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116 Cards in this Set

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List the John Deere factors for nonobviousness
1) Level of ordinary skill in the art
2) scope and content of the prior art
3) differences between claimed invention and the prior art
4) secondary considerations
List the Secondary Considerations under the John Deere test
1)Commercial success
2) long felt and unsolved needs
3) how many licensees you have to the patent
4) copying by alleged infringer

if there is evidence of secondary considerations, it MUST come in
List the elements in a Patent Specification
1) Written Description of the invention
2) drawings (where necessary)
3) claims
What are the Section 112 Disclosure Requirements?
1) Written Description of the Invention
2) Enablement
3) Best Mode
What is the standard for determining best mode?
1) subjective: did the applicant believe he was using the preferred embodiment?

2) objective: did the application disclose sufficient information so that people of ordinary sill in the field could figure out how to make and use this particular preferred embodiment?
What date do you use in analyzing whether a patent meets the requirements under Section 112?
The filing date
Can drawings of a design patent themselves be sufficient for a written description for purposes of asserting priority for a subsequently filed utility patent?
Yes (Vas Catheter v. Mahurkar)
From whose perspective do you analyze the subjective prong of the test for best mode?
From the inventor's perspective
Is an expert witness's testimony at trial that an invention is enabling relevant to establish the enablement requirement?
No. The expert is a person of extraordinary skill in the field.

He must testify based on research/technology articles in existence earlier than patent application,

or testify based on interviews with people of ordinary skill in the field.
What is the test for enablement under Section 112?
The applicant must write in sufficient detail such that "a person of ordinary skill in the field" could make or use his invention without "undue experimentation"
May a patent applicant incorporate by reference processes or details well known in the field in his application?
Yes, he may incorporate by reference the state of the art as of the date of filing, or make reference to things that are known to people of ordinary skill in the field.
How long does the Patent Term last, and when did it go into effect? What about existing patents/applications as of that date?
Patent Term = 20 years from earliest filing date

This went into effect on June 8, 1995

For patents in force/pending applications on that date: the later of either 20 years from filing, or 17 years from issuance
Is § 102(a) a novelty, or loss of rights provision?

What kinds of activity does it prohibit?
§ 102(a) is a novelty provision

-known or used in the U.S., OR
-patented or described in a printed publication anywhere in the world

before invention
Is § 102(b) a novelty, or loss of rights/statutory bar provision?

What kinds of activity does it prohibit?
A loss of rights/statutory bar provision

-public use in U.S.,
-on sale in U.S., or
-patented or described in printed publication anywhere in the world

before the critical date (1 year before filing of the U.S. patent application)
What are the requirements for invention?
1) Conception
2) Reduction to practice (actual or constructive)
Is § 102(c) a novelty, or loss of rights provision?

What kinds of activity does it prohibit?
A loss of right provision

-applies when inventor has abandoned the invention
Is § 103(d) a novelty, or loss of rights provision?

What does it apply to?
Loss of rights

-patent owner has an issued patent in a foreign country before filing in the U.S., and the issued patent was filed before the critical date (+1 year before filing U.S. application)
Is § 103(e) a novelty, or loss of rights provision?

What does it apply to?
A novelty provision

-§ 102(e)(1): the invention was described in a patent application filed in U.S., before filing application
-§ 102(e)(2): a patent granted on a patent application filed by another in U.S., before invention
Is § 102(f) a novelty, or loss of rights provision

What does it apply to?
A novelty provision

-the inventor did not himself invent the invention
What are the requirements to show derivation under § 102(f)?
The party asserting invalidity must prove:
1) prior conception of the invention by another party, and
2) communication of that conception to the patentee
Is § 102(g) a novelty, or loss of rights provision?

What does it apply to?
A novelty provision

-§ 102(g)(1): during an interference, another inventor establishes that he had invented first, and had not abandoned, suppressed, or concealed it., Or
-§ 102(g)(2)before invention, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it
-
What are the advantages of using §102(g) instead of §102(a)?
Under §102(a), the invention must have been patented/in publication, or known or used. A defendant would have to show that the invention was in fact publicly known.

You do not have to show this under §102(g)
What is the requirement for anticipation by prior art under §102?
A single prior art reference must disclose every element of that invention as arranged in the claim.

the invention cannot be anticipated by a combination of two prior art references for novelty/loss of rights (but may be combined to decide obviousness under § 103)
When is a prior art reference "known or used" in the United States under § 102(a)?
The knowledge and use must exist in a manner reasonably accessible to the public.
When is a prior art reference a "printed publication"?
The prior art reference must be sufficiently accessible to the public interested in the particular technology. The mere fact that it is published is not sufficient, and it must be cataloged in some way that could be reasonably accessible and recoverable by the public.
When is a prior art reference "patented in a foreign country"?
The foreign protection must take a form that fully discloses the nature of the protected design in a medium of communication capable of being widely disseminated.
Are conception and reduction to practice questions of law, or fact?
They are questions of law based, based on fact.
What sort of corroborating evidence is required to show conception?
Corroborating evidence of a contemporaneous disclosure that would enable one skilled in the art to make the invention.
What must a patent holder also show when introducing evidence of commercial success as a secondary consideration re: obviousness?
A nexus between the invention and the reason for commercial success (not something like money spent on marketing the product)
What factors does a court look at to determine the level of ordinary skill in the field?
At the time of invention...
1) the educational level of people in the field
2) the educational level of the inventor
3) the type of problem in that art
4) the previous solutions to the problem
5) how rapid the problems in that technology are solved
6) how sophisticated the technology was
What is the scope of the prior art that may be used in determining obvious under § 103?
1) Any prior art covered by § 102.
-Exception: §103 expressly states that you cannot combine references under §102 (e), (f), or (g), to determine obviousness

2) Analogous Art
i. prior art within the same field of endeavor as the invention
ii. prior art from a different field of endeavor, but reasonably pertinent to the same problem as that addressed by the invention
What are the requirements for a combination of references finding of obviousness?
1) a combination of 2 or more prior art references
2) one of the prior art references must teach, suggest, or motivate a person of ordinary skill in the field to combine those references
What is an article of manufacture?
The production of articles for use from raw or prepared materials, new forms, qualities, properties, or combinations, whether by hand-labor or by machinery
What is an Amendment?
The paten applicant's written response to the office action
What is a composition of matter?
All compositions of two or more substances and...all composite articles, whether they be the results of a chemical union, or a mechanical mixture, or whether they be gases fluids, powers or solids
What is Conception?
Formed in mind a fefinite and permanent idea of the complete and operative invention, as it is thereafter to be applied in practice. The idea must be "so clearly defined in the inventor's mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation
What is a Continuation?
A second application of the same invention claimed in a prior application and filed before the original becomes abandoned. the applicants and the disclosure are the same as presented in the original application
What is a continuation in part?
An application filed during the lifetime of an earlier application by the same applicant, repeating some substantial portion or all of the earlier application and adding matter not disclosed in the earlier application
What is a Copyright?
A copyright is the statutory right one has to prevent unauthorized persons from copying, publishing, or using his artistic or literary work. Rights are afforded published and unpublished works. The statutory copyright is secured upon origination by the author. The copyright may be registered by submitting the proper fee, the proper form and examples of the published work to the Library of Congress
What is a Design Patent?
A patent granted for any new, original and ornamental design of an article of manufacture (35 USC § 171. A design patent grants the owner the right to exclude others from making, using or selling the invention. The term of a design patent is 14 years
What is a Disclaimer?
A written surrender of an invalid claim in a patent when made and filed in the USPTO. 35 USC §253
What is a Divisional?
A later application for a distinct or independent invention carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier application.
What is a File Wrapper/Prosecution History File?
The USPTO file consisting of the original application, office actions, amendments and other written matter pertaining to the filing and prosecution of the application, and the issuance of the patent thereof.
What is infringement?
a tortious violation of the patent grant
What is an interference?
A proceeding within the USPTO instituted for the purpose of determining the question of priority of invention between two or more parties claiming substantially the same patentable invention
What is invention?
The mental act having for its purpose the solution of a problem faced by the inventor. It also may signify the result of such mental act, i.e. "invention" or "discovery". "Invention" must be carefully distinguished from a patent in either usage.
What is a machine?
Any mechanical device or combination of mechanical powers and/or devices to perform some function and produce a certain effect or result.
What is an office action?
The written communication from the Patent Examiner to the applicant.
What is a paper patent?
A patent covering an invention which has not been exploited.
What is a patent?
A governmentally granted monopoly for a term of years on a new and useful invention falling within the classes of invention set forth in Title 35 of the US Code. It is granted on condition that upon expiration of such term, the claimed invention is legally dedicated to the public. a complete written disclosure is a condition prerequisite to granted a patent. A patent has "the attributes of personal property." There are three types of patents, utility patents, plant patents, and design patents.
What is the patent claim?
The concise formal definition of the patented invention. Single Sentence. It is comparable to the legal description of a land parcel in a deed. the claims are the number sentences at the end of the patent document.
What is the patent disclosure?
The written description of the patentee's invention and environment in which it appears. Usually this includes the drawings, the statement of objects and the body of the specification. While the disclosure of the invention may cover more than the claims cover, it is axiomatic that the claims cannot cover more than the disclosure shows. The disclosure must be sufficiently complete to teach others skilled in the filed how to practice the invention.
What is patent prosecution?
in securing a patent, the applicant files a written application with the USPTO. The application is examined by Patent Examiners to ascertian if it meets the prescribed conditions set forth in the patent statues which must be met before a lawful patent can be granted. The arguments and views advanced by the Patent Office seeking to protect teh public interest by imposing proper limitations and safeguards on the applicant, and the arguments and views advanced by the applicant seeks the broadest possible patent coverage for the invention constitute the patent prosecution. The law requires such arguments and views be in writing and filed in the USPTO.
What is a patentable Invention
A new , useful, and nonobvious invention which, if disclosed in writing to the USPTO by the inventor, may provide teh basis for the issuance of a patent. The patentable invention which is monopolized by the patentee for a term of years is only that invention which is defined and limited by the claims of the granted patent.
What is a plant patent?
A patent granted to one who invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sprouts, mutants, hybrids and newly found seedlings, other than a tuber propagated plant or plant found in an uncultivated state. A plant patent grants the right to exclude others from asexually reproducing the plant or selling or using the plant so reproduced. The term for a plant patent is the same as for utility patents
What is prior art?
The existing state of public knowledge in a particular art at the time an invention is made. It includes issued patents, publications and all other knowledge deemed to be publicly available such as trade skills, trade practice and the like.
What is Public Use?
Any commercial use fo an invention. The statute strictly bars the grant of any patent on an invention what has been in public use for more than certain periods fixed by the statute. any use reasonably accessible by the public.
What is Reexamination of an issued patent?
A procedure within the USPTO for citation of prior patents or printed publication and reexamination of issued patents based thereon. Any person at anytime may file a request for reexamination upon payment of a fee. The request must state the pertinence and manner of applying the cited prior art.
What is a reissue patent?
A patent granted to correct errors in an original patent which occurred without any deceptive intention.
What is a trademark?
A trademark is a word, name or symbol used to identify a manufacturer's goods or products and to distinguish them from the goods or products of others. A legally protectable ownership right is acquired by being the first to adopt and contiuousl use the mark in assocition with goods or products in commerce. marks used in assocation with the provision of services may also be registered. Marks may be registered under federal law if used in interstate commerce. in both cases, the term of registration is 10 years an renewable. The trademark registration is merely a registration and does not constitute a grant of rights in the sense that a patent is a grant of rights; however, registration does provide certain procedural advantages to the registrant
What is a trade secret?
A trade secret means information including a pattern, compilation, program, device, method, technique or process that 1) derives independent economic value, actual or potential, from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use, and 2) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.
What is a utility patent?
A patented granted for any new, useful, and non obvious process machine, manufacture, composition of matter, or new and useful improvements thereof. A utility patent grants the owner the right to exclude others from making, using or selling the invention. Term is 17 years after issue if filed before June 8, 1995, and 20 years from filing if filed after.
What are the 3 categories that are not patentable subject matter?
1) laws of nature
2) physical phenomena
3) abstract ideas
How do you analyze literal infringement?
1) Interpret the claims (Markman hearing)
2) decide whether alleged infringing device or process is covered by those claims as interpreted
What are the exclusive rights under the patent grant?
35 USC §154: patent owner has the rights to exclude others from making, using, selling, offering for sale, and importing things covered by the claims
What types of evidence can you use for claim interpretation?
Intrinsic: evidence that is part of the public record. you must look to intrinsic evidence first to interpret claim

Extrinsic: Outside the official administrative record of the patent's procurement (e.g. expert testimony).
-only when disputed claim terminology is genuinely ambiguous following an examination of intrinsic does extrinsic come in
-only available to determine what specific terminology means, not to determine what the claim itself.
Is the determination of whether something is an equivalent a question of fact, or law?
A question of fact
Is the determination of whether the doctrine of equivalents applies a question of fact, or law?
a question of law
What is the doctrine of prosecution history estoppel?
once you make an amendment to a claim during prosecution, it gives rise to a presumption that the amendment was made to avoid prior art. you are then estopped from applying the doctrine of equivalents to that element. The burden then shifts to the patent holder to prove that the amendment was not made to get around prior art
What are the 3 exceptions to the presumption of prosecution history estoppel
1)if at the time the amendment was written, it was unforeseeable to use language in the amendment that would have encompassed the invention as well as the equivalent
2) if you can show that the rationale underlying the amendment may bear only a tangential relationship to the equivalent
3) that there is some other reason suggesting that the patentee could not have reasonably expected to describe this amendment with the language.


all these things must be apparent in the prosecution history file. the mere fact that patent attorney gives his reasons on the stand is not enough.
2)
3)
What must you allege in an inducement infringement claim?
1) Federal Subject Matter Jx
2) personal Jx/venue over D
3) a direct infringement
4) knowledge of the infringement/patent, and
5) intent to induce others to directly infringe
What must you allege in a contributory infringement claim?
1) Federal Subject matter Jx
2) personal Jx/venue over the D
3) a direct infringer
4) the supplier had knowledge of the infringement
5) supplier supplied a "material, non staple" article of commerce to the alleged infringer
What is a "non staple" article of commerce?
an item that does not have any other practical commercial use
What are the affirmative defenses to a patent infringement suit?
-non useful §101
-not novel §101, 102
-not within statutory subject matter §101
-not enabling §112
-non disclosure of best mode §112
-non disclosure of invention §112
-wrong named inventor §273, 115
-claim not clear and distinct §112
-inequitable conduct
-misuse
-antitrust
-contractual restrictions
-repair-reconstruction
-laches
-estoppel
What are the elements of inequitable conduct?
1) patent holder withheld or included erroneous information that was "material" to patentability.
2) this info was withheld or included intentionally

(the more evidence you show re: materiality, the less you must show with intention, and vice versa)
A patentee generally has antitrust immunity in asserting his exclusive rights. What are the exceptions to this?
1) the Patent was obtained from the USPTO through knowing and willful fraud within the meaning of Walker Process; or
2) the infringement suit is a "mere sham" to cover what is in reality "an attempt to interfere" or
3) the patentee has engaged in illegal tying
What is assignor estoppel
Prevents patent owner from selling a patent, collecting his money, then arguing that the sold patent is invalid.
When are post expiration royalties illegal?
When the patent owner makes them a condition precedent to getting a license.
Can you sue the U.S. Federal government for infringement?
Yes, but under 28 USC § 1498: you cannot get an injunction against the federal gov't, but they are obligated to pay you a reasonable royalty.

You must sue the gov't in the U.S. court of claims
What is the statutory provision for damages?
35 USC §284: The court shall award damages adequate to compensate for the infringement, but no less than a reasonable royalty. the court may increase the damages up to 3 times.
What are the two ways to get damages?
Lost profits, and a reasonable royalty
How do you prove lost profits?
Panduit 4 requirements for lost profits:
1) demand for the patented product
2) absence of acceptable non infringing substitutes
3) patent owner is capable of meeting the manufacturing and market demand
4) amount of net profit patent holder made from product
What do must you prove for literal infringement?
That the alleged infringing device/process covers every single aspect of at least one claim.
proving lost profits
you were damaged, and but for the infringement your profits would have been higher
By what standard must you prove that you were actually damaged?

By what standard must you prove that the amount of damages?
-proving that you were harmed: preponderance of the evidence

-proving amount: reasonable probability
What is price erosion?
If the infringer is a competitor, the patent owner had to drop your price to meet the competition, and the patent owner's profits dropped. You can recover for this if you can prove with a reasonable probability.
What are the requirements for a permanent injunction?
Plaintiff must show
1) irreparable harm
2) monetary damages are inadequate to cure the harm
3) balance of the hardship between the patent owner and infringer favors the patent owner
4) permanent injunction does not disservice the public
What are the requirements for a preliminary injunction?
1) a reasonable likelihood of success on the merits (also must show that infringer most likely does not have a defense)
2) irreparable harm if injunction not granted
3) balance of the hardships favors patent owner
4) no/little adverse impact on public interest
What are the requirements for stay of injunction pending appeal?
1) likelihood of success on the merits on appeal
2) irreparable harm unless granted
3) no substantial harm to other interested parties
4) no harm to public interest
What must a party show to get attorneys fees in an infringement suit?
1) must be the prevailing party
2) must show that it was an exceptional case
3) must show the fees are reasonable
Patent definition
a grant from the gov't allowing the owner the right to exclude others from making, using, selling, offering for sale, or importing the invention into the U.S. for 20 years from the filing date
What is the natural rights justification for patent law?
one has a natural or moral right to one's creations, regardless of social or competitive consequences.
What is the utilitarian justification for patent law?
Giving these exclusive rights promotes innovations by giving inventors incentive to innovate and share with the public
What are the underlying economic theories of our patent system?
-incentive to invent
-incentive to disclose/share
-incentive to commercialize
-incentive to design around
what are the 5 different types of claims?
1) composition claims
2) process claims
3) apparatus claims
4) product by process claims
5) means plus function claims
What is the text of Article I, Section 8, Clause 8 of the United States Constitution?
Congress shall have the power to promote the progress of science and useful arts by securing for a limited time to authors and inventors the exclusive rights to their respective writings and discoveries
What are the 4 categories of patentable subject matter?
1) machines
2) article of manufacture
3) composition of matter
4) processes
What is a means plus function?
35 USC § 112, paragraph 6:

an element a claim for a combination (of two or more elements) can be claimed in terms of what the element DOES, rather than what its structure is, by expression the element as generic "means."

e.g. "a means for fastening for part A to part B", instead of "a nail"
Can you use the doctrine of equivalents with a means plus function?
"equivalent thereof" is not the same as the doctrine of equivalents. to have literal infringement of a means plus function, the function performed by the accused component must be identical, not merely insubstantially different to the function recited in the claim.
What is patent term adjustment?
If the issue of a patent is delayed by failure of the USPTO to take timely action during application's pendency, the term of the patent will be extended "by one day for each such delay"

guarantee of no more year than a 3 year window

period of adjustment will be reduced by any delay on part of the applicant in responding to USPTO more than 3 months after they were transmitted.
What is a notice of allowance?
When the examiner decides that the patent applicant is entitled to a patent on some or all of his claims.
When are patents published?
18 months after filing date, as of Nov 29, 1999.

must publish if filing in foreign country. if nothing saying that applicant only will file in US, default 18 months applies.
What is the exception to the public use bar?
Experimental Use:

-the inventor must not take any money for the invention, even if it's to cut expenses
-must keep invention within his control and get feedback/data
When is something "on sale" under § 102(b)?
before the critical date,
1) invention must be a subject of a "commercial offer" for sale; and
2) the invention must be ready for patenting (i.e. actual or constructive reduction to practice)
Does breach of an NDA prevent something from being a public use or on sale?
No. there's no remedy under patent law for this
is whether or not an alleged piece of prior art is reasonably pertinent to the same problem addressed by the invention a question of fact, or law?
a question of fact
What must a computer program or algorithm do to be patentable?
It must be applied to something tangible, concrete, and useful.
What constitutional provision gives rise to infringement?
"exclusive rights"
Does the 7th amendment provide a right to a jury trial for interpretation of patent claims?
No. (Markman)

Interpretation of claims is a question of law. Judges are in the best position to interpret claims. There is also better uniformity of claim interpretation when judges interpret claims.
What is the test for the doctrine of equivalents?
If the element of the claim performs substantially the same function, in substantially the same way, the doctrine of equivalents is triggered.

the doctrine does not apply to the claim as a whole. it only applies element by element.
What is the test for declaratory judgment?
1) is there a reasonable apprehension of harm?
2) is the licensee currently infringing , or planning to infringe?



Whether the facts alleged under all the circumstances show that there is a substantial controversy between the parties having adverse legal interest of sufficient immediacy and reality to warrant relief
Explain the burden of proof in an infringement case.
Patent owner has burden or proof to prove infringement by preponderance of the evidence.

Then, D must show non infringement by clear and convincing evidence

Or issue an affirmative defense:

then the burden of production switches to the patent owner
What are the factors for determining reasonable royalties under the hypothetical negotiations test of Georgia Pacific?
1) royalties received for licensing
2) royalty rates for comparable technologies
3) nature of the license (exclusive/non-exclusive)
4) patent owner's policy/marketing practice in refusing to grant licenses
5) the commercial relationship between patent owner and infringer
6) the value of the patent in generating sales in other products
7) duration left on patent
8) the established profitability
9) advantages of patented invention over previously used products
10) nature of benefits to the users of the invention
11) extent that patent infringer made use of the invention
12) the normal profit/selling price of similar products in the marketplace
13) what portion of the product the patent encompasses
14) expert testimony
15) what the face to face reasonable business person's business negotiation would have been at the time of infringement
What is the test for reasonable royalty using the analytical approach?
-what was profit margin of infringer?
-what percentage of that profit margin would that infringer have given up to take out a license on the patent at the start of the infringement?
What is Letters Patent?
Refers to either the instrument by which the patent right is granted, or the patent right itself
What is a license?
A conditional right granted by the patent owner to permit others to exercise either all or some portion of the patent monopoly.