Hulbert Patent Office Practice Fall 2009

8/2/2019 Hulbert Patent Office Practice Fall 2009

1/26

Hulbert Patent Office Practice 2009

A. INTRODUCTION:

A good patent application is a document prepared in anticipation of litigation

1. The more successful the product, the greater the likelihood of infringement.

2. A patent application is, among other things, a sales pitch to future judges and juries3. There is an emphasis, if not a premium, on precise clear language

Object of class: Learning to prepare and submit a passable patent application andprosecution

Typical approach in preparing an application: Interview the inventor; then the first step isto draft the claims and then the specification to support the claims (antecedent

process). This is a revolving process.

B. CLAIM CONSTRUCTION :

Claim construction requires knowledge of the inventions structure, function and the prior art (what has to be claimed around)

Rule of patent claiming: you cannot simply list the constituent parts

C. INVENTORSHIP

Who is an inventor?

Ethicon, Inc. v. US Surgical Corp.USCA, Fed Cir., 1998

Surgical trocar was invented by Dr. Yoon, in collaboration with Choi, an electronicstechnician.Holding:Where inventors choose to cooperate in the inventive process, their joint inventions may

become joint property without some express agreement to the contrary.

Each joint inventor must generally contribute to the conception of the invention.Conception: A formation in the mind of the inventor of the invention as acomplete and operative type of the invention

This case involves some clever lawyering by an infringing competitor.

When an individual is NOT an inventor:1. Those who supply well-known principles or explain the state of the art without

a firm and definite idea of the claimed invention do not qualify asinventor

1


2/26


2. Nor does one of ordinary skill in the art who merely reduced the inventors ideato practice.

A coinventor need not make a contribution to every claim of a patent; a contribution to asingle claim is enough.

A coinventor may be added under 35 USC 256:35 U.S.C. 256. Correction of named inventor

Whenever through error a person is named in an issued patent as the inventor, or through error aninventor is not named in an issued patent and such error arose without any deceptive intention on his part, theDirector may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error.

Adding an inventor under 256 requires more than testimony, it requirescorroboration by the alleged co-inventor: contribution must be demonstratedby clear and convincing evidence .

Hess v. Advanced Cardiovascular SystemsUSCA, Fed. Cir. 1997

Inventors of a balloon catheter for vascular angioblasty consulted with a plasticsengineer, concerning suitable materials for a portion of the catheter Holding:The engineer was not a coinventor because he did not conceive an important element or some claim that is claimed in the patent

The principles explained by Hess were well-known and available in textbooksHess did no more than any skilled salesman would do

Squaring the Ethicon and Hess holdings:1. One element of one claim is all that is required for inventorship ( Ethicon ).2. But a sales rep who tells the inventing physicians which plastic to use is not an

inventor ( Hess ).3. Inventor must conceive of an element claimed in the patent

If you could have gotten the information from a resource (book, sales rep,etc.) that argues against inventiveness (Hess)

4. There is some grey here, however.

Courts have been lenient with the description of what constitutes a significantcontributionWhat are the requirements for co-inventorship?

1. Requires collaboration (cooperation in the inventive process).2. There must be an indication of intent to co-invent3. Co-inventors do NOT have to work at same time and place

Lab Notebooks

2


3/26


1. Important for establishing inventorship, date of conception, continuity of research, etc.2. Mainly common sense:

a. Should be signed and dated by an non-collaborating individual whounderstands the nature of the invention

b. Most firms are fairly slack about lab notebook keeping (tend to lose

interferences that way) Motorola is an exceptionc. Motorola wins a lot of lawsuits.

Other restrictions on inventorship

Electro-Nucleonics , Inc. v. Mossinghof US District Court, D.C. 1984, handout

Patent filed 366 days after trade show is invalid under public use ban.Item not on sale, but was still a public use, because was on view by the public

Sage Products v. Devon IndustriesUSCA Fed Cir. 1997, Supp.

How to get around the doctrine of equivalents: the doctrine of equivalents does not grantSage license to remove entirely the top of the container and Over said slot limitationsfrom the claim.

Person writing Sage patent perhaps didnt understand the invention: Opening at the topwasnt necessary

Goes to inventor interview

D. THE WRITTEN DESCRIPTION REQUIREMENT:

35 USC 112 generally:1. Requires enablement , description of best mode known at time of filing , and

must provide a written description .2. Written description requirement: You can fail the written description

requirement even if enablement is satisfied.3. Does the inventor have in his possession at time of application the invention as

claimed?The invention must be envisioned at the time of the application; a trivial

amendment will not be allowed if there is no antecedent basis in theapplication. (Biotech cases are an exception)

35 U.S.C.A. 1121. The specification shall contain a written description of the invention, and of the manner and process of makingand using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it

3


4/26


pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best modecontemplated by the inventor of carrying out his invention.

Paragraph 2 sets out the core provisions2. The specification shall conclude with one or more claims particularly pointing out and distinctly claimingthe subject matter which the applicant regards as his invention.

Pararaphs 3-5 deal with dependent claims3. A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependentform.

4. Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previouslyset forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall beconstrued to incorporate by reference all the limitations of the claim to which it refers.

5. A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependentclaim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall beconstrued to incorporate by reference all the limitations of the particular claim in relation to which it is beingconsidered.

Paragraph 6 deals with means plus function claims6. An element in a claim for a combination may be expressed as a means or step for performing a specifiedfunction without the recital of structure, material, or acts in support thereof, and such claim shall be construed tocover the corresponding structure, material, or acts described in the specification and equivalents thereof.

An example of multiple dependent claims:I claim:

1. A widget2. The widget of claim 1 plus the element of legs ( dependent claim 1 )3. The widget of claim 2 plus the element of legs ( dependent claim 2 )

HOP*: Hulbert prepares independent claims, they work better with juriesMultiple groups depending from each other are not allowed (but allowed inEurope)

A multiple dependent claim shall not serve as the basis for other multipledependent claims

* HOP = Hulbert on Patents: Hulberts personal beliefs and practices

Ex parte FressolaPTO Board of Patent Appeals and Interferences, 1993

Applicants patent application was rejected by the examiner on claim: A system for thedisplay of stereographic three-dimensional images of celestial objects as disclosed in thespecifications and drawings herein

4


5/26


Holding:The claims were not presented with sufficient specificity . The claims themselves mustdefine the limits of the invention and cannot merely refer to the specs or the drawings

1. Phrases in claims referring back to the description and drawings are to be given

no interpretive importance2. The CLAIMS define the boundary of the invention3. Phrases which incorporate by reference have no legal meaning and can be

vague and ambiguous

E. CONTINUATIONS IN PART (CIP)

A CIP patent application is an application which contains some matter in common with aprevious patent application (called the "parent" application), and that also contains newmatter, and which was filed at a time when the parent application was pending.

Example:1. Jan 1 file claim A and B2. File continuation in part to:3. Feb 2 file claim A B and C4. Assert claim C with priority date of Feb 2; so any infringement including C goes to the

later priority date

F. CONTINUATION PATENT APPLICATION

The continuation application is a second application for the same invention claimed inthe first application by the same inventor containing the same disclosure as the firstapplication and filed while the first is still pending.

G. PREAMBLES

Catalina Marketing International, Inc. v. Coolsavings.com, IncUSCA Fed. Cir., 2002

Catalina developed a patent for an in-store coupon generating machine that communicatedwith a central computer. Locations of the machines were recited in the preamble

Holding:A preamble MAY limit the scope of the claim if there is a clear reliance upon the languageof the preamble to define the scope of the claim or if it is essential to an understanding of the claims or to distinguish it from the prior art

A preamble must breathe life, meaning and vitality into claim to be limiting(whatever that means)

5


6/26


Main lesson of Catalina : In drafting preambles: keep it short and assume that anything inthe preamble might be a limitation on the claims

Jepson claim:This is a claim form wherein the preamble acknowledges the prior art teachings . Thewords "the improvement comprising" or "the improvement consisting of" or "theimprovement consisting essentially of" are generally employed to form a border betweenthe preamble and the body of the claim . It is followed in the body of the claim by what is

believed to be unique.

Preamble is impliedly admitted to be prior art unless it clearly reflects theinventors own work.

Jepson claims may be useful in a crowded art.

HOP: Never use Jepson claims (within the US).Why does he hate them? Admits the prior art. Theyre too much of a setup ininfringement cases.

Chef America v. Lamb-WestonUSCA Fed Cir., 2004, Supp.

Claimed process for baking bread, heating dough to 400-850 o, rather than the air in theoven (at which temperature it would be a lump of coal).Lesson: Be careful in claim drafting. Claims are strictly construed according to their common meaning and the court will not rewrite them. Ouch!

6


7/26


Athletic Alternatives v. Prince Mfg. Co.USCA Fed. Cir., 1996, Supp.

Alleged infringer's sports racket with splayed strings that had two offset distances did notliterally infringe patentee's racket in which offset distance varies between minimum and

maximum distances; patentee's statutory burden to distinctly claim subject matter favorednarrower construction covering only rackets with splay of at least three offset distances.Claim 1 of the '097 patent includes the limitation that the splay-creating string endoffset distance take on at least three values, i.e., a minimum, a maximum, and atleast one intermediate value.

H. REVIEW: CLAIM CONSTRUCTION:

1. Look first to intrinsic evidence:Look to the wording of claim and specifications and prosecution history.

2. Look second to extrinsic evidence:Doctrine of claim differentiation:

Different claims mean different things.

Court says that it will construe claims narrowly against the drafterPublic wins, drafter loses

Lesson: Look for ambiguities or sloppiness in claim drafting.

In re Donaldson, p 557

Means for claims are interpreted strictly in light of the specificationsSee Paragraph 6 of 112: Means is key word for the structure of such a claim:

Donaldson says you get the structure described in the specification plusequivalents and thats all

Al-Site v. VSI International, Inc.

Means for claim for securing an eyeglass frame to a hangar member When is a means for claim inappropriate?

Means for claims are construed narrowly: and thus may serve as an unnecessary delimiter on the claim. So if employing a means for claim, you should write the specifications aswidely as possible.

7


8/26


I. 35 USC 112 P. 6: MEANS PLUS FUNCTION EQUIVALENCE

The allegedly infringing device has to be performing an identical functionHow do we determine if difference is insubstantial?

Question of fact for the jury: how can we convince the jury?

Expert testimony: looking at retail displays

Another aspect of Al-Site : Difference between equivalents under 112/6 and under thedoctrine of equivalents:

Timing:Statutory: equivalence at time of applicationDOE: equivalence at time of infringement

The Test:

Statutory: Identity of function and structural equivalenceDOE: Insubstantial differences (function-way-result)Set out in the means for claim

Statutory equivalents ( 112/6) requires:1. Identity of function2. Structure equivalent to that described in claim

Doctrine of equivalents: protects against the function ( 112/6 does not protectagainst future developments )

How do we determine whether a claim element is subject to 112/6.There is a presumption that you intend to use it if you employ the words meansfor plus a function

One can defeat that by defining the structure in the claims

Means plus function claims are useful for sweeping in a number of items, but youneed to be careful in your specifications

Chiuminatta Concrete Co. v Cardinal IndustriesUSCA Fed Cir. 1998, handout

Concrete cutting saw. Alleged infringing device claimed in a means for claim has wheelsrather than a skid plate and does not infringe under 112/6 because there is no identity of function between wheels and a skid plate

8


9/26


Versa Corp. v. Ag-Bag International Inc.

Claimed invention was bagging machine for compost with perforated pipe to permit entryof air and flutes around the side: accused infringing device has pipes but no flutes.

Claim-at-issue : means associated with the bagging machine for creating air

channels in the compost material in said bag to enhance the composting of thecompost material

The specification also points out that both structures are not required, stating: [I]t is believed that sufficient air will be present to achieve decomposition with either thechannels or the perforated pipe although it is preferred that both the flutes 46 and the pipe50 be utilized.

Believed language in specs is problematic.Applicant doesnt have to be sure of the structure but not necessarily how it worksLanguage speaks to making the air channels (to enhance the composting)

Why leave function of enhancing composting in? Adds too much

Markush group: A Markush group is a way of listing a group of claimed materials.Basically, an inventor writes, selected from the group consisting of A, B, and C ( MPEP 2173.05h). The alternative to claiming it this way would be to write numerous claimssaying, in the invention in claim 1, group X is chlorine, and then drafting additionalclaims for each possible group.

J. PRODUCT-BY PROCESS CLAIMS

1. Generally, these have been used only when a new invention cannot be describedother than by the process of making it.

2. Alternatively some inventors will claim the method of production as a backup claimin their application

3. However, the product that is patented is not limited by the process stated in theclaims:

Example : A has a patent for chemical X, that is synthesized a certain way.B invents a process for making X in a different way. B can claim a

process patent , but the patent for Chemical X remains withA and is valid.

9


10/26


Atlantic Thermoplastics, Inc. v. Faytex Corp.USCA, Fed Cir. 1992, p. 545

AT manufactured shock absorbing shoe insoles under its 204 patent that claimed both thesole and the means of manufacture. Does a competitors sole infringe if manufactured in a

manner different from that claimed in the 204 patent? No.

Because patent infringement analysis proceeds with reference to patent claims, processterms and product-by-process claims serve as limitations in determininginfringements .

Disregarding claim limitations would require court to determine infringement bycomparing an accused product with an embodiment of the claims, not the claimsthemselves, contrary to basic patent principles.

Scripps Clinic v. Genentech case mentioned in the text seems to go the other way

However, Atlantic Thermoplastics is probably better law and controlling

Unique Concepts v. BrownUSCA Fed Cir. 1991, handout

P is licensee for Fabric Wall Coverings patent (260) an assembly of border pieces usedto attach a fabric covering to a wall consisting of linear pieces and right angle corner

pieces. Accused items do not have a preformed 90 degree corner but are mitered to form aright angle when put together

1. Can an omitted claim be read into a claim on allegation of PTO error? No; one cannot read claims in that are not actually there

2. Do the mitered pieces infringe on a prefabbed 90 degree corner piece literally or under the doctrine of equivalents?

No, they do not literally infringe (the pieces are linear) not do theyinfringe by equivalents

Claims read on two items; linear pieces and corner pieces; if a mitered linear piece isequivalent to the corner piece, then the corner piece claim is redundant

All elements rule to prove infringement, every element of the claim must be found inthe accused device literally or by equivalents

10


11/26


Cyber Corp v. FAS Technologies, Inc.USCA Fed Cir., 1998, handout

The 837 patent discloses a device for accurately dispensing industrial liquids: accusedinfringing device is a dual stage pump manufactured for the same purposes.

Did the district court err in refusing to limit the scope of the claims based upon statementsmade to the examiner during prosecution?No . The construction of a patent, including terms of art within its claim, is exclusivelywithin the province of the court

ACTV, Inc. v. Walt Disney Co. et al.USCA Fed Cir. 2003, handout

1. DC erred in construing the term URL to encompass only absolute URLs; it neednot be absolute as long as it provides sufficient information for the system toidentify a relevant information segment, which need not be unique.

2. A court must conduct a separate infringement analysis under the doctrine of equivalents after conducting an analysis for literal infringement for claimslimitations written in the means plus function format if both types of infringement are asserted

Because the written descriptions of the patents lack an indication of the patentees clearintent to limit the term URL to absolute URLs and because the written descriptionsfurther support a broad limitation , the court declines to impose such a limit

Construing a means plus function claim:1. Recited function must first be identified2. Written description must be examined to determine the structure that

corresponds to and performs that function3. 112 p. 6 does not permit limitation of a means plus function claim by

adopting a function different from that explicitly recited in the claim

Orthokinetics v. Safety Travel Chairs, Inc.USCA Fed Cir., 1986, p. 584

Childs wheelchair designed to fit into a car, front wheel fits through door and betweenfront and rear seats, rear wheels retract and chair rests on seat of the car. Claim language:so dimensioned as to be insertable through the space between the doorframe of anautomobile and one of the seats thereof.

Court holds that the claims are definite; the precise, clear and exact requirements of 112should appear in the disclosure section of the specs and not in the claims themselves.

11


12/26


Festo and equivalents: There is only a presumption of surrender of territory under prosecution history estoppel, there is no absolute bar

K. ENABLEMENT AND EXPERIMENTATION

Atlas Powder Co. v. E.I. Du Pont de NemoursUSCA Fed Cir., 1984, p. 449

Atlas develops an explosive that embodies an emulsion to stabilize the mixture of elements.Du Pont seeks to invalidate the patent on the grounds that the claims are overly broad,overclaiming, and non-enabling

Court disagrees with Du Pont: some experimentation is allowable under the descriptionas long as it is not unduly extensive

Experimentation that is not undue:1. One of ordinary skill in the art would know how to select a salt and fuel

and then apply Bancrofts Rule to determine the proper emulsifier 2. Basic principle of emulsion chemistry known to those of ordinary skill

in the art3. Prophetic examples made-up examples; do not necessarily invalidate

or make automatically non-enabling.If based upon actual experience they would be helpful in

enabling one skilled in the art4. False prophetic examples will get your patent invalidated as

misrepresentation

Experimentation should be reasonable: See Goulds eight factors:1. quantity of experimentation required2. amount of direction or guidance presented3. working examples present?4. nature of the invention5. state of the prior art6. relative skill of those in the art7. predictability of the art8. breadth of the claims

12


13/26


In re Wright USCA Fed Cir. 1992, p. 454

If it later disproved that a claim is enabled, the patent is not enabled

Tossing out the mere germ of an idea does not constitute enablementFactors to be considered in enablement:See guidelines, Note 4, p. 461. Eight factors to argue around a rejection

Vas-Cath Inc. v. Mahurkar USCA Fed Cir., 1991, p. 471

Design patent with picture and later utility patentHowever, there is intervening prior art: is the picture sufficient to invalidate the

prior art?Ultimately Federal Circuit reverses; drawing was good enough to demonstrate that M wasin possession of the invention . Written description is a question of fact

Regents of the U of C v. Eli LillyUSCA Fed. Cir. 1997

Written description must include the structure of cDNA encoding for insulin

Claim of patent directed to recombinant procaryotic microorganism modified to encodehuman insulin was invalid, because patent specification did not fulfill statutory writtendescription requirement; although specification provided adequate written description of ratcDNA, it provided only general method of producing human insulin cDNA, notwritten description of human insulin cDNA, as required by asserted claim

Gentry Gallery v. Berkline Corp.USCA Fed Ci. 1998, Supp. mat.

Accused device is separated recliners on a single sectional couch

Accused item is an attempt to write around prior art; which employs a console with thecontrols for the recliners

Issue is whether the console requires controls . Answer is yes, if controls are not present there is no infringement

The scope of the right to exclude may be limited by a narrowing disclosure

13


14/26


If the claims can be purposely misconstrued, they will be ( Berkline is doing a Chef America )

Chef America and Gentry Gallery are almost everything one needs to know about writing

patents. Take your time.

L. BEST MODE

Tronzo v. Biomet USCA Fed. Cir. 1998, Supp. mat.

Artificial hip prosthesis: limitations to the shape of the cup

Patent claims a cup with a truncated cone shape as preferred embodiment

Fed Circuit: Patentee specifically touted preferred embodiment over the others.Claim gets broadened: hemispherical cup not covered

Why dont they get the earlier date? They bragged about how important it is: if you brag about it, you are going to be held to it

Atmel v. ISDUSCA Fed Cir., Supp., 1999

Patented device is a current pump for creating high voltage from lower voltageThe claim is a means for claim: the specification disclosed the title of an article in anIEEE journal incorporated.

But no disclosure other than by reference in the specificationsWhats the rule on incorporation by reference?

Has to be specific and only for non-essential matter (such as state of the prior art)

Union Pacific Resources Co. v. Chesapeake Energy Corp.USCA Fed Cir. 2001, sup.

Inquiry into definiteness of a patent claim focuses on whether those skilled in the art wouldunderstand the scope of the claim when the claim is read in light of the rest of thespecification

Proprietary program sets up a flag that a programmer of ordinary skill COULDNT havedone it in two days/months

14


15/26


Specifications:1. Incorporation by reference; if essential information, must be to US

patent incorporated by reference2. Peptide sequences must list amino acid or nucleotide sequences3. Biological material may include a sample given to a depository

In US it may be deposited after filing date and still keep priority date

Home Diagnostics v. Lifescan, Inc.USCA Fed Cir., 2004, Supplementa

Device measures blood glucose by reflectance reading of blood. Claim in patent for bloodglucose meter, calling for glucose concentration measurement upon detection of suitablystable endpoint, was not limited to preferred embodiment's use of predetermined

premeasurement time period.

The preferred embodiment does not act as a limitation on the claims

Patentee may claim invention broadly and expect enforcement of full scope of thatlanguage absent clear disavowal or contrary definition in specification.

SciMed Life Systems, Inc. v. Advanced Cardiovascular SystemsUSCA Fed. Cir., Supp., 2001

Common specification contained in three patents for balloon dilation catheters used incoronary angioplasty procedures, which referred to an inflation lumen separate fromguide wire lumen used to guide catheter through patient's arteries, limited scope of patentclaims to catheters with coaxial lumens, and disclaimed catheters with dual or side-by-sidelumens configuration.

One purpose for examining the specification contained in a patent is to determine if the patentee has limited the scope of the patent claims.

Competitor's balloon dilation catheter, which used dual lumen configuration thathad been criticized, and disclaimed , in common specification of three patentsfor catheters using a coaxial lumens, did not infringe patent for catheters withcoaxial lumens under doctrine of equivalents.

15


16/26


Advanced Cardiovascular Systems v. Medtronic, IncUSCA Fed Cir. 2001, Supplemental

Claim of patent for elongated balloon dilatation catheter which described a catheter including an elongated catheter shaft, with two guidewire lumen openings in shaft, a

flexible distal shaft section containing guidewire lumen between the openings, and aninflatable dilation balloon on the distal shaft section, did not restrict guidewire lumen to being either coaxial, meaning on the inside of balloon, or side-by-side with balloon.

Alternative embodiments that a person of ordinary skill in the art would understandare embraced by the claims

The Big Summary of the cardiovascular catheter lumen cases:1. Be careful in your claim constructions2. Examples are good

PSC Computers v. FoxCon nUSCA Fed Cir., Supp.

Retainer clip for heat sinks for electronic circuits.

By claiming the superiority of metal clips over plastic, the patent was deemed to haveabandoned the inferior plastic ones.

M. INEQUITABLE CONDUCT: 37 CFR 1.56 (FRAUD ON THE USPTO)

Inequitable conduct while prosecuting patent includes affirmative misrepresentation of material fact, failure to disclose material information, or submission of false materialinformation, coupled with intent to deceive.

Thus requires materiality and intent:

Materiality :Old standard : Information is material when there is a substantial likelihood that areasonable examiner would consider it important in deciding whether to allow theapplication to issue as a patent.New (post 1992) standard : information establishes a prima facie case of unpatentabilityor refutes or is inconsistent with a position that the applicant takes

Intent: Involved conduct, viewed in the light of all the evidence, including evidence of good faith, must indicate sufficient culpability to require a finding of intent to deceive.

16


17/26


Kingsdown Medical Consultants v. Hollister USCA Fed Cir. 1988 p. 629

Colostomy bag fitting. Gross negligence does not necessarily arise to the level of intent todeceive

118 claims, 44 prior art references, 6 years in prosecution (!!)

Molins PLC v. Textron, Inc.USCA Fed Cir. 1995, p. 639

Patent for batching machine tool job (anticipated by Wagensiel prior art) combined withlater part for automated batching systems.

Molins patent officer knew of prior art , and abandoned European patent

applications, but not the U.S. oneOnly the automated (noninfringing) 24 system gets the patentLater the patent is re-examined with only the 24 system and the examiner passes it.Inequitable conduct? Oh yes, even if it was not finally dispositive to whether the patentwas accepted.

Inequitable conduct standard of review:Trial level standard

1. Clear and convincing evidence standard requiring materiality and intent2. Sliding scale, the more material, the greater the evidence of intent

Review standard on appeal1. Clear and convincing standard2. Clearly erroneous finding by lower court3. Abuse of lower courts discretion

17


18/26


Dayco v. Total Containment, Inc.USCA Fed Cir., 2003, Supp.

Inequitable conduct requires:1. Affirmative misrepresentation, failure to disclose or submission of false

material factual information2. An intent to deceiveTwo step process:

1. Determination of whether the withheld reference meets a threshold level of materiality and intent to deceive

2. Weighing of materiality and intent in light of all circumstances to determinewhether the applicants conduct is so culpable that the patent should be heldunenforceable

N. AMENDMENTS

A template for Amendments (see supplemental materials)Heading:IntroSpec: Changes (usually minor, no new material)Claims: (where the real thinking takes place, be wary of future opposing counsel)Remarks: There is a template for the Remarks section:

Intro (explain to examiner succinctly whats going on)What office action said; recapitulate (succinct)

Give patent numbers, not just nameIn this response. Summary of whats happening in the response

(claims deleted and/or amended)For a 112 rejection (indefiniteness): claim made even clearer (pretty

easy, but watch estoppel)For a lack of antecedent basis support: tough, you lose the priority date.

Bring in expert, people of ordinary skill in the art wouldunderstand, but that sets up a 103 rejection (John Deere)

For a 102, fairly easy, its either there or its not in the prior art.If its there amend, if not point it out

For a 103; this is where we go to the John Deere criteriaTalking about the prior art:

Jones art discloses use the titleClaims as set forth in claim 1. and describe. Put down what

you need to persuade the examiner but no more Now the hard part: Differences. Thus as claimed, there is a

differenceDefine differenceWhy is difference significant?

This of course will kill you on estoppelClaims 2-10 depend from claim 1, to be certain that

the amendment is responsive

18


19/26


Think of ways to persuade examiner. Devise a checklist of arguments to argue patentability. Dont write, just think (go to Deere, etc.)

In re Sponnoble

US Court of Customs and Patent Appeals, 1969, Supp.

On appeal from a rejection of the patent for obviousnessBoard failed to make a prima facie case for obviousness; discoverer explicitly points outhis discovery, and how his invention is an improvement on the prior art

Appeals may occur after double rejection.Within past 9 months, PTO has instituted a pre-appeal brief conference

Appellant presents short (5 page maximum) succinct summary of arguments to be presented on court appeal

MAY serve as a check on an examiner

In re Werner KotzabUS Court of Customs and Patent Appeals, 2000, Supp. X.

103 rejection of an application for a injection-molding temperature cooling system

Rejection overturned by court; nothing in prior artPrior art teaches single system to control multiple valvesApp employs single sensor to control temperature

Court holds that scintilla of evidence not present

Take home lesson, BE CONSISTENT IN YOUR CLAIM LANGUAGEOnce you pick a term for something stick with it or define synonymous termsexplicitly

19


20/26


O. DOUBLE PATENTING

No direct statute which directly prohibits double patentingCourts have found support in 101 inventor is entitled to a patent

Two types:

1. StatutoryTrying to get two patents on the same exact inventionSimilar to 102 analysisCant get patent whatsoever You cant terminally disclaim something that is exactly the same b/c the

tute says that youre only allowed one patent2. Obviousness-type

Can get a patent with a terminal disclaimer You make the obvious variation patent end at the same time as the

original

In re Sang Su LeeUSCA Fed Cir., 2002, Supp.

Video display with demonstration modePrior art: Video display with no demo mode

Video game with demo mode

Common sense is not alone sufficient, without reasoned analysis, how can one argueagainst the PTO?

There must be particular findings made as to the reason for rejection other than a post hoc finding of obviousness

Business Objects v. MicrostrategyUSCA Fed Cir. 2005, Supp.

Patent was a natural language database system for relating business objects

Patent differed from accused infringer by having only a single layer, whereas theaccused had several layer

Case ended up in front of the Federal Circuit on appeal from finding of summary judgment

20


21/26


Estoppel in specification and in statements made during prosecution can have aneffect not only on patent at issue, but on related patents as well

1. Continuation application may be subject to language used in originalapplication in terms of what you are estopped from.

2. Statements can be used prospectively or even retrospectively

In re Hilmer I What does a priority date awarded following submission of a foreign patent grant?

119 of 35 USC is the response of the US government to the Paris Convention,granting priority date to foreign filings

A patent may be used in two ways, to exclude or as simply an assertion of the prior art

102 and 119 are apples and oranges;119 is used to create a date for priority but it may not be used as an

assertion of the prior art by reference

119 is a preserver (defensive) of priority; 102 is offensive, attacks patentability

In re Hilmer II

Same facts as Hilmer I, but in this case, 102(g) is offered. Court doesnt buy this either

P. THE DEFENSIVE PATENT DEFEATING RIGHT(1) INTERNATIONAL NORMS

The third-party right language of Paris Convention provides a patent-defeating right to the patentee, retroactive of his priority date

Example Inventor A

Country X Country Z

Inventor B

Country Y Country Z

i. The officials of Country Z Patent Office will reject Inventor Bsapplication due to the priority of the Country X application of Inventor A.

(2) US HILMER RULE

21


22/26


The United States does not give patent defeating effect for a claimedinvention as from the priority date

You can treat 119 as a shield (defensive priority preserver) but not as asword (offensive patent defeater).

119 deals with right to priority as if it was filed in the US

Habicht

SWISS US Hilmer

German US In an interference action

- Habicht wins because he can use his priority filing date The Habicht patent can then be used as prior art against Hilmer

- However, in obviousness rejectioni. Hilmer can use his German application date

ii. Habicht Swiss date cannot be used, only US Under current US law, a US patent may be used as a prior art for

both novelty and nonobviousness purposes, upon the grant of thepatent, with the prior art effect being retroactive only to the earliesteffective filing date in the United States, and not to the foreign filingdate. This is commonly known as the Hilmer rule.

Hilmer Rule (co-pending patent applications for patent defeating purpose):

A filed in X on D1 filed in US on D3 obtained US patent on D5B filed in Y on D2 filed in US on D4

1. interference proceedings: A is 1 st inventor under 102(e) filing in US; 1 yr grace period under 119

2. non-obvious issue: prior art status as of the US filing date (D3) under 102(e); B has filing date of D2 under 119 no prior art

22


23/26


Q. THE INTERFERENCE ESTOPPEL RULE

In re Deckler USCA Fed Cir., 1992, p. 728

Two patents for the same invention are issued and an interference results

Deckler loses interference on claim, patent returns to ex parte prosecution

Interference goes through the process; there are res judicata and collateral estoppel preventing other claims that are indistinguishable from being contested

Interference estoppel is suddenly created in this case, the logic is sensible but according thecourt does not really didactically explain the manner in which it gets to that pointThe interference estoppel rule requires a party in an interference to raise any issue that itcould have raised . A party that fails to raise a particular issue will be estopped from

raising that issue later before the PTO, and may also be precluded from doing so in other contexts including subsequent litigation regarding any patents that are issued after theinterference.

R. CORRECTING OR ATTACKING THE PATENT AFTER THE PATENT HASISSUED

A. Certificate of Correction: Issued by US PTO to correct minor typographical errors

B. Reissue: Application by a patentee after a patent has issued to correct errors that theapplicant made that rendered the patent wholly or partly inoperative due to a defectivespecification or drawing or because the applicant claimed less or more than that theapplicant had a right to claim .

1. The applicant must provisionally surrender the previously issued patent.2. The expiration date of the reissued patent is the same as the original patent.

C. Request for Reexaminatio n: Initiated by patentee or a third pa rty seekingexamination of one or more of the claims of a patent based upon an alleged substantialnew issue of patentablility due to printed prior art not considered by the originalUSPTO examiner.

Hewlett Packard v. Bausch & Lomb

Original patent was for an X-Y plotter. HP later develops a plotter, B&L buys patent rightsand attempts to get a reissue narrowing the patent so that it can be used as a weapon againstHP

The court holds that the addition of new claims is not an error that can be corrected by areissue

23


24/26


Reissues are useful safety valves that allow a second chance within a given set of parameters that help avoid abuse

Reissues generally AMEND claims

There is a 2 year statute of limitations on claim broadening

Intervening rights : Two types absolute and equitable

Absolut e: Reissued patent cannot stop production of a specific product or machine (but cant be made anymore) that was made by another in reliance onthe outside boundaries of the patent

Equitable : Judge can look at totality of the facts; someone who has investedsignificantly in a machine or product relying on the patent as originally published.Fuzzier doctrine.

In re Recreative Technologies Corp.

Reexamination case

During a reexamination only new prior art may be considered, old prior art that was previously examined and overcome cannot be used

Requires substantial NEW question of patentability

NOTE: Recreative is no longer good law ; old prior art is now also available

Three benefits of reexamination:1. Quicker and better test of validity than litigation2. Relies on expertise of the PTO3. Clearing away the clouds determines the validity of the patent

The purpose is the exact opposite of reissue: PTO errors v. applicant errors

Printed prior art (patent or publication) is the only thing upon which a reexaminationcan be brought

24


25/26


S. OPINION LETTERS

Read Corp. v. Portec, Inc.USCA, 1992, p. 980

Company makes a loam sifter, competitor (Portec) attempts to design around but is foundat trial to be infringing. During development; defendant attempts to determine if their device infringe: consults two attorneys to see if it could be designed around

Letter 1: Something not covered by patent due to obviousness No issue with respect to doctrine of equivalence

Letter 2: Says that the invention as a design around is OK

Court holds it not willful; designing around a patent is encouraged, the behavior does notrise to the level of incompetence

Opinion letters; how specific (or vague) should they be??Client wants specificity (so that they can make a decision) but lawyersinstinctively want to be more vague

Opinion letters are privileged; attorney-client privilege? Maybe a little open stillThis would figure in the case of a negative opinion letter (the privilege

must be affirmatively claimed)

Amsted Industries v. Buckeye Steel CasingsUSCA Fed Cir., 1994, p. 991

Company makes a bolster plate for railroad car frames. Did not mark: manufactured under license: Court suggests language that could or should have been used: e.g. Licensed under

patent XXX

Letters can also give notice in addition to markingsLetter MUST give notice of infringement: that is, just notification of the patentheld by patentee is not good enough

25


26/26


T. LICENSING:

Licenses are contracts, but the rules have their own special nicheAssignment : intent to pass titleLicense : a promise by the licensor not to sue licensee

Exclusive license: Only licensee can use, not even licensor Exclusive licensees may file suit, but need to bring licensor in as

(maybe involuntary) co-plaintiff

Non-exclusive licenses:1. Others can be licensed2. Right to sublicense by licensee

Geographic limitationsFunctional (subject matter) limitationsManufacturing limitations

Principle of Exhaustion : Once title has been obtained to a patented object, thedownstream owners cannot be forced to pay royalties

Lear v. AdkinsUS Supreme Court, 1969, p. 1067Lear invents new gyroscope, and contracts with Lear for its use before he gets the patentContract begins in 55, patent issues in 60

Lear attacks validity of patent, Court holds that post patent issuance, the patentsvalidity can be attackedPublic policy, free competition and access to the use of information properly inthe public domain

Major goofup: no contractual assignment of invention to Lear

U. ASSIGNMENT AND LICENSING ESTOPPEL

These doctrines hold that an assignee or licensee may not challenge the validity of the patent that they have acquired or licensed

There are various policy reasons why these doctrines are or are not good ideas.

Hulbert Patent Office Practice Fall 2009

Documents

Transcript of Hulbert Patent Office Practice Fall 2009