PATENT LAW, HEJLEK, FALL 2012
Claim Construction
Phillips v. AWH Corp.
o The customary meaning of a claim term is the meaning that the term would have to POSITA (not judge or lay person) in question at the time of invention, ie filing date.
o Claims are given broadest reasonable construction in view of the Spec as interpreted by POSA and POSA is deemed to read the claim term not only in the context of the particular claims in which the disputed term appears, but in the context of the entire patent, including the spec.
o Intrinsic vs. Extrinsic evidence- look at it all but intrinsic is more reliable than extrinsic.
o The spec may reveal a special definition different from a definition it would otherwise possess. In such cases, inventor’s lexicography governs.
o Subject matter disclosed but not claimed in a pat application is dedicated to the public.
o fine line b/w reading a claim in light of the spec, and reading a limitation into the claim from the spec.
o Role of accused device in interpreting the claim- Don’t exclude a preferred embodiment
– Markman – claim interpretation is Q of law reviewed de novo. Given the determinative nature of claim construction, most Cts opt to hold a pretrial Markman hearing., typically followed by the “winning” party filing summary judgment motions on validity and/or infringement.
– Whether the particular interpretation encompasses the infringing invention is a question of fact.
– open-ended transition word “comprising”/containing/including – raises presumption that the list of elements in nonexclusive.
– “Consisting of”/”is” is closed (that is, the invention is limited to no more and no fewer than the listed limitations). Thus claim of widget consisting of A, B, and C will not read on a device that contains A, B, C, and D. Moreover, “consisting essentially of” has been interpreted to exclude “ingredients that would materially affect the basic and novel characteristics of the claimed composition.”- Includes A, B, C – does ABCD infringe? Determine if D is material and determine if D would materially affect the basic and novel characteristics of the claimed composition. Yet another phrase “composed of” has been construed to be synonymous with either “consisting of” or “consisting essentially of” depending upon the written disclosure. AFG Indus v. Cardinal IG (Fed Cir 2001)
Patentable Subject Matter
(1) 35 U.S.C. 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.
o “or discovers” – isolated and purified genes; what about “as found in nature”? – Myriad
§ “Any” means err on the side of inclusiveness. J. Kennedy in Bilski wrote sec. 101 should err on the side of inclusiveness b/c “times change”&“technology & other innovations progress in unexpected ways.”
· Diamond v. Chakrabarty BioTechnology/Biochemistry is based on this case (“Anything under the sun that is made by man, constitutes potential subject matter for a patent.”)
(2) Cant patent “laws of nature, physical phenomena, and abstract ideas.” This includes laws or products of nature. Patents are not awarded for academic theories, no matter how groundbreaking or necessary to the later patentable inventions of others. (Ariad Pharms v. Eli Lilly)
(3) Bilski v. Kappos (2010)- (Business method patent) “machine or transformation test” is NOT the sole test for patent eligibility of a process under sec. 101. But it is an important clue – process must be (1) tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.
(4) Prometheus v. Mayo (2012)- The only thing new here was knowing the optimal dose. Subtract out the abstract idea- is there anything patent eligible? Cant just state a natural law and then say “go apply it” – the claims inform a relevant audience about certain laws of nature (i.e. what is a toxic dose and what isn’t); any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. Also simply adding “postsolution components” does not make the concept patentable.
(5) Mayo – the “prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.
(6) Association for Molecular Pathology v. Myriad (2012)- isolating is not the same as purifying. Both DNA and cDNA is patent eligible b/c it is markedly different—have a distinctive chemical identity and nature—from molecules that exist in nature.
Overall – Mayo- there was no “inventive concept” in the claimed method. Here it shifted from Flook (assume it’s old and see if anything is new/inventive), Diehr says (don't dissect), Bilski (punts), and Mayo comes back and says put the old stuff to the side and see if there is an “inventive concept”. Does it add nothing more to the laws of nature than what was already known? Looking for something that is inventive beyond the law of nature or the formula.
Definiteness Requirement (35 USC 112 para. 2)
o “The Spec shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”
o demands patentee to draft clear and distinct CLAIMS- telling you exactly what I own.
o Star Scientific v. Reynolds Tobacco) – Don't look at allegedly infringing product to determine whether the claim term is indefinite. Figure out first whether it’s indefinite, then decide infringement.
(1) (Datamize v. Plumtree Software) – Aesthetically pleasing
· Definiteness requires an “objective anchor”. Cant just have a purely subjective element , b/c cant distinguish from prior art and let people know what your invention is.
· Words of degree (substantially equal to or about)- is this defined in the effect? Is a range given in the spec?
· Definiteness requirement does not compel absolute clarity – just whether those terms can be given any reasonable meaning. Furthermore, a difficult issue of claim construction does not ipso facto result in a holding of indefiniteness.
(2) Athletic Alternatives v. Prince Mfg. (Fed Cir 1996): “Where there is an equal choice b/w a broader and a narrower meaning of a claim, and there is an enabling disclosure that indicates that the applicant is at least entitled to a claim having the narrower meaning, we consider the notice function of the claim to be best served by adopting the narrower meaning.”
Enablement- 112
· 35 USC 112, 1st para: The Spec shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertain, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of
ny other (3) at the time of filing; and the inventor (4) cannot conceal the best mode.
(2) (Young Dental v. Q3)- Two factual inquiries underlie the determination of whether a patent complies with the best mode requirement:
o (a) entirely subjective; one must ask whether, at the time the patent app was filed, the inventor knew of a mode of practicing the claimed invention that he considered to be better than any other. If yes, proceed to step 2.
o (b) Whether the spec adequately disclosed what the inventor contemplated as the best mode so that POSA could practice it. This is objective and depends upon the scope of the claimed invention and the level of skill in the art.
(3) Young – The best mode requirement does not apply to “production details.” Routine details are details that are apparent to one of ordinary skill in the art. An inventor need only disclose info about the best mode that would not have been apparent to POSA.
– Production details: considerations that do not relate to the quality of the claimed invention. The second type of production detail are qualitatively significant vis a vis the claimed invention, but are deemed routine, such as details of production of which those of ordinary skill in the art are aware.
Utility 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.
– Upstream vs. downstream debate: ex. biomedical research. What should be patentable?
(1) (Operability) (Swartz)(easily satisfied – ie show 1 compound out of 100 works)
– whether the claimed invention simply works. The invention doesn't have to work perfectly or be better than the prior art. The claimed invention must be “capable of being used to effect the objective proposed” (but not every objective stated in the spec must be met before operability is satisfied)
(2) Pat Applicant must show both substantial and specific utility to satisfy 101.
In Re Fisher
– you need to disclose only a single specific and substantial utility pursuant to Brenner. The 7 uses here are so general as to be meaningless; not the end point of any research effort, but are research goals/research intermediates.
o To satisfy substantial utility requirement, an asserted use must show that that claimed invention has a significant and presently available benefit to the public.
Brenner v. Manson – it is not enough simply that the process worked. (ie operable). Otherwise, might block unknown research areas. The thing you make must be useful. Take products of the process and test them.
– Concurrence/Dissent The fact that you are enabling someone to make something they wouldn't have been able to before this process is arguably sufficient for utility.
