Patents Outline - Santa Clara Law



Patents Outline

Validity – A valid patent must claim subject matter that…

• (is) Patentable Subject Matter (§101)

o Process Claims – Tests: F-W-A test for algorithm PSM, Useful-Concrete-Tangible Results for methods ( Machine-or-Transformation for methods

• (has) Utility (§ 101)

o Operability – works for claimed purpose

o Beneficial Utility – produces some social benefit

o Practical Utility – presently useful, not vague or meaningless

• (meets) Disclosure and Enablement Requirements (§ 112):

o Enablement: PHOSITA can make & use, Spec ( claim w/o undue experimentation?

o Written Description: PHOSITA is convinced of patentee’s possession upon reading

o Definiteness: PHOSITA knows what is claimed (w/in 4 corners of spec and own knowledge)

o Best Mode: PHOSITA enabled to practice best mode of invention

• (meets requirements of) Novelty (§ 102)

o § 102(a), (e), (f), (g)

• (is not barred by prior art) Statutory Bar (§ 102)

o § 102(b), (c), (d)

• (meets requirements of) Obviousness (§ 103)

Infringement

• Types: § 271

o Direct infringement – § 271(a)

▪ Make, use, offer to sell, sell with US or import

o Secondary liability

▪ Inducement – § 271(b)

▪ Contributory infringement – § 271(c)

o Territorial liability

▪ Export infringement – § 271(f)

▪ Import infringement – § 271(g)

• (1) Claim construction – Interpretation of claims

• (2) Comparing element-by-element of each claim to accused device

o Literal infringement, or

o Doctrine of Equivalents (DOE) & possible bar by Prosecution History Estoppel (PHE)

Defenses

• Patent has presumption of validity:

o “Clear and convincing” evidence required

• Validity

o Exhaustion Doctrine, Repair (not reconstruction)

• Inequitable Conduct

o Failure to disclose material info (non-cumulative, relevant PAR; litigation & legal proceedings)

▪ Rule 56 Duty to Disclose (patent agent, attorney, paralegal, inventor, party involved—all levels of management aware of prosecution proceedings)

o w/ intent to deceive (must be greater than gross negligence, requires conduct + intent)

Remedies

• Injunctions: Permanent and Preliminary

• Money Damages

o Royalties

o Lost profits

▪ Treble damages to deter willful infringement

I. Introduction

Patent Bargain:

• Inventor gets:

o Limited monopoly (20 years from date of initial patent application)

o Exclusive rights for a limited time (right to exclude others from making, using, offering for sale, selling)

• Society gets:

o Innovation ( Progress of useful arts

o Discoveries

o Disclosure (of invention to public)

• Result: paper document ( patent

Types of Patents

• Utility – PSM defined in 35 U.S.C. § 101

• Design – subject matter defined in 35 U.S.C. § 171

o Only last 14 years from date of grant

o Protection afforded limited to ornamental features, cannot encompass primarily functional features

• Provisional—early draft

o Does not convey same rights as final patent

o Acts as placeholder for priority date

• Plant – subject matter defined in 35 U.S.C. § 161

Claims

• Claim = single-sentence definition of the scope of patent owner’s property right

o Gives meets and boundaries of the patent, circumscribes the invention

• Parts:

o Preamble – introduces & identifies the basic nature of the invention

o Transition – defines claim’s breadth

▪ Open claim – “comprising”

• Product will infringe even with presence of additional elements

▪ Closed claim – “consisting of” (more narrow than ↑)

• No infringement if additional elements exist

▪ In-between – “consisting essentially of”

• Additional elements prevent infringement only if they make product “essentially different”: fundamental additions fall outside scope of claim

o Body – most important part

▪ Two functions: (1) Lists all elements of invention, including limitations and (2) Describes their interaction

• Types:

o Independent Claim – typically start w/ this, no limitations—broader in scope

o Dependent Claim – builds on elements set forth by independent claim, adds more limitations / elements

▪ More likely to be allowed b/c more specific ( more likely to get around prior art

o Jepson – explicitly stated as improvement upon existing claim, “wherein improvement comprises”

o Markush – used for chem. & biotech inventions, “Markush groups” claim class of chemical compounds in terms of structural formula ( “composition C2H5-R where R comes from X, Y, or Z”

• Strategies in claim drafting:

o (1) Make as broad as possible ( carve out large scope

o (2) Avoid infringing prior art ( narrow scope to avoid prior art

o Easiest way to broaden is to take elements away and remove reference to specific elements

A valid patent must claim subject matter that is (Administrative Process):

o Within one of the statutory categories (§101) ( PSM

o Useful (§101)

o Adequately disclosed and precisely claimed (§112)

o Novel (§102)

o Not barred by prior art (§102)

o Nonobvious over the prior art (§103)

Enforcement of a patent requires (Judicial Process):

o Valid patent

o Patent is infringed, either literally or by Doctrine of Equivalents

o Patent rights enforceable, i.e. not lost by Inequitable Conduct (during prosecution or due to misleading behavior or delay)

o …Entitling the patentee to an injunction or monetary damages

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Globalization

• Patent rights are territorial and national in nature ( domestic right

1) Procedural harmonization

a. Paris Convention – created a system of mutual respect regarding priority dates

b. PCT – Patent Cooperation Treaty

i. Treaty that allows a single international application to be filed to establish priority date

ii. Can specify at which stage (international v. national phase) at which inventor wants application to be examined

1. Expense can vary depending on choice

iii. ~100 participant countries worldwide

c. EPC – European Patent Convention

i. Offers EP app that can be submitted to EPC, single office does prior art search, once prosecution complete, patent is valid in all EPC member countries

ii. Only 36 European countries participate

2) Substantive harmonization

a. Trade Related Aspects of Intellectual Property (TRIPs) = side agreement to the WTO

b. When US agreed to TRIPS, changes to US patent system made:

i. Provisional application introduced

ii. 18 mo publication of application

iii. Duration of patent = 20 yrs from filing versus older standard – 17 yrs from issue

1. ( takes away incentives to delay prosecution process

2. May be extended in 2 ways: (1) FDA delays or (2) PTO delays

II. PATENTABLE SUBJECT MATTER (PSM) – § 101

a. § 101 requirements are a threshold to patentability

b. Four statutory categories of PSM (set forth by In re Nujiten):

1) Process (or method) = series of steps to carry out a given task

a. Method of making stuffed-crust pizza or Amazon’s “one-click” ordering system

2) Machine (or apparatus) = a concrete thing, consisting of parts, or of certain devices and combination of devices

a. Internal combustion engine

3) Manufacture = “catch-all” category for man-made subject matter w/o moving parts ( having been encoded, generated, and transmitted by artificial means

a. Insulating sleeve for hot drinks

4) Composition of matter = “all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids” Chakrabarty

a. Chemical compositions or mixtures of substances such as metallic alloys

c. Whether a claim is drawn to PSM is a question of law, standard of review = de novo

What is PSM according to case law in…

a. Biosciences

i. Chakrabarty – Invention: man-made oil-eating bacteria created in lab

1. SCOTUS:

a. NOT PSM: “Manifestations of nature”:

i. Laws of nature,

ii. Natural and physical phenomena,

iii. Abstract ideas

iv. Products of nature

b. PSM:

i. Products of human ingenuity, even if living (not merely discovered);

ii. Non-naturally occurring “products of nature” ( made by man;

iii. Living things, found in nature, if only occurs

ii. Funk Brothers (1948) – Invention: Combination of different strains of existing bacteria

1. SCOTUS: Elements each exist in nature w/o human interaction

a. NOT PSM: Mere discovery, non-”inventions”

b. PSM: Non-obvious innovations

2. SCOTUS favors invention ( requires discovery + something extra (creative process, inventiveness) to put it across the line into PSM (here, mere mixing ≠ creation)

iii. Parke-Davis (1912) – Invention: Purified adrenaline in an “isolated and concentrated form” (isolated and concentrated not covered by prior art)

1. SCOTUS: Purified adrenaline = new product, had never been seen in this form b4

a. PSM:

i. Naturally-occurring substance, when “purified and/or isolated” ( completely new product;

ii. “New thing chemically & therapeutically”

b. Plants

a. Dissent of Chakrabarty: we should not allow for patenting of living things b/c we have these other protections:

b. Plant Patent Act (PPA) of 1930 ( protects plants

i. Covers asexually reproducible plants

ii. Single claim

iii. Closer to copyright protection: (1) Easier to get and (2) Limited protection

1. Individual creation is defense

iv. Scaled down enablement and written description requirement

c. Plant Variety Protection Act (PVPA) of 1970 ( plant variety certification

i. Covers sexually reproducible plants

ii. Product of international agreement (no reference to Patent Act)

iii. Scaled down enablement and written description requirement

iv. Administered by Department of Agriculture

v. Experimentation is excused from infringement

c. Software

a. Issue: Idea v. Algorithm—where to draw the line?

i. NOT PSM: Ideas and abstractions (including unapplied mathematical algorithms)

ii. PSM: Algorithm = steps to implement and apply an idea, maybe PART of a method or process patent

b. Trend: Patentability of software being questioned

c. Benson (1972) – Invention: Method for converting binary-coded decimal numerals into pure binary

i. SCOTUS: shoots down Machine-or-transformation test as the ONLY test for method patent PSM

ii. Freeman-Walter-Abele Test for algorithms: Method claim is NOT PSM when

1. Claim states a mathematical algorithm, and

2. Grant of patent would “wholly preempt” use of the algorithm by another party (party would be infringing patent if they used the algorithm)

iii. Followed by Parker v. Flook (1978) – Method of calculating alarm limit is NOT PSM b/c too disembodied, abstract (not tied to physical object, foreshadows M-o-T test)

d. Diamond v. Diehr (1981) – Invention: method of curing rubber ( tangible (procedure)

i. SCOTUS: Software is PSM b/c process results in physical transformation of an article to a different state or thing

ii. Doctrine of Magic Words: trend towards drafting patents to get around § 101 limitations ( emphasize transformation (make it sound as much like a physical change as possible)

1. Start w/ something that sounds like Benson and tie it to something physically tangible (computer machine)

2. Fewer method claims, more machine and system claims

e. In re Beauregard (Fed. Cir. 1995) – manufacture claim for “software contained on a floppy disk” (or other tangible medium) held valid (problem: downloading)

f. State Street Bank & Trust Co. v. Signature Financial Group (Fed. Cir. 1998)

i. Invention: hub & spoke financial system to monitor & record financial info flow

ii. Claim: “data processing system” ( system (machine) claim

1. Strategy—phrasing tied to a physical machine, makes it sound more like a process

2. Even though there is a computer mentioned, it is still basically claiming a method b/c the computer is used to carry out the specific method

iii. § 112, ¶ 6 – Means + function ( “means for”

1. Machine claim ( Where the structures necessary to carry out (means) the function are described in the written specification

2. Method claim ( Where the structures required (means) to carry out the function are NOT disclosed

iv. SCOTUS: Practical utility (usefulness) is the most important aspect in patentability

v. Useful-Concrete-Tangible Test for Method Claim PSM (from Alappat)

1. Transformation of data is patentable if it results in a “useful, concrete & tangible result” (All 3 requirements must be met)

2. Useful – Produces something that has utility, easy standard to meet—must be useful to SOMEONE

3. Concrete – End product of method can be data, but impact on data must be clear ( #s as a result are sufficient

4. Tangible – Takes transformation out of the requirement ( no longer need a physical transformation as long as the end result is tangible

vi. ( Opened the floodgates to patenting of business methods

d. Business Methods

a. State Street Bank & Trust Co. v. Signature Financial Group (Fed. Cir. 1998)

i. Lower courts typically frown on patenting these, but UCT requirements from State Street met

ii. Long established principle that business methods are not PSM rejected – business methods claims to be treated like any other method claims

b. Congress reacts: enacts 35 U.S.C. § 273(b): Defense to infringement exists if:

i. In good faith,

1. Applicant reduced to practice at least one year before effective filing date, &

2. Commercially used subject matter before effective filing date

ii. ( infringement defense

iii. No prior invention required!

c. In re Bilski (2009)

i. Claimed invention: “method of hedging risk in the field of commodities trading”

ii. Issue: Are applicants seeking to claim a “fundamental principle” (abstract idea = not PSM) or a mental process

iii. SCOTUS gets rid of useful, concrete & tangible results” test and FWA

iv. ( New Standard for PSM in process claims:

1. Machine or Transformation Test – Claimed invention must be tied to physical machine or significant transformation of data from one form to another to be PSM by § 101

2. Only other uses involving same machine will infringe

3. Standard represents the boundary btw unpatentable abstract ideas (and mental processes) and the patentable application of these ideas

4. Not the ONLY test for business methods

v. Three types of “Transformation”:

1. Physical objects ( PSM

2. Signals/data that represents physical objects ( on the fence, borderline and debatable

3. Abstract concepts ( NOT PSM

vi. Limitations:

1. Cannot constitute mere insignificant post-solution activity ( cannot just add an additional step to the end of an already patented process and patent as something new

2. Must impose a meaningful limitation on the claim scope

|Objections to patenting BMs |Benefits to patenting BMs |

|Mental processes/personal interactions should not be patentable |Innovation incentive |

|§ 102 / § 103 – prior art and obvious to combine ( already in use already! Duh, |“Real ingenuity” and improvements encouraged |

|it’s useful |Disclosure of possibilities to the public ( catalogue |

|Embody unpatentable “abstract ideas” |Signaling purposes |

|Foreclose the possibility of patenting anything else around it b/c so abstract ( | |

|unclear what is claimed | |

|Scope of exclusion is too broad | |

|Language / expression of business methods make them hard to examine | |

III. Utility

o Utility = issue of statutory interpretation ( issue of law reviewed de novo

o BUT – In re Fisher – whether an application discloses a utility is a question of fact

o Statutory basis:

▪ § 101 – “…or any new and useful improvement thereof…”

▪ § 112 – “…manner and process of making and using it…”

• Credible Utility / Operability – claimed invention has to work as claimed for its intended purpose

o Outlier examples:

▪ Things that defy common sense (time machine or perpetual motion machine)

▪ Method to cure baldness ( only credible if it works

o 3 steps PTO uses to assess/challenge utility: (1) Application given presumption of operability, (2) PTO can rebut based on evidence PHOSITA would doubt operability, (3) Applicant can rebut PTO’s evidence

o Policy: do not want to waste PTO’s time—ends must justify means—and protect society against fraud (expectation that what they read from the patent will work)

• Beneficial (Moral) Utility – must produce some social benefit or use

o Lowell v. Lewis (1817) – Invention has a practical use that is not frivolous or injurious to society

▪ No requirement for improvement over prior invention

▪ Very permissive standard—PTO does not judge invention’s quality or marketability (if not useful, it will go away on its own)

o Juicy Whip v. Orange Bang (Fed. Cir. 1999) – Drink dispenser ( deception is okay as long as there is still real world value

▪ No requirement that invention be “honest” as long as it is legal

• Practical (Specific & Substantial) Utility – must be presently useful for specific purpose, not so vague or generic at moment of patenting that it is meaningless (patentable invention must have real-world use)

o Depends heavily on predictability of art area – if much known about art area, more likely to be able to push boundaries of what is practical (mouse trials v. need for human trials)

o Brenner v. Manson (1966)

▪ Claimed invention: a process to make a steroid (at time of invention, steroid’s purpose and use is unclear) ( Application rejected

• If the result of a process has no known utility at time of filing, the process itself has no utility

▪ ( “Red Ant Utility” = idea that general utility (like a process to kill red ants) is not practical or specific enough to grant patent

• “A patent is not a hunting license”

▪ Policy on timing of awarding patent:

• If award too early, everything in the future is claimed w/o specificity

• If award too late, requires too much work to achieve the patent, not enough incentive to entice inventor to apply for a patent b/c work/money/time involved outweighs the value of the patent

o In re Brana (Fed. Cir. 1995)

▪ Only knowledge at time of application came from mice models

▪ Fed Cir says promising results from testing on mice cells is enough to predict success in humans ( predictive capabilities supported

▪ Unless there is a reason to doubt credible utility, presumption stands

▪ New guidelines for practical utility:

• Specific Utility – specific to subject matter, not general to entire category from which the invention arises (specific to chem or bioscience invention)

• Substantial Utility – utility must be known at time of patenting, must not require further development or research of the discovery in order to become useful

o In re Fisher (Fed. Cir. 2005)

▪ Claimed invention is specific group of ESTs—lists generic benefits of ESTs overall, not specific to the ones claimed

• FC: benefits not specific enough to claimed invention to justify granting of patent

▪ EST art area still too unpredictable to allow granting of patent based on generic claims

IV. Disclosure & Enablement requirements

a. Come from § 112 disclosure requirements

b. Disclosure = incentive and motivation to further improve existing technology

i. Price the inventor pays in exchange for gaining the benefit for the right to exclude

ii. Purpose is to apprise public of what is still open to them to improve/invent

(1) Enablement

• Purpose: Inventor must describe invention clearly enough so PHOSITA can understand it well enough to make and use the same at time application filed

o Look to both written specification (background of invention, detailed description, examples, data) AND drawings

o Cannot burden PHOSITA w/ undue experimentation to achieve same results

▪ Ex: Patent is not enabled if it only states substances and relative ratios of materials to be mixed, must include actual quantities

o Scope of enablement must be at least equally broad as scope of claim & scope of claim must be commensurate to scope of specification

• Question of law (reviewed de novo)

• Policy: Patentee should not get exclusionary rights covering anything that already existed in public domain prior to their work

• TEST: Does the invention (spec + claims), as understood at the time of filing, enable PHOSITA to close the gap btw what is described in the spec to the what is claimed? (no undue experimentation allowed)

o Factors to consider:

▪ Amount of necessary experimentation

▪ Predictability v. unpredictability of the art

▪ Presence v. absence of working examples

▪ Nature of invention, stat of the art (area)

▪ Amount of direction/guidance provided

▪ Relative skill in the art

▪ Breadth of claims

• Undue Experimentation – depends on predictability of art area

o Genus-Species claiming = method for expanding from what is described in spec to what is claimed (goes from smaller to larger group)

o Predictable art area – field well understood ( gap btw spec and claims can be larger b/c reasonable to assume that PHOSITA can bridge w/ common knowledge

o Unpredictable art area – area not well known, PHOSITA does not know how to get from point A to point B w/o guidance and requires more description in written spec ( gap btw spec and claims must be smaller

• Incandescent Lamp Patent (1895)

o Sawyer & Man’s patent claims whole category of wood materials for required carbon-based filament (includes over 6K materials)

o Edison ruled not to have infringed b/c spent long time experimenting to find specific working material—bamboo

o Patentee’s claimed carbonized “fibrous or textile material” not actually “successful” ( actually used Edison’s bamboo

o Scope of enablement = that which is disclosed in spec + scope of what would be known to PHOSITA w/o undue experimentation

o PHOSITA cannot hinge on knowledge of a single extraordinary individual (Edison’s knowledge not equivalent to PHOSITA), must be an average man skilled in the art

o Validity viewed on claim-by-claim basis ( do not compare a claim from one patent to a claim from another patent—just hold claim to PHOSITA standard

• Amgen v. Chugai (Fed. Cir. 1991)

o Amgen claims all EPOs when spec only disclosed how to make and use a few (that did not work for what patent claimed)

o ( Lack of enablement based on lack of predictability—not enough detail available for PHOSITA to repeat results w/o undue experimentation

o Must bridge gap btw spec and claims by: (1) expanding spec, (2) narrowing claims

• In re Strahilevitz (CCPA 1982)

o Process patent for removing antigen from bloodstream, applicant hadn’t yet created actual embodiment, but patent granted

o A single, specific example of work is not required to meet a § 112 enablement requirement, but it does provide good evidence that the disclosure is enabling

▪ Undue experimentation” standard is measured relative to “process” claimed ( here spec makes is clear that the selection and preparation of related haptens, antigens, and antibodies involved routine and well-known techniques

• Examiner himself referenced prior art w/ techniques disclosed

o Example of Prophetic Example—some applications of known techniques are so predictable that they can be “prophesied” by PHOSITA

• Blocking Patents = Situation where one pioneer patent covers a broad field of technology and a subsequent patent covers an improvement in the field

o Timing

▪ Inventor can properly claim broad subject matter as long as her research enables one skilled in the art to make and use her invention as that invention was understood at filing date

▪ Enablement always addressed relative to a PHOSITA’s understanding at the time of filing

▪ Infringement deals w/ coverage of the claim determined at the time of the alleged infringement

• “Reverse Doctrine of Equivalents” – Where an improvement is really quite beyond the scope of the original invention altogether, the improvement will not even be describable in the terms of the original patent’s claims ( will not infringe on earlier claim (not really applied much now)

• Temporal Paradox

o Enablement standard – PHOSITA’s understanding at time patent application filed

o Infringement standard – PHOSITA’s understanding at time of infringement

(2) Written Description

• Purpose: clearly shows the PHOSITA that what patentee invented and was in possession of claimed invention at time application filed

• Question of FACT (appellate court will be deferential to lower court)

• Policy: Ensures patentee actually created that which he claimed (is not getting more than what he deserves)

• TEST: (1) Does spec describe all claimed limitations? (2) Would PHOSITA believe inventor was in possession of invention and invented what was claimed?

• Gentry Gallery v. Berkline (Fed. Cir. 1998)

o Couch control location

o Was patentee in possession of invention as claimed at time of filing?

▪ Compare written description to issued claims to decide whether or not PHOSITA believe inventor in possession

o ( Actually issued claims not enabled b/c the way the spec was written does not indicate inventor contemplated moving console away from center of sofa config

▪ PHOSITA would believe inventor possessed and intended only a couch w/ center console at time of patenting

o An essential element (here, location of console) described in the written spec serves to limit the breadth of later drafted or amended claims

• University of Rochester v. Searle (Fed. Cir. 2003)

o Written description in unpredictable art area (biosciences)

o Problem = claims too theoretical—PHOSITA would not know where to start b/c applicant did not claim an actual KNOWN substance in initial filing

▪ “Possession” requirement becomes a “description” requirement for unpredictable art

▪ Here, also an enablement problem, but Court will analyze separately

▪ Possession insufficient, must also describe invention

o Cons/Risks for strict written description requirement in unpredictable art:

▪ Discourages innovation b/c so much disclosure required to meet (2)

▪ Narrows what inventor can claims in order to attain patentability

▪ Greatly narrows gap btw spec and claims ( cuts in on (1) Enablement req

• Lizardtech v. Earth Resource Mapping (Fed. Cir. 2005)

o Written description in predictable art area (signal processing)

o Question: Does patent cover non-seamless DWTs? Comparison of spec and claims:

▪ Spec: refers only to seamless DWT – “ in accordance w/ the present invention…seamless DWT” ( implies possession only of method for creating DWT at time original app filed

▪ Claims: DWTs only, does not address seamless v/ non-seamless DWT (broader than spec, invalid b/c not supported by written description)

o Invention must reasonably be in inventor’s possession at time of filing – here PHOSITA would not reasonably believe inventor possessed non-seamless DWT…

Other § 112 Provisions

• Independent v. dependent claims (¶s 3 and 4)

• Multiple dependencies (¶ 5)

• Means + Function Claims (¶ 6 – element described by function rather than structure)

o Covered by § 112 ¶ 6

o Language: “means for (function)” or “step for (function)”

o Requirements:

▪ Specification must disclose a structural means for performing the action

▪ Construe term to include structural equivalents of whatever is disclosed to perform the function

▪ Single means claims are not allowed ( must have at least 2 elements in spec that do the same function

o When there is no specific means for described in the spec, will raise a definiteness problem

(3) Definiteness

• Purpose: Inventor must claim invention in such a way that PHOSITA understands what is claimed w/in 4 corners of the claim (meets and bounds)

o Read in light of the specification and PHOSITA’s everyday knowledge

o Context will affect PHOSITA’s understanding

• Question of law (reviewed de novo)

• Policy: Serves “notice” to competitors of what patentee has already invented and claimed, puts public on notice of what party claims as invention so as to prevent inventor from pretending invention is more than or different from what it really is

• TEST:

o (1) Does allegedly vague language in claim mean something definite to one skilled in the art?

o (2) Would PHOSITAs understand scope of claim when read in light of specification?

• Orthokinetics (Fed. Cir. 1986) – claimed wheelchair “dimensioned so as” to fit in cars

o Court looks to:

▪ PHOSITA’s understanding ( PHOSITA would understand

▪ Claims read in light of spec

o PHOSITA would understand ( definiteness requirement met

o Claims need not be full, clear, concise, exact if PHOSITA would understand in light of spec or with public information

• Standard Oil v. American Cyanamid (E.D. La 1984)

o Inventor uses term “slightly soluble” which is undefined in spec, not commonly known to PHOSITA when “partially soluble” used in spec

o Claim & patent invalid for lack of definiteness based on inconsistencies btw spec and claim

• Energizer Holdings v. ITC (Fed. Cir. 2006) – unclear antecedent “said zinc anode” mentioned in claim w/o prior reference)

o Grammar problems do not automatically render a claim indefinite if PHOSITA would understand meaning in reading the claim

o Only one method of analyzing “said zinc anode” in light of context ( not indefinite

(4) Best Mode

• Purpose: Inventor must disclose his best way of doing (making & using) invention at time of filing

o Only inventor has duty to disclose best mode (assignee does not)

• Question of fact (appellate court deferential to lower court)

• Policy: No concealment, want to be upfront w/ public so they can practice the invention as well, no updates required after filing and grant of patent

• TEST: 2 step inquiry (from Chemcast):

o Subjective inquiry: (1) Does inventor know of best mode?

o Objective inquiry: (2) If so, does he disclose it in such a way that PHOSITA would be able to reproduce invention utilizing best mode?

• Randomex v. Scopus (Fed. Cir. 1988)

o Invention = apparatus for cleaning disk packs, requires use of cleaning fluid

o Best mode does not disclose specific cleaning fluid used

o Fed Cir says (4) Best Mode requirement still met b/c Best Mode requires disclosure of best mode relating to specific invention (apparatus in this case), but not of elements supporting it

▪ Cleaning fluid ≠ invention

• Chemcast v. Arco (Fed. Cir. 1990)

o If there is only ONE method tried, it IS the best mode

o 2 Step Inquiry

▪ Did inventor know a best mode at the time of filing? He knew the specific hardness that worked best

▪ Did disclosure enable PHOSITA to practice best mode without undue experimentation? (or Did inventor disclose best mode?) PHOSITA could not practice without undue experimentation

o ( Patent app invalidated due to failure to disclose best mode

• Fulfilling best mode requires disclosure of non-claimed elements when they are necessary to practice the best mode, even if invention sufficiently enabled

introduction to § 102

• Novelty (N) v. Statutory Bar (SB)

o Novelty – applies only to events that occur before time of invention

▪ Triggered by events taking place before invention date

o Statutory Bar – may be triggered by events that happen after invention

▪ Patenting right may be lost, even though invention is technically novel if subsequent events trigger one of the statutory bars § 102 (b), (c), (d), (f)

▪ May be triggered by events after invention date:

1yr before filing app)

▪ Invention remain under inventor’s control (Moleculon)

▪ Bona fide (good faith) experimentation/testing

▪ Technical experiment to improve/perfect the product ( occurs before RTP!

• Look to inventor’s state of mind, intention

• Takes place between conception and RTP

▪ Whether public receives benefit or not is unimportant

▪ Market testing is not experimental

o Public use is okay when the delay in filing is occasioned by bona fide effort to bring his invention to perfection or to ascertain whether it will answer purpose intended (still trying to get to RTP)

• Egbert (Corset Case) (1881) – Inventor gave single corset to friend 3y prior to filing

o Not a §102(a) issue where activity considered occurs after date of invention

o Even though corset covered up from public view, considering the nature of the invention and how it is used, still sufficient to constitute public use

o Look to whether use was restricted or subject to secrecy in deciding if there is public use

• Metallizing v. Kenyon (2nd Cir. 1946)

o There is public use where the inventor sells a product resulting from a method patent b/c inventor has exploited the method to make something to sell

o Exploitation of product produced using method patent will trigger § 102(b)

o Policy: Not fair for inventor to get patent for something that has already been commercially exploited outside the grace period

§ 102(c) – Abandonment (by inventor only)

• = forfeiture of right to patent protection (i.e. right to exclude)

• Policy: incentive to patent quickly

• Macbeth-Evans Glass Co v. Gen Elec. (6th Cir. 1917)

o Abandoned right to patent invention (though no abandonment of invention itself) by choosing to enforce through trade secret – requires inventor’s affirmative act

o Choice to not patent and operate for profit for 9 yrs was deliberate and unmistakable ( cannot be allowed to patent now

• The inventor who commercially exploits an invention in secret will be barred from seeking a patent, even though another independent inventor may not be

o Abandonment not found if inventor secretly used product w/o commercial exploitation

• Most cases no longer use 102(c) but instead flow through 102(b) analysis

§ 102(d) – Prior Foreign Filing

• Two conditions must be satisfied:

o (1) Foreign app predates US app filing by more than 12 months; AND

o (2) Foreign patent is granted before the US app if filed

• Policy: promote prompt US filing

• One must file a patent app in U.S. w/in one year of filing app elsewhere in the world

o Conditions:

▪ Same invention (claims match)

▪ Foreign filing more than one year prior to US app filing

• Foreign patent issues ANY TIME prior to US app filing (validity irrelevant)

VII. Obviousness - § 103(a)

• Policy

o Cannot make it too easy for inventor to get patent

o Incentive to promote real innovation – incentive lost if invention is too obvious ( social cost w/o comparable social benefit

o Evaluation is highly subjective & requires much effort/time on PTO’s part ( High standard to justify cost in time and effort to evaluate

o Motivates inventors to undertake riskier research, push boundaries of real inventions

o Safeguard: Catches that which passes § 102 analysis, but still unworthy of patenting

• Evolution – trend is towards more specific guidelines of what constitutes “nonobvious”

o 1790 Patent Act: “sufficiently useful or important”

o 1793 Patent Act: not merely changing the form or proportions of an invention

o 1793 – 1836: change in the “principle of the machine”

o Hotchkiss (1851): doctrine of “invention” ( still fairly amorphous but distinguished btw “invention” v. “non-invention”

o Cuno (1941): “flash of creative genius” – too high a standard

o 1952 Patent Act: 35 USC § 103 codified obviousness

o 1966 – Graham Trilogy: Graham v. John Deere (location of shank), Cook v. Calmar (chemical spray), Adams (wet battery) = interpretation of § 103 language ( Still good law

o Post-Graham: Fed Circuit’s Teaching, Suggestion, and Motivation (TSM) Test (solves hindsight)

o 2007: KSR (pedals)( TSM still good law, but NOT only standard (may not be too rigidly applied)

o Today: post-KSR world ( Graham, KSR still good law (but some pre-KSR decisions may be invalidated)

Graham Framework

|Who Decides? |Step |

|Jury |Step 1: Determine scope and content of the relevant prior art (as defined by §102 – art that satisfies the geographic, temporal, and |

|(Question of Fact) |identity of inventor requirements) |

| |Initial inquiry: What is in the prior art? |

| |Determine filing date, then figure out what prior art came before |

| |Additional limitation (compared to § 102) |

| |Relevant art must be from “analogous art” area |

|Jury (QoF) |Step 2: Ascertain differences between prior art and claims at issue. |

|Jury (QoF) |Step 3: Find the level of ordinary skill in the pertinent art. |

| |PHOSITA standard – education/training/knowledge, types of problems encountered in the art, prior art solutions, rapidity w/ which |

| |innovations made, sophistication of technology, educational level of active workers in the field |

| |PHOSITA also has ordinary creativity & common sense |

|Judge |Step 4: Determine the obviousness or nonobviousness of the subject matter as a whole |

|(Question of Law) |Apply various tests: TSM (only test pre-KSR), Predictability, Obvious to try, Mere updating ( obvious |

| |Ask: Would PHOSITA, facing the wide range of needs created by developments in the field of endeavor, have seen a benefit to upgrading/ |

| |modifying the primary reference w/ the difference in order to achieve the invention? |

| |Determination must be made from POV at time of invention |

| |Prevents tendency to apply hindsight, which is 20/20 |

|Jury (QoF) |Step 5: Consider secondary indicia of nonobviousness (e.g. commercial success of product on market, long-felt but unsolved needs in the|

| |industry, failure of others—inability of others to solve the problem/find solution) (See below** |

| |Common law development – Court uses this step to make sure that their determination of Step 4 is correct |

| |Evaluation of failure of others – bring in expert testimony |

• Tests:

o Predictability – Do elements of prior art put in combinations yield predictable results? ( Y, obvious

▪ Merely rearranging elements, predictable combinations/functions

o TSM – In order for a “combination of references” type of obviousness argument to be valid, there must exist some teaching, suggestion, or motivation that would have suggested making the claimed combination

o PHOSITA ( impacts step (3) Graham

o Obvious to try can be indication of obviousness

▪ Known problem + finite # solutions ( “obvious to try” to solve w/ one of known solutions

o Mere updating aids finding of obviousness

o Teaching away ( nonobvious (Arkie Lures)

o ** Secondary considerations (plays supporting role, must be used in conjunction w/other arguments)

▪ Commercial success – only if attributed to functional aspects of invention, not marketing

▪ Long-felt, but unresolved needs – to eliminate hindsight bias

▪ Failure of others to address same problem

▪ Evidence of copying by others (= indication of success)

▪ Licensing or acquiescing to patent

▪ Unexpected advantages and/or superior results

▪ Skepticism before patenting, but praise after issuance ( Acceptance shown in praise from others in the field

o Still, presumption of validity once patent has been issued

• Winslow Tableau: Inventor’s motivation ( solve problems, will look in other art areas for inspiration

• Overall result ( easier to find inventions obvious (violation of § 103 ( harder to patent)

• § 103 Prior art

o Includes all § 102 art that is analogous/relevant to objective reach of claim, industry (analogous art area)

o Does NOT include § 103(c) art (“shall not preclude patentability under this § where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person”)

o Policy: Do not want to discourage invention by using inventor’s own art against him

• In challenging validity:

o Patentee will usually attempt to establish as low a level of ordinary skill as possible

( invention will be considered nonobvious by largest number of people

VIII. Infringement

a. Construing the claims ( interpretation of patent claims

i. Evidentiary sources

1. Intrinsic – words of the claim, other claims & specification, prosecution history, cited prior art, context

2. Extrinsic (secondary importance) – dictionary, learned treatises, expert testimony (anything NOT part of patent prosecution process)

ii. Canons of Claim Construction (Q of L, decided de novo upon appeal)

b. Compare construed claims to accused infringing device

i. To find infringement, each and every limitation of the claim must be met either:

1. Literally infringed

2. Under the Doctrine of Equivalents (DoE)

a. Which may be limited by Prosecution History Estoppel (PHE)

Construing the Claims

• Phillips v. AWH Corp. (Fed. Cir. 2005, en banc) – claim construction = question of law for courts

o PTO will give ordinary & customary meaning—how PHOSITA would have interpreted the meaning of terms at time app filed

o ( claims define the invention, determine scope of patent rights

o Construing a Means + Function Claim

▪ (1) What does specification disclose to perform the function?

▪ (2) Claim is construed to include whatever is disclosed PLUS structural equivalents

o Why Means + Function?

▪ Short-cut ( instead of claiming each possible widget in a separate dependent claim, can just group them all into single category (items of category disclosed in spec)

▪ Down side – requires caution to ensure support (definition) in spec

▪ Means + Function claim cannot disclose structure in claim (“means for…comprising…”)

▪ § 112 indefiniteness issue exists as well if structure not in spec

o Intrinsic Evidence (favored by Contextualists)

▪ (1) Words of the claim – indication of what applicant intended at time of invention

▪ (2) Other claims & spec – gives clues as how claims should be understood, read claim in light of other claims

▪ (3) Prosecution history – should bind patentee later once patent is granted

o (4) Extrinsic Evidence (favored by Literalists)

▪ Not specific to PHOSITA and art area (patentee’s intentions)

▪ Not likely reliable in interpreting claim scope unless read in context of intrinsic evidence

Canons of Claim Interpretation

(1) Ordinary v. Contextual Meaning

• Collection of doctrines & sub-doctrines, rather than a single canon ( relies greatly on context

(2) Contextual Meaning May Trump Ordinary Meaning

• Spec takes precedence ( where spec consistently uses a term to mean something specific in context, the narrower meaning is adopted rather than the broader ordinary meaning (e.g. “board” means “wood board”)

• Serves public interest b/c this is what inventor disclosed to public at time of invention

(3) The “Lexicographer Rule”

• Patentees are allows to be their own lexicographers—to define claim terms in any way they wish

(4) Disclaimer of Subject Matter

• Patentee’s statements in the spec or in prosecution history may limit or disclaim apparently broad claim language to avoid prior art

(5) Claim Differentiation: Contextual Meaning from Other Claims

• When different words or phrases are used in separate claims, a difference in meaning is presumed

• Anti-redundancy canon – every phrase, word, is to be construed as to be necessary, useful in interpretation

(6) Purpose or Goal of the Invention

• “Fundamental purpose” – specific purpose that all embodiments of invention will address

• If several purposes, go w/ broadest interpretation that includes all possible requirements

(7) Narrow Construction to Save Validity

• Rule of doubt – Where two interpretations are plausible, go w/ that which preserves validity of the patent

( the narrower interpretation

• Rule of last resort, not first principle

Determining Infringement

• Literal infringement

o Requires every element of claim be literally present ( very difficult to find

o Tiny change (e.g. cylinder ( octagonal) still considered infringement b/c small change is insufficient to show creativity on infringer’s part (to consider him “inventive”)

• Doctrine of Equivalents (DOE) – compare elements of claim to accused product or process

o Allows infringement liability to extend somewhat beyond literal reach of claims

o All Elements Rule: Analysis requires figuring out if there is a missing element

▪ If there is a missing element ( no DOE infringement

▪ Vitiation Corollary: Cannot apply DOE so broadly as to expand it to eliminate an element entirely ( each element must have a counterpart in order to demonstrate infringement

o Comes from Graver Tanks v. Linde Air (1950) – alkaline and non-alkaline earth metals + CaFl used for welding fluxes, PAR said both metals would work similarly

o Policy: exists b/c to allow literality to satisfy test for infringement would force patent law to reward literary skill rather than mechanical creativity, equitable measure

▪ PHE ensures DOE remains tied to the underlying purpose—where original application once embraced purported equivalent but patentee narrows his claims to obtain patent or to protect validity, patentee cannot assert that he lacked words to describe the subject matter in question

▪ Language Limits – DOE is premised on the language's inability to capture essence of invention, but prior application describing precise element at issue undercuts that premise

▪ There, PHE establishes that inventor turned his attention to the subject matter in question, knew the words for both the broader and narrower claim, and affirmatively chose the latter

o Two tests:

▪ Triple Identity Test (Function-way-result standard):

• Function-way-result – Infringement by DOE occurs when accused device performs in “substantially the same function, in substantially the same way, to achieve substantially the same result”

• Applied on element-by-element basis rather than to entire “device”

• Function – Does each element have a counterpart in infringing product that serves same function?

• Way – Does counterpart achieve the function in the same way?

• Result – Does counterpart give the same result?

▪ Insubstantial Differences Test

• Applied: Where accused and claimed elements can be used interchangeably = strong evidence of an insubstantial difference

• What is “insubstantial” left undefined

o Exception: Prosecution History Estoppel (PHE) bars DOE (from Festo)

▪ When patentee responds to rejection by narrowing claims, PH estops him from later arguing that subject matter covered by original, broader claim is an equivalent that has been infringed

▪ Means that a person who has filed a patent application, and then makes amendments to the application to attain patentability (overcome rejections), has no cause of action for to the pre-amendment patent claims that were later amended.

▪ Policy: If patentee narrows claims during prosecution, unfair to allow him to claim larger scope later (limited to scope contemplated @ time of patenting)

▪ PHE forecloses DOE and ALWAYS applies where both conditions met:

• (a) Amendment narrowed

• (b) Amendment made w/o explanation (assumed done to meet patentability requirements, avoid prior art)

▪ Presumption of PHE is rebuttable (patentee’s burden to show amendment does not surrender equivalent in question)

• Patentee must show alleged equivalent was:

o (a) unforeseeable at time of amendment

o (b) tangential to reason for amendment

o (c) “some other reason” applicant couldn’t reasonably have been expected to claim alleged equivalent

o Argument: Did not surrender territory

▪ Rebuttable ( if PHE applies, patentee gives up space btw original & amended claims

▪ Warner-Jenkinson (1997) – invention = improvement in ultrafiltration dye process

• During prosecution, limitation/amendment made ( pH range limited to 6.0 ................
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