Patents Cases and Concepts

Juicy Whip v. Orange Bang

"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."

Rosaire v. National Land Co.

"known or used" not a numerical inquiry: must be known by someone who knows what the tech. is a. technology in dispute: method for prospecting for oil (1.) 1935/36: Gulf starts using method. (2.) Sept. 1936: Gulf stopped using method: not suited to geographic area (3.) Rosaire invents, Rosaire files (4.) 1939: Gulf files b. issue: whether earlier use by Gulf renders Rosaire's patent non-novel c. Rule: yes: Rosaire's patent is non-novel (1.) no attempt to conceal by Gulf (2.) Gulf was just pausing with their use of the method: just not suited to the geography: not like they were never going to use it again. Knowledge hadn't vanished like it would have if someone died. Evidence of this: (a.) they filed a patent (b.) this is not like the safe that was just put together once. This is a competitor developing the same technology: seems more appropriate to award monopoly. d. arguments that court got it wrong: (1.) They are in W. Texas: there are only 15-20 people at Gulf who knew about this. Is this really enough to say that it's known to public? (a.) apparently yes: this inquiry is not based on numbers (b.) however, this suggests that tech. has to be known by someone who actually knew what tech. was. (2.) could this end up being unfair to patentee - how were they supposed to know that it was already invented? (3.) counterargument: this could work in patentee's favor: (a.) gives patentee an obviousness argument: if others (like patentee) were using method, it could be obvious (b.) Rosaire could bar Teplitz (Gulf) from getting patent: 102(b): knew and used. (But not barred under 102(a) - before actual reduction to prac.)

Milburn v. Davis-Bournonville:

(1.) 1/31/11: In application, Clifford discloses but does not claim invention (2.) 3/4/11: Whitford files application for the invention: filing date is the invention date (3.) 2/6/12: Clifford patent issues (4.) 6/4/12: Whitford patent issues (5.) both patents disclose the same thing; Whitford claims it b. Issue: Is the Clifford patent prior art to Whitford? c. SCOTUS: yes, does not need to claim, only needs to disclose

what if you want to expand what you enabled in the spec.?

(1.) need continuation application: pay fee and get 3 office actions (following 3 continuation in part applications) (2.) continuation in part app: can disclose new matter: add onto original app (a.) old claims and new claims in CIP that are supported by material in original application: old priority date (b.) new claims not supported by material in original app: priority date is when you filed CIP (c.) rationale: if competitors get around your claims and you have a continuation pending, you can add a claim so that competitor is violating claim

two distinctive features of information goods. What problem do these features create?

(1.) non-rivalrous: "He who receives an idea from me receives instruction himself without lessening mine." (2.) non-excludable: You cannot build a fence around your idea features of information goods create free-rider problem: customers will exploit info without contributing to its creation. therefore, without patent system, info will tend to be under-produced or not produced at all due to risk of disclosing info.

52 Act: 4 categories of prior art

(1.) patented or described in printed pub. (2.) known or used by others (3.) public use (4.) on sale in this country

policy: first to file system, AIA

(1.) pros: easier to determine priorty, encourages earlier disclosure, international harmonization (2.) could encourage premature filing, creating later issues and undermining patent quality, could increase filings, perception is that this favors larger companies.

What are responses to the free-rider problem?

(1.) responses to this problem: patent system, government granted funds. (2.) patent system provides private property right as inducement to innovate. Public market signals where investors should channel inventive efforts.

3 virtues of IP clause

(a.) decentralized: gov doesn't make decisions on who gets $, marketplace does (unlike England) (b.) exclusive rights (c.) incentives: where the marketplace doesn't give an incentive, fed gov can give funding

obviousness under 1952 act and AIA

1. 1952 Act: §103: "A patent may not be obtained 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." 2. AIA §103: "a patent for a claimed invention may not be obtained if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill..." a. makes it more likely that a patent will be proven obvious b. pitfalls: using hindsight: discounts difficulty solving probs in past.

Parts of the Patent

1. Abstract: A few sentences. What the invention is, what it includes, what it may include. 2. Specification: §112 ¶1: 3 requirements: a. written description (see below) b. enablement (PHOSITA can re-create without undue experimentation) c. best mode, definiteness. (Note: best mode under AIA: still re'd that you set it forth, but cannot invalidate patent based on best mode) 3. components of specification a. Field of the Invention: invention relates to an apparatus for... b. Background of related art: Problem, what else is out there, why it doesn't solve the problem. c. Summary of the invention: In one embodiment, the invention provides... (long paragraph). In one embodiment, the apparatus includes (sentence). In one embodiment, the apparatus includes (sentence). d. description of the drawings: Fig 1 illustrates... e. We claim: 1. an apparatus comprising ... (1.) dependent claim: "A ___ as claimed in claim 1, wherein... " (2.) single sentence rule: Each claim only 1 sentence

Enablement: Test and Factors to Consider

1. Test: §112 ¶1: Whether a person of ordinary skill in the art would be required to engage in undue experimentation in order to make and use the invention. In Re Wands. a. factors to consider (illustrative, not mandatory): (1.) quantity of experimentation necessary (2.) amount of direction or guidance presented (3.) presence or absence of working examples (4.) nature of the invention (5.) state of prior art at time of filing (6.) relative skill of those in the art (7.) predictability or unpredictability of the art (8.) breadth of claims (9.) reasonable correlation

Claiming the Invention: Strategies

1. goal: maximize your shelf space: the broader the claims, the more you own. how to accomplish this: means + function language: "means for supporting armrest." UNLESS you are trying to get around prior art. Solution: draft multiple claims with different scopes. Note: patentee not obligated to search for prior art, but if you do and you find prior art, you have to disclose. Patentees don't like to search for prior art bc of willful infringement: you can have treble damages assigned to you.

2 ways to directly infringe

1. literal infringement: every element is present in one piece of prior art 2. non-literal infringement: determined by doctrine of equivalence: triple identity test a. if it performs substantially the same function b. the same with c. with the same result.

102(e) (1952)

102(e): a person shall be entitled to a patent unless the invention was not claimed but described in (1.) an application for patent... by another filed in the US before invention by applicant for the patent. (2.) a patent granted on an application for patent by another filed in the US or on PCT application before invention by applicant (3.) note: need 102(e) and (a) because publications under a need to be publicly accessible. Applications under 102(e)(1) are not publicly accessible (4.) note: if invention is claimed in prior art patent or patent application, 102(g) applies.

102(e) 1952

102(e): a person shall be entitled to a patent unless the invention was not claimed but described in patent application or patent granted

Explain the early English patent system under Elizabeth I, James I

2. England and the "Odious Monopolies": Elizabeth I, James I, Sir Walter Raleigh -crown was granting monopolistic privileges. gave "patents" to people from whom they wanted to buy favors - populace became irate, parliament passed Statute of Monopolies in 1624: outlawed all monopolies except new manufacturers This relocated decision making authority over validity of patents from crown to court, effectively limiting issuance of patents to cases of invention arguably played role in Industrial Revolution: incentive factor & clearing out monopolies

O'Reilly v. Morse

2. O'Reilly v. Morse: The infamous claim 8 a. summary: Morse invents telegraph claims every possible method of communicating via electromagnetism. b. Rule: Court thinks this is too broad. Can only claim what you enable. c. Analysis: some future inventor may discover "in the onward march of science" a mode of writing or printing at a distance by means of the electric or galvanic current without using process set forth in P's patent. d. Dissent: if this is invalid claim, then patentee of improvement will not have a right to use the original. This will retard progress of invention. Also, it is a "most wonderful and astonishing" invention so we should let him patent it.

Unique Concepts v. Brown

2. Unique Concepts v. Brown (pre-Phillips, pre-Texas Digital): drawing the line between reading in light of spec and limiting based on spec. a. technology in dispute: unique concepts held patent on "assembly of border pieces" used to attach fabric wall covering to a wall. Claim 1: "assembly comprising linear border pieces and right angle corner border pieces which are arranged..." Brown made similar invention without right angle corner pieces, alleged it did not infringe. b. district court: mitered linear pieces do not meet claim language "right angle corner border pieces." Language is too clear to encompass linear pieces. (Judge Lourie) (1.) relies on §112 ¶2: should distinctly claim elements of invention (2.) policy: want there to be freedom to operate c. dissent (Judge Rich): 2 arguments: (1.) two linear pieces arranged at right angle can be considered right angle piece. (2.) looked at prosecution history, cancelled claim 9: "an assembly set forth in claim 1, wherein said right angle corner pieces are formed by a pair of short linear pieces whose ends are mitered ..."

Early American Patent System

3. American Patent System Colonial Era: states granted patents: created conflicts Constitutional Convention, 1787: enacted into Constitution an explicit grant of power to grant patents and CRs. Article I, Section 8, Clause 8: only authors and inventors, limited times: drafters wanted to limit powers in similar ways as SOM in England.

Consolidated Electric Light Co. v. McKeesport Light Co.

3. Consolidated Electric Light Co. v. McKeesport Light Co.: the incandescent lamp case a. summary: Nov. 1879: Edison files application on improved incandescent light having high resistance and small surface area. Jan. 9, 1880 Sawyer and Man file application on their improved light. Jan. 27, 1880: Edison's patent issues. May 1885: SM patent issues. 1887: assignees of SM sue companies that use Edison's light for infringement of SM patent. Claims of SM patent: 1.) an incandescing conductor for an electric lamp, of carbonized fibrous or textile material and of an arch or horseshoe share, substantially as hereinbefore set forth. 2.) the incandescing conductor for an electric lamp, formed of carbonized paper, substantially as described. b. Issues: this case has nothing to do with Edison's patent! Issues are whether SM patent is valid, whether accused devises fall within any valid claims of SM patent. c. Rule: claim 1 is too broad. Not all carbonized material would act the same way in a light bulb. If they did, this claim would be okay. SM have only enabled paper, claim universe ("all fibrous materials") Claim 2 only claims paper - OK. d. note: if Edison's patent were valid, he would have needed a license from SM to make his improved light. e. Analysis: broad pioneering patents are permissible, but applicant must truly enable the field that is claimed. Here, there was no quality common to all of the claimed embodiments that made them particularly suited for incandescent filaments.

Peter v. Miller

4 years between reduction to practice and filing patent application is too long: constitutes abandonment

Policy: how much patent protection is enough?

Policy: How much protection is enough? (1.) broad patent protection: strong ex ante incentives, efficient allocation of resources (2.) strong incentive for improvement activity, increased pace of tech. innovation

Burke, Inc. v. Bruno Independent Living Aids, Inc

Burke, Inc. v. Bruno Independent Living Aids, Inc.: limitations from the written description should not be read into claims a. technology in dispute: Burke's patent, claim 1: a personal mobility vehicle comprising a) a main frame unit including 1) a floor pan having a back end" b. District Court: interpreted floor plan to mean composed of sheet metal, one or several pieces of metal, in a single plane. c. Federal Circuit: no mention of requirements added by district court: cannot import limitations from spec. to claim. (1.) the ordinary meaning of a claim is its meaning to ordinary artisan. Dictionaries are prone to manipulation. Often, an invention is too novel for dictionary to adequately describe it. Conclusions a. extrinsic evidence may not be used to contradict claim meaning that is unambiguous in light of intrinsic evidence b. asess claims according to ordinary meaning to artisan at time of filing c. claim interpretation: highly contextual, no magic formula d. claim can be read in light of a specification but not limited by a specification

How many claims need to be present in prior art?

If all claims are in one piece of prior art: invalid (inherency) except: (1.) presence of unrecognized de minimis quantity. In re Seaborg (where one-billionth of a part was element) (2.) mere probabilistic inherency: evidence must make clear that the missing descriptive matter is necessarily present. Continental Can (can't just be probable; needs to be present in actual practice or machine) (3.) accidental/ unwitting appreciation Tilghman v. Procter (finding little bit of fatty acids floating on water doesn't anticipate. OR if several pieces of prior art mention all claims, need to ask whether it would be obvious to combine prior art

In re Klopfenstein

Printed publication is available for extended period of time to those who are interested in the art. a. issue: whether Klopfenstein displaying poster at chemistry convention for 3 days is a printed publication under 102(a) b. Fed Cir.: printed publication beans that reference must have been sufficiently accessible to public interested in the art before critical date. Dissemination and public accessibility are factors in legal determination of whether a prior art reference was "published" (1.) here: out and available to people in industry for extended period of time, nothing stopping them from taking pics or notes. (2.) patent claim at issue DOES need to be sufficiently enabled in prior art. If prior art does not give PHOSITA enough info to make w/o undue experimentation, not invalidating. c. Relevant Factors: (1.) length of time display was exhibited (2.) expertise of target audience (3.) existence (or lack thereof) of reasonable expectations that material displayed would not be copied. (4.) simplicity or ease with which material displayed could have been copied. (5.) copies need not be distributed but: (a.) entirely oral presentation with nothing written is not a printed publication: court still has respect for text (b.) a presentation that includes transient display of slides probably not printed publication.

Novelty: 1952 Act

Section 102: a person shall be entitled to a patent unless publicly used by others in the US before date of invention OR patented or described in printed publication ANYWHERE before date of invention

Characteristics of 1st Patent System

Venetian System of 1474: -exclusive rights granted to inventor -rights to license -remedies: monetary & injunctive relief -gov can take and use invention if it wants to

Titanium Metals Corp v. Banner

a single embodiment anticipates a claim a. technology in dispute: a titanium allow that resists corrosion in hot brine solution while maintaining workability (1.) Banner claimed: (a.) Ni: 60-90% (b.) Mo: 20-40% (c.) Fe: 1-20% (2.) Russian publication disclosed alloy containing: (a.) Ni: 75% (b.) Mo: 25% b. Issue: does Russian publication anticipate? c. Rule: yes: Russian pub is 0% Fe, 25% Mo, 75% Ni: this falls within Banner's claim. d. Analysis: Banner should have claimed Fe 1-20% instead of 0-20%

LeRoy v. Tatham

a. A fundamental truth, an original cause, a motive cannot be patented: no one can claim an exclusive right in them. b. Ex: No one can appropriate steam power or electricity to themselves. Application of them to machines is patentable. c. Processes used to extract, modify, concentrate natural agencies is patentable.

O'Reilly v. Morse (patentable subject matter)

a. PSM was also at issue here: electromagnetism not patentable b. policy: someone in "the onward march of science" might discover something else, public won't have the benefit of it if communication through electromagnetism is patented.

Alice v. CLS

a. Technology in dispute: method for reducing settlement risk; basically an escrow account. 3 claims (1.) process claim: method itself that doesn't require a computer (2.) system claim: computer system (3.) claim 26: method tied to computer system b. Federal Circuit: plurality split - 5-5 - when you have a split, it upholds. (1.) Lourie opinion: emphasizes pre-emption: this would widely pre-empt the use of this method. Inclines toward Flook/ Mayo (2.) Rader opinion: judge made exceptions to properly enacted statutes are to be narrowly construed. Inclines toward Diehr/ Bilski c. SCOTUS: ineligible: abstract idea. (1.) doesn't accept Judge Rader's position that any software is patentable: requires customization (2.) 3 step process to determine if patent eligible (a.) is it directed toward patent ineligible concept? (b.) does it sufficiently transform? (c.) does it instruct on how to use it? (3.) concerns: (a.) this is a fundamental economic concept. (b.) overly broad (c.) patent thickets d. analysis: Diamond v. Diehr is still good law! Machine or transformation test is still useful, but need to show something beyond tying law of nature/ abstract idea/ physical phenomena to a machine. 8. Conclusions a. laws of nature (1.) legal foundation for allowing patents to apply laws of nature: U.S. Const Art. 1 Sec. 8: promote progress, technological arts, inventions/discoveries (2.) instrumental theory: anti-monopoly b. natural phenomena (1.) legal foundation for ruling not PSM: Patent Act: (a.) §101: "Any": suggests should be patentable (b.) §112: Written description: can't describe/ distinctly claim a natural law: not patentable. (2.) instrumental theory: non-technological c. abstract ideas (1.) legal foundation for ruling not PSM: common law (2.) instrumental theory: over-breadth: don't want to preempt the field.

plumtree software v. datamize

a. Timeline: (1.) 1994: MA completed development of authoring tool that could be used to create kiosks (2.) 1/17/95: MA gave presentation to reps at Ski Industry of America (SIA) trade show. (3.) 1/25/95: SIA sent letter to MA confirming MA would provide kiosk at trade show in exchange for SIA's waiving the $10K sponsorship fee (4.) 2/27/95: critical date (5.) 2/27/96: filing date b. two alternate theories for plumtree to meet the first prong (offer for sale) of Pfaff: (1.) before critical date MA made a commercial offer to perform patented product (even if performance itself occurred after the CD) (2.) demonstrate MA performed the patented method before critical date for a promise of future consideration (a.) D.Ct.: this happened. Waiving fee is consideration for commercial sale. (b.) Fed. Cir: this didn't happen: must ask whether the pitch was general or whether they were pitching the invention itself: here, they were pitching the kiosk but not the process that made it. Could have in theory replaced that kiosk with another. In other words: must ask if datamize was locked into using the patented technique to fulfill sales K? (b.) no: could have used another invention that did the same thing. It gave a generalized presentation (c.) counter argument: offer was for sth that looked like patented invention. Later, patented invention used to fulfill order. Why isn't this an offer for the invention?

Graver Tank v. Linde

a. claims: (1.) Unionmelt: calcium and magnesium silicates (2.) Lincolnweld: calcium and manganese silicates b. court: similarities found (1.) same function: electric welding composition (2.) substantially the same way: chemists testified that magnesium and manganese react similarly (3.) same result: same kind and quality of weld employed using similar mechanical methods

types of utility

a. credible (operational) utility: invention is presumed operable. Don't have to prove that it operates, but if the court doubts operability, must prove. b. beneficial (moral) utility: modern practice is for courts to defer judgment to legislature c. specific and substantial (practical) utility

Weaknesses of Theory that Patent System is good, solves free rider problem, provides other beneficial incentives

a. incentive to invent theory assumes inventive act is driven by the prospect of a patent, rather than reputational gains, monetary prizes, or rewards b. incentive to disclose theory: an "enabling" disclosure seldom suffices for potential licensees, who usually ask for an "enabling package" - includes tacit knowledge not required to be disclosed c. disclosure theory doesn't take into account concerns with reverse engineering. d. no incentive to disclose if you can keep a trade secret longer than 20+ years and still bring product to market e. sometimes people never commercialize or license patented tech: incentive to innovate theory loses force. f. no evidence that patents give us more in innovation than they cost us in monopoly pricing. g. Some customers never get patented products because of prices

Akamai v. Limelight

a. method in dispute: delivering electronic info by CDN (content delivery network): Akamai hosts content on servers to speed up delivery. Come up with system of "tagging" to figure out what info to put on what servers. (1.) Limelight does same thing, but has customers do own tagging (2.) problem for Akamai: method claim. Limelight doesn't directly infringe. Problem with indirect infringement theory: no one person or entity directly infringes: Limelight does part, customers do part b. fed cir.: two people directly infringing is enough c. SCOTUS: no: must have infringment by another. Under current interpretation, another is one person. Joint direct infringement doesn't qualify.

KSR v. Teleflex

a. prior to this case: if there was no teaching about an invention in literature, it was not obvious: this was a strict requirement. Teleflex pushes back on this bright line test b. technology in dispute: pedal assembly: adjustable gas pedal with electronic control attached c. Graham Framework: steps 1 & 2: scope and content, differences of prior art: (1.) mechanical pedal designs: push gas pedal, goes to carboretor, mechanically it is connected to sth that gives more gas (a.) to make adjustable, hard prob to solve bc of constant ratio prob. (b.) this is solved by prior art: Assano and Redding patents (2.) electronic sensors: no cable connecting pedal to carboretor: wire goes from pedal to computer, gets signal, comp sends more gas d. Nonobviousness as a Question of law: court points out constitutional basis of patent power: promote progress of a useful art (1.) we can't give rights to anything: obvious doesn't qualify. There is a constitutional constraint (2.) if we make this a legal question, gets reviewed de novo (3.) PHOSITA is not a real person: it's a construct that is presumed to know relevant prior art. If we are dealing with imaginary persons, makes it hard for this to be purely factual inquiry. e. Issue: Is it obvious to get e-sensor pedal by combining mechanical pedal adjustability with e-pedal? f. Rule: yes: people were buying mechanical pedals, putting e- sensors on other things. PHOSITA could have done this g. Analysis: if there is no recognized problem but you solve a problem, very unlikely that your invention will be found obvious. If the problem is very recognized, you face bigger obstacle to establishing nonobviousness h. policy: when is a patent definitely nonobvious? We don't know. This isn't good for business.

Phillips v. AWH

a. technology at issue: pre-fabricated building modules (walls) being marketed to prisons. (1.) Phillips claimed walls with "further means disposed inside the shell for increasing its load bearing capacity comprising steel baffles extending inwardly from the steel shell walls." Phillips's walls, in practice, had baffles at acute angles. (2.) AWH made walls with baffles at 90 deg to deflect projectiles. Phillips sued for infringement. b. Dist. Court granted AWH's sum judg: read the term baffles in claims to mean internal barriers angled at angles other than 90 deg. 90 deg. not considered means of increasing load bearing capacity. §112 ¶6 means plus func. Lang. c. CoA: dist court interpreted §112 ¶6 wrong. This is not means plus function language claiming. Upheld decision on other ground: spec is intended to support and inform the claims, here it makes it unmistakably clear that the invention involves baffles angles at other than 90 deg. d. en banc: claims should be understood in light of specifications and prosecution history. Limitations from written description should not be read into the claims. (except when using means plus function language, which this wasn't). This is infringing: cannot limit claim to not include 90 deg. (1.) intrinsic evidence takes precedence. Specification is primary basis for construing claims, claims should be understood in light of spec (2.) claims are given their ordinary and customary meaning to a PHOSITA at time of effective filing date.

space systems v. lockheed martin

a. technology in dispute: 375 patent relates to altitude control system for maintaining position and orientation of satellite. Employs pre-bias techniques for station keeping (1.) problem being solved by pre-bias orbital correction: less fuel reqd to put it back into the position it was in before (2.) basically uses complex set of calculations that anticipates change from reorienting/ firing thrusters. b. summary: (1.) 3/19/82: ford sent French company document entitled "engineering change proposal" (ECP) that described prebias idea and how Chan proposed to achieve it - technical steps, drawing, costs of developing system (2.) 4/21/82: critical date (3.) 4/21/83: filing date c. Proving on sale criteria at point ECP was sent: (1.) ready for patenting? No: court said it wasn't enabled: taking from detailed concept to completion would have taken a lot of work. PHOSITA couldn't have built invention from ECT (2.) subject to offer for sale: at what development stage must the invention be for the on-sale clock to begin to run? (1.) DCt held legal conception (2.) Fed Cir reversed: need to have full conception: so fully formed in the mind so that PHOSITA could reduce to prac without undue experimentation

Ariad v. Eli Lilly

a. technology in dispute: Ariad made molecule that reduces NFkB binding, in turn reduces cytokine production. Ariad claimed use of all substances that achieve result of reducing binding of NFkB to NFkB recognition sites. Claims were written in functional language. (1.) here, spec hypothesized three classes of molecules that could potentially reduce NFkB binding: specific inhibitors, dominantly interfering molecules, decoy molecules (2.) here, enablement not the issue. They disclosed the type of molecules that would inhibit binding. Question is whether they disclosed how a PHOSITA could implement this, how to put molecules in context: i.e. what is an NFkB inhibitor, how is inhibition achieved would be written description/ context vs. specific types of inhibitors used would be enablement. b. two issues: (1.) whether written description and enablement requirements are separate (2.) if so, what is the scope of written description req c. District Court: claims are valid. d. Federal Circuit: invalidated: insufficient written description e. Ariad's arguments en banc: (1.) §112 ¶1 to be interpreted as: "The specification shall contain: A. a written description i. of the invention and ii. of the manner and process of making and using it B. in such full, clear, concise and exact terms as to enable [a PHOSITA]... to make or use the same (2.) all you need is enablement: no separate written description requirement f. Eli Lilly's arguments en banc (1.) §112 ¶1 to be interpreted as: 1. "The specification shall contain a written description of the invention and 2. The specification shall contain a written description of the manner and process of making and using it, in such full, clear, concise, and exact terms ..." (2.) written description and enablement are separate. g. Fed. Circuit en banc: (1) confirmed separate written description requirement. (2) here, written description not sufficient. Must describe some way of performing the claimed methods, regardless of whether claims recite a particular compound (3.) here, PHOSITA would not appreciate that Ariad was in possession of claimed methods because molecules were not sufficiently disclosed h. Analysis: purpose of w.d. is to signal to market how you are going to write your claims: curbs abusive amendment practices. Curtails claims that do not require undue experimentation but have not been invented.

Ass'n for Molecular Pathology v. Myriad

a. technology in dispute: Myriad patent covers 2 claims: 1) DNA sequence of BRCA1 and BRCA2 genes 2) cDNA of BRCA1 and BRCA2 b. argument against patentability: everything is well-known: method of purifying, etc. Only thing discovered is gene sequence that elevates risk of cancer when mutated c. SCOTUS: DNA sequence claim invalid: this exists in nature. cDNA is not a product of nature: exons only DNA molecule; not naturally occurring, therefore patentable.

Scoggin Patent v. Mellon

a. technology in dispute: Scoggin perfected sprayer with: (1.) spray cap: held sprayer down so that it didn't spray (2.) sprayer head that pushed all the way down (3.) sealing rib (4.) space btwn spray cap and bottle if it warps, will still go on b. prior art: (1.) Mellon patent: no space (2.) Livingston Patent: spray cap, sprayer head, gap: no sealing rib c. secondary considerations for obviousness (1.) long felt but unsolved need (2.) commercial success (3.) failed efforts of others (4.) copying by others (5.) praise for the invention (6.) unexpected results (7.) disbelief of experts d. issue: was Scoggin patent obvious? Great commercial success, but not much difference between it and prior art e. test: must look for nexus between secondary considerations and inventiveness (1.) could be that sth very obvious gains great commercial success. (2.) ask consumers: why did you like sealing rib better than tongue and groove (Mellon)? Have to get evidence that invention is better, not just better distribution system (i.e. if someone like P&G got license to it, they could make it very popular without it being any better because of their vast distribution system) f. ruling: Scoggin's patent was obvious: difference so insubstantial. Suggests secondary factors don't shift balance where innovation was so minor

In re Fisher

a. technology in dispute: an expressed sequence tag (EST): a purified DNA molecule encoding a maize protein. Benefits that P claims: (1.) will be useful for testing: molecular marker for mapping genome (2.) measuring (3.) use in PCR as primer (4.) identifying SNPs b. SCOTUS: problem with this: benefits that P cites are not specific to this EST; apply to all ESTs. No specific or substantial utility. c. Dissent: it is useful for testing. This is like a microscope: both take a researcher one step closer to IDing and understanding previously unknown structure. d. Analysis: this is cDNA! Difference between this and Myriad? (1.) Myriad's genes were clearly different from other ESTs because their mutation led to cancer. Here, not a tumor suppressor gene. (2.) Myriad didn't charge researchers to use his patented cDNA - wanted to make money off customers - court not concerned there with hold up of research. (3.) Policy: downside of not allowing EST patents except in cases like Myriad: encourage people to move toward trade secrecy.

on sale bar

an invention is barred under 102(b) if it is: a. the subject of an offer for sale b. "ready for patenting" whether or not it has been "reduced to practice"

Pfaff v. Wells Electronics

a. technology in dispute: chip socket. timeline: (1.) 11/80: Pfaff started work on it (2.) prior to 3/81: showed sketches to Tex. Instr., sent drawings to manufacturer (3.) 4/8/81: Texas Instruments sends purchase order to Pfaff: 30,100 chip carriers (4.) 4/19/81: critical date: beginning of one year grace period: to bar patent, would have had to be on sale before this date (5.) 7/81: Pfaff fills order, ships chip sockets. (6.) 4/19/82: Pfaff files for patent b. Issue: when did chip sockets go on sale? (1.) Were chips on sale when they shipped in July: yes, reduced to practice. Acceptance of K by performance. (2.) When does sale take place (acceptance? Performance?)? Is purchase order "on sale"? c. SCOTUS solution: sets out factors for on sale: (a.) the subject of an offer for sale (b.) ready for patenting whether or not it has been reduced to prac. Here, there were drawings and descriptions long before reduced to prac. d. analysis: What stops someone from patenting something sold in another country? Must be the inventor: cannot derive from someone else's invention.

Johnson and Johnson v. RE Service

a. technology in dispute: circuit board. (1.) J&J claimed 1) board with A1 substrate, 2) board with Cu foil adhered to Al substrate (2.) disclosed that other things could be used. Ru makes Cu foil adhered to steel substrate b. inquiry: (1.) is there literal infringement? No (2.) does this perform same function in same way with same result? Yes- normally when yes, DOE is applied c. issue: should DOE be applied when something is disclosed but not claimed? d. court: no, no DOE. If something is specifically disclosed but not claimed, it is dedicated to the public. e. policy: whole point of DOE is for sneaky people who get around claims. Here, there was no sneakiness: J&J didn't claim. Don't want to allow people to get around claims, but still need to leave room to operate.

transocean offshore

a. technology in dispute: dual activity deep sea drilling apparatus b. Dis. Court: claims obvious as matter of law c. Fed. Cir. Secondary factors can overcome prima facie case of obviousness. In this case, many secondary factors present: (1.) commercial success (2.) industry praise (3.) copying (4.) industry skepticism (5.) licensing (6.) long felt but unsolved need (7.) unexpected results

warner jenkinson v. hilton davis chemical

a. technology in dispute: dye purification process. Booth prior art patent had same elements but could only purify at pH > 9. Warner claimed pH approx 6-9. Hilton later claimed pH 5. Warner sued for infringement - alleged 5 was approx 6 (1.) we don't know why patentee limited claim to pH 6-9. (2.) said that they tested successfully to pH 2, but provided no explanation for language b. SCOTUS: doctrine of equivalents limited by prosecution history: (1.) presumption: claim amendments made during prosecution were made to get around prior art (2.) presumption is rebuttable by evidence that the reason for the claim amendments was unrelated to patentability. If unrelated, will only apply DOE c. analysis: court noted tension between purpose of patent and desire to reward invention.

Motionless Keyboard v. Microsoft

a. technology in dispute: ergonomic keyboard designed to accommodate the architecture of the human hand. b. summary: (1.) Gambaro entered into business relationship with Coulter, then sought to obtain financial banking and demonstrated to potential investors and a friend, Ms. Roberts (2.) potential investors signed two yr NDA, Coulter and Roberts didn't sign NDA (3.) Gambaro also disclosed to Ms. Lanier to conduct typing test, she signed NDA, she was the only one to use keyboard with device attached to comp c. Issue: was the keyboard in public use? d. court: public use includes any public use of the claimed invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor. Here, all disclosures provided only a visual view: not in use for its intended purpose

Daiichi Sankyo v. Apotex

a. technology in dispute: method for treating bacterial ear infections b. District Court: PHOSITA would have a medical degree, experience and use of antibiotics - a pediatrician or general practitioner - the first line of defense in treating infections c. constructing a PHOSITA: factors: (1.) education level of the inventor (2.) type of problem encountered in the art (3.) prior art solutions to those problems (4.) rapidity with which innovations are made; (5.) sophistication of the technology; and (6.) educational level of active workers in the field d. Fed. Cir.: inventors were specialists in drug and ear treatments, not doctors

Parker v. Flook

a. technology in dispute: method for updating alarm limits for catalytic chemical conversion. Formula discovered and applied by measuring chemical temperatures constantly with computers. b. SCOTUS: this is not PSM: patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm. (1.) post-solution activity does not transform unpatentable principle into patentable process (reasoning also applied in Mayo) (2.) process itself - not merely the algorithm - must be new and useful. Process is unpatentable not just because it contains an algorithm, but because once that algorithm is assumed to be within the prior art, the application considered as a whole contains no patentable info. c. Analysis: Because the inventor is using standard refining principles to apply an algorithm, algorithm is assumed to be prior art. Nothing patentable is left after removing algorithm

Lucent Tech. v. Gateway

a. technology in dispute: method of entering info into fields on a computer screen without using keyboard (1.) Lucent accused Microsoft of indirect infringement based on latter's sell and use of Money, Outlook, and Window's mobile, which allowed for (a.) (2.) note: did not sue for direct infringement because the users were the direct infringers: actually did the method b. Microsoft argued that Microsoft office as a whole has non- infringing use; only if you use money, excel for financial purposes would it be infringing. Court rejects this: if it allowed this, people could just sell components with no non-infringing use as part of package to get around this c. contributory infringement - 271(c) (1.) direct infringement: yes, users were infringing (2.) sold component had material part of claimed invention - appellate court said it did: software was designed for this (3.) knowledge that combination for which components were especially made was both patented and infringing; - if you are Lucent, you should tell them about patent before suing them (4.) components have no substantial non-infringing use (non-staple article doctrine)

Perfect Web Tech v. InfoUSA

a. technology in dispute: method of managing bulk email distributions (spamming) b. basically what they invented was way to solve problem of receiving an "invalid email address" return email: solution was to send emails repeatedly to these addresses (1.) patent had 4 steps: steps (a)-(c) were previously known in the art of email marketing: how to send spam (2.) step (d) was inventive step: called for repeating steps (a)-(c) c. Rule: PHOSITA is not an automaton: step d is common sense. Common sense can inform an obviousness analysis d. clarified standard: a reason, suggestion, or motivation to combine references (find obvious) may be found explicitly or implicitly: (1.) in the prior art reference themselves; (2.) in the knowledge of the PHOSITA that certain references, or disclosures in those references, are of special interest or importance in the field; (3.) from the nature of the problem to be solved (4.) market forces; (5.) design incentives (6.) any known problem in the filed of endeavor at the time of the invention and addressed by the patent; (7.) background knowledge, creativity, and common sense of the PHOSITA

Diamond v. Diehr

a. technology in dispute: method of operating rubber molding press. Computer controls mold temp and activates the opening of the mold after a calculated interval for proper cure time. b. SCOTUS: rules differently than it does in Flook. Here, patent doesn't seek to pre-empt the use of the equation. Patentees seek only to foreclose others from using quation with all of other steps in claimed process. If computer lessens the possibility of over- or undercuring, the process as a whole does not become unpatentable subject matter. (1.) emphasizes that claims must be considered as a whole (2.) focus on post-calculation activity: Flook doesn't seem to want us to consider this. (3.) Could argue that by not granting Flook patent on efficient alarm limit calculations, court increased public safety. Here, patent on rubbing curing wouldn't have affected public safety.

In re Bilski

a. technology in dispute: method of reducing risk in commodity provider and purchaser exchange at historical average price. (Hedge fund.) Claiming: (1.) initiating a series of transactions wherein consumers purchase commodity at fixed rate based on historical averages (2.) IDing market participants for commodity (3.) initiating another series of transactions with second fixed rate such that series of transactions balances risk position of consumer transactions (1st buyers) b. Fed Circuit: patentable process must 1) be tied to machine or 2) transform an article to a specified different state. Transformation of legal obligations or other risks are not transformations of physical objects or representative of physical objects or substances. c. SCOTUS: upholds unpatentability, but undermines reasoning: (1.) No indication that existence of three well- established exceptions (laws of nature, physical phenomena, abstract ideas) gives Fed. Circuit carte blanche to impose other limitations (machine or transformation test) that are inconsistent with statutes purpose or design. (2.) justices agree that risk hedging is an abstract idea, cannot be patented. Claims are broad examples of how hedging can be used in energy market. Even less narrow than Flook's claims: at least his was directed toward signaling dangers in catalytic converter. (3.) Concerns about attempts to call any form of human activity a process and trying to patent it can be met by making sure claim meets requirements of 101. (4.) machine or transformation test still useful as an investigative tool, most likely correlates to PSM, but it is not the sole test for determining PSM.

CR Bard v. Advanced Cardiovascular

a. technology in dispute: patent on method of using stint (used in coronary procedures) that has perforations: inserting it partially but not fully into coronary artery. (1.) Advanced Cardio sells diffusion catheters. Bard held method patent, claimed 271(b) and (c) infringement. (doctor doing procedure would have been direct infringer) (2.) 3 uses for the catheter: (a.) use catheter and have side openings in aorta (b.) use catheter and have side openings in coronary artery → infringing use (c.) use catheter and have side openings in aorta and coronary artery b. issue: is this induced infringement to sell to doctors when there are 3 uses, but only one is patented? c. Court: no: there is substantial non-infringing use d. concern here: if Drs. Would have used the recommended method, which was the patented method, CR Bard could have sued them. The only drs that could use ideal method would need a license; procedure using ideal method would be more expensive because of this. Therefore, rich people would be getting the best medical care (1.) congress passed 35 USC 287(c)(1): says that 281, 283, 284, 285 don't apply to drs. Basically says that drs can still infringe, but patent holder has no remedy against them. (2.) congress took away remedies instead of saying that drs. Can't infringe because this way, can still go after induced infringers. Need a direct infringer in order to have induced infringement.

Gentry Gallery v. Berkline

a. technology in dispute: sectional sofa with pair of reclining seat sections built into it with console that accommodates the controls. (1.) Gentry's original claim: "a sectional sofa comprising a pair of reclining seats, a fixed console, and a pair of control means mounted directly on the console. (2.) filed CIP, amended claim: "a sectional sofa comprising a pair of reclining seats, a fixed console, and a pair of control means mounted on the double reclining sofa seat section." (3.) Berkline constructed reclining chairs separated by a center seat whose back cushion pivoted to form table (not console) - does this infringe? (4.) Gentry argues that amended claim doesn't mean mounted on fixed console. Looking at prosecution history, original claim was written so that it clearly denoted mounting controls on the console. b. Federal Circuit: Limits scope of claim to cover sofas in which the recliner control is located on the console. Affirmed that Berkline had not infringed. 4. Conclusions a. there is a separate written description req. necessary for PHOSITA to put invention in context, understand how it is implemented. b. can use prior prosecution history to interpret scope of claims

Atlas Powder v. IRECO

anticipation due to inherency is not defeated if something is inherently present in invention but not claimed a. technology in dispute: IRECO claimed explosive compounds "wherein the solid constituent comprises ammonium nitrate and in which sufficient aeration is entrapped to enhance sensitivity to a substantial degree. (1.) chemical elements overlapped those of Atlas's patents, but Atlas didn't claim aeration entrapment (2.) Atlas alleged that sufficient aeration was entrapped in its invention b. District Court: Atlas patents would "inevitably and inherently" have interstitial air and amount of air would be sufficient to enhance sensitivity. In order for there to be an explosion, fuel oxidizers must be present; therefore the fact that Atlas's invention works tells us that there must be sufficient aeration entrapped. c. Fed. Cir.: agrees with Dis. Court; anticipation due to inherency is not defeated by prior art patentee's insufficient understanding of its invention's inherent properties

Automotive Tech v. BMW

a. technology in dispute: side impact velocity-type crash sensor that will deploy even if side door is not directly hit. Claim language: "Means responsive to the motion of said mass upon acceleration of said housing in excess of a predetermined threshold value." b. District Court: construes claim to be means + function, which requires spec to sufficiently disclose corresponding structure. Here, electronic side impact sensor was not enabled. c. ATI arguments on appeal: (1.) DCt should have followed line of cases that hold enablement is satisfied when one mode of invention is enabled. (2.) Electronic sensors were widely known at time of filing, no need to describe them in detail d. Delphi Arguments on appeal: (1.) spec must include full scope of claims; need to enable both mech and elec. (2.) Spec only enabled mech; PHOSITA testified that it did not enable how to sense motion to properly output data, how to process data e. Federal Circuit: affirms invalidity (1.) two columns describe mech, only short para describes elec. (2.) Provides little detail concerning how it is built or operated. PHOSITA knowledge not enough to supplement spec 6. conclusions: a. test for enablement: whether PHOSITA can make and use claimed invention without undue experimentation, measured at time of filing b. full scope of claims must be enabled. Automotive Tech. b. What is undue Experimentation? See In re Wands factors, p. c. predictability of the art is a consideration. Cedar Rapids

Graham v. John Deere

a. technology in dispute: tractor with plow (1.) prior art: if it hit a rock, would break. (2.) other prior art: plow would bend up over the rock: had spring action (3.) this patent: same upper plate, but hinge moved from above plate to below it. b. issue: is it obvious to move hinge plate from under shank to above shank? c. Framework: (1.) Determine the scope and content of the prior art - is it analogous art? Requires that reference is either in the field of the applicant's endeavor or is reasonably pertinent to the problem (2.) ascertain the differences between the prior art and the claims at issue (3.) find the level of ordinary skill in the pertinent art (4.) determine the obviousness or nonobviousness of the subject matter (5.) in some situations, consider secondary indicia of nonobviousness such as commercial success, long felt but unsolved needs, failure of others, etc. - see scoggin d. Ruling: this would have been obvious to one skilled in the art. Also could have been a consideration that the hinge wasn't originally moved above the plate for the purpose of flexibility

Gaylor v. Wilder

a. technology in dispute: using plaster of Paris in construction of fire-proof chests. (1.) Conner made a safe using plaster of Paris between 1829-1832. (2.) Used safe until 1838, then passed it on to someone else. After he passed it on, he used others of a different construction. Not known what became of the safe afterwards b. rule: Known and used by others = accessible to public. Conner's safe was not. Fitzgerald is first inventor. (1.) private use of product by another with the product subsequently forgotten does not render later invention non-novel (2.) court uses subjective test: patentee believe himself to be first inventor, real first inventor didn't pursue patent rights: patentee's patent is valid.

US v. Adams

a. technology in dispute: wet battery: involved 2 electrodes, could add water and became battery. Advantages: lighter, could carry anywhere, cheap to ship b. summary: army and navy expressed doubt of invention's success and didn't use it. After Adams gets patent, they use it, he sues for infringement, they argue that this was obvious because prior batteries were already wet but shipped with liquid in them c. role of secondary indicia: (1.) unexpected: gov experts did not think it could work so well (2.) difficult to assess what a PHOSITA in 1938 would think in terms of obviousness: secondary indicia can be easier to apply (3.) here, we have nexus: success of use: military used them bc they were lightweight, could be shipped dry. Not because of inventor's marketing or distribution system

Moleculon Research Corp. v. CBS

a. timeline: (1.) summer 1957: Nichols conceives of 3D puzzle capable of rotational movement in 2x2x2 arrangement (2.) 1957-62: Nichols constructs several paper models of the puzzle that are seen by a few of his friends. (3.) 1968: Nichols constructs wooden model of his puzzle, which he sometimes brings to his office (4.) Jan 1969: Dr. Obermayer, the pres of Moleculon, views wooden model (5.) March 1969: Nichols assigns rights to Moleculon for share of profits from the puzzle's commercialization (6.) March 7, 1969-1972: Moleculon sends puzzle to 50- 60 toy makers with NDAs (7.) March 3, 1970: On behalf of Moleculon, Nichols applies for a patent on puzzle. Issued 4/11/72. b. Issue: is showing construct to Dr. Obermayer public use? c. Court: no, he retained control, this was personal relationship, didn't give out copies d. how to reconcile this and Beachcombers: Prof. doesn't know e. how to reconcile this and corset case: corset got out to public

Benefits and Costs of Patent System

a. with exclusivity comes risk of reduced output, excessively high prices, less access to patented product because someconsumers who value the good at competitive price will not buy it at supracompetitive price. Referred to as deadweight loss. b. Incentive to invent. "The Patent system added the fuel of interest to the fire of genius." - Abraham Lincoln c. incentive to disclose: prospect of property right will induce inventors to seek patent protection and thereby disclose their inventions in accordance with disclosure reqs. Without patent protection, inventors more likely to opt for trade secret protection. d. incentive to innovate: role of patents in inducing transformation of inventions into downstream, commercialized products.

In re Icon Health & Fitness

available prior art and the analogous art doctrine a. technology in dispute: treadmill with folding base, allowing base to swivel into upright storage position. Involves gas spring to assist in stably retaining the tread base in upright position (1.) Examiner combined Damark and Teague patents (2.) Damark discloses a folding treadmill but not the gas spring (3.) Teague discloses a gas spring in the context of a bed that folds into a cabinet or recess b. 103: art is analogous if: (1.) art is from same field of endeavor, regardless of problem addressed, or: (2.) art is not within the field of the inventor's endeavor but the reference is reasonably pertinent to the particular problem with which the inventor is involved. (a) reference is reasonably pertinent if, because of the matter with which it deals, logically would have commended itself to an inventor's attn in considering his problem. (b) here, spring uses the same mechanism as folding bed c. Court: this is obvious: spring use same mechanism as bed

Markman v. Westview Texas Digital

b. Markman v. Westview (1996): claim construction is a matter of law. focus on intrinsic evidence. de novo appellate review: notwithstanding trial court's proximity to experts Texas Digital: 2000-2002: heavy reliance on dictionaries to interpret claim language. Reversal rate skyrocketed.

Diamond v. Chakrabarty

bacterium with exogenous gene is patentable a. technology in dispute: genetically engineered oil-eating bacterium. Three types of claims: (1.) process for producing bacteria (2.) inoculum comprised of carrier material floating on water, and the new bacteria (3.) bacteria themselves b. court: arguments for patentability (1.) Congress intended broad statutory construction - left courts to define boundaries of patentable subject matter. "Anything under the sun that is made by man" is patentable. Only distinct limits are laws of nature, physical phenomena, abstract ideas (2.) "The patentee has produced a new bacterium with markedly different characteristics from any found in nature and one having the potential for significant utility." - this and Learned Hand opinion suggest that court weighs utility when unsure about whether it is patentable subject matter; utility part of the PSM inquiry?

Cedar Rapids v. Norberg

claims do not enable; specification enables a. technology in dispute: "A method to increase productivity of rock crushers by simultaneously increasing speed and throw" b. District Court: invalid; does not meet enablement req. Does not disclose values for increases to speed and throw for crushers of various sizes. Only values for 7 ft crusher disclosed c. Fed. Circuit: reversed: (1.) test for enablement: whether PHOSITA can make and use claimed invention without undue experimentation (2.) difference between predictable (mechanical) and unpredictable (chemical) arts. For predictable: broad claim can be enabled by disclosure of single embodiment. Disclosure need not provide optimum levels. (3.) here, PHOSITA could ascertain values for crushers of various sizes

Egbert v. Lippman

corset case: even private use may be considered public a. technology in dispute: corset (1.) problem: used to be made of steel wires or bone: could break when constricted very tight (2.) innovation: overlap 2 thin pieces of steel, put clasp on them so they can slide up and down. Gives flexibility and doesn't break b. issue: was it in public use before filing (back then, grace period was 2 years (1.) filed 1866 (2.) critical date 1864 c. what was the disputed public use? gave the corset to a friend, she didn't sign confidentiality agreement d. ruling: public use: she could have shown/ make the wires become known to anyone. This did happen (but didn't have to): at one point they open up corset to show someone the wires (1.) if you give someone something and don't maintain any control over it or try to maintain confidentiality: public (2.) why the low bar? With this bright line test, even if knowledge is only confined to one person: public. Avoids unpredictability over number of people e. To constitute the public use of an invention: (1.) not necessary that more than one of the patented articles should be publicly used (2.) does not depend on number of persons to whom the invention's use is known (3.) some inventions by their character are only capable of being used where they cannot be seen by the public eye (4.) enablement not part of public use test

Lowell v. Lewis

defining "useful" a. does not need to be more useful than prior art b. "useful" is used in statute in "contradistinction to mischievous or immoral" (1.) this principle has not been applied in recent years (2.) SCOTUS: Congress never intended that patent bars should displace the police powers of the state - powers by which health, good order, gen welfare are promoted c. let marketplace decide benefit

cuno engineering v. automatic devices

flash of creative genius test a. "I know it when I see it" b. 1952: created non-obviousness requirement, dispensed with this test

Festo Corp v. Shoketsu Kinzoku Kogyo Kabushiki:

foreseeability bar a. technology in dispute: improved magnetic rodless cylinder with rings with lips that block flow of air in each direction (1.) Festo's invention: there are seals with lips on 1 side, another set on the other side. Also sleeve made of certain material (2.) accused device uses single seal that is double lipped. Also sleeve made of same material. Amended. b. fed circuit: absolute bar: if you amend a claim element, no doctrine of equivalents available for that element. We don't care why you amended c. SCOTUS: rebutaable presumption of prosecution history estoppel. Court decides whether presumption is rebutted. (1.) will presume prosecution history estoppel if you amended your claim and the infringing amendment was not foreseeable (2.) if not foreseeable, DOE applies. (3.) examples: presumption applies: (a). intentional narrowing of claim to avoid prior art (b.) unexplained amendment (c.) rewriting a dependent claim into independent form, couple with cancellation of the original independent claim (yes - dependent claim is narrower) (4.) presumption does not apply: (a.) after arising technology: (ex: you made w/ cotton, someone else made w/ nylon) (b.) incidental amendment (ex: you corrected your grammar)

intervening reference

if someone in the field publishes sth that describes your new claims and if it is published before CIP priority date, new claims will be invalid.

Priority Rule: 102(g) (1952)

if there are 2 inventors that claim the same thing, B claims he invented before A's filing date a. The first inventor (A) to reduce to practice has priority unless another inventor (B) can prove: (1.) first conception (2.) reasonable diligence from before A's conception date to B's reduction to practice (3.) must also not abandon, suppress, or conceal from time of B's reduction to practice to B's filing of patent (4.) if these reqs are fulfilled, B's date of invention may carry back to date of conception if inventor was reasonably diligent and did not abandon, suppress, or conceal invention b. conception: the formation in the mind of the inventor of a definite idea of a complete and operative invention as it is thereafter reduced to prac. A PHOSITA could reduce to prac without undue experimentation c. reduction to practice (1.) actual: i.e. building a model, making a chemical drawing (2.) constructive: filing an enabling patent application d. reasonable diligence: (1.) valid excuses: (a.) need to develop a closely related invention to test primary invention (b.) serious illness (c.) lab burns down (2.) invalid excuses: (a.) extended vacation/ hiatus (b.) insufficient money or waiting for grant app. (c.) company relocates

Larami Corp v. Amron

importance of language in claim interpretation: sport gun case that turned on the meaning of word "therein." Super Soaker argues that their tank is not "therein" (arguably inside) but "thereon" (arguably on top of).

- What if a printed publication (or on sale event) does not in and of itself bar patentability under 102(b) - by disclosing all elements of the claimed invention - but renders it obvious to one skilled in the art?

inventor must apply within one year of not only §102(b) art but also non-obvious §103-defeating disclosure/events. b. in effect, this rule moves obviousness analysis up to 102(b) critical date

Global Tech Appliances v. SEB

is willful blindness enough to induce infringement under 271(b) a. Technology in dispute: SEB owns patent on deep fryer around world and in US. (1.) Global Tech bought competitor's deep frier, copied it in Hong Kong, ran a distribution company called Pentalpha who sold to brands like Sunbeam in the US (2.) Brands in US were directly infringing when they sold the device, but were Pentalpha/ Global Tech infringing when they sold the device to Sunbeam? (3.) before selling to Sunbeam, Global Tech asked atty whether device was infringing, did not tell him that they copied the device, atty issued opinion letter saying that fryer didn't infringe. b. issue: whether there was induced infringement under 271(b) (1.) comes down to question of whether they had knowledge that behavior was infringing (intent to infringe) (2.) is it enough to prove knowledge that they didn't tell their atty that they copied the machine? c. Fed. Cir.: in not telling atty they copied, Pentalpha deliberately disregarded a known risk that SEB had protective patent. This disregard is a form of actual knowledge d. SCOTUS: higher standard. Not just disregard risk, but must have subjective belief that patent existed, and they must take deliberate actions to avoid learning of that fact. If both of these are fulfilled, there will be willful blindness, which means knowledge requirement.

Mayo v Prometheus Labs

must be an inventive concept to ensure that patent amounts to more than law of nature in order to have PSM a. Technology in dispute: A method of administering drug by measuring level of metabolites in bloodstream and increasing or decreasing the dose according to numerical guidelines developed by patentee based on level of metabolites. b. Fed Circuit: loosely applied machine or transformation test and upheld patent. Because claims involved a physical transformation, they are patentable subject matter. c. SCOTUS: correlation between a naturally produced product and the drug's therapeutic effect was an unpatentable natural law. (1.) demanded the presence of an inventive concept sufficient to ensure that the patent amounts to significantly more than a patent on the natural law itself. (2.) here, no inventive concept beyond what occurs naturally. Steps described in patent consist of well- understood, routine, conventional activity already engaged in by the scientific community. (a.) This suggests that applications of newly discovered laws of nature are unpatentable if such application relies on elements already known in the art. (b.) seems to suggest that patentee must set forth law of nature's application in novel and nonobvious manner

two approaches to evaluating obviousness

product-function (focus on industry) and problem solving (fed circuit leans toward this)

In re Hall

publication available in library in Germany - sufficiently accessible

Parke-Davis v. HK Mulford

purified or isolated products of nature possessing utility can be patented, essentially bc Learned Hand said so a. technology in dispute: purified adrenaline removed from gland tissue. b. Learned Hand: isolated form is not exactly the same as the form found in nature; therefore it is patentable. Even if it weren't different from the form found in nature, there is no law saying that isolated products shouldn't be patentable. The inventor was the first to remove it from gland tissue, make it available commercially. It became "a new thing commercially and therapeutically." "That was good ground for a patent."

Rule 131 affadavit

swear that invention occurred at least as 1 day before prior art reference. Filing date will be invention date unless this occurs.

hotchkiss v. greenwood

taking design of wood and metal doorknob and making it out of porcelain instead to make doorknob weather-proof is not an inventive step

Arrow's information paradox

there is an inherent conflict between desire to disclose information to secure venture capital, arrange for manufacturing capabilities, or otherwise utilize their invention and the reticence to disclose information, desire to limit access and use to those whom the inventor authorizes.

Brenner v. Manson

utility not established by fact that there exists a chemical homologue that is useful a. technology in dispute: Brenner patented a process of making a steroid. Homologue of the steroid yielded by the patented process was demonstrated to have tumor-inhibiting effects in mice. Brenner hadn't shown that the molecule itself had this same utility. b. SCOTUS: specific and substantial utility must be shown. (1.) An invention that is only "useful" to study itself lacks §101 utility. (2.) A process that merely produces an intended product is not useful unless the product is useful. (3.) compensation is not for the search, but for the successful conclusion: a patent must be related to the world of commerce rather than to the realm of philosophy (4.) quid pro quo contemplated in patent clause of Const. is the benefit derived by the public from an invention of substantial utility. Until a process is refine to this point - where specific benefit exists in currently available form - there is insufficient justification to permit an application to monopolize

Griffith v. Kanamaru

waiting for grant money/ waiting for grad student not valid excuses for lack of reasonable diligence

102(a) AIA

§102(a): a person shall be entitled to patent unless: a. claimed invention was patented, described in printed pub, or in public use, on sale, or otherwise available to public before effective filing date, or b. was described in patent issued or published that names another inventor and was filed before filing date of claimed invention.

102(b)(c)(d) (1952)

§102(b)(c)(d): statutory bars: did you file in a timely period? If you or anyone makes your invention public, need to file w/in a year. (102(b) grace period)

102(b) AIA

§102(b): exceptions: (1.) disclosures made 1 year or less before the effective filing date of the claimed invention (1 year grace period) ONLY IF: (a) disclosure made by inventor prior to disclosure by third party (b) or if disclosure was made by inventor himself (2.) disclosures appearing in applications and patents obtained: (a.) from inventor (b.) publicly disclosed by inventor and then the one who published prior art got the info from inventor (c.) or prior art was by inventor