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Rutgers University, Newark School of Law
Teschner, Michael H.

Case Information

Fact Summary

Rule of Law

Class 2 – 8/24

Inventorship and Ownership

p. 234-238, 362-366

Hess v. Advanced Cardiovascular


Engineer brought action against patentee, seeking to be named as coinventor of patent covering balloon angioplasty catheter. The District Court ruled that engineer was not a coinventor. Engineer appealed.

(1) engineer was required to establish coinventorship by clear and convincing evidence,

(2) contributions by Hess were known to the art and available on the marketplace;

(3) Hess was seen as a skilled salesman

(4) engineer failed to establish that he was coinventor of patent.

Ethicon v. US Surgical Corp


Patentee and his exclusive licensee brought action alleging infringement of patent for surgical trocar. Alleged coinventor intervened. After alleged infringer’s motion to correct inventorship by adding intervener as coinventor was granted, the District Court dismissed action and plaintiffs appealed.

(1) intervener was coinventor as to two patent claims;

(2) corroborating evidence established joint inventorship;

(3) coinventor’s testimony was admissible despite alleged bias;

(4) coinventor licensed all of his rights as joint owner to alleged infringer;

(5) coinventor could not release alleged infringer from liability for past accrued damages to plaintiff licensee; but

(6) coinventor’s refusal to join suit required dismissal of suit

DDB Techs v. MLB Adv. Media


Owner of patents, who was assigned inventors’ interests in the patents relating to a method for generating a computer simulation of a live event for display on a viewer’s computer and a method to search for certain information about a live event, brought infringement action against competitor. The District Court dismissed suit for lack of subject matter jurisdiction based on interpretation of one of the inventor’s employment agreement regarding his assignment of the patents to employer.

(1) employment agreement contained express assignment of rights in future inventions, and therefore an assignment of patent under the agreement would have occurred automatically;

(2) patent owner was not entitled to a jury trial on jurisdictional issue of standing; but

(3) district court abused its discretion in denying patent owner’s discovery requests.

Class 3 – 8/29

Utility / Operability – 35 USC 101

p. 62-65

In re Schwarz


Petitioner’s application for his invention relating to cold fusion was rejected by examiner for lack of operability or utility under 35 U.S.C. 101 and lack of enablement under 35 U.S.C. 112, para. 1. The USPTO BPAI affirmed the rejection of petitioner’s application. Petitioner appealed.

The PTO provided substantial evidence that a POSA would reasonably doubt the asserted utility and operability of cold fusion. The petitioner submitted no evidence of operability sufficient to overcome reasonable doubt, as petitioner did not establish that the concept of the invention could have been practiced by a POSA at the time of the invention without undue experimentation.

Fregeau v. Massinghoff


Patent applicant brought civil action to review rejection of application by the USPTO BPAI. The District Court dismissed action and applicant appealed.

(1) district court was required to apply the clearly erroneous standard to the Board of Appeals’ determination, subject to de novo fact-finding upon admission of new evidence, and

(2) district court did not clearly err in finding inoperative an invention for enhancing the flavor of beverages through use of a magnetic field.


p. 54-55

Egyptian Goddess v. Swisa

Design Patents

Owner of patent on nail buffer brought action against competitor, alleging infringement of design patent. Competitor filed counterclaim seeking declaratory judgment on various theories, including noninfringement. The District Court granted summary judgment of noninfringement. Owner appealed. The Court of Appeals affirmed.

(1) test for design patent infringement is whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design; abrogating previous cases;

(2) preferable course will be for a district court not to attempt to “construe” a design patent claim by providing a detailed verbal description of the claimed design;

(3) accused nail buffer, which was rectangular in shape and had a hollow tube, a generally square cross-section, and raised buffing pads on all four sides, did not infringe patented nail buffer, which had same general shape, but had raised buffing pads on only three sides.

International Seaway Trading Corp v. Walgreens Corp

Design patents

Owner of design patents for clogs brought infringement action against competitors. The District Court granted summary judgment for competitors. Owner appealed.

(1) ordinary observer test was the sole test for anticipation;

(2) district court was required to consider the designs’ insoles under the ordinary observer test in determining whether patents were anticipated;

(3) fact issue precluded summary judgment on competitors’ claim of anticipation and obviousness.

Class 4 – 8/31

Best Mode and 35 USC 112, 4th and 6th Paragraphs

p. 196-200, 205-208, 208-212

Dana Corp v. IPC Ltd.

Best Mode


Holder of patent for valve stem seals brought action for infringement, and the District Court entered judgment finding patent to be valid, enforceable, and willfully infringed. The patent was directed to a seal to prevent oil leakage. The seal required a fluoride treatment that made it work much better than any other mode, but the surface fluoride treatment was not disclosed in the patent.

(1) statutory best mode requirement could not be satisfied by reference to level of skill in art, and

The best mode requirement entails a comparison of the facts known to the inventor regarding the invention at the time the application was filed and the disclosure in the application. Here, fluoride surface treatment was the best mode contemplated by the inventor, and because the patent disclosure did not satisfy the best mode requirement, appellants’ motion should have been granted.

Ajinomoto Co. v. ITC

Best Mode

Patentee brought complaint against alleged infringers alleging a violation of the Tariff Act in the importation and sale of certain lysine feed products. The ITC found the patents to be invalid because the application didn’t disclose the preferred embodiment of the host strain. Failure to disclose this information was a clear violation of the best mode requirement. Also, applicant fudged data in the patent and there was an issue of inequitable conduct.

(1) best mode requirement obligated patentee to disclose preferred host strains;

(2) patentee could not satisfy requirement by disclosing a non-preferred strain

(3) necessary to distinguish between actual examples and prophetic examples.

Pfizer v. Ranbaxy

112, 4th paragraph

Owner of patents for anti-cholesterol drug sued proposed manufacturer of generic version for infringement. The District Court entered judgment in favor of owner, and defendant appealed.

Claim 1 – Acid of A, or Lactone of A, or Salt of the Acid or the Lactone

Claim 2 – compound of claim 1 which is the acid of A (proper)

Claim6 – The hemi-calcium salt of the compound of claim 2 (improper).

(1) formula disclosed in patent included the enantiomeric trans-forms of the disclosed compounds;

(2) statements made during prosecution of foreign counterparts to patent were irrelevant to claim construction;

(3) dependent claim of a drug patent that did not incorpora

vided by the inventor;

(G) The existence of working examples; and

(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.

Liebel-Flarsheim v. Medrad

Enablement / WD

Owner of patents for methods of injecting fluids into patients during medical procedures sued competitor for infringement. The District Court granted summary judgment of noninfringement, and owner appealed. The Court of Appeals reversed and remanded. On remand, the District Court granted competitor’s motion for summary judgment that four of patents were invalid, granted patent owner’s motion for summary judgment that competitor infringed patents and that inventorship designation on patents was correct, and held that inequitable conduct counterclaim was moot. Patent owner appealed and competitor cross-appealed.

(1) claims of patents directed to a front-loading fluid injector were invalid for lack of enablement;

(2) prior art anticipated claims of syringe-sensing patents;

(3) The specification does not describe an injector with a disposable syringe without a pressure jacket. In fact, the specification teaches away from such an invention;

(4) where the specification teaches against a purported aspect of an invention, such a teaching “is itself evidence that at least a significant amount of experimentation would have been necessary to practice the claimed invention.”

(5) The inventors admitted that they tried unsuccessfully to produce a pressure-jacketless system and that producing such a system would have required more experimentation and testing. The inventors decided not to pursue such a system because it was “too risky.”

Ariad Pharama v. Eli Lilly

Enablement / WD

Owners of patent claiming methods comprising the single step of reducing Nuclear Factor Kappa B (NF-kB) activity in eukaryotic cells brought infringement action against competitor. After a jury found infringement, and concluded that the asserted claims were not invalid for anticipation, lack of enablement, or lack of written description, the District Court denied competitor’s motion for judgment as a matter of law (JMOL), and a final judgment was entered. Competitor appealed. The Court of Appeals affirmed in part and reversed in part, and patentees petitioned for rehearing en banc.

(1) statute requiring that patent specification contain a written description of the invention contained a written description requirement separate from enablement, and

(2) patent was invalid for failure to provide adequate written description.

The “truism” that the claims are part of the original specification does not mean that the invention has been sufficiently described merely by reciting it in an original claim. For example, a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.