Patent Law

Question 1

Obtaining a Patent: must go through “patent prosecution” process

Answer 1

o File an application describing the invention to enable the PHOSITA (hypothetical person having ordinary skill in the art) to make and use the invention, 35 USC §112(a).
o Includes a series of numbered paragraphs (claims) stating the exclusionary rights inventor should be entitled to on their invention, §112(b).
o History of reports filed with PTO are called the “prosecution history”

Question 2

• General Requirements: patent claim must be:

Answer 2

(1) adequately supported by written disclosure; (2) patentable subject matter; (3) useful; (4) new; & (5) nonobvious

Question 3

Claims

Answer 3

What inventor thinks his right to exclude is.
Only one sentence long.
Each claim separate right to exclude

Question 4

Comprising of v. Consiting of

Answer 4

 “Comprising of” (claimed invention has the listed characteristics below, doesn’t matter about other things it may have)  the more you say, the less protection you get (laying out requirements that something must have)
• Presence of something else won’t ruin infringement here
 “Consisting of” (exhaustive list, claimed invention has only features listed)
• If any other features are added, no infringement

Question 5

• Duration

Answer 5

patents exist for 20 years as of filing date, §154(a)(2), as long as 3 maintenance fees are paid (fees 3.5, 7.5, and 11.5 years after grant)

iv. Timing: patent in force up to 20th anniversary of original filing date. Must pay maintenance fees evey 3.5, 7.5, 11.5 years
1. Patent filed sept 1 2010, expires sep 1, 2030

Question 6

a. The cup patent is a utility patent . Almost all utility patents are written this way. (Making a claim)

Answer 6

i. History.
ii. Identify problem. Very dramatic. melodrama
iii. Solve Problem. Calamity, thank goodness im here

Question 7

Can the disclosure be broader than the claim itself?

Answer 7

ii. YES It is ok that the disclosure is bigger than the trade. CANNOT be smaller.

Question 8

4 “Types” of patent infringement

Answer 8

a. Literal: the item falls within the literal scope of each “limitation/element” of the asserted patent claim.
b. Nonliteral: Using the doctrine of equivalents, the items falls outside the literal scope of one of more of the limitation/elements, but for each such limitation there is a substitute that is the functional equivalent.
c. Direct: accused infringer is the one who committed the infringing act
d. Indirect: The accused infringer encouraged or helped someone else to commit the infringing act
i. Common when the claimed invention has many competent parts assembled by an end user.

Question 9

Patents and dah courts

Answer 9

Patent Prosecution? USPTO to fed cir.

Patent litigation? District ct

Question 10

• 35 USC § 112(b) (Patent Act on claim definiteness – where theory of “indefiniteness” comes from

Answer 10

o Must specifically point out and distinctively claim (create a boundary that has an inside and an outside; if it fails to do this, the claim failed to serve its purpose)

Question 11

• Disputed Claim Terms – question of law or fact? Both

Answer 11

o FRCP 52(a)(6): “findings of fact . . . must not be set aside unless clearly erroneous”
 Claim scope is a question for the judge, not jury
o The meaning and extrinsic evidence from experts/technical journals/etc. is factual; thus, calls for R. 52(a)(6) clearly erroneous standard
o Ultimate claim determination based on factual finding is a question of law; thus, the legal question has a de novo standard of review

Question 12

TEVA (molecular weight case)

Answer 12

i. Indefiniteness Claim:

iii. Holding: The appellate court must apply a “clear error” NOT a de novo, standard of review with patent claims with “evidentiary underpinnings.”
1.  Held: factual determination is reviewed w/ clearly erroneous standard and defers to trial court (better position to assess; heard witnesses/evidence)
• Patents are both technical & legal documents
o Patent #/prosecution history = intrinsic evidence (ultimate question is legal; reviewed de novo on appeal)
o Technical publications/expert witness opinions = extrinsic evidence (disputed questions are factual; reviewed for clear error on appeal)
o Takeaway: extrinsic = factual; intrinsic = legal

vi. District Court: a person having ordinary skill in the art would know that Teva meant “molecular weight” to mean “peak average molecular weight”; ruled for Teva. On appeal, Ct REVERESED

Question 13

 Adequate Written Disclosure (not as important)
•


Answer 13

Enablement requirement (patent need not disclose what is well known in the art already – must enable phosita)
• Written description requirement
• Best mode requirement (patent must set forth best mode)
o Calls for Claim Definiteness (you want right to exclude, we have to know the boundary of what you’re giving us)

Question 14

o Teashot v. Green Mountain (Teabag and K-Cup case)

Answer 14

 Establishes importance of clarity in claim/importance of language
 Teashot 672 patent: “sealed body is constructed of water-permeable material which allows flow of fluid through said sealed body”
 GM’s accused item had a plastic body with foil lid that a needle punctures to make hole for water to go through  cannot be infringement
• But plastic isn’t water permeable
 District Ct/Fed Cir agree w/ accused infringer that there’s no “water-permeable material,” so no literal infringement
• Bc Teashot’s claim depends on water flowing through water-permeable material as the way its product works, and a tin lid that has a hole is clearly not “water-permeable material”

Question 15

o Nautilus v. Biosig (claim construction/definiteness; electrodes)

Answer 15

must “inform those skilled in the art about the scope of the invention with reasonable certainty”

Question 16

o Pacing Tech v. Garmin (Fed Cir 2015 – claim construction/meaning)

Answer 16

 Ordinary meaning rule  gloss on “plain and ordinary meaning”
• Compel departure in only two instances: (1) Lexicography or (2) disavowal; BUT only when CLEAR (if not clear, stick with “plain and ordinary meaning”)
o Start broad and only narrow if forced because we consider invalidating a valid patent is the worst error
• Here, “adapted to producing a sensible tempo”
o Constitutes unmistakable disclaimer (data/playback device [claim language] was just tied to the sensible tempo)
 Lexicography: provide your own explicit definition in a patent document
 Disavowal: patent document tells you what it’s referring to

Question 17

i. Enablement:

Answer 17

The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation at the time the claim was filed.35 USC 112(a)
1. Experimentation allowed, but must not be undue experimentation. Use “standard of reasonblness” Wands

Question 18

iii. Claim definiteness (Nautilus, Teva)

Answer 18

1. Reasonably certain std of definiteness:

2. Teva: questions of fact reviewed for clear error (extrinsic evidence, expert witnesses)

Question 19

iv. Claim Construction

Answer 19

1. Teashot

2. Garmin (ordinary meaning unless lexograpgy or disavowl)

Question 20

Patenetable SUbject matter: what part of stutate?

Answer 20

101 • 35 USC §101: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…”
o Process occasionally a problem (machine, manufacture, comp. of matter rarely causes issues)

Question 21

b. NOT Patentable Subject matter

Answer 21

Laws of nature (Mayo, drug case)

ii. Natural Phenomena (Myraid DNA v. CDNa)
iii. Abstract Ideas (Bilski hedging algorithm not patenable, Alice (computer software similar to third party “intermediary” software not patenable) (note unlike the other two, ideas are made by humans. Too basic to be patents “too far upstream”)
1. Analogy! Yukon show, Quaker Oats, send out ‘1 inch land deeds” in cereal boxes
a. Shows too much exclusion can be a bad thing.(raises transaction costs
b. Tragedy of the anti-commons: too many veto holders, underuse

Question 22

• Problem of the Anticommons:

Answer 22

a problem of property underuse resulting from too many property owners having veto power (in context of each part of an item having its own patent); e.g., square inches of land given in Yukon hypo
o “Patent protection is a two-edged sword” (Prometheus – can encourage innovation, but can also impede it)

Question 23

• Diamond v. Chakrabarty (broad application of §101 – living organism was patentable)

Answer 23

o “Anything under sun made by man,” BUT NOT: (3 exclusionary categories)
 Laws of nature
 Natural phenomena
 Abstract idea
o Why? Patent system meant to promote technological innovation (don’t want to frustrate that purpose)
o If 3 exceptions, then only patentable if applying it in inventive or transformative action (i.e., cannot be well known)

ii. Human Intervention!!! But how much
iii. Here, patent was for new man made bacteria that could eat parts of crude oil

Question 24

o Mayo Two-step test



Answer 24

(1) Does claim recite natural law, natural phenomena, abstract idea/process/data (known)?
 (2) If yes, does it…
• Do more than simply add the words “apply it”?
• Contain other elements (an inventive concept) sufficient to ensure it is significantly more than a patent of natural law or other exclusionary categories itself?
• Have additional features that provide practical assurance that process is more than a drafting effort designed to monopolize one of the 3 exclusionary categories itself?

Question 25

Mayo Case (test applied)

Answer 25

o Application Here
 1st Step: yes, the recited correlations are natural laws of medicine even though at some point found by humans
 2nd Step: no, nothing significantly more than “apply it”, and applies methods well-known and administered in doctor profession
• Just telling doctors what to do with the drug (give it to patient)
 Held: no patent protection (too thin to merit it given the danger of giving patent rights too up-stream/giving too many people veto rights)
• Takeaway for Patent Applicants: make sure you push towards the practical end of the spectrum (really tell PTO with rich detail the practical application of the practical invention)
o Avoid making it abstract (the more you say, the less you get; but you still must meet this threshold)

Question 26

Patent protection is a two edged sword”

Answer 26

Can encourage innovation

2. Can impede innovation (Silvaco trade secret recipe case, Yukon inch, fair use copyright) don’t want anti-commons

Question 27

• Myriad Genetics (human intervention focus)

Answer 27

i. Hold: Purified, isolated DNA BRCA1 and 2 NOT patentable, but cDNA, man made strand, WAS patentable
ii. “A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring.
1. Note: cDNA is made easily just from natural mRNA, so it actually takes very little human intervention to make something “man made”

Question 28

• Alice Corp v. CLS Bank (US 2014) (this case = Bilski + Mayo)
o
]

Answer 28

o Computer application doesn’t say much beyond algorithm (method for reducing transaction-settlement risk)
o Held: patent claims rejected  “merely requiring generic computer implementation fails to transform the abstract idea”
 Saying “do it on a computer” is the same as saying “just apply it” in Mayo
 Abstract idea can be fundamental economic practice long prevalent in our system of commerce (such as Bilski hedging – escrow is fundamental economic practice)
o Defers to Mayo 2-Step Test
 (1) Abstract idea, natural law, natural phenomena? Yes, abstract idea
• Can be fundamental practice true without human action
• Here, 3rd-party settlement is a “fundamental economic practice”
 (2) Further inventive/transformative concept? No
• “Mere recitation of a generic computer” is inadequate

Question 29

Computer Programs and patents post alice?

Answer 29

iii. Hopeless for computers?? NO!
1. Improving the computer technology itself would be patentable or improvement in another technical field.(Alice dicta)
2. See Diehr (A machine controlled by a computer program that vasty improved rubber manufacturing was patentable.
iv. Note: This case likely incentives software companies to invest in trade secret protections (Note also software code could be protected by copyright, but also not super strong (google v. oracle fair use). See Silvaco (source code hard to reverse engineer)

Question 30

Utility issues often only raised on 2 Contexts

Answer 30

i. Biomedical (Fisher rejecting claims on gene fragments where the inventor could not stat a specific, substantially utility for any protein for which those genes code)
ii. Chemical
iii. Controlling case; Brenner useful requires a currently available benefit that is both specific and substantial. (held a compound that had no known use and had (not been shown to be effective against cancer) could not be patented even though it was structurally similar to ones that were because it lacked utility)

Question 31

Leading case on utility?

Answer 31

Brenner useful requires a currently available benefit that is both specific and substantial. (held a compound that had no known use and had (not been shown to be effective against cancer) could not be patented even though it was structurally similar to ones that were because it lacked utility)

Question 32

How high is the threshold for utility patents?

Answer 32

: Utility threshold is not high, an invention is “useful” under section 101 if it is capable of providing some identifiable benefit. Juicy Whip

i. The fact that one product can be altered to look like another is itself a specific, substantial benefit sufficient to satisfy the utility requirement (Juicy Whip held patent for post-mix drink maker disguised to look like pre-mix drink maker passes utility test) (Cf Rickard 1925 held a fake spotted leaf cigar not patentable)
ii. Policy: Court, not my job to police deception legislature can pass law, and PTO not moral arbiter (other agencies like FDA and FTC).
iii. Deception?
1. Note: The purposes of this invention is to deceive consumers, where a lot of others (like cubic zirconium, person who BUYS it not deceived they just want to trick their friends)

Question 33

Moral Utility?

Answer 33

? Cf EU patent does not allow patents for contrary to morality. Should we?

i. US does NOT have a morally utility doctrine!!!!
1. Note PTO refuses patents on human organisms, but can get patents on GM animals like mice.
ii. Also have old cases that have US “moral utility doctrine” in second circuit but not followed (Lowell v. Lewis 1817) now i
iii. EU: Does not allow patents on GMO higher-order animals like mice

Question 34

ii. Statutory framework 102: Old and New (Novelty)

Answer 34

1. AIA substantially changed 102: All patents 2013 and on governed by new 102. Everything before March 16 2013 is governed old 102 (1952)

Question 35

OLD 102 Highlight (a) and (b)

Answer 35

5. 102(a) hinges on invention date (if cannot prov invention date was earlier, use filing date)
6. 102(b) has one year grace period from date of patent application
7. Under 102(b) you can disqualify your OWN invention (cannot happen under 102(a)
8. Goal: Promotes a “first to invent” instead of “first to file”
   a. Note: AIA changed to first to file (like EU)

Question 36

o Titanium Metal v. Banner (Fed. Cir. 1985 – range of alloys in claim language

Answer 36

 Report and Enablement: alloy that T tried to patent here was described in a Russian article, not exact description, but it enabled one skilled in art to make the alloy in the report’s claimed range
 (1) Prior art? Yes, application was filed on 3/29/1974, so critical date is 3/29/1973 since dealing with 102(b), and Russian article was published in 1970 – much more than one year
• Date question ***
 (2) Since prior art, does it anticipate? Substantive question – does it render it unpatentably old?
• Yes, bc of report of ranges & enablement by teaching phosita how to make the alloy
 What could’ve patentee done to maybe have valid claim?
• Claim that it made method to allow corrosion preventative (must be a connection to what inventor accomplished and what they are claiming)
 Anticipated Product Rule: discovering new properties/features of an anticipated product does not render that product patentable
• Requirement of novelty focuses on what public already possesses; if public already has invention, it would be inappropriate to provide exclusive right to that invention

Question 37

i. Anticipation: Titanium Metals v. Banner d

Answer 37

Anticipation Test:

a. Is it a prior art under 102?
b. Does it have the substance of the invention disclosed in it (aka does it anticipate it)?

Question 38

c. Printed Publications
i. Note: ALL issued patents count!
ii. Cases

Answer 38

1. In re Hall (1986) yes: is printed publication
   a. Indexed, cataloged dissertation in public stacks at German university
2. In re Cronyn (Fed 1989) No
   a. Student Thesis: name-sorted cards in a box with only name of student, no access to thesis.
   iii. Indexing and cataloging is sufficient, but not necessary to be a printed publication
3. Practice Tip! You can publish prior art to prevent other people from patenting it!! Private Art Database (already indexed and Cataloged w/ date) (defensive publishing)

Question 39

iv. In re Klopfenstein (2004) (held two presentation were printed publications)

Answer 39

1. Method for making soy fiber (double extracted)
   a. Appl filed 10/30/200 critical date 10/30/1999
2. Poster Presentations
   a. Oct 1997- 2.5 days, Am Assoc Cereal Chemists (phosita)
   i. No copies of the slides
   b. Another 1 day
3. Standard “Public Accessibility”
   a. Factors:
   i. Duration (chance to capture, process, retain info)
   ii. Target Audience Expertise (easier to retain))
   iii. Expectations about copying
   iv. Ease of copying
   b. Here, no indexing and cataloging (note here all factors point the same way)

Question 40

: Pre iPhoe fn 4 f

a. Oral presentation with no slides? printed publication?

Answer 40

a. Oral presentation with no slides would NOT be a printed publication?
i. Miller skeptical, thinks that it is easy to record and transcribe

Question 41

 Beachcombers v. Wildewood (patentability of a kaleidoscope) o “Public Use” – §102(b)

Answer 41

• Application filed 5/27/1986  critical date is 5/27/1985
o Anything in public use in the U.S. counts [actual invention date doesn’t matter; all that matters is filing date for (b)]
• Held: patent invalid (non-secret use if no obligation of privacy or secrecy)
o Kaleidoscope was considered in public use when a good friend of accused infringer used it at party
o No actions taken to retain control over use of device & future dissemination of info about it (no secrecy)
• Tells us how to analyze third party’s activities that may put a technology in public use for purposes of §102(a)-(b).
o Purpose to incentivize filing in a timely fashion (don’t want inventor to be able to get around disclosing just bc they’re the one publicly using it)
• Very easy to defeat patent rights (we don’t want people to get patents on existing technology; would be counterproductive)
 The focus of §102(a)’s “used by others” provision, like §102(b)’s “in public use” provision, is any use that generates publicly available information.

Question 42

 Pfaff v. Wells (U.S. 1998 – computer chip socket for testing)

Answer 42

• Our app date is 4/19/1982 – critical date is 4/19/1981
• On 4/8/1981 π got written confirmation from TI on purchase order (30,000 units for $91k) and drawings around March 1981
o Order in April is evidence of constructive reduction to practice bc nobody would put order for 30k units if drawings insufficient
o July 1981, Pfaff sends TI chip sockets reduced for production
• Before TI’s purchase order, drawings enabled π’s socket (3/1981)
o If “invention” on sale at this point, π loses (patent invalid)
o Issue: are drawings sufficient?
 Sounds like enablement requirement (Titanium)
• After TI’s purchase order, π’s socket actually reduced to practice
o If “invention” not on sale until this point, π wins (valid)
• Held: “on sale” when drawings were produced (invalid patent)
o §102 – the invention (when does it happen?)
 Presumptive invention date = application filing date (can use §102(a) even when we don’t have actual invention date; parties introduce evidence to show when it was created)
o The Act of Invention
 Step 1 – Conception: definite idea of complete invention
• Telephone Cases: you can patent something before it is reduced to practice
• Before critical date, Pfaff had drawings
 Step 2 – Reduction to practice of invention: physical manifestation outside of the mind (making the thing)
o Rule: “on sale” if (1) subject of a commercial offer for sale & (2) “ready for patenting”
o “Ready for patenting” can be actual OR constructive
 Actual: making an embodiment that works for intended purpose
 Constructive: drawings/description detailed enough to enable
• Enable, describe, definite claims (requirements of patent – §112)
• So, filing a proper patent would inevitably meet this requirement
• On day patent is filed, both proof of a presumptive invention date & proof that you reduced it to practice
o Bc purchase order & constructive reduction to practice before 4/19/1981, Pfaff loses – was “on sale” before actual reduction to practice; definitely subject of commercial sale bc of purchase order; issue between constructive vs. actual reduction to practice; Pfaff had sufficient drawings in 1981

Question 43

 Experimental Use Exception cts very skeptical of experimentation defense according to Millerl)

Answer 43

• Rare bc requires good faith intent, so doesn’t work very often
• Inventor’s own activities can result in a public use if the invention is shown to an individual other than the inventor under no limitation, restriction, or obligation of confidentiality
• City of Elizabeth v. American Nicholson (inventor can negate an otherwise invalidating public use/sale of invention outside the grace period by showing “the delay is occasioned by a bona fide effort to bring his invention to perfection”
• Clock Spring v. Wrapmaster (rejecting exception against public use)
o Public use, but CS says experimental bc testing durability
o Held: no experimental use exception
 Allen Eng’g 13 factor test: (1) necessity for public testing; (2) amount of control; (3) nature of invention; (4) length of testing; (5) payment; (6) secrecy obligations; (7) records kept; (8) who conducted experiment; (9) degree of commercial exploitation; (10) whether testing was reasonably required; (11) whether testing was systematically performed; (12) whether inventor monitored testing; & (13) nature of contacts made with potential customers.
 Only 3/11 installations were in control of inventor, so lack of control = no actual testing
 Reports reflect desire to market or teach, not test

Question 44

o Novelty under New §102 (AIA

Answer 44

• Helsinn v. Teva: “otherwise available to public” captures material that doesn’t fit neatly into statute’s enumerated categories, but is nevertheless meant to be covered.
o Ct. declined to read add’l catchall phrase given well-settled meaning of “on sale” before AIA
o Takeaway: pre-AIA law is still valid (patent law is a CL system that’s hard to displace)
 Eliminates distinction b/w actual invention date and filing date in favor of a single operative date (the filing date)
 Eliminates geographic disparity between documents from anywhere in world and public activities in the US
 Retains prior art categories (printed publication, public use, on sale)