Patent Final Flashcards
Uniform Trade Secrets Act (UTSA)
A trade secret is information, including a formula, pattern, compilation, program, device, method, technique, or process, that:
(i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and
(ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy
Restatement Torts 757 (Trade Secret)
o “One who discloses or uses another’s trade secret, without a privilege to do so, is liable to the other if
o (a) he discovered the secret by improper means, or
o (b) his disclosure or use constitutes a breach of confidence reposed in him by the other in disclosing the secret to him.”
Trade Secret (general)
•To misappropriate Trade Secret, one must be exposed to the Trade Secret. Has to be to the economically relevant public
• To show Existence:
o Must show enough detail to demonstrate it exists; balance that with not wanting to reveal too much in a case
• Ownership
o Show that plaintiff developed the trade secret
• Derivation by Improper Means or Breach of Confidential Relationship
o Derivation — simply show the defendant obtained the information from the plaintiff
o Improper — things like theft, burglary, commercial morality standards
• Unauthorized Disclosure or Use
o misappropriater may be liable even if he uses the trade secret in somewhat changed form, and even if the misappropriater has improved on the trade secret
o Use — gives the misappropriated an unfair trade advantage or advantage in competion
o Mere possession of trade secret without disclosure will not create a misappropriation claim
However, both the UTSA and the Restatement impose liability for the acquisition of a trade secret by improper means
Some states say mere acquisition of trade secret gives rise to a claim for misappropriation but then there are virtually no damages to collect
• Remedies for Trade Secret Misappropriation
o Preliminary and permanent injunctions are available as remedies
“Irreparable harm” is the standard for prelim injunction
o If misappropriation is not trying to profit or disseminate the trade secret then money damages is not appropriate; just the injunction
Charity Group LLC v. Absolut Spirits (2009)
o Misappropriation Claim
Idea has to be novel in absolute terms – compare to knowledge of the public
o Contract Claim
involve a fact-specific inquiry that focuses on the perspective of the particular buyer
Aktiebolaget Bofors v. United States (1951)
o In that event a licensee who uses the secret for purposes beyond the scope of the license granted by the owner is liable for breach of contract, but he commits no tort, because the only right of the owner which he thereby invades is one created by the agreement of disclosure.
DVD Copy Control Association Inc. v. Bunner (2004)
o Injunction in this case is not appropriate because it does not prevent any type of harm — information is already public
Being online is not an automatic trigger for “widely known”
Needs to be known to economically relevant population
o Unjust enrichment requires “improper means”
it does not necessarily follow that once information publicly available that everyone else would be liable under the trade secret laws for re-publishing it simply because they knew about its unethical origins
Elnicky Enterprises, Inc. v. Spotlight Presents, Inc (1981)
o While the stealing of the trade secret was not necessary to duplicate in courts view, this court says it cannot deny relief to plaintiff just because it could have been done in an honest way (no stealing)
American Cyanimide
o Company stole professors research and patented. School successfully sued for unjust enrichment
E.I. DuPont deNemours & Company v. Christophers (1970)
o One may use his competitor’s secret process if he discovers the process by reverse engineering applied to the finished product; one may use a competitor’s process if he discovers it by his own independent research; but one may not avoid these labors by taking the process from the discoverer without his permission at a time when he is taking reasonable precautions to maintain its secrecy.
IDEA: need to go through effort to figure it out yourself
American Can Company v. Mansukhani (1984)
o Defendant acquired formulae pursuant to confidential relationship — does not matter if someone else might have discovered the secret by fair means; this does not protect him
o Note: Reverse engineering is not misappropriation and can result in new Trade Secrets
o There are at least three possible bases for a trade secret based action against a former employee: (1) that he actually used the trade secrets; (2) that he disavowed the confidentiality provisions of his employment agreement; or (3) that he cannot operate without inevitably disclosing the confidentiality
Third element requires “sufficient likelihood, or substantial threat” that trade secrets will be disclosed or used
United States v. HSU (1998)
o Case dealing with foreign attempt to steal trade secrets
o Under the Economic Espionage Act (EEA)
applies to anyone who knowingly engages in the theft of trade secrets, or an attempt or conspiracy to do so, with intent to convert a trade secret for economic benefit
o doesn’t matter that it was a set up and actual trade secrets were not in the alleged documents accepted. Just matters they thought there were trade secrets
Coca-Cola Bottling Co. of Shreveport v. The Coca-Cola Company (1985)
o very few things are privileged in litigation and will order disclosure if its necessary – orders coke secret formula (coke did not comply)
Protective Order and First Amendment
o Where “a protective order is entered on a showing of good cause as required by Rule 26(c), is limited to the context of pretrial civil discovery, and does not restrict the dissemination of the information if gained from other sources,” it does not offend the First Amendment
o Unsealed documents in district courts public files for several months does not make the information contained “generally known for purposes of the Uniform Trade Secrets Act”
PIN/NIP Inc. v. Platte Chemical Company (2002)
o Example of court locking in on “composition” language
o A determination that a patent is invalid as being anticipated under 35 U.S.C. § 102 requires a finding that “each and every limitation is found either expressly or inherently in a single prior art reference.
o For infringement just need preponderance of evidence
o For validity need clear and convincing evidence
o Cannot add in a claim to an existing application if there is no “written description” in original that encompasses new claim
Dickinson v. Zurko (1999)
o PTO is an agency
o review an agency’s reasoning to determine whether its “arbitrary or capricious” or if its supported by “substantial evidence”
more deferential to agency than “clearly erroneous”
Burroughs Welcome Co. v. Barr Laboratories (1994)
o An Inventor need not know that his invention will work for conception to be complete
o test for conception is whether the inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention; the inventor must prove his conception by corroborating evidence
needs to be specific and particular
Scott v. Finney (1994)
o Reduction to practice issue – penile implant
o Testing need not show utility beyond ability of failure; just utility beyond probability of failure
Does not require commercially satisfactory stage of development
o Less complex inventions demand less stringent testing
Ethicon v. US Surgical (1998)
o Everyone who has contributed in the conception of the invention is an inventor under law
Each inventor has pro rata, undivided interest in entire patent no matter magnitude of contribution
o co-inventor must prove their contribution to the conception of the claims by clear and convincing evidence – with corroboration
inventor is not someone of ordinary skill simply reducing inventor’s idea to practice
o Ownership
Each inventor has right to license the patent
An action for infringement must join all co-owners as plaintiffs in order to have standing
One inventor cannot agree to license away the others damages after infringement
Chou v. University of Chicago (2001)
o Graduate student who sued to correct inventorship even though they had no claim to ownership b/c agreement
Assignment
• Transferring all rights of patent to another
o Anything less is considered a license
• Remember basic principle that you cannot assign more rights than you actually have. Would need the agreement of co-owners to get all rights transferred
• assignment of a patent does not necessarily include the right to recover for injury to the past owner.
• No implied warranty that the patent is valid or that assignee can practice the claimed invention without infringing on other patents
• Assignor estoppel
o prevents an assignor who has received value for assigning the patent from later arguing that the patent is valueless.
• Can assign only certain claims of patent
• Recording of Assignments
o Assignment must be recorded in the USPTO within three months of its date of assignment to prevent any real issues
o If greater than 3 months, a second assignee may get superior rights over the first signee if they were not made aware that the patent was previously assigned — second assignment has to be made for some considerable value (seems like an estoppel principal)
• 35 U.S.C. 261 Ownership; assignment
o Deals with recording of assignments
• Employer-Employee Relationships
o Agreements are in effect assignment of rights of future inventions
o Shop Right
Where there is no written contract to assign and where employee is not “employed to invent” the employer may still have limited right to use the employee’s invention
Gives the employer a free personal right to use the invention in his “shop”
35 USC sec 100 Definitions
o (a) The term “invention” means invention or discovery.
o (b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
Sec 101
o “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of the title.”
Providence Rubber Company v. Goodyear (1870)
o Patent for process and patent for thing will be treated separately
In re Nuijten (2007)
o An electrical signal is not patent eligible
o Court reads signal to imply “signaling” which is the conveyance of information
o “machine” as “a concrete thing, consisting of parts, or of certain devices and combination of devices.”
o Manufacture has been defined as “the production of articles for use from raw or prepared materials by giving to these materials new forms” – article is a particular substance or commodity
o This is also not a “composition of matter” as it is not a chemical union, gas, fluid, powder, or solid
o ~~~ this case goes through each category~~~~
Claim Structure
o Preamble -> Transition Phrase -> Body
Transition phrase:
Comprising (best): including at least the following
Consisting of: including only these following things
In Re Venezia (1976)
o Can have a “kit” be patent eligible
Appellant’s invention is a splice connector having interrelated parts adapted to be assembled in the field to provide a splice connection between a pair of high voltage shielded electric cables.
o Note: this is still an unlikely outcome
In re NGAI (2004)
o Ngai invented a new method for amplifying and normalizing RNA
One of the claims was a kit designed to perform the method with written instructions
-Ngai argues that because prior art does not teach a limitation of “instructions describing the method of claim 1,” combined with an amplification kit, the petitioner’s claim cannot be anticipated.
o Issue: New Use and Printed Matter
o The critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.
EXCLUDED SUBJECT MATTER
includes laws of nature, natural phenomena, and abstract ideas
Alice Corporation v. CLS Bank International (2014)
o Patent disclosed computer-implemented scheme for mitigating settlement risk – struck down for being abstract idea
o Alice analysis steps
First step: determine whether claim is drafted to one of the excluded categories
If its excluded go to second step to see if its inventive enough
Second step: determine whether there is an inventive concept outside of the excluded matter form step one
Seems to say it has to be something more than conventional or known
step two: we must examine the elements of the claim to determine whether it contains an “inventive concept” sufficient to “transform” the claimed abstract idea into a patent-eligible application. A claim that recites an abstract idea must include “additional features” to ensure “that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].”
Mayo Collaborative v. Prometheus Labs (2012)
o Prometheus Labs owns two patents which concern use of thiopurine drugs to treat autoimmune diseases – dealing w/ law of nature ineligibility
o Court looks at these claims as essentially a procedure for applying a drug
“if a law of nature is not patentable then neither is a process reciting a law of nature”
o Note: 35 U.S.C. § 287(c)(1) (1996) provides a limitation on remedies against medical practitioners for patent infringement
Ex Parte Mowry and Hedrick (1955)
o Distinguish this case with American Fruit Growers
o Claim: an erosion-stable soil with natural soil containing substantially continuous wild of water-soluble polymer in class consisting of acrylic acid, etc.
o Court: Does more than just apply a coating on the outside of natural substances already known
This soil is quite distinct from untreated soil
Act of Invention — America Invents Act requirements
o Conception
Formulation in the mind
Of definite and permanent idea
Must be precise so that you need only ordinary skill to carry it out
Corroboration requirement — someone other than the inventor has to back it up; could be as simple as a filing or email written by someone else
Many companies have rules that someone else must come by and read your notebook of ideas and sign every page
o Reduction to Practice
Inventor need not be the person to reduce to practice
Actual
Actually putting it into practice
constructive
Filing of legally enabling patent documentation
Chakrabarty (1980)
o issue is around if a live, human-made microorganism is patent eligible
o Finds that inventor had produced a new bacterium with markedly different characteristics from any found in nature and which had potential for significant utility
Holds that this micro-organism constituted a “manufacture” or a “composition of matter” within meaning of section 101
Association for Molecular Pathology v. Myriad Genetics (2013)
o Myriad obtained several patents after discovering the precise location and sequence of BRCA1 and BRCA2 genes, mutations of which can dramatically increase the risk of breast and ovarian cancer – Myriad isolating the cDNA
o Under 101, held that a naturally occurring DNA segment was a product of nature and not patent eligible under 35 U.S.C.S. § 101 merely because it was isolated, but cDNA was patent eligible because it was not naturally occurring
cDNA was not product of nature and was patent eligible because it created something new
Even though it retain naturally occurring exons of DNA, it is distinct from the DNA in which it was derived
Novelty has two aspects
o Firstness: first inventor should be eligible to receive the patent
o Promptness: encouraging first inventor to file patent application at an early date
Anticipation
o Claimed subject matter is said to be “anticipated” if a single prior art reference contains all elements of the claimed invention arranged as in the claim
o Not anticipation if you have to pick and choose and combine various portions of disclosure not directly related to each other
“Basic Firstness Prior Art”
102(a): person shall be entitled to patent unless the invention was known or used by others in this country . . . before the invention thereof by the applicant for patent
102(g): a person shall be entitled to a patent unless before the applicant’s invention thereof the invention was made in this country by another who had not abandoned, suppressed or concealed it.
Gayler v. Wilder (1850)
o Invention: fire proof safes
o Even though another person may have invented the same product, the original inventor did not make the product known to the public in any form; the public did not have a chance to benefit from it and the inventor the ability to profit
Therefore it was abandoned and the patentee was deemed the first inventor
Coffin v. Ogden (1873)
o Invention: door lock that is reversible and can open from the left or right side
o Court finds a prior invention anticipated the plaintiffs invention
It was complete and working, known to at least 5 other persons, put into use, tested, and shown to be successful prior to grant of patent
o “knowledge” has to go beyond something than just a mere idea – “The law requires not conjecture, but certainty”
Burden here is heavy to knock out a patent on prior use/knowledge
- Seems you need more than someones word
Has to be something more than just some experimentation in progress towards the final goal
Illinois Tool Works v. Sola Cup (1972)
o Invention: dealing with plastic cups
o Issue: Inventors own work
o Takeaways
Inventor has 1 year after first patent
Absent a statuary bar, you cant use the inventors own work against him unless there is a promptness problem
o Congress made clear the subject matter must have been “invented by others” as well as “known or used by others.”
Ex Parte Hershberger (1952)
o Issue: printed publication as prior art event
Handles doctoral thesis papers in library – contains part print and part handwriting
o Inventor could not restrict the reading of the text — therefor potentially a wide field of circulation
Purpose of putting it in the library is to share it.
o Decision: court deems this a printed publication
o Note: public means the “relevant public”
Phillips Electronic and Pharmaceutical Industries Corp v. Thermal and Electronics Industries (1971)
o Issue deals with microfilm as a printed publication
o The relevance of indexing in this case is whether or not the relevant public would know where to look and where to find the invention/information
The relevance of the question is the accessibility of the information to the relevant public
Indexing by author is not enough generally
o Patent application alone should not be regarded as a printed publication under the statue but it can meet the requirement of 102(a) if published in printed form outside of the patent office
trade conferences
o Where professional and behavioral norms entitle a party to a reasonable expectation that the information displayed will not be copied, we are more reluctant to find something a ‘printed publication.’
103(c)
o Precludes you from using prior art under 103 that is owned by the same company as the applicant’s invention under certain circumstances
102(f)
o Prevents people from stealing inventions from foreign inventors and coming back and patenting them in US
o It’s called “derivation” when you derive your invention from someone else
Egbert v. Lippmann (1881)
o F: corset springs being tested amongst friends. Was “testing” for 10-20 years prior to patent application. No one could see invention by nature
o This is still a public use
The determinative factor is what could have happened; not the actuality of the situation
Bergstrom v. Sears, Roebuck and Co.
o Issue of fire grate being used for more than a year in the inventor’s home
o Even though there were visitors to the home in this time; no evidence that these “casual visitors” understood the “significance” of the invention or were able to convey information pertaining to the grate to the public domain
W.L. Gore & Associates v. Garlock, Inc. (1983)
o F: dealing with TEFLON process where stretched at high heat to make PTFE tape. 3rd party (not Gore) Was using the process to make the tape and sell it before gore’s application for a patent. Process was not really protected from eyes on manufacturing floor but it was hard to tell what the machine was doing. Budd did not sell the process and was under contract from machine manufacturer to not disclose anything.
o If Budd offered and sold anything, it was only tape, not whatever process was used in producing it.
Non informing use: when the use of the thing does not allow the 3rd party observer to understand what is going on
Metallizing Engineering Co. Inc. v. Kenyon Bearing & Auto Parts Co. Inc. (1946)
o Involved a process of conditioning a metal surface. Had been used (the process itself) for commercial gain more than a year before filing
o The secret commercial use of the process over a year before the critical date barred the patent under Section 102(b) (contrast Gore)
-this was a commercial use by the applicant themselves as opposed to the issue in Gore.
Lockwood v. American Airlines
o Dealing with computer airline reservation system
o “essential algorithms” of the prior art system were “proprietary and confidential” and one skilled in the art would not be able to duplicate the prior art system without access to them — held not to defeat prior art status, particularly since the patent did “not disclose the level of detail that [the patentee] would . . . require of the prior art.”
Pfaff v. Wells Electronics, Inc. (1998)
o Pfaff designed new computer chip socket and sent drawings to manufacturer. TI places order before critical date
o The on-sale bar to patentability applies when two conditions are satisfied before the critical date.
First, the product must be the subject of a commercial offer for sale
Second, the invention must be ready for patenting. That condition may be satisfied in at least two ways:
• by proof of reduction to practice before the critical date;
• or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.
Group One, Ltd. v. Hallmark Cards (2001)
o Group one meets with Hallmark about ribbon shredding patents. Hallmark decides not to purchase make own. Hallmark claims invalidity on offer for sale to them.
o Only an offer which rises to the level of a commercial offer for sale, one which the other party could make into a binding contract by simple acceptance (assuming consideration), constitutes an offer for sale under § 102(b).
Prof: this implicates state contract law and needs to be refined
Abbot Laboratories v. Geneva Pharmaceuticals, Inc. (1999)
o Over one year prior to patent filing the drug in an UNKNOWN crystalline form
o Does not matter if the parties don’t “conceive” or know precisely the nature of the subject matter with which they are dealing; a sale will still invoke the on-sale bar (Pfaff test)
Elizabeth v. Pavement Company (1887)
o Inventor tests new wooden pavement by testing it in public
o Experimental use by the inventor or anyone under his direction is not considered public use
Could be practical consideration with this case in that its hard to test a road any other way
Electromotive Division of General Motors Corporation v. Transportation Systems Division of General Electric Company (2005)
o Bearings for use in locomotives were tested in locomotives before critical date. Inventor has no NDA, no restrictions on use, no monitoring.
o Patent is invalid. Court gives many factors to consider but this case turns on the lack of CONTROL by the inventor in the experimentation
Court says a critical factor is if the third party knows that there is experimenting going on
Clock Spring LP v. Wrapmaster Inc.
o A use may be experimental only if it is designed to (1) test claimed features of the invention or (2) to determine whether an invention will work for its intended purpose
102(g) simple test (priority issue)
o The winner is the first one to conceive
Unless that inventor abandons, suppress, etc.
Except where first conceiver is last reducer and cannot show reasonable diligence in reducing to practice
Townsend v. Smith (1929)
o Townsend was the first to conceive and first to reduce to practice — therefore entitled to priority (just an application of 102(g)
Paulik v. Rizkalla (1985)
o 1970 formulated novel process, patent not filed until 1975 (not abandoned in the time period – continued interest in patent). In interim defendants filed a patent application.
o First to conceive, last to reduce gets patent because not completely abandoned. Takeaway: filing the application is a constructive reduction to practice for the 102(g) analysis
Did not work for 4 years but because started working on application again before filing of other party there is no abandonment in this case.
Reduction to practice
o Needs corroboration. (1) construction of an embodiment or performance of a process that meets all the limitations of the claim; (2) determination that the invention would work for its intended purpose; and (3) the existence of sufficient evidence to corroborate inventor testimony regarding these events.
35 U.S.C. § 119
provides an incentive for persons who have filed a patent application in a foreign country, to file a corresponding U.S. patent application within 12 months
o Will not grant patent if filed over a year later after original foreign patent
o If filed within a year it will have the same effective date as the patent filed in a different country
o Note: 119 is there to give advantage to patentee; it’s a prior art defeating mechanism not a prior art enabling mechanism — shield not a sword
102(d)
o Disentitled to a patent if the invention was first patented or caused to be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor’s certificate filed more than twelve months before the filing of the application in the United States
In re Monks (1978)
o counterpart British patent application with claims directed to the same invention filed in Great Britain, more than twelve months before appellant filed in the United States
o court determines the time at which 102(d) bar triggered is when a formal bestowal of patent rights from the sovereign to the applicant such as that which occurs when a British patent is sealed
Davis v. Brouse Mcdowell (2010)
o Inventor looking to get international patent coverage for “IP-Exchange”
Inventor went live with website b/c attorney failed to inform her of absolute novelty rules
o Example of “absolute novelty” rule that applies in certain countries to bar an inventor from obtaining a patent if she has publicly disclosed her invention prior to filing an application.
103(a)
o (Denies patent protection if) the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have BEEN OBVIOUS AT THE TIME THE INVENTION WAS MADE TO A PERSON having ordinary skill IN THE ART TO WHICH SAID SUBJECT MATTER PERTAINS
KSR International Co. v. Teleflex Inc. (2007)
o Obviousness issue with putting a sensor on a petal
o Soft guideposts
Obvious if two old elements do no more than they would in separate, sequential operation
If claiming a structure already known with one new element, must do more than yield a predictable result
If prior art teaches away from combining certain known elements this leans in favor of non-obviousness
o Prof take: “if you innovation is within the reach of a person of the ordinary skill in the art then its obvious”
Panduit Corp v. Dennison Mag Co. (1987)
o When dealing with obviousness, must think of what a person of ordinary skill in the art would have considered obvious at THAT time
Panduit Corp v. Dennison Mag Co. (1987)
o When dealing with obviousness, must think of what a person of ordinary skill in the art would have considered obvious at THAT time
Circuit Check Inc. v. QXQ Inc. (2015)
o Circuit board testers – analogous prior art arguments
o Prior art is analogous if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve
Would an inventor look to this particular art to solve the problem at hand?
Analogous art test vs Anticipation
• Analogous art test applies only to obviousness; not anticipation
o For anticipation — every element of prior art is showing up in the claims for the invention in question
In re Foster (1965)
o Inventor is first to invent but there was public disclosure prior to critical date
o Court decides this case on 102(b) basis
o Takeaway: that anything that is prior art under 102 counts under 103
OddZon Products, Inc. v. Just Toys, Inc. (1997)
o Two confidential designs disclosed to inventor before filing patent
o 102(f) is a prior art provision for purposes of 103
o 102(f) prior art cannot be combined with other prior art when the relevant prior art is commonly owned with the claimed invention at the time the invention was made
o Hypo: an invention, A1, that is obvious in view of the subject matter A, derived from another, is also unpatentable. The obvious invention, A1, may not be unpatentable to the inventor A, and it may not be unpatentable to a third party who did not receive the disclosure of A, but it is unpatentable to the party who did receive the disclosure.
E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co. (1988)
o 102(g) prior art can be used under 103 o 102(g) contains no personal knowledge requirement and does not contain a “known to the art” requirement
Hypothetical Person of Ordinary Skill
o Look to education level’
o Has ordinary level of creativity
o Not a real person but rather a legal tool
Secondary Considerations
o Things that weigh in an obviousness determination such as the commercial value of the invention, the reason people had not done it before, teaching away from the art, etc.
o Nexus has to be to the novelty aspects of the claimed inventions
“Are they commercially successful due to a particular invention”
Nexus is relevant to secondary consideration analysis
Agrizap, Inc. v. Woodstream Corporation (2008)
o Invention relates to method and device for electrocuting pests – body completes circuit
o Court said there was evidence of non-obviousness, including the commercial success of the Rat Zapper, copying by Woodstream, and a long felt need in the market for electronic rat traps BUT this is a balancing test
o Determined the prima facie case for obviousness was too strong compared to secondary concerns
Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc. (2012)
o Improved apparatus for offshore drilling
o jury made express findings on seven types of objective evidence of nonobviousness: commercial success, industry praise, unexpected results, copying, industry skepticism, licensing, and long-felt but unsolved need.
o Court determines secondary considerations show non-obviousness – rare outcome
Eibel Process Co. v. Minnesota & Ontario Paper Co. (1923)
o Invention directed to speeding up machines used for paper making
Invention consisted of tilting the mechanism to leverage gravity – came from special insight about the cause of the problem
o “The invention was not the mere use of a high or substantial pitch to remedy a known source of trouble. It was the discovery of the source not before known, and the application of the remedy, for which Eibel was entitled to be rewarded in his patent”
No one had done this yet even though it was a known problem
Recurrent Issues with Obviousness in Chemical and Biochemical Inventions
o Special issues with finite amount of elements that may be used
o If patent examiner rejects claim b/c of prior art then there arises a presumption of obviousness or a prima facie case of obviousness
Burden then shifts to applicant to present arguments/data that this is not in fact obvious when invention is looked at as a whole
o Can hypothetically get a method patent for new use of compound X
In re Dillon (1990)
o Application filed for tetra-orthoesters as fuel additives to reduce soot
o Primary
Tri-orthoesters were already known in the art as fuel additives for dewatering purposes
tri-orthoesters serve as cosolvents to prevent phase separation between fuel and alcohol.
The Board explicitly found that the Sweeney patents do not teach the use of the tetra- orthoesters recited in appellant’s claims.
o Secondary
Elliot patent: describes tri-orthoesters and tetra-orthoesters for use as water scavengers in hydraulic (non- hydrocarbon) fluids
Board feels this shows equivalence between tetra and try-orthoesters
Howk patent: teaches use of both tri- and tetra-orthoesters in a similar type of chemical reaction
o Prima facie case established
“a prima facie case of obviousness is not deemed made unless both (1) the new compound or composition is structurally similar to the reference compound or composition and (2) there is some suggestion or expectation in the prior art that the new compound or composition will have the same or a similar utility as that discovered by the applicant.”
Applicant would need to show some unexpected results to overcome
Brenner v. Manson (1966)
o Application filed for manufacturing known steroids. In support of utility analysis submitted an article establishing that steroids similar and related to Manson’s steroid were useful as tumor inhibitors
o Just showing utility through pointing towards another similar invention is not enough to overcome the utility test. – “might be useful” is not enough
o Needs to be refined and developed to this point–where specific benefit exists in currently available form
Ex Parte Balzarini (1991)
o Drug for treatment of AIDS but examiner determined that those skilled in the art would question the objective truth of the asserted utilities
o “While we are not requiring human clinical trials, it may very well be that in 1987 or even now those skilled in this art would not accept anything short of such human clinical trials”
These tests were just done in the lab which is likely not enough to prove their effectiveness on humans
In re Schoenwald (1992)
o Composition to treat dry eye syndrome – arguing that a reference must disclose a utility before it can be an anticipatory reference under section 102(b)
o Anticipatory references do not require a showing of utility
sec 112
• The rules of specification are governed by sec 112
o 1) enablement, (2) best mode and (3) written description
In re Howarth (1981)
o Application rejected for failure to disclose how to make or obtain the starting material requisite to the preparation of the claimed compounds
o Need to put in as much information as would be required by someone with ordinary skill in the art to replicate
If applicant believes this is known to the art… just be safe and reference another source laying out the info
Atlas Powder Co. v. E.I. Dupont De Nemours (1984)
o Patent regarding blasting agent – Atlas listed a list of combinations of emulsions that could work. Du Pont argues the patent is too broad and claims that it would take undue experimentation to find out which combinations actually work
o That some experimentation is necessary does not preclude enablement; the amount of experimentation, however, must not be unduly extensive
o Also found the list unnecessary because of “Bancroft’s Rule” which allows one skilled in the art to determine the proper emulsifier
o The “failure” in this case of 40% of combinations was not real failure it’s just that they were not really good enough
Commercial failure is not the test for enablement
Best Mode
o This is neutered after American Invents Act
Cannot be the only thing that makes a patent invalid though lack of best mode
o Best mode means telling us how to do the invention in the best way
So you cant keep good part of invention to yourself and also trying to keep a trade secret
Its subjective — its the best mode that YOU KNOW OF
Spectra-Physics Inc. v. Coherent Inc. (1987)
o Patent invalid for failure to state best mode
o All 3 ways of carrying out the invention are mentioned; 2 of them are described in a thorough enough way
The one they thought was the best was not disclosed enough to constitute enablement
• Just because your claim is enabled does not mean that you have a written description of the claim
• Software and Best Mode
o “As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software.”
Gentry Gallery Inc. v. Berkline Corporation (1998)
o Invention regarding reclining sofa with controls located in a center console
o The patent at issue only ever describes the controls being in that center console and even within that only allows for minor variations
Thus, locating the controls anywhere but on the console is outside the stated purpose of the invention.
o Knowledge of a better way to do something is not enough, the inventor has to have both the knowledge of the invention and actually have put this into the written description
o (Written Description Requirement – establishes potential limitations)
Nautilus Inc. v. Biosig Instruments (2014)
o Patent for heart rate monitor held invalid on indefiniteness
o a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention
before this case, only indefinite if there was no way to understand the invention
Orthokinetics v. Safety Travel Chairs, Inc. (1986)
o Invention was a wheelchair for children that allowed for easy transition from automobile seat. Did not specify some dimensions as those changed depending on the car
o Court does not require that all dimensions to be claimed
o The written description describes the invention but the claims define the invention
Claims claim; specifications teach
Andrew Corp v. Gabriel Electronics (1988)
o Lower court held the Knop patent claims invalid, stating that terms in the claims such as “approach each other”, “close to”, “substantially equal”, and “closely approximate”, * * * were too vague to satisfy the requirement of definiteness
o The word “Substantially” is in tons of claims
o Prof: If you can understand the claim after reading the specification then its not indefinite
In re Swinehart (1971)
o Deals with substantially transparent language. This is a functional claiming case
o Whether a claim is functional is not relevant to 112 in regards to approving the application
You may claim “a bolt for securing a beam”
Functional claiming can be good for narrowing the claim – can distinguish from prior art
In re Donaldson (1994)
F: The Donaldson invention related to industrial air-filtering devices often referred to as “dust collectors”. Donaldson claimed the device including the element: “means . . . for moving particulate matter in a downward direction.”. PTO rejected for obviousness.
This case is court forcing PTO to bid by statute.
Court reading: “The plain and unambiguous meaning of paragraph six is that one construing means-plus-function language in a claim must look to the specification and interpret that language in light of the corresponding structure, material, or acts described therein, and equivalents thereof, to the extent that the specification provides such disclosure”
112(6) (means plus function)
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
“If the word ‘means’ appears in the claim element then there is a rebuttable presumption that 112(6) applies”
- Could invoke 112(6) if you draft a claim that is so devoid of structure that it appears its a means to carry out a function. Called “Nonce” claim
- Prof tip for exam: “Means means means, no means means no means”
“If you only remember one thing about means plus function… always start the analysis by identifying the function”
Interpreting a Means-Plus-Function Claim Element
To interpret a § 112, ¶ 6 element of a claim, one looks to the patent specification for corresponding structure, materials or acts for the recited function. If there is no structure, material or acts in the specification corresponding to the § 112, ¶ 6 element, the claim will be found invalid.
This governs both “means plus function” and “step plus function”
- Means plus function normally refers to a thing; some type of structure - Step plus function normally refers to steps takin in a method claim
– check iPad with chart –
The generally operates to limit claim scope in order to avoid prior art.
Greenberg v. Ethicon Endo-Surgery – generally using language like “means for” will invoke 112(6). likewise, not using that language will likely not invoke that language
112(6) Equivalence
To establish a prima facie case of 112(6) equivalence of prior art
(1) the Examiner must find that the prior art element performs the functions specified in the claim element, and (2) the Examiner must find that the prior art element is not excluded by any explicit definition provided in the specification for an equivalent.
Equivalence is a question of fact that goes to the jury
Duty of Candor
those who are substantively involved with the prosecution of a patent application owe a duty of candor and good faith to the United States Patent and Trademark Office, which duty requires the disclosure of information that is “material” to the patentability of the claims being reviewed
rests on the notion that one who has acted inequitably in the acquisition of a patent and later seeks to assert that patent in court comes to the court with “unclean hands” and, accordingly, the court should refuse to hear the complaint
General issue:
No duty to conduct prior art search however if one knows of prior art when applying for patent then this has to be disclosed.
Therasense, Inc v. Becton, Dickinson and Company (2011)
RULE: To prevail on a claim of inequitable conduct, the accused infringer must prove that the patentee acted with the specific intent to deceive the PTO.
- A finding that the misrepresentation or omission amounts to gross negligence or negligence under a “should have known” standard does not satisfy this intent requirement.
class notes
Need clear and convincing evidence to prove intent. Has to be more than gross negligence.
statement by applicant are per se material
the WHOLE patent is found invalid if there is inequitable conduct found.
Materiality (in reference to duty of Candor)
But for standard applies.
Statements by applicant are per se material.
Fox Industries, Inc. v. Structural Preservation Systems, Inc (1990)
A party may show inequitable conduct by producing clear and convincing evidence of: (1) material prior art; (2) knowledge chargeable to the patent applicant of prior art and its materiality; and (3) applicant’s failure to disclose the prior art to the PTO with intent to mislead.
Duty of Candor applies to the whole prosecution history. This includes claims that were allowed as well as those rejected.
Doctrine of Equivalents
Remedial doctrine meant to help enforce patents when the activities do not fall within the interpreted literal meaning of infringed claims
consequences are the same as literal infringement
o two-step process for making a prima facie case of § 112(6) equivalence of a prior art element during ex parte examination:
o (1) the Examiner must find that the prior art element performs the functions specified in the claim element, and (2) the Examiner must find that the prior art element is not excluded by any explicit definition provided in the specification for an equivalent.
Direct Infringement
“Make” infringement:
- complete assembly of an operable device
- When a machine “capable” of operating in an infringing manner is assembled, that assembly is a “make” infringement even if there has been no “use” infringement by operation of the machine
- Even if something is not meant to operate in an infringing manner, courts have found that the ability to operate in an infringing manner is enough
“Use” infringement:
- Capability of infringing “use” can give rise to a “make” infringement even in the absence of an actual use and even where such use is not necessarily intended
- So long as that “use” utilizes the teachings of the patent it does not have to be for purposes contemplated by the patentee to constitute a “use” infringement
Infringing Sale:
- Courts look to contract law concepts
- Needs to have most of the contract formation occurring within the US in order to fall into 271(a)
- “Offers to sell” short of a completed sale are recognized as infringing acts.
importing/exporting protected tech: can infringe on US patent
Experimental Use Defense: Very narrow. Anything done in pursuit of a business interest will not get the defense.
Infringement and 271(a)
- Lists what the owner can exclude others from doing
- There is no intent element. Strict liability
- Only applies to claimed invention. Anything less than claimed invention is not enough
Making all the elements of an invention but not assembling the invention in the US is not an infringement under 271(a) (Deep South note case)
Exportation of infringing object could be infringement under 271(f)
Michigan Carton Co. v. Sutherland Paper Co. (1928)
F: Infringement suit on machine for and method of sealing cartons — paraffin coated for food and odor management. The process is divided to two machines in different rooms.
Does not infringe first claim because the first claim claimed a SINGLE machine doing this whole process.
Second claim infringed because it is a method claim and makes no mention of how to implement or if there is a apparatus involved.
Lincoln National Life v. Transamerica Life
involved a patent claim to a computerized method involving five steps. The accused infringer was found to perform the first four steps with its computer. However, performance of the last step (the cutting and mailing of a scheduled payment check) was performed manually. The Court found the claim not infringed.
Multiple Infringers
- Entities can combine to infringe by having one entity conduct a portion of the activities and the other entity finishes them
- party cannot avoid infringement . . . simply by contracting out steps of a patented process to another party [BMC Resources]
An employee group infringing is literal infringement because its all under the same umbrella because there is one directing party in that case (employer)
If two parties combine to infringe, the last party to complete the claimed invention is the one infringing
For make infringements… if you are the last one to put the part on the “thing” such that all the claims are satisfied then you are the infringer
- Divided infringement issue
- When combining actions that cause infringement… a party may end up infringing on a product claim but not on a method claim regarding the production of the product
Markman v. Westview Instruments, Inc. (1995)
F: Markman (plaintiff) sued Westview (defendant) for infringing its patent to an inventory control system for use by dry cleaners. A key issue was the construction of the claim term “inventory.”
The interpretation and construction of patent claims, which define the scope of the patentee’s rights under the patent, is a matter of law exclusively for the court
This is an objective analysis – subjective intent of the inventor is not relevant
To ascertain the meaning of claims, we consider three sources: The claims, the specification, and the prosecution history
Notes:
- Specifications can help with claim interpretation but the specification cannot contradict the claims
- When drafting patent applications, can submit disclaimers so that you can claim what the invention is not in order to avoid certain prior art
Renishaw Plc. v. Marposs Societa’ Per Azioni (1998)
Claim at issue: “probe generate a trigger signal when said sensing tip contacts an object.” The word “when” is at issue
Takeaway: the context is not the dictionary; the relevant context is the patent itself with all its contents and the accompanying extrinsic evidence. Absent any special context defined in the patent application, you can use dictionary
(a) one may not read a limitation into a clam from the written description, but (b) one may look to the written description to define a term already in a claim limitation, for a claim must be read in view of the specification of which it is a part
Phillips v. AWH Corporation (2005)
F: Phillips (plaintiff) obtained a patent for modular, steel shell panes that could be welded together to form vandalism-resistant, load-bearing, and impact-resistant walls. Issue is around if the patent covers baffles at 90 degrees even though all examples in patent show them at other angles
conclude that a person of skill in the art would not interpret the disclosure and claims of the ‘798 patent to mean that a structure extending inward from one of the wall faces is a “baffle” if it is at an acute or obtuse angle, but is not a “baffle” if it is disposed at a right angle.
Takeaway: Contrast Renishaw case. examples and specifications may inform the claims but the courts interpretation of the claim language itself is king
Graver Tank & Mfg. Co., Inc. v. Linde Air Products (1950)
F: Linde Air Products Co. (Linde) (plaintiff) owned a patent for Unionmelt Grade 20, a flux composition used in welding. Though the patent claimed alkaline earth metal silicate and calcium fluoride as ingredients, Unionmelt actually contained calcium and magnesium silicates.
May invoke the doctrine of equivalents if it performs substantially the same function in substantially the same way to obtain the same result
Note: Interchangeability is the most important idea in this type of analysis
- If one element can be changed out for another and the invention still holds to perform the function
Doctrine of Equivalence limitations
Ensnarement
- Cannot use DoE to ensnare the prior art - If you articulate a theory of infringement that brings in prior art then that theory of equivalence does not work because then you would be claiming prior art
Disclosure dedication opposites
- Cannot claim exact opposites of claim through DoE
Vitiation
- If theory of equivalence makes an claim element irrelevant then that theory of equivalence is not permitted
File wrapper estoppel (prosecution history)
- Different but related to prosecution history disclaimer
* If you tell the public what your claim does not cover then you cannot then rely on DoE to show infringement
Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co. (1997)
F: Hilton Davis (plaintiff) sued Warner-Jenkinson (defendant) for infringing the ‘746 patent, which claimed a new method of purifying dye. During prosecution of the ‘746 patent, a claim limitation was added requiring that the process take place between pHs of 6.0 and 9.0. The pH 9.0 limitation was added to make the claim patentable in light of prior art. However, the exact reason for the pH 6.0 limitation was disputed by the parties Warner-Jenkinson used a similar process, except one that took place at a pH of 5.0
The determination of equivalence should be applied as an objective inquiry on an element-by-element basis.
Prosecution history estoppel continues to be available as a defense to infringement, but if the patent-holder demonstrates that an amendment required during prosecution had a purpose unrelated to patentability, a court must consider that purpose in order to decide whether an estoppel is precluded.
Burden on Patentee
Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co. (2002)
o Festo (Plaintiff) owned two patents directed to magnetic conveyor systems, each of which were amended during the patent application process Because Festo had narrowed certain elements of its claims through amendment, Shoketsu argued, the doctrine of equivalents could not be applied those claim elements. o Chart on 503 goes through the full process and should be useful for exam
o In a situation where the language at issue is an amendment that narrows a claim made for purposes of patentability, there is a presumption of estoppel that can be rebutted by applicant
If you narrow at all for purposes of 112 the presumption also exists
Called “Festo Presumption”
Rebutting the “Festo Presumption”
o Once presumption exists, can rebut in 3 ways
Equivalent unforeseeable (at time of amendment)
Look to prior art, specification, expert testimony, etc. to determine if something was foreseeable (at time of amendment)
If something was foreseeable then you should have added that in your claim from the beginning
“[T]he criterion [of unforeseeability] presents an objective inquiry, asking whether the alleged equivalent would have been unforeseeable to one of ordinary skill in the art at the time of the amendment. Usually, if the alleged equivalent represents later-developed technology (e.g., transistors in relation to vacuum tubes, or Velcro in relation to fasteners) or technology that was not known in the relevant art, then it would not have been foreseeable
Tangential
The reasons for the claim amendment, are they tangential
Look to prosecution history — the objectively shown reason for narrowing amendment on the public record
Other reasons
Shortcomings of language
Argument based history estoppel
o This is where the examiner rejects claim and instead of amending, the applicant argues as to why the examiner was wrong. Requires clear and unambiguous disclaimer
o Can also apply based on statements made in specification
What is a narrowing amendment
o occurs when either (1) a preexisting limitation is narrowed by amendment or (2) a new claim limitation is added by amendment
Reverse Doctrine of Equivalence (“RDOE”)
o “where the device is so far changed in principle from a patented article that it performs the same or similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee’s action for infringement.”
o Not a popular doctrine
Chiuminatta Concrete Concepts, Inc. v. Cardinal Industries, Inc. (1998)
o Chiuminatta owns two patents, the ‘499 patent and the ‘675 patent relating to an apparatus and method, respectively, for cutting concrete before it has completely cured to a hardened condition.
o Court Decision: Because the wheels of the accused device are not equivalent to the skid plate disclosed in the ‘499 patent, the accused structure is not within the scope of the claim.
o No literal infringement because: the wheels and the skid plate are substantially different from each other, they cannot be equivalent, and no reasonable jury could so find.
o Key here is the Fed Circuit calling the disclosed corresponding structure being a skid plate (vs lower court saying it was a “supporting structure”)
Means-plus-Function Limitations - § 112(6)
o a disclosed structure is a “corresponding” structure within the meaning of§112¶ 6”only if the specification or prosecution history clearly links or associates the structure to the function recited in the claim.
Liability for indirect infringement is dictated by 35 U.S.C. § 271(b) and (c)
o (b) Whoever actively induces infringement of a patent shall be liable as an infringer.
o (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.
Indirect Infringement
o There can be no indirect infringement unless someone is a direct infringer as well (infringement under 271(a))
Inducement of Infringement
o To be liable for inducement of infringement, the defendant must have some knowledge of the patent and specific intent and action to induce infringement.
o “Accordingly, we now hold that induced infringement under §271(b) requires knowledge that the induced acts constitute patent infringement.” [Global Tech]
Global-Tech Appliances, Inc. et al. v. SEB S. A. (2011)
o In 1991, SEB S.A. (SEB) (plaintiff) obtained a patent for a cool touch deep fryer. The deep fryer was very popular in the United States, and sales were very good. In 1997, Sunbeam Products, Inc. (Sunbeam), a competitor of SEB, hired Pentalpha Enterprises, Ltd. (Pentalpha), a subsidiary of Global-Tech Appliances, Inc. (defendant), to build a deep fryer Sunbeam could sell in the United States. (this is an induced infringement case)
Copied plaintiff’s product
Told attorney to do patent search but withheld information that they had copied the design – attorney search tuned up nothing
o evidence in this case was plainly sufficient to support a finding of Pentalpha’s knowledge under the doctrine of willful blindness.
Willful blindness test: (1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact.
Contributory Infringement
o Contributory infringement is based on the sale of something. Contributory infringement also requires that the defendant have knowledge of certain facts. This requirement is satisfied by (1) knowledge of the existence of the patent and (2) knowledge that the combination for which the component was designed is “both patented and infringing.”
ARO Mfg Co. v. Convertible Top Replacement Co. [ARO II] (1964)
o Respondent Convertible Top Replacement Co., Inc., (CTR) acquired by assignment from the Automobile Body Research Corporation (AB) all rights for the territory of Massachusetts in United States Patent. This is a combination patent covering a top-structure for automobile “convertibles.”
o Aro originally did not have knowledge of the infringement
Aro had knowledge once they were went the letter letting them know. However its remanded to collect more evidence as to if they had knowledge of infringement before the letter was sent to them
(contributory infringement analysis)
o Release agreement issue
Ford signed release agreement with AB saying that they are not guilty of infringement
However, court holds that releasing Ford does not absolve Aro liability buttttt there is effectively no damages available because of this
Expansion of the patent right and either effects on international commerce
o Exportation And Patent Infringement - 35 U.S.C. § 271(a) defines direct infringement as making, using, offering for sale or sale of the patented invention in the United States or an importation of same into the United States
o Congress passes 271(f) to expand scope of statute
o 271(f) legislatively overrules Deepsouth where court held that manufacture making parts of patented machine that exported them oversees was not liable
(f) (1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
o class
Note that no one has to directly infringe to invoke liability under 271(f)
Microsoft Corporation v. AT&T Corp. (2007)
o AT&T Corporation (plaintiff) owned a patent disclosing software for digitally encoding and compressing recorded speech. AT&T brought an infringement suit against Microsoft Corporation (defendant) based on software incorporated into Microsoft’s Windows system that enabled speech processing in the manner claimed by AT&T’s patent.
o As part of Microsoft’s manufacturing and sale process, Microsoft sent master disks of the Windows program to foreign manufacturers, who made copies of the software. The foreign manufacturers subsequently installed the copies on computers to be sold abroad. AT&T argued that Microsoft’s initial transmission of the Windows master disks to foreign manufacturers constituted Microsoft supplying from the United States components of AT&T’s patented speech processor for combination abroad, under 35 U.S.C. § 271(f).
o Court:
o “software code is an idea without physical embodiment”; it cannot be a component of a patented invention.”
o “There is no dispute, we note again, that §271(f) is inapplicable to the export of design tools – blueprints, schematics, templates, and prototypes – all of which may provide the information required to construct and combine overseas the components of inventions patented under United States law”
o Court is really looking at the word component in its reasoning
Court is giving the word “component” a physical connotation
U.S.C. § 271(g)
o (g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use or retail sale of a product unless there is no adequate remedy under this title for infringement on account of the importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will, for purposes of this title, not be considered to be so made after–
o (1) it is materially changed by subsequent processes; or
o (2) it becomes a trivial and nonessential component of another product.
Standard Havens Products, Inc. v. Gencor Industries, Inc. (1991)
o The ‘938 patent, issued to Michael R. Hawkins on November 29, 1988 and assigned to Standard Havens, is directed to a method of producing asphalt compositions.
o The ‘938 patent claims a method for producing asphalt, not the apparatus for implementing that process. Thus, the sale in the United States of an unclaimed apparatus alone does not make Gencor a contributory infringer of the patented method. Moreover, infringement by the foreign customer has not been shown because there is no evidence of the plant’s use in the United States
Rotec Industries, Inc. Mitsubishi Corporation (2000)
• Rotec Industries, Inc. Mitsubishi Corporation (2000)
o Rotec is a manufacturer of crane and conveyor systems designed to carry concrete over long distances. There is a bidding process for project in China for dam project. Rotec alleged that Defendants infringed the ‘291 patent by making an “offer for sale” of the invention claimed therein in the United States, in violation of 35 U.S.C. §§ 271(a) and 271(f).
o Court
o There is no genuine dispute that at least some of Defendants’ activities before signing the agreement with TGDPC took place in the United States. However, no evidence shows that Defendant communicated a “manifestation of willingness to enter into a bargain, so made as to justify another person in understanding that his assent to that bargain is invited and will conclude it.” In US
o Dissent:
Distinction she is making is that the statute does not cover something that is just an offer… doesn’t matter that the offering activity is if its intended that the actual sale will occur outside the US
Prof says a note case later adopts this reasoning
Remedies Generally
o You can get damages under 2 different types of theories
Lost profits
Reasonable royalty
Ask jury to set reasonable royalty
o Marking statute
Does not require you to mark the products but if you are selling a patented product and you do not mark then it can limit the remedies you have later on
o Statute that permits punitive damages for willful infringement
Up to 3x
o Preliminary and permanent injunctive relief are available
Prelim is pretty rare
35 U.S.C. § 287(a)
- Patentees, and persons making, offering for sale or selling within the United States any patented article for or under them, may give notice to the public that the same is patented [by marking them with the patent number]. * * * In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.
- To be sufficient under 287(a) … actual notice requires affirmative communication of a specific charge of infringement
»_space; In the absence of sufficient notice, the defendants knowledge of the patent or of its own infringement is “irrelevant” because “notice” under § 287 depends “on the action of the patentee, not the knowledge or understanding of the infringer.”
ARO Mfg. Co. v. Convertible Top Replacement Co. [ARO I] (1961)
o Patent: for a “Convertible Folding Top with Automatic Seal at Rear Quarter”–covers the combination, in an automobile body, of a flexible top fabric, supporting structures, and a mechanism for sealing the fabric against the side of the automobile body in order to keep out the rain
Everything normally lasts but for the fabric which needs to be replaced ~3 years
The patent makes no claim to invention based on the fabric or on its shape, pattern or design
o Issue: whether petitioners’ manufacture and sale of the fabric constitutes a contributory infringement of the patent under 35 U.S.C. § 271(c).
In this case they are not actually putting the fabric on — this is a key part
The argument is that Aro is contributory infringing because users are directly infringing when they are putting the top on and Aro is selling them the top fabric
Cannot have contributory infringement without direct infringement.
o Court holds that the maintenance of the “use of the whole” of the patented combination through replacement of a spent, unpainted element does not constitute reconstruction
reconstruction of a patented entity, comprised of unpatented elements, is limited to such a true reconstruction of the entity as to “in fact make a new article,” after the entity, viewed as a whole, has become spent
Mere replacement of individual unpatented parts, one at a time, whether of the same part repeatedly or different parts successively, is no more than the lawful right of the owner to repair his property
famous line from case: “there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent”
Sandvik Aktiebolag v. E.J. Co. (1997)
o The patents in suit are directed to a drill with a shank portion and a unique carbide tip geometry that has specially configured cutting edges resulting in a drill suitable for high-feed machining with improved cutting ability especially at its center portion.
The drill tip is not separately patented
o Drill tip needs to be resharpened after extended use
Sandvik expects that this is the case and even issues guidelines on how to properly resharpen. Sandvik does not contend that resharpening constitutes infringement
o E.J. offers a drill repair service which includes resharpening and retipping Sandvik drills. E.J. retips, at the request of its customers, when the tip cannot be sharpened because it chips, cracks or simply wears down after being resharpened several times
o EJ retipping proces: (1) grinding the carbide to the proper outside diameter; (2) grinding the carbide to a point; (3) grinding the rake surfaces of the new point; (4) grinding the center of the new point; and (5) honing the edges. In the final steps of the machining process, E.J. creates the cutting edges by following Sandvik’s instructions for tip resharpening.
o Sandvik claims the retipping process constitutes an infringing reconstruction
o Factors to consider when deciding if a new article has been made:
nature of the actions by the defendant, the nature of the device and how it is designed (namely, whether one of the components of the patented combination has a shorter useful life than the whole), whether a market has developed to manufacture or service the part at issue and objective evidence of the intent of the patentee
o By E.J.’s own admission, the drill is “spent” when the tip can no longer be resharpened unless it is retipped. In fact, the record reveals that E.J.’s customers may elect not to retip and inform E.J. to discard the drill instead.
Court finds that retipping is more like reconstruction than repair
Says that all the procedures required for retipping are effectively a re-creation of the patented invention after it is spent
o Court looks to if there is a market for the drill retipping. Looks to Aro I to say the courts have cared about this element
There is no evidence of large numbers of customers retipping these drills or of companies (other than E.J.) offering to retip these drills.
o Finally, there was no intent evidenced by the patentee that would support E.J.’s argument that replacement of the tips is a repair.
The evidence shows that Sandvik never intended for its drills to be retipped. It did not manufacture or sell replacement drill tips. It did not publish instructions on how to retip its patented drills or suggest that the drill could or should be retipped. Sandvik was aware that the drill tip would need occasional resharpening and instructed its customer on how to resharpen the tip. There is, therefore, no objective evidence that Sandvik’s drill tip was intended to be a replaceable part.
- How do we make this work with Aro I? Best we can say is that maybe the drill is spent when that very important part is spent
FMC Corp v. Up-Right, Inc. (1994)
F: Dealing with grape harvester. FMC argues while each servicing constitutes a repair, as a whole most of the elements were replaced overtime and this is tantamount to reconstruction
Court cites that the “maintenance of the `use of the whole’ of the patented combination through replacement of a spent, unpatented element does not constitute reconstruction.” Court denies opportunity to make a bright line rule.
Prof: What if you replaced a new part every 10 minutes?
Hewlett-Packard Company v. Repeat-O-Type Stencil (1997)
F: HP manufactures and sells ink jet printers and disposable ink jet cartridges for its printers. Sends consumers instructions to discard cartridge once spent.
o ROT purchases Kukla and Stanley cartridges, modifies them so that they will be refillable, and then resells them as refillable ink cartridges
ROT starts with brand- new and unused HP cartridges. It does not modify “spent” cartridges.
It is undisputed that HP sold and ROT purchased the Kukla and Stanley cartridges without restriction; HP has not alleged that ROT breached any contract affecting the transaction.
Court: This is not reconstruction
When HP (or an agent with authority to sell) sold the cartridges, HP parted with the right to enforce any of its patents relating to the cartridges thus sold to exclude the purchaser from using or selling them. ROT’s modification of the caps of HP’s cartridges is more akin to permissible “repair” than to impermissible “reconstruction.”
- Prof: maybe just having a default rule is the best thing to do here
- Maybe the rule: Once someone buys a product from the patentee then they are free of infringing the patent
Impression Products, Inc. v. Lexmark International, Inc. (2017)
“a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale (even when sold outside the US where US laws do not apply)”
rules out any limitation on the doctrine of exhaustion by provisions in the contract for sale of the patented goods.
(Note, however, that Lexmark precludes enforcing such limitations by a suit for infringement. It does not speak to attempts to enforce such limitations through a suit for breach of contract.)
Express and Implied Licenses
- A license may be granted — A patent license is in the nature of a covenant not to sue the licensee for patent infringement.
- Implied authority
- Example: where a sale is authorized by the patentee, there is no liability for resale.
- A right to use a patented product purchased from the patentee is also generally implied
- Implied authority may be modified by express terms of purchase
Met-Coil Systems Corp. v. Korners Unlimited, Inc (1986)
o issue in this appeal is whether a patent owner’s unrestricted sale of a machine useful only in practicing the claimed inventions presumptively carries with it an implied license under the patent
o Met-Coil owns patent which claims an apparatus and method for connecting sections of metal ducts of the kind used in heating and air conditioning systems.
Met-Coil also sells the specially shaped corner pieces for use with the integral flanges.
o Korners Unlimited, Inc. makes corner pieces for use with Met-Coil’s integral flanges and sells them to purchasers of Met-Coil’s machines.
Met-Coil sues for inducing infringement
o Two requirements for grant of an implied license by virtue of a sale of nonpatented equipment used to practice a patented invention
First, the equipment involved must have no noninfringing uses
In this case Met-Coil machines hav Eno noninfringing use
Second, the circumstances of the sale must “plainly indicate that the grant of a license should be inferred.
Met-Coil had told users, after sale, that there was no implied license. Court says this does not get rid of the implied license because it was not done at the time of the sale
prof expanding on first part of test:
the equipment that is the subject of the first part of the Bandag test is the equipment sold by the patentee (whether it is patented or not). Thus, if one wanted to go back and tighten up the language used in theMet-Coil opinion, one might re-write the sentence quoted above as follows: “This court set out two requirements for the grant of an implied license by virtue of a sale of nonpatented by the patentee of equipment used to practice a patented invention.”
The Doctrine of Exhaustion
- Seperate from the legal concept of license
- Also referred to as “the first sale doctrine”
- Defintion
- the unrestricted sale of a patented item “exhausts” (consumes? depletes? expends?) the patent rights of the seller as to the item sold.
Quanta Computer Inc. v. LG Electronics, Inc. (2008)
o Patents in this suit are related to technology that manages RAM cached memory and the computer’s main memory
o LGE licensed patents to Intel
o LGE’s licensing agreement with Intel allowed Intel to manufacture and sell computer parts using LGE’s patents.
This agreement also specifically stated that the license did not extend to third parties using Intel’s parts
o Quanta and other defendants purchased Intel computing components that had to be combined with certain standard parts to create a complete computing system. The defendants then combined those components with non-Intel components in the defendants’ own computer systems.
The defendants’ combination of Intel and non-Intel components followed the specifications, or method, described in LGE’s patents.
LGE sues for infringement
Rejects the view that the exhaustion doctrine does not apply to method claims
o Exhaustion is only triggered by a sale authorized by the patent holder
Nothing in the License Agreement restricts Intel’s right to sell its microprocessors and chipsets to purchasers who intend to combine them with non- Intel parts. It broadly permits Intel to “make, use, [or] sell” products free of LGE’s patent claims. [] To be sure, LGE did require Intel to give notice to its customers, including Quanta, that LGE had not licensed those customers to practice its patents. But neither party contends that Intel breached the agreement in that respect.
o Takeaway: This was an unrestricted, authorized sale
“The License Agreement authorizes Intel to “make, use, sell (directly or indirectly), offer to sell, import or otherwise dispose of’” its own products practicing the LGE Patents”
There may have been no implied license but the doctrine of exhaustion is different
At the point that this was unrestricted, the patent rights were exhausted
