Patent Law Answer Outline

8/8/2019 Patent Law Answer Outline

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PATENT LAW ANSWER OUTLINE

Infringement

35 U.S.C. 271 Infringement of patent.

(a) Except as otherwise provided in this title, whoever without authoritymakes, uses, offers to sell, or sells any patented invention, within theUnited States, or imports into the United States any patented invention duringthe term of the patent therefor, infringes the patent.

(b) Whoever actively induces infringement of a patent shall be liable as aninfringer.

(c) Whoever offers to sell or sells within the United States or imports intothe United States a component of a patented machine, manufacture,combination, or composition, or a material or apparatus for use in practicing apatented process, constituting a material part of the invention, knowing thesame to be especially made or especially adapted for use in aninfringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as acontributory infringer.

(f)

(1) Whoever without authority supplies or causes to be supplied in or from theUnited States all or a substantial portion of the components of a patentedinvention, where such components are uncombined in whole or in part, insuch manner as to actively induce the combination of such componentsoutside of the United States in a manner that would infringe the patent if suchcombination occurred within the United States, shall be liable as an infringer.

(2) Whoever without authority supplies or causes to be supplied in or from the

United States any component of a patented invention that is especially madeor especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, wheresuch component is uncombined in whole or in part, knowing that suchcomponent is so made or adapted and intending that such component will becombined outside of the United States in a manner that would infringe the

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patent if such combination occurred within the United States, shall be liable asan infringer.

(g) Whoever without authority imports into the United States or offers tosell, sells, or uses within the United States a product which is made by a

process patented in the United States shall be liable as an infringer, if theimportation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for infringement of a process patent, noremedy may be granted for infringement on account of the noncommercialuse or retail sale of a product unless there is no adequate remedy under thistitle for infringement on account of the importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will, for purposes of this title, not be considered to be so made after -

(1) it is materially changed by subsequent processes; or

(2) it becomes a trivial and nonessential component of another product.

Discussion:

The test for whether a product embodies a patent is whether the product contains each and every

element of the claim.

Literal Infringement:

Direct Infringement: If the product does not embody or contain each and every element of the

claim or their equivalents, then it does not infringe.

Thus, if not literal infringement, a competitor may directly infringe under DOE.

Even though there may be no direct infringement (either literally or by equivalents), if there is

contributory (271(c)) or inducement (271(b)) of infringement then damages may be recovered.

INFRINGEMENTIf you don’t have permission from patentee to do what is patented – you infringe.

Find out:

- What is the claim: claim interpretation/construction

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Two Broad Categories of Infringement:

1. Direct Infringement: Patentee may bring an action against a defendant who himself is

committing acts that infringe in and of themselves.

- Literal infringement: every limitation of the claim is found in the accused device

- under the doctrine of equivalents: the accused infringing device (or process) is an

“equivalent” to that claimed in the patent.

2. Indirect Infringement: The patentee may bring an action against a defendant whose

acts do not infringe in and of themselves, but that contribute to or induce acts of

infringement by some third party.

The difference between the two is entirely a matter of who the patentee is able to sue.

CLAIM INTERPRETATION

1. Look at the claims themselves, both asserted and nonasserted to define the scope of the

patented invention.

a. Although words in a claim are generally given their ordinary and customary

meaning, a patentee may choose to be his own lexicographer and use terms in amanner other than their ordinary meaning, as long as the special definition of the

term is clearly stated in the patent specification or file history.

2. It is always necessary to review the specification to determine whether the inventor has

used any terms in a manner inconsistent with their ordinary meaning.

a. The Specification acts as a dictionary when it expressly defines terms used in the

claims or when it defines terms by implication. Specification is the single best

guide to the meaning of a disputed term.

3. The court may also consider the prosecution history of the patent, if in evidence

a. The prosecution history limits the interpretation of claim terms so as to exclude

any interpretation that was disclaimed during prosecution.

4. An analysis of the intrinsic evidence alone will resolve any ambiguity in a disputed claim

term. In such circumstances, it is improper to rely on extrinsic evidence . . . .

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a. In Vitronics, the court said that statements of others (for e.g. Experts) are extrinsic

evidence, and unrelated to the patent document

b. There is some debate over Vitronics.

c. In Phillips en Banc, the Fed. Cir. Overrules the dictionary use under Texas Digital ,

i. The court rejected the notions that the patentee is entitled to the full range

of dictionary definitions,

ii. That dictionary definitions are presumed to be correct, and that the

patent’s own written description should only be consulted if the dictionary

definitions are unclear

iii. The claim terms can be defined “by implication” or through use,

iv. Interpreting the claims to uphold their validity was “of limited use.”

5. Role of Specification: Look at Written Description (Context Matters).

a. It is improper to IMPORT (READ IN) a limitation from the specification’s

general discussion, embodiments, and examples.

b. It is improper to eliminate or ignore (READ OUT) a claim limitation on order to

extend a patent to subject matter disclosed, but not claimed.

c. THAT IS: ALL CLAIM LIMITATIONS ARE RELEVANT.

DOCTRINE OF EQUIVALENCE

The courts have found infringement when an accused infringing device (or process) is an

“equivalent” to that claimed in the patent. The rubric under which courts extend the scope

of a patentee’s right to exclude beyond the literal language of the patent claims has come to be known as the “Doctrine of Equivalents” (or DOE).

- Intent of the infringer plays no role in the analysis of the DOE – innocent infringement

under DOE is infringement nonetheless, just as intent is irrelevant in determining literal

infringement.

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- Deliberate designing around an invention in order to avoid infringement is assumed to

benefit the public.

- The proper time for evaluating equivalency – and thus knowledge of interchangeability

between elements – is at the time of infringement, not at the time the patent was issued.

o Later-developed technology may serve as an equivalent to the limitation in

question. This provides a patent with an ever-changing scope of equivalents as

new technology is developed that may serve as an alternative for one or more of a

patent claim’s limitation.

- All limitation Rule: for infringement to exist under DOE, the accused device must

contain at least an equivalent for each claim limitation. Thus, the analysis is

limitation-by-limitation basis, not an overall invention analysis.

o Limitation: when referring to claim language

o Element: when referring to the accused device

o Equivalency can exist when two components of the accused device perform a

single function of the patented invention --- equivalency can also exist when

separate claim limitations are combined into a single component of the

accused device.

o Dedication to the Public: The Fed. Cir. Has held that is a patent specification

discloses a particular equivalent, but the claim language as construed does not

literally encompass that equivalent, the unclaimed equivalent is considereddedicated to the public and cannot serve as a basis for infringement ( Johnson &

Johnson Assoc. v. RE Serv. Co.)

PROSECUTION HISTORY ESTOPPEL

PHE IS THE BIGGEST LIMIT ON DOE.

An amendment made to a patent claim during prosecution, if made for reasons of patentability,

will presumptively eliminate all equivalents between the original claim limitation and the

amended claim limitation.

The burden is on the patentee to show that the amendment does not surrender the particular

equivalent in question:

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The patentee must show that at the time of the amendment one skilled in the art could not

reasonably be expected to have drafted a claim that would have literally encompassed the alleged

equivalent.

The patentee can overcome the presumption by demonstrating that:

- The equivalent in question was not foreseeable at the time of the amendment

o The time when the narrowing amendment was made, and not when the

application was filed, is the relevant time for evaluating unforeseeability, for

that is when the patentee presumptively surrendered the subject matter in question

and it is at that time that foreseeability is relevant.

- The rationale underlying the amendment bore only a tangential relationship to the

equivalent in question; i.e. this criterion asks whether the reason for narrowing

amendment was peripheral, or not directly relevant, to the alleged equivalent; or

- SOME OTHER REASON -- Another reason exists why the patentee could not

reasonably have been expected to claim the insubstantial change in question.

When is an Amendment Narrowing?

- Under Festo,

INDIRECT INFRINGEMENT

ACTIVE INDUCEMENTStatutes:

§ 271 (a): Direct Infringement

§ 271 (b): Active Inducement

§ 271 (c): Contributory Infringement

§ 271 (d): And, we meant it – it is not act of misuse to that that s it an act of infringement

Two major Driving Force Behind 1952 Patent Act:

1. Objective Test for Obviousness – § 103

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2. Codifying Indirect Infringement – §§ 271 (b) & (c) were written to prevent the courts to rule

them out

Active Inducement: Where a party encourages or aids another to directly infringe a patent by

for example, providing instructions on how to practice a patented invention.

The Inducer Must Intend to Induce Direct Infringement.

1. Direct Infringement

2. Intent: Affirmative intent to ensure direct infringement required.

DEFENSE: AVOID INTENT, i.e., that there was no intent. The burden is on the patentee by

preponderance of evidence to demonstrate intent.

CONTRIBUTORY INFRINGEMENTSection § 271(c): concerns itself with sale of a component of a patented device or composition

or the sale of a component for use in practicing a patented process.

The component must be a non-staple item that is NOT “suitable for substantial noninfringing

use.

The seller must have knowledge that the component is “especially made or especially adapted

for use in an infringement of a patent.”

§ 271(c):

- Requires Direct Infringement

- Knowledge that the same is especially made or especially adapted for use in an

infringement of a patent.

- If substantial non-infringement use – no Contributory infringement.

1) Sale of a component of

a) A patented device;

b) A composition; or

c) The sale of a component for use in practicing a patented process

i) The component must be a NON-STAPLE item that is not “SUITABLE FOR

NON-INFRINGING USE.”

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1. No evidence that any process using the item would be non-infringing

(has no use except through practice of the patented method):

Infringement

2. Evidence that any process using the item would be non-infringing:

Non-Infringing

ii) A seller must have knowledge that the component is “especially made or especially

adapted for use in an infringement of” a patent

GEOGRAPHIC SCOPE

“within the US” restriction of Section § 271(a): Fed. Cir. Decided that a “system” is

“used” where the system as a whole is put into service.

But for method claims, not all steps were performed within the US and so no

infringement.

Section § 271(f) makes the supply of unassembled components an act of

infringement.

Although, recognizing that Congress enacted § 271(f) to overrule DeepSouth, the court

noted that Deepsouth is still good law under 271(a), and a defendant will not be liable for

infringement under § 271(a) unless it made or sold a complete invention.

Liability under § 271(f)(2) requires only that the infringer “intend that such component

will be combined,” and that at no point does the statutory language require or suggest that

the infringer must actually combine or assemble the components.

FOREIGN ACTIVITY AND IMPORT CONTROL

1. Importation, in and of itself, into the United States of a product that is covered by a US

Patent – This is under 271(a)

2. Importation, into the U.S., of an unpatented product made by a process that is patented in

the US.

3. Importing the invention into the US by itself is an act of infringement

The PPAA (Process Patent Amendments Act) makes it an act of infringement to import, sell,

offer to sell, or use in this country a product that was made abroad by a process protected by

the U.S. patent. 35 USC 271(g).

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The act, however, does not apply if the product made by the patented process is “materially

changed by subsequent processes.”

Thus, a product that is “made by” a patented process within the meaning of the statute ‘will . . .

not be considered to be so made after

1. it is materially changed by subsequent processes; OR

2. it becomes a trivial and nonessential component of another product

35 U.S.C. § 271(g).

- Only applies to importation of physical object, not information acquired or generated

by the patented process.

- If something in the patent that identifies a particular significance; if any change is in the

opposite direction – then the change can be considered as material

- Two part test for materially changed

o If it would be possible or commercially viable to make a product but for the use of

the patented process

o If the additional processing steps . . . do not change the physical or chemical

properties of the product in a manner which changes the basic utility of the

product by the patented process

DEFENSES AND LIMITATONS

1. Not Direct Infringement

2. Inequitable Conduct

3. Inventorship/Ownership

4. Misuse

5. First Sale Doctrine

6. Shrink-Wrap/Bag-Wrap agreements

INEQUITABLE CONDUCT

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Affirmative misrepresentations of material facts, failure to disclose material information, or

submission of false material information, coupled with an intent to deceive, constitutes

inequitable conduct.

Need Clear and Convincing Evidence that

- the alleged nondisclosure or misrepresentation occurred,

- that the nondisclosure or the misrepresentation was material

- patent applicant acted with the intent to deceive the PTO.

Misrepresentation of material fact: Information is deemed material when it is not cumulative to

information already of record or being made of record, and

1. It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or

2. It refutes, or is inconsistent with, a position the applicant takes in:

a. Opposing an argument of unpatentability relied on by the Office; or

b. Asserting an argument of patentability.

- Intent: Gross negligence is not standing alone enough to trigger inequitable conduct. The

involved conduct, viewed in light of all the evidence, including evidence indicative of

good faith . . . must indicate sufficient culpability to require a finding of intent to deceive.

INVENTORSHIP

- Conception is the formation in the mind of the inventor, of a definite and permanent idea

of the complete and operative invention, as it is hereafter to be applied in practice

- Definite and permanent: when only ordinary skill would be necessary to reduce the

invention to practice, without extensive research or experimentation

- Each of the joint inventors need not make the same type or amount of contribution to the

invention. Rather each needs to perform only a part of the task which produces the

invention.

- One does not qualify as a joint inventor by merely assisting the actual inventor after

conception of the claimed invention.

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- Co-inventor need not make a contribution to every claim of a patent.

- Conception requires Corroboration

- Co-inventor has the power to license the entire patent

- As a matter of substantive patent law, all co-owners must ordinarily consent to join as

plaintiffs in an infringement suit. Consequently, one co-owner has the right to impede

the other co-owner’s ability to sue infringers by refusing to voluntarily join in such

a suit.

- Section 262: In the absence of any agreement to the contrary, each of the joint owners of

a patent may make, use, offer to sell, or sell the patented invention within the United

States, or import the patented invention into the United States, without the consent of and

without accounting to the other owners.

- Correction of Inventorship: Secton 256 allows correction of an inventorship error,committed without “deceptive intention,” after the patent issues.

- Most employees agree to assign ownership rights in the invention to their employer as

part of an express contract; or, absent an express contract, as the “employed to invent”

exception

- An employer may obtain a “shop right” in the employees’s invention where the

employer contributed to the development of the invention. A “shop right” is a common

law doctrine that allows an employer to use an invention patented by one or more of its

employees without liability for infringement.

Invalidity

An issued patent is presumed valid, with the validity of each claim determined

independently. A challenger bears the burden of proving invalidity by clear and convincing

evidence. It is the Federal Court, not the Patent Office, that is the final arbiter of patent validity.

For a patent claim to be held invalid over the prior art, the claim must be shown to be

anticipated by a prior art under section 102, or obvious in view of the prior art under section 103.

Anticipation is a question of fact. The Ultimate question of patent validity under 103 is one of

law, but relies on several factual inquiries.

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Validity Over the Prior Art

For a prior art reference to anticipate a claimed invention, the reference must

i. expressly or under the principle of inherency describe each and every element of the

claim in a single prior art reference.

ii. enable a PHOSITA to produce the claimed invention.

Under 102:

BEFORE THE INVENTION:

102(a) the invention was known or used by others in this country, or patented or

described in a printed publication in this or a foreign country , before the invention thereof

by the applicant for patent, or

1. Known in THIS country

2. Used in THIS country

3. Patented or Publication in ANY Country

102(e) the invention was described in –

(1) an application for patent, published under section 122(b), by another filed in the

United States before the invention by the applicant for patent or

(2) a patent granted on an application for patent by another filed in the United States

before the invention by the applicant for patent, except that an international application filed

under the treaty defined in section 351(a) shall have the effects for the purposes of this

subsection of an application filed in the United States only if the international application

designated the United States and was published under Article 21(2) of such treaty in the English

language; or

102(g)(1) during the course of an interference conducted under section 135 or section

291, another inventor involved therein establishes, to the extent permitted in section 104, that

before such person's invention thereof the invention was made by such other inventor and not

abandoned, suppressed, or concealed, or

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102(g)(2) before such person's invention thereof, the invention was made in this country

by another inventor who had not abandoned, suppressed, or concealed it. In determining

priority of invention under this subsection, there shall be considered not only the respective dates

of conception and reduction to practice of the invention, but also the reasonable diligence of onewho was first to conceive and last to reduce to practice, from a time prior to conception by the

other.

102(f) he did not himself invent the subject matter sought to be patented.

Proof of First to Invent, show:

1. Proof of Conception:

a. The idea was a definite and permanent in the sense that it involves a specific

approach to a particular problem at hand – not a general research plan the inventor hopes to

persue.

b. The idea must be sufficiently precise that a skilled artisan could carry out the

invention without undue experimentation – inventor need not know that his invention will work

for conception to be complete.

c. The conception must be supported by corroborating evidence. The

corroboration could be from a third party, product itself. But RTP by the inventor is not

corroboration because corroboration must be independent of the inventor.

2. Reduction to Practice (often follows conception, but ARTP may be before

Conception):

Invention is suitable for its intended purpose. The first to conceive but 2nd to RTP require

Diligence, to get earlier date of invention.

First to RTP is the prima facie inventor, but a party who was second to reduce to practice

will be considered the first inventor if he can show that he was the first to conceive and exercised

reasonable diligence in reducing the invention to practice.

Two types of RTP:

a. Constructive: when the patent application is filed. CRTP may occur even if the

applicant never built or tested his invention as long as the applicant satisfies 112.

b. ARTP: occurs when the invention shown to be suitable for its intended purpose.

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The inventor must construct the invention, i.e., a prototype and test the invention to

determine if it works for its intended purpose.

Though, actual working conditions are not required – laboratory tests simulating actual

working conditions may be sufficienct.

Commercial viability and perfection is not required

Inventor must be able to corroborate the ARTP independently.

Foreign-based inventive activity

One may use foreign based inventive activity to obtain a patent under 102(g)(1);

Foreign based inventive activity cannot be used as prior art to defeat patent rights outside

of the interference context.

KNOWN or USED by Others in THIS COUNTRY – by someone other than the inventor.

Some “publicity” dimension has been read in through case law, even though the statute

does not require “public use.” In Gayler , the invention may have been known or used by others,

but such knowledge or use will not anticipate the claimed invention if the prior knowledge or use

is not publicly available.

Public policy: favoring the person who is the first to disclose the invention to the public,

even though someone else may have made the discovery earlier. But 102(a) does not require

some affirmative act to bring the work to the attention of the public at large.

Why is knowledge and use limited to the U.S.? – it is difficult for Americans to enjoy

unpublished knowledge and uses if they are extant only in a foreign land.

Described in a Printed Publication

A document is considered printed publication is it is physically and logically available.For logical availability at a library, the document should be cataloged, indexed and shelved.

(for modern documents—criterion is that document should be publicly available.)

Patent

A foreign patent to be prior art under 102(a), the document must disclose the nature of

the invention and is available to the public.

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Priority based on Foreign Activity

Inventive activity outside the U.S. cannot be used to defeat a patent, but can be used

to obtain a patent through an interference proceedings (102(g)(1)).

The inventive activity that can be used as prior art to defeat patent rights is limited under 102(g)(2) to activity in this country.

Secret Art under 102(e) and (g)

Even if the knowledge or use of the claimed invention is not publicly available, thus not

satisfying 102(a), they can be used under 102(g) if the invention was complete – i.e., conceived

and RTP, and not Abandoned, suppressed or concealed. While 102(a) requires public use or

knowledge, the 102(g) can be satisfied by a lower threshold of no ASC. There are two types of

ASC: Explicit and Inferential.

Three factors are relevant for ASC:

1. Length of the delay-period from RTP to either application for patent or

commercialization.

2. Existence and nature of any activity during the delay-period.

3. The cause of the resumption of activity (was the first inventor spurred by the second

inventor’s activity?)

4. Diligence: when the one party is first to conceive, and the other (second) is the first to

RTP.

5. Renewed activity prior to an opposing party’s effective date negates ASC.

Factors that suggest ASC are:

1. not filing a patent application

2. not publicly disseminating documents describing the invention

3. not publicly using the invention.

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Secret Art under 102(e): Patents and published applications are prior are only for what they

disclose, not what they claim. To compare claims – apply 102(g)(1) interference proceedings.

Under 102(e), a patent application can defeat novelty even though the document is inaccessible

to the public, including the inventor.

Under 102(e)(1), once a U.S. patent application is published in the U.S., it’s a prior art date is the

date of filing the application.

PCT application:

i. If designates the U.S., and

ii. Published in English,

will have the prior art effect under 102(e)(1) as of its international filing date, which is the date

the PCT application was filed – even though the application was never subsequently filed in the

U.S.

Under 102(e)(2), Issued Patent can be a prior art as of its filing date. This applies to U.S. patent

applications that ultimately issues as Patents. If there is a provisional application, the effective

prior art date is the date of filing the provisional application.

BEFORE THE CRITICAL INVENTION:

102(b) the invention was patented or described in a printed publication in this or a

foreign country or in public use or on sale in this country, more than one year prior to the date

of the application for patent in the United States, or

1. Patented or Publication in ANY Country

2. PUBLIC Use in THIS Country

3. On SALE in THIS Country

Public Use Bar

Exceptions to Public Use Bar:

If the “use” was:

1. experimental

2. under secrecy

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3. were changed or improved upon

Then the “use” was NOT public.

Experimentation Criteria:

1. Number of prototypes and duration of testing

2. whether records or progress reports were made concerning the testing

3. existence of secrecy agreement

4. whether patentee received compensation

5. the extent of control the inventor maintained over the testing – most important

Experimental use ends with RTP.

Market testing is not experimental use. But if industry custom (like shipping samples of food),

then ok.

On-Sale Bar

Applies when Two Factors (Plaff) are satisfied:

1. The product must be the subject of a commercial offer for sale

2. The invention must be ready for patenting.

Commercial offer for Sale.

The offer must meet the level of an offer in the contract sense. There is no requirement that the

seller knew the exact nature of the invention sold, or the offer specifically identify all the

characteristics of the invention.

Ready for Patenting can be shown by:

1. Proof of reduction to practice

2. Proof that prior to the critical date the inventor had prepared drawings or other description of

the invention that were sufficiently specific

3. Able to prepare a patent application with enabling disclosure under 112.

A process is under on-sale bar, if:

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1. Sale of a product made by the process, or

2. performing the process itself.

Classic Infringement Test for Anticipation:

That which will infringe if later, will anticipate, if earlier.

102(d) the invention was first patented or caused to be patented, or was the subject of an

inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country

prior to the date of the application for patent in this country on an application for patent or

inventor's certificate filed more than twelve months before the filing of the application in the

United States, or

NON-OBVIOUSNESS

Factors to establish prima facie Obviousness

1. Scope of the art: Analogous v. Non-Analogous Art

2. Content of the Prior Art: TSM and RES

3. Level of skill in PHOSITA

NONOBVIOUSNESS

The Graham Factors (Factual inquiries):

1. The scope and content of the prior art are to be determined;

2. Differences between the prior art and the claims at issue are to be ascertained;

3. The level of ordinary skill in the pertinent art resolved.

Secondary Considerations:

1. Commercial Success: Advertising not the cause of success, but the claimed inventionwas.

2. Long-felt but unresolved needs;

3. Failure of others

4. Recognition of problem solved

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5. Competitior’s prompt copying: strongest when there is evidence that the competitor

initially attempted to design around the patent

6. Licensing of Patent to industry

7. Teaching away of prior art

8. Unexpected results

9. Disbelief and incredulity of others

Three Requirements to Establish prima facie Obviousness

1. TSM: there must be some teaching suggestion or motivation either in the prior art itself

or in the knowledge generally available to one of ordinary skill in the art, to modify the

prior art or combine the teachings of the prior art in the manner posited by the Examiner

2. There must be a reasonable expectation of success.

3. The prior art must teach or suggest ALL the claim limitations.

Motivation to Modify or Combine the Prior Art –

I. The mere fact that the teachings of the prior art can be modified or combined does NOT

establish prima facie obvious – the prior art must suggest the desirability of thecombination.

II. That one of Ordinary Skill in capable of modifying or combining the teachings of the

prior art does not make the combination prima facie obvious.

III. If Modification or Combination would DESTROY the INTENDED Function— not

prima facie obvious

IV. If Change the Principle of Operation of the prior art – not obvious

V. Modification or combination TEACHES AWAY – not obvious

VI. Applicant’s discovery of the problem overcome by the invention, or the source of the

problem, may defeat prima facie obviousness.

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The Scope of the Prior Art

Analogous v. Non-Analogous Art

Two Prongs Test

- Whether the art is from the same field of endeavor, regardless of the problems

addressed;

o If reasonably pertinent to the problem the inventor is involved in – Analogous

( In re Paulson – Laptop case.)

AND

- If the reference is NOT within the field of the inventor’s endeavor, whether the reference

still is reasonably pertinent to the particular problem with which the inventor is

involved.

Do not count Non-Analogous Art as Obvious.

§ 102(e)/103 Art

As a practical matter, everything under § 102 except non-analogous art should be counted under

§ 103.

§ 102(e) prior art is a candidate prior art under § 103, once the art is patented.

But after § 103(c) amendment, §§ 102(e), (f) and (g) are not prior art, if they are co-owned.

§ 103(c) applies to any application fled after November 29, 1999.

“Subject matter developed by another person, which qualifies as prior art only under one or more

of subsections (e), (f), and (g) of section 102 . . . shall not preclude patentability under this

section where the subject matter and the claimed invention were, at the time the invention

was made, owned by the same person or subject to an obligation of assignment to the same

person.

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§ 102(G) AND § 102(F) PRIOR ART, WHEN NOT CO-OWNED, ARE ALSO CANDIDATE PRIOR ART UNDER §

103.

Under § 102(g):

- No personal knowledge requirement

- No “known to the art” requirement

The Content of the Prior Art

Two Part Test:

1. A Suggestion in the Art – TSM: to prevent hindsight invalidation of patent claims,

the law requires some TSM to combine cited references. The source of the

suggestion may come from:

a. The references themselves

b. From knowledge of those skilled in the art that certain references, or

disclosures in the references are known to be of special interest or

importance in the particular field

c. From the nature of a problem to be solved, leading inventors to look

to references relating to possible solutions to that problem

i. Thus suggestion does not have to be explicit

2. A reasonable expectation of success and Obvious to Try

a. Obvious to Try: After KSR:

i. Finite number of identified, predictable solutions

ii. If Anticipated Success: Not Innovation

iii. Guard against Hindsight Bias, but “rigid preventive rules that

deny fact finders recourse to common sense . . . [not]

consistent . . .” with the law.

iv. NOT Obvious to Try, if

1. No Direction as to which of many possible choices is likely

to be successful

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2. Only general guidance as to the particular form of the

claimed invention or how to achieve it.

Level of Skill in PHOSITA:

Factors that may be considered in determining level of ordinary skill in the art include:

1. The educational level of the inventor

2. Type of problems encountered in the art

3. Prior art solutions to those problems

4. Rapidity with which innovations are made

5. Sophistication of the technology

6. Educational level of the workers in the field.

KSR

KSR doesn’t quite like TSM, but doesn’t quite overrule. Threshold of proving obviousness has been lowered; but where is the BAR?

TSM Test was “a helpful insight,” but the Court warned against “mere conclusory statements”

an called for both “articulate reasoning and consideration of “when prior art teaches away.”

“Where a skilled artisan merely pursues known options from a finite number of indentified,

predictable solutions, obviousness under 103 arises.”

“103 Bars patentability unless the improvement is more than the predictable use of prior art

elements according to their established functions.”

In re Kubin

An obviousness finding was appropriate where the prior art contained detailed enabling

methodology for practicing the claimed invention, a suggestion to modify the prior art to practice

the claimed invention, and evidence suggesting that it would be successful.

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But obviousness does not require absolute predictability of success . . . all that is required is a

reasonable expectation of success.

Process Claims

The mere fact that a device or process utilizes a known scientific principle does not alone makethe device or process obvious.

Disclosure Requirement

Section 112, 1st Paragraph

1. Enablement: teaching

2. Best Mode: Confessing

3. Written Description: Notice at the TIME OF FILING

Section 112, 2nd Paragraph

Definiteness: Notice at the TIME OF ISSUANCE

ENABLEMENT

Benchmark: PHOSITA

Defending Patent: Brilliant Scientist

Challenging Patent: Stupid PHOSITA

(In Obviousness analysis, take the opposite position on PHOSITA)

Test: Would a person of ordinary skill in the art be able to make and use the claimed invention

without undue experimentation?

1) The Need for some experimentation does not defeat enablement, only undue experimentation

2) The enabling “use” requirement of 112 is different from the “useful” requirement of 101.

a) 101 requires the invention to be useful

Factors relevant in evaluating description and enablement (at the time of filing)

Breadth of the claims

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o enablement must be commensurate with the scope of the claims

o Scope of enablement: Specification + what would be known to PHOSITA

without undue experimentation

o More a patent claim covers, stronger an offense; the more it is weaker on

defense because capture more prior art or not enabling

o A narrow claim is easily enabling, but less commercially useful.

Nature of the invention

State of the prior art

o 112 is concerned with PHOSITA, whereas 102(b) is concerned with

activities of the inventor and third parties

o

Level of ordinary skill

Level of predictability in the art

Amount of direction provided in specification

Existence of working examples (not necessary)

Quantity of experimentation required

Incorporate-by-Reference Language: Every reference in this application is assumed to . . . the

entire contents of which are hereby incorporated herein by reference as if set forth in their entirety.

BEST MODE (Confession)

Does the inventor have the Best Mode:

- a Subjective inventor preference is the Focus of the Best mode inquiry

- Best mode must be disclosed, but need not be identified as such

o

PTO assumes that one of the embodiments disclosed is the best mode

- Preference at the time of filing: cannot update later (if done = New Matter)

- Only in the U.S.

- If filed oversees first, look for Best Mode Violation at the time of filing or during

Litigation

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- Purpose is to “restrain inventors from applying for patents while at the same time

concealing from the public preferred embodiments of their inventions which they have in

fact conceived.”

- Enablement requires subject matter in the possession of the public; Best Mode is

subjective knowledge

- Concealment – Best mode must be Enabling, otherwise is a concealment (A best mode

violation may occur if the disclosure of the best mode is so objectively inadequate as to

effectively conceal the best mode from the public.

o How to determine – FACTUAL INQUIRIES

Inventor subjectively contemplated a best mode; IF YES

Objectively determine whether the Specification Adequately discloses to

practice

o Production Detail

o Commercial Consideration: do not constitute a best mode of practicing the

claimed invention because they do not relate to the quality or nature of the

invention.

o Quality or Nature of the Invention: details of production about which

those of ordinary skill in the art would already know. The Omitted detail

constitutes a best mode but the disclosure is deemed adequate because the

detail is routine.

WRITTEN DESCRIPTION – Putting the World On Notice of the Boundaries

The purpose:

. . . is broader than to merely explain how to make and use; the applicant must also

convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he

or she was in possession of the invention. The invention is, for purposes of the “written

description” inquiry, whatever is now claimed.

The Focus of Adequacy of the Disclosure is NOT Enablement or Best Mode – IT IS

WRITTEN DESCRIPTION

Two Purposes:

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1. Original Filing Date = Prima Facie Date of Invention

2. Property Rights are Fixed and Publicly Noticed

Thus, the principal role of the written description requirement is to ensure that later added

claim language has support in the specification as originally filed.

Challenging Patent Patentee Mahurkar

Challenging description in parent design application for

lack of written description but not enablement:

In Vas-Cath v. Mahurkar (1991), Vas-Cath was

not arguing that the parent Design application

lacked Enablement, but only that it lacked

written description, because they wanted the

Design application remain as a valid prior art(prior art requires that each and every element of

claim + enablement in a single reference – for

102).

Also wants to assume that

the parent Design

application has

enablement, because to

receive benefit of

priority filing date

Genus v. Species (Broad v. Narrow Claim):

A broad claim in Invalid when the entirety of the specification clearly indicates that theinvention is of a much narrower scope.

Genus is not entitled to an earlier filing date when the specification disclosed “only two

species of cups.”

Written Description v. Enablement

Requirements:

1. Focus is on the invention claimed

2. Vantage point is one of ordinary skill in the art

3. The inventor may be his/her own lexicographer

4. Inventor’s broad claim is insufficient when the specification does not show that

the inventor was in possession of the claimed invention.

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5. Broad claim is invalid when the entirety of the specification clearly indicates that

the invention is of a much narrower scope.

6. Obvious variant not sufficient; must describe in sufficient detail

7. Equivalent description is sufficient, even if not exactly the same

8. Description of a single embodiment of broadly claimed subject matter constitutes

a description of the invention for anticipation purposes . . ., whereas the same

information in a specification might not alone be enough to provide a description of

that invention for purposes of adequate disclosure . . . .

9. Describing large genus is insufficient written description of a particular species or

sub-genus.

a.Need to distinguish what is and what is not part of the sub-genus;

b. Ipsis verbis disclosure is not necessary . . . . instead the disclosure

need only reasonably convey to persons skilled in the art that the inventor

had possession of the subject matter in question.

INDEFINITENESS – 112 Second Paragraph

Purposes:

1) Boundaries inform what may constitute infringement

2) A distinctly drafted claim distinguishes the invention from the prior art; i.e. it sets forth what

exactly the invention is

a) The invention cannot properly be described in purely functional terms ( Regents of

Univ. of Cal. v. Eli Lilly and Co.)

Narrowing the Scope to Save the Claim:

The Law:

Where there is an equal choice between a broader and a narrower meaning of a claim . . .the notice function of the claim . . . [is] best served by adopting the narrower meaning.

DISCLOSURE IN BIO-TECH

1) Touchstone of Invention: CONCEPTION

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a) To conceive you must have the invention

b) In Amgen v. GI, the court rejected Amgen’s claims directed to broad classes for failure to

show how to make the many members of the class in a way that will predictably be

similar to each other and different from what is outside the claim (an enablement

rejection, though sounds like it relates to written description-type concerns).

c) “at least about” is indefinite when nothing in the specification, prosecution history, or

prior art provides any indication as to what range of specific . . . is covered by the term

“about”

d) When “about” is ok to use: “stretching . . . at a rate exceeding about 10% per second –

NOT USED to RECAPTURE range.

2. Conception Requires:

a. The idea must be definite and permanent in the sense that it involves a specificapproach to the particular problem at hand (not just a general research plan the

inventor hopes to pursue);

b. It must be sufficiently precise that a skilled artisan could carry out the invention

without undue experimentation – inventor need not know that his invention will

work for conception to be complete;

c. The alleged conception must be supported by corroborating evidence

i. Reduction to practice by the inventor is not corroboration because

corroboration must be independent of the inventor.

3. No Conception

a. Factual uncertainty:

b. Unknown structure: DNA, chemical etc.

4. Foreign Inventive Activity

a. Since January 1, 1996, (WTO date), applicants can rely on foreign inventive

activity to prove date of invention in a WTO country.

b. Since December 8, 1993, (NAFTA date), applicants can rely on foreign inventive

activity to prove a date of invention in a NAFTA country.

c. There is a distinction between patent-obtaining and patent-defeating activity. One

may use foreign-based inventive activity to obtain a patent under 102(g)(1). But

foreign-based inventive activity cannot be used as prior art to defeat patent rights

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outside of the interference context. Inventive activity that can be used as prior

art to defeat patent rights in limited under 102(g)(2) to activity “in this

country.”

UTITLITY Utility requires that it is:

1. Specific

2. Substantial

3. Credible

4. Specific Benefit exists in currently available form

Two Step Test:

1. PTO has the initial burden to challenge presumptive Utility

2. Then Applicant has the Burden to prove Utility

PTO Guidelines:

Well established UTILITY means:

1. . . . a person of ordinary skill in the art would immediately appreciate why the invention

is useful based on the characteristics of the invention (e.g., properties or applications of a

product or process), and

2. The utility is specific, substantial, and credible. The skilled artisan assesses credibility

based on the disclosure and “any other evidence of record.” If the Examiner finds that

specific and substantial utility is lacking credibility, he must reject the applicaton

under 101 and 112.

In Fisher , the Fed. Cir. Stated:

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Unless and until a process is refined and developed to this point-where specific benefit

exists n currently available form — there is insufficient justification for permitting an

applicant to engross what may prove to be a broad field.

TWO Step Test:

1. PTO has the initial burden of challenging a presumptively correct assertion of

utility n the disclosure

2. Only after the PTO provides evidence showing that one of ordinary skill in the art

would reasonably doubt the asserted utility does the burden shift to the applicant

to prove utlity.

STATUTORY SUBJECT MATTER Bilski

Machine-and-Transformation test is not an exclusive test.

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