IP law
In Re Wands (factors that the court uses to figure out if the specifications calls for undue experimentation to reach the claimed class of embodiments
1) the quantity of experimentation necessary 2) the amount of direction or guidance presented in the specification 3) the presence or absence of working examples 4) the nature of the invention 5) the state of the prior art 6) the relative skill of those in the art 7) the predictability or unpredictability of the art 8) the breadth of the claims
Originality Requirement
1) the work has to be independently created by the author and 2) the work has at least certain minimum amount of creativity to it
17 U.S.C. section 101:
"a compilation is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship"
Governmental works- 17 u.s.c section 105
"copyright protection under this title is not available for any work of the U.S. government, but the U.S. government is not precluded from receiving and holding copyrights transferred to it by assignment, request, or otherwise" This provision only applies to U.S. government employees acting within their scope of employment
Section 271 (a) of the Patent Act:
"except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patent invention , within the United States or imports into the United States any patent invention during the term of the patent therefore, infringes the patent". there are 2 test for what the defendant is making, using, selling, or importing is actually the patented invention : literal infringment and doctrine of equivalents.
The general rule in IP law does not make injunctions automatic, but applies a Four factor balancing test: (look to page 101)
1) whether the plaintiff will be irreparably injured absent an injunction 2) whether the grant or denial of an injunction would impose more hardship, and 3) where the public interest lies ("Head start" injunctions are available to plaintiffs who have published or otherwise disclosed a secret at some point after it was misappropriated)
What the judge should look at to determine how the PHOSITA would interpret hte claim language:
1) dictionary, if the terms are simple or common 2) if not figured out from the dictionary, look to evidence of meaning to the PHOSITA: word of claims;remainder of specification; prosecution history; and extrinsic evidence
One Measure is: UTSA section 1 cmt. "Proper means include:
1) discovery by independent invention 2) discovery by "reverse engineering
Machine or Transformation Test (MoT)
1) implementation in the particular machine or 2) transforms something into a different state or thing
3 disputes that the court has had in addressing claim construction:
1) is the claim construction a matter of law for the court to decide, or a matter of fact for the jury to decide? 2) what is the proper standard of review on appeal 3) how should the the court or jury go about construing the claims?
Definitive Test for Patentable Subject Matter (apply this test when there is a process that raises a patentable subject matter issue) SC Mayo
1) is the claim directed to patent-ineligible law of nature, natural phenomenon or an abstract idea? 2) if so does the claim contain an inventive concept sufficient to transform the nature of the claim into a patent-eligible application of the ineligible subject matter?
1st function of patent
1) promote invention and they do this through the familiar trade of granting exclusive rights in return for inventors spending the time and effort to invent something
4 ways to show what another is (only need to prove 1)
1) written contract 2) exercised control of the content 3) objective manifestations of intent to be coauthors 4) the success of the works equally attributable to the various authors that you can't figure whose contribution was more important
Incandescent Lamp Patent
The problem was that very few carbonized, fibrous or textile materials worked well for light bulbs. In fact, hardly any worked at all and so Sawyer and man didn't indicate in their specification which of the carbonized fibers are textile material that would work other than carbonized paper, which actually didn't actually work all that well either
Samsung electronic v. apple
The supreme court cut back on the effect of disgorgement a little by saying that in a product like a smartphone, the article of manufacture isn't necessarily the end product sold to the consumer. It might be a separate component, but even so design patent damages can be huge
what test does the Copyright Act use to tell who is an employee for purposes of the work made-for-hire provision?
The supreme court used the same test as what is used in tort law for respondeat superior from the Second Restatement of Agency section 220
Criminal Penalties
There can be criminal penalties under state laws and the federal EEA, which makes theft of trade secrets a federal crime. Private plaintiffs cannot invoke those, but they can report theft of trade secrets to state or federal enforcement
Type II works for hire Section 101(2) elements
There has to be a signed writing agreeing that work is work for hire; AND even if there is a signed writing, the work has to fit within 9 specified categories of works
CCNV factor (2) The second factor the court looked to was the skill required
The more skill it takes to complete a task, the more likely that is an independent contractor
damages (lost profits)
at most the profits that the p would ahve made off of the infringing itme from the us of the design
Aalmuhammed Authorship Test-what is an author?
(1) The author is "the person to whom the work owes its origin and who s uper-intended the whole work, the 'mastermind'" Burrow-Giles: author is "the person who has superintended the arrangement, who has actually formed the picture by putting the persons in position and arranging the place where the people are to be" Person who really re-presents, creates, or gives effect to the idea, fancy, or magination (2) Both parties have to have intended to be coauthors (shared intent) (most to least important) (a) Who exercised control over making authority over the work? (b) Did the parties manifest an intent to be co-authors? (c) Did the audience appeal turn on both contributions?
35 U.S.C. 102(a)(1) AIA exceptions
(1) a disclosure (patent, printed publication, put on sale, or knowledge or used by others) made one year or less before the effective a filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if: [1 (A) [disclosure made by inventor or by someone who got it from inventor]; or [1 (B) [inventor made earlier public disclosure]
3 categories of 102 (b)
(1) mere idea of a prior work or concept or principle cannot be copyrighted: Ideas, concepts, principles are free for anyone to take even if someone is the first to come up with a mathematical equation or scientific principle (2) facts are not copyrightable (discovery): news, history, science, facts about the world are all uncopyrightable (3) copyright protection does not extend to the patentable subject matter (procedure, process, system, method of operation)
Modern Test for Nonobviousness (looking at sec. 103, SC said there are 3 factors to be considered
(1) the court must assess the level of ordinary skill in the pertinent art. That is going to require the court to determine what the person having ordinary skill in the art (abbreviated PHOSITA), knows and can do. What qualifications that person typically have and how much experience in the creative ability do they have and how much experience in creative ability do they have in solving problems? (2) the court will have to determine what is already known in the field that, what is the scope and content of the prior art? (3) the court will have to identify the differences between the prior art on the one hand and the claimed invention on the other
Takeda Chem v. Alphapharm (2007) (After KSR, the federal circuit court came up with a 3 part inquiry to figure out if a compound discovered at the end of such a search was obvious)
(1) would the PHOSITA select the starting compound which depends on the number of potential compounds and their known properties? (2) would the prior art motivate the PHOSITA to use the lead compound to get the claimed compound which- i) will depend on what the teachings are in the prior art and ii) how structurally similar the various compounds are 3) would the PHOSITA have a reasonable expectation of success in doing his kind of search? depends on the predictability of the field whether there were any unexpected results and; whether the prior art teaches away from doing this search obviousness to try
2nd function of patents
(2) it is a goal of the patent system to not just get people to invent things, but to tell us what the invention is and how it works. It is an important goal of the patent system to distribute scientific and engineering knowledge ( Prove you invented it; Describe in detail the patent so the public can learn what it is)_
Remedies against Inevitable Disclosure: DTSA 18.U.S.C section 1836(b)(3)(A)(i):
(3) Remedies.-In a civil action.. a court may- o (a) grant an injunction- (i) to prevent any actual or threatened misappropriation. Provided the order does not- (I) prevent a person from entering into an employment relationship , and that conditions placed on such employment shall be based on evidence of threatened misappropriation and not merely on the information the person knows; or (II) otherwise conflict with an applicable state law prohibiting restraints on the practice of a lawful profession, trade, or business
literal infringment
means that defendant activites fall within the literal scope of the claim language
Authorship sec 201 of the copyright act
(a) copyright in a work protected under this title vest initially in the author or authors
Disclosure requirements: 35 U.S.C section 112 (A)
(a) in general.-the specification shall contain a written description of the invention, and of the manner and process of making and use it (enablement), 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 or joint inventor of carrying out the invention
DTSA, 18 U.S.C section 1833
(b)(1) Immunity.-the individual shall not be held criminally or civilly liable under any federal or state trade secret law for the disclosure of a trade secret that A) is made (i) in confidence to a federal, state, or local government official, either directly or indirectly, or to an attorney; and (ii) solely for the purpose of reporting or investigating a suspected violation of a law; or B) is made in a complaint or other document filed in a lawsuit or other proceeding, if such filing is made under seal The DTSA expressly immunizes whistleblowers-those who disclose trade secrets to the government or an attorney for purposes of reporting or investigating suspected illegal activity-from trade secret liability The DTSA expressly immunizes whistleblowers-those who disclose trade secrets to the government or an attorney for purposes of reporting or investigating suspected illegal activity-from trade secret liability
Ordinary observer test
(test for design patent infringement) Whether the accused device is substantially similar to the claimed design "in the eye of an ordinary observer familiar with the prior art," giving such attention as a purchaser usually gives, the two designs are substantially the same" (Essentially asking abouyt the hypoethical ordinary observer familiar with all the of the priro art would that person think the design are substantially the same.
Misappropriation Elements
1) Plaintiff has a protectable trade secret a) information sought is information meant to be protected b) not general/know to all 2) trade secret owner took reasonable precautions to keep it a secret 3) d acquired trade secret wrongfully
Graham Factors- FC version (with the addition of secondary consideration to prove nonobviousness)
1) commercial success of the invention, 2) long felt, but unsolved need and failure of other 3) award and praise 4) teaching away 5) licenses 6) copying 7) advances in collateral tech 8) near-simultaneous invention
Test prove joint work
1) copyrightable work 2) two or more authors and 3) the authors must intend their contributions be merged into inseparable or interdependent parts of a unitary whole 4) each author has to contribute independently copyrightable material
musical works
musical composition of a song. the notes and lyrics as written down on sheet music.
Rest. Torts 757 cmt. B factors: factors to look to see whether information constitutes as a trade secret (be careful with this; only applies to 1st restatement ):
1- the extent to which the information is known outside his business; 2- the extent to which it is known by employees and others involved in his business 3- the extent of measures taken by him to guard the secrecy of the information; 4- the value of the information to him and to his competitors; 5 -the amount of effort or money expended by him developing the information; 6- the case or difficulty with which the information could be properly acquired or duplicated by others
Economic Espionage Act
A federal statute that makes it a crime for any person to convert a trade secret for his or her own or another's benefit, knowing or intending to cause injury to the owners of the trade secret.
musical (two types)
musical works and sound recording
What is the term of protection for design patents?
15 years (instead of 20) from the date patent was granted
How long does a patent last?
20 years from the date of filing patent
Pictorial, graphic, and sculptural (PGs)
2D and 3d works of fine graphic and applied art. (ex. photos, prints of art reproductions, maps, globes, charts, diagrams, models, and architectural plans.) exceptions to copyrights PGS word can extend any utilitarian aspect of the work that is not separately imaginable from the expressive aspects (useful article doctrine)
9 specified categories of works
A contribution to a collective work (a compilation that one itself made up of independently copyrightable works, such as journal, newspaper, or magazine); A part of a motion picture or other audiovisual work; A translation; A supplementary work (basically a work such as a forward or an index or a map that is meant to include within another work ; A compilation; An instructional text (a textbook); Test; Answer material for a test; and An atlas
Injuction
A court order directing someone to do something or to refrain from doing something
Test for how to tell if someone is being willfully blind? (FC)
A defendat was being willfyly blind it if it was deliberately indifferent to a known risk of infrignement. SC said this was too low of a standard
Section 103 (AIA)
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made
Section 103 (1952 Act)
A patent may not be obtained through the invention if it 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 patent 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 In other words, obviousness will bar a novel invention when 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 of the invention
damages
A sum of money paid in compensation for loss or injury in a civil case
Aalmuhammed v. Lee (Malcolm X case)
Aalmuhammed stated that he suggested extensive script revision, some of which were included in the final movie, including that he created 2 entire scene that made it into the final cut. Aalmuhammed wanted his screen writing credit, but the studio wouldn't agree to that and instead he eventually just gets listed in the credits as "an Islamic technical consultant"
defense
After a P has made out a Prima facie case of infringement by alleging that the D is making, using, selling, or importing something that contains all of the elements of a claimed invention as that claim is construed after a Markman hearing, the burden will then shift to the defendant to make out any defenses
Ex Parte Seizures (ONLY under DTSA)
An ex parte seizure means the plaintiff can go into court after filing a complaint and without informing the defendant and ask for an order to the U.S. Marshall to go and seize the goods and evidence
Combining references
An invention claimed in the patent is a combination of 2 or more elements that were each commonly known but hadn't been combined before In order for an invention to be anticipated by the prior art, it has to be the case that there is a single prior art reference out there that contains all of the elements of the claimed invention
enablement (test)
An invention is enabled if, based on the specifications and the PHOSITA' S knowledge of the field, the PHOSITA can build or practice the full scope of the claimed invention without undue experimentation"
Which act applies?
Application filed before March 16, 2013 1952 Act (first to invent) OR Application filed on or after March 16, 2013:AIA (first to file regardless who invented the patent)
CCNV v. Reid
CCNV wanted to enter a sculpture in the annual Christmas pageant of peace. CCNV hired Reid to create the sculpture for them. Reid would build the figures onto of sculpture and CCNV was going to build the base for the sculpture
PepsiCo v Redmond
Case in which district court applied inevitable disclosure doctrine even though there was no noncompete agreement in place. An employee who had left his position in marketing PepsiCo's All Sport sports drink to work for Quaker Oats and Company and market Gatorade and Snapple drinks was enjoined from working for Quaker because he had detained knowledge of PepsiCo's trade secrets pertaining to pricing, market strategy, and selling/delivery systems
Disclosure Purpose
Claims are drafted as broadly as possible to reach beyond the particular thing the inventor made to capture as many similar inventions as possible. The patent system allows that inventors are allowed to claim well beyond what was created in the lab and it is the claim language not the particular product that patent owner is making or selling that defines the patent's scope.
Copyright clause of the constitution
Congress given power "to promote the progress of science and the useful arts, by securing for limited time to authors and inventors the exclusive right to their respective writing and discoveries
Validity Section 102 (a)
Copyright protection subsists, in accordance with this title in original works of authorship fixed in any tangible medium of expression, now known of later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device
America Invents Act
Courts have been interpreting "available to the public" as including all of the same stuff that fell under the phrase "known or used by others" in the 1952 act. [1 An invention is anticipated under AIA if it is patented, published or available to the public before the filing date, not before the date of invention [1 There is no longer any territorial restriction on knowledge or use under the AIA o Meaning if the invention is known or used anywhere in the world prior to filing, it's now anticipated and any patent will be invalid
CCNV factor (1) The overall standard for the factors above are for the hiring party's right to control the manner and means by which the product is accomplished
Courts will look at how detailed and exacting the control was. The more higher the micromanages, the more likely you have an employee
Defend Trade Secrets Act
DTSA
Disclosure
Disclosure is the other benefit that the public gets from the patent system besides the benefit of the invention itself.Disclosure requires that when submitting an invention, there must be a detailed disclosure of the invention in order to get the patent
Discovery by independent invention (TS)
Ex: if one came up with the trade secret on their own, cannot be held liable for misappropriating it from P
Why not an inventive concept? (Another part of the mayo test part 2)
In Mayo, it is stated that, "if the steps in the claimed processes (apart from the natural laws themselves) involve well understood, routine, conventional activity previously engaged in by researchers in the field, " the claim is ineligible. This goes back to novelty and nonobviousness. Basically, you look at the other steps in the process: are they all well understood, routine, conventional activity either separately or considered altogether? If so, then it's not patentable subject matter
Larami Test
Essentially, the accused device or process must contain literally every element of the claimed invention. If it's missing just one, it's not infringing The first thing the court has to do is to figure out what the elements are of each claim that's allegedly infringed (1) Look to the claim language and try to separate out each component of the claim into a list If there were multiple claims at issue, it would have to be done with each allegedly infringed claim and consider each claim separately. If even one of the claims is infringed, the defendant is liable for patent infringement
long felt, but unsolved need and failure of others
If there's a known problem, and if it goes unsolved for a long time, and then finally the patent applicant solves it, that's an indication the claimed invention was not obvious. It's even better evidence of nonobviousness if other people tried to solve it and failed
CCNV factor (10) Whether the work is part of the regular business of the hiring party
If this is something that the hiring party ordinarily does not do, that is an independent contractor's job. If it's part of the hiring party's regular business, then it's something they've likely hired employees for
CR bard c. ACS:
For contributory infringement purposes, the defendant has to know that the device is specially made or adapted for infringement, and that is not a staple article of commerce that is suitable for substantial infringing use
CCNV factor (13) The tax treatment of the hired party
Holding income and social security taxes is something an employer would do for employees and are required by law to, but not for independent contractors
35 U.S.C § 171 (A)
IN GENERAL.-whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefore, subject to the conditions and requirements of this title
CCNV factor (9) Hired party's role in hiring and paying assistants
If hired party can select and hire their own employees, that is an independent contractor. If not, that is an employee
CCNV factor (6) Whether the hiring party has the right to assign additional projects to the hired party
If hiring party can assign more projects after the first one is done, that is an employee. If they would need to negotiate a new agreement, that is an independent contractor
CCNV factor (12) provision of employee benefits
If hiring party provides employee benefits, that is only for employees
CCNV factor (8) Method of payment
If it's a lump sum payment or "per job" that's an independent contractor, if it's a weekly wage or monthly salary, that is an employee
CCNV Factor(4) The location of the work
If it's at the hiring party's offices that sounds like an employee, if it' somewhere else, that's more likely to be an independent contractor
CCNV factor (5) The duration of the relationship between the parties
If it's indefinite or it's an annually renewing contract that will be an employee. If
CCNV factor (7) The extent of the hired party's discretion over when and how long to work
If the hired party can decide when they're going to show up for work and how long they are going to stay, that is an independent contractor. If they work everyday 9-5 that is an employee
CCNV factor (3) The source of the instrumentalities and tools
If the person brings their own tools and equipment that will most likely be an independent contractor
teaching away ( graham factor)
If the prior art not only didn't contain the invention, but it actually taught away from the invention, which means people in the field thought that the claimed invention would fail and said so but the inventor tried it anyway and figured out that they were wrong
exception to the scope of copyrights 102(b):
In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation , concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work
Cunio Engineering v. Automatic Devices:
In order to be patentable, an invention must have a "flash of creative genius." The 1952 Act got rid of the flash of genius requirement "patentability shall not be negated by the manner in which the invention was made"
Rosaire
Known or used by someone else before invention (1952 act)/filing (AIA) + that person did not protect it as a trade secret ="known or used by others" (or available to the public")
was there an apparent reason to combine the known elements as claimed in the patent? Look at: (Telefex test #3)
Look at not just what one patent says, but maybe extract suggestions from multiple patents Look to unwritten evidence of market or industry demands pressing for this combination. Effects of demands known to the design community or present in marketplace. Maybe the general background knowledge of PHOSITA might have the suggested combination
Banner v. Manson
Manson invented a new chemical compound that was useful in treating tumors and mice. The only time there is a problem when it comes to proving utility is when a researcher makes a new chemical compound, but doesn't yet know what the compound does
CCNV factor (11) Whether the hiring party is in business
Most useful to figure out if you have employees working for a business or a homeowner hiring independent contractors to do cleaning or gardening ***this factor doesn't matter much in copyright cases
Patent Litigation
Occurs when a defendant allegedly infringes on the patent by:; plaintiff files a complaint; claim construction; SJ infringement; SJ defenses
inevitable doctrine
Only at issue when there is non-compete agreement while there still is a confidentiality agreement
Morrissey v. Procter & Gamble
Rule: when the uncopyrightable subject matter is very narrow, so that "the topic necessarily requires," if not only one form of expression, at best only a limited number, to permit copyrighting would mean that a party or parties, by copyrighting a mere handful of forms, could exhaust all possibilities of future use of the substance" (In other words, an author can't remove an idea or system by copyrighting the only way or a handful of ways of explaining the process )
Gottschalk v. Benson
SC had difficulty determining whether doing a part of a process on a computer could make a previously known patentable. The court invalidated an algorithm for converting decimal numbers to binary numbers as it was something that could be done papers just using math
Global Tech v. Sev (deep fryer case)
Pentalpha did not have the necessary knowledge of the patent because they chose to be willfully blind to existence of a patent which the court states "counts as a form of knowledge of the patent". it's not actual knownledge since its being avoided, but it's a form of constructive knowledge.
What's Reasonable Precautions?
Plaintiffs must show under the uniform act that they have taken "reasonable measures" to protect the secrecy of their idea -Certainly, a plaintiff cannot publicly disclose the secret an still expect to protect it yet precautions must go further than that They must include certain efforts to prevent theft or use of the idea by former employees
Disclosures for trade secrets
Public announcement; Once they file for a patent that trade secret is gone; Contained in Product (Depends on whether secret can be obtained Data general) ex design drawing ;Wrongfully taken (thief publication) depends (how long it was available ; 1999 Congress changed U.S. law to require that some but not all patent application be published after 18 months
CCNV factors
Right to control manner and means; Label ; Hiring party in business; Work location; Hiring and paying assistants; When and how long to work; Part of regular business hiring party; Relationship duration; Additional projects; Skill required; Source of instrumentalities and tools; Tax treatment; Employee benefits; Payment method
Parke Davis v. HK Mulford
Rule: The court proposed a test for whether the would be inventor had done enough. The test was whether commercially and practically the isolated and purified substance had become a different thing than the naturally occurring substance In this case, the substance was adrenaline, which no one else had been able to get as pure as the plaintiffs so the court held it was patentable as a composition of matter
Fiest v. Rural Tel. Serv.
Rule: oringal as term is used in copyright, means only that the work was independently created by the author and 2) that it possesses at least some minimal degree of creativity
UTSA (everywhere, but New York)
Section (1)(4) defines trade secret as "Trade secret means any information including formula, pattern, compilation, program, device, method, technique, or process (i) that derives economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means , by other persons who can obtain economic value from its disclosure or use; (ii) and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy" [1 Simple format for what qualifies as a trade secret: Type of Info: [1 any information [1 independent economic value from secrecy Secrecy: [1 not generally known [1 not readily ascertainable by proper means
Effects of Joint Work
Section 201(a): the authors of a joint work are coowners of copyright in the work. Rule: Court states that coowners are tenants in common. Joint authors own the entire work together and they can each decide for themselves what to do with it, it's just that any profits made will have to be split with their coauthors and i f there's no agreement on how to do that, co-authors split profits equally
Can someone be successfully prosecuted for attempted theft of trade secrets, even if the material in question was not a trade secret? 7th Cir. answer
Seventh circuit has said that if one steals something thinking it is a trade secret, but wrong about how secret it is, you can't be prosecuted for attempt, just like you can't be prosecuted for attempted sale of narcotics if you sell flour thinking that flour is a narcotic
Supreme Court on Subject Matter Patentability
Skepticism. After being fairly protective of patents throughout the industrial revolution, the SC became increasingly skeptical of the scope of patents right from 1930s-1970s.
How to know how to combine?
Someone out there must have said it was a good idea to combine them where there must have been an identifiable incentive for the PHOSITA to do it by the time of the invention
statutory bars
Statutory bars are different from the novelty requirement because that can bar a patent from being granted even if inventor A was the first person to invent it and the first to file for a patent. The usual ways a statutory bar becomes a problem is if the inventor himself discloses the invention more than a year before filing for a patent
O' Reilly v. Morse
Supreme court holds that you can't capture an entire field based on a principle with just a claim to a particular application of that principle. The specification has to explain how you get from the particular thing the inventor built to everything else that is within the scope of the claim. If your claim is so broad that you can't do that then is not enabled and it's invalid.
Funk Bros v. Kalo Innoculant
Supreme court invalidated a mixture of different bacteria to promote plant growth as essentially a patent on the discovery that different bacteria helps different plants. The court said the patentee did not do anything to create or change the bacteria in any way. They were just mixed together in a single bag.
1952 act
The 1952 act defines novelty as not being previously patented or in a printed publication and not being previously known or used inside the U.S. This requirement is about whether someone came up with the invention before the inventor even thought of it
Myriad Genetics
The court rejected the Parke Davis theory that isolating and purifying a natural substance can make it a new thing and therefore patentable. the court said :separating the gene from its surrounding genetic material is not act of invention. extensive effort alone is insufficient to satisfy the demand of section 101. 1): Myraid claims snipped DNA segment does not exist in nature and is a different thing (2): extracted piece is different substance with chemically different properties of the larger molecule from which it was taken (3): the court responded, that the sequence of nucleotides from which it was snipped is present in nature. Takeaway- if dna sequence exists anywhere in nature, not patentable. if composition exists in nature, not patentable.
In Re Hall
The federal circuit concluded that the dissertation was a public publication because evidence showed that it was catalogued prior to the critical date (one year before Hall filed his patent application) Takeaway: this case indicates how little it takes to anticipate or bar a patent due to prior knowledge or use
What is the goal of patent law?
The goal patent system is not only to get inventor to invent something is the goal to have someone tells us how to distribute and learn how to use
Can someone be successfully prosecuted for attempted theft of trade secrets, even if the material in question was not a trade secret? 3rd Cir. answer
Third circuit court has said yes, you can be prosecuted for attempted sale of a trade secret even if it turns out unbeknownst to you, the thing that was taken was not in fact a trade secret
Baker v. Selden
This case involved a dispute over 2 rival books presenting methods of double-entry bookkeeping for county clerks "the give the author of the book an exclusive property in the art described therein when no examination of its novelty has ever been officially made would be a surprise and a fraud upon the public. That is the province of letters patent, not of copyright In other words, to get protection on something that is patentable subject matter, a new useful and non-obvious process, composition, article of manufacture, or machine, one has to go through the more rigorous procedures of getting a patent, including examination by the Patent office
Proper Means
This means in order to win on a trade secret misappropriation claim, P has to show that D probably didn't get the information by proper means (If defendant has done one of these, they can't be held liable as long as there isn't some sort of tort or breach of duty involved)
works made for hire
Under U.S. law, in some cases an employer or sometimes the hirer of an independent contractor is deemed to be not just the owner of the work, but the initial author of the work created under their control
sole authorship
Where a single author working by themselves creates an entire work
joint authorship
Where two or more authors collaborate to create a work.This can be difficult when trying to figure out whether collaborators have done enough to be deemed coauthors or not
Priority
Who got the patents rights first (only an issue under the 1952 Patent Act , not the AIA) Between two or more competing inventors who independently come up with the invention at roughly the same time, who should get the patent? this happens often with the evolution of science and technology with people coming up with inventions months or days around each other
35 U.S.C. § 289
Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation there of, to any article of manufacturer for the purpose of sale, or (2) sells or exposes for sale any article of manufacture which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any U.S. district court having jurisdiction of parties... essentially this allows for remedy from the entire good to which the desing is applied.
35 U.S.C § 101-what is patentable?
Whoever invents or discovers any new and useful process, the machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent, therefore, subject to the condition and requirement of this title (process, the machine, manufacture, and composition of matter.)
Rest. 1st Torts Section 757 ( New York)
[1 (The older rule used in a lot of classic cases , but now just governing New York) [1 Trade secret misappropriation is defined as, "one who discloses or uses another's trade secret without privilege to do so, is liable to the other if [he or she acquired the information wrongfully]. 757 cmt b. states, A trade secret may consist of any formula, pattern, device, or compilation of information which is used in one's business , and which gives him an opportunity to obtain advantage over competitors who do not know how to use it [1 Further, the subject matter of a trade secret must be secret [1 Information can't be a matter of public knowledge or general knowledge in an industry cannot be appropriated by one as a secret. Once it is generally known it is no longer a trade secret. [1 Matters which are completely disclosed by the goods which one markets cannot be a secret... [1 Simple format for what qualifies as a trade secret: Type of Info: [1 Formula, pattern, device, or compilation of information [1 Used in one's business [1 Competitive advantage Secrecy: [1 Not public knowledge [1 Not generally known to the industry [1 Not disclosed by sales
Under the UTSA section (3)(a) part (2)
a complainant also may recover for the unjust enrichment caused by misappropriation that is not taken into account in computing damages for actual loss Essentially meaning taking from the defendant the gain received from use of the secrets, even if those weren't lose sales for the plaintiff
novelty (design patents)
a design is novel if no prior art shows the same design. Test: whetehr the ordinary observer viwing the new design as a whole, would cosnider it to be distinct from, rather than a modification of and already existing design.
Design Patents
a design patents is granted for a piece of industrial design (which falls betweens patents and copyrights)
dramatic
a dramatic work is a player or musical. a story that is meant to be performed before an audience live stage
35 USC Section 102 -AIA
a person shall be entitled to a patent unless: Statutory bar: (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 claim invention
Definition of fixed
a work is fixed in a tangible medium of expression when its embodiment in a copy or phonorecord by or under the authority of the author is sufficiently permanent or stable to permit it to be perceived, reproduced or otherwise communicated for a period of more than transitory duration
Type 1 Work for Hire Section 101 (1)
a work prepared by an employee within the scope his or her employment. the employer of an employee acting within the scope of employment is considered the author and owns all rights. unless section 201 (b) the parties have expressly agreed otherwise in a written instrument signed by them. ex (professors own rights to their published work, not employers
Joint Authorship Section 101:
a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole
Type II works for hire Section 101(2):
a work specially ordered or commissioned.. if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire" This type of work can be present for any time of employment including independent contractor
literary
any works expressed in words, numbers, or other verbal or numerical symbols or indicia (Ex. short stories, encyclopedias, almanacs, tests, databases, and even computer programs.)
Disclosure (design patents)
as long as the designer of ordinary capability can figure out what the claimed design is from the drawing then its properly claimed (written description, enablement, and claim definiteness)
nonfringement (Patent act)
absence of liability for infrngement or uneforceability
The laible party directs or controls the other performance by
acts through an agency, contracts with another to perform one or more steps of the claimed method, and where the alleged infringer conditiosn participation in an activity or receipt of a benfit on the performance of a step or steps of a patented method and establishes the manner or timming of that performance
SJ infringement
after the court determines what the claim language means,then the court will figure out if what the defendant is doing is actually within the scope of those claims
specification of a (patent)
all the material that precedes the claims, such as the cover page, the description of the problem, and the description of the particular solution that the inventor came up with
or the two parties form a joint enterprise
an agreement between them, eitehr express or implied; a common purpose to be carred out by the group; a community of pecuniary interest in that purpose (expect to make money from it) and equal right to voice in direction of the enterpise, which gives an equal right of control.
Larami analysis
becuase every element of a claim is essential and material to that claim, a patent owner must, to meet the burden of establishing infringement show the presence of every element. in the accused device. if even one element of a patent claim is missing from the accused product then there can be no infringment as a mattter of law
1952 35 U.S.C Section 102: a person shall be entitled to a patent unless (g) (2)
before such person invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining the priority of an 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
Permanent Injuctions
can get an injuction against further infringement
direct infringement
claims that the defendnat him or herself is infringing somehow
other types of works- 103
compilations and derivative works
invalidity (patent act)
d has to prove invalidity not just by a preponderance of the evidence but by clear and convicing evidence. patenable subject matter, novelty or sstaturoty bars, obviousness, disclosure requirements.
Architectural works
design of buildings as embodied in any tangible medium of expression. ex. building itself, architectural plans, or drawings. exceptions it not an infringement to take a picture of it nor is it an infringement for the owners of the building to make alterations to it if it is in a public place
L.A. Gear v. Thom McAn-
design patent validity is relatively easy for plaintiff ot show,but infringement is a little bit harder to show
What the difference between design and utility patents?
desing patents are claimed much differently than utility patents. Design letter patents start with the letter D and the number is nowhere near 10 million patents we have -The design patents lists the inventor, assignee, and then term (15 years from date of issuance).In design patent, the drawing itself is patented. Dotted lines in the claim are not a part of the claim Design patents have NO specification. The drawings are the claim For design patents, the drawings are the heart of the claim s**
Other Measures of Proper Means of Discovery of a Trade Secret
discovery under a license from the owner of the trade secret; observation of the item in public use or in public display; obtaining a trade secret from published literature
utility patents
do not coer design because the invention has to be useful, but copyrights are not supposed to cover the design
Hotchkiss
door knobs of porcelain. Supreme court said, needs something beyond the ability of PHOSITA
Extrinsic Evidence
evidence coming from outisde the patent or its prosecution history. includes scientific principles, the meaning of technical terms, or the state of the art that then informs how the claim language should be read. this evidence can be testimony from expert witnesses or the inventor about what various terms mean in the field. it can be deinfitions from specialized dictionaries or quotes from scientific treatises
defenses that created by case law
exhaustion
Audiovisual
films, videos, & tv shows
claims of a (patent)
follow after specifications and they are at the heart of the patent. The claim language defines exactly what the inventors claiming as their exclusive property. The claim language is typically drafted to make it as general and broad as possible in order to get patent rights to the particular parts or services offered by the inventor and anything resembling them
Richardson v Stantley works
functionality is NOT covered by a design patent. if the patent design is primarily functional rather than ornamental, the patent is invalid.
How to get a patent application accepted by the patent office? "(2) Patentability Requirements
he invention has to meet three conditions for patent validity: (a) inventions must be new, meaning that knowledge of it hasn't been previously been publicly available before (b) inventions must be useful, meaning that the invention actually solves some sort of problem Inventions must be nonobvious, meaning that even if no one has thought of this invention before, it's not something that someone with ordinary skill in the field could have thought up on their own
licenses (graham factor)
if a lot of people all of a sudden want to license the invention
Under the UTSA section (3)(a) part (3)
if a willful and malicious misappropriation exists, the court may reward exemplary damages in an amount not exceeding twice any award made under subsection (a)
authoritzation (patent act)
if d is doing something that is within the scope of hte claims, but they're doing it with authorzaiton of the patent owner, that's not infringment. this comes up when the defendant has sort of license from the patentee and question is whether the license is valid and covers whatever it is that they're doing. if so, then they have a defense to infringement
awards and praise (graham factors)
if inventions got awards and praise from others in the field
Exception of (compositions of matter)
if its extracted, isolated, and purified, beyond on how it occurs naturally you can get a patent (transformed into something else)
nonobviousness (design patents)
if not obvious to designer of ordinary capability. test 1) there must be a single prior art reference with same characteristics in the claimed design. 2) there must be other references that can be used to modify the reference design to create a design with the same overall visual appearance as the claim design
commercial success of the invention
if sold well, that's an indication it was a significant advance
Joint infringement (infringement)
if someone builds a machine that has elements A & B and someone else independently builds a machine with elements C & D, those 2 machine manufacturers don't directly infringe on invention ABCD.Someone could indirectly infringe by selling a machine to someone building. ABCD, but this would be contributory infringement Or if they instruct people how to combine AB with CD that would be inducement. but just building ab or cd by itself is not enough for infringement
Under the UTSA section 2(b)
if the court determines that it would be unreasonable to prohibit future use, an injunction may condition future use upon payment of a reasonable royalty for no longer than the period of time the use could have been prohibited
Under the UTSA section (3)(a) part (1)
in addition to or in lieu of injunctive relief, a complainant may recover damages for the actual loss caused by misappropriation Ex: actual loss = loss of sales
character copyrights
in literary works, a character can be protected by the copyright to the extent that it is sufficiently delineated and not a stock character
Utility
in order to get a valid patent, the invention has to be "useful", but that's a very minimal requirement, the invention has to work to achieve some purpose (usually easy to prove)
Section 201 (b)
in the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title and owns all of the rights comprised in the copyright
Joint Infringement (novelty)
infringement is sort of the flip side of novely because in order to anticipate an invention, a single prior art reference has to have contained all of the elements of the claim (Ex. If you had a prior art reference from one person with elements A & B and a second prior art reference from another person with elements C& D, those two references would not make invention A, B, C, D, not novel. They might make it obvious, but there's no novelty issue )
Egbert v. Lippmann
invented a corset spring improvement and gave it to his gf in 1855. Inventor died and gf tried to enforce patent 11 years later. Supreme court held that gf's use of invention was public use and barred. "later cases have backed off Egbert and private use has not been ruled as public use of invention"
How to get a patent application accepted by the patent office? "(1) Subject Matter Requirements
invention has to be within the scope of patentable subject matter 35 U.S.C section 101: 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 therefore, subject to the conditions and requirements of this title
Metallizing Eng v. Kenyon Bearing & Auto Parts
invention isn't sold or used in public, but it's producing things that is sold and used in public. Here, it depends on whether the use is informing, can a member of the public figure out what machine or process is from the goods produced? If yes, it's informing and bars patent. If no, then the patent is valid if its use is by a third party. Public Policy- The second circuit held that for public policy reasons, the rules should be different when inventors engage in a non-informing use of their own invention to make goods sold to the public. The idea is that an inventor of a machine or process shouldn't be able to get the benefit of the invention by using trade secret protection to make and sell products for years and then be able to turn around and extend those exclusive rights by getting a patent
novelty (patents)
inventions has not been preceded in identical form in the public prior art
Merger doctrine
is a defense to a charge of copyright infringement. Some ideas can only be expressed a certain way; courts say that the idea merges with the author's choice of expression. Merger is important in many cases, including those involving software and depictions of nature.
Infringement (design patents)
is accused artcile substantially similar to the claiemd design to an ordinary observer given the prior art
What is the theory behind copyright protection
is that by granting exclusive rights to the people who create such expressive works, you give them the incentive to create and distribute more of them to the public.
The MoT test
is that if the process was implemented in a specific machine, not a general purpose computer or if the process physically transforms an article into a different state or thing at the end of the process (in other words even if the process depends on law of nature, natural phenomenon, or abstract idea) if you tie it to some sort of physical or real world object then that's going to be enough to make it patentable subject matter
Nonobviousness
is the most important of the elements of Patentability (novelty, utility, and nonobviousness)
The new copyright act
it is no longer required someone to register a work with the copyright officer to get protection because work is protected the instant it is created.
Markman Rule:
it was after this case, the TC judges began holding claim construction hearings (Markman hearings at the outset of litigation so that they could decide what the claims meant before any jury trial was scheduled.
is claim construction a matter of law for the court to decide or a matter of fact for the jury to decide? (claim construction (1))
judges decide as a matter of law and jjury decides as a matter of fact
Step 1 of the Mayo test (is the claim directed to patent-ineligible law of nature, natural phenomenon or an abstract idea?)
law of nature, natural phenomenon, or abstract idea have to be some element of the process claim (A step in the process)
Test for Join infringement liability if
liable party directs or controls the other performace or the two parties from joint enterprise.
Types of Works -102 (a)
literary; musical; dramatic; choreographic; pictorial, graphic, and sculptural (PGS); Audiovisual; and architectural works.
Canons of Claim Construction
look at claims to get contextual meaning for a term. if you're trying to figure out the meaning of a word, you can start by looking at how that word is used in the claim in which it appears, and then also look how the same word is used in the other claims. Construing claims to preserve valdity all else being equal a construction that makes a claim invalid (too borad to be enabled) will be rejected.
occurs when a defendant allegedly infringes on the patent by (patent litigation)
making or selling infringing device or process, using infringing device or process or assisting infringement
Enablement is measured at the time of filing
meaning if the specification details how to build everything in the class claimed at the time of filing, it's valid, It's enabled, even if something is created later or after filing that falls within the claim language, but it was not enabled by the specification. Scope of claim can expand in time as stuff is created.
AIA is a first to file system
meaning that under the AIA a patent is awarded to the first inventor to file for it regardless of who was first actually invent the invention
Fixation Requirement
means it has to be recorded to be written down somehow. fixation has to be present through a tangible medium of expression (ex. movie, book, or a sound recording.)
Trailer Clauses
must be reasonable in duration and subject matter
Utility (Patents) must be useful in 2 respects
must work for intended purposes and must serve a practical purpose
Section 282 (b) of Patent Act
noninfringement, invalidity, authorization.
Nonobviousness (patents)
nontrivial extensions of existing invention and the ultimate condition of patentability
Relevant question when assesing the Ordinary Observer test
not how similar accused design is s to P's design in the abstract . correct question: how similar is d's desing to p's design considering the rest of the prior art.
Novelty Proper
novelty is the requirement that the claimed invention be new, that is not previously known or used by others. There has to be a lack of anticipation
What are the requirements of design patents?
novelty, nonobviousness, ornamental, disclosure, and infringement.
disgorgement
of the defendant's total profits on the article of manufacture. for design patent can even be greater than loss profits for utiltity patents both were infringed
Blocking Patent
one can patent an improvement of an existing patent and not be allowed to use the invention because of limited rights to the broader of the invention
levels of abstraction
one sentence summary (not copyrightable); vague outline, chapter by chapter outline; same plot; line by line paraphrase; verbatim copy (copyrightable)
Ornamental Old test
ornamental design "must be teh product of aesthetic skills and artsitic conception, and cannot be dictated by functional concerns
Ornamental (design patents)
ornamental design mean that design patents can't protect functional aspects of the article. this is critical distcntion for drawing the line between design patents and utility patents because this allows a design patent to get approved much more easier than utility patent by the PTO. Design patents are suppsoed to be about the object should be protectable by a utility patent.
purposivism approach
other judges in the federal circuit held that the meaning of the claim language should be derived from the specification first and only turn into ordinary English definitions as a backup
damages (reasonable royalty)
p can recover damages at least a reasonable royalty for infringing activity.
SJ Defense the court will consider any defenses
patent invalidity is a defense, meaning that instead of the plaintiff having to prove validity as an element of the claim, the defendant has the burden of proving invalidity. (the reason for this that the patent examination is more rigorous than registration or examination an any other field. (patentee comes to the lawsuit with a rebuttable presumption that their patent is valid.
Copying (graham factor)
people wanting to copy the invention by infringing on it
Remedies for design patent ifnringement
permanent injuction, damages, disgorement
PHOSITA
person having ordinary skill in the art
In Re Klopfenstein
poster left up at scientific conference for 2 days and it was held to be a printed publication so it was up long enough for people to learn about it and therefore it was no longer patentable
Copyright Law
protects works expression that is written, visual or audio works that express either an aesthetic or artistic message to an audient or an informational message
How to get a patent application accepted by the patent office? "(3) Filing Requirements
public disclosure requirements. The patent application has to fulfill the public education function. There are 3 requirements of this. (a) the application has to have a written description of what the invention is. (b) Enablement: That written description has to be detailed enough to enable other people to build or practice the invention through specification (c) Claim definiteness: the claims have to be sufficiently clear to let people know what is and what is not within the exclusive rights of the patentee
what is the proper standard of review on appeal? (claim construction (2)
question of fact get reviewed only for clear error by the trial court, questions of law reviewed de novo
Advances in collateral tech (Graham Factor)
recent advances in a related technology
sound recordings
recorded sounds made during a particular recording session
Disclosure Requirements 35 U.S.C Sec 112 (the written description requirement)
requires the inventor to describe the invention in the specification in sufficient detail to make clear that the inventor has actually claimed- you can amend claim language but stuck with the specification and description of the invention as of the date of filing
Near Simultaneous invention (Graham factor)
several inventors arrived at the solution near simultaneously
3 types of authorship
sole authorship, joint authorship, works made for hire
textualist approach
some judges held that courts should read claim language by starting with their ordinary English definitions first unless it was contradicted by the specifications
Plaintiff files a complaint (patent litigation)
sometimes the step after the complaint might by a motion to dismiss arguing a lack of patentable subject mater (now it is turning to summary judgment due to some cases from the F.C.
remainder of specification
specification includes all the stuff that preceds the claims including the description of the problem, the invention, the preferred embodiements.
2 main parts of a patent
specifications and claims
Requirements of a patent
subject matter, utility, novelty, nonobviousness, disclosure
how should the court or jury go about construing the claims? (claim construction (3)
textualist approach or purposivism approach
discovery by "reverse engineering" (TS)
that is, by starting with a no-win product and working backward to find the method by which it was developed. The acquisition of the known product must, of course, also be by fair and honest means, such as purchase of the item on the open market for reverse engineering to be lawful
Inseparable contributions means(Joint Authorship)
that the coauthors have each mixed their contributions together to such a degree that is impossible to pull them back out again Ex: coauthors of a novel
Interdependent contributions means(joint authorship)
that you could separate out each coauthors material, but they were meant to go together Ex: song writing (separating lyrics from the actual music, but they are intended to be performed together) Courts state that contributions must be independently copyrightable
claim construction
the DC will hold a hearing at which the parties present evidence and make arguments about what the claims means. In claim construction hearing the patentee typically tries to argue for a broad construction to cover the defendant's activities and the alleged infringer typically argues for a narrow construction, so that their activities fall outside the scope of the claims. (but if the claims are constructed too broadly, they might be invalid because they cover something that is not novel or not enabled or not patentable subject matter (Defendant likely will argue for Broad construction to invalidate the claim)
Test for how to tell if someone is being willfully blind (SC)
the SC said the defendants has to subjectively beleive that there is a high probability of infringement, not just it's a a "known risk" and the defendant has to take deliberate actions to avoid learning that fact, not just be indifferent to it
Texas Digital v. Telegnix
the Texas court held that judges in construing claims should use ordinary dictionary definitions unless the specification clearly sets forth an explicit definition or clearly disavows an ordinary language definition
Claim Construction (consider when a valid patent is infringed)
the claim language is the heart of the patent. if the defendant's products or activites are within the scope of the claim, patent lawyers will say the claim reads on that product or activity. but if what the defendant is doing is not covered by the claim language, then theyre not ifnring and will not be held liable. in a claim construction hearing, the patentee typically tries to argue for a broad construction to ocver the defendants activites and the allegend infringers typically argues for a narrow construction so that their activites fall outside the scope o the claims.
AIA section 102 (A) A person shall be entitled to a patent unless: (2)
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 claimed invention
Step 2 of the Mayo test ( if so does the claim contain an inventive concept sufficient to transform the nature of the claim into a patent-eligible application of the ineligible subject matter?)
the court ask whether there's some inventive concept in the rest of the claim language that goes beyond that
3m. v johnson and johnson orthopedics
the court considered what the purpose of this invention was making a better cast, therefore, when the claism used the term lubricant it meant using it in a different way than it had.
Larami holding
the court found that specifically Larami's product did not have a chamber inside the water gun for holding water, but a detachable part. Since the super soaker lacks a chamber therein, that means that it doesn't include the first element here, which means that it was not literally infringing on the Esposito patent
Astra Zeneca Ab v. Mutual
the federal circuit has held that a disavowal must be clear and unambiguous in order to limit the claim
Indirect Infringement
the idea behind indirect infringement liability is that in certain cirumstances a d can be held liable for somebody else's infringing acts. this a concept taht comes straight out of standard law
Contributory infringement
the idea here is that someone selling a componet part (an infringing machine itself) is itself infrining even though the part doesnt contain all of the elements of the entire invention (if that part is basically good for little else other than being used for infringement and the seller knew that
exhaustion
the idea is that the salee of a pateneded good or good made with the patened method exhaust some of the patentees exclusive rights (make uses offers to sell, or sell, or imports). SC has emphazied the importance of this defense that it can't be contracted around.
35 U.S.C 102- 1952 Act A person shall be entitled to a patent unless (novelty)
the invention was known or used by others in this country, or patent or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent
35 U.S.C 102- 1952 Act A person shall be entitled to a patent unless (statutory bars)
the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States
Lexicographer rule
the patentee can define a term anyway they want and sometimes a patent application will explicity define a word in the specification. a court may cite the lexicographer rule, but they're really looking at the contextual meanign the specification and not an outright definition.
How to acquire and ex parte seizure?
the plaintiff has to show reason to believe that injunction would not work because the defendant is likely to destroy or sell the goods or evidence in violation of the injunction If the court is convinced, it can order an ex parte seizure
prosecution history
the prosection history is the record of everything done and said when the patent application was being considered by the patent officer prior to granting it
35 U.S.C § 171 (B)
the provisions of this title relating to patent for invention (novelty, nonobviousness, and disclosure) shall apply to patents for design except as otherwise provided (design patents don't have to be useful like utility patents
Disclosure Requirements 35 U.S.C Sec 112 (best mode (only for the 1952 act)
the specification has to identify a particular preferred way of building or practicing the invention - patent act states that the there is absolutely no penalty for failing to identify a best mode
Disclosure Requirements 35 U.S.C Sec 112 (enablement)
the specification has to inform the PHOSITA how to actually pracitce the invention, how to make or use it. it does not hve to be detailed explanation as long as the phosita can figure out the missing pieces, but there has be enough information there such that others knowledge in the art can practice all of the claims in the patent
17 U.S.C section 103:
the subject matter of copyrights as specified by section 102 includes compilations and derivative works
Doctrine of equivalents
this is a form of nonliteral infringment and the defendant's activities aren't literally within the scope of the claim language, but they're close enough.
Trade Secrets Law
type of information meant to protect and not generally known or readily ascertainable
Under the UTSA section (2)(a) Actual or threatened may be enjoined
upon application to the court, an injunction shall be terminated when the trade secret has ceased to exist But the injunction may be continued for an additional reasonable period of time in order to eliminate commercial advantage that otherwise would be derived from the misappropriation
1952 Patent Act -35 U.S.C section 102
use this act if an application was filed BEFORE March 16, 2013. this act is a first to invent system( meaning that the person who prove that they made their invention first is awarded the patent even if they were the second to file for it)
Amaerica Invent Act (AIA)- 35 U.S.C section 102
use this act if an application was filed on or after March 16, 2013.
The federal copyright act
was passed in 1976 and is codified at at title 17 of the U.S. code.
Phillips v. AWH
we have made clear, moreover that the ordinary and customary meaning of a claim term is the meaning that the term would have to the PHOSITA in question at the time of the invention" (as the effective filing date of the patent application) "Importantly, the PHOSITA is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification
ornamental new test
whether the design as a whole is primarily functional (meaning that if some aspects of the design are function, it can still get a design patent). defining a primarily functional design as meaning one where the design is dictated by functional considerations. dictated by functional considerations mean no alternative designs would achieve the same function. as a result of the new test design patents can nonw protect any desing of an article includding functional design as long as there are different ways of doing it
Inducement (section 271 (b)
whoever activley induces infringment of a patent shall be liable as in infringer. (to induce means to persuade or influence someone to do soemthing
Contributorty Infringement (Sec 271 (c))
whoever offers to sell or sells . . . or imports . . . 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
Type 1 work-for-hire elements
work created by the employee (CCNV Factors); acting with scopre of employment; excpetion signed writing agreeing it is not a work for hire
Compilations
works formed by selecting, coordinating, and arranging preexisting materials in a particular way including factual materials
choreographic
works of dance or performance art
Derivative works
works that are created out of preexisting works (ex. translation musical arrangement, dramatization, motion picture, picture version or any other form in which a work may be recast transformed or adapted
Disclosure (patents)
written description: detailed account of invention; enablement: specification that enables PHOSITA to make and use invention; claims definiteness
Compositions Matter
you can get a patent on composition of matter but only if humans created the composition in some way. You can't patent a substance that merely discovered in nature, even if it took a lot of work to find it because a naturally occurring substance is a natural phenomenon
words of claims
you can get the meaning of a disputed term in the claims by lookat the rest of the claim language. some clues can be dervied from context and courts can look to dependent claims (claims that refer to a prior claim for soem of its language.
Not patentable from Diamond v. Chakraborty
§ 101: "anything under the sun that is made by man ," but not: (1) laws of nature, such as the relationship between energy, matter and the speed of light = MC squared (e=mc"2) (2) natural phenomena such as the way various chemicals interact in nature (NH3 + HCl -> NH4Cl) (3) Abstract ideas such as prime numbers (349 is prime)
