Disclosure

Question 1

What is the policy importance of enablement?

Answer 1

It’s the key quid pro quo for the patent system; want a good disclosure of what you did

Question 2

Why is Lichtman skeptical of the disclosure quid pro quo story? What’s Lichtman’s version of the quid pro quo?

Answer 2

People don’t read the patents; instead, it’s I give you the patent, now you can go talk to people about

Question 3

Why are non-disclosure agreements an alternative to the patent system? Why do they fail?

Answer 3

you can talk to people about your idea without them stealing your idea

1. the other side doesn’t know what you’re going to say to them - probably going to happen eventually (steven spielberg doesn’t want to hear you non-disclosure ideas, b/c he’ll make a movie about everything)

Question 4

What is the relevant statute provision on enablement?

Answer 4

section 112: the specification shall contain a written description of the invention and of the manner of using and making in full clear and exact terms so as to enable any person skilled in the art as to which it pertains to make and use the same

Question 5

What are the important parts of 112?

Answer 5

1. written description (Gentry)
2. enablement (Lamp and Wands)
3. best mode (dead letter today)

Question 6

When would enablement be easy as a procedural and legal matter?

Answer 6

if enablement were just to give you the exact thing you invented, but that’s not what it’s for; it’s for giving you more than the little thing you achieved

Question 7

Why do you want to give you more than you achieved?

Answer 7

1. to motivate you to invent

2. otherwise, it would be very easy to get around a patent (making patents useless)

Question 8

When is enablement easier? When is it more challenging?

Answer 8

in technologies that we’ve had for a long time

when we’re talking about cutting edge tech; harder for them to decide what we want from you and harder for you to write it up

Question 9

What two things do you need to do in the disclosure?

Answer 9

1. detailed explanation of what you did, with examples and details
2. general description of animating principle behind what you did

Question 10

What happens if you get your animating principle wrong?

Answer 10

you still get at least what you achieved

Question 11

When have you enabled?

Answer 11

Get close enough so that someone skilled in the art could make your invention without undue experimentation - touchy feely fact specific

someone skilled in the art is basically there

Question 12

What is the famous case cited in Wands that is about “undue experimentation”? (6)

Answer 12

In Re Forman: lays out criteria about what undue is:

1. how much experimentation
2. amount of direction/guidance that the patent gave
3. the presence or absence of examples that worked
4. the state of the prior art
5. the relevant skill in the art
6. how predictable the art is

Question 13

What is a prophetic example? When are they not allowed?

Answer 13

Where you haven’t actually reduced it to practice (but it does count as RTP), but you have a general description that enables, allow patents to do this

in the laser guy case where he hadn’t invented the laser yet, but had tried to get a patent on a lens for the laser, the court said someone skilled in the art couldn’t do it, because there was no laser yet

Question 14

What was Sawyer v. Mann?

Answer 14

the incandescent lamp case

their whole case was built on that Sawyer and Mann failed to enable (not about Edison’s patent); they didn’t know how their example worked; their animating principle wasn’t broad enough to cover their claim

Question 15

Is it a defense to patent infringement to say you used a different patent?

Answer 15

Not necessarily; could have subsets of patents

Question 16

What was In Re Wands?

Answer 16

an immunoassay that checks for an antigen by introducing an antibody

it was about whether if providing a sample of one version of a class was enough to enable all versions of the class if it took undue experimentation to find all versions

Question 17

What was the part that might be hard for a person skilled in the art in Wands?

Answer 17

need a probe that is in large quantities

Question 18

What the freezing issue in Wands?

Answer 18

Put a sample in a public place, but was this enabling enough?

In a setting where we’re worried about the starting materials being very hard to get to, you need to provide the starting materials

Question 19

What is clearly no good if I give you a frozen sample?

Answer 19

if you deposit some, claim some, but if you deposit all, can’t deposit all, unless you deposit enough that can fully enable the claim

have to deposit all versions if you’re going to claim all versions, not just one version

Question 20

Do percentages matter in Wands?

Answer 20

court doesn’t think so; low chance to get the antigen doesn’t matter as long as they get it

Question 21

What is Barker about? What was the court worried about?

Answer 21

the paint-by-numbers way of shingling a roof, had three claims, got first two, and lost claim three

worried about submarine patents that just keep modifying their patents based on stuff in the SQ so they can sue when they get their patents filed and the tech is established; courts are nervous about being tricked: especially when innocents have broader claims to fall back on (like in Barker)

Question 22

What was old school written description about? Is this Gentry?

Answer 22

stop the cheaters

No

Question 23

What could Barker have done?

Answer 23

add more in the spec so that it informed what the third claim was; not cheating

Question 24

What was Gentry? What was the problem in the prior art? What did he clearly invent according to the court?

Answer 24

sofas

could have recliners next to each other now, because used to have control unit separated on exposed areas in an L unit

a sofa where the controller was in the one console between the two recliners

Question 25

What was different in the accused Gentry sofa?

Answer 25

the position of the controls were in the cushion behind the console, rather than directly on the console, which was covered by the accuser’s claims (between the recliners) but not his spec (on the console)

Question 26

What was the issue in Gentry? How did the Court come out?

Answer 26

the pictures in the spec looked different than what he claimed (which clearly says the console can go anywhere)

didn’t get claim 3 because read spec to find claim

Question 27

What would Gentry make people do?

Answer 27

Just copy their claims into the spec, just to make sure

Question 28

What was Lichtman’s real case on the Gentry element? What did Ford say? Who should win? Why?

Answer 28

it was a side light for a car with a detailed discussion about the light source to make a bright direct beam going down, because it will reflect in certain ways when it’s snowing or raining to see

he sued Ford, which has lights on the side to light up the step or w/e

his claim was for light, but the spec was more specific about the snow, etc.

Ford said they add a lens, which destroys the invention; we added D to A, B, C, which shows you that we’re doing a whole other thing

In this case, Lichtman thinks the inventor shouldn’t win (as per the force of Gentry), even though the accuser literally infringes

Question 29

What was Lichtman’s reading of Gentry on written description?

Answer 29

look, your claim language may well cover me, but that’s not what you invented

Question 30

What was Ariad?

Answer 30

not Gentry (didn’t get lucky), not Barker (didn’t cheat)

wrote broad claim, enabled that claim

someone skilled in the art would have recognized Ariad’s possession of the invention; they didn’t really understand it; need more detail to show this understanding, and thus possession

The claims recited methods encompassing a genus of materials to reduce transcription factor binding to recognition sites in response to external influences. It described only a generic invention. A heightened nucleotide-by-nucleotide recitation of the entire genus of claimed genetic material was not imposed. The specification suggested only the use of the three classes of molecules to achieve the reduction. Nor was there a descriptive link between the table of decoy molecules and reducing transcription factor activity. Substantial evidence did not support the verdict that the claims were supported by adequate written description. The claims were invalid.

Question 31

What does Lichtman think of the doctrine coming out of Ariad? What are some counter-examples?

Answer 31

that it’s bizarre: should we assume that inventors are skilled in the art (so if they thought they had possession don’t they qualify)

counter-examples: Gentry, Ford light case

Question 32

What more did we want in Ariad? What does Lichtman think?

Answer 32

More details in the spec

Shouldn’t need to, if everyone skilled in the art wouldn’t need those details

Question 33

What is the final question/skepticism coming out of Ariad?

Answer 33

Does it ask you for a written description that is more detailed than that is required by someone skilled in the art?

Why are we asking you to possess it (e.g. nuclear reactor inventor), instead of just asking you to enable it?

Question 34

What are the three things to think about in written description?

Answer 34

1. where you add claim language past the filing date - Barker - cheating - must be enabled and reflect something you already gave us (in the spec)
2. Gentry - claim doesn’t match the spec - just got lucky in your claims; weren’t actually inventing what you’re accusing; if it’s clear that you shouldn’t get what you literally wrote
3. Give me more detail/examples in the spec even if someone skilled in the art could have done it w/o those details/examples; maybe it’s because you’re in a category of cases like biotech - this isn’t merely echoing the claims in the spec - want them to do more research - want to visualize/recognize the members of categories in the claims (Ariad)

Question 35

What case tells us that written description is not enablement? What else does it tell us (2)?

Answer 35

Ariad

says that it applies to both original claims and new ones you add past the filing date

says that there is a written description requirement

Question 36

What is the caution on the Baker point?

Answer 36

Are able to add/change claim language; don’t overhead the cheating idea

Question 37

How did Lichtman try to clean up the Gentry stuff?

Answer 37

By saying that those cases go away on claim construction/interpretation, and then not have to move on to written description. but in Gentry, could have defined console as something between two chairs with controls on it; instead they went to written description

Question 38

What are we scared of in Gentry?

Answer 38

that it leads to mind-reading the inventor; double-guessing the claims

Question 39

What do applications do after Gentry?

Answer 39

In their spec, they give a lot of detail, but then say, don’t limit us to these examples

Question 40

How does Ariad blur into enablement?

Answer 40

Maybe now we’re talking about more examples, showing you understood your invention and possessed it, then it’s more like Sawyer and Mann

Question 41

What does and doesn’t written description require? (bottom of pg. 322)

Answer 41

1. either examples or an actual reduction to practice; a constructive reduction to practice that in a definite way identifies the claimed invention can satisfy the written description requirement
2. actual “possession” or reduction to practice outside of the specification is not enough; it is the specification itself that must demonstrate possession
3. a description that merely renders the invention obvious does not satisfy the requirement

Question 42

What was the fight between Ariad and Lilly?

Answer 42

Lilly wanted to say it’s all about enablement, but Ariad said the written description requirement does exist