PATENT LAW OUTLINE

NOTE: Standards of Review

Fact clearly erroneous (if decision by judge); deference given to lower court
Fact substantial error (if decision by jury); deference given to jury
Law de novo; NO deference given to lower court

I.

OVERVIEW
[see pgs 643-644 for good overview]

II.

PATENT CONSTRUCTION - 112

A.

Types of Claims, 112 3 & 4

1.

Independent Claim does not refer to any other claim

2.

Dependent Claim refers to one or more claims in the patent (e.g. A windmill
according to Claim 1)

3.
B.

a.

Dependent claim specifies some feature of the general invention

claimed in the referenced independent claim

b.

Dependent claim is narrower than the referenced independent claim;

dependent claim incorporates all limitations set forth in referenced claim
( 112, 4)

c.

What happens when referenced independent claim invalidated? Does

not necessarily mean that dependent claims are invalid either since they
are narrower (less likely to anticipate or be obvious) [pg 31]

d.

Converse: if independent claim is valid, dependent claim must be valid

b/c it is narrower

Scope of Listed Claims independent claims are listed in order, staring with the
most broad and working down to the least broad

Claim Language (pg 28)

1.

Open Claim: Broad - an invention comprising elements A, B, and C; claim

covers any embodiment of invention having elements A, B, C, and any additional
elements

2.

Closed Claim: Limited an invention consisting of elements A, B, and C;

invention limited to just those elements, so product using A, B, C, and D does not
infringe

3.

C.

Patent Term 20 years from date of filing

1.
D.

Exception: Provisional Applications 21 years from filing date

Publication patent applications in the U.S. are published after 18 months if that same
invention is the subject of corresponding foreign prosecution in a country that requires
publication after 18 months

1.
III.

In-Between an invention consisting essentially of elements A, B, and C; a

product that contained element A, B, C, and D would NOT infringe if element D
made the product essentially different from the claimed invention

Prior to 1999, NO domestic patent applications were published until registered

(pg 62)

DISCLOSURE - 112 (CH. 4)

A.

PRESUMPTION when considering invalidity, burden on challenger and presumption is

that patent reg. is valid; NEED clear and convincing proof
Overview

1.

preliminary description of the invention: what it is, what it does, and what
inventions came before it

2.

Quid Pro Quo to gain monopoly, patentee must disclose how the invention
works (pg 259)

a.
3.
B.

Balancing property right (monopoly) w/ policy (promoting science by

public disclosure)

Contains 4 Parts under 112, 1 enablement, written description,

definiteness of claims, and best mode

Enablement ( 112, 1)

1.

Question of law (pg 321)

Inventor must describe invention clearly enough so that PHOSITA can
understand it well enough to make and use it (pg 262)

a.
2.

KEY - description should be clear enough that PHOSITA would NOT

need undue experimentation to reproduce claimed invention

BUT, inventor need NOT disclose in patent what is well known in the art (pg
283)

a.

Enablement is NOT precluded by the necessity for some

experimentation, such as routine screening

3.

Factors to Determine Whether Disclosure Would Require Undue

Experimentation (fact analysis) [Wands, pg 285]

a.

Quantity of experimentation necessary

b.

Amount of direction or guidance presented

c.

Presence or absence of working examples

d.

Nature of invention

e.

State of the prior art

f.

Relative skill of those in the art

g.

Predictability or unpredictability of art

(1)

h.

Breadth of claims

(1)

C.

the more predictable the field of technology, the less disclosure

necessary to enable a broad claim; SO, broad claim can be
enabled by disclosure of single embodiment when result is
predictable (pg 290-91)

A claim can be broader than the specific embodiment disclosed

in specification (Gentry, pg 318), BUT claim is necessarily
limited by prior art and specific written description

4.

Staring Materials if invention is made of materials (staring materials) not

known in the art, inventor must set forth how to make the starting materials to
comply w/ enablement requirement (Wands, pg 288)

5.

Deposit PTO has depository for strains of microorganisms, which is necessary

for some patent appls to meet enablement requiremen

6.

Policy teach PHOSITA how to do it; alerts public about limits of invention

Written Description (WD) ( 112, 1)

question of fact, look to expert witnesses (pg 311)

GREAT DEBATE most scholars believe WD is redundant w/ enablement; WD

is a heightened standard that can be used to invalidate many patents, especially
technological patents that describe invention in functional terms (Rochester appendix
denying en banc hearing)

1.

Theory teaching function that gives public invention in exchange for

monopoly (Rochester, handout, pg 922)

a.

Historical WD was very important initially b/c law did not call for
claims

b.

NOW, Broad Purpose WD is not merely to describe invention BUT to

convey w/ reasonable clarity to PHOSITAs that as of patent filing date,
invention was in inventors possession (pg 307)

(1)

c.

2.

Can add claims after filing, BUT can NOT change WD after
filing [no new matter in disclosure, 132(a)]; SO WD prevents
inventors from adding numerous claims since those claims may
not be adequately described in the WD

Typically, WD coupled w/ priority issues ( 120) (WD in senior

application is not sufficient to cover claims in junior application), OR
whether new matter was introduced into patent (forbidden under
132)

Parallels and Limits Claims - inventor must highlight or describe what she
claims, and claim what she highlights (pg 262)

a.

KEY analysis evidencing patent has WD: (1) does WD provide any
guidance to steer the PHOSITA on how to make elements listed in the
claim OR (2) that the PHOSITA would already know, at the time of
filing, how to make the elements? (Rochester, handout, pg 929)

(1)

generic words typically do not meet WD requirement, unless

they are common words to PHOSITA; instead must specifically
describe the invention OR give range of properties when
invention covers numerous embodiments

b.

Inventor need NOT describe more than one embodiment of a broad

claim to adequately support that claim (pg 317); HOWEVER right to
exclude may be limited by narrow written description (disclosure); e.g.
mounted console in sofa in Gentry

c.

Inventor is entitled to draft claims as broad as prior art and WD will

allow (Gentry, pg 318); BUT WD can be broader than claims b/c it may
contain things that were later rejected by PTO

(1)

d.

Pioneering Invention - Claim can state all embodiments of a

particular invention if they enable all the embodiments existing
at time of application (typically, very few embodiments since
pioneering invention); this all broad claim would then cover
improvements discovered in future

BUT - after Gentry, to invalidate based on written description, court

required clear or unambiguous language in description that calls for
narrower claim (pg 319)

D.

3.

Written Description Differs from Enablement its purpose is broader than

merely explaining how to make and use invention; it ensures the scope to
exclude, as set forth in claims, does not overreach the inventors contribution to
the field of art as described in patents specification (Rochester, handout, pg 920)

4.

Written Description Differs from Claim a claim describes the inventions

function or process (i.e. what it does) and sets scope of exclusion; whereas WD
describes the structure (e.g. what it is) at time of filing for PHOSITA to learn, it
is teaching mechanism (Rochester, handout, pg 923)

5.

Other Notes

a.

Drawings alone can meet written description requirement (Vas-Cath, pg

307), but the drawings must effectively describe invention in the eyes of
PHOSITA (pg 310)

b.

WD analysis is not limited to cases in which the legal question is one

about priority (Rochester, pg 924)

c.

Do NOT need reduction to practice to satisfy WD requirement

(Rochester, pg 926)

Definiteness of Claims ( 112, 2)

1.

Claims must be drafted clearly, so PHOSITA can discern boundaries of patent (pg
262)

a.
2.
E.

Inventor must state clearly what is claimed and what is left free to public
use

Policy shapes future conduct of persons other than inventor by insisting that
they receive notice of scope of patented device (pg 307)

Best Mode ( 112, 1)

1.

Question of fact (pg 345)

Subjective Drafting by Inventor of all embodiments encompassed in claims,
inventor must state which one, if any, he believes is most effective at time of
filing (pg 263; Randomex dissent, pg 340)

a.

NO requirement that inventor point out which listed embodiment does

he consider the best mode; inventor only required to list best mode as
one of the embodiments (Randomex, pg 339)

2.

Stricter than Enablement NOT every detail of invention needs to be

described to met enablement requirement, BUT all the details of best mode must
be present (pg 342)

3.

Analysis look at evidence (facts) and determine if inventor tried to conceal

best mode (e.g. used trademark to describe cleaning fluid rather than ingredients
of cleaning fluid)

a.

Two Components to Analysis (Chemcast, pg 345)

(1)

Subjective - At time application was filed, did inventor know a

mode for practicing invention that was better than all others?

(a)

(2)

If inventor envisions numerous of carrying out

invention, NO need to highlight best mode (per
Randomex, pg 349)

Objective - If so, did the inventor disclose this best mode in a

way that a PHOSITA could practice the invention in that
embodiment?

(a)

View from PHOSITAs ability; PHOSITA must be able

to ascertain best mode

(b)

Adequacy of disclosure is objective test based on (1)

scope of claims and (2) level of skill in the art

(i)

Best mode needs only to be disclosed in a way

that meets enablement test (per Chemcast, pg
349)

(ii)

This part of test permits disclosure that requires

significant, but not undue, experimentation (pg
350); so inventor can say here is best mode
and then describe it in general terms

4.

Inventor need not update the best mode to include modes discovered after
filing application (pg 343); would fall under no new matter forbidden per 132

5.

Distinguish Radomex and Chemcast using trademark in Randomex was fine

b/c cleaning solution was not an element in claim so not part of invention; BUT
using trademark in Chemcast was NOT fine b/c hardness of grommet was an
element in claim, so inventor needed to disclose how to make or obtain that
specific grommet

IV.

NOVELTY AND DERIVATION - 102 (CH. 5)

Bars patent b/c inventor was NOT the first to disclose invention
***NOTE: to invalidate patent, Fed Cir requires corroboration of witness testimony rebut
presumption ( 282) that registered patent is valid, MORE than just patentees
testimony; crucial for establishing priority***
clear and convincing to rebut presumption (e.g. patent reg.); but only preponderance of
the evidence if no presumption (e.g. patent pending)

A.

Overview

1.

Theory novelty of invention is like consideration for a K; societys contract

with the inventor is binding b/c inventor has given something of value (i.e. new)
in exchange for patent registration (monopoly)

2.

Timing - novelty is directed only at events that occurred before the time of
invention

3.

Difference Abroad novelty is measured in U.S. by date of invention (priority

goes to who invented first); however in other countries novelty is measured by
filing date (priority goes to who filed first)

a.
B.

Thus, novelty disputes (interferences) are unique to U.S. (pg 364)

Steps for Novelty Analysis (pg 364)

1.

Does item qualify as reference?

a.
2.

3.

Reference - any art that is relevant under 102

Is the effective date of reference earlier than critical date?

a.

Effective Date date material became part of art (e.g. publication date)

b.

Critical Date date of invention [note: term is different for statutory bar
analysis]

c.

Prior Art any material having an effective date before the critical date

Anticipation - Is the information disclosed in a pre-critical date reference

sufficient to render applicants invention non-novel?

a.

Anticipation is a question of fact, deference to lower court

Anticipation requires all of the relevant information to be disclosed in a
singe reference (pg 365), i.e. the reference discloses the identical
invention

[NOTE: if analysis needs more than one reference, look to obviousness

under 103]

b.

Every Element Test each and every element as set forth in claim is
found, either expressly OR inherently described, in a single prior are
reference (Robertson, pg 368)

(1)

Step 1 does prior art reference expressly include all elements

of junior patents claim?

(a)
(2)

If prior art is a patent reg., can look at claims AND

specification

Step 2 If not expressed in prior art reference, were all the

elements of the patent appl. claim inherent in the reference?

(a)

Limitation on Inherency - Extrinsic evidence must be

clear that missing descriptive matter in prior art
reference is nevertheless necessarily present in reference
AND would be so recognized by PHOSITA

(i)

(b)

Court must view from eyes of PHOSITA; would

PHOSITA have appreciated the inherent features
of prior art?

Inherency can NOT be established by mere probabilities

or possibilities (Robertson, pg 369)

Create chart to compare patent appls claim elements with

prior art reference

c.

d.

KEY: A prior art reference can NOT anticipate an invention unless the
reference is enabling (either patent or publication) [pg 380]

(1)

NOTE: the enabling standard for prior art under 102 is

watered down, prior art does NOT need to disclose any use for
invention, no utility needed; BUT strict test for enablement
under 112 that requires teaching (Hafner, pg 382)

(2)

BUT, if reference names elements but then states that

author/inventor was unsuccessful at creating invention, then NO
anticipation (Wiggins, pg 387)

(3)

Product itself can anticipate, even those products that would not
inform public about how to make them (overlaps w/ public use
in 102(b))

KEY: Limitations on Prior Art overall, novelty is strict test and

allows many forms of prior art to destroy patent appls novelty; BUT the
limitation is that the prior art must be available to inventor at time of

invention
(see below examples: theses in shoebox, Cronyn; unknown isotope in
radioactive waste, Seaborg; unrecorded knowledge of prior inventors in
NTP; unappreciated steam process in Tilghman; and lost prior art in
Gayler)

e.

Anticipation Compared to Literal Infringement analysis is basically

the same, except anticipation deals w/ material whose effective date is
before the critical date (that which would literally infringe if later in
time, anticipates if earlier than the date of invention) [pg 371]

(1)
f.

Why do strict novelty analysis when broader obviousness analysis

typically follows? Court believes it must follow this schedule in keeping
w/ language of 103 (pg 372)

g.

Accidental Anticipation if the result of invention was also found as an

accidental or undetectable phenomenon in a prior art reference, the prior
art reference does not anticipate (Seaborg, pg 375, and notes on pg 378);
PHOSITA would not have found reference

h.

Claim Lists a Range if claim lists a range, and prior art falls w/in that
range, then the claim is anticipated (Titanium Metals, pg 387)

i.

genus v. species (clothing to sock), a reference that discloses a species

anticipates a later claim to a genus containing that species, BUT not vice
versa (reference disclosing genus and claim listing species) (pg 390-91);
equates theory that one can NOT patent new way to use old invention

(1)
C.

NOTE: anticipation does NOT apply to infringement by DOE

HOWEVER a new species (improvement) can be patented if the

new species is not obvious under 103 (pg 391)

Disclosures in Earlier Users, Publications, or Patents [ 102(a)]

1.

2.

Statute

a.

Known or used by others in U.S. before date of invention, OR

b.

Patented or described in a printed publication in worldwide before date

of invention

Known by Others in U.S.

a.

Not limited to documentary evidence, product itself can anticipate (pg

398), or even oral testimony (although, w/out corroboration from some
other evidence, oral testimony is not very strong) (pg 402)

b.

Public Knowledge knowledge which is reasonably accessible to the

public, involves some type of public disclosure (drawing on tablecloth

not public in National Tractor Pullers (NTP), pg 400)

(1)

c.

3.

4.

NOT satisfied by knowledge of single person b/c statute states

others; but NTP case also says a few persons working
together is not public knowledge (NTP, pg 400)

Lost Art if prior art product is lost and no other documents evidence its
construction, it can NOT anticipate (Gayler, pg 402); BUT later case
questioned, but did not overrule, this rule: is technology ever lost?
Should patent law pull back what was once in public domain? (Coffin, pg
403)

Used by Others in U.S.

a.

Non-secret uses in the ordinary course of business anticipate patent

application (pg 405)

b.

Use does NOT need to be commercial to anticipate, just observable by

public when typically the process or device would not normally be so
viewed (pg 406)

c.

Incomplete or unsuccessful experiment does not constitute use by others

(Rosaire, pg 404, and notes, pg 405); HOWEVER, experiment can
anticipate and become prior art provided it is perfected and thereafter
became publicly known

Printed Publications Anywhere (also applies to 102(b) below)

a.

Not restricted to formal publications such as widely circulated magazines

and newspapers (Jockmus, pg 409)

b.

Burden on Proponent of Publication Bar - must show that prior to the

critical date the reference was sufficiently accessible, at least to public
interested in the art, so that someone examining the reference could make
claimed invention w/out further research or experimentation (reference
was enabling) [Hall, pg 411]

c.

(1)

NO requirement that reference was obtained by anyone, just that

it was accessible to anyone searching (pg 413)

(2)

Confidential letters or restricted reports (e.g. military or

corporate reports) are NOT publications

(3)

Thesis or dissertations are NOT published until indexed and

available in catalog, such that patentee could find it

Time of Publication becomes public when it becomes available to at

least one member of the general public (pg 413); e.g. date newspaper
published, NOT date when writer submitted story to editor

10

5.

Patented Anywhere (also applies to 102(b) below)

a.

All U.S. patents qualify to anticipate

b.

Foreign Patents

(1)

Utility Model Patents where the utility model qualifies only

as patented prior art and not a publication under 102(b), then
it anticipates ONLY for it claims (disclosure does NOT count)
[Reeves, pg 417]; b/c disclosure would equate what is known or
used and that is restricted to U.S.

(a)

D.

HOWEVER, some utility models have been treated as

publications, such that claims and disclosure could
anticipate

(2)

Design Registrations - considered patents b/c it conveys

exclusive right (pg 418)

(3)

Foreign patents must be accessible to public, but indexing,

cataloging, etc. are not required (pg 419)

Disclosures in Earlier Filed Applications [ 102(e)] (pg 427)

1.

2.

Merely disclosing the invention (i.e. not claiming but merely describing), is
enough for anticipation and bar claim in subsequent application (pg 425)

a.

Material disclosed but not claimed in patent is available as prior art

ONLY under 102(e); NO interference under 102(g), b/c interference
is available only for overlap in claims

b.

Senior patent constitutes prior art as of its filing date, not the date of its
public disclosure (Milburn, pg 426)

1999 Amendment to 102(e) - Disclosures in patent application constitute prior

art provided that the application either issues as a granted patent or is published
pursuant to 122(b)

a.
3.

NOTE: if application abandoned prior to publication, NOT prior art,

BUT if abandoned after publication, then it IS prior art

Secret Applications - applications secret for first 18 months

a.

PTO can NOT issue 102(e) rejection against junior patent application if
senior application has not yet published

b.

BUT, when it publishes it can be cited under 102(e)

11

E.

4.

Provisional Applications under 102(e), it appears that PTO can cite senior
provisional application as soon as it matures into an application that is published
or issues as a patent (pg 427)

5.

Swearing Behind 102(e) says prior patent filed before the invention; so if
junior invention created before seniors filing date, junior filer can swear
behind the senior filing and eliminate 102(e) invalidation claim

Derivation [ 102(f)] patentee invented subject matter of patent, it was not derived or
stolen from another [not part of novelty, but related]

F.

1.

Need more than just assistance; help from another is derivation if it (1)
encompasses all the elements of invention and (2) is fully enabling (pg 438)

2.

NOTE: big difference between inventor and owner; if you listed others as
inventors (with intent of sharing ownership) and they did not help create
invention, patent invalid under 102(f) for misjoinder of inventors (pg 439)

3.

shop right rule

Establishing Date of Invention for Priority [ 102(g)] (pg 501)

Establishes priority for interference and in general, but also is the general rule for
establishing date of invention for other sections of 102

1.

102(g) is Narrow

a.

For priority, requires conception and reduction to practice (actual or

constructive)

b.

Applies only when the inventions claimed are the same

2.

Interference, 102(g)(1) establishes priority for interfering party; applies to

interfering partys inventions created in U.S. or abroad

3.

General Invalidation, 102(g)(2) priority for invalidation applies only to

inventions created in U.S.

4.

General Test for Priority, 102(g)(3) [pg 441-442]

a.

b.

KEY: First to reduce to practice has priority (e.g. build a working model)

(1)

What if parties reduce on same day? Default is first to conceive

(2)

What if parties file on same day and can NOT prove conception
or reduction to practice? Neither gets patent (Lassman, pg 455)

Filing valid patent application constitutes a constructive reduction to

practice

12

(1)
c.

d.

NOTE: application MUST be enabling (per 112); unless filing

a provisional application under 111

First to conceive may prevail (A) over first to reduce to practice (B)
if A was reasonably diligent from a time prior to Bs conception through
to As own reduction to practice (either actual or constructive) (see
Christie v. Seybold, pg 449)

(1)

Diligent = working towards perfecting and putting the invention

into practice

(2)

Failure to reduce b/c no money is a consideration, but is not

dispositive; should have filed application to at least obtain
constructive reduction

(3)

Prima facie evidence that first to reduce has priority; so second

to reduce has burden to show diligence

Any reduction to practice that has been abandoned, suppressed, or

concealed is disregarded

(1)

Unreasonable delay in filing after reducing to practice may

evidence abandonment or suppression (Peeler, pg 458)

(a)
(2)

Intent must show intent to conceal or suppress

(a)

(3)
5.

This works against others keeping invention as a trade

secret

UNLESS, the time period is unreasonable, then can infer

(no need to show intent) suppression, concealment, or
abandonment (pg 460)

Rebut Inference delay was to perfect invention (testing and

refinement); must point to the claim that you were perfecting

Patent Office Rule 131 allows applicant to antedate or swear behind date
of prior art

a.

Oath or declaration to establish date of invention prior to the referenced

publication (reject under 102(a)) or appl/reg. (102(e))

b.

Can NOT use this rule to overcome rejection (anticipatory reference) of:

(1)

U.S. patent reg. or published appl, when claims are the same
[must declare interference to determine priority] OR

(2)

statutory bar [102(b), (c), or (d)], b/c invention date has nothing
to do w/ these rejections

13

c.

For Interference, oath must also establish that invention had practical
utility (reduced to practice) prior to cited reference; BUT for ex parte
reference (e.g. published article that does not set forth utility), inventor
does not need to prove prior utility (i.e. what the invention can do), so
its a lower standard (Moore, pg 505)

6.

NOTE: in an interference, applications were co-pending (e.g. junior filed before

senior passed to reg), so to prove priority, junior need to only show
preponderance of evidence (no clear and convincing for presumption since
senior invention had not yet passed to reg when junior was filed) (pg 446)

7.

Reduction to Practice occurs when an inventor or his agent know that the
invention will work for its intended purpose (pg 592)

STATUTORY BARS (LOSS OF RIGHT TO PATENT) - 102 (CH. 5)

V.

Preclude or bar patent, even if applicant is the first inventor of claimed invention

Timing can happen before or after time of invention

A.

B.

Patented or Described in Printed Publication [102(b)]

1.

prior to application date

2.

applies to patents and publications in the U.S. and abroad

3.

prior patent or publication would count as prior art under 102(a) and 102(b), as
long as the patent or publication occurred more than one year from filing patent

4.

although patentees publication cannot anticipate itself under 102(a), it can

constitute a bar under 102(b) if published more than one year to filing

Public Use or On Sale [102(b)]

1.

prior to application date

2.

applies to use and sales only in U.S.

3.

General Statutory Bar can be caused by anyone, including the applicant

4.

Secret Use (Trade Secret)

a.

Third Party Secret Use - if party uses invention or process in secret and
sells product, and public can NOT ascertain process by looking at
product, selling product does not create public use for other parties
(Gore, Pennock, pg 613-14)

b.

Inventor Secret Use - BUT, same as above, would create public use
against that partys patent application

14

(1)

Policy - in keeping w/ policy of encouraging inventor to file

early [Gore, pg 613]

(2)

Some case treats trade secret use as abandonment (which does

not create a public use bar for other parties), while others treat it
as public use (pg 631-32)

5.

Process v. Product if patent on process, and process kept secret, then selling
product by process constitutes a public use ONLY if public could figure out
process by examining product

6.

Policies Behind 102(b) [pg 604]

7.

8.

9.

10.

a.

Discourage removal from public domain of inventions that public

reasonably believes are freely available

b.

Favoring prompt and widespread disclosure of inventions

c.

Allow inventor reasonable amount of time following sales activity to

determine the potential economic value of a patent

d.

Prohibit inventor from commercially exploiting invention for a period

greater than the prescribed statutory time (20 years)

Barred if invention, more than 12 months prior to date of application [grace

period], was:

a.

Patented or described in publication anywhere, OR

b.

In public use or sold in the U.S.

Grace Period inventor can publish or sell invention during the 12 months after
inventing and NOT abandon right to file patent

a.

Grace period commences based on public use OR on sale use,

whichever is earliest

b.

BUT, if the invention is published and the inventor fails to file

application prior to the 12 month deadline, patent right is lost

c.

encourages filing w/in 12 months of invention

COMPARE to Novelty (102(a))

a.

Novelty looks at date prior to invention, rather than date of application

b.

Inventor can NOT anticipate himself under 102(a), but can create prior
art under 102(b)

On-Sale Bar -- two-part test (both are required); DESPITE this test, not a

15

mechanical rule but rather depends on the totality of the circumstances [Pfaff, pg
574, 582]

a.

b.

First, product must be the subject of a commercial offer for sale

(1)

look at the totality of the transaction and determine if transaction

was commercial (i.e. would the sales activity help inventor
determine value of patent?) [pg 581]

(2)

Sham sales do NOT count as on-sale bar

(3)

General offer to sell does not count, time would run when
invention delivered; but specific offer would count as sale (pg
577, hypos)

(4)

Exclusively licensing the invention does not trigger the on sale

bar

Second, invention must be ready for patenting

(1)

Writing - inventor can describe method w/ sufficient clearness

and precision to enable those skilled in matter to understand
process; a question re: enablement rather than conception (pg
576); OR

(2)

Reduced to Practice

(a)

c.
11.

RTP - invention does NOT have to be reduced to

practice to be on sale; inventor can sell product before
it is ready b/c inventor can obtain patent before
invention is reduced to practice (pg 572)

Third Party Sales sales and offers to sell by third parties may also
create statutory bars for inventors (Abbott Labs v. Geneva, pg 609)

Public Use

a.

b.

Showing Invention to Friends & Employees NO public use if inventor

maintains control and those viewing know to keep it a secret (either
expressly or implicitly) [Moleculon, pg 563-564]

(1)

Look for explicit or implicit confidentiality agreement

(2)

In contrast to Moleculon, the corset springs in Egbert, which was

given to others for free and unrestricted

Public use can be caused by the inventor OR third party unrelated or

unknown to inventor, showing invention to public (Baxter, pg 608)

(1)

So, even if the inventor is keeping the invention secret (not

16

public), an unknown person may show his version of invention

in public, which causes the inventors clock to run too;
encourages inventors to file quickly; BUT

(2)

c.

secret commercial activity of inventor may constitute public use,

BUT secret commercial activity by unknown third-party would
NOT constitute a public use (pg 614)

NOT every detail of patent must be disclosed for public use, need only to
disclose those features claimed in the patent to equate public use (pg
615)

12.

Sale v. License the sale of the product or process of the patent (something
produced according to an invention) is public use, BUT licensing or assigning
the rights to patent (invention itself is subject of transaction) is NOT public use
(pg 564)

13.

Experimental Use Doctrine perfecting or completing an invention to the point

of determining that it will work for its intended purpose

a.

Defense for Inventor negates finding of public use, if use merely

experimental and controlled by inventor (pg 588)

(1)

(2)

b.

Inventor must retain control during the experimental period;

invention can NOT be used by others during the experimental
period

(a)

Making others pledge confidentiality is a factor towards

finding experimental use (pg 600)

(b)

No commercial exploitation is factor towards finding

experimental use

(i)

Policy - If not exploiting, does not violate policy

of limiting term of monopoly

(ii)

Market tests = commercial exploitation

Is subject use experimental? question of law; must look at

totality of circumstances (pg 594); BUT experimental period
over when inventor shows others that it works (pg 593)

(a)

Dissent in Lough says it should be question of fact,

deference to jury

(b)

Why Q of law? Judge-made exception; requires exercise

of judgment taking into account various facts (pg 599)

Experimental Sales - do not trigger the bar (e.g. experimental lighting

pole built on highway; Wyoming later paid for the pole after it survived

17

the winter; not a commercial sale, WY was told it was experimental and
confidential) [Manville, pg 591]

C.

c.

Market Testing NOT experimental use b/c it is commercially

exploiting invention (pg 601)

d.

Reduction to Practice experimental use can NOT occur after RTP; no

need to experiment if inventor already knows invention will work for
intended purpose (pg 592)

e.

Time Period no set time for how long inventor can claim experimental
use; depends on the invention (e.g. longer time to test running track in
winter conditions); determine whether inventor was acting reasonably in
continuing the evaluation

Abandonment [102(c)]

1.

Party-Specific Statutory Bar triggered ONLY by applicant (pg 614)

2.

Two Ways to Abandon

a.

Publicly and expressly renouncing rights to patent; abandonment takes

effect immediately (effectively waves any remaining grace period
granted by 102(b))

b.

Trade Secret in keeping with 102(b), using invention in secret after 12

months from creation effectively abandons patent rights (see Pennock,
Gore, Metallizing, Macbeth-Evans, pg 631)

(1)

D.

[102(d)]

1.
VI.

Alternative theory is that trade secret does not constitute

abandonment but rather public use, which would bar others from
filing for same invention

Party-Specific Statutory Bar triggered only by applicant

NONOBVIOUSNESS (CH. 6)

A.

Not codified until 1952, 103; prior to 1952, patent only required novelty and utility

Broader test than novelty test under 102

Overall, obviousness is question of law, no deference to lower court (pg 748); BUT
review lower courts findings on Graham factors as question of fact, look for clear error
(Brown & Williamson)
Policy

18

1.

nonobviousness attempts to measure technical accomplishment; invention must

NOT be mere economic or trivial change from the prior art, but rather significant
technical advance to merit award of patent (pg 644)

2.

if an idea is so obvious that people in field would develop it w/out much effort,
then incentives for patent system may be unnecessary to generate idea; would
actually create social costs since public could not freely use (pg 646)

a.

NOT all novel discoveries deserve patent

3.

granting patent to obvious inventions may compromise incentives that patent

system provides to develop nonobvious inventions

4.

granting obvious patents may create a proliferation of economically insignificant

patens that are expensive to search and license (pg 647)

B.

Process of Mind dont take inventors intent or process of mind into account for
patentability; also codified in 103 as patentability shall not be negatived by the manner
in which the invention was made

C.

Old Test inventive genius or flash of creative genius (Cuno Engineering, pg 667);
criticisms:

D.

1.

typically lead to invalidation of patents covering relatively simple technology;

(pg 661)

2.

flash of creative genius establishes high bar for patentable; also very arbitrary for
courts to enforce (pg 669)

3.

Compare Old Test w/ 103 old test looked for some special quality that made
a new thing patentable; IN contrast, 103 compares the invention with the whole
prior art and a fictional person (PHOSITA)

Graham SC addresses 103

1.

103 is a codification of Hotchkiss

a.

2.

House Report on 103 NO patent if the difference between the new

thing and what was known before is not considered sufficiently great to
warrant a patent (i.e. the difference is such that the subject matter as a
whole would have been obvious at the time to a person skilled in the art)
(pg 676)

Constitutional Requirements for Patent promoting useful arts and science

(Graham, pg 672)

a.

Patent Power is Qualified Authority Framers wanted to end custom

by Crown of awarding certain parties monopolies on goods and
businesses that had long been enjoyed by public

19

b.

Congress can NOT enlarge patent monopoly w/out regard to innovation,

advancement, or social benefit

c.

Congress can NOT authorize issuance of patents whose effect are to

remove existent knowledge from public domain, or to restrict free access
to materials already available

d.

Requirements for patent that are in keeping w/ Consts goal of promoting

useful arts and science: innovation, advancement, and things which add
to the sum of useful knowledge

(1)
e.

Courts and PTO, in applying Congress standards, must adhere to these

Constitutional requirements

f.

Thomas Jefferson patent is not designed to secure natural rights, but

rather is an inducement to bring forth new technology (pg 673)

(1)
3.

Also prevents inventor from getting another patent on some

slight variation, extending his monopoly

So, goal of patent was to find inventions which would not be

disclosed or devised but for the inducement of a patent (pg 674)

Hotchkiss Summary based on Constl. requirement, only inventors should

get patent (implying something original); if invention is obvious, then creator is
NOT inventor but rather skilled mechanic (one skilled in the art, not adding
anything)

a.
4.

So, Hotchkiss requires comparison between patents subject matter and

background skill of the calling

Graham Test (pg 677)

Ultimate question of patent validity is one of law, nonobviousness lends itself to

several basic factual inquiries (pg 677)

a.

Determine scope and content of the prior art

(1)

For 103, consider only prior art that is pertinent to the field of
invention (do NOT consider nonanalogous art); TEST

(a)

Whether the are is form the same field of endeavor,

regardless of the problem addressed, AND

(b)

If reference not w/in field of the inventors endeavor,

whether reference still is reasonably pertinent to the
particular problem w/ which the inventor is involved (pg
800)

20

b.

(2)

Backdating done for 102(e) for secret patent application also

done for 103 [NOTE: 102(e) requires inventions be the same; no
such requirement for 103]

(3)

102(f) and (g) prior art is the same for 103

(4)

Time ONLY prior art at time invention created

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

(1)

c.

Level of ordinary skill in the pertinent art resolved

(1)

Factors to consider: educational level of inventor; type of

problems encountered in art; prior art solutions to the problem;
rapidity w/ which innovations are made; sophistication of tech;
educational level of active workers in field (pg 744)

Secondary Considerations (Objective Indicia) nexus required between the

invention disclosed in Ps patent and the secondary considerations

NOTE: w/out any inventive qualities, these considerations will not overcome
obviousness

SC in Graham said they may play a factor; whereas Fed. Cir. considers them a
fourth factor

d.

Commercial success

(1)

E.

Note when P argues advantages of invention at trial, but

advantages are not in the specification; weighs towards
nonobvious (pg 685)

Nexus - if there was some other reason why product was

successful (e.g. regulations now permit it, big marketing, large
financing for advertising, invention not main source of
companys success, etc.), then does NOT weigh for nonobvious

e.

Long felt but unsolved needs

f.

Failure of others to produce the invention (answer to problem)

g.

Others copied

h.

Review of file wrapper, discussing rejected and resubmitted claims

Old Elements Combined a device that combines old elements is not necessarily
obvious; must use the Graham test to determine if the combined effect is nonobvious

1.

if patent merely rearranges old elements, but the elements perform the same

21

function, it is obvious (merely skilled mechanic, not inventor)

F.

Reduction of Presumption in litigation, if additional invalidating prior art is

discovered that was NOT before the PTO during prosecution, then the presumption that
an issued patent is valid is reduced (pg 701)

1.
G.

H.

I.

Policy do not need deference to PTO since it did not review that prior art in
determining patent

Combining Prior Art obviousness can NOT be established by combining pieces of

prior art reference suggests combining the features actually combined in the invention at
issue

1.

Corollary obviousness cannot be established by combining pieces of prior art

absent some teaching, suggestion, or incentive supporting the combination

2.

Hindsight to avoid hindsight-obviousness, apply rigorous application of

requirement of teaching or motivation to combine prior art references
(Dembiczak, pg 712)

a.

Evidence of teaching or motivation MUST be clear and particular;

broad conclusory statements re: teaching of multiple references no
enough

b.

PTO has burden to show obviousness; therefore, did the PTO produce
evidence or just make general statements about how references could be
connected? PTO needs evidence in keeping w/ Graham test (pg 713-14)

SC Trend Which Predates Creation of Fed. Cir. (1982) [pg 706]

1.

103 (1952) was supposed to overrule A&Ps synergistic approach (1950)

[patent results in an effect greater than the sum of the several effects taken
separately]

2.

in keeping, Graham (1966) ruled 103 codified the Hotchkiss (1851) standard
(mechanic v. inventor) which lowered bar for patentability

3.

BUT Sakraida (1976) again cited the A&P synergistic approach, which appears
to again raise the bar for patentability

Fed Cir Trend Post 1982

1.

Debmiczak obviousness revolves around using old elements (see above

hindsight) and if there was suggestion to combine; this test seems to lower the
bar from the SCs synergistic approarch

2.

Suggestion Test to Find Obviousness (Brown & Williamson)

a.

need to find something in prior art as a whole to suggest the desirability

of making the combination (pg 714), AND

22

(1)

b.

that suggestion claims a reasonable expectation that such combination

would be successful (pg 715)

(1)

3.

VII.

suggestion or motivation based on (a) nature of the problem to

be solved (prior art trying to solve same or similar problem
patent solved), (b) the express teachings of the prior art, OR (c)
the knowledge of one of ordinary skill in the art (see Teleflex, pg
10)

if inventor faced w/ large number of variables and prior art does

not give guidance, then inventive step is typically necessary
(nonobvious); Exception: when it is reasonable to expect most
or all combinations to work [pg 718]

Criticism although the suggestion/motivation can be implicit (which would

mirror the SCs Sakraida application), too often courts look for explicit, which
too often restricts the obviousness inquiry to a literal reading of the prior art (pg
717)

24 Law Professors Brief claims that suggestion test lowers the bar established
by SC; SC is considering whether to take Teleflex case
Teaching Away in contrast to suggestion test that weighs towards obviousness,
teaching away from suggested method weighs towards nonobvious (e.g. mixing
salt w/ plastics tends to cause explosions, salt frog lure) [pg 726]

INFRINGEMENT LITERAL BY CLAIM INTERPRETATION

Panel Dependent which judges on panel is crucial to how the claims will be interpreted
(per Petherbridges article)

A successful infringement suit requires at least one valid claim to cover the accused
infringers product or process

A.

Infringement [ 271(a)] whoever w/out authority makes, uses, offers to sell, or sells
patented invention w/in U.S. or import into U.S.

1.
B.

access and intent are irrelevant

Claim Interpretation Two Steps for Literal Infringement

1.

First - look to the claims; claims determine if invention is patentable and

establish boundaries for patentees right to exclude (question of law; Phillips at
1211)

a.

ALSO look to specification, drawings, preferred embodiment,

and file wrapper; help explain the claims; helps define scope and
meaning of claims

23

2.

C.

Second - determine if claims read literally on the accused structures (infringing

device), IF ALL the limitations claimed are present in accused device, then
infringing(question of fact; Phillips at 1211)

a.

BUT, if claims do not read literally, still infringing if accused structure

performs substantially the same function in substantially the same way
and for substantially the same purpose (pg 881)

b.

NOTE: If claims did not read literally or substantially the same, check
DOE

General Comments (pg 882)

1.

Patent Preamble courts split re: whether preamble can be considered;

typically NOT limiting when merely recites purpose or intended use of
invention (Innova at 1118)

2.

Abstract statement in abstract may operate as a clear expression of manifest

exclusion, but it must be direct or clear since the Abstract is typically a general
statement about the invention

3.

Doctrine of Claim Differentiation applicants do not use two claims when one
will do; SO if one claim includes limitation and another does not, the claims
cover different subject matter (do not read limitation in one into another claim)

4.

Doctrine of Prosecution Disclaimer precludes patentees from recapturing

through claim interpretation specific meanings disclaimed during prosecution
(Omega, handout, at 1323)

a.

Statements in history re: disclaimer must show clarity and deliberateness;

BUT if vague, doctrine does not apply (Omega, handout, at 1325)

5.

Specification can help define words and phrases, but limitations in

specification can NOT be read into claims

6.

Prosecution History can use statements made during prosecution do help

define words or phrases (e.g. response to Office Action)

7.

Lexicographer applicant can define its owns terms in specification

8.

Extrinsic Evidence (pg 883)

a.

Always can be used - dictionaries and technical treatises

b.

Rare circumstances where court is stuck expert testimony, articles, and

inventor testimony

c.

AND, any extrinsic evidence that will help court understand the
underlying technology

24

D.

Claim Interpretation is Question of Law, no 7th Amend right to jury on claim

interpretation (Markman, pg 884); so DC will hold Markman hearing to determine scope
of patent for jury

1.

2.

E.

Reasons for Law over Fact

a.

judges are better at construction of written documents (patents and

statutes)

b.

need uniformity, which is better served by judges rather than juries

Fed. Cir. in Control

a.

SC opinion in Markman (1996) was directive to Fed. Cir. to develop

standard for claim construction that lower courts could follow

b.

In affirming Markman (question of law), Cyborg (1998) further

established Fed. Cir. as the body to develop rules on claim construction;
Fed Cir is uniquely in control b/c no SC or statutory guidelines on claim
interpretation that it must follow

c.

Fed Cir will review DCs claim interpretation de novo (no deference to
DC or PTO)

d.

BUT: Phillips en banc dissent (2005) discussed the confusion Fed Cir
has stirred by disagreeing on legal standard (procedural or holistic);
argued that claim interpretation has no Const. concern, so should be a
question of fact based on Fed. Rule Civ. Pro. 52(a) (finding of facts
only set aside if clearly erroneous)

(1)

Waste of time to have evidentiary Markman hearing about

claims, and then do it again at Fed. Cir.; more efficient and
accurate for DC to construct the record

(2)

Who qualifies as PHOSITA and the state of the art at creation are
fact specific to case and are not general conclusions that are
typical for conclusions of law

(3)

Compare - Differs from obviousness analysis, which treats

elements as question of fact and then overall balancing as
question of law

Fed. Cir. Claim Construction Based on Petherbridges Article

1.

NOTE: goal of Fed. Cir. is to obtain consistency; created b/c PTOs loose
standards re: patentability was casing doubts on the judiciarys presumption
that an issued patent is valid and DCs analyses were varied; SC wanted Fed.
Cir. to develop patent law (pg 1115-16)
Competing Interpretive Canons that Create Split

25

a.

Claims are to be interpreted in light of specification and prosecution

history

(1)
b.

Claims may not be modified beyond their actual language by reference to

the specification or prosecution history

(1)
2.

contextual reading; preserve function of claim as ultimate

statement of patent scope (pg 1133)

Meaning of claim language can NOT be altered by importing in

changes from outside the claims

Other Canons

a.

When different claims of a patent use same language, give that language
the same effect in each claim

(1)
b.

All terms in claim are presumed to have meaning in claim (pseudocanon) (Innova at 1119)

(1)
3.

Conversely when similar but different terms are used, they

have different meanings

Should not interpret claim in a way that makes term superfluous

Approaches to Tension in Canons

Procedural focused on extrinsic evidence, BUT holistic focused on intrinsic

evidence

Phillips en banc decision and dissent discuss tension between the approaches

NOTE: MPF considerations, discussed below, in interpreting claims

a.

Procedural Approach (63% of cases) relatively strict rules-based

hierarchy of interpretive sources; emphasis on ordinary meaning of
disputed patent claim language (pg 1111)

(1)

Trend approach has gained favor over the years since

Markman (1996); two new judges have adopted this approach,
which is factor for trend

(a)

BUT, Phillips en banc lists 11 of 12 judges agreeing to

holistic approach

(2)

Inherently more consistent, which favors goal of consistency

(3)

Hierarchy (pg 1135)

26

(a)

general presumption - ordinary understood (by

PHOSITA) meaning of claim language; objective
baseline

(i)
(b)

(4)

look to dictionaries, reference works, etc.

(extrinsic evidence)

alteration from ordinary meaning if the claim term

is vague or deprives clarity, OR the patentee has become
its own lexicographer, then can look at intrinsic and
perhaps other extrinsic evidence

Comments on Proving Alternative Interpretation

(a)

need significant proof that alternative meaning is

required (e.g. textual reference in actual claim language
w/ which to associate alternative construction, such as
referring to written description) (Johnson Worldwide);
gives notice to PHOSITA re: alternative definition
(Innova at 1117)

(b)

Party will argue that specification and prosecution

history evidence alternative construction by patentee to
support/refute infringement

(c)

For alternative, description needs to describe term w/

clarity, deliberateness, and precision (Johnson
Worldwide at 991); broad language re: term does NOT
rebut ordinary language presumption

(d)

Claims will not be read restrictively unless patentee has

demonstrated clear intention to limit the claim using
words or expressions of manifest exclusion or restriction
(Innova at 1117)

(e)

NOTE doctrine of claim differentiation, limitation listed

in one claim does not extend to all claims where it is
omitted

(f)

Preferred embodiment by itself, or mere inferences

drawn from description of embodiment, do not limit
claim terms

(g)

Function Relationship claimed components must

perform a designated function (e.g. function of water
bottle tube and cap is to filter); weighs against finding
alternative b/c broader than specific function that limits
claim (Innova at 1118)

(h)

Incorporates MPF (see below)

27

b.

Holistic Approach (37% of cases) less structured analysis; whether a

claim must be limited to the specific embodiment presented in
specification depends in each case on the specificity of description of
invention and on the prosecution history (Cultor at 1331)

(1)

Goal: Determine what is ordinary meaning of term to

PHOSITA at the time of invention (Phillips en banc)

(2)

THUS, need to determine ordinary meaning - flexible; seeks

correct meaning according to the particular circumstances
presented (rather than following formal steps and hierarchy) [pg
1134]

(3)

First: Claim Language widely accepted meaning of

commonly understood words

(4)

Second: Intrinsic Evidence - Remainder of Specification and

Prosecution History

(5)

(a)

Specification is typically dispositve re: claim term

(b)

approach relies heavily on specification language and

review or prosecution history for interpretations

(c)

term will NOT be ordinary term if intrinsic evidence

shows patentee distinguished that term from prior art on
(a) basis of particular embodiment (i.e. only one
embodiment available), (b) expressly disclaimed subject
matter, or (c) described a particular embodiment as
important to invention (Phillips at 1213)

(d)

NOTE: using embodiment goes against canon that

embodiment by itself should NOT limit claim

Third: Extrinsic Evidence - less significant than intrinsic

evidence

(a)
F.

supported expert or witness testimony, dictionaries,

learned treatises, state of art, meaning of technical terms

Means-Plus-Function Claims ( 112, 6) alternative to accepting ordinary meaning

for term in claims; claims are therefore limited by specification

1.

Example: Patentee tries to broaden claims by encompassing equivalent structures

by merely listing a function instead of a structure (e.g. instead of rivet, list
means for fastening)

2.

Focus of Issue: whether the claim as properly construed recites sufficiently

28

definite structure to avoid 112, 6

3.

Test (Omega, handout at 1321)

a.

Identify the claimed function, THEN

b.

Ascertain the correspond structures in the written description that

perform those functions

(1)

Limitation: structure must be necessary to perform the claimed

function

For MPF, claim must have more than one element; SO if claim only has one
element, can NOT express claim in MPF format (pg 32)

4.

Whether claim is MPF is a question of law (Phillips at 1212)

5.

Presumption if the claim lists means, then it is presumed to be MPF

6.

a.

Exception: drafting around MPF although means is not listed, claim

merely lists a function and not a structure

b.

Conversely omitting the word means creates a presumption that MPF

does NOT apply (Phillips at 1212)

Limitations under 112, 6 (see pg 975)

a.

FIRST - Authorizes function claiming only in a claim for a combination

of elements; a single element claim can NOT be claimed functional

b.

SECOND functionally claimed elements limited to those structures

described in specification and equivalents to those structures, does NOT
encompass every structure capable of achieving named function

VIII. INFRINGEMENT - DOCTRINE OF EQUIVALENTS

Burden of Proof Patentee has burden to prove infringement, literal or DOE

NO intent requirement, just like literal infringement (Warner-Jenkins)

A.

Definition of DOE does NOT expand claims, the scope of patent protection as defined
by the claims remains the same, BUT rather application of DOE expands the right to
exclude to equivalents of what is claimed (pg 971)

1.

NOT literal infringement but accused device is equivalent; accused device does
not copy every literal detail

2.

Function-Way-Result Test - Accused device performs substantially the same

function in substantially the same way to obtain the same result (Graver Tank,

29

pg 918)

3.

Determined based on whether PHOSITA would have known of the

interchangeability of an ingredient not contained in the patent w/ one that was
(pg 919)

a.
4.

Pioneer Patents pioneer patents are to be given wider ranges of equivalence

than minor improvement patents

a.

5.

B.

BUT, do not apply to broadly or runs counter to patent policy of

notifying public what is patented and what is in public domain

NO DOE for Unclaimed Matter anything expressly listed in specification but

then NOT claimed can NOT be captured under DOE (pg 956)

a.

7.

no official definition of what pioneer means, which creates a place to

argue, but something like path-breaking development in a new field of
technology (pg 962)

Policy w/out DOE, would be too easy for other party to make a trivial change
to avoid direct literal infringement

a.
6.

Insubstantial change gets DOE; substantial change NO DOE

Reissue BUT, patent owner can file reissue w/in two years from patent
reg date to include disclosed by unclaimed subject matter (Johnson &
Johnson handout)

NO DOE for elements that were expressly or implicitly excluded or criticized

in specification (such that the invention is far better) (Gaus, hair dryer case,
handout)

DOE is question of fact (Graver Tank, pg 918)

1.

Evidence = any form, such as expert testimony, documents, texts, etc.

2.

Can NOT overrule unless clearly erroneous

3.

BUT, although Warner-Jenkins affirms it is question of fact, states that if

prosecution history estoppel would apply or if DOE would entirely vitiate a
particular claim element, partial or complete judgment should be rendered by
the court (question of law) b/c no further material issue for the jury to resolve
(pg 936)

C.

Comparison Warner-Jenkins narrows Graver Tank, requiring comparison of accused

product with patent claims (rather than the patentees commercial product) [pg 937]

D.

All Elements Rule DOE must be applied to each individual element in claim, NOT to
the invention as a whole (Warner-Jenkinson, pg 930)

30

E.

1.

Requires equivalence to be established between each element in the clam and

some structure in the accused device

2.

Prevents too broad an application, which would cut against public notice policy
and requirement to state scope of invention in claims

Exceptions

1.

Prosecution History Estopple when claim is narrowed during prosecution to

avoid rejection, can NOT use DOE to broaden claims back to include the
particular equivalent at issue (Warner-Jenkinson, pg 931)

a.

2.

Presumption when PTO forces narrowing claim amendment,

presumption is that estopple applies

(1)

Rebuttal show that amendment did not surrender particular

equivalent at issue, OR equivalent unforeseeable at time of appl,
OR patentee/PHOSITA could not reasonably describe equivalent
(pg 952)

(2)

Burden on Patentee to show why claim was amended, and then

court would decide if reason sufficient to overcome estopple (pg
932)

b.

Basis for Rejection most likely based on prior art, BUT estopple can
be used whenever rejection required patentee to narrow the scope of its
claim to meet patentability or statutory requirements (Festo, pg 951)

c.

Question of Law b/c based on claim drafting, which is like claim

interpretation (question of law) (pg 955)

Accused Device Covered in Prior Art

NOTE: overlaps w/ obviousness b/c looking at prior art, BUT concepts are
separate (see d below)

a.

Theory patentee should NOT be able to get around prior art bar in
prosecution by narrowing claims and then rely on DOE to expand rights
to exclude those products merely incorporating prior art (pg 971)

b.

Whether an asserted range of equivalents would cover what is already in

public domain (prior art) is question of law (Wilson, pg 971)

31

IX.

INFRINGEMENT EXPERIMENTAL USE DEFENSE

A.

In general, experimental use of a device that incorporates anothers patent is

infringement, even not manufacturing and selling; just use enough to infringe (Bolar, pg
1004)

1.

B.

X.

Exception: pre-market tests for FDA approval are not infringement ( 271(e));
Trade off: drug patent owners, through patent term restoration, can get extensions
for their patents to cover the time that their drug was waiting for FDA (pg 1007)

Narrow General Exception can invoke defense when use is for amusement, to satisfy
idel curiosity, or for strictly philosophical inquiry

1.

even the slightest commercial use will bar the defense

2.

hard to show no commercial use, except someone playing in garage; even

universities use there experiments for some commercial gain (Madey)

3.

Burden of Proof D must prove experimental use

INFRINGEMENT CONTRIBUTORY
A.

Steps per 271(c)

1.

MUST find direct infringement by user of allegedly infringing device, AND

2.

then determine if D was contributory liable

a.

knowledge of the activity that is alleged to be infringing (not required

that it was infringing), AND

b.

knowledge of the patent

B.

Substantial Non-Infringing Uses defense against contributory liability

C.

Exhaustion Doctrine once item sold, consumer can use w/out infringing; sold item no
longer under patent monopoly (pg 1023)

D.

Repair v. Reconstruction repairing item does NOT infringe patent on sold device;
BUT reconstructing sold device (a lot of repair) would infringe

E.

1.

Exception to Repair provision in sale prohibits repair

2.

Repair or reconstruction is question of law

Inducement ( 271(b)) does not require knowingly, but there must be some level of
knowledge to hold D liable

1.

no passive inducement (i.e. failure to take steps to stop infringement) (pg 1030)

32

XI.

XII.

ALLOCATION OF POWER IN PATENT SYSTEM

A.

Fed. Cir review of PTO fact finding is court/agency standard, which is slightly lower than
the court/court standard of clearly erroneous

B.

PTO Rulings on Law Chevron Deference (pg 1167)

1.

when PTO using its authority re: rules, Fed. Cir. must give the rulings deference

2.

when PTO just commenting w/out authority, no deference

DEFENSE REEXAMINATION ( 301-303)

A.

B.

Ex Parte Reexamination (pg 1205)

1.

Anyone can commence reexamine by demonstrating that prior art patents or

printed publications raise a substantial new question of patentability affecting
the validity of an issued claim

2.

validity question must be new and substantial

3.

PTO has three months to determine whether request for reexamination is valid

4.

reexamination cannot broaden scope of claims (

5.

305)

Inter Partes Reexamination (pg 1211) allows third party full participation in
reexamination

1.

BUT, third party cannot challenge Boards decision in court, although patentee
can

XIII. DEFENSE DOCTRINE OF INEQUITABLE CONDUCT

A.

PTO Rule 56 Duty to Disclose (pg 1216)

1.

public interest is best served when PTO is aware and evaluates teachings of all
information material to patentability

2.

the duty to disclose is deemed satisfied if all info know to be material to

patentability of any claim was cited by PTO or submitted to PTO by applicant

3.

What is material? (pg 1217)

a.

Prior art NOT cumulative of information already or record; AND

b.

Establishes by itself or in combination w/ something else, the

unpatentability of claim, OR

33

c.
4.
B.

Refutes or inconsistent w/ position taken by applicant in response to PTO

OA

NOTE Rebuttal for Patentee patentee needs good faith explanation; could
argue that the omitted prior art is (1) not material or (2) merely cumulative

Three-Part Test

1.

Materiality (issue of fact, clearly erroneous)

a.

b.

Submit inaccurate (false) information OR Fail to disclose pertinent

information

(1)

broader than fraud b/c covers omissions

(2)

Examples: omit prior art, failure to note public use and on-sale
bars, false affidavits re: dates of invention, and doctored data
supporting affidavits

Requires proof by clear and convincing of a threshold degree of

materiality of the nondisclosed or false information

(1)

c.

2.

KEY: Test for Threshold Degree whether there is a

substantial likelihood that a reasonable examiner would have
considered the omitted reference of false information important
in deciding whether to allow the application to issue as patent
(pg 1220)

Overall Degree of Similarity - Missing material does not have to

anticipate or render claim obvious to be material, it merely needs to be
pertinent, such that the PTO would want to see it and make its own
conclusion

(1)

Other materials omitted, besides prior art, could fell under

inequitable conduct (e.g. omission of co-owner, false affidavit)

(2)

Best Mode failure to disclose, or mislead about, best mode can

invalidate patent under inequitable conduct (pg 1246)

Intent (issue of fact, clearly erroneous)

a.

Can prove with direct or indirect evidence; proof of direct scheming is

not required

b.

Evidence of Intent prior art cited against foreign applications for same
patent, applicant has license from prior art owner, patent involved in
litigation re: senior patent

c.

NO Gross Negligence per Kingsdown, gross negligence by itself is

NOT enough to infer intent to deceive (pg 1245)

34

(1)
3.

Balancing Materiality and Intent (issue of law, de novo)

a.

C.

Need more than just known or should have known to obtain

inference; view it in connection with other factors

Sliding Scale the more material the omission or misrepresentation, the

lower the level of intent required to establish inequitable conduct OR
vice versa (pg 1231)

Unpatentable

1.

if court determines inequitable conduced occurred, ALL of the claims are

invalidated, not just the ones under investigation

a.

BUT, court can look outside the claim(s) subject of the litigation to
determine if inequitable conduct occurred (e.g. can look at specification,
description, drawings, etc.)

2.

inequitable conduct can occur at any stage of prosecution, including reissue

3.

Attorney Fees - inequitable conduct qualifies as exceptional and thus leads to

award of attorney fees (pg 1237)

XIV. INVENTORSHIP AND OWNERSHIP OF PATENTS

A.

116, Joint Inventors need to apply together, no matter what percentage each worked
on the invention

1.

2.

Joint Invention product of a collaboration between two or more persons

working together to solve the problem addressed (pg 1258)

a.

need not have worked together at the same time, BUT they must know
that they are working together (pg 1263)

b.

need not work on all the claims together; contribution to one claim is
enough

c.

Although inventorship is question of law, Fed. Cir. reviews the

underlying finding of fact which uphold a DCs inventorship
determination for clear error (pg 1274)

Conception complete only when the idea is so clearly defined in inventors

mind that only ordinary skill would be necessary to reduce the invention to
practice, w/out extensive research or experimentation (pg 1258)

a.

May turn on when inventor has ability to describe invention w/

particularity (pg 1259)

b.

BUT, inventor does NOT need to know if invention will work for
conception to be complete (pg 1259); discovery that invention actually

35

works is reduction to practice

3.

B.

K Around Ownership NO, can not use K to add ones name as inventor;
inventor must have contributed; BUT could use K to get ownership (rather than
inventor) or license (pg 1262)

Judicial Correction of Ownership ( 265) court can amend certificate if:

1.

in error, person named on certificate is not inventor (misjoinder), OR

2.

in error, person not named, and error was not the result of omitted persons
deceptive intent (nonjoinder)

a.

3.

XV.

NOTE: if other party omitted person on purpose, may be inequitable

conduct, which would render patent unenforceable to them but NOT the
omitted person (pg 1268)

these errors will not invalidate patent

C.

Amending Ownership can add other inventors to application, as long as omission was
done without deceitful intent (pg 1256)

D.

Licensing by Co-Owners each owner can license the invention w/out the consent of the
other co-owners (pg 1256)

E.

Exclusive licensees can bring suit w/out the patentee, only if the licenses owns all the
rights to the patent; in other words, licensee is assignee (pg 1293-94)

F.

Non-exclusive licensees cannot bring suit w/out the patentee

G.

Must record conveyance w/ PTO three months after execution or it will not be valid
against subsequent purchasers (pg 1295)

H.

Shop Right right to practice the invention but not the right to license another to do so;
shop right is personal right that cannot be assigned (pg 1308)

DEFENSES TO INFRINGEMENT CLAIM: DOUBLE PATENTING

AND ANTITRUST MISUSE
A.

Double Patenting can NOT seek double patents in attempt to lengthen monopoly;
typically happens with patentee drafts broad claims and PTO divides out application

1.

Statutory Double Patent - ???

2.

Non-Statutory Double Patent - ???

a.

terminal disclaimer ( 253) can get another patent on an obvious

variation of patent, but that patents term ends when the original patent

36

expires

B.

Antitrust

1.

Antitrust Misuse defense - defeats PI action and allows D to use invention

royalty free

a.

BUT, patentee can purge her misuse and (presumably) reinstate property
right (patent) [pg 1065]

XVI. REMEDIES
A.

Injunctive Relief ( 283)

1.

Preliminary Injunctions

a.

2.

w/out PI relief, infringers would become merely compulsory licensees as

long as the litigation lasts (paying damages as they went along) (pg
1040)

PI Elements (Amazon, pg 1045)

a.

A reasonable likelihood of success on the merits

b.

(1)

Prove moving party will likely prove that other party infringes
patent; AND

(2)

Moving partys infringement claim will likely withstand other

partys challenges to the validity and enforceability of the patent
(pg 1047)

Difficult to prove when basing infringement on DOE (pg 1051)

Irreparable harm if an injunction is not granted

(1)

3.

Presumption re Irreparable Harm - presumed when clear

showing of patent validity and infringement has been made (pg
1045)

c.

Balance of hardships tipping in its favor

d.

Injunctions favorable impact on the public interest

Accordingly: PI will not issue if (pg 1046)

a.

D can raise a substantial question concerning either infringement or

validity, AND

37

b.

B.

C.

Standard of Review (lower standard than for SJ) D needs only to prove substantial
question re: invalidity to block PI; does NOT need to show clear and convincing
evidence that is required for summary judgment (pg 1047)

Eminent Domain (pg 1064)

1.

U.S. Govt. patentees can only get money (reasonable and entire compensation)

2.

State Govts. patentees can only get injunction; money award would violate 11th
amend

Property Rules v. Liability Rules

1.

injunctive relief is in keeping w/ property right; BUT monetary relief is in

keeping w/ liability rules (pg 1066)

2.

Property Rules generally are good when cost of transferring right amongst
parties interested in using them are low compared to the costs of courts trying to
value harm after infringement (judicial valuation is inaccurate and difficult)

a.

3.

D.

P can NOT prove that Ds theory lacks substantial merit (i.e. patent
would not likely withstand Ds challenge, pg 1051)

Patents do well under property law b/c hard for court to determine
damages to patent; court would rather issue injunction than allow
continued damages

Liability Rules costs of bargaining before infringement are likely to be very

high compared to judicial calculation of value (easier for court to award
damages)

a.

Temporary involves non-willful infringement; infringer was not aware

of patentees right (pg 1067)

b.

Permanent (rare) patentee not selling into market served by infringer,

and the market is deemed important to public

Damages ( 284)

1.

Statute requires damages awarded that are adequate to compensate for the
infringement (pg 1070)

2.

Lost Profits (ex post damages award) patentee must prove (pg 1070)

a.

Demand for patented product

b.

Absence of acceptable non-infringing substitutes

38

c.

Patentees manufacturing and marketing capability to exploit the demand

(1)
d.
3.

consider also whether patentee tends to give no, few, or several

licenses

Amount of profit patentee would have made

Reasonable Royalty (ex ante license agreement) when lost profits can NOT be
proved, patentee is entitled to a reasonable royalty (pg 1071)

a.

What is reasonable? The rate at which a licensee would pay as royalty,

AND yet still make and sell product at profit, BUT then increased since
there would be no deterrence if the infringer merely had to pay the
normal royalty rate (e.g. a rate freely negotiated between the parties) [pg
1072]

b.

Factors to Consider: what was P property, what extent has D taken it;
propertys usefulness and commercial value; and extent of propertys use
(pg 1072)

c.

Rate calculating from date of infringement

d.

Can use expert testimony to determine reasonable royalty

e.

Fallacy the reasonable royalty analysis makes the assumption that the
D made a choice to pay a royalty, when in realty it did worse: it choose
to infringe the patent (pg 1078)

(1)
f.

Should the court give a rate that give the infringer a profit?
Seems like bad policy (pg 1078)

Did the infringer weigh compare benefits of licensing and infringement?

If so, then infringement was willful and damages are trebled

XVII. PATENTABLE SUBJECT MATTER

A.

Categories of Patents ( 101, definition of process 100) Process, Machine,

Manufacture, Composition of Matter, OR any New and Useful Improvement Thereof

1.

anything under the sun that is man made

2.

EXCEPTIONS: laws of nature, physical and natural phenomena, and abstract

ideas

a.
3.

Although application of a law of nature or mathematical formula to a

known structure or process may deserve patent (pg 147)

Utility analysis sometimes is blurred w/ novelty analysis in pre-1952 cases and

nonobviousness analysis after 1952

39

4.

B.

look for transformation; transformation and reduction of article to a different

state of thing is the clue to patentability of a process claim that does not include
particular machines (pg 145)

Living Organisms patentable as manufacture or composition, as long as they are NOT

naturally occurring; must be man-made (Chakrabarty, pg 71)

1.

natural things

a.

can get patent on process for extracting them, but can NOT patent the
natural thing itself (pg 101), OR

b.

change the characteristics of natural thing, thus creating a new thing; e.g.
isolating and purifying a compound, gland, cell, or gene (pg 102)

(1)

c.

C.

D.

Chakrabarty seems to say any artificially created life form is

patentable; in keeping, artificially made oysters and other
animals (pg 128-29)

Hard to distinguish the adrenaline in Parke-Davis w/ the bacteria for

legumes in Funk Brothers; court in Funk said bacteria was just doing
what it naturally does

(1)

Maybe some fields of technology are looked more favorably

upon when deciding utility

(2)

Both cases were decided before 1952; after 1952, obviousness

would play a more important role in these types of cases

Plants

1.

can get patent for artificially created or bred plants (pg 123)

2.

Const. says any new discovery, so Congress expanded the law to cover these
types of plants

Computer Programs

1.

can NOT get patent for mathematical formula or algorithm (this is covered under
copyright) (pg 147)

2.

can get patent for process of making something, wherein a computer is used in
the process (i.e. mere application of a law of nature or math)

3.

PTO further relaxed standard for computer software; software is patentable if its
operation produces a useful, concrete and tangible result (pg 164); constitutes a
practical application of an abstract idea, such as a mathematical formula
(State Street, pg 160)

40

4.

E.

NOT patentable innovative software that generally increases the efficiency of a

computer (pg 164)

Field Restrictions

1.

field restrictions created by courts tend not to endure; BUT restrictions created by
legislation remain enforceable (pg 165)

2.

NOTE: TRIPS bars any type of field restriction (pg 166)

3.

Business Method Exception before State Street, could not get patent on
business method; State Street ruled that if a business method meet the
requirements, it could get patent

a.

Prior User Rights Defense ( 273) gives defense against alleged

infringer of business method, when infringer was commercially using
business method at least one year prior to the effective filing date of the
business method patent

(1)

This defense to a specific filed seems to violate the TRIPS

agreements language about no discrimination amongst fields (pg
173)

XVIII. UTILITY
A.

B.

Comments

1.

Utility based on 101s inventions that are useful and 112s disclose
manner and process of making and using (pg 211)

2.

Prohibits filing of patent application in the very early stages of research

3.

Timing - Utility measured at the time no later than application filing date (pg
246)

4.

Whether an invention has utility is a question of fact (Fisher, handout)

Practical or Specific Utility does the invention have substantial utility OR is it

frivolous and insignificant (a basic general or speculative use)?

1.

low bar to pass, need only show one specific and substantial utility

2.

Questions arises in biotechnology where scientists create compound but then do

not know what it could be used for (pg 229)

3.

until process claim has been reduced to production of a product shown to be

useful, the metes and bounds of patent monopoly are not capable of precise
delineation; i.e. quid pro qua for monopoly is that society gets something useful

41

(which is substantial utility) (pg 232, and from Fisher)

a.

4.
C.

How can someone infringe product or process if there is no use?

Beneficial Utility is the invention socially harmful or have a deceitful purpose

1.
D.

PHOSITA can use claimed discovery in a manner which provides some

immediate benefit to the public (Fisher); NOT something that is mere
staring point for future research

early patent applications for gambling devices were rejected; NOW, hard to say
what device is socially harmful

Operability

1.

Presumption that patentees claims of use and operability are correct; PTO then
must rebut by evidencing PHOSITA would reasonably doubt usefulness and
operability (pg 213)

2.

ALSO Rejected Under 112 - typically, if the invention has no utility under
101, it also can NOT disclose the manner and process (enablement) of using the
invention required under 112

42