Patent Law Outline – Fall 2010
Professor Brenda Simon
Purpose: “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.” Article I, Section 8, US Constitution.
“From their inception, the federal patent laws have embodied a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy.” — Bonito Boats v. Thunder Craft.
Overall Structure:
I. What is required of a valid patent? A valid patent must claim subject matter that is: Pg. 1
A. Within one of the statutory categories (§101) Pg. 1
B. Useful (§101) Pg. 3
C. Novel (§102) Pg. 4
D. Not barred by the prior art (§102) Pg. 8
E. Nonobvious over the prior art (§103) Pg. 12
F. Adequately disclosed and precisely claimed (§112) Pg. 15
II. What is required to enforce a patent in court? In order to enforce a patent, it must be: Pg. 25
A. Valid Pg. 1-24
B. Construed, and found infringed literally or under the doctrine of equivalents Pg. 25
C. The rights can’t have been lost, in prosecution or due to misleading behavior or delay Pg. 31
D. Entitling the patentee to an injunction or money damages Pg. 35
III. Trade Secrets Pg. 36
IV. Definitions Pg. 36
I. What is required of a valid patent? A valid patent must claim subject matter that is:
A. Within one of the statutory categories (§101) à Patentable Subject Matter
a. Inventions Patentable
i. 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 therefore, subject to the conditions and requirements of this title. 35 U.S.C. §101
b. Defined
i. A “process” is a series of acts which are performed upon subject matter to produce a given result.
1. Process means process, art or method, and includes a new use of known process, machine, manufacture, composition of matter, or material. 35 U.S.C. §100(b).
ii. A “machine” means any apparatus.
iii. An article of “manufacture” is a broad term that can capture almost any useful technology.
iv. A “composition of matter” means synthesized chemical compounds and composite articles.
c. What subject matter NOT patentable?
i. Natural law.
ii. Phenomena of nature.
1. NOTE “isolated and purified” exception.
iii. Abstract principles.
d. Biosciences Inventions
i. The bacteria have “markedly different characteristics” from those in nature, because Chakrabarty transformed the natural bacteria into his own handiwork. Diamond v. Chakrabarty.
ii. In rejecting the application the court said that the “use in combination does not improve in any ways their natural functioning.” Funk Brothers.
iii. DNA/Gene Patents:
1. A new and useful purified and isolated DNA compound described by the sequence of base (A, T, C, G) has been eligible for patenting, subject to satisfying the other criteria for patentability.
2. Patent on a gene covers the isolated and purified gene, but does not cover the gene as it occurs in nature.
3. ACLU v. Myriad
a. Currently on appeal to Fed. Cir. Ct. of Appeals.
b. Seeks to invalidate gene patents arguing that genes should not be patentable and that the patentee’s use of patent rights to limit scientific research on the genes violates constitutional First Amendment protections.
e. Software & Business Methods
i. *The modern test of the bounds of the broad term “process” has been in relation to computer software.*
ii. *Patentability of business methods confirmed by State Street and later dramatically limited by Bilski.*
iii. *35 U.S.C. 273(b): The patentability of business methods.
1. “It shall be a defense to an action for infringement . . . with respect to any subject matter that would otherwise infringe one or more claims for a [business] method in the patent being asserted against a person, if such person had, acting in good faith, actually reduced the subject matter to practice at least 1 year before the effective filing date of such patent, and commercially used the subject matter before the effective filing date of such patent.”
iv. “Claims are not limited to any particular art of technology, to any particular apparatus or machinery, or to any particular end use.” A scientific trust, mathematical expression is not patentable, but a novel and useful structure created with the aid and knowledge of scientific trust is. Not patentable because practically speaking, would wholly preempt others’ use of the algorithm. Gottschalk v. Benson
v. If a claim containing a mathematical formula applies that formula in a structure or process which performs a function the patent laws were designed to protect (e.g., transforming an article to a different state or thing), then the claim satisfies §101. Patentable because the results in physical transformation of an article to a different state or thing. Diamond v. Diehr.
1. Insignificant post-solution activity won’t make something patentable.
2. Doctrine of Magic Words
a. Draft to get around §101 limitations by emphasizing transformation.
vi. Patentable as business methods because has a “useful, concrete, tangible result.” State Street.
1. Post-State Street there was an “opening of the floodgates” with numerous filings for business methods.
vii. The invention is an abstract idea and therefore unpatentable. Also, the court held that the Machine Transformation Test is not the sole test, only an investigatory tool. Bilski
viii. How do you determine if a process is patentable?
1. Does it pre-empt a fundamental principal (like an abstract idea or law of nature)? One way to answer this is to apply the Machine Transformation Test.
a. Machine Transformation Test – Process is patent-eligible if:
i. (1) it is tied to a particular machine or apparatus, or
ii. (2) It transforms a particular article into a different state or thing.”
b. Court stated that there may be other ways to answer besides the Machine-or-Transformation Test, but doesn’t tell us what those ways are.
c. Claim “must impose meaningful limits.” Bilski (Fed. Cir.)
d. Transformation
i. Three types; transformation of: physical objects, signals/data that represent physical objects, abstract concepts.
ii. Most to least sufficiently transformative.
e. The “Machine-or-Transformation”
i. Can’t constitute mere insignificant post-solution activity.
ii. Can’t preempt all uses of the process.
iii. Must impose a meaningful limitation on the claim scope.
ix. Prometheus v. Mayo
1. Pending at Fed. Cir. in light of Bilski.
2. Method of optimizing therapeutic efficacy for Tx of an immune mediated gastrointestinal disorder.
B. Useful (§101)
a. Inventions Patentable
i. 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 therefore, subject to the conditions and requirements of this title. 35 U.S.C. §101
b. 3 Types of Utility
i. Operable Utility: It has to work.
ii. Moral Utility: Must produce some social benefit.
iii. Specific and Substantial Utility: Presently useful; not so vague as to be meaningless.
c. Generally
i. Invention invalid for lack of utility because P did not demonstrate his patented invention was better than inventions previously in use. Commercial success shows utility. Lowell v. Lewis.
ii. The fact that one produc
herein establishes, to the extent permitted in section 104, that
i. Before such person’s invention thereof the invention was
ii. Made by such other inventor and
iii. Not abandoned, suppressed, or concealed
b. OR (2)
i. Before such person’s invention thereof, the invention was
ii. Made in this country by another inventor who
iii. Had not abandoned, suppressed, or concealed it.
c. (3) In determining priority of invention under this subsection, there shall be considered not only
i. The respective dates of conception and reduction to practice of the invention, but also
ii. The reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other
2. 4 Rules of §102(g)
a. 1) The first to reduce the invention to practice usually has priority.
b. 2) Filing = Constructive RTP
c. Two Exceptions
d. 3) The first to conceive may prevail over the first to reduce to practice if the first to conceive was diligent from a time prior to the other inventor’s conception through to her own reduction to practice (either actual or constructive).
i. Legal requirement is for reasonable and continuous diligence toward RTP. Gould v. Schawlow.
e. 4) Any reduction to practice that has been “abandoned, suppressed, or concealed” is disregarded.
i. There are 2 Types of suppression or concealment:
1. Active; or
2. Legal inference of S/or/C based on unreasonable delay in filing or making the invention publicly known.
a. A party is deemed S/or/C “if, within a reasonable time after completion, no steps are taken to make the invention publicly know.” Apotex USA v. Merck.
3. ***Standard for A/S/C is lower than that for Diligence.
3. Conception
a. Five-element Test that must be met for the ultimately claimed invention
i. Formation
ii. In the inventor’s mind
iii. Of a definite and permanent idea
1. In sufficient detail
iv. Of the complete and operative invention
v. As it is thereafter applied in practice.
b. Inventor must present proof showing possession or knowledge of each feature of the count and communicated to a corroborating witness in sufficient detail to enable a PHOSITA
i. One needs proof (documentation) that one thought about it.
4. Actual Reduction to Practice (aRTP)
a. Elements:
i. Physically building or performing.
ii. Testing sufficient to demonstrate
1. Whether the invention works (is suitable) for its intended purpose
a. Occurs when the last test needed to show operability is completed & the inventor understood the test to be successful.
2. Sufficiently of testing is evaluated on a continuum.
a. Less stringent for “simple” inventions (e.g. chairs) and more stringent for “complex” inventions (e.g. radar)
b. The quality and quantity of testing required to show that invention works for its intended purpose is that “[t]esting need not show utility beyond a possibility of failure, but only utility beyond a probability of failure.” Scott v. Finney.
iii. aRTP must be corroborated
