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Patent
University of North Carolina School of Law
Chin, Andrew

Patent Law – Prof. A. Chin – Fall 2012
 
1. Introduction
 
 
a.  overview of the Patent Act
 
–  first-to-invent regime under the 1952 Patent Act: shift to a first-inventor-to-file regime with the AIA (Leahy-Smith America Invents Act – 2011, effective on March 16, 2013);
–  35 USC – Patent Act (1952);
–  intellectual property clause: Article 1, Section 8 Clause 8 of the US Constitution – «useful arts»;
–  «to promote the Progress of Science and Useful Arts, by securing for limited times to authors and inventors the exclusive rights to their respective writings and discoveries»;
–  sections of the Patent Act:
–  §101: statutory subject matter, utility;
–  §102: novelty and statutory bars;
–  §103: nonobviousness;
–  §112: disclosure;
–  §116: inventorship;
–  §271: infringement.
 
 
b.  the Patent System as a policy instrument
 
–  rationale of a patent system: incentive justification to create/invest, encourage disclosure of useful knowledge to the public, enable technological transactions – cf. utilitarian justification of a patent system;
–  US Patent and Trademark Office, US Board of Patent Appeals and Interferences, and US Court of Appeals for the Federal Circuit;
–  types of patent: utility patent, design patent, plant patent;
– §218: presumption of validity for any patent issued – all patents presumed valid i.e. burden of proof on the party seeking invalidity;
 
a.  Bonito Boats, Inc. v. Thunder Craft Boats (US, 1989): about preemption of state trade regulation by federal law – patent law as a federal law prerogative, state law cannot offer «patent-like» protection.
 
2. Patent Claims
 
 
a.  statutory provisions and requirements
 
–  §112: application’s requirements;
 
–  elements of a patent:
–  cover information;
–  specification: description of invention ∈ written description, enablement, best mode – «claims should be read in light of the specification but it is impermissible to read limitations from specifications into the claims» (not because a word is used in a limited way in the specification the claim is limited in the same way, doesn’t mean that the claim itself is limited to this vocabulary);
–  claims – entire scope of claim has to be novel:
–  preamble: what is the invention, generally not a source of limitation;
–  transition: relationship between the elements:
–  «comprising»: strongest, open claim, triggers any embodiment of the invention having the claimed elements and any additional elements;
–  «consisting of»: weakest, closed claim, not triggered by a variant of the claimed invention that incorporates new elements;
–  «consisting essentially of»: in between claim, triggers by variant of the invention having new element only if new element doesn’t make the variant essentially different from the claimed invention;
–  body (elements and limitations): lists elements of the invention and how they interact, all limitations have to be present for infringement;
 
–  types of claim:
–  independent claim: doesn’t rely on prior claim, stand alone;
–  dependent claim: relies on prior claim, specifies some features of invention claimed in any other claim(s) (cf. «inverted pyramid» like structure of claims);
–  process claim: «new use» claim;
–  «means plus function»: covers corresponding means as described in the specification and the equivalents thereof;
–  Jepsen claim: improvements claim.
 
–  claim requirements:
–  interpretation of claim is a legal issue (not fact issue);
–  formal requirements: entire claim must be stated in one sentence, must set forth how each element interacts with at least one other element, internal references must be clear;
–  must be broad as possible, but can’t claim prior art and can’t claim anything beyond actual discoveries of inventor.
 
–  claim requirements trigger sections: 101 (statutory subject matter), 102 (novelty and statutory bars), 103 (nonobviousness), 112 (disclosure requirements) – 101, 102 and 103 on patentability, 112 on sufficiency of disclosure.
 
 
b.  case law
 
a.   Ex parte Fressola (BPAI, 1993): prohibits a claim from incorporating by reference to the specification of the drawings («incorporation into the claims by express reference to the specification and/or drawings is not permitted except in very limited circumstances»);
 
b.  Catalina Marketing International, Inc. v. Coolsaving.com, Inc.(Fed. Cir. 2002): limiting dimension of preambular language: usually not limiting, but can be if recites structural steps understood as important to the specification (cf. philosophy that «claim should be read as a whole»).
 
3. Disclosure and Enablement – §112
 
 
–  §112: application’s requirements:
–  sub§1 – three requirements: written description, enablement, best mode – «adequate disclosure»
–  «the specification 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 pertains, 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 carrying out his invention»;
–  sub§2: additional requirement of definiteness
–  «the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention»;
–  sub§§3-5: how independent, dependent and multi-dependent claims have to be drafted
–  sub§3: «a claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form»;
–  sub§4: «subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers»;
–  sub§5: «a claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered»
–  sub§6: means-plus-function claim
–  «an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof».
 
a.  enablement
 
–  enable to make and use commensurate with the scope of the claim;
–  question of law, except for determination of undue experimentation, assessed at the time of filing (crucial date under §112 = filing date).
 
 
i.    standard of PHOSITA
 
–  person having ordinary skill in the art (± concept of reasonable person in tort law);
–  refers to any reference that have been made in the prior art/everything that has already been disclosed, but without inventive skills (same common skills as the one of the people working in the concerned field of endeavor);
–  idea: disclosure in the patent application teaches something to the PHOSITA i.e. teaches how to make/conceive the claimed invention so is supposed to be allowed/able to make and use without undue experimentation the claimed invention thanks to it (rationale // purpose of a patent system to put the public in possession of the invention);
–  issue: how much experimentation to enable the PHOSITA to make and use the claimed invention is undue? – it’s enabling if PHOSITA can make and use i.e. if specification provides sufficient teaching so that PHOSITA is able to make/use invention without undue experimentation;
–  test: scope of enablement = disclosed in specification + known to PHOSITA without undue experimentation
 
a.   Gould v. Hellwarth (Cust. & Pat. App. 1973): insufficiency of disclosure because would required further undue experimentations to enable PHOSITA to make and use the claimed invention;
 
b.  cf. the In Re Fisher case (Fed. Cir. 2005): the scope of enablement must be roughly commensurate to the scope of the claims;
 
 
ii.  undue experimentation
 
–  issue: how much experimentation to enable the PHOSITA to make and use the

to practice the best mode – idea of a two-prongs test: (1) did the inventor fail to disclose his best mode (subjective), and (2) was the disclosure adequate (objective).
 
 
d.  definiteness
 
–  claim «particularly point out and distinctly claim» the subject matter of the invention;
–  question of law;
–  rationale: (1) clear notice to the public about what is claimed, and (2) information-forcing i.e. burden on the applicant to clearly disclose – need to know what the patent covers in order not to infringe it;
–  test for indefiniteness: would a PHOSITA understand what is claimed? (cf. claimed read in light of the written description).
 
 
 
After the §112 inquiry, look at the four requirements for patenting:
 
(1)   novelty – §102(a), (e) and (g)
–  determined at date of invention;
–  need a single piece of prior art with all the limitations;
 
(2)   nonobviousness – §103
–  determined at date of invention;
–  can use combinations of prior art;
–  no patent if differences between subject matter sought to be patented and prior art are such that the subject matter as a whole would have been obvious at the time of invention;
 
(3)   statutory bars – §102(b), (c) and (d)
–  determined at date of filing;
 
(4)   derivation – §102(f)
–  can’t steal invention from another.
 
4. Anticipation Standard
 
 
–  first-to-invent regime – until the shift to a first-inventor-to-file regime (effective on March 16, 2013) – i.e. determine the precise moment the invention was created (purpose of the new system: incentive disclosure);
–  with the current regime: a one-year grace period;
 
–  purpose: can’t claim something that is already part of the prior art, or if you have to rely on it the claim must be read in the prior art i.e. a structural disclosure in the prior art that might be used for some other purpose is enough to invalidate a claim;
–  all-elements rule: a single reference plus ordinary knowledge of a PHOSITA must explicitly or implicitly provide each and every claimed element;
–  link between prior art and enablement: the prior art must enable PHOSITA to make what is read in the claim;
 
–  standard for anticipation – for each claim, need of:
–  (1) a single reference;
–  (2) disclosing all the elements of the claim, but cf. inherency i.e. it can still be anticipated if some missing element are inherent in the disclosure – inherent: (a) missing element in reference would be recognized by a PHOSITA as necessarily present in the thing described or (b) present as a matter of physical or natural law (so without a requirement of PHOSITA recognition);
–  (3) that enables the invention – the enablement requirement under §102 is not as strict as for §112;
 
a.  Titanium Metals Corp. of America v. Banner (Fed. Cir. 1985): anticipation as a four-corner/all-elements rule i.e. a single prior art reference as to include all the elements of the claim – cf. incorporation by reference, inherency, public availability (i.e. would one with sufficient interest be able to obtain it) as the three doctrines concerning anticipation;
 
b.  Schering Corp. v. Geneva Pharmaceuticals (Fed. Cir. 2003): concern is about PHOSITA i.e. by reading the disclosure the PHOSITA has to recognize if the public is getting anything new – cf. the Seaborg American case and the idea that accidental anticipation does not invalidate a claim i.e. is not enough for anticipation.