Patent Law-kylie
when does doctrine of equivalence apply?
1. Copying an invention by taking its "pith and marrow" without textual infringement of the patent is an old and familiar abuse which the law has never been powerless to prevent. If outside scope of claim, the proceed to DOE analysis
examples of indirect infringement?
induced infringement, contributory infringement.
types of damages?
lost profits and reasonable royalty
does the prior art anticipate a claim if the practice of prior art necessarily leads to invention?
yes. Schering Corp. v. Geneva Pharmaceuticals (2003): 1. If practice of prior art necessarily leads to invention then have anticipation by inherency
if the prior art is in a different language, can it still be anticipated?
yes: Titanium Metals Corp. of America v. Banner (1985): 1. Claims directed to a new titanium based alloy 2. Even though prior art was in Russian; it was still prior art.
What Are The Steps To Determine Obviousness?
1. Is it New? a) It is new, but is it NOT deserving of patent protection? (1) Trivial Advance b) Is it new and not enough of a leap forward? (1) Obviousness
what are the two requirements for the "on sale" for the statutory bar?
1. On Sale a) Two Requirements (1) product must be the subject of a commercial sale doctrine (a) assignment/license is not an offer to sell (b) open issue because the sale must be public because "otherwise available to the public language" (under AIA has been resolved to be a private sale) (2) the invention must be ready for patenting (a) reduced to practice (b) by proof that before the critical date the inventor had prepared drawings or other descriptions that were sufficiently specific to enable a POSITA to practice the invention
5 categories of prior art?
1. Patented claimed invention 2. anything otherwise available to public 3. public use 4. on sale 5. other patents
what are the 3 parts to a patent law claim? 3 types of transitional phrases?
1. Preamble 2. Transitional Phrase a) "Compromising" is the open phrase b) "Consisting of" is the closed phrase (1) Benefit of "consisting of" is that it may allow you to get around prior art. c) "Consisting essentially of" is the partially closed transition (1) if doesn't materially affect, then those additions will be allowed. Body of Claim
what is the length of time for a continuing patent application?
1. Publication of Pending Applications a) After AIA, patents are published after the expiration of 18 months from the earliest filing date to which they are entitled.
if a particularly injury was not reasonably foreseeable, can there be damages paid?
1. Rite-Hite Corp. v. Kelley Co. (1995): a) Reasonably foreseeable rule for infringing products that are not included in the patent. (1) If a particular injury was or should have been reasonably foreseeable by an infringing competitor in the relevant market, broadly defined, that injury is generally compensable absent a persuasive reason to the contrary. (a) "but for" Kelley's infringement Rite Hite would have sold more of their product (b) The lost sale was foreseeable by Kelley b) "Adequate to Compensate Infringement" (1) Rite Hate was able to show how the damage effected their sales c) "Entire Market Value Rule": requires that the unpatented component must function together with the patented component in some manner to produce a desired end.
what is required for reduction to practice?
1. Scott v. Finney (1994): The court reversed because the court of appeals used too high a standard for reduction to practice. Penile implant case, people don't need to actually test in order to work, there is enough evidence that this will work a) reduction to practice: must show works for intend purpose (1) if there is some credibility then it works for intended purpose
what is the Best Mode requirement and how did this change with the AIA?
1. The specification shall set out the best mode contemplated by the inventor joint inventor of carrying out their invention. 2. The specification must disclose the inventor's trade secrets for practicing the invention. 3. After AIA, a patent cannot be held invalid because inventor did not comply with best mode requirement.
what do you have to do to literally infringe?
1. To literally infringe, one must infringe EVERY limitation of the claims
what is the process for determining direct infringement?
A. Two Step Inquiry 1. The court determines the scope and meaning of the patent claims (Markman hearing) 2. The Properly construed claims are compared to the allegedly infringing device/method
when does DOE apply? what determines DOE?
Graver Tank v. Linde Air Product Co. II (1950): DOE applies if substantially the same function, functioning substantially the same way and substantially the same result. Exceptional case where SCOTUS rehears the case. a) DOE is a determination of fact one can be substituted for the other from expert testimony
presumption\
(1) Three Ways to Rebut Presumption for Patentee (a) Unforeseeable i) where alleged infringement is not foreseeable (1) look for key paradigm shifts (b) Merely Tangential (Unrelatedness) i) amending in one way that is related to justification (c) For Some other Reason
what is the holding of Genentech, INc. v. Novo Nordisk?
1. When there is no disclosure of any specific starting material or any of the condition under which a process can be carried out, then undue experimentation is required and the invention is not enabled.
what is the analogous arts exception to S103?
A. Analogous Arts Exception to § 103. 1. A POSITA in the art wouldn't understand how to make. a) ex// bomb wire cutting robot vs. robot lawnmower 2. Innovention Toys, LLC v. MGA Entertainment, Inc. (2011): Prior art that is not within the field of endeavor of a claimed design's inventor is nevertheless "analogous art" for obviousness purposes, if the prior art is reasonably pertinent to the particular problem with which the inventor is involved.
what is Contributory Infringement?
A. Contributory Infringement: supplying components/device that has no substantial non-infringing use. Must be aware of patent, but don't have to instruct and assumed that will infringe because no other way to use the device other than to infringe
who has the burden of proving why a patent is invalid under 102 and 103?
A. Patent examiner has first burden of coming forward with why patent is invalid under § 102 and § 103
patent law claims must be how many sentences?
Claims must be only one sentence.
what is a certificate of correction?
Certificates of Correction: A petition may be filed to request correction of minor grammatical or spelling errors or names of an inventor. Mistakes by the USPTO will be corrected free of charge
Modern claim interpretation requires the claims to particularly point out and distinctly claim the invention without reading in what?
Ex Parte Fressola (1993): Omnibus claims are those that refer back to the written description. Omnibus claims are not allowed in the United States because the claim must stand on its own. Modern claim interpretation requires the claims to particularly point out and distinctly claim the invention without reading in limitation from the specifications.
why was Funk different form Chakrabatry?
Funk is different from Chakrabarty because even though the species in Funk would never be found in nature together; how the species were behaving was how the species would naturally behave.
The Dedication Doctrine
If disclose a specific embodiment and don't claim it, that patent can't recapture. Disclosed and unclaimed subject matter in the patent claims can't be claimed under DOE. Idea that you can't claim narrowly and disclose broadly, because this would create strategy problems
can you claim deceitful inventions as useful?
No. Can't claim deceitful inventions as useful, but no moral standpoint for utility. example: a black stain to make something look more valuable than it is deceitful and you can't get a patent for it.
what is a reissue?
Reissue: allows applicants to correct more substantial errors affecting the validity, enforceability, or scope of the claims of an issued patent.
what is a request for a continuing examination?
Request for Continued Examination: allows an application to obtain one additional review of an amendment by the same examiner with a minimum delay and paperwork a) Not new or continuation application.
under the pre-AIA, do secret uses compromise prior art?
Secret uses do not compromise prior art under pre-AIA §102(a)
what is Supplemental Examination?
Supplemental Examination: AIA established a new post-issuance administrative proceeding. The proceeding appears to be based upon a need to address conference over the legal doctrine of inequitable conduct. a) An applicant's obligation to proceed under good faith may be undermined. (this is often done for prior art that they forget to include when the patent is filed) --if there is an issue of patentability, then it is possible to do a reexamination
holding of pesto
Where an inventor narrows a claim through an amendment during patent prosecution, and the amendment is not made to make the claim patentable, the doctrine of equivalents may still be available to the inventor against infringers.
under pre-AIA, does the first to invent get the patent? what if it is secret use?
Woodcock v. Parker (1813): The first and original inventor gets patent. a) If two inventors are working then should give to the first Gillman v. Stern (1940): A secret use is not a "public use" and a secret inventor is not a "first inventor."
Pharmaceutical Resources, Inc. v. Roxane Labs., Inc.( a) 8 Factor Test to Determine Enablement
a) 8 Factor Test to Determine Enablement (1) the quantity of experimentation necessary (2) the amount of direction or guidance presented (3) the presence or absence of working examples (4) the nature of the invention (5) the state of the prior art (6) the relative skill of those in the art (7) the predictability or unpredictability of the art (8) the breadth of the claims a) when in unpredictable arts, enablement is more difficult to achieve (1) best way is to have tons of examples to show that the invention functions how you say it will function
what must a plainftiff show for a permanent injunction?
a) In order to get permanent injunction, a plaintiff must show (1) that it has suffered an irreparable injury (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury (3) considering the balance of hardships between the plaintiff and defendant, a remedy in equity is required (4) the public interest would not be dissolved by a permanent injunction
what is post grant review and what is the date associated with it?
a) Post Grant Review: provides a new procedure for challenging a patent during the first nine months after it has issued. Anyone other than the patent owner may commence a PGR as long as patent had an effective filing on or after March 16, 2013. --adversarial process in front of 3 admin judge panel who determine if party contesting validity of patent has met their burden --you can amend your claims during this process before judges make the decision
what is ensnarement?
a) Prior Art Limitations (1) Wilson Sporting Goods v. David Geoffrey & Associates (1990): Wilson sues (a) Wilson can't sue for infringement based on DOE because patentee could not have gotten patent for USPTO in the first place. (b) Patentee can't sue under DOE if could not have gotten patent because of prior art limitations (c) "Ensnarement" i) if expand claim to ensnare prior art then no DOE
what is prosecution history estoppel
a) Prosecution History Estoppel : A doctrine that precludes recapture under DOE of subject matter surrendered during the patent application process. Enables accused infringer to win on summary judgment. When language comes up short, allows for fairness
standard of intent for inequitable conduct
a) Standard for intent: the applicant knew of the reference, knew that it was material, and made an intentional decision to withhold it
standard for materiality
a) Standard for materiality: is but-for materiality except in cases of affirmative egregious misconduct, where such conduct is considered material.
for IPR or PGR, the USPTO is required to do what in what time frame?
a) USPTO is required to complete either PGR or IPR within one year of its commencement, with an extension of six moths possible for good cause shown. (18 months?)
big differences between reissue and reexamination?
reexamination can be filed by third party. reissue you cannot add new matter and broaden claims during course of reissue
can you patent a computer process?
yes. Diehr: "a process is not unpatentable simply because it contains a law of nature or mathematical formula" There was enough inventive steps to transform a computer implemented process for curing rubbing to become patent eligible.
What is the test we use to see if a concept is an inventive concept?
the Two Step Mayo/Alice Test i) Whether claims are judicially recognized exception ii) If yes, then ask whether the claims do more than simply describing these natural relations
can you patent life forms?
yes, if there is human ingenuity. Diamond, Commissioner of Patents and Trademarks v. Chakrabarty (1980): Chakrabarty discovered artificial oil eating bacteria. He claimed by 2 method claims and 1 bacterium claim. He modified organisms through genetics. Patent office had said ineligible subject matter, because it fell under the "three judicially recognized exceptions." The court found the bacterium to be patent eligible because there was human ingenuity.
is contribution to one claim enough to warrant co-inventors?
yes. 1. (2) Regarding even a single claim, a joint inventor enjoys a presumption of ownership of the entire patent. a) Contribution to one claim is enough to warrant co-inventors. (1) Regarding even one claim, a joint inventor enjoys presumption of ownership in the entire patent. ∆ had the right to license the entire patent. (2) ∆ presented enough evidence to show that he contributed to the the claims.
can drawings be adequate to provide a written description of invention?
yes. 1. Vas-Cath Inc. v. Mahurkar (1991): Drawings may be adequate to provide written descriptions of inventions a) Facts: original application included drawings of invention. The inventor was trying to claim priority for utility based on design patent. The court allowed. b) drawings may be adequate to provide the WD of invention - court must look solely to POSITA on the date of filing (not afterwards)
Three Judicially Recognized Exceptions to 101?
A. Three Judicially Recognized Exceptions 1. Laws of Nature 2. Physical Phenomena 3. Abstract Ideas
what must the inventor lay out for specification?
1. Inventor must lay out the "metes and bounds" a) the exclusionary right b) if the claims is ambiguous, then claims do not serve the notice function
what is the DAMP test?
(1) DAMP Test to determine lost profits from lost sales (a) demand for the patented product (b) absence of acceptable non-infringing substitute (c) manufacturing and marketing capability to exploit the demand (d) the amount of profit to be made by patent owner
(1) How to Not Create Prosecution History Estoppel as Patent Prosecutor
(1) How to Not Create Prosecution History Estoppel as Patent Prosecutor (a) call examiner (b) draft narrower claims
In Re Dillon rule?
(1) New Rule: A prima facie case of obviousness does not require both structural similarity and a suggestion in or expectation from the prior art that the claimed compound will have the same or a similar usefulness as the applicants" newly discovered compound. (a) Structural similarity alone will meet prima facie case of obviousness. i) Burden is then on the patentee to overcome the prima facie case. (1) The patentee can show new property over prior art to overcome obviousness.
what is the presumption in Festo and what are Three Ways to Rebut Presumption for Patentee?
(1) Presumption in Festo (a) Narrowing Amendment AND Reasons relating to patentability, then presume subject matter between original and amended claims has been presumed surrendered (1) Three Ways to Rebut Presumption for Patentee (a) Unforeseeable i) where alleged infringement is not foreseeable (1) look for key paradigm shifts (b) Merely Tangential (Unrelatedness) i) amending in one way that is related to justification (c) For Some other Reason
what did they find in City of Elizabeth v. American Nicholson Pavement Co. ?
(1) The court found the patent survived because the experimental use exception. Experimental use because Nicholson paid for the street and then inquired through questionnaires how the road was doing and then he modified (a) Facts: man used a specific type of patent and tested it in public.
what is the Graham test for obviousness? what are secondary considerations?
(1) ascertain the prior art; (2) differentiate the prior art and the claims; (3) ascertain the level of ordinary skill in the art; (4) take into account any secondary considerations of non-obviousness; and (5) in light of 1-4, determine if the claims are patentable. a) Secondary Considerations (1) Commercial Success (2) Long felt but unresolved need (3) failure of others
panduit test (same as DAMP test)
(1) demand for the patented product (a) If no demand, then wouldn't make profit (2) absence of acceptable non-infringing substitute (a) It is possible that didn't actually loose the sale (3) manufacturing and marketing capability to exploit the demand (a) must have ability to meet the demand of the market. If couldn't meet the demand, then would not have been able to make profits (4) the amount of profit to be made by patent owner
what is the enablement requirement? what id description is so vague?
1. 35 U.S.C. § 112(a): "the specification shall contain the manner and process of making the invention, 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 most nearly connected to make the invention." If the description is so vague and uncertain that no one call tell by independent experimentation, then the patent is void.
Patent Infringement and Intent
1. A defendant's intent is irrelevant to the outcome of an infringement inquiry. a) an individual who had not knowledge of the asserted patent or even of the entire patent system can be found to be an infringer. (1) ***Intent can be relevant to indirect infringement, but not direct infringement**
what did they find in Alice corp?
1. Alice Corp. Pty. Ltd v. CLS Bank International (2014): The court held the computerized trading is not patent eligible because the court should not "restrain abstract ideas that are building blocks of human ingenuity." The court found that the claims did not more than require generic computer to implement abstract idea which was not enough to transform invention in patent eligible subject matter. a) Stating an abstract idea and then just applying the idea is not enough to meet §101 threshold (1) Policy Reason: we don't want to wholly pre-empt an entire area. b) Mayo/Alice Test (1) Whether claim is judicially recognized exception. (2) If Yes, then if significantly more than described the natural relations (a) The search for inventive concept i) Does it transform it into "patent eligible application?"
An inventor may reduce his invention to practice in one of two ways -- what are they?
1. An inventor may reduce his invention to practice in one of two ways a) Constructive reduction: by filing a patent application b) Actual reduction: by building and testing a physical embodiment of the invention.
what is a reexamination?
1. Ex Parte Reexamination: the principal purpose of ex party reexamination is to provide third parties with an avenue for resolving validity disputes more quickly and less expensively than litigation.
the examiner of patent must read in what interpretation?
1. Examination of the Application: The examiner must read in the broadest reasonable interpretation a) Federal District courts have stated that the emphasis should be on the word "reasonable" not on broadest. (1) ex// if there is a definition within the specification, then go with that.
can patentees claim infringement on claims they limited during prosecution?
1. File Wrapper Estoppel/Prosecution History Estoppel: Patentee can't later claim infringement from the area that was disclaimed during prosecution During prosecution a patentee will limit their claims to overcome prior art, but then the patentee is stuck with this interpretation.
test for obviousness
1. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc. (2012): There must be nexus between claimed invention and non-obvious claim. If no nexus, then no secondary consideration Objective evidence may be sufficient to rebut a prima facie case of obviousness and establish that an invention appearing to have been obvious in light of the prior art, in fact, was not. 2. Secondary Considerations a) Prima Facie Case b) Objective Evidence c) Commercial Success (1) license for invention show commercial value d) Industry Practice and Expected Results e) Copying f) Industry Skepticism g) Licensing h) Long Felt by Unsolved Need (1) the deficiency was known for a long time
Transitional Program for Covered Business Method Patents
1. have been either sued for infringement or charged with infringement of a business method patent may petition the USPTO to commence such a proceeding. *Effectively a PGR proceeding that applies to all covered business method patents - not just ones issued under the first to file system. Provision will sunset on September 16, 2020. a) limited to patents that claim " a method or corresponding apparatus for performing data processing operations utilized in the practice, administration or management of a financial product or service, except that the term shall not include patents for technical inventions."
double patenting? test for application?
1. § 101: The Patent Office interprets this phrase to mean issuance of only a single patent per invention. a) Policy Reason: the inventor could extend the statutory period of exclusivity by filing a series of related patent applications covering the same invention. b) Test for Application: Whether the claims of the two patents cover the same thing. --the claims cannot be the same --whether patent claims are obvious in light of the claims in the other patent (can let you do a terminal disclaimer - owner says "I agree that first and second patent have the same owner and that the term of the second patent will extend beyond the term of the first patent") --you can file a terminal disclaimer at any time during prosecution or after
how can an inventor prove co-ownership?
A. Corroboration: when an inventor comes in and says "hey, I was a joint inventor" 1. § 256: Omitted co-inventor may be added if they prove their contribution by clear and convincing evidence a) There must corroborating evidence to committed co-inventor. ex// sketches
how should a court interpret claims when trying to interpret claims?
A. Courts can neither broaden or narrow the claims. The claims provide the concise formal definition of the invention/method 1. The court will use the claims, specification and file wrapper to interpret the claims in the viewpoint of the POSITA
when a patent is amended, can there be new matter added to the written description?
A. Does not allow for New Matter 1. A requirement not to let patents attorney or inventor stray from something they did not disclose. Did convey at time of filing that the you possessed that invention. 2. When an inventor amends the claims of an invention, they must be covered by the written description to NOT be considered new matter a) It ensures inventors can't amend their patent to include subsequent technical advances in previously filed application
elements of inequitable conduct
A. Elements of Inequitable Conduct (proved by clear and convincing evidence) 1. Can occur by omission or lie (affirmative action) a) If an omission, then must have specific intent to decieve 2. Intent a) negligence is NOT enough 3. Material a) "but for Materiality" B. Inequitable conduct (the intentional failure to disclose material information brings about the un-enforceability of the patent. 1. Inequitable conduct is an equitable defense to patent infringement that, when proven, bars enforcement of a patent
induced infringement requirements
A. Induced Infringement: active steps to show specifc intent of party to cause another to directly infringe 1. 35 U.S.C. § 271(b): Whoever actively induces infringement of a patent shall be liable as an infringer. a) ex// kits with instructions how to make 2. Global Tech Appliances, Inc. v. SEB SA (2011): In order to find induced infringement there must be knowledge. Can use willful blindness to show knowledge of the patents existence only. Facts: the deep fryer case. a) The required knowledge is same for 35 U.S.C. (b) and (c)
process of interpreting claim in patent
A. Phillips v. AWH Corporation (2005): "ordinary and plain meaning are going to be given to claim's terms." If look to intrinsic evidence and no ambiguity then don't need extrinsic evidence.The issue was the word baffles. The court determined that the term was narrow and that no infringement occurred. 1. We interpret in absence of intent to define terms in a novel way, the claims are going to be read in their ordinary and customary meaning. 2. The court MUST look to Intrinsic Evidence. To determine how POSITA would view a) Claims (1) Must begin here for claim construction (a) Read in view of the specification b) Specification (1) Claims are part of the fully integrated instrument (2) Claims are not limited to one example in the specification. (a) It is possible to have different looking item with exact claim limitations. Important to read the claims. c) Prosecution History (1) Prosecution history may be less helpful because the discussion between examiner and inventor may not be as clear as specification (a) in addition specification, "preserved in time" 3. The court MAY look to Extrinsic Evidence. "Extrinsic Evidence may be useful to the court, but it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." a) Expert testimony b) Dictionary/Treatise (1) May go here to show relevant technical terms or state of the arts.
What is quid pro quo?
A. The Quid Pro Quo for a patent is that the inventor discloses the invention and enables other to make the invention once the patent period is terminated. 1. Public doesn't benefit if there is no written disclosure 2. The patent must enable other skilled artisan to practice the disclosed invention once the patent expires.
doctrine pf patent exhaustion?
Under the patent-exhaustion doctrine, a patent holder cannot place a postsale reuse or resale restriction on an authorized sale of the patented item.
can you patent DNA?
Association for Molecular Pathology v. Myriad Genetics, Inc.(2013): Just doing something (isolating DNA) to naturally occurring DNA is not enough to be patent eligible, but the court found non-naturally occurring synthetic cDNA to be patent eligible a) SCOTUS goes specifically what is not covered (1) no method claims with regards to isolating DNA (2) no applications of new knowledge on the genes, BRCA1 and BRCA2 (3) patentability of DNA where the nucleotide sequence has been altered.
what is the indefiniteness equation?
Claim is valid so long that a POSITA would understand what is claimed when claim is read in light of the specification Safety alleges claim invalid because indefinite because there is an uncertainty of the dimension
what two important rules for indefiniteness?
Claim is valid so long that a POSITA would understand what is claimed when claim is read in light of the specification (Orthokinetics) A patent is invalid for indefiniteness if claim does not inform with reasonable certainty the scope of the invention at the time the patent was filed (Nautilus, Inc. v. Biosig Instruments, Inc.)
patent infringement and intent--when is intent relevant?
Patent Infringement and Intent 1. A defendant's intent is irrelevant to the outcome of an infringement inquiry. a) an individual who had not knowledge of the asserted patent or even of the entire patent system can be found to be an infringer. (1) ***Intent can be relevant to indirect infringement, but not direct infringement**
standard of proof of patent owner for infringement
Patent Owner must prove infringement by preponderance of the evidence.
Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts holding?
Publicly using an invention, even in secret, may bar patent protection under 35 U.S.C. §102(b). Facts: the process of metabolizing done in private, but metabolized part in public. Commercial exploitation earlier than Grace period so public use bar. (but specific language in AIA was designed to overturn this case) i) "otherwise available to the public"
what is the rule when it comes to inoperable claims and the chicken case?
Rule: It is permissible to have inoperable examples BUT the number of inoperative examples and nature of specification such that POSITA isn't forced to do undue experimentation to figure out which ones are operative
what is a continuing application?
The Patent Act allows inventors to file "continuing applications." A continued application is one that has been re-filed at the USPTO, commonly following the rejection of some claims. a) Allow the inventor to exert the period of examination at the USPTO
holding of Atlas Powder case with experimentation?
Some experimentation does not preclude enablement. The experimentation must not be unduly extensive. A patent claim may be enabled even where some experimentation may be required by one of ordinary skill in the art to make and use the invention, and where the claims embrace some inoperable products.
TSM test for obviousness?
TSM - teaching suggestion motivation test --examiners in the prior would have to show a teaching, suggestion, or motivation in order to make combination of elements from different prior art references when showing obviousness. This teaching, suggestion, or motivation can be found in the prior art, the nature of the problem, or the knowledge of the person with ordinary skill in the field.
test for novelty under the America Invents Act?
Test 1. Does the "reference qualify as prior art?" a) If no, then ignore the art b) If Yes, go to 2. 2. Does the prior art reference anticipate the claim? a) If no, then compile reference for 3. b) If yes, then claim does not satisfy § 102. 3. Does the complied prior art reference obviate the claim?
main finding of Mayo?
The court determined the claims are not patent eligible because the three extra steps are insufficient to transform the nature of the claim. The thiorupine commands are behaving in the body how they would naturally behave.
holding of Markman
The court, because of its training in complex issues and knowledge of written documents, is more competent to correctly, fairly, and uniformly make decisions relating to the interpretation of a term of art.
Pharmaceutical Resources, Inc. v. Roxane Labs., Inc.( a) general rule?
The written description of the claims made in a patent must not be overly broad and must contain a clear and concise written description of the invention as well as the exact method or process terms to enable any person skilled in the relevant art to make it and use it.
3 requirements for utility?
Three Requirements for Usefulness 1. Specific 2. Substantial 3. Credible -- a) If your client says that they have created a perpetual motion machine, you should probably go inspect it before filing patent application.
Where a single product is disclosed to one person, generally concealed from public view, does that constitute a public disclosure which would prevent the patenting of that product? what are the factors for the public use bar?
Yes. Evidence at trial showed that Barnes had been making and using the invention for more than two years prior to the filing date of the patent application, though the disclosure was limited to one person. (1) Factors (a) only 1 article necessary for prior use (b) inventor makes user confined to secrecy (c) whether invention can be seen or used in pubic
can an invention designed to attract customers be patentable?
Yes. Juicy Whip v. Orange Whip, Inc.(1999): The court found that an invention that was designed to attract customers was patentable. (Basically the only way you're not gonna meet utility is if it is trash)
what will the infringer always argue?
a) Infringer in infringement suit will always argue invalid patent or non-infringing. (1) Can also ask for declaratory judgment where no valid patent.
what is inter pares review, what is the standard and what is the date?
a) Inter Partes Review: An IPR can commence nine months after the patent has issued or after a PGR. ***Will IPR is broadest reasonable interpretation*** --adversarial process in front of 3 admin judge panel who determine if party contesting validity of patent has met their burden --you can amend your claims during this process before judges make the decision (1) The standard to institute an IPR is whether or not a reasonable chance that the party will prevail in their claim. (a) ***prior standard, inter partes reexamination, presenting a substantial new question of patentability. (2) The basis for requesting an IPR is restricted to patents or printed publication. For IPR you can only challenge for 102 and 103 (no 101 or 112)
what are the standards of review of extrinsic and intrinsic evidence?
a) Intrinsic Evidence - is reviewed de novo. the Court can decide as a matter of law b) Extrinsic Evidence - clearly erroneous standard of review
what is the standard to prove invalidity?
a) Microsoft Corp. v. i4i: standard to prove invalidity is clear and convincing (1) an attempt to change standard of proof for validity
what is the test for obviousness under KSR international?
a) New Test (1) Predictable results: the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results (2) Nonobvious combination: claimed subject matter may involve more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement (3) Obvious combination: reason to combine may be provided by (a) Interrelated teachings of multiple patents (b) Effect of demand known to design community or present in market place (c) Background knowledge possessed by a POSITA (d) Obvious to try (finite number of approaches possible) (e) Common sense
what its the all elements rule?
a) The "All Elements" Rule : The requirement that the doctrine of equivalents can only apply to an accused product or pieces that contains each limitation of a claim, either literally or equivocally. You need to have a substitute for the missing element, you cannot just have a missing element. Applies element by element within a claim.
what is the damages rule?
a) 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 interests and costs as fixed by the court.
obviousness: according to the modern standard, the patent is invalid if what? what are the factors they consider?
a) the difference between the subject mater sought to be patented and the prior art are such that the subject matter as a whole would have been obvious before the filing date of the claimed invention to a person having ordinary skill in the art. (a) Level of Skill in the Art i) educational level of the inventor; ii) type of problems encountered in the art; iii) prior art solution to those problems; iv) rapidity with which inventions re made; v) sophistication of the technology; vi) educational level of active workers in field.
what is the four corners of defense rule?
if the claimed invention can be found within the ambit of a single prior art reference, then the invention has been anticipated 1. Strassler v. Untied States: whether the reference contains within its four corners adequate directions for the practice of the patent claim invalidated.
is a contract manufacture agreement ?
no. a) The Medicines Co. v. Hospira: a contract manufacture agreement was not a genuine offer for sale