Patent Outline

PATENT LAW OUTLINE

FALL 2012

PROF. HEJLEK

I. SECTION 112 DISCLOSURE

a. CLAIM INTERPRETATION

i. Standard:

1. How would a person of ordinary skill interpret this language? (what is semi-spherical and what does it mean to the person working in this field?)

2. Measured at TIME OF INVENTION.

ii. Types of Evidence

1. INTRINSIC – look through the body of the patent and try to interpret within its four corners/what the applicant revealed/said during prosecution.

2. EXTRINSIC – outside of the file history (what does a dictionary say what semi-spherical means)

iii. CLAIMS = each claim is a separate definition of the invention; “metes and bounds” of the patentee’s protected interest.

1. Each claim is entitled to separate analysis of validity: novelty and non-obviousness.

2. If one is invalid, doesn’t say anything about the other claims.

3. The more narrow claims are harder to invalidate, easiest are the most broad claims.

iv. Extrinsic v. Intrinsic

1. Phillips v. AWH – To interpret a claim, a court can consider BOTH. However, the patent’s claims (same claim: its definition and context of that claim/then other claims/specifications/prosecution history are THE MOST IMPORTANT to resolve what the actual term means. *Preference placed on intrinsic. Of SECONDARY importance is the EXTRINSIC evidence: Expert and inventor testimony/dictionaries and treatises.

a. Intrinsic preference:

i. What is the claim language?

ii. What do the other claims say? Claim differentiation – construed through they eyes of a person having ordinary skill in the art.

iii. Figures and descriptions of what is in the specification

iv. Prosecution history.

2. Unique concepts – The claims clearly specified TWO pieces: linear pieces and right angle corner pieces. The court said to say that linear pieces include both linear pieces and right corner pieces – redundant to recite both types of pieces. Also emphasized the importance of claim language: (right angle corner pieces v. corner pieces – which would have been ok -) and how the role of prosecution helps you look at things.

a. Claim differentiation –

i. Example:

1. Claim 1: Method of making a fruit drink beverage from a citrus fruit to express juice therefrom

2. Claim 2: Method of making fruit juice including lemons as such citrus

3. Claim 3: Oranges and grapefruits

ii. If we interpret claim to be limited to oranges and grapefruits it would produce two identical claims: 1 and 3. What it really means is that the term citrus fruit was to have broader meaning than O and GP and would permit full application of the genus. Claim 1 would be interpreted as covering a method of making a fruit drink beverage employing the steps with ANY fruit.

b. Remember the distinction between reading a claim in light of the specification v. reading a limitation into the claim from the specification.

i. Did the patentee intend to limit the specification?

ii. On the other hand, where the specification makes clear at various points that the claimed invention is narrower than the claim language may imply it’s entirely permissible and proper to limit the claims.

1. Be careful with independent v. dependent claims and limitations in the specification. Look at the overall context of the patent and if it disavows a particular way.

iii. It’s a CONCLUSION you reach based on a number of factors:

1. Prosecution history/claim differentiation/specification/intrinsic and extrinsic evidence to sort it out.

b. ENABLEMENT – PROVIDE YOUR BEST RECEIPE HOW TO MAKE AND USE THE INVENTION

i. Generally – 35 USC 112, Paragraph 1

1. WHAT IS THE FULL SCOPE OF YOUR CLAIM è WHAT YOU HAVE TO ENABLE

2. Serves two functions

a. Information dissemination (immediate value to the public)

b. Constraining claim scope (can’t claim more than is disclosed)

3. Determined as of the time the patent application was filed

a. Post-filing information cannot be used to supplement a deficient specification

b. Filing date is proof of an inventor’s latest date of invention

4. Cannot change specification even if you amend claims.

ii. ENABLEMENT REQUIREMENTS

1. Morse –

a. F – 8th claim gave Morse exclusive right to every improvement “however developed” (that was his claim language) where motive power is electric or galvanic current and the result is marking or printing at a distance

b. H – The claim is too broad and covers processes not enabled in the spec

i. A future inventor could use electric or galvanic current to write or print at a distance, yet not use any part of the process or combination set forth in the patent and still infringe

ii. A patent must enable a person of ordinary skill to practice invention not a person of the highest skill as Morse did. (to do what he did – invent all motive power required highest mechanical skill).

iii. Because he did not disclose that he invented all mechanisms for transmitting electricity, his claim 8 was too broad.

2. Wherein you do this with PLASTIC/METAL?

a. There are many different plastics/metals – did you really enable someone to do this with ALL plastic/metal?

i. Look at the scope of the claim and then the Q is what percent of the species within that broad genus can you make work?

1. If 1% è maybe NO enablement

2. If 98% è maybe OK on enablement

a. If one doesn’t work, can still meet enablement

iii. UNDUE EXPERIMENTATION

1. CL undue experimentation test —- Disclosure is sufficient if it enables a person of ordinary skill in the art to make and use the claimed invention w/o undue experimentation

a. Trial and error Ok

2. Cedarrapids v. Nordberg- Patent involved a rock crusher. Claims directed to a method to increase rock crushing (increase speed and throw). Some experimentation is ok but no undue. While this specification only gave some numbers, court ruled that persons of the skill in the art knew how to increase speed and/or throw. Optimal amount was not needed.

3. ATI v. BMW – Patent for airbag sensors. In the specification there was detailed description on mechanical parts but disclosure on electrical was merely conceptual, however, ATI wanted to claim both mechanical and electrical. In case of a new technology, unlike Cedarrapids, here there is not enough information to enable someone.

a. Factors to ascertain if undue experimentation is needed:

i. Quantity of experimentation necessary (harder when there is no starting point with electrical)

ii. Amount of direction or guidance (ATI did not give much)

iii. Presence or absence of working examples: One present in Cedarrapids, example of a 6ft crusher.

iv. Nature of invention (predictable v. non-predictable factors)

1. More info is needed with unpredictable factors

v. State of prior art – what kind of information is out there

vi. Relative skill of those in the art, MD or PhD

1. Does not weigh in fact of non-enablement just b/c they possess a high scale — it’s more likely person of ordinary skill will be enabled.

c. WRITTEN DESCRIPTION – WHAT did you actually invent?

i. Generally,

1. 112, paragraph 1 – It demands that the patent specif