Bill Goodwine's Wiki - User contributions [en]

Quanta Brief Summary 901422128

2011-04-28T20:40:53Z

901422128: Created page with "=Brief of Dell, Inc, Hewlett-Packard, Co., and Gateway, Inc. as Amici Curiae in Support of Petitioners= *All of these companies manufacture computers with Intel microprocessor ch..."

=Brief of Dell, Inc, Hewlett-Packard, Co., and Gateway, Inc. as Amici Curiae in Support of Petitioners=
*All of these companies manufacture computers with Intel microprocessor chips and memory components made by other companies
*LGE, although already having received a royalty from Intel, seeks to extract another royalty payment from Quanta because of the required notice sent by Intel to customers
*Regimen created by the Federal Circuit would allow patent owners to work through the manufacturing chain
**Extract separate royalties at each stage for the same invention
*Purposes of the doctrine of patent exhaustion
**Patentee receives fair compensation
**Provides simplicity in the patent system
**Guarantees peace for owners of patented articles
**Federal Circuit has eliminated these and in doing so created a regime that is contrary to the purpose of the patent system
*The USSC in Univis Lens rejected the idea of patentees collecting multiple royalties at different stages of the manufacturing process
**Federal Circuit misinterpreted Univis Lens
*Purpose of the patent system is fulfilled when the patentee is compensated for the sale of the invention
**No basis for restraining use once the invention is sold
*Federal Circuit has turned the doctrine into an optional limitation that is avoided by altering the terms of sale
*FC confused two lines of decisions
##”Limitations on a license to ‘’’manufacture’’’ a patented device”
##”Limitations on the ‘’’downstream use’’’ of a patented device”
*Univis Lens determined that conditions on post-sale uses violated anti-trust laws because they are not enforceable under the patent laws
*The doctrine is a limitation of the rights granted to patent owners
**Doesn’t matter about the intent of the patent owner’s sale
*By obtaining a royalty from Quanta, it would be as if LGE had received no prior royalties from Intel
**Could also then extract royalties from the purchasers of Quanta’s computers
*The notion underlying the Federal Circuit’s doctrine of intent based patent exhaustion is false
**Instead allows a clever patent owner to extract multiple royalties every time the invention changes hands
***This does not serve the purpose of the patent system (promotion of science and the useful arts”
*The traditional doctrine requires a patent owner to extract his entire reasonable royalty at one point
*The FC’s rule could spread and have disastrous effects for any component of a computer (and other technologies)
*Conclusion: the petition for writ of certiorari should be granted

Here in list of arguments in Quanta

2011-04-28T20:40:46Z

901422128:

Post a link to your summary of the brief you read here.

[[Quanta Brief Summary 901330223]]

[[901349446 Quanta Brief]]

[[Quanta Brief Summary 901471466]]

[[Quanta Brief Summary 901422128]]

Quanta Computer, Inc. v. LG Electronics, Inc. (901422129)

2011-04-28T20:04:36Z

901422128: Created page with "Read for 4/29/11 ==Reading Notes== *Decided by the USSC in 2008 *Decide if patent exhaustion applies to the sale of components of a patented system that must be combined with ad..."

Read for 4/29/11

==Reading Notes==
*Decided by the USSC in 2008
*Decide if patent exhaustion applies to the sale of components of a patented system that must be combined with additional components in order to practice the patented method
*USSC says the sale did exhaust patents because the doctrine applies to method patents and the license authorizes the sale of components that substantially embody the patents
**Different than the CAFC
*LGE licensed a patent portfolio to Intel which permits them to make and sell chipsets that use the LGE patents
*License limitations
**No third party
*Claims to not alter rules of patent examination
**License did not extend to any product made by combining an Intel product with any non-Intel product
*Quanta purchased from Intel and made computers using Intel parts with non-Intel memory and buses in ways that practice LGE patents
*Eliminating method patents from exhaustion would seriously undermine the doctrine

===Patent Exhaustion===
*Doctrine provides that the initial authorized sale of a patented item terminates all patent rights to that item

User:901422128

2011-04-28T19:31:39Z

901422128: /* Remedies */

=Notes=

===Intro===
#[[Bonito Boats v. Thunder Craft (901422128)]]
#[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===Prior Art===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

===Infringement===
#[[CCS Fitness, Inc. v. Brunswick Corporation (901422128)]]
#[[Graver Tank & Mfg. Co. v. Linde Air Products Co. (901422128)]]
#[[Warner-Jenkinson Company v. Hilton Davis Chemical Co. (901422128)]]
#[[Sunbeam Products, Inc. v. Homedics, Inc. - Supplementary Case]]
#[[Honeywell Intern, Inc. v. Hamilton Sundstrand Corp (901422128)]]

===New Matter===
#[[Vas-Cath Inc. v. Mahurkar (901422128)]]
#[[TurboCare v. General Elec. Co. (901422128)]]

===New Subject===
#[[I4i Ltd. Partnership v. Microsoft Corp. (901422128)]]

===Remedies===
#[[Panduit Corp. v. Stahlin Bros. Fibre Works, Inc. (901422128)]]
#[[H.H. Robertson, Co. v. United Steel Deck, Inc. (901422128)]]

===Patent Exhaustion===
#[[Quanta Computer, Inc. v. LG Electronics, Inc. (901422129)]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]
# [[Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)]]
# [[Brief in favor of Honeywell for infringement - Due 4/4 (901422128)]]

H.H. Robertson, Co. v. United Steel Deck, Inc. (901422128)

2011-04-22T22:59:01Z

901422128: Created page with "Read for 4/27/11 *Decided by the CAFC in 1987 *USD appealed the injunction of the DC in favor of Robertson **CAFC affirms *Robertson owns patent for "Bottomless Sub-Assembly f..."

Read for 4/27/11

*Decided by the CAFC in 1987
*USD appealed the injunction of the DC in favor of Robertson
**CAFC affirms
*Robertson owns patent for "Bottomless Sub-Assembly for Producing an Underfloor Electrical Cable Trench"
**Moved for preliminary injunction based on reasonable probability of success of infringement proceedings
*In determination of preliminary injunction all burdens that would apply at a trial still hold
*USD argued invalidity based on obviousness
**A previous infringer had used the same prior art to attempt to prove invalidity and had failed
*Agree that Robertson proved a reasonable likelihood of a finding of validity in the future
*USD argues against the DC's construction of the term "bottomless"
**CAFC uses the same construction
*Find no error in the DC's analysis of the infringing device which concluded that the key portion of the tench remains bottomless - as stipulated by the patent
*CAFC again agrees there is a reasonable probability of finding for Robertson on the infringement issue
*Must also prove lack of an adequate remedy at law or other irreparable harm
**Nature of patents lend to irreparability
*In this case the equities weigh heavily against USD

===Injunctions===
*Relief is authorized by statute
**To prevent the violation of any right secured by patent
*Within authority of trial court
*Third Circuit Standard - an applicant for preliminary injunction must show"
**Reasonable probability of eventual success
**Irreparable injury if relief is not granted
**Secondary
***Harm to other parties of interest
***Public interest
*Have to weigh the magnitude of the threatened injury to the patent holder with the injury to the accused if the preliminary decision is wrong

User:901422128

2011-04-22T22:37:38Z

901422128: /* Remedies */

=Notes=

===Intro===
#[[Bonito Boats v. Thunder Craft (901422128)]]
#[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===Prior Art===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

===Infringement===
#[[CCS Fitness, Inc. v. Brunswick Corporation (901422128)]]
#[[Graver Tank & Mfg. Co. v. Linde Air Products Co. (901422128)]]
#[[Warner-Jenkinson Company v. Hilton Davis Chemical Co. (901422128)]]
#[[Sunbeam Products, Inc. v. Homedics, Inc. - Supplementary Case]]
#[[Honeywell Intern, Inc. v. Hamilton Sundstrand Corp (901422128)]]

===New Matter===
#[[Vas-Cath Inc. v. Mahurkar (901422128)]]
#[[TurboCare v. General Elec. Co. (901422128)]]

===New Subject===
#[[I4i Ltd. Partnership v. Microsoft Corp. (901422128)]]

===Remedies===
#[[Panduit Corp. v. Stahlin Bros. Fibre Works, Inc. (901422128)]]
#[[H.H. Robertson, Co. v. United Steel Deck, Inc. (901422128)]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]
# [[Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)]]
# [[Brief in favor of Honeywell for infringement - Due 4/4 (901422128)]]

Panduit Corp. v. Stahlin Bros. Fibre Works, Inc. (901422128)

2011-04-22T22:36:19Z

901422128: Created page with "Read for 4/27/11 ==Reading Notes== *Decided by the CAFC in 1978 *Reverse and remand decision of the DC to award 2.5% as a reasonable royalty for infringement *Panduit sued Stah..."

Read for 4/27/11

==Reading Notes==
*Decided by the CAFC in 1978
*Reverse and remand decision of the DC to award 2.5% as a reasonable royalty for infringement
*Panduit sued Stahlin for infringement of a patent for covering duct for wiring of electrical control systems
**Affirmed on appeal
*Also found them in contempt for violating the injunction
*The patent was bought from GE after they were found in an interference hearing to have invented it first
*Seek damages for lost sales as well as lost profits due to Stahlin's price cut
**Denied both by the DC
*Panduit did (1) and (3) below
**Master found substitutes under (2) but the CAFC says this was in error
**Still doesn't prove (4)
***No fair determination of the amount of profit he could have made
***Lack of evidence on Panduit's fixed costs - deficient accounting
*Affirm the DCs decision with regard to lost profits on lost sales
*Master found any loss due to price reduction was made up for by sales volume as a result of that price cut
**Net increase in profit
*Affirm DC's ruling on losses from price cut
*Key element of royalty determination is to return to original date of infringement (March 6, 1962)
*Stahlin made over $1 million from infringing sales
*Can't assume the original royalty because then the infringer loses nothing
*CAFC finds error with the master's findings with regards to substitutes
**By infringing Stahlin pays tribute to the utility of the device
**All the competition was also infringing
**Found evidence of substantial customer preference
*The royalty rate suggested by the master and adopted by the DC is erroneous
*Master was also wrong about Panduit's inability to maintain a high price differential as well as their awareness at the time of future price cuts
**Erroneously relied on expert testimony
***Had no experience in royalty determination, only licenses
*Factors to consider on remand:
**Lack of substitutes
**Panduit's policy of no licensing the patent
**Future business and attendant profit Pranduit would expect to lost by licensing
**Infringed patent gave the entire marketable value to the infringed duct

===Remedies===
*35 USC 283 states that a patent owner should receive "damages adequate to compensate for the infringement"
**Statutory rule says only damages can be recovered - "compensation for the pecuniary loss he has suffered from the infringement, without regard to the question whether the defendant has gained or lost by his unlawful acts"
*Have to ask what the patent holder would have made if the infringement hadn't happened
*To receive damages for lost sales must prove:
**Demand for product
**Absence of non-infringing substitutes
**Manufacturing and marketing to exploit demand
**Amount he would have made
*Reasonable royalty is awarded when lost profits cannot be proven

User:901422128

2011-04-22T21:52:10Z

901422128: /* Notes */

=Notes=

===Intro===
#[[Bonito Boats v. Thunder Craft (901422128)]]
#[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===Prior Art===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

===Infringement===
#[[CCS Fitness, Inc. v. Brunswick Corporation (901422128)]]
#[[Graver Tank & Mfg. Co. v. Linde Air Products Co. (901422128)]]
#[[Warner-Jenkinson Company v. Hilton Davis Chemical Co. (901422128)]]
#[[Sunbeam Products, Inc. v. Homedics, Inc. - Supplementary Case]]
#[[Honeywell Intern, Inc. v. Hamilton Sundstrand Corp (901422128)]]

===New Matter===
#[[Vas-Cath Inc. v. Mahurkar (901422128)]]
#[[TurboCare v. General Elec. Co. (901422128)]]

===New Subject===
#[[I4i Ltd. Partnership v. Microsoft Corp. (901422128)]]

===Remedies===
#[[Panduit Corp. v. Stahlin Bros. Fibre Works, Inc. (901422128)]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]
# [[Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)]]
# [[Brief in favor of Honeywell for infringement - Due 4/4 (901422128)]]

I4i Ltd. Partnership v. Microsoft Corp. (901422128)

2011-04-19T21:06:58Z

901422128:

Read for 4/20/11

==Reading Notes==
*Decided by the CAFC in 2010
*Infringement of an invention for editing custom XML
*I4i sued Microsoft because the custom XML in versions of Word infringed
**Jury found Microsoft liable for willful infringement
**District Court issued an injunction on future sales of Word
*CAFC affirms the injunction and modify its effective date
*June 1994 i4i applied for a patent for a method for processing and storing information about the structure of electronic documents
**An add-on for Word based on the invention allows Word to work with documents having custom XML
*Specifications of the '449 patent
**"Metacode is an individual instruction which controls the interpretation of the content of the data"
**Improved method for editing documents containing XML - stores content and metacodes separately
*Improvement means you can work solely on content or structure
*Filed suit in 2007
**Infringed claims 14, 18 and 20 by making, using, selling, etc. Word products capable of processing or editing custom XML
**Microsoft counterclaimed for invalidity - not found - and appealed
*Issues raised on appeal
##Construction of claim term "distinct"
##Jury's validity finding
##Jury's infringement finding unsupported bu substantial evidence
##Damages award
##Issuance and terms of injunction
*JMOL only appropriate if the court finds that a "reasonable jury would not have a legally sufficient basis to find for the party on that issue"
**Strict standards to overturn a judgment of wrong jury instruction
*"Distinct" is used to describe how the metacode map and mapped content are stored
*Microsoft argued "distinct" added two requirements
##Storing metacode map and mapped content in separate files
##Ability to edit the document's content and its metacode map independently and without access to each other
**District court rejected these
*CAFC agrees with the DC's rejection of Microsoft's limitations
**The term "file" never appears- no clear intent to limit claim scope
**Did not disavow storage means that were not files in the prosecution history
**No claims mention "independent manipulation" - uses the term "separate"
**Conclude that independent manipulation is a benefit but not a limitation
*Two issues of validity
##Obviousness
##anticipation by a software program called S4
**Only moved for pre-verdict JMOL with respect to the second

===Analysis of obviousness===
*Under Rita, DeRose, and Kugimiya
*Can only review if the DC's legal conclusion of nonobvious was right based on presumed factual findings
**In light of jury's factual findings, Microsoft did not establish obviousness

===Analysis of anticipation===
*S4 was delivered to clients in early 1993
*S4 did not create a metacode map
*Source code was destroyed so largely based on credibility of creators
**Both claim it did not practice the '449 patent
*Microsoft said i4i had to come forward with corroboration to "rebut" prima facie case of anticipation - not true in this instance
**Corroboration was not required in this case
*Was sufficient evidence for a jury to find no anticipation - no JMOL

===Infringement===
*Microsoft wants new trial because of errors in jury instruction about contributory infringement
**CAFC is satisfied with the instruction
*Also thinks the judge was wrong to tell them to focus on the XML editor and not all Word
**Allowed because it is a separate an distinct feature
*Jury ruling should be upheld if either contributory or induced infringement is supported
**Was also sufficient evidence to support the legal theories
*Direct - occurs only when someone performs the claimed method
*Contributory - liable if that party sells or offers to sell a material or apparatus for use in practicing a patented process
**Must be substantial evidence to support a finding under this theory
**Must be used in substantial non-infringing ways
*Microsoft definitely knew about the '449 patent
*Induced - patentee must show direct infringement and that the infringer "knowingly induced infringement and possessed specific intent to encourage another's infringement"

===Damages===
*Based largely on expert testimony of damage estimations
**Based on Georgia-Pacific factors
*DC did not abuse its discretion is finding Wagner qualified to apply damages methodology
**All expert testimony was relevant and properly fact-based
*Survey was extremely conservative
*Cannot reach the question of the size of the damages because Microsoft did not file a pre-verdict JMOL on damages
*Not entitled to a new trial
*Enhanced damages can be added for willful infringement
**Jury found it willful so the DC added $40 million

===Willfulness===
*Microsoft never attacked the jury instruction or the basis for their finding of willfulness
*WIllfulness happens "when the infringer was aware of the asserted patent, but nonetheless acted despite an objectively high likelihood that its actions constituted infringement of a valid patent"
**Must show they were aware of this objectively high risk
*Microsoft never tried to avoid infringement
*Proof that they know of the objectively high risk

===Permanent Injunction===
*Microsoft cannot sell, offer to sell, and/or import any infringing Word products
**Cannot use Word to open an XML file containing custom XML
**Cannot encourage anyone to use Word in that way
**Cannot provide support that describes how to use Word in this way
**Cannot test Word's ability to do this
*Only applies to users who purchase or license after the date the injunction takes effect
*Affirm issuance and scope
**Rule that the date should be 5 months, not 60 days, from August 11, 2009
*i4i's product was rendered obsolete - irreparable injury
*Issuance of the injunction is supported by the greater importance of the patented method to i4i
*Microsoft cannot continue its exploitation because it did so successfully
*Necessary to modify the effective date of the injunction because it would take Microsoft 5 months to implement the injunction

===General Patent Law===
*Claim is not limited to embodiments described unless there is a clear intention to do so by the patentee
**Not every benefit it a limitation

==Class Notes==

I4i Ltd. Partnership v. Microsoft Corp. (901422128)

2011-04-19T19:18:22Z

901422128: Created page with "Read for 4/20/11 ==Reading Notes== *Decided by the CAFC in 2010 *Infringement of an invention for editing custom XML *I4i sued Microsoft because the custom XML in versions of Wo..."

Read for 4/20/11

==Reading Notes==
*Decided by the CAFC in 2010
*Infringement of an invention for editing custom XML
*I4i sued Microsoft because the custom XML in versions of Word infringed
**Jury found Microsoft liable for willful infringement
**District Court issued an injunction on future sales of Word
*CAFC affirms the injunction and modify its effective date
*June 1994 i4i applied for a patent for a method for processing and storing information about the structure of electronic documents
**An add-on for Word based on the invention allows Word to work with documents having custom XML
*Specifications of the '449 patent
**"Metacode is an individual instruction which controls the interpretation of the content of the data"
**Improved method for editing documents containing XML - stores content and metacodes separately
*Improvement means you can work solely on content or structure
*Filed suit in 2007
**Infringed claims 14, 18 and 20 by making, using, selling, etc. Word products capable of processing or editing custom XML
**Microsoft counterclaimed for invalidity - not found - and appealed
*Issues raised on appeal
##Construction of claim term "distinct"
##Jury's validity finding
##Jury's infringement finding unsupported bu substantial evidence
##Damages award
##Issuance and terms of injunction
*JMOL only appropriate if the court finds that a "reasonable jury would not have a legally sufficient basis to find for the party on that issue"
**Strict standards to overturn a judgment of wrong jury instruction
*"Distinct" is used to describe how the metacode map and mapped content are stored
*Microsoft argued "distinct" added two requirements
##Storing metacode map and mapped content in separate files
##Ability to edit the document's content and its metacode map independently and without access to each other
**District court rejected these
*CAFC agrees with the DC's rejection of Microsoft's limitations
**The term "file" never appears- no clear intent to limit claim scope
**Did not disavow storage means that were not files in the prosecution history
**No claims mention "independent manipulation" - uses the term "separate"
**Conclude that independent manipulation is a benefit but not a limitation
*Two issues of validity
##Obviousness
##anticipation by a software program called S4
**Only moved for pre-verdict JMOL with respect to the second

===Analysis of obviousness===
*Under Rita, DeRose, and Kugimiya
*Can only review if the DC's legal conclusion of nonobvious was right based on presumed factual findings
**In light of jury's factual findings, Microsoft did not establish obviousness

===Analysis of anticipation===
*S4 was delivered to clients in early 1993
*S4 did not create a metacode map
*Source code was destroyed so largely based on credibility of creators
**Both claim it did not practice the '449 patent
*Microsoft said i4i had to come forward with corroboration to "rebut" prima facie case of anticipation - not true in this instance
**Corroboration was not required in this case
*Was sufficient evidence for a jury to find no anticipation - no JMOL

===Infringement===
*Microsoft wants new trial because of errors in jury instruction about contributory infringement
**CAFC is satisfied with the instruction
*Also thinks the judge was wrong to tell them to focus on the XML editor and not all Word
**Allowed because it is a separate an distinct feature
*Jury ruling should be upheld if either contributory or induced infringement is supported
**Was also sufficient evidence to support the legal theories
*Direct - occurs only when someone performs the claimed method
*Contributory - liable if that party sells or offers to sell a material or apparatus for use in practicing a patented process
**Must be substantial evidence to support a finding under this theory
**Must be used in substantial non-infringing ways
*Microsoft definitely knew about the '449 patent
*Induced - patentee must show direct infringement and that the infringer "knowingly induced infringement and possessed specific intent to encourage another's infringement"

===Damages===
*Based largely on expert testimony of damage estimations
**Based on Georgia-Pacific factors
*DC did not abuse its discretion is finding Wagner qualified to apply damages methodology
**All expert testimony was relevant and properly fact-based
*Survey was extremely conservative
*Cannot reach the question of the size of the damages because Microsoft did not file a pre-verdict JMOL on damages
*Not entitled to a new trial
*Enhanced damages can be added for willful infringement
**Jury found it willful so the DC added $40 million

===Willfulness===
*Microsoft never attacked the jury instruction or the basis for their finding of willfulness
*WIllfulness happens "when the infringer was aware of the asserted patent, but nonetheless acted despite an objectively high likelihood that its actions constituted infringement of a valid patent"
**Must show they were aware of this objectively high risk
*Microsoft never tried to avoid infringement
*Proof that they know of the objectively high risk

===Permanent Injunction===
*Microsoft cannot sell, offer to sell, and/or import any infringing Word products
**Cannot use Word to open an XML file containing custom XML
**Cannot encourage anyone to use Word in that way
**Cannot provide support that describes how to use Word in this way
**Cannot test Word's ability to do this
*Only applies to users who purchase or license after the date the injunction takes effect
*Affirm issuance and scope
**Rule that the date should be 5 months, not 60 days, from August 11, 2009
*i4i's product was rendered obsolete - irreparable injury

===General Patent Law===
*Claim is not limited to embodiments described unless there is a clear intention to do so by the patentee
**Not every benefit it a limitation

==Class Notes==

User:901422128

2011-04-19T15:43:58Z

901422128: /* Notes */

=Notes=

===Intro===
# [[Bonito Boats v. Thunder Craft (901422128)]]
#*[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===Prior Art===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

===Infringement===
#[[CCS Fitness, Inc. v. Brunswick Corporation (901422128)]]
#[[Graver Tank & Mfg. Co. v. Linde Air Products Co. (901422128)]]
#[[Warner-Jenkinson Company v. Hilton Davis Chemical Co. (901422128)]]
#[[Sunbeam Products, Inc. v. Homedics, Inc. - Supplementary Case]]
#[[Honeywell Intern, Inc. v. Hamilton Sundstrand Corp (901422128)]]

===New Matter===
#[[Vas-Cath Inc. v. Mahurkar (901422128)]]
#[[TurboCare v. General Elec. Co. (901422128)]]

===New Subject===
#[[I4i Ltd. Partnership v. Microsoft Corp. (901422128)]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]
# [[Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)]]
# [[Brief in favor of Honeywell for infringement - Due 4/4 (901422128)]]

Vas-Cath Inc. v. Mahurkar (901422128)

2011-04-11T15:57:36Z

901422128: /* Reading Notes */

Read for 4/11/11

==Reading Notes==
*Decided by the CAFC in 1991
*District Court granted partial summary judgment to Vas-Cath
**Ruled Mahurkar's two patents invalid for one reason of new matter
*Shouldn't have been allowed to use the original filing court
**Design application did not provide a written description of the invention
*CAFC reverses with respect to all claims
*Filed MArch 8, 1982
**Abandoned 11/84
**Catheter
*Also issued a Canadian Industrial Design in 1982 for the same device
*10/1/84 he filed the first of two utility patents at issue here
**Same drawings as original
**Claimed the original filing date as a continuation
**Issues in 86 and 87
*Vas-Cath arguing they were not valid because of a lack of written description
**Question was whether the drawings alone meet the written description requirement of 112
***Only then would antedate the Canadian patent
*Written descriptions separate from enablement
*Drawings alone may be sufficient
**Doesn't matter where the disclosure is found
**Usually utility drawings are more detailed but in this case they were nearly identical to the original design ones
*District Court said the drawings needed to describe what is novel and important but this is not true
**The combinations is what is claimed
**Required too much from the drawings
*On remand the District Court should analyze if the written description has been met as to the subject matter of each claim

===New Matter===
*Written description requirement
**"Full, clear, concise and exact terms to enable any person skilled in the art to which it pertains...to make and use the same"
*Most often matters when claims not presented at filing time are presented thereafter
*Have to determine if the original claims provide "adequate" support for the claims at issue
*Written description was part of the statutes before claims were required
*Two original objectives
**Enable artisans to use
**Put it in the public to determine common use prior
**Definiteness and description requirements
**Possible to enable without describing
*Description allows the filing date to be held as the date of invention
*Standard
**"Although the applicant does not have to describe exactly the subject matter claimed...the description must clearly allow persons of ordinary skill...to recognize that he or she invented what is claimed"
**Test is if it conveys that the inventor had possession at that time of the later claimed subject matter

TurboCare v. General Elec. Co. (901422128)

2011-04-11T01:02:06Z

901422128: Created page with "Read for 4/11/11 ==Reading Notes== *Decided by the CAFC in 2001 *TurboCare owns a patent for a shaft sealing system for fluid turbines **Two-position labyrinth-type seal to reso..."

Read for 4/11/11

==Reading Notes==
*Decided by the CAFC in 2001
*TurboCare owns a patent for a shaft sealing system for fluid turbines
**Two-position labyrinth-type seal to resolve the rubbing damage problem
*District Court granted summary judgment of noninfringement
**CAFC affirms for claim 2 and affirms/vacate claims 1,5,6 and 7
*Device uses springs to control how much space is between the ring segments based on air flow and pressure
**GE's apply a radial force while TurboCare's are circumferential but they work the same
*Claim 2 invalid for lack of written description
**It did not clarify what was already disclosed but added new matter
*District Court granted no literal infringement and no doctrine because Turbo distinguished his from prior art based on differences his now had with GE's
*Claims 2 is unsupported by claim 1 because of the type of spring and the location
**Issue of fact as to whether the amendment added new matter - no summary judgment
*Added disclose was no inherent according to below standard
*Affirm claim 2 is invalid for failure to meet written description requirement
*Means-plus-function format is not present here so S112P6 is not applicable
*GE claims Turbo disclaimed all embodiments using flat springs in the prosecution history
**CAFC decided that his claims did include flat springs so this is not true
*Have to be careful not to read a limitation from the preferred embodiment into the language of the claims
**Especially when another claim restricts the invention as the court's narrow construction
*Have to analyze all four infringing devices
**Two do not infringe because of the location of the drilled holes which were disclaimed in prosecution
**Other two do not literally infringe claim 1
*1992 Diaphragm Version
**GE claims it does not meet the small clearance position limitation
*GE claims doctrine is invalid because of estoppel
**Claim was narrowed in amendment so no range of equivalents is available
***CAFC determines nothing was actually narrowed
*Remand with regard to the 1992 Diaphragm Version and the 1995 Version devices
===New Matter===
*New matter requirement serves to ensure the patent applicant was in full possession of the claimed subject matter on the application of the filing date
**Any added claims must find support in the original specifications
*For a disclosure to be inherent the missing descriptive matter must be present in the original application's specifications such that one skilled in the art would recognize such a disclosure

User:901422128

2011-04-10T23:57:44Z

901422128: /* New Matter */

=Notes=

===Intro===
# [[Bonito Boats v. Thunder Craft (901422128)]]
#*[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===Prior Art===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

===Infringement===
#[[CCS Fitness, Inc. v. Brunswick Corporation (901422128)]]
#[[Graver Tank & Mfg. Co. v. Linde Air Products Co. (901422128)]]
#[[Warner-Jenkinson Company v. Hilton Davis Chemical Co. (901422128)]]
#[[Sunbeam Products, Inc. v. Homedics, Inc. - Supplementary Case]]
#[[Honeywell Intern, Inc. v. Hamilton Sundstrand Corp (901422128)]]

===New Matter===
#[[Vas-Cath Inc. v. Mahurkar (901422128)]]
#[[TurboCare v. General Elec. Co. (901422128)]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]
# [[Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)]]
# [[Brief in favor of Honeywell for infringement - Due 4/4 (901422128)]]

Vas-Cath Inc. v. Mahurkar (901422128)

2011-04-10T23:56:42Z

901422128: Created page with "Read for 4/11/11 ==Reading Notes== *Decided by the CAFC in 1991 *District Court granted partial summary judgment to Vas-Cath **Ruled Mahurkar's two patents invalid for one reaso..."

Read for 4/11/11

==Reading Notes==
*Decided by the CAFC in 1991
*District Court granted partial summary judgment to Vas-Cath
**Ruled Mahurkar's two patents invalid for one reason of new matter
*Shouldn't have been allowed to use the original filing court
**Design application did not provide a written description of the invention
*CAFC reverses with respect to all claims
*Filed MArch 8, 1982
**Abandoned 11/84
**Catheter
*Also issued a Canadian Industrial Design in 1982 for the same device
*10/1/81 he filed the first of two utility patents at issue here
**Same drawings as original
**Claimed the original filing date as a continuation
**Issues in 86 and 87
*Vas-Cath arguing they were not valid because of a lack of written description
**Question was whether the drawings alone meet the written description requirement of 112
***Only then would antedate the Canadian patent
*Written descriptions separate from enablement
*Drawings alone may be sufficient
**Doesn't matter where the disclosure is found
**Usually utility drawings are more detailed but in this case they were nearly identical to the original design ones
*District Court said the drawings needed to describe what is novel and important but this is not true
**The combinations is what is claimed
**Required too much from the drawings
*On remand the District Court should analyze if the written description has been met as to the subject matter of each claim

===New Matter===
*Written description requirement
**"Full, clear, concise and exact terms to enable any person skilled in the art to which it pertains...to make and use the same"
*Most often matters when claims not presented at filing time are presented thereafter
*Have to determine if the original claims provide "adequate" support for the claims at issue
*Written description was part of the statutes before claims were required
*Two original objectives
**Enable artisans to use
**Put it in the public to determine common use prior
**Definiteness and description requirements
**Possible to enable without describing
*Description allows the filing date to be held as the date of invention
*Standard
**"Although the applicant does not have to describe exactly the subject matter claimed...the description must clearly allow persons of ordinary skill...to recognize that he or she invented what is claimed"
**Test is if it conveys that the inventor had possession at that time of the later claimed subject matter

User:901422128

2011-04-10T23:12:30Z

901422128: /* Notes */

=Notes=

===Intro===
# [[Bonito Boats v. Thunder Craft (901422128)]]
#*[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===Prior Art===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

===Infringement===
#[[CCS Fitness, Inc. v. Brunswick Corporation (901422128)]]
#[[Graver Tank & Mfg. Co. v. Linde Air Products Co. (901422128)]]
#[[Warner-Jenkinson Company v. Hilton Davis Chemical Co. (901422128)]]
#[[Sunbeam Products, Inc. v. Homedics, Inc. - Supplementary Case]]
#[[Honeywell Intern, Inc. v. Hamilton Sundstrand Corp (901422128)]]

===New Matter===
#[[Vas-Cath Inc. v. Mahurkar (901422128)]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]
# [[Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)]]
# [[Brief in favor of Honeywell for infringement - Due 4/4 (901422128)]]

Brief in favor of Honeywell for infringement - Due 4/4 (901422128)

2011-04-04T03:38:47Z

901422128: Created page with "==Brief in favor of Honeywell== Honeywell brought an infringement suit against Sundstrand for a device used to control airflow surge in auxiliary power units (APUs) which occurs..."

==Brief in favor of Honeywell==

Honeywell brought an infringement suit against Sundstrand for a device used to control airflow surge in auxiliary power units (APUs) which occurs when the flow through a compressor is not high enough. The surge control systems are designed to maintain a minimum level of airflow through the compressor at all times. In the Honeywell patent, a “set of adjustable inlet guide vanes (IGVs)…regulate the amount of ambient air drawn unto the load compressor.” The IGVs’ position is used to determine a set point for desired flow conditions which are compared to actual flow conditions in a feedback loop to regulate the surge bleed valve and prevent surging. Sundstrand invented a similar device, the APS 3200, which uses the inlet temperature to determine the set point, which is used in a similar fashion. In the APS 3200, the position of the IGVs is used to determine if the APU is experiencing high flow conditions, in which case the control signal is blocked because it produces an ambiguous signal which may cause the system to open the surge bleed valve unnecessarily. In the most recent CAFC case, Sundstrand maintains that Honeywell cannot make use of the doctrine of equivalents because a narrowing amendment made during the patent prosecution surrendered the technology used by Sundstrand. The CAFC sided with Sundstrand on this issue, relying on prosecution history estoppel to bar Honeywell from using the doctrine of equivalents. There are several flaws in the CAFCs analysis which should be taken into consideration by the Supreme Court.

First, as discussed by Judge Newman, the CACF majority concluded that Honeywell surrendered its claims to the technology used by Sundstrand during patent prosecution when the application was amended at the insistence of the patent examiner to rewrite dependent claims as independent claims. The Court maintains that the equivalent at issue here was foreseeable at the time of the application and therefore should have been claimed by Honeywell.

With regards to the surrender of specific claims, it is a matter of fact determined by the courts that the original independent claims, which were dropped and replaced by previously dependent claims, made no mention of IGVs so it is incorrect to conclude that Honeywell surrendered specific technology in the amended application which was never present in the original application. In this instance, the CAFC seems to have incorrectly determined that the mere cancellation of the original dependent claims, which included no narrowing amendment or limiting argument in the estoppel, served to surrender every potential equivalent. This effectively restricts a patentee’s access to the doctrine of equivalents; a doctrine intended to protect inventors from insubstantial changes to their patent claims as stated in Graver Tank. It is common practice for broader claims to be cancelled in the prosecution and dependent claims rewritten as independent claims, but this is irrelevant to whether a claimed element is amended or narrowed, a fact which the CAFC overlooks in this case by failing to analyze the original claims for content which was narrowed or surrendered.

The Court also errs when it states that the technology used by Sundstrand, although developed a decade after Honeywell’s patent, was foreseeable to those skilled in the art and thus should have been claimed as an equivalent by Honeywell. The Supreme Court in Warner-Jenkinson stated that the proper time for evaluating interchangeability is at the time of infringement, not at the time of patent application. Therefore the Court cannot conclude surrender of a technology which was not specifically included in the patent claims when it was not known, in its entirety, at the time of patent application. This standard essentially precludes the application of the doctrine of equivalents to future technology which was not included in the original application and therefore any analysis of foreseeability not applied to “readily known equivalents” at the time of application limits the doctrine in a way not intended by the Supreme Court.
With these considerations in mind, it is clear that Honeywell should be allowed to assert the doctrine of equivalents in this case. A jury already determined the equivalence between the two technologies involved here and therefore since the doctrine is applicable it must be determined if an estoppel is reasonable based on the prosecution history which the facts of the case should it clearly is not. Therefore, the Supreme Court should find in Honeywell’s favor the infringement of their patents based on the doctrine of equivalents.

If this alone is not sufficiently convincing, the Supreme Court should also apply the triple identity test discussed by the Warner-Jenkinson Court for determining equivalence for mechanical systems. The test identifies and compares the “function served by an element, the way it serves that function, and the result thus obtained.” In this case, both Honeywell’s and Sundstrand’s technologies serve to control airflow through a compressor to prevent surges, do so by evaluating actual airflow into the APU and comparing that to a set point determined by other parameters in a feedback loop, and controlling the surge bleed valves to maintain a proper airflow through the APU. Under this precedent, it is clear that the Sundstrand APS 3200 is equivalent to Honeywell’s patent and was not surrendered during the patent prosecution.

User:901422128

2011-04-04T03:37:33Z

901422128: /* Homework */

=Notes=

===Intro===
# [[Bonito Boats v. Thunder Craft (901422128)]]
#*[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===Prior Art===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

===Infringement===
#[[CCS Fitness, Inc. v. Brunswick Corporation (901422128)]]
#[[Graver Tank & Mfg. Co. v. Linde Air Products Co. (901422128)]]
#[[Warner-Jenkinson Company v. Hilton Davis Chemical Co. (901422128)]]
#[[Sunbeam Products, Inc. v. Homedics, Inc. - Supplementary Case]]
#[[Honeywell Intern, Inc. v. Hamilton Sundstrand Corp (901422128)]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]
# [[Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)]]
# [[Brief in favor of Honeywell for infringement - Due 4/4 (901422128)]]

Doctrine of Equivalents Case List

2011-04-02T20:19:59Z

901422128:

Add your case to the list with a one-paragraph (approximately 250 words) summary of the facts at issues, i.e., "an umbrella is or is not equivalent to a parasol because..."

Please put the cases in chronological order. If two are from the same year, then put them in alphabetical order. Also put your name, your login name or NDID number with your case. Use the following for a template.

* Goodwine v. Batill, 123 US 4567 (1066)
This case concerned a patent for an iPad and the patentee sued the maker of an iPod for infringement. The important part of the claim was "a device for playing music and other media comprising a touch screen..." The court held that iPod infringed the iPad patent because the ... was equivalent to the ... because ...

Bill Goodwine

*AMEC Liquidating Trust v. IVAC Corporation, 885 F.2d 1574 (1989)

AMEC had a patent for a thermometer with a plastic cover held on by a hooking type mechanism. IVAC created a thermometer with a cover held on by a ring that created a friction lock. The CAFC held the IVAC invention was non-infringing on the AMEC patent because under the doctrine of equivalents, it did not perform the same function in the same way. The AMEC thermometer cover used an inscription fit, which created deep scratches in the cover. The IVAC thermometer used a friction fit, which only created superficial scratches in the cover. The CAFC found that the superficial scratches did not constitute an inscription fit. Also, the CAFC decided that AMEC did not present any evidence proving that the ring in the IVAC patent was equivalent to the “hook” in the AMEC patent. Because of this, the patent was non-infringing under the doctrine of equivalents.

901444263

*Johnston v. IVAC Corp., 885 F.2d 1574 (1989)

The inventor, Turner, invented a thermometer probe cover that stays on (this was owned by AMEC). It kept the cover on via a sharp metal hook to tear into the cover’s plastic. IVAC developed a thermometer that served a similar purpose of keeping the probe cover on, except that it did so with a ring on the probe (to hold the cover via friction). IVAC intentionally left the probe free of any sharp edge to ease the removal of the probe cover when needed. District Court of Southern California ruled in summary judgment that IVAC’s thermometer probe covers do not infringe AMEC’s. On appeal from AMEC, the Court of Appeals affirmed the judgment. A ring that does not tear the plastic cover is not equivalent to the hook that does. [http://campus.westlaw.com.proxy.library.nd.edu/result/default.wl?mt=CampusLaw&db=ALLCASES&rlt=CLID_QRYRLT4121840350313&origin=Search&sp=003654480-2000&method=TNC&cfid=1&rp=%2fwelcome%2fCampusLaw%2fdefault.wl&eq=welcome%2fCampusLaw&rltdb=CLID_DB1095239350313&srch=TRUE&query=TI(JOHNSTON+%26+IVAC)&vr=2.0&fmqv=s&action=Search&fn=_top&service=Search&sv=Split&rs=WLW11.01]

901471466

* Lemelson v. General Mills, Inc., 968 F.2d 1202 (1992)

Lemelson sued Mattel, alleging that Mattel's "Hot Wheels" toy car track infringed on his patented toy track. The U.S. District Court for the Northern District of Illinois found in favor of the plaintiff. Mattel appealed to the CAFC. The Court held that the "Hot Wheels" track did not contain all the limitations of the patent; it was equivalent to the prior art. That is, Lemelson's patent could not be both valid in light of the prior art and infringed upon by Mattel. Furthermore, upon his first application, claim 3 of Lemelson's patent had five clauses. The PTO examiner found the patent to be indistinguishable from the prior art. Lemelson added clauses [f] and [g] and received a patent. The important parts of the claim were, "[f] said guide means include a pair of spaced apart runner portions for defining the pathway of a vehicle moving over said track, [g] said spaced apart runner portions include upwardly extending rails for guiding the wheels of a vehicle." The Court held that "Hot wheels" did not contain any elements equivalent to the clauses [f] and [g]. The Court also noted that the public is entitled to the PTO record to determine the scope and meaning of claims.

901330223

*Valmont Industries Inc. v. Reinke Manufacturing Company Inc., 983 F.2d 1039 (1993)

901316153

This case concerns an adaption for center-pivot (i.e. rotating) irrigation systems. The adaption (an apparatus that attaches to the main frame of the sprinkler) allows the corners of a field, normally missed by the standard rotating irrigation system, to be watered. The infringement issue relates to the means by which the position of the sprinkler is detected, relative to the field. The patent uses a method of pivot angle encoders, while the "infringing" patent uses buried electromagnetic cables to guide the sprinkler around the field.

The CAFC ruled that the second device was not infringing, reversing the decision of the district court. The district court argued that the means of controlling the system were equivalent. The CAFC's argument was that while the two irrigation systems performed substantially the same overall function to obtain substantially the same overall result as the claimed invention, the way those results were achieved was substantially different. "Comparison of these two control means compels the conclusion that the claimed control means and Reinke's control means are not structurally equivalent.[...][E]ven though both the control means in the specification and the control means on Reinke's device use electric signals, the structures generating those signals are strikingly different."

Because the doctrine of equivalence requires that the two devices perform substantially the same function in substantially the same way to achieve substantially the same results, the two control systems were not equivalent under the doctrine of equivalence because they did not meet the "way" requirement of the doctrine of equivalence.

*Hale Propeller, L.L.C. v Ryan Marine Products Pty., LTD., et al, 151 F. Supp .2d 183 (2001) Connecticut District Court
Ryan owned patent 4411073, issued on 25 October 1983, which concerned devices to measure the pitch of propeller blades. Ryan originally filed the claim on 13 July 1981 it was rejected and then ammended on 4 October 1982. Hale's device called the "Hale Propeller MRI" was developed in 1997. In question are claims 1(b),(c),(f), and 6. A third party, Michigan Wheel Corporation, a distributor of Hale's invention filed for patent invalidity. The important differences between Hale's and Ryan's device are that Hale's does not use gears or worm-drives to rotate the blade and the device does not give direct readouts of the measurements using electric circuits. The issue with claim 1(b) was if a roller was a necessary part of the structure because it prevents skipping of the probe making the measurements more accurate. The court used means-plus-function to rule that the roller was important and Hale did not infringe. The issue with claim 1(c) deals with whether a worm or gear drive is necessary to rotate the blade. Ryan's patent discloses a hand-cranked device, like Hales, but includes a worm-drive. Part of Ryan's ammendment to his claim was to include worm gear to the hand-cranking device and therefore the court used prosecution history estoppel to make their decision because Ryan forfeited that claim (hand-cranked device without worm-drive) in order to get the patent and therefore cannot use doctrine of equivalents to get the claim back. The issue of claim 1(f) was whether the computer in the claim was a special computer needed for the readouts. The court ruled that the claim was not that narrow, but then the court ruled that claim 6 dealt with a computer that receives measurement data from the optical encoder and therefore Hale did not infringe. The patent was also ruled valid using the roller and worm drive to prove that it was non-obvious §103, definitively disclosed §112, and not anticipated by prior art §102(b).

Gillian Allsup

901281608

*Siemens Medical Solutions USA, Inc. v. Saint-Gobain Ceramics & Plastics, Inc. Nos. 2010-1145, 2010-117. (2001) United States Court of Appeals, Federal Circuit

This case began as an infringement lawsuit by Siemens Medical Solutions USA, inc. against Saint-Gobain Ceramics and Plastics, Inc. for the alleged infringement of a patent held by Siemens for a scintillator, a part of an x-ray machine that detects radiation. Saint-Gobain owned a patent for a similar device and the circuit court found that this patent infringed on the patent held by Siemens, which was filed earlier. Though the doctrine of equivalents was used to rule infringement, Saint-Gobain was found to have accidentally, rather than willfully infringed and Siemens was awarded 52.3 million dollars.

Siemens filed for patent number 4,958,080 on August 4, 1989. This patent was for a scintillator containing cerium-doped- lutetium oxyorthosilicate. This is a component of a radiation detector that absorbs gamma-ray photons from an x-ray machine and converts them to visible light so the results can be interpreted. Saint-Gobain also produces scintillators, filing patent number 6,6424,420 in 2000 for a cerium-doped lutetium-yttrium orthosilicate. The chemical composition differs from that of the Siemens' patent as %10 of the lutetium is substituted for yttrium. These scintillators were sold by Saint-Gobain to Philips Medical Systems, a competitor of Siemens. The circuit court found that the composition of Saint-Gobain's scintillator preformed largely the same function in the same manner as Siemens' patent, and therefore was infringement under the doctrine of equivalence.

Saint-Gobain filed a motion for a new trail, on the basis that the jury was not told that infringement by the doctrine of equivalence must be proved by clear evidence and argued that damages should be remitted. The Federal Appeals Court did not grant Saint-Gobain a new trial, but did reduces the damages to 44 million.

*Sunbeam Products, Inc. v. Homedics, Inc., Slip Copy, 2010 WL 5230892 (2010)

This case involved a patent for a force-transmitting bearing used with a platform scale. Sunbeam held a patent which specified bearings which were attached to the platform via loose tabs which allowed the bearings to move horizontally. The patent claims required the base of the bearing to be oriented parallel to the platform and remain parallel to the platform at all times. The structure of the accused device was such that the bearings were connection to the platforms using dimples on the lower surface of the platform which the bearings fit into. Sunbeam had criticized prior art which used a similar dimple connection during prosecution beacuse of the potential for unwanted force moments applied by the bearing. The CAFC upheld the District Court's finding of no infringement based on the doctrine of equivalents because bearings which rocked and pivoted, as the accused device did, did not fall within the reach of the patent claims because they did not remain parallel to the platform at all times.

901422128

*

Honeywell Intern, Inc. v. Hamilton Sundstrand Corp (901422128)

2011-04-02T18:50:57Z

901422128: Created page with "Read for 4/4/11 ==Reading Notes== *Decided by the CAFC in 2008 *Honeywell sued Hamilton for infringement **District ruled infringement, CAFC overruled and remanded, District Cou..."

Read for 4/4/11

==Reading Notes==
*Decided by the CAFC in 2008
*Honeywell sued Hamilton for infringement
**District ruled infringement, CAFC overruled and remanded, District Court barred Honeywell from asserting doctrine of equivalents and Honeywell appealed
*Holdings
**Equivalent proposed by owners was foreseeable and thus precluded by prosecution history estoppel principles
**Judicial estoppel did not apply to bar competitor from reversing its prior position that its surge control system was unique
**Alleged equivalen bore a direct, not merely tangential, relation to amendment, and therefore tangentiality criterion did not exempt owner from presumtion of patent prosecution history estoppel
*CAFC affirmed
*Patent is for technology to control airflow surge in APUs
*Honeywell could not show that the alleged equivalent was unforseeable at the time of the narrowing amendment
**Had to rebut the presumption of surrender
*Honeywell's surge control was more efficient than prior art
**Prevents build-up of pressure and maintains sufficient airflow
*194 patent came about because the 893 patent had to separate the system and method claims to be patentable under 121
**Systems in 893 and methods in 194
*All claims in question require the APU to used IGVs
**Original independent claims did not contain reference to IGVs
**PTO rejected as obvious
**Allowed the dependent claims when rewritten into independent form
*Hamilton had an APU device with a surge control system that compares a flow-related parameter to a set point based on air inlet temperature and adjusts the surge bleed valve in response
**At high flow values this may mess up and open the surge bleed valve unnecessarily - APS 3200 blocks this problem
***Uses IGV position to determine if the APU is experiencing high or low flow
*Originally found infringement under doctrine
**CAFC first said Honeywell's "act of “rewriting [the] dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel"
***Vacated and remanded to see if Honeywell could rebut the presumption
*Rebut by
**Alleged equivalent unforeseeable at time of narrowing
**Rationale underlying the narrowing was only a tangential relation to the equivalent
**Some other reason suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent
***Honeywell conceded the third
*Tangentiality should be decided solely on the prosecution history
*Honeywell argued it was unforeseeable in 1982-83
**Sundstrand pointed to similar technology in the late 70s
*District court ruled it was foreseeable to one skilled in the art
*Honeywell did no successfully rebut the presumption with the tangential relation prong

===CAFCs analysis of foreseeability===
*Ties patent enforcement to patent acquisition
*Aims to prevent the doctrine from capturing subject matter that patentee could have foreseen during prosecution and included in the claims
*Agree with the DC that even the narrow equivalent proposed by Honeywell was foreseeable
*Sundstrand invented in 1991-1995, years after 82-83 for Honeywell
**Time alone does not determine foreseeability
*In the 82-83 time frame surge control systems did not use inlet guide vane position to ascertain high or low flow
**Was known that IGVs were routinely used and affected air flow rate
*No technical barrier to using IGV position to determine air flow
*Honeywell did not rebut the presumtion of surrendered with evidence of unforeseeability
*In previous trial, Sundstrand held a position that the APS 3200 surge control system and its particular use of IGV position was unique

===CAFCs analysis of tangential relation===
*Focuses on the patentee's objectively apparent reason for the narrowing amendment
*To rebut the estoppel presumption with tangentiality, a patentee must "demonstrate that the rationale underlying the amendment bore no more than a tangential relation to the equivalent in question, or, in other words, that the narrowing amendment was peripheral, or not directly relevant, to the alleged equivalent, and the reason for the narrowing amendment should be discernible from the prosecution history record."
*Examiner instructed that the dependent claims would be allowed if rewritten into independent form
*Honeywell effectively added the IGV limitation to the claimed invention when it rewrote the application

===Dissenting Opinion===
*Court held previously that "the surrendered subject matter is defined by the cancellation of independent claims that do not include a particular limitation and the rewriting into independent form of dependent claims that do include that limitation."
*Court held that since there was no narrowing amendment or limiting argument during prosecution, surrender of the entire universe of potential equivalents is presumed when the original independent claim is canceled
*No prosecution history narrowed the claim element at issue
*Court is almost doing away with the doctrine by assuming surrender of all equivalents during prosecution
*Never examined the surrendered subject matter
**Indeed no narrowing amendments define surrendered subject matter

User:901422128

2011-04-02T17:31:59Z

901422128: /* Infringement */

=Notes=

===Intro===
# [[Bonito Boats v. Thunder Craft (901422128)]]
#*[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===Prior Art===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

===Infringement===
#[[CCS Fitness, Inc. v. Brunswick Corporation (901422128)]]
#[[Graver Tank & Mfg. Co. v. Linde Air Products Co. (901422128)]]
#[[Warner-Jenkinson Company v. Hilton Davis Chemical Co. (901422128)]]
#[[Sunbeam Products, Inc. v. Homedics, Inc. - Supplementary Case]]
#[[Honeywell Intern, Inc. v. Hamilton Sundstrand Corp (901422128)]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]
# [[Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)]]

Sunbeam Products, Inc. v. Homedics, Inc. - Supplementary Case

2011-03-29T18:46:49Z

901422128: Created page with "Read for 3/30/11 ==Facts of the Case== *Sunbeam sued for infringement of a force-transmitting bearing for a platform scale *District Court entered summary judgment of non-infrin..."

Read for 3/30/11

==Facts of the Case==
*Sunbeam sued for infringement of a force-transmitting bearing for a platform scale
*District Court entered summary judgment of non-infringement
**CAFC upheld
*Patent clearly excluded the structure found in the accused device from the scope of its claims
**A dimple one the lower side of the platform was used in prior art to connect the bearings and Sunbeam criticized this saying it increased the possibility of an undesired bending or force moment being applies to the force collection lever
*Homedics bearings are like the prior art, connected with a dimple
*The claims required the base of the bearing to be oriented parallel to the platform and remain parallel to the platform at all times
**Interpreted by the court
**No juror could find that bearings that rock and pivot remain parallel to the underside of the platform
*Definitely not literal infringement
*Doctrine of equivalents analysis
**Cannot treat a bearing that rocks and pivots as falling within the reach of the patent

User:901422128

2011-03-29T18:23:36Z

901422128: /* Infringement */

=Notes=

===Intro===
# [[Bonito Boats v. Thunder Craft (901422128)]]
#*[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===Prior Art===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

===Infringement===
#[[CCS Fitness, Inc. v. Brunswick Corporation (901422128)]]
#[[Graver Tank & Mfg. Co. v. Linde Air Products Co. (901422128)]]
#[[Warner-Jenkinson Company v. Hilton Davis Chemical Co. (901422128)]]
#[[Sunbeam Products, Inc. v. Homedics, Inc. - Supplementary Case]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]
# [[Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)]]

Warner-Jenkinson Company v. Hilton Davis Chemical Co. (901422128)

2011-03-26T20:01:08Z

901422128: Created page with "Read for 3/28/11 ==Reading Notes== *Decided by the USSC in 1997 *Hilton sued Warner for infringement of a 1985 patent for purifying dyes **Patent specifies filtration through a..."

Read for 3/28/11

==Reading Notes==
*Decided by the USSC in 1997
*Hilton sued Warner for infringement of a 1985 patent for purifying dyes
**Patent specifies filtration through a porous membrane at pH of 5-9
***This was specified because examiner found an overlap with an old patent which was above pH 9
*Hilton sued based on doctrine of equivalents
**District court ruled in Hilton's favor
*Court rejects Warner's argument that the doctrine is inconsistent with the Act of 1952
**USSC disagrees
**Court in concerned that the broad application conflicts with holdings that a patent may not be enlarged beyond the scope of its claims
***To avoid this, apply doctrine individually to each element and not the product/process as a whole
*Warner is wrong to suggest that surrender of subject matter during the patent prosecution establishes a bright line beyond which no equivalents may be claimed
**Must determine the reason behind the language change
***In this case it is known why the upper limit was added but not the lower
*USSC reverses and remands
**Federal Circuit did not consider all requirements of the doctrine
*USSC does not speak the death of the doctrine but does seek to clarify it
*Parties disagree about why the low limit (pH 6) was added
*Jury ruled infringement under the doctrine but awarded only 20% of the damages for lack of intent
**CAFC affirmed
*Warner argues doctrine is inconsistent with aspects of the Act of 1952
**Section 112 - specific claims
**Section 251-252 - reissue process
**None of these hold enough water
*USSC is concerned the doctrine has become unbounded by patent claims
**Must be applied to individual elements and not the invention as a whole
*Warner also offered alternative arguments for a more restricted doctrine of equivalents
**Graver Tank never meant to supersede a well-established limit on non-literal infringement
**Any surrender, during prosecution, for whatever reason, precludes recapturing subject matter
***Only if it is to avoid unpatentability does it do this
*Since the reason for the lower limit is unknown, it does not preclude the application of doctrine of equivalents
**USSC thinks the burden should be placed on the patent holder to establish the reason for an amendment during prosecution
***If none is given it should be assumed that it was related to patentability
*Doctrine does not require proof of intent
*Warner's final argument is that the doctrine should be limited to equivalents disclosed within the patent
**Also should be limited to those known at the time of the patent
**USSC rejects both of these ideas
*USSC agrees with the Federal Circuit that juries should apply the doctrine but they do not decide it here

===Infringement===
*Considerations for applying doctrine
**Patent's context
**Prior art
**Purpose for which an ingredient is used, etc.
**Whether a person reasonable skilled in the art would know the interchangeability of an ingredient
*Intent plays no role in the doctrine's application
*Proper time for evaluating knowledge of interchangeability is at the time of infringement, not the patent
*1952 Patent Act is not materially different from the 1870 Act with regard to claiming, reissue, and the role of the PTO
*Section 112 allows "means" claims
*Prosecuting history estoppel places limits on the doctrine and insulates it from conflict with the Patent Act
*Triple identity test
**Function served by an element, the way it serves that function, and the result thus obtained
**Good for mechanical but not other products and processes
*Insubstantial differences test
**Offers little guidance to what is insubstantial

===Concurring judges===
*Have to be careful that this new presumption does not unfairly discount the expectations of a patentee who had no notice of such a presumption at the time of patent prosecution

==Class Notes==

==Class Notes==

User:901422128

2011-03-26T18:39:42Z

901422128: /* Infringement */

=Notes=

===Intro===
# [[Bonito Boats v. Thunder Craft (901422128)]]
#*[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===Prior Art===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

===Infringement===
#[[CCS Fitness, Inc. v. Brunswick Corporation (901422128)]]
#[[Graver Tank & Mfg. Co. v. Linde Air Products Co. (901422128)]]
#[[Warner-Jenkinson Company v. Hilton Davis Chemical Co. (901422128)]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]
# [[Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)]]

Graver Tank & Mfg. Co. v. Linde Air Products Co. (901422128)

2011-03-25T02:12:47Z

901422128: Created page with "Read for 3/25/11 ==Reading Notes== *Decided by the USSC in 1950 *Linde sued Graver for infringement of a patent relating to electric welding *Rulings **District court riled ce..."

Read for 3/25/11

==Reading Notes==
*Decided by the USSC in 1950
*Linde sued Graver for infringement of a patent relating to electric welding
*Rulings
**District court riled certain claims invalid and others valid and infringed
**CAFC reversed the invalid claims
**Supreme Court agreed with District Court and found four claims infringed by doctrine of equivalents
*Does the substitution of the manganese (not alkaline earth metal) for the magnesium constitute a substantial change as to make the doctrine inapplicable
*Two are equivalent for welding purposes
**Identical in operation and result

===Infringement===
*First step is to resort to the first instance of the words of the claims
**If accused matter is clearly withing the claim, it infringes
*Cannot limit infringement to exact duplications because that would not be fair the inventor because those who copy could make insignificant changes
**Response to this was doctrine of equivalents
*Doctrine of equivalents
**Purpose is that one may not practice fraud
**"if it performs substantially the same function in substantially the same way to obtain the same result"
**Applied to mechanical or chemical equivalents
**Equivalence is not an absolute

===Dissenting Judge===
*Gracer's flux did not literally infringe the patent, as all agreed
**What is not specifically claimed is dedicated to the public
*Congress created a statute which has been interpreted to allow inventors to expand their claims
*Inventor had even tested manganese and found the others more suitable
*Not a manufacturer cannot rely on the language of a patent claims
**Business men should be free to utilize all knowledge not preempted by the precise language of a patent claims

==Class Notes==

CCS Fitness, Inc. v. Brunswick Corporation (901422128)

2011-03-24T18:46:37Z

901422128: Created page with "Read for 3/25/11 ==Reading Notes== *Decided by the CAFC in 2002 *District Court ruled non-infringement in favor of Brunswick for a curved "pedal lever" for an exercise machine *..."

Read for 3/25/11

==Reading Notes==
*Decided by the CAFC in 2002
*District Court ruled non-infringement in favor of Brunswick for a curved "pedal lever" for an exercise machine
**Ruled that the claim limitation "reciprocating member" only covers a single-component straight bar
*CAFC holds that the term "member" does not limit the claim's meaning so it does include the curved bar
**Reverse the decision on these grounds
*Three combination patents owned by CCS are the issue here
**No claims describe the shape of the reciprocating member but they are depicted as single-member and straight
*Sued in 4/98 for infringement under the doctrine of equivalents and literally
**CCS maintains a broad, ordinary meaning of "member" in the art while Life Fitness maintains no customary meaning exists
*Precedents show that dictionary definitions may establish a claim term's ordinary meaning
*Patentee need not describe every conceivable future embodiment of his invention
**Using the guidelines below, the terminology does include the accused member
*Cannot rely on the expert testimony of the meaning of "member"
*Must determine if the claim term recites sufficient structure
**Examine understood meaning in the art
*District court relied on the preferred embodiments alone as representing the entire scope of the claimed invention
**Wrong
*Remanded to district court

===Infringement===
*Two-step analysis
##Determine the correct scope and meaning of a disputed claim term
##Comparison to the accused device to see whether that device contains all the limitations, either literally or by equivalents
*Four ways to limit a term beyond its ordinary meaning
##Patentee clearly set forth a definition in the specification or prosecution history
##Patentee distinguished the term from prior art based on particular embodiments
##The term deprives the claim or clarity
##The claim is phrased in step- or means-plus-function format

==Class Notes==

User:901422128

2011-03-24T15:24:54Z

901422128: /* Notes */

=Notes=

===Intro===
# [[Bonito Boats v. Thunder Craft (901422128)]]
#*[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===Prior Art===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

===Infringement===
#[[CCS Fitness, Inc. v. Brunswick Corporation (901422128)]]
#[[Graver Tank & Mfg. Co. v. Linde Air Products Co. (901422128)]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]
# [[Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)]]

Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)

2011-03-22T18:50:48Z

901422128:

Assignment due 3/22/11 to read and describe a case involving a similar issue to that discussed In re Hall involving prior description in printed publication.

Chosen Case: [http://campus.westlaw.com.proxy.library.nd.edu/result/previewcontroller.aspx?TF=756&TC=4&tf=-1&spa=003654480-2000&rs=WLW11.01&serialnum=1999224124&fn=_top&sv=Split&tc=-1&pbc=D30DA4EC&ordoc=291K67.1&findtype=Y&vr=2.0&rp=%2ffind%2fdefault.wl&mt=CampusLaw&RP=/find/default.wl&bLinkViewer=true MEHL/Biophile Intern. Corp. v. Milgraum]

==The Case==

This case was decided by the CAFC in 1999 on appeal from the District Court for the District of New Jersey which found a patent granted for a method of hair removal using a laser invalid. MEHL/Biophile sued Milgraum for infringement of the patent and Milgraum contended that all of the patent claims were anticipated by an instruction manual for a specific laser and a journal article (Polla article). The manual Milgraum cited described the use of the RD-1200 laser for tattoo removal. MEHL/Biophile argued in response that the manual was not an anticipating reference because it did not teach use of the laser for hair removal and it did not include specific claim limitations, such as holding the laser "substantially vertically." Citing court precedents, the CAFC stated that "a prior art reference may anticipate when the claim limitation or limitations not expressly found in that reference are nonetheless inherent in it." With regards to the RD-1200 manual, the court held that it did not anticipate because it did not teach all of the claimed limitations and they were not inherent in the use of the laser in accordance with the manual. The Polla article, however, does inherently include the limitations of the claimed invention in its description of the effect of using such lasers on guinea pigs. Since nothing in the claims limited the method to human skin, Biophile's argument that the article was irrelevant because it focused on guinea pigs was found to be invalid. Based on this finding, the court ruled the patent invalid in light of the Polla article as an anticipation of the invention.

Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)

2011-03-22T18:25:25Z

901422128: Created page with "Assignment due 3/22/11 to read and describe a case involving a similar issue to that discussed In re Hall involving prior description in printed publication. Chosen Case: [http:..."

User:901422128

2011-03-22T18:22:48Z

901422128: /* Homework */

=Notes=

===Intro===
# [[Bonito Boats v. Thunder Craft (901422128)]]
#*[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===Prior Art===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]
# [[Description of case involving "Prior Description in Printed Publication" - Due 3/23 (RKC)]]

In re Hall (901422128)

2011-03-21T00:25:04Z

901422128: Created page with "Read for 3/21/11 ==Reading Notes== *Affirmed by CAFC in 1986 on appeal from the PTO Board **Rejected claims 1-25 of an application filed 2/27/79 based on "printed publication" ..."

Read for 3/21/11

==Reading Notes==
*Affirmed by CAFC in 1986 on appeal from the PTO Board
**Rejected claims 1-25 of an application filed 2/27/79 based on "printed publication" bar
*Reference in this case is a doctoral thesis
**Must determine if the thesis is available as a "printed publication" one year prior
*Dissertation was submitted in September 1977 in Germany
**Copies were received in the library of Freiburg University in 11/77 and made available to the student body and general public in 12/77
*Examiner determined the thesis was available prior to the critical date
**Hall challenged that there was not enough evidence to to specify the date of public availability
***He relied upon a case with very different facts
*Date established was significantly before the critical date (2.5 months)

===Prior Art===
*102 b is grounded on the principle that once an invention is in the public domain it is not longer patentable
*"Public accessibility" has become the touchstone for determining what constitutes a "printed publication"
*No precedent that accessibility can only be shown by evidence establishing a specific date

==Class Notes==

User:901422128

2011-03-21T00:08:37Z

901422128: /* New Topic */

=Notes=

===Intro===
# [[Bonito Boats v. Thunder Craft (901422128)]]
#*[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===Prior Art===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]

In re Carlson (901422128)

2011-03-21T00:07:59Z

901422128: Created page with "Read for 3/21/11 ==Reading Notes== *Decided in CAFC in 1992 *Carlson appeals decision of PTO Board affirming examiners rejection of his patent **CAFC affirms *Must determine i..."

Read for 3/21/11

==Reading Notes==
*Decided in CAFC in 1992
*Carlson appeals decision of PTO Board affirming examiners rejection of his patent
**CAFC affirms
*Must determine if a previous invention protected in Germany constitutes an invention patented in a foreign country
*Carlson filed 11/19/84
**Design of a dial compartment bottle
*The German thing is a design registration issued by the government
**Submit a drawing, picture, etc. to secure registration after which a list of registered designs are published
**List contained in Federal Gazette
*In this case the Gesch embraced three bottle designs - one pertinent
*A Revlon article illustrates the bottle cap used by Carlson
**Demonstrates its existence in prior art
*Carlson argued the Gesch should not be prior art
**Examiner disagrees and said it would have been obvious under 103 but 102 is irrelevant because it was less than one year
*Previous case determined Gesch counted as a bar under 102
**Rights and privileges need not be coextensive with U.S. law as long as they are substantial and exclusive
*Court previously refused to find a distinction between 102a and 102d
**Already settled that a Gesch qualifies under 102d
**Different situations in a and d do not necessitate different credentials of qualification
*Carlson argues it only counts if the prior art is disclosed in a readily-accessible fashion
**Only requirement is that it is "available" to the public
*Unfortunate that it is such a burden but this burden is imposed by law on the person of ordinary skill in the art
**Applicant is assumed to know all the prior art
*Symmetrical image would have been obvious as asymmetry is used only for aesthetic effect

===Prior Art===
*102 helps to determine the use of prior art
**Potential bar created by a patent in a foreign country gives rise to use of such a foreign patent as a prior art reference
*Section 172 uses six months as the time bar for design patents
*102a is for foreign patents issued by another and 102d is for foreign patents issued by the same inventor
*In re Cho determined that the prior art must have suggested the overall appearance of the design and not just components in order to be appropriate

==Class Notes==

User:901422128

2011-03-20T23:39:03Z

901422128: /* Notes */

=Notes=

===Intro===
# [[Bonito Boats v. Thunder Craft (901422128)]]
#*[[Bonito Boats v. Thunder Craft (901422128)|Facts of Patent Law]]

===Non-obvious===
#[[Hotchkiss v. Greenwood (901422128)]]
#[[A&P Tea Co v. Supermarket Corp. (901422128)]]
#[[Lyon v. Bausch & Lomb (901422128)]]
#[[Graham v. John Deere (901422128)]]
#[[United States v. N Adams (901422128)]]
#[[Anderson's Black Rock, Inc. v. Pavement Co. (901422128)]]
#[[KSR International Co. v. Teleflex, Inc. (901422128)]]

===Patentable Subject Matter===
#[[Gottschalk v. Benson (901422128)]]
#[[Diamond v. Diehr (901422128)]]
#[[Arrhythmia Research Technlogy, Inc. V. Corazonix Corp. (901422128)]]
#[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (901422128)]]
#[[Bilski v. Kappos (901422128)]]

===Statutory Bars===
#[[Egbert v. Lippmann (901422128)]]
#[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (901422128)]]
#[[D.L. Auld Co. v. Chroma Graphics Corp. (901422128)]]
#[[Lough v. Brunswick Corp. (901422128)]]
#[[Elizabeth v. American Nicholson Pavement Company (901422128)]]
#[[UMC Electronics Co. v. U.S. (901422128)]]
#[[Pfaff v. Wells Electronics (901422128)]]
#[[Electric Storage Batters Co. V. Shimadzu (901422128)]]
#[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)]]
#[[Lorenz v. Colgate-Palmolive-Peet C0. (901422128)]]
#[[W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)]]

===New Topic===
#[[In re Carlson (901422128)]]
#[[In re Hall (901422128)]]

=Homework=

# [[Homework 1 - My Patent Selection - Due 1/24]]
# [[Homework 2 - Analysis of my Patent for Non-obviousness - Due 1/28]]
# [[Homework 3 - Analysis of Graham Patent for Obviousness - Due 2/4]]
# [[Homework 4 - Editing NONOBVIOUS - Due 2/9]]

W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)

2011-03-06T05:09:02Z

901422128: /* Reading Notes */

Read for 3/4/11

==Reading Notes==
*Decided by the CAFC in 1983 on appeal from the District Court
**DC held two patents owned by Gore invalid
**CAFC affirms in part, reverses in part, and remands
*Patents were developed to help solve the problem of PTFE tape breaking in the stretching machine
**Original machine was patented in 1969 by his father and does not reference stretch rate or matrix tensile strength greater than 7300 psi
*In 1969 Dr. Gore realized that increasing the stretch rate prolonged breakage, contrary to teachings
**Used this method to develop several products
*In May, 1970 Gore filed the application for the two patents in issue
**First is for the specific process with rate above 10% per second and temperature between 35 C and crystalline melt point
**The second has claims directed at the products made by the process
*Inventions filled long sought need, enjoyed prompt commercial success, and were met with skepticism
*Garlock first produced the accused product as a substitute for the patented product and advertised it as a "new form" of PTFE
*Sued Garlock on 11/2/79 for infringement
**Garlock claimed declaratory judgment for invalidity
*District Court ruled for process
**One claim invalid under 102 by Gore's use of the original machine
**All claims invalid under 102 because of public use or on sale (Budd's use of Cropper machine)
**Three claims invalid under 103 for reference pairings
**All invalid as indefinite under 112
*DC ruling for products
**Claims invalid under 102 and 103
**Invalid and indefinite under 112
*Garlock failed to prove all claims of the present patents invalid
*All claimed inventions must be considered as a whole
*District Court help only claim one of the first patent anticipated by the use of the original machine in the shop
*In 8/69 Gore offered to sell tape "to be made" on the 401 machine
**Shipped on 10/24/69
**Gore offered no proof that his invention date was before the shipment
*Operation of the 401 machine must be viewed as a reproducible use of Dr. Gore's invention as set forth in claim 1 and therefore irrelevant that those using the invention may not have appreciated the result
*Can't be said that the DC erred in finding claim one of 566 patent was used under 102
**No evidence that inventions of other claims of either patent was known or used before late October, 1969
*1966 - Cropper made a machine for producing stretched and unstretched PTFE thread seal tape
**Offered to sell in 1967 to no avail so no evidence of prior use
**In 1968 Cropper sold to Budd was which was used to produce and sell
***Conditions of secrecy
*That Budd did not keep it secret from employees who were bound not to tell does not show failure to maintain a secret
**Showing around for repair does not likewise breech secrecy
*The DC was wrong to hold the 566 patent invalid under 102 due to public use because of Budd as it was secret
*'''*Critical date is 5/21/69'''
**Must decide it Budd had the produce on sale
*Budd only sold tape, not the process
**Does not ultimately bar Gore
*With regards to the invalidity of 4 claims under 103
**Did not look at the claims as a whole
**Disregarded disclosures that taught away from the invention
*Claim 1 could not have been invalid under 103
*Breakdown of prior art shows that all previous patents and teachings not only did not disclose but also taught away from the current invention with regards to 3 and 19
**Claim 17 is obvious with prior art
**401 machine patent suggests the 500% stretch is not possible
*The prior techniquies of Smith and Sumitomo do not place the products claimed in 390 in possession of the public
*Products are not obvious under Smith and Sumitomo as well
**Significant objective evidence
*District Court found the claim nonspecific enough under 112
**Misinterpreted function and purpose of 112
*Just because some experimentation would have been needed to use his patent does not make it invalid under 112
**Confusion of the roles of the claims and specification
*Insufficient evidence to show Gore intended to defraud the PTO

===Findings===
*Claim 1 of 566 invalid under 102
*All of 566 not invalid under 102 by Budd's use
*Garlock was no successful in proving claims 3 and 19 of 566 obvious
*Garlock did not meet its burder of showing certain claims anticipated by Smith and Sumitomo
*Inventions set forth in claims of 390 are non-obvious
*Garlock did not prove the specification was not enabling or that the claims were indefinite under 112
*No fraud
*Denial of Garlock's attorney fees
*Remanded to determine infringement of the claims that were found valid

===Statutory Bars===
*In determining obviousness there is no "essential" or "heart of the invention"
**Restriction of a multi-step process to one step constitutes error
*The non-secret use of a claimed process in the usual course of producing articles for commercial purposes is a public use
*Commercialization of a product made by a process bars those involved from a patent but secret commercialization of a process cannot bar a third party of a patent on that process
**Law favors the later inventor who promptly files a patent rather than a prior inventor who benefits from secret production
*Teaching away by prior art is strong evidence of non-obviousness
*Decision maker must occupy the mind of one skilled in the art prior to the invention under consideration
*Anticipation requires the disclosure in a single prior art reference of each element of the claim under consideration
*Rule of law is that an infringer's use of the process of a dominating patent does not render that employment an anticipation of an invention described and claimed in an improvement patent
*Inherency and obviousness are distinct concepts
*Objective evidence of non-obviousness should always be considered
*Section 112 states that the claims must allow a person of ordinary skill to make and use the invention
**Must allow a skilled person, not the public
**Must look at the time of application, not the time of trial
*112 requires best mode of practicing known to the inventor

===Concurring/dissenting judge===
*Agrees with
**Validity of 390 under 102 and 103
**Validity of 390 under 112
**Invalidity of claims 1 and 17 of 566
**Lack of fraud
**Denial of attorney's fees
*Disagrees with the validity of the claims of 3 and 19 of the 566 patent
*Facts show that the Gore shop was practicing the invention earlier than the 10/69 invention date
**401 machine was used with a rate of greater than 10%
*Absence of personal intent to defraud does not mean the 401 machine was not doing what he did not know about
*Majority wrongly neglected to include the 401 machine in the prior art

==Class Notes==

==Class Notes==

Lorenz v. Colgate-Palmolive-Peet C0. (901422128)

2011-03-03T19:54:50Z

901422128: Created page with "Read for 3/4/11 ==Reading Notes== *Decided in the Circuit CoA in 1948 *In the District Court Lorenz brought suit against Colgate **Two held interfering patents *Lorenz said he..."

Read for 3/4/11

==Reading Notes==
*Decided in the Circuit CoA in 1948
*In the District Court Lorenz brought suit against Colgate
**Two held interfering patents
*Lorenz said he was first inventor and Ittner patent was void
**Colgate asked for a judgment that Ittner was the inventor
*Patents cover a process for the manufacture of soap and the recovery of glycerine
*Interference because the claims were copies verbatim
**Lorenz filed on 1/24/20 and then disclosed his application to Ittner so Colgate could use the process if desired
**Ittner was uninterested
**PTO rejected the application and Lorenz abandoned the prosecution of the application
**Ittner filed 2/19/31
***After this, Lorenz filed asking PTO to revive his application - rejected
**11/18/34 Lorenz filed with Ittner's claims because he disclosed it in 1920
*PTO declared interference and ruled in Lorenz's favor
*DC decided evidence didn't prove that the process had been given to Colgate by Lorenz
*CoA initially reversed DC and agreed with awarding priority to Lorenz
**Remanded for the DC to determine the invalidity on grounds asserted by Colgate
*On remand the DC help the patent invalid due to public use - both appealed
*Examine defense of prior use
**Evidence shows that the process was in public use in the factory from 11/31 to 11/32
***Experimental before this but commercial production during this time and then discontinued
**This public use is sufficient to invalidate
*Burden is on Colgate to prove public use
**Been generous to Lorenz because of difficulty in finding evidence to rebut proof of this
*CoA still agrees with the DC on the prior public use
**Must decide if the public use was within the purview of 4886 - Lorenz says no because the public use was pirated
*Will act as if Ittner is not the original inventor in light of the facts
*Ordinarily manufacturer will refuse to receive inventor's disclosures when there is not a patent pending
**In this case, it was rejected because Ittner thought it commercially unfeasible
*The question of public use in this case is original
*Precedents
**Public use should not include fraudulent use
**The length of public use can suppose the acquiescence of the inventor but there may be cases where knowledge of an invention may be obtained and communicated to the public that does not affect the patentability
*Hold that Lorenz's patent is void by reason of prior public use
**Also hold Ittner's invalid because of interference - if there was an invention it was Lorenz

===Interference and Statutory Bars===
*Sec. 4918 says the court can determine either or both of the patents void upon any ground
*Purpose of the on-sale bar:
<blockquote>Was it the intention of Congress that public use by one who employs a process in breach of a fiduciary relationship, who tortiously appropriates it or who pirates it, should bar the inventor from the fruits of his monopoly?</blockquote>
*Precedents state that fraudulent public use should not be a bar
**Later says that non-fraudulent use without the inventor's consent definitely does but does not definitively say about fraudulent use
*4886 contains no qualification or exception which limits the nature of the public use
**This court holds that if an inventor does not apply within two years any use that arises can act as a bar

==Class Notes==

ESB Briefs

2011-03-03T19:48:41Z

901422128:

Here is a list of briefs for the Electric Storage Battery Co v. Shimadzu case. Add your name next to the list for the one with the fewest names and read that one.
* Reply Brief for Respondents. (Feb. 27, 1939)
#Michael Madden
#Hwong1
#
#
#
#
#
#
#
#
* Reply Brief for Petitioner. (Feb. 7, 1939)
#Cmadiga1
#90144463
#901422128
#
#
#
#
#
#
#
* Brief for Respondents (Jan. 28, 1939)
#LMiller
#Josh Bradley
#
#
#
#
#
#
#
#
* Brief for Petitioner. (Jan. 1939)
#Kschlax
#Andy Stulc
#
#
#
#
#
#
#
#

User:901422128

2011-03-03T19:12:49Z

901422128: /* Statutory Bars */

W.L. Gore & Associates, Inc. v. Garlock, Inc. (901422128)

2011-03-03T18:43:05Z

901422128: Created page with "Read for 3/4/11 ==Reading Notes== *Decided by the CAFC in 1983 on appeal from the District Court **DC held two patents owned by Gore invalid **CAFC affirms in part, reverses in..."

User:901422128

2011-03-03T18:30:30Z

901422128: /* Statutory Bars */

Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (901422128)

2011-03-01T21:39:46Z

901422128: Created page with "Read for 3/2/11 ==Reading Notes== *Patentee brought action alleging infringement of a patent for anhydrous crystalline form of terazosin hydrochloride *District Court held one ..."

Read for 3/2/11

==Reading Notes==
*Patentee brought action alleging infringement of a patent for anhydrous crystalline form of terazosin hydrochloride
*District Court held one claim invalid under "on sale" bar and patentee appealed
**CoA held that third party's sales prior to critical date rendered patent invalid even though third party did not know they were dealing the the particular form claimed in the patent
**CAFC affirms this ruling
*Abbott appealed summary judgment holding 4 of its claims invalid under 102
**CAFC holds that summary judgment was properly granted
*TH exists in four anhydrous forms and claim 4 of the patent specifies Form IV
*Three companies filed an ANDA at the USFDA seeking approval to market a generic version of Hytrin (Abbott's long-time tablet)
**All raised patent invalidity under the on-sale bar because it was sold in the U.S. for more than one year before filing date (10/18/94)
*Undisputed that another party sold the Form IV more than one year proir
**Bought from two foreign manufacturers
**None specified which form was being sold
**No one involved know which form til after Abbott and Geneva tested them
*Ruled that Form IV had been used in the public domain, was relied upon as freely available, and it was irrelevant that the parties were unaware of the nature of that form
**Abbot claims for an "invetion" to be on sale the parties must know precisely the nature of the subject matter with which they are dealing
**Defendants say it is only necessary to apply the two-part test from Pfaff
*Clearly meets the Pfaff test
*Abbott cites cases where the accidental production does not constitute anticipation
**Do not count because non of those had a useful or appreciated result as this one did
*Affirm the summary judgment of invalidity

===Statutory Bars===
*Immaterial that involved parties do not know the exact nature of the product with regards to on-sale bar
*Summary judgment granted when it is purely a matter of law, not fact
**Defendants bore the burden of proving the existence of the on-sale bar
*Two-part Pfaff test
**Invention must be both the subject of a commercial sale or offer for sale and be "ready for patenting"
*No exceptions for sales made by third parties innocently or fraudulently
*The purpose of the on-sale bar is to prohibit the withdrawal of inventions that were already in the public domain

==Class Notes==

User:901422128

2011-03-01T21:21:49Z

901422128: /* Statutory Bars */

Electric Storage Batters Co. V. Shimadzu (901422128)

2011-03-01T21:20:47Z

901422128: Created page with "Read for 3/2/11 ==Reading Notes== *Decided in the U.S. Circuit Court of Appeals in 1939 **Held valid and infringed claims of three related patents **USSC found two the patents ..."

Read for 3/2/11

==Reading Notes==
*Decided in the U.S. Circuit Court of Appeals in 1939
**Held valid and infringed claims of three related patents
**USSC found two the patents invalid so defendant was entitled to re-examination for the third
*Patents were granted to Shimadzu - citizen of Japan
**First is for lead powder
**Second is for a process of manufacturing a fine powder composed of lead suboxide, etc.
**Third is an apparatus for continuous production of lead oxides
*Answer to filing of infringement
**Used by the petitioner more than two years prior in the U.S.
**Earlier patents in Japan for the same things were granted more than a year prior to filing
*District Court and CoA affirmed the validity
*Inventions reduced to practice no later than August 1919
**Not disclosed in U.S. before application on January 30, 1922, 7/14/23, and 4/27/26
**Not patented or described in print here or abroad prior to filing of applications
*Electric, without knowledge of the inventions, used a machine involving the method and apparatus of the patents in early 1921
*Petitioner says the date of invention abroad must be the date of application
*Must examine two sections
**R.S. s 4886 - not known or used bu other in the U.S. and not patented or printed in the U.S. or abroad and not in public use or on sale in the U.S. for two years (application) may obtain a patent
***History of this statute:
<blockquote>The requirement of the Act of 1790 was that the discovery be ‘not before known or used.’ The Act of 1793 amended this to read ‘not known or used before the application.’ The Act of 1800 altered the provision so that the petitioner had to swear that his invention had not ‘been known or used either in this or any foreign country.’ The Act of 1836 changed the knowledge and use clause to read ‘not known or used by others before his or their discovery or invention thereof.’ </blockquote>
**4887 aims to allow the filing of applications for the same invention in foreign countries and the U.S.
**4923 holds that a patentee cannot be barred if at the time of application he thought he was the first invention if the prior invention in a foreign country was not printed or patented
***Not relevant here
*Seems illogical that Electric Storage would have been safe if they had gotten a patent but not if they just used the invention publicly
**In order to correct this must read into the law words that are missing which is not allowed
*Agree that the lower courts were right in allowing Shimadzu to prove an earlier date than that of application
*Cannot hold that his waiting to disclose the important elements convicts him of intentional concealment
**Did not add this to the answer at an early enough time for it to count
*With regards to being in public use for more than two years prior to application
**It appears this is true - there is no reasonable distinction between commercial production and public use
**January 1921 is date of commercial production - later switched to be June as it was thought to be an error
*Hold that the commercial production is a public use under 4886
*Find two patents invalid due to public use for more than two years prior
**Does not invalidate the first patent filed in 1922
*USSC thinks the petition is entitled to a reexamination of the first patent to determine its validity and infringement

===Statutory Bars===
*R.S. s 4886 - not known or used bu other in the U.S. and not patented or printed in the U.S. or abroad and not in public use or on sale in the U.S. for two years (application) may obtain a patent
**This section makes the criterion of novelty the same if the invention was conceived here or abroad
*Place of invention has never been an element
*4887 aims to allow the filing of applications for the same invention in foreign countries and the U.S.
*A foreign applicant cannot carry the date of his invention back to the date of application in this country as the holder of a later patent for an invention made here would be allowed to do
*Patent is not validly issues if the invention is shown to have been abandoned
*Cannot be valid if in public use for more than two years
*Public use
**Experimental use is not
**Single use for profit is a bar

==Class Notes==

User:901422128

2011-03-01T20:43:48Z

901422128: /* Statutory Bars */

UMC Electronics Co. v. U.S. (901422128)

2011-02-23T17:19:34Z

901422128: /* Reading Notes */

Read for 2/23/11

==Reading Notes==
*UMC sued US for infringement
**Claims court help patent valid but not infringed
**CAFC help patent invalid because it had been on sale for more than one year
*CAFC find the invention was not on sale but also affirm the judgement in favor of the government on different ground
*Invention is an aviation counting accelerometer
*Application filed August 1, 1968
**Commercial exploitatoin and state of development one year prior are critical
*In April 1967 he built and tested a prototype
**UMC was unable to negotiate a contract for the new ACA
**UMC requested on July 27, 1967 to supply a certain number of new ACAs
*After the critical date, UMC submitted detailed descriptions, test results, and gave a demonstration
*Filed action in 1980 saying the Navy used its invetion in another company's ACA
**Claims court found patent valid but not infringed
*Finding of timely products
**Admitted offer to Navy was commercial not experimental
**Had been reduced to practice before the critical date
**The prototype did not include all elements of the claims (requirement 1 not met)
*Claims Court found that the inventor had not built a physical embodiment before the critical date
**Also said they technically never reaped commercial benefit
*The error in the Claims court was to consider the prototype being the thing offered for sale which it was not, the subject matter of the offer is the claimed invention
*Government holds all three requirements have been met
**UMC counters that the inventor never built a physical model with all the claims
*Not a reduction to practice
*However, the substantial attemp at commercial exploitation raises the on-sale bar under 102b
**Reduction to practice is '''not''' always required
*Meaningless to talk about "reduction to practice" of what was sold as it relates only to the precise invention
*Claims Court was not factually wrong, just need to apply the proper rule of law - no remand

===Statutory Bars===
*Three part "on sale" test (Timely Products requirements)
<blockquote>(1) The complete invention claimed must have been embodied in or obvious in view of the thing offered for sale.... Complete readability of the claim on the thing offered is not required because whatever is published (or on sale) more than one year prior to the filing of a patent application becomes part of the prior art over which the claim must be patentable....

(2) The invention must have been tested sufficiently to verify that it is operable and commercially marketable. This is simply another way of expressing the principle that an invention cannot be offered for sale until it is completed, which requires not merely its conception but its reduction to practice....

(3) Finally, the sale must be primarily for profit rather than for experimental purposes....
</blockquote>
*Precedents say there cannot be a reduction to practice with a physical embodiment with all claims
*Only two cases directly adress the reduction to practice requirement
**Barmag did not suggest that an embodiment might not be required only where there had been actual sales
*Rigid standards are not good for this bar when the policies underlying it define it
**Declined to adopt the above test for all cases
*Do not intend to attack patents on the ground that the inventor offered the mere concept of the envention

===Dissenting Judge===
*The majority strained an issue that was neither raised nor beiefed by the parties
*Should be bound by precedent
**The majority threw these out
*They all agreed there was not reduction to practice and therefore the patent should be valid
*History shows that reduction to practice has always been a minimum legal standard
*It is the "thing offered" which must have been reduced to practice
*102 was not intended to force inventors in the system prematurely
*He agrees with the Claims Court

==Class Notes==

Pfaff v. Wells Electronics (901422128)

2011-02-22T20:51:01Z

901422128: Created page with "Read for 2/23/11 ==Reading Notes== *Decided by the USSC in 1998 *In early 1981 Pfaff designed a new computer chip socket with detailed drawings **Also showed a sketch to repres..."

Read for 2/23/11

==Reading Notes==
*Decided by the USSC in 1998
*In early 1981 Pfaff designed a new computer chip socket with detailed drawings
**Also showed a sketch to representatives at TI who placed an order before the critical date
*Had not made a prototype before the offers to sell
**Applied April 19. 1982 and had first reduced to practice the summer before
*District court said the claims were infringed and the patent was valid
**CAFC said the one year period began with the offer to sell so the patent was invalid
*USSC holds the patent is invalid based on the on-sale bar
**Had to decide if the commercial offering was enough even before reduction to practice
*CAFC had the view of "substantially complete at the time of sale"
**If it has been described suffiently as to allow those skilled in the matter to understand and produce the invention
*Reject Pfaff's argument that precedent and the interest in giving inventors a clear onset of the 1-year bar justifies a different interpretation of "invention"
**USSC agrees with this however does not think it requires a reduction to practice element - an invention can be complete before it is reduced to practice
*Cite Bonito Boats and Elizabeth
*Two condition for on-sale bar are fulfilled in this instance

===Statutory Bars===
*Meaning of "invention" in Patent Act is the inventor's conception
**Doesn't need to be reduced to practice to receive a patent
*Two conditions of the on-sale bar
##The product must be the subject of a commercial offer for sale
##The invention must be ready for patenting
*Underlying policy is to prevent the inventor from removing existing knowledge from public
*Act of 1836 was first to expressly include an on-sale bar

==Class Notes

UMC Electronics Co. v. U.S. (901422128)

2011-02-22T20:28:32Z

901422128: Created page with "Read for 2/23/11 ==Reading Notes== *UMC sued US for infringement **Claims court help patent valid but not infringed **CAFC help patent invalid because it had been on sale for m..."

Read for 2/23/11

==Reading Notes==
*UMC sued US for infringement
**Claims court help patent valid but not infringed
**CAFC help patent invalid because it had been on sale for more than one year
*CAFC find the invention was not on sale but also affirm the judgement in favor of the government on different ground
*Invention is an aviation counting accelerometer
*Application filed August 1, 1968
**Commercial exploitatoin and state of development one year prior are critical
*In April 1967 he built and tested a prototype
**UMC was unable to negotiate a contract for the new ACA
**UMC requested on July 27, 1967 to supply a certain number of new ACAs
*After the critical date, UMC submitted detailed descriptions, test results, and gave a demonstration
*Filed action in 1980 saying the Navy used its invetion in another company's ACA
**Claims court found patent valid but not infringed
*Finding of timely products
**Admitted offer to Navy was commercial not experimental
**Had been reduced to practice before the critical date
**The prototype did not include all elements of the claims (requirement 1 not met)
*Claims Court found that the inventor had not built a physical embodiment before the critical date
**Also said they technically never reaped commercial benefit
*The error in the Claims court was to consider the prototype being the thing offered for sale which it was not, the subject matter of the offer is the claimed invention
*Government holds all three requirements have been met
**UMC counters that the inventor never built a physical model with all the claims
*Not a reduction to practice
*However, the substantial attemp at commercial exploitation raises the on-sale bar under 102b
**Reduction to practice is '''not'' always required
*Meaningless to talk about "reduction to practice" of what was sold as it relates only to the precise invention
*Claims Court was not factually wrong, just need to apply the proper rule of law - no remand

===Statutory Bars===
*Three part "on sale" test (Timely Products requirements)
<blockquote>(1) The complete invention claimed must have been embodied in or obvious in view of the thing offered for sale.... Complete readability of the claim on the thing offered is not required because whatever is published (or on sale) more than one year prior to the filing of a patent application becomes part of the prior art over which the claim must be patentable....

(2) The invention must have been tested sufficiently to verify that it is operable and commercially marketable. This is simply another way of expressing the principle that an invention cannot be offered for sale until it is completed, which requires not merely its conception but its reduction to practice....

(3) Finally, the sale must be primarily for profit rather than for experimental purposes....
</blockquote>
*Precedents say there cannot be a reduction to practice with a physical embodiment with all claims
*Only two cases directly adress the reduction to practice requirement
**Barmag did not suggest that an embodiment might not be required only where there had been actual sales
*Rigid standards are not good for this bar when the policies underlying it define it
**Declined to adopt the above test for all cases
*Do not intend to attack patents on the ground that the inventor offered the mere concept of the envention

===Dissenting Judge===
*The majority strained an issue that was neither raised nor beiefed by the parties
*Should be bound by precedent
**The majority threw these out
*They all agreed there was not reduction to practice and therefore the patent should be valid
*History shows that reduction to practice has always been a minimum legal standard
*It is the "thing offered" which must have been reduced to practice
*102 was not intended to force inventors in the system prematurely
*He agrees with the Claims Court

==Class Notes==

User:901422128

2011-02-22T19:18:39Z

901422128: /* Statutory Bars */

Lough v. Brunswick Corp. (901422128)

2011-02-20T21:47:43Z

901422128: Created page with "Read for 2/21/11 ==Reading Notes== *Decided in 1996 by the CAFC *Deals with a patent for stern drives which are marine propulsion devices with an engine inside the stern and a p..."

Read for 2/21/11

==Reading Notes==
*Decided in 1996 by the CAFC
*Deals with a patent for stern drives which are marine propulsion devices with an engine inside the stern and a propeller outside the boat
*Lough worked as a repairman and noticed the upper seal assembly often failed due to corrosion because of contact between the annular seal and the bell housing aperture
*Made six prototypes in the spring of 1986
**Put one on his own boat, gave another to a friend and the others to other acquaintances free of charge
***Did not ask for comments or attempt to sell any
*After learning of Lough's invention Brunswick designed its own improved seal
**Lough sued for infringement
*Jury found that he did not prove public use before one year prior and that he had infringed several claims
**Brunswick appealed decision after motions were denied challenging the denial on the issue of public use
*Claim that the use of Lough's prototypes were not experimental
*Lough's evidence
**Did not receive compensation
**Did not place others on sale
**Gave them only to personal acquaintances so they were unlikely to be seen by the public
*CAFC disagrees with Lough
**Only issue is if the known use was experimental
*Bad news for Lough
**Lost track of one of the prototypes entirely
**Did not ask for any comments
*Hold that the jury had no legal basis to conclude that the use was experimental - reverse the denial of JMOL and vacate the award of damages

===JMOL===
*A party contends the opposition has insufficient evidence to support its case

===Statutory Bars===
*Defined public use as "any use of the invention by a person other than the inventor who is under no limitation, restriction, or obligation of secrecy to the inventor"
*Policies underlying the public use bar:
<blockquote>(1) discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available; (2) favoring the prompt and widespread disclosure of inventions; (3) allowing the inventor a reasonable amount of time following sales activity to determine the potential economic value of a patent; and (4) prohibiting the inventor from commercially exploiting the invention for a period greater than the statutorily prescribed time. </blockquote>
*Consideration for experimentation
**Number of prototypes
**Duration of testing
**Whether records or progress reports were made
**Existence of a secrecy agreement
**Whether compensation was received
**Extent of the control the inventor maintained over the testing
***This one is '''critically important'''

===Dissenting Judge===
*Majority confuses role as law-giver and law-reviewer with that of fact-weigher and fact-decider
*Not an issue of big companies fighting but one of a big company fighting a home-made improvement by a man with a high school education
**Solved the problem by trial and error
*Had he read prior cases he would have done the necessary things but in this case he just went with it
*The question at hand is whether a reasonable jury could have arrived at the conclusion it did, not if he was experimenting
*The majority was trying to avoid a complicated problem of infringement under doctrine of equivalents

==Class Notes==