Intellectual Property: Patents
35 USC § 271(b)
b) Inducement — actively induces infringement shall be liable
35 USC § 271(c)
c) Contributory infringement — whoever offers to sell within US or imports into the US a component of a patented machine/manufacture/combination/composition, material part of invention, knowing the same to be made or especially adapted for use in infringement of a patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer
Reasonable royalty
"A 'reasonable royalty' contemplates a hypothetical negotiation between the patentee and the infringer at a time before the infringement began...This analysis necessarily involves some approximation of the market as it would have hypothetically developed absent infringement" Georgia Pacific Factors 1. The value that the claimed invention contributes to the accused product 2. The value that factors other than the claimed invention contribute [to the accused product] 3. Comparable license agreements such as those covering the use of the claimed invention or similar technology
Disclosure as a "Quid Pro Quo"
"As a reward for inventions and to encourage their disclosure, the United States offers a...monopoly to an inventor who refrains from keeping his invention a trade secret. But the quid pro quo is disclosure of a process or device in sufficient detail to enable a PHOSITA
Post Grant Review
-Allows anyone to challenge a patent within 9 months of its issue or reissue
4 Disclosure Requirements
-Enablement -Written description -Best mode -Claim definiteness
Patent Remedies
-Injunctions -Preliminary -Probability of success on the merits -Irreparable harm to patentee -Balance of hardships -Public interest -Permanent -Damages -Calculated based upon: -Lost profits (profit P would have made w/o competition from infringer), or -Reasonable royalties (what reasonable D would have paid if
C.R. Bard, Inc. v. Advanced Cardiovascular Systems, Inc.
A court will find contributory infringement of a method patent if the defendant sells a product for use in practicing the patented method, knowing that the product is especially made for an infringing use, and that the product is not suitable for a substantial non-infringing use. -looking at evidence most favorable to nonmoving party, Bard is not entitled to JMOL b/c there is genuine issue of material fact here about whether ACS's catheter/product is suitable for a substantial non-infringing use -There is no contributory infringement of a method patent if the product is suitable for a substantial non-infringing use
Substantial Noninfringing Use
"As the SCOTUS recently noted, when a charge of contributory infringement is predicated entirely on the sale of an article of commerce that is used by the purchaser [allegedly] to infringe a patent, the public interest in access to that article of commerce is necessarily implicated" -Bard
35 USC § 284
"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" "The court may increase the damages up to three times the amount found or assessed" -Historically awarded for willful infringement
Damages under 35 USC § 284
Adequate to compensate for the infringement
Chisum Treatise on Prior Use/Knowledge/Invention under 1952 Act
"The experimental use doctrine seeks to balance two policies. The first is to allow the inventor time to test and perfect his invention and to assess its utility in operation. The second is to prevent inventors from extending the statutory period of monopoly by delaying filing for a patent while commercially exploiting the invention."
Best Mode Under the AIA of 2011
best mode is required during prosecution, but failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise enforceable
Improvement ≠ RDOE
"Patentees who have properly claimed a fundamental technology can assert their patent against anyone who uses that technology, even if the defendants have improved it!"
Justice Breyer in Metabolite
"The justification for the principle does not lie in any claim that 'laws of nature' are obvious...Rather, the reason for the exclusion is that sometimes too much patent protection can impede rather than 'promote the Progress of Science and Useful Arts'"..."Patents do not only encourage research by providing monetary incentives for invention. Sometimes their presence can discourage research by impeding the free exchange of information,..."
Patent Breadth
"The overall goal when drafting patent claims is to make them as broad as the Patent Office will allow."
Patent Breadth 252
"The overall goal when drafting patent claims is to make them as broad as the Patent office will allow. There are essentially two constraints on the breadth of the claims you can draft: (a)...'the prior art' that is essential to novelty and nonobviousness analysis; and (b) the actual work the inventor has done, in the sense that you may not claim beyond what the inventor has invented."
35 USC 112
"The specification shall contain a written description of the invention, and of the manner and proces of making and using it in such full, clear, concise and exact terms as to enable any PHOSITA...using the best mode..."
Chism on Patents (Utility)
"To comply with the utility requirement, an invention need not be superior to existing products or processes. However, it must meet 3 tests. First, it must be operable and capable of use. It must operate to perform the functions and secure the result intended. Second, it must operate to achieve some minimum human purpose. Third, it must achieve a human purpose that is not illegal, immoral, or contrary to public policy."
Indirect Liability and Intent
"We now hold that induced infringement under § 271(b) requires knowledge that the induced acts constitute patent infringement." -Global Tech
Prosecution History Estoppel
"When a patentee responds to the rejection by narrowing his claims, this prosecution history estops him from later arguing that the subject matter covered by the original, broader claim was nothing more than an equivalent" (Festo) -SCOTUS says it is a *foreseeable* bar -Basic idea: Narrowing claim for reasons related to patentability → presumptive bar on equivalents, but can be negated by showing that surrender of equivalent was not foreseeable to patentee
35 USC § 101
"Whoever invents and 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."
AIA "Grace Period"
(b) Exceptions— DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFF. FILING DATE OF THE CLAIMED INVENTION. — disclosure made 1 year or less before the eff. Filing date of a claimed invention shall not be prior are to the claimed invention under subsection (a)(1) if— The disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or The subject matter had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor
35 U.S. Code § 271 - Infringement of 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
35 USC § 271(a)
-(whoever) "makes, uses, offers to sell, or sells any patented invention w/i the US or imports into the US any patented invention during the term of the patent therefor, infringes the patent"
Patent Rationale
-Incentivizing innovation -Incentivizing disclosure of technological know-how -Rationale for limits? -Distributive justice— access to innovations like medicine? -Next generation invention
In re Seagate
-THIS 2 FACTOR TEST GETS STRUCK BY HALO- To establish willful infringement, a patentee must show by clear and convincing evidence that the infringer 1. acted despite an objectively high likelihood that its actions constituted infringement of a valid patent and if satisfied, the patentee must then 2. demonstrate that this risk was either known or so obvious that it should have been known to the accused infringer. When asserting an opinion of counsel in defense to a willful infringement claim, any waiver of privilege or work product materials does not generally extend to trial counsel.
Reverse Doctrine of Equivalents
-The reverse doctrine of equivalents is a legal doctrine of United States patent law, according to which a device that appears to literally infringe a patent claim, by including elements or limitations that correspond to each element or limitation of the patent claim, nonetheless does not infringe the patent, because the accused device operates on a different principle. -"the purpose of the 'reverse' doctrine is to prevent unwarranted extension of the claims beyond a fair scope of the patentee's invention."
Liability Rule
-liability rule: holder of legal entitlement can obtain compensation when right is violated but cannot prevent violations — this is for tort victims, contract breach victims, and real prop. Owners whose land is taken by eminent domain, i.e. a contract owner generally cannot obtain injunction to prevent a breach ("specific performance" is exception to the rule)
Assumption of Validity
-patents are presumed valid once issued in infringement cases -Party asserting invalidity must prove by "clear and convincing evidence"-- higher than preponderance of the evidence
Experimental Use
-very narrow "amusement, to satisfy idle curiosity, or for strictly philosophical inquiry, ...the very narrow and strictly limited experimental use defense"
35 USC § 271(a)
-:Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented..." -"The longstanding doctrine of patent exhaustion provides that the initial authorized sale of a patented item terminates all patent rights to that item" -Quanta Computer, aka you can use a patented item once you bought it
Alice Corp. v. CLS Bank Intern'l
-A claim that involves an abstract idea is patentable only if the balance of the claim adds something of significance to the idea, in that it transforms the idea to a new and useful end. -"We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform the abstract idea into a patent-eligible invention" -(#two step test)"First, we determine whether the claims at issue are directed to one of those patent ineligible concepts. If so, we then ask 'what else is there in the claims before us?...We have described step two of this analysis as a search for an inventive concept— i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself."
Mayo Collaborative Services v. Prometheus Laboratories, Inc.
-A natural law or natural phenomena must be sufficiently added upon or transformed in order to make an idea, formula, mechanism, or test patentable. -The patents set forth laws of nature, so are unpatentable...knowing that certain concentrations of metabolites in blood and the likelihood that a dosage...a patent that simply sets forth the relation between a concentration and the bad effects just sets forth a natural law
Bilski v. Kappos
-Abstract ideas are not patentable. -Rather than adopting categorical rules that might have wide-ranging and unforeseen impacts, the court resolves this case narrowly on the basis...that petitioners' claims are unpatentable" -"Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea"
Novelty (1952 Act)
-Can be defeated by "anticipation" of applicant's invention by "prior art" -Made by another (in U.S.+), § 102(g) -Used by others in U.S., § 102(a) -Known by others in U.S., § 102(a) -Patented anywhere, § 102(a) -Described in a printed publication anywhere, § 102(a) -Described in a U.S. patent application, § 102(e) -Anticipation= -includes every element of the claimed invention -enables PHOSITA (person having ordinary skill in the art) -precedes invention date
Novelty (1952 Act)
-Can be defeated by "anticipation" of applicant's invention by "prior art": -Made by another (in U.S.+) § 102(g) -Used by others in U.S., § 102(a) -Known by others in U.S.
Gottschalk v. Benson
-Claims to mathematical formulas or algorithms, which are not patentable subject matter, cannot be rendered patentable merely because the inventor requires that they be performed by or on a computer. -"Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, and they are the basic tools of scientific and technological work"
O'Reilly v. Morse
-Claims upheld except for 8th claim that basically calls the essence of his invention the "use of the motive power of the electric of galvanic current...however developed for making or printing intelligible characters" — too broad! -Most of claims on Morse code utility were upheld, and were not just claiming the general law of nature using electrical power to send signals
Prior User Rights Under AIA
-Defense to infringement for use of an invention "used in a manufacturing or other commercial process" by someone who used it commercially in the U.S. at least 1 yr before filing date/public disclosure -Relevant to commercial use that does not constitute "public use" or "on sale" (e.g. "internal commercial use")
35 USC § 112 - Enablement
-Description of invention must "enable any PHOSITA" to which it pertains, or which it is more nearly connected, to make and use the same" → PHOSITA could make and use the inventions without "undue experimentation" 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 [to enable]
Direct Infringement and Intent
-Direct infringement has long been understood to require no more than the unauthorized use of a patented invention...thus, a direct infringer's knowledge or intent is irrelevant" -Global Tech
The Incandescent Lamp Patent
-Disclosure requirements function as a limitation on patent breadth -Therefore, Edison wins and Sawyer and Man's patent was invalid -Key Claim: "An incandescent conductor for an electric lamp, of carbonized fibrous or textile material and of an arch or horseshoe shape" -The takeaway is NOT that Edison didn't infringe— it's that the claims that Edison would have infringed upon were invalid claims because of the disclosure requirement! "If the description be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void." -Sawyer could not claim bamboo bulb bc they had not thought of/invented it
Inequitable Conduct
-Failure to disclose material info to PTO, or submission of false info w/ intent to deceive → patent unenforceable -No duty to find all relevant prior art
Moral Utility in Patents
-Gambling devices— now patentable -Inventions designed to defraud? -See Juicy Whip v. Orange Bang -"The principle that inventions are invalid if they are principally designed to serve immoral or illegal purposes has not been applied broadly in recent years" MPEP 706.03(a) -A rejection under 35 U.SC. § 101 for lack of utility should not be based on grounds that the invention is frivolous, fraudulent or against public policy"
Diamond v. Chakrabarty
-Human-made bacterium not found in nature are patentable -"The laws of nature, physical phenomena, and abstract ideas have been held not patentable. Thus a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law E=mc^2"
Patent Injunctions
-Injunctions can be sought to prevent "trespasses" onto patent rights like one might want to prevent trespasses onto real property (land)
Claim Interpretation Sources
-Intrinsic Evidence -Claim Language -Specification -Prosecution History -Extrinsic Evidence -Expert testimony -Treatises -Dictionaries
Infringement Summary
-Literal Infringement -Every element of a claim appears in accused product or process -Limited by reverse doctrine of equivalents (but rarely) -Doctrine of equivalents -Equivalent of every element appears -Limited by -Prior art -Subject matter disclosed but not claimed -Prosecution history estoppel
Derivation Proceeding
-Meant to combat issues with first to file- if one person invented first but another stole idea from them -Brought within one year of the publication of the claim to the invention (one year after patent publication OR one year after patent issuance if it is never published under § 122)
Key Patent Defenses
-Non-infringement -Invalidity (subject matter, utility, novelty, nonobviousness, enablement, etc.) -Authorization -Exhaustion -Patent misuse -Experimental use -Inequitable conduct -Prior use
Requirements for Patentability
-Novelty, § 102 -Nonobviousness, § 103 -Utility, § 101 -Disclosure, § 112 -Patentable subject matter, § 101
Statutory bars, 102(b)
-Patent barred if, more than a year prior to the date of application: -Invention was in public use in the U.S. -Invention was on sale in the U.S. -Invention was patented anywhere -Invention was described in a printed publication anywhere ...by anyone, including the inventor themself!!
Patentable subject matter, § 101
-Process -Machine -Composition of Matter -Manufacture -Improvements thereof
Oil States v. Green's Energy Group
-Question presented: Whether Inter Partes Review, an adversarial process used by the PTO to analyze validity of existing patents, violates the constitution by extinguishing private property rights through a non-article... (current case being decided)
Doctrine of Equivalents - Rationales/Counter-Arguments
-Rationale? -Discouraging the unscrupulous copyists from stealing the benefit of inventions -Recognizing language's inability to capture the essence of invention -Counter Arguments -Make patents broader → costs -Undermines notice function of patent → uncertainty, chills invention and investment -Not justified where precise language is available
IPR: Successor to Inter Partes Reexam
-Runs in conjunction to Ex Parte Reexam -Owner can submit substitute claims/cancel claims -IPRs may only challenge lack of novelty or obviousness, not other invalidity grounds Timing and Sequencing
The Patent Document
-Specification: describes invention -Claims: "metes and bounds" of the invention
Covered Business Method Review (CBMR)
-Standards for instituting CBMR are like PGR, higher than for IPR -More likely than not at least 1 claim is unpatentable -OR there is a novel or unsettled legal question important to other patents/apps -institution decision not appealable -Unlike IPR, CBMR allows any grounds of invalidity, doesn't limit evidentiary basis to patents/printed pubs
Non-Informing Public Use: Can a trade secret embodied in a publicly used (and/or sold) product for more than 1 year still be later patented?
-Under 1952 Act, it depends! -"The cases on non-informing public use have distinguished between an inventor's own activity and the activities of third parties. An inventor's own non-informing use is prior art, whereas a third party's is not." p. 189 -AIA? -"On sale" means the same thing under AIA as 1952, according to Helsinn case in 2017. So, after the AIA, if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale.
Graver Tank & Mfg. Co. v. Linde Air Products Co.
-Under the doctrine of equivalents, where an accused device performs the same task as a patent claim, in the same manner as the patent claim, to achieve the same result as the patent claim, though it may be different in form, the device infringes the patent claim. (same/same/same triple identity test) -Welding composition substituted calcium and manganese for silicates of calcium and magnesium -Because it was for same/same/same, it infringed despite swap -"unimportant and insubstantial changes and substitutions" can't get around patent infringement -Reverse Doctrine of Equivalents
Prior Use
-Very limited defense under AIA -Not there in the 1952 Act Novelty (1952 Act) -Can be defeated by "anticipation" of applicant's invention by "prior art" -Made by another (in U.S.+), § 102(g) -Used by others in U.S., § 102(a) -Known by others in U.S., § 102(a) -Patented anywhere, § 102(a) -Described in a printed publication anywhere, § 102(a) -Described in a U.S. patent application, § 102(e)
Patent Misuse
-Violating antitrust laws -Other abusive practices short of antitrust violation (limited by § 271(d) —>patent unenforceable until misuse stops -related to but not separate from exhaustion
Nautilus Inc. v. Biosig Instruments, Inc.
-a claim is invalid for indefiniteness if it fails to inform a PHOSITA of the scope of the invention -Claim about medical device measuring ECG -claim here was open to multiple interpretations, so court here sends the case back down for review using their new standard that satisfies the statute's definiteness requirement
Undue Leverage
-but patent rights can be a weapon where one person has rights to one component of a much bigger composite product, holds out to extract more value than patent rights are actually worth ("undue leverage" — property rights become more valuable than their intrinsic worth)
Foreign Sales
-companies can do price discrimination by selling goods for lower costs in poorer countries, but the foreign sale exhausts copyright protection so the good can be imported from foreign nations into the U.S. even w/o seller's permission, and has extended the principle to patent protection
Comprising versus Consisting
-comprising is an "open" transition meaning claims using this terminology cover devices that include all listed elements plus any additional elements -consisting of is a "closed" and does not cover devices that include additional elements
Improvement Patents
-for improvement patents where someone else developed the one if improves upon, the first patenter can prevent improver from using their improvement and improver's patent can prevent original owner from making the improvement too. These are blocking patents, and incentivize the two parties to play nice with each other/negotiate
Repairing Patented Goods
-sale of a patented item is implied license to use, and any post-sale restrictions will be evaluated and enforced as a matter of contract, not patent law -repair of a patented product that has been sold is permissible, but remaking it crosses the line into the patentee's right to make the good
Halo Electronics, Inc. v. Pulse Electronics, Inc.
-§ 284 284 of patent act have courts power to increase damages up to 3x amount -Fed. Ct. of App. used 2 factor test to determine whether district court could do that: Patent owner must "show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent" Patentee demonstrates by clear/convincing evidence that risk of infringement was "known or should have been known by infringer" -SCOTUS says here that this 2-factor test is inconsistent with § 283 -the history of enhanced damages under the Patent Act showed they were not to be meted out in typical infringement case, but were meant to be "punitive" and "vindictive" sanctions for egregious infringement -the district courts should have discretion as to when to apply these enhanced damages for egregious cases, but the test from Seagate (2-factor) is "unduly rigid and it impermissibly
Patent Breadth - 2 limits
1. 'the prior art' that is essential to novelty and nonobviousness analysis 2. the actual work the inventor has done, in the sense that you may not claim beyond what the inventor has invented
Four Factor test for determining lost profits from Panduit Corp v. Stahlin Bros. Fibre Works, Inc.
1. Demand for the patented product 2. Absence of acceptable noninfringing substitutes 3. His manufacturing and marketing capability to exploit the demand; and 4. The amount of profit he would have made #Panduit Factors -per unit profit patentee *would* have earned is hard to estimate -for this factor test, infringers can not argue about hypos for the second factor if there *is* a noninfringing, readily available substitute— they can say that if they had known they were infringing they could have easily switched to noninfringing substitute from one they used
Willful Blindness = Knowledge (2 requirements)
1. Subjective belief that there is a high probability that a fact exists 2. Deliberate steps to avoid learning of the fact
Best Mode Requirement
1. When the application was filed, did the inventor have a best mode? (If not, don't have to disclose) 2. If so, was the best mode enabled by the disclosure? (If not, then best mode requirement not satisfied.)
Association for Molecular Pathology v. Myriad Genetics
A naturally occurring DNA segment is not patentable merely because it has been isolated. -Concern about patent breadth → impact on downstream inventors -These are discoveries, not inventions, and you shouldn't get patent for that -"Without this exception, there would be considerable danger that the grant of patents would 'tie up' the use of such tools, and thereby limit...innovation" -Claimant mapped genome and found where cancer genes often occur, but didn't make some nonnaturally occurring gene
The Gentry Gallery, Inc. v. The Berkline Corp.
A patent holder is limited to claims of infringement on a patent to the extent that the written specification describes the invention and all of its claimed purposes and limitations. - disclosure clearly identifies the console as the only possible location for the controls -A narrow disclosure can limit scope of claims— an applicant is entitled to claims as broad as the prior art and his disclosure will allow -Can only claim infringement on disclosed inventions-- with claimed purposes/limitations
City of Elizabeth v. Nicholson Pavement Co.
A patent is valid even if the invention is put into public use for the purpose of experimentation and testing its qualities. -Experimental use ≠ public use -street pavement can't be experimented upon satisfactorily except on a highway, which is always public — this isn't like a machine that you can experiment with privately in a secret building -exception to public use within statutory bar for experimental use
Brenner v. Manson
A process that results in an unpatentable product cannot itself have utility. -A process to make a molecule homologous to a compound shown to help inhibit tumors was not patentable -The cost of giving up a patent for something with no specific discovered use is too high, and this can be analogized to land rushers who rush to claim land before doing anything specific to improve it -The metes and bounds of the claimed subject matter cannot be fully claimed without some sort of actual utility
Akamai Tech, Inc. v. Limelight Networks, Inc.
An individual cannot be liable for inducing patent infringement when no one party is liable for directly infringing the patent. -Court says it will hold entity accountable for others' performance of method steps if: That entity directs/controls others' performance Where the actors form a joint enterprise -Basically when a party is compelling another with money/commission/benefit to infringe a patent, they can be liable via vicarious liability -Joint enterprise has 4 elements 1. An agreement, express or implied, among the members of the group 2. A common purpose to be carried out by the group 3. A community of pecuniary interest in that purpose, among the members, and 4. An equal right to a voice in the direction of the enterprise, which gives an equal right of control -this is a question of fact, frequently for the jury -Here, while all of the steps in Akamai's method patent have been employed, employment of all of the steps is not attributable to a single party. Limelight employs most of the steps in the patent, but requires its customers to employ the step of tagging. And because Limelight's customers are independent entities not under the control of Limelight, they are not attributable to Limelight either directly or via agency.
In re Hall
An invention is not patentable if it was described in a printed publication more than one year prior to the date of the patent application. Patent claims for life sciences small molecule were rejected based on 1 University dissertation that taught it published >1 year prior to filing, exact date of filing not established but court said that didn't matter In re Hall: printed publication -> statutory bar -Same result if 1977 dissertation were done by Hall himself -Same result if Hall invented in 1976 -Time of invention not relevant to statutory bar
Novelty under the America Invents Act
Done to promote the progress of science and the useful arts..." "more clear"/"promote harmonization" America Invents Act of 2011 Novelty prior Art— a person shall be entitled to a patent unless 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 The claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(B), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the invention
Graham v. John Deere Co.
In order to determine non-obviousness, a court must determine the state of the prior art, the differences between the prior art and the claims, and the level of skill of one of ordinary skill in the art, and, taking into consideration any secondary factors, determine if the claims are patentable. Where a claimed invention is an obvious improvement over the prior art, though it may be new and useful, it is not patentable. Here, the improved device plow that improved on the prior art was not patentable.
Summary Non-Literal Infringement
Limiting Principles -The All Elements (All-Limitations Rule) -Prosecution History Estoppel -Festo Rebuttable Presumption: amendments made to narrow a claim limitation foreclose application of the DOE unless: Unforeseeable Equivalents— principally after-arising art Tangential Amendments Amendments for "other reasons" -Prior Art Rule (Wilson Sporting Goods) -The Public Dedication Rule (Johnson & Johnson) -Market-Plus-Function Claims (applies to after-arising art) -The Reverse Doctrine of Equivalents
Griffith v. Kanamaru
Prior *invention* anticipates An inventor seeking to prove that he was entitled to a patent for an invention even though another inventor filed for a patent for the invention first must show that he worked with reasonable diligence to reduce the concept of the invention into practice. -Griffith conceives it first, Kanamaru files for patent, but Griffith later completes it but court says there is evidence he wasn't working continuously from conception with reasonable diligence -It was his 2nd/3rd priority while working on other projects/not pushing for funding, so there was not reasonable diligence by Griffith to complete it from time of conception
Rosaire v. National Lead Co
Prior *use* anticipates An invention is not patentable if it was known or used by others before the patentee's invention. Rosaire had 2 patents on oil prospecting method that it admitted that Gulf had conceived of the patented ideas before. Patents held invalid.
Egbert v. Lippman
Public use of corset by inventor's gf barred patent A public disclosure of an invention made prior to filing a patent application may still be considered public, even if the disclosure is limited to one item, disclosed to one person, and generally concealed from public view.
U.S. Constitution, Art. 1, Sec. 8
The Congress shall have Power to...promote the Progress of Science and useful Arts, by securing for limited times
Larami Corp. v. Amron
The absence of even one element of a patent's claim from the accused product means there can be no finding of literal infringement. -Patent holder can show infringement in 2 ways Demonstrating that every element of the claim is literally infringed OR Is infringed under the doctrine of equivalents -If one element of a patent's claim is missing from accused product, no infringement as a matter of law Patent Infringement -Literal infringement: -Doctrine of Equivalents -"An analysis of the role played by each element...as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute element plays a role substantially different from the claimed element" -So no infringement was found as a matter of law here because every element of the claim has to be satisfied for patent infringement to have occurred Patent Infringement -Larami's supersoaker improved over Amron's patented material and was not just an equivalent, every element of Amron's was not included, so it did not infringe
eBay, Inc. v. MercExchange, LLC
The decision whether to grant or deny permanent injunctive relief in patent infringement cases rests within the equitable discretion of the district court and such discretion must be exercised consistent with traditional principles of equity. -the traditional 4 factor test for permanent injunctive relief also applies to patents. Plaintiff must establish: 1. It has suffered an irreparable injury 2. That remedies available at law, such as monetary damages, are inadequate to compensate for that injury 4. That, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and 4. That the public interest would not be disserved by a permanent injunction -nothing in the patent act indicates that this test should not apply to it also, and it does say injunctions may issue "in accordance w/ principles of equity" -patent act says patents have "attributes of personal property" including "right to exclude others from making, using, offering for sale, or selling the invention" Supreme Court: -Apply 4 factor test for permanent injunctions -Roberts: 4 factor test has typically → injunction -Kennedy: watch out for trolls!
Motion Picture Patents Co. v. Universal Film Manufacturing Co.
The exclusive right granted in every patent must be limited to the invention described in the claims of the patent. -Seller of movie feeding through machine tried to make it so purchasers couldn't resell the machines for less than their list price, etc. -Court here finds that patent owner can't limit the buyers who are buying right to use the product to be able to vend it, and the "cost, inconvenience and annoyance to the public which the opposite conclusion would occasion forbid it" -The machine had a notice that you could only use it with moving picture films containing invention of reissue patent '192...court rejects this, b/c that isn't part of the point of the patent that they are given a monopoly on
Therasense, Inc. v. Becton-Dickinson, Inc.
The materiality required to establish inequitable conduct is but-for materiality. -Patent attorney made up science to overcome glucose strip rejections -Inequitable conduct came to require a finding of both 1. Intent to decieve AND 2. materiality -Claims of inequitable conduct lead to deep punishments because it can Invalidate the patent Spawn antitrust/unfair competition claims Often makes a case "exceptional," leading to awards of attorneys fees May also prove the crime of fraud exception to attorney-client privilege -Inequitable conduct claims were being brought on "the slenderest grounds" -Court now holds but-for materiality; if prior art is but-for material if PTO would not have allowed a claim had it been aware of the undisclosed prior art
Madey v. Duke University
The very limited experimental use defense to patent infringement only applies to acts taken for amusement, to satisfy idle curiosity, or strictly for philosophical inquiry and not applicable when the act is intended to further the infringer's legitimate business interests, regardless of whether the entity is for-profit or non-profit. -Prior case held "for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry" -Experimental use doesn't apply when it is under the "guise of scientific inquiry" but has "definite, cognizable, and not insubstantial commercial purposes" -"slightest commercial implication" disqualifies it from this defense, (concurrence) -so long as the act is in furtherance of the alleged infringer's legitimate business and not solely for amusement/satisfying idle curiosity/philosophical inquiry, act does not qualify for very narrow and strictly limited experimental use defense -nonprofit/nonprofit status is not determinative -Duke continued using Prof. Madey's patents after he left in a falling-out The experimental use defense, if available at all, must be established by Duke- can't shift burden to Madey
Global Tech Appliances, Inc. v. SEB S.A.
To be liable for actively inducing infringement of a patent, the party must know that the induced act constitutes patent infringement. -Knowledge is required for actively inducing infringement -Doctrine of willful blindness has 2 basic reqs Defendant must subjectively believe that there is a high probability that a fact exists and The def must take deliberate actions to avoid learning of that fact -Pentalpha subjectively believed that there was a high prob that SEB's cold-touch fryer was patented, and took deliberate steps to avoid knowing that fact and therefore it willfully blinded itself to the infringing nature of Sunbeam's sales -Knowledge is required for 271(b) and 271(c) -Willful blindness constitutes knowledge
KSR International Co. v. Teleflex Inc.
To determine whether an invention is unpatentable, a court reviews the differences between the prior art and the claims at issue, the level of ordinary skill in the art at the time of invention, and the presence of any secondary considerations such as commercial success, long felt but unsolved needs, failure of others, etc., surrounding the origin of the subject matter sought to be patented. The addition of electronics to a pedal was unpatentable because it was an obvious combo of 2 known elements. Courts look at if there was a teaching, suggestion, or motivation from the prior art would lead the invention to be obvious, looks at whether the the invention is the combination of known elements that together do no more than is expected -whether a PHOSITA would be expected to combine the two elements
In re Fisher
To meet the "substantial" and "specific" utility requirements, a patent application must show that the claimed invention provides a significant, presently available, well-defined, and particular benefit to the public. -A patent is not a hunting license (for research), but a reward at the end of the research -Need an "immediate, well-defined real world benefit to the public" for patent -Fisher has 5 isolated claims ESTs (short nucleotide sequence) and he just lists 7 different ways they might become useful -admits the underlying genes have no known function at time of filing -ESTs are unlike a microscope because -Microscope has specific benefit of magnifying an object to reveal its immediate structure -The EST can only be used to detect the presence of genetic material having the same structure as the EST itself -A proliferation of intellectual property rights upstream may be stifling life-saving innovations further downstream in the course of research and product development"
Impression Products v. Lexmark
We conclude that a patentee's decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose of the location of the sale.
Festo v. Shoketsu
Where an inventor narrows a claim through an amendment during patent prosecution, and the amendment is not made to make the claim patentable, the doctrine of equivalents may still be available to the inventor against infringers. -Festo was magnetic conveyer system manufacturer. Estopped from using DoE for infringement suits against competitors for equivalents they gave up in prosecution
Wilson Sporting Goods
While the doctrine of equivalents may permit a patent holder to prevail on a claim for patent infringement by products that do not literally infringe the claim, the doctrine cannot extend to products that fall within the prior art or products that are an obvious variation of the prior art. -Thus, prior art always limits what an inventor could have claimed, so it limits the scope of infringement claims. Can't say existing prior art is infringing your patent under doctrine of equivalents -Limits availability of doctrine of equivalents in golf ball case, if potential infringer would be obvious based on prior art, it does not infringe even under DoE
35 USC § 271(a)
a) Whoever w/o authority makes, uses, offers to sell, or sells any patented invention (direct infringement
Equitable Estoppel (misleading)
basically if a patentee acts like they won't bring infringement against potential/current infringer, they are estopped from proving infringement if: 1. The actor, who usually must have knowledge of the true facts, communicates something in a misleading way, either by words, conduct, or silence 2. The other (the infringer) relies upon that communication 2. And the other would be harmed materially if the actor later is permitted to assert any claims inconsistent with his earlier conduct
Inequitable conduct may render a patent unenforceable
may "arise from affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive or mislead the USPTO"