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Intellectual Property
University of South Carolina School of Law
Snow, Ned


Fall 2012, Professor Ned Snow


1. What is a Patent- The owner of a patent has the right to exclude any one else from making, using, offering for sale, or selling the invention in the US or importing into the US for a period of 20 year from filing date. It is a property right but really a negative property right because you do not get the right to use it but exclude others for doing. Other important requirements include:

c. Invention must be- New & Useful- 35 U.S.C. 101

i. Novelty- Priority established by conception & then RTP

ii. Useful- very low bar

d. Must Be Non-obvious 103(a)- if obvious then not useful. See if obvious to PHOSITA and consider all prior art. Test/Factors including: TSM Test, Doe Prior Art Teach away, Market Demand, Common Sense & Knowledge

e. Claims must be fully enabled by Specification

i. Consider: Prior art, scope, novelty & broadness

ii. Best Mode

f. Subject Matter Must be Proper:

i. Utility, Design or Plant

1. Utility: Manufacture, composition of matter, or process

g. Cannot violate on-sale bars

h. Strict Liability & No independent creation

2. Application must be written correctly (claims & specifications)

c. Claims- set forth the scope of the property rights you are given w/ respect to your invention. They define the invention to which the patentee is entitled the right to exclude. Claim cannot be overly broad.

i. Interpretation – claims interpretation always precedes validity and infringement determinations

1. From the view of one of ordinary skill in the art in question at the time of the invention

2. Words are given their ordinary and customary meanings

3. Court may consider intrinsic evidence

a. Claims may help interpret other claims

b. Patent Prosecution is helpful in showing how an inventor has tried to construe a term

c. Examples in Specification are helpful but should not be definitive. Claims should be interpreted as broadly as possible

4. Court may consider extrinsic evidence

a. Treatises are helpful in determining in determining the true meaning of a word in the claim.

b. Expert Testimony may be helpful but cannot make conclusory or unsupported opinions on term meaning. Less reliable because determined at time of and for litigation.

i. Should be considered in the context of the intrinsic evidence.

c. Not as reliable or useful as intrinsic evidence and should be considered in light of intrinsic evidence

5. Majority in Phillips treats both weighing of the evidence and interpretation as questions of law but dissent says that weighing the evidence is question of fact

d. Specification- a written description of the invention & of the manner & process of of using it, in such full, clear, concise & exact terms as to enable any PHOSITA to which it pertains or is most nearly connected to. KEY IS IT MUST ENABLE the FULL SCOPE of the CLAIMS. Enablement measured at time of filing. Claims claim & Specification teaches.

i. Enablement- Can a person of ordinary skill in the art make and use the claimed invention without undue experimentation (factors below)

ii. Specification must fully enable the claim invention

1. Novel aspects of the claim must be enabled by the specification not by ordinary skill and knowledge in the field

2. MUST ENABLE W/O UNDUE EXPERIMENTATION. Novel aspects of the claim must be enabled by the by the specification & not the knowledge of PHOSITA.

a. Undue Experimentation Factors ATI: Quantity of experimentation, amount of direction, presence of working examples, nature of invention, state of prior art, relative skill of those in the art, predictability or unpredictability (complexity of the field, & breadth of the claims.

iii. Scope of the claim of the claim defines the level of enablement

1. If a newer field then specification needs to be much more precise

a. More established field aka more prior art then likely less enablement required

2. Broader claim needs to make more specification to enable all claims

3. Narrow claim then less is required to enable

4. If choose broad claim langue must make sure broad claims are full enabled Sitrick v. Dreamworks

iv. Prior art- field well established the enablement requirement is less stringent. If new field or unpredictable then needs more explanation.

v. Evidence

1. Court will look to specification to see if enabled. May look at the quantity of information provided especially in comparison of information provided for other claims.

2. Enablement requirement does not extend to technology that arises after time of filing but post-filing info can be used as “evidence of the level of ordinary skill in the art at the time of the application.”

e. BEST MODE Requirement- Specification must set forth the best mode for carrying out the invention.

i. Don’t want inventors to have protection while concealing the best method.

ii. Two Part Test

1. 1. Subjective- Did inventor at time of filing have a mode that he considered best; if yes then

2. 2. Objective- Is the disclosure adequate to enable one of ordinary skill in the art to practice the best mode or has the inventor “concealed” his preferred mode

iii. No duty to update after filing

3. Subject matter must be proper

c. Identify the type of Patent Sought: Utility (majority), Design or Plant

d. Must be Invention Patentable (§ 101)- must be new and useful: process, machine, manufacture or composition of matter or any new & useful improvement thereof

i. Manufacture- production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combination, whether by hand-labor or by machinery

ii. Composition of Matter- All composite articles, whether they be the result of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.

e. In considering whether something is patentable consider policy issues?

i. Want new innovations should be patentable so do not want to restrict patentability.

ii. Court can fill in gaps left by Congress using what Congress has given them. Will not decide moral issues but those are for Congress.

f. Process Patents

i. Is it an abstract idea? Like a mathematical formula.

ii. Machine or Transformation Test- test is a good investigative tool but not definitive

1. A claimed process is surely patent-eligible if (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article in to a different state or thing.

iii. A principle in the abstract is a fundamental truth and cannot be patented as no one can claim in either of them an exclusive right.

iv. Based on Diehr a process patent is not invalidated simply for having an algorithm as part of it when you considered the process patent as a whole.

1. However, you cannot apply an abstract idea to a certain field or industry and then patented it.

v. Natural Law is not patentable so cant add administering step and diagnosis step to a natural law and patent under Prometheus.

g. NOT PATENTABLE- Physical Phenomena, Natural Law, or Abstract Ideas

i. Reasoning: Don’t want to bottleneck innovation at basic level & slow progress. These types of ideas or theories are very fundamental to new inventions.

4. Invention must be novel, nonobvious, and useful

c. Useful- very low bar to satisfy but MUST be satisfied

i. Operability- does the invention work as claimed in the patent.

ii. Substantiality- Does it function for its intended purpose.

iii. Purported benefit must be functional

iv. Law does not look to the degree of utility.

d. Novelty- prior art must not anticipate the claim invention. Consider all prior art before RTP. Cannot anticipate yourself.

i. Anticipation (someone files before you or prior art excludes it) if

1. Known to the public or in public use in the United States

a. Public means not hidden or secret. Doesn’t have to be accessible by anyone but it just has to be accessible to the extent its not kept secret.

2. Published anywhere

3. Described in a US patent application

ii. When invented?

1. Must have conception and reduction to practice.

2. Priority goes to first to conceive if exercise reasonable diligence in reduction to practice. If conceive or RTP NOT IN THE US, then date of conception and RTP is date of filing of patent application this is constructive RTP (filing date).

a. Reasonable Diligence- pursuing a goal in reasonable manner.

i. Not to get commercial funding or hire a specific grad student unless they are necessary to RTP.

b. Actual RTP- invention works for its intended purpose

c. Constructive RTP- filing of patent application

d. Spurring- Fujikawa v. Wattanasin- evidence that a claimed previous inventor only filed b/c he heard someone else was about to file.

i. In this case, the filing was already in progress when the spurring was alleged to have occurred.

3. To Anticipate- prior art must be sufficient to enable the allegedly new invention.

4. Must not abandon, conceal or suppress

a. Abandonment- no longer work on project. However, if a prior work is sufficient to enable your work then it would anticipate your work even though abandoned. An unsuccessful experiment which is later abandoned does not negative novelty in a new and successful device.

i. Results do not define the process. May anticipate even if didn’t get results wanted.

b. Suppression/Concealment- keeping the invention secret in order to delay the time to disclose to the public

i. Intentional- requires direct evidence of intent. Passage of time is not enough.

ii. Inference- Controlling factor is not the amount of time elapsed but the total conduct of the inventor. Delay in time will be viewed in light of totality of circumstances. May be distinction between delay after RTP & before RTP

iii. Suppression or concealment can be negated by renewed activity prior to an opposing party’s effective date.

a. Don’t want to discourage from working on projects that have been set aside b/c of impossibility of relying on original or renewed work for priority.

iii. Look at other people’s prior art and actions because an inventor cannot anticipate themselves.

e. Nonobvious-35 U.S.C. 103(a) purpose is promote innovation and the useful arts. Constitutional requirement. Looks to all art prior to RTP.

ntion? Don’t have to infringe every single ever element of claim but infringe every limitation of a claim.

1. Analyze the role played by each element in the context of the specific patent to determine whether a substitute element matches, the function, way, and result of the claimed element.

a. Does the substituted or changed limitation create a substantial difference in the functionality or purpose of the claim from the view of a PHOSITA

i. Accused element is equivalent to a claimed element

b. TIMING: Have to determine if patent is equivalent at the time of infringement***

2. Two Limitations even if difference is insubstantial to PHOSITA

a. Prosecution History Estoppel- Have to look to see if the limitation was added to narrow the scope of the claim in the patent prosecution process.

i. If added during prosecution process then presumed to be for substantive patentability reasons:

If in response to prior art or for substantive patentability reasons then cannot show infringement

If no reason in history for the added limitation then patent holder has the burden of proving that it was added for another insubstantial reason.**

b. Public Dedication- if disclose something in the specification but not claim it then it is deemed to be dedicated to the public.

3. Key seems to be whether the difference is insubstantial to a PHOSITA

a. In determining whether every limitation of a claim is infringed

4. Must analyze role played by each element in context of a specific patent will inform whether a substitute element matches the function, way & result of the claimed element or whether the substitute element plays a role substantially different from the claimed element. Warner Jenkinson

e. Indirect Infringement- have to first show someone has directly infringed before court will consider indirect but will often infer. DISCUSS ACTUAL INFRINGEMENT 1st*

i. Contributory Infringement (only if done in US)

1. Must sell a component of a patent product or a material/apparatus for using a patented process which is a material part of the invention

a. As long as it is not a staple article or commodity of commerce suitable for SUBSTANTIAL non-infringing uses

b. Material- don’t consider whether it is material in the context of the infringing product but look at the infringed component.

i. Don’t want to be able to combine patented ideas and make their use non-infringing.

2. Knowing that it is to be used for the infringement of such patent

a. Do not need actual knowledge of patent or of the infringing use

i. Look to see whether there is non-substantial uses for which it could be used or whether it only has one use which would be infringing

ii. One who makes and sells articles which are only adapted to be used in a patented combination will be presumed to intend the natural consequences of his action.

iii. May be a defense if did not have actual knowledge of patent

ii. Inducing Infringement § 271(b) (may be worldwide)

1. Whoever actively induces infringement shall be liable as infringer

a. Actively Induce- Evidence of culpable conduct directed to encouraging another’s infringement not merely that inducer had knowledge of direct infringer’s activities

i. Presumed that manufacturer intends and encourages people to use the normal function of their product and if this includes an infringing method then presumed you encouraged them to perform the method.

b. Knowledge- Must have actual or constructive knowledge of the infringed patent

i. Constructive Knowledge is Deliberative Indifference but really Deliberate Indifference is a form of Actual Knowledge

Deliberate Indifference- subjective determination that defendant knew of & disregarded overt risk that an element of an offense existed. Failure to obtain opinion of counsel relating to non-infringement may be evidence. Can rebut subjective deliberate indifference

ii. Looking for specific intent to or at least should have known their acts would encourage another’s infringement

c. Defenses-

i. If someone asks you to make something then likely not inducing because you aren’t trying to encourage someone to infringe

ii. Staple Article of Commerce Defense IS INAPPLICABLE