12/8/2013 11:28:00 PM

Patent Validity
To be valid, a patent must contain patentable subject matter, have utility, have
novelty, be nonobvious, and must adequately describe and enable the invention.
Whoever invents or discovers any new and useful process, machine, manufacture,
composition of matter or any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and requirements of 35 USC.
Patentable Subject Matter
o A process is an act or series of acts/steps.
o A machine is a concrete thing, consisting of parts, or of certain devices and
combination of devices.
o A composition of matter combination of two more substances, which can
include living things under Chakrabarty.
o A manufacture is a catch all for the rest that are man-made assemblies of
previously separated components.
o Laws of nature, natural phenomena, and abstract ideas are not patentable.
However, claims that are mathematical formulas combined with a
physical component to create a new machine have been allowed.
However, claims that are diagnostic tests measuring correlations of
principles of nature have been allowed.
However, derivatives of naturally occurring items are possibly
patentable. The key is that the invention must be distinct in some
manner from the natural item; mere isolation of a unit of matter in
nature is not enough. cDNA is because the inactive portions were
removed and it does not exist in nature.
For combinations of naturally occurring items, there must be a
synergistic effect that results in an increased/different functionality.
There may be an issue for purified forms of naturally occurring items;
the focus is that there must be some modification.
Business method patents as a category is not precluded from
patentability and furthermore, the machine and transformation test
is not the sole test for determining its patentability, but a factor. They
cant be pure algorithms, essentially mathematical formulas.
Distinguishing points from abstract idea: Real world linkages
or inputs, real world impacts or outputs, and real world
products or downstream real world products or changes.
Utility
o Operational - described to be operated as claimed
o Beneficial some lawful use
o Practical useful to the public as disclosed in its current form
Novelty
o Pre-AIA
(a) First to invent
A patent is precluded if the invention was known or used in
this country OR patented or described in a printed publication
anywhere by another prior to the inventors conception date.
(e) Temp. secret PA
A patent is also precluded if the invention was described in a
patent/application that was later published filed by another
before the applicants invention date.
(f) Derivation
inventor must not have derived the claimed invention from
another source
Could utilize part of interference proceedings
Co-inventor?
A party must contribute to the conception of an
invention in order to be a co-inventor
Sufficient that a co-inventor contributed to only one
version of the claimed invention
Co-inventors must be working collaboratively on a
single project rather than sequentially on independent
projects. Insufficient:
o Testing of design features specified by another
o Creation of a reduction to practice in
accordance with an invention design specified
by another
o Management of resources or processes used in
developing an invention design or example
(g) By another
A patent is also precluded if the invention was made by
another before applicants invention date and was not
abandoned, suppressed, or concealed.
First to reduce to practice is the first to invent
o Exception: where party is first to conceive and
second to reduce to practice, that party will be
first to invent if he/she can show:
Diligent effort to reduce to practice
Extending from before the other partys
invention through RTP
Interference proceedings: triggered by two parties each
claiming the same or substantially the same invention (does
not apply to obvious inventions)
(b) Excessive delay
A patent is precluded if, more than 12 months before the U.S.
filing, the same or obvious invention was patented or
described in a printed publication anywhere or in public use or
on sale in the US.
o Post-AIA
(a)(1) First to file
A patent is precluded if the invention was patented or
described in a printed publication, in public use, on sale, or
otherwise available to the public anywhere before the
inventor's patent application filing date.
(a)(2) Temp secret PA
A patent is also precluded if the invention was described in a
patent or published patent application filed by another before
the applicants filing date.
(b)(1) Grace period
A patent is also precluded if, more than 12 months before the
U.S. filing, the same or obvious invention was disclosed by the
inventor or someone who obtained the subject matter from
the inventor.
Disclosure is anything that would have be considered
prior art in novelty and nonobviousness analysis
135 Derivation Proceedings or 291 Derivation Civil Actions
DP allowed a party filing a later patent application to prove
that earlier applicant derived the invention from another
Must be initiated w/in 1 year of issuance of patent or
publication of application
Derivative proceedings now only account for
substantially similar
Without 102(f), now there may be an issue with deriving and
then making an obvious variant
o Definitions:
Known
If the invention was already in the hands of the public in that
the invention was known in a way likely to come to broader
public attention
Pre-AIA
o Public knowledge in a foreign country was not
considered prior art (in contrast to foreign
patents and foreign printed publications)
o Foreign knowledge did not become prior art
even when brought to this country
(Westinghouse)
Post-AIA
o Public knowledge anywhere is sufficient
Used
If the invention was a method that was being practice and it
was being practiced openly and in the ordinary course of the
activities of the employer and was in a manner not subject to
legal or physical confidentiality constraints.
Described in printed publication
If the alleged prior art was a printed publication, meaning that
it was recorded in a stable, retrievable form and it was
sufficiently available/accessible to the public of interest.
Patent application/patent
US patents or applications are prior art as of their filing date.
International patents are considered prior art as of the earliest
publication date.
However, if the alleged prior art was an unpublished
patent, then it only anticipates as the subject matter
covered by the claims and it is considered prior art as
of the date the patent was obtained.
On sale
An invention is considered on sale if there was an offer to sell
and the invention was reduced to practice.
Secret commercial use by others would not be
considered on sale.
Confidential offers to assign/license would not either.
Experimental use would not be considered if the use
was for testing function features of the invention with
a good faith goal of improvement and control over the
circumstances of use and feedback to the inventor on
the results of the functions. Any sales must only be
incidental and must assist in placing the invention in a
typical use environment.
o It cannot be used to test against rivals or test
desirability in the market.
o 1-to-1 Anticipation Analysis
Anticipation occurs when any single enabling prior art reference
discloses each and every claim limitation of the invetion.
Determine prior art elements
A prior art item is deemed to disclose:
Features described or illustrated in the item so as to
enable a POSITA to recreate the features
Additional features which a POSITA would see are
necessarily present (inherent) in the prior art item
A prior art item is not deemed to disclose:
Features that are present (e.g., visible) but not
understood
Features that are necessarily present but so rarely or
insubstantially as to be effectively imperceptible
Disclosure of a single species anticipates a claimed genus
however disclosure of genus does not automatically anticipate
a single species because the species may have properties not
shared by the rest of the class
Determine patent elements: claim interpretation
Claims are interpreted how a POSITA wouldve understood it
A means-plus-function claim presumes that the element
includes both the structure and the intended means for
accomplishing something
Compare
Nonobviousness
o Even if a single prior art reference does not disclose every element of a
claimed invention, it may still be unpatentable if it is obvious in light of the
prior art. An invention is obvious when the claimed invention, as a while,
would have been obviousness to a POSITA at the time the invention was
made. This obviousness standard is to prevent trivial advances in the art.
o Graham factors
Scope of prior art
Prior art that qualifies under novelty analysis also qualify
under the nonobviousness analysis.
However, the field must have been considered pertinent to
the problem being solved by a POSITA.
Content of prior art/invention
What each has, element-wise
Difference between prior art and invention
Level of POSITA
Education level; type of technology
Missing element as improvement that would have been
obvious to a POSITA?
Combining elements of different prior art would have been
obvious to a POSITA?
A rational account of why POSITA would predict success is
sufficient to establish obviousness
Could POSITA perform the analyses needed to
transform the prior art into the claimed invention?
Approaches yield unexpected or previously unpredictable
results are more likely to be nonobvious
Not obvious to try
Secondary considerations
Commercial success
Long-felt need
Failure of others
Prior teaching-away
Enablement
o The invention must be described so that a POSITA could have full use of the
invention without substantial experimentation. A POSITA must understand
the elements of the invention and their interrelationships as well as how to
make and use the invention.
o Without substantial experimentation looks at the Wand factors:
Predictability of the art
Skill of POSITA
Quantity of the experimentation required
Guidance given
Presence of working examples
Inherent complexities of the invention
Information provided by prior art
Breath of claims and relativity to the expressed enablement
o The enablement of a particular species of a genus is not enough to claim the
entire genus.
Written Description/Definite Claims
o Specification must relate the invention content and structure to its function.
The written description should help clarify the claims when the scope of the
claims are vague.
o Terms should either have an established meaning or given a meaning in the
specifications. So long as a POSITA could have easily understood the claims,
they are considered definite.
Statutory bars
o Abandonment/Suppression
To be abandon, the party must have given no attention to efforts to
develop or complete the invention for a substantial amount of time.
To suppress, the party has taken affirmative steps to conceal the
invention for a substantial period.
o Prosecution Laches
If there was an unreasonable and unexplained delay in prosecution,
even if the applicant had complied with the rules and statutes,
prosecution laches is still a viable defense for patent validity for
patent infringement claims.
Patent Infringement
Literal Infringement
o Whoever without authority, makes, uses offers to sell, or sells any patented
invention, within the US or imports into the US any patented invention
during the term of the patent is directly infringing the patent.
o 1-to-1 analysis between claims and allegedly infringing item/process
Construe the claims
Use both intrinsic (claims, specification, and prosecution
history) and extrinsic evidence (dictionary and expert
testimony)
First courts look at the claims themselves and decide whether
its plain meaning can be discerned from the claim language. If
not, we would turn to other intrinsic evidence, such as
specification and prosecution history. An infringer can
overcome the presumption of the ordinary and customary
meaning if he can show the patentee was his own
lexicographer and distinguishes.
Apply the construed claims to the accused device or method. Go
element by element and only if every element of the properly
construed claim is found in the accused device or method (either
literally or by the DoE) may infringement exist.
Doctrine of Equivalence
An accused item is equivalent to claimed invention and
infringing if each element of the claimed invention has an
identical/equivalent element
Elements are equivalent if it performs substantially the same
function, in substantially the same way, with substantially the
same result
Limiting by Prosecution History Estoppel (PHE):
PHE indicates what the applicant gave up in
prosecution and generally cannot assert that via DOE
unless patentee can show:
o At the time of patenting
o If it was an inadvertently giving something
while trying to narrow something else that a
POSITA could not have realized to avoid giving
up, the Supreme Court has allowed that be a
defense against PHE
o Reverse Doctrine of Equivalence
Even when a complete match of claim elements of accused item
features is found, there is no infringement if the item involved is so
far changed in principle from a patented article that it performs the
same or similar function in a substantially different way.
Contributory Infringement
o When someone offers to sell, sells, imports in the US
a component of something patented, knowing that it was especially
made for use in the infringement of such a patent and also is not a
staple article suitable for substantial non-infringing use.
o Overseas Supplies from the US, intending the use of component to be
infringing if undertaking in US
a component of something patented, knowing that it was especially
made for use in the infringement of such a patent and also is not a
staple article suitable for substantial non-infringing use.
Inducing Infringement
o Party directly encouraged infringement knowing the likelihood of
infringement and infringement resulted
o Party supplies all or substantial portion of the patented invention in
uncombined form from the US in a manner as to actively induce the
combination outside the US that would have infringed if the combination
were in the US.
o Party imports in the US or offers to sell, sells or uses within the US a product
which is made by a process patented in the US. However, if the use was
noncommercial (unless there is not other adequate remedy), materially
changed by subsequent process, or because a trivial component of another
product.
Willful Infringement
o Requires that the there was an objectively high likelihood that the infringers
actions would constitute infringement and that the high risk was known or
should have been known to the infringer
o However if there is a showing of good faith belief of non-infringement based
on reliance of an opinion of counsel that the paten was invalid or their
actions wouldnt be infringing, it is a defense. However, it cannot be reliance
on a non-patent specialist or reliance on opinion based on projected conduct
and not actual conduct. Also, once that defense is invoked, defendant has
waived privilege regarding legal advice of opinion counsel. If they dont even
get counsel, the question is if that was reckless.
Damages
o Assuming there was infringement, the plaintiff is entitled to damages, either
in an injunction, lost profits, or reasonable royalty.
o Equity
Preliminary injunction
The party filing a patent infringement suit must show (1) a
reasonable likelihood of success on the merits, (2) irreparable
harm if the injunction is not granted, (3) a balance of the
hardships tipping in the favor of the party filing, and (4) a
favorable impact on the public interest.
Permanent injunction
Granted in light of (1) irreparable injury to patentee that is not
purely monetary, (2) inadequacy of remedies at law (such as
monetary damages) and the willingness to negotiate without
coming to a licensing fee does not mean monetary damages
are enough, (3) balance of hardships favoring patentee, and
(4) public interest is not disserved by the injunction
Even if denied injunction, the patent holder is still entitled to at least
royalty payments for continued infringement and the royalty would
be either based on a reasonably royalty determination or he would be
forced to sue periodically to college past damages
o Lost Profits
Lost profits are what the court finds that the patent holder would
have made but for the infringement.
Must prove Panduit factors:
The extent of demand for the patented product
The absence of noninfringing substitutes from that product
The patentees ability to meet the additional demand by
expanding manufacturing capacity
The extent of profit the patentee would have made
Must be able to separate from/calculate fixed costs
Once proven, the scope is rather expansive, lost profits from:
Defendants sales of competing unpatented goods
Get the entire value of sales of the an entire product if
can prove that the single patented component is what
caused the sale = entire market rule
Offset lowered prices resulting from infringing sales
Lost tag along sales
o Market-share Damages
If absence of acceptable, non-infringing substitutes is overly
burdensome
A patent owner may show the market share held by each competitor
and content that but for the infringement, each competitor would
have sold its market-share of the infringers sales.
o Reasonable Royalty
Reasonable royalty inquires into what the marketplace would actually
have paid for rights to the technology, bearing in mind that the
licensee has to make a profit as well.
Reasonable royalty is = Royalty Base ($) x Royalty Rate (%) ]
Royalty base = total sales value
Royalty rate is a reasonable royalty rate calculated using G-P
Georgia-Pacific factors
Other royalties patentee has received
Rate other licensees have paid for comparable patents
Nature/scope of the license of exclusivity and restrictions
Licensors establish licensing policy of how many licensees and
conditions
Commercial relationship of licensor/licensee
The effect selling one patented product that especially
promotes other non-patented products
Duration of patent
Established profitability; commercial success; current
popularity
Use after hypothetical negotiation is important too
Nature, character, benefits of patent
If only a minor part of the product
Extent that infringer had benefitted
Customary profit margin
Realizable profit distinguished from other factors such as
business risks, non-patented elements, improvements by
infringer
Expert testimony
The logic that all the infringing sales should be accounted for one way
or another is that the defendant could have been enjoined day 1 and
it would serve as a deterrent as well.
o Willful Infringement
Punitive damages
Up to treble (x3) damages
o Patent Marking
No damages awarded for infringement of product patents without
notice of patent to infringer
Notice may be via:
Patent notice on product (patent marking) or
Actual notice to infringer
Not required for process patents
o Attorneys Fees
Award of attorney fees to prevailing party available in "exceptional
cases"
Cases deemed exceptional where:
Patent holder in either patent prosecution or later patent
enforcement takes an action in bad faith that extends legal
proceedings and wastes attorney fees or
Defendant takes an action in bad faith that extends legal
proceedings and waste attorney fees
Licensing/Assignment/Ownership/Right to Sue Issues
An assignment is a transfer of ownership of a patent that effective transfer control
of the bundle of rights. However an insufficient transfer may leave the patent rights
with the inventor because title vests with the inventor first. Giving pitches does not
relinquish rights and is neither an assignment nor a sale.
A license only gives permission to do something that would otherwise be infringing.
A licensee, notwithstanding language in a license agreement, does not have standing
to sue on its own. For exclusive licensees can sue provided that have all the
substantial rights of the patent. A licensee is also free to challenge the validity of the
patents under which they are licensed.
Non-Suit Validity Challenges
Ex Parte Reexaminations
o Can be initiated by anyone demonstrating a substantial new question of
patentability regarding an issued patent based on patents or printed
publications. However, the initiating party cannot really participate and can
only reply to the applicants opening statement. However, its cheap.
Pre-AIA Inter Parte Reexaminations
o For 3
rd
parties to challenge the validity of a patent based on patents or
printed publications and could get more involved in the proceeding.
Post-AIA Post Grant Review
o Established to provide a meaningful administrative means to challenge
validity of issues patents. They are only allowed 9 months after the patent
issues. PGR allows any party to challenge the patent based on any claims that
could be raised in a DC proceeding. The proceeding would be in front of the
Patent and Trademark Appeal Board and any parallel civil suit would be
stayed.
Post-AIA Inter Parties Review
o For challenges limited to arguments based on patents or printed publications
and party must show that there is a reasonable likelihood that the request
would prevail with respect to at least one claim. The IRP includes expanded
involvement of complaining parties with limited discovery, declarations, and
hearings.
International Patents
Inbounding - Paris Convention requires signatory countries to recognize first filing
date in a signatory country as effective filing date for other applications in signatory
countries within a year
Outbounding - Effectively establish a one year buffer period for US inventors to
make decision on where to file a second wave of applications and for drafting and
filing those applications
o PCT streamlining multi-country applications
Shared search results
Shared search results and partial examination results
o European Patent Application
Unified multi-country examination; country-specific enforcement
o European Union Unitary Patent
New; single patent enforced by single Unitary Patent Court
Patent Strategies
Broadest claims have the most commercial value however are harder to patentable
since there is more prior art they might intersect
Also, if the claims are too broad, they may not be completely enabled
Even the narrowest claims however should address commercially significant features

12/8/2013 11:28:00 PM

12/8/2013 11:28:00 PM