Basics of Patent Law Outline

Written by Kikuyu Daniels

Patent Law Outline
Wednesday, September 01, 2010
10:50 PM

AUTHORITY
A. Intellectual Property Clause - US CONSTITUTION Article 1, Section 8, Clause 8 - authorizes Congress to promulgate both
federal patent (useful arts) and copyright (sciences) legislation
○ distinguishes between applied ideas (functional ideas) and expression of ideas
 must take into account not only the benefits generated by additional investment in innovation but the related
costs of preventing use by others of those inventions
○ "limited Times" constraint - calibrate the patent right to obtain the maximum net benefit to society at large
 point where the incentive benefits most greatly exceed the related costs thus producing the greatest possible
net social gain
○ RULE: more "foundational" - that is, can be the basis for a wide variety of additional applications - less patentable
B. Statutory -- Title 35 of US Code (101 - patentable, 102 - novelty, 103 - obviousness, 112 - spec)
C. Rules Title 37 of Code of Federal Regulations (CFR)
D. MPEP (Manual of Patent Examination Procedure)
E. Federal Circuit -- subject matter ct only; high volume of patent opinions

CLAIMS
A. REQUIREMENTS
MERRILL V. YEOMANS (deodorized heavy carbon oils) Claims have the primary importance in determining the extent of
the patent rights and therefore have primary, though not exclusive, role in determining infringement questions. The
specification may also be used in construing the claims.
a. Interpretation of claims is a legal issue (judge) not fact issue
b. Formal requirements include:
i. Entire claim must be stated in one sentence
ii. Must set forth how each element interacts with at least one other element (no list of elements)
iii. Internal references must be clear
c. Broad as possible, but two restrictions
i. Can't claim prior art (anything w/i the mass of publicly available information)
ii. Can't claim anything beyond actual discoveries of inventor
B. STRUCTURE
a. Preamble (identifies what kind -- basic nature -- of invention is being claimed; tries not to limit)
b. Transition (formally defines claim breadth)
i. OPEN CLAIM - "Comprising"
1) Ex. An invention comprising elements A, B, and C
2) Any embodiment of the invention having elements A, B, and C and any additional elements
3) Selling a product with elements A, B, C, and D would infringe
ii. CLOSED CLAIM - "Consisting of"
1) Ex. An invention consisting of elements A, B, and C
2) Selling a variant of the product that also incorporates element D does NOT infringe
3) Narrower than open type -- used lots of earlier inventions and prior art ("crowded art")
iii. IN BETWEEN - "Consisting Essentially of"
1) Covers a variant on the invention having element D only if element D did not make the variant
essentially different from the claimed invention
2) Variants having basic and fundamental additions fall outside scope
3) Variants with less significant additions fall within
c. Body (all the rest of the claim)
i. List all elements of the invention (i.e. parts and features)
ii. Describe how they interact
C. CLAIM TYPES
a. Independent (stand alone) / Dependent Claims (specifies some feature of invention claimed in any other claim or
claims)
i. Dep. claims are narrower than independent claims ; and
ii. Must be valid under USPTO examination if the claims to which they refer are valid; and
iii. Their validity in court is determined separately from the claim(s) it refers to; thus they
iv. act as insurance against invalidity of broad indep. claim
b. Means-Plus-Function Elements
i. 35 USC § 112 ¶ 6 - authorizes use of "means for doing X", where "doing X" is function

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b. Means-Plus-Function Elements
i. 35 USC § 112 ¶ 6 - authorizes use of "means for doing X", where "doing X" is function
35 USC 112, 6th paragraph – “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.”
ii. TEST: Is supporting structure given in specification?
iii. No "single -means" claim (claim w/ only one element in means plus format) as format must be used in
combination with at least one other element
iv. Ex. "means for fastening together A and B" (the function is fastening)
1) Covers glue, tape, nails, rivets, screws, and any other "means for" attaching one thing to another
2) Limited by 112 to cover corresponding structure, material, or acts described in the specification and
equivalents thereof
c. Jepson Claims (Ex Parte Jepson case not Read)- specially designed for claiming improvements
i. Long preamble set forth all elements of known invention (device or product)
ii. Transition phrase typically says "wherein the improvement comprises" or similar
iii. Body describes the improvement

PATENTABLE SUBJECT MATTER
A. 35 USC 101 - Inventions patentable.
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 this title.
a. SECTION 100 Definitions
- Invention = invention or discovery
- Process = process, art, or method (includes new use of known process, machine, manufacture, composition of
matter, or material)
- Machine = apparatus, generally has moving parts
- Comp of matter = mixtures of substances like chemical compositions or metallic alloys (see Chakrabarty)
- Manufacture = catch all category for human-made items without moving parts (i.e, hot drink sleeve)
b. DIAMOND v. CHAKRABARTY (host bacterium w/ plasmids to breakdown oil)
TEST: Anything under the sun that is made by man is patentable subject matter
i. Markedly different characteristics from any found in nature and
ii. Having potential for significant utility
iii. Composition of matter = all compositions of two or more substances and… all composite articles, whether
they be results of chemical union, or mechanical mixture, or whether they be gases, fluids, powders or solids
(common usage)
B. ISSUE OF LAW - Judge decides
C. Exclusions
a. LAWS OF NATURE,
b. PRODUCTS OF NATURE - newly discovered mineral or plant found in wild are not patentable
i. Compositions of Matter / Purified forms of natural products - no precedent
1) PARK - DAVIS - If it doesn't appear in nature that way then it is patentable. (Purified is ok) District court
case -- judge Learned Hand -- Pre Myriad
2) MYRIAD CASE - After purification, the matter must be "markedly different than before." District court
case -- up for appeal
"DNA, in particular the ordering of its nucleotides, therefore serves as the physical embodiment of laws
of nature - those that define the construction of the human body…the preservation of this defining
characteristic of DNA in its native and isolated forms mandates the conclusion that the challenged
composition claims are to unpatentable products of nature."
ii. Compositions of Matter / Life Forms -- not nature's handiwork but man's
see Charkrabarty case above
c. PHYSICAL PHENOMENA
d. MATH
e. MEDICAL PROCEDURES - patentable as process, but sometimes unenforceable see notes at tail of infringment (more
of a remedy to patentable subject matter)
f. ABSTRACT IDEAS - Machine and or transformation test plus
i. Processes -- must be applied in a useful application (i.e. is it the right type of transformation as physical
preferred) Utility must be substantial. Usefulness is not patentable.
1) GOTTSCHALK v. BENSON (algorithm to convert binary code decimals to binary numbers) - sole
application was to program a general purpose digital computer… algorithm = procedure for solving
mathematical problem… such is like a law of nature and not patentable
2) PARKER v. FLOOK (method for computing an alarm limit) - court concluded an alarm limit was merely a
number and all that was provided was a formula… once the formula was found to be in the prior art,

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number and all that was provided was a formula… once the formula was found to be in the prior art,
there was nothing left to patent since everything in prior art and abstract algorithm is only invention…
insignificant post activity or limiting use to field not enough to make patentable
3) DIAMOND v. DIEHR (computer-controlled process for curing synthetic rubber) - claims must be
analyzed as a whole, not dissected into their component parts…while a well known mathematical
equation was used, it was not the sole basis of the patent application… the application, curing synthetic
rubber, involved other claimed steps of which the equation was a required part (held patentable)
ii. Business Methods
1) STATE STREET - OLD
2) BILSKI v. KAPPOS (method for hedging risk in energy commodities) - if satisfies the machine-or-
transformation test, then likely patentable. Not the sole test.
a) Tied to a machine / process - does it say computer specifically? Consider
i) obviousness of automating something on computer
ii) Prevalence of computers in everyday life, is exclusivity to broad
b) Transformation - does it transform article to different state? Physical change is favored
c) Next step unclear, wait for case law (m/t test not only test, as tech changes so should test) Back
to must be applied (see processes)

INFRINGEMENT ANALYSIS
A. BURDEN OF PROOF for INFRINGEMENT - preponderance of the evidence (51% convincing)
B. TWO Questions to ask 1) Does the patent cover the accused activity?
TWO STEP ANANLYSIS
(1) Interpret the claims (a.k.a. claim construction, construing claims) -- what do the claims mean?
a. HOW - Limitation by limitation, @ TIME= Filing date, time of invention, follow cannons
b. ISSUE of LAW - Judge decides, construes claims
1) MARKMAN v. WESTVIEW INSTRUMENTS (system for tracking clothing for dry cleaning)
Jury found infringement based on expert testimony of meaning of "inventory". District Ct. ruled JMOL
for non-infringement and made clear "inventory" in the patent meant "clothing" not "invoices". On
appeal, Supremes concluded a)judges not juries better equipped to interpret legal documents and thus
construe patent claims AND gave b) policy reasons for needing uniform interpretation case to case . No
7th Amendment right to jury trial for patent claims.
2) CYBOR CORP v. FAS TECHNOLOGIES, INC. (appeal to infringement of patent on Cybor's pump)
Standard of Review: Appellate review of claim interpretation by Federal Circuit
a) Heard en banc to resolve the fact v. law issue as to if dist. Ct. needs to find facts
b) Decided entirely legal, no findings of fact are made by dist. Ct. construction of claims
c) De novo on appeal - consider anew as if not previously heard, no deference to trial ct. finding
i) Example one dist. Ct. decides one way and another a different way on same claim
ii) to review w/ deference to dist ct. as finding of fact, inconsistency would result
c. EVIDENCE -Evidentiary sources used to interpret claims
PHILLIPS v. AWH Corp. (modular, vandalism-resistant wall panels for prison walls including "baffles")
Patents' specification, intrinsic evidence, is primary basis for construing the claims ; prosecution history
(less clear than spec. but ) informs meaning of claim: (1) how inventor understood invention; (2)
whether in course of prosecution claim scope made narrower than otherwise would be.
UNIQUE CONCEPTS, INC. v. BROWN (fabric wall cover assembly with linear border & corner border
pieces) Fine line: proper interpretation of claims in light of written description v. improperly narrowing
claims by reading in limitations from written description.
1) Intrinsic - part of public record of patent - considered not "litigation influenced" - usually sufficient to
resolve and claim interpretation issues
a) Patent itself (including spec and preamble) - disclosed embodiments; advantages/ purposes
CORNING GLASS WORKS v. SUMITOMO ELEC. USA, INC. (optical wave guide for long-
distance communications) Preamble in claim stated "An optical wave guide…". Def argued
preamble not limitation when merely states an intended use. On review of the entire
patent (specification in particular) to understand that inventor meant not any fiber but
those for optical wave guide, Ct. held claim preamble gave "life and meaning" and provided
further positive limitations to the invention claimed.
b) Prosecution history
c) Prior art cited in patent
2) Extrinsic - evidence outside official administrative record of patent's procurement -relied on only when
claim terminology still ambiguous following review of public record
a) Expert testimony - not used to vary or contradict claim language; used to understand (Cybor Ct.)

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a) Expert testimony - not used to vary or contradict claim language; used to understand (Cybor Ct.)
b) Dictionaries, encyclopedias, and treatises - merely useful in claim construction (Phillips Ct.)
d. CANONS - rules of claim interpretation
1) Interpreted from PHOSITA (Perspective of Hypothetical person of Ordinary Skill In The Art)
2) General Rule: PHOSITA meaning given to claims. Heavy presumption of ordinary meaning by Fed Cir.
Exception: Patentee as on lexicographer -- patentee redefines a term, usually explicitly
3) Ct should not adopt claim interpretation that excludes preferred embodiment
Exception: unless prosecution history shows patentee amended to exclude preferred
embodiment
4) Existence of narrower dependent claim shows broader claim is not limited (claim differentiation)

(2) Compare properly interpret claims with the accused device (a.k.a. reading the claims onto the accused device)
Take plain claim language and look at each below
a. ISSUE OF FACT - juries decide infringement
b. RULE / INSTRUCTION: Use All - elements / All - limitations RULE -- met literally or by equivalents
□ limitation-by- limitation, each limitation of properly construed claim be met in accused device
□ If claimed invention is combination of elements, accused device must be fully assembled and ready for
use to constitute a making under § 271 (a)

1) LITERAL infringement - found where accused subject matter falls precisely w/i express boundaries of
claim. See if each interpreted limitation is there. If not, try equivalents to see if it is close enough.

2) EQUIVALENT Infringement - Doctrine of Equivalents (DOE)
WARNER-JENKINSON Co. v. HILTON DAVIS CHEMICAL CO. ( originally no PH limits; prior art PH>9.0;
amended as PH 6.0-9.0; infringer PH=5.0)
a) INSUBSTANTIAL DIFFERENCE /FWR RULE (function/way/result, triple identity, tripartite test) - 1) Is
the element in accused doing substantially the same function, 2) in substantially same way, 3) and
producing substantially same result? Look to the degree of substantiality of the differences.
b) QUESTION OF FACT (jury) at TIME OF INFRINGEMENT - applies to unforeseeable equivalents to
prevent unscrupulous copyist from making insubstantial changes and avoiding infringement
c) POLICY Rationales
i) economic/fairness - if patent avoided by making minor insubstantial change when copying
invention, right to exclude by patenting not worth much.
ii) Linguistic safety when words not always optimal medium to convey inventive concepts,
particularly pioneer, stat-of- the art technology where well-recognized vocabulary does not
exist
d) TENSION - Claims intended to provide clear advanced notice to competitors of the scope of
patentees right to exclude v. DOE extends the right to exclude beyond that denoted by literal
boundaries of claim;
RESOLUTION - application of DOE as equivalency of an element or part of the invention (All -
elements rule) with one that is substituted in the accused -- the scope is not enlarged if do not go
beyond substitution of equivalent elements. -- Warner-Jenkinson citing Grover Tank;
e) LIMITATIONS on patentees ability to rely on DOE to establish infringement
i) PROSECUTION HISTORY ESTOPPEL - patentee estopped from using DOE on subj. matter
patentee surrendered in order to obtain the patent from USPTO; Common Form: narrowing
amendments made to claims during prosecution; Judge-made law,
TEST: Is there estoppel? If so, what is the scope? Scope:
A) WARNER-JENKINSON (silent/ unexplained record)
First. Presumed PTO had substantial reason related to patentability
Second. Burden on patent owner to give reason for amendment,
Third. Unrebutted presumption of PHE results in complete bar to DOE for that
element
B) FESTO III (amendments made infringer's two way sealing ring inferior and
unforeseeable equivalent magnetic and one-way sealing ring)
First. Rebuttable presumption that any equivalents to a narrowed claim limitation
have been surrendered.
Second. QUESTION OF LAW - district ct to make factual findings, not jury
Third. METHODS for overcoming presumption of complete estoppel
1. UNFORESEEABLE - patentee demonstrates alleged equivalent would be
unforeseeable at time of narrowing amendment
1. Objective inquiry - unforeeseable to PHOSITA @ time of
amendment
2. Depends on factual issues: State of art and understanding of

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2. Depends on factual issues: State of art and understanding of
PHOSITA @ time
3. Expert testimony in district ct may be used & other relevant
extrinsic evidence
2. TANGENTIAL RELATION - rationale underlying the narrowing amendment
bears no more than a tangential relation to equivalent in question
1. Essential (not tangential) if narrowing made to avoid prior art
2. Focus: Patentees objectively apparent reason for narrowing claim
3. Limited to intrinsic evidence (prosecution history record)
3. OTHER REASON - patentee could not reasonably be expected to have
described the insubstantial substitute in question
1. May include short comings of language
2. Although not limited, intrinsic evidence should be used
ii) ALL-LIMITATIONS RULE -Every limitation of a claim is considered material and must be met
in accused device to find infringement; DOE applied on a claim limitation-by limitation basis
rather than to invention as a whole
CORNING (optical waveguide -- positive dopant to core v. negative dopant to cladding
layer to achieve RI differential) Def. argued it did not meet the language literally or
by equivalents b/c it did not add any dopant or equivalent to the core. Ct.
distinguished btwn "components" (what is used) & "limitations" and that DOE
required equivalence in the latter. F/W/R - both methods created RI differential
necessary for fiber to function as optical wave guide.
iii) VITIATION - DOE must not be applied so broadly as to effectively eliminate a particular claim
limitation (Think Corning Case - totally deprive claim element of meaning then don't want
that level of equivalents - totally vitiating or not?
Some recent Fed Cir. Decisions seem to equate patentee's reliance on DOE with an
attempt to completely nullify or erase claim limitations of numerical specificity (i.e.,
when accused dimension is 47.8 % and infringement found under DOE when claimed
dimension is a majority 50% or more as this would "vitiate" claimed requirement.)
iv) PRIOR ART (Hypothetical Claim Analysis)- One who merely "practices the prior art" does not
infringe under DOE (i.e., making a device already in public domain.) Policy: Patentee should
not be able to use DOE to encompass equivalents to claimed invention that could not have
obtained from USPTO by applying for patent protection of that scope.
A) WILSON (jury found Dunlop balls to infringe & no principle difference btwn Dunlop
balls and prior art Uniroyal balls) Patentee has burden to show its expanded right to
exclude does not encompass prior art. No infringement if the asserted scope of
equivalency of what is literally claimed would encompass prior art.
B) 3 step TEST:
First. Begin w/ properly interpreted language of patent claim that is allegedly
infringed under DOE
Second. Amend claim so just broad enough to literally read on accused device
Third. Analyze validity of hypo claim for novelty 102 and non-obviousness 103
v) DEDICATION TO THE PUBLIC - patentee may not attempt to cover through DOE any subject
matter disclosed but not claimed in its patent app, thereby avoiding USPTO examination
JOHNSON & JOHNSON (claimed a device with “a sheet of aluminum”; spec said
"other metals" including stainless steel; accused: stainless steel) Rule: In spec but not
claimed, then devoted to public; Can't extend thru DOE to cover. Bar applies to
amendments too. Foreseeability -- it was foreseeable and should have put in.
vi) FORESEEABILITY - patentee may not encompass through DOE reasonably foreseeable
alterations to claimed structure, when it had an opportunity to negotiate broader claim but
did not.
vii) MEANS PLUS FUNCTION- statutory limitation in 35 USC 112(6) - "…may be expressed as
means or step for performing a specific function w/o recital of structure… and… shall be
construed to cover the corresponding structure… described in spec and equivalents
thereof."
A) Test: Is it 112(6)?
First. If "Means / Means for" used,
1. presumption it is means + function / Rebutted if gives specific structure to
meet the function
2. Infringe TEST:
1. Is same function performed?
2. If so, is done by same means or equivalent (insubstantial change)
structure? Similar: F/W/R/ EXCEPT w/o function because to have

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structure? Similar: F/W/R/ EXCEPT w/o function because to have
literal infringement of means plus function claim, the function must
be identical (not merely insubstantially different).
Second. If "Means" not used / rebutted by recitation of function w/ no supporting
structure
B) DON'T FORGET TO DO DOCTRINE OF EQUIVALENTS ON THIS NEXT !!!
C) Considerations:
First. Later developed technology
AL-SITE CORP v. VSI INT'L, INC. (fastening means for holding eyeglasses to stand
using either rivet or button/hole vs. glue) Statutory equivalents of means
element must be in existence at time patent is granted to be considered w/i
literal scope of the claim, and therefore a literal infringement thereof. POLICY:
Claims must "particularly point out and distinctly claim" the subject matter, so
difficult to see how claim could literally encompass technology not yet in
existence.
Second. Software
ARISTOCRAT TECH's AU PTY LMTD v. INT'L GAME TECH (Claimed "game control
means" or "control means"; spec: any microprocessor… appropriate
programming) Ct. held spec did not link asserted structure to any of the
claimed functions b/c general purpose computers can be programmed in
variety of ways to perform various tasks -- corresponding structure, the
algorithm (not necessarily detailed) used with the computer, should have been
disclosed.
D) 112/6 v. DOE - Unlike DOE which compares patent claim limitation w/ accused
product, section 112/6 entails a comparison of one structure material or act (that in
specification) to another structure, material, or act (that in a product or process
alleged to be covered by the patent claim) AT TIME OF INVENTION/FILING.

C. TWO questions to ask: 2) Is this the type of activity that infringes?
(1) DIRECT - Use, Make, Sell - Vicarious liability
a. § 271 (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or
sells any patented invention, within the United States, or imports into the United States any patented
invention during the term of the patent therefor, infringes the patent.
1) MAKE (generally) - must be made (fully assembled) to infringe under 271(a)
Ex. Chair with legs not put on. No infringing use.
a) Joint and Divided (vicarious liability)
i) RULE: Requires "control or direction" of 3rd parties' conduct
ii) BMC RESOURCES INC. V. PAYMENTTECH L.P. (method processing debit trxns w/o personal
code) Ct. looked for contractual relationship btwn parties as evidence of "control." Held no
evidence of control. Policy: Though accused may contract steps out to 3rd party to avoid
direct infringement under all limitations rule, law doesn't extend/reach to independent
activity of parties b/c direct infringement is strict liability defense (limited to those who
practice every limitation of claim) and to expansion of rules subverts indirect infringement
statutes which require some form of intent.
2) USE - must be employed for its functional purpose
Ex 1: flying object sits on table at trade show. No infringing use.
Ex. 2: All parts tested, not used together. Yes, surprisingly!
3) OFFER TO SELL - must be potential for acceptance (as required under UCC)
Ex. Catalog = soliciting offers to buy, not offer to sell. No infringing use.
4) IN U.S.(sells or imports) - companies must be located in U.S. or control of system in U.S. or each step
performed in U.S.
Ex. 1: Sale btwn two companies in U.S. for goods made/delivered overseas? Yes.
Ex. 2: F.O.B. (free on board - title transfers b4 ships) in Germany, is it offer to sell in U.S.? Yes.
NTP v. RIM (cell towers in Canada, not in reading)
a) Use of system- place where control of system is exercised and beneficial use obtained
b) Use of method - each step must be performed in U.S. Some steps in Canada? Not met.
5) DURING THE TERM - from issuance to expiration
Ex. 1: pre-patent sale / b4 issuance - not infringement
Ex. 2: preparation to conduct activity after expiration
a) Send out catalogs. No (not offer to sell)
b) Manufacture (not assemble) components outside U.S.
c) Contact to acquire components. No. (no make use offer to sell)
b. § 271 (f) Covers loophole of making components in U.S. (no infringement under 271 (a) b/c ct. interprets

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c) Contact to acquire components. No. (no make use offer to sell)
b. § 271 (f) Covers loophole of making components in U.S. (no infringement under 271 (a) b/c ct. interprets
make as complete assembly) and shipping over seas to assemble (No direct infringement, so no inducement
or contribution)
1) 271 (f) (1) Makes infringing the act of supplying "in or from U.S. all or substantial portion of…
components… in… manner… to actively induce… combination…" overseas. (echo 271b)
MICROSOFT CORP. v. AT&T CORP (computer software sent from US to foreign manufacturers on a
master disk to be copied for installation on computers made and sold abroad) Held no infringement
under 271(f). Reasoning:
a) Abstract software is idea w/o physical embodiments (does not extend to instructions must be
physically supplied)
b) Master disk supplied was not installed on the foreign components (the copies were)
c) POLICY: Since 271(f) created to address shrimp deveining problem, obtaining and enforcing
foreign patents is best ay to prevent copying abroad & Congress better than courts to address
"loophole" in favor of software makers
2) 271 (f) (2) - specially made - Makes infringing the act of supplying "in or from U.S." a nonstaple
component of patented invention" intending… combination… overseas. (echos 271 c)
c. § 271 (g) "imports into U.S. , offers to sell, sells or uses w/I U.S. a product… made by process patented in the
U.S… during the term" EXCEPT:
1) Materially changed by subsequent process b4 imported; or
2) Trivial & nonessential component of another product
Note from review: Method of writing book using MS Word does that get you all books?

(2) INDIRECT - direct infringer and indirect infringer both considered jointly and severally liable for the infringement
under theory of joint torfeasance
a. ISSUE OF FACT (jury decides)
b. EVIDENTIARY STANDARD : Preponderance of the evidence, 51%, civil standard
c. INDUCED - § 271 (b) - Whoever actively induces infringement of a patent shall be liable as an infringer.
Requires:
1) SPECIFIC INTENT (actively and knowingly) aiding and abetting another's infringement (ex. Instructions /
info about how to make or use accused device/process);
a) Deliberate resistance, indifference, actively disregard known risk, willful disregard
b) Direct evidence not required, circumstantial ok
c) Affirmative acts required (beyond the sale?)
2) Actual or constructive KNOWLEDGE of the patent by inducer (necessarily imposed by specific intent)
3) Case of DIRECT INFRINGEMENT in U.S. for each instance of indirect infringement (burden on patentee)
DSU MEDICAL CORP v. JMS CO., LTD. (guarded winged-needle assembly) Patentee burden to show
a) infringer knowingly(knew or should have known) induced infringement and possessed specific
intent to encourage another's infringement
b) Mere knowledge of other's possible infringement not enough (must prove a)
d. CONTRIBUTORY - §271 (c) - offers to sell, sells, imports into the US a component...for use in practicing a
patented process, constituting a material part of the invention, knowing… especially made or
especially adapted for use in an infringement of such patent...and not a staple article..."
REQUIRES:
1) Substantial non-infringing use (must be non-commodity / nonstaple component)
a) Good for nothing else besides infringement
b) No legitimate public interest in it s unlicensed availability
2) Intent requires:
a) Awareness of patent (can be passive) and of relevant acts (not whether they infringe or not)
b) If only adapted to be used in patented combination then presumed accused intended they should
be used in combination of the patent
c) Specific intent to infringe not required
3) Case of direct infringement for each instance of indirect infringement (burden on patentee)
4) Considerations:
a) REPAIR/RECONSTRUCTION
ARO MFG v. CONVERTIBLE TOP REPLACEMENT CO. (fabric top assembly for convertible cars)
Fabric top wore more rapidly (~3 yr.) than the rest of assembly and its replacement deemed
repair not reconstruction (i.e., new making) of entire claimed assembly. Replacement of
unpatented parts, having shorter life than available from the combination of as whole is
characteristic of repair. No infringement on behalf of supplier b/c no direct infringement due to
consumer's implied right to repair (sale of patent article carries with it an 'implied' license to use).
b) COMPLIANCE w/STANDARD AS PROOF
FUJITSU et al v. NETGEAR (recent Fed cir. Decision) If a patent covers a standard, and the product
complies with the standard, then the patent covers the product and direct infringement can be

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complies with the standard, then the patent covers the product and direct infringement can be
inferred for purposes of contributory patent infringement, even without showing that anyone
actually committed direct patent infringement.
(3) EXCEPTIONS to infringement
a. EXPERIMENTAL USE - defense asserted against infringement claim
1) Common law; Narrowly construed, rarely a success as defense
2) Requires: absolutely no activity viewed as commercialization or based on profit motive
MADEY v. DUKE UNIVERSITY (Duke U. scientist used lab laser equipment patented by Dr. John Madey)
Such use not exempt and university's non-profit status not dispositive, b/c university engaged in
"legitimate biz… not solely for amusement, curiosity, or philosophical inquiry" of attracting top scholars,
students, and funding.
b. FDA USE - 271(e)(1) - Not infringement if use of patented invention solely for purposes reasonably related to
gathering data in support of an application seeking FDA approval for manufacture and sale of a generic
version of a previously FDA-approved drug
1) Purpose: delay to get FDA aproval; w/o generic drug manufacturers would have to wait to begin testing
of equivalent drug until patent expired and patentee gets de facto extension of patent term
2) Broad Interpretation: "reasonably related" to development and submission of info under Federal Law.
Limited to intent to develop particular drug or effect -- not for use on basic scientific research.
MERCK KgaA v. INTEGRA LIFESCIENCES I, LTD. (testing of patented peptides with potential cancer
fighting activity) held 271e(1) allows clinical (human) trials as well as pre -clinical (test tube and animal)
testing associated with development of new (or "pioneer") drugs. Properly construed 271(e) allows for
experimentation at least where drug maker has reasonable basis to believe that the compound tested
could be subject of FDA submission and experiments will produce info relevant to submission.
3) Not limited to drugs; can be for medical device (regulated by same laws), if getting FDA approval for it
PROVERIS v. INNOVASYSTEMS (system & apparatus for characterizing aerosol sprays in drug delivery)
FDA approval was required with the aerosol drug delivery product whose spray plume characteristics
the accused device measured. Because accused device itself was not subject to FDA pre -market
approval, and therefore faced no regulatory barriers to market entry upon patent expiration, defendant
was not privy to safe harbor relief under 271(e)(1).
c. REPAIR - Intent of patentee for use of patented item does not matter
JAZZ PHOTO CORP. v. INTERNATIONAL TRADE COMMISSION (refurbishing single use cameras bought
overseas resold in US) Pl. argued camera intended for single use. Def. argued patent exhaustion - patented
articles after sell no longer protected by patent laws & are property of owners for use, disposition, and
preservation of utility (repair). Repair is affirmative defense. The right to make a substantially new article
(deemed reconstruction) is retained by patentee. First sale doctrine under US patent right applies and patent
is exhausted upon fist sale in the US.
d. MEDICAL PROCEDURES - 287(c)(1)- see page 235 in study guide - Medical and surgical procedures are
patentable subject matter under process, but a lobbied congress made some of these patents null and void
under 35 U.S.C. 287(c). A "REMEDIES EXCLUSION"...
1) Narrowly defined - "medical activity" as "the performance of a medical or surgical procedure on a body,
but… not…
a) Use of patented machine, manufacture or comp of matter in violation of such patent
b) Practice of patented use of comp of matter in violation of such patent
c) Or practice of a process in violation of a biotech patent
2) Deprives the patent owner of any remedy for infringement (Direct or inducing as no remedy for
a) 281 civil action for infringement
b) 283 injunction
c) 284 damages
d) 285 attorney's fees
e. BUSINESS METHOD PRIOR USE RIGHTS - 273 - see p. 333 in guide - personal defense to charge of
infringement, raised by non-patentee who used invention in business, typically under trade secret, prior to
the patent owner's filing on the same invention.
1) Defense limited to cases involving method claims where accused infringer / defendant
a) Was acting in good faith and
b) Reduced to practice at least 1 yr prior to effective filing date and
c) B4 effective filing date, used commercially (use of a method in U.S. so long as connected with
internal commercial use or arms length sale or other commercial transfer of use end result,
whether or not subject matter accessible or otherwise known to public)

VALIDITY
A. BURDEN OF PROOF for VALIDITY - clear and convincing evidence (much greater than 51% -- matter is highly probable)
Although issued patent entitled to rebuttable presumption of validity, it may be invalidated by litigation if the challenger

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Although issued patent entitled to rebuttable presumption of validity, it may be invalidated by litigation if the challenger
(who has the burden to rebut the assumption of validity) can establish, by clear and convincing evidence, that any of
those statutory requirements were not complied with.

B. TWO STEP GENERAL TEST FOR VALIDITY: 1)construe claim; 2) Apply - decide if it is valid.

C. UTILITY - 101 "Useful" - invention is "useful" if it is capable of providing some identifiable benefit. (Juicy Whip Case)
Policy: If invention is not very useful to society the cost temporarily borne by the public due to the patent is not excessiv e.
Marketplace decides degree of utility not courts.
(1) QUESTION OF FACT for UTILITY (jury decides)
(2) OPERABILITY / INOPERABILITY - (patenting impossible or uproven, not useful b/c doesn't work) it does not work as
claimed, then it is not considered useful in patent law sense. Invention rejected as inoperable subject matter if:
a. utility asserted contravenes generally accepted scientific principles
Ex. Mistake, A+B=A, where B <> 0 - applicant did not intend to patent fantastic invention but made mistake
b. It is Inherently unbelievable undertaking
NEWMAN v. QUIGG (perpetual motion machine - more energy output than input) Violated laws of
thermodynamics and evidence produced that it operated at best 70% efficiency. It did not produce what is
claimed to produce and inventions must operate in manner claimed.
c. Other considerations
1) inoperable species w/i genus - a general claim that includes one or more species w/I it that are
inoperable. Fed cir. held presence of some inoperative embodiments does not necessarily render claim
invalid as lacking utility as patent claims need not exclude all possibly inoperative embodiments.
However, this may give rise to embodiment issue… see part d below and enablement.
2) Utility v. 112 ¶ 1 - PTO will reject under 101 (no utility) and 112 ¶ 1 (failure to enable) b/c if invention
has no utility then applicant could not have disclosed the manner and process of using the invention as
required by 112. In litigation, usually treated as enablement.
(3) BENEFICIAL UTILITY - (patenting evil, not useful in right way) historically, must be moral and non-injurious. Now Ct.
moves away from morals.
LOWELL v. LEWIS (construction of pumps) No need to prove invention is better than what is already out there, just
that it is not frivolous or injurious to well being, good policy, or sound morals of society.
JUICY WHIP INC. v. ORANGE BANG, INC. (slurpee-like beverage dispenser machine w/ transparent display chamber)
Fed Cir. reversed trial cts. finding of deceptive and held invention benefitted consumers b/c decreased risk of
contamination. The Utility standard only requires some minimal real world value and USPTO not proper arbitrar of
morality.
(4) PRACTICAL UTILITY - (patenting useless, it works but no use for it) must have some real world practical use; not
necessarily significant or extensive. TEST: 1) Is there specific utility (stated)? 2) Does it work (do what is claimed)?
IN RE BRANA (compounds intended for use in chemotherapy) Held may posses patentable utility though not ready
for sales approval by FDA. Pl. used in vivo(test tube) evidence which is ok b/c stage in which useful often is way b4
ready to be given to humans. It is useful for further R+D. Policy: Requiring FDA approval would deter further
research + patenting.
a. PROCEDURAL BURDEN - USPTO bears burden of challenging applicants presumptively correct assertion of
utility by showing PHOSITA would reasonably doubt asserted utility.
b. BUREN SHIFTS - Applicant then must prove utility often w/ test data, experimental results, affidavits of
experts, etc.
IN RE FISHER (ESTs, expressed sequence tags, encoding protein and fragments in maize plants) Ct. characterized
ESTs as intermediates that provided no information on structure and function of gene. POLICY: Patents not hunting
licenses and hewed to specific and substantial utility requirement. If what is claimed is of no use to public why
should monopoly be granted. For:
a. Specific utility - must show invention can provide a well-defined and particular benefit to the public.
b. Substantial utility - must show invention has significant and presently available benefit to the public.

D. 112 P1 - Written Description, Best Mode, Enablement
Disclosure is Quid Pro Quo for government to give the public the disclosure in exchange for granting a time -limited
monopoly on the invention to the patentee. Patents provided greater rights than trade secrets which ultimately may be
lost for failure to maintain secrecy of the information.

(1) ENABLEMENT - enable to make and to use commensurate w/ scope of claim
a. QUESTION OF LAW (judge decides, fed cir. reviews de novo - no deference); Except for undue
experimentation which is question of fact and where jury makes all underlying factual determinations and
judge decides (even at trial ct. level). Fed Cir. review of factual findings is for clear error.

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judge decides (even at trial ct. level). Fed Cir. review of factual findings is for clear error.
b. Assessed AT TIME OF FILING
c. TEST - PHOSITA….
1) Must be able to make and use w/o undue experimentation
2) How much experimentation to enable is undue?
a) Should be commensurate w/ scope of the claim (Wands factors) meaning scope of claims must
bear "reasonable correlation" to the scope of enablement described in the spec to PHOSITA. (In
RE FISHER)
b) POLICY: Goal is to put public in "possession" of the invention by providing PHOTISTA with how to
make/use it. Only fair that applicant must seek right to exclude commensurate with inventive
contribution as disclosed. BALANCE: Too much exclusion, and resulting disincline to conduct
follow-on research in this area; Patent so narrow (pertains only to specific embodiments
mentioned) it encourages imitation w/ only minor change and patent of no economic value.
c) WANDS FACTORS - analyzed by USPTO during ex parte (for only one party) prosecution of patent
app and during litigation challenging validity. In latter, decided by jury as underlying facts for
judge to make legal decision.
i) Quantity of experimentation necessary
ii) Amount of direction or guidance presented
iii) Presence or absence of working examples - simple specific, illustrative instruction for how
to make/use
One. Working - results of experiments / tests actually performed
Two. Prophetic - written in future tense and suggest how to go about test in future; based
on notion that some applications of known techniques so predictable that they can be
"prophesied" by PHOSITA.
iv) Nature of the invention
v) State of the prior art
vi) Relative skill of those in art
vii) Predictability or unpredictability of the art - look at elements of invention rather than whole
and decide...
One. Predictable = mechanical / electrical; based on well understood laws of physics, etc.;
adequate description of 1 embodiment, easy to predict how others made/used
Two. Unpredictable = chemistry /biotech ; minor change in physical structure makes major
change in function/property; thus must provide greater degree of info on make/use
viii) Breadth of the claims
d. Different than enablement for anticipation for prior art (see that section). If you can't enable, the public
doesn't have it.
e. Common Attacks against enablement:
1) Doesn't work (inoperable, undue experimentation) - did not experiment enough to get breadth
JANSSEN v. TEVA(method for treating Alzheimer's disease with galanthamine) Held results from
patent's proposed animal tests (Prophetic example) could not be used to establish enablement b/c they
were not available at the time of the application. Further, if patent claim fails to meet the utility
requirement because is not useful or operative, then it also fails to meet the how -to-use aspect of the
enablement requirement. Rare for a patent to be invalidated on grounds of utility during litigation.
2) Unbound limits - undue breadth or too broad for what was achieved
IN RE FISHER (ACTH w/ potency 1.11 to 2.3 for treating arthritis and pathological conditions in humans)
held the preparation of ACTH having potencies much greater than 2.3 not enabled, and the claimed
recitations of potency of "at least 1" render the claims insufficiently supported. POLICY: Okay to
dominate the future patentable inventions of others where based in some way on inventor's teachings
(i.e., any improvements are made possible by his work); however, not okay to achieve dominance by
claims that are insufficiently supported b/c includes all such compositions w/ potency greater than 1.0
including future compositions having potencies far in excess of those obtainable from his teachings plus
ordinary skill.
a) Potency v. Purity - if 75% pure okay to treat humans - should be able to get 75-100% b/c natural
upper (upper bound) limit. Potency is different in this regard.
3) Genus/ species issue - find 2 acids, do you get all acids or just the two found. How many species must be
disclosed to get the genus / generic claim?
IN RE WANDS (methods for the immunoassay of HBsAg by using high-affinity IgM monoclonal
antibodies) held no undue experimentation because experiments carried out three times and were
successful each time in making at least one antibody that satisfied all of the claim limitations. Boils
down to is it "fairly in play" meaning is it fair and should one be expected to teach that (see In re Fisher
Policy argument).
Common argument for patentee: once you found one , routine to find the others.
4) Too many inoperable embodiments (some work, but not enough work)

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4) Too many inoperable embodiments (some work, but not enough work)
AMGEN v. CHUGAI PHARMACEUTICAL CO. (broad claims covered all possible DNA sequences that
would encode w/ amino acid sequence possessing property to increase production of red blood cells)
held invalid b/c number of claimed DNA encoding sequences could be enormous and it is insufficient to
support broad claim by having made the gene and handful of analogs whose activity is not clearly
ascertained. Decision based heavily on the unpredictability of the art and the court noted that after five
years of experimentation, Amgen was still unable to specify which analogs have the biological
properties set forth in the broad claim.
5) Nascent and After-Arising Technology - claims later asserted to cover embodiments of invention that
were not in existence when patent application was filed (ex. Invention of LCD monitor should it extend
to holographic displays). Enabling disclosure must provide a specific and useful teaching b/c PHOSITA
has little to no knowledge independent from the patentee's instruction. Runs into undue
experimentation and inventor possession at time of filing (written description) issues if not. Also see
112 P 2 for definiteness below.

(2) WRITTEN DESCRIPTION - ensures claims amended or added after filing date have adequate support (explicit or
implicit) in written description of originally filed application. (traditional view) POLICY: guards against overreaching
of inventors (see Univ. of Rochester below).
a. QUESTION OF FACT (jury decides) - deferential standard of review by Fed Cir.
b. Assessed as of FILING DATE from prospective of PHOSITA
c. TEST: To PHOSITA..
1) Does it show that an invention is there? "possession of the invention at the time of filing"
2) Claim by claim - what is defined as invention in the claims?
Note: patents issue w/ claims of different filing dates. Later app gests 1st app filing date if it meets
112(1) otherwise claim gets later date.
3) CONSIDERATIONS:
a) obviously art - recognized equivalents are not prohibited + considered w/I scope of inventor's
possession
b) Need not be in words
VAS-CATH v. MAHURKAR (Catheter w/ double tubes of diameters w/I specified range of ratios)
held drawings in earlier filed design patent app provided adequate written description despite
showing only one particular ratio cited in utility patent claims. Expert testimony showed PHOSITA
viewing drawings know on2ly certain diameter ratios would work.
d. ARISES in
1) amendment of old application, new claims added to pending app
2) priority claim in new application (see VAS-CATH above)
3) Interference - where issue is support for a count in spec of one of more parties
4) Un- amended originally filed claims (new development)
THE GENTRY GALLERY, INC v. THE BERKLINE CORP. (dual reclining chairs facing same direction in
sectional w/ console for controls) Held broad claims not supported by written description b/c inventor
was not in possession of "other locations of controls" at filing. Provided for only minor variation in
location (top, side, front) and only discernible purpose for console was to house controls.
UNIVERSITY OF ROCHESTER v. G.D. Searle & Co. (inhibition of PGHS-2 in humans) Held failed to
describe compounds or molecules that would inhibit, pathway only identified. POLICY: writ description
teaches as "quid pro quo" for excluding public from practice of invention for limited time.
5) GENUS / SPECIES - how many representative # do they need to meet requirement? Ex. Could one get
mammalian if not in possession of human (they have monkey, giraffe, etc?)
REGENTS OF UNIVERSITY OF CALIFORNIA v. ELI LILY CO. (claimed microorganism containing cDNA
sequence for rat insulin and gave example stating generally how to obtain human cDNA sequence
which(differs from rat version by 12 out of 300+ DNA base pairs) Held PHOSITA can not visualize or
recognize the identity of members of the genus and a sufficient description of a genus requires
disclosure of either a representative number of species falling within scope of the genus or structural
features common to the members of the genus so that PHOSITA can recognize members of the genus.
(Sounds like enablement!!) Note: Could get genus if can show not product of nature/isolation cDNA
species; if can't get CDNA then can't claim species.
ARIAD PHARMACEUTICALS, INC. v. ELI LILY & CO. (regulation of gene expression) held level of detail
required in written description varies depending on nature and scope of the claims and complexity and
predictability of the relevant technology. When a patent claims a genus by its function or result the
spec must recite sufficient materials to accomplish that function.

(3) BEST MODE - enablement plus requirement is an obligation to disclose the best way known to inventor as of filing
date of "carrying out the invention."

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(3)
date of "carrying out the invention."
a. QUESTION OF FACT (jury decides - clear and convincing evidence needed)
b. Assessed a TIME OF FILING
c. TEST (2 parts):
1) Subjective: Did inventor have best mode (preferred embodiment) at time of filing? (inventor state of
mind)
GLAXO INC. v. NOVOPHARM LTD. (specific crystalline form of ranitidine hydrochloride useful for ulcers)
ct held best mode requirement satisfied b/c inventor could not be held for responsible for best mode
contemplated by assignee company. The best mode belongs to inventor; if congress wanted it
differently then the they would change the statute to broaden from inventor. Beware of inequitable
conduct.
2) Objective: Assuming best mode exists, does the disclosure enable PHOSITA to practice the best
mode? (same as enablement… make and use the best mode of invention w/o undue experimentation)
CHEMCAST CORP. v. ARCO INDUS. (grommet for sealing openings in sheet metal panels) held b/c
patent never disclosed how to make and use claimed grommet with proprietary R-477 inventor
preferred and instead broadly stated materials w/ hardness of 70 shore plus as suitable then best mode
not enabled. Inventor did not know proprietary formula for R-477 (material essential not just
production detail) so obligated to disclose specific supplier and trade name of material.
SPECTRA-PHYSICS, INC. v. COHERENT, INC. (improved laser in which the discharge tube had copper
cups to help conduct heat) invalidated patents b/c described soldering or brazing as way to attach cups
to discharge tube, but did not describe best mode for doing so as brazing with copper-silver
composition in tightly-controlled braze cycle. Coherent argued braze cycle unique to its ovens and
meaningless to others with different ovens, but this did not overcome ct's finding .
d. POLICY: restrains inventors from applying for patents while concealing from public preferred embodiments of
their inventions. Disclosure of best mode puts PHOSITA in commercially competitive position with holder of
expired patent. Most foreign countries do not have best mode requirement.
e. Considerations:
1) How to disclose - sometimes referred to as "preferred embodiment" but not required to point it out
RANDOMEX, INC. v. SCOPUS CORP. (portable apparatus for cleaning disk packs; no claim on cleaning
solution) indiscriminate listing of best mode along with other modes okay and did not violate best mode
requirement b/c invention neither added nor claimed to add anything to the prior art respecting
cleaning fluid. DISSENT: May run afoul of best mode obligation if best mode is listed indiscriminately
among so many other possibilities as to result in "burial" or effective concealment. POLICY:
Concealment problematic whether intentional or not.
2) Scope of enablement in comparison to scope of the claims - runs foul when failure to disclose aspects
of making and using the claimed invention where the undisclosed matter "materially affected"
properties of claimed invention.
CHRISTIANSON v. COLT CORP. (parts and mechanics of certain M16 rifles) best mode known to inventor
is mass production but held one does not have to enable trade secrets to comply with disclosure of best
mode b/c mass production is not invention; only disclosure of claimed invention is required. Accuser
argued that Colt's non-disclosure of its trade secrets in patent app amounted to extension of its
exclusionary rights. In this case, mass production is merely a production detail and therefore its
disclosure is not needed for carrying out the invention.
APPLIED MEDICAL RESOURCES v. U.S. SURGICAL CORP. (trocar seal technology with seal limitations and
preference for certain type of material for seal) Asserted failure to disclose preferred lubricant for seal,
but here lubricant plays no role in functioning of the invention claimed. Obligation to disclose
nonclaimed elements only when necessary to the operation or to carry out the invention to which the
patent is directed. Where invention relates only to a part of a device applicant is not required to
disclose a nonclaimed element necessary to operation of the overall device, but not necessary to
operation of invention to which patent is directed.

E. 112 P 2 - Definiteness - a claim must "particularly point out and distinctly claim" the subject matter of invention
(1) QUESTION OF LAW (often decided in Markman hearings during claim construction)
(2) POLICY: Need to know what patent covers to not infringe it
(3) TEST: Would PHOSITA understand what is claimed?
a. Claims read in light of written description, would reasonably give notice to PHOSITS of the scope of the
patentee's right to exclude others
b. After patent issues, statements by inventor about what she intended or understood claimed language to be
are irrelevant
(4) Considerations:
a. How definite should it be to PHOSITA? - as accurate as subject matter permits and satisfies policy

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(4) Considerations:
a. How definite should it be to PHOSITA? - as accurate as subject matter permits and satisfies policy
ORTHOKINETICS, INC. v. TRAVEL SAFETY CHAIRS, INC. (portable folding wheelchair for kids easily installed
and removed from car seat) dimensions of chair to be altered to make of car so applicant claim recited "...is so
dimensioned as to…." and accused alleged invariability dimensions as indefinite under 112(2). Held so long as
"accurate as the subject matter permits" and PHOSITSA could reasonably determine if particular chair
infringed claim, then sufficiently definite. No requirement to list dimensions to fit into all automobiles in the
patent or its claims (patent not production spec).
b. Adjectives like "substantially" and "about" -- not uncommon in usage
STANDARD OIL CO. v. AMERICAN CYANAMID CO. (catalytic process for acrylamide, a precursor for
compounds used in environmental apps and industry) term "partially soluble" not so clear in spec but
established in industry, but expert testimony showed difference between "slightly soluble" and "partially
soluble" as not interchangeable. Ct. held indefinite b/c term to vague to past muster. Ct. noted own
lexicographer rule that applicant can make up and define new words to describe invention, but here the
words were not defined in patent which would have made all the difference.
c. Errors in claims - sometimes obvious typo renders indefinite when (think specific DNA sequence)
d. Antecedent Basis
e. Difficult to see how a claim that literally encompassed technology not yet in existence could satisfy the
statutory requirement for claims in 112 (2)

F. NOVELTY AND LOSS OF RIGHT - 35 U.S.C. 102 - Novelty = a,e,g; Statutory bar= b,c,d; Sui Generis = f
(1) Burden of Proof - USPTO must negate a presumption of novelty / party attacking validity of patent has burden of
persuasion to overcome statutory novelty presumption
(2) POLICY - We do not permit withdrawal by a patent applicant of technology already in public's possession.
(3) Definitions:
a. Anticipation - when one or more novelty provisions under 102 is triggered, the invention is anticipated
b. Novelty v. loss of right - Loss of right means patent may be lost even though the invention is technically, novel.
Subsections b, c & d are loss of right.
c. Invention date - USPTO: presumed filing date = invention date by constructive RTP, unless applicant atedates
(swears behind) a 102 (a) or (e) reference / Litigation: must connect conception w/ RTP by reasonable
diligence
d. Critical date - one year prior to the applicant's filing date for the purposes of 102(b) and (d)
e. Actual v. constructive RTP - Construction of physical embodiment that works for intended purpose v. patent
app claiming invention has been filed with USPTO
f. Antedating (swearing behind) - applicant can submit affidavit or declaration of prior invention to establish
that she invented subject matter of a rejected claim prior to the effective date of the 102 (a) or (e) prior art
reference. Must establish either by (1) showing actual RTP prior to effective date or (2) conception prior to
effect date coupled with due diligence up to actual RTP or filing date of patent app.

(4) NOVELTY / LOSS OF RIGHT TEST (2 part):

a. PART 1 OF TEST: Does it anticipate? (another 2 step test)
1) STEP ONE: to evidence anticipation of claimed invention under 102, either...
STRICT IDENTITY RULE: explicit disclosure of elements in reference
a) TEST: single prior art reference must disclose (explicitly or inherently) every element of that
invention, arranged as in the claim
i) Interpret limitation
ii) Apply and see if it is there
b) Example: widget comprising A attached to B by C. Claim not anticipated by two prior art
references A attached to by D and second showing D is equivalent to C. This may be obvious (103)
but it is novel.
OR
ANTICIPATE BY INHERENCY: If disclosure of individual elements not explicit, it can be inherent and gap
in reference may be filled with recourse to evidence extrinsic to the reference.
a) TEST: Must be certain that missing descriptive matter is necessarily present in thing described in
reference AND that it would be so recognized by PHOSITA
EXAMPLE: claimed container structure with plurality of plastic ribs that are hollow compared to
prior art reference of container with plastic ribs made by conventional blow molding techniques.
no explicit disclosure of hollowness of ribs in prior art. Anticipates if extrinsic evidence can show
that ribs made by this method would necessarily be hollow.
IN RE ROBERTSON (diaper w/ fastening mechanism for disposal) reasoning one of the fastening
means in the prior art could also operate as a third fastening means to close the diaper for

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means in the prior art could also operate as a third fastening means to close the diaper for
disposal as claimed in app in question is insufficient for inherency b/c inherency requires that the
prior art disclosed or extrinsic evidence make clear the third fastening means was "necessarily"
present, and would be so recognized by PHOSITA .
IN RE SCHREIBER (conical popcorn container that dispensed only a few kernels at shake of
package) anticipated by Swiss patent (prior art) on conical dispensing top for dispensing oil from a
can b/c prior art did not inherently lack the functionality defined limitations recited in the claim
and nothing in the prior art suggested oil was the only use.
b) CONSIDERATIONS:
One. ACCIDENTAL ANTICIPATION - Single, appreciated prior uses and prior uses that were a
consistent result of that which was intended, regardless of appreciation so long as the
involved product in issue is known…, are anticipatory.
IN RE SEABORG (new transuranic element Americium) although trace amounts
produced in Fermi reactor (prior art), it was not detected or identified as such , and
thus the prior art does not anticipate.
NOTE: Could argue claim doesn't cover trace amounts in transient form - not
"necessarily present", but (forget inherency) can't remove running of reactor
from prior art.
TILGHAM v. PROCTOR (new process for breaking down animal fat into glycerin and
free fat acids for candles and soaps) no anticipation from lubrication of steam engine
lubricated with fat b/c breakdown of acid accidental and not realized (what was made
or how it was made) by PHOSITA.
Two. NO RECOGNITION REQUIRED of the inherent disclosure by PHOSITA in the prior art at
the time prior art is created - Fed. Cir.
SCHERING CORP. v. GENEVA PHARMACEUTICALS, INC. (DCL as metabolite in patient's
body) Description of method that if done then inherently produces claimed material
NOTE: Distinguish Tilghman by did not show conclusively that claimed process
occurred in prior art. Prof. Lowrie: Tilgham bad law; can't remove from prior art
2) STEP TWO: ENABLEMENT STANDARD - quality of description - Prior art must provide an enabling
description of current claimed invention to anticipate.
a) ISSUE OF FACT
b) TEST: Whether PHOSITSA can take prior art description and combine with own knowledge in the
art so as to possess the invention?
Example 1: If Star Trek teleporter patented, did the movie anticipate. Not enabled, so did not
remove from public's hands.
Example 2: Inventor files claiming new chemical compound X and prior art reference describes
only chemical formula for X but does not describe how to make X, the reference does not
anticipate because it is not enabling.
c) CONSIDERATIONS
i) Need not be actually made to satisfy the enablement requirement
Example: For public use or things being sold (like Aspirin) in public's hands so anticipates
even if public doesn't know how to make it. For printed publication, does not anticipate
unless enabled.
ii) USE OR UTILITY NOT REQUIRED
IN RE HAFNER (new chemical compositions) for which applicant could not claim the benefit
of an earlier German filing date b/c a disclosure lacking specific, substantial utility or how to
use is adequate to anticipate a claim to either the product or the process, but is not
sufficient to support the allowance of such claim under 112.
iii) Differences between 112 enablement
112 102
Patent can fail if not enabled Description alone w/o utility will anticipate
Must be commensurate w/ claim scope Printed pub w/I range will anticipate
Law Fact
Wands factors Wand factors w/ scope of claim don't apply

3) CONSIDERATIONS
i) NEW USE OF OLD PRODUCT RULE - cannot patent old products b/c discover new use
IN RE CRUCIFEROUS SPROUT PATENT LITIGATION (johns Hopkins researches discovered
cruciferous sprouts rich in glucosinolates to fight cancer and try to patent new use of old
product) anticipated b/c describe a process for germinating sprouts from certain seeds and

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harvesting sprouts as a food product which as a process was done long b4 patent
application. POLICY: Broccoli farmers should not wake up and find that new patent bars
them from what they've done for years.
NOTE: new process patents sometimes granted for old products, but process patents
subservient to product patents b/c product patents cover all uses (even unforeseen
uses). User of process will need to obtain license from product patent holder.
ii) Non-informing Products
iii) Markush Groups - list of things not of same class (chemicals by structural formula) but
where swapping things from list results in same asserted utility; members of group can be
so unrelated and diverse that a prior art reference anticipating the claim w/ respect to one
of the members would not render the claim obvious under 103.
iv) GENUS / SPECIES RULE: species anticipates genus, but genus does not necessarily anticipate
species. Why? b/c the genus as a whole cannot be new if one or more of its species are is
old.
Ex. the prior art reference (say a nail for fastening) is considered anticipatory and prevents
applicant from obtaining the generic claim (a fastening mechanism) ; Conversely, if the prior
art reference is the fastening mechanism, unless it expressly or inherently includes a nail,
there is no anticipation b/c strict identity rule not met.
Note: latter may be grounds for obviousness rejection which can be overcome if
applicant can show some difference in structure/function of nail v. other species in
the genus or unexpected result that flows from selection of nail species.

b. PART 2 OF TEST: Is it prior art?

1) Is it 102 a or 102 b?
a) WHERE?
i) Anywhere - patented or described in printed pub (both).
ii) US - knowledge or use (102 a), public use or on sale (102 b).
iii) POLICY: Personal activities (knowledge/use/sale) in foreign country harder to disseminate to
US public then printed materials like pubs and patents. Search costs too great for US citizens
to find knowledge /use abroad.
b) WHO?
i) Under 102 a must involve act by someone other than applicant;
ii) 102(b) can be by anyone. An inventor's own work can only be use against him as prior art if
it constitutes a 102(b) bar.
c) WHEN?
i) B4 invention for 102 (a) and
ii) over 1 year prior to filing for 102 b (critical date)
d) CONSIDERATIONS for 102 a and 102 b -
What is printed publication for prior art purposes? - sufficiently accessible to the public
interested in this particular technology (interested public could obtain info if they wanted to)
i) JOCKMUS v. LEVITON (issued patent alleged anticipated by picture of lamp in shape of
candle w/o words in a commercial catalogue)found anticipated b/c catalogue distributed
generally to a trade is a publication and likely to go direct to those whose interests make
them likely to observe and remember whatever it may contain that is new and useful. Also
no rule that figures can't be anticipation of mechanical inventions.
ii) IN RE HALL (Single copy of doctoral thesis properly cataloged in the collection of German
University library open to public) thesis was sufficiently accessible at least to the public
interested in the art ("public accessibility")
a) IN RE BAYER (Masters thesis submitted to university library but not yet indexed and
placed in the public catalogue) not pub b/c could only be found by one having been
informed of its existence by the faculty committee and not by means of the
customary research aids available in the library and probability of public knowledge of
content virtually nil.
b) IN RE CRONYN (three undergraduate theses describing invention made available in
main library of college and library of chemistry department but not indexed or
cataloged)such "availability" not sufficient to make them accessible to the public b/c
listing titles of thesis on index cards (and not theses themselves) by author in a
shoebox is not indexed or cataloged in a meaningful way since only research aid was
the student's name which bears no relationship to title of paper.
c) NORTHERN TELECOM, INC. v. DATAPOINT CORP. (four reports about military
computer system housed in a corporate library) not pub b/c although not under
security classification, access to the library was restricted to authorized persons of the

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security classification, access to the library was restricted to authorized persons of the
company.
iii) IN RE KLOPFENSTEIN (Academic conference poster presentation on display three days but
not reproduced or distributed)distribution or indexing not required in this case to be
sufficiently accessible to public b/c presentation had been made publicly accessible to large
numbers of viewers experienced in the art with no stated expectation that information
would not be copied or reproduced.
FACTORS: (QUESTION OF FACT)
a) Length of time of display
b) Expertise of target audience
c) Existence (or lack thereof) of reasonable expectation of no copying
d) Simplicity or ease to copy
NOTE: entirely oral presentation w/ no slides or handouts, probably not; transient display of
slides accompanying oral presentation, maybe not; slides with six copies handed out, yes -
MIT v. AB Fortia

2) 102 a - Novelty - B4 invention: known or used by others in US; patented or printed publication in US or
abroad
a) KNOWN or USED BY OTHERS - to anticipate, prior knowledge or use of an invention by others in
this country must have been knowledge or use that was accessible (not done secretly) to the
public
i) KNOWN
NATIONAL TRACTOR PULLERS ASS'N v. WATKINS (Weighting device for tractor pulling
sleds) alleged earlier drawings of the device on the underside of a kitchen tablecloth that
were never printed or otherwise published and never reduced to practice are not prior art
b/c "to be known" under 102(a) constitutes prior public knowledge which is reasonable
accessible to public and is not satisfied by knowledge of a single person or a few persons
working together.
ii) USED
ROSAIRE v. BAROID SALES DIVISION, NATIONAL LEAD CO. (prospecting for oil or other
hydrocarbons) whether invention used extensively in the field (drilling holes, etc.) without
any deliberate attempt at concealment or effort to exclude the public or instructions of
secrecy to employees performing work and suspended to examine data for further testing
in different geological area is failed experiment. prior art b/c the program was not
suspended to test worth of method but to examine data produced by use of method
involved and work was done openly in ordinary course of activity for company.
W.L. GORE & ASSOCIATES v. GARLOCK INC. (prior use by another of a machine conforming
to elements of Gore's claim) the nonsecret use of a claimed process in the usual course of
producing articles for commercial purposes is a public use. POLICY: if not then patent could
issue and stop the first inventor from continuing to practice her invention. Note: Here use
was kept secret -- see on sale bar under 102b.
b) PATENTED ANYWHERE
REEVES BROS. v. U.S. LAMINCHING CORP. (lamination of polyurethane foam to fabric by use of
flame heat and improvement to method and apparatus for doing so) Gebrauchsmuster (GM)
issued in Germany alleged to anticipate but it is patent not a publication. Where a foreign utility
model qualifies only as "patented" prior art, then it may be used only for what it claims not for
what is disclosed in their specifications.

3) 102 b - Statutory Bars - over 1 year prior to filing: patented or printed publication in US or abroad; in
public use / on sale in US
a) POLICY:
i) Must not remove from public inventions freely available through prolonged public use or
sales activity
ii) Prompt, widespread disclosure desirable so inventor must file promptly or loose right
iii) Prevent commercially exploiting invention substantially beyond statutory period (17-18
years)
iv) To give inventor grace period to evaluate invention for marketability
b) Grace period or safe harbor - one year time period between critical date and filing date during
which invention may be patented, described in printed pub, in public use, on sale, without
triggering 102 b and a loss of right to patent.
c) PUBLIC USE - any use by a person other than the inventor who is under no limitation, restriction
or obligation of secrecy to the inventor. Note: inventors own acts can trigger bar too
i) TEST: Did inventor keep control (no intent to abandon or dedicate to public) of invention?

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i) TEST: Did inventor keep control (no intent to abandon or dedicate to public) of invention?
EGBERT v. LIPPMANN (improved women's corset worn by inventor's intimate friend) held
b/c inventor gave (or sold) to another to be used w/o restriction or injunction of secrecy
and it was so use, then that use is public even though the use and knowledge may be
confined to one person.
MOLECULON RESEARCH CORP. v. CBS, INC. (inventor of Rubik's cube puzzle showed paper
mock-up to friends at graduate school and wooden mock-up to employer) held not given
over to free and unrestricted use by others b/c inventor at all times retained control over
puzzle's use, used it privately for own enjoyment, and never allowed others to use it in a
place or time when no legitimate expectation of privacy and confidentiality.
ii) Considerations
a) Secret use that is commercial in nature is also barred.
b) EXPERIMENTAL USE NEGATION -use of an invention "only by way of experiment" that
is pursued with bona fide intent of testing the qualities of the invention. doctrine
negation of, rather than as exception to 102(b) bar.
CITY OF ELIZABETH v. AMERICAN NICHOLSON PAVEMENT CO. (tested method of
paving streets using wooden blocks in a checkerboard arrangement by paving well-
traveled road in Boston) Despite fact inventor did not file a patent application
claiming the invention for six years after starting the test, held valid b/c invention was
of the type that could not be satisfactorily tested anywhere besides a public place like
a road and evidence showed bona fide intention to test invention and that invention
kept under inventor's control at all times.
Distinguish w/ Egbert (corset) - not under hi control, getting benefit and not
trying to improve/test, no experimental use after reduction to practice
BAXTER INTERNATIONAL v. COBE LABORATORIES, INC. (sealess centrifuge for
separating blood into its components designed by fellow scientist was used by
another scientist in experiments in lab) public use and not experimental b/c lack of
effort to maintain invention as confidential coupled with free flow of visitors to lab
who observed invention in use and who were under not duty of confidentiality.

d) ON SALE BAR - sold or offered for sale in U.S. more than one year prior to filing
i) QUESTION OF LAW with underlying facts
ii) TEST (2 part):
a) Must be subject of a "commercial offer" for sale --- one which could be made into
binding contract by simple acceptance (assuming consideration)
b) Must be ready for patenting
i) Already RTP or
ii) At least reduced to drawings (or written description that would enable PHOSITA
to practice the invention) Note: application must be in
PFAFF v. WELLS ELECTRONICS, INC. (computer chip socket idea marketed commercially
before reducing to practice) on sale bar applies when two conditions are met b4 the critical
date: 1) must be subject of commercial offer for sale (here purchase order suffices) AND 2)
invention must be ready for patenting either by proof of RTP b4 critical date or by proof
that prior to critical date, inventor had prepared drawing or descriptions sufficient to enable
PHOSITS to practice invention (here drawings given to manufacturer suffice). POLICY:
Inventor must not exploit invention commercially after ready for patenting; he must be
content with secrecy (trade secret) or legal monopoly not both.
iii) CONSIDERATIONS - Ambigous offer/ patented item not for sale
W.L. GORE & ASSOCIATES v. GARLOCK INC. (process patent for rapidly stretching teflon
allegedly infringed and defendant raises activity of thirdparty as defense) third party built
unpatented machine which stretched teflon into tape. Machine was sold to another
company under orders to keep machine workings and know-how secret; said Company sold
tape produced by secret machine. Held tape for sell not whatever process was used in
producing it and no evidence that public could learned claimed process by examining tape.
MAHURKAR c. IMPRA, INC. (improved double lumen catheter licensed prior to critical date
to company) held no on sale bar despite company's prototype being a RTP b/c licensee
company completed sham sale to satisfy terms of license agreement which did not result in
commericialization or place invention in public domain.

4) 102 c - Abandonment - rarely seen today b/c an affirmative action of the inventor (the only way to
trigger this bar) also triggers a 102 b bar. …. More… see guide

5) 102 d - Foreign Patenting - first patented or caused to be patented in foreign country prior to U.S filing

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5) 102 d - Foreign Patenting - first patented or caused to be patented in foreign country prior to U.S filing
date more than one year prior...
a) Bar triggered when:
i) Inventor files app in foreign country
ii) Files app in US more than one year later
iii) Foreign patent issues before US filing (claims are directed to same invention in US app)
b) POLICY: promotes prompt entry into US patent system once inventor has filed in foreign country
c) Rarely see today, but may arise in Geschmauchmusters (GM) and other foreign patent-like rights
granted if inventor delays in seeking US patent protection. See

6) 102 e - Anticipation by Description in another's patent or published App -described in patent filed in
US by another b4 invention thereof by applicant
a) TEST - Whether previous disclosure made it impossible for later applicant to claim invention at a
later date?
ALEXANDER MILBORN CO. v. DAVIS-BOURNOVILEE CO. (improvement in welding and cutting
apparatus) Not first inventor b/c another earlier patent disclosed but did not claim invention.
Rationale: the patentee must be the first inventor, why treat published patent different then if
disclosed in periodical? Obviously one in not first inventor if somebody else has made a complete
and adequate description of thing claimed b4 earliest moment which alleged inventor can carry
his invention back.
b) CONSIDERATION for FOREIGN PRIORITY - in cases where previously filed foreign application on
same invention establishes priority date of U.S. app, the real not established US filing date is used
for 102e purposes

7) 102 f - Derivation and Inventorship (p. 437) - did not herself invent the subject matter
a) STANDARD OF PROOF - charge of derivation requires proof of prior conception by another;
allegations of conception require corroboration
i) Corroboration of witness testimony to invalidate a patent - clear and convincing
ii) Patent not yet issued - derivation proved by preponderance of evidence and corroboration
needed
b) TEST: No one is entitled to a patent if the invention was derived from someone else's work done
anywhere

8) 102 g - Anticipation by prior invention in U.S.
a) QUESTION OF LAW predicated on factual findings (priority, conception, and RTP); Appellate ct
reviews w/o deference.
b) BURDENS OF PROOF
i) In interference w/ app filed after date of the patent; jr. party must show priority by clear
and convincing evidence
ii) In interference w/ app antedates (prior to date of) patent issuance date, jr. party must show
priority by preponderance of evidence
c) DEFINITIONS
i) Conception
ii) Diligence (fact question)
iii) RTP
iv) Corroboration
v) Abandoned, suppressed, concealed
d) DETERMINING PRIORITY
i) TEST: Priority of invention goes to the first party to RTP unless ...
a) the other party can show it was the first to conceive the invention AND
b) that it exercised reasonable diligence in later RTP.
ii) CONSIDERATIONS
a) SUPPRESSION OR CONCEALMENT - must be deliberate or intentional, but a lengthy
delay btwn making invention and filing can be inferred as concealment
PEELER v. MILLER (improved hydraulic fluid designed to reduce cavitation) discovered
during interference that despite earlier reduction to practice inventor's assignee
company was not diligent to file a ready to file application. ct. deemed invention
suppressed under 102g b/c proof of specific intent to suppress is not necessary where
time between actual RTP and filing is unreasonable and company's lack of justification
for delay is inadequate to overcome inference of suppression.
Note: inference of suppression or concealment can be over come with evidence that
the reason for delay was to perfect the invention. If delay is caused by working on
improvements not reflected in final app, then delay will not be excused.

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improvements not reflected in final app, then delay will not be excused.
b) RESUMED EFFORTS AFTER LONG DELAY - No authority that would stop a jr. party from
relying on resumed activities, following a long delay (during which suppression was
inferred), to predate a sr. party's earliest date. Resumed activity must be considered
as evidence of priority of invention and if combined with further diligence to file, then
such evidence can be used to establish an earlier priority date to the sr. party's RTP.
POLICY: Any "too long" delay would mean a loss of priority even if terminated by
extensive and productive work done long before the newcomer entered the field.
The concern is to establish and uphold first to invent policy.
c) CONCEPTION - must encompass all limitations of the claimed invention AND is
complete only when idea so clearly defined in inventor's mind that only ordinary skill,
no experimentation need to RTP.
BURROUGHS WELCOME?? (discussed with Baxter about conception)
d) CORROBORATION - Inventor's testimony must be corroborated as inventive facts
must not rest alone on testimonial evidence from inventor himself. Rule of reason
test applied to and all pertinent evidence reviewed to determine credibility of
inventor's story.
BROWN v. BARBACID (Barbacid patent and Brown app both claim assay for
identifying new anti-cancer compounds) Lab notebook and autoradiographs of first
experiment of jr party did not include use of test substrate, an element of the count;
thus, party did not satisfy every limitation of the count. Inventor testimony on second
experiment was not corroborated to show actual RTP; however, physical evidence
does not require corroboration and lab notebooks, autoradio-graphs) showed 2nd
experiment contained all of the limitations of the count.

G. 103 (a) NON-OBVIOUSNESS - Not patentable if difference between prior art under 102 and subject matter of invention
would be obvious to PHOSITA at time invention made. The way in which invention created (long painstaking toiling v.
eureka moment) cannot negate patentability. 103 (b) biotech process, 103 (c) "in -house" prior art
(1) QUESTION OF LAW, w/ underlying facts
(2) STANDARD OF REVIEW
a. USPTO - considerable deference is given for its factual findings on Graham factors and are overturned ONLY IF
unsupported by substantial evidence of whether reasonable fact finder could have arrived at decision
b. DISTRICT CT
1) BENCH TRIAL - clearly erroneous - definite & firm conviction that mistake committed (given less
deference than below)
2) JURY - deferential substantial evidence - reasonable jury could make findings based on evidence on
record
(3) POLICY: No patent for invention created with no more ingenuity than that possessed by ordinary mechanic in field
w/ nothing more
(4) TEST: Whether invention as a whole would have been obvious to PHOSITA at time of invention?
GRAHAM v. JOHN DEERE (shock -absorber for plow shank) must be answered in any non-obvious determination
whether in USPTO or court.

GRAHAM FACTORS for analyzing non-obviousness:
a. Level of ordinary skill in the art - established by both parties usually by expert testimony
1) Proponent of validity, usually patentee, wants low level of skill (so non -obvious to a lot of people)
2) Challenger of validity wants high level
3) Factors
a) Education level of typical worker in field
b) Type of problems encountered & previous solutions
c) How quickly new innovation occurs in technology
d) Sophistication of technology
b. Scope & content of prior art
1) Whether a reference may be considered prior art for 102 purposes?
a) Must qualify as prior art under 102 (doesn't have to anticipate)
b) All types of 102 prior art available even though some 102 (e), (g), (F) could not have been known
to PHOSITA at time of invention (temporarily secret prior art)
c. Differences between claimed invention and prior art
1) POLICY: must be identifiable difference or would anticipate under 102
2) TEST: Whether differences would have been obvious to PHOSITA?
d. Secondary factors indicative of non-obviousness - focuses on impact of invention on marketplace rather than

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d. Secondary factors indicative of non-obviousness - focuses on impact of invention on marketplace rather than
on technical merits - where present must be considered (Fed. Cir.)
1) Types of evidence showing: Failure of others to solve problem, commercial success of invention,
existence of long felt need for invention, licensing & acquiescence of others to patent at issue,
unexpected advantage, and copying of invention
2) Nexus requirement - evidence presented only successful if a sufficient causal relationship exists
between commercial success and features claimed
ARKIE LURES INC. v. GENE LAROW TACKLE, INC. (salt onto plastic lure for fish) held non-obvious b/c
scope & content of prior art cautioned away from invention (no motivation to combine salt & plastic)
and years of not combining in field combined with secondary consideration (as important as other
factors) showing strong commercial recognition
HYBRITECH, INC. v. MONOCLONAL ANTIBODIES INC. (Process that employed high affinity monoclonal
antibodies in sandwich assay) held non-obvious where commercially successful and unexpected
advantage that it worked b/c nexus (causal relationship) needed for evidence of commercial success
inferred when patentee shows both commercial success and the product/method that is successful is
the invention clamed and disclosed in patent.
IN RE WINSLOW (process / method using jet of air to open top plastic bag in stack of bags) held obvious
despite need in market b/c PHOSITA is presumed to have available to her (to know) all pertinent prior
art and the combination of them here is obvious.
a) Watch for dramatically reduced prices, licenses from litigation b/c less expensive, novelty
feature - color, etc. as real reasons for commercial success
(5) CONSIDERATIONS
a. Can't COMBINE PRIOR ART unless PHOTISTA would see reason to do so
1) POLICY: rigorous attention to TSM guards against improper use of hindsight in a non -obviosness analysis
as such hindsight reasoning discounts value of combination in a new way to achieve new result -- often
the very definition of invention
2) TSM TEST - must be some motivation / suggestion / or teaching in prior art that would suggest making
claimed combination
Note: motivation can come from nature of problem itself especially w/ simpler mechanical
technologies
3) KSR "Reason" Test - whether combination obvious to PHOSITA?
KSR v. TELEFLEX (gas pedal & electronic sensor) taught rigid application of TSM test can lead to false
outcome. Use Graham plus reason/motivation to combine and consider below elements.
b. PREDICTABLE v. UNEXPECTED RESULTS - combination of familiar elements according to known methods
obvious when yields only predictable results
c. TEACHING AWAY - when prior art teaches away from combining certain known elements, successful
combination more likely not obvious
d. OBVIOUS TO TRY - design need or market pressure to try know options If it leads to anticipated success then
obvious to try is obvious.

INEQUITABLE CONDUCT
A. INEQUITABLE CONDUCT - failure to disclose material info w/ intent to deceive or mislead PTO (raised as defense)
B. ISSUE OF LAW, except materiality and intent are factual issues subject to clearly erroneous (definite and firm conviction
error has occurred) standard of review
C. BURDEN OF PROOF - party asserting defense of unenforceability must establish each underlying factor of materiality and
intent by clear and convincing evidence.
D. POLICY: Patent system relies on conscientious disclosure, so it necessarily metes harsh punishment when duty is
breached -- total unenforceability of the entire patent. Because applicants have obvious incentive to not disclose
damaging information, thus anything less the unenforceability, would invite nondisclosure.
E. TEST:
(1) INTENT - whether applicant had intent to mislead or deceive the PTO?
a. MAY BE INFERRED from surrounding circumstances (e.g., patent applicant knew or should have know that
withheld information would be material to PTO's prosecution) Why? b/c direct evidence of intent or proof of
deliberate scheming is rarely available
KINGSDOWN MEDICAL CONSULTANTS, LTD v. HOLLISTER INC. ( device for w/ waste) wrong claims issued b/c
miscopied the claims. Such gross negligence not enough to intend to deceive. Actual intent must be shown.
BRASSLER v. STRYKER SALES CORP. (medical instruments) Associate commits I.C. b/c did not verify critical
date b4 filing date that was past and client company did not inform. All tried to sneak one by the patent
office. Ct. said studied refusal to ascertain the precise on-sale bar date, even though client tipped them off to
existence of the problem.
b. Good faith belief that claims should be narrowly construed to avoid uncited prior art will not necessarily or

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b. Good faith belief that claims should be narrowly construed to avoid uncited prior art will not necessarily or
always preclude a finding of recklessness or gross negligence in failing to cite the art
c. Gross negligence not always intent as it must be of such gravity as to warrant the inference of intent to
deceive or mislead PTO
1) Specific intent - yes
2) Deliberate indifference / willful blindness - yes
3) Reckless disregard - maybe
4) Gross negligence - maybe depends see above
5) Negligence - no

(2) MATERIALITY - Whether applicant should have known that prior art was material? information must be disclosed
when it is material to patentability
a. TEST: - Rule 1.56(b)(2)(ii)(1996) - material if "not cumulative to info already of record or being made of record
in the application, and… *i+t refutes or is inconsistent with, a position the applicant takes in: …. *a+sserting an
argument of patentability."
J.P. STEVENS & CO. v. LEXTEX, LTD. (reprocessing "torque stretch" yarns) where none of the prior art cited
during prosecution taught a key element of the claimed process invention, and where both the references at
issue taught the key element; applicant should have know the references would be important to PTO,
especially in light of (1) claim rejection based on one reference and (2) licenses taken under another reference
and foreign app rejected based on it.
b. TREND: EXPANSION OF MATERIALITY - Duty to disclose is not limited to prior art; applicant must disclose any
material info especially that which a reasonable examiner would likely consider to determine whether to
allow an application to issue as a patent
CRITIKON, INC. v. BECTON DICKINSON VASCUALR ACCESS, INC. (safety IV catheters designed to protect
healthcare workers from needle pricks) Where patent for reissue involved in litigation in which defenses
raised against validity of the patent , or charges of fraud or inequitable conduct, or violation of duty to
disclose, such litigation must be brought before PTO's attention as such defenses would normally be material
to patentability. Defendant knew or should have known reference and litigation was material. Given
materiality and failure to offer good faith explanation of nondisclosure, an intent to mislead must be inferred.
(3) BALANCING - Ct. must balance intent and materiality and determine as matter of law whether there was inequitable
conduct.
a. High degree of materiality and high degree of intent -- compelling I.C. conclusion
F. Examples:
(1) Failure to note acts that may constitute public use and on sale bars
(2) False affidavits and declarations relating to dates of invention
(3) Presentation of "doctored" data in affidavits and declarations relating to comparative testing and embodiment
examples
(4) Knowingly taking advantage of examiner error

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Basics of Patent Law Outline

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