#17618 - Patent Law Short Outline - Patent Law

Patent Law

Fall 2019

Short Outline

Chapter 1: Introduction 4

Chapter 2: Patentable Subject Matter 5

Introduction to the Patent Act 5

Natural Laws and Natural Principles 6

Natural Products and Natural Phenomena 7

Abstract Ideas 7

Chapter 3: Utility 8

Substantial, Practical, and Specific Utility 9

Chapter 4: Disclosure and Enablement 10

Enablement 11

The Written Description Requirement 12

Definite Claims 15

Chapter 5: Novelty under the AIA: 35 USC 102 15

Prior Art under AIA 102 (a): General 16

One-Time-Period Prior Art in 102(a)(1) 17

“Described in a Printed Publication” 17

“Patented” 17

“In Public Use” 18

“On Sale” 19

“Otherwise Available to the Public” 21

Two-Time-Period Prior Art in 102(a)(2): Published US Patent Applications and Issued U.S. Patents 21

“Grace Period” Exceptions under 102(b) 21

102(b)(1): Exceptions for One-Time-Period Art 23

102(b)(2): Exceptions for Two-Time-Period Art 23

The Standard for Anticipation 25

The Identity Requirement 25

Accidental, Unknown and Inherent Anticipations 26

The Enablement Standard for Anticipation 27

Chapter 6: Novelty under Pre-AIA Law 28

Section 102(b): The General Statutory Bars 29

Section 102(c ) and (d): Rare Statutory Bars 30

Novelty (References Tested by Invention Date) 30

Section 102(a): Publicly Available Prior Art - similar to AIA 31

Section 102(e ): Disclosures in US Patent Applications 31

Dates of Invention and Priority 32

Section 102(g)(1): Determining Priority in Interferences 33

Section 102(g)(2) and Priority of Invention Outside Interferences 36

Calculation of Invention Dates Outside of Interferences 37

Section 102(f): Derivation from Another 38

Chapter 7: Nonobviousness 39

Section 103 and the Basic Graham Inquiry 39

Subtests of Nonobviousness 41

Obviousness at the Federal Circuit after KSR 42

Objective Indicia in Obviousness Cases 44

Commercial Success in Obviousness Cases 45

Causal “Nexus” Required between Secondary Considerations and Claimed Invention 45

The Scope and Content of the Prior Art 46

The Winslow Tableau 46

“Prior Art” for Purposes of 103 46

The Nonanalogous Arts Limitation 50

Chapter 8: Infringement 50

Interpreting Claims 51

Basic Doctrine 51

Equivalents and Means-Plus-Function Claims 54

Joint and Divided Infringement 55

Procedural Aspects of Claim Interpretation 56

The Doctrine of Equivalents 57

The Experimental Use “Exception” 59

Indirect Infringement 60

Plant Patents 62

Design Patents 64

Infringement 64

Claiming 66

Novelty & Nonobviousness 68

Ornamentality 70

Patent Remedies 73

Injunctive Relief : Permanent Injunctions 74

Reasonable Royalties Damages 75

Lost Profits 77

Non-infringing Substitutes 78

The Market Share Rule 79

Obtaining the Infringer’s Profits under Design Patent Law 80

Obtaining Lost Profits from Overseas Activities 81

Attorney Fees in Exceptional Cases 81

Enhanced Damages & Willful Infringement 82

1. Historical Overview of Patent Law

   1. United States

      1. Article I, Section 8 authorizes Congress “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”

   2. 35 USC 261: Patents have “the attributes of personal property” but are not property themselves

2. Patent Claim Drafting Exercises

   1. Transition

      1. ‘Open’ Claims:“Comprising elements A,B,C” = claim covers any embodiment of the invention having the elements A,B,C and any additional elements

      2. “Closed” Claims: “Consisting of elements A,B,C” means that a variant that includes A,B,C & D doesn’t infringe

      3. In-between format: “Consisting Essentially Of”

         1. Could cover a variant on the elements only if the added element did NOT make the variant essentially different from the claimed invention (so those with insignificant additions are in the scope, those with significant modifications are not)

   2. The Body

      1. Three Formal Requirements for Claim Drafting

         1. Entire claim must be stated in the form of a single sentence

         2. Claim must set forth how each element interacts with at least one other element

         3. Any internal references must be clear

      2. Independent and Dependent Claims

      3. Means-Plus-Function Claims: “Means for doing X” - covers the corresponding structure, material, or acts described in the specification and equivalents (it covers many but not all means)

         1. Can only be used in combo with at least one other element

3. Overview of Patent Rights and Patent Process

   1. Patent Process

      1. Apply

      2. PTO examiner negotiates with you

      3. Afterwards, you can seek a reissue (if you think claims were too narrow) or anyone can seek a reexamination

         1. 3 AIA proceedings that allow patent challenges to challenge validity: Inter Partes Review, Post-Grant Review, Covered Business-Method

         2. No presumption of validity here

      4. All decisions made during examination are subject to review by PTAB (and then by Fed Cir or commencing a civil action in DC against director of PTO)

   2. Judicial Actions: Infringement and Declaratory Judgment Suits

      1. Once patent has been issued, lawsuits can arise in two ways

         1. Patentee brings infringement action against accused infringer

         2. Potential infringer files a declaratory judgment action against patentees (to challenge validity of patent rather than waiting to be sued by patentee)

            1. Can file this when there is a “reasonable apprehension of a lawsuit”

      2. Patents enjoy presumption of validity here

3. General

   1. Section 101: "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."

   2. Patentability issues treated as threshold issues to be decided by PTO and courts early in their processes

4. Diamond v. Chakrabarty (1980)

   1. Issue: whether a live, human-made microorganism is patentable subject matter under 101

   2. Patentee could claim the bacteria because the distinction is not between living and nonliving but is between products of nature vs. man-made (bacteria was man-made)

   3. Court holds that 101 uses broad terms, and thus Congress contemplated the laws would have broad scope. But there are limits:

      1. The three judicially created limits

         1. Laws of nature

         2. Physical phenomena

         3. Abstract ideas

   4. Something doesn’t necessarily need to be explicitly declared patentable by Congress to be patentable

   5. Whether a subject matter is patentable cannot depend on whether it would be good policy or not

   6. Dissent

5. Bilski v. Kappos (2010)

   1. Method for hedging risks put into math formula

   2. REJECTS Machine or transformation test: which says that an invention is only a process if (1) it is tied to a particular machine or apparatus or (2) it transforms a particular article into a different state or thing

      1. DENIED: Court can’t read into patent laws limitations (must read ordinary meaning), and adopting the MOT test violates that (because there’s no ordinary meaning of process that requires MoT).

      2. MoT can be a TOOL but is not sole test

   3. REJECTS Categorical exclusion of business methods patents

      1. DENIED: Method is within the definition of “process”

   4. Plurality: There needs to be a high bar set for business methods (they raise special problems of vagueness and suspect validity)

   5. NOT patentable because it is an attempt to patent abstract ideas (and its application to different markets)

      1. Diehr- while an abstract idea, law of nature, or mathematical formula can’t be patented, an application of a law of nature, or mathematical formula to a known structure or process may well be deserving of patent protection (need to consider the invention as a whole)

      2. Flook- can’t circumvent an unpatentable thing by just limiting it to a particular environment (basically just providing the formula bc everything else was known)

6. Notes

   1. Per se categorical rules rejected for open-ended standards

   2. Within 3 excluded categories- courts freely cite cases from one exclusion while talking about the others

7. Mayo Collab. Services v. Prometheus Labs, Inc.

   1. Claim: give drug, measure metabolites, use that to determine if high/low and adjust. Process wasn’t patentable (because steps added were conventional & it was just a common-sense application of the law of nature)

   2. Though things that contain laws of nature/natural phenomena/abstract ideas might be okay, because all patents at some level rest on these, to transform an unpatentable law of nature into a patent-eligible application, you need to do more than just “apply it” or add conventional steps. Process must contain some inventive concept sufficient to ensure that it is more than just a law of nature

      1. More than just adding in an “administering” step

      2. When all elements are added together, there must be more than just the law of nature + already known things

8. Diehr: used a known math equation to determine when to open molding press (patent eligible because the steps themselves integrated into the process were not conventional or in use)

9. Neilson- application of natural laws (patented a furnace that was designed to take advantage of a newly discovered natural principle; wasn’t patenting the principle itself)

10. Notes

    1. Mayo applies for the scope of all three exclusions

    2. Policy for exclusions: no inventive part, monopolizing tools and inhibiting further discovery by typing up laws of nature etc.

    3. Mayo Framework:

       1. Step one: Determine whether the claims at issue are directed to one of the patent-ineligible concepts (the three exceptions)

       2. Step two: examine the elements of the claim to...