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Inventorship

and Ownership ....................................................................................................................................................... 4 Hess v. Advanced Cardiovascular ......................................................................................................................................................................... 4 Ethicon v. US Surgical Corp .................................................................................................................................................................................... 4 DDB Techs v. MLB Adv. Media .............................................................................................................................................................................. 4 Utility / Operability - 35 USC 101 ............................................................................................................................................... 4 In re Schwarz ................................................................................................................................................................................................................ 4 Fregeau v. Massinghoff ............................................................................................................................................................................................. 5 Design .................................................................................................................................................................................................. 5 Egyptian Goddess v. Swisa ...................................................................................................................................................................................... 5 International Seaway Trading Corp v. Walgreens Corp ............................................................................................................................ 5 Best Mode and 35 USC 112, 4th and 6th Paragraphs .............................................................................................................. 5 Dana Corp v. IPC Ltd. ................................................................................................................................................................................................. 5 Ajinomoto Co. v. ITC ................................................................................................................................................................................................... 6 Pfizer v. Ranbaxy ......................................................................................................................................................................................................... 6 In re Donaldson ............................................................................................................................................................................................................ 6 Personalized Media Communications v. ITC ................................................................................................................................................... 7 Budde v. Harley Davidson ........................................................................................................................................................................................ 7 Enablement, Written Description, & Indefiniteness ............................................................................................................ 8 In re Wands .................................................................................................................................................................................................................... 8 Liebel-Flarsheim v. Medrad .................................................................................................................................................................................... 8 Ariad Pharama v. Eli Lilly ....................................................................................................................................................................................... 9 SKB v. Apotex ................................................................................................................................................................................................................ 9 102(a) anticipation and inherent anticipation ................................................................................................................... 10 Net MoneyIn v. Verisign ......................................................................................................................................................................................... 10 Rasmusson v. SKB ...................................................................................................................................................................................................... 10 Schering v. Geneva Pharma .................................................................................................................................................................................. 11 SKB v. Apotex .............................................................................................................................................................................................................. 11 102(b) ............................................................................................................................................................................................... 11 In re Carlson ................................................................................................................................................................................................................ 11 In re Klopfenstein ...................................................................................................................................................................................................... 12 In re Lister .................................................................................................................................................................................................................... 12 Lough v. Brunswick Corp ....................................................................................................................................................................................... 12 Allen Engg v. Bartell Industry ............................................................................................................................................................................. 13 Motionless Keyboard v. Microsoft ...................................................................................................................................................................... 13 102(c), (d), (e), (f) ......................................................................................................................................................................... 14 Application of Gibbs ................................................................................................................................................................................................. 14 In re Kathawala ......................................................................................................................................................................................................... 14 In re Land ..................................................................................................................................................................................................................... 14 In re Giacomini ........................................................................................................................................................................................................... 15 OddzOn Prod. v. Just Toys ...................................................................................................................................................................................... 15 102(g) ................................................................................................................................................................................................ 15 Kimberly Clark v. J&J ................................................................................................................................................................................................ 15 Woodland Trust v. Flowertree Nursery .......................................................................................................................................................... 16 Apotex USA v. Merck ................................................................................................................................................................................................ 16 Dow Chemical v. Astrro-Valcour ........................................................................................................................................................................ 17 Z4 Technologies Inc. v. Microsoft ....................................................................................................................................................................... 17 102(a), (b) ....................................................................................................................................................................................... 17 Ecolochem v. So Cal Edison ................................................................................................................................................................................... 17 In re Borst ..................................................................................................................................................................................................................... 18 Juicy Whip v. Orange Bang ................................................................................................................................................................................... 18 Pfaff v. Wells Electronics ........................................................................................................................................................................................ 18

Elan v. Andrx Pharma ............................................................................................................................................................................................. 19 103 - Prima facie ........................................................................................................................................................................... 19 Graham v. John Deere .............................................................................................................................................................................................. 19 KSR v. Teleflex ............................................................................................................................................................................................................. 19 Tokai v. Easton Enterprises .................................................................................................................................................................................. 20 Prior Art ........................................................................................................................................................................................... 20 Daiichi Sankyo v. Apotex ........................................................................................................................................................................................ 20 In re Bigio ..................................................................................................................................................................................................................... 20 Innovation Toys v. MGA Entertainment .......................................................................................................................................................... 21 Secondary Considerations ......................................................................................................................................................... 21 Tokai Corp v. Easton Enterprises ....................................................................................................................................................................... 21 Richardson-Vickburg v. Upjohn .......................................................................................................................................................................... 21 Claim Construction ....................................................................................................................................................................... 22 Phillips v. AWH Corp ................................................................................................................................................................................................ 22 Bass Pro Trademarks v. Cabelas Inc. ............................................................................................................................................................... 22 Retractable Techs v. Becton Dickson ................................................................................................................................................................ 22 Markman and literal infringement ......................................................................................................................................... 23 Felix v. American Honda Motor Corp ............................................................................................................................................................... 23 Doctrine of Equivalents ............................................................................................................................................................... 23 Graver Tank v. Linde Air Prods. .......................................................................................................................................................................... 23 Warner-Jenkinson v. Hilton Davis Chem. ........................................................................................................................................................ 24 Dedication ....................................................................................................................................................................................... 24 J&J v. RE Service Co. .................................................................................................................................................................................................. 24 Festo VIII ....................................................................................................................................................................................................................... 25 Festo IX .......................................................................................................................................................................................................................... 25 Honeywell v. Hamilton Sundstrand ................................................................................................................................................................... 25 Wilson Sporting Goods v. David Geoffrey ....................................................................................................................................................... 26 Indirect / Divided infringement geographic issues import and export ..................................................................... 26 CLS Bank Intl . Alice Corp ..................................................................................................................................................................................... 26 Cardiac Pacemakers v. St. Jude Medical .......................................................................................................................................................... 27 BMC Resources v. Paymentech ............................................................................................................................................................................ 27 Repair and reconstruction & licensing .................................................................................................................................. 28 Jazz Photo v. US ITC ................................................................................................................................................................................................. 28 Aronson v. Quick Point Pencil comp. ................................................................................................................................................................. 28 State contract law is not preempted by patent law ................................................................................................................................... 28 DJ and licensor/assignment estoppel .................................................................................................................................... 28 MedImmune v. Genentech ..................................................................................................................................................................................... 28 SanDisk v. ST Microelectronics ........................................................................................................................................................................... 28 Caracao Pharm Labs v. Forest Labs .................................................................................................................................................................. 29 Inequitable conduct ..................................................................................................................................................................... 29 McKesson Info Solutions v. Bridge Medicals .................................................................................................................................................. 29 Star Scientific v. RJ Reynolds Tobacco ............................................................................................................................................................. 29 Thereasense v. Beckton Dickenson .................................................................................................................................................................... 30 271(e)(1) safe harbor .................................................................................................................................................................. 30 Amgen v. ITC ............................................................................................................................................................................................................... 30 Roche v. Boler ............................................................................................................................................................................................................. 31 Eli Lilly v. Medtronic ................................................................................................................................................................................................ 31 Preemption and Means-Plus Function ................................................................................................................................... 31 Bonito Boats v. Thundercrft Boats .................................................................................................................................................................... 31

Kraft Foods v. International Trading Company .......................................................................................................................................... 32 Al-Site v. VSI International .................................................................................................................................................................................... 32 Chiuminatta Concrete concepts v. Cardina Industry ................................................................................................................................. 32 101 and remedies and marking ............................................................................................................................................... 33 Prometheus Labs v. Mayo Collaborative Services ....................................................................................................................................... 33 E-bay v. MercExchange ........................................................................................................................................................................................... 33 Rite Hite v. Kelley ...................................................................................................................................................................................................... 33 Georgia-Pacific v. US Plywood ............................................................................................................................................................................. 34 Uniloc v. Microsoft .................................................................................................................................................................................................... 35

Case Information
Class 2 8/24

Fact Summary
Inventorship and Ownership p. 234-238, 362-366

Rule of Law

Hess v. Advanced Cardiovascular Inventorship

Engineer brought action against patentee, seeking to be named as coinventor of patent covering balloon angioplasty catheter. The District Court ruled that engineer was not a coinventor. Engineer appealed.

(1) engineer was required to establish coinventorship by clear and convincing evidence, (2) contributions by Hess were known to the art and available on the marketplace; (3) Hess was seen as a skilled salesman (4) engineer failed to establish that he was coinventor of patent. (1) intervener was coinventor as to two patent claims; (2) corroborating evidence established joint inventorship; (3) coinventor's testimony was admissible despite alleged bias; (4) coinventor licensed all of his rights as joint owner to alleged infringer; (5) coinventor could not release alleged infringer from liability for past accrued damages to plaintiff licensee; but (6) coinventor's refusal to join suit required dismissal of suit (1) employment agreement contained express assignment of rights in future inventions, and therefore an assignment of patent under the agreement would have occurred automatically; (2) patent owner was not entitled to a jury trial on jurisdictional issue of standing; but (3) district court abused its discretion in denying patent owner's discovery requests.

Ethicon v. US Surgical Corp Inventorship

Patentee and his exclusive licensee brought action alleging infringement of patent for surgical trocar. Alleged coinventor intervened. After alleged infringer's motion to correct inventorship by adding intervener as coinventor was granted, the District Court dismissed action and plaintiffs appealed.

DDB Techs v. MLB Adv. Media Ownership

Owner of patents, who was assigned inventors' interests in the patents relating to a method for generating a computer simulation of a live event for display on a viewer's computer and a method to search for certain information about a live event, brought infringement action against competitor. The District Court dismissed suit for lack of subject matter jurisdiction based on interpretation of one of the inventor's employment agreement regarding his assignment of the patents to employer. Utility / Operability - 35 USC 101

Class 3 8/29 p. 62-65 The PTO provided substantial evidence that a POSA would reasonably doubt the asserted utility and operability of cold fusion. The petitioner submitted no evidence of operability sufficient to overcome reasonable doubt, as petitioner did In re Schwarz Utility Petitioner's application for his invention relating to cold fusion was rejected by examiner for lack of operability or utility under 35 U.S.C. 101 and lack of enablement under 35 U.S.C. 112, para. 1. The USPTO BPAI affirmed the

Case Information
Fregeau v. Massinghoff Utility

Fact Summary
Patent applicant brought civil action to review rejection of application by the USPTO BPAI. The District Court dismissed action and applicant appealed.

Rule of Law
(1) district court was required to apply the clearly erroneous standard to the Board of Appeals' determination, subject to de novo fact-finding upon admission of new evidence, and (2) district court did not clearly err in finding inoperative an invention for enhancing the flavor of beverages through use of a magnetic field. p. 54-55 (1) test for design patent infringement is whether an ordinary observer, familiar with the prior art, would be deceived into thinking that the accused design was the same as the patented design; abrogating previous cases; (2) preferable course will be for a district court not to attempt to construe a design patent claim by providing a detailed verbal description of the claimed design; (3) accused nail buffer, which was rectangular in shape and had a hollow tube, a generally square cross-section, and raised buffing pads on all four sides, did not infringe patented nail buffer, which had same general shape, but had raised buffing pads on only three sides. (1) ordinary observer test was the sole test for anticipation; (2) district court was required to consider the designs' insoles under the ordinary observer test in determining whether patents were anticipated; (3) fact issue precluded summary judgment on competitors' claim of anticipation and obviousness. p. 196-200, 205-208, 208-212 (1) statutory best mode requirement could not be satisfied by reference to level of skill in art, and The best mode requirement entails a comparison of the facts known to the inventor regarding the invention at the time the application was filed and the disclosure in the application. Here, fluoride surface treatment was the best mode contemplated by the inventor, and because the patent disclosure did not satisfy the best mode requirement, appellants' motion should have been granted.

Design Egyptian Goddess v. Swisa Design Patents Owner of patent on nail buffer brought action against competitor, alleging infringement of design patent. Competitor filed counterclaim seeking declaratory judgment on various theories, including noninfringement. The District Court granted summary judgment of noninfringement. Owner appealed. The Court of Appeals affirmed.

International Seaway Trading Corp v. Walgreens Corp Design patents Class 4 8/31

Owner of design patents for clogs brought infringement action against competitors. The District Court granted summary judgment for competitors. Owner appealed.

Best Mode and 35 USC 112, 4th and 6th Paragraphs Dana Corp v. IPC Ltd. Best Mode p.199 Holder of patent for valve stem seals brought action for infringement, and the District Court entered judgment finding patent to be valid, enforceable, and willfully infringed. The patent was directed to a seal to prevent oil leakage. The seal required a fluoride treatment that made it work much better than any other mode, but the surface fluoride treatment was not disclosed in the patent.

Case Information
Ajinomoto Co. v. ITC Best Mode

Fact Summary
Patentee brought complaint against alleged infringers alleging a violation of the Tariff Act in the importation and sale of certain lysine feed products. The ITC found the patents to be invalid because the application didnt disclose the preferred embodiment of the host strain. Failure to disclose this information was a clear violation of the best mode requirement. Also, applicant fudged data in the patent and there was an issue of inequitable conduct. Owner of patents for anti-cholesterol drug sued proposed manufacturer of generic version for infringement. The District Court entered judgment in favor of owner, and defendant appealed. Claim 1 - Acid of A, or Lactone of A, or Salt of the Acid or the Lactone Claim 2 - compound of claim 1 which is the acid of A (proper) Claim6 The hemi-calcium salt of the compound of claim 2 (improper). Applicant for industrial air filtering device patent sought judicial review of decision by the USPTO which sustained examiners rejection of claim on reexamination application. The Court of Appeals remanded. PTO sought reconsideration.

Rule of Law
(1) best mode requirement obligated patentee to disclose preferred host strains; (2) patentee could not satisfy requirement by disclosing a non-preferred strain (3) necessary to distinguish between actual examples and prophetic examples.

Pfizer v. Ranbaxy 112, 4th paragraph

(1) formula disclosed in patent included the enantiomeric trans-forms of the disclosed compounds; (2) statements made during prosecution of foreign counterparts to patent were irrelevant to claim construction; (3) dependent claim of a drug patent that did not incorporate by reference all of the limitations of the claim to which it referred, and instead dealt with non-overlapping subject matter, was invalid; (4) it is not up to the court to rewrite the claim to put it in proper format. (1) means-plus-function language in claim must be construed in light of specification and interpreted in light of corresponding structure and material, or acts and equivalents to extent that specification provides a disclosure regardless of context, and (2) flexible wall, diaphram-like structure of hopper was not obvious. (3) This case changed the way the USPTO prosecuted patents. Before this case, the PTO would not interpret the claim in light of the disclosures in the spec only the courts did this during claim construction this case placed the two on similar grounds.

In re Donaldson Means-plus function p. 209

Case Information
Personalized Media Communications v. ITC Means-plus function

Fact Summary
Holder of patent for systems for use in television broadcasting appealed final determination of the ITC that patent claims were not infringed by digital satellite systems (DSS) imported by interveners and were invalid for indefiniteness.

Rule of Law
(1) digital detector limitations in asserted claims recited sufficiently definite structure and therefore did not invoke statutory means-plus-function analysis; (2) term digital detector was not indefinite; (3) In determining whether to apply the statutory procedures of 35 U.S.C. 112, p. 6, the use of the word "means" triggers a presumption that the inventor used this term advisedly to invoke the statutory mandates for meansplus-function clauses, and that the failure to use the word "means" creates a presumption that 112, p. 6 does not apply. These presumptions can be rebutted if the evidence intrinsic to the patent and any relevant extrinsic evidence so warrant. (4) In deciding whether either presumption has been rebutted, the focus remains on whether the claim as properly construed recites sufficiently definite structure to avoid the ambit of 112, p. 6. Where a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format even if claim uses the term "means." (1) In construing the means-plus-function claim limitation, the district court should have applied a clear and convincing evidentiary standard in assessing the specification of the patent and it's disclosed structure; (2) In construing means-plus-function claim limitations, a court must first define the particular function claimed, and thereafter, the court must identify the corresponding structure, material, or acts described in the specification, and it is not until the structure corresponding to the claimed function is identified and considered that the scope of coverage of the limitation can be measured.

Budde v. Harley Davidson Patent infringement suit was brought. Following entry of order construing means-plus-function claim of patent for Means-plus function fuel injection conversion systems for reciprocating engines generally and V-twin motorcycle engines in particular, judgment of non-infringement was entered by the District Court. Patent owner appealed, and alleged infringer filed a conditional cross-appeal.

Case Information
Class 5 9/7

Fact Summary
Enablement, Written Description, & Indefiniteness P. 182-194, 218-219

Rule of Law

In re Wands Enablement / WD p. 184

Inventors of method to create immunoassay of hepatitis B surface antigen using monoclonal antibodies sought patent. The BPAI denied the patent on grounds it was not enabling.

(1) determination of enablement is a question of law; (2) while deposit of living cells can be used to satisfy enabling requirement, it is not necessary; (3) undue experimentation was not necessary to produce art for method of immunoassay of hepatitis B surface antigen using monoclonal antibodies; and (4) enablement of patent involving living microorganisms is not precluded by necessity of some experiments such as routine screening. There are many factors to be considered when determining whether if a disclosure satisfies the enablement requirement or whether any necessary experimentation is "undue." These factors include: (A) The breadth of the claims; (B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (E) The level of predictability in the art; (F) The amount of direction provided by the inventor; (G) The existence of working examples; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. (1) claims of patents directed to a front-loading fluid injector were invalid for lack of enablement; (2) prior art anticipated claims of syringe-sensing patents; (3) The specification does not describe an injector with a disposable syringe without a pressure jacket. In fact, the specification teaches away from such an invention; (4) where the specification teaches against a purported aspect of an invention, such a teaching "is itself evidence that at least a significant amount of experimentation would have been necessary to practice the claimed invention." (5) The inventors admitted that they tried unsuccessfully to produce a pressure-jacketless system and that producing such a system would have required more experimentation and testing. The inventors decided not to pursue such a system because it was "too risky."

Liebel-Flarsheim v. Medrad Enablement / WD

Owner of patents for methods of injecting fluids into patients during medical procedures sued competitor for infringement. The District Court granted summary judgment of noninfringement, and owner appealed. The Court of Appeals reversed and remanded. On remand, the District Court granted competitor's motion for summary judgment that four of patents were invalid, granted patent owner's motion for summary judgment that competitor infringed patents and that inventorship designation on patents was correct, and held that inequitable conduct counterclaim was moot. Patent owner appealed and competitor cross-appealed.

Case Information
Ariad Pharama v. Eli Lilly Enablement / WD

Fact Summary
Owners of patent claiming methods comprising the single step of reducing Nuclear Factor Kappa B (NF-kB) activity in eukaryotic cells brought infringement action against competitor. After a jury found infringement, and concluded that the asserted claims were not invalid for anticipation, lack of enablement, or lack of written description, the District Court denied competitor's motion for judgment as a matter of law (JMOL), and a final judgment was entered. Competitor appealed. The Court of Appeals affirmed in part and reversed in part, and patentees petitioned for rehearing en banc.

Rule of Law
(1) statute requiring that patent specification contain a written description of the invention contained a written description requirement separate from enablement, and (2) patent was invalid for failure to provide adequate written description. The "truism" that the claims are part of the original specification does not mean that the invention has been sufficiently described merely by reciting it in an original claim. For example, a generic claim may define the boundaries of a vast genus of chemical compounds, and yet the question may still remain whether the specification, including original claim language, demonstrates that the applicant has invented species sufficient to support a claim to a genus. The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus. (1) patent claim encompassed, without limitation, paroxetine hydrochloride (PHC) hemihydrate; (2) patent was not invalid for indefiniteness; and (3) patent was invalid as inherently anticipated. (4) Producing PHC anhydrate according to a prior patent inevitably resulted in the production of at least trace amounts of anticipating PHC hemihydrate; (5) claim 1 was invalid as inherently anticipated under 35 U.S.C. 102(b). The prior patent inherently disclosed PHC hemihydrate. Defendants did not need to prove that it was impossible to make PHC anhydrate in the United States that contained no PHC hemihydrate, but merely that the disclosure of the prior art was sufficient to show that the natural result flowing from the operation as taught in the prior art would result in the claimed product.

SKB v. Apotex Indefiniteness - Inherent

The patent covered a hemi-hydrate salt of a compound. The patent for the basic drug was about the expire and the patent for the hemi-hydrate salt was a life-extending patent. SKB brought action against generic drug manufacturer alleging infringement of patent for active ingredient in antidepressant drug. The District Court granted judgment for generic manufacturer. Plaintiff appealed.

Case Information
Class 6 9/12

Fact Summary
102(a) anticipation and inherent anticipation p. 77-85, 107-115

Rule of Law

Net MoneyIn v. Verisign

Holder of two patents for systems for processing Internet credit card transactions brought patent infringement action. 102 Single Reference The District Court invalidated certain patent claims as part Arranged as in the claim of its claim construction, granted summary judgment for alleged infringers on issue of inducement of infringement and granted motion for summary judgment of invalidity due to anticipation. Patent holder appealed.

(1) prior art reference did not anticipate patent claim; (2) district court could not find anticipation by combining different parts of separate protocols disclosed in prior art "Arranged as in the claim" requirement referred to the need for the anticipatory reference to show all of the limitations of the claims arranged or combined in the same way as recited in the claims, not merely in a particular order. To demonstrate anticipation, the proponent must show that the four corners of a single, prior art document describe every element of the claimed invention. That statement embodies the requirement in 35 U.S.C.S. 102 that the anticipating invention be described in a printed publication, and is, of course, unimpeachable. But it does not tell the whole story. Because the hallmark of anticipation is prior invention, the prior art reference, in order to anticipate under 102, must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim. The inventors were not entitled to a priority date earlier than the company's patents and corresponding reissue applications. The prior art reference in the EP did not have to demonstrate utility in order to serve as an anticipating reference under 102; proof of efficacy was not required for the EP to be enabled for purposes of anticipation. The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under 35 U.S.C. 102, however, differs from the enablement standard under 35 U.S.C. 112. A disclosure lacking a teaching of how to use a fully disclosed compound for a specific, substantial utility or of how to use for such purpose a compound produced by a fully disclosed process is entirely adequate to anticipate a claim to either the product or the process and, at the same time, entirely inadequate to support the allowance of such a claim. The reason is that 112 provides that the specification must enable one skilled in the art to "use" the invention whereas 102 makes no such requirement as to an anticipatory disclosure.

Rasmusson v. SKB

In an interference proceeding, the BPAI of the USPTO issued an order redeclaring interference with patents for a 102 anticipation method of treating prostate cancer by using finasteride as a selective inhibitor, and applicant appealed. The filing date Standard of enablement is accorded to the company's patents and reissue different for patentability applications fell between the inventors' third and fourth under 112 and applications. The first three applications failed to satisfy the anticipation under 102 enablement requirements of 35 U.S.C. 112. Articles and testimony showed that a person of ordinary skill in the art as of the filing date of the eighth application would not know that the drug inhibition contributed to any anti-tumor effects, because it was not clear what caused prostate cancer.

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Case Information
Schering v. Geneva Pharma 102 - inherent

Fact Summary
Owner of patent for antihistamine metabolite sued manufacturers of generic versions for infringement. The prior art '233 patent covered the antihistamine loratadine. Claims 1 and 3 of the '716 patent covered a metabolite of loratadine, descarboethoxyloratadine (DCL). The summary judgment evidence showed that DCL inevitably formed from loratadine in the human body. The competitors sought to market generic versions of loratadine once the '233 patent expired. The district court construed claims 1 and 3 of the '716 patent to cover DCL in all its forms, including forms metabolized within the human body. It found that while the '233 patent did not expressly disclose DCL and did not refer to metabolites of loratadine, the '233 patent anticipated claims 1 and 3 of the '716 patent under 35 U.S.C.102(b). Pharmaceutical drug manufacturer brought action against generic drug manufacturer alleging infringement of patent for active ingredient in antidepressant drug. The District Court granted judgment for generic manufacturer. Plaintiff appealed.

Rule of Law
The appellate court agreed. That skilled artisans did not recognize that the prior art '233 patent inherently produced the claimed invention, DCL, was immaterial. A prior art reference showing administration of loratadine to a patient anticipated claims 1 and 3. As the record presented no data on humans to show that a genuine factual dispute existed about the formation of DCL after ingesting loratadine, there was no genuine issue of material fact precluding summary judgment. The Court of Appeals held that patent was inherently anticipated by prior art patent for underlying antihistamine. A POSA does not need to recognize the inherent disclosure.

SKB v. Apotex 102 - inherent

The prior patent inherently disclosed PHC hemihydrate. Defendants did not need to prove that it was impossible to make PHC anhydrate in the United States that contained no PHC hemihydrate, but merely that the disclosure of the prior art was sufficient to show that the natural result flowing from the operation as taught in the prior art would result in the claimed product. p. 85-104 (1) German Design Registration qualified as foreign patent and thus was prior art for use in obviousness analysis (2) German Registration is effective as of the date it is deposited at the local office in Germany (3) The deposit and publication in the Official Gazette put people on notice the public could go get more information on the design based on the publication (4) design patent covering ornamental design for dual compartment bottle was invalid for obviousness in light of pertinent prior art.

Class 7 9/14 102(b) In re Carlson 102(b) Patented p. 101 Appellant's design patent claim was re-examined because of prior art references were not previously considered. One of the references was a design registration obtained from the German government, that led to the rejection of appellant's claim under 35 U.S.C. 103, as obvious. Appellant argued that the German design was not an invention patented in a foreign country, under 102(a). The court held that the registration fully disclosed the design upon which German law conferred the exclusive rights attendant to the registration, qualified as a foreign patent for purposes of 102(a), and constituted prior art for use in obviousness analysis under 103. Although 102(a), required that a foreign patent be disclosed in a readily-accessible fashion in order to qualify as prior art, the court held the patent need only be available to the public.

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Case Information
In re Klopfenstein 102(b) Public Presentation can be equivalent to a printed publication

Fact Summary
The applicants sought a patent for methods of preparing foods comprising extruded soy cotyledon fiber. The Board denied the application because the methods had already been described in a printed publication more than one year before the date of the application. Almost two years before they filed their application, the applicants had presented a printed slide presentation at a meeting of chemists and at a university. The presentation was displayed continuously for two and a half days and one day, respectively. Every limitation of the invention was disclosed in the presentation. Although no copies of the presentation were disseminated, there was no prohibition on note-taking or copying. Only a few slides recited what was not already known in the field. The presentation was never catalogued or indexed in any library or database. Patent application rejected as anticipated by the claimed inventor's manuscript describing the claimed invention. Applicant argued that even if the manuscript, which described his method of playing golf, was sufficiently indexed so that an interested researcher could learn of its existence and relevance, the task of going to & inspecting it at the Library of Congress was too burdensome for it to have been considered publicly accessible. Second, he argued that the manuscript was not a printed publication as of the critical date because there was no evidence that it was included in a catalog or index at that time that would have permitted an interested researcher to discover it. Plaintiff improved upon a seal used on defendant's boat motors and distributed prototypes of his invention. After more than a year, in which he did not solicit comments on the quality of the prototypes, plaintiff applied for, and received, a patent on the seal. Defendant then patented an improved seal. Plaintiff sued for patent infringement, while defendant counterclaimed for patent invalidity. After the jury returned a verdict for plaintiff, defendant argued for judgment as a matter of law, because plaintiff's product had been in public use for more than one year before the patent application. Plaintiff contended the use constituted protected experimentation.

Rule of Law
Reference was made sufficiently publicly accessible to count as printed publication. The court held that, because the presentation had been made publicly accessible, it constituted a printed publication for the purposes of 102(b). The court held that the fact that the presentation was never distributed to the public and was never indexed did not preclude a finding that it was a printed publication.

In re Lister 102(b) Printed publication and accessibility

Concerning availability for inspection, the court stated that a reference could be considered publicly accessible even if gaining access to it might require a significant amount of travel. Regarding his second argument, because the evidence contained in the Information Disclosure Statement neither provided substantial evidence that the manuscript was publicly accessible as of the critical date nor sufficed to prove a prima facie case of accessibility that would have shifted the burden to the applicant to show inaccessibility, the Board erred in affirming the examiner's 35 U.S.C. 102(b) rejection. The court held plaintiff did not have sufficient control over the prototypes nor did he receive feedback on their performance, which were requisite to a finding that their use was experimental. Thus, the court held that plaintiff's patent was invalid due to prior public use, and granted judgment as a matter of law. Indicia of experimentation 1. number of prototypes and duration of testing 2. attention to records or reports during testing 3. existence of a confidentiality arrangement 4. receipt of any commercial advantage by patentee 5. inventors control over the testing 6. tailoring of testing with respect to features in invention

Lough v. Brunswick Corp 102(b) Public use Experimental exception requirements p. 100

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Case Information
Allen Engg v. Bartell Industry 102(b) Public use on sale

Fact Summary
Both parties produced concrete riding trowels, which were used to smooth the surface of freshly poured concrete. The district court held the manufacturer liable for infringement both literally and under the doctrine of equivalents. The appellate court held that the district court failed to construe the claim limitations at issue and failed to make adequate factual findings on infringement.

Rule of Law
The district court erred in concluding that the patent holder's sales of a pre-patent model trowel did not create an on-sale bar merely because the model was in an experimental stage and customers received trade-in guarantees. To establish an on-sale bar, it must be shown that the device sold "fully anticipated the claimed invention or would have rendered the claimed invention obvious by its addition to the prior art." In addition, Bartell must also prove the facts underlying both prongs of the Pfaff test by clear and convincing evidence. Specifically, Bartell must show that, before the critical date--which in this case is July 13, 1989--the Red Rider was both (1) the subject of a commercial offer for sale not primarily for purposes of experimentation and (2) ready for patenting.

Motionless Keyboard v. Microsoft 102(b) Public use

Patent assignee sued manufacturers of game joysticks and cellular phones for infringement of patents directed to ergonomic keyboards. The District Court granted defendants' motions for summary judgment of noninfringement and of invalidity for public use, but denied joystick manufacturer's motion for summary judgment of anticipation. Assignee appealed.

The patent claim in question was properly construed to require a concavity in the housing and a keyboard within the concavity, and thus the corporations' devices were not infringing since they did not have keys contained entirely within a concave area. Further, no equivalence was shown since there was no evidence that the differences between the corporations' devices and the claimed elements were insubstantial, or that the corporations' devices performed The assignee contended that the keys comprising the substantially the same function in substantially the same keyboard could themselves form the concavity required by way to obtain the same result. the patent claim, contrary to the district court's However, there was no invalidating public use of the construction. The assignee also argued that the inventor's invention since the only disclosure which involved actual disclosure of the invention to potential investors and others connection to a computer occurred during testing by a prior to patenting did not constitute public use to establish tester who signed a nondisclosure agreement. Also, the invalidity of the patents under 35 U.S.C. 102(b). inventor's terminal disclaimer was not an admission that later-filed invention was obvious.

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Case Information
Class 8 9/19

Fact Summary
102(c), (d), (e), (f) p. 104-107, 135-141

Rule of Law

Application of Gibbs 102(c) - Abandonment

Appellants sought review of decision affirming patent examiner's rejection of select claims in a patent application, under 35 U.S.C. 102(c), premised on the examiner's assertion that appellants' issued patent had disclosed the subject matter of the select claims without claiming it and that, because the application was not filed before the patent issued, the application was not copending with the application on which the patent issued.

The court determined the presumption that appellants dedicated the subject matter of the select claims, which was disclosed but not claimed in the issued patent, to the public was rebutted by appellants' filing of the application within the one-year grace period following the issuance of the patent before the patent became a statutory bar under 35 U.S.C. 102(b). The court held that appellants had not abandoned the select claims, and accordingly reversed the decision affirming rejection of the select claims. Actual abandonment is divided into two categories, express and implied. It is said to be "express" when the inventor indicates by express words that he does not seek patent protection, or that he does not intend to preclude the public from availing itself freely of the benefits of his invention. Constructive abandonment occurs irrespective of the inventor's intention, as by the operation of some statute. For this reason constructive abandonment is often referred to as "statutory forfeiture." The court held that an invention is patented under 102(d) when a foreign patent is issued on the same invention and the validity of the foreign patent is irrelevant. Further, the invention becomes patented on the date when the patentee's rights under the patent become fixed. Appellant's rights became enforceable under the foreign patents prior to his United States application. Moreover, 102(b)'s bar applied to appellant's foreign patents even though they contained less than all of the aspects of his invention. Therefore, the court affirmed. Application to A or B alone is prior art to application to A and B. The law changed after this case now if applications are commonly owned and are available as prior art under 102(e)-(g), then you can remove the rejection but it only works for 103 rejections, not anticipation.

In re Kathawala 102(d)

Appellant filed for a patent in Greece and Spain. A year later, appellant filed for a patent in the United States expanding his original application. Both foreign patents were issued before the United States application. Appellant's application was denied under 35 U.S.C. 102(d). The USPTO BPAI affirmed. Appellant sought review.

In re Land 102(e)

Where one of the patent applicants had submitted a copending application, the court considered it to be a reference upon which to base a rejection for obviousness and sustained the denial of the patent claims.

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Case Information
In re Giacomini 102(e)

Fact Summary
The application claimed a technique for selectively storing electronic data in a readily accessible memory called a cache. The applicants did not dispute that the anticipatory reference described the invention claimed in their application. However, they argued that the anticipatory reference did not qualify as prior art because the applicants' filing date antedated the anticipatory reference's filing date by one month.

Rule of Law
The court agreed with the Board that the anticipatory reference had a patent-defeating effect as of the filing date of a provisional application from which it claimed priority under 35 U.S.C. 119(e), and which was filed before the applicants filed their application. The court rejected the applicants' argument that 119(e) shifted a patent's priority date but not its effective reference date to the filing date of an earlier provisional application. Thus, because the anticipatory reference had a patent-defeating effect as of the filing date of the provisional application, the applicants were not the first to invent in the United States and were not entitled to a patent. (Hilmer Paradox) Applying 35 U.S.C. 103(c), court held that confidential designs not owned by, or in common with, inventor under 35 U.S.C. 102(f) were considered prior art for determining non-obviousness patent requirement. The statutory language of 35 U.S.C. 103 provides a clear statement that subject matter that qualifies as prior art under 35 U.S.C. 102(f) or (g) cannot be combined with other prior art to render a claimed invention obvious and hence unpatentable when the relevant prior art is commonly owned with the claimed invention at the time the invention was made. While the statute does not expressly state in so many words that 102(f) creates a type of prior art for purposes of 103, nonetheless that conclusion is inescapable; the language that states that 102(f) subject matter is not prior art under limited circumstances clearly implies that it is prior art otherwise. p. 115-117 While evidence of in-house testing may be prima facie evidence of conception, reduction to practice requires that an invention be sufficiently tested to demonstrate that it will work for its intended purpose. The usefulness of the adhesive mixtures for their intended purpose was not inherently apparent, so that utility must have been demonstrated by actual testing of various adhesive mixtures. Mobley's experiments failed to set forth a single adhesive mixture that performed with sufficient success.

OddzOn Prod. v. Just Toys 102(f) art that is 102(f) is not available for 103 rejections

Plaintiff held a design patent for specially-designed football it sold. Defendants sold a competing version of the football. Plaintiff claimed that defendants infringed upon its design patent and trade dress. Plaintiff argued the products were so similar as to cause confusion among public. Defendants denied infringement and claimed plaintiff's design patent invalid because it relied on confidential designs that, with known prior art, rendered design obvious. OddzOn did not steal the exact idea, but changed the idea a little bit.

Class 9 9/21 102(g) Kimberly Clark v. J&J 102(g) Conception alone does not suffice to establish work as prior art Patent infringement suit was commenced by manufacturer of sanitary napkin. The District Court determined that the patent was not infringed, was unenforceable due to fraud on the Patent and Trademark Office, and was invalid.

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Case Information

Fact Summary

Rule of Law
As is the case here, "When the invention has not quite passed beyond experiment and has not quite attained certainty and has fallen short of demonstrating the capacity of the invention to produce the desired result, the invention itself is still inchoate." We hold the Mobley experiments were not prima facie evidence of a reduction to practice. Under 102(g), proof of a conception alone does not suffice to establish Mobley's work as prior to Roeder's invention. We therefore agree with K-C that Mobley's work was unavailable as 103 "prior art" under 102(g).

Woodland Trust v. Flowertree Nursery 102(g) corroboration p. 128

The patent holders alleged a violation of their patent on an invention for protecting a plot of foliage plants from freezing, which established an insulating covering of ice over ground level watering. The nursery corporation offered oral testimony from several interested witnesses that the nursery corporation had used the invention in their plant nursery for many years prior to the patent but had discontinued use of the process prior to its patent. The district court found that the patent was invalid under 35 U.S.C. 102(a) because of prior knowledge and use by others. Patentee (Apotex) brought action against competitor, alleging competitor infringed patents on process for making solid formulation of enalapril sodium for use in treatment of high blood pressure. The District Court granted competitor's motion for summary judgment on grounds patents were invalid, and patentee appealed.

On appeal, the court ruled that the patent was not invalid. The court ruled that the oral evidence, standing alone, did not provide the clear and convincing evidence necessary to invalidate the patent on the ground of prior knowledge and use under 102(a). He use of oral evidence of interested persons was a disfavored mechanism for proving patent invalidity.

Apotex USA v. Merck 102(g) Abandoned, suppressed, or concealed p. 130

(1) statute under which patent was invalid if invention was previously made in this country by another inventor who had not abandoned, suppressed, or concealed it did not limit proof negating suppression or concealment to activities occurring within the United States; (2) competitor, in asserting invalidity of patent on ground of prior invention, had to rebut any alleged suppression or Sherman stole the idea from Merck and tried to sue Merck concealment with clear and convincing evidence to the for the process. contrary; (3) patentee successfully discharged its burden of going forward with evidence creating a genuine issue of material fact of suppression or concealment; but (4) competitor, the first inventor of the process for manufacturing its own patented product, succeeded in rebutting by clear and convincing evidence inference of suppression or concealment created by its five-year period of inactivity in disclosing invention, and thus established invalidity of patents at issue based on its prior invention.

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Case Information
Dow Chemical v. AstrroValcour 102(g) Made by another prior to applicant, even if the other didnt realize the patentability of the invention

Fact Summary
The chemical company argued that the competitor's foam product infringed certain claims of its patents. The competitor alleged that the claims were invalid as it had made the foam prior to the chemical company's conception and reduction to practice of the invention.

Rule of Law
The chemical company did not show that the making of the foam did not meet the claims' limitations. The competitor's employees were aware the foam was made with polyethylene. Thus, the competitor recognized and appreciated the existence of its new process and product. Whether the competitor understood that it had produced a legally patentable invention was immaterial. It was enough that the competitor's employees appreciated the fact of their invention. Since there was no genuine issue of material fact, and the competitor had produced clear and convincing evidence that it made the invention prior to the chemical company's date of invention and the chemical company did not produce evidence that the competitor abandoned, suppressed, or concealed the invention, the claims-at-issue of the chemical company's patents were invalid under 35 U.S.C. 102(g)(2). 35 U.S.C. 102(g)(2) provides that a patent is invalid if before such person's invention thereof, the invention was made in this country by another inventor. This court has interpreted 102(g) to provide that priority of invention goes to the first party to reduce an invention to practice unless the other party can show that it was the first to conceive the invention and that it exercised reasonable diligence in later reducing that invention to practice. p. 93-97 (1) patent claims were not anticipated by prior art articles; (2) one claim was anticipated by scientist's public presentation; A presentation indicative of the state of knowledge and use in this country therefore qualifies as prior art for anticipation purposes under102. Furthermore, whether Dr. Martinola correctly remembered his presentation twelve years later is an issue of credibility, on which we review the district court's finding with deference.

Z4 Technologies Inc. v. Microsoft

Assignee of patents related to prevention of software piracy sued competitor for infringement. After jury found that competitor had infringed patents and did not prove that 102(g) patents were invalid, the District Court denied competitor's renewed motions for judgment as a matter of law and Conception and diligence motion for new trial. Competitor appealed.

Class 10 9/26 102(a), (b) Ecolochem v. So Cal Edison 102(a) publicly known and corroboration Patentee of deoxygenation processes for liquid containing dissolved oxygen brought patent infringement action against operator of nuclear generating station. Operator counterclaimed for declaratory judgment of invalidity, and asserted equitable defenses. The District Court granted partial summary judgment for operator, invalidating certain claims. The Court of Appeals affirmed in part and reversed in part. Following bench trial, the District Court found willful infringement, but determined that all infringed claims were invalid. Patentee appealed.

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Case Information
In re Borst 102(a) publicly known and Atomic Energy Act

Fact Summary
The Patent Office properly rejected appellant's claims concerning a neutron amplifier, because there was prior knowledge, despite its secrecy, in a classified unpublished Atomic Energy Commission memorandum.

Rule of Law
Prior knowledge contemplated by 35 U.S.C. 102(a) must be accessible to the public; however, because of section 155 of 1954 Atomic Energy Act, with respect to subject matter covered by patent provisions of Atomic Energy Act, prior knowledge or use under section 102(a) need not be accessible to the public. Evidence did not support jury's findings, in beverage manufacturer's patent infringement action against competitor, that patent was invalid due to prior public use The court held that the anticipatory dispensers did not include all the patent claims and the oral testimony about the prior dispensers was insufficient to meet the required burden of proving public use. Also, the holder's alleged misleading declarations and letter did not meet the threshold level of materiality and intent to mislead to show inequitable conduct. When the asserted basis of invalidity is prior public use, the party with the burden of proof must show that the subject of the barring activity met each of the limitations of the claim, and thus was an embodiment of the claimed invention. Generally, oral testimony of prior public use must be corroborated in order to invalidate a patent.

Juicy Whip v. Orange Bang 101 and 102(a) utility and publicly known p. 70

Beverage manufacturer brought action against competitor for infringing patent for post-mix beverage dispenser. The patent claims required the post-mix dispenser to have a transparent bowl that was filled with a fluid that simulated the appearance of the dispensed beverage and was resistant to bacterial growth, and that the dispenser created the visual impression that the bowl was the principal source of the dispensed beverage, although in fact the beverage was mixed immediately before it was dispensed.

Pfaff v. Wells Electronics

Petitioner developed a computer chip socket and prepared (1) the on-sale bar in 102(b) applies when two conditions detailed engineering drawings describing the invention. A are satisfied before the "critical date"--that is, the date 1 102(b) on sale bar the company placed an order for the sockets after petitioner year prior to a patent application's filing invention must be ready showed it the drawings in March 1981. However, the (a) the product must be the subject of a commercial offer for patenting, but does not invention was not reduced to practice until July 1981, and for sale, and need to be reduced to petitioner filed a patent application in April 1982. Petitioner (b) the invention must be ready for patenting, a condition practice brought an infringement suit against respondent, but which may be satisfied in at least two ways, by judgment in petitioner's favor was reversed by the court of (i) proof of reduction to practice before the critical date, or p. 95 appeals. The manufacturer took some time to develop the (ii) proof that prior to the critical date, the inventor necessary tooling, and the inventor did not fill the order prepared drawings or other descriptions of the invention until July 1981. On April 19, 1982, the inventor filed a that were sufficiently specific to enable a person skilled in patent application for his socket. the art to practice the invention; and (2) under this test, the inventor's patent was invalid, in that the invention was complete and ready for patenting when the inventor accepted the manufacturer's purchase order prior to April 8, 1981, as the drawings sent to the manufacturer fully disclosed the invention, even though the invention had not yet been reduced to practice.

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Case Information
Elan v. Andrx Pharma

Fact Summary

Rule of Law
In reversing the district court's decision, the court held that, although no particular language was required to be present in order for an offer of a license to constitute an offer for sale of the licensed product, a communication that failed to constitute a definite offer to sell the product and to include material terms was not an offer in the contract sense. The court held that the letter was an offer to enter into a license under a patent for future sale of the invention covered by the patent when and if it was developed. The court held that there was no proof that the letters were disguised offers for sale letters. p. 142-162 1. the scope and content of the prior art; 2. the level of ordinary skill in the art; 3. the differences between the claimed invention and the prior art; and 4. objective evidence of nonobviousness. In addition, the court outlined examples of factors that show "objective evidence of nonobviousness". They are: a. commercial success; b. long-felt but unsolved needs; and c. failure of others. The U.S. Supreme Court unanimously held that the patent claim was invalid as obvious since mounting an available sensor on a fixed pivot point of the competitor's pedal was a design step well within the grasp of a person of ordinary skill in the relevant art, and the benefit of doing so was obvious. The marketplace created a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for doing so. Further, the problem to be solved by the patent claim did not limit its application as prior art, the competitor's showing that it was obvious to try a combination of elements sufficiently supported the finding of obviousness, and the claim was the result of ordinary skill and common sense rather than innovation.

The patentee began developing an anti-inflammatory drug using a naproxen formulation for once-daily oral 102(b) on sale offer of administration. The patentee wrote to several drug a license without material companies discussing the possibility of entering into a terms is not an offer in the license under a patent for future sale of the drug. Over contract sense three years later, the patentee filed for and was issued a patent for the drug. Based on a challenge to the patent by a competitor, the district court held that the patent was invalid under the on-sale bar of 102(b) because the letters to the drug companies constituted an offer to sell the drug. Class 11 9/28 103 - Prima facie Graham v. John Deere 103 - Prima Facie Two appeals were consolidated to review the validity of patents in light of 35 U.S.C. 103, which provided that in determining the patentability of a device it was necessary to consider not only its novelty and utility, but also its obviousness to one of ordinary skill in the art. The court affirmed a circuit court judgment in favor of respondents in petitioners' plow clamp patent infringement suit, and reversed a decision affirming judgment for respondent, who brought cross actions for infringement of its sprayer patent in petitioners' consolidated declaratory judgment suits. To satisfy customer needs, the competitor modified its design for an adjustable pedal system for vehicles with cable-actuated throttles by adding a modular sensor to make the system compatible with vehicles using computercontrolled throttles. The licensees contended that the competitor infringed the patent claim of a positionadjustable pedal assembly with an electronic pedal position sensor attached a fixed pivot point.

KSR v. Teleflex Prima Facie

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Case Information

Fact Summary

Rule of Law
Affirmed Graham test, TSM was too rigid, but they didnt throw it out it is just one test that can be used Four errors in the Circuit Courts opinion 1. FC held that courts and PTO should look only to the problem the patentee was trying to solve 2. POSA attempting to solve a problem will be led only to those elements of the prior art designed to solve the same problem 3. patent claim cannot be proved obvious merely by showing that the combo was obvious to try 4. hindsight bias

Tokai v. Easton Enterprises Prima Facie

Patentees holding three patents related to extended-rod safety utility lighters with automatic locking features brought infringement action against competitors. Competitors counterclaimed for invalidity. The District Court construed patent claims and thereafter granted motion to strike supplemental invalidity contentions, and granted summary judgment of invalidity for obviousness. Prior Art

The patents were invalid because they claimed subject matter that would have been obvious in light of products that were already patented at the time the patents were obtained. Each of the components making up the claimed subject matter existed in the prior art, and there was a recognized need in the prior art for safer utility lighters.

Class 12 10/3 p. 158-159, 145-148 The Court of Appeals held that method of treatment that was subject of patent would have been obvious to one having ordinary skill in the art, namely otolaryngologist or similar physician with training in pharmaceutical formulations. Obviousness easier when the level of skill is higher. Smarter people know more about the technology. Daiichi Sankyo v. Apotex POSA, unexpected results Holder of patent for method of treating bacterial ear infections via topical administration of antibiotic ofloxacin brought infringement action against recipient of abbreviated new drug application (ANDA) for manufacture of generic ofloxacin ear drop. The District Court entered judgment for patent holder. In reaching its decision, the district court found that the ordinary person skilled in the art pertaining to the '741 patent would be a pediatrician or general practitioner, and that the patent was not obvious to someone skilled in the art. Inventor appealed after USPTO BPAI affirmed rejection, based on obviousness, of application for patent for hair brush featuring an allegedly unique shape.

In re Bigio Analogous art

(1) hair brush, as used in patent claims, was not limited to brushes for use only on human scalp hair, and also encompassed brushes that could be used on other parts of human or animal bodies; (2) toothbrush art was analogous art, for purposes of obviousness determination; and (3) combination of three toothbrush references rendered invention obvious.

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Case Information

Fact Summary

Rule of Law
Two tests define the scope of analogous art: 1. whether the art is from the same field of endeavor, regardless of the problem to be solved 2. if the reference is not within the field, whether the reference is still reasonably pertinent to the particular problem with which the inventor is involved.

Innovation Toys v. MGA Entertainment Analogous art

Patentee brought action alleging that competitor's board game infringed its patent for chess-like board game using laser beams and mirrored pieces. Competitor filed counterclaim of invalidity. Following resolution of disputed claim interpretations, the District Court entered summary judgment in patentee's favor and competitor appealed. Secondary Considerations

1) accused product literally infringed patent; 2) fact issues remained as to whether reference disclosing electronic, laser-based strategy game would have been reasonably pertinent; and 3) district court clearly erred in basing its obviousness analysis on what would have been obvious to layperson. p. 163-169 Patentee's commercial success may have relevancy to overall obviousness determination, under prong of test evaluating secondary indicia of nonobviousness, but a nexus must exist between patentee's commercial success and claimed invention; if commercial success is due to an element in the prior art, no nexus exists. Patentees failed to establish nexus between commercial success of their utility lighters and lighters' automatic locking feature, which purportedly distinguished patentees' lighters from prior art utility lighters, and therefore commercial success factor did not weigh in determination of whether patents were invalid on obviousness grounds. (1) Court of Appeals would not merely apply same standard as district court on appeal from grant of judgment as matter of law, and (2) claim for medication comprising ibuprofen and pseudoephedrine in combo was invalid for obviousness. Evidence of secondary considerations, including evidence of unexpected results and commercial success, are but a part of the totality of the evidence that is used to reach the ultimate conclusion of obviousness. In some cases, such evidence is the most probative of obviousness. The existence of such evidence, however, does not control the obviousness determination.

Class 13 10/5 Tokai Corp v. Easton Enterprises Patentees holding three patents related to extended-rod safety utility lighters with automatic locking features brought infringement action against competitors. Secondary considerations Competitors counterclaimed for invalidity. The District Court construed patent claims and thereafter granted Commercial success must motion to strike supplemental invalidity contentions, and be based on the novel granted summary judgment of invalidity for obviousness. inventive features Parties cross-appealed.

Richardson-Vickburg v. Upjohn

Assignee of patent for cough and cold medication brought infringement action against competitors, and competitors counterclaimed, alleging that patent was invalid and not Secondary considerations infringed and that intervening rights barred recovery. After assignee's motion for judgment as matter of law on Unexpected results and infringement issue was granted, jury entered verdict in commercial success favor of assignee. The District Court entered judgment as matter of law for competitors, on grounds of obviousness and prior invention. Assignee appealed.

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Case Information
Class 14 10/10

Fact Summary
Claim Construction p. 296-304

Rule of Law

Phillips v. AWH Corp

The patent concerned modular, steel-shell panels that could be welded together to form vandalism-resistant walls. Claim construction The patent holder made an agreement with the competitors to market and sell the panels. After that arrangement had Claim terms are generally ended, the patent holder discovered the competitors were given their ordinary and continuing to use his trade secrets and patented customary meaning technology without his consent.

The en banc panel affirmed the dismissal of the trade secret misappropriation claim. However, it found that, the term "baffles" was not subject to 35 U.S.C. 112, para. 6. Thus, the district court erred by limiting the term to corresponding structures disclosed in the specification and their equivalents. The fact that the written description of the patent set forth multiple objectives to be served by the baffles in the claims confirmed that the term should not have been read restrictively to require that the baffles serve all of the recited functions. The words of a claim are generally given their ordinary and customary meaning. The ordinary and customary meaning of a patent claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.

Bass Pro Trademarks v. Cabelas Inc. Claim construction

The patentee and a competitor entered into a settlement agreement embodied in a consent judgment, in which the competitor admitted that its stadium seat turkey vest infringed a patent for a vest garment with a pivotable seat member and agreed to be permanently enjoined from future infringement. The district court construed the claims as not limited to a vest having a front blouse portion with pockets and held the competitor in contempt for a chair combo, which included a pivotable seat with support consisting of adjustable straps and a fabric panel at the wearer's back. The competitor appealed. Patentee brought action against competitor, alleging infringement of patents for tamperproof retractable syringe. After jury found that patents had been infringed, the District Court entered order denying competitor's post-trial motions for judgment as matter of law and for new trial. Competitor appealed.

The term vest was a material limitation to the claim it would be improper to construe the invention to include other garments worn on the upper body since it would be contrary to the prosecution history that stressed the unique combination of a vest and pivotable seat member.

Retractable Techs v. Becton Dickson Claim construction

Claims and specification indicate that the needle holder and retainer member need not be separately molded pieces, but the term body is limited to a one-piece structure in light of the specification. Dissent says that you shouldnt read limitations into the claim

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Case Information
Class 15 10/12

Fact Summary
Markman and literal infringement p. 297-304

Rule of Law

Felix v. American Honda Motor Corp Markman literal infringement and prosecution history estoppel

Patent owner filed action against automobile manufacturer alleging infringement of patent describing arrangement in which pickup truck was provided with what could be considered trunk of conventional car. The District Court granted summary judgment of non-infringement. Owner appealed.

The owner contended that the finding of non-infringement was based upon misconstruction of the claim terms "mounted" and "engaging," and that an amendment during patent prosecution to add a gasket limitation was only tangential to patentability, and thus did not estop the owner from asserting infringement by equivalents. The appellate court held, however, that the claims terms were properly construed to preclude literal infringement of the patent, and that prosecution history estoppel precluded infringement by equivalents. The term "mounted" could not mean simply "positioned" as the owner argued since "mounted" was repeatedly used to describe structures that must be securely affixed or fastened together or they would fall apart by operation of gravity. Further, while "engaging" only required coming together to form a seal rather than interlocking, the construction error did not affect noninfringement since the gasket of the accused compartment was not securely affixed to the compartment. Also, the owner presumptively surrendered equivalents by the amendment and the owner failed to show that the gasket limitation was not central to the allowance of the claim. p. 304-329 Function-Way-Result Test The judgment of the District Court was reinstated by the Supreme Court and thereafter a rehearing was granted limited to the question of infringement of the four valid flux claims 18, 20, 22 and 23, relating to electric welding. The Supreme Court held that finding that the four flux claims of plaintiff's patent were infringed by defendants' device under doctrine of equivalents was not clearly erroneous. When an accused product or process performed substantially the same function in substantially the same way to obtain the same result an infringement occurred under the doctrine.

Class 16 10/17 Doctrine of Equivalents Graver Tank v. Linde Air Prods. DOE Function-Way-Result p. 305 The Linde Air Products Company brought action for patent infringement against Graver Tank & Manufacturing Company and others. A judgment holding certain claims of plaintiff's patent invalid and holding other claims valid and infringed was entered by the District Court and upon appeal the portion of the judgment holding certain claims invalid was reversed by the Court of Appeals and the defendants brought certiorari.

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Case Information
Warner-Jenkinson v. Hilton Davis Chem. DOE All Elements Rule p. 308, 311

Fact Summary
Patentee brought infringement action against competitor, alleging that competitor's ultrafiltration method for purifying dye infringed patented method under doctrine of equivalents. The District Court entered judgment in favor of patentee, and competitor appealed. The Court of Appeals of the Federal Circuit affirmed, and certiorari was granted.

Rule of Law
All Elements Rule (1) doctrine of equivalents is not inconsistent with Patent Act; (2) doctrine of equivalents must be applied to individual elements of patent claim, not to invention as a whole; (3) prosecution history estoppel does not automatically apply whenever patent claim has been amended during application process; (4) patentee's addition of lower pH limit during application process did necessarily preclude application of doctrine of equivalents as to that element; (5) remand was required to determine whether reason for amending patent claim to add lower pH limit was sufficient to avoid prosecution history estoppel; (6) doctrine of equivalents does not require proof of intent; (7) doctrine of equivalents is not limited to equivalents disclosed within patent itself. p. 315-326 Dedication to the Public (1) to the extent that YBM Magnex, v. ITC conflicted with the court of appeals' holding, YMB Magnex was overruled; and (2) the district court erred as a matter of law in concluding that the manufacturers infringed the patent under the doctrine of equivalents by using a steel substrate. When a patent drafter discloses but declines to claim subject matter, this action dedicates that unclaimed subject matter to the public, and application of the doctrine of equivalents to recapture subject matter deliberately left unclaimed would conflict with the primacy of the claims in defining the scope of the patentee's exclusive right.

Class 17 10/19 Dedication J&J v. RE Service Co. DOE Dedication p. 324 J&J was granted a patent relating to the manufacture of printed circuit boards. This patent was the subject of much litigation between the company and the manufacturers. In prior litigation, the manufacturers were found to have willfully infringed the patent. In the instant case, a jury found that the manufacturers had willfully infringed the patent under the doctrine of equivalents.

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Case Information
Festo VIII (Supreme Court) DOE Prosecution Estoppel p. 320

Fact Summary
Holder of two patents relating to magnetic rod-less cylinders sued competitor for infringement. The District Court held for plaintiff, and competitor appealed. The Court of Appeals affirmed. On grant of writ of certiorari, the Supreme Court vacated and remanded. On remand, the Court of Appeals initially affirmed in part, vacated in part, and remanded but on rehearing en banc reversed.

Rule of Law
Prosecution History Estoppel (1) prosecution history estoppel may apply to any claim amendment made to satisfy Patent Act's requirements; (2) amendment is not absolute bar to claim of infringement under doctrine of equivalents; and (3) patentee has burden of proving that amendment did not surrender particular equivalent in question. The rebuttable criteria are: a. alleged equivalent would have been unforeseeable b. reason for the narrowing amendment was tangential, or not directly relevant, to the alleged equivalent c. some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. Prosecution History Estoppel 1) factual issues existed as to whether ordinarily skilled artisan at time of amendment would have thought aluminum sleeve (or single two-way sealing ring) was objectively unforeseeable equivalent of magnetizable sleeve; 2) patent holder could not satisfy tangential criterion for aluminum sleeve (or two one-way sealing rings) equivalent; 3) patent holder could not satisfy some other reason criterion for aluminum sleeve (or single two-way sealing ring) equivalent. Prosecution History Estoppel presumption was not rebutted (1) equivalent proposed by owners was foreseeable and thus precluded by prosecution history estoppel principles; (2) judicial estoppel did not apply to bar competitor from reversing its prior position that its surge control system was unique; and (3) alleged equivalent bore a direct, not merely tangential, relation to amendment, and therefore tangentially criterion did not exempt owner from presumption of patent prosecution history estoppel.

Festo IX (Fed Circuit) DOE Prosecution Estoppel p. 321

Remand from case above

Honeywell v. Hamilton Sundstrand DOE Prosecution Estoppel

Owners of patents claiming technology to control airflow surge in auxiliary power units (APUs) brought infringement action against competitor. After the Court of Appeals vacated an infringement verdict in favor of owners and remanded, the District Court barred owners from asserting doctrine of equivalents. Owners appealed.

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Case Information

Fact Summary

Rule of Law
Prior Art Limitations to DOE and hypothetical claim (1) alleged infringer's motion for JNOV on infringement was timely and supported by its motion for directed verdict, and (2) claims were not infringed under doctrine of equivalents. Even if the function-way-result is met, however, there can be no infringement if asserted scope of equivalency of what is literally claimed would encompass the prior art. If hypothetical claim could not have been allowed by Patent and Trademark Office over prior art, it would be improper to permit patentee to obtain that coverage in infringement suit under doctrine of equivalents; if hypothetical claim could have been allowed, then prior art is not a bar to infringement under doctrine of equivalents.

Wilson Sporting Goods v. In actions alleging infringement of patent claim for certain David Geoffrey configuration of dimples on golf ball cover, the District Court found the patents valid and infringed, and entered DOE judgments accordingly. Appeals were taken and Prior Art Limitations consolidated.

Class 18 10/24 Indirect / Divided infringement geographic issues import and export CLS Bank Intl . Alice Corp Indirect infringement and geographical issues Corporation authorized by statute to engage in international banking activities filed action seeking declaratory judgment that it had not infringed method patents, with claims relating to method or process of exchanging financial obligation between parties, and system patent with claims relating to data processing system that implemented methods, and that patents were invalid and unenforceable. Owner counterclaimed that plaintiff had been infringing its patents and sought damages. Parties moved for summary judgment. p. 287-295 (1) accused system for settlement of payment instructions related to underlying foreign exchange transactions had been used in United States and (2) corporation offered to sell and sold accused methods within United States. The use of a claimed system under is the place at which the system as a whole is put into service, i.e., the place where control of the system is exercised and beneficial use of the system obtained. In other words, U.S. customers "used" the system by controlling the system's input and benefitting from the system's output. That was the case even though the defendant's relay, which controls the accused systems and is necessary for the other components of the system to function properly, is not located within the United States. Notwithstanding that all of the steps of a method are performed abroad, an infringing "sale" or "offer to sell" can still occur within the United States if all of the essential activity pertaining to the offer and sale of that activity has taken place in the United States.

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Case Information
Cardiac Pacemakers v. St. Jude Medical Indirect infringement of a process claim

Fact Summary
Owner of patent relating to cardiac defibrillators brought infringement action against competitor. 35 U.S.C. 271(f)(1) provides that one who supplies in or from the United States, all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components, shall be liable as an infringer. 271(f)(1). However, in method claims, the steps are the only things that the claims cover. Supplying the device is not an act of infringement

Rule of Law
The owner's entitlement to damages was limited to sales of devices that performed the steps of the claimed method; and that statutory provision governing infringement of a patent outside the United States did not apply to method patents, overruling Union Carbide Chemicals. In infringement action involving patent relating to cardiac defibrillators, patent owner's entitlement to damages for competitor's infringement was limited to sales of devices that performed the steps of the claimed method, where patent owner only sought royalties on its patented method, and not lost profits on an apparatus. The sale of equipment to perform a patented process is not a sale of the patented process. Section 271(f) does not forbid the supplying of products that are the result of steps of the patented method; rather it forbids the supply of the components themselves.

BMC Resources v. Paymentech Divided infringement

Assignee of patents claiming method for processing debit transactions without a personal identification number (PIN) brought patent infringement claim against competitor. Competitor counterclaimed, seeking declaration of noninfringement and invalidity. The District Court entered summary judgment of noninfringement, and assignee appealed.

The competitor that marketed PIN-less debit bill payment (PDBP) services did not perform or cause to be performed every step of patented method, as required for finding of direct patent infringement. To prove infringement, a party had to be shown to have committed the entire act of direct infringement. The patentee had chosen to include multiple steps in its asserted method. The record needed to at least contain some connection between the alleged infringer and the firms taking the additional claimed steps of the process. The alleged infringer provided data to debit networks, but there was no evidence that it also provided instructions or directions regarding the use of the data, nor was there any evidence even of a contractual relationship between the alleged infringer and the financial institutions that completed the final steps of the transactions.

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Case Information
Class 21 11/2

Fact Summary
Repair and reconstruction & licensing p. 280-281, 374-378

Rule of Law

Jazz Photo v. US ITC Repair/Reconstruction p. 280

Patentee brought action against alleged infringers before ITC based on importation of used, single use cameras, called lens fitted film packages (LFFP), which had been refurbished for reuse through various overseas facilities. ITC granted judgment against alleged infringers. Alleged infringers appealed.

(1) alleged infringers did not engage in prohibited reconstruction of cameras; (2) no license limitation could be implied from circumstances of sale of LFFPs; (3) patentee could not enforce its process patents on methods for loading LFFPs with film and a film cartridge; (4) process patent was not invalid for obviousness; and (5) design patent was exhausted by camera's unrestricted first sale in United States. The court concluded that the accused infringers were principally engaged in replacing the film, while the remaining portions of the camera remained as originally sold. The replacement of unpatented parts with a shorter life than the combination as a whole was characteristic of repair, not reconstruction. The federal patents law did not preempt state contract law so as to preclude enforcement of the contract to pay royalties for so long as the contracting party sold the underlying putative invention, even if a patent was not granted. p. 351-352, 366-369 1. licensee raised and preserved its contract claim; 2. licensee was not required to terminate or breach license agreement prior to seeking DJ of patent invalidity; and 3. Supreme Court would not address whether action was subject to dismissal on discretionary grounds. The Supreme Court did away with the Fed Circuits reasonable apprehension of suit test and replaced it with the totality of the circumstances test. 1. Art. III case or controversy existed which gave rise to DJ jurisdiction; and 2. Statement by patent holder, that it would not sue competitor, did not eliminate justiciable controversy created by actions of patent holder.

Aronson v. Quick Point Pencil comp. State contract law is not preempted by patent law Class 22 11/7

Suit was brought against an unsuccessful patent applicant for a declaratory judgment that a royalty agreement entered into between the applicant and plaintiff was unenforceable.

DJ and licensor/assignment estoppel MedImmune v. Genentech DJ and licensor Patent licensee brought action against licensor seeking DJ as to whether patent was invalid or unenforceable. The US Dist. Court dismissed the DJ judgment claims, and licensee appealed. The Fed. Circ. Affirmed.

SanDisk v. ST Microelectronics DJ and promise not to sue

Competitor brought action against patent holder seeking DJ of non-infringement and invalidity. The US Dist. Court dismissed the action.

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Case Information
Caracao Pharm Labs v. Forest Labs DJ action and standing ANDA case

Fact Summary
Generic drug manufacturer brought action against patent owner under DJ Act and Hatch-Waxman Act seeking judgment of noninfringment. The US Dist. Court dismissed the action when defendant unilaterally granted to plaintiff covenant not to sue for infringement of patent-in-suit.

Rule of Law
1. 4 ANDA satisfied injury-in-fact, causation, and redressability requirements of standing; 2. Action was ripe for review 3. Unilateral covenant to not sue competitor on patent did not moot the action, because a controversy still existed (i.e., the ANDA filer needed to challenge the patent in order to obtain FDA approval). p. 258-264 (1) prior art that applicant failed to disclose was not merely cumulative to prior art which was before examiner; (2) overwhelming circumstantial evidence, coupled with lack of any credible explanation for nondisclosure of prior art, supported finding that patentee had deceptive intent; (3) prior rejection of three-node communication claim would have been considered important by any reasonable examiner reviewing application; (4) patentee intended to deceive Patent and Trademark Office (PTO) by not disclosing to examiner adverse decisions by another examiner in a closely-related application; (5) allowance of claims to a three-node communication system was material to application and should have been disclosed to examiner; and (6) district court's holding patent unenforceable was not abuse of discretion. 1) inference of deceptive intent could not be drawn merely on theory that applicant had replaced its attorney during pros due to his concerns about need to disclose particular letter to USPTO without clear and convincing evidence that applicant knew about letter or attorneys concerns; 2) competitor could not carry its burden regarding reason for law firms dismissal simply because licensee did not prove credible alternative explanation; 3) undisclosed information contained in particular letter and data in possession of applicant regarding low to insignificant levels of tobacco specific nitrosamine (TSNA) in prior art would have been cumulative; and 4) phrase, anaerobic condition was not indefinite.

Class 23 11/9 Inequitable conduct McKesson Info Solutions v. Bridge Medicals Inequitable conduct Patentee sued competitor for infringement of patent related to patient identification system. Applicant was prosecuting two related applications at the same time. Applicant informed examiner of each case that there was a pending related case. However, applicants attorney did not identify references that were cited in each case in an IDS. The District Court dismissed action, finding patent unenforceable due to inequitable conduct.

Star Scientific v. RJ Reynolds Tobacco Inequitable conduct

Exclusive licensee of patent for tobacco curing process sued tobacco buyer for direct, contributory, and induced infringement. Applicant didnt disclose a letter to the USPTO during prosecution that discussed data relating to the application. The District Court entered judgment that patents were unenforceable due to inequitable conduct and invalid due to indefiniteness.

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Case Information
Thereasense v. Beckton Dickenson Inequitable conduct

Fact Summary
Patentee brought action against competitors alleging infringement of patent directed toward disposable blood glucose test strips for diabetes management. The District Court granted summary judgment of noninfringement and anticipation in part. The District Court following bench trial, granted judgment of obviousness and inequitable conduct. Patentee appealed. Panel unanimously upheld district court's judgments of noninfringement and invalidity. Patentee petitioned for rehearing en banc. Petition was granted and judgment of panel vacated.

Rule of Law
1) a finding that a misrepresentation or omission amounts to gross negligence or negligence under a should have known standard does not satisfy the inequitable conduct intent requirement, 2) a district court should not use a sliding scale, where a weak showing of intent may be found sufficient for inequitable conduct based on a strong showing of materiality, and vice versa, 3) a district court may not infer intent solely from materiality, but, instead, a court must weigh the evidence of intent to deceive independent of its analysis of materiality; 4) to meet the clear and convincing evidence standard, the specific intent to deceive must be the single most reasonable inference able to be drawn from the evidence; 5) when there are multiple reasonable inferences that may be drawn, intent to deceive cannot be found; 6) the patentee need not offer any good faith explanation unless the accused infringer first proves a threshold level of intent to deceive by clear and convincing evidence; 7) the materiality required to establish inequitable conduct is but-for materiality; and 8) remand was required. p. 240, 284-287 1) safe harbor provision of Patent Act for products imported for purposes of obtaining federal approval applies to process patent liability under the Tariff Act when the imported product is used for the exempt purposes, and 2) ITC had jurisdiction to investigate and remedy infringement with respect to product imported for purposes of obtaining federal approval, whether or not there was also actual sale in the United States or contract for sale of the imported product.

Class 24 11/14 271(e)(1) safe harbor Amgen v. ITC Safe harbor Roche imported patented drug into the US from Europe solely for the purpose of obtaining FDA approval. Patentee appealed from a decision of the ITC which granted importer's motion for a summary determination of noninfringement as to drugs imported for purposes of obtaining Food and Drug Administration (FDA) approval.

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Case Information
Roche v. Boler No Safe harbor before Hatch-Waxman

Fact Summary
Holder of patent on active ingredient in sleeping pill brought infringement action against competitor. The District Court found the patent not to be infringed and patent holder appealed.

Rule of Law
(1) competitor's use of patented ingredient to perform tests necessary for it to obtain approval of the FDA for its version of the sleeping pill once the patent expired was a prohibited use; (2) that use did not fall within the experimental use exception to the patent laws; (3) public policy did not require that exception be created for those using a patented ingredient to create a generic drug; and (4) scope of relief was for the District Court in the first instance. The Court of Appeals reversed. Certiorari was granted. The Supreme Court held that alleged infringer's use of patented invention to develop and submit information for marketing approval of medical devices under Federal Food, Drug, and Cosmetic Act was not infringement. p. 432-438, 212-213, 327-329 The court held that by offering patent-like protection for ideas deemed unprotected under the federal scheme, the statute conflicted with the federal policy favoring free competition in ideas that did not merit patent protection. As a result, the statute was preempted by the Eleventh Amendment, and the judgment in favor of respondent was affirmed.

Eli Lilly v. Medtronic Safe harbor

Owner of patents disclosing ventricular defibrillation devices brought infringement action. The District Court entered judgment for owner and enjoined alleged infringer from manufacture, use, or sale of implantable defibrillators. Alleged infringer appealed. Preemption and Means-Plus Function

Class 25 11/16 Bonito Boats v. Thundercrft Boats Pre-emption Petitioner developed and marketed a fiberglass boat hull. No patent application was filed to protect the utilitarian or design aspects of the hull. The hull was successful and an interstate market developed for the hull's trade. Six years after the hull had been made publicly available, Fla. Stat. was enacted, which made it unlawful for anyone to duplicate for the purpose of sale the process used by another hull manufacturer without written permission from that person. Petitioner sued respondent alleging that respondent violated the statute by using the same molding process petitioner used to manufacture respondent's hull. In a divided opinion, the state supreme court concluded that the statute impermissibly interfered with federal patent law and dismissed petitioner's complaint. Petitioner appealed.

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Case Information
Kraft Foods v. International Trading Company DOE and means-plusfunction

Fact Summary
Food manufacturer brought action against competitor, alleging infringement of manufacturer's patent for food packaging with compartmentalized rigid base trays. The District Court granted summary judgment for competitor, and manufacturer appealed.

Rule of Law
(1) term protecting back panel in patent meant panel that was relatively stiff; (2) term protecting referred to protection of both structural integrity of the food package and tray compartment bottoms against indentation and damage; (3) patent was not literally infringed; (4) whether competitor's labels involved pre-existing technology was irrelevant to claim of infringement under doctrine of equivalents; and (5) fact issues precluded summary judgment on claim under doctrine of equivalents. Competitor didnt infringe trade dress of assignee's display cards, color coding system, or eyeglass colors and styles; The court found that the district court erred by interpreting several of the claim elements in the three patents as meanplus-function elements subject to 35 U.S.C. 112, P 6. The court corrected the claim construction, and under that construction affirmed the patent infringement finding. However, the court found that the record did not contain substantial evidence to support the district court's findings concerning trademark and trade dress infringement and unfair competition. Absent a specifically defined, colordefinite, and stable visual appearance, plaintiff's alleged trade dress could not receive protection. The court reversed the grant of summary judgment on appellee's apparatus patent, because the district court erroneously construed the means-plus-function limitation of the apparatus claims under 35 U.S.C. 112, para. 6, and the doctrine of equivalents when it determined that the wheels of appellant's accused device were equivalent to the skid plate disclosed in appellee's apparatus patent; and affirmed the grant of summary judgment on appellee's method patent, as appellant failed to demonstrate that the method claims were indefinite or obvious under 103. The allegedly infringing structure was (1) known at the time the patent was issued, (2) disclosed in the patent, and (3) distinguished from the claimed structure.

Al-Site v. VSI International Assignee of patents claiming hangers for displaying nonprescription eyeglasses brought action against competitor DOE and means-plusand competitor's chairman, alleging patent, trademark, and function trade dress infringement. After granting assignee's motion for summary judgment on competitor's defense of inequitable conduct and then conducting jury trial, the District Court entered judgment upon jury verdict finding literal infringement of one patent, infringement of remaining patents under doctrine of equivalents, trademark and trade dress infringement, and unfair competition. The jury also imposed personal liability on competitor's chairman, making him jointly and severally liable for the damage award. Parties appealed. Chiuminatta Concrete concepts v. Cardina Industry DOE and means-plusfunction Patentee brought action against competitor, alleging infringement of patents relating to an apparatus and method for cutting concrete before it had completely hardened. The District Court entered summary judgment of infringement, dismissed competitor's affirmative defenses of patent invalidity and unenforceability, and released preliminary injunction bond upon entry of permanent injunction. Competitor appealed.

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Case Information
Class 26 11/21

Fact Summary
101 and remedies and marking p. 330-346

Rule of Law

Prometheus Labs v. Mayo Licensee filed infringement suit regarding patents claiming Collaborative Services methods for calibrating proper dosage of thiopurine drugs to treat autoimmune diseases. Utility The claims require a determining step, which requires a mental step Fed Cir says that the administering step is an actual step E-bay v. MercExchange Remedies Owner of patent for method of conducting on-line sales sued auction website operators for infringement. The District Court entered judgment on jury's finding that patent was valid and had been infringed, and awarded damages, but denied permanent injunctive relief sought by owner. The Court of Appeals for the Federal Circuit reversed in part, finding that District Court had abused its discretion by denying permanent injunction. Certiorari was granted.

1) method claims recited patent-eligible application of naturally occurring correlations between metabolite levels and efficacy or toxicity, and 2) method for calibrating proper dosage of thiopurine drugs to treat autoimmune diseases was patent-eligible matter.

1) generally applicable 4-factor test for perm. injunctive relief applies to disputes arising under Patent Act, 2) in successful patent infringement action, patent holder's willingness to license its patents and lack of commercial activity in practicing patents do not preclude permanent injunction. The 4-part test for permanent injunction: (a) that it has suffered an irreparable injury; (b) that remedies available at law are inadequate to compensate for that injury; (c) that considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (d) that the public interest would not be disserved by a permanent injunction. (1) as matter of first impression, patent holder was entitled to lost profits related to invention which was not subject of patent but which competed with infringing product; (2) patent holder was not entitled to damages in connection with alleged lost sales of dock levelers that were sold with restraints; (3) independent sales organizations (ISO) had no standing to pursue infringement claim; and 4) royalty rate established by district court was not unreasonable.

Rite Hite v. Kelley Remedies

Holder of patent on a mechanism for restraining trucks to loading docks during loading or unloading process brought infringement action against competitor. The District Court found infringement and the Court of Appeals affirmed. Following trial on damages, the District Court awarded damages for lost profits, and competitor appealed.

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Case Information
Georgia-Pacific v. US Plywood

Fact Summary

Rule of Law
A list of evidentiary facts relevant to the determination of the amount of a reasonable royalty for a patent license may be drawn from a conspectus of the leading cases. The following are some of the factors mutatis mutandis seemingly more pertinent to the issue herein: 1. The royalties received by the patentee for the licensing of the patent in suit, proving or tending to prove an established royalty. 2. The rates paid by the licensee for the use of other patents comparable to the patent in suit. 3. The nature and scope of the license, as exclusive or non-exclusive; or as restricted or non-restricted in terms of territory or with respect to whom the manufactured product may be sold. 4. The licensor's established policy and marketing program to maintain his patent monopoly by not licensing others to use the invention or by granting licenses under special conditions designed to preserve that monopoly. 5. The commercial relationship between the licensor and licensee, such as, whether they are competitors in the same territory in the same line of business; or whether they are inventor and promoter. 6. The effect of selling the patented specialty in promoting sales of other products of the licensee; that existing value of the invention to the licensor as a generator of sales of his non-patented items; and the extent of such derivative or convoyed sales. 7. The duration of the patent and the term of the license. 8. The established profitability of the product made under the patent; its commercial success and current popularity. 9. The utility and advantages of the patent property over the old modes or devices, if any, that had been used for working out similar results. 10. The nature of the patented invention; the character of the commercial embodiment of it as owned and produced by the licensor; and the benefits to those who have used the invention. 11. The extent to which the infringer has made use of the invention; and any evidence probative of the value of that use.

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Case Information

Fact Summary

Rule of Law
12. The portion of the profit or of the selling price that may be customary in the particular business or in comparable businesses to allow for the use of the invention or analogous inventions. 13. The portion of the realizable profit that should be credited to the invention as distinguished from nonpatented elements, the manufacturing process, business risks, or significant features or improvements added by the infringer. 14. The opinion testimony of qualified experts. 15. The amount that a licensor (such as the patentee) and a licensee (such as the infringer) would have agreed upon (at the time the infringement began) if both had been reasonably and voluntarily trying to reach an agreement; that is, the amount which a prudent licensee- who desired, as a business proposition, to obtain a license to manufacture and sell a particular article embodying the patented invention- would have been willing to pay as a royalty and yet be able to make a reasonable profit and which amount would have been acceptable by a prudent patentee who was willing to grant a license

Uniloc v. Microsoft

Patentee brought action for infringement of patent for a software registration system directed towards reducing the unauthorized use of software. The District Court granted summary judgment as to noninfringement. Patentee appealed. The Court of Appeals reversed and remanded. Following jury trial on remand, jury returned verdict awarding patentee $388,000,000 in damages. The District Court granted alleged infringer judgment as matter of law (JMOL) in part, and granted new trial on infringement and willfulness. Patentee appealed.

1) whether additional structural components in message digest and secure hash algorithms contained in alleged infringer's software products were summation algorithms as claimed in patent was fact issue for the jury; 2) whether product activation system contained in alleged infringer's software products used a registration system with a mode switching means, as claimed in patent was fact issue for jury; 3) alleged infringer did not act despite an objectively high likelihood that its actions constituted infringement, as required to show willful infringement of patent; 4) evidence relying on 25 percent rule of thumb, which was tool used to approximate the reasonable royalty rate the manufacturer of patented product would be willing to offer to pay to the patentee during a hypothetical negotiation, was inadmissible under Daubert; and 5) District Court did not abuse its discretion in granting conditional new trial on damages.

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