EAS 507 Exam 1

Association for Molecular Pathology v Myriad

Under 35 U.S.C.S. § 101, was a naturally occurring DNA segment patent eligible? No. naturally occurring DNA segment = product of nature and not patent eligible under 35 U.S.C.S. § 101 merely because it was isolated, but cDNA was patent eligible because it was not naturally occurring.

Vanda v West Ward

Vanda owned patent for medication, including dosing regimens; West-ward infringed on this patent with their dosing instructions for the same drug, and alleged that Vanda's patent was invalid because it attempted to patent a natural relationship. The court decided that Vanda's patent held up because it quantified specific doses and explained the significance of those doses.

Provisional Patent Application

a part of patent law that grants "provisional rights" to an inventor for up to one year, pending the filing of a complete and final application; NEVER issues into a patent

Patent Cooperation Treaty

allows an inventor to file a single international application and select countries to seek patent protection

Gottschalk v. Benson

cannot preempt others use of formula in software

In Re Hoffman

coolant dropped on cyclone not patentable bc not enabled to replicate this

In Re Cruciferous Sprout Litigation

court of appeals held that it rejected the patent owner's proposed claim construction for the phrases "rich in glucosinolates" and "high in Phase 2 enzyme-inducing potential" - naturally occurring phenomenon in vegetables

Automotive Technology v BMW

didn't show how airbag/acceleration sensor would work, too vague; district court finally considered and rejected ATI's argument that the claims are enabled because one embodiment or mode of practicing the invention, viz., a mechanical means is enabled.

secret use for trade secret does/does not count as prior art

does not - it is not public

assignment

The act of transferring to another all or part of one's rights arising under a contract.

Reasons for continuation application

after final rejection from USPTO; when some claims allowed but others rejected; add new claims not previously included

patent protection begins:

on date patent issues

Effective Filing Date

(1) the filing date of the 1st US or PCT patent application OR (2) the earlier filing date of a non-US application ONLY IF the applicant then files in the US within 1 year of that earlier date

America Invents Act

Act that gave patent rights to the first inventor to file, not the first to invent

Bayh-Dole Act

Allows for the transfer of exclusive control over many government funded inventions to universities and businesses operating with federal contracts for the purpose of further development and commercialization.

What must an invention be to be patentable?

An invention must be novel, useful, and not obvious in light of current technology

Design Patent Infringement

Applies patent design for purpose of sale or Sells or exposes for sale any article to which design has been applied (sales not required for utility infringe)

Athena v Mayo

Athena wanted to patent diagnostic technique, uses non natural chemical; Mayo said its standard tech; Court agrees with mayo, even tho uses chemical, method not new itself

Marco Guldenaar Holding

Claims directed to the abstract idea of rules for playing a dice game are not transformed into patent eligible subject matter by the addition of printed matter.

Egbert v. Lippman

Egbert let 11 years go by before filing patent → public use, given to many friends; Lippman argues it was public use for years; He waited too long → court agrees

Shop Right Doctrine

Gives the employer a nonexclusive, royalty-free license to use the employee's invention if it was created on company time and through the use of company facilities

Maria publishes paper that discusses invention in detail → then bill files patent app When is maria's publication prior art and when is it not?

If she published prior art independently = prior art; If it was bill's idea & then she published he's ok as long as file w/i 1 year of disclosing

Patentable? (Y/N) Method for detecting paternal DNA

NOT PATENTABLE Fit into category? Yes, process Judicial exception? Yes, naturally occurring All they're doing is detecting naturally occurring thing

Direct Patent Infringement

The making, use, or sale of any patented invention in the jurisdiction where it is patented during the term of the patent.

2 steps to determine if you can get a utility patent

1. "Eligibility" - does it fit into one of four statutory categories? 2. "Patentability" - if eligible is it also new and useful ?

Patent Eligibility Test (3 steps)

1. Does it fit into statutory category? 2. If yes, is it ineligible as judicial exclusion? 3. If yes, is it allowable anyway? Inventive step New and useful Improvement in technology Wouldn't preempt others Transforms data/thing for physical result/change

thing is invented when 2 things occur:

1. conception 2. reduction to practice

Patent protection ends:

20 years after filing date of first non provisional application

Brenner v. Manson

Chemical process for steroid; Manson applied for patent stating steroid could further cancer research; US supreme court found it too vague, no patent granted; Needs to yield a product with specific benefit to public

Alice Corp. v. CLS Bank

Computerized escrow Is there any inventive concept beyond the abstract idea that could transform the nature of the claim? No, abstract concept and use of software to implement long used business method After this case 80% of business methods rejected

Aro v convertible top

Convertible top patented a combination of parts. When one of the parts needed replacement, aro sold the replacement. Ruling was this was not infringement because the patent was for a combo of parts, not the individual replacement part

City of Elizabeth V American Nicholson Pavement

Does the placing of an invention into public use for the purpose of experimentation and testing its qualities create a bar to patentability?; In favor of Nicholson - NO Thorough testing of pavement can only be done by public use; argued it was experimental, not actual public use; didn't sell/license invention; public use exception

Issue if child application filed after parent?

EFD of child - date of parent if child filed before parent issues Otherwise prior art!! If child app filed after parent

Microsoft v Enfish

Enfish received patent for a logical model of a computer database. Microsoft infringed; Enfish sued; Microsoft said that software patents were ineligible. Courts ruled in Enfish's favor because the patent was for a specific improvement to computers rather than a patent for an abstract idea applied using a computer (software).

TRUE/FALSE - Patent gives owner exclusive right to make and use own invention

FALSE - a patent gives you the right to make sure other people can't; Patents are exclusionary; You can't use your own invention if national security is implicated - don't have an absolute right to use own invention

Patent as a deed of property

Infringing is like trespassing onto patent owners property; Patent is the fence that excludes others from trespassing on the owned land

Bilski v. Kappos

Kappos created method for calculating fixed energy bill contract for use by energy companies Supreme court said eligible - concept of hedging = unpatentable, abstract idea, would preempt use of hedging

Impression v Lexmark

Lexmark producer of printer toner cartridges, Impression Products reselling Lexmark cartridges after they had been sold. Reaches Supreme Court ruling was based on the exhaustion doctrine - when a patentee sells a product, they exhaust their patent rights on that item (i.e., used car dealership, company that made engine has a patent on it can't come after the dealership for patent infringement)

Patentable? (Y/N) Garage door opener that uses Wifi instead of wires

NOT PATENTABLE Fit into category? Yes, machine Judicial exception? Yes, wifi = abstract Anything inventive? No, nothing bc it does the same things as wires Even though wifi may be seen as improving, not inventive

Patentable? (Y/N) Isolating and removing malicious code from email

PATENTABLE Fit into category? Yes, process Judicial exception? No, just like microsoft/enfish, changing physical computer

Wilson Sporting Goods v David Geoffrey

Plaintiff and defendant manufactured and sold golf balls. Plaintiff had a patent on its dimple design. Plaintiff sued defendant for infringement, alleging that its golf balls infringed on plaintiff's patent. The magistrate judge entered judgment for plaintiff after a jury found plaintiff's patent valid and that defendant willfully infringed the patent.

35 USC 101 - Utility requirements

Process, Machine, Manufacture, Composition of Matter

Mayo Collaborative Services v. Prometheus Laboratories, Inc.

Prometheus patent is for a well known diagnostic step - just making observations of natural phenomenon, reaction to a drug; Can't preempt others in med field from using this treatment; No specific machinery attached and no transformation of data - NOT PATENTABLE

The EFD could be 1 of 4 things:

Provisional application filing date; PCT filing date (international application); Foreign application filing date; Non-provisional US Filing date (if this is the first application filed)

Diamond v. Chakrabarty

Ruled that a man-made life form (genetic engineering) could be patented.

Samsung v Apple

Samsung infringed on Apple, ordered to pay 300M damages; Samsung appealed and argued damages should be fraction of profits due to infringed patents rather than the whole; held in favor of samsung

Stratoflex v Aeroquip

Stratoflex tubing is alleged to contain all elements of Aeroquip's product claims and, hence, to infringe; only non-obvious difference between the claims in suit and the prior art is the process described as the "salt and pepper" mix concept of producing tubing; non obvious and createes different product; Ruled in favor of Stratoflex

3 Types of IP

Tangible Real Property Tangible Personal Property Intangible Intellectual property

Enablement

a detailed written description & drawings sufficient to enable a person of ordinary skill in the art to make and use the invention without undue experimentation

Certiorari

a writ or order by which a higher court reviews a decision of a lower court

Non-Provisional Patent

full patent application from which patent might issue

Freedom to Operate

hiring atty to provide opinion that identifies and analyses patents of others that may subject you to infringement liability - never perfect just like prior art searches

2 types of Indirect Patent Infringement

inducing (another to infringe) and contributory (offer/sells component as part of larger product)

Companies cannot be _ they can be _ or _ though

inventors; owner or applicant

Judicial exceptions

law of nature, natural phenomena, abstract ideas

Two types of direct patent infringement

literal - identical elements nonliteral - doctrine of equivalents

Patents can expire before 20 years if: _ or _

maintenance fees not paid or patent invalidated by a court

Possession of IP comes from _ or _

making the invention or filing a patent that is enabling

Helsinn Healthcare v Teva

secret sales - 2 years before filing Helsinn signed license agreement for drug Aloxi but only if approved by FDA; Announced deal without disclosure of molecule; Teva sued to invalidate patent saying license agreement was a sale - even though a pre-sale; Supreme court agreed with Teva → any sale (even pre-sale under NDA) counts against inventor if doesn't file patent app within a year

experimental use implies

that product/process is not yet ready for patenting

patent pending

the status of an invention between the time a patent application has been filed and when it is issued or rejected

Doctrine of Equivalents

under this, a device or method can infringe on a patent if it is substantially equivalent to the patented device or method

3 Types of Patents

utility, design, plant

3 types of ownership by agreement

implied uncertain or express