09Patent Law - Lee - F07 - Outline

7/27/2019 09Patent Law - Lee - F07 - Outline

1/134

Patent Law Outline Table of Contents

1


2/134

I. Introduction to Patent Lawa. What is a patent A legal right to exclude others from making, using,

offering to sell, selling or importing(into the US) an invention for a periodof 20 years from the date of filing

i. Negative right, not affirmative right to practice invention

ii. Blocking patents - Neither party can use the combined drugwithout the others permissioniii. Policy to promote science and useful arts

b. Types of patentsi. Utility - Technological products and process

ii. Design - For ornamental rather than functional elements1. Can overlap w/ copyright

iii. Plant 1. Plant Patent Act (asexually reproducing)2. Plant Variety Protection Act (sexually reproducing)

c. Intellectual Property

i. 35 U.S.C. 101- Whoever invents or discovers any new anduseful process, machine, manufacture, or composition of matter, orany new and useful improvement thereof, may obtain a patenttherefor, subject to the conditions and requirements of this title.

ii. Copyright software, literary, musical art, choreographic, artisticworks, aesthetic element of useful design - 17 USC 102

iii. Trademarks source identifiers - 15 USC 102-104iv. Tradesecrets valuable information in business and technology;

State law regulated1. Choice of IP - Patents v. tradesecret cant have both, E.g.

Coca-Cola recipe protected by tradesecretd. Overview of Patent System

i. Patent prosecution

1.

2


3/134

2.

3. Interferences - Administrative proceedings to determinepriority of invention between multiple applications for thesame or similar invention.

4. Restrictions and divisional applications - Administrativeprocesses for ensuring that each application contains onlyone invention

5. After grant of patenta. Reissue (with USPTO or Board of Patent Appealsand Interferences), only by patentee, can broaden ornarrow claims, broadening is rare, may only occurabsent deceptive intent

b. Re-examination - (with USPTO or Board of PatentAppeals and Interferences), by anyone, based onprior art patents or printed publications.

6. Patent Terma. U.S. patent term is 20 years from the date of filing,

not 17 years from the date of issuance

b. Term extensions for FDA and PTO delays7. Provisional Applicationsa. Establishes a right of priority for a regular

application filed within one year of the provisionalb. Time during which provisional application is

pending does not count towards the 20-year patentterm

3


4/134

c. Publication of Applications - Patent applicationspending for 18 months are published unless theapplicant certifies that the invention will not be thesubject of any foreign or international applicationsin jurisdictions that provide 18-month publication.

Changes the patent quid pro quo now you only getthe chance of exclusive rights in return fordisclosure where you before would only disclose ifyou got the exclusive rights by a granted patent.

ii. Territorial in enforcement1. Infringement US District Courts

a. defense to infringement, commonly, Patent invalid,or No infringement. Note, statutory presumption ofvalidity for issued patent

b. Declaratory action to challenge validity of patent

US District Courts, brought by potential infringer2. Appeal to Federal Circuit, then to US Supreme Courtiii. Policy to promote technological progress.

1. Article I, Section 8. cl. 8 The Congress shall have PowerTo lay and collect Taxes, Duties, Imposts and Excises, topay the Debts and provide fro the common Defense andgeneral Welfare of the United States; but all Duties,Imposts and Excises shall be uniform throughout theUnited States;

a. [8] To promote the Progress of Science and usefulArts, by securing for limited Times to Authors andInventors the exclusive Right to their respectiveWritings and Discoveries.

b. Utilitarian rationale Authorize power to grantexclusive rights to promote progress

i. However, grant of exclusive rights may beinhibiting, not promoting, progress in stemcell research.

c. Utilitarian rational information is a public good.i. Non-rivalrous public good my

consumption of a resource does not diminishit for others to use, e.g. air, national defense,information

ii. non-excludable I cant exclude othersfrom utilizing a resource, e.g. air, nationaldefense, information

i. ocean fishing rivalrous, but non-excludable

ii. information in general is nonrivalrous byexcludable (patent system)

4


5/134

iii. Problem with a public good1. free riders copiers free ride on

investment, undermines incentive toinvest

2. market failure - market will not

produce optimum level of publicgood3. Solutions = Patent system, or

a. Govt funded RandD, nopatent system, open-source(Linux), tax breaks

d. Bad policy - Patent trolls- $ from licensing fees orinfringement suits, but not adding to the library ofknowledge.

i. An industry has developed in which firmsuse patents not as a basis for producing and

selling goods but, instead, primarily forobtaining licensing fees. eBay v.MercExchange, 126 S. Ct. 1837, 1842(2006) (Kennedy, J., concurring)

2. Incentivea. Ex ante encourage original act of invention; also to

disclose, patent law as a public education initiativeb. Ex post incentive to innovate, where innovate

means bring invention to market even afterconceived.

c. Creative destruction - Monopolies are conducive toinnovation, describes the process of transformationthat accompanies radical innovation, innovativeentry by entrepreneurs was the force that sustainedlong-term economic growth, even as it destroyedthe value of established monopoly power.

d. Prospect theory - Patents, like mining claims, allowmore socially efficient development of a particularprospect

e. Other incentives outside patent system prestige,need, benevolence, altruism, competitive advantage

3. Historya. Industrial Revolution: the primary benefit of patents

shifted from the invention to the dissemination oftechnical knowledge

b. 1952: Modern Patent Act codifiedc. 1982: Congress created the Court of Appeals for the

Federal Circuitd. Key points

i. Greater emphasis on disclosure

5


6/134

ii. Rise of examination systemiii. Emergence of nonobviousness requirementiv. Rise in administrative and judicial

infrastructure4. Globalization Harmony of Patent Law

a. 1883: Paris Convention for the Protection ofIndustrial Propertyi. Each country shall afford national treatment

to the citizens of all other countriesii. One-year rule of international priority for

patent applications in other signatory states.Date is only used to determine priority, notto calculate patent term, therefore can get 21effective years of protection

b. Patent Cooperation Treatyi. Establishes an international application

process by which inventors may file a singlePCT application in any signatory nationii. Consolidated international phase of

searching prior artiii. Separate national phase prosecution

c. European Patent Conventioni. Establishes a centralized European Patent

Officeii. No additional prosecution in national offices

is necessaryiii. Enforcement still handled by national courts

d. 1994: Trade Related Aspects of IntellectualProperty (TRIPs)

i. Requires patentable subject matter toinclude virtually all important commercialfields, including pharmaceuticals

ii. Requires an inventive step, similar tononobviousness

iii. Requires industrial application, similarto utility

iv. Grants the exclusive right ofimportation tothe patentee

v. Curtails compulsory licenses5. Scientific Discoveries

a. Epoch-making discoveries of mere generalscientific laws, without more, cannot be patented.So the great discoveries of Newton or Faradaycould not have been rewarded with such a grant ofmonopoly. Interestingly enough, apparently manyscientists like Faraday care little for monetary

6


7/134

rewards; generally the motives of such outstandinggeniuses are not pecuniary. Katz v. Horni SignalMfg. Corp. (2d Cir. 1944)

6. Pioneer inventions and improvement patents a. Policy balancing interests between giving a massive

incentive to pioneer inventions. If this incentive istoo great by allowing too broad of claims, there willbe no incentive for improvement. Likewise, if thereis more of an incentive to improve, there incentiveto innovate pioneer inventions will be under-cut.

7. Cannot patent a principle, fundamental fact,a. Not useful, not productive for progress, not

inventions, breadth problematicb. Licensing issues when the basic tools of intellectual

inquiry are patented. Impedes progress. Liberalaccess to natural laws and information, enable wide

modes of downstream applications.e. Patent Claim Draftingi. 35 U.S.C. 112, 2

1. The specification shall conclude with one or more claimsparticularly pointing out and distinctly claiming thesubject matter which the applicant regards as hisinvention.

ii. Claims define the metes and bounds of the property right Toinform the public during the life of the patent of the limits of themonopoly asserted. Analogous to the meets and bounds of a parcelof property

iii. There is a buffer around a patented invention.1. Doctrine of equivalence

iv. 2 Limitations1. Limited by prior art2. Limited to what the inventor actually invented and can

enablev. Elements

1. Preamble - Describes the basic nature of an invention2. Transition Defines the breadth/narrowness of the claim

a. Open comprisingb. Intermediate consisting essentially of

i. An invention consisting essentially ofA+B+C

ii. A+B+C+D infringes if D does not make thesecond invention essentially different

c. Closed consisting of i. Sometimes necessary if lots of prior art,

crowded field3. Body

7


8/134

a. Lists all elements (i.e., limitations)b. Describes how the elements interactc. Claims do not need to enable

i. Enablement is found in the specification4. Body Formal requirements

a. Each claim must be one sentenceb. Each claim must set forth how the elements interactwith one another

c. Internal references must be clearvi. General claim stategy

1. Broad independent claimsa. Claim more material, most coverage

2. Narrow dependent claimsa. More likely to be valid and enforced, ensure

validityvii. Means-plus-function claims

1. General rule: claims must cover a specific invention, not aresult or function2. Exception: 35 U.S.C. 112, 6 allows means-plus-

function claimsa. E.g., I claim a means forattaching A to B.b. Exception to the general rule that you cant patent

an end result. Constrained by specification orequivalent.

3. Means-plus-function claims are limited by thespecification and equivalents thereof.

a. E.g. means = glue, tape, staple, nailb. Function = A is attached to B

f. 1980 Bayh-Dole Act changed Fed Policy regarding patent. Govtfunded research could also patent results of that research.

g. Reach through licensing agreements downstream technology is licensedalong with the license to use the upstream patented technology. With toomany licensors, this problem can be exaserbated.

h. Product claim subsequent research gets method of use product claim sosubsequent researcher can get method claim but needs to get license to useproduct. This is a blocking patents situation.

i. Constitutional broad definition of patents, statutes are a narrowerdefinition of patents.

II. The Requirements of Patentabilitya. Patentable Subject Material

i. Introduction - Diamond v. Chakarbarty1. Hybrid bacteria/plasmid, eats oil, useful to clean oil spills,2. Everything under the sun made by man is patentable

but not the laws of nature, physical phenomena

3. Dissent Brennan balance deep seated antipathy tomonopolies with the need to encourage progress.

8


9/134

4. Life is patentable - Congress thus recognized that the

relevant distinction was not between living and

inanimate things, but between products of nature,

whether living or not, and human-made inventions.

5. Scope of patentability:

6. Constraints - The laws of nature, physical phenomena,and abstract ideas have been held not patentable. Thus,a new mineral discovered in the earth or a new plant foundin the wild is not patentable subject matter. Likewise,Einstein could not patent his celebrated law that E = mc2,nor could Newton have patented the law of gravity.

a. E = mc2 not patentable, not immediately usefulb. No practical utility, Algorithms may have already

existed, Abstractions are too broadii. Variations in Defining Patentable Subject Matter

a. Cannot patent a principle or fundamental truth.

Le Roy v. Tatham (1853)b. An idea of itself is not patentable.Rubber-TipPencil Co. v. Howard(1874)

c. Cannot patent [p]henomena of nature, . . . mentalprocesses, and abstract intellectual concepts.,Gottschalk v. Benson (1972)

d. Can patent anything under the sun that is made byman, but not [t]he laws of nature, physicalphenomena, and abstract ideas.,Diamond v.Chakrabarty (1980)

iii. Spectrum of protection1. Upstream intellectual infrastructure

a. Public domainb. Natural lawsc. Natural phenomenad. Abstract principlese. Scientific theories

Factual informationf. Basic knowledge

2. Downstream applied technologiesa. Exclusive rightsb. Consumer goodsc. End-user applications

9


10/134

3.

4. Patentable subject matter does not include these 3categories

a. Laws of natureb. Natural phenomenac. Abstract ideas

iv. Historical and Conceptual Foundation1. OReilly v. Morse (1854) claiming a general result or

principle not patentable vs. claiming a specific means ormechanism which is patentable.

a. Morses Eighth Claim: Eighth. I do not propose tolimit myself to the specific machinery or parts ofmachinery described in the foregoing specificationand claims; the essence of my invention being theuse of the motive power of the electric or galvaniccurrent, which I call electro-magnetism, howeverdeveloped for marking or printing intelligible

characters, signs, or letters, at any distances, being anew application of that power of which I claim to bethe first inventor or discoverer.

b. Claiming a general resultorprinciple versusclaiming a specific means ormechanism

c. Specification problem since Morse wrongfully triesto assert in his claim that he is not bound by hisspecification

2. Telephone Cases (1888)a. Bells 5th claim - The method of, and apparatus for,

transmitting vocal or other sounds telegraphically,

as herein described, by causing electricalundulations, similar in form to the vibrations of theair accompanying the said vocal or other sounds,substantially as set forth.

b. Compare Morses claim to Bellsi. Morses rejected : A claim for an effect

produced by the use of electro-magnetism,

10


11/134

distinct from the process or machinerynecessary to produce it.

ii. Morses granted - A claim for making useof the motive power of magnetism, whendeveloped by the action of such current or

currents, substantially as set forth in theforegoing description, . . . as means ofoperating or giving motion to machinery .

c. Claims must relate to the specification. Bell doesthis, but Morse does not.

3. Summary of Claimsa. An infrastructure theory of patentable subject matterb. Distinction between claiming a general resultor

principle versus claiming a specific means ormechanism

c. Claims must relate to the specification

d. Pioneer inventions and subsequent improvementse. Nonpatentability of scientific principlesv. Patenting Natural Substances and Living Things

1. Parke-Davis & Co. v. H.K. Mulford & Co. (S.D.N.Y. 1911)a. Extractions and purifications of natural products

may be patentablei. Takamine was the first to make it available

for any use by removing it from the othergland-tissue in which it was found, and,while it is of course possible logically to callthis a purification of the principle, it becamefor every practical purpose a new thing.

ii. Takamine also took over the market with hisform of the hormone, this was used as afactor to consider the nonobviousness.

1. *note market failure was not a factorto consider Utility in theincandescent lamp cases.

iii. Difference of degree can turn a naturalproduct into an invention. Has enoughhuman intervention occurred to make thenatural product an invention.

iv. Salt not anticipated by Von Furths ZnSO4salt form of adrenaline b/c Von Furths isnot as pure as claimed by Takemine

b. Nonobviousnessi. Can consider market failure

ii. Commercial success

11


12/134

1. [H]e has been author of a valuableinvention and has succeeded wherethe most expert have failed.

2. Funk Bros. Seed Co. v. Kalo Inoculant Co. (1948)a. Invention: co-culture of bacteria used in agriculture,

achievement was that his bacteria formulationovercame problem w/ combining bacterial w/omutual inhibition of combined bacteria

b. Patent held invalid - Nonpatentability of naturalproducts

i. property of bacteria is free knowledge for allmen. Usefulness is not enough

ii. The intersection of subject matter andnonobviousness

iii. [A] product must be more than new anduseful to be patented, it must also satisfy the

requirements of invention or discovery.iv. Natures library fictionv. Scientific principles are treated as if they

already exist in the prior artc. Frankfurter concurrence agrees that patent is

invalid for claiming abstract idea of mutuallycompatible strains, and not a particular compositionof specific strains of bacteria.

d. Distinguish fromi. Parke-Davis difference of degree of

human interventionii. Chakarbarty q: are these just re-packaging

natural substances1. Its a question of degree2. Both Funk Bros. and Chakarbarty

claiming natural elements3. Human Beings

a. While the PTO recognizes that the scope ofprotection covered by 35 U.S.C. 101 is expansiveand the fact that the claimed invention whichembraces a human being is not within one of theexclusions enumerated by the Supreme Court inChakrabarty, i.e., the laws of nature, physicalphenomena, and abstract ideas, the PTO believesthat Congress did not intend 35 U.S.C. 101 toinclude the patenting of human beings. 58 Pat.Trademark & Copyright J. 203 (June 17, 1999)

4. Summary of natural substances

12


13/134

a. Natural substances in their natural state are notpatentable, but their extracted and purified formsmay be

b. The degree of human intervention and manipulationoften determines the patentability of products of

naturevi. Software1. Gottschalk v. Benson (1972)

a. Software converts binary decimals to binary,algorithm for converting # symbols relying on awell known mathematical formula

b. Not patentablec. Abstract algorithms are not patentabled. Phenomena of nature, though just discovered,

mental processes, and abstract intellectual conceptsare not patentable, as they are the basic tools of

scientific and technological work.e. Natures Library fictioni. Natural phenomena have already existed and

are in the prior art; argue nonobviousness1. but do algorithms really fit this

category? Dont men think upalgorithms?

f. The underlying notion is that a scientific principle,such as that expressed in respondents algorithm,reveals a relationship that has always existed.

g. Considering exogenous information - It is notedthat the creation of programs has undergonesubstantial and satisfactory growth in the absence ofpatent protection and that copyright protection forprograms is presently available.

2. The Mental Steps Doctrine Fell out of favor, not strictlyfollowed

a. Barred patents on inventions that could be

infringed merely by thinking

b. No longer strictly followed b/c relatively easy toavoid doctrine by simply converting process patents

into product patents

c. Illustrates patent laws reluctance to interfere withhuman thought

3. Diamond v. Diehra. Invention is related to curing rubber whereby a

machine relies on a calculation program to set theideal time to release the rubber mold.

b. Distinguishable from Gottschalk v. Benson invention not inhibiting people from using

13


14/134

algorithm, just using algorithm as a component ofan otherwise patentable process. Does not forecloseall use of the Arhennius eqtn.

c. This is patentable subject matterd. The use of forumalae or algorithm does not render

an invention unpatentable per se4. Summarya. Abstract algorithms are not patentableb. Devices and processes that employ algorithms may

be patentablec. Consider institutional roles and biases in the debate

over software patentsi. Courts versus Congress

ii. The patent bar, industry, the PTOiii. Institutional deference - If these programs

are to be patentable, considerable problems

are raised which only committees ofCongress can manage, for broad powers ofinvestigation are needed, including hearingswhich canvass the wide variety of viewswhich those operating in this fieldentertain.Gottschalk v. Benson (1972)

d. Software patents have blossomed, leading toproblems that are being addressed through privateordering

i. Private Ordering to Break Patent Thickets:Cross-Licenses and Patent Pools

ii.

vii. Expansion1. State Street Bank & Trust Co. v. Signature Financial Group

(Fed. Cir. 1998) - Expansion

14


15/134

a. Means-Plus-Function Claimsi. 1. A data processing system for managing

financial services comprising:1. computer processor means for

processing data;

2. storage means for storing data on astorage medium;3. first means for initializing the

storage medium; . . .ii. machine claims, product claims, machine w/

means plus functionb. invention - Data Processing System for Hub and

Spoke Financial Services Configurationc. Controversial expansion of patentable subject

matterd. Software is patentable as software

e. Narrowing of the mathematical algorithm exceptionf. Physical transformation no longer neededg. Emphasis on utility - The question of whether a

claim encompasses statutory subject matter shouldnot focus on which of the four categories of subjectmatter is directed to process, machine,manufacture, or composition of matter but ratheron the essential characteristics of the subject matter,in particular, its practical utility. Here we have apractical application of math algorithmTouchstone of a patent is not physicaltransformation, but practical utility

viii. Field Restrictions1. TRIPs, Article 27, Patentable Subject Matter

a. 1. [P]atents shall be available for any inventions,whether products or processes, in all fields oftechnology, . . .

b. 2. Members may exclude from patentabilityinventions, the prevention within their territory ofthe commercial exploitation of which is necessaryto protect ordre public or morality, including toprotect human, animal or plant life or health or toavoid serious prejudice to the environment, . . .

c. 3. Members may also exclude from patentabilityi. (a) diagnostic, therapeutic and surgical

methods for the treatment of humans oranimals;

ii. (b) plants and animals other than micro-organisms, . . . .

15


16/134

d. 4. We agree that the TRIPS Agreement does notand should not prevent Members from takingmeasures to protect public health. Accordingly,while reiterating our commitment to the TRIPSAgreement, we affirm that the Agreement can and

should be interpreted and implemented in a mannersupportive of WTO Members right to protectpublic health and, in particular, to promote access tomedicines for all.

2. Business tools patentable b/c substitutes still enablepractice of business methods

3. Prior user rightsa. immunize from infringement applies for

tradesecret no public disclosure which woulddestroy novelty

ix. Medical Procedures

1. TRIPS, Art. 27a. Allows countries to exclude diagnostic, therapeuticand surgical methods for the treatment of humans oranimals

2. Pallin v. Singer (D. Vt. 1995) - Dr. Pallin obtained andasserted a patent on a method for making a particular self-sealing incision during eye surgery

a. In 1996, Congress passed 35 U.S.C. 287(c)i. [W]ith respect to a medical practitioners

performance of a medical activity thatconstitutes an infringement [variousprovisions of this title relating to remedies]shall not apply against the medicalpractitioner or against a related healthcareentity with respect to such medical activity.

ii. Only deals with the remedy, not withinfringement

iii. no remedy for infringement of medicalprocedures. Could still go after 3rd partywho induced doctor to infringe patentedmedical procedure e.g. company that sellsdoctors device and induces doctors toinfringe patented medical procedure

x. Contraction1. Lab. Corp. of America v. Metabolite Labs., Inc. (2006)

a. Claim 13 -A method for detecting a deficiency ofcobalamin or folate in warm-blooded animalscomprising the steps of: assaying a body fluid foran elevated level of total homocysteine; andcorrelating an elevated level of total

16


17/134

homocysteine in said body fluid with a

deficiency of cobalamin or folate.b. Patents complicated relationship with progress

i. [S]ometimes too much patent protectioncan impede rather than promote the

Progress of Science and useful Arts.c. Natural laws are not patentablei. Not patentable subject material

ii. Lack utilityiii. Not noveliv. These resources are the fundamental

infrastructure of science and technologyd. Metabolite sues Lab Corp b/c Lab Corp conducts

test infringement i. Really it is the physicians correlating the

results, but Lab Corp. provides the

instruments that enable the doctors toinfringeii. Similar to suing napster instead of the users

of napster in a copyright infringement suitiii. Wrt to medical techniques, Congress

removed the remedy for suing doctors. Thepatent holder can still sue for infringement,and the court can still hold that infringementoccurred, but the doctors are not liable topay damages

xi. Summary of Patentable Subject Matter1. Chakrabarty expansive, anything under the Sun2. Morse and The Telephone Cases not function, but ok for

means-plus function supported by the specification3. Parke-Davis and Funk Bros.4. Benson and Diehr5. State Street and Lab. Corp.

b. Utilityi. invention must be useful (easy to satisfy)

ii. Operational and Beneficial Utility1. 35 U.S.C. 101 - Whoever invents or discovers any new

and useful process, machine, manufacture, or compositionof matter, or any new and useful improvement thereof, mayobtain a patent therefore, subject to the conditions andrequirements of this title.

2. 35 U.S.C. 112, 1-3. The specification shall contain a written description of the

invention, and of the manner and process of making andusing it, in such full, clear, concise, and exact terms as toenable any person skilled in the art to which it pertains, or

17


18/134

with which it is most nearly connected, to make and use thesame, and shall set forth the best mode contemplated by theinventor of carrying out his invention.

iii. 3 Kinds of Utility: Operational, beneficial, andSubstabtial/practical

iv. Operational and Beneficial Utility1. Operational - does an invention work, do what it issupposed to do

a. Often goes unchallenged by USPTO, reasonabledoubt wrt to ordinary skill in the art

2. Procedural Aspects of Establishing Operabilitya. Application has presumption of utilityb. PTO has burden of showing reasonable doubtc. Burden shifts to applicant to show utility

3. Beneficial - derived from Lowel v. Lewis, is the inventionconsistent with public morals. Note in Orange Bang v.

Juicy Whip, this standard was reduced to just what is notillegal.a. Institutional aspects USPTO not well suited to say

one thing is substantially better than another, alsonot well suited to determine morality

b. Lowel v. Lewis (C.C.D. Mass. 1817)i. The historic requirement of beneficial utility

- All that the law requires is that theinvention should not be frivolous orinjurious to the well-being, good policy, orsound morals of society. The word useful,therefore, is incorporated into the act incontradistinction to mischievous orimmoral.

ii. Two prongs to Justice Storys statement ofthe law

1. Utility requirement is modest2. Utility is concerned with morality

iii. Biotechnology has resuscitated debate overbeneficial utility

1. Weldon Amendment (2004)prohibits patents on claims directedto a human organism

c. Juicy Whip, Inc. v. Orange Bang, Inc.(Fed. Cir. 1999)

i. Invention Juicy Whips patent on post-mixdispenser that looks like a pre-mix dispenser

ii. Deception is useful1. Even though deceptive, court

upholds patent. Invention is useful;

18


19/134

it is pleasing to the consumers andassists in the beverage sale. It isuseful specifically because it isdeceptive.

iii. The patent system is not an arbiter of fair

trade practicesiv. Institutional questionsv. Severe erosion of the beneficial utility

requirementv. Substantial/practical a specific utility, Not enough to say you are

curing a disease, you need to specify which disease1. Brenner v. Manson (1966)

i.

ii. Chemical process for producing steroids.Manson applies for patent 3 months after theRingold files for a patent

1. must establish a utility prior to Dec.17, 1956

a. But Manson could only relyon a J. Org. CHem articlepublished by Ringold

2. A patent is not a hunting licenseiii. Substantial utility requirement is low, but

not insignificant

1. Timing of the utility requirementiv. Utility creates an incentive for additional

researchv. Policy considerations: Utilitys impact on

the volume and quality of disclosure1. High utility threshold less

disclosure this is a trade-offvi. Patent denied Not substantially useful.

19


20/134

vii. The application was rejected because itlacked specific utility

viii. Invention is not useful, utility notestablished prior to anothers similarinvention

ix. Ascertaining the metes and bounds of apatent1. Product patents cover all potential

uses2. Process patents are available for new

uses, but these give rise to blockingpatents

b. Research tools technical input to basic scientificresearch.

i. process to chemical was input to furtherbasic research into the utilty of the produced

chemical2. In re Brana (Fed. Cir. 1995)a. Specific utility and substantial utilityb. Invention: set of compounds with alleged anti-

tumor propertiesc. Board of Patent Appeals and Interferences rejected

the patent on two grounds:i. Nospecific utility because the application

did not specify the diseases treatable bythese compounds

ii. Notsubstantially useful because there wasno indication they would work in humans

d. Federal Circuit reversed the Patent Board and heldthe patent valid:

i. Specific utility established in treating micetumor models

ii. Substantial utility does not require utility inhumans

vi. 2001 PTO Utility Examination Guidelines1. Specific Utility

a. A utility that isspecific to the subject matterclaimed

b. A claim to a DNA sequence as simply gene probeor chromosome marker would not be consideredspecific in the absence of a disclosure of a specificDNA target

2. Substantial Utilitya. Utility that defines a real worlduse

20


21/134

b. A claim to an intermediate product that is used inmaking a final product of no know utility is notsubstantially useful

c. Using a mass of DNA fragments as a paperweightdoes not establish substantial utility

c. Disclosure and enablement quid pro quo grant exclusive rights inexchange for disclosure and enablementi. 4 Requirements of disclosure and enablement

1. Enablement - 112, 12. Written description conceptual overlap, but a distinct

requirement from enablement3. Best mode e.g. for an alloy metals, must disclose specific

technical details regarding how to make it.4. Claim definiteness - 112, . Claims define the metes and

bounds, get precision by having distinct claimsii. Case Summary

1. Enablementa. The Incandescent Lamp Patent (1895)i. cant have undue experimentation

b. In re Strahilevitz (C.C.P.A. 1982)i. prophetic examples can help to enable basic

on generally accepted principles2. The Written description requirement

a. The Gentry Gallery, Inc. v. The Berkline Corp.(Fed. Cir. 1998)

b. University of Rochester v. G.D. Searle & Co., Inc.(Fed. Cir. 2003)

3. Definite claimsa. Orthokinetics, Inc. v. Safety Travel Chairs, Inc.

(Fed. Cir. 1988)b. Standard Oil Co. v. American Cyanamid Co. (E.D.

La. 1984)4. Best mode

a. Randomex, Inc. v. Scopus Corp. (Fed. Cir. 1986)b. Chemcast Corp. v. Arco Industries (Fed. Cir. 1990)

iii. Standard is relative to person of ordinary skill in the artiv. Enablement

1. The Incandescent Lamp Patent (1895)a. Invention filament in light bulb. 2 patents at

issue, Sawyer and Man and the Edison patent. Inthis infringement suit, Edision asserts that Sawyerand Man did not enable w/ their patent disclosureand that Sawyer and Mans patent is not novel.

b. *Sawyer and Man failed in the market place, but

this is not relevant to utility, may be relevant to

non-obviousness (I think)

21


22/134

c. The Sawyer and Man Patent Claimsi. 1. An incandescing conductor for an electric

lamp, of carbonized fibrous or textilematerial and of an arch or horseshoe shape,substantially as hereinbefore set forth.

ii. 3. The incandescing conductor for anelectric lamp, formed of carbonized paper,substantially as described.

iii. Genus in claim1 Carbonized fibroustextile materials. Specie in Claim 3 carbonized paper

d. Sawyer and Man actually used carbonized paper,but they are trying to assert with their patent thatthey have the right to exclude all carbonized fibroustextile materials.

e. A patent must enable one to practice a claimed

invention by disclosing how to make and use itf. No common principle - If Sawyer and Man haddiscovered in fibrous and textile substances aquality common to them all, or to them generally, asdistinguishing them from other materials . . . andsuch quality or characteristic adapted thempeculiarly to incandescent conductors, such a claimmight not be too broad. in fact, most of themembers of the genus did not work well. It tookEdison great effort to find that particular bamboothat was a good filament material.

g. The enablement requirement prevents undueexperimentation

i. Not possible to know what fibrous ortextile material was adapted to the purposeof an incandescent conductor, except by themost careful and painstakingexperimentation

ii. The anticipation-infringement symmetry1. That which anticipates, if earlier,

(literally) infringes, if later2. No doctrine of equivalence for

anticipation this is why we sayliterally infringe in refernce tothat which infringes, if later, wouldanticipate if earlier.

2. In re Strahilevitz (C.C.P.A. 1982)a. Invention methods and devices for removing

haptens, antigens, or antibody from blood of aliving mammal. Useful for detox after overdose.

22


23/134

b. PTO rejected patent based on insufficient disclosureunder 35 USC 112

i. PTO wanted a working example of theinvention. However, the Supreme Courtsays this is not necessary part of 35 USC

112.c. Holding purely conceptual works can meat therequirement of 35 USC 112.

d. Prophetic examples may enable the prior art citedby Strahivlevitz was sufficient to enable one skilledin the art to practice the invention.

i. if a principle is known, then the propheticexample may enable

e. presumption of enablement begins in favor of theapplicant.

3. Summary

a. Procedural aspects of enablementb. Enablement is relative to a person having ordinaryskill in the art

c. Prophetic examples may enablev. The Written Description Requirement

1.

2. Must describe what the inventor considers to be herinvention

3. Related, but distinct from the enablement requirement:a. [Consider a case] where the specification discusses

only compound A and contains no broadeninglanguage of any kind. This might very well enableone skilled in the art to make and use compounds B

23


24/134

and C; yet the class consisting of A, B, and C hasnot been described.

4. Interplay of two statutesa. 35 U.S.C. 120 Benefit of Earlier Filing Date in the

United States

i. As long as new application relates back tothe specification of the 1st application, youget the priority date of the earlier filedapplication

b. An application for patent for an inventiondisclosed [as per 35 U.S.C. 112, 1] . . . which isfiled by an inventor or inventors named in thepreviously filed application shall have the sameeffect as to such invention, as though filed on thedate of the prior application . . . if it contains aspecific reference to the earlier filed application.

c. 35 U.S.C. 132 Notice of rejection, Reexaminationi. No amendment shall introduce new matterinto the disclosure of the invention.

ii. No new matter shall be introduced. Cantamend the specification. Can amend theclaims. This is a key distinction

5. Evolved as means of preventing patent applicants fromunduly amending claims based on subsequent work andmarket developments

6. Fell into disuse because of redundancya. Enablement doctrineb. Bar against new matter in amendments

7. Federal Circuit revived the doctrine in the 1990s as asubstantive limit on claim scope

8. The Gentry Gallery, Inc. v. The Berkline Corp. (Fed. Cir.1998)

a. The specification must provide a written descriptionof the invention in possession

b. Claims must correspond to the written descriptionof an invention

c. Prevents capturing later developmentsd. Standards of review

i. Compliance with the written descriptionrequirement is a question of fact

ii. Enablement is a question of lawe. Invention reclining sofa with two reclining seats.f. Substantial utility facilitates watching TVg. Gentry suing Berkline for infringement. Berkline

say that Gentrys patent invalid for lack of writtendescription.

24


25/134

h. Berkline wanted a declaration that Gentry patentwas invalid.

i. Specification of Gentrys patent stated controlmechanism had to be in central console

i. The inventor said this was important detail.

ii. But the Gentrys claims were too broad.iii. Written description said controls had to beon the center console. However, in theclaims, the claims were not limited toplacing the controls on the center console.

iv. Sproule, the inventor, thought controlsshould be in the center console, but hewatched his competition and wrote hisclaims to encompass their technology inaddition to his own.

j. Placing the controls elsewhere was held to be

nonobvious9. University of Rochester v. G.D. Searle & Co., Inc. (Fed.Cir. 2003)

a. COX-1 and COX-2; 2 enzymatic pathways.i. COX-1 protects the stomach, COX-2 creates

inflammation.

ii. what to inhibit COX-2 and not COX-1.

iii. Celebrex-type pain killers that selectivelyinhibit COX-2

b. University of Rochester received a patent 479,methods for identifying compounds that would

inhibit COX-2. Then divisional 850, claimingmethod for inhibit PGHS-2. 850 patent is at issuein this case.

i. 850 is a process patent.c. University sues Pfizer, Searle, and others after it

receives its patent.d. Pfizer responds and get summary judgment based

oni. Validity

ii. Patent does not satisfy the writtendescription requirement

e. Court finds that patent is indeed invalid for failureto comply with written description. Undueexperimentation required to find the compound ofinterest.

f. Here, the specification described the invention butdid not enable it. Generally described thecompound, but did not specifically enable it.

25


26/134

g. Enablement and written description are distinctrequirements.

h. Court views the invention as the compound thatidentifies the COX-2 inhibitor.

i. But university did not identify the actual

compound, not in possession of the realinvention they were trying to claim.i. Distinguishing from enablement

i. Is this invention enabled. Not enabled.Undue experimentation would be required toidentify the compound.

j. The written description must demonstratepossession of the claimed invention

i. It means little to invent a method if onedoes not have possession of a substance thatis essential to practicing that method.

Without that substance, the claimedinvention is more theoretical than real; it is,as defendants argue, akin to inventing acure for cancer by utilizing a substance thatattacks and destroys cancer cells whileleaving healthy cells alone. Withoutpossession of such a substance, such a cureis illusory, and there is no meaningfulpossession of the method.

10. Some overlap w/ enablementa. Quote presented in the slides could enable and yet

not fall within your written description11. Summary

a. Written description requirement requires theapplicant to fully describe (as opposed to enable) aninvention

b. Ties later claims or applications to a prior writtendescription

c. Narrows claims based on the disclosured. Demonstrates that the patentee is in possession of

an invention deserving a patentvi. Claim Definiteness

1. Requirement of Claim Definitenessa. 35 U.S.C. 112, 2

i. The specification shall conclude with oneor more claims particularly pointing out anddistinctly claiming the subject matter whichthe applicant regards as his invention.

b. Permutit v. Graver Corp. (1931)

26


27/134

i. The statute requires the patentee . . . toinform the public during the life of thepatent of the limits of the monopolyasserted, so that it may be known whichfeatures may be safely used or manufactured

without a license and which may not.c. Enablement and the written description requirementconcern whether thespecification adequatelysupports the claims

d. Claim definiteness deals with whether the claimsthemselves are clear or ambiguous

e. Analogy to the metes and bounds of a parcel ofproperty

2. Orthokinetics, Inc. v. Safety Travel Chairs, Inc. (Fed. Cir.1986)

a. Orthokinetics is assignee of patent for collapsible

wheel chair and is suing Safety Travel Chairs forinfringement. Safety Travel Chairs asserts patent isinvalid.

i. Claim 1 so dimensioned as to be insertablethrough

1. Claim 1- In a wheel chair having aseat portion, a front leg portion, anda rear wheel assembly, theimprovement wherein said front legportion isso dimensionedas to beinsertable through the space betweenthe doorframe of an automobile andone of the seats thereof . . . .

2. District court said this lackeddefiniteness.

b. Patent is validi. Federal Circuit said claims do not enable.

This is the function of the specification.And Claims do not have to describe theinvention as carefully as necessary in thespecification.

ii. Claims are read relative to one of ordinaryskill in the art. And that person could figureout what so dimensioned means.

1. Also for the sake of linguisticeconomy, it would be burdensome tolist all the possible dimensions ofevery car this chair would fit.

2. So dimensioned had meaning to oneof ordinary skill in the art

27


28/134

iii. Who is the audience for the claims here?Person of ordinary skill in the art. And thatperson would know what the dimensionswould be.

1. Claims do not need to enable or

fully describe2. Claim definiteness is assessedrelative to a person of ordinary skillin the art

3. Claims are read in light of thespecification

4. Would a person of ordinary skill inthe art understand what is claimedwhen the claim is read in light of thespecification?

c. Claim definiteness is field dependent

i. Definiteness is field-dependentii. [I]f the language is as precise as the subjectmatter permits, the courts can demand nomore.

iii. Georgia-Pacific Corp. v. United StatesPlywood Corp. (2d Cir. 1958)

iv. Claim definiteness is a question of law3. Standard Oil Co. v. American Cyanamid Co. (E.D. La.

1984)a. Claims only fail if insolubly ambiguous

i. [I]f the meaning of the claim is discernible,even though the task may be formidable andthe conclusion may be one over whichreasonable persons may disagree, we haveheld the claim sufficiently clear to avoidinvalidity on indefiniteness grounds. ExxonResearch & Engineering (Fed. Cir. 2001)

ii. Claim is indefinite only if it is insolublyambiguous and that a claim is notinsolubly ambiguous if it can beconstructed, even with difficulty, in light ofthe specification and the perspective of oneskilled in the relevant art.

b. Invention was a catalytic process used tomanufacture acrylamide

i. problem with claim said partially solubleand this was not definite enough. Therewas no standard definition and was also

not defined in the specification.

28


29/134

ii. Patentee could have used the phraseslightly soluble

1. Slightly soluble was an acceptedterm in the field. Partially solubleis not a term of art that was defined.

c. Claim held invalid for lack of definiteness.d. All terms in the claims must have a clear meaning

i. but other considerations, such as terms usedby those skilled in the art, are relevant.

ii. Patentee is her own lexicographer1. Antecedent basis

4. The Relationship of the Specification and Claimsa. 1. Courts interpret claims in light of the

specificationb. When courts construe patent claims, they may not

read limitations into the claims from thespecificationi. Courts can look to the specification to shed

light on the claims (for example, byapplying terms defined in the specification),but they cannot use the specification tomodify the claims as written.

ii. Courts cannot modify claims as writtenbased on their reading of the specification

1. An issue of degreec. compare w/ The Gentry Gallery v. Berkline: A

specifications description of an essential elementof an invention can narrow the range of permissibleclaims

i. Courts may strike down a claim in itsentirety if it is not supported by the writtendescription requirement

ii. An all-or-nothing issue5. Means-plus-function (Single means-plus-function claims

not allowed, must be in concert with other elements)a. Claim e.g. is just a single means-plus-function. Not

allowed

b. Can only use means-plus-function in combinationwith other devicesi. See State Street

1. all claims were means plus function,but there was several of them andthere was a combination of them

c. An element in a claim for a combination may beexpressed as a means or step for performing a

29


30/134

specified function without the recital of structure,material, or acts in support thereof, and such claimshall be construed to cover the correspondingstructure, material, or acts described in thespecification and equivalents thereof.

i. 35 U.S.C. 112, 6ii. I claim a means forattaching A to B.d.

GlueGlue

StapleStaple

NailNail

A is attached to BA is attached to B

TapeTape

Means

Function

GlueGlue

StapleStaple

NailNail

A is attached to BA is attached to B

TapeTape

Means

Function

6. Recap

a. 35 U.S.C. 112 1: Specificationb. Enablement, the written description requirement,

and the best mode requirementc. 35 U.S.C. 112 2: Claim definitenessd. Claims define the metes and bounds of a property

righte. Claims do not have to enable or fully describef. All elements of a claim must have a clear meaningg. Various factors considered in claim constructionh. Claims are read in light of the specification, but the

specification cannot introduce new limitations

vii. The Best Mode Requirement1. Best Mode

a. Goes beyond enablement and allows practice in thebest possible manner

b. Distinguishing Enablement from Best Modec. Best mode (most other countries do not have this

requirement) - Quid pro quo US more stringentstandard for disclosure

i. Comparative view of best mode1. Most other countries do not have

best mode may be disadvantage for

foreign filers in the US.2. Randomex, Inc. v. Scopus Corp. (Fed. Cir. 1986)a. The cleaning solution employed should be of a

type adequate to clean grease and oil from the discsurface, such as 91 percent alcohol solution or anon-residue detergent solution such as RandomexCleaner No. 50281.

30


31/134

b. Best mode satisfied even though only best modeand inferior mode listed, where best modeidentified only by the tradename Randomex No.50281. The nondisclosure of the formula pre se didnot rise to the level of violating the statutory

requirement to disclose the best mode.c. Invention portable hard drive disk cleaner.Cleaning solution necessary for use, but onlytrademark name Randomex Cleaner No. 50281disclosed as the best mode in addition to 91%ethanol, which is actually harmful when operationdue to ethanol fumes. Just two cleaning solutionslisted, ethanol and Randomex No. 50281

d. Infringement suit, Scopus said it infringed but thatits defense is that the patent is invalid.

e. Randomex did deliberately refrain from disclosing

the composition of the Randomex Cleaner No.50281 as a way to boost sales for the cleaningsolution

f. Holding Best mode was satisfied. The claimedinvention was not the cleaning solution, the

invention was a machine that used the solution.Therefore, the threshold for disclosure was lowerwrt to the solution.

i. Focus on the invention, the cleaningmachine, not the solution

g. There is no requirement in 35 USC 112 that anapplicant point out which of his embodiments heconsiders the best mode, that the disclosure includesthe best mode contemplated by the applicant isenough to satisfy the statute. Analyze relative toone skilled in the art of cleaning solution. It wasrelatively easy to reverse engineer the cleaningsolution. No need to update the best mode related to no new subject matter.

i. The dissent takes issue with the listing of theinferior mode 91% ethanol

h. Best mode goes beyond enablement mustenable the best mode

i. If best mode hidden among 1000 possible choices,the court may consider that it would take undueexperimentation to identify the best mode.

j. Indiscriminate listing of the best mode among lessfavorable embodiments is permissible

i. There is no requirement in 35 U.S.C. 112that an applicant point out which of his

31


32/134


33/134

ii. If the inventor does not know of a bestmode, there is no obligation to disclose one.

f. Distinguish from Randomexi. The inventor knew that he needed 75 Shore

D, but he just disclose 70 + shore D. This is

different from Randomex, because here theinventor knew of only one mode, this wasthe best mode, and this was not disclosed.

ii. In Randomex, the best mode was actuallydisclosed along with another mode that wasan inferior mode.

g. The actual claimed invention was this grommeti. In Randomex, the subject of the best mode

inquiry was a fluid that was not the actualinvention at issue/

ii. Here, the invention is that issue wrt to the

best mode. Therefore the threshold fordisclosure is higher in Chemcast than inRandomex.

4. Summarya. The best mode requirement mandates disclosure of

specific instrumentalities or techniques known tothe patentee to best practice an invention

b. Increases the disclosure necessary to obtain a patentbeyond mere enablement

i. Assessed relative to a person of ordinaryskill in the art

c. Two-part test:i. Subjective

ii. Objectived. The best mode may be listed indiscriminately, but

intentional fraud is impermissibled. Novelty

i. The Identity Requirement and Accidental Anticipation1. [T]he defense of lack of novelty (i.e., anticipation) can

only be established by asingle prior art reference whichdiscloses each and every elementof a claimed invention.

a. Structural Rubber Products Co. v. Park Rubber Co.(Fed. Cir. 1984)

b. Single reference, Every element of a claim, Eachclaim in a patent is analyzed independently

2. In re Robertson (Fed. Cir. 1999)a. Invention fastening and disposal system for

diapers

33


34/134


35/134

3. In re Seaborg (C.C.P.A. 1964) - Accidental and unknownanticipations

a. Invention element 95 Americum and process formaking it.

b. Two process for making product

c. Allegedly anticipating reference is Fermis reactiondisclosure. The Fermi patent describes a reactorthat if operating it would produce a small andundetectable amount of American.

d. But court finds the Fermi patent does not anticipatethe Seaborg patent.

e. No positive evidence that element 95 was produced.In theory, it was produced, but the amount was sosmall that it would not detectable.

f. General rule: anticipating references must enablei. No doctrine of the patent law is better

established than that a prior patent or otherpublication to be an anticipation must bearwithin its four corners adequate directionsfor the practice of the patent invalidated.

ii. Accidental anticipation may notnecessarily constitute legal anticipation

g. Two possible interpretations of Seaborg:i. Anticipation requires some priorawareness

of the existence of an inventionii. Anticipation does not require awareness, but

the anticipating subject matter must havesomesignificant existence prior to theapplicants invention in order to anticipate

1. Claim cannot be allowed to enjoin anactivity that was previously practiced

4. Summarya. 35 U.S.C. 102 (AGE)b. The identity requirementc. In order to anticipate, a single reference must

contain all the elements of a claimd. Express versus inherent anticipatione. Accidental anticipations do not necessarily legally

anticipate why not?ii. 35 U.S.C. 102: Three Related Concepts

1. Noveltya. Disclosure prior to invention?b. Novelty deals with AGE

2. Statutory barsa. Disclosure prior to one year before filing?b. Statutory bars are clustered together: BCD

35


36/134


37/134


38/134

i. Those engaged in the art of making candles. . . certainly never derived the least hintfrom this accidental phenomenon in regardto anypracticable process formanufacturing such acids. If the acids were

accidentally and unwittingly produced . . .without exciting attention and without itseven being known what was done or how ithad been done, it would be absurd to saythat this was an anticipation of Tilghmansdiscovery.

b. Accidental anticipation gave nothing to the world.i. Edison Elec. Light Co. v. Novelty

Incandescent Lamp Co. (3d Cir. 1909)c. New process to break down fats into soaps, candlesd. Process involved mixing fat, water, and heat

i. Perkins, separately, had lubricated enginewith fat that made the product of Tilghmane. Court said Perkins was just accidental formation of

fat acid and did not anticipate Tilghman process oftreating fat.

f. This holding is known as the doctrine ofaccidental anticipation

2. Schering Corp. v. Geneva Pharmaceuticals, Inc. (Fed. Cir.2003)

a. Awareness or appreciation in the prior art is notnecessary for anticipation

b. Emphasis on actual, detectable existence of theanticipating item

c. Anti-backsliding principlei. [I]f granting patent protection on the

disputed claim would allow the patentee toexclude the public from practicing the priorart, then that claim is anticipated.

d. Distinguishing Tilghman v. Proctori. Here there is inherent anticipation where

there not inherent anticipation in Tilghmanv. Proctor

ii. Tilghman did not conclusive show that fattyacids were formed from engine. Just somerecord that showed engines were lubricatedwith fats

iii. Here, it was conclusive that DCL wasformed and was in the prior art.

e. Case is really about statutory bars, and not noveltyper se. Case discusses 102(b).

38


39/134

f. Invention at issue i. Schering has 233 patent on antihistimamine

loratoadine, Claritan. Issued -1981ii. Schering also has 716 patent - claims

regarding the metabolite, DCL, formed by

Claritan. DCL also works as an antihistime.Earliest priority 2-15-84, issued 1987.iii. Scherring uses the 716 to assert

infringement against Geneva, generic drugcompanies, who is acting on the expirationof the 716 patent. Geneva claims 716 isinvalid as anticipated

g. Court said that 716 was anticipated by the 233patent

h. Inherency test in general, a limitation or the entireinvention is inherent and in the public domain if it is

the natural result flowing from the explicitdisclosure.i. Does not matter that there was no

recognition of DCLii. Where the result is a necessary

consequence of what was deliberatelyintended, it is of no import that the articlesauthor did not appreciate the results.

i. Distinguishing from in re Seaborgi. Seaborg element 95 was not readily

detectable and only theorized to be presentin the Fermi nuclear process

ii. Here, DCL forms in detectable amountsupon ingestion of loratadine. It wasconclusively found that there was actual anddetectable existence of the anticipating item.

j. Prior user rights argument if Patent 716 wasvalid, a patient taking 233 Claritan would beinfringing

k. Anticipation infringement symmetry helps tobolster argument people were already takingClaritan and making DCL. Thus patients wouldinfringe DCL if DCL were held valid. Thus, takingClaritan which implicitly forms DCL, wouldinfringes later in time, anticipates the 716 DCLpatent if earlierand the Claritan 233 patent isearlier in time.

i. that which infringes, if later, wouldanticipate if earlier.

3. In re Hafner (C.C.P.A. 1969)

39


40/134

a. Enablement standard for anticipation. Anticipatoryv. Patent enablement.

i. Patent enablement be able to make and useinvention

ii. Anticipatory enablement In re Hafner gets

at anticipatory enablementb. Halfner files for german patents for new chemicalcompositions but does not disclose a use. Within ayear, he files in US, but again no use disclosed.USPTO rejects patent for lack of enablement under112.

i. When he refiles, his own german patentsanticipate his later US patent applications.The 1964 now is in accord with 112, but isanticipated under 102 by his prior germanpatents.

ii. Asymmetry between anticipatoryenablement and patent enablement1. the german patents told how to make

product and were anticipatoryenablement

2. patent enablement is a differentstandard, have to satisfy 112

c. Timelinei. 1959: Hafner files two German patent

applications on new chemicals; no use isdescribed

ii. 1960: Hafner files in the U.S.; no use isdescribed

iii. PTO rejects because lack of disclosure under35 U.S.C. 112

iv. 1960: Arnold article, which discloses how tomake the compound, is published

v. 1961: Hafners applications are published inGermany

vi. 1964: Hafner refiles in the U.S. with a newdisclosure including the use for the chemicalcompounds

d. Double standard: anticipatory enablement isdifferent than patent enablement

i. [A] disclosure lacking a teaching of how touse a fully disclosed compound for aspecific, substantial utility or of how to usefor such purpose a compound produced by afully disclosed process is, under the presentstate of the law, entirely adequateto

40


41/134

anticipate a claim to either the product orthe process and, at the same time, entirelyinadequateto support the allowance of sucha claim.

e. Halfner Summary

i. Anticipatory enablement requires disclosureof how to make/practice an invention, butdoes not require disclosing a use for thatinvention

ii. No product patents on new uses for oldproducts

iii. Once one discloses how to make and use aproduct, anyproductpatents based on newuses are foreclosed

4. Enablement Standard for Anticipationa. A prior art reference does not anticipate an

invention unless it is enablingb. This is notthe same degree of enablement to patentan invention under 112

i. Anticipatory enablementii. Patent enablement

5. Summarya. Awareness is not necessary for anticipationb. Inherent anticipation may arise when a prior art

article has some significant existencec. Patent enablement: must disclose how to make and

use an inventiond. Anticipatory enablement: need only disclose how to

make an inventionix. The Anticipation-Infringement Symmetry

41


42/134


43/134


44/134


45/134

vii. All that is necessary is enough currency tomake the work part of the possessions of theart.

viii. Figures alone can satisfy the enablementstandard of anticipation

ix. Complete documentary corroboration of thepublic nature of prior art is not necessary3. Summary of References under 102(a)

a. Extremely low standard of anticipatory enablementfor noninforming products in public use

b. A prior art species anticipates a claimed genus, butnot necessarily vice versa

c. Section 102(a) has two elementsi. Domestic knowledge/use inquiry

ii. Global patented/published inquiryd. Information must be publicly accessible in order to

anticipate, but there is no requirement to publicizeaffirmativelye. Printed publications are construed liberally

xii. Noninforming Products in Public Use1. Noninforming products

a. Do not reveal how they work or how they areproduced

2. For noninforming products in public use, the anticipatoryenablement requirement essentially does not apply

a. E.g., SABRE, the airline reservation systemi. Lockwood v. American Airlines (Fed. Cir.

1997)ii. Through use of system, you do not know

how the SABRE system works.iii. Noninforming product, but was still deemed

to be an anticipatory enablement to a patentfor the SABRE system because it

iv. Cant use a patent to withdraw informationfrom the prior art. SABRE has beenpracticed for many years and we wontallow a patent to give exclusive rights toSABRE

xiii. Genus Versus Species1. It is an elementary principle of patent law that when, as by

recitation of ranges or otherwise, a claim covers severalcompositions, the claim is anticipated ifone of them is inthe prior art.

45


46/134


47/134

1. Wrt to # of bullet points, was soconcise it

h. Holds that presentation does constitute printedpublication under 102(a)

i. 1 year grace period maybe this strikes the balance

j. Case is really about statutory bars k. Public accessibility criterion by which a referencewill be judged for 102(b) or 102(a)

l. Distinguish from National Tractor pullersi. Here this was a conference, National Tractor

was a drawing on a napkin known only to afew people. Poster vs. printed publication.

ii. Public accessibility is the keym. Billboard can be a printed publication depends on

the circumstances3. Reeves Bros. v. United States Laminating Corp. (E.D.N.Y

1966)a. Defining patentedb. If in effect the foreign document grants a patent

right to exclude others from producing, using, orselling the invention, process, or article for aspecified period of time, it clearly falls within theaccepted definition of a patent which may beconsidered under Section 102(a) and (b).

c. Foreign patents qua patents are limited to theirclaims

d. U.S. patents are references for both theirspecifications and claims

e. Foreign patents are references only for what theyclaim (unless they also qualify as printedpublications)

f. Patented references are not an important categoryof references

g. Utility Modelsi. Not prevalent in US, exlcusive rights but

easier to obtain than patents.ii. Differ from country from country

1. novelty required, but non-obviousness is not required

iii. easier to get but conferred rights are weakerh. invention at issue lamination of polyurethane to

fabric for flame, and improvement for method orapparatus for operation

i. all 3 patents assigned to Reeves, and he sues USLaminating for infringement

47


48/134

i. argues that gebrauchsmuster GMinvalidates patents,

j. Wrt to invalidity of patent -i. Was GM within view of 102(a) and (b)

1. difference between GM and US

Patent area. GM can only use the claimsonly

i. No nonobviousrequirement

ii. 6 year term for GMiii. Just for articles not

processes.b. US Patent can relate

invention back to disclosure2. Court holds GM to be a patent

despite differences for the sake of102(a) and 102(b). Essential patentquality right to exclude.

ii. Scope of anticipation -1. Court only allows the claims to serve

as anticipating references2. Formalistic distinction SC shoring

up geographic split.a. Known or used only applies

to USb. So for foreign GM, only

going to allow a narrow view,just the claims

k. patented not an important category becausemost patents get published.

4. Novely and the economics of researcha. Could argue it is wasteful to de-incentivize the Firm

to not search the prior art and instead to expend thetime and energy to conduct independent research

5. Statutory Invention Registration and Defensive Publicationa. Statutory Invention Registration

i. 35 U.S.C. 157ii. Essentially allows filing a patent with a

promise not to assert infringementiii. Must meet patent enablement ( 112), not

just anticipatory enablementiv. Becomes prior art as of the date offilingv. Allows the registrant to participate in

interferencesb. Defensive publications

48


49/134


50/134

e. The printed publication prong usually swallowsthe patented prong

f. A foreign patent qua patent only anticipates what itclaims

g. Novelty can be modulated to achieve optimal search

behavior by firms and their competitorsxv. 35 U.S.C. 102(a)1. A person shall be entitled to a patent unless 2. the invention was known or used by others in this country,

or3. patented or described in a printed publication in this or a

foreign country, before the invention thereof by theapplicant for patent, . . .

xvi. Section 102(e)1. A person shall be entitled to a patent unless

a. (e) the invention was described in

b. (1) an application for patent,publishedundersection 122(b), by another filed in the United Statesbefore the invention by the applicant for patent,except that an international application filed underthe [Patent Cooperation Treaty] shall have the effectunder this subsection of a national applicationpublished under section 122(b) only if theinternational application designating the UnitedStates was published under Article 21(2)(a) of sucha treaty in the English language; or

c. (2) a patentgrantedon an application for patent byanother filed in the United States before theinvention by the applicant for patent, except that apatent shall not be deemed filed in the United Statesfor the purposes of this subsection based on thefiling of an international application filed under the[Patent Cooperation Treaty]; . . . .

2. 102 (a)(g)(e)a. A person shall be entitled to a patent unless, before

the critical date, the invention:b. (a) was known or used by others in the U.S.c. (a) was patented or described in a printed

publication anywhered.e. (e)(1) was described in a U.S. patent application

that is subsequently published as per 18-monthpublication

f. (e)(2) was described in a U.S. patent applicationthat subsequently issues as a patent

50


51/134

i. 102(e) what is disclosed in patentapplications can count as prior art

1. 122(b) relates to 18 monthspublication of applications

a. Unless inventor disclaims

foreign rights, applicationsare published.g. g(1) was invented by someone else (who did not

suppress the invention) in a WTO country, asestablished in an interference

h. g(2) was invented by someone else (who did notsuppress the invention) in the U.S.

3. Alexander Milburn Co. v. Davis-Bournonville Co. (1926)a.

b. Information in patent applications that ultimatelyissue as patents constitutes prior art

i. Anticipating disclosure is not limited to theclaims

ii. Prior art as of the date the application wasfiled

c. Codification of Milburni. Section 102(e)(1): Applications subject to

18-month publication

ii. Section 102(e)(2): Applications thatultimately issue as patents

d. Secret prior art, but on the path to becomingpublic

e. Rule 131 and swearing behindi. There was no evidence carrying Whitfords

invention further back.

51


52/134


53/134


54/134


55/134

3.

4. Brown v. Barbacid (Fed. Cir. 2002) - the exception. The 1st

to conceive was the 2nd to reduce to practice.a.

b. Burden of proof in an interferencei. Any party attempting to prove an inventive

activity prior to his filing date:1. Preponderance of the evidence

ii. If junior partys filing date is afterthe seniorpartys patent application is published orissues as a patent:

55


56/134

1. Clear and convincing evidenceiii. Corroboration requirement for inventive

activities1. Independent evidence is necessary

c. Interference proceedings to determine priority.

d. Count = contested claim under review in aninterference.e. Count (the disputed claim) assay to identify

anti-cancer compounds. Both parties claim to befirst to invent.

f. Experiments by Brown may have establishedpriorty

i. Evidence lacked explanation allegedly bythe Board. But the court said that oneskilled in the art would have understoodwhat was going on if they had seen the

autoradiographs. This is the evidentiarythreshold to pass.g. Brown wants to show that on Sept. 25, 1989 he

conceived fist. Because if he conceived fist, and 2nd

to reduce to practice, he can win the dispute byproving diligence over the relevant time frame(before Barbacid conception but only haveevidence of Barbacids reduction to practice untilBrowns reduce to practice

h. Holding b/c the Board did not consider evidencethat Brown conceived the invention before Barbacidreduced it to practice and diligently pursued theinvention from the time of Barbacids reduction topractice through Browns filing date, this courtvacates the award of priorty to Barbacid andremands.

i. In order to conceive, or reduce to practice, you needall the elements of the invention.

i. The Sept. 20 experiment lacked all theelements of the invention

ii. However, the Sept. 25 experiment didcontain all the elements of the invention.

1. But need corroboration. Dr. Caseyoffers some corroboration, but nodirect testimony regarding Sept. 25.All he could say was conception inlate Sept

2. this is the issue the courts are tofocus on during remand.

56


57/134

j. What do you need to satisfy to have reduction topractice

i. In order to reduce to practice, need torecognize the invention as such at that time.

ii. This was not established by the 9-25-89

experiment by Reiss5. Griffith v. Kanamaru (Fed. Cir. 1987) - Diligencea.

b. Diligence only matters when the first to conceivewas the second to reduce to practice

c. Diligence is strictly interpreted, and only genuine

hardships will excuse delayd. The impact of the diligence requirement onbehavior

e. Invention = compound (aminocaritine) used to treatdiabetes

i. Interference proceedf. Griffith must estb. Diligence from a time before

Nov. 17, 1982 (others conception) through Griffitsreducetion to practice on 1-11-84

i. Diligence not established.g. Not reasonable for Cornell to require the public to

wait for the innovation, given the well settled policyin favor of early disclosureh. Court does not agree that unique University

circumstances warrant exceptions in the diligencerequirement

i. Prof. had to wait for fundii. For a graduate student

iii. Court does not care about these reasons.

57


58/134

i. Record showed that between 11-17-82 and 9-13-83(When Griffith renewed his efforst towardsreduction to practice), Griffith interrupted and oftenput aside the aminocarnitine project to work onother experiments.

j. Some valid excuses would have beeni. Illness,ii. Hardship of a more genuine variety 0-

poverty, family illnessk. No special treatment for Universities

6. What is inventiona. Invention is aprocess spanning conception and

reduction to practice; priority is generallydetermined based on reduction to practice (thoughwith significant exceptions)

i. Conception - Definite and permanent idea of

the complete and operative invention, as it isthereafter to be applied in practiceii. Reduction to practice

1. Actual: building a working versionof the invention

a. Practicing an embodiment ofthe invention compassing allelements in dispute

b. Appreciation that theinvention worked for itsintended purpose

2. Constructive: filing a patentapplication that satisfies 112

3.7. Priority Rules

a. The first to reduce the invention to practice usuallyhas priority

b. Filing a valid application constitutes constructivereduction to practice

c. The first to conceive may have priority over the firstto reduce to practice if

d. the first to conceive was diligent from a time priorto the other inventors conception through to herown reduction to practice

e. Any reduction to practice that has been abandoned,suppressed, or concealed is disregarded

8. Priority - The first to conceive may have priority over thefirst to reduce to practice if the first to conceive wasdiligent from a time prior to the other inventors conceptionthrough to her own reduction to practice

58


59/134

xxi. Reduction to Practice1. DSL Dynamic Sciences Ltd. v. Union Switch & Signal,

Inc. (Fed. Cir. 1991)

a.

b. General rule for reduction to practice:i. The embodiment actually worked for its

intended purpose.c. However:

i. [T]ests performed outside the intendedenvironment can be sufficient to showreduction to practice if the testing conditionsare sufficiently similar to those of theintended environment.

d. Alleged reduction to practice must have allelements of a count

e. Subsequent activities can cast doubt on reduction topractice

i. E.g., delay in filing (abandoned experiment)f. Reduction to practice requires knowledge that an

invention worksi. Consistent with constructive reduction to

practice and 112 requirementsg. No requirement of commercial viability

i. [T]here is certainly no requirement than aninvention, when tested, be in a commerciallysatisfactory stage of development in order to

reduce the invention to practice.h. Invention is a coupler mounted assembly for train

engineeringi. brake pressure monitor is part of the

assemblyi. Interferencej. DSL lost at interference, and at district court

59


60/134

k. To establish priority, need to show reduction topractice prior to

l. Union argues it R2P before DSL based on priorexperiments.

i. experiments were not exactly as they were

to be marketedii. conditions did not exactly approximate aswould be used

iii. But, court said this is close enough. Theywere tested to 15G and they were intendedfor 20G.

m. Even though Union later modified the prototype, theCourt said it was still close enough.

n. Generally invention must work for intended purposeo. Testing that is close enough is permissible.

xxii. Abandonment, Suppression, Concealment

1. Abandonment, suppression, and concealment apply afterreduction to practice2. Indicate an attempt to keep a fully-formed invention away

from the public3. Generally, an invention that is abandoned, suppressed, or

concealed will notserve as anticipating prior arta. (Unless it is otherwise made publicly accessible)

4. Abandoned Experiment Versus Abandonmenta.

b. Abandoned experiment never reduced to practice.Calls reduction to practice into question

5. Abandoned, Supressed, Concealed

60


61/134

a. Peeler v. Miller (C.C.P.A. 1976)b.

c. Abandoned experiment: questionable reduction topractice

i. Different than abandonmentii. Delay in filing gives rise to an inference of

an abandoned experimentd. Abandonment, suppression, and concealment: after

reduction to practicei. Lower standard than diligence

ii. Distinguish from statutory bars

iii. Generally must be intentional1. Nospecific intent required2. Mere delay is permissible3. Long delay between reduction and

filing can give rise to an inference ofabandonment

4. Inference may be overcome by post-reduction efforts to perfect theinvention

iv. May be imputed from assignee to patentee

61


62/134

e.

f. Invention improved hydraulic fluid that reducescavitation.

g. Priority dispute. PTO found for Miller b/c MillerR2P first

i. Did Miller R2P 1st? yes. Even thoughintended for airline hydraulic fluid, theinvention just claimed ability to reducecavitation. Therefore, Miller did R2P b/c heR2P invention and passed it on to thecorporate patent attorneys.

ii. If so, was there suppression before filing for

patent application (4 year gap)?1. De facto inventor Legal considered

to be inventor, under 102(g), Peeler.2. de jour first inventor Miller, actual

inventor. Miller deemed to haveh. 4 year delay due to Monsantos patent department

in-efficient operations. Personnel shortages.i. These reasons not reasonable. 4 years is

prima facie unreasonable. Miller did all hecould, but he is not to be deemed to theinventor.

i. To abandon, suppress, or conceal, need intent, notspecific intent though.j. Spurring can give impression of suppression,

concealment, or abandonment. You were spurredon to file by your competitors, so it is presumed thatyou were concealing the knowledge before that.

6. Summary

62


63/134

a. Diligence is strictly interpreted, and only genuinehardships will excuse delay

b. Reduction to practicei. Generally, invention must work for intended

purpose

ii. Testing that is close enough is permissiblec. Abandoned experiment versus abandonmentxxiii. Prior art uses of section 102(g)

1. Dow Chemical Co. v. Astro-Valcour, Inc. (Fed. Cir. 2001)a. Differences between 102(g)(1) and 102(g)(2)b. Burdens of proof and productionc. Anticipation-infringement symmetry

i. Because the foam made by AVI wouldinfringe the Park patents if made after thePark invention, it anticipated in fact therelevant claims of the Park patents, since it

was made before Parks invention.d. Invention and awarenessi. Awareness of invention need not require

awareness of its patentabilitye. Filing a patent application is not the only way to

counteract abandonment, concealment, andsuppression

i. Commercializationii. Making an invention publicly accessible

1. Applies even to noninformingproducts in public use

f. Invention Foam blowing agentg. Dow (patent) held invalid, anticipated by AVI, AVI

established prior invention as prior art. AVI is notseeking to patent this subject matter.

h. AVI licensed a patent (Japan) using isobutene toblow up foam. Doing some inventive activity usingthis license agreement.

i. On Appeal, Dow arguesi. AVI not inventor. Can AVI be inventor is

not recognizing they had invented? Courtrejects Dows argument

1. Court said they did not need to know; they need to know that theyinvented something. AVI didrecognize

2. do not need to appreciate thepatentability of invention, just needto recognize that you have aninvention to be deemed the inventor.

63


64/134

3. testimony substantiated that theyknew they invented something.

ii. Under 102(g), Dow argues AVI abandonedif they are the inventor.

1. Court does not buy this argument

either.j. Dows patent is invalid as anticipated by AVI. Noone gets the patent.

k. Burden of proof and productioni. AVI challenging issued patent: burden of

production on AVI, and must showanticipation by

1. clear and convincing evidence.l. Invention and awareness need to be aware that

you invented something, do not have to be aware ofthe patentability of the subject matter.

xxiv. Prior Art References for Novelty1. Section 102(a)a. Known or used in the United Statesb. Patented or described in a printed publication

globally2. Section 102(e)

a. Information in United States patent applicationsb. (1) Applications subject to 18-month publicationc. (2) Applications that ultimately issue as patents

3. Section 102(g)a. Prior inventionb. (1) as established in an interference by any

competing invention from a WTO countryc. (2) in the United States

xxv. Relationship of Prior Art Provisions1. Section 102(g) does not swallow up all the other sources

of prior arta. Section 102(g) requires priorinvention

i. Mere information can constitute prior artunder 102(a) and 102(e), even if thedisclosed invention is never reduced topractice

b. Section 102(e) extends to information disclosedbutnot claimed in patent applications, unlike 102(g)(1)

c. Section 102(g)(2) does not reach inventions made ina foreign country, unlike 102(a)

xxvi. Prior Art: Publicly Accessible or on a Trajectory to BecomingPublicly Accessible

64


65/134

1. Section 102(a): public knowledge or use; patented orpublished

2. Section 102(e)a. Section 102(e)(1): applications that will be

published within 18 months

b. Section 102(e)(2): applications that eventuallybecome issued patents3. Section 102(g)

a. Prior inventions that have not been abandoned,suppressed, or concealed

b.xxvii. Rule 131: 37 C.F.R. 1.131

1. In the context of PTO reexamination, allows a patentapplicant to show invention before the date of a prior artreference

2. Swear behind or antedate the prior art reference

3. No corroboration requirement4. Exceptions:a. Cannot be used where the allegedly anticipating

reference is a U.S. patent or U.S. patent applicationthat claims the same invention

b. If so, an interference is appropriatec. Compare with Alexander Milburn Co. v. Davis-

Bournonville Co.i. Wrt (102(e))

ii. Whitfords application was anticipated byClifford application, which discloses B,

iii. Whitford could have swear behind Cliffordb/c Clifford not claiming B under Rule 131

5. Cannot be used where the basis for rejection is a statutorybar (date of invention is irrelevant)

6. Cant use w/ US patent or patent application7. Cant be use against statutory bar

a. This date is relevant to date of filing of application8. In re Moore (Fed. Cir. 1987)

a. Rule 131 allows antedating prior artb. Different policy concerns apply to interferences and

Rule 131 proceedingsi. Interference:

1. Dispute between two applicants2. A patent willissue3. Policy: award the patent to the party

who satisfied all requirements firstc. Rule 131:

i. Ex parte proceeding with one applicant

65


66/134

ii. Policy: award patent if applicant can

09Patent Law - Lee - F07 - Outline

Documents

Transcript of 09Patent Law - Lee - F07 - Outline