to be the other, the first one patented is infringed by the other. (Gorham Co. v. White, 81
U.S. 511, 528 (1871))
- As a patent attorney and close follower of all things Apple, I do not consider myself an "ordinary observer."
However, I am quite sure that a Samsung Galaxy placed in front of someone like my mother would be
quickly perceived as "an iPhone." Anecdotal reports of pre-Verizon-iPhone sales people selling these
Samsung devices as "just like an iPhone," if verifiable, also might not be helpful relative to the "purchase"
prong of the test.

David Kappos, Design: The New Frontier of Intellectual Property, National Law Journal, Apr. 22, 2013
D. 624,501 a dual USB adapter owned by Ever Win International. Ever Win's product is available from
Amazon for $20 and is allegedly being infringed by similar devices being sold at CVS and other locations.
Ever Win Intl. Corp. v. CVS Corp., No. 2:12-cv-09594 (C.D. Ca. Nov. 8, 2012)
Plaintiff Ever Win filed suit against CVS alleging infringement of U.S. Design Patent No. 624,501 for a
Dual USB Active Cigarette Lighter Adapter Plug. Ever Win accuses CVSs Duracell Dual Mini USB

Car Charger, Model No. DU6117. Below is a comparison of the 501 Patent with the accused product as it
appears on the internet:
-

Mr. BD Kidd has sued Home Depot and others for infringing his Patent No. D.646,537 covering a crimping
tool that fits in your pocket.
Nebo's No. D.659,869 covers these funky flashlights that are allegedly being infringed.
Jugs Inc. owns No. D.451,566 that covers a five-position batting practice tee that is allegedly being
infringed by Wilson's and others. Wilson's has asked for a declaratory judgment of invalidity alleging that it
began using its version of the product (shown in yellow) in 1996, five years before the patent's 2001
priority date.
.
Oakley has again asserted its D. 397,350 that covers eyeglass fronts.
Lulumon has asserted its Design Patent No. D.645,644 against Calvin Klein. Klein immediately caved.

THIS ALL CHANGES- Apple vs. Samsung

1. tablets= huge jump forward in deisn; not about leap in technology
d305 design patent on way it displays apps
2. they couldn't show novelty for a utility patent
3. patent= for arrangmeeent of icons
before apple vs. Samsung it was mainly shoes (Nike- protecting copies of shoes w/o the swoosh)
now every industry is getting and enforcing design patents
a patent= 20,000; designs patents cost 1//2 or 1/3 or that
INFRINGEMENT STANDARD= ORDINARY OBSERVER: PURCHASER OF THINGS OF SIMILAR
DESIGN OR ONE INTERESTED IN THE SUBJECT
Gorham v. White- fork design (white infringed b/c ordinary observer would be confused with
the source of the forks)
Egyptian goddess vs. swisa, 543 f.3d 665 (fed. Cir. 2008) (en banc)- Would an ordinary
observer think theyre the same thing? Look at prior art (tropical shine doesn't look
hollow nailco has 3 sides)
o Judge Bryson- in light of similarity- no reasonable observer would find them to be the same
Whether an ordinary observer
taking into account the prior art
o three-way test is often helpful
o copyright analysis
o trademark analysis
would thnk accused design as a whole
o rejects point of novelty test (what is new here- if copy what is new its infringement; they kill this
test)
is substantially the same as the patented design
o copyright analysis
thus creating some customer confusion
o trademark analysis
doing 3 prong test
1. design vs. accused design (d1)
(number of sides, colors)
2. comparing accused deisgn to prior art (d2)

-if claimed or accused deisgn is closer to each other than prior art (d1 <d2) infringement is more likely
- if claimes or accused design is closer to prior art than each other d2 <d1 infringement is less likely
- if its like design= infringes; it like prior art= on infringement
These are very subjective- discussing images and why similar or not (prioritizing hollowness versus number
of sides)
Braun-Claiming infringement of the shape of their tool
Are lower holes functional ?
This was found to infringe
All youre doing is comparing pictures for similarities
Sugar on pretzel- would infringe salted pretzel patent
The whole claim is the picture
If you can show functionality doesn't infringe
D889- border with slight difference around edge and corners (biffled/ buffled?)
If there is any function at all this is not ornamental

there is clearly substantial evidence to support the jury's finding of infringement. In arguing that the jury
erroneously determined that it infringed Braun's design patent, Waring relies on certain differences
between its design and Braun's design. However, examination of Braun's and Waring's respective designs, in
addition to the blenders themselves, tells us a jury could reasonably find they are, when viewed as a whole
and compared to pre-existing hand held blenders, similar. FN8 For instance, in contrast to pre-existing hand
held blenders, which had a utilitarian, mechanical appearance, both Waring's blender and Braun's blender
share a fluid, ornamental, aerodynamic overall design. The shafts of both blenders are encased in a housing
that gradually tapers away from the motor housing. The top portion of each blender, when viewed from the
front, is tapered at the top to integrate the handle into the motor housing. The shaft housing of each blender
gradually expands to form a blade housing, which is punctured by four elongated, essentially rectangular
ports.

Crocs- A side by side comparison- would ordinary person be confused? Is it more like
patented design or prior art?

http://www.theordinaryobserver.com/2010/04/itc-v-crocs.html
There are a few noteworthy aspects of this decision. First is the Federal Circuits enthusiasm for
discouraging the reliance on overly-detailed verbal descriptions of designs. It seems misdirected here. The
issue is not that the claim construction was overly detailed; the fatal flaw with the ITCs decision was that
the finding of infringement was premised on a claim construction that was just plain wrong, at least with
respect to the strap of uniform width and the evenly-spaced holes.
Furthermore, the court did not remark on other less-than-optimal phrases in the claim construction. How
can a design feature be an element of a claim if it "may or may not" be present? What limitation does a
"systematic pattern" of hole placement really add? It would be interesting to know how the ITC would have
ruled had its claim construction been a bit more accurate and precise.
In my opinion, the court got at least part of the infringement analysis wrong. Compare, for example, the
Crocs patent (left) with the accused "Effervescent" product (right):
The court found that the Effervescent product infringed the Crocs patent. But I think the oversized
rectangular holes on the upper of the Effervescent product clearly avoid deception. Almost everything about
the Crocs design is rounded, swooping, and curved. Even the court noted that fact:
[An] overall effect of the design is a visual theme of rounded curves and ellipses throughout the design,
including the strap forming a sort of continuation of the sidewall of the base to create a visually continuous
ring encircling the entire shoe. Other examples of rounded curves or ellipses in the design are the ellipses
formed by the strap and the foot opening in the base.
I just dont see how the court can find that the Effervescent product (with its large rectangular holes on the
upper) is deceptively similar to the overall appearance of the Crocs design, which the court acknowledges is
a "visual theme of rounded curves and ellipses" including small round holes on the upper.
Finally, if you looked up the section of the Tariff Act referenced by Judge Rader in the first sentence of the
opinion, you may have noticed that it was repealed over 80 years ago. This is a typo. Section 337 was
originally encoded at 19 U.S.C. 337 (the section cited by Judge Rader), but that section was repealed, and
Section 337 was amended to its current form and moved to 19 U.S.C. 1337.

D677

Obviousness: High Point v. Buyers Direct- Judge OMalley- The ultimate inquiry in an
obviousness analysis is whether the claimed design would have been obvious to a designer
of ordinary skill who designs articles of the type involved.
o Fuzzy Babba (accused infringer)
o Prior Art and D183 Patent

[Federal Circuit] precedents teach that the ultimate inquiry under section 103 is whether the claimed design
would have been obvious to a designer of ordinary skill who designs articles of the type involved. Durling v.
Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (citing In re Rosen, 673 F.2d 388, 390 (CCPA 1982)).

Durling explains that this general principle translates into whether one of ordinary skill would have combined
teachings of the prior art to create the same overall visual appearance as the claimed design, id. (citing In re
Borden, 90 F.3d 1570, 1574 (Fed Cir 1996)), and that this in turn requires that one must find a single reference, 'a
something in existence, the design characteristics of which are basically the same as the claimed design.' Id.
(quoting In re Rosen, 673 F.2d at 391). Once the primary reference is found, other secondary references may be
used to modify it to create a design that has the same overall visual appearance as the claimed design. Id. Further,
these secondary references must be 'so related [to the primary reference] that the appearance of certain ornamental
features in one would suggest the application of those features to the other.' Id. (quoting In re Borden, 90 F.3d at
1575 (alteration in original)). Titan Tire Corp., supra, at 1380-1381.
For design patents, the role of one skilled in the art in the obviousness context lies only in determining
whether to combine earlier references to arrive at a single piece of art for comparison with the potential
design or to modify a single prior art reference. Once that piece of prior art has been constructed,
obviousness, like anticipation, requires application of the ordinary observer test, not the view of one skilled
in the art. Intl Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009)
For design patents, the role of one skilled in the art in the obviousness context lies only in determining whether to
combine earlier references to arrive at a single piece of art for comparison with the potential design or to modify a
single prior art reference. [footnote 5]. Once that piece of prior art has been constructed, obviousness, like
anticipation, requires application of the ordinary observer test, not the view of one skilled in the art. Int'l Seaway
Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009).
[footnote 5 to above quote] That combination or modification would not necessarily yield a single piece of prior
art identical to a patented design since there may be no motivation to change the prior art to achieve such identity.
Intl Seaway Trading Corp., supra, at 1241.
[A] person of ordinary skill in the art, or stated otherwise, a designer of ordinary capability who designs articles
of the type presented, id., 1 USPQ2d at 1663 (citing In re Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782, 784
(CCPA 1981)), need not necessarily study the prior art in order to understand the potential use of a symmetrical
design. In re Carlson, 983 F.2d 1032, 1038 (Fed. Cir. 1992). In a field of art where products are deliberately
designed as asymmetrical in order to create distinctive, memorable images, it would have been obvious to one of
ordinary skill in the art to create a "normal" or symmetrical orientation for a design. Id. at 1038, 1039 (citing Cf.
In re Wilson, 52 C.C.P.A. 1394, 345 F.2d 1018, 1020, 145 USPQ 558, 559 (CCPA 1965) (pleasing symmetry is not
nonobvious where it represents no more than obvious symmetry with convenience in mind).

1. We hold that the district court erred in finding that the Fidler tablet created the same visual
impression as the D889 patent. A side-by-side comparison of the two designs shows substantial
differences in the overall visual appearance between the patented design and the Fidler reference:
2. First, the Fidler tablet is not symmetrical: The bottom edge is noticeably wider than the others.
More importantly, the frame of the Fidler tablet creates a very different impression from the
unframed D889 design. In the Fidler tablet, the frame surrounding*1331 the screen contrasts

3.

4.

5.

6.

7.

sharply with the screen itself. The Fidler screen appears to sink into the frame, creating a picture
frame effect and breaking the continuity between the frame and the screen embedded within it. The
transparent glass-like front surface of the D889 patent, however, covers essentially the entire front
face of the patented design without any breaks or interruptions. As a result, the D889 design creates
the visual impression of an unbroken slab of glass extending from edge to edge on the front side of
the tablet. The Fidler reference does not create such an impression.FN5
FN5. By its use of oblique lines, the D889 patent indicates that the front surface of the device is
reflective and glass-like. See Manual of Patent Examining Procedure 1503.02 (8th ed. 2006)
(Oblique line shading must be used to show transparent, translucent and highly polished or
reflective surfaces....).There are other noticeable differences between the Fidler tablet and the D
889 patent that contribute to the distinct visual appearance of the two designs. Unlike the D889
patent, the Fidler reference contains no thin bezel surrounding the edge of the front side.
Additionally, one corner of the frame in the Fidler reference contains multiple perforations. Also in
contrast to the D889 patent, the sides of the Fidler reference are neither smooth nor symmetrical; it
has two card-like projections extending out from its top edge and an indentation in one of its sides.
And the back of the Fidler reference also conveys a visual impression different from that of the D
889 design.
In design patent obviousness analysis, a primary reference must be something in existence, the
design characteristics of which are basically the same as the claimed design in order to support a
holding of obviousness. In re Rosen, 673 F.2d at 391 (concluding that two glass coffee tables were
significantly different in concept because the primary reference does not give the same visual
impression of lightness and suspension in space conveyed by appellant's table). Based on the
differences between the Fidler tablet and the D889 design, we hold that the Fidler tablet does not
give the same visual impression as the D889 patent, and therefore the district court erred in looking
to Fidler as the primary reference against the D889 patent.
[10] Even assuming that Fidler qualified as a primary reference, the TC1000 secondary reference
could not bridge the gap between Fidler and the D889 design. First, while the TC1000 has a flat
glass front, the screen area of that device is surrounded by a gray area that frames the screen. In
addition, the perimeter of the TC1000 is encircled by a wide rounded-over metallic rim. And the
screen area contains indicator lights in several places, unlike the minimalist design claimed in the D
889 patent. [T]he teachings of prior art designs may be combined only when the designs are so
related that the appearance of certain ornamental features in one [design] would suggest the
application of those features to the other. In re Borden, 90 F.3d at 1575, quoting In re Glavas, 43
CCPA 797, 230 F.2d 447, 450 (1956). The TC1000 is so different in visual appearance from the
Fidler reference that it does not qualify as a comparison reference under that standard. See In re
Rosen, 673 F.2d at 391 (rejecting the primary reference where modifications of [it] necessary to
achieve [the patented] design would destroy the fundamental characteristics of that reference).
Samsung contends that the district court properly focused on overall visual appearance rather than
on the design concepts highlighted by Apple. In our assessment, however, the district court's error
was to *1332 view the various designs from too high a level of abstraction. Fidler does not qualify
as a primary reference simply by disclosing a rectangular tablet with four evenly rounded corners
and a flat back. See Durling, 101 F.3d at 104 (The error in the district court's approach is that it
construed [the] claimed design too broadly.). Rather than looking to the general concept of a
tablet, the district court should have focused on the distinctive visual appearances of the reference
and the claimed design. Id. When those visual impressions are compared, it becomes apparent that
the Fidler reference, with or without the TC1000, cannot serve to render the D889 patent invalid for
obviousness.
In the alternative, Samsung urges us to consider several other tablet and tablet-like designs as
suitable primary references. All of those references consist of rectangular designs with rounded
corners dominated by a display area. But those designs all suffer from the same problems as the
Fidler reference, because all of them show either a thick surrounding frame in which a display is
embedded or contain extensive ornamentation on the front of the tablet. The offered designs do not
create the same visual impression as Apple's claimed design and thus do not qualify as primary

references. In the absence of a qualifying primary reference, we hold that the district court erred in
concluding that there is likely to be a substantial question as to the validity of the D889 patent.FN6
See Durling, 101 F.3d at 105.
8. FN6. Our holding that the alternative prior art references do not invalidate the D889 patent is
limited to our evaluation of the record at this preliminary stage of the litigation.

Invalidity due to functionality is an affirmative defense to a claim of infringement of a design patent, and
must be proved by the defendant at trial. See LA. Gear, 988 F.2d at 1123.
A VARIETY OF TESTS (AND SUBTESTS)

Good Sportsman Marketing LLC v. Li & Fung Ltd.- Not Reported in F.Supp.2d, 2010 WL 2640385E.D.Tex.,2010.- June 29, 2010
The district court found [t]he overall configuration of these four elements is dictated by the functional
purpose of the tool and therefore is not protected by [Richardson's] design patent. 610 F.Supp.2d 1046,
1050 (D.Az.2009) (emphasis added). The court did not, however, eliminate from the patent the handle,
hammer-head, jaw, or crowbar. On the contrary, the court held the patent included ornamental qualities
including the standard shape of the hammer-head, the diamond shaped flare of the crow-bar and the top of
the jaw, the rounded neck, the orientation of the crowbar relative to the head of the tool, and the plain,
undecorated handle. Id. The court also recognized that, although the teeth of the jaw were functional, the
particular number and size of teeth can be altered without adversely affecting that function and thus
Richardson's choice in those respects can reasonably be said to be dictated by ornamental considerations.
Id. at 105051. On appeal, the Federal Circuit affirmed this construction, likewise observing function
dictated the configuration of the tool. 597 F.3d at 1294 (observing the relative locations of the jaw,
hammer-head, crowbar, and handle were dictated by function). Like the district court, the Federal Circuit
did not completely eliminate those components from the claimed design and leave an empty figure. Indeed,

both courts engaged in infringement analyses after performing their constructions and neither found the
patent invalid. See 597 F.3d at 129496, 610 F.Supp.2d at 105152; cf. Lee v. DaytonHudson Corp., 838
F.2d 1186, 1188 (Fed.Cir.1988) (observing if the claimed design is primarily functional rather than
ornamental, the patent is invalid (quoting Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 238
(Fed.Cir.1986))).
Relying on its reading of Richardson, Defendant identifies four primary components of the claimed design:
1) the clip; 2) the head lamp, containing the light and battery; 3) the on-off switch on the headlamp; and 4)
the flexible wire. Def.'s Resp. at 47. Defendant argues each component is primarily functional and
contends they should be wholly factored out of the claim. Id. at 1011. [T]he fact that [an] article of
manufacture serves a function is a prerequisite of design patentability, not a defeat thereof. Hupp v.
Siroflex of Am., Inc., 122 F.3d 1456, 1460 (Fed.Cir.1997). A design is only functional and invalid when the
appearance of the claimed design is dictated by the use or purpose of the article. L.A. Gear, 988 F.2d at
1123. If the particular design is essential to the use of the article, it can not be the subject of a design
patent. Id. However, [w]hen there are several ways to achieve the function of an article of manufacture,
the design of the article is more likely to serve a primarily ornamental purpose. Id. Finally, the utility of
each of the various elements that compromise the design is not the relevant inquiry.... The elements of the
design may indeed serve a purpose, but it is the ornamental aspect that is the basis of the design patent. Id.
*4 Contrary to Defendant's reading of Richardson, nothing compels the Court to wholly factor out any
element that serves a functional purpose. An article of manufacture necessarily serves a utilitarian
purpose. L.A. Gear, 988 F.2d at 1123. The utility of individual elements is irrelevant to the question of
functionality, as it is the design in its entirety that provides the basis for the patent. Id. When there are
several ways to achieve the function of an article of manufacture, the design of the article is more likely to
serve a primarily ornamental purpose. Id. While the identified components may have functions, they need
not be excluded simply because they perform functions, e.g., the clip need not be excluded because it
fulfills the clipping function, and the same rationale applies to the other elements. FN1
FN1. The Court expresses no opinion as to whether the patented design incorporates functional elements.
See PHG Techs., LLC v. St. John Cos., 469 F.3d 1361, 1365 (2006) (Whether a patented design is
functional or ornamental is a question of fact). Of course, where the overall design and configuration is
dictated by the function, those aspects are not the subject of the patent. See, e.g., Richardson, 597 F.3d at
1294; see also Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 148, 109 S.Ct. 971, 103
L.Ed.2d 118 (1989) (holding a patentable design must present an aesthetically pleasing appearance that is
not dictated by function alone). Here, however, there is no evidence that the claimed configuration is the
only configuration for a clip on book light. The relative locations of the elements are not necessarily
dictated by the function of the article.
Having resolved the parties' functionality dispute, the Court finds the claimed design is best represented by
the illustration contained in the patent. See Egyptian Goddess, 543 F.3d at 679. As this Court has observed
in other design patent cases, [t]o provide a detailed verbal description as Defendant solicits would entail a
significant risk that the jury would place undue emphasis on particular features of the claimed designs or
otherwise focus on distinct features rather than on the designs as a whole. Dexas Int'l, Ltd. v. Office Max,
Inc., No. 6:07cv396, 2009 U.S. Dist. LEXIS 6642, at * 12 (E.D.Tex. Jan. 30, 2009). The Court may
provide guidance on other issues of claim scope and figure interpretation when instructing the jury.
Egyptian Goddess, 543 F.3d at 680.

Test is reminiscent of Altai filtering analysis.

http://iplaw.bna.com/iprc/display/simple_doc_display.adp?
fedfid=31020609&vname=ptdbulallissues&jd=a0d8j9r5q6&split=0#a0d8j9r5q6
Conferences Functionality Rearing its Head in Law Of Design Patents, AIPLA Panelist Proclaims
By Paul Shukovsky
1. SEATTLEInconsistent handling of the issue of functionality has penetrated a series of design
patent cases, and courts must take action to dispel the resulting state of confusion, according to a
participant in a May 2 session at the spring meeting of the American Intellectual Property Law
Association.
2. Functionality is rearing its head, according to Richard S. Stockton of Banner & Witcoff,
Chicago.
3. The problems that have evolved stem in part from the fact that there are multiple tests for
determining functionality, Stockton said. He argued that these disparate tests have created a
dysfunctional jurisprudence in the design patent world that leaves lawyers without a clear
direction on how to advise their clients.
4. I think the whole foray of functionality going into claim construction is wrong, Stockton said.
The bottom line is that if a claim design is primarily dictated by function, don't you think
there's a bunch of prior art that looks like it? [PSM Response: This is silly because functional
designs can be novel.] Let the trier of fact evaluate that rather than go down these rabbit
holes of evaluating what is functional and what's not.
5. Tracing the rise of design patent claim construction, Stockton asserted that Richardson v.
Stanley Works Inc., 597 F.3d 1288, 37 U.S.P.Q.2d 1816 (Fed. Cir. 2010) (50 PTD, 3/17/10)is
really the case that has taken the confusion to the next level.
6. The case involved a patented multi-function tool. While the parts of the alleged infringing tool
were similarly arranged, the court held that, after discounting the functional aspects of the
design, the overall effect of the infringing design was very different and hence cannot cause
market confusion.
7. Chaos has Resulted.
8. Stockton said he believed that this case should never have gone to the Federal Circuit; bad
facts make bad law. I just don't think these two [tools] look alike no matter how you treat the
functional elements. Unfortunately it went to the Federal Circuit and I think some chaos has
resulted from it.
9. In the wake of Richardson, courts seem confused, he said. My thesis here is that there is a lot
of gamesmanship now because there are so many roads that functionality can take. And this is a
huge problem for practitioners. You can't advise your clients with a lot of certainty about what's
going to happen because you can't be sure of which test is going to be taken or how the court is
going to act.

10. Richardson decided some things are functional and some things are not. It's very difficult for
practitioners to look in their crystal ball and predict what the judge is going to say about certain
elements, Stockton said.
11. The varying tests for functionality that have emerged exemplify dysfunctions, Stockton argued.
12. When I look at these cases, I think a lot of them contain very bad language. One problem is
that there's a dearth of case law and so what happens is as cases carry on, a lot of dicta all of a
sudden turns into the rule of law and is followed. And I think there are a lot of unintended
consequences that come out. In the Richardson case, one thing that has driven me crazy since
the first moment I read the case is that the court is just not precise in its language, he said.
13. What the Heck ?
14. Citing phrases from decisions such as discounting functional elements, ignoring functional
elements, and factoring out functional elements, a palpably frustrated Stockton said: What
the heck does this mean?
15. Because the language is as not precise, you have the appeal board sort of struggling with
exactly what it's supposed to do, he said.
16. And it's not just the appeal board that is at a loss, Stockton said.
17. I think there is too much discretion given to district courts here. It's impeding our ability to
advise our clients, he said. And I think it's creating a lot of unnecessary litigation. You just
simply don't know where you are going to wind up. You don't know if you have a winner case or
a loser case. Hopefully we'll see some more clarity on functionality at some point.
18. Given the state of confusion in current law, he had this advice: Look at the tests. Look at the
timing of these things. Look at the vehicles and figure out what favors your client. I mean be
good lawyers. Always keep in mind alternative designs, which he said always seems to come
up despite what the test is. And remember, if you are going to assault functionality as an
accused infringer, the requirement for proof is higher. It's clear and convincing evidence versus
if it is brought up in construction.