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53 Cards in this Set
- Front
- Back
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Exclusive Patent Rights [35 U.S.C. § 271]
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1. Make
2. Use 3. Offer to Sell 4. Import from another country |
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Patentable Subject Matter 35 U.S.C. § 101]
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Whoever invents or discovers any new and useful (a) process, (b) machine, (c) manufacture, or (d) composition of matter, or any new and (e) useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title
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Machine
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Corning v. Burden, 56 U.S. 267 (1853)
every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result” |
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Modern Machines
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1. Cell in an organism can be a machine (Amgen v. Chigai Pharmeceutical, 902 F.2d 1532, 1537 (9th Cir. 1990)
2. Loading a new program on to a general purpose computer can turn it into a new machine (In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) |
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Articles of Manufacture
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“production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery” Diamond v. Chakrabarty, 447 U.S. 303, 306 (1980)
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Composition of Matter
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“all compositions of two or more substances and … all composite articles, whether they be the result of chemical union , or of mechanical mixture, or whether they be gases, fluids, powders or solids” Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)
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Process
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35 U.S.C. §100(b)
“process art or method , and includes a new use of known process, machine, manufacture, composition of matter, or material” |
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Non-Patentable Subject Matter
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a. Laws of Nature
b. Physical Phenomena c. Abstract Ideas d. Immoral Inventions e. Human Beings f. Atomic Weapons |
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Statutory Bars
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1. Novelty
2. Utility 3. Non-obviousness 4. Disclosure |
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Utility [35 U.S.C. § 101]
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1. operability - capable of fulfilling its function
2. beneficial utility 3. identified utility must be substantial and specific |
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Patent
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1. Patentable Subject Matter
2. Novelty 3. Utility 4. Nonobviousness 5. Enablement (Disclosure) |
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Written Description § 112
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1. "full, clear, concise, and exact terms"
2. as to enable one skilled in the art to make use of the invention without undue experimentation (Enablement) |
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Enablement (Disclosure) [35 U.S.C. § 112]
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1. Written Description
2. Enable one skilled in the art 3. Put forth Best Mode |
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Enable one skilled in the art [35 U.S.C. § 112]
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Description must enable one skilled in the art to make and use invention “without undue experimentation”
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Best Mode
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Subjective Test – Did the inventor identify any mode he actually considered to be the best at the time the application was submitted?
Objective Test – Did the application provide an enabling disclosure of that mode? |
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Novelty [35 U.S.C. § 102]
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Must Show
1. inventor was not anticipated by prior art (Anticipation) 2. that he was the first to invent (Priority) 3. he himself must invent the patent (Derivation) 4. filed patent within one year of publication or use (Statutory Bars) |
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Anticipation
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Invention is not patentable if it is (1) referenced (2) in the prior art that (3) anticipates the invention on the (4) critical date
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"referenced"
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A publication containing prior art encompasses any medium that makes the reference publicly accessible (In re Hall, 781 F.2d 897 (Fed. Cir. 1986)
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"anticipated"
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A claim is anticipated if each element of the claim is found, either expressly or inherently, in a single prior art reference (a.k.a identity of invention)
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"critical date"
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The date of the invention (when the inventor had fully conceived the invention in its operable form)
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Priority
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1. must be first to "conceive" (or "reduce to practice" if invention too complex)
2. maintain "diligence" (i.e. attempt to bring the invention into existence) without abandoning, suppressing, or concealing |
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Loss of Right (Statutory Bars)
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1. When
a. invention becomes public knowledge (a single use or a secret use by the inventor for commercial purposes is deemed public use [Egbert v. Lippman]) b. or is the subject of an offer and is ready for patenting (On-Sale Bar) 2. inventor has one year to file |
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Experimental Use Exception
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Experimental use does NOT initiate the one-year clock [City of Elizabeth v. Pavement Company]
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Nonobviousness [35 U.S. § 103]
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An invention is obvious if (1) all the elements of the invention and (2) a reason to combine them are known
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Non-obvious Analysis [Graham Test]
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1. Determine scope of prior art
2. Ascertain differences between the prior art claims and the claims at issue 3. Level of ordinary skill in the field determined 4. Ask whether one "skilled in the art" could have made the leap |
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Secondary Consideration of Nonobviousness
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Nexus requirement
the secondary consideration must have a connection to the claimed inventive aspects of the product (sports drink must sell because of some inherent quality not just because it was endorsed by a sports star) Types a. Commercial success b. Long-felt, but unsolved, need c. Failed efforts of others d. Copying by others e. Acquiescence in or praise for the invention f. Unexpected results |
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Obvious to Try [In re Kubin]
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When a skilled artisan merely pursues “known options” from a “finite number of identified, predictable solutions”
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Infringement [35 U.S.C. § 271]
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whoever without authority makes, uses, offers to sell, or sells any patented invention infringes the patent
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Questions of Fact
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1. Validity: utility, novelty, inventorship, abandonment, inadequate description, best mode
2. Infringement: whether the claim as interpreted by the judge covers the alleged infringer’s product or process; literal, Doctrine of Equivalents, reverse Doctrine of Equivalents 3. Relief: damages, lost profits, reasonable royalties, willful infringement |
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Infringement Analysis
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1. Patent claim at issue must be construed to determine its scope and meaning
2. Then determine whether accused device or process infringes the properly construed claim (either literally or under the doctrine of equivalents) |
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Types of Evidence
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District Court reviews de novo [Markman v. Westview Instruments, 517 U.S. 370 (1996)]
Intrinsic Evidence (given more weight) 1. Claim (ordinary and customary meaning of the words) 2. Specification and drawings 3. Prosecution history Extrinsic Evidence 1. Dictionaries and treatises 2. Expert testimony 3. Other evidence outside of the public record 4. Testimony of parties |
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The Claims
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Look to the claims FIRST
1. Interpret claims to preserve their validity 2. Should normally be read on the patentee’s preferred embodiment 3. Terms may be specifically defined in the patent specification 4. If two alternative meanings are equally likely, choose the narrower one 5. Evidence outside of the claims can be used only to understand and interpret, not to vary or limit, the terms of the claim |
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File Wrapper
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The Court SECOND looks to the entire "file wrapper"
1. Prosecution history (record of the application process before the PTO) 2. If applicant disclaims certain subject mater during prosecution process, applicant will not be permitted to argue claims should not cover such subject matter |
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Extrinsic Evidence
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LASTLY the Court looks to extrinsic evidence
1. dictionaries 2. expert testimony |
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General Rules of Claim Interpretation
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1. Claims should be given the same interpretation for validity and infringement
2. Unless otherwise specified the language will be given its ordinary and accustomed meaning 3. Claim should be construed as broadly as possible 4. If claims are ambiguous, they will be construed to preserve validity, however, a court will not read a limitation into a claim simply to preserve validity 5. The same term will not be given different meanings in different claims |
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Doctrine of Equivalents
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a. When a process does not fall within the literal terms of the patent claims, but nevertheless infringes because it is “equivalent” to the claimed invention
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Doctrine of Equivalents Analysis
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To infringe
1. every element of the patent claim must have its literal or equivalent counterpart in the accused device or process 2. accused device or process overall performs the same function in the same way to achieve the same result |
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Prosecution Estoppel
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If a patentee narrows a claim during prosecution, he is estopped from using the Doctrine of Equivalents for that claim
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Reverse Doctrine of Equivalents
[Grover Tank & Mfg. Co. v. Linde Aire Products Co., 339 U.S. 605, 608 (1950)] |
If a device is (1) so far changed in principle from a patented article that (2) performs the same or similar function in a (3) substantially different way, but (4) nevertheless falls within the literal words of the claim, (5) doctrine of equivalents can be used to defeat the patentee's action for infringement
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Indirect Infringement: Active Inducement [35 U.S.C. § 271(b)]
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Elements
1. Intent (can be proven by circumstantial evidence) 2. To aid in the infringement |
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Indirect Infringement: Contributory Infringement [35 U.S.C. § 271(c)]
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Elements
1. offer to sell or sell 2. a component of patented item 3. constituting a material part of the invention 4. with knowledge of infringing uses for component |
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Foreign Assembly [35 U.S.C. § 271(f)]
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???
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Defenses
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1. Experimental Use
2. Inequitable Conduct 3. Invalidity 4. Drug Products Exception 5. Implied License and First Sale 6. Repair and Reconstruction 7. Laches 8. Antitrust |
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Experimental Use
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Madey v. Duke University
1. solely for amusement 2. idle curiosity 3. strictly philosophical inquiry Finding of a “definite, cognizable, and not insubstantial commercial purpose” causes experimental use defense to fail |
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Inequitable Conduct
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FMC Corp. v. Manitowoc Co., Inc.
Patent is unenforceable if you try and defraud the PTO 1. material misrepresentation 2. with intent to deceive |
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Material Representation
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substantial likelihood that a reasonable examiner would have considered the information important even if it's not outcome-determinative
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Submarine Patents (Laches)
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Symbol Technologies v. Lemelson
unreasonable and unexplained delay in prosecuting a patent could be grounds to bar enforcement of that patent |
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Remedies
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1. Injunction
2. Damages |
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Legal Standing for Damages
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1. legal title to patent at time of infringement
2. exclusive license |
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Injunction Elements
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35 U.S.C. § 283
1. plaintiff has suffered irreparable injury 2. remedies available at law, such as monetary damages, are inadequate to compensate for that injury 3. considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted 4. public interest would not be disserved by a permanent injunction. |
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Damages: Lost Profits
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35 U.S.C. § 284
lost sales, reduced prices to compete with the infringer, or increased expense as a result of the infringement Demonstrating Lost Profits 1. Demand for the patented product 2. Absence of acceptable noninfringing substitutes 3. His manufacturing and marketing capability to exploit the demand 4. The amount of the profit he would have made |
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Damages: Reasonable Royalty
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35 U.S.C. § 284
Measure of damages if lost profits are not claimed or proven a. Established Royalty OR b. Hypothetical “arms length” negotiation at time infringement began takes into consideration: 1. Prudent licensee/prudent patentee standard (good faith imputed) 2. Relative bargaining position 3. Subsequent profits are NOT taken into consideration |
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Willful Infringement
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1. treble damages
2. attorney’s fees and cost |
