Patent Law term

Lowell v. Lewis (Beneficial Utility)

"An invention should not be frivolous or injurious to the well-being, good policy or sound morals of society." Does this standard survive in U.S. patent law today? No. Does U.S. patent law impose any requirement that an invention be "better" than what already exists? Is there any standard for the morality of an invention? No. Lowell v. Lewis Facts: Holding, Story: The market should be the primary mechanism for determining the degree of utility "[W]hether it be more or less useful is a circumstance very material to the interests of the patentee, but of no importance to the public. If it be not extensively useful, it will silently sink into contempt and disregard." Dicta: "All that the law requires is that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. The word 'useful,' therefore, is incorporated into the act in contradistinction to mischievous or immoral." Discussion: - This case led to series of cases where courts adjudicated morality of inventions. - Basically, an invention need not be profitable or have economic improvement over prior art - but it must comply with society's morality standards - Juicy Whip and Brenner go against Justice Brenner's view.

AIA no tax strategy

"For purposes of evaluating an invention under section 102 or 103 of title 35, United States Code, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art."

35 USC 271

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

O'Reilly v. Morse (the telegraph patent)

"If this claim (Claim 8) can be maintained, it matters not by what process or machinery the result is accomplished. For aught that we now know, some future inventor, in the onward march of science, may discover a mode of writing or printing at a distance by means of the electric or galvanic current, without using any part of the process or combination set forth in the plaintiff's specification. His invention may be less complicated - less liable to get out of order - less expensive in construction, and in its operation. But yet, if it is covered by this patent, the inventor could not use it, nor the public have the benefit of it, without the permission of this patentee." O'Reilly v. Morse (1854) Facts: Patent for Morse code machine - included 2 big limitations 1) use of electric current (not electromagnetic waves - wireless), 2) to mark or print characters/signs (not to make sound) Downloaded From OutlineDepot.com 7 Holding, Taney: Invalid! Patent claims are declared void for being broader than the invention disclosed in the patent specification. - not for being broad in the abstract. Morse's claim is too broad because he doesn't teach ALL possible ways to use electric current to mark or print characters. Discussion: - Policy: allowing overly broad claims shuts the door to future innovation - Today, 35 U.S.C. § 112 ¶ 6, the "means" elements will be limited to the means disclosed in the specification and equivalents thereof. This statutory limitation on the broad language eliminates the "enablement" objection to the claim. o Means language: you can use this language in your claim but it shall be interpreted only to cover the things disclosed in the specification. o Means language is more narrow than literal language, per the statute. Means language narrows claim that insulates you from attack that you're claiming more than you disclose. Cost of means language is that you cannot assert against as many technologies. - Morse's express language is an attempt to go beyond what he actually invented. - Merely knowing electricity can be used to transmit characters is not Morse's invention - the world already knew about this but hadn't come up with a practical device to do it. Merely knowing the principal of science doesn't get to Morse's practical result. - Abstract idea case

Pre-Graham v. John Deere

1952: Patent Act adds the statutory requirement of nonobviousness, in the new Section 103. 1966: Supreme Court commentary: "We believe that this legislative history, as well as other sources, show that the revision was not intended by Congress to change the general level of patentable invention."

35 USC 101 Utility

35 U.S.C. § 101 Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

Patentable Subject Matter 35 USC 101

35 U.S.C. § 101 Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Types: • Products - machine - manufacture - composition of matter • Process: - method or series of step

Disclosure: Written Description Doctrine

A disclosure doctrine that ensures that the description of the invention is commensurate with (matches) the claims. The doctrine is a barrier to the addition of later claims during patent prosecution that are not supported by the original specification ("no new matter"). The doctrine can also be used to cabin claim scope if the description is deemed to define an invention narrowly.

IP

A general phrase for the fields of patent, copyright, trademark, trade secrets. Property rights for intellectual creations: inventions, artistic concepts. Today, it is a significant area of legal practice and a source of significant business assets. • In traditional property law theory, there is acquisition by creation. First possession supports ownership. • Property is created, and the inventive or creative acts create an ownership interest. • Ownership reflects investment of time, labor, effort and money.

Nonobviousness 35 USC 103

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Octane Fitness v. Icon Health and Fitness

A provision of the federal patent law (35 U.S.C. § 285) allows district judges to award attorney's fees in cases that are "exceptional." The appeals court that hears patent cases (Federal Circuit) adopted a rule under which, as a practical matter, made it is almost impossible to obtain fees, even in truly outrageous cases. The Supreme Court unanimously disagreed, explaining that district courts should use their "discretion" to decide whether fees are appropriate, and obligating the appeals court to respect the discretion of the district courts. Plaintiff's request is governed by preponderance of evidence ICON Health & Fitness, Inc. (ICON) (plaintiff) and Octane Fitness, LLC (Octane) (defendant) were both manufacturers of exercise equipment. ICON brought suit against Octane, alleging that Octane manufactured exercise machines that violated ICON's patents. The trial court granted Octane's motion for summary judgment, concluding that Octane's machines did not infringe ICON's patent. Octane then moved for attorney's fees under § 285 of the Patent Act. The trial court denied Octane's motion. The court determined that Octane could show neither that ICON's claim was objectively baseless, nor that ICON had brought it in subjective bad faith. The court also found no subjective bad faith on ICON's part. ICON appealed the judgment of noninfringement, and Octane cross-appealed the denial of attorney's fees. The Federal Circuit affirmed both orders. In upholding the denial of attorney's fees, the Federal Circuit rejected Octane's argument that the trial court had applied an overly restrictive standard in refusing to find the case exceptional under § 285. The Federal Circuit declined to revisit the standard for exceptionality. The Supreme Court granted certiorari. Issue Does Section 285 of the Patent Act require a rigid framework for determining whether a court may award attorney's fees in patent litigation? Holding and Reasoning (Sotomayor, J.) No. Section 285 of the Patent Act does not require a rigid framework for determining whether a court may award attorney's fees in patent litigation. Section 285 states that in exceptional cases, a court may award reasonable attorney's fees to the prevailing party. The Patent Act does not define exceptional. In Brooks Furniture Mfg., Inc. v. Dutailier Int'l, Inc., 393 F. 3d 1378 (2005), the Federal Circuit held that a case may be deemed exceptional under § 285 only in two limited circumstances: (1) if there has been some material inappropriate conduct, or (2) if the litigation is both brought in subjective bad faith and objectively baseless. The Federal Circuit later stated that litigation is objectively baseless only if it is so unreasonable that no reasonable litigant could believe it would succeed. The court also held that litigation is brought in subjective bad faith only if the plaintiff actually knows that it is objectively baseless. Brooks Furniture also held that because there is a presumption that the assertion of infringement of a patent is made in good faith, the underlying improper conduct and the characterization of the case as exceptional must be established by clear and convincing evidence. Here, this court finds that the Federal Circuit's test is overly rigid. Under the Brooks Furniture standard, a case is exceptional only if a district court either finds a high level of litigation-related misconduct, or determines that the litigation was both brought in subjective bad faith and objectively baseless. This standard creates an inflexible framework out of a statutory text that is inherently flexible. Brooks Furniture is so demanding that it would render § 285 largely unnecessary. Additionally, this court rejects the Federal Circuit's requirement that patent litigants establish their entitlement to fees under §285 by clear and convincing evidence. We have not interpreted comparable fee-shifting statutes to require proof of entitlement to fees by clear and convincing evidence. Nothing in § 285 justifies such a high standard of proof. Section 285 imposes no specific evidentiary burden. Patent-infringement litigation has always been governed by a preponderance-of-the-evidence standard. Thus, the judgment of the Federal Circuit is reversed, and the case is remanded

Limitations on the DoE

All Elements Rule - accused product or process must have an equivalent for every element. Prosecution History Estoppel - if the claim was narrowed during prosecution for reasons related to patentability, it may not be broadened in litigation using the doctrine of equivalents. The theory is that the subject matter was given up during prosecution, and may not be recaptured (Festo).

KSR v. Teleflex

An invention combining an automotive gas pedal with an electronic sensor. Both elements are known in the prior art. The case challenged the mandatory application of the "teaching, suggestion or motivation" (TSM) test created by the Federal Circuit to determine obviousness. At issue was whether the Federal Circuit could design a subtest not supported by the statutory language. • Prior to KSR, there was criticism that the Federal Circuit had made the nonobviousness test too hard to apply, by requiring the presence of a "teaching, suggestion or motivation" (TSM) in the prior art in order to find obviousness, in addition to satisfying the Graham test. The rationale for the TSM test: it is thought to guard against hindsight bias Facts: Simple technology. Prior art pedal (an adjustable pedal with a "fixed pivot") is updated to include an electronic sensor. Patent was on this improvement. Idea of adjustable pedal was very old in the art. Prior art used mechanical cable to open a gas valve. Car companies started using computers in the cars - they told pedal manufacturers (KSR and Teleflex) they wanted electronic pedals. Manufacturers mated to pieces of prior art to make an electronic pedal - it was easy to do... Holding: Combination was obvious! Technological developments made it clear that electronic throttle control would soon become the standard. Need to determine if a POSA would make this combination - no need to connect all the dots. Guiding principles for the obviousness inquiry are: - test should be flexible - predictable results are generally unpatentable - POSA is creative and generally has the ability to combine insights from other fields - Combination inventions should be scrutinized with special care - Inferences are permissible - Obviousness is analyzed based on the claims, not the preferred embodiments found in the patent - Obvious to try might be useful in deciding obviousness - Weak patents can stifle rather than promote progress Here, the court basically says a POSA can make this type of creative leap. Discussion: - Combinations are not suspect unless o 1) the functions of the parts are not new AND o 2) the combination produces predictable results o Discussion: Example of chair, ironing board, ladder combination It may be non-obvious to combine something that people had thought it was undesirable to combine Timing: the 3 things have been around for many years and nobody had thought of combining them! This might make the combination non obvious - Judge or Jury o Many patent validity issues go to a jury. KSR calls this entire practice into questions - KSR indicates that validity analysis must be made explicit (incompatible with jury verdicts - only get a "yes" or "no" answer). Jury never engages in explicit legal analysis that explains how they got to their decision Juries are typically pro-patentee - Validity - by statute, once patent issues it is presumed valid (presumption is weakened if PTO has not seen relevant prior art). o Must present clear and convincing evidence to challenge validity - Timing issue o example: one-click ordering patented in 1995 internet commerce is streamlined using one click ordering but there was no internet commerce prior to 1995! Timing would not suggest this is non-obvious - TSM test is no longer the exclusive test! - huge change!

Anticipation = Lack of Novelty

An invention is anticipated when a single prior art reference contains all of the elements of a claimed invention. The reference must disclose the identical invention • Is the invention new? How to determine: • The invention is compared to "prior art" with an effective date before the filing date. • Compare the claimed invention to the prior art to determine whether a prior art reference describes all of the elements of the claimed invention (all-elements rule). • If a single prior art reference describes the proposed invention, then the invention is said to be "anticipated" by the reference = not novel. "That which would literally infringe if later in time anticipates if earlier." There is a symmetry between anticipation and infringement. • Prior art patented machine has elements A + B + C. • Inventor's machine has elements A + B + C. - The invention is anticipated: no patent. • Prior art patented method has elements (steps) A + B + C. • Inventor's method has elements (steps) A + B + C. - The invention is anticipated: no patent

Enablement and the Scope of a Patent

An inventor should only be granted patent rights commensurate with the actual disclosure - not broader. The essential patent bargain requires enough disclosure from an inventor to justify the grant of patent rights.

In re robertson

Anticipation requires that all of Robertson's invention must appear in the Wilson patent "The Wilson patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires." Court finds an element of Claim 76 missing in Wilson's patent. Therefore, there is no anticipation of the Robertson invention. Facts: Diaper patents. Idea is that the diaper wraps up into itself, seals, and can be easily disposed. Diapers are heavily patented area therefore this claim is complex. Wilson diaper is the prior art. Comparison is between the Robertson claim language and ALL of Wilson's disclosed embodiments (different language might describe the same thing - just comparing language may not be thorough enough). Question is whether the Wilson diaper would fall within Robertson's claim. Holding: Wilson diaper does not anticipate the Robertson diaper. Court interprets Robertson claim language - when it says 3rd mechanical fastening means, the claim means that it is separate from and independent of the other two mechanical means. Dissenting, Rader: argues issue of claim interpretation - whether 3rd fastening element must be distinct. Front pieces have dual function - these pieces are then both the 1st and 3rd closure means in the same structure. Discussion: - Debate is whether there is a 3rd fastening element in the Wilson diaper (prior art) - Map functions of Robertson claim onto the prior art Wilson diaper. - Duffy: infringement and anticipation analysis are identical - We care about prior art physical product and/or pictures - we look at the prior art for EVERYTHING that it teaches. - Majority and Rader agree what Wilson taught - they are fighting about what the Robertson claim language means - whether the 3rd means must be separate or if the 1st and 3rd can be in the same structure.

Diamond v. Chakrabarty

Applicant claimed a genetically engineered bacterium. • Chakrabarty claimed three different inventions in the patent. He wrote claims to the process of making the genetically engineered bacterium, an inoculum of the bacterium and a carrier, and the genetically engineered bacterium itself • The Court concluded that the modified bacterium was patentable because the patent claim was not to a "hitherto unknown natural phenomenon," but instead had "markedly different characteristics from any found in nature." Diamond v. Chakrabarty (1980) Facts: PTO allowed the process claims but did not allow a product claim for the living microorganism. This is NOT genetic engineering - it is combining plasmids with bacteria. Holding: Chakrabarty's new bacterium is patentable because it is a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility. His discovery is not nature's handiwork but his own - and therefore patentable subject matter under § 101. - Fact that something is alive does not make it per se unpatentable. - Decision reaffirms limitations on patentable subject matter - that "laws of nature, physical phenomena, and abstract ideas" are not patentable. - Standards work better than rules - rules lead to absurd results (ie mixing living matter with dead matter made something patentable) - Explaining Plant Patent Statute - passed because you can't teach how to "make" a plant; can only teach how to grow a plant. That's what makes plants special and require a special statute to allow patenting

Rite-Hite v. Kelley

Can a patent owner recover for all foreseeable losses caused by the patent infringement, such as lost sales of a product not covered by the patent but affected by the defendant's patent infringement? Yes Rite-Hite (plaintiff) sued Kelley (defendant) for infringing the '847 patent, which claimed a restraint safety device for truck loading docks. The district court found the patent valid and infringed by Kelley, who appealed to the Federal Circuit. The Federal Circuit affirmed the finding of validity and infringement, and remanded solely on the issue of damages Rite-Hite, on remand, sought lost profits based on two models of devices it sold; however, only one of those two models was covered by the '847 patent. The district court awarded damages based on lost profits as to both restraint devices. The district court also awarded lost profits for sales of competing unpatented but complementary leveling products, which are platforms sold with and operate in conjunction with the safety device by bridging the gap between the back of the truck and the dock. Kelley appealed the damages determination to the Federal Circuit. Issue Where infringement of a patented device also results in lost profits of an unpatented device, may the patent holder be compensated for those lost profits as part of a patent damages award? Holding and Reasoning (Lourie, C.J.) Yes. Under 35 U.S.C. §284, a court may award lost profits as damages to the patent holder, and the award should not be less than a reasonably royalty. The Supreme Court case General Motors (1983), commenting on this statute, encouraged fully and adequately compensating the plaintiff and cautioned against limiting damages. In Aro Mfg., 377 U.S. 476 (1964), the Supreme Court held that lost profits are those that the plaintiff would have obtained but for the infringement. The Sixth Circuit, in Panduit, 575 F.2d 1152 (1978), enumerated a test for proving lost profits, where a plaintiff must show demand for the patented product, a lack of competing products, the ability of the plaintiff to meet the extra demand of the consumers, and the amount of profit it would have realized but for the infringement. The district court, relying on Panduit, held that Rite-Hite had shown lost profits as to the restraints, and the Federal Circuit agreed. Further, Kelley should have reasonably anticipated that infringing one patented restraint would also cause damage to Rite-Hite in the form of lost profits to the unpatented restraint. Under the spirit of 35 U.S.C. §284 and Supreme Court precedent, lost profits to both restraint devices is proper in order to make Rite-Hite whole. Where infringement has been shown, 35 U.S.C. §284 demands only that the plaintiff be made whole. Thus the award of lost profits on the restraints was affirmed. As to the award on the unpatented, complementary levelers that were often purchased with the restraints, the Court of Appeals looked to the "entire market value rule," which states that a patent holder may not collect damages on unpatented components sold with patented products. In Paper Converting Machine (1854), the Federal Circuit held that the plaintiff must show that the sales of the complementary unpatented product must be objectively tied to the patented product. If the plaintiff cannot show objectively that the loss of sales of the patented product would have also resulted in a loss of the unpatented product, then lost profits to the unpatented article are not permitted. Here, Rite-Hite had failed to show its levelers were linked to the restraints. Kelley had been in the leveler market for some time, and the levelers and restraints were not always used in conjunction with one another. Thus, having affirmed the award for the restraints, the award of lost profits to the levelers is reversed.

Schering v. Geneva

Can a pharmaceutical company patent a drug and then patent the metabolites of the drug when the initial patent expires? • No, the metabolite is anticipated by the original patent on the drug. • The case illustrates a patent dispute between a brandname pharmaceutical manufacturer and a generic competitor, and how brand name patent holders attempt to extend patent protection for lucrative products when the original patent expires (evergreening). • Schering '233 Patent issues August, 1981 for the drug loratadine It will expire in 1998. • Schering '716 Patent issues April, 1987 for the metabolite DCL (produced by loratadine). It will expire in 2004. • A possible six extra years of marketing to Schering. • Does the '233 patent anticipate the '716 patent because DCL is automatically produced when an individual takes loratadine? Federal Circuit: yes. Facts: Schering had expired patent on Loratadine and currently holds patent on a metabolite of loratadine, DCL. DCL is a compound produced in the body after ingestion of Loratadine. Loratadine patent did not expressly disclose DCL and does not refer to a metabolite of Loratadine. DCL necessarily and inevitably forms from loratadine under normal conditions. Holding: Patent is invalid - loratadine patent anticipates DCL. Prior art may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present or inherent in the single anticipating reference. Inherent anticipation DOES NOT require a person of ordinary skill in the art at the time to recognize the inherent characteristic in the prior art that anticipates the claimed invention. Because a person may infringe a claim to a metabolite if the person ingests a compound that metabolizes to the metabolite, and the claimed invention is the metabolite of the prior art it is anticipated. Discussion: - Inherency: limitation or entire invention is inherent and in the public domain if it is the natural result flowing from the explicit disclosure of the prior art. - Anticipation does not require the actual creation or reduction to practice of prior art - it only requires an enabling disclosure. Reconciling Seaborg and Schering - Two cases are distinguished by their facts. In Seaborg, the invention was not detectable AND unknown. In Schering, it was both detectable AND known - If Schering came up with a patent for another metabolite that is undetectable but produced from ingesting loratadine, court can either: o Invalidate patent, or o Allow the patent but say you can't assert it against situations when extremely small amounts are produced o ***Law has always picked one of these solutions - so you can never enforce against prior art*** Anticipation Analysis - Two possible views: o 1) Anticipation requires that the prior art have appreciated that it was creating the invention. o 2) Anticipation does not require appreciation. If the claims would cover (and therefore enjoin) an activity that was in the prior art, then the claim cannot be allowed because the claim would detract from the public domain and patents can't do that. Downloaded From OutlineDepot.com 25 - Though opinions contain much language to support theory 1, recent cases make clear that theory 2 is more sound. - To understand why theory 2 is sound, ask this question: Should Seaborg be able to use his claim to "Element 95" to enjoin Fermi-style nuclear reactors? These reactors "make" element 95. Yet if Seaborg gets the right to enjoin the reactors, then the patent system has allowed an inventor to gain rights over something in the prior art - an impossibility!

Egbert v. Lippman

Can an authorized, non-secret use of an invention constitute prior art? Egbert v. Lippman (Public Use) Facts: - January-May 1855: Samuel Barnes gives his friend Frances Lee a pair of corset-steels constructed with corset-springs that he has invented. For years, Egbert wears both this pair and a second pair received from Barnes in 1858. - 1863: Barnes shows his invention to one Sturgis. - 1866: Barnes applies for a patent on his improved corset-springs. Barnes receives a patent based on this application. - 1873: The patent is re-issued to Frances Lee Barnes [later Egbert]. Downloaded From OutlineDepot.com 34 Holding: This is a public use because Lee is a member of the public. Need only have one person in public use the invention to constitute public use. - there are many inventions that aren't in public view (wristwatch mechanisms) - Lee was given the corset steels without any restriction on use Discussion: - illustrates meaning of "public use" - it can be secret or confidential - Easy case as long as you view Lee as a member of the public, and she had no obligation of secrecy - If there had been a marriage, there might be an implied secrecy or some greater sense of implied confidentiality in the giving of the gift - This has nothing to do with experimental use exception - If you give it to one person in the public then it's a public use!

Experimental Use

Can an inventor overcome a public use rejection of a claimed invention by demonstrating that her invention is in public use for the purpose of investigation and testing Indication of Experimental use • 1) the number of prototypes and duration of testing, • 2) whether records or progress reports were made concerning the testing, • 3) the existence of a secrecy agreement between the patentee and the party performing the testing, • 4) whether the patentee received compensation for the use of the invention, and • 5) the extent of control the inventor maintained over the testing.

Janssen v. Teva

Claim 1: A method of treating Alzheimer's disease and related dementias which comprises administering to a patient suffering from such a disease a therapeutically effective amount of galanthamine or a pharmaceutically-acceptable acid addition salt thereof.

Markman v. West view Instruments

Claim construction is central to the resolution of the patent litigation. • What does "inventory" mean in Claim 1 of the patent? • After the patent claim is interpreted, is there infringement by Westview? • Landmark Supreme Court case established that claim construction is a matter of law. • Claim construction will only be done by a judge. Patent infringement decisions remain with the jury. • Often conducted in a Markman hearing.: A special pre-trial hearing is held before the district court judge who will then construe (construct) the claims after hearing arguments from both sides. • Claim construction is a matter of law, decided by the judge. - Priniciple is that claims are issue of law for judges, not juries - Judges interpret claims - it's not devoid of factual analysis but it must all be done by a judge Discussion: - The Court does not decide the level of deference owned by an appellate court in reviewing a claim interpretation by (i) a trial court, or (ii) by the PTO. The CAFC (in Cybor Corp. v. FAS Technologies, Inc.) has held that the appellate court reviews de novo, but that holding is controversial. - This case also provides a good example of the problems of claim construction

Lamari v. Amron

Claim: [a] toy comprising an elongated housing [case] having a chamber therein for a liquid [tank], a pump including a piston having an exposed rod [piston rod] and extending rearwardly of said toy facilitating manual operation for building up an appreciable amount of pressure in said chamber for ejecting a stream of liquid therefrom an appreciable distance substantially forwardly of said toy, and means for controlling the ejection. • Literal Infringement: If any element of the patent claim is missing, there cannot be literal infringement. The accused product lacked an element of the patent invention.

Brenner v. Manson

Debate over the patenting of early-stage research results: • Can a method for making a chemical compound of unknown function be patented? Does the inventor know what the utility of the compound is? • The Court decided that the invention lacked utility because the claimed method produced a compound whose usefulness was not known. • "Whatever weight is attached to the value of encouraging disclosure and of inhibiting secrecy, we believe a more compelling consideration is that a process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute." • "Such a patent may confer power to block off whole areas of scientific development, without compensating benefit to the public." • "But a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion." Facts: - November 1956: Ringold publishes articles that the steroid at issue was being tested for tumor inhibiting use - a compound closely related to the steroid was effective in inhibiting tumors. - December 1956: Ringold files for process patent for making known steroid - October 1959: Ringold receives process patent - January 1960: Manson files for patent - claims he invented in 1956 and forgot to file patent application Holding: Downloaded From OutlineDepot.com 14 - Narrow reading: "Even on the assumption that the process would be patentable were respondent to show that the steroid produced had a tumor-inhibiting effect in mice, we would not overrule the Patent Office finding that respondent has not made such a showing." (deference to agency) Manson failed to show "sufficient likelihood" that the steroid would have similar tumor-inhibiting effects. o Manson must prove that the steroid itself is useful. Manson must know the use for the steroid. The process is not in and of itself useful just because it creates the steroid. Manson has to prove use for process (that it produces a chemical) AND use for the chemical (the specific use for the chemical). Here, Manson had no idea what the chemical was for - he proved no chemical utility! - Broader reading: The patent must show a "substantial utility" --- i.e., that a "specific benefit exists in currently available form." Discussion: - This is essentially the only SCOTUS decision on the utility requirement - Chemical will not be viewed as having a utility merely because it is the subject of scientific inquiry. Real economic value is in future use, not initial curiosity. - Key thing in utility doctrine is timing! - Narrow reading: Court reserves the question as to whether it would have been enough to show tumor-inhibiting effect in mice. - Broad reading: Substantial utility - substantiality has to be judged based on current available use versus possible future uses, temporal concern by SCOTUS. When ratio of current use is negligible compared to possible future uses, it would not be a substantial use. [but you can get patent for new use for old process - problem is that now you have 2 patents for 1 use inefficient!] o PTO issues many patents of low monetary value o Some patents may not be beneficial economically, but silly inventions (electric hat tipper) won't occupy future scientific research.... o Current use must be related to the invention (don't grant patent for developing DNA into a dumbbell weight - inventor is probably getting patent to secure possible future uses!) - Utility requirement is not heavily enforced. Only enforced in most extreme cases - like when the use is just a guess (and even then the utility requirement is controversial).

Graham Test for Nonobviousness

Determine: • Scope and content of prior art • Compare differences between prior art and the claims • Determine the level of ordinary skill in the art • Determine whether claims would be obvious to the person of skill in the art. The Graham Court cited "secondary considerations" surrounding the invention which could also serve as objective indicia of nonobviousness. They are: • Commercial success • Long-felt but unsolved needs • Failure of others • "Teaching away:" did the convention wisdom argue against what the inventor did? "Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy." In view of the prior art and the knowledge level of the person of ordinary skill in the art, was it obvious to move the hinge plate from its position below the shank of the plow to a position above the shank in order to make a more effective plow? Yes.

Winans v. Denmead

Does a coal car design that deviates in form from the patent claim constitute an infringement under the "doctrine of equivalents? Dissent: The patentee is obliged, by law, to describe his invention, in such full, clear, and exact terms, that from the description, the invention may be constructed and used. Its principle and modes of operation must be explained; and the invention shall particularly "specify and point" out what he claims as his invention. Fulness, clearness, exactness, preciseness, and particularity, in the description of the invention, its principle, and of the matter claimed to be invented, will alone fulfil the demands of Congress or the wants of the country. Nothing, in the administration of this law, will be more mischievous, more productive of oppressive and costly litigation, of exorbitant and unjust pretensions and vexatious demands, more injurious to labor, than a relaxation of these wise and salutary requisitions of the act of Congress Facts: Patent claims object that is in the form of a frustum of a cone. The problem is that the defendant's product is not in the form of a perfect cone (which has a circular cross-section). Instead it is in the form of a multi-sided shape. Holding: Court allows a variation from the language of the claim, holding that the defendant's device would infringe if it is "so near to a true circle as substantially to embody the patentee's mode of operation, and thereby attain the same kind of result as was reached by his invention." Patentees sometimes add to their claims an express declaration, to the effect that the claim extends to the thing patented, however its form or proportions may be varied. But this is unnecessary. The law so interprets the claim without the addition of these words.

In re Seaborg

Does the transient production of the element americium in a prior art process become an anticipation of the later claimed invention of the same element by Seaborg? No, the miniscule amount produced in the prior art did not create a disclosure that barred a patent for Seaborg. • "[t]he claimed product, if it was produced in the Fermi process, was produced in such minuscule amounts and under such conditions that its presence was undetectable.'' • "The possibility that although a minute amount of americium may have been produced in the Fermi reactor, it was not identified (nor could it have been identified) would preclude the application of the Fermi patent as a reference to anticipate the present invention.'' Facts: Seaborg claimed element 95. Prior art was that element 95 had been produced in Fermi's nuclear reactor but it was produced in such small quantities that it was undetectable (it was diluted in tons of nuclear waste) and Fermi didn't know it had been produced. Holding: Patent is valid - alleged prior art doesn't anticipate. The possibility that although a minute amount of the element may have been produced in the Fermi reactor, it was not identified (nor could it have been identified) and so precludes the Fermi patent as a reference to anticipate Seaborg's claim. Discussion: - Inherency Doctrine (by Learned Hand in Dewey &Almy Chemical v. Mimex (2nd Cir 1942): o No doctrine of the patent law is better established than that a prior patent or other publication to be an anticipation must bear within its four corners adequate directions for the practice of the patent invalidated. o If earlier disclosure offers no more than a starting point for further experiments, if its teaching will sometimes succeed and sometimes fail, if it does not inform the art without more how to practice the new invention, it has not correspondingly enriched the store of common knowledge, and it is not an anticipation. - Seaborg would not be able to enjoin the nuclear reactors - if you argue this patent isn't anticipated by nuclear reactors then you can't enforce it against them!!!

Read v. Portec

Factors: • (1) deliberate copying; • (2) the infringer's investigation into and good faith belief of invalidity or noninfringement of the patent; • (3) the infringer's litigation conduct; • (4) the infringer's size and financial condition; • (5) the closeness of the case; • (6) the duration of the misconduct; • (7) remedial action by the infringer; • (8) the infringer's motivation for harm; and • (9) whether the infringer attempted to conceal its misconduct.

Maximum Infringement Recovery period

How far back can the patent holder recover damages for past infringement? "Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action." The statute limits the maximum recovery of damages only to events occurring up to 6 years before filing of infringement claim

Critical Date Analysis 35 USC 102(b)

If an applicant discloses or sells or puts an invention into public use/sale/publication, she has a 1-year grace period in which to file a patent application on the invention. The critical date is one year before the filing of the patent application. If more than a year passes, the statute blocks the issuance of a patent. • A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if-- • (A) the disclosure was made by the inventor An inventor is given one year after disclosing or using or selling an invention to file a patent application (grace period). The critical date is one year before the filing date of a patent application. Critical Date-----------------------Filing Date

Enitre Market Value Rule

If the patentee can prove that the patentrelated feature covered by the patent is the basis for consumer demand for the overall product, the rule allows that the royalty base used in the reasonable royalty calculation will be the value of the entire product, not just the value of the patented component. It can significantly enhance the damages available to the patentee.

Patent System: Theories

Incentive to invent: patents encourage inventive activity by rewarding innovation in the form of exclusive rights. • Incentive to disclose: patents stimulate disclosure of new knowledge by encouraging public revelation in exchange for exclusive rights. • Incentive to invest: exclusive rights encourage investment in bringing an invention to market.

Willful Infringement

Infringement that is particularly egregious (willful) can result in the award of up to treble damages to a prevailing plaintiff. The jury decides willfulness; the judge determines if enhanced damages will be awarded to the plaintiff. Defendant may minimize exposure to this charge by seeking an opinion of counsel in order to demonstrate an intent to avoid infringement (but failure to do so is not dispositive). Factors: • Whether the infringer intentionally copied the patent proprietor's product; • Whether the infringer acted in accordance with the standards of commerce for its industry; whether the infringer made a good faith effort to avoid infringing; • Whether there is a reasonable basis to believe that the infringers had a reasonable defense to infringement; • Whether defendants tried to conceal their infringement.

Novelty 35 USC 102

Is a claimed invention new? • Is there any single prior art reference that contains all the elements of the claimed invention - if so, the invention is anticipated and is not novel

Panduit v. Stahlin

Is a patent owner able to recover lost profits, or, alternatively, achieve a reasonable royalty determination? What prevents a patent owner from collecting lost profits? Panduit (plaintiff) sued Stahlin (defendant) in 1964 for infringement of the '301 patent, which claimed wiring for ductwork systems. In 1969, the patent was found valid and infringed, and enjoined Stahlin from further infringement, a decision upheld on appeal. Later, Stahlin was held in contempt for manufacturing an imitation of a product it had been enjoined from making, which was also affirmed after an appeal. In 1971, the District Court appointed a special master to determine damages, and later the Court affirmed the master's recommendations, which gave Panduit a 2.5% gross sale price royalty, a determination Panduit appealed. Issue In the absence of proof of lost profits, is a patent holder reasonably compensated for infringement by the same royalty rate that would be negotiated by a willing patent holder? Holding and Reasoning (Markey, C.J.) No. Under 35 U.S.C. §284, a patent holder may seek to recover lost profits, essentially making him whole in the event the infringement had never taken place. This is a four element burden, requiring that he show demand for the product, absence of competitive products, the ability to meet the full demand for the products, and the actual lost profits. Unfortunately for Panduit, it failed to adequately show in the eyes of the master, the district court and now the court of appeals what the actual lost profits would have been. Where lost profits cannot be shown, the patent holder may seek a reasonable royalty, which the master set at 2.5%. A 2.5% royalty would amount to a small fraction of the attorneys' fees incurred in pursuing Stahlin and would be unjust. Using a reasonable royalty rate as a damage calculation might give an incentive to infringers. A potential licensee who cannot obtain a license from the patent holder, may instead choose to simply pay the same license rate later when a court mandates it after a finding of infringement. Instead, a different royalty rate should be used, one distinct from a rate that might negotiated by willing parties in good faith at arms' length. Given the strict control that Panduit exercised over its patent, the aggressive nature of its pursuit of Stahlin, the lack of competitor products, and the many efforts of Stahlin to infringe, the Court felt that a 2.5% royalty was insufficient, and remanded the case for determination of a proper royalty rate.

In re Klopfenstein

Is a temporary display of research results to a professional audience a prior art reference? Is it a printed publication? These factors are relevant: • Duration of display • Expertise of viewing audience • Expectation that copying will occur • Ease of copying by viewers Facts: Patent for method of reducing cholesterol in 2000 - food patent. In 1998, applicants gave slide presentation - it is clear that the presentation anticipated the invention. Presentation was displayed at 2 places (it was printed on a board) and displayed for a couple days. No disclaimers or notices were given to prohibit note-taking or copying the presentation. No copies were disseminated and the presentation was never catalogued or indexed. Holding: This counts as a publication. Even ephemeral publications can be publications. Court considers several factors. 1) duration of the display, 2) expertise of the targeted audience (POSA can more easily remember what it may contain that is new and useful), 3) existence of reasonable expectation the material displayed could have been copied, 4) simplicity/ease the material displayed could have been copied. Discussion: - the more transient the display, the less likely it is to be considered a printed publication - the more complex the display, the more difficult it will be for public to effectively capture its information.

City of Elizabeth v. American Nicholson

Is an inventor allowed to publicly test or experiment with an invention without putting the invention into "public use" under 35 U.S.C. § 102? • What must an inventor do to establish "experimental use" of an invention Facts: - 1847: Caveat filed in the Patent Office in which the pavement is "fully described." o (A caveat was an 19th century procedural device that entitled to the filer to notice if others filed patent applications covering similar subject matter; it was not a patent application.) - June or July,1848: He constructs a portion of pavement. - 1850: English patent issued to Hosking on same or similar type of pavement. - 1854 (six year after the construction of the road): Nicholson files for, and receives, a patent. - At this time, the statutory bar allowed 2 years of public use - i.e., a 2 year "grace" period. Holding: Experiment does not constitute use and does not trigger statutory bar. - Use is not a public use, within the meaning of the statute, so long as the inventor is engaged, in good faith, in testing the invention's operation. - Doesn't matter if public is deriving a benefit from it. - "Use" does not constitute "use" if use is for experimentation. Discussion: - sales will not trigger statutory bar if the sold invention remains experimental and subject to the continued observation of the inventor - Market testing starts the statutory bar clo

What cannot be patented

Judicially created exclusions: Laws of nature (natural and physical sciences) Natural phenomena (natural and physical sciences) Abstract ideas (software, human activity methods) The Supreme Court has excluded certain kinds of subject matter (laws and products of nature, physical phenomena, abstract ideas) because "they are the basic tools of scientific and technological work."

Graver Tank v. Linde Air Products

Linde held a patent for a method of welding that utilized a welding composition containing silicates of calcium and magnesium. The accused infringers substituted a similar element, manganese, for the patentee's magnesium. Function-way-result (Graver Tank): Did the accused product or process perform substantially the same function in substantially the same way to yield substantially the same result? This test now superseded by the later WarnerJenkinson analysis.

Lost Profits

Often preferred by a successful litigant. Refers to profits that the patentee would have made, not to profits made by the infringer Calculation: # of unit sales lost by patentee (base) (x) profit per unit (rate) = Lost profits

Amazon v Barnesandnobel.com

Patent conflict over the Amazon "1-click" patent for online ordering. Can Amazon demonstrate that it is likely to succeed in proving its case of infringement and in withstanding any validity challenges to its patent from Barnesandnoble in order to obtain a preliminary injunction? No; preliminary injunction denied.

Overview of 35 USC

Patentable Subject Matter (101) Utility (101) • PRIOR ART REQUIREMENTS (COMPARED TO OTHER WORK) Novelty (102) Nonobviousness (103) • DISCLOSURE REQUIREMENTS (THE APPLICATION ITSELF) Enablement (112) Written Description (112)

AIA Patent Marking

Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent, or by fixing thereon the word "patent" or the abbreviation "pat." together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.

Lucent v. Gateway

The burden of proving damages falls on the patentee. • In arguing for a reasonable royalty award, Lucent had the burden to prove that the patent licenses that it introduced as evidence were sufficiently comparable to support the lump-sum damages award. • Factor 10 is "[t]he nature of the patented invention; the character of the commercial embodiment of it as owned and produced by the licensor; and the benefits to those who have used the invention." Georgia-Pacific, 318 F. Supp. at 1120. • Factor 13 is "[t]he portion of the realizable profit that should be credited to the invention as distinguished from non-patented elements, the manufacturing process, business risks, or significant features or improvements added by the infringer." Id. These two factors, at least as applied to the facts of this case, both aim to elucidate how the parties would have valued the patented feature during the hypothetical negotiation Value of the patented feature? "The only reasonable conclusion that can be drawn from this evidence is that the infringing use of Outlook's date-picker feature is a minor aspect of a much larger software program and that the portion of the profit that can be credited to the infringing use of the date-picker tool is exceedingly small." The Federal Circuit concluded that the patented invention (date-picker) made a minor contribution to the commercial success of the Microsoft software products. Three engineers developed a method of entering data into fields on a computer screen, like on fillable forms, using non-keyboard tools, like date menus. In 1986, the engineers successfully applied for a patent for their invention, called the Day patent. Microsoft (defendant), through its subsidiary Gateway, Inc. (Gateway) (defendant), sold software that utilized non-keyboard tools. Specifically, Microsoft Money, Microsoft Outlook, and Windows Mobile utilized non-keyboard tools for entering data, like date-pickers. Lucent Technologies, Inc. (plaintiff), the eventual owner of the Day patent, sued Gateway. Lucent alleged that Gateway's software indirectly infringed on the Day patent. Microsoft intervened in the suit. Both parties submitted sample licensing agreements for the jury to use in calculating any damages awards. A jury found that Microsoft had indirectly infringed the Day patent, awarding Lucent approximately $358 million in damages. The jury indicated that its award represented a lump-sum payment of a hypothetical royalty. Among many post-trial motions, Microsoft moved for judgment as a matter of law on both the jury's verdict of indirect infringement and the jury's damages award. The district court denied the motion on both issues, and Microsoft appealed. Issue 1: (1) May a patent be infringed indirectly? Holding and Reasoning (Michel, C.J.) (1) Yes. A patent may be infringed indirectly. Induced infringement and contributory infringement are two types of actionable indirect infringement. Under 35 U.S.C. § 271(b), a party may be liable for patent infringement if the party actively induces infringement. A claim of induced infringement of a patent requires evidence that the inducer encouraged another's infringement. Evidence that an inducer only had knowledge of another's infringement is not enough. Infringement may also take the form of contributory infringement. Contributory infringement exists if a party intentionally facilitates and encourages direct infringement by a third party. Under 35 U.S.C. § 271(c), a party may be liable for infringement if the party sells an apparatus that is especially adapted for use in an infringement of a patent. Here, the jury found Microsoft was an indirect infringer of the Day patent both through its contributory infringement and by inducing infringement. First, for contributory infringement, Microsoft sold software with a date-picker tool that was suitable only for uses that infringed on the Day patent. Thus, the sale of software that was adapted to infringe on the Day patent is sufficient evidence to support the jury's finding of contributory infringement. Second, for induced infringement, Microsoft argues that the jury erred in finding it liable for inducing infringement because software capable of infringing uses does not prove intent to induce infringement. Intent to induce infringement is required for a finding of indirect infringement through inducement. There is sufficient evidence to support the jury's finding that Microsoft intended to induce infringement because Microsoft's software encouraged users to use infringing tools by making forms that were easiest to complete using these tools. Consequently, the district court's denial of Microsoft's motion for judgment as a matter of law is affirmed.

USPTO Guidelines to subject matter

Subject Matter Eligibility: There are two criteria for determining subject matter eligibility and both must be satisfied. The claimed invention (1) must be directed to one of the four statutory categories, and (2) must not be wholly directed to subject matter encompassing a judicially recognized exception, as defined below. • Step 1: Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? • Step 2: Does the claim wholly embrace a judicially recognized exception, which includes abstract ideas, mental processes or substantially all practical uses (pre-emption) of a law of nature or a natural phenomenon, or is it a particular practical application of a judicial exception? • Life Science/Biotechnology (Diamond v. Chakrabarty, AMP v. Myriad) • Software (Diamond v. Diehr, Alice v. CLS) • Business methods (State Street v. Signature; Bilski v. Kappos, Alice v. CLS)

Permanent Injunction

Successful plaintiff must demonstrate: An irreparable injury. Remedies at law ($$) are inadequate to compensate for the injury. Balance of hardships tips in favor of the plaintiff. Public interest would not be disserved.

Attoerney's Fees in litigation 35 USC 285

The court in exceptional cases may award reasonable attorney fees to the prevailing party." • Judge decides whether case is exceptional. • Can be awarded to either party in the following circumstances: Plaintiff - bad faith or sham litigation; inequitable conduct Defendant - egregious (willful) infringement

Reasonable Royalty

The default calculation of damages for a successful litigant. • The theory imagines a hypothetical licensing negotiation at the time of infringement which would have set a royalty for use of the patented invention. • Many factors can be used to "reconstruct" what the patentee and the infringer might have negotiated (see Georgia-Pacific). 35 USC 284 Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.

Independent and Dependent Claims

The independent claim is the broadest, followed by dependent claims that refer back to the independent claim and provide more narrow embodiments of the invention.

Inherency

The interpretation of prior art as containing elements that are impliedly present, even if not expressly stated. Inherency can reveal limitations in the prior art that were not expressly stated, and which can anticipate a later claimed invention.

After Pfaff: What "On-Sale" Means

The invention is the subject of a commercial offer for sale. AND • The invention is ready for patenting: a) it has been reduced to practice (made) OR b) The inventor has prepared detailed drawings of the invention which fully enable the invention.

Grahm v. John Deere

The leading case which established the modern test for evaluating nonobviousness. In this case, the Supreme Court interpreted the addition of the nonobviousness standard in 35 U.S.C. § 103 for the first time • "While the ultimate question of patent validity is one of law, the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances." • "This is not to say, however, that there will not be difficulties in applying the nonobviousness test. What is obvious is not a question upon which there is likely to be uniformity of thought in every given factual context. The difficulties, however, are comparable to those encountered daily by the courts in such frames of reference as negligence and scienter, and should be amenable to a case-by-case development. We believe that strict observance of the requirements laid down here will result in that uniformity and definiteness which Congress called for in the 1952 Act. Facts: Traditional plows broke up ground and led to wind erosion problems. Hoeme plow digs deeply but doesn't chew up the earth like the traditional plow. Improvement of the plow was the '811 spring clamp. New patent was to eliminate wear between hinge pieces and super structure. The relative positions of the green and red portion (toolbit holder - holds the shank) are important. The purpose of the invention is to make sure the green piece gets wear, not the red piece or the superstructure. Holding: PTO finds it patentable - SCOTUS says its not patentable based on prior art, obviousness! - Authorized a five-part analysis: three predicate issues; the legal evaluation of obviousness; and secondary considerations. o Determining the scope and contents of the prior art; o Ascertaining the differences between the prior art and the claims in issue; o Resolving the level of ordinary skill in the pertinent art; o Legal evaluation of obviousness, and o Evaluating evidence of secondary considerations (commercial success, long felt but unsolved needs, failure of others, etc) Discussion: - general idea of spring mounted shanks is very old - this is a crowded art! - Graham case eliminates genius test - it just has to show inventive genius and this means nothing different than obviousness. Differences between Hotchkiss and Graham standards: - Hotchkiss says only that the invention cannot be found if the combination show only the skill of the ordinary mechanic, but the case does say how much skill is required to have invention. Perhaps "genius" is needed. - Hotchkiss could be interpreted so that the product of difficult but persistent "ordinary" efforts would be unpatentable

Preliminary Injunction

The movant for a preliminary injunction in patent litigation must demonstrate: Reasonable likelihood of success on the merits of the underlying litigation. Irreparable harm. Balance of hardships tips in favor of the movant. Public interest would not be disserved. Patentee/movant for a preliminary injunction must show that it is likely to prevail: 1. On the infringement allegation AND 2. In any validity challenges to the patent brought by the defendant In moving for a preliminary injunction, harm is presumed if the patent owner can show the likelihood of success in overcoming any challenge to patent validity as well as demonstrating patent infringement by the defendant.

Claim Scope

The patent claims will define the scope of the patented invention: how much subject matter is being claimed in the patent? • The patent claims cannot go beyond what is disclosed in the specification (patent document), Short descriptions (sentences) at the end of the patent application that particularly describe and point out the invention (35 U.S.C. § 112, 2nd paragraph). Claim structure: Preamble Transition Body

Goals of Disclosure

The patent should give notice to the public of the scope of the patent right. However, formal claim interpretation will only occur if the patent enters litigation. When the patent expires, the invention enters the public domain. The patent must provide enough information to allow the person of skill in the art to read the document and understand how to make and/or use the invention.

Enablement: How much info?

The requirement that the patent teach how to make and/or use the invention. The information contained in the patent would allow someone skilled in the art to make and use the invention without undue experimentation. Undue Experiementation: (1) the quantity of experimentation necessary; (2) the amount of direction or guidance provided; (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; and (8) the breadth of the claims. In re Wands (Fed. Cir. 1988)

injunctive relief 35 USC 283

The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

35 USC 112(b)

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

35 USC 112 (a) Disclosure

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, (and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention). • The set of requirements which ensure that a patent contains a precise and thorough definition of the invention and how it works. • Compliance with these requirements falls on the drafter of a patent application (e.g., inventor, or patent attorney/agent).

US v. Adams

The third case in the Graham v. John Deere trilogy. Inventor sues U.S. government under 28 U.S.C. § 1498 for its unauthorized use of his battery invention (containing cuprous chloride and magnesium) during World War II. The government asserted invalidity of the Adams patent due to the obviousness of the invention, but faced tough facts. The military was initially dismissive of Adams' patented invention, then took and used it without compensation (and without telling Adams it had done so). 28 USC 1498 Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner's remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture. The government may use a patented invention without authorization, but must provide "reasonable compensation" to the patent owner. "Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) wateractivated batteries were successful only when combined with electrolytes detrimental to the use of magnesium. These long-accepted factors, when taken together, would, we believe, deter any investigation into such a combination as is used by Adams." Unexpected Properties of the Invention "[T]he operating characteristics of the Adams battery have been shown to have been unexpected and to have far surpassed thenexisting wet batteries." The appearance of unexpected properties in an invention is a strong argument against obviousness. "Teaching Away" Factor Secondary considerations also apply to whether Adams' invention was obvious: "Teaching away" - did the field as a whole discourage the actual invention and did Adams succeed in spite of the conventional wisdom? Yes. Facts: Adams invented a highly efficient battery that the PTO found unbelievable and rejected because it required a POSA to ignore long-accepted beliefs. Later the US accepted it feasibility and actually began contracting companies to make the batteries. Holding: Known disadvantages in old devices that would naturally discourage the search for new inventions may be taken into account in determining obviousness. Graham standard reveals the Adams battery patent is valid - both novel and nonobvious. The fact that no one else had created the Adams battery and the experts' continual expressed disbelief at the battery also imply nonobvious.

In re Brana

This case arose when the PTO seemed to demand that the patent applicant perform human clinical trials on a new therapeutic compound in order to demonstrate the utility needed to receive a patent. The Federal Circuit disagreed: patent applicant cannot be expected to conduct human clinical trials to establish the utility of a compound for patenting; reliance on testing a compound in animal models is accepted by the scientific community and will be sufficient for patenting. Clinical trials are required by the FDA, not the PTO. Facts: Brana filed for patent on compounds to be used as antitumor substances. Brana proved utility that these compounds have an anti-tumor effect in mice - artificial tumors tested were derived from cancer in mice (this is an important point) - they don't exist in real life. Holding: Patent is valid. 1) Proving "specific utility" (anti-tumor effect in mice) is sufficient to prove utility. The cancer lines, if injected into mice, would produce tumors but would required waiting until mice produced the specific tumor - it wouldn't be effective test in vivo on large scale. 2) PTO did not demonstrate the utility was inherently unbelievable. 3) even if PTO did demonstrate it was inherently unbelievable, Brana submitted sufficient evidence to convince one skilled in the art of the asserted utility. Discussion: - Court DID NOT rely on anti-tumor effect in vitro against human tumors o Court wants to make clear that mouse testing is enough - regardless of whether they have human tests o This way, drug companies can do quick research in rats and get patents, then follow FDA testing to get drug approved (very rigorous) - In vitro research - lots of things kill cancer cells. Trick is to find something that kills cancer cells and not regular cells. This is why court doesn't put much weight on in vitro research. - Brana must assert identify utility and must be satisfied at the filing date, at the latest o Assertion of utility must be made in specification o Proof to overcome PTO disbelief can be submitted after filing

AMP v. Myriad Genetics

This was a patentable subject matter challenge to the patent eligibility of genes and methods for their use in genetic testing. The organization (AMP) challenged the Myriad Genetics' patent to the isolated BRCA1 gene, which was necessary to conduct genetic testing for breast/ovarian cancer risk. • The decision at the Federal Circuit upheld the patent eligibility of the genes, but affirmed the lower's court's ruling against the method claims. • Sequence of legal challenge to the patentability of DNA/genes in AMP v. USPTO (S.D.N.Y. 2010): trial court judge ruled that genes are not patentable subject matter; partially reversed by Federal Circuit (2011); Supreme Court held that isolated genes are not patentable (2013). • The Supreme Court reaffirmed the product of nature exclusion, and that doctrine operated to bar the patenting of isolated DNA because it was not patentable subject matter. • Gene patents became legally vulnerable, and the PTO could no longer ignore the patentable subject matter issue. • As a consequence of the case, the isolated BRCA1 and BRCA2 genes became available to researchers and genetic testing companies, greatly expanding research and patient services.

Best Mode

Until the America Invents Act (AIA) of 2011, this was a disclosure requirement that an inventor disclose a preferred mode of practicing the invention. Inventor needed to provide information (if known) as to ideal or best ways to make the invention work. • "[The 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 unenforceable." • As a result of that provision, the best mode requirement was effectively eliminated by the America Invents Act (AIA) for U.S. patent law

Damages 35 USC 284

Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. • When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d) of this title. • The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.

Moleculon v. CBS

Was an invention in public use or was it under the control of the inventor despite being publicly visible Facts: Something similar to rubix cube. Nichols invented it a long time ago but just played with it (never gave it out, etc.), made models of it and brought it to his office at work. He let friends play with it in his presence. Holding: Just waiting a long time to go to PTO doesn't prevent you from getting a patent (may affect priority though). There is a 13 year delay in seeking patent rights. No public use. Nichols had not given over the invention for free and unrestricted use by another person." Diff from Egbert as the inventor still had control. Letting people play with invention in his presence does not constitute public use. Nichols had not given over the invention for free and unrestricted use by another person. Discussion: - If Nichols had let people take the invention home, then there are problems...might be public use! o Friends didn't understand the operation or feel free to take the info into the public domain. - The fact that he let people play with it in his office makes this a more difficult - but it is not related to the business and so this fact is less important. - Sale of rights isn't a sale of the invention - big difference between selling copy of invention and selling rights to invention. - If people come to your office and can understand it and might be able to reproduce it, it might be a publication, etc.

Pfaff v. Wells

What does it mean to be "on-sale"? Must an invention be "reduced to practice" - an actual working model - before it could be actually on-sale? An inventor had completed a purchase order with an electronics manufacturer for sale of his computer chip socket before he applied for a patent on the invention. The Supreme Court ruled that his invention was "on sale" before his filing and the sale prior art that made his invention not novel. The invention was the subject of a commercial offer for sale and the invention was ready for patenting. Holding: - This was a sale that triggers on-sale bar - The Court's test requires that the invention have been "ready for patenting" before the 1-year clock can begin running. The SG's test merely requires that the sale or offer "embodies the invention." As the Court notes, the SG's test would seem to be satisfied at the time of offer/sale even if the inventor hadn't yet completed the invention. - "Ready for Patenting" test can be satisfied in at least two ways: (1) by proof of reduction to practice; or (2) "proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention Discussion: - if you try to sell something, this triggers the on-sale bar - even if nobody buys it - Sale: need a contract law offer - something that acceptance with constitute a sale. o If you just say it'll "out soon" - it's probably not an offer - Government position rejected: Solicitor General's test would have merely required that the sale or offer "embodies the invention" - SG's test would have been satisfied even if inventor hadn't yet completed the invention. - Test for on-sale bar trigger: o 1) Must have a complete invention (is it ready for patenting?) Find out by applying conception and RTP rules

Merrill v. Yeomans

What is the meaning of the word "manufacture" in the Merrill patent claim? 'I claim the above-described new manufacture of the deodorized heavy hydrocarbon oils, suitable for lubricating and other purposes, free from the characteristic odors of hydrocarbon oils, and having a slight smell like fatty oil, from hydrocarbon oils, by treating them substantially as is hereinbefore described.' Facts: Patent included claim - "I claim the above-described new manufacture of the deodorized heavy hydrocarbon oils, suitable for lubricating and other purposes, free from the characteristic odors of hydrocarbon oils, and having a slight smell like fatty oil, from hydrocarbon oils, by treating them substantially as is hereinbefore described - Court is confronted with two issues: o Should this claim be interpreted to cover a product or a process? o Should the patentee receive any "liberal construction" to cover the accused products? Holding: - Claim covers a process o Court begins with language of the claim - "the word "manufacture" in this sentence is one which is used with equal propriety to express the process of making an article, or the article so made" o Court resolves ambiguity by reading the patent specification and finding contextual clues as to which meaning fits best within the document - No liberal construction! Court comes down hard on patentees - The developed and improved condition of the patent law, and the principles which govern the exclusive rights conferred by it, leave no excuse for ambiguous language or vague

Claim

clear, precise sentences describing the patented invention. • Patent prosecution involves the negotiation of claim language between the applicant (attorney) and the examiner.

Cuno Engineering Corp v. Automatic Devices corp

• Invention is an improved automatic automobile cigarette lighter. • "The new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling." • What are the implications of that standard?

35 USC 102(b)

• (b) EXCEPTIONS.-- • (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.--A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if-- • (A) 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 • (B) the subject matter disclosed 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. • (2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.--A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if-- • (A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor; • (B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), 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; or • (C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person

Sequence of Issues in Patent Infringement Litigation

• 1. Markman hearing (claim construction) (judge) • 2. Infringement allegation (jury) Any assertions of patent invalidity (jury) • 3. Remedies (if needed) (injunction (judge); damages (jury, although a judge can increase)

Patent Troll

• A non-inventing party that acquires patents as a business asset and attempts to derive revenue from the assertion of those patents against parties in the actual marketplace. Often, the acquired patents are of dubious validity. • There are several names associated with these businesses. • NPE: Non-practicing entity • PME: Patent monetization entity • PAE: Pate • A term that denotes a non-practicing entity (NPE), which holds a patent but does not actually make or use the patented invention. It is generally a pejorative term for such businesses, due to their activities in asserting questionable patents against active legitimate businesses, and threatening litigation (which could potentially include a permanent injunction). • NTP v. Research in Motion (2005) (high-profile early case where patent "troll" sued Blackberry provider for patent infringement; case settled and no injunction ensued so service continued).

Claim Format

• A patent claim is a single sentence with this structure: • Preamble: introductory • Transition: open or closed?? • Body of Claim: describes how elements interact with each other PREAMBLE A recyclable collapsible beverage container holder TRANSITION comprising BODY a corrugated tube.

Utility Doctrine

• A separate requirement for patentability. • Invention must actually work, i.e., be operable. • No requirement of "better." • The doctrine has special relevance for inventions which may be in early stages and not ready for patenting. The utility may be unknown • Operability: does it work? • Beneficial Utility: is it good? • Practical Utility: does it work now?

Halo v. Pulse

• A trial court has the discretion to award treble damages whenever the conduct of the defendant is "egregious," even if the defendant's lawyers can come up with a reasonable defense after the fact. This conduct is generally known as willful infringement. • The opinion overturned earlier an Federal Circuit ruling that made it much more difficult for a plaintiff to demonstrate willfulness by the defendant. • Plaintiff has only to show willfulness by preponderance of evidence. The Halo decision has made it easier for plaintiffs to obtain enhanced damages. The test developed in In re Seagate Technology, LLC to determine whether a court may increase damages in a patent infringement case is not consistent with § 284 of the Patent Act. Facts Halo Electronics, Inc. (Halo) (plaintiff) and Pulse Electronics, Inc. (Pulse) (defendant) both supplied electronic components. Halo brought suit against Pulse, alleging that Pulse infringed upon several of Halo's patents. The jury found that Pulse had infringed Halo's patents and that there was a high probability it had done so willfully. The trial court, however, declined to award enhanced damages under § 284 of the Patent Act, after determining that Pulse had presented a defense that was not objectively baseless. Thus, the court concluded, Halo had failed to show objective recklessness under the standard established in In re Seagate Technology, LLC, 497 F. 3d 1360 (2007). The Federal Circuit affirmed this decision. The Supreme Court granted certiorari and consolidated this case with a similar case, Stryker Corp. v. Zimmer Inc., 782 F.3d 649 (2014). Issue Is the test developed in In re Seagate Technology, LLC to determine whether a court may increase damages in a patent infringement case consistent with § 284 of the Patent Act? Holding and Reasoning (Roberts, C.J.) No. The test developed in In re Seagate Technology, LLC to determine whether a court may increase damages in a patent infringement case is not consistent with § 284 of the Patent Act. Section 284 provides that, in a case of infringement, courts may increase the damages up to three times the amount found. Trial courts have discretion in deciding whether to award enhanced damages, and in what amount. In Seagate, the Federal Circuit held that a plaintiff seeking enhanced damages must show, through clear and convincing evidence, that the infringement of his patent was willful. The Seagate court announced a two-part test to establish willfulness. First, a patentee must show that the infringer acted despite an objectively high likelihood that the infringer's actions constituted infringement of a valid patent, without regard to the state of mind of the accused infringer—this standard is known as objective recklessness. Second, after establishing objective recklessness, a patentee must show that the risk of infringement was either known or should have been known to the accused infringer. Only when both steps have been satisfied can the trial court proceed to consider whether to exercise its discretion to award enhanced damages. Here, this court takes issue with the Seagate test. The principal problem with Seagate's test is that it requires a finding of objective recklessness before trial courts may award enhanced damages. Such a threshold requirement excludes many of the most culpable offenders, such as individuals who intentionally infringe another's patent—with no doubts about the patent's validity. Under Seagate, a trial court may not even consider enhanced damages for such an individual, unless the court first determines that his infringement was objectively reckless. It is not clear why a showing of objective recklessness should be a prerequisite to enhanced damages. Section 284 permits district courts to exercise their discretion in a manner free from the constraints of the Seagate test. The Seagate test is also inconsistent with §284 because it requires clear and convincing evidence to prove recklessness. Section 284 imposes no specific evidentiary burden. The Seagate test unduly confines the ability of trial courts to exercise their rightful discretion. The judgment of the Federal Circuit in both cases is reversed and the cases are remanded.

Claim Language

• A widget, consisting of: A + B + C + D - Infringing widget must contain all of these elements. OR • A widget, comprising: A + B + C + D - Infringing widget must contain all of these elements, and could contain more. 1. The invention must be very precisely described; no unnecessary or unclear language. 2. The prior art must be avoided. 3. Variations of the invention that are supported by the specification must fall within the scope of the claims.1. The invention must be very precisely described; no unnecessary or unclear language. 2. The prior art must be avoided. 3. Variations of the invention that are supported by the specification must fall within the scope of the claims.

Warner Jenkins v. Hilton Davis

• An allegation of infringement of a dye filtration process patent under the doctrine of equivalents • What equivalents could the patent cover? • Is the defendant using a process in which one or more elements of the patent claim have an equivalent in the accused process? • Plaintiff patent claim: dye purification process occurs "at a pH from approximately 6.0-9.0." • Infringement analysis: Does a process containing all the elements of the plaintiff's patent claim but performed by the defendant at pH 5.0 infringe under the doctrine of equivalents? • In our view, the particular linguistic framework used is less important than whether the test is probative of the essential inquiry: Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention? • The Supreme Court reaffirmed the viability of the doctrine of equivalents, rejecting the defendant's attempt to argue that the doctrine was no longer viable. Facts: Claim included phrase "at a pH from approximately 6.0-9.0". The phrase "at a pH from approximately 6.0 to 9.0" was added to distinguish a previous patent (the "Booth" patent) that disclosed an ultrafiltration process operating at a pH above 9.0. The parties disagree as to why the low-end pH limit of 6.0 was included as part of the claim. Accused ultrafiltration process operates with membrane pore diameters assumed to be 5-15 Angstroms, at pressures of 200 to nearly 500 p.s.i.g., and at a pH of 5.0. Holding: • The Court limits DOE in two ways: - (i) It also requires DOE analysis to proceed on an element-by-element basis. It describes the "essential inquiry: Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?" - (ii) It places the burden of disproving prosecution history estoppel on the plaintiff. • The Court also rejects imposing any intent requirement. Evidence of "copying" is unnecessary. Indeed, "intent plays no role in the application of the doctrine of equivalents." Discussion: - This tends to blunt the force of excessive literalism

Novel vs. Nonobvious

• An invention can be novel (not described element-byelement in a single reference) but still be obvious. • A combination of references can be used to compare the knowledge in the field with the claimed invention (in contrast, novelty can only be based on one single reference). • No strict identity is required for obviousness; the question is whether the invention as a whole would be obvious to one of skill in the art

In re Wright (Excessive Claim Scope)

• Applicant has prepared a vaccine against the Prague Avian Sarcoma Virus (PrASV), a virus common in chickens. • Applicant claims: 1. A live, non-pathogenic vaccine for a pathogenic RNA virus, comprising an immunologically effective amount of a viral antigenic, genomic expression having an antigenic determinant region of the RNA virus, but no pathogenic properties. • Can the patent applicant claim a vaccine against a wide range of viruses that he has not made? Federal Circuit: no, not commensurate with disclosure. Claims exceed disclosure. Lack of Disclosure: The specification did not contain enough guidance necessary to enable "any and all live, non-pathogenic vaccines, and processes for making such vaccines, which elicit immunoprotective activity in any animal toward any RNA virus." • Wright tried to claim a genus (group) and only provided one species (one example). He did not "enable" and is not entitled to a broad claim Facts: Wright (applicant) filed a patent application claiming processes for making living vaccines that warded off viruses. The application contained a general disclosure of the invention, but only one actual example. Some of Wright's claims were allowed by the patent examiner, but Wright seeks broader protection than his single example in other claims. The patent examiner rejected the broader claims for a lack of enablement. The examiner alleged that, as of Wright's filing date, one of skill in the art would require additional research beyond the specification to make and use the invention Wright was claiming, an allegation supported by prior art literature on the HIV virus. Wright appealed to the Board of Patent Appeals and Interferences, which affirmed the examiner's rejection, primarily on the basis that Wright only enabled one example, far narrower than what he claimed. Wright then appealed to the Federal Circuit. Discussion: No. The patent office met its initial burden of showing that Wright's broad claims were not enabled by the relatively sparse specification, which shifted the burden to Wright to rebut that showing. Wright claimed many more live vaccines than he had disclosed, arguably including vaccines to treat the AIDS virus. Due to the many difficulties inherent in the nature of the AIDS virus, science had not yet discovered or engineered a suitable vaccine against AIDS. An article published well after Wright's filing date discusses the then-current difficulties in obtaining vaccines such as those being broadly claimed by Wright, further strengthening the argument that Wright's disclosure did not enable the claims. Wright presented evidence of his own recent developments in developing additional vaccines of his claimed invention, which the Court dismissed as irrelevant in determining what he enabled at the time of filing. Wright's conclusory, unsupported affidavits were similarly dismissed by the Court of Appeals. In the end, the Court of Appeals reasoned that Wright had failed to enable the full breadth of claim protection that he sought, particularly given the state of the art both at the time of filing and at the time of the appeal. Thus the Board's decision was affirmed.

Gentry Gallery v. Berkline

• Are the inventors claiming a broader scope of the invention than what is provided in the patent document? Yes, the specification contains a more limited description of the invention than the plaintiffs were arguing; as a result, the defendant's product was not covered by the patent Gentry Galley v. Berkline (Fed Cir 1998) (New matter) Facts: Facts: Gentry's patent claimed a sofa with 1) two recliners on the same side of the sofa 2) a center console between the 2 recliners 3) recliner controls on the center console. Claim at issue says the recliner controls can be anywhere on the center section (not just on the console). Berkline asserted that the patent's written description could support only a sofa having the recliner controls on the center console, as opposed to anywhere on the recliner section of the sofa. Claim at issue says the recliner controls can be anywhere on the center section (not just on the console) but this was added during prosecution! Question is what someone skilled in the art understand from the specifications drawings. Holding: - Claim amendment goes beyond original description and so court looks to the drawings to see what the essential element of the invention is - Court found that inventor stated the feature that the controls were on the console was an essential element of the invention - Person skilled in the art would look at the drawings and think the only place to put the controls would be on the console Discussion: - If you amend a claim you MUST be able to trace the roots back to the original application - Court is totally confusing as to what is fact and law

Lough v. Brunswick

• Can a "garage inventor" establish that use of his invention more than one year before filing a patent application was actually experimental use? • Will a court consider an inventor's lack of experience with the patent system to be relevant? Facts: Stephen Lough (plaintiff) was a repairman at a boat dealership in Florida. Lough noticed that for stern drives, a type of propulsion device for boats, the seal assembly often became corroded. In 1986, Lough designed a new seal assembly that would prevent corrosion and created six prototypes of this assembly. He used one of these prototypes for his own boat, gave away four others to friends, and he installed the final prototype in a customer's boat. Lough did not follow up with his friends to learn whether they were satisfied with his improved seal assembly or to get feedback of any kind, nor did he have further contact with his customer. More than a year after Lough gave out his prototypes, on June 6, 1988, he successfully applied for a patent for his seal assembly. Brunswick Corp. (Brunswick) (defendant) saw Lough's invention and redesigned its own stern-drive seal assembly accordingly. Brunswick then began selling boats featuring the new design. Lough sued Brunswick for patent infringement. Brunswick filed a counterclaim against Lough, seeking a declaratory judgment that Lough's patent was invalid or unenforceable. Brunswick argued that Lough's invention was in public use more than one year before Lough filed for his patent. The jury found for Lough and awarded Lough $1.5 million in lost profits. Brunswick moved for judgment as a matter of law, but the district court denied the motion. Brunswick appealed. Discussion: No. For purposes of the statutory bar to patent validity known as the public-use bar, experimental use of an invention is not considered public use. Prior to the enactment of the America Invents Act, 35 U.S.C. § 102(b) contained potential statutory bars to a patent's validity. One statutory bar, referred to as the public-use bar, invalidated a patent if an invention that was ready for patenting was used publicly more than one year before the invention's patent application was filed. However, even if an inventor used an invention publicly before filing for a patent, the inventor could avoid the reach of the public-use bar if the inventor could show that the alleged public use was only experimental. In this context, whether a use is experimental is a question of law. Indicators that a use was merely experimental might include: use of experimental controls, keeping records, secrecy agreements with users, and tracking performance and results. Controlling the experiment and keeping track of performance are the most important factors because, at a minimum, any true experiment requires controlling the variables, gathering results, and analyzing those results. Here, Lough's prototypes were very much in public use on several boats. The seal assembly was not kept secret. Still, the public-use bar would not invalidate Lough's patent if Lough could show that this use was experimental. However, Lough kept no testing records. More importantly, Lough did not maintain supervision or control over the use of his prototypes. There are no facts at all here that support a legal finding that Lough's prototype use was experimental. Thus, as a matter of law, Lough's activities were not experimental, and the public-use bar invalidates Lough's patent. The district court improperly denied Brunswick's motion for judgment as a matter of law

Arkie Lures v. Gene Larew Tackle

• Can the inventor use evidence of commercial success, licensing activity, and copying to demonstrate that an invention is not obvious? • Are the "secondary" considerations of nonobviousness (Graham) really secondary? Facts: Fishing lure people - lures were made of plastisol. Invention was to put salt in the plastisol...so it would taste better to the fish. People were skeptical that you could put the salt in the plastisol previously. Holding: - "skepticism by others" and "teaching away" remain strong factors Dissent: - Cites timing evidence but draws the wrong conclusion. People had been mixing similar things with the plastic previously....question by the majority is - why wasn't salt mixed, too?!

KSR Modern Interpretation of Nonobviousness

• Caution should be applied when an invention combines familiar elements using known methods to achieve predictable results. • One of skill in the art can be ordinarily creative and use inference and skill to invent. The circumstances of the market or field may be a source of motivation to an inventor. • No rigid TSM test should be applied to find obviousness. Impact of KSR • The Supreme Court returned to a basic application of the Graham nonobviousness test. It rejected the Federal Circuit's rigid application of the newly added TSM factor. • Overall, the decision makes it easier to craft a nonobviousness rejection in prosecution (or invalidity argument in litigation). • The net effect of KSR is to make it easier to weed out patents on obvious inventions.

Litigating Infringement: 2 steps

• Claim Construction - what does the language of the claim actually mean? • Compare the claim to the accused product or process, and determine if they are covered by the claims as written (literal) or are a trivial variation from the claims (doctrine of equivalents).

AIA 2011

• Congress amended the Patent Act and the U.S. converted to a "first inventor to file" (replacing "first to invent") patent system, a move that harmonized U.S. patent law with most of the world. • The AIA establishes several avenues for challenging already granted patents, a move that also harmonizes U.S. patent law with many other patent regimes.

DAMP Test for lost profits: What plaintiff must show

• Demand for the patented product (D) • Absence of noninfringing substitutes (A)* • Patentee's manufacturing and marketing capability (M) • Profit that would have been made (P) • *This factor can be difficult to satisfy if the relevant market contains multiple companies competing with each other (A, B, C, D, etc.) It can be used in a 2-company market, where every sale would have gone to either A or B: if B infringes A's patent, it can be argued that B's sales would have gone to A but for the infringement

Types of Patent Infringement

• Direct 35 U.S.C. § 271(a) • Indirect 35 U.S.C. § 271(b) inducement of infringement 35 U.S.C. § 271(c) contributory infringement

Juicy Whip v. Orange Bang

• Does an invention that relies on a misperception by consumers lack utility? • Is an imitative characteristic a kind of utility? • The Federal Circuit rejected any utility challenge to a patent because an invention used simulation, etc. The 1817 Lowell v. Lewis standard is long gone. Juicy Whip v. Orange Bang (Fed Cir 1999) Facts: Juice dispenser displays a toxic liquid to the customer - it looks good to deceive the customer - and actually gets juice from under the counter. Holding: - Narrow holding (p. 216): "The fact that one product can be altered to make it look like another is in itself a specific benefit sufficient to satisfy the statutory requirement of utility." - Broader holding (p. 217): "[E]ven if the use of a reservoir containing fluid that is not dispensed is considered deceptive, that is not by itself sufficient to render the invention unpatentable." o Other agencies can regulate deceptive behavior - This does NOT hold that an invention is patentable even if it is illegal in all 50 states Discussion: - USPTO is less willing to adjudicate moral issues - EPO is more willing to address moral issues i.e. onco mouse

Disclosure Doctrine

• Enablement • Written Description • *Best Mode (has been eliminated as a defense for all litigation commencing on or after September 16, 2011)

Nonbviousness

• Evaluates whether the invention would have been obvious to a person having ordinary skill in the art. • Must avoid hindsight bias - danger is that the invention appears obvious because of what the inventor actually did. • The invention is compared to the prior art - which are references or information that a person in the field would be aware of. Multiple pieces of prior art may be combined to establish a case of obviousness. Avoid Hindsight Bias: Does an invention appear to be obvious in the rear-view mirror because the observer has been influenced by the development of the invention itself? "I could have invented that!" "Why didn't I think of that?" The Federal Circuit developed the teachingsuggestion-motivation test (TSM) to try to avoid hindsight bias (but this test is challenged in KSR v. Teleflex).

Effective Filing Date

• For most patent applications, the effective filing date is the date that the application is filed with the U.S. PTO. • However, patent applications may properly claim an earlier effective filing date if they derive from a foreign patent application (35 U.S.C. § 119) or from a continuation application that claims the benefit of the originally filed application (35 U.S.C. § 120). No patent can issue if the invention was: known used on sale patented described in a printed publication o therwise available to the public before the filing by the applicant

Operability

• In re Dash (Fed. Cir. 2004) (method of producing heat energy, i.e., cold fusion): "Given the scientific community's considerable doubt regarding the utility of "cold fusion" processes, we hold that the examiner established a prima facie case of lack of utility and enablement." • Newman v. Quigg (Fed. Cir. 1989) Applicant claimed "perpetual motion machine." PTO claimed that it could not work; violated laws of physics. • "The district court held that Mr. Newman's claimed device and method do not produce the claimed result, following the teachings of the specification. We affirm the conclusion that the requirements of 35 U.S.C. Sec. 112, first paragraph, are not met." • Essentially, the invention lacked utility because it did not work. It also did not teach how to use the invention (disclosure requirement) because the inventor did not know how.

claim contronstruction: What can be used to determine the meaning of the claims?

• Intrinsic Evidence - (use first) - Claims - Specification - Prosecution History • Extrinsic Evidence - (if needed) - Expert Testimony - Treatises or other materials in the field

Direct Infringement

• Literal - Accused product or process literally covered within the scope of the claims. • Doctrine of Equivalents - Accused product or process asserted to be a trivial or insubstantial departure from the claimed invention. An "equivalent." • Defendant makes A+B+C+D = Literal Infringement (All elements are identical) • Defendant makes A+B+C*+D (Is C* an equivalent of C?) = Infringement under the Doctrine of Equivalents Note that every element of the patented invention must be present in the defendant's product or process to infringe, either literally or equivalently.

Theories of Damages

• Lost Profits • Reasonable Royalty (default calculation)

Acts of Patentee that constitute notice of patent and begin the potential recovery period

• Marking invention (product) = Notice occurs automatically upon marking. Marking could mean that a patent number is on the physical product or that the product contains a link that refers the reader to a website that lists the relevant patent(s). • Letter alerting infringer to possible infringement of patent = Notice • Filing patent infringement suit = Notice • However, no recovery can exceed 6 years maximum

Prior Art: Novelty

• One reference discloses all elements of a claimed invention, whether stated expressly or existing inherently. • For a reference to anticipate a claimed invention (make it not novel), it must also be enabling (fully disclose the invention). • The prior art must be "sufficiently accessible to the public interested in the art." (Klopfenstein). If an invention is known, used, on sale, patented, or described in a printed publication otherwise available to the public: 1. Because of the actions of the inventor 2. More than one year before the filing date Then the patent application will be barred from issuing as a patent. There is a one year grace period allowed to the inventor.

Infringement under DoE

• Origin in Graver Tank (1950): "To permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing." • The scope of the patent is larger than the literal wording of the claims. • An accused product or process that presents "insubstantial" differences from the patented invention will be judged an equivalent and therefore infringing.

AIA: Virtual Marking

• Patent holder can refer observer to a website (link) where the relevant patents for a particular product are listed. • This constitutes constructive notice of patent rights for the purpose of calculating potential damage recovery periods.

eBay v. MercExchange

• Plaintiff patent holder (MercExchange) is a nonpracticing entity (does not make or use the patented invention in the marketplace) and owns a patent on a method for an online auction. It sues eBay for patent infringement. Does the nature of the plaintiff affect the analysis of what remedies "compensate" the patent holder (e.g., permanent injunction)? • Controversy over "patent trolls:" businesses that license patents but do not bring an invention to market. • Courts must actually apply the 4-part test for injunctive relief to the facts of the particular patent case. • There is no automatic grant or denial of the application for a permanent injunction following a successful outcome for the patent holder. • Justice Kennedy states that "in many instances the nature of the patent being enforced and the economic function of the patent holder present considerations quite unlike earlier cases" in explaining why the Supreme Court departed from usual practice in refraining from supporting the permanent injunction against eBay. MercExchange, LLC ("Merc") (plaintiff) holds a patent for an electronic market designed to facilitate the sale of goods between private individuals by establishing a central authority. eBay, Inc., and a subsidiary, Half.com, (defendants) operated Internet websites which used a similar electronic market system allowing private sellers to list goods they would like to sell to buyers, either through an auction or at a fixed price. Merc unsuccessfully tried to license its patent to eBay and Half.com. Merc then filed a patent infringement suit against both companies in the U.S. District Court for the Eastern District of Virginia. A jury found that eBay and Half.com had infringed on Merc's patent and assessed damages, but the court denied Merc's motion for a permanent injunction preventing eBay and Half.com from operating their websites. Merc appealed and the court of appeals reversed, applying its "general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances." eBay and Half.com's petition for certiorari to the U.S. Supreme Court was granted. Issue Does the decision whether to grant or deny permanent injunctive relief in patent infringement cases rest within the equitable discretion of the district court and must such discretion be exercised consistent with traditional principles of equity? Holding and Reasoning (Thomas, J.) Yes. A plaintiff seeking a permanent injunction is required to satisfy a four-factor test before a court may grant relief. The plaintiff must demonstrate (1) that it has suffered irreparable injury, (2) that remedies available at law are inadequate to compensate for the injury, (3) that a remedy in equity is warranted after considering the balance of hardships between the plaintiff and defendant, and (4) that the public interest would not be disserved by a permanent injunction being issued. Nothing in the Patent Act indicates that Congress did not want a district court to apply the test in making an equitable decision to grant or deny injunctive relief. Conversely, the Act expressly provides that injunctions "may" be issued "in accordance with the principles of equity." 35 U.S.C. § 283. The Act also states that "patents shall have the attributes of personal property, including the "right to exclude others from making, using, offering for sale, or selling the invention." The court of appeals relied on this right when it decided to grant permanent injunctive relief. However, the "right" to exclude another is different from the remedy available when someone violates that right. The district court went too far in holding that injunctive relief could not be granted. There, the court expanded on the four-factor test when it noted that Merc's willingness to license its patent and Merc's lack of commercial activity in practicing its patent sufficiently established that Merc would not suffer irreparable injury if no injunction was granted. The court of appeals went too far in the other direction when it held as a "general rule" that a permanent injunction should issue once infringement and patent validity have been adjudged. Thus, because both courts went too far in opposite directions, the judgment of the court of appeals is vacated so that the district court may apply the four-factor framework in the first instance. The judgment of the court of appeals is reversed and the matter is remanded for further proceedings consistent with the opinio

Remedies

• Plaintiff patent holder typically seeks damages for infringing conduct as well as injunctive relief to prevent current and future infringement (preliminary and permanent injunctions).

State Street

• State Street (1998): an invention only needs to be "useful, concrete and tangible." This becomes a very broad standard for patentable subject matter, and threatens to greatly expand what is eligible for patenting. • The State Street 1998 decision by Federal Circuit: introduced the "useful, concrete and tangible" test to patentable subject matter and eliminated any obstacle to the patenting of business methods. • The State Street standard was interpreted as not requiring any technological or scientific subject matter, thereby opening up the patent system to e.g., economics, psychology, education, etc. (any form of human activity). State Street Bank & Trust v. Signature Financial Group (Fed. Cir. 1998) Facts: Claim is for a data processing system. This is a computer run, business method - for mutual investment funds. Holding, Rich: Patent is valid. Invention must be concrete, useful, and tangible (basically, not an abstract idea). Subject matter is patentable even if the useful result is expressed in number. Court does not care if a computer was used or not. - Two important holdings: Downloaded From OutlineDepot.com 9 o 1) Business methods is not an exception to patents o 2) If software or process leads to concrete and useful result, then patentable - broad holding. Discussion: - This case did not begin the patenting of business methods - it just says that business methods are not per se ineligible. - State Street ended a debate on whether computer software running on machines was, or was not, patentable - computer software is patentable! - State Street tends to say that the patentable subject matter analysis is primarily about utility - it does not actually say that, but it points in that direction. This points away from Supreme Court precedent that statutory subject matter and utility are separate tests. o Under State Street, "E=mc2" is still unpatentable; the basic insight required decades to convert to a practical application. The first nuclear reactor was patented by Enrico Fermi.

Literal Infringement

• The "accused" product or process includes every element in the claim describing the patented invention. • Often described as the inverse of anticipation - that which would anticipate earlier, will infringe later.

TRIPS

• The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) Treaty (1994) is the leading international instrument shaping national patent systems. • The TRIPS treaty has significantly impacted the patent harmonization efforts, requiring many countries to adopt similar patent systems in order to maintain preferred trading status. This eliminates customizing patent law per country. • Very controversial treaty in many countries - an example, India - now required to offer patents on pharmaceuticals where previously these were excluded from patenting.

Great Atlantic and Pacific Tea co. v. Supermarket Equipment Corp

• The invention is a new design for a cashier counter for use in a store. Justice Douglas: • An invention "had to serve the ends of science - to push back the frontiers of chemistry, physics, and the like." • What are the implications of that standard? Supermarket (plaintiff) was the assignee of a patent claiming a simple device that separated the grocery orders of distinct customers, a device that became widely used in the field, and Supermarket sued Great A. & P. (defendant) for infringement on that patent. At both the district court and the court of appeals, the validity of the patent claims was upheld, and the United States Supreme Court was tasked with determining if the claimed invention rose to the standard of a patentable invention. The district court held that, although each component of the device was already known, the invention as a whole was new and useful. The court of appeals, relying on the clearly erroneous standard, agreed and looked to the commercial success and long felt need of such a device. Great A&P appealed to the Supreme Court. Issue Where a patent claims a combination of two well known items, without something more, can the claims be patentable? Holding and Reasoning (Jackson, J.) No. The Court made note of the fact that, but for the extension in the grocery counter, all of the components of the invention were well known in the art prior to the patent application, a fact found by both the district court and the court of appeals. In line with this finding, the Court held that merely extending the length of a portion of the counter could not render the claims patentable. In evaluating a claim that is essentially a combination of multiple known pieces of prior art such as this, the Court ruled that courts should look with scrutiny for an actual invention that rises above the known state of the art. Thus the Court held the claims invalid and thereby not infringed.

Hotchkiss v. Greenwood

• The invention of a doorknob that used a porcelain knob instead of wood or metal in combination with a known structure. • "There was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor. Facts: This was a patent on a use of a particular way of attaching doorknobs to the shank (metal piece that goes into components inside the door). Dovetail shank had previously only been used with wooden doorknobs. This patent combined dovetail shank and porcelain doorknobs. Holding: with the advent of the new dovetail design, the application of the new dovetailed design to traditional materials such as clay and porcelain was something that could be accomplished by ordinary artisans. - Unless there is proof of more ingenuity and skill than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. The improvement is the work of the skilful mechanic, not that of the inventor - Something a person of ordinary skill can see is obvious! (this is a standard of obvious, not genius) Discussion: - Clay and porcelain doorknobs were very old, even at this time o This is not a case about porcelain for doorknobs! - Dovetail structure had just been invented in neighboring city - Hotchkiss may have been one of the few people who had access to this invention - If this patent was allowed, the inventor of the dovetail design would be constrained to using only wood and metal with his dovetail design. Downloaded From OutlineDepot.com 38 - This case suggests that the court didn't have evidence showing it was hard to combine porcelain doorknobs and dovetail design. - Hotchkiss standard is construed to be the same of the modern test - but the modern standard looks more to how hard the work was

why not grant patents on obvious inventions?

• The patent incentive may not be necessary • Incentives for other, more substantial contributions may be skewered • Too many insignificant patents clog the system and extract transaction cost

Enablement Doctrine

• The requirement that the patent teach how to make and/or use the invention. • The information contained in the patent should allow someone skilled in the art to make and use the invention without undue experimentation. • The information to satisfy the enablement requirement must be provided in the filed patent application - it cannot be added later as the field develops. Enable Who? • POSKA: Person of Skill in the Art • This person has the requisite skill in the field which includes background knowledge (which need not be provided in the patent application) and also knows what level of experimentation is routine and what level is excessive.

AIA Novelty

• The revisions to the patent statute include a revised novelty provision (35 U.S.C. § 102). • The new provision applies to all patent applications filed after March 16, 2013. The U.S. patent system has shifted from a first to invent system to a first inventor to file system. As a result, U.S. patent law is more harmonized with other national patent systems. • First to invent regime could require that a priority contest decide which inventor was first to invent (show conception and reduction to practice). This is an interference proceeding (preAIA 35 U.S.C. § 102 (G). • The first inventor to file regime will grant a patent to the first inventor who files a patent application (no interference to decide who is the actual first inventor). However, a second inventor to file will be able to contest the first filer if she believes that the first filer derived the invention from her. This is the new derivation proceeding (AIA 35 U.S.C. § 135) • All patent applications filed before March 16, 2013 were examined in the first to invent patent regime. • All patent applications filed after March 16, 2013 are examined in the first inventor to file patent regime

Marking the Invention

• There is no absolute duty to mark the patented invention (placing the patent number on the product). But the statute creates an incentive to mark by restricting the recovery of damages in cases where a patented invention could have been marked, but was not. • Marking is constructive notice of the existence of a patent. If no mark, infringement recovery begins when defendant is notified of the infringement (actual notice).

Alice Corp. v. CLS Bank

• This case followed Bilski, and presented a similar challenge to the patenting of computer software and business methods. The Alice patent was directed to a method (scheme) for reducing settlement risk in a financial transaction, implemented through software. • Question presented: "Whether claims to computer-implemented inventions -- including claims to systems and machines, processes, and items of manufacture -- are directed to patenteligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?" • Can a patent claim reciting a generic computer implementation transform an abstract idea into a patent-eligible invention? • The Supreme Court says no; the invention was directed to an unpatentable abstract idea (a method (scheme) for reducing settlement risk in a financial transaction), and its embedding in software did not change that conclusion. • In comparing the financial methods claimed in Bilski and Alice, the Court found "no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here", and thus concluded that the concept of intermediated settlement was an abstract idea. Rule: 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.

Doctrine of Equivalents

• This is another theory of patent infringement, allowing the patent holder to argue that the accused product or process of a defendant is equivalent to the patented invention (not literally covered by the patent claims) and therefore infringing.

Bilski v. Kappos

• This was the first challenge to business method patents to reach the Supreme Court. • The Bilski patent was directed to a method for reducing risk of price changes in the trading of commodities. What was the proper test for evaluating patentable subject matter? The Supreme Court rejects the mandatory application of a machine-or-transformation test for the patentability of business method claims; disagrees with Federal Circuit. • The court rejected the patent on the basis that it was directed to an abstract idea (hedging risk), which is not patentable. Bilski (Fed. Cir. en banc 2008) Facts: Bilski appealed the Patent Office's rejection of their claim for a method of hedging risk in the field of commodity trading. The patent examiner had initially determined that Bilski's invention was not patentable subject matter under §101 because it was "not implemented on a specific apparatus and merely manipulates [an] abstract idea and solves a purely mathematical problem without any limitation to a practical application." Holding: As the statute makes clear, "any new and useful process" is patentable, but In re Bilski tested what that concept encompassed. To answer this question, the Federal Circuit, following a noticeable trend in its recent opinions, deferred to U.S. Supreme Court precedents to select the proper test for determining a patentable process. Known as the "machine-or-transformation Downloaded From OutlineDepot.com 10 test," the Bilski Court announced that a claimed process is patent-eligible if "(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or a thing." Any process claim, especially a business method, must either (1) be tied to a machine, apparatus, or some structure, or (2) describe a transformation that is central to the claimed process. Yet, at the same time, a single process claim cannot encompass every permutation of performing that process in a given field because the Patent Office will reject such a claim as improperly claiming a fundamental principle.

Icandescent Lamp Patent (Sawyer and Mann Patent)

• U.S. Patent No. 317,676 • Claim 1. An incandenscing conductor for an electric lamp, of carbonized fibrous or textile material................. • Inventors taught the use of carbonized paper in their lamp, according to the patent. Defendant's lamp uses a bamboo filament. Inventors assert that the bamboo filament is covered by their patent. Technological Background: Edison did NOT invent incandescent lights - this phenomenon was known to the science world for many years! Many technological advances occurred before Edison came onto the stage. - Edison discovered a filament that wouldn't burn out in an incandescent light - Patent application for improved light having filament with high resistance and small surface area. This was Edison's insight! and so Edison was allowed a very broad patent. o At the time, ALL high resistance/low surface area worked better than state of art at the time he invented (state of the art previously was low resistance filaments) Facts: Sawyer and Man (SM) applied for patent after Edison but alleged they were first to invent. [patent cases were appealed directly to the SCOTUS] Holding: SM patent is invalid - it's too broad. SM claimed all fibrous and textile substances for use in lightbulbs ....but they hadn't discovered a quality common to them all! Another person would have to experiment with many fibrous and textile substances to find one that actually works. Just because SM discovered a certain carbonized paper would work, their claim to all carbonized papers might not be extravagant; but the fact the paper happens to belong to the fibrous kingdom does not give them a right to exclude all others from using any fiber! - SM did not truly enable the entire field of textile and fibrous materials - success of using any one material is questionable BECAUSE there was no common quality. - There was no "general quality" common to all claimed embodiments that made them suitable for incandescent filaments Discussion: - This is an infringement action - if Edison was infringing SM patent: o It requires an evaluation of 1) whether the SM patent is valid; and 2) whether the accused devices fall within any valid claims of the SM patent. o Edison's patent is irrelevant - This case is not about failure to explain more in the spec. - problem is that all that was claimed simply could not be enabled based on the state of the art and their success in the lab

Compulsory License

• U.S. government can authorize the use of a patented invention for itself or by a third party, subject only to "reasonable compensation" being provided to the patent owner. Statutory provision: 28 U.S.C. § 1498. • This authority is a mechanism that could be used to increase the supply of a needed patented pharmaceutical during a public health emergency. This was proposed during the 2001 anthrax scare for the drug Cipro (Bayer), but the crisis subsided before such measures were taken.

Where does nonobviousness originate as a requirement?

• Until 1952, the courts struggled with defining when an invention had only trivial modifications from the prior art and therefore could not be patented (Hotchkiss, Cuno, A & P). The word "invention" was often used to describe what the courts were looking for, but it was often ambiguous. • In 1952, Congress defined a nonobviousness requirement by enacting the new 35 U.S.C. § 103.

35 USC 102(a)

• a) NOVELTY; PRIOR ART.--A person shall be entitled to a patent unless-- • (1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or • (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.