2nd Exam: Patents BSL 424

Patent Infringement

"Whoever without authority makes, uses, or sells any patented invention, within the United States during the term of the patent therefor, infringes the patent."

The Doctrine of Equivalents

-"[T]o permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for -indeed encourage -the unscrupulous copyist to make unimportant and insubstantial changes." -TEST: Would PHOSITA have known of the interchangeability of the element omitted with the one substituted? -A product or process that does not literally infringe on a patented device may nevertheless infringe if the elements of the accused device are deemed equivalent to the claimed elements of the patented device. -"Function-way-result" test

Effective Date

-A patent can be infringed only during the period of time when the patent is in force. -A utility patent becomes effective on its issue date and expires 20 years after the filing date of the application.

Methods of Doing Business

-A traditional method of doing business is not patentable Traditional method+software/computer= Patentable

The following are not patentable:

-Abstract ideas -Manifestations or Products of Nature -Living Organisms -Artistic and Literary Creations -Printed Matter -Methods of doing Business(?)

Amazon.com v BarnesandNoble.com

-Amazon's U.S. Patent No. 5,960,411 ("the '411 patent") covers a method and system by which a consumer can complete a purchase order in a client/server environment, such as the Internet, using a "single action," such as the click of a mouse, after information about the item to be purchased has been displayed. -Amazon alleged that BN's "Express Lane" feature on its website infringes certain claims of the '411 patent. -the Federal Circuit determined that Amazon had successfully made a showing that BN's "Express Lane" feature infringes the '411 patent, thus satisfying the "likelihood of success" prerequisite necessary for the entry of a preliminary injunction. -The Federal Circuit ruled that the prior art cited by BN could either anticipate the claims of the '411 patent or render the claims obvious, thereby raising a substantial question of invalidity.

Abstract Ideas

-An idea that is without material or tangible form or practical application -Idea itself is not patentable, but the device by which it is implemented or made useful is

Non-Obviousness

-As defined by Thomas Jefferson, "drawing a line between the things which are worth the public embarrassment of a exclusive patent and those which are not" -Requires that an invention add something to existing knowledge that is not obvious to one who is skilled in the relevant field

Reading a Patent: "Lingo"

-Assignee -Field of Search -Prior Art -Examiner -Specification -Preferred Embodiment -Claims -Prosecution

MercExchange v. eBay (2006)

-Case first filed in 2001 -Patent licensing firm owned the business method patent covering eBay's "Buy it Now" function. -Is a company that doesn't commercialize technology entitled to a permanent injunction?

America Invents Act

-Changes to a first-to-file system (into effect in March 2013) -During the first 9 months after a patent is issued, anyone can petition the Patent Office to initiate a "post-grant review" of the patent

Patent v. Copyright

-Copyright protects expression, not idea; aesthetics, not functionality -Copyright law has no novelty requirement

State Street v. Signature Financial Group

-Date processing system for Hub & Spoke Financial Services Configuration Court: "Transformation of data by a machine into a final share prices constitutes a practical application of an algorithm and is therefore patentable"

A Reasonable Royalty

-Deemed to be the amount that a licensee would be willing to pay through typical negotiations between a licensor and a licensee. Look at: -Established rates in the industry -The importance of the invention -If patentee has an existing license with a third party (Georgia-Pacific Factors)

Types of Patents

-Design -Plant -Utility

Patent Rights

-During that life of the patent no one without the permission of the patent owner can make, use, sell, offer to sell or import the invention described in the patent claim -Patent owner can choose to practice the claimed invention, license it to others, or prevent its practice altogether(?)

Infringement Factors

-Effective date -Geographic Limitations -State of Mind -Kinds of Infringement: Literal Infringement or The Doctrine of Equivalents -Damages

Lost Profits

-Had the infringer not infringed, what would the patent holder have made? -Patentee must prove: 1. There was a demand for the patented product during the period of infringing sales 2. There was an absence of acceptable non-infringing substitutes 3. The patent owner had the ability to meet the demand for the products covered by the patent.

State of Mind

-Intentions of infringer are irrelevant (clueless infringer is still an infringer) -Intentional: willful infringement (can result in treble damages and attorney's fees)

Plant Patents

-Issued for a new and distinct, invented or discovered asexually reproduced (cloned or grafted) plant including cultivated sports, mutants, hybrids, and newly found seedlings -Term= 20 years from date of paten application filing

Design Patents

-Issued for a new, original, and ornamental design for an article of manufacture -Purpose is to protect visual design/appearance of articles of manufacture -Term= 14 years from the date of issue/patent grant

Utility Patents

-Issued for the invention of new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof -Term= 20 years from the date of patent application filing

Manifestations or Products of Nature

-Laws of nature -Mathematical formulas -Physical phenomena -Plants found in the wild

Theories behind Patent Law

-Natural Rights/Locke -Utilitarian -Social Contract

Relevant Entities

-Patent and Trademark Office (created 1836) -Patent Board of Appeals & Interferences -Court System -Federal Circuit Court of Appeals

Eolas v. Microsoft (1997-2007)

-Patent for a method for displaying browser plug-ins, titled "[d]istributed hypermedia method for automatically invoking external application providing interaction and display of embedded objects within a hypermedia document." -First web browser that supported plug-ins

Diamond v. Chakrabarty (1980)

-Patent for creation of bacteria that eat up crude oil from spills -PTO held that a living organism (bacteria) not patentable -Supreme Court reversed; the Court reasoned that the real issue was not living vs. non-living subject matter, rather man-made vs. naturally-occurring subject matter.

PHOSITA

-Person Having Ordinary Skill in the Art -This fictional legal person is considered to have the normal skills and knowledge in a particular technical field, without being a genius, an inventor, or an innovator.

KSR International v. Teleflex (2007)

-Teleflex sued KSR for patent infringement -The technology at issue was the combination of an adjustable gas pedal and an electronic sensor that senses and transmits to the vehicle's throttle computer the position of the pedal. -Teleflex patent: "adjustable pedal assembly with electronic throttle control." -Adjustable gas pedals designed to accommodate drivers of different sizes were well-known at the time the patent application was filed. -Sensors for computer-controlled throttles located on the pedal assembly were also in the prior art. -Was the combination of an adjustable gas pedal with a sensor on the pedal obvious? Supreme Court: -Patent is OBVIOUS. -A mechanical engineer familiar with pedal control systems for vehicles would have seen the benefit of an adjustable gas pedal with its own sensor. -TSM case is NOT the only test. -Relies too heavily on published articles. -"A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton."

Best Mode & Written Description

-The "enablement" requirement encompasses the best mode and written description requirements. -The ''best mode'' means the best manner of practicing the invention, or the best operative example, known to the inventor. -The "written description" simply means that the specification shall contain a clear written description of the invention.

Living Organisms(?)

-The Supreme Court has suggested that the realm of patents embraces "anything under the sun that is made by man." -Bacteria?, plants?, animals?, human beings?

Alice v. CLS Bank

-The issue in the case was whether certain claims about a computer-implemented, electronic escrow service for facilitating financial transactions covered abstract ideas ineligible for patent protection. The patents were held to be invalid because the claims were drawn to an abstract idea, and implementing those claims on a computer was not enough to transform that idea into patentable subject matter. -Business patent applications went down drastically following this decision -Supreme court set the bar higher because now the system must be creative, novel, & non-obvious

Definitenes

-The law requires that the claims have a definite meaning to those skilled in the art -The test for compliance is ''whether those skilled in the art would understand what is claimed when the claim is read in light of the specification at the time the patent application was filed.''

Willful Infringement

-The notion of willfulness requires something more than negligent behavior Patentee must prove: -The infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. -The infringer knew or obviously should have known of that objectively high risk of infringement.

Amgen, Inc. v. Chugai Pharmaceuticals Co.

-The patentee claimed a protein having a ''specific activity'' of ''at least about 160,000 IU/AU.'' -A prior art product exhibited a ''specific activity'' of 128,620 IU/AU. -The court held that the term ''about'' was insufficiently definite in the context of that particular patent.

Artistic and Literary Creations

-This is subject of copyright, not patent -Design patents are different from utility patents

Printed Matter

-This rule holds that a manufactured article or composition of matter is not patentable if the only thing that distinguishes it from prior inventions is the presence of pictures or writing

Reading a Patent: Order

-Title -Prior Art -Field of Search -Drawings -Specification -Description of the Preferred Embodiment -Claims

Enabelment

-U.S.C. § 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. - To satisfy this requirement, the patent must describe the invention in such clear and exact terms that persons ''skilled in the art'' can make and use the invention without ''undue experimentation.''

Reduce to Practice

-refers to the actual construction of the invention in physical form -The inventor who proves to be the first to conceive an invention and the first to reduce it to practice will be held to be the prior inventor

Requirements for Plant Patentability

1) Novelty- not found in nature 2) Non obviousness- must have some social value 3) Distinctiveness- must be different in some way which is attractive or useful compared with what came before

Determining infringement is a two-step process:

1. Examine the language of the claims and determine what they mean. 2. Compare the claims to the accused product or method to see if these are infringed.

Factors that may be persuasive in finding non-obviousness:

1. Invention causes disproportionate, unexpected or unusual results 2. Prior art relates to entirely different field 3. No suggestion in the prior art to combine the references to achieve the invention 4. Secondary considerations: -Long-standing problem or need in the field satisfied by the invention -Failure of others to solve the problem -Invention copied by others -Infringer's abandonment of prior art machines in favor of patented machine -Commercial success

Patent Damages

1. Lost Profits 2. Reasonable Royalty 3. Penalty for Willful Infringement

Conditions of Patentability

1. Patentable Subject Matter 2. Utility 3. Definiteness 4. Enablement 5. Novelty 6. Non-obviousness

Patent Prosecution

1. Process begins when inventor files an application with the patent office for "examination" 2. Patent office assigns the application to a patent examiner who has expert knowledge in the field of the invention 3. Applicant pays fees 4. Patent examiner searches for prior art to determine if new and non-obvious 5. Reviews to see if claims are sufficiently definite 6. Examiner prepares a written "Office Action" to explain which claims are allowed or rejected 7. Applicant permitted to file a written response, amend claims, cancel claims, add claims 8. Office Action again 9. Goes on until claims are allowed or the examiner announces the rejection is final

Applicable Laws with Patents

1790- Congress first passed Patent Act 1952- Congress revised Patent Act 2011- America Invents Act

Protection

An inventor can keep others from independently creating & marketing the same invention. It is a legally sanctioned monopoly.

Infringement??

Ask: Is there literal infringement? -If yes: Infringes. -If no: Go on. If not, does the doctrine of equivalents apply? -If no: does not infringe. -If yes: Infringes.

What is "useful"?

Being of use or service; serving some purpose; advantageous, helpful or of good effect; supply common needs; geared for a specific functionality

Literal Infringement

Defendant made, used, or sold an item in the US that contained all the elements of the claim. -Rule of exactness: infringed on invention exactly as stated in the claim -Rule of addition: Just added another element, compound, or step -Rule of omission: A person has to omit only one of the elements of the claim to escape literal infringement *Problem of "blocking patents"

Injunctions

Four-factor test in which a plaintiff must demonstrate: 1. That it has suffered an irreparable injury 2. That remedies available at law are inadequate to compensate for that injury 3. That considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted 4. That the public interest would not be disserved by a permanent injunction.

The 1-year Rule

Inventors have a ONE year "grace period" to file their application once knowledge is made public through its use, sale or disclosure by other means -USE: experimental use is not deemed to be making the knowledge public -SALE?: The time at which the invention is first offered for sale, even if that sale is rejected

35 U.S.C. 102(a)(1): Prior Art

Precludes a patent if a claimed invention was, before the effective filing date of the claimed invention: -Patented -Described in a Printed Publication -In Public Use -On Sale -Otherwise Available to the Public

35 U.S.C. 102(a)(2): Prior Art

Precludes a patent to a different inventive entity if a claimed invention was described in a: -U.S. Patent; -U.S. Patent Application Publication -WIPO PCT Application Publication that was effectively filed before the effective filing date of the claimed invention

Prior Art

Prior inventions, as well as patents, patent applications and publications that disclose prior inventions, are known as ''prior art references.''

35 U.S.C. 102(b): Exceptions

Provides that certain "disclosures" shall not be prior art: -Grace Period -A disclosure made one year or less before the effective filing date of the claimed invention shall not be prior art if: **The disclosure was made by: the inventor or joint inventor; or another who obtained the subject matter directly or indirectly from the inventor or joint inventor

Patent Trolls

Recently defined as an entity that: 1. Has no significant assets except patents; 2. Produces no products; 3. Has attorneys as its most important employees; and 4. Acquires patents, but does not invent technology itself.

Utility

Section 101 of the Patent Act stats that a patent may be granted to the discoverer of a "new & useful" invention.

Patentable Subject Matter

Section 101 of the Patent Act... 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 thereof; subject to the conditions and requirements of this title

Remedies for Patent Infringement

Section 284 of Patent Act: -"Upon finding for the claimant the court shall award the claimant 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, together with interest and costs as fixed by the court. -When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed."

Teaching, Suggestion or Motivation Test (TSM)

The Federal Circuit in 1999: A combination is not obvious unless there is some prior teaching, suggestion, or motivation to make the combination.

Novelty

Two Requirements: 1) One should not be allowed to receive patent protection from knowledge that is already available to the public. 2) Inventor must file a patent without undue delay

Patent Litigation

Typical lawsuit consists of three issues: 1. Is the patent valid and enforceable? 2. Are the claims infringed? 3. If the claims are infringed what damages should be awarded? *Patent owner can prevail only if patent is valid and infringed

Geographical Limitations

United States patent law does not apply to activities that take place entirely in another country.