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Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)

2011-04-19T22:13:58Z

Bill Goodwine:

Circuit Court of Appeals, Second Circuit.

METALLIZING ENGINEERING CO., Inc., v. KENYON BEARING & AUTO PARTS CO., Inc., et al.

No. 131.
Jan. 10, 1946.

Writ of Certiorari Denied May 6, 1946.

See 66 S.Ct. 1016.

Appeal from the District Court of the United States for the District of Connecticut.

Morris Kirschstein, of New York City, and Clifford H. Bell, of Hartford, Conn., for appellants.

Louis Burgess, Burgess & Dinklage, and Ralph D. Dinklage, all of New York City, for appellee.

Before L. HAND, AUGUSTUS N. HAND, and CLARK, Circuit Judges.

L. HAND, Circuit Judge.

The defendants appeal from the usual decree holding valid and infringed all but
three of the claims of a reissued patent, issued to the plaintiff's assignor, Meduna; the original patent issued on May 25, 1943, upon an application filed on August 6, 1942. The patent is for the process of ‘so conditioning a metal surface that the same is, as a rule, capable of bonding thereto applied spray metal to a higher degree than is normally procurable with hitherto known practices' (p. 2, lines 1-5). It is primarily useful for building up the worn metal parts of a machine. The art had for many years done this by what the patent calls ‘spray metal,’ which means metal sprayed in molten form upon the surface which it is desired to build up. This process is called ‘metalizing,’ and it had been known for nearly thirty years before Meduna's invention; but about fifteen or twenty years ago it was found that, to secure a satisfactory bond between the ‘spray metal’ and the surface, the surface must be roughened so that there would be fine undercut areas in it upon which the sprayed surface could take hold; and of course the surface must itself be clean. The art had developed two ways of producing such a surface; one, by sand-blasting, and the other, by a tool, so adjusted in a lathe as to tear tiny channels: ‘screw-threading.’ Meduna's invention was to prepare the surface by first depositing upon it a preliminary layer of metal by means of a process, disclosed in Patent No. 1,327,267, issued to Brewster and Wisehan, on January 6, 1920. This process was practiced by what the art knew as the ‘McQuay-Norris' machine, which was ‘more particularly adapted and intended for use in the filling of cavities which may occur in castings or other metal objects' (p. 1, lines 17-20). The ‘McQuay-Norris' device was operated by electric power, one terminal of the circuit being connected with the work, and the other being a fusable electrode, which melted at the temperature developed in the circuit, and deposited parts of itself at the places desired upon closing of the circuit by contact with the work. The process was described as follows (p. 2, lines 47-57): ‘The electrode is moved from spot to spot in the cavity and the foregoing operation repeated until the surface of the blowhole is covered by a deposit of the metal by the electrode. It will thus be Seen that the surface of the blow-hole is covered by a number of small particles of metal of the electrode, all of which particles are welded to the particular portion of the surface of the blow-hole with which the electrode contacted.’ After this has been done, ‘a peening hammer is employed to peen the metal which has been introduced into the blow-hole, thus causing the metal to be compacted, and any inequalities of the surface of the metal reduced’ (p. 2, lines 63-68). Meduna did not peen the metal, indeed peening would have been entirely unfitted to his purpose, as it would have pressed together the undercut deposits which later serve to catch the hold the ‘spray metal.’ Moreover, his purpose was not to fill up ‘blow-holes,’ or fissures; but, as we have said, to prepare worn surfaces for rebuilding. However, he used the McQuay- Norris machine unchanged, prescribing a voltage of preferably not more than twenty volts- ordinarily between two and nine- and an amperage of between two hundred and three or four hundred. The surface was to be ‘repetitiously contacted and preferably repetitiously contact stroked with the electrode on successive areas, the stroking action depositing on these areas small amounts of electrode material firmly bonded thereto. Alternatively the electrode may be applied with a stippling action to the metal surface. While these procedures essentially involve breaking and making contact between the metal surface and the electrode, it is also possible, and sometimes advisable, to move the electrode relative to the base while maintaining resistant heating contact therebetween’ (p. 2 lines 72-76; p. 3, lines 1-8).

The only question which we find necessary to decide is as to Meduna's public use of the patented process more than one year before August 6, 1942. The district judge made findings about this, which are supported by the testimony and which we accept. They appear as findings 8, 9, 10, 11, 12 and 13 on pages 46 and 47 of volume 62 of the Federal Supplement; and we cannot improve upon his statement. The kernel of them is the following: ‘the inventor's main purpose in his use of the process prior to August 6, 1941, and especially in respect to all jobs for owners not known to him, was commercial, and * * * an experimental purpose in connection with such use was subordinate only.’ Upon this finding he concluded as matter of law that, since the use before the critical date- August 6, 1941- was not primarily for the purposes of experiment, the use was not excused for that reason. Smith & Griggs Manufacturing Co. v. Sprague, 123 U.S. 249, 256, 8 S.Ct. 122, 31 L.Ed. 141; Aerovox Corp. v. Polymet Manufacturing Corp., 2 Cir., 67 F.2d 860, 862. Moreover, he also concluded that the use was not public but secret, and for that reason that its predominantly commercial character did prevent it from invalidating the patent. For the last he relied upon our decisions in Peerless Roll Leaf Co. v. Griffin & Sons, 29 F.2d 646, and Gillman v. Stern, 114 F.2d 28. We think that his analysis of peerless Roll Leaf Co. v. Griffin & Sons, was altogether correct, and that he had no alternative but to follow that decision; on the other hand, we now think that we were then wrong and that the decision must be overruled for reasons we shall state. Gillman v. Stern, supra, was, however, rightly decided.

Section one of the first and second Patent Acts, 1 Stat. 109 and 318, declared that the petition for a patent must state that the subject matter had not been ‘before known or used.’ Section six of the Act of 1836, 5 Stat. 117, changed this by providing in addition that the invention must not at the time of the application for a patent have been ‘in public use or on sale’ with the inventor's ‘consent or allowance’; and Sec. 7 of the Act of 1839, 5 Stat. 353, provided that ‘no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the application for a patent * * * except on proof of abandonment of such invention to the public; or that such purchase, sale, or prior use has been for more than two years prior to such application * * *.’ Section 4886 of the Revised Statutes made it a condition upon patentability that the invention shall not have been ‘in public use or on sale for more than two years prior to his application,’ and that it shall not have been ‘proved to have been abandoned.’ This is in substance the same as the Act of 1839, and is precisely the same as Sec. 31 of Title 35, U.S.C.A. except that the prior use is now limited to the United States, and to one year before the application. Sec. 1, Chap. 391, 29 Stat. 692; Sec. 1, Chap. 450, 53 Stat. 1212, 35 U.S.C.A. § 31. So far as we can find, the first case which dealt with the effect of prior use by the patentee was Pennock v. Dialogue, 2 Pet. 1, 4, 7 L.Ed. 327, in which the invention had been completed in 1811, and the patent granted in 1818 for a process of making hose by which the sections were joined together in such a way that the joints resisted pressure as well as the other parts. It did not appear that the joints in any way disclosed the process; but the patentee, between the discovery of the invention and the grant of the patent, had sold 13,000 feet of hose; and as to this the judge charged: ‘If the public, with the knowledge and tacit consent of the inventor, be permitted to use the invention, without opposition, it is a fraud on the public afterwards to take out a patent.’ The Supreme Court affirmed a judgment for the defendant, on the ground that the invention had been ‘known or used before the application.’ ‘If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should * * * make and sell his invention publicly, and thus gather the whole profits, * * * it would materially retard the progress of science and the useful arts' to allow him fourteen years of legal monopoly ‘when the danger of competition should force him to secure the exclusive right’ 2 Pet. at page 19, 7 L.Ed. 327. In Shaw v. Cooper, 7 Pet. 292, 8 L.Ed. 689, the public use was not by the inventory, but he had neglected to prevent it after he had learned of it, and this defeated the patent. ‘Whatever may be the intention of the inventor, if he suffers his invention to go into public use, through any means whatsoever, without an immediate assertion of his right, he is not entitled to a patent’ 7 Pet. at page 323, 8 L.Ed. 689. In Kendall v. Winsor, 21 How. 322, 16 L.Ed. 165, the inventor had kept the machine secret, but had sold the harness which it produced, so that the facts presented the same situation as here. Since the jury brought in a verdict for the defendant on the issue of abandonment, the case adds nothing except for the dicta on page 328 of 21 How., 16 L.Ed. 165: ‘the inventor who designedly, and with the view of applying it indefinitely and exclusively for his own profit, withholds his invention for the public, comes not within the policy or objects of the Constitution or acts of Congress.’ In Egbert v. Lippmann, 104 U.S. 333, 26 L.Ed. 755, although the patent was for the product which was sold, nothing could be learned about it without taking it apart, yet it was a public use within the statute. In Hall v. Macneale, 107 U.S. 90, 2 S.Ct. 73, 27 L.Ed. 367, the situation was the same.

In the lower courts we may begin with the often cited decision in Macbeth-Evans Glass Co. v. General Electric Co., 6 Cir., 246 F. 695, which concerned a process patent for making illuminating glass. The patentee had kept the process as secret as possible, but for ten years had sold the glass, although this did not, so far as appears, disclose the process. The court held the patent invalid for two reasons, as we understand them: the first was that the delay either indicated an intention to abandon, or was of itself a forfeiture, because of the inconsistency of a practical monopoly by means of secrecy and of a later legal monopoly by means of a patent. So far, it was not an interpretation of ‘prior use’ in the statute; but, beginning on page 702 of 246 F. 695 Judge Warrington seems to have been construing that phrase and to hold that the sales were such a use. In Allinson Manufacturing Co. v. Ideal Filter Co., 8 Cir., 21 F.2d 22, the patent was for a machine for purifying gasoline: the machine was kept secret, but the gasoline had been sold for a period of six years before the application was filed. As in Macbeth-Evans Glass Co. v. General Electric Co., supra, 6 Cir., 246 F. 695, the court apparently invalidated the patent on two grounds: one was that the inventor had abandoned the right to a patent, or had forfeited it by his long delay. We are disposed however to read the latter part- pages 27 and 28 of 21 F.2d- as holding that the sale of gasoline was a ‘prior use’ of the machine, notwithstanding its concealment. Certainly, the following quotation from Pitts v. Hall, Fed. Cas. No. 11,192, 2 Blatchf. 229, was not otherwise apposite; a patentee ‘is not allowed to derive any benefit from the sale or use of his machine, without forfeiting his right, except within two years prior to the time he makes his application.’ On the other hand in Stresau v. Ipsen, 77 F.2d 937, 22 C.C.P.A. (Patents) 1352, the Court of Customs and Patent Appeals did indeed decide that a process claim might be valid when the inventor had kept the process secret but had sold the product.

Coming now to our own decisions (the opinions in all of which I wrote), the first was Grasselli Chemical Co. v. National Aniline & Chemical Co., 2 Cir., 26 F.2d 305, in which the patent was for a process which had been kept secret, but the product had been sold upon the market for more than two years. We held that, although the process could not have been discovered from the product, the sales constituted a ‘prior use,’ relying upon Egbert v. Lippmann, supra, 104 U.S. 333, 26 L.Ed. 755, and Hall v. Macneale, supra, 107 U.S. 90, 2 S.Ct. 73, 27 L.Ed. 367. There was nothing in this inconsistent with what we are now holding. But in Peerless Roll Leaf Co. v. Griffin & Sons, supra, 2 Cir., 29 F.2d 646, where the patent was for a machine, which had been kept secret, but whose output had been freely sold on the market, we sustained the patent on the ground that ‘the sale of the product was irrelevant, since no knowledge could possibly be acquired of the machine in that way. In this respect the machine differs from a process * * * or from any other invention necessarily contained in a product’ 29 F.2d at page 649. So far as we can now find, there is nothing to support this distinction in the authorities, and we shall try to show that we misapprehended the theory on which the prior use by an inventor forfeits his right to a patent. In Aerovox Corp. v. Polymet Manufacturing Corp., supra, 2 Cir., 67 F.2d 860, the patent was also for a process, the use of which we held not to have been experimental, though not secret. Thus our decision sustaining the patent was right; but apparently we were by implication reverting to the doctrine of the Peerless case when we added that it was doubtful whether the process could be detected from the product, although we cited only Hall v. Macneale, supra, 107 U.S. 90, 2 S.Ct. 73, 27 L.Ed. 367, and Grasselli Chemical Co. v. National Aniline Co., supra (2 Cir., 26 F.2d 305). In Gillman v. Stern, supra, 2 Cir., 114 F.2d 28, it was not the inventor, but a third person who used the machine secretly and sold the product openly, and there was therefore no question either of abandonment or forfeiture by the inventor. The only issue was whether a prior use which did not disclose the invention to the art was within the statute; and it is well settled that it is not. As in the case of any other anticipation, the issue of invention must then be determined by how much the inventor has contributed any new information to the art. Gayler v. Wilder, 10 How. 477, 496, 497, 13 L.Ed. 504; Tilghman v. Proctor, 102 U.S. 707, 711, 26 L.Ed. 279; Carson v. American B. & R. Co., 9 Cir., 11 F.2d 766, 770, 771, 26 L.Ed. 279; Carson v. American B. & R. Co., 9 Cir., 11 F.2d 766, 770, 771; Boyd v. Cherry, C.C. Iowa, 50 F. 279, 283; Acme Flexible Clasp Co. v. Cary Manufacturing Co., C.C.N.Y., 96 F. 344, 347; Ajax Metal Co. v. Brady Brass Co., C.C.N.Y., 155 F. 409, 415, 416; Anthracite Separator Co. v. Pollock, C.C.Pa., 175 F. 108, 111.

From the foregoing it appears that in Peerless Roll Leaf Co. v. Griffin & Sons, supra, 2 Cir., 29 F.2d 646, we confused two separate doctrines: (1) The effect upon his right to a patent of the inventor's competitive exploitation of his machine or of his process; (2) the contribution which a prior use by another person makes to the art. Both do indeed come within the phrase, ‘prior use’; but the first is a defence for quite different reasons from the second. It had its origin- at least in this country- in the passage we have quoted from Pennock v. Dialogue, supra, 2 Pet. 1, 7 L.Ed. 327; i.e., that it is a condition upon an inventor's right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly. It is true that for the limited period of two years he was allowed to do so, possibly in order to give him time to prepare an application; and even that has been recently cut down by half. But if he goes beyond that period of probation, he forfeits his right regardless of how little the public may have learned about the invention; just as he can forfeit it by too long concealment, even without exploiting the invention at all. Woodbridge v. United States, 263 U.S. 50, 44 S.Ct. 45, 68 L.Ed. 159; Macbeth-Evans Glass Co. v. General Electric Co., supra, 6 Cir., 246 F. 695. Such a forfeiture has nothing to do with abandonment, which presupposes a deliberate, though not necessarily an express, surrender of any right to a patent. Although the evidence of both may at times overlap, each comes from a quite different legal source: one, from the fact that by renouncing the right the inventor irrevocably surrenders it; the other, from the fiat of Congress that it is part of the consideration for a patent that the public shall as soon as possible begin to enjoy the disclosure.

It is indeed true that an inventor may continue for more than a year to practice his invention for his private purposes of his own enjoyment and later patent it. But that is, properly considered, not an exception to the doctrine, for he is not then making use of his secret to gain a competitive advantage over others; he does not thereby extend the period of his monopoly. Besides, as we have Seen, even that privilege has its limits, for he may conceal it so long that he will lose his right to a patent even though he does not use it at all. With that question we have not however any concern here.

Judgment reversed; complaint dismissed.

C.A.2,1946. Metallizing Engineer. Co. v. Kenyon Bearing & A.P. Co., 153 F.2d 516, 68 U.S.P.Q. 54

END OF DOCUMENT

I4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (2010)

2011-04-18T15:29:44Z

Bill Goodwine:

United States Court of Appeals,
Federal Circuit.

I4I LIMITED PARTNERSHIP and Infrastructures for Information Inc., Plaintiffs-Appellees,
v.
MICROSOFT CORPORATION, Defendant-Appellant.

No. 2009-1504.
March 10, 2010.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for plaintiffs-appellees. With him on the brief were Don O. Burley, Kara F. Stoll and Jason W. Melvin; and Erik R. Puknys, of Palo Alto, CA. Of counsel on the brief were Douglas A. Cawley and Jeffrey A. Carter, McKool Smith, P.C. of Dallas, TX, and T. Gordon White, of Austin, TX.

Matthew D. Powers, Weil, Gotshal & Manges LLP, of Redwood Shores, CA, argued for defendant-appellant. With him on the brief were Kevin S. Kudlac and Amber H. Rovner, of Austin, TX. Of counsel on the brief were Matthew D. McGill, Minodora D. Vancea, Gibson, Dunn & Crutcher LLP, of Washington, DC; and Isabella E. Fu, Microsoft Corporation, of Redmond, WA. Of counsel was David J. Lender, Weil, Gotshal & Manges LLP, of New York, NY.

John W. Thornburgh, Fish & Richardson, P.C., of San Diego, CA, for amici curiae Dell Inc. and Hewlett-Packard Company. With him on the brief were John E. Gartman; and Indranil Mukerji, of Washington, DC.

Richard A. Samp, Washington Legal Foundation, of Washington, DC, for amicus curiae Washington Legal Foundation, of Washington, DC. With him on the brief was Daniel J. Popeo.

Before SCHALL, PROST, and MOORE, Circuit Judges.

PROST, Circuit Judge.

This is a patent infringement case about an invention for editing custom XML, a computer language. The owner of the patent, i4i Limited Partnership (“i4i”), brought suit against Microsoft Corporation (“Microsoft”), alleging that the custom XML editor in certain versions of Microsoft Word (“Word”), Microsoft's word-processing software, infringed i4i's patent. After a seven-day trial, the jury found Microsoft liable for willful infringement. The jury rejected Microsoft's argument that the patent was invalid, and awarded $200 million in damages to i4i. The district court denied Microsoft's motions for judgment as a matter of law and motions for a new trial, finding that Microsoft had waived its right to challenge, among other things, the validity of the patent based on all but one piece of prior art and the sufficiency of the evidence supporting the jury's damage award. Although statutorily authorized to triple the jury's damages award because of Microsoft's willful infringement, the district court awarded only $40 million in additional damages. It also granted i4i's motion for a permanent injunction. This injunction, which this court stayed pending the outcome of this appeal, is narrow. i4i Ltd. v. Microsoft Corp., 343 Fed.Appx. 619 (Fed.Cir.2009). It does not affect copies of Word sold or licensed before the injunction goes into effect. Thus, users who bought or licensed Word before the injunction becomes effective will still be able to use the infringing custom XML editor, and receive technical support from Microsoft. After its effective date, the injunction prohibits Microsoft from selling, offering to sell, importing, or using copies of Word with the infringing custom XML editor. Microsoft is also prohibited from instructing or assisting new customers in the custom XML editor's use.

On appeal, Microsoft challenges the jury verdict and injunction on multiple grounds. Because this case went to trial and we are in large part reviewing what the jury found, our review is limited and deferential. We affirm the issuance of the permanent injunction, though we modify its effective date to accord with the evidence. In all other respects, we affirm for the reasons set forth below.

BACKGROUND

i4i began as a software consulting company in the late 1980s. Basically, companies would hire i4i to develop and maintain customized software for them. Thus, while consumers might not find i4i's products on the shelves at Best Buy or CompUSA, i4i was in the business of actively creating, marketing, and selling software. In June 1994, i4i applied for a patent concerning a method for processing and storing information about the structure of electronic documents. After approximately four years, the United States Patent and Trademark Office (“PTO”) allowed the application, which issued as U.S. Patent No. 5,787,449 (“′449 patent”). The invention claimed in the ′449 patent forms the basis of this litigation. Since then, i4i has developed several software products that practice the invention. One of these products is “add-on” software for Microsoft Word, which expands Word's capability to work with documents containing custom XML.

XML is one of many markup languages. Markup languages tell the computer how text should be processed by inserting “tags” around text. Tags give the computer information about the text. For example, some tags might tell the computer how to display text, such as what words should appear in bold or italics. Tags can also tell the computer about the text's content, identifying it as a person's name or social security number, for instance. Each tag consists of a delimiter and tag name. The delimiter sets the tag apart from the content. Thus, a tag indicating that “717 Madison Pl. NW” is an address might appear as <address>717 Madison Pl. NW</address> where “address” is the tag's name and “<” and “>” are the delimiters. Custom XML allows users to create and define their own tags. i4i refers to tags and similar information about a document's structure as “metacodes.” The specification of the ′449 patent defines “metacode” as “an individual instruction which controls the interpretation of the content of the data.” ′449 patent col.4 ll.15-16.

The ′449 patent claims an improved method for editing documents containing markup languages like XML. The improvement stems from storing a document's content and metacodes separately. Id. at col.6 ll.18-21. The invention primarily achieves this separation by creating a “metacode map,” a data structure that stores the metacodes and their locations within the document. The document's content is stored in a data structure called “mapped content.” Claim 14 is illustrative:

A method for producing a first map of metacodes and their addresses of use in association with mapped content and stored in distinct map storage means, the method comprising:

providing the mapped content to mapped content storage means;

providing a menu of metacodes; and

compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes; and

providing the document as the content of the document and the metacode map of the document.

Id. at col. 16 ll.18-30.

Separate storage of a document's structure and content was an improvement over prior technology in several respects. Importantly, it has allowed users to work solely on a document's content or its structure. Id. at col.7 ll.6-11, 17-20.

Since 2003, versions of Microsoft Word, a word processing and editing software, have had XML editing capabilities. In 2007, i4i filed this action against Microsoft, the developer and seller of Word. i4i alleged that Microsoft infringed claims 14, 18, and 20 of the ′449 patent by making, using, selling, offering to sell, and/or importing Word products capable of processing or editing custom XML. i4i further alleged that Microsoft's infringement was willful. Microsoft counterclaimed, seeking a declaratory judgment that the ′ 449 patent was invalid and unenforceable.

Before the case was submitted to the jury, Microsoft moved for judgment as a matter of law (“JMOL”) on the issues of infringement, willfulness, and validity. The district court denied Microsoft's motions, and the case was submitted to the jury. The jury found that Word infringed all asserted claims of the ′449 patent. The jury further found that the patent was not invalid, and that Microsoft's infringement was willful. It awarded $200 million in damages.

After trial, Microsoft renewed its motions for JMOL on infringement, validity, and willfulness. In the alternative, Microsoft moved for a new trial on these issues based on the sufficiency of the evidence supporting the jury's findings. Microsoft also argued it was entitled to a new trial based on errors in the claim construction, evidentiary rulings, and jury instructions. The district court denied Microsoft's motions. It granted i4i's motion for a permanent injunction and awarded $40 million in enhanced damages.

Microsoft now appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

Microsoft raises numerous issues on appeal. First, Microsoft challenges the district court's construction of the claim term “distinct.” Second, Microsoft challenges the jury's validity finding, urging us to find that the ′449 patent was anticipated or obvious as a matter of law, or at least grant a new trial on those issues. Third, Microsoft argues that the jury's infringement finding must be set aside because it is unsupported by substantial evidence. Fourth, Microsoft challenges the damages award, specifically the admission of certain expert testimony and the sufficiency of the evidence supporting the award. Finally, Microsoft challenges the issuance and terms of the permanent injunction. We address each of these issues in turn.

I. Standards of Review

For issues not unique to patent law, we apply the law of the regional circuit in which this appeal would otherwise lie. Thus, we apply Fifth Circuit law when reviewing evidentiary rulings and denials of motions for JMOL or new trial. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1328 (Fed.Cir.2008).

We review denials of JMOL de novo. Cambridge Toxicology Group, Inc. v. Exnicios, 495 F.3d 169, 179 (5th Cir.2007). JMOL is appropriate only if the court finds that a “reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.” Fed.R.Civ.P. 50(a)(1); see Cambridge Toxicology, 495 F.3d at 179.

We review the denial of a new trial motion for abuse of discretion. Industrias Magromer Cueros y Pieles S.A. v. La. Bayou Furs Inc., 293 F.3d 912, 924 (5th Cir.2002). We will not reverse a denial absent a “clear showing” of an “absolute absence of evidence to support the jury's verdict.” Duff v. Werner Enters., Inc., 489 F.3d 727, 729 (5th Cir.2007) (emphasis added).

We review jury instructions for abuse of discretion, cognizant as we do so of the district court's broad discretion to compose jury instructions, so long as the instructions accurately describe the law. Baker v. Canadian Nat'l/Ill. Cent. R.R., 536 F.3d 357, 363-64 (5th Cir.2008); Walther v. Lone Star Gas Co., 952 F.2d 119, 125 (5th Cir.1992); see also Barton's Disposal Serv., Inc. v. Tiger Corp., 886 F.2d 1430, 1434 (5th Cir.1989). We will reverse a judgment “only if the [jury instructions] as a whole create[ ] a substantial doubt as to whether the jury has been properly guided in its deliberations.” Baker, 536 F.3d at 363-64. Erroneous instructions are subject to harmless error review. We will not reverse if, considering the record as a whole, the erroneous instruction “could not have affected the outcome of the case.” Wright v. Ford Motor Co., 508 F.3d 263, 268 (5th Cir.2007).

II. Claim Construction

On appeal, we must decide whether the district court properly construed the claim term “distinct.” In the asserted claims, the term “distinct” is used to describe how the metacode map and the mapped content are stored. Specifically, the claims say the metacode map is stored in “ distinct map storage means” or “ distinct storage means.” See, e.g., ′449 patent col.16 ll.20, 25-26, 53-54. Analogously, the document's content is stored in “mapped content storage,” id. at col.16 ll.22-23, or “mapped content distinct storage means.” Id. at col. 15 l.51 (emphasis added).

Before the district court, Microsoft argued that “distinct” added two requirements: (1) storing the metacode map and mapped content in separate files, not just separate portions of the computer's memory; and (2) the ability to edit the document's content and its metacode map “independently and without access” to each other.

The district court rejected both of Microsoft's proposed limitations. Based on its review of the claim language, the specification, and prosecution history, the district court concluded that “distinct” did not require storage in separate files. Similarly, it concluded that the user's ability to independently edit the document's structure or content was a benefit of separate storage, not a claim limitation. The district court then defined “distinct map storage means” in more general terms, as “a portion of memory for storing a metacode map.” “Mapped content distinct storage means” was defined as “a portion of memory for storing mapped content.”

On appeal, Microsoft renews both arguments about the meaning of “distinct.” We review the district court's claim construction de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-55 (Fed.Cir.1998) (en banc). To ascertain the scope and meaning of the asserted claims, we look to the words of the claims themselves, the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1315-17 (Fed.Cir.2005) (en banc); see also 35 U.S.C. § 112 ¶ 2; Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115-16 (Fed.Cir.2004) (holding that the claims are not “presumed” to be restricted to the embodiments disclosed in the specification). We conclude that the district court properly rejected both of Microsoft's proposed limitations.

A. Separate Files

To determine whether “distinct” adds the requirement of storage in separate files, we begin with the claim language. See Phillips, 415 F.3d at 1312. In this case, the claim's plain language does not require storage of the metacode map and mapped content in separate files. The term “file” appears nowhere in the ′449 patent. Instead, the claims use “storage means”; the specification uses “structures.” ′449 patent col.16 ll.22-26, 53; see also id. at col.4 ll.7-13, 21-24. Both “storage means” and “structures” are broader terms than “file,” suggesting no particular format. At trial, i4i's expert testified that a person of ordinary skill in the art would understand “structures” to store and organize data, but not as limited to a particular storage format. Indeed, the specification arguably renounces particular formats by defining “document” as a “nonrandom aggregation of data irrespective of its mode of storage or presentation.” Id. at col.4 ll.57-59 (emphasis added).

Turning to the specification, we similarly see no “clear intent[ ] to limit the claim scope” to storage in files. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed.Cir.2009). The sample algorithms do not say the storage means is restricted to “files.” ′449 patent col.8 ll.53-62; see Innova/Pure Water, 381 F.3d at 1121-22. Instead, they use the more generic term “storage space,” creating one for the mapped content and another for the metacode map.

As for the prosecution history, we do not read it as limiting storage to files. During prosecution, i4i distinguished its invention from U.S. Patent No. 5,280,574 (“Mizuta”) prior art in part because Mizuta stored “all document information ... in one file ... the document file.” But this is not all i4i said. i4i then explained that Mizuta “lacked any notion of a metacode map” or “distinct storage means.” In evaluating whether a patentee has disavowed claim scope, context matters. Together, these statements make clear that what distinguished the Mizuta prior art was not the storage type (file or no file), but rather the separation of a document's content and structure. The statements Microsoft now plucks from the prosecution history do not “clear[ly] and unmistakabl[y] disavow” storage means that are not files. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed.Cir.2008) (citing Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed.Cir.2006)).

Because the claims themselves do not use the word “file” and the specification discloses embodiments where the storage format is not a file, we conclude that “distinct” does not require storage in separate files. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 907-08 (Fed.Cir.2004) (declining to limit the invention's scope to the disclosed embodiments when the specification did “not expressly or by clear implication reject the scope of the invention” to those embodiments); see also Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 987 (Fed.Cir.2009).

B. Independent Manipulation

The closer question is whether “distinct” requires independent manipulation of the metacode map and mapped content. Several of the embodiments in the ′449 patent allow the user to manipulate only the metacode map or mapped content. ′449 patent figs.4, 5, 6, 8. However, based on our review of the claim language, the specification, and the prosecution history, we conclude that the claims are not limited to these particular embodiments.

Generally, a claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a “clear intention” to limit the claim's scope with “words or expressions of manifest exclusion or restriction.” Liebel-Flarsheim, 358 F.3d at 906; see also Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.Cir.2002). By the same token, not every benefit flowing from an invention is a claim limitation. See Computer Docking, 519 F.3d at 1374; Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1302-03 (Fed.Cir.2007).

We begin again with the claim language. None of the claims mention “independent manipulation” of the mapped content and metacode map, an omission we find significant. Had the inventors intended this limitation, they could have drafted the claims to expressly include it.

Similarly, the specification refers to “separate,” rather than “independent,” manipulation of the document's architecture and content. The specification goes on to describe the storage of the metacode map and content as “distinct and separate.” “Distinct” and “separate” are not the same as “independent.” Moreover, the specification teaches that “separate manipulation” describes the user's ability to work on only the metacode map or content. Behind the scenes, the invention keeps the metacode map and content synchronized. For example, Figure 9 teaches that updates to the content may require the invention to make corresponding changes to the metacode map. ′449 patent col. 14 l.49-col. 15 l.5.

Microsoft is correct that the specification refers to working on “solely” the document's structure (metacode map):

The present invention provides the ability to work solely on metacodes. The process allows changes to be made to the structure of a document without requiring the content. A metacode map could be edited directly without the mapped content. Additionally a new map can be created based solely on an existing map without requiring the content.

Id. at col.7 ll.6-11 (emphases added). Read as a whole, however, these statements are best understood as describing the advantages of separate storage, the real claim limitation. See Abbott Labs., 566 F.3d at 1289-90. The specification's permissive language, “could be edited,” “can be created,” and “ability to work,” does not clearly disclaim systems lacking these benefits.

An examination of the prosecution history similarly reveals no statements that unequivocally narrow the claims to require independent manipulation. Initially, the examiner rejected several claims as obvious, explaining that “[s]torage is always distinct, even if at distinct addresses.” In response, i4i stated:

[T]he architecture of a document can be treated as a separate entity from the content of the document. Thus, the architecture of the document can be treated as an entity having distinct storage from the content of the document. This separation allows distinct processes to operate on the content and the architecture, with or without knowledge of the other. In other words, using the present invention, one could change the architecture, (layout, structure, or presentation formation) of a document without even having access to the actual content of the document. This is achieved by extracting the metacodes from an existing document and creating a map of the location of the metacodes in the document and then storing the map and the content of the document separately.

The reason for the examiner's rejection helps us understand i4i's response. In context, i4i's response is best read as clarifying why the invention's “storage means” are more than just “distinct addresses.” i4i's subsequent discussion of the benefits of separate storage is not sufficiently “clear and unmistakable” to disavow embodiments lacking independent manipulation. Purdue Pharma, 438 F.3d at 1136.

In light of the specification's permissive language, the prosecution history, and the claim language, we conclude that “independent manipulation” is a benefit of separate storage, but not itself a limitation.

III. Validity

Microsoft also appeals two issues regarding the validity of i4i's patent. The first is whether the invention would have been obvious to one of skill in the art. The second is whether Microsoft is entitled to JMOL or a new trial on validity, due to anticipation by a software program called S4.

At trial, Microsoft argued that the ′449 patent was invalid based on several pieces of prior art. As relevant here, Microsoft argued that i4i's invention would have been obvious in light of U.S. Patent No. 5,587,902 (“Kugimiya”), when combined with either an SGML editor known as Rita or U.S. Patent No. 6,101,512 (“DeRose”). In the alternative, Microsoft argued that i4i's invention was anticipated under 35 U.S.C. § 102(b) by the sale of a software program, SEMI-S 4 (“S4”), by i4i before the critical date.

i4i disputed that it would have been obvious to combine Kugimiya with Rita or DeRose. i4i presented evidence that Kugimiya was in a different field (language translation) than Rita, DeRose, or the ′449 patent, which address document editing. i4i also presented evidence of secondary considerations, including long-felt need, failure of others, and commercial success. As to anticipation, i4i also argued that S4 did not practice the ′449 patent because it did not create a “metacode map.”

Before the case was submitted to the jury, Microsoft moved for JMOL on invalidity, arguing that i4i's sale of S4 violated the on-sale bar under § 102(b). Microsoft did not move for pre-verdict JMOL on obviousness or with regard to other prior art. The verdict form did not require the jury to make separate findings for the different pieces of prior art. Instead, the form asked: “Did Microsoft prove by clear and convincing evidence that any of the listed claims of the ′449 patent are invalid?” The jury was instructed to answer “yes” if it found a particular claim invalid, but otherwise answer “no.” The jury found all the asserted claims not invalid.

A. Obviousness

On appeal we must decide whether the ′449 patent would have been obvious in light of some combination of Rita or DeRose with Kugimiya.

The Rita prior art is a software program that allows users to create and edit documents using SGML, a markup language like XML. Rita stores the SGML tags and document's content in a “tree structure.” This tree stores the tags and content together. DeRose discloses a system for generating, analyzing, and navigating electronic documents containing a markup language, such as XML or SGML. To assist navigation, DeRose and Rita use “pointers,” which allow the user to move between different branches of the tree structure. Kugimiya discloses a system for translating documents from English to Japanese. As part of the translation process, Kugimiya finds, removes, and stores any XML tags in a separate file. The program then translates the document's content from English to Japanese, after which it puts the XML tags into the translated document. After the tags are replaced, the separate file containing the tags is discarded.

Although obviousness is a question of law, it is based on factual underpinnings. As always, our review of the ultimate legal question, whether the claimed invention would have been obvious, is de novo. Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1108 (Fed.Cir.2003). The extent to which we may review the jury's implicit factual findings depends on whether a pre-verdict JMOL was filed on obviousness. Id.; see also Jurgens v. McKasy, 927 F.2d 1552, 1557-58 (Fed.Cir.1991).

In this case, Microsoft has waived its right to challenge the factual findings underlying the jury's implicit obviousness verdict because it did not file a pre-verdict JMOL on obviousness for the Rita, DeRose and Kugimiya references. Fed.R.Civ.P. 50(a), (b). As we explained in Duro-Last, a party must file a pre-verdict JMOL motion on all theories, and with respect to all prior art references, that it wishes to challenge with a post-verdict JMOL. 321 F.3d at 1107-08. Microsoft's pre-verdict JMOL on anticipation, based on S4, was insufficient to preserve its right to post-verdict JMOL on a different theory (obviousness), or on different prior art (Rita, DeRose, Kugimiya). Duro-Last, 321 F.3d at 1107-08.

Accordingly, we do not consider whether the evidence presented at trial was legally sufficient to support the jury's verdict. Our review is limited to determining whether the district court's legal conclusion of nonobviousness was correct, based on the presumed factual findings. Id. at 1108-09; Kinetic Concepts, Inc. v. Blue Sky Med. Group, Inc., 554 F.3d 1010, 1020-21 (Fed.Cir.2009). In conducting this review, we must presume the jury resolved underlying factual disputes in i4i's favor because the jury made no explicit factual findings. Duro-Last, 321 F.3d at 1108. This presumption applies to disputes about (1) the scope and content of the prior art; (2) differences between the prior art and asserted claims; (3) the existence of motivation to modify prior art references; and (4) the level of ordinary skill in the pertinent art. Id. at 1109; see also Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Kinetic Concepts, 554 F.3d at 1019.

Microsoft's argument on appeal-that it would have been obvious to combine DeRose or Rita with Kugimiya-depends heavily on (1) the scope of the prior art, and (2) whether a person of ordinary skill would have been motivated to combine the references' teachings. These are questions of fact. Kinetic Concepts, 554 F.3d at 1020-21. Similarly, Microsoft's argument that the prior art discloses all of the claim limitations boils down to questions of fact: whether the “tree structure” in Rita and DeRose is a “metacode map,” and whether a “pointer” is an “address of use.” See id.; Graham, 383 U.S. at 17, 86 S.Ct. 684. The jury found all of the asserted claims not invalid, meaning the jury must have believed that there were differences between the prior art and asserted claims, and that a person of ordinary skill would not have been motivated to combine the references. Cf. Kinetic Concepts, 554 F.3d at 1019-20; Duro-Last, 321 F.3d at 1108-09. Because we must view the evidence in the light most favorable to the verdict, all of these questions must be resolved against Microsoft, and in favor of i4i. Arsement v. Spinnaker Exploration Co., 400 F.3d 238, 249, 252-53 (5th Cir.2005); see Jurgens, 927 F.2d at 1557-58. In light of the jury's implicit factual findings, Microsoft has not established that the asserted claims would have been obvious.

B. Anticipation

For anticipation, the question is whether the district court erred in denying Microsoft's motion for post-verdict JMOL on invalidity, or alternatively a new trial, based on the sale of S4 violating the on-sale bar. See 35 U.S.C. § 102(b).

S4 was a software program developed for a client called SEMI by i4i's corporate predecessor. i4i's founder, Michel Vulpe, hired Stephen Owens to help develop S4, which they delivered to SEMI in early 1993. S4 allowed the user to add and edit SGML tags in electronic documents. For storage purposes, S4 divided the document into “entities.” According to Vulpe and Owens, these entities were simply chunks of the SGML document, where the SGML tags were intermixed with the content. Both Vulpe and Owens testified that S4 did not create a “metacode map.”

At trial, Microsoft argued that the sale of S4 before the critical date violated the on-sale bar. To prove invalidity by the on-sale bar, a challenger must show by clear and convincing evidence that the claimed invention was “on sale in this country, more than one year prior to the date of the application for patent in the United States.” Id.; Adenta GmbH v. OrthoArm, Inc., 501 F.3d 1364, 1371 (Fed.Cir.2007). It is uncontested that S4 was sold in the United States before the critical date. At trial, the dispute was whether S4 practiced the “metacode map” limitation of the ′449 patent.

Because the S4 source code was destroyed after the project with SEMI was completed (years before this litigation began), the dispute turned largely on the credibility of S4's creators, Vulpe and Owens, who are also the named inventors on the ′449 patent. Both testified that the S4 software sold to SEMI did not practice the ′449 patent, for which they claimed the key innovation-the metacode map-was not even conceived until after the critical date. Both were extensively cross-examined. Vulpe was impeached with statements from a letter he had written to investors, as well as a funding application submitted to the Canadian government.

On appeal, Microsoft argues that it was entitled to JMOL because it established a prima facie case of anticipation, which i4i could not rebut by relying on the inventors' testimony alone, absent corroboration. Alternatively, Microsoft contends the evidence was not sufficient to support the jury's verdict of validity.

1. Burden of Proof

Microsoft's contention regarding a prima facie case and i4i's “rebuttal” misunderstands the nature of an anticipation claim under 35 U.S.C. § 102(b). Anticipation is an affirmative defense. See, e.g., Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1052 (Fed.Cir.1994). We do not agree that i4i was required to come forward with corroboration to “rebut” Microsoft's prima facie case of anticipation. Corroboration is required in certain circumstances. See, e.g., Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1374-76 (Fed.Cir.2009) ( “Because Lonza sought to introduce the testimony of an alleged prior inventor under § 102(g) for the purpose of invalidating a patent, Lonza was required to produce evidence corroborating Dr. Long's testimony.”); Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 989-99 (Fed.Cir.2009) (requiring corroboration where patentee tried to prove that the conception date was earlier than the filing date of a potentially anticipatory patent); Henkel Corp. v. Procter & Gamble Co., 560 F.3d 1286 (Fed.Cir.2009) (interference); Symantec Corp. v. Computer Assocs. Int'l, Inc., 522 F.3d 1279, 1295-96 (Fed.Cir.2008) (“An alleged co-inventor's testimony, standing alone, cannot rise to the level of clear and convincing evidence; he must supply evidence to corroborate his testimony.”). However, this is not a case where witness testimony was being used to overcome prior art by establishing an earlier date of invention.

To support its argument that S4 practiced the ′449 patent, Microsoft offered testimony by a former i4i employee and its expert. i4i responded with evidence, specifically testimony by S4's inventors, that S4 did not practice the claimed method. Though we require corroboration of “any witness whose testimony alone is asserted to invalidate a patent,” Finnigan Corp. v. Int'l Trade Comm'n, 180 F.3d 1354, 1369-70 (Fed.Cir.1999) (emphasis added), here the inventor testimony was offered by i4i in response to Microsoft's attack on the validity of the ′449 patent. It was not offered to meet Microsoft's burden of proving invalidity by clear and convincing evidence. Cf. TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159-60 (Fed.Cir.2004); Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1217 (Fed.Cir.2002); Finnigan, 180 F.3d at 1367. We know of no corroboration requirement for inventor testimony asserted to defend against a finding of invalidity by pointing to deficiencies in the prior art. Accordingly, we hold that corroboration was not required in this instance, where the testimony was offered in response to a claim of anticipation and pertained to whether the prior art practiced the claimed invention.

2. Sufficiency of the Evidence

In contrast to obviousness, Microsoft did move for pre-verdict JMOL regarding anticipation based on S4. We nonetheless conclude that there was sufficient evidence for a reasonable jury to find that the ′449 patent was not anticipated by the sale of S4. See Bellows v. Amoco Oil Co., 118 F.3d 268, 273 (5th Cir.1997). At trial, the jury heard conflicting testimony on whether S4 met the “metacode map” limitation. In evaluating the evidence, the jury was free to disbelieve Microsoft's expert, who relied on the S4 user manual, and credit i4i's expert, who opined that it was impossible to know whether the claim limitation was met without looking at S4's source code. Although the absence of the source code is not Microsoft's fault, the burden was still on Microsoft to show by clear and convincing evidence that S4 embodied all of the claim limitations. The jury's finding of validity was supported by the testimony of the inventors (Vulpe and Owens), as well as their faxes to an attorney regarding the patent application.

3. Jury Instructions

Microsoft also challenges the jury instructions on its burden of proving anticipation. According to Microsoft, the burden of proof should have been less for prior art that was not before the PTO, as was the case for Rita and DeRose.

We conclude that the jury instructions were correct in light of this court's precedent, which requires the challenger to prove invalidity by clear and convincing evidence. See, e.g., Zenith Elecs. Corp. v. PDI Commc'n Sys., Inc., 522 F.3d 1348, 1363-64 (Fed.Cir.2008). This court's decisions in Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1311-16 (Fed.Cir.2009), and Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed.Cir.2008), make clear that the Supreme Court's decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 426, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007) did not change the burden of proving invalidity by clear and convincing evidence. Thus, based on our precedent, we cannot discern any error in the jury instructions.

IV. Infringement

Taking Microsoft's arguments with regard to infringement in turn, we first review the jury instructions on infringement. We then decide whether the verdict is supported by substantial evidence.

A. Jury Instructions

At trial, i4i presented three theories of liability: direct, contributory, and induced infringement. Over Microsoft's objection, the district court used a general verdict form, which did not require separate findings on the different theories. Instead, the form asked: “Did i4i prove by a preponderance of the evidence that Microsoft infringes Claims 14, 18, or 20 of the ′449 patent?” The form then instructed the jury to answer “yes” or “no” for each claim. The jury answered “yes” for all asserted claims.

On appeal, Microsoft argues that it is entitled to a new trial because of two alleged errors in the jury instructions regarding contributory infringement. First, Microsoft argues it was error to use the term “component” rather than “material or apparatus.” In relevant part, the instructions provided:

If you find someone has directly infringed the ′449 patent, then contributory infringement exists if i4i establishes by a preponderance of evidence that:

1) Microsoft sold, offered for sale, or imported;

2) A material component for use in practicing the patented claim-or patented method that is not a staple article of commerce suitable for substantial non-infringing use;

3) With knowledge that the component was especially made or adapted for use in an infringing manner.

The corresponding statutory section, 35 U.S.C. § 271(c), uses the words “material or apparatus,” not “component,” for patented processes. Although the district court's instructions differed from the statute, this is not a case where the difference mattered. See Baker, 536 F.3d at 363-64 (reversing a jury verdict “only if the charge as a whole creates a substantial doubt as to whether the jury has been properly guided in its deliberations”). The parties' infringement arguments did not turn on whether Word's custom XML editor was a “component,” versus a “material or apparatus.” Nor is there any reason to think the jury was aware of the difference, or would have viewed the difference as anything but semantics had it known, because both parties used the terms interchangeably at trial. Under these circumstances, we are satisfied that the instruction properly guided the jury in its deliberations.

Microsoft also argues that the district court erred by instructing the jury to focus on the custom XML editor, rather than all of Word, when deciding whether any noninfringing uses were “substantial.” Given the evidence presented at trial, the district court did not abuse its discretion. As we explained in Lucent, a particular tool within a larger software package may be the relevant “material or apparatus” when that tool is a separate and distinct feature. 580 F.3d at 1320-21. In Lucent, the infringement inquiry accordingly focused on the date-picker, even though that tool was included in Microsoft Outlook, a larger software package. Id. Although the software differs, our reasoning in Lucent applies equally here. At trial, i4i showed that some versions of Word 2003 included the custom XML editor, while others did not. Dr. Rhyne opined that this ability to “leave [the editor] out or put it in” various Word products showed that the editor was a separate and distinct feature. Thus, there was sufficient evidence before the jury for it to conclude that the relevant “material or apparatus” was the custom XML editor, not all of Word. Accordingly, the jury was properly instructed that it should focus on the editor, not all of Word. See Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1337 (Fed.Cir.2008).

B. Sufficiency of the Evidence

Microsoft also challenges the sufficiency of evidence supporting the jury's general verdict of infringement. Infringement is a question of fact. Because infringement was tried to a jury, we review the verdict only for substantial evidence. ACCO Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1311 (Fed.Cir.2007).

Before we consider the evidence, we pause briefly to address what errors are fatal to a general verdict. Different rules apply depending upon whether the flaw is in the legal theory or the evidence. We must set aside a general verdict if the jury was told it could rely on any of two or more independent legal theories, one of which was defective. Walther, 952 F.2d at 126; see Northpoint Tech., Ltd. v. MDS Am., Inc., 413 F.3d 1301, 1311-12 (Fed.Cir.2005). However, we will not set aside a general verdict “simply because the jury might have decided on a ground that was supported by insufficient evidence.” Walther, 952 F.2d at 126 (emphasis added). We will uphold such a verdict if there was sufficient evidence to support any of the plaintiff's alternative factual theories; we assume the jury considered all the evidence and relied upon a factual theory for which the burden of proof was satisfied. See Northpoint Tech., 413 F.3d at 1311-12.

In this case, Microsoft argues that the general verdict must be set aside unless both of i4i's alternative legal theories, contributory infringement and induced infringement, are supported by substantial evidence. We disagree: the verdict must be upheld if substantial evidence supports either legal theory. Microsoft's argument fails to distinguish between defects in legal theories and defects in the factual evidence. In this case, the jury was instructed that it could rely on any of three legal theories-direct, contributory, or induced infringement. All of these theories are legally valid and the corresponding instructions on each were proper. Because the jury could not have relied on a legally defective theory, the only remaining question is whether there was sufficient evidence to support either of i4i's independently sufficient legal theories, contributory infringement or induced infringement.<ref>Even though we could affirm the jury's verdict of infringement so long as there was sufficient evidence of direct infringement by Microsoft, here we focus on indirect infringement because that was the basis for i4i's damages estimate, which the jury apparently credited. See Lucent, 580 F.3d at 1334-35; Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1274 (Fed.Cir.2004).</ref> We conclude that there was.

1. Direct Infringement

To succeed on a theory of contributory or induced infringement, i4i was required to show direct infringement of the ′449 patent. Lucent, 580 F.3d at 1317; see also Glenayre Elecs., Inc. v. Jackson, 443 F.3d 851, 858 (Fed.Cir.2006). Because the claims asserted by i4i are method claims, Microsoft's sale of Word, without more, did not infringe the ′449 patent. Lucent, 580 F.3d at 1317. Direct infringement occurs only when someone performs the claimed method. Id.

Based on the evidence presented at trial, a reasonable jury could have found that at least one person performed the methods claimed in the ′449 patent. This evidence included testimony by i4i's expert (Dr. Rhyne), a joint stipulation, and Microsoft's response to interrogatories. Rhyne opined that Word's custom XML editor met all of the limitations of the asserted claims because the editor separated a document into a “CP stream” of content and a separate data structure containing the metacodes and their addresses of use. Rhyne testified that this separate data structure met the “metacode map” limitation. Though Microsoft's expert offered conflicting evidence, opining that Word did not infringe the asserted claims, the jury was free to disbelieve Microsoft's expert and credit i4i's expert, who testified that the ′449 patent was infringed if Word was used to open an XML document, edit an XML document, or save a document containing custom XML in an XML file format. The joint stipulation and Microsoft's interrogatory responses unequivocally state that Word was used in these ways. Cf. Fresenius USA, Inc. v. Baxter Int'l, Inc., 582 F.3d 1288, 1298-99 (Fed.Cir.2009); Martek, 579 F.3d at 1371-72.

2. Contributory Infringement

For contributory infringement, the question is whether there is substantial evidence to support a finding under this theory. A party is liable for contributory infringement if that party sells, or offers to sell, a material or apparatus for use in practicing a patented process. That “material or apparatus” must be a material part of the invention, have no substantial noninfringing uses, and be known (by the party) “to be especially made or especially adapted for use in an infringement of such patent.” 35 U.S.C. § 271(c); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1312 (Fed.Cir.2005).

Based on the evidence presented at trial, the jury could have reasonably concluded that the custom XML editor had no substantial, noninfringing uses and that Microsoft knew that the use of the custom XML editor would infringe i4i's patent. At trial, Rhyne agreed that the custom XML editor could be used in three noninfringing ways, but opined that none were “substantial.” Rhyne explained that saving a document in the noninfringing, binary format deprived users of the very benefit XML was intended to provide: namely, allowing another program to search and read the document's metacode tags.

Despite Microsoft's contention to the contrary, evidence that some users saved XML documents in these noninfringing formats does not render the jury's verdict unreasonable. Whether a use is “substantial,” rather than just “unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental,” cannot be evaluated in a vacuum. Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1327 (Fed.Cir.2009). In assessing whether an asserted noninfringing use was “substantial,” the jury was allowed to consider not only the use's frequency, but also the use's practicality, the invention's intended purpose, and the intended market. See id. Here, the jury heard ample testimony that the noninfringing, binary file format was not a practical or worthwhile use for the XML community, for which the custom XML editor was designed and marketed.

Further, the jury could have reasonably concluded that Microsoft knew that use of the editor would infringe the ′449 patent, based on the circumstantial evidence presented at trial. Cf. Lucent, 580 F.3d at 1318, 1321-22; Fuji Photo Film Co. v. Jazz Photo Corp., 394 F.3d 1368, 1377-78 (Fed.Cir.2005). Here, the evidence showed that the Word development team heard a presentation by i4i about software practicing the ′449 patent, asked how the software worked, and received marketing materials on the software. Internal Microsoft emails showed that other Microsoft employees received a marketing email from i4i containing the patent number, were “familiar” with i4i's products, and believed the Word's custom XML editor would render that product “obsolete.” Based on this evidence, the jury could have reasonably concluded that Microsoft knew about the ′449 patent and knew use of its custom XML editor would infringe.

3. Induced Infringement

Though we need not reach this theory because substantial evidence supports i4i's theory of contributory infringement, we do so for the sake of completeness. On appeal, the sole question is whether there is substantial evidence to support a verdict of induced infringement. To prove inducement, the patentee must show direct infringement, and that the alleged infringer “knowingly induced infringement and possessed specific intent to encourage another's infringement.” MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1378 (Fed.Cir.2005); see 35 U.S.C. § 271(b).

Based on the evidence presented at trial, a reasonable jury could have concluded that Microsoft had the “affirmative intent to cause direct infringement.” DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed.Cir.2006) (en banc in relevant part). The jury saw and heard about Microsoft's online training and user support resources, which provided detailed instructions on using Word's custom XML editor. i4i's expert opined that using the editor as directed by these materials would infringe the ′449 patent. The instructional materials were thus substantial evidence that Microsoft intended the product to be used in an infringing manner. See DSU, 471 F.3d at 1303, 1305. Unlike the instructions in Vita-Mix, 581 F.3d at 1328-29, which taught a use the defendant “could have reasonably believed was non-infringing” and another use that was “non-infringing,” here there was substantial evidence Microsoft knew its instructions would result in infringing use. As explained in our discussion of contributory infringement, Microsoft's internal emails are substantial evidence of Microsoft's knowledge, both of the ′449 patent and the infringing nature of Word's custom XML editor. Regarding i4i's software that practiced the invention, one Microsoft employee remarked: “[W]e saw this tool some time ago and met its creators. Word [2003] will make it obsolete. It looks great for XP though.” Evidence that consumers were using Word in an infringing manner included Microsoft data on usage of Word, as well as a Microsoft marketing document listing “real” examples of custom XML's use in Word.

V. Damages

Microsoft protests the $200 million damages award on several grounds. We begin by reviewing the propriety of various evidentiary rulings. We then decide whether the district court abused its discretion by denying Microsoft a new trial on damages.

A. Evidentiary Rulings

We review evidentiary rulings for abuse of discretion. Huss v. Gayden, 571 F.3d 442, 452 (5th Cir.2009); see Paz v. Brush Engineered Materials, Inc., 555 F.3d 383, 387-88 (5th Cir.2009). Microsoft challenges the admission of expert testimony on damages, as well as a survey relied on by the expert. We address each in turn.

1. Expert Testimony

To determine whether expert testimony was properly admitted under Rule 702 of the Federal Rules of Evidence, we use the framework set out in Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 589-90, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993).<ref>An expert witness with “scientific, technical, or otherwise specialized knowledge,” may testify and form an opinion “if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods; and (3) the witness has applied the principles and methods reliably to the facts of the case.” Fed.R.Evid. 702.</ref> Daubert requires the district court ensure that any scientific testimony “is not only relevant, but reliable.” Id. at 589, 113 S.Ct. 2786; see also Kumho Tire Co. v. Carmichael, 526 U.S. 137, 141-42, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999). When the methodology is sound, and the evidence relied upon sufficiently related to the case at hand, disputes about the degree of relevance or accuracy (above this minimum threshold) may go to the testimony's weight, but not its admissibility. Knight v. Kirby Inland Marine Inc., 482 F.3d 347, 351 (5th Cir.2007); Moore v. Ashland Chem. Inc., 151 F.3d 269, 276 (5th Cir.1998) (en banc).

On appeal, Microsoft challenges the expert testimony by Dr. Wagner, i4i's damages expert. Wagner opined that a reasonable damages award would be $200 million dollars, based on a hypothetical negotiation between i4i and Microsoft at the time the infringement began. To come up with the $200 million figure, Wagner calculated a royalty rate ($98), then multiplied that rate by the number of Word products actually used in an infringing manner (2.1 million).

At trial, the parties hotly disputed the correctness of the $98 royalty rate. Microsoft argued that this rate was exorbitant given the price of certain Word products, which could be as little as $97. As further evidence of its unreasonableness, Microsoft pointed out that the rate resulted in a total damages amount ($200 million) greatly exceeding the $1-$5 million Microsoft had paid to license other patents. In response, i4i had its expert (Wagner) give a detailed explanation for how he arrived at the $98 royalty rate. Wagner testified that he first chose an appropriate “benchmark” in order to value Microsoft's use of the claimed invention at the time of the hypothetical negotiation. Wagner chose a product called XMetaL as his benchmark, which had a retail price of $499. To calculate the licensing fee, Wagner multiplied the price of XMetaL ($499) by Microsoft's profit margin (76.6%), based on his assumption that any licensing fee would be a fraction of the profits. Wagner then applied the 25-percent rule to this number, which assumes the inventor will keep 25% of the profits from any infringing sales. This resulted in a baseline royalty rate of $96. Wagner testified that the 25-percent rule was “well-recognized” and “widely used” by people in his field.

To support his royalty calculation, Wagner adjusted the baseline royalty rate of ($96) using the factors set out in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F.Supp. 1116, 1120 (S.D.N.Y.1970).<ref>These factors include: (1) royalties the patentee has received for licensing the patent to others; (2) rates paid by the licensee for the use of comparable patents; (3) the nature and scope of the license (exclusive or nonexclusive, restricted or nonrestricted by territory or product type); (4) any established policies or marketing programs by the licensor to maintain its patent monopoly by not licensing others to use the invention or granting licenses under special conditions to maintain the monopoly; (5) the commercial relationship between the licensor and licensee, such as whether they are competitors; (6) the effect of selling the patented specialty in promoting sales of other products of the licensee; (7) the duration of the patent and license term; (8) the established profitability of the product made under the patent, including its commercial success and current popularity; (9) the utility and advantages of the patent property over old modes or devices; (10) the nature of the patented invention and the benefits to those who have used the invention; (11) the extent to which the infringer has used the invention and the value of that use; (12) the portion of profit or of the selling price that may be customary in that particular business to allow for use of the invention or analogous inventions; (13) the portion of the realizable profit that should be credited to the invention as opposed to its non-patented elements; (14) the opinion testimony of qualified experts; and (15) the results of a hypothetical negotiation between the licensor and licensee. Id.</ref> Based on the Georgia-Pacific factors, Wagner then increased the baseline from $96 to $98, which was the “reasonable royalty rate” he used in calculating the $200-$207 million damages estimate. Specifically, Wagner concluded that factors 3, 5, 6, 9, and 11 affected the baseline rate.

Wagner opined that factor 3, which considers the license's terms, lowered the royalty rate because his hypothetical license did not give Microsoft know-how, additional cooperation or trade secrets, just non-exclusive use in the United States. However, Wagner opined that factors 5, 6, 9, and 11 increased the royalty rate. For factor 5, which looks at the commercial relationship between the licensor and licensee, Wagner found that Microsoft was a direct competitor of i4i, which meant any license would destroy a “very large segment” of i4i's market. For factor 6, which asks whether the patented technology promotes the sale of other products, Wagner concluded that the infringing custom XML editor was critical to Microsoft's sales generally, as evidenced by internal Microsoft statements that a custom XML editor was “one of the most important ways” for encouraging users to purchase new Word products. Examining factor 9, which examines the infringer's need for taking a license, Wagner opined that Microsoft had no commercially acceptable, non-infringing alternatives to using i4i's patent. This opinion was based on internal Microsoft documents describing Microsoft's interest in creating such a custom XML editor, and prolonged inability to do so. For factor 11, which looks at the use and value of the patented technology to Microsoft, Wagner concluded that the custom XML editor was a critical addition to Word. In support of this view, i4i presented statements by Microsoft employees that custom XML was not a “slight addition [but i]t's more like 90 percent of the value,” was “where the future is, seriously,” and “the glue that holds the Office ecosystem together.” Based on all of these Georgia-Pacific factors, Wagner increased the baseline royalty rate by $2, for a total of $98.

On appeal, Microsoft ably points out various weaknesses in the damage calculations by i4i's expert. At their heart, however, Microsoft's disagreements are with Wagner's conclusions, not his methodology. Daubert and Rule 702 are safeguards against unreliable or irrelevant opinions, not guarantees of correctness. We have consistently upheld experts' use of a hypothetical negotiation and Georgia-Pacific factors for estimating a reasonable royalty. See, e.g., Micro Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1393 (Fed.Cir.2003); Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1384 (Fed.Cir.2001). Wagner's testimony about the acceptance of the hypothetical negotiation model among damage experts and economists, combined with his methodical explication of how he applied the model to the relevant facts, satisfied Rule 702 and Daubert. See Daubert, 509 U.S. at 593, 113 S.Ct. 2786. Given Wagner's testimony about his credentials, the district court did not abuse its discretion in finding Wagner qualified to apply the methodology. See Pipitone v. Biomatrix, Inc., 288 F.3d 239, 249-50 (5th Cir.2002). Microsoft's quarrel with the facts Wagner used go to the weight, not admissibility, of his opinion.

We further hold that Wagner's opinion was “based on sufficient facts or data.” Fed.R.Evid. 702. At trial, Microsoft disputed which facts were relevant for determining a reasonable royalty rate. In particular, Microsoft focused on the benchmark (XMetaL), the resulting baseline royalty rate, and i4i's survey for estimating infringing use.

Regarding the benchmark, Wagner explained that he chose XMetaL because it was the product Microsoft bought and used before developing its own custom XML editor, it was the cheapest of the custom XML editors available on the market at the time, and it was one of three principal competitors Microsoft identified in the custom XML market. Microsoft contended that a better estimate of the custom XML editor's value was $50, the difference in price between versions of Word with and without the editor. Microsoft also argued that because XMetaL has many additional features besides custom XML editing, the $499 retail price overestimated the value of the custom XML editor. In response, Wagner acknowledged that not all users of custom XML would have switched to a high-end product like XMetaL, but that those “who really needed that functionality” would have, requiring them to buy one of the commercially available products, even if it had many superfluous features. Wagner clarified that his damages estimate only considered users who “really needed” the custom XML editor, making it inappropriate to use the $50 price difference paid by all purchasers of Word, regardless of whether they infringed or not.

As for using the baseline royalty rate ($96) as the starting point for the Georgia-Pacific analysis, Wagner opined that it was necessary because of Microsoft's business strategy. According to Wagner, Microsoft's primary goal is to make sales, not to maximize the price it charges for each additional feature. In making sales, Wagner explained that Microsoft's biggest competitor is always itself: Microsoft has to convince consumers to purchase new versions of its products, even if they already have a “perfectly good” copy of an older version. To incentivize users to upgrade, Wagner testified that Microsoft included new features at no additional cost, making it difficult to value the new features.

As for the survey, i4i's survey expert (Dr. Wecker) explained that it was limited to estimating infringing use by businesses; i4i did not even seek damages for infringing use by individual consumers. Wecker sent the survey to 988 large and small businesses randomly selected from a database of 13 million U.S. companies. Wecker explained that this large sample size was necessary to ensure he received sufficient responses (between 25 and 100) because many companies are “too busy” or have policies against responding to surveys. The survey consisted of screening and substantive questions. The screening questions helped identify the proper person to speak with about the company's use of custom XML. Wecker received 46 responses to the survey, which consisted of approximately 40 substantive questions. For all of the questions, the responder had the option of saying they did not know. Any company that took the survey received $35, regardless of the answers they gave. Wecker explained that he used logical imputation, an accepted procedure for statisticians to resolve inconsistent survey responses, to make some of the answers consistent. Of those that responded to the survey, 19 companies reported using Word in an infringing manner. Wecker assumed that all the companies that did not respond (942) did not use Word in an infringing manner. Based on these assumptions, Wecker determined that 1.9% (19/988) of all copies of Word sold to businesses between 2003 and 2008 were used in an infringing manner. Wecker then multiplied this percentage (1.9%) by the number of copies of Word sold to businesses, for a total of 1.8 million infringing uses.<ref>Based on sales of Word, Wagner then estimated the number of additional infringing uses that occurred between the end of the survey date and start of trial, to give a total of 2.1 million.</ref>

Wecker opined that this estimate was conservative, “really an underestimate” and “way low” because he assumed every company that did not respond was not infringing, which was highly unlikely and introduced a “serious downward bias.” Microsoft contested the accuracy of the survey, based on the low response rate, use of logical imputation to correct inconsistent answers, and questions requiring estimates of Word usage going back several years. In response, i4i's experts opined that the survey's conservative assumptions about the unresponsive companies mitigated (and perhaps even overcorrected) for those weaknesses.

Microsoft is correct that i4i's expert could have used other data in his calculations. The existence of other facts, however, does not mean that the facts used failed to meet the minimum standards of relevance or reliability. See Fed.R.Evid. 702 advisory committee's note. Under Rule 702, the question is whether the expert relied on facts sufficiently related to the disputed issue. Here, that issue was a reasonable royalty for the ′449 patent. We conclude that Wagner based his calculations on facts meeting these minimum standards of relevance and reliability. Fed.R.Evid. 702.

As i4i's expert explained, the facts were drawn from internal Microsoft documents, publicly available information about other custom XML editing software, and a survey designed to estimate the amount of infringing use. Thus, these facts had a sufficient nexus to the relevant market, the parties, and the alleged infringement. While the data were certainly imperfect, and more (or different) data might have resulted in a “better” or more “accurate” estimate in the absolute sense, it is not the district court's role under Daubert to evaluate the correctness of facts underlying an expert's testimony. See Micro Chem., 317 F.3d at 1392. Questions about what facts are most relevant or reliable to calculating a reasonable royalty are for the jury. The jury was entitled to hear the expert testimony and decide for itself what to accept or reject. See Pipitone, 288 F.3d at 249-50.

As the Supreme Court explained in Daubert, “[v]igorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence.” 509 U.S. at 596, 113 S.Ct. 2786. Microsoft had these opportunities, and ably availed itself of them. Microsoft presented expert testimony and attacked the benchmark, survey, and calculation's reasonableness on cross-examination. Cf. Micro Chem., 317 F.3d at 1392.

Based on this record, the district court did not abuse its discretion in admitting Wagner's expert testimony on damages.

2. The Survey

Microsoft also challenges the district court's admission of the survey used to estimate the amount of infringing use. We do not agree with Microsoft that the danger of unfair prejudice substantially outweighed the survey's probative value, so as to warrant exclusion under Rule 403. Both of i4i's experts, Wagner and Wecker, opined that the survey dramatically underestimated the amount of infringing use. Given the survey's conservative assumptions, the district court did not abuse its discretion in admitting the survey. Further, the survey was properly admitted over Microsoft's hearsay objection under Federal Rule of Evidence 703, since the survey was used to estimate the amount of infringing use, a key number in i4i's damage calculation. Given the survey's importance, evidence about its methodology and findings could certainly help the jury evaluate the expert testimony. See C.A. May Marine Supply Co. v. Brunswick Corp., 649 F.2d 1049, 1054-55 (5th Cir.1981). The testimony of Wecker, the expert who helped design the survey, sufficed to show that the survey was compiled in accordance with acceptable survey methods.

For these reasons, the district court did not abuse its discretion in admitting the survey.

B. Reasonableness of the Damages Award

Microsoft urges us to follow this court's recent decision in Lucent, 580 F.3d 1301, and hold that $200 million is not a reasonable royalty. We cannot, however, because the procedural posture of this case differs from Lucent, and that difference controls this case. Although Microsoft now objects to the size of the damages award, we cannot reach that question because Microsoft did not file a pre-verdict JMOL on damages.

In Lucent, the accused infringer filed a pre-verdict JMOL motion challenging the sufficiency of the damages' evidence. Id. at 1309. Though Microsoft could have similarly filed a pre-verdict JMOL, for whatever reason, it chose not to. See Fed.R.Civ.P. 50(a). On appeal, what that strategic decision means for Microsoft is that we cannot decide whether there was a sufficient evidentiary basis for the jury's damages award. Cf. Lucent, 580 F.3d at 1332 (holding that “we see little evidentiary basis under Georgia-Pacific ” for the damages award). Asking whether a damages award is “reasonable,” “grossly excessive or monstrous,” “based only on speculation or guesswork,” or “clearly not supported by the evidence,” are simply different ways of asking whether the jury's award is supported by the evidence. Fuji Photo, 394 F.3d at 1378; Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1290 (Fed.Cir.2002). Microsoft waived its ability to have us decide that question by failing to file a pre-verdict JMOL on damages. Fed.R.Civ.P. 50(a), (b).

Had Microsoft filed a pre-verdict JMOL, it is true that the outcome might have been different. Given the opportunity to review the sufficiency of the evidence, we could have considered whether the $200 million damages award was “grossly excessive or monstrous” in light of Word's retail price and the licensing fees Microsoft paid for other patents. Cf. Lucent, 580 F.3d at 1325-32. As this court did in Lucent, we could have analyzed the evidentiary basis for the Georgia-Pacific factors, and whether the benchmark (XMetaL) was sufficiently comparable. Id.

However, we cannot. Instead of the more searching review permitted under Rule 50(b), we are constrained to review the verdict under the much narrower standard applied to denials of new trial motions. Duff, 489 F.3d at 730. This standard is highly deferential: we may set aside a damages award and remand for a new trial “only upon a clear showing of excessiveness.” Id. (emphasis added). To be excessive, the award must exceed the “maximum amount calculable from the evidence.” Carlton v. H.C. Price Co., 640 F.2d 573, 579 (5th Cir.1981). We must affirm unless the appellant clearly shows there was no evidence to support the jury's verdict. Duff, 489 F.3d at 730, 732; see also Industrias Magromer, 293 F.3d at 923.

Under this highly deferential standard, we cannot say that Microsoft is entitled to a new trial on damages. The damages award, while high, was supported by the evidence presented at trial, including the expert testimony-which the jury apparently credited. See Unisplay, S.A. v. Am. Elec. Sign Co., 69 F.3d 512, 519 (Fed.Cir.1995). On appeal, the question is not whether we would have awarded the same amount of damages if we were the jury, but rather whether there is evidence to support what the jury decided. See Fuji Photo, 394 F.3d at 1378. Here, the jury's award was supported by the testimony of Wagner, i4i's damage expert, who opined that a reasonable royalty was between $200 and $207 million. The award was also supported by the testimony of Wecker, i4i's survey expert, who explained that the survey's conservative assumptions (i.e., that none of the companies who failed to respond infringed) meant the damages figure was “really an underestimate” and “way low.” As we have recognized previously, any reasonable royalty analysis necessarily involves an element of approximation, and uncertainty. See Lucent, 580 F.3d at 1325; Unisplay, 69 F.3d at 517. Given the intensely factual nature of a damages determination and our deferential standard of review, we are not in a position to second-guess or substitute our judgment for the jury's.

C. Enhanced Damages

Microsoft has only appealed the district court's decision to enhance damages under 35 U.S.C. § 284.

Section 284 gives the district court discretion to “increase the damages up to three times the amount found or assessed” by the jury. A finding of willful infringement is a prerequisite to the award of enhanced damages. In re Seagate Technology, LLC., 497 F.3d 1360, 1368 (Fed.Cir.2007) (en banc). In this case, the question of whether Microsoft willfully infringed the ′449 patent was submitted to the jury, which was instructed that i4i had to prove Microsoft (1) was aware of the ′449 patent; (2) acted despite an objectively high likelihood that its actions infringed a valid patent; where (3) this objectively high risk was either known or so obvious it should have been known to Microsoft. The verdict form instructed the jury to answer “yes” or “no” to “Did i4i prove by clear and convincing evidence that Microsoft's infringement was willful?” The jury answered “yes.” Based on the jury's willfulness finding, i4i made a post-trial motion for enhanced damages.

The district court then analyzed the factors set out in Read Corp. v. Portec, Inc., 970 F.2d 816, 826-27 (Fed.Cir.1992), in deciding whether to enhance damages. The district court found that factors 2, 4, 6, 7, and 8 supported enhancement. Factors 1 and 9, combined with i4i's delay in bringing suit, were found to weigh against enhancement. For factor 1, which considers whether the infringer deliberately copied the ideas or design of another, the district court found no evidence that Microsoft deliberately copied any of i4i's products. For factor 2, which considers whether the infringer knew of the patent, investigated the patent's scope and formed a good-faith belief of its invalidity or noninfringement, the district court found Microsoft was aware of i4i's patent, never formed a good faith belief of noninfringement, and clearly intended to add a custom XML editor in Word with similar capabilities to i4i's patented products. For factor 4, which considers the infringer's size and financial condition, the district court found that the jury's award, while “substantial,” was only a small fraction of Microsoft's profits from the sale of Word products. The district court also noted that Microsoft was “undisputedly” the world leader in software for business and personal computing, with revenues of $60.42 billion in 2008 alone. As for factors 6, 7, and 8, the district court found that Microsoft had started using the infringing products more than five years ago (in 2002), failed to conduct an infringement analysis after being notified of the ′449 patent again in 2003, and implemented the infringing custom XML editor with the purpose of rendering i4i's products obsolete. Although statutorily authorized to increase the award to $600 million, the district court awarded only $40 million in enhanced damages. See 35 U.S.C. § 284.

On this record, we cannot conclude that the district court abused its discretion in weighing the evidence or applying the Read factors. See Amsted Indus., Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 184 (Fed.Cir.1994). The district court made detailed factual findings which, taken together, support its award of enhanced damages. See Jurgens v. CBK, Ltd., 80 F.3d 1566, 1570-71 (Fed.Cir.1996). In deciding whether to enhance damages, the district court properly declined to reapply the test for willfulness set out in Seagate, 497 F.3d 1360. Although a finding of willfulness is a prerequisite for enhancing damages under § 284, the standard for deciding whether-and by how much-to enhance damages is set forth in Read, not Seagate. See 35 U.S.C. § 284; SRI Int'l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1468-69 (Fed.Cir.1997); cf. Seagate, 497 F.3d at 1371. Here, the question of willfulness was submitted to the jury. Microsoft does not dispute that the jury instructions were proper under Seagate, 497 F.3d at 1371. The test for willfulness is distinct and separate from the factors guiding a district court's discretion regarding enhanced damages. Compare id., with Read, 970 F.2d at 826-27. Under the Read factors, the district court properly considered Microsoft's size and financial condition, as well as whether Microsoft investigated the scope of the patent. Id. at 827; see also Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1377-78 (Fed.Cir.2002).

Microsoft is correct that it would have been improper to enhance damages based solely on litigation misconduct, and that this is not the prototypical case of litigation misconduct.<ref>Enhanced damages are certainly not the sole remedy for attorney misconduct. Other tools, which may be more appropriate in the mine-run of cases, include the award of attorney fees or sanctions. See 35 U.S.C. § 285; Fed.R.Civ.P. 11, 38; see also 28 U.S.C. § 1927.</ref> Typically, “litigation misconduct” refers to bringing vexatious or unjustified suits, discovery abuses, failure to obey orders of the court, or acts that unnecessarily prolong litigation. Jurgens, 80 F.3d at 1570-71 & n. 3; see also Va. Panel Corp. v. MAC Panel Co., 133 F.3d 860, 866 (Fed.Cir.1997). Here, the misconduct was improper statements by Microsoft's counsel to the jury, in defiance of the court's repeated admonitions. However, the district court considered Microsoft's litigation misconduct only after finding that the other Read factors favored enhanced damages: “Finally, also favoring enhancement is Microsoft's counsel's litigation conduct....” Considering all the Read factors and the district court's statutory authority to treble damages under § 284, the actual award of $40 million was not an abuse of discretion.

VI. Willfulness

We do not read Microsoft's opening brief as challenging the denial of Microsoft's post-verdict JMOL on willfulness. Although Microsoft did mention willfulness when disputing the propriety of the enhanced damages award, in substance this argument focused on the district court's rationale for awarding enhanced damages, not the jury's willfulness verdict. Whether the district court abused its discretion in weighing the Read factors is not the same question as whether there was a legally sufficient evidentiary basis for the jury's finding of willfulness. Fed.R.Civ.P. 50(a); compare Bryant v. Compass Group USA Inc., 413 F.3d 471, 475 (5th Cir.2005), with Read, 970 F.2d at 821, 826-27. Whether Microsoft's infringement was willful is a question of fact. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1374 (Fed.Cir.2008); see Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 822 (Fed.Cir.1992). This question was submitted to the jury, which answered in the affirmative. Accordingly, appellate review is limited to asking whether that verdict is supported by substantial evidence. ACCO Brands, 501 F.3d at 1311-12. On appeal, Microsoft has never attacked the jury instructions or the basis for the jury's willfulness verdict. In light of what Microsoft actually argued, we do not read Microsoft's passing reference to its post-verdict JMOL on willfulness as raising the issue.

Even if we were to read the solitary sentence, “Microsoft is entitled to judgment as a matter of law on the issue of willfulness,” as challenging the jury's finding of willfulness, the result does not change. A reasonable jury could have concluded that Microsoft “willfully” infringed the ′ 449 patent based on the evidence presented at trial. Infringement is willful 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.” Seagate, 497 F.3d at 1371. After satisfying this objective prong, the patentee must also show that the infringer knew or should have known of this objectively high risk. Id.

In this case, i4i presented sufficient evidence at trial to prove each prong of the Seagate standard for willfulness. The jury heard that Microsoft employees attended demonstrations of i4i's software, which practiced the ′449 patent. Further, the jury learned that Microsoft employees received i4i's sales kit, which identified i4i's software as “patented” technology and cited the ′449 patent. The jury then saw a series of emails between Microsoft employees discussing a marketing email sent by i4i. One of those emails explained that the “heart” of i4i's software was patented, again citing the ′449 patent. Based on this circumstantial evidence, the jury could have reasonably inferred that Microsoft knew about the ′449 patent.

At trial, i4i also showed that Word's custom XML editor was designed to and did perform the same methods as i4i's software (which was known to practice the ′449 patent). Despite this highly similar functionality, there is no evidence Microsoft took any remedial action, even though Microsoft knew of the ′449 patent as early as April 2001, before any work had begun on Word's custom XML editor. For example, Microsoft did not cease its infringing activity or attempt to design around; instead, Microsoft started marketing, selling, and instructing others in the use of Microsoft's custom XML editor in 2002. Cf. DePuy Spine, Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1336-37 (Fed.Cir.2009). Similarly, there is no evidence Microsoft ever made a good faith effort to avoid infringement; internal emails show Microsoft intended to render i4i's product “obsolete” and assure “there won't be a need for [i4i's] product.” Based on this and other evidence presented at trial, it would have been reasonable for the jury to infer that Microsoft went ahead with producing, marketing, and promoting its custom XML editor despite an objectively high likelihood the editor infringed the ′449 patent. This same evidence supports the jury's finding as to the subjective prong of Seagate. Given the information Microsoft had about i4i's software and the ′449 patent, Microsoft knew or should have known that there was an objectively high risk of infringement.

The fact that Microsoft presented several defenses at trial, including noninfringement and invalidity, does not mean the jury's willfulness finding lacks a sufficient evidentiary basis. See Fed.R.Civ.P. 50(a). The jury heard all of Microsoft's defenses, which it expressly rejected in finding the ′ 449 patent infringed and not invalid. Cf. DePuy Spine, 567 F.3d at 1336-37 (noting that the question of equivalence was “a close one”). Based on its own assessment of the evidence and Microsoft's defenses, the jury was free to decide for itself whether Microsoft reasonably believed there were any substantial defenses to a claim of infringement. Cf. Cohesive Techs., 543 F.3d at 1374.

VII. Permanent Injunction

We must decide whether the district court abused its discretion in granting a permanent injunction against Microsoft, or in tailoring that injunction under eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006).

The permanent injunction prohibits Microsoft from (1) selling, offering to sell, and/or importing into the United States any infringing Word products with the capability of opening XML files containing custom XML; (2) using Word to open an XML file containing custom XML; (3) instructing or encouraging anyone to use Word to open an XML containing custom XML; (4) providing support or assistance that describes how to use Word to open an XML file containing custom XML; and (5) testing, demonstrating, or marketing Word's ability to open an XML file containing custom XML.

The scope of this injunction is narrow, however. It applies only to users who purchase or license Word after the date the injunction takes effect. Users who purchase or license Word before the injunction's effective date may continue using Word's custom XML editor, and receiving technical support.

We review the decision to grant an injunction, as well as the scope of that injunction, for abuse of discretion. Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 772 (Fed.Cir.1993). Factual findings made in support of the injunction are reviewed for clear error; the district court's conclusion as to each eBay factor is reviewed for abuse of discretion. Acumed LLC v. Stryker Corp., 551 F.3d 1323, 1327-31 (Fed.Cir.2008). Our review is guided by statute and well-established principles of equity. See 35 U.S.C. § 283.<ref>The Patent Act provides that courts “may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.” 35 U.S.C. § 283.</ref> The plaintiff has the burden of showing that (1) it has suffered an irreparable injury; (2) remedies available at law are inadequate to compensate for that injury; (3) considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) the public interest would not be “disserved” by a permanent injunction. eBay, 547 U.S. at 391, 126 S.Ct. 1837.

While we conclude that the injunction's effective date should have been five months, rather than sixty days, from the date of its August 11, 2009 order, we affirm the district court's issuance of a permanent injunction and otherwise affirm the injunction's scope. Below, we address each factor in turn.

A. Irreparable Injury

The district court concluded that i4i was irreparably injured by Microsoft's infringement, based on its factual findings that Microsoft and i4i were direct competitors in the custom XML market, and that i4i lost market share as a result of the infringing Word products. The district court further found that the infringing Word products rendered i4i's software obsolete, as a result of which i4i changed its business model to make software that complemented Microsoft's infringing products.

It was proper for the district court to consider evidence of past harm to i4i. Past harm to a patentee's market share, revenues, and brand recognition is relevant for determining whether the patentee “ has suffered an irreparable injury.” Id. at 391, 126 S.Ct. 1837 (emphasis added); see, e.g., Acumed, 551 F.3d at 1328-29 (considering the relevance of past licensing decisions in assessing irreparable injury); Voda v. Cordis Corp., 536 F.3d 1311, 1329 (Fed.Cir.2008) (concluding that the patentee “had not identified any irreparable injury to himself”); Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1379-80 (Fed.Cir.2008) (analyzing whether the patentee “had been irreparably harmed”). Although injunctions are tools for prospective relief designed to alleviate future harm, by its terms the first eBay factor looks, in part, at what has already occurred. Considering past harm to a patentee does not establish a “general rule” or rely on the sort of “broad classifications” rejected by the Supreme Court in eBay; not all patentees will be able to show injury, and even those who do must still satisfy the other three factors. Cf. eBay, 547 U.S. at 393-94, 126 S.Ct. 1837.

In this case, the district court properly considered strong circumstantial evidence that Microsoft's infringement rendered i4i's product obsolete for much of the custom XML market, causing i4i to lose market share and change its business strategy to survive. i4i was not required to prove that its specific customers stopped using i4i's products because they switched to the infringing Word products. Based on the evidence presented at trial, it was not an abuse of discretion for the district court to find that Microsoft's infringement irreparably injured i4i.

B. Inadequate Remedies at Law

The district court concluded that there were inadequate remedies at law to compensate i4i for its injury. The district court found that before and after Microsoft began infringing, i4i produced and sold software that practiced the patented method. The district court found no evidence that i4i had previously licensed the patent, instead finding evidence that i4i sought to retain exclusive use of its invention.

It was not an abuse of discretion for the district court to conclude that monetary damages would be inadequate. In this case, a small company was practicing its patent, only to suffer a loss of market share, brand recognition, and customer goodwill as the result of the defendant's infringing acts. Such losses may frequently defy attempts at valuation, particularly when the infringing acts significantly change the relevant market, as occurred here. The district court found that Microsoft captured 80% of the custom XML market with its infringing Word products, forcing i4i to change its business strategy. The loss associated with these effects is particularly difficult to quantify. Difficulty in estimating monetary damages is evidence that remedies at law are inadequate. Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 703-04 (Fed.Cir.2008).

C. Balance of Hardships

Except on the limited issue of timing, the balance of hardships favors i4i. The district court found that i4i's business is comprised “almost exclusively” of products based on the ′449 patent. In contrast, Microsoft's infringing custom XML editor was found to be “merely one of thousands of features” within Word, used by only a small fraction of Microsoft's customers. The district court further found that Microsoft's infringement of the ′449 patent allowed Microsoft to “corner[ ] the XML market.”

Because the “balance of hardships” assesses the relative effect of granting or denying an injunction on the parties, the district court properly considered several factors in its analysis. eBay, 547 U.S. at 391, 126 S.Ct. 1837. These factors included the parties' sizes, products, and revenue sources. When measured by these factors, it is clear that the patented technology is central to i4i's business. Because most of i4i's products are based on the ′ 449 patent, i4i's market share, revenues, and business strategy are similarly tied to the patented method. These same factors reveal that the infringing custom XML editor relates to only a small fraction of Microsoft's sizeable business. The far greater importance of the patented method to i4i, combined with the demonstrated past effects of infringement on i4i, favors issuance of a permanent injunction.

The district court's analysis properly ignored the expenses Microsoft incurred in creating the infringing products. See Acumed, 551 F.3d at 1330. Similarly irrelevant are the consequences to Microsoft of its infringement, such as the cost of redesigning the infringing products. Id. As we explained in Broadcom, neither commercial success, nor sunk development costs, shield an infringer from injunctive relief. 543 F.3d at 704. Microsoft is not entitled to continue infringing simply because it successfully exploited its infringement. Id.; see also Windsurfing Int'l v. AMF, Inc., 782 F.2d 995, 1003 n. 12 (Fed.Cir.1986).

D. Public Interest

Except as to the injunction's effective date, the district court did not abuse its discretion in finding that the narrow scope of the injunction and the public's general interest in upholding patent rights favor injunctive relief. See Broadcom, 543 F.3d at 704 (quoting Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1547 (Fed.Cir.1995)). The district court's conclusion properly recognized that the touchstone of the public interest factor is whether an injunction, both in scope and effect, strikes a workable balance between protecting the patentee's rights and protecting the public from the injunction's adverse effects. Broadcom, 543 F.3d at 704. In particular, the injunction's narrow scope substantially mitigates the negative effects on the public, practically and economically. By excluding users who purchased or licensed infringing Word products before the injunction's effective date, the injunction greatly minimizes adverse effects on the public. Id. Here, the relevant “public” includes not only individual consumers, but also companies that license infringing Word products and manufacturers that are part of Microsoft's distribution channels. Cf. id. (defining the “public” to include affected network carriers and manufacturers). By carving out users who purchased or licensed infringing Word products before the injunction's effective date, the injunction's tailoring minimizes disruptions to the market and the public.

E. Injunction's Effective Date

On appeal, Microsoft challenges the date on which the injunction goes into effect. We review whether this aspect of the district court's order is supported by the record. As to the limited question of the injunction's effective date, we conclude that it is not. Accordingly, the injunction's effective date is modified as described below.

The district court ordered the injunction to go into effect sixty days after August 11, 2009, the date of its order issuing the injunction. Citing the declaration of a Microsoft employee (the “Tostevin declaration”), the district court found that “Microsoft ha[d] presented evidence that it may take five months to implement any injunction.” The district court also found, without any citation to the record, that “i4i ha[d] presented evidence that it is possible to design a software patch that can remove a user's ability to operate the infringing functionality.” Based on, among other things, “this competing evidence” and “the uncertainty surrounding what period of time would be ‘reasonable’ to expect Microsoft to comply with any injunction,” the district court ordered Microsoft to comply with the permanent injunction “within 60 days.”

In light of the record evidence, we conclude that the district court erred by ordering Microsoft to comply with the injunction within sixty days. The only evidence about how long it would take Microsoft to comply with the injunction was the Tostevin declaration, which gave an estimate of “at least” five months. The district court cited no other evidence, and our review of the record reveals no “competing evidence.” Accordingly, we modify the injunction's effective date from “60 days from the date of this order” to “5 months from the date of this order.” Cf. Canadian Lumber Trade Alliance v. United States, 517 F.3d 1319, 1339 n. 22 & 1344 (Fed.Cir.2008) (modifying an injunction's terms on appeal); Forest Labs., Inc. v. Ivax Pharms., Inc., 501 F.3d 1263, 1271-72 (Fed.Cir.2007) (modifying an injunction's terms on appeal). The injunction's effective date is now January 11, 2010.

CONCLUSION

The district court's claim construction is affirmed, as are the jury's findings of infringement and validity. The district court did not abuse its discretion in admitting i4i's evidence as to damages or in granting enhanced damages. Finally, we affirm the entry of the permanent injunction as modified herein.

AFFIRMED.

ON PETITION FOR PANEL REHEARING

A combined petition for panel rehearing and rehearing en banc was filed by Microsoft Corporation. A response was invited by the panel and filed by i4i Limited Partnership. That was followed by Microsoft's Motion for Leave to File a Reply in Support of Combined Petition for Panel Rehearing and Rehearing En Banc.

Among the issues on which Microsoft has sought rehearing is the holding that Microsoft did not challenge the district court's denial of Microsoft's post-verdict JMOL on willfulness. i4i Ltd. v. Microsoft Corp., 589 F.3d 1246, 1273 (Fed.Cir.2009). Microsoft argues that this conclusion is factually incorrect, that review of the jury's willfulness verdict is required, and that it should prevail on that question.

IT IS ORDERED THAT:

(1) Microsoft's Motion for Leave to File a Reply in Support of Combined Petition for Panel Rehearing and Rehearing En Banc is granted.

(2) Microsoft's Petition for Panel Rehearing is granted for the limited purpose of revising portions of the discussion of willfulness.

(3) The previous opinion in this appeal issued December 22, 2009 and reported at i4i Ltd. v. Microsoft Corp., 589 F.3d 1246 (Fed.Cir.2009), is withdrawn and replaced with the revised opinion accompanying this order.

The Petition for Rehearing En Banc will be circulated to the full court along with a copy of this order.

===Footnotes===
<references/>

I4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (2010)

2011-04-18T15:28:47Z

Bill Goodwine: Created page with "United States Court of Appeals, Federal Circuit. I4I LIMITED PARTNERSHIP and Infrastructures for Information Inc., Plaintiffs-Appellees, v. MICROSOFT CORPORATION, Defendant-Appe..."

United States Court of Appeals,
Federal Circuit.

I4I LIMITED PARTNERSHIP and Infrastructures for Information Inc., Plaintiffs-Appellees,
v.
MICROSOFT CORPORATION, Defendant-Appellant.

No. 2009-1504.
March 10, 2010.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., of Washington, DC, argued for plaintiffs-appellees. With him on the brief were Don O. Burley, Kara F. Stoll and Jason W. Melvin; and Erik R. Puknys, of Palo Alto, CA. Of counsel on the brief were Douglas A. Cawley and Jeffrey A. Carter, McKool Smith, P.C. of Dallas, TX, and T. Gordon White, of Austin, TX.

Matthew D. Powers, Weil, Gotshal & Manges LLP, of Redwood Shores, CA, argued for defendant-appellant. With him on the brief were Kevin S. Kudlac and Amber H. Rovner, of Austin, TX. Of counsel on the brief were Matthew D. McGill, Minodora D. Vancea, Gibson, Dunn & Crutcher LLP, of Washington, DC; and Isabella E. Fu, Microsoft Corporation, of Redmond, WA. Of counsel was David J. Lender, Weil, Gotshal & Manges LLP, of New York, NY.

John W. Thornburgh, Fish & Richardson, P.C., of San Diego, CA, for amici curiae Dell Inc. and Hewlett-Packard Company. With him on the brief were John E. Gartman; and Indranil Mukerji, of Washington, DC.

Richard A. Samp, Washington Legal Foundation, of Washington, DC, for amicus curiae Washington Legal Foundation, of Washington, DC. With him on the brief was Daniel J. Popeo.

Before SCHALL, PROST, and MOORE, Circuit Judges.

PROST, Circuit Judge.

This is a patent infringement case about an invention for editing custom XML, a computer language. The owner of the patent, i4i Limited Partnership (“i4i”), brought suit against Microsoft Corporation (“Microsoft”), alleging that the custom XML editor in certain versions of Microsoft Word (“Word”), Microsoft's word-processing software, infringed i4i's patent. After a seven-day trial, the jury found Microsoft liable for willful infringement. The jury rejected Microsoft's argument that the patent was invalid, and awarded $200 million in damages to i4i. The district court denied Microsoft's motions for judgment as a matter of law and motions for a new trial, finding that Microsoft had waived its right to challenge, among other things, the validity of the patent based on all but one piece of prior art and the sufficiency of the evidence supporting the jury's damage award. Although statutorily authorized to triple the jury's damages award because of Microsoft's willful infringement, the district court awarded only $40 million in additional damages. It also granted i4i's motion for a permanent injunction. This injunction, which this court stayed pending the outcome of this appeal, is narrow. i4i Ltd. v. Microsoft Corp., 343 Fed.Appx. 619 (Fed.Cir.2009). It does not affect copies of Word sold or licensed before the injunction goes into effect. Thus, users who bought or licensed Word before the injunction becomes effective will still be able to use the infringing custom XML editor, and receive technical support from Microsoft. After its effective date, the injunction prohibits Microsoft from selling, offering to sell, importing, or using copies of Word with the infringing custom XML editor. Microsoft is also prohibited from instructing or assisting new customers in the custom XML editor's use.

On appeal, Microsoft challenges the jury verdict and injunction on multiple grounds. Because this case went to trial and we are in large part reviewing what the jury found, our review is limited and deferential. We affirm the issuance of the permanent injunction, though we modify its effective date to accord with the evidence. In all other respects, we affirm for the reasons set forth below.

BACKGROUND
i4i began as a software consulting company in the late 1980s. Basically, companies would hire i4i to develop and maintain customized software for them. Thus, while consumers might not find i4i's products on the shelves at Best Buy or CompUSA, i4i was in the business of actively creating, marketing, and selling software. In June 1994, i4i applied for a patent concerning a method for processing and storing information about the structure of electronic documents. After approximately four years, the United States Patent and Trademark Office (“PTO”) allowed the application, which issued as U.S. Patent No. 5,787,449 (“′449 patent”). The invention claimed in the ′449 patent forms the basis of this litigation. Since then, i4i has developed several software products that practice the invention. One of these products is “add-on” software for Microsoft Word, which expands Word's capability to work with documents containing custom XML.

XML is one of many markup languages. Markup languages tell the computer how text should be processed by inserting “tags” around text. Tags give the computer information about the text. For example, some tags might tell the computer how to display text, such as what words should appear in bold or italics. Tags can also tell the computer about the text's content, identifying it as a person's name or social security number, for instance. Each tag consists of a delimiter and tag name. The delimiter sets the tag apart from the content. Thus, a tag indicating that “717 Madison Pl. NW” is an address might appear as <address>717 Madison Pl. NW</address> where “address” is the tag's name and “<” and “>” are the delimiters. Custom XML allows users to create and define their own tags. i4i refers to tags and similar information about a document's structure as “metacodes.” The specification of the ′449 patent defines “metacode” as “an individual instruction which controls the interpretation of the content of the data.” ′449 patent col.4 ll.15-16.

The ′449 patent claims an improved method for editing documents containing markup languages like XML. The improvement stems from storing a document's content and metacodes separately. Id. at col.6 ll.18-21. The invention primarily achieves this separation by creating a “metacode map,” a data structure that stores the metacodes and their locations within the document. The document's content is stored in a data structure called “mapped content.” Claim 14 is illustrative:

A method for producing a first map of metacodes and their addresses of use in association with mapped content and stored in distinct map storage means, the method comprising:

providing the mapped content to mapped content storage means;

providing a menu of metacodes; and

compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes; and

providing the document as the content of the document and the metacode map of the document.

Id. at col. 16 ll.18-30.

Separate storage of a document's structure and content was an improvement over prior technology in several respects. Importantly, it has allowed users to work solely on a document's content or its structure. Id. at col.7 ll.6-11, 17-20.

Since 2003, versions of Microsoft Word, a word processing and editing software, have had XML editing capabilities. In 2007, i4i filed this action against Microsoft, the developer and seller of Word. i4i alleged that Microsoft infringed claims 14, 18, and 20 of the ′449 patent by making, using, selling, offering to sell, and/or importing Word products capable of processing or editing custom XML. i4i further alleged that Microsoft's infringement was willful. Microsoft counterclaimed, seeking a declaratory judgment that the ′ 449 patent was invalid and unenforceable.

Before the case was submitted to the jury, Microsoft moved for judgment as a matter of law (“JMOL”) on the issues of infringement, willfulness, and validity. The district court denied Microsoft's motions, and the case was submitted to the jury. The jury found that Word infringed all asserted claims of the ′449 patent. The jury further found that the patent was not invalid, and that Microsoft's infringement was willful. It awarded $200 million in damages.

After trial, Microsoft renewed its motions for JMOL on infringement, validity, and willfulness. In the alternative, Microsoft moved for a new trial on these issues based on the sufficiency of the evidence supporting the jury's findings. Microsoft also argued it was entitled to a new trial based on errors in the claim construction, evidentiary rulings, and jury instructions. The district court denied Microsoft's motions. It granted i4i's motion for a permanent injunction and awarded $40 million in enhanced damages.

Microsoft now appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

DISCUSSION

Microsoft raises numerous issues on appeal. First, Microsoft challenges the district court's construction of the claim term “distinct.” Second, Microsoft challenges the jury's validity finding, urging us to find that the ′449 patent was anticipated or obvious as a matter of law, or at least grant a new trial on those issues. Third, Microsoft argues that the jury's infringement finding must be set aside because it is unsupported by substantial evidence. Fourth, Microsoft challenges the damages award, specifically the admission of certain expert testimony and the sufficiency of the evidence supporting the award. Finally, Microsoft challenges the issuance and terms of the permanent injunction. We address each of these issues in turn.

I. Standards of Review

For issues not unique to patent law, we apply the law of the regional circuit in which this appeal would otherwise lie. Thus, we apply Fifth Circuit law when reviewing evidentiary rulings and denials of motions for JMOL or new trial. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1328 (Fed.Cir.2008).

We review denials of JMOL de novo. Cambridge Toxicology Group, Inc. v. Exnicios, 495 F.3d 169, 179 (5th Cir.2007). JMOL is appropriate only if the court finds that a “reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue.” Fed.R.Civ.P. 50(a)(1); see Cambridge Toxicology, 495 F.3d at 179.

We review the denial of a new trial motion for abuse of discretion. Industrias Magromer Cueros y Pieles S.A. v. La. Bayou Furs Inc., 293 F.3d 912, 924 (5th Cir.2002). We will not reverse a denial absent a “clear showing” of an “absolute absence of evidence to support the jury's verdict.” Duff v. Werner Enters., Inc., 489 F.3d 727, 729 (5th Cir.2007) (emphasis added).

We review jury instructions for abuse of discretion, cognizant as we do so of the district court's broad discretion to compose jury instructions, so long as the instructions accurately describe the law. Baker v. Canadian Nat'l/Ill. Cent. R.R., 536 F.3d 357, 363-64 (5th Cir.2008); Walther v. Lone Star Gas Co., 952 F.2d 119, 125 (5th Cir.1992); see also Barton's Disposal Serv., Inc. v. Tiger Corp., 886 F.2d 1430, 1434 (5th Cir.1989). We will reverse a judgment “only if the [jury instructions] as a whole create[ ] a substantial doubt as to whether the jury has been properly guided in its deliberations.” Baker, 536 F.3d at 363-64. Erroneous instructions are subject to harmless error review. We will not reverse if, considering the record as a whole, the erroneous instruction “could not have affected the outcome of the case.” Wright v. Ford Motor Co., 508 F.3d 263, 268 (5th Cir.2007).

II. Claim Construction

On appeal, we must decide whether the district court properly construed the claim term “distinct.” In the asserted claims, the term “distinct” is used to describe how the metacode map and the mapped content are stored. Specifically, the claims say the metacode map is stored in “ distinct map storage means” or “ distinct storage means.” See, e.g., ′449 patent col.16 ll.20, 25-26, 53-54. Analogously, the document's content is stored in “mapped content storage,” id. at col.16 ll.22-23, or “mapped content distinct storage means.” Id. at col. 15 l.51 (emphasis added).

Before the district court, Microsoft argued that “distinct” added two requirements: (1) storing the metacode map and mapped content in separate files, not just separate portions of the computer's memory; and (2) the ability to edit the document's content and its metacode map “independently and without access” to each other.

The district court rejected both of Microsoft's proposed limitations. Based on its review of the claim language, the specification, and prosecution history, the district court concluded that “distinct” did not require storage in separate files. Similarly, it concluded that the user's ability to independently edit the document's structure or content was a benefit of separate storage, not a claim limitation. The district court then defined “distinct map storage means” in more general terms, as “a portion of memory for storing a metacode map.” “Mapped content distinct storage means” was defined as “a portion of memory for storing mapped content.”

On appeal, Microsoft renews both arguments about the meaning of “distinct.” We review the district court's claim construction de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-55 (Fed.Cir.1998) (en banc). To ascertain the scope and meaning of the asserted claims, we look to the words of the claims themselves, the specification, and the prosecution history. Phillips v. AWH Corp., 415 F.3d 1303, 1315-17 (Fed.Cir.2005) (en banc); see also 35 U.S.C. § 112 ¶ 2; Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115-16 (Fed.Cir.2004) (holding that the claims are not “presumed” to be restricted to the embodiments disclosed in the specification). We conclude that the district court properly rejected both of Microsoft's proposed limitations.

A. Separate Files

To determine whether “distinct” adds the requirement of storage in separate files, we begin with the claim language. See Phillips, 415 F.3d at 1312. In this case, the claim's plain language does not require storage of the metacode map and mapped content in separate files. The term “file” appears nowhere in the ′449 patent. Instead, the claims use “storage means”; the specification uses “structures.” ′449 patent col.16 ll.22-26, 53; see also id. at col.4 ll.7-13, 21-24. Both “storage means” and “structures” are broader terms than “file,” suggesting no particular format. At trial, i4i's expert testified that a person of ordinary skill in the art would understand “structures” to store and organize data, but not as limited to a particular storage format. Indeed, the specification arguably renounces particular formats by defining “document” as a “nonrandom aggregation of data irrespective of its mode of storage or presentation.” Id. at col.4 ll.57-59 (emphasis added).

Turning to the specification, we similarly see no “clear intent[ ] to limit the claim scope” to storage in files. Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed.Cir.2009). The sample algorithms do not say the storage means is restricted to “files.” ′449 patent col.8 ll.53-62; see Innova/Pure Water, 381 F.3d at 1121-22. Instead, they use the more generic term “storage space,” creating one for the mapped content and another for the metacode map.

As for the prosecution history, we do not read it as limiting storage to files. During prosecution, i4i distinguished its invention from U.S. Patent No. 5,280,574 (“Mizuta”) prior art in part because Mizuta stored “all document information ... in one file ... the document file.” But this is not all i4i said. i4i then explained that Mizuta “lacked any notion of a metacode map” or “distinct storage means.” In evaluating whether a patentee has disavowed claim scope, context matters. Together, these statements make clear that what distinguished the Mizuta prior art was not the storage type (file or no file), but rather the separation of a document's content and structure. The statements Microsoft now plucks from the prosecution history do not “clear[ly] and unmistakabl[y] disavow” storage means that are not files. Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1374 (Fed.Cir.2008) (citing Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123, 1136 (Fed.Cir.2006)).

Because the claims themselves do not use the word “file” and the specification discloses embodiments where the storage format is not a file, we conclude that “distinct” does not require storage in separate files. Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 907-08 (Fed.Cir.2004) (declining to limit the invention's scope to the disclosed embodiments when the specification did “not expressly or by clear implication reject the scope of the invention” to those embodiments); see also Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 987 (Fed.Cir.2009).

B. Independent Manipulation

The closer question is whether “distinct” requires independent manipulation of the metacode map and mapped content. Several of the embodiments in the ′449 patent allow the user to manipulate only the metacode map or mapped content. ′449 patent figs.4, 5, 6, 8. However, based on our review of the claim language, the specification, and the prosecution history, we conclude that the claims are not limited to these particular embodiments.

Generally, a claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a “clear intention” to limit the claim's scope with “words or expressions of manifest exclusion or restriction.” Liebel-Flarsheim, 358 F.3d at 906; see also Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed.Cir.2002). By the same token, not every benefit flowing from an invention is a claim limitation. See Computer Docking, 519 F.3d at 1374; Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1302-03 (Fed.Cir.2007).

We begin again with the claim language. None of the claims mention “independent manipulation” of the mapped content and metacode map, an omission we find significant. Had the inventors intended this limitation, they could have drafted the claims to expressly include it.

Similarly, the specification refers to “separate,” rather than “independent,” manipulation of the document's architecture and content. The specification goes on to describe the storage of the metacode map and content as “distinct and separate.” “Distinct” and “separate” are not the same as “independent.” Moreover, the specification teaches that “separate manipulation” describes the user's ability to work on only the metacode map or content. Behind the scenes, the invention keeps the metacode map and content synchronized. For example, Figure 9 teaches that updates to the content may require the invention to make corresponding changes to the metacode map. ′449 patent col. 14 l.49-col. 15 l.5.

Microsoft is correct that the specification refers to working on “solely” the document's structure (metacode map):

The present invention provides the ability to work solely on metacodes. The process allows changes to be made to the structure of a document without requiring the content. A metacode map could be edited directly without the mapped content. Additionally a new map can be created based solely on an existing map without requiring the content.

Id. at col.7 ll.6-11 (emphases added). Read as a whole, however, these statements are best understood as describing the advantages of separate storage, the real claim limitation. See Abbott Labs., 566 F.3d at 1289-90. The specification's permissive language, “could be edited,” “can be created,” and “ability to work,” does not clearly disclaim systems lacking these benefits.

An examination of the prosecution history similarly reveals no statements that unequivocally narrow the claims to require independent manipulation. Initially, the examiner rejected several claims as obvious, explaining that “[s]torage is always distinct, even if at distinct addresses.” In response, i4i stated:

[T]he architecture of a document can be treated as a separate entity from the content of the document. Thus, the architecture of the document can be treated as an entity having distinct storage from the content of the document. This separation allows distinct processes to operate on the content and the architecture, with or without knowledge of the other. In other words, using the present invention, one could change the architecture, (layout, structure, or presentation formation) of a document without even having access to the actual content of the document. This is achieved by extracting the metacodes from an existing document and creating a map of the location of the metacodes in the document and then storing the map and the content of the document separately.

The reason for the examiner's rejection helps us understand i4i's response. In context, i4i's response is best read as clarifying why the invention's “storage means” are more than just “distinct addresses.” i4i's subsequent discussion of the benefits of separate storage is not sufficiently “clear and unmistakable” to disavow embodiments lacking independent manipulation. Purdue Pharma, 438 F.3d at 1136.

In light of the specification's permissive language, the prosecution history, and the claim language, we conclude that “independent manipulation” is a benefit of separate storage, but not itself a limitation.

III. Validity

Microsoft also appeals two issues regarding the validity of i4i's patent. The first is whether the invention would have been obvious to one of skill in the art. The second is whether Microsoft is entitled to JMOL or a new trial on validity, due to anticipation by a software program called S4.

At trial, Microsoft argued that the ′449 patent was invalid based on several pieces of prior art. As relevant here, Microsoft argued that i4i's invention would have been obvious in light of U.S. Patent No. 5,587,902 (“Kugimiya”), when combined with either an SGML editor known as Rita or U.S. Patent No. 6,101,512 (“DeRose”). In the alternative, Microsoft argued that i4i's invention was anticipated under 35 U.S.C. § 102(b) by the sale of a software program, SEMI-S 4 (“S4”), by i4i before the critical date.

i4i disputed that it would have been obvious to combine Kugimiya with Rita or DeRose. i4i presented evidence that Kugimiya was in a different field (language translation) than Rita, DeRose, or the ′449 patent, which address document editing. i4i also presented evidence of secondary considerations, including long-felt need, failure of others, and commercial success. As to anticipation, i4i also argued that S4 did not practice the ′449 patent because it did not create a “metacode map.”

Before the case was submitted to the jury, Microsoft moved for JMOL on invalidity, arguing that i4i's sale of S4 violated the on-sale bar under § 102(b). Microsoft did not move for pre-verdict JMOL on obviousness or with regard to other prior art. The verdict form did not require the jury to make separate findings for the different pieces of prior art. Instead, the form asked: “Did Microsoft prove by clear and convincing evidence that any of the listed claims of the ′449 patent are invalid?” The jury was instructed to answer “yes” if it found a particular claim invalid, but otherwise answer “no.” The jury found all the asserted claims not invalid.

A. Obviousness

On appeal we must decide whether the ′449 patent would have been obvious in light of some combination of Rita or DeRose with Kugimiya.

The Rita prior art is a software program that allows users to create and edit documents using SGML, a markup language like XML. Rita stores the SGML tags and document's content in a “tree structure.” This tree stores the tags and content together. DeRose discloses a system for generating, analyzing, and navigating electronic documents containing a markup language, such as XML or SGML. To assist navigation, DeRose and Rita use “pointers,” which allow the user to move between different branches of the tree structure. Kugimiya discloses a system for translating documents from English to Japanese. As part of the translation process, Kugimiya finds, removes, and stores any XML tags in a separate file. The program then translates the document's content from English to Japanese, after which it puts the XML tags into the translated document. After the tags are replaced, the separate file containing the tags is discarded.

Although obviousness is a question of law, it is based on factual underpinnings. As always, our review of the ultimate legal question, whether the claimed invention would have been obvious, is de novo. Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1108 (Fed.Cir.2003). The extent to which we may review the jury's implicit factual findings depends on whether a pre-verdict JMOL was filed on obviousness. Id.; see also Jurgens v. McKasy, 927 F.2d 1552, 1557-58 (Fed.Cir.1991).

In this case, Microsoft has waived its right to challenge the factual findings underlying the jury's implicit obviousness verdict because it did not file a pre-verdict JMOL on obviousness for the Rita, DeRose and Kugimiya references. Fed.R.Civ.P. 50(a), (b). As we explained in Duro-Last, a party must file a pre-verdict JMOL motion on all theories, and with respect to all prior art references, that it wishes to challenge with a post-verdict JMOL. 321 F.3d at 1107-08. Microsoft's pre-verdict JMOL on anticipation, based on S4, was insufficient to preserve its right to post-verdict JMOL on a different theory (obviousness), or on different prior art (Rita, DeRose, Kugimiya). Duro-Last, 321 F.3d at 1107-08.

Accordingly, we do not consider whether the evidence presented at trial was legally sufficient to support the jury's verdict. Our review is limited to determining whether the district court's legal conclusion of nonobviousness was correct, based on the presumed factual findings. Id. at 1108-09; Kinetic Concepts, Inc. v. Blue Sky Med. Group, Inc., 554 F.3d 1010, 1020-21 (Fed.Cir.2009). In conducting this review, we must presume the jury resolved underlying factual disputes in i4i's favor because the jury made no explicit factual findings. Duro-Last, 321 F.3d at 1108. This presumption applies to disputes about (1) the scope and content of the prior art; (2) differences between the prior art and asserted claims; (3) the existence of motivation to modify prior art references; and (4) the level of ordinary skill in the pertinent art. Id. at 1109; see also Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Kinetic Concepts, 554 F.3d at 1019.

Microsoft's argument on appeal-that it would have been obvious to combine DeRose or Rita with Kugimiya-depends heavily on (1) the scope of the prior art, and (2) whether a person of ordinary skill would have been motivated to combine the references' teachings. These are questions of fact. Kinetic Concepts, 554 F.3d at 1020-21. Similarly, Microsoft's argument that the prior art discloses all of the claim limitations boils down to questions of fact: whether the “tree structure” in Rita and DeRose is a “metacode map,” and whether a “pointer” is an “address of use.” See id.; Graham, 383 U.S. at 17, 86 S.Ct. 684. The jury found all of the asserted claims not invalid, meaning the jury must have believed that there were differences between the prior art and asserted claims, and that a person of ordinary skill would not have been motivated to combine the references. Cf. Kinetic Concepts, 554 F.3d at 1019-20; Duro-Last, 321 F.3d at 1108-09. Because we must view the evidence in the light most favorable to the verdict, all of these questions must be resolved against Microsoft, and in favor of i4i. Arsement v. Spinnaker Exploration Co., 400 F.3d 238, 249, 252-53 (5th Cir.2005); see Jurgens, 927 F.2d at 1557-58. In light of the jury's implicit factual findings, Microsoft has not established that the asserted claims would have been obvious.

B. Anticipation

For anticipation, the question is whether the district court erred in denying Microsoft's motion for post-verdict JMOL on invalidity, or alternatively a new trial, based on the sale of S4 violating the on-sale bar. See 35 U.S.C. § 102(b).

S4 was a software program developed for a client called SEMI by i4i's corporate predecessor. i4i's founder, Michel Vulpe, hired Stephen Owens to help develop S4, which they delivered to SEMI in early 1993. S4 allowed the user to add and edit SGML tags in electronic documents. For storage purposes, S4 divided the document into “entities.” According to Vulpe and Owens, these entities were simply chunks of the SGML document, where the SGML tags were intermixed with the content. Both Vulpe and Owens testified that S4 did not create a “metacode map.”

At trial, Microsoft argued that the sale of S4 before the critical date violated the on-sale bar. To prove invalidity by the on-sale bar, a challenger must show by clear and convincing evidence that the claimed invention was “on sale in this country, more than one year prior to the date of the application for patent in the United States.” Id.; Adenta GmbH v. OrthoArm, Inc., 501 F.3d 1364, 1371 (Fed.Cir.2007). It is uncontested that S4 was sold in the United States before the critical date. At trial, the dispute was whether S4 practiced the “metacode map” limitation of the ′449 patent.

Because the S4 source code was destroyed after the project with SEMI was completed (years before this litigation began), the dispute turned largely on the credibility of S4's creators, Vulpe and Owens, who are also the named inventors on the ′449 patent. Both testified that the S4 software sold to SEMI did not practice the ′449 patent, for which they claimed the key innovation-the metacode map-was not even conceived until after the critical date. Both were extensively cross-examined. Vulpe was impeached with statements from a letter he had written to investors, as well as a funding application submitted to the Canadian government.

On appeal, Microsoft argues that it was entitled to JMOL because it established a prima facie case of anticipation, which i4i could not rebut by relying on the inventors' testimony alone, absent corroboration. Alternatively, Microsoft contends the evidence was not sufficient to support the jury's verdict of validity.

1. Burden of Proof

Microsoft's contention regarding a prima facie case and i4i's “rebuttal” misunderstands the nature of an anticipation claim under 35 U.S.C. § 102(b). Anticipation is an affirmative defense. See, e.g., Electro Med. Sys., S.A. v. Cooper Life Scis., Inc., 34 F.3d 1048, 1052 (Fed.Cir.1994). We do not agree that i4i was required to come forward with corroboration to “rebut” Microsoft's prima facie case of anticipation. Corroboration is required in certain circumstances. See, e.g., Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1374-76 (Fed.Cir.2009) ( “Because Lonza sought to introduce the testimony of an alleged prior inventor under § 102(g) for the purpose of invalidating a patent, Lonza was required to produce evidence corroborating Dr. Long's testimony.”); Procter & Gamble Co. v. Teva Pharms. USA, Inc., 566 F.3d 989, 989-99 (Fed.Cir.2009) (requiring corroboration where patentee tried to prove that the conception date was earlier than the filing date of a potentially anticipatory patent); Henkel Corp. v. Procter & Gamble Co., 560 F.3d 1286 (Fed.Cir.2009) (interference); Symantec Corp. v. Computer Assocs. Int'l, Inc., 522 F.3d 1279, 1295-96 (Fed.Cir.2008) (“An alleged co-inventor's testimony, standing alone, cannot rise to the level of clear and convincing evidence; he must supply evidence to corroborate his testimony.”). However, this is not a case where witness testimony was being used to overcome prior art by establishing an earlier date of invention.

To support its argument that S4 practiced the ′449 patent, Microsoft offered testimony by a former i4i employee and its expert. i4i responded with evidence, specifically testimony by S4's inventors, that S4 did not practice the claimed method. Though we require corroboration of “any witness whose testimony alone is asserted to invalidate a patent,” Finnigan Corp. v. Int'l Trade Comm'n, 180 F.3d 1354, 1369-70 (Fed.Cir.1999) (emphasis added), here the inventor testimony was offered by i4i in response to Microsoft's attack on the validity of the ′449 patent. It was not offered to meet Microsoft's burden of proving invalidity by clear and convincing evidence. Cf. TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159-60 (Fed.Cir.2004); Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1217 (Fed.Cir.2002); Finnigan, 180 F.3d at 1367. We know of no corroboration requirement for inventor testimony asserted to defend against a finding of invalidity by pointing to deficiencies in the prior art. Accordingly, we hold that corroboration was not required in this instance, where the testimony was offered in response to a claim of anticipation and pertained to whether the prior art practiced the claimed invention.

2. Sufficiency of the Evidence

In contrast to obviousness, Microsoft did move for pre-verdict JMOL regarding anticipation based on S4. We nonetheless conclude that there was sufficient evidence for a reasonable jury to find that the ′449 patent was not anticipated by the sale of S4. See Bellows v. Amoco Oil Co., 118 F.3d 268, 273 (5th Cir.1997). At trial, the jury heard conflicting testimony on whether S4 met the “metacode map” limitation. In evaluating the evidence, the jury was free to disbelieve Microsoft's expert, who relied on the S4 user manual, and credit i4i's expert, who opined that it was impossible to know whether the claim limitation was met without looking at S4's source code. Although the absence of the source code is not Microsoft's fault, the burden was still on Microsoft to show by clear and convincing evidence that S4 embodied all of the claim limitations. The jury's finding of validity was supported by the testimony of the inventors (Vulpe and Owens), as well as their faxes to an attorney regarding the patent application.

3. Jury Instructions

Microsoft also challenges the jury instructions on its burden of proving anticipation. According to Microsoft, the burden of proof should have been less for prior art that was not before the PTO, as was the case for Rita and DeRose.

We conclude that the jury instructions were correct in light of this court's precedent, which requires the challenger to prove invalidity by clear and convincing evidence. See, e.g., Zenith Elecs. Corp. v. PDI Commc'n Sys., Inc., 522 F.3d 1348, 1363-64 (Fed.Cir.2008). This court's decisions in Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1311-16 (Fed.Cir.2009), and Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1327 (Fed.Cir.2008), make clear that the Supreme Court's decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 426, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007) did not change the burden of proving invalidity by clear and convincing evidence. Thus, based on our precedent, we cannot discern any error in the jury instructions.

IV. Infringement

Taking Microsoft's arguments with regard to infringement in turn, we first review the jury instructions on infringement. We then decide whether the verdict is supported by substantial evidence.

A. Jury Instructions

At trial, i4i presented three theories of liability: direct, contributory, and induced infringement. Over Microsoft's objection, the district court used a general verdict form, which did not require separate findings on the different theories. Instead, the form asked: “Did i4i prove by a preponderance of the evidence that Microsoft infringes Claims 14, 18, or 20 of the ′449 patent?” The form then instructed the jury to answer “yes” or “no” for each claim. The jury answered “yes” for all asserted claims.

On appeal, Microsoft argues that it is entitled to a new trial because of two alleged errors in the jury instructions regarding contributory infringement. First, Microsoft argues it was error to use the term “component” rather than “material or apparatus.” In relevant part, the instructions provided:

If you find someone has directly infringed the ′449 patent, then contributory infringement exists if i4i establishes by a preponderance of evidence that:

1) Microsoft sold, offered for sale, or imported;

2) A material component for use in practicing the patented claim-or patented method that is not a staple article of commerce suitable for substantial non-infringing use;

3) With knowledge that the component was especially made or adapted for use in an infringing manner.

The corresponding statutory section, 35 U.S.C. § 271(c), uses the words “material or apparatus,” not “component,” for patented processes. Although the district court's instructions differed from the statute, this is not a case where the difference mattered. See Baker, 536 F.3d at 363-64 (reversing a jury verdict “only if the charge as a whole creates a substantial doubt as to whether the jury has been properly guided in its deliberations”). The parties' infringement arguments did not turn on whether Word's custom XML editor was a “component,” versus a “material or apparatus.” Nor is there any reason to think the jury was aware of the difference, or would have viewed the difference as anything but semantics had it known, because both parties used the terms interchangeably at trial. Under these circumstances, we are satisfied that the instruction properly guided the jury in its deliberations.

Microsoft also argues that the district court erred by instructing the jury to focus on the custom XML editor, rather than all of Word, when deciding whether any noninfringing uses were “substantial.” Given the evidence presented at trial, the district court did not abuse its discretion. As we explained in Lucent, a particular tool within a larger software package may be the relevant “material or apparatus” when that tool is a separate and distinct feature. 580 F.3d at 1320-21. In Lucent, the infringement inquiry accordingly focused on the date-picker, even though that tool was included in Microsoft Outlook, a larger software package. Id. Although the software differs, our reasoning in Lucent applies equally here. At trial, i4i showed that some versions of Word 2003 included the custom XML editor, while others did not. Dr. Rhyne opined that this ability to “leave [the editor] out or put it in” various Word products showed that the editor was a separate and distinct feature. Thus, there was sufficient evidence before the jury for it to conclude that the relevant “material or apparatus” was the custom XML editor, not all of Word. Accordingly, the jury was properly instructed that it should focus on the editor, not all of Word. See Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1337 (Fed.Cir.2008).

B. Sufficiency of the Evidence

Microsoft also challenges the sufficiency of evidence supporting the jury's general verdict of infringement. Infringement is a question of fact. Because infringement was tried to a jury, we review the verdict only for substantial evidence. ACCO Brands, Inc. v. ABA Locks Mfrs. Co., 501 F.3d 1307, 1311 (Fed.Cir.2007).

Before we consider the evidence, we pause briefly to address what errors are fatal to a general verdict. Different rules apply depending upon whether the flaw is in the legal theory or the evidence. We must set aside a general verdict if the jury was told it could rely on any of two or more independent legal theories, one of which was defective. Walther, 952 F.2d at 126; see Northpoint Tech., Ltd. v. MDS Am., Inc., 413 F.3d 1301, 1311-12 (Fed.Cir.2005). However, we will not set aside a general verdict “simply because the jury might have decided on a ground that was supported by insufficient evidence.” Walther, 952 F.2d at 126 (emphasis added). We will uphold such a verdict if there was sufficient evidence to support any of the plaintiff's alternative factual theories; we assume the jury considered all the evidence and relied upon a factual theory for which the burden of proof was satisfied. See Northpoint Tech., 413 F.3d at 1311-12.

In this case, Microsoft argues that the general verdict must be set aside unless both of i4i's alternative legal theories, contributory infringement and induced infringement, are supported by substantial evidence. We disagree: the verdict must be upheld if substantial evidence supports either legal theory. Microsoft's argument fails to distinguish between defects in legal theories and defects in the factual evidence. In this case, the jury was instructed that it could rely on any of three legal theories-direct, contributory, or induced infringement. All of these theories are legally valid and the corresponding instructions on each were proper. Because the jury could not have relied on a legally defective theory, the only remaining question is whether there was sufficient evidence to support either of i4i's independently sufficient legal theories, contributory infringement or induced infringement.<ref>Even though we could affirm the jury's verdict of infringement so long as there was sufficient evidence of direct infringement by Microsoft, here we focus on indirect infringement because that was the basis for i4i's damages estimate, which the jury apparently credited. See Lucent, 580 F.3d at 1334-35; Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1274 (Fed.Cir.2004).</ref> We conclude that there was.

1. Direct Infringement

To succeed on a theory of contributory or induced infringement, i4i was required to show direct infringement of the ′449 patent. Lucent, 580 F.3d at 1317; see also Glenayre Elecs., Inc. v. Jackson, 443 F.3d 851, 858 (Fed.Cir.2006). Because the claims asserted by i4i are method claims, Microsoft's sale of Word, without more, did not infringe the ′449 patent. Lucent, 580 F.3d at 1317. Direct infringement occurs only when someone performs the claimed method. Id.

Based on the evidence presented at trial, a reasonable jury could have found that at least one person performed the methods claimed in the ′449 patent. This evidence included testimony by i4i's expert (Dr. Rhyne), a joint stipulation, and Microsoft's response to interrogatories. Rhyne opined that Word's custom XML editor met all of the limitations of the asserted claims because the editor separated a document into a “CP stream” of content and a separate data structure containing the metacodes and their addresses of use. Rhyne testified that this separate data structure met the “metacode map” limitation. Though Microsoft's expert offered conflicting evidence, opining that Word did not infringe the asserted claims, the jury was free to disbelieve Microsoft's expert and credit i4i's expert, who testified that the ′449 patent was infringed if Word was used to open an XML document, edit an XML document, or save a document containing custom XML in an XML file format. The joint stipulation and Microsoft's interrogatory responses unequivocally state that Word was used in these ways. Cf. Fresenius USA, Inc. v. Baxter Int'l, Inc., 582 F.3d 1288, 1298-99 (Fed.Cir.2009); Martek, 579 F.3d at 1371-72.

2. Contributory Infringement

For contributory infringement, the question is whether there is substantial evidence to support a finding under this theory. A party is liable for contributory infringement if that party sells, or offers to sell, a material or apparatus for use in practicing a patented process. That “material or apparatus” must be a material part of the invention, have no substantial noninfringing uses, and be known (by the party) “to be especially made or especially adapted for use in an infringement of such patent.” 35 U.S.C. § 271(c); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1312 (Fed.Cir.2005).

Based on the evidence presented at trial, the jury could have reasonably concluded that the custom XML editor had no substantial, noninfringing uses and that Microsoft knew that the use of the custom XML editor would infringe i4i's patent. At trial, Rhyne agreed that the custom XML editor could be used in three noninfringing ways, but opined that none were “substantial.” Rhyne explained that saving a document in the noninfringing, binary format deprived users of the very benefit XML was intended to provide: namely, allowing another program to search and read the document's metacode tags.

Despite Microsoft's contention to the contrary, evidence that some users saved XML documents in these noninfringing formats does not render the jury's verdict unreasonable. Whether a use is “substantial,” rather than just “unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental,” cannot be evaluated in a vacuum. Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1327 (Fed.Cir.2009). In assessing whether an asserted noninfringing use was “substantial,” the jury was allowed to consider not only the use's frequency, but also the use's practicality, the invention's intended purpose, and the intended market. See id. Here, the jury heard ample testimony that the noninfringing, binary file format was not a practical or worthwhile use for the XML community, for which the custom XML editor was designed and marketed.

Further, the jury could have reasonably concluded that Microsoft knew that use of the editor would infringe the ′449 patent, based on the circumstantial evidence presented at trial. Cf. Lucent, 580 F.3d at 1318, 1321-22; Fuji Photo Film Co. v. Jazz Photo Corp., 394 F.3d 1368, 1377-78 (Fed.Cir.2005). Here, the evidence showed that the Word development team heard a presentation by i4i about software practicing the ′449 patent, asked how the software worked, and received marketing materials on the software. Internal Microsoft emails showed that other Microsoft employees received a marketing email from i4i containing the patent number, were “familiar” with i4i's products, and believed the Word's custom XML editor would render that product “obsolete.” Based on this evidence, the jury could have reasonably concluded that Microsoft knew about the ′449 patent and knew use of its custom XML editor would infringe.

3. Induced Infringement

Though we need not reach this theory because substantial evidence supports i4i's theory of contributory infringement, we do so for the sake of completeness. On appeal, the sole question is whether there is substantial evidence to support a verdict of induced infringement. To prove inducement, the patentee must show direct infringement, and that the alleged infringer “knowingly induced infringement and possessed specific intent to encourage another's infringement.” MEMC Elec. Materials, Inc. v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1378 (Fed.Cir.2005); see 35 U.S.C. § 271(b).

Based on the evidence presented at trial, a reasonable jury could have concluded that Microsoft had the “affirmative intent to cause direct infringement.” DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed.Cir.2006) (en banc in relevant part). The jury saw and heard about Microsoft's online training and user support resources, which provided detailed instructions on using Word's custom XML editor. i4i's expert opined that using the editor as directed by these materials would infringe the ′449 patent. The instructional materials were thus substantial evidence that Microsoft intended the product to be used in an infringing manner. See DSU, 471 F.3d at 1303, 1305. Unlike the instructions in Vita-Mix, 581 F.3d at 1328-29, which taught a use the defendant “could have reasonably believed was non-infringing” and another use that was “non-infringing,” here there was substantial evidence Microsoft knew its instructions would result in infringing use. As explained in our discussion of contributory infringement, Microsoft's internal emails are substantial evidence of Microsoft's knowledge, both of the ′449 patent and the infringing nature of Word's custom XML editor. Regarding i4i's software that practiced the invention, one Microsoft employee remarked: “[W]e saw this tool some time ago and met its creators. Word [2003] will make it obsolete. It looks great for XP though.” Evidence that consumers were using Word in an infringing manner included Microsoft data on usage of Word, as well as a Microsoft marketing document listing “real” examples of custom XML's use in Word.

V. Damages

Microsoft protests the $200 million damages award on several grounds. We begin by reviewing the propriety of various evidentiary rulings. We then decide whether the district court abused its discretion by denying Microsoft a new trial on damages.

A. Evidentiary Rulings

We review evidentiary rulings for abuse of discretion. Huss v. Gayden, 571 F.3d 442, 452 (5th Cir.2009); see Paz v. Brush Engineered Materials, Inc., 555 F.3d 383, 387-88 (5th Cir.2009). Microsoft challenges the admission of expert testimony on damages, as well as a survey relied on by the expert. We address each in turn.

1. Expert Testimony

To determine whether expert testimony was properly admitted under Rule 702 of the Federal Rules of Evidence, we use the framework set out in Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 589-90, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993).<ref>An expert witness with “scientific, technical, or otherwise specialized knowledge,” may testify and form an opinion “if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods; and (3) the witness has applied the principles and methods reliably to the facts of the case.” Fed.R.Evid. 702.</ref> Daubert requires the district court ensure that any scientific testimony “is not only relevant, but reliable.” Id. at 589, 113 S.Ct. 2786; see also Kumho Tire Co. v. Carmichael, 526 U.S. 137, 141-42, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999). When the methodology is sound, and the evidence relied upon sufficiently related to the case at hand, disputes about the degree of relevance or accuracy (above this minimum threshold) may go to the testimony's weight, but not its admissibility. Knight v. Kirby Inland Marine Inc., 482 F.3d 347, 351 (5th Cir.2007); Moore v. Ashland Chem. Inc., 151 F.3d 269, 276 (5th Cir.1998) (en banc).

On appeal, Microsoft challenges the expert testimony by Dr. Wagner, i4i's damages expert. Wagner opined that a reasonable damages award would be $200 million dollars, based on a hypothetical negotiation between i4i and Microsoft at the time the infringement began. To come up with the $200 million figure, Wagner calculated a royalty rate ($98), then multiplied that rate by the number of Word products actually used in an infringing manner (2.1 million).

At trial, the parties hotly disputed the correctness of the $98 royalty rate. Microsoft argued that this rate was exorbitant given the price of certain Word products, which could be as little as $97. As further evidence of its unreasonableness, Microsoft pointed out that the rate resulted in a total damages amount ($200 million) greatly exceeding the $1-$5 million Microsoft had paid to license other patents. In response, i4i had its expert (Wagner) give a detailed explanation for how he arrived at the $98 royalty rate. Wagner testified that he first chose an appropriate “benchmark” in order to value Microsoft's use of the claimed invention at the time of the hypothetical negotiation. Wagner chose a product called XMetaL as his benchmark, which had a retail price of $499. To calculate the licensing fee, Wagner multiplied the price of XMetaL ($499) by Microsoft's profit margin (76.6%), based on his assumption that any licensing fee would be a fraction of the profits. Wagner then applied the 25-percent rule to this number, which assumes the inventor will keep 25% of the profits from any infringing sales. This resulted in a baseline royalty rate of $96. Wagner testified that the 25-percent rule was “well-recognized” and “widely used” by people in his field.

To support his royalty calculation, Wagner adjusted the baseline royalty rate of ($96) using the factors set out in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F.Supp. 1116, 1120 (S.D.N.Y.1970).<ref>These factors include: (1) royalties the patentee has received for licensing the patent to others; (2) rates paid by the licensee for the use of comparable patents; (3) the nature and scope of the license (exclusive or nonexclusive, restricted or nonrestricted by territory or product type); (4) any established policies or marketing programs by the licensor to maintain its patent monopoly by not licensing others to use the invention or granting licenses under special conditions to maintain the monopoly; (5) the commercial relationship between the licensor and licensee, such as whether they are competitors; (6) the effect of selling the patented specialty in promoting sales of other products of the licensee; (7) the duration of the patent and license term; (8) the established profitability of the product made under the patent, including its commercial success and current popularity; (9) the utility and advantages of the patent property over old modes or devices; (10) the nature of the patented invention and the benefits to those who have used the invention; (11) the extent to which the infringer has used the invention and the value of that use; (12) the portion of profit or of the selling price that may be customary in that particular business to allow for use of the invention or analogous inventions; (13) the portion of the realizable profit that should be credited to the invention as opposed to its non-patented elements; (14) the opinion testimony of qualified experts; and (15) the results of a hypothetical negotiation between the licensor and licensee. Id.</ref> Based on the Georgia-Pacific factors, Wagner then increased the baseline from $96 to $98, which was the “reasonable royalty rate” he used in calculating the $200-$207 million damages estimate. Specifically, Wagner concluded that factors 3, 5, 6, 9, and 11 affected the baseline rate.

Wagner opined that factor 3, which considers the license's terms, lowered the royalty rate because his hypothetical license did not give Microsoft know-how, additional cooperation or trade secrets, just non-exclusive use in the United States. However, Wagner opined that factors 5, 6, 9, and 11 increased the royalty rate. For factor 5, which looks at the commercial relationship between the licensor and licensee, Wagner found that Microsoft was a direct competitor of i4i, which meant any license would destroy a “very large segment” of i4i's market. For factor 6, which asks whether the patented technology promotes the sale of other products, Wagner concluded that the infringing custom XML editor was critical to Microsoft's sales generally, as evidenced by internal Microsoft statements that a custom XML editor was “one of the most important ways” for encouraging users to purchase new Word products. Examining factor 9, which examines the infringer's need for taking a license, Wagner opined that Microsoft had no commercially acceptable, non-infringing alternatives to using i4i's patent. This opinion was based on internal Microsoft documents describing Microsoft's interest in creating such a custom XML editor, and prolonged inability to do so. For factor 11, which looks at the use and value of the patented technology to Microsoft, Wagner concluded that the custom XML editor was a critical addition to Word. In support of this view, i4i presented statements by Microsoft employees that custom XML was not a “slight addition [but i]t's more like 90 percent of the value,” was “where the future is, seriously,” and “the glue that holds the Office ecosystem together.” Based on all of these Georgia-Pacific factors, Wagner increased the baseline royalty rate by $2, for a total of $98.

On appeal, Microsoft ably points out various weaknesses in the damage calculations by i4i's expert. At their heart, however, Microsoft's disagreements are with Wagner's conclusions, not his methodology. Daubert and Rule 702 are safeguards against unreliable or irrelevant opinions, not guarantees of correctness. We have consistently upheld experts' use of a hypothetical negotiation and Georgia-Pacific factors for estimating a reasonable royalty. See, e.g., Micro Chem., Inc. v. Lextron, Inc., 317 F.3d 1387, 1393 (Fed.Cir.2003); Interactive Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1384 (Fed.Cir.2001). Wagner's testimony about the acceptance of the hypothetical negotiation model among damage experts and economists, combined with his methodical explication of how he applied the model to the relevant facts, satisfied Rule 702 and Daubert. See Daubert, 509 U.S. at 593, 113 S.Ct. 2786. Given Wagner's testimony about his credentials, the district court did not abuse its discretion in finding Wagner qualified to apply the methodology. See Pipitone v. Biomatrix, Inc., 288 F.3d 239, 249-50 (5th Cir.2002). Microsoft's quarrel with the facts Wagner used go to the weight, not admissibility, of his opinion.

We further hold that Wagner's opinion was “based on sufficient facts or data.” Fed.R.Evid. 702. At trial, Microsoft disputed which facts were relevant for determining a reasonable royalty rate. In particular, Microsoft focused on the benchmark (XMetaL), the resulting baseline royalty rate, and i4i's survey for estimating infringing use.

Regarding the benchmark, Wagner explained that he chose XMetaL because it was the product Microsoft bought and used before developing its own custom XML editor, it was the cheapest of the custom XML editors available on the market at the time, and it was one of three principal competitors Microsoft identified in the custom XML market. Microsoft contended that a better estimate of the custom XML editor's value was $50, the difference in price between versions of Word with and without the editor. Microsoft also argued that because XMetaL has many additional features besides custom XML editing, the $499 retail price overestimated the value of the custom XML editor. In response, Wagner acknowledged that not all users of custom XML would have switched to a high-end product like XMetaL, but that those “who really needed that functionality” would have, requiring them to buy one of the commercially available products, even if it had many superfluous features. Wagner clarified that his damages estimate only considered users who “really needed” the custom XML editor, making it inappropriate to use the $50 price difference paid by all purchasers of Word, regardless of whether they infringed or not.

As for using the baseline royalty rate ($96) as the starting point for the Georgia-Pacific analysis, Wagner opined that it was necessary because of Microsoft's business strategy. According to Wagner, Microsoft's primary goal is to make sales, not to maximize the price it charges for each additional feature. In making sales, Wagner explained that Microsoft's biggest competitor is always itself: Microsoft has to convince consumers to purchase new versions of its products, even if they already have a “perfectly good” copy of an older version. To incentivize users to upgrade, Wagner testified that Microsoft included new features at no additional cost, making it difficult to value the new features.

As for the survey, i4i's survey expert (Dr. Wecker) explained that it was limited to estimating infringing use by businesses; i4i did not even seek damages for infringing use by individual consumers. Wecker sent the survey to 988 large and small businesses randomly selected from a database of 13 million U.S. companies. Wecker explained that this large sample size was necessary to ensure he received sufficient responses (between 25 and 100) because many companies are “too busy” or have policies against responding to surveys. The survey consisted of screening and substantive questions. The screening questions helped identify the proper person to speak with about the company's use of custom XML. Wecker received 46 responses to the survey, which consisted of approximately 40 substantive questions. For all of the questions, the responder had the option of saying they did not know. Any company that took the survey received $35, regardless of the answers they gave. Wecker explained that he used logical imputation, an accepted procedure for statisticians to resolve inconsistent survey responses, to make some of the answers consistent. Of those that responded to the survey, 19 companies reported using Word in an infringing manner. Wecker assumed that all the companies that did not respond (942) did not use Word in an infringing manner. Based on these assumptions, Wecker determined that 1.9% (19/988) of all copies of Word sold to businesses between 2003 and 2008 were used in an infringing manner. Wecker then multiplied this percentage (1.9%) by the number of copies of Word sold to businesses, for a total of 1.8 million infringing uses.<ref>Based on sales of Word, Wagner then estimated the number of additional infringing uses that occurred between the end of the survey date and start of trial, to give a total of 2.1 million.</ref>

Wecker opined that this estimate was conservative, “really an underestimate” and “way low” because he assumed every company that did not respond was not infringing, which was highly unlikely and introduced a “serious downward bias.” Microsoft contested the accuracy of the survey, based on the low response rate, use of logical imputation to correct inconsistent answers, and questions requiring estimates of Word usage going back several years. In response, i4i's experts opined that the survey's conservative assumptions about the unresponsive companies mitigated (and perhaps even overcorrected) for those weaknesses.

Microsoft is correct that i4i's expert could have used other data in his calculations. The existence of other facts, however, does not mean that the facts used failed to meet the minimum standards of relevance or reliability. See Fed.R.Evid. 702 advisory committee's note. Under Rule 702, the question is whether the expert relied on facts sufficiently related to the disputed issue. Here, that issue was a reasonable royalty for the ′449 patent. We conclude that Wagner based his calculations on facts meeting these minimum standards of relevance and reliability. Fed.R.Evid. 702.

As i4i's expert explained, the facts were drawn from internal Microsoft documents, publicly available information about other custom XML editing software, and a survey designed to estimate the amount of infringing use. Thus, these facts had a sufficient nexus to the relevant market, the parties, and the alleged infringement. While the data were certainly imperfect, and more (or different) data might have resulted in a “better” or more “accurate” estimate in the absolute sense, it is not the district court's role under Daubert to evaluate the correctness of facts underlying an expert's testimony. See Micro Chem., 317 F.3d at 1392. Questions about what facts are most relevant or reliable to calculating a reasonable royalty are for the jury. The jury was entitled to hear the expert testimony and decide for itself what to accept or reject. See Pipitone, 288 F.3d at 249-50.

As the Supreme Court explained in Daubert, “[v]igorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence.” 509 U.S. at 596, 113 S.Ct. 2786. Microsoft had these opportunities, and ably availed itself of them. Microsoft presented expert testimony and attacked the benchmark, survey, and calculation's reasonableness on cross-examination. Cf. Micro Chem., 317 F.3d at 1392.

Based on this record, the district court did not abuse its discretion in admitting Wagner's expert testimony on damages.

2. The Survey

Microsoft also challenges the district court's admission of the survey used to estimate the amount of infringing use. We do not agree with Microsoft that the danger of unfair prejudice substantially outweighed the survey's probative value, so as to warrant exclusion under Rule 403. Both of i4i's experts, Wagner and Wecker, opined that the survey dramatically underestimated the amount of infringing use. Given the survey's conservative assumptions, the district court did not abuse its discretion in admitting the survey. Further, the survey was properly admitted over Microsoft's hearsay objection under Federal Rule of Evidence 703, since the survey was used to estimate the amount of infringing use, a key number in i4i's damage calculation. Given the survey's importance, evidence about its methodology and findings could certainly help the jury evaluate the expert testimony. See C.A. May Marine Supply Co. v. Brunswick Corp., 649 F.2d 1049, 1054-55 (5th Cir.1981). The testimony of Wecker, the expert who helped design the survey, sufficed to show that the survey was compiled in accordance with acceptable survey methods.

For these reasons, the district court did not abuse its discretion in admitting the survey.

B. Reasonableness of the Damages Award

Microsoft urges us to follow this court's recent decision in Lucent, 580 F.3d 1301, and hold that $200 million is not a reasonable royalty. We cannot, however, because the procedural posture of this case differs from Lucent, and that difference controls this case. Although Microsoft now objects to the size of the damages award, we cannot reach that question because Microsoft did not file a pre-verdict JMOL on damages.

In Lucent, the accused infringer filed a pre-verdict JMOL motion challenging the sufficiency of the damages' evidence. Id. at 1309. Though Microsoft could have similarly filed a pre-verdict JMOL, for whatever reason, it chose not to. See Fed.R.Civ.P. 50(a). On appeal, what that strategic decision means for Microsoft is that we cannot decide whether there was a sufficient evidentiary basis for the jury's damages award. Cf. Lucent, 580 F.3d at 1332 (holding that “we see little evidentiary basis under Georgia-Pacific ” for the damages award). Asking whether a damages award is “reasonable,” “grossly excessive or monstrous,” “based only on speculation or guesswork,” or “clearly not supported by the evidence,” are simply different ways of asking whether the jury's award is supported by the evidence. Fuji Photo, 394 F.3d at 1378; Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277, 1290 (Fed.Cir.2002). Microsoft waived its ability to have us decide that question by failing to file a pre-verdict JMOL on damages. Fed.R.Civ.P. 50(a), (b).

Had Microsoft filed a pre-verdict JMOL, it is true that the outcome might have been different. Given the opportunity to review the sufficiency of the evidence, we could have considered whether the $200 million damages award was “grossly excessive or monstrous” in light of Word's retail price and the licensing fees Microsoft paid for other patents. Cf. Lucent, 580 F.3d at 1325-32. As this court did in Lucent, we could have analyzed the evidentiary basis for the Georgia-Pacific factors, and whether the benchmark (XMetaL) was sufficiently comparable. Id.

However, we cannot. Instead of the more searching review permitted under Rule 50(b), we are constrained to review the verdict under the much narrower standard applied to denials of new trial motions. Duff, 489 F.3d at 730. This standard is highly deferential: we may set aside a damages award and remand for a new trial “only upon a clear showing of excessiveness.” Id. (emphasis added). To be excessive, the award must exceed the “maximum amount calculable from the evidence.” Carlton v. H.C. Price Co., 640 F.2d 573, 579 (5th Cir.1981). We must affirm unless the appellant clearly shows there was no evidence to support the jury's verdict. Duff, 489 F.3d at 730, 732; see also Industrias Magromer, 293 F.3d at 923.

Under this highly deferential standard, we cannot say that Microsoft is entitled to a new trial on damages. The damages award, while high, was supported by the evidence presented at trial, including the expert testimony-which the jury apparently credited. See Unisplay, S.A. v. Am. Elec. Sign Co., 69 F.3d 512, 519 (Fed.Cir.1995). On appeal, the question is not whether we would have awarded the same amount of damages if we were the jury, but rather whether there is evidence to support what the jury decided. See Fuji Photo, 394 F.3d at 1378. Here, the jury's award was supported by the testimony of Wagner, i4i's damage expert, who opined that a reasonable royalty was between $200 and $207 million. The award was also supported by the testimony of Wecker, i4i's survey expert, who explained that the survey's conservative assumptions (i.e., that none of the companies who failed to respond infringed) meant the damages figure was “really an underestimate” and “way low.” As we have recognized previously, any reasonable royalty analysis necessarily involves an element of approximation, and uncertainty. See Lucent, 580 F.3d at 1325; Unisplay, 69 F.3d at 517. Given the intensely factual nature of a damages determination and our deferential standard of review, we are not in a position to second-guess or substitute our judgment for the jury's.

C. Enhanced Damages

Microsoft has only appealed the district court's decision to enhance damages under 35 U.S.C. § 284.

Section 284 gives the district court discretion to “increase the damages up to three times the amount found or assessed” by the jury. A finding of willful infringement is a prerequisite to the award of enhanced damages. In re Seagate Technology, LLC., 497 F.3d 1360, 1368 (Fed.Cir.2007) (en banc). In this case, the question of whether Microsoft willfully infringed the ′449 patent was submitted to the jury, which was instructed that i4i had to prove Microsoft (1) was aware of the ′449 patent; (2) acted despite an objectively high likelihood that its actions infringed a valid patent; where (3) this objectively high risk was either known or so obvious it should have been known to Microsoft. The verdict form instructed the jury to answer “yes” or “no” to “Did i4i prove by clear and convincing evidence that Microsoft's infringement was willful?” The jury answered “yes.” Based on the jury's willfulness finding, i4i made a post-trial motion for enhanced damages.

The district court then analyzed the factors set out in Read Corp. v. Portec, Inc., 970 F.2d 816, 826-27 (Fed.Cir.1992), in deciding whether to enhance damages. The district court found that factors 2, 4, 6, 7, and 8 supported enhancement. Factors 1 and 9, combined with i4i's delay in bringing suit, were found to weigh against enhancement. For factor 1, which considers whether the infringer deliberately copied the ideas or design of another, the district court found no evidence that Microsoft deliberately copied any of i4i's products. For factor 2, which considers whether the infringer knew of the patent, investigated the patent's scope and formed a good-faith belief of its invalidity or noninfringement, the district court found Microsoft was aware of i4i's patent, never formed a good faith belief of noninfringement, and clearly intended to add a custom XML editor in Word with similar capabilities to i4i's patented products. For factor 4, which considers the infringer's size and financial condition, the district court found that the jury's award, while “substantial,” was only a small fraction of Microsoft's profits from the sale of Word products. The district court also noted that Microsoft was “undisputedly” the world leader in software for business and personal computing, with revenues of $60.42 billion in 2008 alone. As for factors 6, 7, and 8, the district court found that Microsoft had started using the infringing products more than five years ago (in 2002), failed to conduct an infringement analysis after being notified of the ′449 patent again in 2003, and implemented the infringing custom XML editor with the purpose of rendering i4i's products obsolete. Although statutorily authorized to increase the award to $600 million, the district court awarded only $40 million in enhanced damages. See 35 U.S.C. § 284.

On this record, we cannot conclude that the district court abused its discretion in weighing the evidence or applying the Read factors. See Amsted Indus., Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 184 (Fed.Cir.1994). The district court made detailed factual findings which, taken together, support its award of enhanced damages. See Jurgens v. CBK, Ltd., 80 F.3d 1566, 1570-71 (Fed.Cir.1996). In deciding whether to enhance damages, the district court properly declined to reapply the test for willfulness set out in Seagate, 497 F.3d 1360. Although a finding of willfulness is a prerequisite for enhancing damages under § 284, the standard for deciding whether-and by how much-to enhance damages is set forth in Read, not Seagate. See 35 U.S.C. § 284; SRI Int'l, Inc. v. Advanced Tech. Labs., Inc., 127 F.3d 1462, 1468-69 (Fed.Cir.1997); cf. Seagate, 497 F.3d at 1371. Here, the question of willfulness was submitted to the jury. Microsoft does not dispute that the jury instructions were proper under Seagate, 497 F.3d at 1371. The test for willfulness is distinct and separate from the factors guiding a district court's discretion regarding enhanced damages. Compare id., with Read, 970 F.2d at 826-27. Under the Read factors, the district court properly considered Microsoft's size and financial condition, as well as whether Microsoft investigated the scope of the patent. Id. at 827; see also Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1377-78 (Fed.Cir.2002).

Microsoft is correct that it would have been improper to enhance damages based solely on litigation misconduct, and that this is not the prototypical case of litigation misconduct.<ref>Enhanced damages are certainly not the sole remedy for attorney misconduct. Other tools, which may be more appropriate in the mine-run of cases, include the award of attorney fees or sanctions. See 35 U.S.C. § 285; Fed.R.Civ.P. 11, 38; see also 28 U.S.C. § 1927.</ref> Typically, “litigation misconduct” refers to bringing vexatious or unjustified suits, discovery abuses, failure to obey orders of the court, or acts that unnecessarily prolong litigation. Jurgens, 80 F.3d at 1570-71 & n. 3; see also Va. Panel Corp. v. MAC Panel Co., 133 F.3d 860, 866 (Fed.Cir.1997). Here, the misconduct was improper statements by Microsoft's counsel to the jury, in defiance of the court's repeated admonitions. However, the district court considered Microsoft's litigation misconduct only after finding that the other Read factors favored enhanced damages: “Finally, also favoring enhancement is Microsoft's counsel's litigation conduct....” Considering all the Read factors and the district court's statutory authority to treble damages under § 284, the actual award of $40 million was not an abuse of discretion.

VI. Willfulness

We do not read Microsoft's opening brief as challenging the denial of Microsoft's post-verdict JMOL on willfulness. Although Microsoft did mention willfulness when disputing the propriety of the enhanced damages award, in substance this argument focused on the district court's rationale for awarding enhanced damages, not the jury's willfulness verdict. Whether the district court abused its discretion in weighing the Read factors is not the same question as whether there was a legally sufficient evidentiary basis for the jury's finding of willfulness. Fed.R.Civ.P. 50(a); compare Bryant v. Compass Group USA Inc., 413 F.3d 471, 475 (5th Cir.2005), with Read, 970 F.2d at 821, 826-27. Whether Microsoft's infringement was willful is a question of fact. Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1374 (Fed.Cir.2008); see Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 822 (Fed.Cir.1992). This question was submitted to the jury, which answered in the affirmative. Accordingly, appellate review is limited to asking whether that verdict is supported by substantial evidence. ACCO Brands, 501 F.3d at 1311-12. On appeal, Microsoft has never attacked the jury instructions or the basis for the jury's willfulness verdict. In light of what Microsoft actually argued, we do not read Microsoft's passing reference to its post-verdict JMOL on willfulness as raising the issue.

Even if we were to read the solitary sentence, “Microsoft is entitled to judgment as a matter of law on the issue of willfulness,” as challenging the jury's finding of willfulness, the result does not change. A reasonable jury could have concluded that Microsoft “willfully” infringed the ′ 449 patent based on the evidence presented at trial. Infringement is willful 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.” Seagate, 497 F.3d at 1371. After satisfying this objective prong, the patentee must also show that the infringer knew or should have known of this objectively high risk. Id.

In this case, i4i presented sufficient evidence at trial to prove each prong of the Seagate standard for willfulness. The jury heard that Microsoft employees attended demonstrations of i4i's software, which practiced the ′449 patent. Further, the jury learned that Microsoft employees received i4i's sales kit, which identified i4i's software as “patented” technology and cited the ′449 patent. The jury then saw a series of emails between Microsoft employees discussing a marketing email sent by i4i. One of those emails explained that the “heart” of i4i's software was patented, again citing the ′449 patent. Based on this circumstantial evidence, the jury could have reasonably inferred that Microsoft knew about the ′449 patent.

At trial, i4i also showed that Word's custom XML editor was designed to and did perform the same methods as i4i's software (which was known to practice the ′449 patent). Despite this highly similar functionality, there is no evidence Microsoft took any remedial action, even though Microsoft knew of the ′449 patent as early as April 2001, before any work had begun on Word's custom XML editor. For example, Microsoft did not cease its infringing activity or attempt to design around; instead, Microsoft started marketing, selling, and instructing others in the use of Microsoft's custom XML editor in 2002. Cf. DePuy Spine, Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314, 1336-37 (Fed.Cir.2009). Similarly, there is no evidence Microsoft ever made a good faith effort to avoid infringement; internal emails show Microsoft intended to render i4i's product “obsolete” and assure “there won't be a need for [i4i's] product.” Based on this and other evidence presented at trial, it would have been reasonable for the jury to infer that Microsoft went ahead with producing, marketing, and promoting its custom XML editor despite an objectively high likelihood the editor infringed the ′449 patent. This same evidence supports the jury's finding as to the subjective prong of Seagate. Given the information Microsoft had about i4i's software and the ′449 patent, Microsoft knew or should have known that there was an objectively high risk of infringement.

The fact that Microsoft presented several defenses at trial, including noninfringement and invalidity, does not mean the jury's willfulness finding lacks a sufficient evidentiary basis. See Fed.R.Civ.P. 50(a). The jury heard all of Microsoft's defenses, which it expressly rejected in finding the ′ 449 patent infringed and not invalid. Cf. DePuy Spine, 567 F.3d at 1336-37 (noting that the question of equivalence was “a close one”). Based on its own assessment of the evidence and Microsoft's defenses, the jury was free to decide for itself whether Microsoft reasonably believed there were any substantial defenses to a claim of infringement. Cf. Cohesive Techs., 543 F.3d at 1374.

VII. Permanent Injunction

We must decide whether the district court abused its discretion in granting a permanent injunction against Microsoft, or in tailoring that injunction under eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006).

The permanent injunction prohibits Microsoft from (1) selling, offering to sell, and/or importing into the United States any infringing Word products with the capability of opening XML files containing custom XML; (2) using Word to open an XML file containing custom XML; (3) instructing or encouraging anyone to use Word to open an XML containing custom XML; (4) providing support or assistance that describes how to use Word to open an XML file containing custom XML; and (5) testing, demonstrating, or marketing Word's ability to open an XML file containing custom XML.

The scope of this injunction is narrow, however. It applies only to users who purchase or license Word after the date the injunction takes effect. Users who purchase or license Word before the injunction's effective date may continue using Word's custom XML editor, and receiving technical support.

We review the decision to grant an injunction, as well as the scope of that injunction, for abuse of discretion. Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 772 (Fed.Cir.1993). Factual findings made in support of the injunction are reviewed for clear error; the district court's conclusion as to each eBay factor is reviewed for abuse of discretion. Acumed LLC v. Stryker Corp., 551 F.3d 1323, 1327-31 (Fed.Cir.2008). Our review is guided by statute and well-established principles of equity. See 35 U.S.C. § 283.<ref>The Patent Act provides that courts “may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.” 35 U.S.C. § 283.</ref> The plaintiff has the burden of showing that (1) it has suffered an irreparable injury; (2) remedies available at law are inadequate to compensate for that injury; (3) considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) the public interest would not be “disserved” by a permanent injunction. eBay, 547 U.S. at 391, 126 S.Ct. 1837.

While we conclude that the injunction's effective date should have been five months, rather than sixty days, from the date of its August 11, 2009 order, we affirm the district court's issuance of a permanent injunction and otherwise affirm the injunction's scope. Below, we address each factor in turn.

A. Irreparable Injury

The district court concluded that i4i was irreparably injured by Microsoft's infringement, based on its factual findings that Microsoft and i4i were direct competitors in the custom XML market, and that i4i lost market share as a result of the infringing Word products. The district court further found that the infringing Word products rendered i4i's software obsolete, as a result of which i4i changed its business model to make software that complemented Microsoft's infringing products.

It was proper for the district court to consider evidence of past harm to i4i. Past harm to a patentee's market share, revenues, and brand recognition is relevant for determining whether the patentee “ has suffered an irreparable injury.” Id. at 391, 126 S.Ct. 1837 (emphasis added); see, e.g., Acumed, 551 F.3d at 1328-29 (considering the relevance of past licensing decisions in assessing irreparable injury); Voda v. Cordis Corp., 536 F.3d 1311, 1329 (Fed.Cir.2008) (concluding that the patentee “had not identified any irreparable injury to himself”); Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1379-80 (Fed.Cir.2008) (analyzing whether the patentee “had been irreparably harmed”). Although injunctions are tools for prospective relief designed to alleviate future harm, by its terms the first eBay factor looks, in part, at what has already occurred. Considering past harm to a patentee does not establish a “general rule” or rely on the sort of “broad classifications” rejected by the Supreme Court in eBay; not all patentees will be able to show injury, and even those who do must still satisfy the other three factors. Cf. eBay, 547 U.S. at 393-94, 126 S.Ct. 1837.

In this case, the district court properly considered strong circumstantial evidence that Microsoft's infringement rendered i4i's product obsolete for much of the custom XML market, causing i4i to lose market share and change its business strategy to survive. i4i was not required to prove that its specific customers stopped using i4i's products because they switched to the infringing Word products. Based on the evidence presented at trial, it was not an abuse of discretion for the district court to find that Microsoft's infringement irreparably injured i4i.

B. Inadequate Remedies at Law

The district court concluded that there were inadequate remedies at law to compensate i4i for its injury. The district court found that before and after Microsoft began infringing, i4i produced and sold software that practiced the patented method. The district court found no evidence that i4i had previously licensed the patent, instead finding evidence that i4i sought to retain exclusive use of its invention.

It was not an abuse of discretion for the district court to conclude that monetary damages would be inadequate. In this case, a small company was practicing its patent, only to suffer a loss of market share, brand recognition, and customer goodwill as the result of the defendant's infringing acts. Such losses may frequently defy attempts at valuation, particularly when the infringing acts significantly change the relevant market, as occurred here. The district court found that Microsoft captured 80% of the custom XML market with its infringing Word products, forcing i4i to change its business strategy. The loss associated with these effects is particularly difficult to quantify. Difficulty in estimating monetary damages is evidence that remedies at law are inadequate. Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 703-04 (Fed.Cir.2008).

C. Balance of Hardships

Except on the limited issue of timing, the balance of hardships favors i4i. The district court found that i4i's business is comprised “almost exclusively” of products based on the ′449 patent. In contrast, Microsoft's infringing custom XML editor was found to be “merely one of thousands of features” within Word, used by only a small fraction of Microsoft's customers. The district court further found that Microsoft's infringement of the ′449 patent allowed Microsoft to “corner[ ] the XML market.”

Because the “balance of hardships” assesses the relative effect of granting or denying an injunction on the parties, the district court properly considered several factors in its analysis. eBay, 547 U.S. at 391, 126 S.Ct. 1837. These factors included the parties' sizes, products, and revenue sources. When measured by these factors, it is clear that the patented technology is central to i4i's business. Because most of i4i's products are based on the ′ 449 patent, i4i's market share, revenues, and business strategy are similarly tied to the patented method. These same factors reveal that the infringing custom XML editor relates to only a small fraction of Microsoft's sizeable business. The far greater importance of the patented method to i4i, combined with the demonstrated past effects of infringement on i4i, favors issuance of a permanent injunction.

The district court's analysis properly ignored the expenses Microsoft incurred in creating the infringing products. See Acumed, 551 F.3d at 1330. Similarly irrelevant are the consequences to Microsoft of its infringement, such as the cost of redesigning the infringing products. Id. As we explained in Broadcom, neither commercial success, nor sunk development costs, shield an infringer from injunctive relief. 543 F.3d at 704. Microsoft is not entitled to continue infringing simply because it successfully exploited its infringement. Id.; see also Windsurfing Int'l v. AMF, Inc., 782 F.2d 995, 1003 n. 12 (Fed.Cir.1986).

D. Public Interest

Except as to the injunction's effective date, the district court did not abuse its discretion in finding that the narrow scope of the injunction and the public's general interest in upholding patent rights favor injunctive relief. See Broadcom, 543 F.3d at 704 (quoting Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1547 (Fed.Cir.1995)). The district court's conclusion properly recognized that the touchstone of the public interest factor is whether an injunction, both in scope and effect, strikes a workable balance between protecting the patentee's rights and protecting the public from the injunction's adverse effects. Broadcom, 543 F.3d at 704. In particular, the injunction's narrow scope substantially mitigates the negative effects on the public, practically and economically. By excluding users who purchased or licensed infringing Word products before the injunction's effective date, the injunction greatly minimizes adverse effects on the public. Id. Here, the relevant “public” includes not only individual consumers, but also companies that license infringing Word products and manufacturers that are part of Microsoft's distribution channels. Cf. id. (defining the “public” to include affected network carriers and manufacturers). By carving out users who purchased or licensed infringing Word products before the injunction's effective date, the injunction's tailoring minimizes disruptions to the market and the public.

E. Injunction's Effective Date

On appeal, Microsoft challenges the date on which the injunction goes into effect. We review whether this aspect of the district court's order is supported by the record. As to the limited question of the injunction's effective date, we conclude that it is not. Accordingly, the injunction's effective date is modified as described below.

The district court ordered the injunction to go into effect sixty days after August 11, 2009, the date of its order issuing the injunction. Citing the declaration of a Microsoft employee (the “Tostevin declaration”), the district court found that “Microsoft ha[d] presented evidence that it may take five months to implement any injunction.” The district court also found, without any citation to the record, that “i4i ha[d] presented evidence that it is possible to design a software patch that can remove a user's ability to operate the infringing functionality.” Based on, among other things, “this competing evidence” and “the uncertainty surrounding what period of time would be ‘reasonable’ to expect Microsoft to comply with any injunction,” the district court ordered Microsoft to comply with the permanent injunction “within 60 days.”

In light of the record evidence, we conclude that the district court erred by ordering Microsoft to comply with the injunction within sixty days. The only evidence about how long it would take Microsoft to comply with the injunction was the Tostevin declaration, which gave an estimate of “at least” five months. The district court cited no other evidence, and our review of the record reveals no “competing evidence.” Accordingly, we modify the injunction's effective date from “60 days from the date of this order” to “5 months from the date of this order.” Cf. Canadian Lumber Trade Alliance v. United States, 517 F.3d 1319, 1339 n. 22 & 1344 (Fed.Cir.2008) (modifying an injunction's terms on appeal); Forest Labs., Inc. v. Ivax Pharms., Inc., 501 F.3d 1263, 1271-72 (Fed.Cir.2007) (modifying an injunction's terms on appeal). The injunction's effective date is now January 11, 2010.

CONCLUSION

The district court's claim construction is affirmed, as are the jury's findings of infringement and validity. The district court did not abuse its discretion in admitting i4i's evidence as to damages or in granting enhanced damages. Finally, we affirm the entry of the permanent injunction as modified herein.

AFFIRMED.

ON PETITION FOR PANEL REHEARING

A combined petition for panel rehearing and rehearing en banc was filed by Microsoft Corporation. A response was invited by the panel and filed by i4i Limited Partnership. That was followed by Microsoft's Motion for Leave to File a Reply in Support of Combined Petition for Panel Rehearing and Rehearing En Banc.

Among the issues on which Microsoft has sought rehearing is the holding that Microsoft did not challenge the district court's denial of Microsoft's post-verdict JMOL on willfulness. i4i Ltd. v. Microsoft Corp., 589 F.3d 1246, 1273 (Fed.Cir.2009). Microsoft argues that this conclusion is factually incorrect, that review of the jury's willfulness verdict is required, and that it should prevail on that question.

IT IS ORDERED THAT:

(1) Microsoft's Motion for Leave to File a Reply in Support of Combined Petition for Panel Rehearing and Rehearing En Banc is granted.

(2) Microsoft's Petition for Panel Rehearing is granted for the limited purpose of revising portions of the discussion of willfulness.

(3) The previous opinion in this appeal issued December 22, 2009 and reported at i4i Ltd. v. Microsoft Corp., 589 F.3d 1246 (Fed.Cir.2009), is withdrawn and replaced with the revised opinion accompanying this order.

The Petition for Rehearing En Banc will be circulated to the full court along with a copy of this order.

===Footnotes===
<references/>

AME 40590 Homeworks, Spring 2011

2011-04-18T15:16:15Z

Bill Goodwine:

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 25, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]

=Due Monday, March 28, 2011=
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
*If your last name starts with a letter between and including A through L, read [[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
*If your last name starts with a letter between and including M through Z, read [[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=Due Wednesday, March 30, 2011=
We will do the debate based on the two briefs from Monday.

Also, having gone through it myself I can sympathize with the point of view that everything probably seems vague and problematic. At this point you would probably read a claim and be pretty hard pressed to describe the extent of the claims since the doctrine of equivalents would make the bounds for it very unclear. To help with this, your additional assignment for Wednesday is to go to Westlaw and look up Warner-Jenkinson. Find the headnote(s) dealing with the doctrine of equivalents and try to find a case with a pretty clear holding. In other words, even though the trial happened and the result was appealed, the outcome wasn't too debatable. Finding a critical mass of cases that have "clear" outcomes in terms of which side of the equivalents line they fall will probably help clarify this. Pick your case and read it. Be ready to discuss it on Wednesday.

=Due Monday, April 4, 2011=
* Go to the [[Doctrine of Equivalents Case List]] page and add a one paragraph summary of the case you read for last class. Be sure to start it with the title and the citation like the example I gave. Be sure to keep my example at the top.
* Read Honeywell Intern., Inc. v. Hamilton Sundstrand Corp. 523 F.3d 1304, 2008 on Westlaw. Also read the patent at issue.
* If you are an AME student and your last name starts with A-L, then you represent Honeywell. If your last name starts with M-Z, then you represent Hamilton-Sunstrand.
* If you are not an AME student, then you are a Supreme Court Justice.
* If you are an AME student, then write a one-page brief (less than 1000 words) that presents an argument why the Supreme Court should decide the case in your favor. Post it to the course wiki and also submit a printed version on Wednesday.
** Normally the Supreme Court would not even consider the actual facts of the equivalents holding since that is a matter of fact and the lower courts and juries are given wide discretion in their findings. However, today you can pretend that the Supreme Court will consider it, so you can argue the facts of why or why not it is equivalent. If you do this, be sure to point out how your argument relates to the prior Supreme Court cases we read on the Doctrine of Equivalents.
** You may alternatively have your brief focus on a legal issue such as the estoppel issues.
** I want you to write this from scratch based on your engineering knowledge and the cases we have read so far. Of course the briefs are available on Westlaw, including the briefs for writ of certiorari, which was denied, to the Supreme Court. Any submitted briefs that just summarize those will not be given much credit.
* On Monday in class split into the two sides and take 15 minutes to elect a head lawyer and get your arguments summarized and in order. After that each side gets 5 minutes, alternating back and forth until class is over. The loser in the CAFC gets to go first. If you are a judge, your job is to make the right decision, meaning it should do things like
** be consistent with precedent, of if not, then there must be a good reason for deviating from it,
** be clear,
** be fair,
*** the patentee got to draft the claims, there should be a burden of doing it right for them
*** but we don't want lazy, unscrupulous cheaters to get away with trivial modifications that basically don't deviate from the essence of the inventive aspect of the patent
** be easy to apply,
** promote the progress of science and the useful arts,
** be logical, i.e., amending claims to avoid prior art should definitely be a bar to a future expansion of the claim into that same area,
** etc.
* The Supreme Court Justices can interrupt any arguments and ask any questions they want. The point of asking questions isn't to put the lawyers on the spot, but to simply help the Supreme Court make the right decision. Getting each side to respond to the arguments made by the other side will help them make a good decision. The Justices should probably sit in the very front row or stand in front of the class. The Justices should be familiar with the case, so of course they need to read the case and patent too.
* The Supreme Court Justices must each indvidually submit a one-page (1000-word) decision on Wednesday. In class on Wednesday, they will have to explain their decision.
* Professor Batill has agreed to get class started and make sure things are working ok. He shouldn't have to do much other than maybe keep time (but of course he can be a justice or take a side if he wants to).

=Due Monday, April 11, 2011=
*[[Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)]]
*[[TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111 (2001)]]

=Due Wednesday, April 20, 2011=
*[[i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (2010)]]

AME 40590 Intellectual Property for Engineers

2011-04-18T15:15:43Z

Bill Goodwine: /* ALPHABETICAL LISTING OF CASES */

=ALPHABETICAL LISTING OF CASES=

*[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]
*[[Alza Corp. v. Mylan Laboratories, 464 F.3d 1286, (2006)]]
*[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
*[[Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961)]]
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)]]
*[[Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)]]
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
*[[Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)]]
*[[Bonito Boats. v. Thunder Craft, 489 U.S. 141 (1989)]]
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Chester v. Miller, 906 F.2d 1574 (1990)]]
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Diamond v. Diehr, 450 U.S. 175 (1981)]]
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)]]
*[[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
*[[Gould v. Hellwarth, 472 F2d 1383 (1973)]]
*[[Graham v. John Deere, 383 U.S. 1 (1966)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]
*[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850) ]]
*[[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]
*[[i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (2010)]]
*[[In Re Bilski]]
**[[In Re Bilski, Dky concurring opinion]]
**[[In Re Bilski, Newman dissenting opinion]]
**[[In Re Bilski, Mayer dissenting opinion]]
**[[In Re Bilski, Rader dissenting opinion]]
*[[In re Brana, 51 F.3d 1560 (1995)]]
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]
*[[In re Kahn, CAFC 04-1616 (2006)]]
*[[In Re Rouffet]]
*[[J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)]]
*[[Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)]]
*[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
*[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]
*[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
*[[Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]
*[[Microsoft Corp v. At&T Corp.]]
*[[Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)]]
*[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]
*[[Philips Electric Co. v. Thermal Industries, Inc. (full text)]]
*[[Quanta Computers Inc v. LG Electronics (full text)]]
*[[Reiner v. I. Leon Co. (full text)]]
*[[South Corp. v. US]]
*[[South Corp. v. US (full text)]]
*[[South Corp. v. US 690 F.2d 1368 (1982)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]
*[[Traffix Devices, Inc. vs. Marketing Displays, Inc.]]
*[[TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111 (2001)]]
*[[US v. Adams, 383 U.S. 39 (1966)]]
*[[US v. Adams (full text)]]
*[[U.S. v. Univis Lens Co., 316 U.S. 241 (1942)]]
*[[Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc. (full text)]]
*[[Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)]]
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
**[[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
**[[Warner-Jenkinson v. Hilton Davis Respondent Brief]]
*[[Winner International Royalty Co. v. Wang, 202 F.3d 1340 (2000)]]
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=[[INTRODUCTION]]=
This is a summary. Click on the title for the full chapter: [[INTRODUCTION]]

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special appeals court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the Constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[NONOBVIOUSNESS]]=
This is a summary. Click on the title for the full chapter: [[NONOBVIOUSNESS]]

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[INFRINGEMENT]]=
This is a summary. Click on the title for the full chapter: [[INFRINGEMENT]]

=[[THE PATENT DOCUMENT]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT DOCUMENT]]

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
This is a summary. Click on the title for the full chapter: [[NOVELTY]]

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

Outline:
*Literal Infringement
*The Doctrine of Equivalents

=[[UTILITY]]=
This is a summary. Click on the title for the full chapter: [[UTILITY]]

=[[PATENTABLE SUBJECT MATTER]]=
This is a summary. Click on the title for the full chapter: [[PATENTABLE SUBJECT MATTER]]

Can computer programs, algorithms, laws of nature, life forms, plants, ''etc.'' be patented. In particular, are the following patentable:

* Plants
* Algorithms and Computer Programs
* Scientific Facts?

In a recent case
* State Street (1998)
the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

=[[FOREIGN AND DOMESTIC PRIORITY]]=
This is a summary. Click on the title for the full chapter: [[FOREIGN AND DOMESTIC PRIORITY]]

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT APPLICATION]]

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=[[INVENTOR ELIGIBILITY]]=
This is a summary. Click on the title for the full chapter: [[INVENTOR ELIGIBILITY]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=[[ANTICIPATION]]=
This is a summary. Click on the title for the full chapter: [[ANTICIPATION]]

=[[PRIOR ART]]=
This is a summary. Click on the title for the full chapter: [[PRIOR ART]]

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)

2011-04-11T14:57:20Z

Bill Goodwine:

United States Court of Appeals, Federal Circuit.

VAS-CATH INCORPORATED and Gambro, Inc., Plaintiffs-Appellees,
v.
Sakharam D. MAHURKAR, and Quinton Instruments Company, Defendants-Appellants.

Nos. 90-1528, 91-1032.
June 7, 1991.
Rehearing Denied July 8, 1991.
Suggestion for Rehearing In Banc
Declined July 29, 1991.

Before RICH, MICHEL and PLAGER, Circuit Judges.

RICH, Circuit Judge.

Sakharam D. Mahurkar and Quinton Instruments Company (collectively Mahurkar) appeal from the September 12, 1990 partial final judgment<ref>The district court directed entry of final judgment as to the issue of patent invalidity pursuant to Fed.R.Civ.P. 54(b).</ref> of the United States District Court for the Northern District of Illinois, Easterbrook, J., sitting by designation, in Case No. 88 C 4997. Granting partial summary judgment to Vas-Cath Incorporated and its licensee Gambro, Inc. (collectively Vas-Cath), the district court declared Mahurkar's two United States utility patents Nos. 4,568,329 ('329 patent) and 4,692,141 ('141 patent), titled “Double Lumen Catheter,” invalid as anticipated under 35 U.S.C. § 102(b). In reaching its decision, reported at 745 F.Supp. 517, 17 USPQ2d 1353, the district court concluded that none of the twenty-one claims of the two utility patents was entitled, under 35 U.S.C. § 120, to the benefit of the filing date of Mahurkar's earlier-filed United States design patent application Serial No. 356,081 ('081 design application), which comprised the same drawings as the utility patents, because the design application did not provide a “written description of the invention” as required by 35 U.S.C. § 112, first paragraph. We reverse the grant of summary judgment with respect to all claims.

BACKGROUND

Sakharam Mahurkar filed the '081 design application, also titled “Double Lumen Catheter,” on March 8, 1982. The application was abandoned on November 30, 1984. Figures 1-6 of the '081 design application are reproduced below.

NOTE: This case contained images. Please see the patent for the details.

As shown, Mahurkar's catheter comprises a pair of tubes (lumens) designed to allow blood to be removed from an artery, processed in an apparatus that removes impurities, and returned close to the place of removal. Prior art catheters utilized concentric circular lumens, while Mahurkar's employs joined semi-circular tubes that come to a single tapered tip. Advantageously, the puncture area of Mahurkar's semicircular catheter is 42% less than that of a coaxial catheter carrying the same quantity of blood, and its conical tip yields low rates of injury to the blood. The prior art coaxial catheters are now obsolete; Mahurkar's catheters appear to represent more than half of the world's sales. 745 F.Supp. at 520, 17 USPQ2d at 1353-54.

After filing the '081 design application, Mahurkar also filed a Canadian Industrial Design application comprising the same drawings plus additional textual description. On August 9, 1982, Canadian Industrial Design 50,089 (Canadian '089) issued on that application.

More than one year later, on October 1, 1984, Mahurkar filed the first of two utility patent applications that would give rise to the patents now on appeal. Notably, both utility applications included the same drawings as the '081 design application.<ref>The utility patent drawings contain additional but minor shading and lead lines and reference numerals not present in the design application drawings.</ref> Serial No. 656,601 ('601 utility application) claimed the benefit of the filing date of the '081 design application, having been denominated a “continuation” thereof. In an Office Action mailed June 6, 1985, the Patent and Trademark Office (PTO) examiner noted that “the prior application is a design application,” but did not dispute that the '601 application was entitled to its filing date. On January 29, 1986, Mahurkar filed Serial No. 823,592 ('592 utility application), again claiming the benefit of the filing date of the '081 design application (the '592 utility application was denominated a continuation of the '601 utility application). In an office action mailed April 1, 1987, the examiner stated that the '592 utility application was “considered to be fully supported by applicant's parent application SN 356,081 filed March 8, 1982 [the '081 design application].” The '601 and '592 utility applications issued in 1986 and 1987, respectively, as the '329 and '141 patents, the subjects of this appeal. The independent claims of both patents are set forth in the Appendix hereto.

Vas-Cath sued Mahurkar in June 1988, seeking a declaratory judgment that the catheters it manufactured did not infringe Mahurkar's '329 and '141 utility patents.<ref>Vas-Cath's apprehension of suit apparently arose from a 1988 Canadian action instituted by Mahurkar for infringement of Canadian '089.</ref> Vas-Cath's complaint alleged, inter alia, that the '329 and '141 patents were both invalid as anticipated under 35 U.S.C. § 102(b) by Canadian '089. Vas-Cath's anticipation theory was premised on the argument that the '329 and '141 patents were not entitled under 35 U.S.C. § 120<ref>Section 120, titled “Benefit of Earlier Filing Date in the United States,” provides (emphasis ours):
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. </ref> to the filing date of the '081 design application because its drawings did not provide an adequate “written description” of the claimed invention as required by 35 U.S.C. § 112, first paragraph.

Mahurkar counterclaimed, alleging infringement. Both parties moved for summary judgment on certain issues, including validity. For purposes of the summary judgment motion, Mahurkar conceded that, if he could not antedate it, Canadian '089 would represent an enabling and thus anticipating § 102(b) reference against the claims of his '329 and '141 utility patents. 745 F.Supp. at 521, 17 USPQ2d at 1355. Vas-Cath conceded that the '081 design drawings enabled one skilled in the art to practice the claimed invention within the meaning of 35 U.S.C. § 112, first paragraph. Id. Thus, the question before the district court was whether the disclosure of the '081 design application, namely, the drawings without more, adequately meets the “written description” requirement also contained in § 112, first paragraph, so as to entitle Mahurkar to the benefit of the 1982 filing date of the '081 design application for his two utility patents and thereby antedates Canadian '089.

Concluding that the drawings do not do so, and that therefore the utility patents are anticipated by Canadian '089, the district court held the '329 and '141 patents wholly invalid under 35 U.S.C. § 102(b), id. at 524, 17 USPQ2d at 1358, and subsequently granted Mahurkar's motion for entry of a partial final judgment under Fed.R.Civ.P. 54(b) on the validity issue. This appeal followed.

DISCUSSION

The issue before us is whether the district court erred in concluding, on summary judgment, that the disclosure of the '081 design application does not provide a § 112, first paragraph “written description” adequate to support each of the claims of the '329 and '141 patents. If the court so erred as to any of the 21 claims at issue, the admittedly anticipatory disclosure of Canadian '089 will have been antedated (and the basis for the court's grant of summary judgment nullified) as to those claims.

In reviewing the district court's grant of summary judgment, we are not bound by its holding that no material facts are in dispute, and must make an independent determination as to whether the standards for summary judgment have been met. C.R. Bard, Inc. v. Advanced Cardiovascular Systems, 911 F.2d 670, 673, 15 USPQ2d 1540, 1542-43 (Fed.Cir.1990). Summary judgment will not lie if the dispute about a material fact is “genuine,” that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986).

The “Written Description” Requirement of § 112
The first paragraph of 35 U.S.C. § 112 requires that

[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

(Emphasis added). Application of the “written description” requirement, derived from the portion of § 112 emphasized above, is central to resolution of this appeal. The district court, having reviewed this court's decisions on the subject, remarked that “[u]nfortunately, it is not so easy to tell what the law of the Federal Circuit is.” 745 F.Supp. at 522, 17 USPQ2d at 1356. Perhaps that is so, and, therefore, before proceeding to the merits, we review the case law development of the “written description” requirement with a view to improving the situation.<ref>For additional background, see Rollins, “35 USC 120-The Description Requirement,” 64 J.Pat.Off.Soc'y 656 (1982); Walterscheid, “Insufficient Disclosure Rejections (Part III),” 62 J.Pat.Off.Soc'y 261 (1980).</ref>

The cases indicate that the “written description” requirement most often comes into play where claims not presented in the application when filed are presented thereafter. Alternatively, patent applicants often seek the benefit of the filing date of an earlier-filed foreign or United States application under 35 U.S.C. § 119 or 35 U.S.C. § 120, respectively, for claims of a later-filed application. The question raised by these situations is most often phrased as whether the application provides “adequate support” for the claim(s) at issue; it has also been analyzed in terms of “new matter” under 35 U.S.C. § 132. The “written description” question similarly arises in the interference context, where the issue is whether the specification of one party to the interference can support the claim(s) corresponding to the count(s) at issue, i.e., whether that party “can make the claim” corresponding to the interference count.

To the uninitiated, it may seem anomalous that the first paragraph of 35 U.S.C. § 112 has been interpreted as requiring a separate “description of the invention,” when the invention is, necessarily, the subject matter defined in the claims under consideration. See In re Wright, 866 F.2d 422, 424, 9 USPQ2d 1649, 1651 (Fed.Cir.1989). One may wonder what purpose a separate “written description” requirement serves, when the second paragraph of § 112 expressly requires that the applicant conclude his specification “with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

One explanation is historical: the “written description” requirement was a part of the patent statutes at a time before claims were required. A case in point is Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 5 L.Ed. 472 (1822), in which the Supreme Court affirmed the circuit court's decision that the plaintiff's patent was “deficient,” and that the plaintiff could not recover for infringement thereunder. The patent laws then in effect, namely the Patent Act of 1793, did not require claims, but did require, in its 3d section, that the patent applicant “deliver a written description of his invention, and of the manner of using, or process of compounding, the same, in such full, clear and exact terms, as to distinguish the same from all things before known, and to enable any person skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make, compound and use the same....” Id. at 430. In view of this language, the Court concluded that the specification of a patent had two objects, the first of which was “to enable artizans to make and use [the invention]....” Id. at 433. The second object of the specification was

to put the public in possession of what the party claims as his own invention, so as to ascertain if he claims anything that is in common use, or is already known, and to guard against prejudice or injury from the use of an invention which the party may otherwise innocently suppose not to be patented. It is, therefore, for the purpose of warning an innocent purchaser, or other person using a machine, of his infringement of the patent; and at the same time, of taking from the inventor the means of practising upon the credulity or the fears of other persons, by pretending that his invention is more than what it really is, or different from its ostensible objects, that the patentee is required to distinguish his invention in his specification.

Id. at 434.

A second, policy-based rationale for the inclusion in § 112 of both the first paragraph “written description” and the second paragraph “definiteness” requirements was set forth in Rengo Co. v. Molins Mach. Co., 657 F.2d 535, 551, 211 USPQ 303, 321 (3d Cir.), cert. denied, 454 U.S. 1055, 102 S.Ct. 600, 70 L.Ed.2d 591 (1981):

[T]here is a subtle relationship between the policies underlying the description and definiteness requirements, as the two standards, while complementary, approach a similar problem from different directions. Adequate description of the invention guards against the inventor's overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within his original creation. The definiteness requirement shapes the future conduct of persons other than the inventor, by insisting that they receive notice of the scope of the patented device.

With respect to the first paragraph of § 112 the severability of its “written description” provision from its enablement (“make and use”) provision was recognized by this court's predecessor, the Court of Customs and Patent Appeals, as early as In re Ruschig, 379 F.2d 990, 154 USPQ 118 (CCPA 1967). Although the appellants in that case had presumed that the rejection appealed from was based on the enablement requirement of § 112, id. at 995, 154 USPQ at 123, the court disagreed:

[T]he question is not whether [one skilled in the art] would be so enabled but whether the specification discloses the compound to him, specifically, as something appellants actually invented.... If [the rejection is] based on section 112, it is on the requirement thereof that “The specification shall contain a written description of the invention * * *.” (Emphasis ours.)

Id. at 995-96, 154 USPQ at 123 (first emphasis added). The issue, as the court saw it, was one of fact: “Does the specification convey clearly to those skilled in the art, to whom it is addressed, in any way, the information that appellants invented that specific compound [claimed]?” Id. at 996, 154 USPQ at 123.

In a 1971 case again involving chemical subject matter, the court expressly stated that “it is possible for a specification to enable the practice of an invention as broadly as it is claimed, and still not describe that invention.” In re DiLeone, 436 F.2d 1404, 1405, 168 USPQ 592, 593 (CCPA 1971) (emphasis added). As an example, the court posited the situation “where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B and C; yet the class consisting of A, B and C has not been described.” Id. at 1405 n. 1, 168 USPQ 593 n. 1 (emphases in original). See also In re Ahlbrecht, 435 F.2d 908, 911, 168 USPQ 293, 296 (CCPA 1971) (although disclosure of parent application may have enabled production of claimed esters having 2-12 methylene groups, it only described esters having 3-12 methylene groups).

The CCPA also recognized a subtle distinction between a written description adequate to support a claim under § 112 and a written description sufficient to anticipate its subject matter under § 102(b). The difference between “claim-supporting disclosures” and “claim-anticipating disclosures” was dispositive in In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971), where the court held that a U.S. “grandparent” application did not sufficiently describe the later-claimed invention, but that the appellant's intervening British application, a counterpart to the U.S. application, anticipated the claimed subject matter. As the court pointed out, “the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes ..., whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure....” Id. at 970, 169 USPQ at 797 (citations omitted).

The purpose and applicability of the “written description” requirement were addressed in In re Smith and Hubin, 481 F.2d 910, 178 USPQ 620 (CCPA 1973), where the court stated:

Satisfaction of the description requirement insures that subject matter presented in the form of a claim subsequent to the filing date of the application was sufficiently disclosed at the time of filing so that the prima facie date of invention can fairly be held to be the filing date of the application. This concept applies whether the case factually arises out of an assertion of entitlement to the filing date of a previously filed application under § 120 ... or arises in the interference context wherein the issue is support for a count in the specification of one or more of the parties ... or arises in an ex parte case involving a single application, but where the claim at issue was filed subsequent to the filing of the application....

Id. at 914, 178 USPQ at 623-24 (citations omitted).

The CCPA's “written description” cases often stressed the fact-specificity of the issue. See, e.g., In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976) (“The primary consideration is factual and depends on the nature of the invention and the amount of knowledge imparted to those skilled in the art by the disclosure”) (emphasis in original); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (“Precisely how close the description must come to comply with § 112 must be left to case-by-case development”); DiLeone, 436 F.2d at 1405, 168 USPQ at 593 (“What is needed to meet the description requirement will necessarily vary depending on the nature of the invention claimed”). The court even went so far as to state:

[I]t should be readily apparent from recent decisions of this court involving the question of compliance with the description requirement of § 112 that each case must be decided on its own facts. Thus, the precedential value of cases in this area is extremely limited.

In re Driscoll, 562 F.2d 1245, 1250, 195 USPQ 434, 438 (CCPA 1977).

Since its inception, the Court of Appeals for the Federal Circuit has frequently addressed the “written description” requirement of § 112.<ref>See, Chester v. Miller, 906 F.2d 1574, 15 USPQ2d 1333 (Fed.Cir.1990) (parent application's disclosure of chemical species constituted 102(b) prior art against continuation-in-part (c-i-p) application on appeal, but did not provide sufficient written description to support c-i-p's claims to encompassing genus); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed.Cir.1989) (foreign priority application's disclosure of chemical subgenus was insufficient written description to support genus claims of corresponding U.S. application); In re Wright, 866 F.2d 422, 9 USPQ2d 1649 (Fed.Cir.1989) (application in “clear compliance” with § 112 “written description” requirement with respect to claim limitation that microcapsules were “not permanently fixed”); Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed.Cir.1988) (holding generic interference count to scroll compressor supported by written description of foreign priority application, the court stated, “A specification may, within the meaning of 35 U.S.C. § 112 ¶ 1, contain a written description of a broadly claimed invention without describing all species that claim encompasses”); Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 5 USPQ2d 1194 (Fed.Cir.1987) (parent application's lack of express disclosure of inherent “equiaxed microstructure” property did not deprive c-i-p's claims to a sintered ceramic body having said property of the benefit of parent's filing date), cert. denied, 486 U.S. 1008, 108 S.Ct. 1735, 100 L.Ed.2d 198 (1988); Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 227 USPQ 177 (1985) (parent application's disclosure provided adequate written description support for certain claim limitations respecting protein content, temperature, and moisture content, but not others); In re Wilder, 736 F.2d 1516, 222 USPQ 369 (1984) (broadly worded title, general description of drawing, and objects of invention of parent patent application did not adequately support reissue application claims directed to genus of indicating mechanisms for dictating machines), cert. denied, 469 U.S. 1209, 105 S.Ct. 1173, 84 L.Ed.2d 323 (1985); In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed.Cir.1983) (claims to method of redeeming merchandise coupons, comprising step of providing an audit of coupon traffic, were not supported by specification of parent application).</ref> A fairly uniform standard for determining compliance with the “written description” requirement has been maintained throughout: “Although [the applicant] does not have to describe exactly the subject matter claimed, ... the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed.Cir.1989) (citations omitted). “[T]he test for sufficiency of support in a parent application is whether the disclosure of the application relied upon ‘reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.’ ” Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed.Cir.1985) (quoting In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.Cir.1983)). Our cases also provide that compliance with the “written description” requirement of § 112 is a question of fact, to be reviewed under the clearly erroneous standard. Gosteli, 872 F.2d at 1012, 10 USPQ2d at 1618; Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed.Cir.1988).

There appears to be some confusion in our decisions concerning the extent to which the “written description” requirement is separate and distinct from the enablement requirement. For example, in In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed.Cir.1984), cert. denied, 469 U.S. 1209, 105 S.Ct. 1173, 84 L.Ed.2d 323 (1985), we flatly stated: “The description requirement is found in 35 U.S.C. § 112 and is separate from the enablement requirement of that provision.” However, in a later case we said, “The purpose of the [written] description requirement [of section 112, first paragraph] is to state what is needed to fulfill the enablement criteria. These requirements may be viewed separately, but they are intertwined.” Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1421, 5 USPQ2d 1194, 1197 (Fed.Cir.1987), cert. denied, 486 U.S. 1008, 108 S.Ct. 1735, 100 L.Ed.2d 198 (1988). “The written description must communicate that which is needed to enable the skilled artisan to make and use the claimed invention.” Id.

To the extent that Kennecott conflicts with Wilder, we note that decisions of a three-judge panel of this court cannot overturn prior precedential decisions. See UMC Elec. Co. v. United States, 816 F.2d 647, 652 n. 6, 2 USPQ2d 1465, 1468 n. 7 (Fed.Cir.1987), cert. denied, 484 U.S. 1025, 108 S.Ct. 748, 98 L.Ed.2d 761 (1988). This court in Wilder (and the CCPA before it) clearly recognized, and we hereby reaffirm, that 35 U.S.C. § 112, first paragraph, requires a “written description of the invention” which is separate and distinct from the enablement requirement. The purpose of the “written description” requirement is broader than to merely explain how to “make and use”; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the “written description” inquiry, whatever is now claimed.

The District Court's Analysis

We agree with the district court's conclusion that drawings alone may be sufficient to provide the “written description of the invention” required by § 112, first paragraph. Several earlier cases, though not specifically framing the issue in terms of compliance with the “written description” requirement, support this conclusion.

For example, we previously stated that “[t]here is no statutory prohibition against an applicant's reliance, in claiming priority under 35 U.S.C. § 120, on a disclosure in a design application if the statutory conditions are met.” KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1574, 228 USPQ 32, 33 (Fed.Cir.1985). The question whether the applicant's claim to a pocket for athletic shoes was in fact entitled to the filing date of his earlier design application was not resolved in KangaROOS, however. Issues of intent to deceive the PTO were involved, as well as an error of law by the district court in construing the claims of the wrong application. Id. at 1574-75, 228 USPQ at 34-35. The district court's grant of partial summary judgment of inequitable conduct was vacated and the case remanded for trial.

In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981) involved a claim under 35 U.S.C. § 120 to the benefit of the filing date of two earlier design patent applications that included drawings of a carrying and storage case for tape cartridges and cassettes. The invention claimed in the later-filed utility application was an “insert” of “compartmented form,” adapted for use in the interior of the storage case. Id. at 429, 209 USPQ at 47. The court characterized the dispositive issue as “whether the design applications sufficiently disclose the invention now claimed in the ... utility application at bar.” Id. at 429, 209 USPQ at 46. While specifically recognizing that “drawings may be used to satisfy the disclosure requirement,” id. at 429, 209 USPQ at 46-47, the court held that Berkman's design applications “fail[ed] to disclose the claimed invention sufficiently to comply with the requirements of § 112 first paragraph.” As the court explained:

Nowhere in the design applications is the word “insert” used, nor is there any indication that the interiors of the cases are inserts. The drawings do not disclose how the insert can be used to accommodate either cassette or cartridge type tape enclosures. Berkman argues that one skilled in the art would readily recognize that the interiors of the cases illustrated in the design drawings are inserts. We do not agree. There is nothing shown in the drawings to lead one of ordinary skill to such a conclusion.

Id. at 430, 209 USPQ at 47.

The issue in In re Wolfensperger, 49 CCPA 1075, 302 F.2d 950, 133 USPQ 537 (1962) was whether the specification of the applicant's utility patent application disclosing a ball valve, and particularly the drawings thereof, supported a claim limitation that read: “having, in untensioned condition, a mean diameter corresponding approximately to the mean diameter of said chamber and a radial width smaller than the radial width of said chamber....” Id. at 1077, 302 F.2d at 952, 133 USPQ at 538. The court did not agree with the Board's conclusion that the “radial width” relationship was not supported by applicant's figure 5:

The board's statement that “drawings alone cannot form the basis of a valid claim” is too broad a generalization to be valid and is, furthermore, contrary to well-settled and long-established Patent Office practice.... Consider, for one thing, that the sole disclosure in a design patent application is by means of a drawing.... For another thing, consider that the only informative and significant disclosure in many electrical and chemical patents is by means of circuit diagrams or graphic formulae, constituting “drawings” in the case....

... The practical, legitimate enquiry in each case of this kind is what the drawing in fact discloses to one skilled in the art....

... The issue here is whether there is supporting “disclosure” and it does not seem, under established procedure of long standing, approved by this court, to be of any legal significance whether the disclosure is found in the specification or in the drawings so long as it is there.

Id. at 1080-83, 302 F.2d at 955-56, 133 USPQ at 541-42.

Employing a “new matter” analysis, the court in In re Heinle, 342 F.2d 1001, 145 USPQ 131 (CCPA 1965) reversed a PTO rejection of the applicant's claims to a “toilet paper core” as “including subject matter having no clear basis in the application as filed.” Id. at 1003, 145 USPQ at 133. The claim limitation said to be without support required that the width of the apertures in the core be “approximately one-fourth of the circumference of said core.” Id. at 1007, 145 USPQ at 136. Having reviewed the application drawings relied upon for support, the court stated:

it seems to us that [the drawings] conform to the one-fourth circumference limitation almost exactly. But the claim requires only an approximation. Since we believe an amendment to the specification to state that one-fourth of the circumference is the aperture width would not violate the rule against “new matter,” we feel that supporting disclosure exists. The rejection is therefore in error.

Id.

These cases support our holding that, under proper circumstances, drawings alone may provide a “written description” of an invention as required by § 112. Whether the drawings are those of a design application or a utility application is not determinative, although in most cases the latter are much more detailed. In the instant case, however, the design drawings are substantially identical to the utility application drawings.

Although we join with the district court in concluding that drawings may suffice to satisfy the “written description” requirement of § 112, we can not agree with the legal standard that the court imposed for “written description” compliance, nor with the court's conclusion that no genuine issues of material fact were in dispute.

With respect to the former, the district court stated that although the '081 design drawings in question “allowed practice” [i.e., enabled], they did not necessarily

show what the invention is, when “the invention” could be a subset or a superset of the features shown. Is the invention the semi-circular lumens? The conical tip? The ratio at which the tip tapers? The shape, size, and placement of the inlets and outlets? You can measure all of these things from the diagrams in serial '081 and so can practice the device, but you cannot tell, because serial '081 does not say, what combination of these things is “the invention”, and what range of variation is allowed without exceeding the scope of the claims. To show one example of an invention, even a working model, is not to describe what is novel or important.

745 F.Supp. at 522, 17 USPQ2d at 1356.

We find the district court's concern with “what the invention is” misplaced, and its requirement that the '081 drawings “describe what is novel or important” legal error. There is “no legally recognizable or protected ‘essential’ element, ‘gist’ or ‘heart’ of the invention in a combination patent.” Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 604, 5 L.Ed.2d 592 (1961). “The invention” is defined by the claims on appeal. The instant claims do not recite only a pair of semi-circular lumens, or a conical tip, or a ratio at which the tip tapers, or the shape, size, and placement of the inlets and outlets; they claim a double lumen catheter having a combination of those features. That combination invention is what the '081 drawings show. As the district court itself recognized, “what Mahurkar eventually patented is exactly what the pictures in serial '081 show.” 745 F.Supp. at 523, 17 USPQ2d at 1357.

We find the “range of variation” question, much emphasized by the parties, more troublesome. The district court stated that “although Mahurkar's patents use the same diagrams, [the claims] contain limitations that did not follow ineluctably [i.e., inevitably] from the diagrams.” Id. at 524, 17 USPQ2d at 1357. As an example, the court stated (presumably with respect to independent claims 1 and 7 of the '329 patent) that

the utility patents claim a return lumen that is “substantially greater than one-half but substantially less than a full diameter” after it makes the transition from semi-circular to circular cross-section, and the drawings of serial '081 fall in this range. But until the utility application was filed, nothing established that they had to-for that matter that the utility patent would claim anything other than the precise ratio in the diagrams....

Id. at 523, 17 USPQ2d at 1357. Mahurkar argues that one of ordinary skill in this art, looking at the '081 drawings, would be able to derive the claimed range.

The declaration of Dr. Stephen Ash, submitted by Mahurkar, is directed to these concerns. Dr. Ash, a physician specializing in nephrology (the study of the kidney and its diseases) and chairman of a corporation that develops and manufactures biomedical devices including catheters, explains why one of skill in the art of catheter design and manufacture, studying the drawings of the '081 application in early 1982, would have understood from them that the return lumen must have a diameter within the range recited by independent claims 1 and 7 of the '329 patent. Dr. Ash explains in detail that a return (longer) lumen of diameter less than half that of the two lumens combined would produce too great a pressure increase, while a return lumen of diameter equal or larger than that of the two lumens combined would result in too great a pressure drop.<ref>Higher pressure drops are associated with smaller cross-sectional areas for fluid flow. Mahurkar's opening brief to this court states that by applying well-known principles of fluid mechanics (i.e., the work of Poiseuille and Hagen), it can be calculated that the diameter of the circular (return) lumen would have to be in the range of 0.66 times the diameter of the two lumens combined in order to achieve proper blood flow at equal pressure drop. The 0.66 ratio falls within the noted claim limitation.</ref> “Ordinary experience with the flow of blood in catheters would lead directly away from any such arrangement,” Ash states.

Although the district court found this reasoning “logical,” it noted that later patents issued to Mahurkar disclose diameter ratios closer to 1.0 (U.S.Patent No. 4,584,968) and exactly 0.5 (U.S.Des.Patent No. 272,651). If these other ratios were desirable, the district court queried, “how does serial '081 necessarily exclude the[m]?” 745 F.Supp. at 523, 17 USPQ2d at 1357.

The district court erred in taking Mahurkar's other patents into account. Mahurkar's later patenting of inventions involving different range limitations is irrelevant to the issue at hand. Application sufficiency under § 112, first paragraph, must be judged as of the filing date. United States Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247, 1251, 9 USPQ2d 1461, 1464 (Fed.Cir.1989).

The court further erred in applying a legal standard that essentially required the drawings of the '081 design application to necessarily exclude all diameters other than those within the claimed range. We question whether any drawing could ever do so. At least with respect to independent claims 1 and 7 of the '329 patent and claims depending therefrom, the proper test is whether the drawings conveyed with reasonable clarity to those of ordinary skill that Mahurkar had in fact invented the catheter recited in those claims, having (among several other limitations) a return lumen diameter substantially less than 1.0 but substantially greater than 0.5 times the diameter of the combined lumens. Consideration of what the drawings conveyed to persons of ordinary skill is essential. See Ralston Purina, 772 F.2d at 1575, 227 USPQ at 179 (ranges found in applicant's claims need not correspond exactly to those disclosed in parent application; issue is whether one skilled in the art could derive the claimed ranges from parent's disclosure).

Mahurkar submitted the declaration of Dr. Ash on this point; Vas-Cath submitted no technical evidence to refute Ash's conclusions. Although the district court considered Dr. Ash's declaration, we believe its import was improperly disregarded when viewed through the court's erroneous interpretation of the law.<ref>The following colloquy at oral argument before the district court supports our view:

Counsel for Mahurkar: “So the only evidence that we have on this subject from people of ordinary skill in the art is that the drawings do communicate these range limitations, and given the procedural posture of this case, the Court has to accept that evidence....”

District Court: * * * “And if you could have written a large number of things that were different from what was actually filed in 1984, then the diagram isn't enough.

And that seems to me something that can't be resolved by ogling the Ash declaration. It's really a pure question of law.” </ref> We hold that the Ash declaration and Vas-Cath's non-refutation thereof, without more, gave rise to a genuine issue of material fact inappropriate for summary disposition. See Hesston Corp. v. Sloop, 1988 U.S.Dist. LEXIS 1573, (D.Kansas) (summary judgment on § 112 “written description” issue inappropriate where resolution of what parent disclosure conveyed to those skilled in the art may require examination of experts, demonstrations and exhibits).

Mahurkar urges that at least some of the remaining claims do not contain the range limitations discussed by the district court, and that the presence of range limitations was not a proper basis for invalidating those remaining claims. For example, claim 8 of the '141 patent requires, inter alia, a smooth conical tapered tip and “the portion of said tube between said second opening and said conical tapered tip being larger than said first lumen in the transverse direction normal to the plane of said septum.” Vas-Cath counters that claim 8 of the '141 patent is just as much a “range” claim as claims 1 and 7 of the '329 patent, albeit one having only a lower limit and no upper limit.

Absent any separate discussion of these remaining claims in the district court's opinion, we assume that the court applied to them the same erroneous legal standard. Summary judgment was therefore inappropriate as to the remaining claims. Additionally, the possibility that the '081 drawings may provide an adequate § 112 “written description” of the subject matter of some of the claims but not others should have been considered. See, e.g., In re Borkowski, 422 F.2d 904, 909 n. 4, 164 USPQ 642, 646 n. 4 (CCPA 1970) (on review of § 112 non-enablement rejection: “A disclosure may, of course, be insufficient to support one claim but sufficient to support another.”) On remand, the district court should separately analyze whether the “written description” requirement has been met as to the subject matter of each claim of the '141 and '329 patents.

CONCLUSION
The district court's grant of summary judgment, holding all claims of the '329 and '141 patents invalid under 35 U.S.C. § 102(b), is hereby reversed as to all claims, and the case remanded for further proceedings consistent herewith.

COSTS
Each party to bear its own costs.

REVERSED and REMANDED.

APPENDIX

Independent Claims of the '329 Patent:

1. A double lumen catheter having an elongated tube with a proximal first cylindrical portion enclosing first and second lumens separated by an internal divider, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, and the second lumen extending from the proximal end of said elongated tube to a second opening at approximately the distal end of said first cylindrical portion, wherein the improvement comprises:
said elongated tube having at its distal end a smooth conical tapered tip that smoothly merges with a second cylindrical portion of said elongated tube, and said second cylindrical portion enclosing the first lumen from the conical tapered tip to approximately the location of said second opening, wherein said second cylindrical portion has a diameter substantially greater than one-half but substantially less than a full diameter of said first cylindrical portion.

7. A double lumen catheter having an elongated tube with a proximal first cylindrical portion enclosing first and second lumens separated by an internal divider, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, and the second lumen extending from the proximal end of said elongated tube to a second opening at approximately the distal end of said first cylindrical portion, wherein the improvement comprises:

said elongated tube having at its distal end a smooth conical tapered tip that smoothly merges with a second cylindrical portion of said elongated tube, and said second cylindrical portion enclosing the first lumen from the conical tapered tip to approximately the location of said second opening, said second cylindrical portion having a diameter substantially greater than one-half but substantially less than a full diameter of said first cylindrical portion, said divider in said first cylindrical portion being planar, the lumens being “D” shaped in cross-section in said first cylindrical portion, the elongated tube being provided with a plurality of holes in the region of the conical tapered tip, and said first cylindrical portion of the elongated tube smoothly merging with said second cylindrical portion of the elongated tube.

Independent Claims of the '141 Patent:

1. A double lumen catheter having an elongated tube with a proximal first cylindrical portion enclosing first and second lumens separated by an internal divider, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, and the second lumen extending from the proximal end of said elongated tube to a second opening at approximately the distal end of said first cylindrical portion, wherein the improvement comprises:
said elongated tube having at its distal end a smooth conical tapered tip that smoothly merges with a second cylindrical portion of said elongated tube, and said second cylindrical portion enclosing the first lumen from the conical tapered tip to approximately the location of said second opening, wherein said second sylindrical [sic] portion has a diameter substantially less than a full diameter of said first cylindrical portion but larger than said first lumen in the transverse direction normal to the plane of said flat divider.

7. A double lumen catheter comprising an elongated cylindrical tube enclosing first and second lumens separated by a flat longitudinal internal divider formed as an integral part of said tube, said tube and said divider forming said first and second lumens as semi-cylindrical cavities within said tube, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, said distal end of said tube forming a smooth conical tapered tip and the second lumen extending from the proximal end of said elongated tube to a second opening spaced a substantial distance away from said first opening toward the proximal end of said tube, the distal end of said divider being joined to the outside wall of said tube distal of said second opening, and the outside wall of said tube forming a smooth transition between said conical tapered tip and the outer circumference of the tube proximal of said second opening, said transition being larger than said first lumen in the transverse direction normal to the plane of said flat divider.

8. A double lumen catheter comprising an elongated cylindrical tube having a longitudinal planar septum of one-piece construction with said tube, said septum dividing the interior of said tube into first and second lumens, said lumens being D-shaped in cross-section, the proximal end of said tube connecting to two separate tubes communicating with the respective first and second lumens for the injection and removal of fluids, the lumen extending from the proximal end of said tube to a first lumen extending from the proximal end of said tube to a first opening at the distal end of said tube, and the second lumen extending from the proximal end of said tube to a second opening axially spaced from the distal end of said tube, said tube having at its distal end a smooth conical tapered tip that merges with the cylindrical surface of said tube, said first lumen, including the internal wall thereof formed by said septum extending continuously through said conical tapered tip, and the portion of said tube between said second opening and said conical tapered tip being larger than said first lumen in the transverse direction normal to the plane of said septum.

13. A double lumen catheter comprising an elongated cylindrical tube enclosing first and second lumens separated by a flat longitudinal internal divider formed as an integral part of said tube, said tube and said divider forming said first and second lumens as semi-cylindrical cavities within said tube, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with he [sic] respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, said distal end of said tube forming a smooth conical tapered tip defining the distal portion of said first lumen and said first opening, said first opening and an adjacent portion of said first lumen having a circular transverse cross-sectional configuration, and the second lumen extending from the proximal end of said elongated tube to a second opening spaced a substantial distance away from said first opening toward the proximal end of said tube, the inside walls of said tube forming a smooth transition between said semicylindrical and circular transverse cross-sectional configurations of said first lumen, the outside dimension of said transition being larger than said first lumen in the transverse direction normal to the plane of said flat divider.

===Footnotes===
<references/>

TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111 (2001)

2011-04-11T12:28:03Z

Bill Goodwine:

United States Court of Appeals,
Federal Circuit.

TURBOCARE DIVISION OF DEMAG DELAVAL TURBOMACHINERY CORPORATION, Plaintiff-Appellant,
v.
GENERAL ELECTRIC COMPANY, Defendant-Appellee.

No. 00-1349.
Aug. 29, 2001.

Catriona M. Collins, Cohen, Potani, Lieberman & Pavane, of New York, New York, argued for plaintiff-appellant. With her on the brief were Francis J. Murphy and John M. Calimafde, Hopgood, Calimafde, Kalil & Judlowe LLP, of New York, NY.

Mark T. Banner, Banner & Witcoff, Ltd., of Chicago, Illinois, argued for defendant-appellee. With him on the were Christopher J. Renk, Thomas K. Pratt and Janice V. Mitrius.

Before BRYSON, GAJARSA, and LINN, Circuit Judges.

BRYSON, Circuit Judge.

The TurboCare Division of Demag Delaval Turbomachinery Corp. (“TurboCare”) is the owner of U.S. Patent No. 4,436,311 (“the ′311 patent”), which is directed to a shaft sealing system for fluid turbines. TurboCare brought suit against General Electric Co. (“GE”) in the United States District Court for the District of Massachusetts, asserting infringement of the ′311 patent. The district court granted summary judgment of noninfringement as to claims 1, 5, 6, and 7 and invalidity as to claim 2. TurboCare appealed. We affirm the district court's judgment of invalidity as to claim 2, and we affirm-in-part and vacate-in-part the district court's judgment of noninfringement as to claims 1, 5, 6, and 7. We remand for further consideration of the infringement issues and consideration of the validity of claims 1, 5, 6, and 7 in light of our claim construction.

I

The ′311 patent describes an improved labyrinth-type shaft seal for use in fluid-driven devices such as steam turbines. Steam turbines are typically divided into stages that are separated by internal walls known as diaphragms. The diaphragms include nozzles for steam passage and central openings for the rotating shaft. The nozzles are designed to direct the steam at the working surfaces of the blades in the next stage; it is therefore preferable to channel all available steam through the nozzles. Steam may, however, leak through the central opening in the diaphragm along the rotating shaft, thereby reducing the efficiency of the turbine. Labyrinth-type shaft seals (also known as packing rings) are used to reduce leakage along the shaft.

The seals reduce leakage along the shaft by minimizing the clearance between the rotating shaft and the stationary turbine casing or diaphragm. Figure 1 is a cross-section of the claimed seal ring, and Figure 2 is a cross-section of the turbine:

There are figures in this opinion. See the related patent to view them.

In the figures, the seal ring 13 is supported by a groove in the casing 12 and forms a segmented ring surrounding the shaft 11. A number of seal ring teeth 14 extend toward the shaft, thereby reducing the clearance between the shaft and the casing. Because of the small clearance between the rotating shaft and the seal ring teeth, labyrinth-type shaft seals are vulnerable to rubbing damage caused by turbine misalignment, vibration, and thermal distortion during low load conditions, starting, and shutdown. Prior art sealing systems attempted to limit rubbing damage while still minimizing leakage along the shaft by various means, including using specialized materials, modifying the seal teeth geometry, spring-loading the seal, and restricting the seal's movement.

Ronald E. Brandon, the inventor of the ′311 patent, conceived of a two-position labyrinth-type seal to resolve the rubbing damage problem. During low load conditions, starting, and shutdown, the claimed seal maintains a large clearance position, thereby minimizing contact between the seal ring teeth and the turbine shaft during those periods of shaft instability. During normal operating conditions, the claimed seal maintains a small clearance position, thereby preventing or reducing leakage along the shaft. Figure 1 shows Brandon's seal segment in the small clearance position.

Brandon's preferred embodiment employs compressed S-shaped springs 16 interposed between the ends of the seal ring segments. Those springs apply a circumferential force, biasing the ring segments toward the large clearance position. As the turbine accelerates, the steam pressure on the seal ring increases so that the bias of the springs is overcome and the seal ring segments move radially inward to the small clearance position. In Figure 1, the steam flows from left to right between the casing 12 and the shaft 11. The relevant steam path runs through annular spaces 24 and 15 via one or more local openings 23. The space at the top of the seal segment does not communicate with annular space 25, because a leak-resistant contact pressure seal is formed between the neck of the seal segment and the casing shoulder at 12a. That pressure seal forms when the seal ring segment is pushed sideways as a result of the axial steam pressure on the high pressure side of the seal segment.

As the radial steam pressure at the top of the seal segment builds, it overcomes both the force of the compressed spring and the friction created by the leak-resistant contact pressure seal and moves the seal to the small clearance position. In that position, the seal reduces the leakage of steam through the central opening of the diaphragm and therefore increases the passage of steam through the nozzle.

In the preferred embodiment, the movement of the seal is restricted by contact between certain surfaces. Figure 1 shows the seal ring segment in the small clearance position. In that position, the inward facing surface of the outer ring portion of the seal ring segment 13b is in contact with the casing shoulders 17. When the seal ring segment is in the large clearance position, the outward facing surface of the inner ring portion of the seal ring segment 20a is in contact with the inward facing surface of the casing 21a.

The ′311 patent claims, in pertinent part:

1. In an elastic fluid turbine employing seals to minimize leakage between rotating and stationary components, an improvement in the seal arrangement utilizing the combination of:

a segmented seal ring supported by and at least partially contained in an annular groove formed in a stationary casing to permit motion of said seal ring between a large diameter position and a small diameter position corresponding respectively to large and small clearance of said seal ring with regard to the rotating shaft, said seal ring groove being partially defined by a pair of opposing, spaced apart shoulders on said casing which form an opening of said groove extending radially into the clearance area between said casing and said rotating shaft;

each segment of said seal ring including an inner arcuate portion h[a]ving seal teeth extending therefrom in the direction of and adjacent to said rotating shaft, a radially outwardly facing arcuate surface on said seal ring segment which is located opposite to a radially inward facing arcuate surface of said casing for limiting said large clearance position by contact between said opposing surfaces, an outer ring portion disposed within said seal ring groove for both axial and radial movement therein and having a pair of shoulders, extending axially in opposite directions for making radial contact respectively with said pair of spaced apart shoulders on said casing and thereby limiting said small clearance position, and a neck portion connected between said inner arcuate portion and said outer ring portion and extending between said casing shoulders, said neck portion having an axial thickness which is less than the distance between said opposing casing shoulders to thereby axially locate said seal ring segment against one of said casing shoulders and provide a contact pressure seal at the said neck portion which is subject to lower turbine fluid pressure; and

a radial positioning means comprising a compressed spring means biased against said ring segments to forcibly cause said segments to move to said large clearance position, while working fluid which is freely admitted to the annular space between said casing and said ring segments will urge said segments toward said small clearance position, whereby at low speed and small turbine loads the spring forces will predominate, while at high flows and high working fluid pressure the pressure forces will predominate.

2. A fluid turbine seal arrangement as recited in claim 1, wherein said spring means include a flat spring interposed between said casing shoulders and an inner surface of said outer ring portion of said ring segment.

TurboCare has also asserted dependent claims 5, 6, and 7. On appeal, however, TurboCare has not made separate legal arguments with respect to those claims.

Four GE products are accused of infringement. The parties refer to them as (1) the Original Version, (2) the 1992 N-2 Version, (3) the 1992 Diaphragm Version, and (4) the 1995 Version. The structure of those devices is undisputed in several key respects. Each employs flat springs interposed between the casing shoulders and the inner surface of the outer ring portion of the ring segments. Those springs apply a radial rather than circumferential force. Like the S-shaped springs of the preferred embodiment, however, the flat springs bias the ring segments toward the large clearance position. As the steam load on a GE turbine rises, the pressure on the seal ring increases until the bias of the springs is overcome and the seal ring segments move radially inward to the small clearance position.

The steam path in the GE products is somewhat different than in the preferred embodiment. Two accused products (the Original Version and the 1992 N 2 Version) have drilled holes in the casing above the seal segment to admit steam. One accused product (the 1992 Diaphragm Version) has a drilled hole in the seal segment itself. And the final product (the 1995 Version) has a drilled hole in the casing below the seal segment, but not in the casing shoulder.

The small and large clearance positions are also defined somewhat differently in the various accused products. The Original Version includes separate sealing structures (referred to as “side seals”) between the inward facing surface of the outer ring portion of the seal ring segment and the casing shoulders. Thus, the small clearance position is defined by contact between the side seals and the seal ring segment. The 1992 N-2 Version includes similar side seal structures as well as dowels that allow the seal to be adjusted to accommodate non-standard and out-of-round conditions of the casing. The small clearance position is therefore defined by contact between the side seals and the dowels. The 1992 Diaphragm Version and the 1995 Version both include dowels but not side seals. The small clearance position in those devices is therefore defined by contact between the dowels and the casing shoulders. In addition, while the 1992 Diaphragm Version and the 1995 Version define the large clearance position by contact between the outward facing surface of the inner ring portion of the seal ring segment and the inward facing surface of the casing, the Original Version and the 1992 N-2 Version define the large clearance position by contact between the top of the seal ring segment and the casing groove.

On GE's motion for summary judgment, the district court held claim 2 invalid for lack of an adequate written description. During prosecution, Brandon amended his specification to refer to flat springs and also added a new claim, claim 2, which was directed to a shaft seal with a flat spring interposed between the casing shoulder and the inner surface of the outer ring portion of the ring segment. The district court found that the amendment to the specification did not merely clarify what was already reasonably disclosed in the application, but rather constituted new matter. Consequently, the court held claim 2 invalid as not supported by the original specification.

In construing the term “radial positioning means” in claim 1, the district court refused to consider the new matter that was added to the specification. That new matter included the explicit reference to flat springs, the disclosure of an alternative location for those springs and the words “for example,” which were added to the statement: “The openings 23[ ] may, for example, be made by local cutouts in the high pressure side of shoulder 12a.” The district court therefore concluded that claim 1 and the dependent claims did not cover a shaft seal with flat springs interposed between the casing shoulder and the inner surface of the outer ring portion of the ring segment. Specifically, the district court interpreted the term “radial positioning means” as including structures containing the following features: (1) S-shaped springs or their equivalent; (2) located at each end of each seal segment and exerting a circumferential force against the segments to cause the seal to be positioned in a large clearance position; and (3) cutouts or their equivalents that admit steam to the top of the segments through the area between the neck of the seal and the casing shoulder, thereby causing the seal to move to the small clearance position. The district court also interpreted the terms “small clearance position” and “large clearance position” to require contact between the relevant surfaces shown in Figure 1 of the patent.

Based on its claim construction, the district court granted summary judgment of noninfringement, holding that none of the accused GE devices literally infringed claims 1, 5, 6, or 7. With respect to the doctrine of equivalents, the court held that Brandon had distinguished his invention from prior art devices that employed leaf (or flat) springs and drilled holes in the casing, and that TurboCare therefore could not establish that GE's accused devices infringed the ′311 patent under the doctrine of equivalents.

II

TurboCare first challenges the district court's conclusion that new matter was added to the specification of the ′311 patent and that claim 2 is therefore invalid for failing to satisfy the written description requirement of section 112, paragraph 1. The written description requirement and its corollary, the new matter prohibition of 35 U.S.C. § 132, both serve to ensure that the patent applicant was in full possession of the claimed subject matter on the application filing date. When the applicant adds a claim or otherwise amends his specification after the original filing date, as Brandon did in this case, the new claims or other added material must find support in the original specification. Schering Corp. v. Amgen Inc., 222 F.3d 1347, 1352, 55 USPQ2d 1650, 1653 (Fed.Cir.2000) (“The fundamental inquiry is whether the material added by amendment was inherently contained in the original application.”); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed.Cir.1991) (“[T]he test for sufficiency of support ... is whether the disclosure of the application relied upon ‘reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.’ ”) (quoting Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed.Cir.1985)).

Claim 2 is directed to a “fluid turbine seal arrangement as recited in claim 1, wherein said spring means include a flat spring interposed between said casing shoulders and an inner surface of said outer ring portion of said ring segment.” GE asserts that claim 2 is unsupported by the original disclosure in two respects-the type of spring to be used and its location.

Brandon's original disclosure stated that a “considerable variety of springs 16 can be employed. They must be selected to have long life and stable characteristics while exposed to high temperatures, vibration and possible corrosive conditions. Flat, S-shaped springs are illustrated, but others can be employed.” The last sentence was amended during prosecution to read: “S-shaped springs are illustrated, but flat springs and others can be employed.” GE asserts that this amendment introduced new matter, namely flat springs. TurboCare counters that the amendment constituted a mere clarification of the original disclosure, since flat springs were not illustrated, but were among those that the specification indicated could be used. TurboCare adds that one of ordinary skill in the art would readily understand that flat springs could be used to perform the required function of pushing the ring segments away from the shaft.

While Brandon's original disclosure is not a model of clarity, neither is it so obscure that no reasonable juror could conclude that flat springs were sufficiently disclosed. Brandon stated that a “considerable variety of springs” could be employed, and he used the general term “spring” when describing his invention. Moreover, it is at least plausible that the amendment served merely to clarify that flat springs were not illustrated. After reviewing the evidence of record on this issue, we conclude that there is an issue of fact as to whether Brandon's amendment, which explicitly discloses flat springs, added new matter to the specification. Consequently, we cannot uphold the district court's summary judgment of invalidity as to claim 2 based on the asserted inadequacy of the original disclosure as to the type of spring used in the seal.

With respect to the location of the springs, Brandon's original written description identified only one location-“[s]prings 16, are located at each end of each seal ring segment in a compressed condition.” However, one of Brandon's original claims provided that “the positioning means ... is a spring located between seal ring segments or adjacent to said rings.” The examiner rejected that claim as indefinite because “the terms ‘located between’ and (‘or’) ‘adjacent to’ do not describe the same condition.” In response, Brandon amended his claims to describe generally a “radial positioning means comprising a compressed spring means biased against said ring segments.” New dependent claims were added, specifying that “said spring means include a flat spring interposed between said casing shoulders and an inner surface of said outer ring portion of said ring segment” (claim 2) and that, alternatively, “said spring means include a compressed spring interposed between the ends of said ring segments to bias said ring segments to move to said large clearance position” (claim 4). TurboCare admits that the only support in the original disclosure for the location of the spring in claim 2 is the “spring located ... adjacent to said rings” language from one of the original, rejected claims.

TurboCare contends that one of ordinary skill in the art would recognize that the only viable location for mounting a spring “adjacent to said rings” would be between the casing shoulders and the shoulders of the outer ring portion of the segment, and therefore that the claimed subject matter was inherent in the original disclosure. To support its contention, TurboCare offers the conclusory statements of its expert witness, Mr. Shifler, to that effect.

In order for a disclosure to be inherent, “the missing descriptive matter must necessarily be present in the [original] application's specification such that one skilled in the art would recognize such a disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159, 47 USPQ2d 1829, 1834 (Fed.Cir.1998). Brandon's original disclosure is completely lacking in any description of an embodiment in which the spring is located between the casing shoulders and the inner surface of the outer ring portion of the ring segment. Such an embodiment may have been obvious from Brandon's vague reference to a “spring located ... adjacent to said rings.” As we held in Lockwood v. American Airlines, Inc., 107 F.3d 1565, 41 USPQ2d 1961 (Fed.Cir.1997), however, that is not enough to satisfy the written description requirement:

While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.

Id. at 1572, 41 USPQ2d at 1966. No reasonable juror could find that Brandon's original disclosure was sufficiently detailed to enable one of skill in the art to recognize that Brandon invented what is claimed.

Because Brandon did not file a continuation-in-part application, he cannot rely on any alternative filing date for his newly added claim 2. See Augustine Med., Inc. v. Gaymar Indus., 181 F.3d 1291, 1302, 50 USPQ2d 1900, 1908 (Fed.Cir.1999) (“A CIP application contains subject matter from a prior application and may also contain additional matter not disclosed in the prior application.... Different claims of such an application may therefore receive different effective filing dates.”); see also 35 U.S.C. § 120. Consequently, claim 2 is invalid for an inadequate written description. See Reiffin v. Microsoft Corp., 214 F.3d 1342, 1346, 54 USPQ2d 1915, 1917 (Fed.Cir.2000) (compliance with the written description requirement requires that the original application considered as a whole describe the invention claimed in the patent resulting from that application); Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479-80, 45 USPQ2d 1498, 1502-04 (Fed.Cir.1998) (invalidating amended claims not supported by the original application). We therefore uphold the district court's ruling that claim 2 is invalid for failing to satisfy the written description requirement.

III

TurboCare also challenges the district court's conclusion on summary judgment that none of the accused GE devices infringes claims 1, 5, 6, or 7, either literally or equivalently.

A

The first step in the infringement analysis is to determine the meaning and scope of the patent claims asserted to be infringed. TurboCare contests the district court's construction of three terms used in the claims: (1) radial positioning means; (2) large clearance position; and (3) small clearance position.

Radial Positioning Means

Brandon's independent claim 1 provides in relevant part:

a radial positioning means comprising a compressed spring means biased against said ring segments to forcibly cause said segments to move to said large clearance position, while working fluid which is freely admitted to the annular space between said casing and said ring segments will urge said segments toward said small clearance position, whereby at low speed and small turbine loads the spring forces will predominate, while at high flows and high working fluid pressure the pressure forces will predominate.

Because the term “radial positioning means” uses the word “means,” it is presumptively subject to section 112, paragraph 6. Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427, 44 USPQ2d 1103, 1109 (Fed.Cir.1997). However, the claim recites sufficient structure to overcome that presumption.

The claim states that the function of the “radial positioning means” is to position the ring segments “whereby at low speed and small turbine loads the spring forces will predominate, while at high flows and high working fluid pressure the pressure forces will predominate.” The claim recites two structures for achieving that function: (1) a compressed spring means and (2) working fluid. The claim also describes how those structures act to achieve the claimed function-the compressed spring means is biased against the ring segment while the working fluid is freely admitted to the space between the casing and the ring segment. As the court explained in the Sage Products case, “where a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format.” 126 F.3d at 1427-28, 44 USPQ2d at 1109.

While it is true that the “compressed spring means,” which is one of the elements of the “radial positioning means” also uses the term “means,” we conclude that it, too, does not invoke section 112, paragraph 6. The claim states that the function of the compressed spring means is “to forcibly cause said segments to move to said large clearance position.” The claim then recites structure to achieve that function-a compressed spring biased against the seal ring segment. Although the term “spring” has a functional connotation, a “compressed spring” denotes a type of device with a generally understood meaning in the mechanical arts. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583, 39 USPQ2d 1783, 1786 (Fed.Cir.1996) (construing the term “detent mechanism” as not invoking section 112, paragraph 6, because it is generally understood in the mechanical arts to describe structure). There is nothing in the specification or the prosecution history suggesting that the patentee used the term “compressed spring means” generally to refer to any structure that can perform a biasing function; on the contrary, both the specification and the prosecution history disclose only a type of device denoted as a “spring” or a “compressed spring.” In these circumstances, the term “compressed spring means” is not subject to section 112, paragraph 6.

Our decision in Unidynamics v. Automatic Products International, Ltd., 157 F.3d 1311, 48 USPQ2d 1099 (Fed.Cir.1998), is consistent with the conclusion we reach in this case. In Unidynamics, we concluded that the claim language “spring means tending to keep the door closed” was in means-plus-function form and therefore governed by section 112, paragraph 6. The specification in Unidynamics stated that a “spring” was only one example of a “spring means,” which indicated that the claim term “spring means” was broader than the meaning of the term “spring” generally recognized in the mechanical arts. Thus, we concluded that the patentee in Unidynamics defined spring means functionally as anything that performs a springing or biasing function.

In this case, by contrast, the claim recites a particular kind of spring-a “compressed spring”-and the specification makes clear that the claim term “compressed spring means” was used to denote structure, not function. The preferred embodiment uses S-shaped compressed springs. The specification adds that other types of springs can be employed, but there is no suggestion that the claim was meant to include biasing mechanisms other than springs. Accordingly, we conclude that the patentee in this case has defined “compressed spring” to refer to a particular type of device. Because neither the term “radial positioning means” nor the term “compressed spring means” is subject to section 112, paragraph 6, those limitations are not restricted by the corresponding structures disclosed in the specification and their equivalents.

GE concedes that a flat spring is a type of compressed spring, as that term is generally understood. Nonetheless, GE asserts that Brandon disclaimed the use of flat springs in the course of the prosecution and that flat springs are therefore not covered by the claims.

During prosecution, the examiner rejected Brandon's claims as anticipated by a British patent issued to Warth. Warth's patent specifically disclosed the use of flat (or leaf) springs interposed between the casing shoulder and the inner surface of an outer ring portion of the seal segment. In distinguishing Warth, Brandon stated:

In summary, Applicant's invention is essentially a two-position packing ring system. That is, at low speeds and low loads it is fixed at a large clearance position. When a low, predetermined load, and pressure condition is reached, the ring moves swiftly to its small clearance position. This is a significant distinction over Warth's system that employs leaf springs with nearly frictionless ring segments that gradually allow the ring clearance to lessen as load is increased.

GE argues that this statement disclaims all embodiments employing flat (or leaf) springs.

GE reads too much into the prosecution history. The clear thrust of Brandon's argument was that his invention is a two-position packing ring system, while Warth's invention is a multiple-position packing ring system. Brandon described Warth's invention as including an equalizing passage through the seal segment, which was designed to reduce the axial fluid pressure and allow the space at the top of the seal segment to communicate with the annular space on the low pressure side of the seal segment. According to Brandon, the equalizing passage enabled the Warth seal to assume a medium clearance position as well as a small and large clearance position, which had certain disadvantages that were cured by his two-position seal. Whether or not Warth employed flat springs was irrelevant to that distinction. In fact, in the same response, Brandon added a claim specifically directed to flat springs. The addition of that claim further indicates that Brandon was not disclaiming all embodiments employing flat springs. Instead, it appears that Brandon was simply noting that while Warth's invention used flat springs, it was otherwise distinguishable from the claimed invention. We therefore conclude that the term “compressed spring means” should be construed to include flat (or leaf) springs, because such springs are within the generally understood meaning of that term and because Brandon did not disclaim such springs or otherwise indicate that a special meaning should be given to the term “compressed spring means.”

Finally, GE argues that the “compressed spring means” limitation includes a stricture on the location of the spring. However, there is no such limitation in claim 1. On the contrary, dependent claims 2 and 4 add such a limitation, providing that the springs must either be interposed between the casing shoulders and an inner surface of the outer ring portion of the ring segment, or be interposed between the ends of the ring segments.

The “radial positioning means” limitation of claim 1 also recites the use of “working fluid which is freely admitted to the annular space between said casing and said ring segments.” In construing that term, it is appropriate to consider the “for example” language that was added to the specification during prosecution of the ′311 patent. Although the district court concluded that the amendment added new matter, the amendment actually added no more than the concept, originally disclosed, that “[v]arious other modifications of the invention may occur to those skilled” in the art. ′311 patent, col. 5, ll. 17-18.

With respect to the “working fluid” limitation, GE argues that Brandon disclaimed certain steam pathway configurations when he distinguished the Warth prior art reference. In distinguishing Warth, Brandon stated that “[d]rilled holes above the ring, as used in Warth, are unnecessary since this space already communicates to the upstream pressure by way of slots [cutouts] in the ring and holder.” According to GE, that statement disclaims all embodiments that do not employ cutouts in the casing shoulder for steam passage.

Brandon made several arguments to distinguish Warth, including the argument that his invention did not require “drilled holes above the ring.” Brandon thus represented to the public in clear and definite terms that his invention did not require any such holes. See Watts v. XL Sys., Inc., 232 F.3d 877, 883, 56 USPQ2d 1836, 1840 (Fed.Cir.2000) (holding that the patentee limited his invention by arguments made to distinguish the primary reference cited by the examiner). TurboCare cannot now retreat from that position in asserting the Brandon patent against GE. However, Brandon's statement about Warth should not be construed unduly broadly. Brandon characterized his invention as not employing drilled holes above the ring, but he did not characterize it as lacking drilled holes altogether or as requiring local cutouts in the high pressure side of the casing shoulder. Claim 1 requires that steam or working fluid be freely admitted to the annular space between the casing and the ring segments. In accordance with Brandon's characterization of his invention in the course of the prosecution, the “working fluid” limitation should be construed to exclude devices in which steam is admitted to the space between the casing and ring segments through a drilled hole above the ring. But that limitation should not be interpreted to exclude any device in which steam is admitted through a drilled hole, regardless of where the drilled hole is located.

Large Clearance Position

The parties also dispute the meaning of the term “large clearance position.” Claim 1 provides in relevant part:

each segment of said seal ring including ... a radially outwardly facing arcuate surface on said seal ring segment which is located opposite to a radially inward facing arcuate surface of said casing for limiting said large clearance position by contact between said opposing surfaces....

The district court construed the “large clearance position” limitation as requiring that the outward facing surface of the inner ring portion of the seal ring segment touch the inward facing surface of the casing shoulders when the seal is in the large clearance position. TurboCare argues that there is nothing in the specification or prosecution history supporting such a restriction. The plain language of claim 1 requires only contact between an outward facing surface of the seal ring segment and an inward facing surface of the casing. There is no basis for reading a limitation from the preferred embodiment into the language of the claim. See Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 865, 9 USPQ2d 1289, 1299 (Fed.Cir.1988) ( “References to a preferred embodiment, such as those often present in a specification, are not claim limitations.”). That is particularly true where another claim restricts the invention in exactly the manner suggested by the district court's narrow claim construction. See Beachcombers v. WildeWood Creative Prods., Inc., 31 F.3d 1154, 1162, 31 USPQ2d 1653, 1659 (Fed.Cir.1994) (a claim construction rendering a dependent claim superfluous is presumptively unreasonable). While the “large clearance position” certainly encompasses the preferred embodiment, it also encompasses an arrangement in which there is contact between the outward facing surface of the outer ring portion of the seal ring segment (i.e., the top of the seal) and the inward facing surface of the casing groove.

Small Clearance Position

The parties dispute the meaning of the terms “small clearance position” and “contact.” Claim 1 provides in relevant part:

each segment of said seal ring including ... an outer ring portion disposed within said seal ring groove for both axial and radial movement therein and having a pair of shoulders, extending axially in opposite directions for making radial contact respectively with said pair of spaced apart shoulders on said casing and thereby limiting said small clearance position....

TurboCare does not dispute that the small clearance position limitation requires contact between the inward facing surface of the outer ring portion of the seal ring segment and the outward facing surface of the casing shoulders. It does dispute, however, the meaning of the term “contact.” The district court construed that term as meaning direct contact, i.e. touching. In addition, the district court seemed to indicate that certain types of indirect contact such as indirect contact through “solely passive pads or buffers ... to adjust the degree of clearance or compensate for wear and tear” would also constitute “contact” as that term is used in the claims of the ′311 patent. TurboCare asserts that all indirect contact is “contact” within the meaning of the claims.

TurboCare points to language in the specification in which Brandon referred to “direct contact” between the neck of the seal segment and the casing. ′311 patent, col. 2, ll. 62-64. TurboCare argues that this language implies that when Brandon used the term “contact” alone, he must have meant something other than direct contact. The language to which TurboCare directs us, however, is found in a discussion of the pressure seal that is formed between the neck of the seal segment and the casing as a result of axial fluid pressure. The use of the term “direct contact” to denote a pressure seal does not suggest that when the term “contact” is used elsewhere in the patent it must encompass objects that are in indirect contact, i.e., objects that do not touch one another but have other objects interposed between them. In the absence of a special definition of the term “contact” in the specification, that term should be given its ordinary and accustomed meaning. The district court properly construed the term, according to its ordinary meaning, to mean “touching.” Whether so-called “indirect contact” could give rise to infringement is an issue of equivalency.

B

The second step in the infringement analysis is comparing the properly construed claims to the devices accused of infringing. There are four GE devices accused of infringement: (1) the Original Version, (2) the 1992 N-2 Version, (3) the 1992 Diaphragm Version, and (4) the 1995 Version. The different devices raise different infringement issues.

The Original Version and the 1992 N-2 Version
These devices do not infringe claim 1 as construed. They both have a drilled hole above the ring to admit steam into the space at the top of the seal segment. As we have discussed, Brandon disclaimed that type of arrangement during prosecution, and it is therefore not within the scope of the claims as properly construed. Nor is the doctrine of equivalents available with a respect to these devices in light of Brandon's express disavowal of coverage. See SciMed Life Sys. v. Advanced Cardiovascular Sys., 242 F.3d 1337, 1345-47, 58 USPQ2d 1059, 1066-68 (Fed.Cir.2001).

1992 Diaphragm Version and the 1995 Version

The remaining two devices, the 1992 Diaphragm Version and the 1995 Version, do not literally infringe claim 1 as construed. The 1992 Diaphragm Version has a drilled hole through the seal segment to admit steam into the space at the top of the seal segment. In distinguishing the Warth patent, Brandon disclaimed only those devices with drilled holes above the ring. Because steam is freely admitted through the drilled hole in the ring segment to the annular space between the casing and the ring segment, and because Brandon did not disclaim that structure, the 1992 Diaphragm Version satisfies the “working fluid” limitation. In addition, the 1992 Diaphragm Version includes a spring means-in this case, flat springs-biased against the ring segments to forcibly cause the segments to move to the large clearance position. That device therefore falls within the literal scope of the radial positioning means limitation.

GE does not contest that the 1992 Diaphragm Version meets the large clearance position limitation, with contact between an outward facing surface of the seal ring segment and an inward facing surface of the casing. It does, however, contend that the device does not meet the small clearance position limitation.

The 1992 Diaphragm Version includes dowels that are attached to the shoulders of the outer ring portion of the seal ring segment. The purpose of the dowels is to accommodate variations in the casing. However, the dowels also prevent the inward facing surface of the outer ring portion of the seal ring segment from touching the outward facing surface of the casing shoulders. Because those two surfaces are not touching, the 1992 Diaphragm Version does not literally infringe claim 1.

The 1995 Version also does not literally infringe claim 1 as construed. Although it meets the other limitations of claim 1 of the ′311 patent, it does not satisfy the small clearance position limitation for the same reasons as the 1992 Diaphragm Version.

TurboCare argues that even if there is no literal infringement, the 1992 Diaphragm Version and the 1995 Version infringe the ′311 patent under the doctrine of equivalents. GE counters that the doctrine of equivalents is foreclosed by prosecution history estoppel. Brandon's original independent claim 1 did not include a “contact” limitation, although it did refer to a “small diameter position corresponding to ... small clearance of the seal ring with regard to the rotating shaft or rotor.” In response to a rejection based on the Warth patent, Brandon cancelled that claim and added a new independent claim that specifically defined the “small diameter” or “small clearance” position with reference to contact between certain surfaces. GE argues that Brandon narrowed his claims by virtue of that amendment and that no range of equivalents is therefore available. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 56 USPQ2d 1865 (Fed.Cir.2000) (en banc), cert. granted, 533 U.S. 915, 121 S.Ct. 2519, 150 L.Ed.2d 692 (2001). However, that is true only if Brandon did in fact narrow the literal scope of his claims. See Festo, 234 F.3d at 587-88, 56 USPQ2d at 1889-90.

The small clearance position limitation was present in the original claim. Although the cancelled claim did not specifically state that the small clearance position was delineated by “contact” between certain surfaces, that was the meaning that the patentee gave the term “small diameter position” in the specification:

As load is increased, the fluid pressure increases proportionately around the rings in such fashion ... to cause the springs to be compressed and the seal ring segments to move radially inward until restrained by contact at surface 17. The dimensions of the seal ring and surface 17 on the casing are selected to create the smallest clearance between the teeth 14 and the rotor surface determined to be practical for loaded, relatively steady state operation.

′311 patent, col. 3, ll. 15-23 (emphasis added). The specification also states that the seal segment depicted in Figure 1 of the patent is shown in a “small clearance condition.” Id., col. 3, ll. 24-25. That figure shows the relevant surfaces touching. Here, the newly added claim only redefined the small clearance position limitation without narrowing the claim. Therefore Festo is not applicable.

Thus, the issue with respect to the doctrine of equivalents is whether the intrusion of the dowels between the casing and the ring segments creates any substantial differences between the claimed invention and the accused devices. In light of our claim construction, it is not clear that TurboCare cannot prevail on its doctrine of equivalents argument by showing that the 1992 Diaphragm Version or the 1995 Version devices is insubstantially different from the claimed invention. We therefore remand to the district court to address TurboCare's doctrine of equivalents argument with respect to GE's 1992 Diaphragm Version and 1995 Version devices.

IV

In summary, we affirm the district court's ruling that claim 2 is invalid for an inadequate written description. We also affirm the court's ruling that neither the Original Version, nor the 1992 N-2 Version infringes claims 1, 5, 6, or 7, literally or under the doctrine of equivalents. We further affirm the district court's ruling that neither the 1992 Diaphragm Version nor the 1995 Version literally infringes claims 1, 5, 6, or 7. We remand the case to the district court to consider whether the 1992 Diaphragm Version or the 1995 Version infringes the ′311 patent under the doctrine of equivalents and to consider the validity of claims 1, 5, 6, and 7 in light of our claim construction.

Each party shall bear its own costs for this appeal.

AFFIRMED IN PART, VACATED IN PART, AND REMANDED.

TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111 (2001)

2011-04-08T17:37:02Z

Bill Goodwine: Created page with "United States Court of Appeals, Federal Circuit. TURBOCARE DIVISION OF DEMAG DELAVAL TURBOMACHINERY CORPORATION, Plaintiff-Appellant, v. GENERAL ELECTRIC COMPANY, Defendant-Appe..."

United States Court of Appeals,
Federal Circuit.

TURBOCARE DIVISION OF DEMAG DELAVAL TURBOMACHINERY CORPORATION, Plaintiff-Appellant,
v.
GENERAL ELECTRIC COMPANY, Defendant-Appellee.

No. 00-1349.
Aug. 29, 2001.

Catriona M. Collins, Cohen, Potani, Lieberman & Pavane, of New York, New York, argued for plaintiff-appellant. With her on the brief were Francis J. Murphy and John M. Calimafde, Hopgood, Calimafde, Kalil & Judlowe LLP, of New York, NY.

Mark T. Banner, Banner & Witcoff, Ltd., of Chicago, Illinois, argued for defendant-appellee. With him on the were Christopher J. Renk, Thomas K. Pratt and Janice V. Mitrius.

Before BRYSON, GAJARSA, and LINN, Circuit Judges.

BRYSON, Circuit Judge.

The TurboCare Division of Demag Delaval Turbomachinery Corp. (“TurboCare”) is the owner of U.S. Patent No. 4,436,311 (“the ′311 patent”), which is directed to a shaft sealing system for fluid turbines. TurboCare brought suit against General Electric Co. (“GE”) in the United States District Court for the District of Massachusetts, asserting infringement of the ′311 patent. The district court granted summary judgment of noninfringement as to claims 1, 5, 6, and 7 and invalidity as to claim 2. TurboCare appealed. We affirm the district court's judgment of invalidity as to claim 2, and we affirm-in-part and vacate-in-part the district court's judgment of noninfringement as to claims 1, 5, 6, and 7. We remand for further consideration of the infringement issues and consideration of the validity of claims 1, 5, 6, and 7 in light of our claim construction.

I

The ′311 patent describes an improved labyrinth-type shaft seal for use in fluid-driven devices such as steam turbines. Steam turbines are typically divided into stages that are separated by internal walls known as diaphragms. The diaphragms include nozzles for steam passage and central openings for the rotating shaft. The nozzles are designed to direct the steam at the working surfaces of the blades in the next stage; it is therefore preferable to channel all available steam through the nozzles. Steam may, however, leak through the central opening in the diaphragm along the rotating shaft, thereby reducing the efficiency of the turbine. Labyrinth-type shaft seals (also known as packing rings) are used to reduce leakage along the shaft.

The seals reduce leakage along the shaft by minimizing the clearance between the rotating shaft and the stationary turbine casing or diaphragm. Figure 1 is a cross-section of the claimed seal ring, and Figure 2 is a cross-section of the turbine:

Image 1 within TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co.
Image 1 (2.54" X 2.82") Available for Offline Print

Image 2 within TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co.
Image 2 (2.75" X 2.72") Available for Offline Print

In the figures, the seal ring 13 is supported by a groove in the casing 12 and forms a segmented ring surrounding the shaft 11. A number of seal ring teeth 14 extend toward the shaft, thereby reducing the clearance between the shaft and the casing. Because of the small clearance between the rotating shaft and the seal ring teeth, labyrinth-type shaft seals are vulnerable to rubbing damage caused by turbine misalignment, vibration, and thermal distortion during low load conditions, starting, and shutdown. Prior art sealing systems attempted to limit rubbing damage while still minimizing leakage along the shaft by various means, including using specialized materials, modifying the seal teeth geometry, spring-loading the seal, and restricting the seal's movement.

Ronald E. Brandon, the inventor of the ′311 patent, conceived of a two-position labyrinth-type seal to resolve the rubbing damage problem. During low load conditions, starting, and shutdown, the claimed seal maintains a large clearance position, thereby minimizing contact between the seal ring teeth and the turbine shaft during those periods of shaft instability. During normal operating conditions, the claimed seal maintains a small clearance position, thereby preventing or reducing leakage along the shaft. Figure 1 shows Brandon's seal segment in the small clearance position.

Brandon's preferred embodiment employs compressed S-shaped springs 16 interposed between the ends of the seal ring segments. Those springs apply a circumferential force, biasing the ring segments toward the large clearance position. As the turbine accelerates, the steam pressure on the seal ring increases so that the bias of the springs is overcome and the seal ring segments move radially inward to the small clearance position. In Figure 1, the steam flows from left to right between the casing 12 and the shaft 11. The relevant steam path runs through annular spaces 24 and 15 via one or more local openings 23. The space at the top of the seal segment does not communicate with annular space 25, because a leak-resistant contact pressure seal is formed between the neck of the seal segment and the casing shoulder at 12a. That pressure seal forms when the seal ring segment is pushed sideways as a result of the axial steam pressure on the high pressure side of the seal segment.

As the radial steam pressure at the top of the seal segment builds, it overcomes both the force of the compressed spring and the friction created by the leak-resistant contact pressure seal and moves the seal to the small clearance position. In that position, the seal reduces the leakage of steam through the central opening of the diaphragm and therefore increases the passage of steam through the nozzle.

In the preferred embodiment, the movement of the seal is restricted by contact between certain surfaces. Figure 1 shows the seal ring segment in the small clearance position. In that position, the inward facing surface of the outer ring portion of the seal ring segment 13b is in contact with the casing shoulders 17. When the seal ring segment is in the large clearance position, the outward facing surface of the inner ring portion of the seal ring segment 20a is in contact with the inward facing surface of the casing 21a.

The ′311 patent claims, in pertinent part:

1. In an elastic fluid turbine employing seals to minimize leakage between rotating and stationary components, an improvement in the seal arrangement utilizing the combination of:

a segmented seal ring supported by and at least partially contained in an annular groove formed in a stationary casing to permit motion of said seal ring between a large diameter position and a small diameter position corresponding respectively to large and small clearance of said seal ring with regard to the rotating shaft, said seal ring groove being partially defined by a pair of opposing, spaced apart shoulders on said casing which form an opening of said groove extending radially into the clearance area between said casing and said rotating shaft;

each segment of said seal ring including an inner arcuate portion h[a]ving seal teeth extending therefrom in the direction of and adjacent to said rotating shaft, a radially outwardly facing arcuate surface on said seal ring segment which is located opposite to a radially inward facing arcuate surface of said casing for limiting said large clearance position by contact between said opposing surfaces, an outer ring portion disposed within said seal ring groove for both axial and radial movement therein and having a pair of shoulders, extending axially in opposite directions for making radial contact respectively with said pair of spaced apart shoulders on said casing and thereby limiting said small clearance position, and a neck portion connected between said inner arcuate portion and said outer ring portion and extending between said casing shoulders, said neck portion having an axial thickness which is less than the distance between said opposing casing shoulders to thereby axially locate said seal ring segment against one of said casing shoulders and provide a contact pressure seal at the said neck portion which is subject to lower turbine fluid pressure; and

a radial positioning means comprising a compressed spring means biased against said ring segments to forcibly cause said segments to move to said large clearance position, while working fluid which is freely admitted to the annular space between said casing and said ring segments will urge said segments toward said small clearance position, whereby at low speed and small turbine loads the spring forces will predominate, while at high flows and high working fluid pressure the pressure forces will predominate.

2. A fluid turbine seal arrangement as recited in claim 1, wherein said spring means include a flat spring interposed between said casing shoulders and an inner surface of said outer ring portion of said ring segment.

TurboCare has also asserted dependent claims 5, 6, and 7. On appeal, however, TurboCare has not made separate legal arguments with respect to those claims.

Four GE products are accused of infringement. The parties refer to them as (1) the Original Version, (2) the 1992 N-2 Version, (3) the 1992 Diaphragm Version, and (4) the 1995 Version. The structure of those devices is undisputed in several key respects. Each employs flat springs interposed between the casing shoulders and the inner surface of the outer ring portion of the ring segments. Those springs apply a radial rather than circumferential force. Like the S-shaped springs of the preferred embodiment, however, the flat springs bias the ring segments toward the large clearance position. As the steam load on a GE turbine rises, the pressure on the seal ring increases until the bias of the springs is overcome and the seal ring segments move radially inward to the small clearance position.

The steam path in the GE products is somewhat different than in the preferred embodiment. Two accused products (the Original Version and the 1992 N 2 Version) have drilled holes in the casing above the seal segment to admit steam. One accused product (the 1992 Diaphragm Version) has a drilled hole in the seal segment itself. And the final product (the 1995 Version) has a drilled hole in the casing below the seal segment, but not in the casing shoulder.

The small and large clearance positions are also defined somewhat differently in the various accused products. The Original Version includes separate sealing structures (referred to as “side seals”) between the inward facing surface of the outer ring portion of the seal ring segment and the casing shoulders. Thus, the small clearance position is defined by contact between the side seals and the seal ring segment. The 1992 N-2 Version includes similar side seal structures as well as dowels that allow the seal to be adjusted to accommodate non-standard and out-of-round conditions of the casing. The small clearance position is therefore defined by contact between the side seals and the dowels. The 1992 Diaphragm Version and the 1995 Version both include dowels but not side seals. The small clearance position in those devices is therefore defined by contact between the dowels and the casing shoulders. In addition, while the 1992 Diaphragm Version and the 1995 Version define the large clearance position by contact between the outward facing surface of the inner ring portion of the seal ring segment and the inward facing surface of the casing, the Original Version and the 1992 N-2 Version define the large clearance position by contact between the top of the seal ring segment and the casing groove.

On GE's motion for summary judgment, the district court held claim 2 invalid for lack of an adequate written description. During prosecution, Brandon amended his specification to refer to flat springs and also added a new claim, claim 2, which was directed to a shaft seal with a flat spring interposed between the casing shoulder and the inner surface of the outer ring portion of the ring segment. The district court found that the amendment to the specification did not merely clarify what was already reasonably disclosed in the application, but rather constituted new matter. Consequently, the court held claim 2 invalid as not supported by the original specification.

In construing the term “radial positioning means” in claim 1, the district court refused to consider the new matter that was added to the specification. That new matter included the explicit reference to flat springs, the disclosure of an alternative location for those springs and the words “for example,” which were added to the statement: “The openings 23[ ] may, for example, be made by local cutouts in the high pressure side of shoulder 12a.” The district court therefore concluded that claim 1 and the dependent claims did not cover a shaft seal with flat springs interposed between the casing shoulder and the inner surface of the outer ring portion of the ring segment. Specifically, the district court interpreted the term “radial positioning means” as including structures containing the following features: (1) S-shaped springs or their equivalent; (2) located at each end of each seal segment and exerting a circumferential force against the segments to cause the seal to be positioned in a large clearance position; and (3) cutouts or their equivalents that admit steam to the top of the segments through the area between the neck of the seal and the casing shoulder, thereby causing the seal to move to the small clearance position. The district court also interpreted the terms “small clearance position” and “large clearance position” to require contact between the relevant surfaces shown in Figure 1 of the patent.

Based on its claim construction, the district court granted summary judgment of noninfringement, holding that none of the accused GE devices literally infringed claims 1, 5, 6, or 7. With respect to the doctrine of equivalents, the court held that Brandon had distinguished his invention from prior art devices that employed leaf (or flat) springs and drilled holes in the casing, and that TurboCare therefore could not establish that GE's accused devices infringed the ′311 patent under the doctrine of equivalents.

II

TurboCare first challenges the district court's conclusion that new matter was added to the specification of the ′311 patent and that claim 2 is therefore invalid for failing to satisfy the written description requirement of section 112, paragraph 1. The written description requirement and its corollary, the new matter prohibition of 35 U.S.C. § 132, both serve to ensure that the patent applicant was in full possession of the claimed subject matter on the application filing date. When the applicant adds a claim or otherwise amends his specification after the original filing date, as Brandon did in this case, the new claims or other added material must find support in the original specification. Schering Corp. v. Amgen Inc., 222 F.3d 1347, 1352, 55 USPQ2d 1650, 1653 (Fed.Cir.2000) (“The fundamental inquiry is whether the material added by amendment was inherently contained in the original application.”); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed.Cir.1991) (“[T]he test for sufficiency of support ... is whether the disclosure of the application relied upon ‘reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.’ ”) (quoting Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed.Cir.1985)).

Claim 2 is directed to a “fluid turbine seal arrangement as recited in claim 1, wherein said spring means include a flat spring interposed between said casing shoulders and an inner surface of said outer ring portion of said ring segment.” GE asserts that claim 2 is unsupported by the original disclosure in two respects-the type of spring to be used and its location.

Brandon's original disclosure stated that a “considerable variety of springs 16 can be employed. They must be selected to have long life and stable characteristics while exposed to high temperatures, vibration and possible corrosive conditions. Flat, S-shaped springs are illustrated, but others can be employed.” The last sentence was amended during prosecution to read: “S-shaped springs are illustrated, but flat springs and others can be employed.” GE asserts that this amendment introduced new matter, namely flat springs. TurboCare counters that the amendment constituted a mere clarification of the original disclosure, since flat springs were not illustrated, but were among those that the specification indicated could be used. TurboCare adds that one of ordinary skill in the art would readily understand that flat springs could be used to perform the required function of pushing the ring segments away from the shaft.

While Brandon's original disclosure is not a model of clarity, neither is it so obscure that no reasonable juror could conclude that flat springs were sufficiently disclosed. Brandon stated that a “considerable variety of springs” could be employed, and he used the general term “spring” when describing his invention. Moreover, it is at least plausible that the amendment served merely to clarify that flat springs were not illustrated. After reviewing the evidence of record on this issue, we conclude that there is an issue of fact as to whether Brandon's amendment, which explicitly discloses flat springs, added new matter to the specification. Consequently, we cannot uphold the district court's summary judgment of invalidity as to claim 2 based on the asserted inadequacy of the original disclosure as to the type of spring used in the seal.

With respect to the location of the springs, Brandon's original written description identified only one location-“[s]prings 16, are located at each end of each seal ring segment in a compressed condition.” However, one of Brandon's original claims provided that “the positioning means ... is a spring located between seal ring segments or adjacent to said rings.” The examiner rejected that claim as indefinite because “the terms ‘located between’ and (‘or’) ‘adjacent to’ do not describe the same condition.” In response, Brandon amended his claims to describe generally a “radial positioning means comprising a compressed spring means biased against said ring segments.” New dependent claims were added, specifying that “said spring means include a flat spring interposed between said casing shoulders and an inner surface of said outer ring portion of said ring segment” (claim 2) and that, alternatively, “said spring means include a compressed spring interposed between the ends of said ring segments to bias said ring segments to move to said large clearance position” (claim 4). TurboCare admits that the only support in the original disclosure for the location of the spring in claim 2 is the “spring located ... adjacent to said rings” language from one of the original, rejected claims.

TurboCare contends that one of ordinary skill in the art would recognize that the only viable location for mounting a spring “adjacent to said rings” would be between the casing shoulders and the shoulders of the outer ring portion of the segment, and therefore that the claimed subject matter was inherent in the original disclosure. To support its contention, TurboCare offers the conclusory statements of its expert witness, Mr. Shifler, to that effect.

In order for a disclosure to be inherent, “the missing descriptive matter must necessarily be present in the [original] application's specification such that one skilled in the art would recognize such a disclosure.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159, 47 USPQ2d 1829, 1834 (Fed.Cir.1998). Brandon's original disclosure is completely lacking in any description of an embodiment in which the spring is located between the casing shoulders and the inner surface of the outer ring portion of the ring segment. Such an embodiment may have been obvious from Brandon's vague reference to a “spring located ... adjacent to said rings.” As we held in Lockwood v. American Airlines, Inc., 107 F.3d 1565, 41 USPQ2d 1961 (Fed.Cir.1997), however, that is not enough to satisfy the written description requirement:

While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.

Id. at 1572, 41 USPQ2d at 1966. No reasonable juror could find that Brandon's original disclosure was sufficiently detailed to enable one of skill in the art to recognize that Brandon invented what is claimed.

Because Brandon did not file a continuation-in-part application, he cannot rely on any alternative filing date for his newly added claim 2. See Augustine Med., Inc. v. Gaymar Indus., 181 F.3d 1291, 1302, 50 USPQ2d 1900, 1908 (Fed.Cir.1999) (“A CIP application contains subject matter from a prior application and may also contain additional matter not disclosed in the prior application.... Different claims of such an application may therefore receive different effective filing dates.”); see also 35 U.S.C. § 120. Consequently, claim 2 is invalid for an inadequate written description. See Reiffin v. Microsoft Corp., 214 F.3d 1342, 1346, 54 USPQ2d 1915, 1917 (Fed.Cir.2000) (compliance with the written description requirement requires that the original application considered as a whole describe the invention claimed in the patent resulting from that application); Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479-80, 45 USPQ2d 1498, 1502-04 (Fed.Cir.1998) (invalidating amended claims not supported by the original application). We therefore uphold the district court's ruling that claim 2 is invalid for failing to satisfy the written description requirement.

III

TurboCare also challenges the district court's conclusion on summary judgment that none of the accused GE devices infringes claims 1, 5, 6, or 7, either literally or equivalently.

A

The first step in the infringement analysis is to determine the meaning and scope of the patent claims asserted to be infringed. TurboCare contests the district court's construction of three terms used in the claims: (1) radial positioning means; (2) large clearance position; and (3) small clearance position.

Radial Positioning Means

Brandon's independent claim 1 provides in relevant part:

a radial positioning means comprising a compressed spring means biased against said ring segments to forcibly cause said segments to move to said large clearance position, while working fluid which is freely admitted to the annular space between said casing and said ring segments will urge said segments toward said small clearance position, whereby at low speed and small turbine loads the spring forces will predominate, while at high flows and high working fluid pressure the pressure forces will predominate.

Because the term “radial positioning means” uses the word “means,” it is presumptively subject to section 112, paragraph 6. Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427, 44 USPQ2d 1103, 1109 (Fed.Cir.1997). However, the claim recites sufficient structure to overcome that presumption.

The claim states that the function of the “radial positioning means” is to position the ring segments “whereby at low speed and small turbine loads the spring forces will predominate, while at high flows and high working fluid pressure the pressure forces will predominate.” The claim recites two structures for achieving that function: (1) a compressed spring means and (2) working fluid. The claim also describes how those structures act to achieve the claimed function-the compressed spring means is biased against the ring segment while the working fluid is freely admitted to the space between the casing and the ring segment. As the court explained in the Sage Products case, “where a claim recites a function, but then goes on to elaborate sufficient structure, material, or acts within the claim itself to perform entirely the recited function, the claim is not in means-plus-function format.” 126 F.3d at 1427-28, 44 USPQ2d at 1109.

While it is true that the “compressed spring means,” which is one of the elements of the “radial positioning means” also uses the term “means,” we conclude that it, too, does not invoke section 112, paragraph 6. The claim states that the function of the compressed spring means is “to forcibly cause said segments to move to said large clearance position.” The claim then recites structure to achieve that function-a compressed spring biased against the seal ring segment. Although the term “spring” has a functional connotation, a “compressed spring” denotes a type of device with a generally understood meaning in the mechanical arts. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583, 39 USPQ2d 1783, 1786 (Fed.Cir.1996) (construing the term “detent mechanism” as not invoking section 112, paragraph 6, because it is generally understood in the mechanical arts to describe structure). There is nothing in the specification or the prosecution history suggesting that the patentee used the term “compressed spring means” generally to refer to any structure that can perform a biasing function; on the contrary, both the specification and the prosecution history disclose only a type of device denoted as a “spring” or a “compressed spring.” In these circumstances, the term “compressed spring means” is not subject to section 112, paragraph 6.

Our decision in Unidynamics v. Automatic Products International, Ltd., 157 F.3d 1311, 48 USPQ2d 1099 (Fed.Cir.1998), is consistent with the conclusion we reach in this case. In Unidynamics, we concluded that the claim language “spring means tending to keep the door closed” was in means-plus-function form and therefore governed by section 112, paragraph 6. The specification in Unidynamics stated that a “spring” was only one example of a “spring means,” which indicated that the claim term “spring means” was broader than the meaning of the term “spring” generally recognized in the mechanical arts. Thus, we concluded that the patentee in Unidynamics defined spring means functionally as anything that performs a springing or biasing function.

In this case, by contrast, the claim recites a particular kind of spring-a “compressed spring”-and the specification makes clear that the claim term “compressed spring means” was used to denote structure, not function. The preferred embodiment uses S-shaped compressed springs. The specification adds that other types of springs can be employed, but there is no suggestion that the claim was meant to include biasing mechanisms other than springs. Accordingly, we conclude that the patentee in this case has defined “compressed spring” to refer to a particular type of device. Because neither the term “radial positioning means” nor the term “compressed spring means” is subject to section 112, paragraph 6, those limitations are not restricted by the corresponding structures disclosed in the specification and their equivalents.

GE concedes that a flat spring is a type of compressed spring, as that term is generally understood. Nonetheless, GE asserts that Brandon disclaimed the use of flat springs in the course of the prosecution and that flat springs are therefore not covered by the claims.

During prosecution, the examiner rejected Brandon's claims as anticipated by a British patent issued to Warth. Warth's patent specifically disclosed the use of flat (or leaf) springs interposed between the casing shoulder and the inner surface of an outer ring portion of the seal segment. In distinguishing Warth, Brandon stated:

In summary, Applicant's invention is essentially a two-position packing ring system. That is, at low speeds and low loads it is fixed at a large clearance position. When a low, predetermined load, and pressure condition is reached, the ring moves swiftly to its small clearance position. This is a significant distinction over Warth's system that employs leaf springs with nearly frictionless ring segments that gradually allow the ring clearance to lessen as load is increased.

GE argues that this statement disclaims all embodiments employing flat (or leaf) springs.

GE reads too much into the prosecution history. The clear thrust of Brandon's argument was that his invention is a two-position packing ring system, while Warth's invention is a multiple-position packing ring system. Brandon described Warth's invention as including an equalizing passage through the seal segment, which was designed to reduce the axial fluid pressure and allow the space at the top of the seal segment to communicate with the annular space on the low pressure side of the seal segment. According to Brandon, the equalizing passage enabled the Warth seal to assume a medium clearance position as well as a small and large clearance position, which had certain disadvantages that were cured by his two-position seal. Whether or not Warth employed flat springs was irrelevant to that distinction. In fact, in the same response, Brandon added a claim specifically directed to flat springs. The addition of that claim further indicates that Brandon was not disclaiming all embodiments employing flat springs. Instead, it appears that Brandon was simply noting that while Warth's invention used flat springs, it was otherwise distinguishable from the claimed invention. We therefore conclude that the term “compressed spring means” should be construed to include flat (or leaf) springs, because such springs are within the generally understood meaning of that term and because Brandon did not disclaim such springs or otherwise indicate that a special meaning should be given to the term “compressed spring means.”

Finally, GE argues that the “compressed spring means” limitation includes a stricture on the location of the spring. However, there is no such limitation in claim 1. On the contrary, dependent claims 2 and 4 add such a limitation, providing that the springs must either be interposed between the casing shoulders and an inner surface of the outer ring portion of the ring segment, or be interposed between the ends of the ring segments.

The “radial positioning means” limitation of claim 1 also recites the use of “working fluid which is freely admitted to the annular space between said casing and said ring segments.” In construing that term, it is appropriate to consider the “for example” language that was added to the specification during prosecution of the ′311 patent. Although the district court concluded that the amendment added new matter, the amendment actually added no more than the concept, originally disclosed, that “[v]arious other modifications of the invention may occur to those skilled” in the art. ′311 patent, col. 5, ll. 17-18.

With respect to the “working fluid” limitation, GE argues that Brandon disclaimed certain steam pathway configurations when he distinguished the Warth prior art reference. In distinguishing Warth, Brandon stated that “[d]rilled holes above the ring, as used in Warth, are unnecessary since this space already communicates to the upstream pressure by way of slots [cutouts] in the ring and holder.” According to GE, that statement disclaims all embodiments that do not employ cutouts in the casing shoulder for steam passage.

Brandon made several arguments to distinguish Warth, including the argument that his invention did not require “drilled holes above the ring.” Brandon thus represented to the public in clear and definite terms that his invention did not require any such holes. See Watts v. XL Sys., Inc., 232 F.3d 877, 883, 56 USPQ2d 1836, 1840 (Fed.Cir.2000) (holding that the patentee limited his invention by arguments made to distinguish the primary reference cited by the examiner). TurboCare cannot now retreat from that position in asserting the Brandon patent against GE. However, Brandon's statement about Warth should not be construed unduly broadly. Brandon characterized his invention as not employing drilled holes above the ring, but he did not characterize it as lacking drilled holes altogether or as requiring local cutouts in the high pressure side of the casing shoulder. Claim 1 requires that steam or working fluid be freely admitted to the annular space between the casing and the ring segments. In accordance with Brandon's characterization of his invention in the course of the prosecution, the “working fluid” limitation should be construed to exclude devices in which steam is admitted to the space between the casing and ring segments through a drilled hole above the ring. But that limitation should not be interpreted to exclude any device in which steam is admitted through a drilled hole, regardless of where the drilled hole is located.

Large Clearance Position

The parties also dispute the meaning of the term “large clearance position.” Claim 1 provides in relevant part:

each segment of said seal ring including ... a radially outwardly facing arcuate surface on said seal ring segment which is located opposite to a radially inward facing arcuate surface of said casing for limiting said large clearance position by contact between said opposing surfaces....

The district court construed the “large clearance position” limitation as requiring that the outward facing surface of the inner ring portion of the seal ring segment touch the inward facing surface of the casing shoulders when the seal is in the large clearance position. TurboCare argues that there is nothing in the specification or prosecution history supporting such a restriction. The plain language of claim 1 requires only contact between an outward facing surface of the seal ring segment and an inward facing surface of the casing. There is no basis for reading a limitation from the preferred embodiment into the language of the claim. See Laitram Corp. v. Cambridge Wire Cloth Co., 863 F.2d 855, 865, 9 USPQ2d 1289, 1299 (Fed.Cir.1988) ( “References to a preferred embodiment, such as those often present in a specification, are not claim limitations.”). That is particularly true where another claim restricts the invention in exactly the manner suggested by the district court's narrow claim construction. See Beachcombers v. WildeWood Creative Prods., Inc., 31 F.3d 1154, 1162, 31 USPQ2d 1653, 1659 (Fed.Cir.1994) (a claim construction rendering a dependent claim superfluous is presumptively unreasonable). While the “large clearance position” certainly encompasses the preferred embodiment, it also encompasses an arrangement in which there is contact between the outward facing surface of the outer ring portion of the seal ring segment (i.e., the top of the seal) and the inward facing surface of the casing groove.

Small Clearance Position

The parties dispute the meaning of the terms “small clearance position” and “contact.” Claim 1 provides in relevant part:

each segment of said seal ring including ... an outer ring portion disposed within said seal ring groove for both axial and radial movement therein and having a pair of shoulders, extending axially in opposite directions for making radial contact respectively with said pair of spaced apart shoulders on said casing and thereby limiting said small clearance position....

TurboCare does not dispute that the small clearance position limitation requires contact between the inward facing surface of the outer ring portion of the seal ring segment and the outward facing surface of the casing shoulders. It does dispute, however, the meaning of the term “contact.” The district court construed that term as meaning direct contact, i.e. touching. In addition, the district court seemed to indicate that certain types of indirect contact such as indirect contact through “solely passive pads or buffers ... to adjust the degree of clearance or compensate for wear and tear” would also constitute “contact” as that term is used in the claims of the ′311 patent. TurboCare asserts that all indirect contact is “contact” within the meaning of the claims.

TurboCare points to language in the specification in which Brandon referred to “direct contact” between the neck of the seal segment and the casing. ′311 patent, col. 2, ll. 62-64. TurboCare argues that this language implies that when Brandon used the term “contact” alone, he must have meant something other than direct contact. The language to which TurboCare directs us, however, is found in a discussion of the pressure seal that is formed between the neck of the seal segment and the casing as a result of axial fluid pressure. The use of the term “direct contact” to denote a pressure seal does not suggest that when the term “contact” is used elsewhere in the patent it must encompass objects that are in indirect contact, i.e., objects that do not touch one another but have other objects interposed between them. In the absence of a special definition of the term “contact” in the specification, that term should be given its ordinary and accustomed meaning. The district court properly construed the term, according to its ordinary meaning, to mean “touching.” Whether so-called “indirect contact” could give rise to infringement is an issue of equivalency.

B

The second step in the infringement analysis is comparing the properly construed claims to the devices accused of infringing. There are four GE devices accused of infringement: (1) the Original Version, (2) the 1992 N-2 Version, (3) the 1992 Diaphragm Version, and (4) the 1995 Version. The different devices raise different infringement issues.

The Original Version and the 1992 N-2 Version
These devices do not infringe claim 1 as construed. They both have a drilled hole above the ring to admit steam into the space at the top of the seal segment. As we have discussed, Brandon disclaimed that type of arrangement during prosecution, and it is therefore not within the scope of the claims as properly construed. Nor is the doctrine of equivalents available with a respect to these devices in light of Brandon's express disavowal of coverage. See SciMed Life Sys. v. Advanced Cardiovascular Sys., 242 F.3d 1337, 1345-47, 58 USPQ2d 1059, 1066-68 (Fed.Cir.2001).

1992 Diaphragm Version and the 1995 Version

The remaining two devices, the 1992 Diaphragm Version and the 1995 Version, do not literally infringe claim 1 as construed. The 1992 Diaphragm Version has a drilled hole through the seal segment to admit steam into the space at the top of the seal segment. In distinguishing the Warth patent, Brandon disclaimed only those devices with drilled holes above the ring. Because steam is freely admitted through the drilled hole in the ring segment to the annular space between the casing and the ring segment, and because Brandon did not disclaim that structure, the 1992 Diaphragm Version satisfies the “working fluid” limitation. In addition, the 1992 Diaphragm Version includes a spring means-in this case, flat springs-biased against the ring segments to forcibly cause the segments to move to the large clearance position. That device therefore falls within the literal scope of the radial positioning means limitation.

GE does not contest that the 1992 Diaphragm Version meets the large clearance position limitation, with contact between an outward facing surface of the seal ring segment and an inward facing surface of the casing. It does, however, contend that the device does not meet the small clearance position limitation.

The 1992 Diaphragm Version includes dowels that are attached to the shoulders of the outer ring portion of the seal ring segment. The purpose of the dowels is to accommodate variations in the casing. However, the dowels also prevent the inward facing surface of the outer ring portion of the seal ring segment from touching the outward facing surface of the casing shoulders. Because those two surfaces are not touching, the 1992 Diaphragm Version does not literally infringe claim 1.

The 1995 Version also does not literally infringe claim 1 as construed. Although it meets the other limitations of claim 1 of the ′311 patent, it does not satisfy the small clearance position limitation for the same reasons as the 1992 Diaphragm Version.

TurboCare argues that even if there is no literal infringement, the 1992 Diaphragm Version and the 1995 Version infringe the ′311 patent under the doctrine of equivalents. GE counters that the doctrine of equivalents is foreclosed by prosecution history estoppel. Brandon's original independent claim 1 did not include a “contact” limitation, although it did refer to a “small diameter position corresponding to ... small clearance of the seal ring with regard to the rotating shaft or rotor.” In response to a rejection based on the Warth patent, Brandon cancelled that claim and added a new independent claim that specifically defined the “small diameter” or “small clearance” position with reference to contact between certain surfaces. GE argues that Brandon narrowed his claims by virtue of that amendment and that no range of equivalents is therefore available. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 56 USPQ2d 1865 (Fed.Cir.2000) (en banc), cert. granted, 533 U.S. 915, 121 S.Ct. 2519, 150 L.Ed.2d 692 (2001). However, that is true only if Brandon did in fact narrow the literal scope of his claims. See Festo, 234 F.3d at 587-88, 56 USPQ2d at 1889-90.

The small clearance position limitation was present in the original claim. Although the cancelled claim did not specifically state that the small clearance position was delineated by “contact” between certain surfaces, that was the meaning that the patentee gave the term “small diameter position” in the specification:

As load is increased, the fluid pressure increases proportionately around the rings in such fashion ... to cause the springs to be compressed and the seal ring segments to move radially inward until restrained by contact at surface 17. The dimensions of the seal ring and surface 17 on the casing are selected to create the smallest clearance between the teeth 14 and the rotor surface determined to be practical for loaded, relatively steady state operation.

′311 patent, col. 3, ll. 15-23 (emphasis added). The specification also states that the seal segment depicted in Figure 1 of the patent is shown in a “small clearance condition.” Id., col. 3, ll. 24-25. That figure shows the relevant surfaces touching. Here, the newly added claim only redefined the small clearance position limitation without narrowing the claim. Therefore Festo is not applicable.

Thus, the issue with respect to the doctrine of equivalents is whether the intrusion of the dowels between the casing and the ring segments creates any substantial differences between the claimed invention and the accused devices. In light of our claim construction, it is not clear that TurboCare cannot prevail on its doctrine of equivalents argument by showing that the 1992 Diaphragm Version or the 1995 Version devices is insubstantially different from the claimed invention. We therefore remand to the district court to address TurboCare's doctrine of equivalents argument with respect to GE's 1992 Diaphragm Version and 1995 Version devices.

IV

In summary, we affirm the district court's ruling that claim 2 is invalid for an inadequate written description. We also affirm the court's ruling that neither the Original Version, nor the 1992 N-2 Version infringes claims 1, 5, 6, or 7, literally or under the doctrine of equivalents. We further affirm the district court's ruling that neither the 1992 Diaphragm Version nor the 1995 Version literally infringes claims 1, 5, 6, or 7. We remand the case to the district court to consider whether the 1992 Diaphragm Version or the 1995 Version infringes the ′311 patent under the doctrine of equivalents and to consider the validity of claims 1, 5, 6, and 7 in light of our claim construction.

Each party shall bear its own costs for this appeal.

AFFIRMED IN PART, VACATED IN PART, AND REMANDED.

AME 40590 Homeworks, Spring 2011

2011-04-08T17:33:01Z

Bill Goodwine: /* Due Monday, April 11, 2011 */

AME 40590 Intellectual Property for Engineers

2011-04-08T17:32:48Z

Bill Goodwine: /* ALPHABETICAL LISTING OF CASES */

=ALPHABETICAL LISTING OF CASES=

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**[[In Re Bilski, Newman dissenting opinion]]
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**[[In Re Bilski, Rader dissenting opinion]]
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*[[US v. Adams (full text)]]
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**[[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
**[[Warner-Jenkinson v. Hilton Davis Respondent Brief]]
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=[[INTRODUCTION]]=
This is a summary. Click on the title for the full chapter: [[INTRODUCTION]]

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special appeals court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the Constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[NONOBVIOUSNESS]]=
This is a summary. Click on the title for the full chapter: [[NONOBVIOUSNESS]]

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[INFRINGEMENT]]=
This is a summary. Click on the title for the full chapter: [[INFRINGEMENT]]

=[[THE PATENT DOCUMENT]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT DOCUMENT]]

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
This is a summary. Click on the title for the full chapter: [[NOVELTY]]

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

Outline:
*Literal Infringement
*The Doctrine of Equivalents

=[[UTILITY]]=
This is a summary. Click on the title for the full chapter: [[UTILITY]]

=[[PATENTABLE SUBJECT MATTER]]=
This is a summary. Click on the title for the full chapter: [[PATENTABLE SUBJECT MATTER]]

Can computer programs, algorithms, laws of nature, life forms, plants, ''etc.'' be patented. In particular, are the following patentable:

* Plants
* Algorithms and Computer Programs
* Scientific Facts?

In a recent case
* State Street (1998)
the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

=[[FOREIGN AND DOMESTIC PRIORITY]]=
This is a summary. Click on the title for the full chapter: [[FOREIGN AND DOMESTIC PRIORITY]]

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT APPLICATION]]

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=[[INVENTOR ELIGIBILITY]]=
This is a summary. Click on the title for the full chapter: [[INVENTOR ELIGIBILITY]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=[[ANTICIPATION]]=
This is a summary. Click on the title for the full chapter: [[ANTICIPATION]]

=[[PRIOR ART]]=
This is a summary. Click on the title for the full chapter: [[PRIOR ART]]

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)

2011-04-08T15:21:28Z

Bill Goodwine:

United States Court of Appeals, Federal Circuit.

VAS-CATH INCORPORATED and Gambro, Inc., Plaintiffs-Appellees,
v.
Sakharam D. MAHURKAR, and Quinton Instruments Company, Defendants-Appellants.

Nos. 90-1528, 91-1032.
June 7, 1991.
Rehearing Denied July 8, 1991.
Suggestion for Rehearing In Banc
Declined July 29, 1991.

Before RICH, MICHEL and PLAGER, Circuit Judges.

RICH, Circuit Judge.

Sakharam D. Mahurkar and Quinton Instruments Company (collectively Mahurkar) appeal from the September 12, 1990 partial final judgment<ref>The district court directed entry of final judgment as to the issue of patent invalidity pursuant to Fed.R.Civ.P. 54(b).</ref> of the United States District Court for the Northern District of Illinois, Easterbrook, J., sitting by designation, in Case No. 88 C 4997. Granting partial summary judgment to Vas-Cath Incorporated and its licensee Gambro, Inc. (collectively Vas-Cath), the district court declared Mahurkar's two United States utility patents Nos. 4,568,329 ('329 patent) and 4,692,141 ('141 patent), titled “Double Lumen Catheter,” invalid as anticipated under 35 U.S.C. § 102(b). In reaching its decision, reported at 745 F.Supp. 517, 17 USPQ2d 1353, the district court concluded that none of the twenty-one claims of the two utility patents was entitled, under 35 U.S.C. § 120, to the benefit of the filing date of Mahurkar's earlier-filed United States design patent application Serial No. 356,081 ('081 design application), which comprised the same drawings as the utility patents, because the design application did not provide a “written description of the invention” as required by 35 U.S.C. § 112, first paragraph. We reverse the grant of summary judgment with respect to all claims.

BACKGROUND

Sakharam Mahurkar filed the '081 design application, also titled “Double Lumen Catheter,” on March 8, 1982. The application was abandoned on November 30, 1984. Figures 1-6 of the '081 design application are reproduced below.

NOTE: This case contained images. Please see the patent for the details.

As shown, Mahurkar's catheter comprises er comprises a pair of tubes (lumens) designed to allow blood to be removed from an artery, processed in an apparatus that removes impurities, and returned close to the place of removal. Prior art catheters utilized concentric circular lumens, while Mahurkar's employs joined semi-circular tubes that come to a single tapered tip. Advantageously, the puncture area of Mahurkar's semicircular catheter is 42% less than that of a coaxial catheter carrying the same quantity of blood, and its conical tip yields low rates of injury to the blood. The prior art coaxial catheters are now obsolete; Mahurkar's catheters appear to represent more than half of the world's sales. 745 F.Supp. at 520, 17 USPQ2d at 1353-54.

After filing the '081 design application, Mahurkar also filed a Canadian Industrial Design application comprising the same drawings plus additional textual description. On August 9, 1982, Canadian Industrial Design 50,089 (Canadian '089) issued on that application.

More than one year later, on October 1, 1984, Mahurkar filed the first of two utility patent applications that would give rise to the patents now on appeal. Notably, both utility applications included the same drawings as the '081 design application.<ref>The utility patent drawings contain additional but minor shading and lead lines and reference numerals not present in the design application drawings.</ref> Serial No. 656,601 ('601 utility application) claimed the benefit of the filing date of the '081 design application, having been denominated a “continuation” thereof. In an Office Action mailed June 6, 1985, the Patent and Trademark Office (PTO) examiner noted that “the prior application is a design application,” but did not dispute that the '601 application was entitled to its filing date. On January 29, 1986, Mahurkar filed Serial No. 823,592 ('592 utility application), again claiming the benefit of the filing date of the '081 design application (the '592 utility application was denominated a continuation of the '601 utility application). In an office action mailed April 1, 1987, the examiner stated that the '592 utility application was “considered to be fully supported by applicant's parent application SN 356,081 filed March 8, 1982 [the '081 design application].” The '601 and '592 utility applications issued in 1986 and 1987, respectively, as the '329 and '141 patents, the subjects of this appeal. The independent claims of both patents are set forth in the Appendix hereto.

Vas-Cath sued Mahurkar in June 1988, seeking a declaratory judgment that the catheters it manufactured did not infringe Mahurkar's '329 and '141 utility patents.<ref>Vas-Cath's apprehension of suit apparently arose from a 1988 Canadian action instituted by Mahurkar for infringement of Canadian '089.</ref> Vas-Cath's complaint alleged, inter alia, that the '329 and '141 patents were both invalid as anticipated under 35 U.S.C. § 102(b) by Canadian '089. Vas-Cath's anticipation theory was premised on the argument that the '329 and '141 patents were not entitled under 35 U.S.C. § 120<ref>Section 120, titled “Benefit of Earlier Filing Date in the United States,” provides (emphasis ours):
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. </ref> to the filing date of the '081 design application because its drawings did not provide an adequate “written description” of the claimed invention as required by 35 U.S.C. § 112, first paragraph.

Mahurkar counterclaimed, alleging infringement. Both parties moved for summary judgment on certain issues, including validity. For purposes of the summary judgment motion, Mahurkar conceded that, if he could not antedate it, Canadian '089 would represent an enabling and thus anticipating § 102(b) reference against the claims of his '329 and '141 utility patents. 745 F.Supp. at 521, 17 USPQ2d at 1355. Vas-Cath conceded that the '081 design drawings enabled one skilled in the art to practice the claimed invention within the meaning of 35 U.S.C. § 112, first paragraph. Id. Thus, the question before the district court was whether the disclosure of the '081 design application, namely, the drawings without more, adequately meets the “written description” requirement also contained in § 112, first paragraph, so as to entitle Mahurkar to the benefit of the 1982 filing date of the '081 design application for his two utility patents and thereby antedates Canadian '089.

Concluding that the drawings do not do so, and that therefore the utility patents are anticipated by Canadian '089, the district court held the '329 and '141 patents wholly invalid under 35 U.S.C. § 102(b), id. at 524, 17 USPQ2d at 1358, and subsequently granted Mahurkar's motion for entry of a partial final judgment under Fed.R.Civ.P. 54(b) on the validity issue. This appeal followed.

DISCUSSION

The issue before us is whether the district court erred in concluding, on summary judgment, that the disclosure of the '081 design application does not provide a § 112, first paragraph “written description” adequate to support each of the claims of the '329 and '141 patents. If the court so erred as to any of the 21 claims at issue, the admittedly anticipatory disclosure of Canadian '089 will have been antedated (and the basis for the court's grant of summary judgment nullified) as to those claims.

In reviewing the district court's grant of summary judgment, we are not bound by its holding that no material facts are in dispute, and must make an independent determination as to whether the standards for summary judgment have been met. C.R. Bard, Inc. v. Advanced Cardiovascular Systems, 911 F.2d 670, 673, 15 USPQ2d 1540, 1542-43 (Fed.Cir.1990). Summary judgment will not lie if the dispute about a material fact is “genuine,” that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986).

The “Written Description” Requirement of § 112
The first paragraph of 35 U.S.C. § 112 requires that

[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

(Emphasis added). Application of the “written description” requirement, derived from the portion of § 112 emphasized above, is central to resolution of this appeal. The district court, having reviewed this court's decisions on the subject, remarked that “[u]nfortunately, it is not so easy to tell what the law of the Federal Circuit is.” 745 F.Supp. at 522, 17 USPQ2d at 1356. Perhaps that is so, and, therefore, before proceeding to the merits, we review the case law development of the “written description” requirement with a view to improving the situation.<ref>For additional background, see Rollins, “35 USC 120-The Description Requirement,” 64 J.Pat.Off.Soc'y 656 (1982); Walterscheid, “Insufficient Disclosure Rejections (Part III),” 62 J.Pat.Off.Soc'y 261 (1980).</ref>

The cases indicate that the “written description” requirement most often comes into play where claims not presented in the application when filed are presented thereafter. Alternatively, patent applicants often seek the benefit of the filing date of an earlier-filed foreign or United States application under 35 U.S.C. § 119 or 35 U.S.C. § 120, respectively, for claims of a later-filed application. The question raised by these situations is most often phrased as whether the application provides “adequate support” for the claim(s) at issue; it has also been analyzed in terms of “new matter” under 35 U.S.C. § 132. The “written description” question similarly arises in the interference context, where the issue is whether the specification of one party to the interference can support the claim(s) corresponding to the count(s) at issue, i.e., whether that party “can make the claim” corresponding to the interference count.

To the uninitiated, it may seem anomalous that the first paragraph of 35 U.S.C. § 112 has been interpreted as requiring a separate “description of the invention,” when the invention is, necessarily, the subject matter defined in the claims under consideration. See In re Wright, 866 F.2d 422, 424, 9 USPQ2d 1649, 1651 (Fed.Cir.1989). One may wonder what purpose a separate “written description” requirement serves, when the second paragraph of § 112 expressly requires that the applicant conclude his specification “with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

One explanation is historical: the “written description” requirement was a part of the patent statutes at a time before claims were required. A case in point is Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 5 L.Ed. 472 (1822), in which the Supreme Court affirmed the circuit court's decision that the plaintiff's patent was “deficient,” and that the plaintiff could not recover for infringement thereunder. The patent laws then in effect, namely the Patent Act of 1793, did not require claims, but did require, in its 3d section, that the patent applicant “deliver a written description of his invention, and of the manner of using, or process of compounding, the same, in such full, clear and exact terms, as to distinguish the same from all things before known, and to enable any person skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make, compound and use the same....” Id. at 430. In view of this language, the Court concluded that the specification of a patent had two objects, the first of which was “to enable artizans to make and use [the invention]....” Id. at 433. The second object of the specification was

to put the public in possession of what the party claims as his own invention, so as to ascertain if he claims anything that is in common use, or is already known, and to guard against prejudice or injury from the use of an invention which the party may otherwise innocently suppose not to be patented. It is, therefore, for the purpose of warning an innocent purchaser, or other person using a machine, of his infringement of the patent; and at the same time, of taking from the inventor the means of practising upon the credulity or the fears of other persons, by pretending that his invention is more than what it really is, or different from its ostensible objects, that the patentee is required to distinguish his invention in his specification.

Id. at 434.

A second, policy-based rationale for the inclusion in § 112 of both the first paragraph “written description” and the second paragraph “definiteness” requirements was set forth in Rengo Co. v. Molins Mach. Co., 657 F.2d 535, 551, 211 USPQ 303, 321 (3d Cir.), cert. denied, 454 U.S. 1055, 102 S.Ct. 600, 70 L.Ed.2d 591 (1981):

[T]here is a subtle relationship between the policies underlying the description and definiteness requirements, as the two standards, while complementary, approach a similar problem from different directions. Adequate description of the invention guards against the inventor's overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within his original creation. The definiteness requirement shapes the future conduct of persons other than the inventor, by insisting that they receive notice of the scope of the patented device.

With respect to the first paragraph of § 112 the severability of its “written description” provision from its enablement (“make and use”) provision was recognized by this court's predecessor, the Court of Customs and Patent Appeals, as early as In re Ruschig, 379 F.2d 990, 154 USPQ 118 (CCPA 1967). Although the appellants in that case had presumed that the rejection appealed from was based on the enablement requirement of § 112, id. at 995, 154 USPQ at 123, the court disagreed:

[T]he question is not whether [one skilled in the art] would be so enabled but whether the specification discloses the compound to him, specifically, as something appellants actually invented.... If [the rejection is] based on section 112, it is on the requirement thereof that “The specification shall contain a written description of the invention * * *.” (Emphasis ours.)

Id. at 995-96, 154 USPQ at 123 (first emphasis added). The issue, as the court saw it, was one of fact: “Does the specification convey clearly to those skilled in the art, to whom it is addressed, in any way, the information that appellants invented that specific compound [claimed]?” Id. at 996, 154 USPQ at 123.

In a 1971 case again involving chemical subject matter, the court expressly stated that “it is possible for a specification to enable the practice of an invention as broadly as it is claimed, and still not describe that invention.” In re DiLeone, 436 F.2d 1404, 1405, 168 USPQ 592, 593 (CCPA 1971) (emphasis added). As an example, the court posited the situation “where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B and C; yet the class consisting of A, B and C has not been described.” Id. at 1405 n. 1, 168 USPQ 593 n. 1 (emphases in original). See also In re Ahlbrecht, 435 F.2d 908, 911, 168 USPQ 293, 296 (CCPA 1971) (although disclosure of parent application may have enabled production of claimed esters having 2-12 methylene groups, it only described esters having 3-12 methylene groups).

The CCPA also recognized a subtle distinction between a written description adequate to support a claim under § 112 and a written description sufficient to anticipate its subject matter under § 102(b). The difference between “claim-supporting disclosures” and “claim-anticipating disclosures” was dispositive in In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971), where the court held that a U.S. “grandparent” application did not sufficiently describe the later-claimed invention, but that the appellant's intervening British application, a counterpart to the U.S. application, anticipated the claimed subject matter. As the court pointed out, “the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes ..., whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure....” Id. at 970, 169 USPQ at 797 (citations omitted).

The purpose and applicability of the “written description” requirement were addressed in In re Smith and Hubin, 481 F.2d 910, 178 USPQ 620 (CCPA 1973), where the court stated:

Satisfaction of the description requirement insures that subject matter presented in the form of a claim subsequent to the filing date of the application was sufficiently disclosed at the time of filing so that the prima facie date of invention can fairly be held to be the filing date of the application. This concept applies whether the case factually arises out of an assertion of entitlement to the filing date of a previously filed application under § 120 ... or arises in the interference context wherein the issue is support for a count in the specification of one or more of the parties ... or arises in an ex parte case involving a single application, but where the claim at issue was filed subsequent to the filing of the application....

Id. at 914, 178 USPQ at 623-24 (citations omitted).

The CCPA's “written description” cases often stressed the fact-specificity of the issue. See, e.g., In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976) (“The primary consideration is factual and depends on the nature of the invention and the amount of knowledge imparted to those skilled in the art by the disclosure”) (emphasis in original); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (“Precisely how close the description must come to comply with § 112 must be left to case-by-case development”); DiLeone, 436 F.2d at 1405, 168 USPQ at 593 (“What is needed to meet the description requirement will necessarily vary depending on the nature of the invention claimed”). The court even went so far as to state:

[I]t should be readily apparent from recent decisions of this court involving the question of compliance with the description requirement of § 112 that each case must be decided on its own facts. Thus, the precedential value of cases in this area is extremely limited.

In re Driscoll, 562 F.2d 1245, 1250, 195 USPQ 434, 438 (CCPA 1977).

Since its inception, the Court of Appeals for the Federal Circuit has frequently addressed the “written description” requirement of § 112.<ref>See, Chester v. Miller, 906 F.2d 1574, 15 USPQ2d 1333 (Fed.Cir.1990) (parent application's disclosure of chemical species constituted 102(b) prior art against continuation-in-part (c-i-p) application on appeal, but did not provide sufficient written description to support c-i-p's claims to encompassing genus); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed.Cir.1989) (foreign priority application's disclosure of chemical subgenus was insufficient written description to support genus claims of corresponding U.S. application); In re Wright, 866 F.2d 422, 9 USPQ2d 1649 (Fed.Cir.1989) (application in “clear compliance” with § 112 “written description” requirement with respect to claim limitation that microcapsules were “not permanently fixed”); Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed.Cir.1988) (holding generic interference count to scroll compressor supported by written description of foreign priority application, the court stated, “A specification may, within the meaning of 35 U.S.C. § 112 ¶ 1, contain a written description of a broadly claimed invention without describing all species that claim encompasses”); Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 5 USPQ2d 1194 (Fed.Cir.1987) (parent application's lack of express disclosure of inherent “equiaxed microstructure” property did not deprive c-i-p's claims to a sintered ceramic body having said property of the benefit of parent's filing date), cert. denied, 486 U.S. 1008, 108 S.Ct. 1735, 100 L.Ed.2d 198 (1988); Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 227 USPQ 177 (1985) (parent application's disclosure provided adequate written description support for certain claim limitations respecting protein content, temperature, and moisture content, but not others); In re Wilder, 736 F.2d 1516, 222 USPQ 369 (1984) (broadly worded title, general description of drawing, and objects of invention of parent patent application did not adequately support reissue application claims directed to genus of indicating mechanisms for dictating machines), cert. denied, 469 U.S. 1209, 105 S.Ct. 1173, 84 L.Ed.2d 323 (1985); In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed.Cir.1983) (claims to method of redeeming merchandise coupons, comprising step of providing an audit of coupon traffic, were not supported by specification of parent application).</ref> A fairly uniform standard for determining compliance with the “written description” requirement has been maintained throughout: “Although [the applicant] does not have to describe exactly the subject matter claimed, ... the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed.Cir.1989) (citations omitted). “[T]he test for sufficiency of support in a parent application is whether the disclosure of the application relied upon ‘reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.’ ” Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed.Cir.1985) (quoting In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.Cir.1983)). Our cases also provide that compliance with the “written description” requirement of § 112 is a question of fact, to be reviewed under the clearly erroneous standard. Gosteli, 872 F.2d at 1012, 10 USPQ2d at 1618; Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed.Cir.1988).

There appears to be some confusion in our decisions concerning the extent to which the “written description” requirement is separate and distinct from the enablement requirement. For example, in In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed.Cir.1984), cert. denied, 469 U.S. 1209, 105 S.Ct. 1173, 84 L.Ed.2d 323 (1985), we flatly stated: “The description requirement is found in 35 U.S.C. § 112 and is separate from the enablement requirement of that provision.” However, in a later case we said, “The purpose of the [written] description requirement [of section 112, first paragraph] is to state what is needed to fulfill the enablement criteria. These requirements may be viewed separately, but they are intertwined.” Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1421, 5 USPQ2d 1194, 1197 (Fed.Cir.1987), cert. denied, 486 U.S. 1008, 108 S.Ct. 1735, 100 L.Ed.2d 198 (1988). “The written description must communicate that which is needed to enable the skilled artisan to make and use the claimed invention.” Id.

To the extent that Kennecott conflicts with Wilder, we note that decisions of a three-judge panel of this court cannot overturn prior precedential decisions. See UMC Elec. Co. v. United States, 816 F.2d 647, 652 n. 6, 2 USPQ2d 1465, 1468 n. 7 (Fed.Cir.1987), cert. denied, 484 U.S. 1025, 108 S.Ct. 748, 98 L.Ed.2d 761 (1988). This court in Wilder (and the CCPA before it) clearly recognized, and we hereby reaffirm, that 35 U.S.C. § 112, first paragraph, requires a “written description of the invention” which is separate and distinct from the enablement requirement. The purpose of the “written description” requirement is broader than to merely explain how to “make and use”; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the “written description” inquiry, whatever is now claimed.

The District Court's Analysis

We agree with the district court's conclusion that drawings alone may be sufficient to provide the “written description of the invention” required by § 112, first paragraph. Several earlier cases, though not specifically framing the issue in terms of compliance with the “written description” requirement, support this conclusion.

For example, we previously stated that “[t]here is no statutory prohibition against an applicant's reliance, in claiming priority under 35 U.S.C. § 120, on a disclosure in a design application if the statutory conditions are met.” KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1574, 228 USPQ 32, 33 (Fed.Cir.1985). The question whether the applicant's claim to a pocket for athletic shoes was in fact entitled to the filing date of his earlier design application was not resolved in KangaROOS, however. Issues of intent to deceive the PTO were involved, as well as an error of law by the district court in construing the claims of the wrong application. Id. at 1574-75, 228 USPQ at 34-35. The district court's grant of partial summary judgment of inequitable conduct was vacated and the case remanded for trial.

In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981) involved a claim under 35 U.S.C. § 120 to the benefit of the filing date of two earlier design patent applications that included drawings of a carrying and storage case for tape cartridges and cassettes. The invention claimed in the later-filed utility application was an “insert” of “compartmented form,” adapted for use in the interior of the storage case. Id. at 429, 209 USPQ at 47. The court characterized the dispositive issue as “whether the design applications sufficiently disclose the invention now claimed in the ... utility application at bar.” Id. at 429, 209 USPQ at 46. While specifically recognizing that “drawings may be used to satisfy the disclosure requirement,” id. at 429, 209 USPQ at 46-47, the court held that Berkman's design applications “fail[ed] to disclose the claimed invention sufficiently to comply with the requirements of § 112 first paragraph.” As the court explained:

Nowhere in the design applications is the word “insert” used, nor is there any indication that the interiors of the cases are inserts. The drawings do not disclose how the insert can be used to accommodate either cassette or cartridge type tape enclosures. Berkman argues that one skilled in the art would readily recognize that the interiors of the cases illustrated in the design drawings are inserts. We do not agree. There is nothing shown in the drawings to lead one of ordinary skill to such a conclusion.

Id. at 430, 209 USPQ at 47.

The issue in In re Wolfensperger, 49 CCPA 1075, 302 F.2d 950, 133 USPQ 537 (1962) was whether the specification of the applicant's utility patent application disclosing a ball valve, and particularly the drawings thereof, supported a claim limitation that read: “having, in untensioned condition, a mean diameter corresponding approximately to the mean diameter of said chamber and a radial width smaller than the radial width of said chamber....” Id. at 1077, 302 F.2d at 952, 133 USPQ at 538. The court did not agree with the Board's conclusion that the “radial width” relationship was not supported by applicant's figure 5:

The board's statement that “drawings alone cannot form the basis of a valid claim” is too broad a generalization to be valid and is, furthermore, contrary to well-settled and long-established Patent Office practice.... Consider, for one thing, that the sole disclosure in a design patent application is by means of a drawing.... For another thing, consider that the only informative and significant disclosure in many electrical and chemical patents is by means of circuit diagrams or graphic formulae, constituting “drawings” in the case....

... The practical, legitimate enquiry in each case of this kind is what the drawing in fact discloses to one skilled in the art....

... The issue here is whether there is supporting “disclosure” and it does not seem, under established procedure of long standing, approved by this court, to be of any legal significance whether the disclosure is found in the specification or in the drawings so long as it is there.

Id. at 1080-83, 302 F.2d at 955-56, 133 USPQ at 541-42.

Employing a “new matter” analysis, the court in In re Heinle, 342 F.2d 1001, 145 USPQ 131 (CCPA 1965) reversed a PTO rejection of the applicant's claims to a “toilet paper core” as “including subject matter having no clear basis in the application as filed.” Id. at 1003, 145 USPQ at 133. The claim limitation said to be without support required that the width of the apertures in the core be “approximately one-fourth of the circumference of said core.” Id. at 1007, 145 USPQ at 136. Having reviewed the application drawings relied upon for support, the court stated:

it seems to us that [the drawings] conform to the one-fourth circumference limitation almost exactly. But the claim requires only an approximation. Since we believe an amendment to the specification to state that one-fourth of the circumference is the aperture width would not violate the rule against “new matter,” we feel that supporting disclosure exists. The rejection is therefore in error.

Id.

These cases support our holding that, under proper circumstances, drawings alone may provide a “written description” of an invention as required by § 112. Whether the drawings are those of a design application or a utility application is not determinative, although in most cases the latter are much more detailed. In the instant case, however, the design drawings are substantially identical to the utility application drawings.

Although we join with the district court in concluding that drawings may suffice to satisfy the “written description” requirement of § 112, we can not agree with the legal standard that the court imposed for “written description” compliance, nor with the court's conclusion that no genuine issues of material fact were in dispute.

With respect to the former, the district court stated that although the '081 design drawings in question “allowed practice” [i.e., enabled], they did not necessarily

show what the invention is, when “the invention” could be a subset or a superset of the features shown. Is the invention the semi-circular lumens? The conical tip? The ratio at which the tip tapers? The shape, size, and placement of the inlets and outlets? You can measure all of these things from the diagrams in serial '081 and so can practice the device, but you cannot tell, because serial '081 does not say, what combination of these things is “the invention”, and what range of variation is allowed without exceeding the scope of the claims. To show one example of an invention, even a working model, is not to describe what is novel or important.

745 F.Supp. at 522, 17 USPQ2d at 1356.

We find the district court's concern with “what the invention is” misplaced, and its requirement that the '081 drawings “describe what is novel or important” legal error. There is “no legally recognizable or protected ‘essential’ element, ‘gist’ or ‘heart’ of the invention in a combination patent.” Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 604, 5 L.Ed.2d 592 (1961). “The invention” is defined by the claims on appeal. The instant claims do not recite only a pair of semi-circular lumens, or a conical tip, or a ratio at which the tip tapers, or the shape, size, and placement of the inlets and outlets; they claim a double lumen catheter having a combination of those features. That combination invention is what the '081 drawings show. As the district court itself recognized, “what Mahurkar eventually patented is exactly what the pictures in serial '081 show.” 745 F.Supp. at 523, 17 USPQ2d at 1357.

We find the “range of variation” question, much emphasized by the parties, more troublesome. The district court stated that “although Mahurkar's patents use the same diagrams, [the claims] contain limitations that did not follow ineluctably [i.e., inevitably] from the diagrams.” Id. at 524, 17 USPQ2d at 1357. As an example, the court stated (presumably with respect to independent claims 1 and 7 of the '329 patent) that

the utility patents claim a return lumen that is “substantially greater than one-half but substantially less than a full diameter” after it makes the transition from semi-circular to circular cross-section, and the drawings of serial '081 fall in this range. But until the utility application was filed, nothing established that they had to-for that matter that the utility patent would claim anything other than the precise ratio in the diagrams....

Id. at 523, 17 USPQ2d at 1357. Mahurkar argues that one of ordinary skill in this art, looking at the '081 drawings, would be able to derive the claimed range.

The declaration of Dr. Stephen Ash, submitted by Mahurkar, is directed to these concerns. Dr. Ash, a physician specializing in nephrology (the study of the kidney and its diseases) and chairman of a corporation that develops and manufactures biomedical devices including catheters, explains why one of skill in the art of catheter design and manufacture, studying the drawings of the '081 application in early 1982, would have understood from them that the return lumen must have a diameter within the range recited by independent claims 1 and 7 of the '329 patent. Dr. Ash explains in detail that a return (longer) lumen of diameter less than half that of the two lumens combined would produce too great a pressure increase, while a return lumen of diameter equal or larger than that of the two lumens combined would result in too great a pressure drop.<ref>Higher pressure drops are associated with smaller cross-sectional areas for fluid flow. Mahurkar's opening brief to this court states that by applying well-known principles of fluid mechanics (i.e., the work of Poiseuille and Hagen), it can be calculated that the diameter of the circular (return) lumen would have to be in the range of 0.66 times the diameter of the two lumens combined in order to achieve proper blood flow at equal pressure drop. The 0.66 ratio falls within the noted claim limitation.</ref> “Ordinary experience with the flow of blood in catheters would lead directly away from any such arrangement,” Ash states.

Although the district court found this reasoning “logical,” it noted that later patents issued to Mahurkar disclose diameter ratios closer to 1.0 (U.S.Patent No. 4,584,968) and exactly 0.5 (U.S.Des.Patent No. 272,651). If these other ratios were desirable, the district court queried, “how does serial '081 necessarily exclude the[m]?” 745 F.Supp. at 523, 17 USPQ2d at 1357.

The district court erred in taking Mahurkar's other patents into account. Mahurkar's later patenting of inventions involving different range limitations is irrelevant to the issue at hand. Application sufficiency under § 112, first paragraph, must be judged as of the filing date. United States Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247, 1251, 9 USPQ2d 1461, 1464 (Fed.Cir.1989).

The court further erred in applying a legal standard that essentially required the drawings of the '081 design application to necessarily exclude all diameters other than those within the claimed range. We question whether any drawing could ever do so. At least with respect to independent claims 1 and 7 of the '329 patent and claims depending therefrom, the proper test is whether the drawings conveyed with reasonable clarity to those of ordinary skill that Mahurkar had in fact invented the catheter recited in those claims, having (among several other limitations) a return lumen diameter substantially less than 1.0 but substantially greater than 0.5 times the diameter of the combined lumens. Consideration of what the drawings conveyed to persons of ordinary skill is essential. See Ralston Purina, 772 F.2d at 1575, 227 USPQ at 179 (ranges found in applicant's claims need not correspond exactly to those disclosed in parent application; issue is whether one skilled in the art could derive the claimed ranges from parent's disclosure).

Mahurkar submitted the declaration of Dr. Ash on this point; Vas-Cath submitted no technical evidence to refute Ash's conclusions. Although the district court considered Dr. Ash's declaration, we believe its import was improperly disregarded when viewed through the court's erroneous interpretation of the law.<ref>The following colloquy at oral argument before the district court supports our view:

Counsel for Mahurkar: “So the only evidence that we have on this subject from people of ordinary skill in the art is that the drawings do communicate these range limitations, and given the procedural posture of this case, the Court has to accept that evidence....”

District Court: * * * “And if you could have written a large number of things that were different from what was actually filed in 1984, then the diagram isn't enough.

And that seems to me something that can't be resolved by ogling the Ash declaration. It's really a pure question of law.” </ref> We hold that the Ash declaration and Vas-Cath's non-refutation thereof, without more, gave rise to a genuine issue of material fact inappropriate for summary disposition. See Hesston Corp. v. Sloop, 1988 U.S.Dist. LEXIS 1573, (D.Kansas) (summary judgment on § 112 “written description” issue inappropriate where resolution of what parent disclosure conveyed to those skilled in the art may require examination of experts, demonstrations and exhibits).

Mahurkar urges that at least some of the remaining claims do not contain the range limitations discussed by the district court, and that the presence of range limitations was not a proper basis for invalidating those remaining claims. For example, claim 8 of the '141 patent requires, inter alia, a smooth conical tapered tip and “the portion of said tube between said second opening and said conical tapered tip being larger than said first lumen in the transverse direction normal to the plane of said septum.” Vas-Cath counters that claim 8 of the '141 patent is just as much a “range” claim as claims 1 and 7 of the '329 patent, albeit one having only a lower limit and no upper limit.

Absent any separate discussion of these remaining claims in the district court's opinion, we assume that the court applied to them the same erroneous legal standard. Summary judgment was therefore inappropriate as to the remaining claims. Additionally, the possibility that the '081 drawings may provide an adequate § 112 “written description” of the subject matter of some of the claims but not others should have been considered. See, e.g., In re Borkowski, 422 F.2d 904, 909 n. 4, 164 USPQ 642, 646 n. 4 (CCPA 1970) (on review of § 112 non-enablement rejection: “A disclosure may, of course, be insufficient to support one claim but sufficient to support another.”) On remand, the district court should separately analyze whether the “written description” requirement has been met as to the subject matter of each claim of the '141 and '329 patents.

CONCLUSION
The district court's grant of summary judgment, holding all claims of the '329 and '141 patents invalid under 35 U.S.C. § 102(b), is hereby reversed as to all claims, and the case remanded for further proceedings consistent herewith.

COSTS
Each party to bear its own costs.

REVERSED and REMANDED.

APPENDIX

Independent Claims of the '329 Patent:

1. A double lumen catheter having an elongated tube with a proximal first cylindrical portion enclosing first and second lumens separated by an internal divider, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, and the second lumen extending from the proximal end of said elongated tube to a second opening at approximately the distal end of said first cylindrical portion, wherein the improvement comprises:
said elongated tube having at its distal end a smooth conical tapered tip that smoothly merges with a second cylindrical portion of said elongated tube, and said second cylindrical portion enclosing the first lumen from the conical tapered tip to approximately the location of said second opening, wherein said second cylindrical portion has a diameter substantially greater than one-half but substantially less than a full diameter of said first cylindrical portion.

7. A double lumen catheter having an elongated tube with a proximal first cylindrical portion enclosing first and second lumens separated by an internal divider, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, and the second lumen extending from the proximal end of said elongated tube to a second opening at approximately the distal end of said first cylindrical portion, wherein the improvement comprises:

said elongated tube having at its distal end a smooth conical tapered tip that smoothly merges with a second cylindrical portion of said elongated tube, and said second cylindrical portion enclosing the first lumen from the conical tapered tip to approximately the location of said second opening, said second cylindrical portion having a diameter substantially greater than one-half but substantially less than a full diameter of said first cylindrical portion, said divider in said first cylindrical portion being planar, the lumens being “D” shaped in cross-section in said first cylindrical portion, the elongated tube being provided with a plurality of holes in the region of the conical tapered tip, and said first cylindrical portion of the elongated tube smoothly merging with said second cylindrical portion of the elongated tube.

Independent Claims of the '141 Patent:

1. A double lumen catheter having an elongated tube with a proximal first cylindrical portion enclosing first and second lumens separated by an internal divider, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, and the second lumen extending from the proximal end of said elongated tube to a second opening at approximately the distal end of said first cylindrical portion, wherein the improvement comprises:
said elongated tube having at its distal end a smooth conical tapered tip that smoothly merges with a second cylindrical portion of said elongated tube, and said second cylindrical portion enclosing the first lumen from the conical tapered tip to approximately the location of said second opening, wherein said second sylindrical [sic] portion has a diameter substantially less than a full diameter of said first cylindrical portion but larger than said first lumen in the transverse direction normal to the plane of said flat divider.

7. A double lumen catheter comprising an elongated cylindrical tube enclosing first and second lumens separated by a flat longitudinal internal divider formed as an integral part of said tube, said tube and said divider forming said first and second lumens as semi-cylindrical cavities within said tube, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, said distal end of said tube forming a smooth conical tapered tip and the second lumen extending from the proximal end of said elongated tube to a second opening spaced a substantial distance away from said first opening toward the proximal end of said tube, the distal end of said divider being joined to the outside wall of said tube distal of said second opening, and the outside wall of said tube forming a smooth transition between said conical tapered tip and the outer circumference of the tube proximal of said second opening, said transition being larger than said first lumen in the transverse direction normal to the plane of said flat divider.

8. A double lumen catheter comprising an elongated cylindrical tube having a longitudinal planar septum of one-piece construction with said tube, said septum dividing the interior of said tube into first and second lumens, said lumens being D-shaped in cross-section, the proximal end of said tube connecting to two separate tubes communicating with the respective first and second lumens for the injection and removal of fluids, the lumen extending from the proximal end of said tube to a first lumen extending from the proximal end of said tube to a first opening at the distal end of said tube, and the second lumen extending from the proximal end of said tube to a second opening axially spaced from the distal end of said tube, said tube having at its distal end a smooth conical tapered tip that merges with the cylindrical surface of said tube, said first lumen, including the internal wall thereof formed by said septum extending continuously through said conical tapered tip, and the portion of said tube between said second opening and said conical tapered tip being larger than said first lumen in the transverse direction normal to the plane of said septum.

13. A double lumen catheter comprising an elongated cylindrical tube enclosing first and second lumens separated by a flat longitudinal internal divider formed as an integral part of said tube, said tube and said divider forming said first and second lumens as semi-cylindrical cavities within said tube, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with he [sic] respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, said distal end of said tube forming a smooth conical tapered tip defining the distal portion of said first lumen and said first opening, said first opening and an adjacent portion of said first lumen having a circular transverse cross-sectional configuration, and the second lumen extending from the proximal end of said elongated tube to a second opening spaced a substantial distance away from said first opening toward the proximal end of said tube, the inside walls of said tube forming a smooth transition between said semicylindrical and circular transverse cross-sectional configurations of said first lumen, the outside dimension of said transition being larger than said first lumen in the transverse direction normal to the plane of said flat divider.

===Footnotes===
<references/>

Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)

2011-04-08T15:20:42Z

Bill Goodwine:

United States Court of Appeals, Federal Circuit.

VAS-CATH INCORPORATED and Gambro, Inc., Plaintiffs-Appellees,
v.
Sakharam D. MAHURKAR, and Quinton Instruments Company, Defendants-Appellants.

Nos. 90-1528, 91-1032.
June 7, 1991.
Rehearing Denied July 8, 1991.
Suggestion for Rehearing In Banc
Declined July 29, 1991.

Before RICH, MICHEL and PLAGER, Circuit Judges.

RICH, Circuit Judge.

Sakharam D. Mahurkar and Quinton Instruments Company (collectively Mahurkar) appeal from the September 12, 1990 partial final judgment<ref>The district court directed entry of final judgment as to the issue of patent invalidity pursuant to Fed.R.Civ.P. 54(b).</ref> of the United States District Court for the Northern District of Illinois, Easterbrook, J., sitting by designation, in Case No. 88 C 4997. Granting partial summary judgment to Vas-Cath Incorporated and its licensee Gambro, Inc. (collectively Vas-Cath), the district court declared Mahurkar's two United States utility patents Nos. 4,568,329 ('329 patent) and 4,692,141 ('141 patent), titled “Double Lumen Catheter,” invalid as anticipated under 35 U.S.C. § 102(b). In reaching its decision, reported at 745 F.Supp. 517, 17 USPQ2d 1353, the district court concluded that none of the twenty-one claims of the two utility patents was entitled, under 35 U.S.C. § 120, to the benefit of the filing date of Mahurkar's earlier-filed United States design patent application Serial No. 356,081 ('081 design application), which comprised the same drawings as the utility patents, because the design application did not provide a “written description of the invention” as required by 35 U.S.C. § 112, first paragraph. We reverse the grant of summary judgment with respect to all claims.

BACKGROUND

Sakharam Mahurkar filed the '081 design application, also titled “Double Lumen Catheter,” on March 8, 1982. The application was abandoned on November 30, 1984. Figures 1-6 of the '081 design application are reproduced below.

NOTE: This case contained images. Please see the patent for the details.

As shown, Mahurkar's catheter comprises er comprises a pair of tubes (lumens) designed to allow blood to be removed from an artery, processed in an apparatus that removes impurities, and returned close to the place of removal. Prior art catheters utilized concentric circular lumens, while Mahurkar's employs joined semi-circular tubes that come to a single tapered tip. Advantageously, the puncture area of Mahurkar's semicircular catheter is 42% less than that of a coaxial catheter carrying the same quantity of blood, and its conical tip yields low rates of injury to the blood. The prior art coaxial catheters are now obsolete; Mahurkar's catheters appear to represent more than half of the world's sales. 745 F.Supp. at 520, 17 USPQ2d at 1353-54.

After filing the '081 design application, Mahurkar also filed a Canadian Industrial Design application comprising the same drawings plus additional textual description. On August 9, 1982, Canadian Industrial Design 50,089 (Canadian '089) issued on that application.

More than one year later, on October 1, 1984, Mahurkar filed the first of two utility patent applications that would give rise to the patents now on appeal. Notably, both utility applications included the same drawings as the '081 design application.<ref>The utility patent drawings contain additional but minor shading and lead lines and reference numerals not present in the design application drawings.</ref> Serial No. 656,601 ('601 utility application) claimed the benefit of the filing date of the '081 design application, having been denominated a “continuation” thereof. In an Office Action mailed June 6, 1985, the Patent and Trademark Office (PTO) examiner noted that “the prior application is a design application,” but did not dispute that the '601 application was entitled to its filing date. On January 29, 1986, Mahurkar filed Serial No. 823,592 ('592 utility application), again claiming the benefit of the filing date of the '081 design application (the '592 utility application was denominated a continuation of the '601 utility application). In an office action mailed April 1, 1987, the examiner stated that the '592 utility application was “considered to be fully supported by applicant's parent application SN 356,081 filed March 8, 1982 [the '081 design application].” The '601 and '592 utility applications issued in 1986 and 1987, respectively, as the '329 and '141 patents, the subjects of this appeal. The independent claims of both patents are set forth in the Appendix hereto.

Vas-Cath sued Mahurkar in June 1988, seeking a declaratory judgment that the catheters it manufactured did not infringe Mahurkar's '329 and '141 utility patents.<ref>Vas-Cath's apprehension of suit apparently arose from a 1988 Canadian action instituted by Mahurkar for infringement of Canadian '089.</ref> Vas-Cath's complaint alleged, inter alia, that the '329 and '141 patents were both invalid as anticipated under 35 U.S.C. § 102(b) by Canadian '089. Vas-Cath's anticipation theory was premised on the argument that the '329 and '141 patents were not entitled under 35 U.S.C. § 120<ref>Section 120, titled “Benefit of Earlier Filing Date in the United States,” provides (emphasis ours):
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. </ref> to the filing date of the '081 design application because its drawings did not provide an adequate “written description” of the claimed invention as required by 35 U.S.C. § 112, first paragraph.

Mahurkar counterclaimed, alleging infringement. Both parties moved for summary judgment on certain issues, including validity. For purposes of the summary judgment motion, Mahurkar conceded that, if he could not antedate it, Canadian '089 would represent an enabling and thus anticipating § 102(b) reference against the claims of his '329 and '141 utility patents. 745 F.Supp. at 521, 17 USPQ2d at 1355. Vas-Cath conceded that the '081 design drawings enabled one skilled in the art to practice the claimed invention within the meaning of 35 U.S.C. § 112, first paragraph. Id. Thus, the question before the district court was whether the disclosure of the '081 design application, namely, the drawings without more, adequately meets the “written description” requirement also contained in § 112, first paragraph, so as to entitle Mahurkar to the benefit of the 1982 filing date of the '081 design application for his two utility patents and thereby antedates Canadian '089.

Concluding that the drawings do not do so, and that therefore the utility patents are anticipated by Canadian '089, the district court held the '329 and '141 patents wholly invalid under 35 U.S.C. § 102(b), id. at 524, 17 USPQ2d at 1358, and subsequently granted Mahurkar's motion for entry of a partial final judgment under Fed.R.Civ.P. 54(b) on the validity issue. This appeal followed.

DISCUSSION

The issue before us is whether the district court erred in concluding, on summary judgment, that the disclosure of the '081 design application does not provide a § 112, first paragraph “written description” adequate to support each of the claims of the '329 and '141 patents. If the court so erred as to any of the 21 claims at issue, the admittedly anticipatory disclosure of Canadian '089 will have been antedated (and the basis for the court's grant of summary judgment nullified) as to those claims.

In reviewing the district court's grant of summary judgment, we are not bound by its holding that no material facts are in dispute, and must make an independent determination as to whether the standards for summary judgment have been met. C.R. Bard, Inc. v. Advanced Cardiovascular Systems, 911 F.2d 670, 673, 15 USPQ2d 1540, 1542-43 (Fed.Cir.1990). Summary judgment will not lie if the dispute about a material fact is “genuine,” that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986).

The “Written Description” Requirement of § 112
The first paragraph of 35 U.S.C. § 112 requires that

[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

(Emphasis added). Application of the “written description” requirement, derived from the portion of § 112 emphasized above, is central to resolution of this appeal. The district court, having reviewed this court's decisions on the subject, remarked that “[u]nfortunately, it is not so easy to tell what the law of the Federal Circuit is.” 745 F.Supp. at 522, 17 USPQ2d at 1356. Perhaps that is so, and, therefore, before proceeding to the merits, we review the case law development of the “written description” requirement with a view to improving the situation.<ref>For additional background, see Rollins, “35 USC 120-The Description Requirement,” 64 J.Pat.Off.Soc'y 656 (1982); Walterscheid, “Insufficient Disclosure Rejections (Part III),” 62 J.Pat.Off.Soc'y 261 (1980).</ref>

The cases indicate that the “written description” requirement most often comes into play where claims not presented in the application when filed are presented thereafter. Alternatively, patent applicants often seek the benefit of the filing date of an earlier-filed foreign or United States application under 35 U.S.C. § 119 or 35 U.S.C. § 120, respectively, for claims of a later-filed application. The question raised by these situations is most often phrased as whether the application provides “adequate support” for the claim(s) at issue; it has also been analyzed in terms of “new matter” under 35 U.S.C. § 132. The “written description” question similarly arises in the interference context, where the issue is whether the specification of one party to the interference can support the claim(s) corresponding to the count(s) at issue, i.e., whether that party “can make the claim” corresponding to the interference count.

To the uninitiated, it may seem anomalous that the first paragraph of 35 U.S.C. § 112 has been interpreted as requiring a separate “description of the invention,” when the invention is, necessarily, the subject matter defined in the claims under consideration. See In re Wright, 866 F.2d 422, 424, 9 USPQ2d 1649, 1651 (Fed.Cir.1989). One may wonder what purpose a separate “written description” requirement serves, when the second paragraph of § 112 expressly requires that the applicant conclude his specification “with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

One explanation is historical: the “written description” requirement was a part of the patent statutes at a time before claims were required. A case in point is Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 5 L.Ed. 472 (1822), in which the Supreme Court affirmed the circuit court's decision that the plaintiff's patent was “deficient,” and that the plaintiff could not recover for infringement thereunder. The patent laws then in effect, namely the Patent Act of 1793, did not require claims, but did require, in its 3d section, that the patent applicant “deliver a written description of his invention, and of the manner of using, or process of compounding, the same, in such full, clear and exact terms, as to distinguish the same from all things before known, and to enable any person skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make, compound and use the same....” Id. at 430. In view of this language, the Court concluded that the specification of a patent had two objects, the first of which was “to enable artizans to make and use [the invention]....” Id. at 433. The second object of the specification was

to put the public in possession of what the party claims as his own invention, so as to ascertain if he claims anything that is in common use, or is already known, and to guard against prejudice or injury from the use of an invention which the party may otherwise innocently suppose not to be patented. It is, therefore, for the purpose of warning an innocent purchaser, or other person using a machine, of his infringement of the patent; and at the same time, of taking from the inventor the means of practising upon the credulity or the fears of other persons, by pretending that his invention is more than what it really is, or different from its ostensible objects, that the patentee is required to distinguish his invention in his specification.

Id. at 434.

A second, policy-based rationale for the inclusion in § 112 of both the first paragraph “written description” and the second paragraph “definiteness” requirements was set forth in Rengo Co. v. Molins Mach. Co., 657 F.2d 535, 551, 211 USPQ 303, 321 (3d Cir.), cert. denied, 454 U.S. 1055, 102 S.Ct. 600, 70 L.Ed.2d 591 (1981):

[T]here is a subtle relationship between the policies underlying the description and definiteness requirements, as the two standards, while complementary, approach a similar problem from different directions. Adequate description of the invention guards against the inventor's overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within his original creation. The definiteness requirement shapes the future conduct of persons other than the inventor, by insisting that they receive notice of the scope of the patented device.

With respect to the first paragraph of § 112 the severability of its “written description” provision from its enablement (“make and use”) provision was recognized by this court's predecessor, the Court of Customs and Patent Appeals, as early as In re Ruschig, 379 F.2d 990, 154 USPQ 118 (CCPA 1967). Although the appellants in that case had presumed that the rejection appealed from was based on the enablement requirement of § 112, id. at 995, 154 USPQ at 123, the court disagreed:

[T]he question is not whether [one skilled in the art] would be so enabled but whether the specification discloses the compound to him, specifically, as something appellants actually invented.... If [the rejection is] based on section 112, it is on the requirement thereof that “The specification shall contain a written description of the invention * * *.” (Emphasis ours.)

Id. at 995-96, 154 USPQ at 123 (first emphasis added). The issue, as the court saw it, was one of fact: “Does the specification convey clearly to those skilled in the art, to whom it is addressed, in any way, the information that appellants invented that specific compound [claimed]?” Id. at 996, 154 USPQ at 123.

In a 1971 case again involving chemical subject matter, the court expressly stated that “it is possible for a specification to enable the practice of an invention as broadly as it is claimed, and still not describe that invention.” In re DiLeone, 436 F.2d 1404, 1405, 168 USPQ 592, 593 (CCPA 1971) (emphasis added). As an example, the court posited the situation “where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B and C; yet the class consisting of A, B and C has not been described.” Id. at 1405 n. 1, 168 USPQ 593 n. 1 (emphases in original). See also In re Ahlbrecht, 435 F.2d 908, 911, 168 USPQ 293, 296 (CCPA 1971) (although disclosure of parent application may have enabled production of claimed esters having 2-12 methylene groups, it only described esters having 3-12 methylene groups).

The CCPA also recognized a subtle distinction between a written description adequate to support a claim under § 112 and a written description sufficient to anticipate its subject matter under § 102(b). The difference between “claim-supporting disclosures” and “claim-anticipating disclosures” was dispositive in In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971), where the court held that a U.S. “grandparent” application did not sufficiently describe the later-claimed invention, but that the appellant's intervening British application, a counterpart to the U.S. application, anticipated the claimed subject matter. As the court pointed out, “the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes ..., whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure....” Id. at 970, 169 USPQ at 797 (citations omitted).

The purpose and applicability of the “written description” requirement were addressed in In re Smith and Hubin, 481 F.2d 910, 178 USPQ 620 (CCPA 1973), where the court stated:

Satisfaction of the description requirement insures that subject matter presented in the form of a claim subsequent to the filing date of the application was sufficiently disclosed at the time of filing so that the prima facie date of invention can fairly be held to be the filing date of the application. This concept applies whether the case factually arises out of an assertion of entitlement to the filing date of a previously filed application under § 120 ... or arises in the interference context wherein the issue is support for a count in the specification of one or more of the parties ... or arises in an ex parte case involving a single application, but where the claim at issue was filed subsequent to the filing of the application....

Id. at 914, 178 USPQ at 623-24 (citations omitted).

The CCPA's “written description” cases often stressed the fact-specificity of the issue. See, e.g., In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976) (“The primary consideration is factual and depends on the nature of the invention and the amount of knowledge imparted to those skilled in the art by the disclosure”) (emphasis in original); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (“Precisely how close the description must come to comply with § 112 must be left to case-by-case development”); DiLeone, 436 F.2d at 1405, 168 USPQ at 593 (“What is needed to meet the description requirement will necessarily vary depending on the nature of the invention claimed”). The court even went so far as to state:

[I]t should be readily apparent from recent decisions of this court involving the question of compliance with the description requirement of § 112 that each case must be decided on its own facts. Thus, the precedential value of cases in this area is extremely limited.

In re Driscoll, 562 F.2d 1245, 1250, 195 USPQ 434, 438 (CCPA 1977).

Since its inception, the Court of Appeals for the Federal Circuit has frequently addressed the “written description” requirement of § 112.<ref>See, Chester v. Miller, 906 F.2d 1574, 15 USPQ2d 1333 (Fed.Cir.1990) (parent application's disclosure of chemical species constituted 102(b) prior art against continuation-in-part (c-i-p) application on appeal, but did not provide sufficient written description to support c-i-p's claims to encompassing genus); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed.Cir.1989) (foreign priority application's disclosure of chemical subgenus was insufficient written description to support genus claims of corresponding U.S. application); In re Wright, 866 F.2d 422, 9 USPQ2d 1649 (Fed.Cir.1989) (application in “clear compliance” with § 112 “written description” requirement with respect to claim limitation that microcapsules were “not permanently fixed”); Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed.Cir.1988) (holding generic interference count to scroll compressor supported by written description of foreign priority application, the court stated, “A specification may, within the meaning of 35 U.S.C. § 112 ¶ 1, contain a written description of a broadly claimed invention without describing all species that claim encompasses”); Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 5 USPQ2d 1194 (Fed.Cir.1987) (parent application's lack of express disclosure of inherent “equiaxed microstructure” property did not deprive c-i-p's claims to a sintered ceramic body having said property of the benefit of parent's filing date), cert. denied, 486 U.S. 1008, 108 S.Ct. 1735, 100 L.Ed.2d 198 (1988); Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 227 USPQ 177 (1985) (parent application's disclosure provided adequate written description support for certain claim limitations respecting protein content, temperature, and moisture content, but not others); In re Wilder, 736 F.2d 1516, 222 USPQ 369 (1984) (broadly worded title, general description of drawing, and objects of invention of parent patent application did not adequately support reissue application claims directed to genus of indicating mechanisms for dictating machines), cert. denied, 469 U.S. 1209, 105 S.Ct. 1173, 84 L.Ed.2d 323 (1985); In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed.Cir.1983) (claims to method of redeeming merchandise coupons, comprising step of providing an audit of coupon traffic, were not supported by specification of parent application).</ref> A fairly uniform standard for determining compliance with the “written description” requirement has been maintained throughout: “Although [the applicant] does not have to describe exactly the subject matter claimed, ... the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed.Cir.1989) (citations omitted). “[T]he test for sufficiency of support in a parent application is whether the disclosure of the application relied upon ‘reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.’ ” Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed.Cir.1985) (quoting In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.Cir.1983)). Our cases also provide that compliance with the “written description” requirement of § 112 is a question of fact, to be reviewed under the clearly erroneous standard. Gosteli, 872 F.2d at 1012, 10 USPQ2d at 1618; Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed.Cir.1988).

There appears to be some confusion in our decisions concerning the extent to which the “written description” requirement is separate and distinct from the enablement requirement. For example, in In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed.Cir.1984), cert. denied, 469 U.S. 1209, 105 S.Ct. 1173, 84 L.Ed.2d 323 (1985), we flatly stated: “The description requirement is found in 35 U.S.C. § 112 and is separate from the enablement requirement of that provision.” However, in a later case we said, “The purpose of the [written] description requirement [of section 112, first paragraph] is to state what is needed to fulfill the enablement criteria. These requirements may be viewed separately, but they are intertwined.” Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1421, 5 USPQ2d 1194, 1197 (Fed.Cir.1987), cert. denied, 486 U.S. 1008, 108 S.Ct. 1735, 100 L.Ed.2d 198 (1988). “The written description must communicate that which is needed to enable the skilled artisan to make and use the claimed invention.” Id.

To the extent that Kennecott conflicts with Wilder, we note that decisions of a three-judge panel of this court cannot overturn prior precedential decisions. See UMC Elec. Co. v. United States, 816 F.2d 647, 652 n. 6, 2 USPQ2d 1465, 1468 n. 7 (Fed.Cir.1987), cert. denied, 484 U.S. 1025, 108 S.Ct. 748, 98 L.Ed.2d 761 (1988). This court in Wilder (and the CCPA before it) clearly recognized, and we hereby reaffirm, that 35 U.S.C. § 112, first paragraph, requires a “written description of the invention” which is separate and distinct from the enablement requirement. The purpose of the “written description” requirement is broader than to merely explain how to “make and use”; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the “written description” inquiry, whatever is now claimed.

The District Court's Analysis

We agree with the district court's conclusion that drawings alone may be sufficient to provide the “written description of the invention” required by § 112, first paragraph. Several earlier cases, though not specifically framing the issue in terms of compliance with the “written description” requirement, support this conclusion.

For example, we previously stated that “[t]here is no statutory prohibition against an applicant's reliance, in claiming priority under 35 U.S.C. § 120, on a disclosure in a design application if the statutory conditions are met.” KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1574, 228 USPQ 32, 33 (Fed.Cir.1985). The question whether the applicant's claim to a pocket for athletic shoes was in fact entitled to the filing date of his earlier design application was not resolved in KangaROOS, however. Issues of intent to deceive the PTO were involved, as well as an error of law by the district court in construing the claims of the wrong application. Id. at 1574-75, 228 USPQ at 34-35. The district court's grant of partial summary judgment of inequitable conduct was vacated and the case remanded for trial.

In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981) involved a claim under 35 U.S.C. § 120 to the benefit of the filing date of two earlier design patent applications that included drawings of a carrying and storage case for tape cartridges and cassettes. The invention claimed in the later-filed utility application was an “insert” of “compartmented form,” adapted for use in the interior of the storage case. Id. at 429, 209 USPQ at 47. The court characterized the dispositive issue as “whether the design applications sufficiently disclose the invention now claimed in the ... utility application at bar.” Id. at 429, 209 USPQ at 46. While specifically recognizing that “drawings may be used to satisfy the disclosure requirement,” id. at 429, 209 USPQ at 46-47, the court held that Berkman's design applications “fail[ed] to disclose the claimed invention sufficiently to comply with the requirements of § 112 first paragraph.” As the court explained:

Nowhere in the design applications is the word “insert” used, nor is there any indication that the interiors of the cases are inserts. The drawings do not disclose how the insert can be used to accommodate either cassette or cartridge type tape enclosures. Berkman argues that one skilled in the art would readily recognize that the interiors of the cases illustrated in the design drawings are inserts. We do not agree. There is nothing shown in the drawings to lead one of ordinary skill to such a conclusion.

Id. at 430, 209 USPQ at 47.

The issue in In re Wolfensperger, 49 CCPA 1075, 302 F.2d 950, 133 USPQ 537 (1962) was whether the specification of the applicant's utility patent application disclosing a ball valve, and particularly the drawings thereof, supported a claim limitation that read: “having, in untensioned condition, a mean diameter corresponding approximately to the mean diameter of said chamber and a radial width smaller than the radial width of said chamber....” Id. at 1077, 302 F.2d at 952, 133 USPQ at 538. The court did not agree with the Board's conclusion that the “radial width” relationship was not supported by applicant's figure 5:

The board's statement that “drawings alone cannot form the basis of a valid claim” is too broad a generalization to be valid and is, furthermore, contrary to well-settled and long-established Patent Office practice.... Consider, for one thing, that the sole disclosure in a design patent application is by means of a drawing.... For another thing, consider that the only informative and significant disclosure in many electrical and chemical patents is by means of circuit diagrams or graphic formulae, constituting “drawings” in the case....

... The practical, legitimate enquiry in each case of this kind is what the drawing in fact discloses to one skilled in the art....

... The issue here is whether there is supporting “disclosure” and it does not seem, under established procedure of long standing, approved by this court, to be of any legal significance whether the disclosure is found in the specification or in the drawings so long as it is there.

Id. at 1080-83, 302 F.2d at 955-56, 133 USPQ at 541-42.

Employing a “new matter” analysis, the court in In re Heinle, 342 F.2d 1001, 145 USPQ 131 (CCPA 1965) reversed a PTO rejection of the applicant's claims to a “toilet paper core” as “including subject matter having no clear basis in the application as filed.” Id. at 1003, 145 USPQ at 133. The claim limitation said to be without support required that the width of the apertures in the core be “approximately one-fourth of the circumference of said core.” Id. at 1007, 145 USPQ at 136. Having reviewed the application drawings relied upon for support, the court stated:

it seems to us that [the drawings] conform to the one-fourth circumference limitation almost exactly. But the claim requires only an approximation. Since we believe an amendment to the specification to state that one-fourth of the circumference is the aperture width would not violate the rule against “new matter,” we feel that supporting disclosure exists. The rejection is therefore in error.

Id.

These cases support our holding that, under proper circumstances, drawings alone may provide a “written description” of an invention as required by § 112. Whether the drawings are those of a design application or a utility application is not determinative, although in most cases the latter are much more detailed. In the instant case, however, the design drawings are substantially identical to the utility application drawings.

Although we join with the district court in concluding that drawings may suffice to satisfy the “written description” requirement of § 112, we can not agree with the legal standard that the court imposed for “written description” compliance, nor with the court's conclusion that no genuine issues of material fact were in dispute.

With respect to the former, the district court stated that although the '081 design drawings in question “allowed practice” [i.e., enabled], they did not necessarily

show what the invention is, when “the invention” could be a subset or a superset of the features shown. Is the invention the semi-circular lumens? The conical tip? The ratio at which the tip tapers? The shape, size, and placement of the inlets and outlets? You can measure all of these things from the diagrams in serial '081 and so can practice the device, but you cannot tell, because serial '081 does not say, what combination of these things is “the invention”, and what range of variation is allowed without exceeding the scope of the claims. To show one example of an invention, even a working model, is not to describe what is novel or important.

745 F.Supp. at 522, 17 USPQ2d at 1356.

We find the district court's concern with “what the invention is” misplaced, and its requirement that the '081 drawings “describe what is novel or important” legal error. There is “no legally recognizable or protected ‘essential’ element, ‘gist’ or ‘heart’ of the invention in a combination patent.” Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 604, 5 L.Ed.2d 592 (1961). “The invention” is defined by the claims on appeal. The instant claims do not recite only a pair of semi-circular lumens, or a conical tip, or a ratio at which the tip tapers, or the shape, size, and placement of the inlets and outlets; they claim a double lumen catheter having a combination of those features. That combination invention is what the '081 drawings show. As the district court itself recognized, “what Mahurkar eventually patented is exactly what the pictures in serial '081 show.” 745 F.Supp. at 523, 17 USPQ2d at 1357.

We find the “range of variation” question, much emphasized by the parties, more troublesome. The district court stated that “although Mahurkar's patents use the same diagrams, [the claims] contain limitations that did not follow ineluctably [i.e., inevitably] from the diagrams.” Id. at 524, 17 USPQ2d at 1357. As an example, the court stated (presumably with respect to independent claims 1 and 7 of the '329 patent) that

the utility patents claim a return lumen that is “substantially greater than one-half but substantially less than a full diameter” after it makes the transition from semi-circular to circular cross-section, and the drawings of serial '081 fall in this range. But until the utility application was filed, nothing established that they had to-for that matter that the utility patent would claim anything other than the precise ratio in the diagrams....

Id. at 523, 17 USPQ2d at 1357. Mahurkar argues that one of ordinary skill in this art, looking at the '081 drawings, would be able to derive the claimed range.

The declaration of Dr. Stephen Ash, submitted by Mahurkar, is directed to these concerns. Dr. Ash, a physician specializing in nephrology (the study of the kidney and its diseases) and chairman of a corporation that develops and manufactures biomedical devices including catheters, explains why one of skill in the art of catheter design and manufacture, studying the drawings of the '081 application in early 1982, would have understood from them that the return lumen must have a diameter within the range recited by independent claims 1 and 7 of the '329 patent. Dr. Ash explains in detail that a return (longer) lumen of diameter less than half that of the two lumens combined would produce too great a pressure increase, while a return lumen of diameter equal or larger than that of the two lumens combined would result in too great a pressure drop.<ref>Higher pressure drops are associated with smaller cross-sectional areas for fluid flow. Mahurkar's opening brief to this court states that by applying well-known principles of fluid mechanics (i.e., the work of Poiseuille and Hagen), it can be calculated that the diameter of the circular (return) lumen would have to be in the range of 0.66 times the diameter of the two lumens combined in order to achieve proper blood flow at equal pressure drop. The 0.66 ratio falls within the noted claim limitation.</ref> “Ordinary experience with the flow of blood in catheters would lead directly away from any such arrangement,” Ash states.

Although the district court found this reasoning “logical,” it noted that later patents issued to Mahurkar disclose diameter ratios closer to 1.0 (U.S.Patent No. 4,584,968) and exactly 0.5 (U.S.Des.Patent No. 272,651). If these other ratios were desirable, the district court queried, “how does serial '081 necessarily exclude the[m]?” 745 F.Supp. at 523, 17 USPQ2d at 1357.

The district court erred in taking Mahurkar's other patents into account. Mahurkar's later patenting of inventions involving different range limitations is irrelevant to the issue at hand. Application sufficiency under § 112, first paragraph, must be judged as of the filing date. United States Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247, 1251, 9 USPQ2d 1461, 1464 (Fed.Cir.1989).

The court further erred in applying a legal standard that essentially required the drawings of the '081 design application to necessarily exclude all diameters other than those within the claimed range. We question whether any drawing could ever do so. At least with respect to independent claims 1 and 7 of the '329 patent and claims depending therefrom, the proper test is whether the drawings conveyed with reasonable clarity to those of ordinary skill that Mahurkar had in fact invented the catheter recited in those claims, having (among several other limitations) a return lumen diameter substantially less than 1.0 but substantially greater than 0.5 times the diameter of the combined lumens. Consideration of what the drawings conveyed to persons of ordinary skill is essential. See Ralston Purina, 772 F.2d at 1575, 227 USPQ at 179 (ranges found in applicant's claims need not correspond exactly to those disclosed in parent application; issue is whether one skilled in the art could derive the claimed ranges from parent's disclosure).

Mahurkar submitted the declaration of Dr. Ash on this point; Vas-Cath submitted no technical evidence to refute Ash's conclusions. Although the district court considered Dr. Ash's declaration, we believe its import was improperly disregarded when viewed through the court's erroneous interpretation of the law.<ref>The following colloquy at oral argument before the district court supports our view:

Counsel for Mahurkar: “So the only evidence that we have on this subject from people of ordinary skill in the art is that the drawings do communicate these range limitations, and given the procedural posture of this case, the Court has to accept that evidence....”

District Court: * * * “And if you could have written a large number of things that were different from what was actually filed in 1984, then the diagram isn't enough.

And that seems to me something that can't be resolved by ogling the Ash declaration. It's really a pure question of law.” </ref> We hold that the Ash declaration and Vas-Cath's non-refutation thereof, without more, gave rise to a genuine issue of material fact inappropriate for summary disposition. See Hesston Corp. v. Sloop, 1988 U.S.Dist. LEXIS 1573, (D.Kansas) (summary judgment on § 112 “written description” issue inappropriate where resolution of what parent disclosure conveyed to those skilled in the art may require examination of experts, demonstrations and exhibits).

Mahurkar urges that at least some of the remaining claims do not contain the range limitations discussed by the district court, and that the presence of range limitations was not a proper basis for invalidating those remaining claims. For example, claim 8 of the '141 patent requires, inter alia, a smooth conical tapered tip and “the portion of said tube between said second opening and said conical tapered tip being larger than said first lumen in the transverse direction normal to the plane of said septum.” Vas-Cath counters that claim 8 of the '141 patent is just as much a “range” claim as claims 1 and 7 of the '329 patent, albeit one having only a lower limit and no upper limit.

Absent any separate discussion of these remaining claims in the district court's opinion, we assume that the court applied to them the same erroneous legal standard. Summary judgment was therefore inappropriate as to the remaining claims. Additionally, the possibility that the '081 drawings may provide an adequate § 112 “written description” of the subject matter of some of the claims but not others should have been considered. See, e.g., In re Borkowski, 422 F.2d 904, 909 n. 4, 164 USPQ 642, 646 n. 4 (CCPA 1970) (on review of § 112 non-enablement rejection: “A disclosure may, of course, be insufficient to support one claim but sufficient to support another.”) On remand, the district court should separately analyze whether the “written description” requirement has been met as to the subject matter of each claim of the '141 and '329 patents.

CONCLUSION
The district court's grant of summary judgment, holding all claims of the '329 and '141 patents invalid under 35 U.S.C. § 102(b), is hereby reversed as to all claims, and the case remanded for further proceedings consistent herewith.

COSTS
Each party to bear its own costs.

REVERSED and REMANDED.

APPENDIX
Independent Claims of the '329 Patent:
1. A double lumen catheter having an elongated tube with a proximal first cylindrical portion enclosing first and second lumens separated by an internal divider, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, and the second lumen extending from the proximal end of said elongated tube to a second opening at approximately the distal end of said first cylindrical portion, wherein the improvement comprises:
said elongated tube having at its distal end a smooth conical tapered tip that smoothly merges with a second cylindrical portion of said elongated tube, and said second cylindrical portion enclosing the first lumen from the conical tapered tip to approximately the location of said second opening, wherein said second cylindrical portion has a diameter substantially greater than one-half but substantially less than a full diameter of said first cylindrical portion.

7. A double lumen catheter having an elongated tube with a proximal first cylindrical portion enclosing first and second lumens separated by an internal divider, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, and the second lumen extending from the proximal end of said elongated tube to a second opening at approximately the distal end of said first cylindrical portion, wherein the improvement comprises:

said elongated tube having at its distal end a smooth conical tapered tip that smoothly merges with a second cylindrical portion of said elongated tube, and said second cylindrical portion enclosing the first lumen from the conical tapered tip to approximately the location of said second opening, said second cylindrical portion having a diameter substantially greater than one-half but substantially less than a full diameter of said first cylindrical portion, said divider in said first cylindrical portion being planar, the lumens being “D” shaped in cross-section in said first cylindrical portion, the elongated tube being provided with a plurality of holes in the region of the conical tapered tip, and said first cylindrical portion of the elongated tube smoothly merging with said second cylindrical portion of the elongated tube.

Independent Claims of the '141 Patent:
1. A double lumen catheter having an elongated tube with a proximal first cylindrical portion enclosing first and second lumens separated by an internal divider, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, and the second lumen extending from the proximal end of said elongated tube to a second opening at approximately the distal end of said first cylindrical portion, wherein the improvement comprises:
said elongated tube having at its distal end a smooth conical tapered tip that smoothly merges with a second cylindrical portion of said elongated tube, and said second cylindrical portion enclosing the first lumen from the conical tapered tip to approximately the location of said second opening, wherein said second sylindrical [sic] portion has a diameter substantially less than a full diameter of said first cylindrical portion but larger than said first lumen in the transverse direction normal to the plane of said flat divider.

7. A double lumen catheter comprising an elongated cylindrical tube enclosing first and second lumens separated by a flat longitudinal internal divider formed as an integral part of said tube, said tube and said divider forming said first and second lumens as semi-cylindrical cavities within said tube, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, said distal end of said tube forming a smooth conical tapered tip and the second lumen extending from the proximal end of said elongated tube to a second opening spaced a substantial distance away from said first opening toward the proximal end of said tube, the distal end of said divider being joined to the outside wall of said tube distal of said second opening, and the outside wall of said tube forming a smooth transition between said conical tapered tip and the outer circumference of the tube proximal of said second opening, said transition being larger than said first lumen in the transverse direction normal to the plane of said flat divider.

8. A double lumen catheter comprising an elongated cylindrical tube having a longitudinal planar septum of one-piece construction with said tube, said septum dividing the interior of said tube into first and second lumens, said lumens being D-shaped in cross-section, the proximal end of said tube connecting to two separate tubes communicating with the respective first and second lumens for the injection and removal of fluids, the lumen extending from the proximal end of said tube to a first lumen extending from the proximal end of said tube to a first opening at the distal end of said tube, and the second lumen extending from the proximal end of said tube to a second opening axially spaced from the distal end of said tube, said tube having at its distal end a smooth conical tapered tip that merges with the cylindrical surface of said tube, said first lumen, including the internal wall thereof formed by said septum extending continuously through said conical tapered tip, and the portion of said tube between said second opening and said conical tapered tip being larger than said first lumen in the transverse direction normal to the plane of said septum.

13. A double lumen catheter comprising an elongated cylindrical tube enclosing first and second lumens separated by a flat longitudinal internal divider formed as an integral part of said tube, said tube and said divider forming said first and second lumens as semi-cylindrical cavities within said tube, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with he [sic] respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, said distal end of said tube forming a smooth conical tapered tip defining the distal portion of said first lumen and said first opening, said first opening and an adjacent portion of said first lumen having a circular transverse cross-sectional configuration, and the second lumen extending from the proximal end of said elongated tube to a second opening spaced a substantial distance away from said first opening toward the proximal end of said tube, the inside walls of said tube forming a smooth transition between said semicylindrical and circular transverse cross-sectional configurations of said first lumen, the outside dimension of said transition being larger than said first lumen in the transverse direction normal to the plane of said flat divider.

===Footnotes===
<references/>

Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)

2011-04-08T15:19:16Z

Bill Goodwine: Created page with "United States Court of Appeals, Federal Circuit. VAS-CATH INCORPORATED and Gambro, Inc., Plaintiffs-Appellees, v. Sakharam D. MAHURKAR, and Quinton Instruments Company, Defendan..."

United States Court of Appeals, Federal Circuit.

VAS-CATH INCORPORATED and Gambro, Inc., Plaintiffs-Appellees,
v.
Sakharam D. MAHURKAR, and Quinton Instruments Company, Defendants-Appellants.

Nos. 90-1528, 91-1032.
June 7, 1991.
Rehearing Denied July 8, 1991.
Suggestion for Rehearing In Banc
Declined July 29, 1991.

Before RICH, MICHEL and PLAGER, Circuit Judges.

RICH, Circuit Judge.

Sakharam D. Mahurkar and Quinton Instruments Company (collectively Mahurkar) appeal from the September 12, 1990 partial final judgment<ref>The district court directed entry of final judgment as to the issue of patent invalidity pursuant to Fed.R.Civ.P. 54(b).</ref> of the United States District Court for the Northern District of Illinois, Easterbrook, J., sitting by designation, in Case No. 88 C 4997. Granting partial summary judgment to Vas-Cath Incorporated and its licensee Gambro, Inc. (collectively Vas-Cath), the district court declared Mahurkar's two United States utility patents Nos. 4,568,329 ('329 patent) and 4,692,141 ('141 patent), titled “Double Lumen Catheter,” invalid as anticipated under 35 U.S.C. § 102(b). In reaching its decision, reported at 745 F.Supp. 517, 17 USPQ2d 1353, the district court concluded that none of the twenty-one claims of the two utility patents was entitled, under 35 U.S.C. § 120, to the benefit of the filing date of Mahurkar's earlier-filed United States design patent application Serial No. 356,081 ('081 design application), which comprised the same drawings as the utility patents, because the design application did not provide a “written description of the invention” as required by 35 U.S.C. § 112, first paragraph. We reverse the grant of summary judgment with respect to all claims.

BACKGROUND

Sakharam Mahurkar filed the '081 design application, also titled “Double Lumen Catheter,” on March 8, 1982. The application was abandoned on November 30, 1984. Figures 1-6 of the '081 design application are reproduced below.

NOTE: This case contained images. Please see the patent for the details.

As shown, Mahurkar's catheter comprises er comprises a pair of tubes (lumens) designed to allow blood to be removed from an artery, processed in an apparatus that removes impurities, and returned close to the place of removal. Prior art catheters utilized concentric circular lumens, while Mahurkar's employs joined semi-circular tubes that come to a single tapered tip. Advantageously, the puncture area of Mahurkar's semicircular catheter is 42% less than that of a coaxial catheter carrying the same quantity of blood, and its conical tip yields low rates of injury to the blood. The prior art coaxial catheters are now obsolete; Mahurkar's catheters appear to represent more than half of the world's sales. 745 F.Supp. at 520, 17 USPQ2d at 1353-54.

After filing the '081 design application, Mahurkar also filed a Canadian Industrial Design application comprising the same drawings plus additional textual description. On August 9, 1982, Canadian Industrial Design 50,089 (Canadian '089) issued on that application.

More than one year later, on October 1, 1984, Mahurkar filed the first of two utility patent applications that would give rise to the patents now on appeal. Notably, both utility applications included the same drawings as the '081 design application.<ref>The utility patent drawings contain additional but minor shading and lead lines and reference numerals not present in the design application drawings.</ref> Serial No. 656,601 ('601 utility application) claimed the benefit of the filing date of the '081 design application, having been denominated a “continuation” thereof. In an Office Action mailed June 6, 1985, the Patent and Trademark Office (PTO) examiner noted that “the prior application is a design application,” but did not dispute that the '601 application was entitled to its filing date. On January 29, 1986, Mahurkar filed Serial No. 823,592 ('592 utility application), again claiming the benefit of the filing date of the '081 design application (the '592 utility application was denominated a continuation of the '601 utility application). In an office action mailed April 1, 1987, the examiner stated that the '592 utility application was “considered to be fully supported by applicant's parent application SN 356,081 filed March 8, 1982 [the '081 design application].” The '601 and '592 utility applications issued in 1986 and 1987, respectively, as the '329 and '141 patents, the subjects of this appeal. The independent claims of both patents are set forth in the Appendix hereto.

Vas-Cath sued Mahurkar in June 1988, seeking a declaratory judgment that the catheters it manufactured did not infringe Mahurkar's '329 and '141 utility patents.<ref>Vas-Cath's apprehension of suit apparently arose from a 1988 Canadian action instituted by Mahurkar for infringement of Canadian '089.</ref> Vas-Cath's complaint alleged, inter alia, that the '329 and '141 patents were both invalid as anticipated under 35 U.S.C. § 102(b) by Canadian '089. Vas-Cath's anticipation theory was premised on the argument that the '329 and '141 patents were not entitled under 35 U.S.C. § 120<ref>Section 120, titled “Benefit of Earlier Filing Date in the United States,” provides (emphasis ours):
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. </ref> to the filing date of the '081 design application because its drawings did not provide an adequate “written description” of the claimed invention as required by 35 U.S.C. § 112, first paragraph.

Mahurkar counterclaimed, alleging infringement. Both parties moved for summary judgment on certain issues, including validity. For purposes of the summary judgment motion, Mahurkar conceded that, if he could not antedate it, Canadian '089 would represent an enabling and thus anticipating § 102(b) reference against the claims of his '329 and '141 utility patents. 745 F.Supp. at 521, 17 USPQ2d at 1355. Vas-Cath conceded that the '081 design drawings enabled one skilled in the art to practice the claimed invention within the meaning of 35 U.S.C. § 112, first paragraph. Id. Thus, the question before the district court was whether the disclosure of the '081 design application, namely, the drawings without more, adequately meets the “written description” requirement also contained in § 112, first paragraph, so as to entitle Mahurkar to the benefit of the 1982 filing date of the '081 design application for his two utility patents and thereby antedates Canadian '089.

Concluding that the drawings do not do so, and that therefore the utility patents are anticipated by Canadian '089, the district court held the '329 and '141 patents wholly invalid under 35 U.S.C. § 102(b), id. at 524, 17 USPQ2d at 1358, and subsequently granted Mahurkar's motion for entry of a partial final judgment under Fed.R.Civ.P. 54(b) on the validity issue. This appeal followed.

DISCUSSION
The issue before us is whether the district court erred in concluding, on summary judgment, that the disclosure of the '081 design application does not provide a § 112, first paragraph “written description” adequate to support each of the claims of the '329 and '141 patents. If the court so erred as to any of the 21 claims at issue, the admittedly anticipatory disclosure of Canadian '089 will have been antedated (and the basis for the court's grant of summary judgment nullified) as to those claims.

In reviewing the district court's grant of summary judgment, we are not bound by its holding that no material facts are in dispute, and must make an independent determination as to whether the standards for summary judgment have been met. C.R. Bard, Inc. v. Advanced Cardiovascular Systems, 911 F.2d 670, 673, 15 USPQ2d 1540, 1542-43 (Fed.Cir.1990). Summary judgment will not lie if the dispute about a material fact is “genuine,” that is, if the evidence is such that a reasonable jury could return a verdict for the nonmoving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986).

The “Written Description” Requirement of § 112
The first paragraph of 35 U.S.C. § 112 requires that

[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

(Emphasis added). Application of the “written description” requirement, derived from the portion of § 112 emphasized above, is central to resolution of this appeal. The district court, having reviewed this court's decisions on the subject, remarked that “[u]nfortunately, it is not so easy to tell what the law of the Federal Circuit is.” 745 F.Supp. at 522, 17 USPQ2d at 1356. Perhaps that is so, and, therefore, before proceeding to the merits, we review the case law development of the “written description” requirement with a view to improving the situation.<ref>For additional background, see Rollins, “35 USC 120-The Description Requirement,” 64 J.Pat.Off.Soc'y 656 (1982); Walterscheid, “Insufficient Disclosure Rejections (Part III),” 62 J.Pat.Off.Soc'y 261 (1980).</ref>

The cases indicate that the “written description” requirement most often comes into play where claims not presented in the application when filed are presented thereafter. Alternatively, patent applicants often seek the benefit of the filing date of an earlier-filed foreign or United States application under 35 U.S.C. § 119 or 35 U.S.C. § 120, respectively, for claims of a later-filed application. The question raised by these situations is most often phrased as whether the application provides “adequate support” for the claim(s) at issue; it has also been analyzed in terms of “new matter” under 35 U.S.C. § 132. The “written description” question similarly arises in the interference context, where the issue is whether the specification of one party to the interference can support the claim(s) corresponding to the count(s) at issue, i.e., whether that party “can make the claim” corresponding to the interference count.

To the uninitiated, it may seem anomalous that the first paragraph of 35 U.S.C. § 112 has been interpreted as requiring a separate “description of the invention,” when the invention is, necessarily, the subject matter defined in the claims under consideration. See In re Wright, 866 F.2d 422, 424, 9 USPQ2d 1649, 1651 (Fed.Cir.1989). One may wonder what purpose a separate “written description” requirement serves, when the second paragraph of § 112 expressly requires that the applicant conclude his specification “with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

One explanation is historical: the “written description” requirement was a part of the patent statutes at a time before claims were required. A case in point is Evans v. Eaton, 20 U.S. (7 Wheat.) 356, 5 L.Ed. 472 (1822), in which the Supreme Court affirmed the circuit court's decision that the plaintiff's patent was “deficient,” and that the plaintiff could not recover for infringement thereunder. The patent laws then in effect, namely the Patent Act of 1793, did not require claims, but did require, in its 3d section, that the patent applicant “deliver a written description of his invention, and of the manner of using, or process of compounding, the same, in such full, clear and exact terms, as to distinguish the same from all things before known, and to enable any person skilled in the art or science of which it is a branch, or with which it is most nearly connected, to make, compound and use the same....” Id. at 430. In view of this language, the Court concluded that the specification of a patent had two objects, the first of which was “to enable artizans to make and use [the invention]....” Id. at 433. The second object of the specification was

to put the public in possession of what the party claims as his own invention, so as to ascertain if he claims anything that is in common use, or is already known, and to guard against prejudice or injury from the use of an invention which the party may otherwise innocently suppose not to be patented. It is, therefore, for the purpose of warning an innocent purchaser, or other person using a machine, of his infringement of the patent; and at the same time, of taking from the inventor the means of practising upon the credulity or the fears of other persons, by pretending that his invention is more than what it really is, or different from its ostensible objects, that the patentee is required to distinguish his invention in his specification.

Id. at 434.

A second, policy-based rationale for the inclusion in § 112 of both the first paragraph “written description” and the second paragraph “definiteness” requirements was set forth in Rengo Co. v. Molins Mach. Co., 657 F.2d 535, 551, 211 USPQ 303, 321 (3d Cir.), cert. denied, 454 U.S. 1055, 102 S.Ct. 600, 70 L.Ed.2d 591 (1981):

[T]here is a subtle relationship between the policies underlying the description and definiteness requirements, as the two standards, while complementary, approach a similar problem from different directions. Adequate description of the invention guards against the inventor's overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within his original creation. The definiteness requirement shapes the future conduct of persons other than the inventor, by insisting that they receive notice of the scope of the patented device.

With respect to the first paragraph of § 112 the severability of its “written description” provision from its enablement (“make and use”) provision was recognized by this court's predecessor, the Court of Customs and Patent Appeals, as early as In re Ruschig, 379 F.2d 990, 154 USPQ 118 (CCPA 1967). Although the appellants in that case had presumed that the rejection appealed from was based on the enablement requirement of § 112, id. at 995, 154 USPQ at 123, the court disagreed:

[T]he question is not whether [one skilled in the art] would be so enabled but whether the specification discloses the compound to him, specifically, as something appellants actually invented.... If [the rejection is] based on section 112, it is on the requirement thereof that “The specification shall contain a written description of the invention * * *.” (Emphasis ours.)

Id. at 995-96, 154 USPQ at 123 (first emphasis added). The issue, as the court saw it, was one of fact: “Does the specification convey clearly to those skilled in the art, to whom it is addressed, in any way, the information that appellants invented that specific compound [claimed]?” Id. at 996, 154 USPQ at 123.

In a 1971 case again involving chemical subject matter, the court expressly stated that “it is possible for a specification to enable the practice of an invention as broadly as it is claimed, and still not describe that invention.” In re DiLeone, 436 F.2d 1404, 1405, 168 USPQ 592, 593 (CCPA 1971) (emphasis added). As an example, the court posited the situation “where the specification discusses only compound A and contains no broadening language of any kind. This might very well enable one skilled in the art to make and use compounds B and C; yet the class consisting of A, B and C has not been described.” Id. at 1405 n. 1, 168 USPQ 593 n. 1 (emphases in original). See also In re Ahlbrecht, 435 F.2d 908, 911, 168 USPQ 293, 296 (CCPA 1971) (although disclosure of parent application may have enabled production of claimed esters having 2-12 methylene groups, it only described esters having 3-12 methylene groups).

The CCPA also recognized a subtle distinction between a written description adequate to support a claim under § 112 and a written description sufficient to anticipate its subject matter under § 102(b). The difference between “claim-supporting disclosures” and “claim-anticipating disclosures” was dispositive in In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971), where the court held that a U.S. “grandparent” application did not sufficiently describe the later-claimed invention, but that the appellant's intervening British application, a counterpart to the U.S. application, anticipated the claimed subject matter. As the court pointed out, “the description of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes ..., whereas the same information in a specification might not alone be enough to provide a description of that invention for purposes of adequate disclosure....” Id. at 970, 169 USPQ at 797 (citations omitted).

The purpose and applicability of the “written description” requirement were addressed in In re Smith and Hubin, 481 F.2d 910, 178 USPQ 620 (CCPA 1973), where the court stated:

Satisfaction of the description requirement insures that subject matter presented in the form of a claim subsequent to the filing date of the application was sufficiently disclosed at the time of filing so that the prima facie date of invention can fairly be held to be the filing date of the application. This concept applies whether the case factually arises out of an assertion of entitlement to the filing date of a previously filed application under § 120 ... or arises in the interference context wherein the issue is support for a count in the specification of one or more of the parties ... or arises in an ex parte case involving a single application, but where the claim at issue was filed subsequent to the filing of the application....

Id. at 914, 178 USPQ at 623-24 (citations omitted).

The CCPA's “written description” cases often stressed the fact-specificity of the issue. See, e.g., In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976) (“The primary consideration is factual and depends on the nature of the invention and the amount of knowledge imparted to those skilled in the art by the disclosure”) (emphasis in original); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (“Precisely how close the description must come to comply with § 112 must be left to case-by-case development”); DiLeone, 436 F.2d at 1405, 168 USPQ at 593 (“What is needed to meet the description requirement will necessarily vary depending on the nature of the invention claimed”). The court even went so far as to state:

[I]t should be readily apparent from recent decisions of this court involving the question of compliance with the description requirement of § 112 that each case must be decided on its own facts. Thus, the precedential value of cases in this area is extremely limited.

In re Driscoll, 562 F.2d 1245, 1250, 195 USPQ 434, 438 (CCPA 1977).

Since its inception, the Court of Appeals for the Federal Circuit has frequently addressed the “written description” requirement of § 112.<ref>See, Chester v. Miller, 906 F.2d 1574, 15 USPQ2d 1333 (Fed.Cir.1990) (parent application's disclosure of chemical species constituted 102(b) prior art against continuation-in-part (c-i-p) application on appeal, but did not provide sufficient written description to support c-i-p's claims to encompassing genus); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed.Cir.1989) (foreign priority application's disclosure of chemical subgenus was insufficient written description to support genus claims of corresponding U.S. application); In re Wright, 866 F.2d 422, 9 USPQ2d 1649 (Fed.Cir.1989) (application in “clear compliance” with § 112 “written description” requirement with respect to claim limitation that microcapsules were “not permanently fixed”); Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed.Cir.1988) (holding generic interference count to scroll compressor supported by written description of foreign priority application, the court stated, “A specification may, within the meaning of 35 U.S.C. § 112 ¶ 1, contain a written description of a broadly claimed invention without describing all species that claim encompasses”); Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 5 USPQ2d 1194 (Fed.Cir.1987) (parent application's lack of express disclosure of inherent “equiaxed microstructure” property did not deprive c-i-p's claims to a sintered ceramic body having said property of the benefit of parent's filing date), cert. denied, 486 U.S. 1008, 108 S.Ct. 1735, 100 L.Ed.2d 198 (1988); Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 227 USPQ 177 (1985) (parent application's disclosure provided adequate written description support for certain claim limitations respecting protein content, temperature, and moisture content, but not others); In re Wilder, 736 F.2d 1516, 222 USPQ 369 (1984) (broadly worded title, general description of drawing, and objects of invention of parent patent application did not adequately support reissue application claims directed to genus of indicating mechanisms for dictating machines), cert. denied, 469 U.S. 1209, 105 S.Ct. 1173, 84 L.Ed.2d 323 (1985); In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed.Cir.1983) (claims to method of redeeming merchandise coupons, comprising step of providing an audit of coupon traffic, were not supported by specification of parent application).</ref> A fairly uniform standard for determining compliance with the “written description” requirement has been maintained throughout: “Although [the applicant] does not have to describe exactly the subject matter claimed, ... the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed.Cir.1989) (citations omitted). “[T]he test for sufficiency of support in a parent application is whether the disclosure of the application relied upon ‘reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.’ ” Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed.Cir.1985) (quoting In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.Cir.1983)). Our cases also provide that compliance with the “written description” requirement of § 112 is a question of fact, to be reviewed under the clearly erroneous standard. Gosteli, 872 F.2d at 1012, 10 USPQ2d at 1618; Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed.Cir.1988).

There appears to be some confusion in our decisions concerning the extent to which the “written description” requirement is separate and distinct from the enablement requirement. For example, in In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed.Cir.1984), cert. denied, 469 U.S. 1209, 105 S.Ct. 1173, 84 L.Ed.2d 323 (1985), we flatly stated: “The description requirement is found in 35 U.S.C. § 112 and is separate from the enablement requirement of that provision.” However, in a later case we said, “The purpose of the [written] description requirement [of section 112, first paragraph] is to state what is needed to fulfill the enablement criteria. These requirements may be viewed separately, but they are intertwined.” Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1421, 5 USPQ2d 1194, 1197 (Fed.Cir.1987), cert. denied, 486 U.S. 1008, 108 S.Ct. 1735, 100 L.Ed.2d 198 (1988). “The written description must communicate that which is needed to enable the skilled artisan to make and use the claimed invention.” Id.

To the extent that Kennecott conflicts with Wilder, we note that decisions of a three-judge panel of this court cannot overturn prior precedential decisions. See UMC Elec. Co. v. United States, 816 F.2d 647, 652 n. 6, 2 USPQ2d 1465, 1468 n. 7 (Fed.Cir.1987), cert. denied, 484 U.S. 1025, 108 S.Ct. 748, 98 L.Ed.2d 761 (1988). This court in Wilder (and the CCPA before it) clearly recognized, and we hereby reaffirm, that 35 U.S.C. § 112, first paragraph, requires a “written description of the invention” which is separate and distinct from the enablement requirement. The purpose of the “written description” requirement is broader than to merely explain how to “make and use”; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the “written description” inquiry, whatever is now claimed.

The District Court's Analysis

We agree with the district court's conclusion that drawings alone may be sufficient to provide the “written description of the invention” required by § 112, first paragraph. Several earlier cases, though not specifically framing the issue in terms of compliance with the “written description” requirement, support this conclusion.

For example, we previously stated that “[t]here is no statutory prohibition against an applicant's reliance, in claiming priority under 35 U.S.C. § 120, on a disclosure in a design application if the statutory conditions are met.” KangaROOS U.S.A., Inc. v. Caldor, Inc., 778 F.2d 1571, 1574, 228 USPQ 32, 33 (Fed.Cir.1985). The question whether the applicant's claim to a pocket for athletic shoes was in fact entitled to the filing date of his earlier design application was not resolved in KangaROOS, however. Issues of intent to deceive the PTO were involved, as well as an error of law by the district court in construing the claims of the wrong application. Id. at 1574-75, 228 USPQ at 34-35. The district court's grant of partial summary judgment of inequitable conduct was vacated and the case remanded for trial.

In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981) involved a claim under 35 U.S.C. § 120 to the benefit of the filing date of two earlier design patent applications that included drawings of a carrying and storage case for tape cartridges and cassettes. The invention claimed in the later-filed utility application was an “insert” of “compartmented form,” adapted for use in the interior of the storage case. Id. at 429, 209 USPQ at 47. The court characterized the dispositive issue as “whether the design applications sufficiently disclose the invention now claimed in the ... utility application at bar.” Id. at 429, 209 USPQ at 46. While specifically recognizing that “drawings may be used to satisfy the disclosure requirement,” id. at 429, 209 USPQ at 46-47, the court held that Berkman's design applications “fail[ed] to disclose the claimed invention sufficiently to comply with the requirements of § 112 first paragraph.” As the court explained:

Nowhere in the design applications is the word “insert” used, nor is there any indication that the interiors of the cases are inserts. The drawings do not disclose how the insert can be used to accommodate either cassette or cartridge type tape enclosures. Berkman argues that one skilled in the art would readily recognize that the interiors of the cases illustrated in the design drawings are inserts. We do not agree. There is nothing shown in the drawings to lead one of ordinary skill to such a conclusion.

Id. at 430, 209 USPQ at 47.

The issue in In re Wolfensperger, 49 CCPA 1075, 302 F.2d 950, 133 USPQ 537 (1962) was whether the specification of the applicant's utility patent application disclosing a ball valve, and particularly the drawings thereof, supported a claim limitation that read: “having, in untensioned condition, a mean diameter corresponding approximately to the mean diameter of said chamber and a radial width smaller than the radial width of said chamber....” Id. at 1077, 302 F.2d at 952, 133 USPQ at 538. The court did not agree with the Board's conclusion that the “radial width” relationship was not supported by applicant's figure 5:

The board's statement that “drawings alone cannot form the basis of a valid claim” is too broad a generalization to be valid and is, furthermore, contrary to well-settled and long-established Patent Office practice.... Consider, for one thing, that the sole disclosure in a design patent application is by means of a drawing.... For another thing, consider that the only informative and significant disclosure in many electrical and chemical patents is by means of circuit diagrams or graphic formulae, constituting “drawings” in the case....

... The practical, legitimate enquiry in each case of this kind is what the drawing in fact discloses to one skilled in the art....

... The issue here is whether there is supporting “disclosure” and it does not seem, under established procedure of long standing, approved by this court, to be of any legal significance whether the disclosure is found in the specification or in the drawings so long as it is there.

Id. at 1080-83, 302 F.2d at 955-56, 133 USPQ at 541-42.

Employing a “new matter” analysis, the court in In re Heinle, 342 F.2d 1001, 145 USPQ 131 (CCPA 1965) reversed a PTO rejection of the applicant's claims to a “toilet paper core” as “including subject matter having no clear basis in the application as filed.” Id. at 1003, 145 USPQ at 133. The claim limitation said to be without support required that the width of the apertures in the core be “approximately one-fourth of the circumference of said core.” Id. at 1007, 145 USPQ at 136. Having reviewed the application drawings relied upon for support, the court stated:

it seems to us that [the drawings] conform to the one-fourth circumference limitation almost exactly. But the claim requires only an approximation. Since we believe an amendment to the specification to state that one-fourth of the circumference is the aperture width would not violate the rule against “new matter,” we feel that supporting disclosure exists. The rejection is therefore in error.

Id.

These cases support our holding that, under proper circumstances, drawings alone may provide a “written description” of an invention as required by § 112. Whether the drawings are those of a design application or a utility application is not determinative, although in most cases the latter are much more detailed. In the instant case, however, the design drawings are substantially identical to the utility application drawings.

Although we join with the district court in concluding that drawings may suffice to satisfy the “written description” requirement of § 112, we can not agree with the legal standard that the court imposed for “written description” compliance, nor with the court's conclusion that no genuine issues of material fact were in dispute.

With respect to the former, the district court stated that although the '081 design drawings in question “allowed practice” [i.e., enabled], they did not necessarily

show what the invention is, when “the invention” could be a subset or a superset of the features shown. Is the invention the semi-circular lumens? The conical tip? The ratio at which the tip tapers? The shape, size, and placement of the inlets and outlets? You can measure all of these things from the diagrams in serial '081 and so can practice the device, but you cannot tell, because serial '081 does not say, what combination of these things is “the invention”, and what range of variation is allowed without exceeding the scope of the claims. To show one example of an invention, even a working model, is not to describe what is novel or important.

745 F.Supp. at 522, 17 USPQ2d at 1356.

We find the district court's concern with “what the invention is” misplaced, and its requirement that the '081 drawings “describe what is novel or important” legal error. There is “no legally recognizable or protected ‘essential’ element, ‘gist’ or ‘heart’ of the invention in a combination patent.” Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 345, 81 S.Ct. 599, 604, 5 L.Ed.2d 592 (1961). “The invention” is defined by the claims on appeal. The instant claims do not recite only a pair of semi-circular lumens, or a conical tip, or a ratio at which the tip tapers, or the shape, size, and placement of the inlets and outlets; they claim a double lumen catheter having a combination of those features. That combination invention is what the '081 drawings show. As the district court itself recognized, “what Mahurkar eventually patented is exactly what the pictures in serial '081 show.” 745 F.Supp. at 523, 17 USPQ2d at 1357.

We find the “range of variation” question, much emphasized by the parties, more troublesome. The district court stated that “although Mahurkar's patents use the same diagrams, [the claims] contain limitations that did not follow ineluctably [i.e., inevitably] from the diagrams.” Id. at 524, 17 USPQ2d at 1357. As an example, the court stated (presumably with respect to independent claims 1 and 7 of the '329 patent) that

the utility patents claim a return lumen that is “substantially greater than one-half but substantially less than a full diameter” after it makes the transition from semi-circular to circular cross-section, and the drawings of serial '081 fall in this range. But until the utility application was filed, nothing established that they had to-for that matter that the utility patent would claim anything other than the precise ratio in the diagrams....

Id. at 523, 17 USPQ2d at 1357. Mahurkar argues that one of ordinary skill in this art, looking at the '081 drawings, would be able to derive the claimed range.

The declaration of Dr. Stephen Ash, submitted by Mahurkar, is directed to these concerns. Dr. Ash, a physician specializing in nephrology (the study of the kidney and its diseases) and chairman of a corporation that develops and manufactures biomedical devices including catheters, explains why one of skill in the art of catheter design and manufacture, studying the drawings of the '081 application in early 1982, would have understood from them that the return lumen must have a diameter within the range recited by independent claims 1 and 7 of the '329 patent. Dr. Ash explains in detail that a return (longer) lumen of diameter less than half that of the two lumens combined would produce too great a pressure increase, while a return lumen of diameter equal or larger than that of the two lumens combined would result in too great a pressure drop.<ref>Higher pressure drops are associated with smaller cross-sectional areas for fluid flow. Mahurkar's opening brief to this court states that by applying well-known principles of fluid mechanics (i.e., the work of Poiseuille and Hagen), it can be calculated that the diameter of the circular (return) lumen would have to be in the range of 0.66 times the diameter of the two lumens combined in order to achieve proper blood flow at equal pressure drop. The 0.66 ratio falls within the noted claim limitation.</ref> “Ordinary experience with the flow of blood in catheters would lead directly away from any such arrangement,” Ash states.

Although the district court found this reasoning “logical,” it noted that later patents issued to Mahurkar disclose diameter ratios closer to 1.0 (U.S.Patent No. 4,584,968) and exactly 0.5 (U.S.Des.Patent No. 272,651). If these other ratios were desirable, the district court queried, “how does serial '081 necessarily exclude the[m]?” 745 F.Supp. at 523, 17 USPQ2d at 1357.

The district court erred in taking Mahurkar's other patents into account. Mahurkar's later patenting of inventions involving different range limitations is irrelevant to the issue at hand. Application sufficiency under § 112, first paragraph, must be judged as of the filing date. United States Steel Corp. v. Phillips Petroleum Co., 865 F.2d 1247, 1251, 9 USPQ2d 1461, 1464 (Fed.Cir.1989).

The court further erred in applying a legal standard that essentially required the drawings of the '081 design application to necessarily exclude all diameters other than those within the claimed range. We question whether any drawing could ever do so. At least with respect to independent claims 1 and 7 of the '329 patent and claims depending therefrom, the proper test is whether the drawings conveyed with reasonable clarity to those of ordinary skill that Mahurkar had in fact invented the catheter recited in those claims, having (among several other limitations) a return lumen diameter substantially less than 1.0 but substantially greater than 0.5 times the diameter of the combined lumens. Consideration of what the drawings conveyed to persons of ordinary skill is essential. See Ralston Purina, 772 F.2d at 1575, 227 USPQ at 179 (ranges found in applicant's claims need not correspond exactly to those disclosed in parent application; issue is whether one skilled in the art could derive the claimed ranges from parent's disclosure).

Mahurkar submitted the declaration of Dr. Ash on this point; Vas-Cath submitted no technical evidence to refute Ash's conclusions. Although the district court considered Dr. Ash's declaration, we believe its import was improperly disregarded when viewed through the court's erroneous interpretation of the law.<ref>The following colloquy at oral argument before the district court supports our view:

Counsel for Mahurkar: “So the only evidence that we have on this subject from people of ordinary skill in the art is that the drawings do communicate these range limitations, and given the procedural posture of this case, the Court has to accept that evidence....”

District Court: * * * “And if you could have written a large number of things that were different from what was actually filed in 1984, then the diagram isn't enough.

And that seems to me something that can't be resolved by ogling the Ash declaration. It's really a pure question of law.” </ref> We hold that the Ash declaration and Vas-Cath's non-refutation thereof, without more, gave rise to a genuine issue of material fact inappropriate for summary disposition. See Hesston Corp. v. Sloop, 1988 U.S.Dist. LEXIS 1573, (D.Kansas) (summary judgment on § 112 “written description” issue inappropriate where resolution of what parent disclosure conveyed to those skilled in the art may require examination of experts, demonstrations and exhibits).

Mahurkar urges that at least some of the remaining claims do not contain the range limitations discussed by the district court, and that the presence of range limitations was not a proper basis for invalidating those remaining claims. For example, claim 8 of the '141 patent requires, inter alia, a smooth conical tapered tip and “the portion of said tube between said second opening and said conical tapered tip being larger than said first lumen in the transverse direction normal to the plane of said septum.” Vas-Cath counters that claim 8 of the '141 patent is just as much a “range” claim as claims 1 and 7 of the '329 patent, albeit one having only a lower limit and no upper limit.

Absent any separate discussion of these remaining claims in the district court's opinion, we assume that the court applied to them the same erroneous legal standard. Summary judgment was therefore inappropriate as to the remaining claims. Additionally, the possibility that the '081 drawings may provide an adequate § 112 “written description” of the subject matter of some of the claims but not others should have been considered. See, e.g., In re Borkowski, 422 F.2d 904, 909 n. 4, 164 USPQ 642, 646 n. 4 (CCPA 1970) (on review of § 112 non-enablement rejection: “A disclosure may, of course, be insufficient to support one claim but sufficient to support another.”) On remand, the district court should separately analyze whether the “written description” requirement has been met as to the subject matter of each claim of the '141 and '329 patents.

CONCLUSION
The district court's grant of summary judgment, holding all claims of the '329 and '141 patents invalid under 35 U.S.C. § 102(b), is hereby reversed as to all claims, and the case remanded for further proceedings consistent herewith.

COSTS
Each party to bear its own costs.

REVERSED and REMANDED.

APPENDIX
Independent Claims of the '329 Patent:
1. A double lumen catheter having an elongated tube with a proximal first cylindrical portion enclosing first and second lumens separated by an internal divider, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, and the second lumen extending from the proximal end of said elongated tube to a second opening at approximately the distal end of said first cylindrical portion, wherein the improvement comprises:
said elongated tube having at its distal end a smooth conical tapered tip that smoothly merges with a second cylindrical portion of said elongated tube, and said second cylindrical portion enclosing the first lumen from the conical tapered tip to approximately the location of said second opening, wherein said second cylindrical portion has a diameter substantially greater than one-half but substantially less than a full diameter of said first cylindrical portion.

7. A double lumen catheter having an elongated tube with a proximal first cylindrical portion enclosing first and second lumens separated by an internal divider, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, and the second lumen extending from the proximal end of said elongated tube to a second opening at approximately the distal end of said first cylindrical portion, wherein the improvement comprises:

said elongated tube having at its distal end a smooth conical tapered tip that smoothly merges with a second cylindrical portion of said elongated tube, and said second cylindrical portion enclosing the first lumen from the conical tapered tip to approximately the location of said second opening, said second cylindrical portion having a diameter substantially greater than one-half but substantially less than a full diameter of said first cylindrical portion, said divider in said first cylindrical portion being planar, the lumens being “D” shaped in cross-section in said first cylindrical portion, the elongated tube being provided with a plurality of holes in the region of the conical tapered tip, and said first cylindrical portion of the elongated tube smoothly merging with said second cylindrical portion of the elongated tube.

Independent Claims of the '141 Patent:
1. A double lumen catheter having an elongated tube with a proximal first cylindrical portion enclosing first and second lumens separated by an internal divider, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, and the second lumen extending from the proximal end of said elongated tube to a second opening at approximately the distal end of said first cylindrical portion, wherein the improvement comprises:
said elongated tube having at its distal end a smooth conical tapered tip that smoothly merges with a second cylindrical portion of said elongated tube, and said second cylindrical portion enclosing the first lumen from the conical tapered tip to approximately the location of said second opening, wherein said second sylindrical [sic] portion has a diameter substantially less than a full diameter of said first cylindrical portion but larger than said first lumen in the transverse direction normal to the plane of said flat divider.

7. A double lumen catheter comprising an elongated cylindrical tube enclosing first and second lumens separated by a flat longitudinal internal divider formed as an integral part of said tube, said tube and said divider forming said first and second lumens as semi-cylindrical cavities within said tube, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with the respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, said distal end of said tube forming a smooth conical tapered tip and the second lumen extending from the proximal end of said elongated tube to a second opening spaced a substantial distance away from said first opening toward the proximal end of said tube, the distal end of said divider being joined to the outside wall of said tube distal of said second opening, and the outside wall of said tube forming a smooth transition between said conical tapered tip and the outer circumference of the tube proximal of said second opening, said transition being larger than said first lumen in the transverse direction normal to the plane of said flat divider.

8. A double lumen catheter comprising an elongated cylindrical tube having a longitudinal planar septum of one-piece construction with said tube, said septum dividing the interior of said tube into first and second lumens, said lumens being D-shaped in cross-section, the proximal end of said tube connecting to two separate tubes communicating with the respective first and second lumens for the injection and removal of fluids, the lumen extending from the proximal end of said tube to a first lumen extending from the proximal end of said tube to a first opening at the distal end of said tube, and the second lumen extending from the proximal end of said tube to a second opening axially spaced from the distal end of said tube, said tube having at its distal end a smooth conical tapered tip that merges with the cylindrical surface of said tube, said first lumen, including the internal wall thereof formed by said septum extending continuously through said conical tapered tip, and the portion of said tube between said second opening and said conical tapered tip being larger than said first lumen in the transverse direction normal to the plane of said septum.

13. A double lumen catheter comprising an elongated cylindrical tube enclosing first and second lumens separated by a flat longitudinal internal divider formed as an integral part of said tube, said tube and said divider forming said first and second lumens as semi-cylindrical cavities within said tube, the proximal end of said elongated tube connecting to two separate connecting tubes communicating with he [sic] respective first and second lumens for the injection and removal of fluid, the first lumen extending from the proximal end of said elongated tube to a first opening at the distal end of said elongated tube, said distal end of said tube forming a smooth conical tapered tip defining the distal portion of said first lumen and said first opening, said first opening and an adjacent portion of said first lumen having a circular transverse cross-sectional configuration, and the second lumen extending from the proximal end of said elongated tube to a second opening spaced a substantial distance away from said first opening toward the proximal end of said tube, the inside walls of said tube forming a smooth transition between said semicylindrical and circular transverse cross-sectional configurations of said first lumen, the outside dimension of said transition being larger than said first lumen in the transverse direction normal to the plane of said flat divider.

===Footnotes===
<references/>

AME 40590 Homeworks, Spring 2011

2011-04-08T15:12:21Z

Bill Goodwine:

AME 40590 Intellectual Property for Engineers

2011-04-08T15:11:55Z

Bill Goodwine: /* ALPHABETICAL LISTING OF CASES */

=ALPHABETICAL LISTING OF CASES=

*[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]
*[[Alza Corp. v. Mylan Laboratories, 464 F.3d 1286, (2006)]]
*[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
*[[Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961)]]
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)]]
*[[Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)]]
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
*[[Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)]]
*[[Bonito Boats. v. Thunder Craft, 489 U.S. 141 (1989)]]
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Chester v. Miller, 906 F.2d 1574 (1990)]]
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Diamond v. Diehr, 450 U.S. 175 (1981)]]
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)]]
*[[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
*[[Gould v. Hellwarth, 472 F2d 1383 (1973)]]
*[[Graham v. John Deere, 383 U.S. 1 (1966)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]
*[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850) ]]
*[[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]
*[[In Re Bilski]]
**[[In Re Bilski, Dky concurring opinion]]
**[[In Re Bilski, Newman dissenting opinion]]
**[[In Re Bilski, Mayer dissenting opinion]]
**[[In Re Bilski, Rader dissenting opinion]]
*[[In re Brana, 51 F.3d 1560 (1995)]]
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]
*[[In re Kahn, CAFC 04-1616 (2006)]]
*[[In Re Rouffet]]
*[[J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)]]
*[[Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)]]
*[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
*[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]
*[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
*[[Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]
*[[Microsoft Corp v. At&T Corp.]]
*[[Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)]]
*[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]
*[[Philips Electric Co. v. Thermal Industries, Inc. (full text)]]
*[[Quanta Computers Inc v. LG Electronics (full text)]]
*[[Reiner v. I. Leon Co. (full text)]]
*[[South Corp. v. US]]
*[[South Corp. v. US (full text)]]
*[[South Corp. v. US 690 F.2d 1368 (1982)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]
*[[Traffix Devices, Inc. vs. Marketing Displays, Inc.]]
*[[US v. Adams, 383 U.S. 39 (1966)]]
*[[US v. Adams (full text)]]
*[[U.S. v. Univis Lens Co., 316 U.S. 241 (1942)]]
*[[Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc. (full text)]]
*[[Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)]]
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
**[[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
**[[Warner-Jenkinson v. Hilton Davis Respondent Brief]]
*[[Winner International Royalty Co. v. Wang, 202 F.3d 1340 (2000)]]
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=[[INTRODUCTION]]=
This is a summary. Click on the title for the full chapter: [[INTRODUCTION]]

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special appeals court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the Constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[NONOBVIOUSNESS]]=
This is a summary. Click on the title for the full chapter: [[NONOBVIOUSNESS]]

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[INFRINGEMENT]]=
This is a summary. Click on the title for the full chapter: [[INFRINGEMENT]]

=[[THE PATENT DOCUMENT]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT DOCUMENT]]

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
This is a summary. Click on the title for the full chapter: [[NOVELTY]]

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

Outline:
*Literal Infringement
*The Doctrine of Equivalents

=[[UTILITY]]=
This is a summary. Click on the title for the full chapter: [[UTILITY]]

=[[PATENTABLE SUBJECT MATTER]]=
This is a summary. Click on the title for the full chapter: [[PATENTABLE SUBJECT MATTER]]

Can computer programs, algorithms, laws of nature, life forms, plants, ''etc.'' be patented. In particular, are the following patentable:

* Plants
* Algorithms and Computer Programs
* Scientific Facts?

In a recent case
* State Street (1998)
the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

=[[FOREIGN AND DOMESTIC PRIORITY]]=
This is a summary. Click on the title for the full chapter: [[FOREIGN AND DOMESTIC PRIORITY]]

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT APPLICATION]]

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=[[INVENTOR ELIGIBILITY]]=
This is a summary. Click on the title for the full chapter: [[INVENTOR ELIGIBILITY]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=[[ANTICIPATION]]=
This is a summary. Click on the title for the full chapter: [[ANTICIPATION]]

=[[PRIOR ART]]=
This is a summary. Click on the title for the full chapter: [[PRIOR ART]]

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

AME 40590 Homeworks, Spring 2011

2011-04-01T12:38:38Z

Bill Goodwine: /* Due Monday, April 4, 2011 */

AME 40590 Homeworks, Spring 2011

2011-04-01T12:37:46Z

Bill Goodwine: /* Due Monday, April 4, 2011 */

AME 40590 Homeworks, Spring 2011

2011-04-01T12:37:11Z

Bill Goodwine: /* Due Monday, April 4, 2011 */

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 25, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]

=Due Monday, March 28, 2011=
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
*If your last name starts with a letter between and including A through L, read [[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
*If your last name starts with a letter between and including M through Z, read [[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=Due Wednesday, March 30, 2011=
We will do the debate based on the two briefs from Monday.

Also, having gone through it myself I can sympathize with the point of view that everything probably seems vague and problematic. At this point you would probably read a claim and be pretty hard pressed to describe the extent of the claims since the doctrine of equivalents would make the bounds for it very unclear. To help with this, your additional assignment for Wednesday is to go to Westlaw and look up Warner-Jenkinson. Find the headnote(s) dealing with the doctrine of equivalents and try to find a case with a pretty clear holding. In other words, even though the trial happened and the result was appealed, the outcome wasn't too debatable. Finding a critical mass of cases that have "clear" outcomes in terms of which side of the equivalents line they fall will probably help clarify this. Pick your case and read it. Be ready to discuss it on Wednesday.

=Due Monday, April 4, 2011=
* Go to the [[Doctrine of Equivalents Case List]] page and add a one paragraph summary of the case you read for last class. Be sure to start it with the title and the citation like the example I gave. Be sure to keep my example at the top.
* Read Honeywell Intern., Inc. v. Hamilton Sundstrand Corp. 523 F.3d 1304, 2008 on Westlaw. Also read the patent at issue.
* If you are an AME student and your last name starts with A-L, then you represent Honeywell. If your last name starts with M-Z, then you represent Hamilton-Sunstrand.
* If you are not an AME student, then you are a Supreme Court Justice.
* If you are an AME student, then write a one-page brief (less than 1000 words) that presents an argument why the Supreme Court should decide the case in your favor. Post it to the course wiki and also submit a printed version on Wednesday.
** Normally the Supreme Court would not even consider the actual facts of the equivalents holding since that is a matter of fact and the lower courts and juries are given wide discretion in their findings. However, today you can pretend that the Supreme Court will consider it, so you can argue the facts of why or why not it is equivalent. If you do this, be sure to point out how your argument relates to the prior Supreme Court cases we read on the Doctrine of Equivalents.
** You may alternatively have your brief focus on a legal issue such as the estoppel issues.
** I want you to write this from scratch based on your engineering knowledge and the cases we have read so far. Of course the briefs are available on Westlaw, including the briefs for writ of certiorari, which was denied, to the Supreme Court. Any submitted briefs that just summarize those will not be given much credit.
* On Monday in class split into the two sides and take 15 minutes to elect a head lawyer and get your arguments summarized and in order. After that each side gets 5 minutes, alternating back and forth until class is over. The loser in the CAFC gets to go first. If you are a judge, your job is to make the right decision, meaning it should do things like
** be consistent with precedent, of if not, then there must be a good reason for deviating from it,
** be clear,
** be fair,
*** the patentee got to draft the claims, there should be a burden of doing it right for them
*** but we don't want lazy, unscrupulous cheaters to get away with trivial modifications that basically don't deviate from the essence of the inventive aspect of the patent
** be easy to apply,
** promote the progress of science and the useful arts,
** be logical, i.e., amending claims to avoid prior art should definitely be a bar to a future expansion of the claim into that same area,
** etc.
* The Supreme Court Justices can interrupt any arguments and ask any questions they want. The point of asking questions isn't to put the lawyers on the spot, but to simply help the Supreme Court make the right decision. Getting each side to respond to the arguments made by the other side will help them make a good decision. The Justices should probably sit in the very front row or stand in front of the class. The Justices should be familiar with the case, so of course they need to read the case and patent too.
* The Supreme Court Justices must submit a one-page (1000-word) decision on Wednesday. In class on Wednesday, they will have to explain their decision.
* Professor Batill has agreed to get class started and make sure things are working ok. He shouldn't have to do much other than maybe keep time (but of course he can be a justice if he wants to).

AME 40590 Homeworks, Spring 2011

2011-04-01T12:34:07Z

Bill Goodwine: /* Due Monday, April 4, 2011 */

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 25, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]

=Due Monday, March 28, 2011=
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
*If your last name starts with a letter between and including A through L, read [[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
*If your last name starts with a letter between and including M through Z, read [[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=Due Wednesday, March 30, 2011=
We will do the debate based on the two briefs from Monday.

Also, having gone through it myself I can sympathize with the point of view that everything probably seems vague and problematic. At this point you would probably read a claim and be pretty hard pressed to describe the extent of the claims since the doctrine of equivalents would make the bounds for it very unclear. To help with this, your additional assignment for Wednesday is to go to Westlaw and look up Warner-Jenkinson. Find the headnote(s) dealing with the doctrine of equivalents and try to find a case with a pretty clear holding. In other words, even though the trial happened and the result was appealed, the outcome wasn't too debatable. Finding a critical mass of cases that have "clear" outcomes in terms of which side of the equivalents line they fall will probably help clarify this. Pick your case and read it. Be ready to discuss it on Wednesday.

=Due Monday, April 4, 2011=
* Go to the [[Doctrine of Equivalents Case List]] page and add a one paragraph summary of the case you read for last class. Be sure to start it with the title and the citation like the example I gave. Be sure to keep my example at the top.
* Read Honeywell Intern., Inc. v. Hamilton Sundstrand Corp. 523 F.3d 1304, 2008 on Westlaw. Also read the patent at issue.
* If you are an AME student and your last name starts with A-L, then you represent Honeywell. If your last name starts with M-Z, then you represent Hamilton-Sunstrand.
* If you are not an AME student, then you are a Supreme Court Justice.
* If you are an AME student, then write a one-page brief (less than 1000 words) that presents an argument why the Supreme Court should decide the case in your favor. Post it to the course wiki and also submit a printed version on Wednesday.
** Normally the Supreme Court would not even consider the actual facts of the equivalents holding since that is a matter of fact and the lower courts and juries are given wide discretion in their findings. However, today you can pretend that the Supreme Court will consider it, so you can argue the facts of why or why not it is equivalent. If you do this, be sure to point out how your argument relates to the prior Supreme Court cases we read on the Doctrine of Equivalents.
** You may alternatively have your brief focus on a legal issue such as the estoppel issues.
** I want you to write this from scratch based on your engineering knowledge and the cases we have read so far. Of course the briefs are available on Westlaw, including the briefs for writ of certiorari, which was denied, to the Supreme Court. Any submitted briefs that just summarize those will not be given much credit.
* On Monday in class split into the two sides and take 15 minutes to elect a head lawyer and get your arguments summarized and in order. After that each side gets 5 minutes, alternating back and forth until class is over. The loser in the CAFC gets to go first. If you are a judge, your job is to make the right decision, meaning it should do things like
** be consistent with precedent, of if not, then there must be a good reason for deviating from it,
** be clear,
** be fair,
*** the patentee got to draft the claims, there should be a burden of doing it right for them
*** but we don't want lazy, unscrupulous cheaters to get away with trivial modifications that basically don't deviate from the essence of the inventive aspect of the patent
** be easy to apply,
** promote the progress of science and the useful arts,
** be logical, i.e., amending claims to avoid prior art should definitely be a bar to a future expansion of the claim into that same area,
** etc.
* The Supreme Court Justices can interrupt any arguments and ask any questions they want. The point of asking questions isn't to put the lawyers on the spot, but to simply help them make the right decision. Getting each side to respond to the arguments made by the other side will help them make a good decision. The Justices should probably sit in the very front row or stand in front of the class. The Justices should be familiar with the case, so of course they need to read the case and patent too.
* The Supreme Court Justices must submit a one-page (1000-word) decision on Wednesday. In class on Wednesday, they will have to explain their decision.
* Professor Batill has agreed to get class started and make sure things are working ok. He shouldn't have to do much other than maybe keep time (but of course he can be a justice if he wants to).

AME 40590 Homeworks, Spring 2011

2011-04-01T12:33:04Z

Bill Goodwine: /* Due Monday, April 4, 2011 */

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 25, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]

=Due Monday, March 28, 2011=
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
*If your last name starts with a letter between and including A through L, read [[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
*If your last name starts with a letter between and including M through Z, read [[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=Due Wednesday, March 30, 2011=
We will do the debate based on the two briefs from Monday.

Also, having gone through it myself I can sympathize with the point of view that everything probably seems vague and problematic. At this point you would probably read a claim and be pretty hard pressed to describe the extent of the claims since the doctrine of equivalents would make the bounds for it very unclear. To help with this, your additional assignment for Wednesday is to go to Westlaw and look up Warner-Jenkinson. Find the headnote(s) dealing with the doctrine of equivalents and try to find a case with a pretty clear holding. In other words, even though the trial happened and the result was appealed, the outcome wasn't too debatable. Finding a critical mass of cases that have "clear" outcomes in terms of which side of the equivalents line they fall will probably help clarify this. Pick your case and read it. Be ready to discuss it on Wednesday.

=Due Monday, April 4, 2011=
* Go to the [[Doctrine of Equivalents Case List]] page and add a one paragraph summary of the case you read for last class. Be sure to start it with the title and the citation like the example I gave. Be sure to keep my example at the top.
* Read Honeywell Intern., Inc. v. Hamilton Sundstrand Corp. 523 F.3d 1304, 2008 on Westlaw. Also read the patent at issue.
* If you are an AME student and your last name starts with A-L, then you represent Honeywell. If your last name starts with M-Z, then you represent Hamilton-Sunstrand.
* If you are not an AME student, then you are a Supreme Court Justice.
* If you are an AME student, then write a one-page brief (less than 1000 words) that presents an argument why the Supreme Court should decide the case in your favor. Post it to the course wiki and also submit a printed version on Wednesday.
** Normally the Supreme Court would not even consider the actual facts of the equivalents holding since that is a matter of fact and the lower courts and juries are given wide discretion in their findings. However, today you can pretend that the Supreme Court will consider it, so you can argue the facts of why or why not it is equivalent. If you do this, be sure to point out how your argument relates to the prior Supreme Court cases we read on the Doctrine of Equivalents.
** You may alternatively have your brief focus on a legal issue such as the estoppel issues.
** I want you to write this from scratch based on your engineering knowledge and the cases we have read so far. Of course the briefs are available on Westlaw, including the briefs for writ of certiorari, which was denied, to the Supreme Court. Any submitted briefs that just summarize those will not be given much credit.
* On Monday in class split into the two sides and take 15 minutes to elect a head lawyer and get your arguments summarized and in order. After that each side gets 5 minutes, alternating back and forth until class is over. The loser in the CAFC gets to go first. If you are a judge, your job is to make the right decision, meaning it should do things like
** be consistent with precedent, of if not, then there must be a good reason for deviating from it,
** be clear,
** be fair,
*** the patentee got to draft the claims, there should be a burden of doing it right for them
*** but we don't want lazy, unscrupulous cheaters to get away with trivial modifications that basically don't deviate from the essence of the inventive aspect of the patent
** be easy to apply,
** promote the progress of science and the useful arts,
** be logical, i.e., amending claims to avoid prior art should definitely be a bar to a future expansion of the claim into that same area,
** etc.
* The Supreme Court Justices can interrupt any arguments and ask any questions they want. The point of asking questions isn't to put the lawyers on the spot, but to simply help them make the right decision. Getting each side to respond to the arguments made by the other side will help them make a good decision. The Justices should probably sit in the very front row or stand in front of the class.
* The Supreme Court Justices must submit a one-page (1000-word) decision on Wednesday. In class on Wednesday, they will have to explain their decision.
* Professor Batill has agreed to get class started and make sure things are working ok. He shouldn't have to do much other than maybe keep time (but of course he can be a justice if he wants to).

Doctrine of Equivalents Case List

2011-04-01T12:31:03Z

Bill Goodwine:

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

*Next case here...
*
*
*
*
*

AME 40590 Homeworks, Spring 2011

2011-04-01T12:30:40Z

Bill Goodwine: /* Due Monday, April 4, 2011 */

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 25, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]

=Due Monday, March 28, 2011=
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
*If your last name starts with a letter between and including A through L, read [[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
*If your last name starts with a letter between and including M through Z, read [[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=Due Wednesday, March 30, 2011=
We will do the debate based on the two briefs from Monday.

Also, having gone through it myself I can sympathize with the point of view that everything probably seems vague and problematic. At this point you would probably read a claim and be pretty hard pressed to describe the extent of the claims since the doctrine of equivalents would make the bounds for it very unclear. To help with this, your additional assignment for Wednesday is to go to Westlaw and look up Warner-Jenkinson. Find the headnote(s) dealing with the doctrine of equivalents and try to find a case with a pretty clear holding. In other words, even though the trial happened and the result was appealed, the outcome wasn't too debatable. Finding a critical mass of cases that have "clear" outcomes in terms of which side of the equivalents line they fall will probably help clarify this. Pick your case and read it. Be ready to discuss it on Wednesday.

=Due Monday, April 4, 2011=
* Go to the [[Doctrine of Equivalents Case List]] page and add a one paragraph summary of the case you read for last class. Be sure to start it with the title and the citation like the example I gave. Be sure to keep my example at the top.
* Read Honeywell Intern., Inc. v. Hamilton Sundstrand Corp. 523 F.3d 1304, 2008 on Westlaw. Also read the patent at issue.
* If you are an AME student and your last name starts with A-L, then you represent Honeywell. If your last name starts with M-Z, then you represent Hamilton-Sunstrand.
* If you are not an AME student, then you are a Supreme Court Justice.
* If you are an AME student, then write a one-page brief (less than 1000 words) that presents an argument why the Supreme Court should decide the case in your favor. Post it to the course wiki and also submit a printed version on Wednesday.
** Normally the Supreme Court would not even consider the actual facts of the equivalents holding since that is a matter of fact and the lower courts and juries are given wide discretion in their findings. However, today you can pretend that the Supreme Court will consider it, so you can argue the facts of why or why not it is equivalent. If you do this, be sure to point out how your argument relates to the prior Supreme Court cases we read on the Doctrine of Equivalents.
** You may alternatively have your brief focus on a legal issue such as the estoppel issues.
** I want you to write this from scratch based on your engineering knowledge and the cases we have read so far. Of course the briefs are available on Westlaw, including the briefs for writ of certiorari to the Supreme Court. Any submitted briefs that just summarize those will not be given much credit.
* On Monday in class split into the two sides and take 15 minutes to elect a head lawyer and get your arguments summarized and in order. After that each side gets 5 minutes, alternating back and forth until class is over. The loser in the CAFC gets to go first. If you are a judge, your job is to make the right decision, meaning it should do things like
** be consistent with precedent, of if not, then there must be a good reason for deviating from it,
** be clear,
** be fair,
*** the patentee got to draft the claims, there should be a burden of doing it right for them
*** but we don't want lazy, unscrupulous cheaters to get away with trivial modifications that basically don't deviate from the essence of the inventive aspect of the patent
** be easy to apply,
** promote the progress of science and the useful arts,
** be logical, i.e., amending claims to avoid prior art should definitely be a bar to a future expansion of the claim into that same area,
** etc.
* The Supreme Court Justices can interrupt any arguments and ask any questions they want. The point of asking questions isn't to put the lawyers on the spot, but to simply help them make the right decision. Getting each side to respond to the arguments made by the other side will help them make a good decision. The Justices should probably sit in the very front row or stand in front of the class.
* The Supreme Court Justices must submit a one-page (1000-word) decision on Wednesday. In class on Wednesday, they will have to explain their decision.
* Professor Batill has agreed to get class started and make sure things are working ok. He shouldn't have to do much other than maybe keep time (but of course he can be a justice if he wants to).

AME 40590 Homeworks, Spring 2011

2011-04-01T12:30:12Z

Bill Goodwine: /* Due Monday, April 4, 2011 */

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 25, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]

=Due Monday, March 28, 2011=
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
*If your last name starts with a letter between and including A through L, read [[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
*If your last name starts with a letter between and including M through Z, read [[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=Due Wednesday, March 30, 2011=
We will do the debate based on the two briefs from Monday.

Also, having gone through it myself I can sympathize with the point of view that everything probably seems vague and problematic. At this point you would probably read a claim and be pretty hard pressed to describe the extent of the claims since the doctrine of equivalents would make the bounds for it very unclear. To help with this, your additional assignment for Wednesday is to go to Westlaw and look up Warner-Jenkinson. Find the headnote(s) dealing with the doctrine of equivalents and try to find a case with a pretty clear holding. In other words, even though the trial happened and the result was appealed, the outcome wasn't too debatable. Finding a critical mass of cases that have "clear" outcomes in terms of which side of the equivalents line they fall will probably help clarify this. Pick your case and read it. Be ready to discuss it on Wednesday.

=Due Monday, April 4, 2011=
* Go to the [[Doctrine of Equivalents Case List]] page and add a one paragraph summary of the case you read for last class. Be sure to start it with the title and the citation.
* Read Honeywell Intern., Inc. v. Hamilton Sundstrand Corp. 523 F.3d 1304, 2008 on Westlaw. Also read the patent at issue.
* If you are an AME student and your last name starts with A-L, then you represent Honeywell. If your last name starts with M-Z, then you represent Hamilton-Sunstrand.
* If you are not an AME student, then you are a Supreme Court Justice.
* If you are an AME student, then write a one-page brief (less than 1000 words) that presents an argument why the Supreme Court should decide the case in your favor. Post it to the course wiki and also submit a printed version on Wednesday.
** Normally the Supreme Court would not even consider the actual facts of the equivalents holding since that is a matter of fact and the lower courts and juries are given wide discretion in their findings. However, today you can pretend that the Supreme Court will consider it, so you can argue the facts of why or why not it is equivalent. If you do this, be sure to point out how your argument relates to the prior Supreme Court cases we read on the Doctrine of Equivalents.
** You may alternatively have your brief focus on a legal issue such as the estoppel issues.
** I want you to write this from scratch based on your engineering knowledge and the cases we have read so far. Of course the briefs are available on Westlaw, including the briefs for writ of certiorari to the Supreme Court. Any submitted briefs that just summarize those will not be given much credit.
* On Monday in class split into the two sides and take 15 minutes to elect a head lawyer and get your arguments summarized and in order. After that each side gets 5 minutes, alternating back and forth until class is over. The loser in the CAFC gets to go first. If you are a judge, your job is to make the right decision, meaning it should do things like
** be consistent with precedent, of if not, then there must be a good reason for deviating from it,
** be clear,
** be fair,
*** the patentee got to draft the claims, there should be a burden of doing it right for them
*** but we don't want lazy, unscrupulous cheaters to get away with trivial modifications that basically don't deviate from the essence of the inventive aspect of the patent
** be easy to apply,
** promote the progress of science and the useful arts,
** be logical, i.e., amending claims to avoid prior art should definitely be a bar to a future expansion of the claim into that same area,
** etc.
* The Supreme Court Justices can interrupt any arguments and ask any questions they want. The point of asking questions isn't to put the lawyers on the spot, but to simply help them make the right decision. Getting each side to respond to the arguments made by the other side will help them make a good decision. The Justices should probably sit in the very front row or stand in front of the class.
* The Supreme Court Justices must submit a one-page (1000-word) decision on Wednesday. In class on Wednesday, they will have to explain their decision.
* Professor Batill has agreed to get class started and make sure things are working ok. He shouldn't have to do much other than maybe keep time (but of course he can be a justice if he wants to).

AME 40590 Homeworks, Spring 2011

2011-04-01T12:25:16Z

Bill Goodwine: /* Due Monday, April 4, 2011 */

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 25, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]

=Due Monday, March 28, 2011=
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
*If your last name starts with a letter between and including A through L, read [[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
*If your last name starts with a letter between and including M through Z, read [[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=Due Wednesday, March 30, 2011=
We will do the debate based on the two briefs from Monday.

Also, having gone through it myself I can sympathize with the point of view that everything probably seems vague and problematic. At this point you would probably read a claim and be pretty hard pressed to describe the extent of the claims since the doctrine of equivalents would make the bounds for it very unclear. To help with this, your additional assignment for Wednesday is to go to Westlaw and look up Warner-Jenkinson. Find the headnote(s) dealing with the doctrine of equivalents and try to find a case with a pretty clear holding. In other words, even though the trial happened and the result was appealed, the outcome wasn't too debatable. Finding a critical mass of cases that have "clear" outcomes in terms of which side of the equivalents line they fall will probably help clarify this. Pick your case and read it. Be ready to discuss it on Wednesday.

=Due Monday, April 4, 2011=
* Go to the [[Doctrine of Equivalents Case List]] page and add a one paragraph summary of the case you read for last class. Be sure to start it with the title and the citation.
* Read Honeywell Intern., Inc. v. Hamilton Sundstrand Corp. 523 F.3d 1304, 2008 on Westlaw. Also read the patent at issue.
* If you are an AME student and your last name starts with A-L, then you represent Honeywell. If your last name starts with M-Z, then you represent Hamilton-Sunstrand.
* If you are not an AME student, then you are a Supreme Court Justice.
* If you are an AME student, then write a one-page brief (less than 1000 words) that presents an argument why the Supreme Court should decide the case in your favor. Post it to the course wiki and also submit a printed version on Wednesday.
** Normally the Supreme Court would not even consider the actual facts of the equivalents holding since that is a matter of fact and the lower courts and juries are given wide discretion in their findings. However, today you can pretend that the Supreme Court will consider it, so you can argue the facts of why or why not it is equivalent. If you do this, be sure to point out how your argument relates to the prior Supreme Court cases we read on the Doctrine of Equivalents.
** You may alternatively have your brief focus on a legal issue such as the estoppel issues.
** I want you to write this from scratch based on your engineering knowledge and the cases we have read so far. Of course the briefs are available on Westlaw, including the briefs for writ of certiorari to the Supreme Court. Any submitted briefs that just summarize those will not be given much credit.
* On Monday in class split into the two sides and take 15 minutes to elect a head lawyer and get your arguments summarized and in order. After that each side gets 5 minutes, alternating back and forth until class is over. The loser in the CAFC gets to go first. If you are a judge, your job is to make the right decision, meaning it should do things like
** be consistent with precedent, of if not, then there must be a good reason for deviating from it,
** be clear,
** be fair,
*** the patentee got to draft the claims, there should be a burden of doing it right for them
*** but we don't want lazy, unscrupulous cheaters to get away with trivial modifications that basically don't deviate from the essence of the inventive aspect of the patent
** be easy to apply,
** promote the progress of science and the useful arts,
** be logical, i.e., amending claims to avoid prior art should definitely be a bar to a future expansion of the claim into that same area,
** etc.
* The Supreme Court Justices must submit a one-page (1000-word) decision on Wednesday. In class on Wednesday, they will have to explain their decision.

AME 40590 Homeworks, Spring 2011

2011-04-01T12:24:15Z

Bill Goodwine: /* Due Monday, April 4, 2011 */

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 25, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]

=Due Monday, March 28, 2011=
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
*If your last name starts with a letter between and including A through L, read [[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
*If your last name starts with a letter between and including M through Z, read [[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=Due Wednesday, March 30, 2011=
We will do the debate based on the two briefs from Monday.

Also, having gone through it myself I can sympathize with the point of view that everything probably seems vague and problematic. At this point you would probably read a claim and be pretty hard pressed to describe the extent of the claims since the doctrine of equivalents would make the bounds for it very unclear. To help with this, your additional assignment for Wednesday is to go to Westlaw and look up Warner-Jenkinson. Find the headnote(s) dealing with the doctrine of equivalents and try to find a case with a pretty clear holding. In other words, even though the trial happened and the result was appealed, the outcome wasn't too debatable. Finding a critical mass of cases that have "clear" outcomes in terms of which side of the equivalents line they fall will probably help clarify this. Pick your case and read it. Be ready to discuss it on Wednesday.

=Due Monday, April 4, 2011=
* Go to the [[Doctrine of Equivalents Case List]] page and add a one paragraph summary of the case you read for last class. Be sure to start it with the title and the citation.
* Read Honeywell Intern., Inc. v. Hamilton Sundstrand Corp. 523 F.3d 1304, 2008 on Westlaw. Also read the patent at issue.
* If you are an AME student and your last name starts with A-L, then you represent Honeywell. If your last name starts with M-Z, then you represent Hamilton-Sunstrand.
* If you are not an AME student, then you are a Supreme Court Justice.
* If you are an AME student, then write a one-page brief (less than 1000 words) that presents an argument why the Supreme Court should decide the case in your favor. Post it to the course wiki and also submit a printed version on Wednesday.
** Normally the Supreme Court would not even consider the actual facts of the equivalents holding since that is a matter of fact and the lower courts and juries are given wide discretion in their findings. However, today you can pretend that the Supreme Court will consider it, so you can argue the facts of why or why not it is equivalent. If you do this, be sure to point out how your argument relates to the prior Supreme Court cases we read on the Doctrine of Equivalents.
** You may alternatively have your brief focus on a legal issue such as the estoppel issues.
** I want you to write this from scratch based on your engineering knowledge and the cases we have read so far. Of course the briefs are available on Westlaw, including the briefs for writ of certiorari to the Supreme Court. Any submitted briefs that just summarize those will not be given much credit.
* On Monday in class split into the two sides and take 15 minutes to elect a head lawyer and get your arguments summarized and in order. After that each side gets 5 minutes, alternating back and forth until class is over. The loser in the CAFC gets to go first. If you are a judge, your job is to make the right decision, meaning it should do things like
** be consistent with precedent, of if not, then there must be a good reason for deviating from it,
** be clear,
** be fair,
*** the patentee got to draft the claims, there should be a burden of doing it right for them
*** but we don't want lazy, unscrupulous cheaters to get away with trivial modifications that basically don't deviate from the essence of the inventive aspect of the patent
** be easy to apply,
** promote the progress of science and the useful arts,
** be logical, i.e., amending claims to avoid prior art should definitely be a bar to a future expansion of the claim into that same area,
** etc.

AME 40590 Homeworks, Spring 2011

2011-04-01T12:10:37Z

Bill Goodwine: /* Due Monday, April 4, 2011 */

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 25, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]

=Due Monday, March 28, 2011=
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
*If your last name starts with a letter between and including A through L, read [[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
*If your last name starts with a letter between and including M through Z, read [[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

=Due Wednesday, March 30, 2011=
We will do the debate based on the two briefs from Monday.

Also, having gone through it myself I can sympathize with the point of view that everything probably seems vague and problematic. At this point you would probably read a claim and be pretty hard pressed to describe the extent of the claims since the doctrine of equivalents would make the bounds for it very unclear. To help with this, your additional assignment for Wednesday is to go to Westlaw and look up Warner-Jenkinson. Find the headnote(s) dealing with the doctrine of equivalents and try to find a case with a pretty clear holding. In other words, even though the trial happened and the result was appealed, the outcome wasn't too debatable. Finding a critical mass of cases that have "clear" outcomes in terms of which side of the equivalents line they fall will probably help clarify this. Pick your case and read it. Be ready to discuss it on Wednesday.

=Due Monday, April 4, 2011=
* Go to the [[Doctrine of Equivalents Case List]] page and add a one paragraph summary of the case you read for last class. Be sure to start it with the title and the citation.
* Read Honeywell Intern., Inc. v. Hamilton Sundstrand Corp. 523 F.3d 1304, 2008 on Westlaw. Also read the patent at issue.
* If you are an AME student
* if you are not an AME student, then you are a Supreme Court Justice.

Doctrine of Equivalents Case List

2011-04-01T12:06:34Z

Bill Goodwine:

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 (2012)
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

*Next case here...
*
*
*
*
*

Doctrine of Equivalents Case List

2011-04-01T12:06:16Z

Bill Goodwine: Created page with "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..." Plea..."

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 (2012)
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

*
*
*
*
*
*

AME 40590 Homeworks, Spring 2011

2011-04-01T12:00:10Z

Bill Goodwine:

Engineering Differential Equations: Theory and Applications, Springer 2010

2011-03-28T21:39:22Z

Bill Goodwine: /* Errata */

This page contains supplementary material for the book, ''Engineering Differential Equations: Theory and Applications'', by Bill Goodwine. 2010, Springer.

=Movies=
Chapter 11 considers solutions to partial differential equations.
==The One-Dimensional Wave Equation==
Section 11.1 considers the one-dimensional wave equation.

Some movies:
*String of length 3 plucked at L=1 (modeling a guitar):
**[http://controls.ame.nd.edu/courses/ame30314/pdes/pluckedmode1.mpg The first (fundamental) mode of the plucked string]
**[http://controls.ame.nd.edu/courses/ame30314/pdes/pluckedmode15.mpg The first five modes of the plucked string plotted separately]
**[http://controls.ame.nd.edu/courses/ame30314/pdes/pluckedmode15sum.mpg The sum of the first five modes of the plucked string]
**[http://controls.ame.nd.edu/courses/ame30314/pdes/pluckedmode50sum.mpg The sum of the first fifty modes of the plucked string]
*String of length 3 that is impacted near L=1 (modeling a piano):
**[http://controls.ame.nd.edu/courses/ame30314/pdes/stringimpact10sum.mpg The sum of the first ten modes of the impacted string]
**[http://controls.ame.nd.edu/courses/ame30314/pdes/stringimpact50sum.mpg The sum of the first fifty modes of the impacted string]

==The One-Dimensional Heat Conduction Equation==
Section 11.3 considers the one-dimensional heat conduction equation.

Some movies:
*[http://controls.ame.nd.edu/courses/ame30314/pdes/heatinhomo.mpg The solution to the heat equation with inhomogeneous boundary conditions]
*[http://controls.ame.nd.edu/courses/ame30314/pdes/heatinsulated.mpg The solution to the heat equation with an insulated end]

==The Two-Dimensional Heat Equation==
Movie:
*[http://controls.ame.nd.edu/courses/ame30314/pdes/twoheat.mpg Solution to the heat conduction equation in two dimensions]

==Vibrating Membranes==
Partial differential equations describing vibrating membranes in rectangular and polar coordinates are considered in Section 11.5.

Section 11.5.1 presents the two-dimensional wave equation in rectangular coordinates.

Some movies:
*[http://controls.ame.nd.edu/courses/ame30314/pdes/rectdrum11.mpg 1-1 mode for rectangular drum]
*[http://controls.ame.nd.edu/courses/ame30314/pdes/rectdrum21.mpg 2-1 mode for rectangular drum]
*[http://controls.ame.nd.edu/courses/ame30314/pdes/rectdrum22.mpg 2-2 mode for rectangular drum]
*[http://controls.ame.nd.edu/courses/ame30314/pdes/rectdrumimpact.mpg Rectangular drum impacted near a corner]

Sections 11.5.2-11.5.4 presents the wave equation in polar coordinates. The prototypical example would be a vibrating drum head.

Some movies:
*[http://controls.ame.nd.edu/courses/ame30314/pdes/drum10.mpg 1-0 mode for a circular drum]
*[http://controls.ame.nd.edu/courses/ame30314/pdes/drum11.mpg 1-1 mode for a circular drum]
*[http://controls.ame.nd.edu/courses/ame30314/pdes/drum12.mpg 1-2 mode for a circular drum]
*[http://controls.ame.nd.edu/courses/ame30314/pdes/drum13.mpg 1-3 mode for a circular drum]
*[http://controls.ame.nd.edu/courses/ame30314/pdes/drum20.mpg 2-0 mode for a circular drum]
*[http://controls.ame.nd.edu/courses/ame30314/pdes/drum21.mpg 2-1 mode for a circular drum]
*[http://controls.ame.nd.edu/courses/ame30314/pdes/drum43.mpg 4-3 mode for a circular drum]
*[http://controls.ame.nd.edu/courses/ame30314/pdes/drumimpact.mpg Circular drum that is impacted by a drum stick]
*[http://controls.ame.nd.edu/courses/ame30314/pdes/drum.mpg Another drum impact movie]

=Errata=

==Chapter 6==
*[[p. 220, line -9]]: the superscript for the second term in the equation should be m-3.
*[[p. 244, line -11]]: the first component of the vector on the far right should contain t, not tau.
*[[p. 245, line 8]]: the matrix A7 does not have a set of n linearly-independent eigenvectors.
*[[p. 247, line -7]]: A3 should be A2.

==Chapter 8==
*p. 326, line -10:"Figure 8.8" should be "Figure 8.37".
*p. 327: the pendulum in Figure 8.36 should indicate a length, ''l'', for the pendulum.

==Chapter 9==
*[[p. 348, line 4]]: the numerator for both expressions of G1 should be 5.
*[[p. 348, line 6]]: the numerator for both expressions of G1 should be 10.
*[[p. 349, caption to Figure 9.16]]: the numerator for G1 should be 4 in the numerator for G2 should be 9.

==Chapter 11==
*[[p. 513, line 2]]: the coefficient is alpha^2, not alpha.

AME 40590 Homeworks, Spring 2011

2011-03-28T21:28:23Z

Bill Goodwine:

Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)

2011-03-28T09:57:48Z

Bill Goodwine:

Supreme Court of the United States
WARNER-JENKINSON COMPANY, INC., Petitioner
v.
HILTON DAVIS CHEMICAL CO.

No. 95-728.
Argued Oct. 15, 1996.
Decided March 3, 1997.

Justice Ginsburg filed concurring opinion in which Justice Kennedy joined.

Syllabus<ref>The syllabus constitutes no part of the opinion of the Court but has been prepared by the Reporter of Decisions for the convenience of the reader. See United States v. Detroit Timber & Lumber Co., 200 U.S. 321, 337, 26 S.Ct. 282, 287, 50 L.Ed. 499.</ref>

Petitioner and respondent both manufacture dyes from which impurities must be removed. Respondent's “ '746 patent,” which issued in 1985, discloses an improved purification process involving the “ultrafiltration” of dye through a porous membrane at pH levels between 6.0 and 9.0. The inventors so limited their claim's pH element during patent prosecution after the patent examiner objected because of a perceived overlap with the earlier “Booth” patent, which disclosed an ultrafiltration process operating at a pH above 9.0. In 1986, petitioner developed its own ultrafiltration process, which operated at a pH level of 5.0. Respondent sued for infringement of the '746 patent, relying solely on the “doctrine of equivalents,” under which a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is “equivalence” between the elements of the accused product or process and the claimed elements of the patented invention. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609, 70 S.Ct. 854, 856-857, 94 L.Ed. 1097. Over petitioner's objections that this is an equitable doctrine and is to be applied by the court, the equivalence issue was included among those sent to the jury, which found, inter alia, that petitioner infringed upon the '746 patent. The District Court, among its rulings, entered a permanent injunction against petitioner. The en banc Federal Circuit affirmed, holding that the doctrine of equivalents continues to exist, that the question of equivalence is for the jury to decide, and that the jury had substantial evidence from which to conclude that petitioner's process was not substantially different from the process disclosed in the '746 patent.

Held:

1. The Court adheres to the doctrine of equivalents. Pp. 1046-1049.

(a) In Graver Tank, supra, at 609, 70 S.Ct., at 856-857, the Court, inter alia, described some of the considerations that go into applying the doctrine, such as the patent's context, the prior art, and the particular circumstances of the case, including the purpose for which an ingredient is used in the patent, the qualities it has when combined with the other ingredients, the function it is intended to perform, and whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was. Pp. 1046-1047.

(b) This Court rejects petitioner's primary argument, that the doctrine of equivalents, as set out in Graver Tank in 1950, is inconsistent with, and thus did not survive, particular aspects of Congress' 1952 revision of the Patent Act, 35 U.S.C. § 100 et seq. Petitioner's first three arguments in this regard-that the doctrine (1) is inconsistent with § 112's requirement that a patentee specifically “claim” the covered invention, (2) circumvents the patent reissue process under §§ 251-252, and (3) is inconsistent with the primacy of the Patent and Trademark Office (PTO) in setting a patent's scope-were made in Graver Tank, supra, at 613-615, and n. 3, 70 S.Ct., at 858-860, and n. 3, in the context of the 1870 Patent Act, and failed to command a majority. The 1952 Act is not materially different from the 1870 Act with regard to these matters. Also unpersuasive is petitioner's fourth argument, that the doctrine of equivalents was implicitly rejected as a general matter by Congress' specific and limited inclusion of it in § 112, ¶ 6. This new provision was enacted as a targeted cure in response to Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 8, 67 S.Ct. 6, 9-10, 91 L.Ed. 3, and thereby to allow so-called “means” claims describing an element of an invention by the result accomplished or the function served. Moreover, the statutory reference to “equivalents” appears to be no more than a prophylactic against potential side effects of that cure, i.e., an attempt to limit the application of the broad literal language of “means” claims to those means that are “equivalent” to the actual means shown in the patent specification. Pp. 1047-1048

(c) The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. The Court is concerned that the doctrine, as it has come to be broadly applied since Graver Tank, conflicts with the Court's numerous holdings that a patent may not be enlarged beyond the scope of its claims. The way to reconcile the two lines of authority is to apply the doctrine to each of the individual elements of a claim, rather than to the accused product or process as a whole. Doing so will preserve some meaning for each of a claim's elements, all of which are deemed material to defining the invention's scope. So long as the doctrine does not encroach beyond these limits, or beyond related limits discussed in the Court's opinion, infra, at 1049-1051, 1053-1054, n. 8, and 1054, it will not vitiate the central functions of patent claims to define the invention and to notify the public of the patent's scope. Pp. 1048-1049.

(d) Petitioner is correct that Graver Tank did not supersede the well-established limitation on the doctrine of equivalents known as “prosecution history estoppel,” whereby a surrender of subject matter during patent prosecution may preclude recapturing any part of that subject matter, even if it is equivalent to the matter expressly claimed. But petitioner reaches too far in arguing that any such surrender establishes a bright line beyond which no equivalents may be claimed, and that the reason for an amendment during patent prosecution is therefore irrelevant to any subsequent estoppel. There are a variety of reasons why the PTO may request a change in claim language, and if the patent holder demonstrates that an amendment had a purpose unrelated to patentability, a court must consider that purpose in order to decide whether an estoppel is precluded. Where the patent holder is unable to establish such a purpose, the court should presume that the purpose behind the required amendment is such that prosecution history estoppel would apply. Here, it is undisputed that the upper limit of 9.0 pH was added to the '746 patent in order to distinguish the Booth patent, but the record before this Court does not reveal the reason for adding the lower 6.0 pH limit. It is therefore impossible to tell whether the latter reason could properly avoid an estoppel. Pp. 1049-1051.

(e) The Court rejects petitioner's argument that Graver Tank requires judicial exploration of the intent of the alleged infringer or a case's other equities before allowing application of the doctrine of equivalents. Although Graver Tank certainly leaves room for the inclusion of intent-based elements in the doctrine, the Court does not read the case as requiring proof of intent. The better view, and the one consistent with Graver Tank's predecessors, see, e.g., Winans v. Denmead, 15 How. 330, 343, 14 L.Ed. 717, and the objective approach to infringement, is that intent plays no role in the doctrine's application. Pp. 1051-1052.

(f) The Court also rejects petitioner's proposal that in order to minimize conflict with the notice function of patent claims, the doctrine of equivalents should be limited to equivalents that are disclosed within the patent itself. Insofar as the question under the doctrine is whether an accused element is equivalent to a claimed element, the proper time for evaluating equivalency-and knowledge of interchangeability between elements-is at the time of infringement, not at the time the patent was issued. Pp. 1052-1053.

(g) The Court declines to consider whether application of the doctrine of equivalents is a task for the judge or for the jury, since resolution of that question is not necessary to answer the question here presented. P. 1053.

(h) In the Court's view, the particular linguistic framework used to determine “equivalence,” whether the so-called “triple identity” test or the “insubstantial differences” test, is less important than whether the test is probative of the essential inquiry: Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention? Different linguistic frameworks may be more suitable to different cases, depending on their particular facts. The Court leaves it to the Federal Circuit's sound judgment in this area of its special expertise to refine the formulation of the test for equivalence in the orderly course of case-by-case determinations. P. 1054.

2. Because the Federal Circuit did not consider all of the requirements of the doctrine of equivalents as described by the Court in this case, particularly as related to prosecution history estoppel and the preservation of some meaning for each element in a claim, further proceedings are necessary. P. 1054.

62 F.3d 1512, reversed and remanded.

THOMAS, J., delivered the opinion for a unanimous Court. GINSBURG, J., filed a concurring opinion, in which KENNEDY, J., joined, post, p. 1054.

Richard G. Taranto, Washington, DC, for petitioner.

Lawrence G. Wallace, Washington, DC, amicus curiae for U.S.

David E. Schmit, Cincinnati, OH, for respondent.

Justice THOMAS delivered the opinion of the Court.

Nearly 50 years ago, this Court in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950), set out the modern contours of what is known in patent law as the “doctrine of equivalents.” Under this doctrine, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is “equivalence” between the elements of the accused product or process and the claimed elements of the patented invention. Id., at 609, 70 S.Ct., at 856-857. Petitioner, which was found to have infringed upon respondent's patent under the doctrine of equivalents, invites us to speak the death of that doctrine. We decline that invitation. The significant disagreement within the Court of Appeals for the Federal Circuit concerning the application of Graver Tank suggests, however, that the doctrine is not free from confusion. We therefore will endeavor to clarify the proper scope of the doctrine.

I

The essential facts of this case are few. Petitioner Warner-Jenkinson Co. and respondent Hilton Davis Chemical Co. manufacture dyes. Impurities in those dyes must be removed. Hilton Davis holds United States Patent No. 4,560,746 ('746 patent), which discloses an improved purification process involving “ultrafiltration.” The '746 process filters impure dye through a porous membrane at certain pressures and pH levels,<ref>The pH, or power (exponent) of Hydrogen, of a solution is a measure of its acidity or alkalinity. A pH of 7.0 is neutral; a pH below 7.0 is acidic; and a pH above 7.0 is alkaline. Although measurement of pH is on a logarithmic scale, with each whole number difference representing a ten-fold difference in acidity, the practical significance of any such difference will often depend on the context. Pure water, for example, has a neutral pH of 7.0, whereas carbonated water has an acidic pH of 3.0, and concentrated hydrochloric acid has a pH approaching 0.0. On the other end of the scale, milk of magnesia has a pH of 10.0, whereas household ammonia has a pH of 11.9. 21 Encyclopedia Americana 844 (Int'l ed.1990).</ref> resulting in a high purity dye product.

The '746 patent issued in 1985. As relevant to this case, the patent claims as its invention an improvement in the ultrafiltration process as follows:

“In a process for the purification of a dye ... the improvement which comprises: subjecting an aqueous solution ... to ultrafiltration through a membrane having a nominal pore diameter of 5-15 Angstroms under a hydrostatic pressure of approximately 200 to 400 p.s.i.g., at a pH from approximately 6.0 to 9.0, to thereby cause separation of said impurities from said dye....” App. 36-37 (emphasis added).

The inventors added the phrase “at a pH from approximately 6.0 to 9.0” during patent prosecution. At a minimum, this phrase was added to distinguish a previous patent (the “Booth” patent) that disclosed an ultrafiltration process operating at a pH above 9.0. The parties disagree as to why the low-end pH limit of 6.0 was included as part of the claim.<ref>Petitioner contends that the lower limit was added because below a pH of 6.0 the patented process created “foaming” problems in the plant and because the process was not shown to work below that pH level. Brief for Petitioner 4, n. 5, 37, n. 28. Respondent counters that the process was successfully tested to pH levels as low as 2.2 with no effect on the process because of foaming, but offers no particular explanation as to why the lower level of 6.0 pH was selected. Brief for Respondent 34, n. 34.</ref>

In 1986, Warner-Jenkinson developed an ultrafiltration process that operated with membrane pore diameters assumed to be 5-15 Angstroms, at pressures of 200 to nearly 500 p.s.i.g., and at a pH of 5.0. Warner-Jenkinson did not learn of the '746 patent until after it had begun commercial use of its ultrafiltration process. Hilton Davis eventually learned of Warner-Jenkinson's use of ultrafiltration and, in 1991, sued Warner-Jenkinson for patent infringement.

As trial approached, Hilton Davis conceded that there was no literal infringement, and relied solely on the doctrine of equivalents. Over Warner-Jenkinson's objection that the doctrine of equivalents was an equitable doctrine to be applied by the court, the issue of equivalence was included among those sent to the jury. The jury found that the '746 patent was not invalid and that Warner-Jenkinson infringed upon the patent under the doctrine of equivalents. The jury also found, however, that Warner-Jenkinson had not intentionally infringed, and therefore awarded only 20% of the damages sought by Hilton Davis. The District Court denied Warner-Jenkinson's post-trial motions, and entered a permanent injunction prohibiting Warner-Jenkinson from practicing ultrafiltration below 500 p.s.i.g. and below 9.01 pH. A fractured en banc Court of Appeals for the Federal Circuit affirmed. 62 F.3d 1512 (1995).

The majority below held that the doctrine of equivalents continues to exist and that its touchstone is whether substantial differences exist between the accused process and the patented process. Id., at 1521-1522. The court also held that the question of equivalence is for the jury to decide and that the jury in this case had substantial evidence from which it could conclude that the Warner-Jenkinson process was not substantially different from the ultrafiltration process disclosed in the '746 patent. Id., at 1525.

There were three separate dissents, commanding a total of 5 of 12 judges. Four of the five dissenting judges viewed the doctrine of equivalents as allowing an improper expansion of claim scope, contrary to this Court's numerous holdings that it is the claim that defines the invention and gives notice to the public of the limits of the patent monopoly. Id., at 1537-1538 (opinion of Plager, J.) The fifth dissenter, the late Judge Nies, was able to reconcile the prohibition against enlarging the scope of claims and the doctrine of equivalents by applying the doctrine to each element of a claim, rather than to the accused product or process “overall.” Id., at 1574. As she explained it: “The ‘scope’ is not enlarged if courts do not go beyond the substitution of equivalent elements.” Ibid. All of the dissenters, however, would have found that a much narrowed doctrine of equivalents may be applied in whole or in part by the court. Id., at 1540-1542 (opinion of Plager, J.); id., at 1579 (opinion of Nies, J.).

We granted certiorari, 516 U.S. 1145, 116 S.Ct. 1014, 134 L.Ed.2d 95 (1996), and now reverse and remand.

II

In Graver Tank we considered the application of the doctrine of equivalents to an accused chemical composition for use in welding that differed from the patented welding material by the substitution of one chemical element. 339 U.S., at 610, 70 S.Ct., at 857. The substituted element did not fall within the literal terms of the patent claim, but the Court nonetheless found that the “question which thus emerges is whether the substitution [of one element for the other] ... is a change of such substance as to make the doctrine of equivalents inapplicable; or conversely, whether under the circumstances the change was so insubstantial that the trial court's invocation of the doctrine of equivalents was justified.” Ibid. The Court also described some of the considerations that go into applying the doctrine of equivalents:

“What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.” Id., at 609, 70 S.Ct., at 856-857.

Considering those factors, the Court viewed the difference between the chemical element claimed in the patent and the substitute element to be “colorable only,” and concluded that the trial court's judgment of infringement under the doctrine of equivalents was proper. Id., at 612, 70 S.Ct., at 858.

A

Petitioner's primary argument in this Court is that the doctrine of equivalents, as set out in Graver Tank in 1950, did not survive the 1952 revision of the Patent Act, 35 U.S.C. § 100 et seq., because it is inconsistent with several aspects of that Act. In particular, petitioner argues: (1) The doctrine of equivalents is inconsistent with the statutory requirement that a patentee specifically “claim” the invention covered by a patent, § 112; (2) the doctrine circumvents the patent reissue process-designed to correct mistakes in drafting or the like-and avoids the express limitations on that process, §§ 251-252; (3) the doctrine is inconsistent with the primacy of the Patent and Trademark Office (PTO) in setting the scope of a patent through the patent prosecution process; and (4) the doctrine was implicitly rejected as a general matter by Congress' specific and limited inclusion of the doctrine in one section regarding “means” claiming, § 112, ¶ 6. All but one of these arguments were made in Graver Tank in the context of the 1870 Patent Act, and failed to command a majority.<ref>Graver Tank was decided over a vigorous dissent. In that dissent, Justice Black raised the first three of petitioner's four arguments against the doctrine of equivalents. See 339 U.S., at 613-614, 70 S.Ct., at 858-859 (doctrine inconsistent with statutory requirement to “distinctly claim” the invention); id., at 614-615, 70 S.Ct., at 859-860 (patent reissue process available to correct mistakes); id., at 615, n. 3, 70 S.Ct., at 859, n. 3 (duty lies with the Patent Office to examine claims and to conform them to the scope of the invention; inventors may appeal Patent Office determinations if they disagree with result).</ref>

Indeed, petitioner's first argument was not new even in 1950. Nearly 100 years before Graver Tank, this Court approved of the doctrine of equivalents in Winans v. Denmead, 15 How. 330, 14 L.Ed. 717 (1854). The dissent in Winans unsuccessfully argued that the majority result was inconsistent with the requirement in the 1836 Patent Act that the applicant “particularly ‘specify and point’ out what he claims as his invention,” and that the patent protected nothing more. Id., 15 How. at 347 (opinion of Campbell, J.).

The 1952 Patent Act is not materially different from the 1870 Act with regard to claiming, reissue, and the role of the PTO. Compare, e.g., 35 U.S.C. § 112 (“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention”) with the Consolidated Patent Act of 1870, ch. 230, § 26, 16 Stat. 198, 201 (the applicant “shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery”). Such minor differences as exist between those provisions in the 1870 and the 1952 Acts have no bearing on the result reached in Graver Tank, and thus provide no basis for our overruling it. In the context of infringement, we have already held that pre-1952 precedent survived the passage of the 1952 Act. See Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 342, 81 S.Ct. 599, 602-603, 5 L.Ed.2d 592 (1961) (new section defining infringement “left intact the entire body of case law on direct infringement”). We see no reason to reach a different result here.<ref>Petitioner argues that the evolution in patent practice from “central” claiming (describing the core principles of the invention) to “peripheral” claiming (describing the outer boundaries of the invention) requires that we treat Graver Tank as an aberration and abandon the doctrine of equivalents. Brief for Petitioner 43-45. We disagree. The suggested change in claiming practice predates Graver Tank, is not of statutory origin, and seems merely to reflect narrower inventions in more crowded arts. Also, judicial recognition of so-called “pioneer” patents suggests that the abandonment of “central” claiming may be overstated. That a claim describing a limited improvement in a crowded field will have a limited range of permissible equivalents does not negate the availability of the doctrine vel non.</ref>

Petitioner's fourth argument for an implied congressional negation of the doctrine of equivalents turns on the reference to “equivalents” in the “means” claiming provision of the 1952 Act. Section 112, ¶ 6, a provision not contained in the 1870 Act, states:

“An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” (Emphasis added.)

Thus, under this new provision, an applicant can describe an element of his invention by the result accomplished or the function served, rather than describing the item or element to be used ( e.g., “a means of connecting Part A to Part B,” rather than “a two-penny nail”). Congress enacted § 112, ¶ 6, in response to Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3 (1946), which rejected claims that “do not describe the invention but use ‘conveniently functional language at the exact point of novelty.’ ” Id., at 8, 67 S.Ct., at 9-10, (citation omitted). See In re Donaldson Co., 16 F.3d 1189, 1194 (C.A.Fed.1994) (Congress enacted predecessor of § 112, ¶ 6, in response to Halliburton ); In re Fuetterer, 50 C.C.P.A. 1453, 319 F.2d 259, 264, n. 11 (1963) (same); see also 2 D. Chisum, Patents § 8.04[2], pp. 63-64 (1996) (discussing 1954 commentary of then-Chief Patent Examiner P.J. Federico). Section 112, ¶ 6, now expressly allows so-called “means” claims, with the proviso that application of the broad literal language of such claims must be limited to only those means that are “equivalen[t]” to the actual means shown in the patent specification. This is an application of the doctrine of equivalents in a restrictive role, narrowing the application of broad literal claim elements. We recognized this type of role for the doctrine of equivalents in Graver Tank itself. 339 U.S., at 608-609, 70 S.Ct., at 856-857. The added provision, however, is silent on the doctrine of equivalents as applied where there is no literal infringement.

Because § 112, ¶ 6, was enacted as a targeted cure to a specific problem, and because the reference in that provision to “equivalents” appears to be no more than a prophylactic against potential side effects of that cure, such limited congressional action should not be overread for negative implications. Congress in 1952 could easily have responded to Graver Tank as it did to the Halliburton decision. But it did not. Absent something more compelling than the dubious negative inference offered by petitioner, the lengthy history of the doctrine of equivalents strongly supports adherence to our refusal in Graver Tank to find that the Patent Act conflicts with that doctrine. Congress can legislate the doctrine of equivalents out of existence any time it chooses. The various policy arguments now made by both sides are thus best addressed to Congress, not this Court.

B

We do, however, share the concern of the dissenters below that the doctrine of equivalents, as it has come to be applied since Graver Tank, has taken on a life of its own, unbounded by the patent claims. There can be no denying that the doctrine of equivalents, when applied broadly, conflicts with the definitional and public-notice functions of the statutory claiming requirement. Judge Nies identified one means of avoiding this conflict:

“[A] distinction can be drawn that is not too esoteric between substitution of an equivalent for a component in an invention and enlarging the metes and bounds of the invention beyond what is claimed.

. . . . .

“Where a claim to an invention is expressed as a combination of elements, as here, ‘equivalents' in the sobriquet ‘Doctrine of Equivalents' refers to the equivalency of an element or part of the invention with one that is substituted in the accused product or process.

. . . . .

“This view that the accused device or process must be more than ‘equivalent’ overall reconciles the Supreme Court's position on infringement by equivalents with its concurrent statements that ‘the courts have no right to enlarge a patent beyond the scope of its claims as allowed by the Patent Office.’ [Citations omitted.] The ‘scope’ is not enlarged if courts do not go beyond the substitution of equivalent elements.” 62 F.3d, at 1573-1574 (dissenting opinion) (emphasis in original).

We concur with this apt reconciliation of our two lines of precedent. Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety. So long as the doctrine of equivalents does not encroach beyond the limits just described, or beyond related limits to be discussed infra, this page and 1050-1051, 1053, n. 8, and 1054, we are confident that the doctrine will not vitiate the central functions of the patent claims themselves.

III

Understandably reluctant to assume this Court would overrule Graver Tank, petitioner has offered alternative arguments in favor of a more restricted doctrine of equivalents than it feels was applied in this case. We address each in turn.

A

Petitioner first argues that Graver Tank never purported to supersede a well-established limit on nonliteral infringement, known variously as “prosecution history estoppel” and “file wrapper estoppel.” See Bayer Aktiengesellschaft v. Duphar Int'l Research B.V., 738 F.2d 1237, 1238 (C.A.Fed.1984). According to petitioner, any surrender of subject matter during patent prosecution, regardless of the reason for such surrender, precludes recapturing any part of that subject matter, even if it is equivalent to the matter expressly claimed. Because, during patent prosecution, respondent limited the pH element of its claim to pH levels between 6.0 and 9.0, petitioner would have those limits form bright lines beyond which no equivalents may be claimed. Any inquiry into the reasons for a surrender, petitioner claims, would undermine the public's right to clear notice of the scope of the patent as embodied in the patent file.

We can readily agree with petitioner that Graver Tank did not dispose of prosecution history estoppel as a legal limitation on the doctrine of equivalents. But petitioner reaches too far in arguing that the reason for an amendment during patent prosecution is irrelevant to any subsequent estoppel. In each of our cases cited by petitioner and by the dissent below, prosecution history estoppel was tied to amendments made to avoid the prior art, or otherwise to address a specific concern-such as obviousness-that arguably would have rendered the claimed subject matter unpatentable. Thus, in Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 62 S.Ct. 513, 86 L.Ed. 736 (1942) Chief Justice Stone distinguished inclusion of a limiting phrase in an original patent claim from the “very different” situation in which “the applicant, in order to meet objections in the Patent Office, based on references to the prior art, adopted the phrase as a substitute for the broader one” previously used. Id., at 136, 62 S.Ct., at 518 (emphasis added). Similarly, in Keystone Driller Co. v. Northwest Engineering Corp., 294 U.S. 42, 55 S.Ct. 262, 79 L.Ed. 747 (1935), estoppel was applied where the initial claims were “rejected on the prior art,” id., at 48, n. 6, 55 S.Ct., at 265, n. 6, and where the allegedly infringing equivalent element was outside of the revised claims and within the prior art that formed the basis for the rejection of the earlier claims, id., at 48, 55 S.Ct., at 264-265.<ref>See also Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 788, 51 S.Ct. 291, 293, 75 L.Ed. 707 (1931) (estoppel applied to amended claim where the original “claim was rejected on the prior patent to” another); Computing Scale Co. of America v. Automatic Scale Co., 204 U.S. 609, 618-620, 27 S.Ct. 307, 311-312, 51 L.Ed. 645 (1907) (initial claims rejected based on lack of invention over prior patents); Hubbell v. United States, 179 U.S. 77, 83, 21 S.Ct. 24, 26-27, 45 L.Ed. 95 (1900) (patentee estopped from excluding a claim element where element was added to overcome objections based on lack of novelty over prior patents); Sutter v. Robinson, 119 U.S. 530, 541, 7 S.Ct. 376, 381-382, 30 L.Ed. 492 (1886) (estoppel applied where, during patent prosecution, the applicant “was expressly required to state that [the device's] structural plan was old and not of his invention”); cf. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 33, 86 S.Ct. 684, 701-702, 15 L.Ed.2d 545 (1966) (noting, in a validity determination, that “claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent”).</ref>

It is telling that in each case this Court probed the reasoning behind the Patent Office's insistence upon a change in the claims. In each instance, a change was demanded because the claim as otherwise written was viewed as not describing a patentable invention at all-typically because what it described was encompassed within the prior art. But, as the United States informs us, there are a variety of other reasons why the PTO may request a change in claim language. Brief for United States as Amicus Curiae 22-23 counsel for the PTO also appearing on the brief). And if the PTO has been requesting changes in claim language without the intent to limit equivalents or, indeed, with the expectation that language it required would in many cases allow for a range of equivalents, we should be extremely reluctant to upset the basic assumptions of the PTO without substantial reason for doing so. Our prior cases have consistently applied prosecution history estoppel only where claims have been amended for a limited set of reasons, and we see no substantial cause for requiring a more rigid rule invoking an estoppel regardless of the reasons for a change.<ref>That petitioner's rule might provide a brighter line for determining whether a patentee is estopped under certain circumstances is not a sufficient reason for adopting such a rule. This is especially true where, as here, the PTO may have relied upon a flexible rule of estoppel when deciding whether to ask for a change in the first place. To change so substantially the rules of the game now could very well subvert the various balances the PTO sought to strike when issuing the numerous patents which have not yet expired and which would be affected by our decision.</ref>

In this case, the patent examiner objected to the patent claim due to a perceived overlap with the Booth patent, which revealed an ultrafiltration process operating at a pH above 9.0. In response to this objection, the phrase “at a pH from approximately 6.0 to 9.0” was added to the claim. While it is undisputed that the upper limit of 9.0 was added in order to distinguish the Booth patent, the reason for adding the lower limit of 6.0 is unclear. The lower limit certainly did not serve to distinguish the Booth patent, which said nothing about pH levels below 6.0. Thus, while a lower limit of 6.0, by its mere inclusion, became a material element of the claim, that did not necessarily preclude the application of the doctrine of equivalents as to that element. See Hubbell v. United States, 179 U.S. 77, 82, 21 S.Ct. 24, 26, 45 L.Ed. 95 (1900) (“ ‘[A]ll [specified elements] must be regarded as material,’ ” though it remains an open “ ‘question whether an omitted part is supplied by an equivalent device or instrumentality’ ” (citation omitted)). Where the reason for the change was not related to avoiding the prior art, the change may introduce a new element, but it does not necessarily preclude infringement by equivalents of that element.<ref>We do not suggest that, where a change is made to overcome an objection based on the prior art, a court is free to review the correctness of that objection when deciding whether to apply prosecution history estoppel. As petitioner rightly notes, such concerns are properly addressed on direct appeal from the denial of a patent, and will not be revisited in an infringement action. Smith v. Magic City Kennel Club, Inc., supra, 282 U.S. at 789-790, 51 S.Ct., at 293-294. What is permissible for a court to explore is the reason (right or wrong) for the objection and the manner in which the amendment addressed and avoided the objection.</ref>

We are left with the problem, however, of what to do in a case like the one at bar, where the record seems not to reveal the reason for including the lower pH limit of 6.0. In our view, holding that certain reasons for a claim amendment may avoid the application of prosecution history estoppel is not tantamount to holding that the absence of a reason for an amendment may similarly avoid such an estoppel. Mindful that claims do indeed serve both a definitional and a notice function, we think the better rule is to place the burden on the patent holder to establish the reason for an amendment required during patent prosecution. The court then would decide whether that reason is sufficient to overcome prosecution history estoppel as a bar to application of the doctrine of equivalents to the element added by that amendment. Where no explanation is established, however, the court should presume that the patent applicant had a substantial reason related to patentability for including the limiting element added by amendment. In those circumstances, prosecution history estoppel would bar the application of the doctrine of equivalents as to that element. The presumption we have described, one subject to rebuttal if an appropriate reason for a required amendment is established, gives proper deference to the role of claims in defining an invention and providing public notice, and to the primacy of the PTO in ensuring that the claims allowed cover only subject matter that is properly patentable in a proffered patent application. Applied in this fashion, prosecution history estoppel places reasonable limits on the doctrine of equivalents, and further insulates the doctrine from any feared conflict with the Patent Act.

Because respondent has not proffered in this Court a reason for the addition of a lower pH limit, it is impossible to tell whether the reason for that addition could properly avoid an estoppel. Whether a reason in fact exists, but simply was not adequately developed, we cannot say. On remand, the Federal Circuit can consider whether reasons for that portion of the amendment were offered or not and whether further opportunity to establish such reasons would be proper.

B

Petitioner next argues that even if Graver Tank remains good law, the case held only that the absence of substantial differences was a necessary element for infringement under the doctrine of equivalents, not that it was sufficient for such a result. Brief for Petitioner 32. Relying on Graver Tank's references to the problem of an “unscrupulous copyist” and “piracy,” 339 U.S., at 607, 70 S.Ct., at 855-856, petitioner would require judicial exploration of the equities of a case before allowing application of the doctrine of equivalents. To be sure, Graver Tank refers to the prevention of copying and piracy when describing the benefits of the doctrine of equivalents. That the doctrine produces such benefits, however, does not mean that its application is limited only to cases where those particular benefits are obtained.

Elsewhere in Graver Tank the doctrine is described in more neutral terms. And the history of the doctrine as relied upon by Graver Tank reflects a basis for the doctrine not so limited as petitioner would have it. In Winans v. Denmead, 15 How. 330, 343, 14 L.Ed. 717 (1854), we described the doctrine of equivalents as growing out of a legally implied term in each patent claim that “the claim extends to the thing patented, however its form or proportions may be varied.” Under that view, application of the doctrine of equivalents involves determining whether a particular accused product or process infringes upon the patent claim, where the claim takes the form-half express, half implied-of “X and its equivalents.”

Union Paper-Bag Machine Co. v. Murphy, 97 U.S. 120, 125, 24 L.Ed. 935 (1878), on which Graver Tank also relied, offers a similarly intent-neutral view of the doctrine of equivalents:

“[T]he substantial equivalent of a thing, in the sense of the patent law, is the same as the thing itself; so that if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.”

If the essential predicate of the doctrine of equivalents is the notion of identity between a patented invention and its equivalent, there is no basis for treating an infringing equivalent any differently from a device that infringes the express terms of the patent. Application of the doctrine of equivalents, therefore, is akin to determining literal infringement, and neither requires proof of intent.

Petitioner also points to Graver Tank's seeming reliance on the absence of independent experimentation by the alleged infringer as supporting an equitable defense to the doctrine of equivalents. The Federal Circuit explained this factor by suggesting that an alleged infringer's behavior, be it copying, designing around a patent, or independent experimentation, indirectly reflects the substantiality of the differences between the patented invention and the accused device or process. According to the Federal Circuit, a person aiming to copy or aiming to avoid a patent is imagined to be at least marginally skilled at copying or avoidance, and thus intentional copying raises an inference-rebuttable by proof of independent development-of having only insubstantial differences, and intentionally designing around a patent claim raises an inference of substantial differences. This explanation leaves much to be desired. At a minimum, one wonders how ever to distinguish between the intentional copyist making minor changes to lower the risk of legal action and the incremental innovator designing around the claims, yet seeking to capture as much as is permissible of the patented advance.

But another explanation is available that does not require a divergence from generally objective principles of patent infringement. In both instances in Graver Tank where we referred to independent research or experiments, we were discussing the known interchangeability between the chemical compound claimed in the patent and the compound substituted by the alleged infringer. The need for independent experimentation thus could reflect knowledge-or lack thereof-of interchangeability possessed by one presumably skilled in the art. The known interchangeability of substitutes for an element of a patent is one of the express objective factors noted by Graver Tank as bearing upon whether the accused device is substantially the same as the patented invention. Independent experimentation by the alleged infringer would not always reflect upon the objective question whether a person skilled in the art would have known of the interchangeability between two elements, but in many cases it would likely be probative of such knowledge.

Although Graver Tank certainly leaves room for petitioner's suggested inclusion of intent-based elements in the doctrine of equivalents, we do not read it as requiring them. The better view, and the one consistent with Graver Tank's predecessors and the objective approach to infringement, is that intent plays no role in the application of the doctrine of equivalents.

C

Finally, petitioner proposes that in order to minimize conflict with the notice function of patent claims, the doctrine of equivalents should be limited to equivalents that are disclosed within the patent itself. A milder version of this argument, which found favor with the dissenters below, is that the doctrine should be limited to equivalents that were known at the time the patent was issued, and should not extend to after-arising equivalents.

As we have noted, supra, at 1052, with regard to the objective nature of the doctrine, a skilled practitioner's knowledge of the interchangeability between claimed and accused elements is not relevant for its own sake, but rather for what it tells the fact-finder about the similarities or differences between those elements. Much as the perspective of the hypothetical “reasonable person” gives content to concepts such as “negligent” behavior, the perspective of a skilled practitioner provides content to, and limits on, the concept of “equivalence.” Insofar as the question under the doctrine of equivalents is whether an accused element is equivalent to a claimed element, the proper time for evaluating equivalency-and thus knowledge of interchangeability between elements-is at the time of infringement, not at the time the patent was issued. And rejecting the milder version of petitioner's argument necessarily rejects the more severe proposition that equivalents must not only be known, but must also be actually disclosed in the patent in order for such equivalents to infringe upon the patent.

IV

The various opinions below, respondents, and amici devote considerable attention to whether application of the doctrine of equivalents is a task for the judge or for the jury. However, despite petitioner's argument below that the doctrine should be applied by the judge, in this Court petitioner makes only passing reference to this issue. See Brief for Petitioner 22, n. 15 (“If this Court were to hold in Markman v. Westview Instruments, Inc., No. 95-26, 1996 WL 12585 (argued Jan. 8, 1996), that judges rather than juries are to construe patent claims, so as to provide a uniform definition of the scope of the legally protected monopoly, it would seem at cross-purposes to say that juries may nonetheless expand the claims by resort to a broad notion of ‘equivalents' ”); Reply Brief for Petitioner 20 (whether judge or jury should apply the doctrine of equivalents depends on how the Court views the nature of the inquiry under the doctrine of equivalents).

Petitioner's comments go more to the alleged inconsistency between the doctrine of equivalents and the claiming requirement than to the role of the jury in applying the doctrine as properly understood. Because resolution of whether, or how much of, the application of the doctrine of equivalents can be resolved by the court is not necessary for us to answer the question presented, we decline to take it up. The Federal Circuit held that it was for the jury to decide whether the accused process was equivalent to the claimed process. There was ample support in our prior cases for that holding. See, e.g., Union Paper-Bag Machine Co. v. Murphy, 97 U.S., at 125 (“[I]n determining the question of infringement, the court or jury, as the case may be, ... are to look at the machines or their several devices or elements in the light of what they do, or what office or function they perform, and how they perform it, and to find that one thing is substantially the same as another, if it performs substantially the same function in substantially the same way to obtain the same result”); Winans v. Denmead, 15 How., at 344 (“[It] is a question for the jury” whether the accused device was “the same in kind, and effected by the employment of [the patentee's] mode of operation in substance”). Nothing in our recent decision in Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) necessitates a different result than that reached by the Federal Circuit. Indeed, Markman cites with considerable favor, when discussing the role of judge and jury, the seminal Winans decision. 517 U.S., at 384-385, 116 S.Ct., at 1393. Whether, if the issue were squarely presented to us, we would reach a different conclusion than did the Federal Circuit is not a question we need decide today.<ref>With regard to the concern over unreviewability due to black-box jury verdicts, we offer only guidance, not a specific mandate. Where the evidence is such that no reasonable jury could determine two elements to be equivalent, district courts are obliged to grant partial or complete summary judgment. See Fed. Rule Civ. Proc. 56; Celotex Corp. v. Catrett, 477 U.S. 317, 322-323, 106 S.Ct. 2548, 2552-2553, 91 L.Ed.2d 265 (1986). If there has been a reluctance to do so by some courts due to unfamiliarity with the subject matter, we are confident that the Federal Circuit can remedy the problem. Of course, the various legal limitations on the application of the doctrine of equivalents are to be determined by the court, either on a pretrial motion for partial summary judgment or on a motion for judgment as a matter of law at the close of the evidence and after the jury verdict. Fed. Rule Civ. Proc. 56; Fed. Rule Civ. Proc. 50. Thus, under the particular facts of a case, if prosecution history estoppel would apply or if a theory of equivalence would entirely vitiate a particular claim element, partial or complete judgment should be rendered by the court, as there would be no further material issue for the jury to resolve. Finally, in cases that reach the jury, a special verdict and/or interrogatories on each claim element could be very useful in facilitating review, uniformity, and possibly postverdict judgments as a matter of law. See Fed. Rules Civ. Proc. 49 and 50. We leave it to the Federal Circuit how best to implement procedural improvements to promote certainty, consistency, and reviewability to this area of the law.</ref>

V

All that remains is to address the debate regarding the linguistic framework under which “equivalence” is determined. Both the parties and the Federal Circuit spend considerable time arguing whether the so-called “triple identity” test-focusing on the function served by a particular claim element, the way that element serves that function, and the result thus obtained by that element-is a suitable method for determining equivalence, or whether an “insubstantial differences” approach is better. There seems to be substantial agreement that, while the triple identity test may be suitable for analyzing mechanical devices, it often provides a poor framework for analyzing other products or processes. On the other hand, the insubstantial differences test offers little additional guidance as to what might render any given difference “insubstantial.”

In our view, the particular linguistic framework used is less important than whether the test is probative of the essential inquiry: Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention? Different linguistic frameworks may be more suitable to different cases, depending on their particular facts. A focus on individual elements and a special vigilance against allowing the concept of equivalence to eliminate completely any such elements should reduce considerably the imprecision of whatever language is used. An analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute element plays a role substantially different from the claimed element. With these limiting principles as a backdrop, we see no purpose in going further and micromanaging the Federal Circuit's particular word choice for analyzing equivalence. We expect that the Federal Circuit will refine the formulation of the test for equivalence in the orderly course of case-by-case determinations, and we leave such refinement to that court's sound judgment in this area of its special expertise.

VI

Today we adhere to the doctrine of equivalents. The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. Prosecution history estoppel continues to be available as a defense to infringement, but if the patent holder demonstrates that an amendment required during prosecution had a purpose unrelated to patentability, a court must consider that purpose in order to decide whether an estoppel is precluded. Where the patent holder is unable to establish such a purpose, a court should presume that the purpose behind the required amendment is such that prosecution history estoppel would apply. Because the Court of Appeals for the Federal Circuit did not consider all of the requirements as described by us today, particularly as related to prosecution history estoppel and the preservation of some meaning for each element in a claim, we reverse its judgment and remand the case for further proceedings consistent with this opinion.

It is so ordered.

Justice GINSBURG, with whom Justice KENNEDY joins, concurring.

I join the opinion of the Court and write separately to add a cautionary note on the rebuttable presumption the Court announces regarding prosecution history estoppel. I address in particular the application of the presumption in this case and others in which patent prosecution has already been completed. The new presumption, if applied woodenly, might in some instances unfairly discount the expectations of a patentee who had no notice at the time of patent prosecution that such a presumption would apply. Such a patentee would have had little incentive to insist that the reasons for all modifications be memorialized in the file wrapper as they were made. Years after the fact, the patentee may find it difficult to establish an evidentiary basis that would overcome the new presumption. The Court's opinion is sensitive to this problem, noting that “the PTO may have relied upon a flexible rule of estoppel when deciding whether to ask for a change” during patent prosecution. Ante, at 1050, n. 6.

Because respondent has not presented to this Court any explanation for the addition of the lower pH limit, I concur in the decision to remand the matter to the Federal Circuit. On remand, that court can determine-bearing in mind the prior absence of clear rules of the game-whether suitable reasons for including the lower pH limit were earlier offered or, if not, whether they can now be established.

===Footnotes===
<references/>

AME 40590 Homeworks, Spring 2011

2011-03-25T15:30:53Z

Bill Goodwine: /* Due Monday, March 26, 2011 */

AME 40590 Homeworks, Spring 2011

2011-03-25T15:30:47Z

Bill Goodwine: /* Due Friday, March 23, 2011 */

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 25, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]

=Due Monday, March 26, 2011=
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
*If your last name starts with a letter between and including A through L, read [[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
*If your last name starts with a letter between and including M through Z, read [[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

AME 40590 Homeworks, Spring 2011

2011-03-25T15:29:48Z

Bill Goodwine:

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 23, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]

=Due Monday, March 26, 2011=
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
*If your last name starts with a letter between and including A through L, read [[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
*If your last name starts with a letter between and including M through Z, read [[Warner-Jenkinson v. Hilton Davis Respondent Brief]]

AME 40590 Homeworks, Spring 2011

2011-03-24T01:17:11Z

Bill Goodwine: /* Due Friday, March 23, 2011 */

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 23, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]

AME 40590 Homeworks, Spring 2011

2011-03-23T15:30:46Z

Bill Goodwine: /* Due Friday, March 23, 2011 */

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 23, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]

AME 40590 Intellectual Property for Engineers

2011-03-23T15:30:31Z

Bill Goodwine: /* ALPHABETICAL LISTING OF CASES */

=ALPHABETICAL LISTING OF CASES=

*[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]
*[[Alza Corp. v. Mylan Laboratories, 464 F.3d 1286, (2006)]]
*[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
*[[Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961)]]
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)]]
*[[Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)]]
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
*[[Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)]]
*[[Bonito Boats. v. Thunder Craft, 489 U.S. 141 (1989)]]
*[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]
*[[Chester v. Miller, 906 F.2d 1574 (1990)]]
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Diamond v. Diehr, 450 U.S. 175 (1981)]]
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)]]
*[[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
*[[Gould v. Hellwarth, 472 F2d 1383 (1973)]]
*[[Graham v. John Deere, 383 U.S. 1 (1966)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]
*[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850) ]]
*[[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]
*[[In Re Bilski]]
**[[In Re Bilski, Dky concurring opinion]]
**[[In Re Bilski, Newman dissenting opinion]]
**[[In Re Bilski, Mayer dissenting opinion]]
**[[In Re Bilski, Rader dissenting opinion]]
*[[In re Brana, 51 F.3d 1560 (1995)]]
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]
*[[In re Kahn, CAFC 04-1616 (2006)]]
*[[In Re Rouffet]]
*[[J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)]]
*[[Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)]]
*[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
*[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]
*[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
*[[Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]
*[[Microsoft Corp v. At&T Corp.]]
*[[Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)]]
*[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]
*[[Philips Electric Co. v. Thermal Industries, Inc. (full text)]]
*[[Quanta Computers Inc v. LG Electronics (full text)]]
*[[Reiner v. I. Leon Co. (full text)]]
*[[South Corp. v. US]]
*[[South Corp. v. US (full text)]]
*[[South Corp. v. US 690 F.2d 1368 (1982)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]
*[[Traffix Devices, Inc. vs. Marketing Displays, Inc.]]
*[[US v. Adams, 383 U.S. 39 (1966)]]
*[[US v. Adams (full text)]]
*[[U.S. v. Univis Lens Co., 316 U.S. 241 (1942)]]
*[[Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc. (full text)]]
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
**[[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
**[[Warner-Jenkinson v. Hilton Davis Respondent Brief]]
*[[Winner International Royalty Co. v. Wang, 202 F.3d 1340 (2000)]]
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=[[INTRODUCTION]]=
This is a summary. Click on the title for the full chapter: [[INTRODUCTION]]

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special appeals court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the Constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[NONOBVIOUSNESS]]=
This is a summary. Click on the title for the full chapter: [[NONOBVIOUSNESS]]

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[INFRINGEMENT]]=
This is a summary. Click on the title for the full chapter: [[INFRINGEMENT]]

=[[THE PATENT DOCUMENT]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT DOCUMENT]]

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
This is a summary. Click on the title for the full chapter: [[NOVELTY]]

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

Outline:
*Literal Infringement
*The Doctrine of Equivalents

=[[UTILITY]]=
This is a summary. Click on the title for the full chapter: [[UTILITY]]

=[[PATENTABLE SUBJECT MATTER]]=
This is a summary. Click on the title for the full chapter: [[PATENTABLE SUBJECT MATTER]]

Can computer programs, algorithms, laws of nature, life forms, plants, ''etc.'' be patented. In particular, are the following patentable:

* Plants
* Algorithms and Computer Programs
* Scientific Facts?

In a recent case
* State Street (1998)
the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

=[[FOREIGN AND DOMESTIC PRIORITY]]=
This is a summary. Click on the title for the full chapter: [[FOREIGN AND DOMESTIC PRIORITY]]

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT APPLICATION]]

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=[[INVENTOR ELIGIBILITY]]=
This is a summary. Click on the title for the full chapter: [[INVENTOR ELIGIBILITY]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=[[ANTICIPATION]]=
This is a summary. Click on the title for the full chapter: [[ANTICIPATION]]

=[[PRIOR ART]]=
This is a summary. Click on the title for the full chapter: [[PRIOR ART]]

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

CCS Fitness, Inc. v. Brunswick Corporation

2011-03-23T15:30:08Z

Bill Goodwine: moved CCS Fitness, Inc. v. Brunswick Corporation to CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)

#REDIRECT [[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)]]

CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)

2011-03-23T15:30:08Z

Bill Goodwine: moved CCS Fitness, Inc. v. Brunswick Corporation to CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)

United States Court of Appeals, Federal Circuit.

CCS FITNESS, INC., Plaintiff-Appellant,

v.

BRUNSWICK CORPORATION and its Division Life Fitness, Defendants Appellees.

No. 01-1139.
May 3, 2002.
Rehearing Denied May 30, 2002.

Paul T. Meiklejohn, Dorsey & Whitney LLP, of Seattle, WA, argued for plaintiff-appellant. With him on the brief was David M. Jacobson.

Linda F. Callison, Colley Godward LLP, of Palo Alto, CA, argued for defendant-appellee. With her on the brief was Ricardo Rodriguez. Of counsel on the brief was Bruce A. Featherstone, Featherstone DeSisto LLP, of Denver, CO.

Before MAYER, Chief Judge, MICHEL and LOURIE, Circuit Judges.

MICHEL, Circuit Judge.

Plaintiff-Appellant CCS Fitness, Inc. appeals from a decision by the United States District Court for the District of Colorado holding that the claim limitation “reciprocating member” as used in the asserted patents does not cover anything more than the single-component straight bar depicted in the patents' drawings. As a result, the district court concluded, the accused infringer Life Fitness warranted summary judgment of non-infringement, since its accused exercise machines' “pedal lever” uses a multi-component, curved bar.

Because the claim term “member” has an established meaning and because nothing in the intrinsic evidence narrows that claim term's ordinary meaning, we hold that “member” does encompass a multi-component, curved beam or lever. Thus, we reverse. To the extent that the district court's analysis of the doctrine of equivalents relied on the construction of a claim term other than “reciprocating member,” we vacate that portion of the decision and remand. To the extent it relied on that term, we reverse.

I

This case involves a stationary exercise device more commonly known as an elliptical trainer. As shown by the preferred embodiment pictured in CCS Fitness' patents, elliptical trainers comprise a vertical frame attached to a base structure at a right angle, with the base structure resting on the floor. A user approaches this machine from the rear, where he mounts two footpads, each of which lies at the end of a “foot member,” a structure that extends and attaches to the vertical frame.

The foot members also intersect with “reciprocating members” (432, below), longitudinal structures that run “substantially parallel” to the floor, with one end of that structure attached to a shaft and crank system located at the vertical-frame end of the machine. The other end of a “member” has “rollers” or wheels attached to it so that the members can “reciprocate” or move back and forth on the floor as the user pushes up and down (or “climbs”) on the machine's footpads. As the user does so, the front end of the member rotates around the crankshaft, thereby causing the reciprocating member to rotate in a circular motion before gradually changing into a linear motion. The elliptical trainer generally allows a user to engage in high-intensity cardiovascular exercise without putting undue stress on the user's knees.

This case contained images. Please refer to the patent at issue.

CCS Fitness owns by assignment the three combination patents that claim this stationary exercise device: U.S. Patent Nos. 5,924,962 ('962 patent); 5,938,567 ('567 patent); and 5,683,333 ('333 patent). Claims 9 and 10 from the ′962 patent and claims 1 and 2 of the ′567 patent are representative:

9. An apparatus for exercising comprising: a frame having a base portion adapted to be supported by a floor; first and second reciprocating members, each reciprocating member having a first and a second end, a portion of said first and second reciprocating members being adapted for substantially linear motion;....

10. The exercising device according to claim 9 wherein said coupler member attaching means comprises: a first element attached at one end to said pulley proximate said pivot axis and at its other end to said second end of said first reciprocating member; and a second element attached at one end to said pulley proximate said pivot access and at its other end to said second end of said second reciprocating member....

1. An apparatus for exercising comprising: a frame having a base portion adapted to be supported by a floor; first and second reciprocating members, each reciprocating member having a rear support and a front end;....

2. The exercise apparatus according to claim 1 wherein said rear support comprises a roller attached to each reciprocating member and adapted to rollably [sic] engage the base portion of said frame.

U.S. Patent No. 5,924,962, col. 8, lines 17-24, 42-49; U.S. Patent No. 5,938,567, col. 6, lines 56-62, col. 7, lines 29-32 (emphases added). Besides the description set forth above, nothing in the claim language of the three patents describes the shape of the reciprocating members or whether it consists of a single-component structure only, as opposed to a structure consisting of multiple components.

In addition, nothing in the respective patents' abstract, summary of invention or detailed description sets forth the shape or makeup of these structures. The drawings for the patents' preferred embodiments depict the reciprocating members as a single-component, straight-bar structure. The prosecution history, meanwhile, discusses only the “angle” taken by a “foot platform relative to a reciprocating member” and the members' wheels and attachment to the crankshaft.

In April 1998, CCS Fitness sued Brunswick Corporation and its division Life Fitness (collectively referred to as “Life Fitness”), alleging that two of Life Fitness' elliptical exercisers literally infringed claims 9, 10 and 12 of the ′ 962 patent, claims 1-5 of the ′567 patent and further infringed, under the doctrine of equivalents, claims 1-6 of the ′333 patent. The parties do not dispute that, in lieu of “reciprocating members,” Life Fitness' accused machines use “pedal levers,” structures that curve upward as they approach the frame end of the machine. The “pedal levers” also use multiple components to attach to and rotate around a crankshaft, not a single component.

Both parties moved for summary judgment, with CCS Fitness arguing that the reciprocating members contained in each of the claims at issue comprised more than simply a single-component, straight bar-they also included the curved, multi-component structure used in the accused devices. The parties agreed that “reciprocating” referred to the “back and forth” movement of the “member”; but the district court disagreed with CCS Fitness' proposed construction of “member,” reasoning that the claim language never alluded to the reciprocating members as having multiple parts. Further, said the district court, the “illustrations in the three patents-in-suit show a reciprocating member ... made of one contiguous piece of hard material, with no connections or joints.”

As to the shape of the reciprocating members, the court noted that nothing in the claims, specifications or prosecution history indicates what shape these structures had to take; but again, it reasoned that the “figures [of the claimed invention] illustrate a straight bar.” Citing Bocciarelli v. Huffman, 43 C.C.P.A. 873, 232 F.2d 647, 652 (1956), the district court maintained that if CCS Fitness wanted to claim a device whose reciprocating member included a curved, multi-component structure, its patents should have included an illustration that showed these embodiments. To shore up this analysis, the district court then substituted the language “single straight bars that move back and forth” in lieu of the claims' use of “reciprocating members,” concluding that its interpretation was “logical” when read in that light. Accordingly, because the accused devices used a curved reciprocating member that consisted of multiple components, the district court concluded that it did not literally infringe CCS Fitness' ′962 or ′567 patents as a matter of law, thereby entitling Life Fitness to summary judgment.

The district court also granted summary judgment for Life Fitness on CCS Fitness' claim that the accused exercise machines infringed the ′333 patent under the doctrine of equivalents. In a brief analysis, the district court did not identify or construe the claim language at issue in this patent. Instead, it noted that the “Patent illustrations and CCS video” showed that the “CCS machine” caused its reciprocating members to rotate around the crankshaft in a “perfect circle.” By contrast, reasoned the court, the “circle” created by the accused machines used “multiple links” to generate that result, leading the court to conclude that CCS Fitness could not establish that its invention and the accused devices relied on the “same way to create substantially the same result.”

CCS Fitness appeals, arguing again that the ordinary meaning of the term “reciprocating member”-whether defined by an ordinary or a technical dictionary-covers a curved structure consisting of one or more components. In support of this argument, CCS Fitness directs our attention to what it calls the “Alternative A” and “Alternative B” set of components used by the accused devices. Life Fitness counters that (among other things) the specification and the drawings can limit the scope of the claimed reciprocating members, since “member” is a vague term whose scope requires clarification from the specification and drawings. To support this argument, Life Fitness points to an affidavit from an expert who avers that “member” has no customary meaning to one of ordinary skill, thereby necessitating resort to the specification. The record, however, also contains an affidavit from the inventor who asserts that “member” has a broad, ordinary meaning in the relevant art.

Alternatively, Life Fitness suggests that the claimed “member” is so lacking in structure that it essentially constitutes a means-plus-function clause, see 35 U.S.C. § 112 ¶ 6, meaning it would cover nothing more than the corresponding structure (and its equivalents) disclosed in the specification and drawings. So too does it suggest that statements in the prosecution history limit the scope of the claimed “member” so that it could not encompass the accused device's “pedal levers.” Last, Life Fitness contends that CCS Fitness is presenting a different claim construction theory on appeal than it did to the district court, as it never pressed the “Alternative A and B” part of its argument on the district court. Consequently, Life Fitness urges us to hold that CCS Fitness has waived its current claim construction argument.

II

We have jurisdiction under 28 U.S.C. § 1295(a)(1) (1994) and review the district court's summary judgment ruling de novo. Pall Corp. v. PTI Tech. Inc., 259 F.3d 1383, 1389, 59 USPQ2d 1763, 1767 (Fed.Cir.2001). In so doing, we draw all reasonable factual inferences in favor of the nonmoving party. Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 988, 50 USPQ2d 1607, 1609 (Fed.Cir.1999).

A

Patent infringement requires a two-step analysis. Id. First, a court must determine as a matter of law the correct scope and meaning of a disputed claim term. Id. We review this aspect of the infringement analysis de novo. Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1338, 51 USPQ2d 1295, 1298 (Fed.Cir.1999). Second, the analysis requires a comparison of the properly construed claims to the accused device, to see whether that device contains all the limitations, either literally or by equivalents, in the claimed invention. Johnson Worldwide, 175 F.3d at 988, 50 USPQ2d at 1609; Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1247-48, 48 USPQ2d 1117, 1120 (Fed.Cir.1998). As in this case, the litigants frequently do not dispute the structure of the accused device, meaning the infringement analysis often turns on the interpretation of the claims alone. Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1350, 58 USPQ2d 1076, 1078 (Fed.Cir.2001); Wang Labs., Inc. v. America Online Inc., 197 F.3d 1377, 1381, 53 USPQ2d 1161, 1163 (Fed.Cir.1999).

Claim interpretation begins with an examination of the intrinsic evidence, i.e., the claims, the rest of the specification and, if in evidence, the prosecution history. Gart v. Logitech, Inc., 254 F.3d 1334, 1339-40, 59 USPQ2d 1290, 1293-94 (Fed.Cir.2001); O.I. Corp. v. Tekmar Co. Inc., 115 F.3d 1576, 1581, 42 USPQ2d 1777, 1780 (Fed.Cir.1997). Courts may also use extrinsic evidence ( e.g., expert testimony, treatises) to resolve the scope and meaning of a claim term. Spectrum Int'l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1378, 49 USPQ2d 1065, 1068 (Fed.Cir.1998); Kegel Co., Inc. v. AMF Bowling, Inc., 127 F.3d 1420, 1426, 44 USPQ2d 1123, 1127 (Fed.Cir.1997).

Generally speaking, we indulge a “heavy presumption” that a claim term carries its ordinary and customary meaning. Johnson Worldwide, 175 F.3d at 989, 50 USPQ2d at 1610; accord Gart, 254 F.3d at 1341, 59 USPQ2d at 1295; Kegel, 127 F.3d at 1427, 44 USPQ2d at 1127. “[I]f an apparatus claim recites a general structure without limiting that structure to a specific subset of structures, we will generally construe the term to cover all known types of that structure” that the patent disclosure supports. Renishaw, 158 F.3d at 1250, 48 USPQ2d at 1122. Sensibly enough, our precedents show that dictionary definitions may establish a claim term's ordinary meaning. Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1344, 60 USPQ2d 1851, 1855 (Fed.Cir.2001) (using Random House Unabridged Dictionary to define the ordinary meaning of “portion” as encompassing both a one-piece and a two-piece structure); Renishaw, 158 F.3d at 1250, 48 USPQ2d at 1122 (noting that the meaning of a claim term may come from a “relevant dictionary” so long as the definition does not fly “in the face of the patent disclosure”); Kegel, 127 F.3d at 1427, 44 USPQ2d at 1127 (using Webster's Third New International Dictionary to define the claim term “assembly”); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 n. 6, 39 USPQ2d 1573, 1580 n. 6 (Fed.Cir.1996) (“Although technical treatises and dictionaries fall within the category of extrinsic evidence, as they do not form a part of an integrated patent document, they are worthy of special note. Judges are free to consult such resources at any time in order to better understand the underlying technology and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents.”).

An accused infringer may overcome this “heavy presumption” and narrow a claim term's ordinary meaning, but he cannot do so simply by pointing to the preferred embodiment or other structures or steps disclosed in the specification or prosecution history. Johnson Worldwide, 175 F.3d at 989-90, 992, 50 USPQ2d at 1610; Burke, 183 F.3d at 1340, 51 USPQ2d at 1299. Indeed, contrary to the district court's analysis here, our case law makes clear that a patentee need not “describe in the specification every conceivable and possible future embodiment of his invention.” Rexnord, 274 F.3d at 1344, 60 USPQ2d at 1856 (citations omitted).

Rather, as shown by our precedents, a court may constrict the ordinary meaning of a claim term in at least one of four ways. First, the claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history. E.g., Johnson Worldwide, 175 F.3d at 990, 50 USPQ2d at 1610; Rexnord, 274 F.3d at 1342, 60 USPQ2d at 1854. Second, a claim term will not carry its ordinary meaning if the intrinsic evidence shows that the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention. E.g., Spectrum Int'l, 164 F.3d at 1378, 49 USPQ2d at 1068-69 (narrowing a claim term's ordinary meaning based on statements in intrinsic evidence that distinguished claimed invention from prior art); SciMed Life Sys., Inc. v. Adv. Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44, 58 USPQ2d 1059, 1064 (Fed.Cir.2001) (limiting claim term based in part on statements in the specification indicating that “all embodiments” of the claimed invention used a particular structure); Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed.Cir.1999) (limiting claim term based in part on statements in the specification describing a particular structure as “important to the invention”).

Third, and most relevant to this case, a claim term also will not have its ordinary meaning if the term “chosen by the patentee so deprive[s] the claim of clarity” as to require resort to the other intrinsic evidence for a definite meaning. E.g., Johnson Worldwide, 175 F.3d at 990, 50 USPQ2d at 1610; Gart, 254 F.3d at 1341, 59 USPQ2d at 1295. Last, as a matter of statutory authority, a claim term will cover nothing more than the corresponding structure or step disclosed in the specification, as well as equivalents thereto, if the patentee phrased the claim in step- or means-plus-function format. 35 U.S.C. § 112 ¶ 6; Watts v. XL Sys., Inc., 232 F.3d 877, 880-81, 56 USPQ2d 1836, 1838 (Fed.Cir.2000) (construing § 112 ¶ 6).

1

Applying these principles, we hold that the claim term “reciprocating member,” as used in the asserted patents, encompasses the multi-component, curved structure used by the accused exercise machines. The parties agreed before the district court that “reciprocating” simply means to move back and forth, and we accept that definition on appeal. More important, “member,” as defined by common and technical dictionaries, refers to a “structural unit such as a ... beam or tie, or a combination of these,” see McGraw-Hill Dictionary of Scientific and Technical Terms 1237 (5th ed.1994), or to a “distinct part of a whole,” see American Heritage Dictionary 849 (3d ed.1996). Based on these definitions, we agree with CCS Fitness that the term “member” denotes a beam-like structure that is “a single unit in a larger whole.” It is not limited to a straight-bar structure comprising a single component only.

In addition, Life Fitness has not shown that anything in the specification or prosecution history overcomes the “heavy presumption” that “member” carries its ordinary meaning. The specification never requires a certain number of components or certain shape; nor does it limit the “member” in either regard. Contrary to the district court's analysis, moreover, the specifications did not need to include a drawing of a multi-component, curved member for the claimed invention to cover that particular embodiment. The drawings merely illustrated a particular embodiment of the claimed member and the specifications did not clearly assign a unique definition to “member,” distinguish “member” based on the prior art, disclaim subject matter or describe a single-component, straight-bar “member” as important to the invention.

Nor does the prosecution history contain any clear statements that would narrow the ordinary meaning of the claimed “member.” Indeed, Life Fitness itself characterizes the statements in the prosecution history as posing a mere “inconsistency” with the ordinary meaning of “member,” not as assertions that, e.g., clearly disclaimed subject matter. In any event, having reviewed the statements identified by Life Fitness, we see nothing that bears on the shape or the number of components comprised by the term “member.” We see only a terse mention of the “angle” that a “foot platform” takes “relative to a reciprocating member” and the members' wheels and attachment to the crankshaft.

Life Fitness also relies on expert testimony, but this testimony does not establish the assertion that “member” lacks clear meaning. First, we can resolve the ordinary meaning of the claimed “member” by resort to the intrinsic evidence and dictionary definitions only. Thus, we do not need to examine expert testimony. Even doing so, however, we do not view this expert testimony as particularly helpful, since the inventor himself, presumably also an artisan of ordinary skill in the art, offered testimony that essentially contradicts the expert's assertion that “member” lacks an ordinary meaning. In other words, the battle between Life Fitness' expert testimony and CCS Fitness' inventor testimony is inconclusive. Unsurprisingly, the district court's infringement analysis did not rely on the testimony of either the expert witness or the inventor in reaching its claims construction conclusions. Neither do we.

SciMed Life Systems does not compel a different conclusion. See 242 F.3d at 1342-44, 58 USPQ2d at 1064-65. In that case, we determined that the claim term “lumen,” as used in three patents covering a type of catheter, meant a “coaxial lumen” only. Id. at 1342, 242 F.3d 1337, 58 USPQ2d at 1064. The specification distinguished the claimed invention from the prior art based on that art's use of “dual lumens” and pointed out the advantages of coaxial lumens. Id. at 1343, 242 F.3d 1337, 58 USPQ2d at 1064. It also described “the present invention” as using a coaxial lumen, and it stated that “all embodiments of the present invention” use coaxial lumens. Id. at 1343-44, 242 F.3d 1337, 58 USPQ2d at 1064-65. We therefore determined that a catheter employing coaxial lumens was the invention. Id. at 1345, 242 F.3d 1337, 58 USPQ2d at 1066.

Here, on the other hand, nothing in the specifications distinguishes the claimed “member” from prior art based on its shape or number of components. And the specifications do not even imply that “all embodiments” of the claimed exercise machine must use a single-component, straight-bar member or else tout the advantages of using that particular structure. In short, Life Fitness cannot use the intrinsic evidence's silence to narrow the ordinary meaning of an unambiguous claim term. See, e.g., Johnson Worldwide, 175 F.3d at 992, 50 USPQ2d at 1612 (“[M]ere inferences drawn from the description of an embodiment of the invention cannot serve to limit claim terms.”); Kegel, 127 F.3d at 1427, 44 USPQ2d at 1127 (“Without an express intent to impart a novel meaning to a claim term, the term takes on its ordinary meaning.”); see also Wang Labs., 197 F.3d at 1384, 53 USPQ2d at 1165-66 (limiting term “frame” to the character-based system in the specification when (among other things) the prosecution history distinguished the claimed invention from prior art based on that system).

In Toro Company, also relied on by Life Fitness, we limited a claim term-“said cover including means for increasing pressure”-to the structure shown in the patent's specifications and drawings. 199 F.3d at 1300-01, 53 USPQ2d at 1069. We did so because dictionary definitions of “cover” and “including” did not “shed dispositive light” on the scope of that claim limitation, id. at 1300, 199 F.3d 1295, 53 USPQ2d at 1069, and the specification described the particular structure at issue, a ring physically attached to the cover, as “important to the invention.” Id. at 1301, 199 F.3d 1295, 53 USPQ2d at 1069. But this precedent does not rescue Life Fitness' argument, for unlike the intrinsic evidence in Toro, nothing in the intrinsic evidence here describes a single-component, straight-bar “member” as important to the invention. See id.; see also Watts, 232 F.3d at 882-83, 56 USPQ2d at 1840-41 (limiting claim term “sealingly connected” to the “misaligned taper angles” disclosed in the specification when the claim term was “not clear on its face” and the prosecution history showed that the patentee had distinguished the claimed invention from prior art based on the “misaligned taper angles”); Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579, 1581, 40 USPQ2d 1019, 1024, 1026 (Fed.Cir.1996) (limiting term “pusher assembly” to the structures stated in the claims themselves and shown in the drawings when the claim term itself did not define the makeup of the “assembly” and the specification provided only “minimal guidance” about the term's scope).

2

Life Fitness' mild attempt to make the claimed “reciprocating member” a means-plus-function clause fares no better. A claim using that format will cover only the corresponding step or structure disclosed in the written description, as well as that step or structure's equivalents. 35 U.S.C. § 112 ¶ 6; Watts, 232 F.3d at 881, 56 USPQ2d at 1838; Personalized Media Communications, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 703, 48 USPQ2d 1880, 1886 (Fed.Cir.1998). A claim limitation that actually uses the word “means” will invoke a rebuttable presumption that § 112 ¶ 6 applies. Personalized Media Communications, 161 F.3d at 703-04, 48 USPQ2d at 1887. By contrast, a claim term that does not use “means” will trigger the rebuttable presumption that § 112 ¶ 6 does not apply. Id. at 704, 161 F.3d 696, 48 USPQ2d at 1887; Watts, 232 F.3d at 880, 56 USPQ2d at 1838. In this case, the claims at issue do not phrase the “reciprocating member” limitation in means-plus-function language, thereby triggering the rebuttable presumption that § 112 ¶ 6 does not govern.

Still, Life Fitness can rebut this presumption if it demonstrates that the claim term fails to “recite sufficiently definite structure” or else recites a “function without reciting sufficient structure for performing that function.” Watts, 232 F.3d at 880, 56 USPQ2d at 1838. To help determine whether a claim term recites sufficient structure, we examine whether it has an understood meaning in the art. Id. at 880-81, 232 F.3d 877, 56 USPQ2d at 1838.

Here, we conclude that Life Fitness cannot rebut the presumption that “reciprocating member” is not restricted by § 112 ¶ 6 and thus covers more than the single-component, straight-bar structures (and their equivalents) shown in the patents' drawings. For one thing, Life Fitness itself has offered nearly no analysis in this regard, i.e., has done nothing to try to overcome the presumption. Moreover, as set forth above, the dictionary definitions of “member” show that an artisan of ordinary skill would understand this term to have an ordinary meaning and to connote beam-like structures. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583, 39 USPQ2d 1783, 1786 (Fed.Cir.1996) (“ ‘Detent’ ... is just such a term. Dictionary definitions make clear that the noun ‘detent’ denotes a type of device with a generally understood meaning in the mechanical arts, even though the definitions are expressed in functional terms.”); Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531, 41 USPQ2d 1001, 1006 (Fed.Cir.1996) (using dictionary definition of “perforation” to discern whether one of ordinary skill would understand this term to connote structure).

Further, in addition to the structure suggested by these dictionary definitions ( e.g., a “structural unit such as a ... beam or tie, or a combination of these”), the claims themselves describe the “member” as having a “rear support and a front end” with one end of this structure circulating around a crankshaft and the other having wheels so that it can “rollably engage the base portion” of the claimed invention. This suffices for purposes of § 112 ¶ 6 and the presumption thereto, since a term need not connote a precise physical structure in order to avoid the ambit of that provision. E.g., Personalized Media Communications, 161 F.3d at 705, 48 USPQ2d at 1888.

3

Because the claim term “reciprocating member” encompasses a multi-component, curved structure, and because the parties do not dispute the structure of the accused device, we must reverse the district court's summary judgment determinations of no literal infringement and no infringement by equivalents.

We note that, as to the doctrine-of-equivalents analysis, the district court also appeared to rely on its construction of “reciprocating member.” On the other hand, the court did discuss the “perfect circle” created by the claimed exercise machine, as opposed to the “elliptical” motion created by the accused device. In so doing, the court did not identify any claim language that related to this “perfect circle”; instead, it cited only the commercial embodiments shown in a video and illustrations of the claimed exercise machine.

Accordingly, to the extent the district court's analysis relied on any claim limitation other than “reciprocating member,” we vacate. In the course of construing the disputed claim terms, a court should not ordinarily rely on the preferred embodiments alone as representing the entire scope of the claimed invention. See SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121, 227 USPQ 577, 586 (Fed.Cir.1985) ( en banc ) (“Infringement, literal or by equivalence, is determined by comparing an accused product not with a preferred embodiment described in the specification, or with a commercialized embodiment of the patentee, but with the properly and previously construed claims in suit.”); see also Rexnord, 274 F.3d at 1344, 60 USPQ2d at 1856 (emphasizing that the scope of a claim term often covers more than the embodiments disclosed in the specification and that a patent applicant need not describe “in the specification every conceivable and possible future embodiment of his invention”). And so, if the district court here used illustrations and a video of the patented invention's commercial embodiment to compare the function-way-result of some claim limitation not identified in its opinion, we vacate that portion of the judgment instead of reversing it altogether. On remand, the district court may simply clarify that it was in fact relying solely on its construction of “reciprocating member” to conduct the doctrine-of-equivalents analysis. In either event, however, a remand is necessary.

B

Finally, Life Fitness contends that CCS Fitness waived its claim construction argument on appeal because CCS Fitness never presented the “Alternative A and B” arguments to the district court. We disagree. Our precedent makes clear that in the context of claim construction, a waiver may occur if a party raises a new issue on appeal, as by, e.g., presenting a new question of claim scope. Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1347, 59 USPQ2d 1401, 1419 (Fed.Cir.2001). A waiver will not necessarily occur, however, if a party simply presented new or additional arguments in support of “the scope of its claim construction, on appeal.” Id. In addition, we look to see whether the trial court and the party claiming waiver had fair notice and an opportunity to address the issue concerning the scope of a claim limitation. See Finnigan Corp. v. Int'l Trade Comm'n, 180 F.3d 1354, 1362-63, 51 USPQ2d 1001, 1007 (Fed.Cir.1999) (discussing “waiver” in the context of presenting claim construction arguments to an administrative law judge).

In this case, CCS Fitness appears to have argued from the start that its “reciprocating member” ought to carry its ordinary meaning and that the scope of this ordinary meaning encompasses the multi-component, curved structure used by the accused exercise machines. See Interactive Gift Express, 256 F.3d at 1347, 59 USPQ2d at 1419. Indeed, the district court itself indicated that CCS Fitness focused on this same argument during summary judgment, which further shows that neither Life Fitness nor the district court lacked notice or an opportunity to address the arguments now presented on appeal. See Finnigan Corp., 180 F.3d at 1362-63, 51 USPQ2d at 1007. That CCS Fitness may have elaborated upon the argument it initially made to the district court ( e.g., by adding a discussion about “Alternatives A and B”) does not undermine this conclusion. See Interactive Gift Express, 256 F.3d at 1347, 59 USPQ2d at 1419; cf. Senmed, Inc. v. Richard-Allan Med. Indus., Inc., 888 F.2d 815, 818, 12 USPQ2d 1508, 1511 (Fed.Cir.1989) (“That an appellant's arguments had been ineptly presented to a trial court does not in itself preclude a reversal by this court if the record unequivocally establishes that the appealed judgment resulted from clear and reversible legal error.”). We conclude that no waiver of this issue occurred.

III

We reverse the district court's determination on summary judgment of no literal infringement, since that judgment rested on an incorrect construction of the claim term “reciprocating member.” We remand for additional proceedings consistent with this opinion. On remand, the parties and the court may address the other disputed claim terms and whether they cover the structures used by the accused exercise machines. To the extent that the district court's analysis of the doctrine of equivalents rested on the construction of a claim term besides “reciprocating member,” we vacate that portion of the judgment. To the extent it also rested on a construction of the claim term “reciprocating member,” we reverse.

REVERSE-IN-PART, VACATE-IN-PART and REMAND.

COSTS

Each party shall bear its own costs.

CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)

2011-03-23T15:25:49Z

Bill Goodwine: Created page with "United States Court of Appeals, Federal Circuit. CCS FITNESS, INC., Plaintiff-Appellant, v. BRUNSWICK CORPORATION and its Division Life Fitness, Defendants Appellees. No. 01-..."

AME 40590 Homeworks, Spring 2011

2011-03-23T15:18:54Z

Bill Goodwine:

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

=Due Friday, March 23, 2011=
We are starting on the issue of infringement.
*[[CCS Fitness, Inc. v. Brunswick Corporation]]

AME 40590 Intellectual Property for Engineers

2011-03-23T15:18:49Z

Bill Goodwine: /* ALPHABETICAL LISTING OF CASES */

=ALPHABETICAL LISTING OF CASES=

*[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]
*[[Alza Corp. v. Mylan Laboratories, 464 F.3d 1286, (2006)]]
*[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
*[[Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961)]]
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)]]
*[[Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)]]
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
*[[Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)]]
*[[Bonito Boats. v. Thunder Craft, 489 U.S. 141 (1989)]]
*[[CCS Fitness, Inc. v. Brunswick Corporation]]
*[[Chester v. Miller, 906 F.2d 1574 (1990)]]
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Diamond v. Diehr, 450 U.S. 175 (1981)]]
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)]]
*[[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
*[[Gould v. Hellwarth, 472 F2d 1383 (1973)]]
*[[Graham v. John Deere, 383 U.S. 1 (1966)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]
*[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850) ]]
*[[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]
*[[In Re Bilski]]
**[[In Re Bilski, Dky concurring opinion]]
**[[In Re Bilski, Newman dissenting opinion]]
**[[In Re Bilski, Mayer dissenting opinion]]
**[[In Re Bilski, Rader dissenting opinion]]
*[[In re Brana, 51 F.3d 1560 (1995)]]
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]
*[[In re Kahn, CAFC 04-1616 (2006)]]
*[[In Re Rouffet]]
*[[J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)]]
*[[Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)]]
*[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
*[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]
*[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
*[[Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]
*[[Microsoft Corp v. At&T Corp.]]
*[[Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)]]
*[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]
*[[Philips Electric Co. v. Thermal Industries, Inc. (full text)]]
*[[Quanta Computers Inc v. LG Electronics (full text)]]
*[[Reiner v. I. Leon Co. (full text)]]
*[[South Corp. v. US]]
*[[South Corp. v. US (full text)]]
*[[South Corp. v. US 690 F.2d 1368 (1982)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]
*[[Traffix Devices, Inc. vs. Marketing Displays, Inc.]]
*[[US v. Adams, 383 U.S. 39 (1966)]]
*[[US v. Adams (full text)]]
*[[U.S. v. Univis Lens Co., 316 U.S. 241 (1942)]]
*[[Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc. (full text)]]
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
**[[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
**[[Warner-Jenkinson v. Hilton Davis Respondent Brief]]
*[[Winner International Royalty Co. v. Wang, 202 F.3d 1340 (2000)]]
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=[[INTRODUCTION]]=
This is a summary. Click on the title for the full chapter: [[INTRODUCTION]]

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special appeals court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the Constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[NONOBVIOUSNESS]]=
This is a summary. Click on the title for the full chapter: [[NONOBVIOUSNESS]]

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[INFRINGEMENT]]=
This is a summary. Click on the title for the full chapter: [[INFRINGEMENT]]

=[[THE PATENT DOCUMENT]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT DOCUMENT]]

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
This is a summary. Click on the title for the full chapter: [[NOVELTY]]

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

Outline:
*Literal Infringement
*The Doctrine of Equivalents

=[[UTILITY]]=
This is a summary. Click on the title for the full chapter: [[UTILITY]]

=[[PATENTABLE SUBJECT MATTER]]=
This is a summary. Click on the title for the full chapter: [[PATENTABLE SUBJECT MATTER]]

Can computer programs, algorithms, laws of nature, life forms, plants, ''etc.'' be patented. In particular, are the following patentable:

* Plants
* Algorithms and Computer Programs
* Scientific Facts?

In a recent case
* State Street (1998)
the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

=[[FOREIGN AND DOMESTIC PRIORITY]]=
This is a summary. Click on the title for the full chapter: [[FOREIGN AND DOMESTIC PRIORITY]]

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT APPLICATION]]

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=[[INVENTOR ELIGIBILITY]]=
This is a summary. Click on the title for the full chapter: [[INVENTOR ELIGIBILITY]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=[[ANTICIPATION]]=
This is a summary. Click on the title for the full chapter: [[ANTICIPATION]]

=[[PRIOR ART]]=
This is a summary. Click on the title for the full chapter: [[PRIOR ART]]

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

AME 40590 Homeworks, Spring 2011

2011-03-22T13:07:45Z

Bill Goodwine: /* Due Wednesday, March 23, 2011 */

AME 40590 Homeworks, Spring 2011

2011-03-22T13:02:35Z

Bill Goodwine:

=Due Friday, January 21, 2011=

* Read [[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]]
**There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
** If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

=Due Monday, January 24, 2011=
* Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
* On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

=Due Wednesday, January 26, 2011=
Read:
* [[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]]
* [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]

=Due Friday, January 28, 2011=
* Read [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
* Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
** Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
** If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

=Due Monday, January 31, 2011=
We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.
* [[Graham v. John Deere, 383 U.S. 1 (1966)]]
* [[US v. Adams, 383 U.S. 39 (1966) ]]

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

=Due Wednesday, February 2, 2011=
* Read
** [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
** [[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
* Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
** Read the patent that was litigated
** Read two of the patents referred to in the prior art
*** for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
*** for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

=Due Friday, February 4, 2011=
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

=Due Monday, February 7, 2011=
We are starting the topic of patentable subject matter. 35 USC 101 says "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:
* [[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
* [[Diamond v. Diehr, 450 U.S. 175 (1981)]]

=Due Wednesday, February 9, 2011=
Make a copy of the [[NONOBVIOUSNESS]] page and edit ''your'' copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

=Due Friday, February 11, 2011=
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]

=Due Monday, February 14, 2011=
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
* Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. [[Bilski brief list|Here]] is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

=Due Friday, February 18, 2011=
We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:
*35 USC 102
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]

=Due Monday, February 21, 2011=
We are continuing with statutory bars. Read:
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]]

=Due Wednesday, February 23, 2011=
*[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]

=Due Friday, February 25, 2011=
Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3323372_KISTLER_ETAL_LINEAR_SERVO_ACCELE.pdf 3,323,372]
*[http://controls.ame.nd.edu/courses/ame40590/S2011/3643513_CERTIFICATE_OF_CORRECTION.pdf 3,643,513]

=Due Monday, February 28, 2011=
Write a six page paper on non-obviousness with the following approximate page break-down:
*The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
*The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
*The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The sixth page should be a description of what ''you'' would propose for the standard for non-obviousness and why it is the best standard.

=Due Wednesday, March 2, 2011=
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]

=Due Friday, March 4, 2011=
* Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. [[ESB Briefs|On this page,]] you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]

=Due Monday, March 7, 2011=
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=Due Wednesday, March 9, 2011=

=Due Friday, March 11, 2011=
Write a paper on patentable subject matter with the following approximate break-down:
*The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
*The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
*The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
*The fourth section should be a description of what ''you'' would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

=Due Monday, March 21, 2011=
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]

=Due Wednesday, March 23, 2011=
Use Westlaw to look up In re Hall. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

AME 40590 Intellectual Property for Engineers

2011-03-22T09:51:47Z

Bill Goodwine: /* ALPHABETICAL LISTING OF CASES */

=ALPHABETICAL LISTING OF CASES=

*[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]]
*[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)]]
*[[Alza Corp. v. Mylan Laboratories, 464 F.3d 1286, (2006)]]
*[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]]
*[[Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961)]]
*[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)]]
*[[Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)]]
*[[Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)]]
*[[Bilski v. Kappos, 130 S.Ct. 3218 (2010)]]
*[[Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)]]
*[[Bonito Boats. v. Thunder Craft, 489 U.S. 141 (1989)]]
*[[Chester v. Miller, 906 F.2d 1574 (1990)]]
*[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]]
*[[Diamond v. Diehr, 450 U.S. 175 (1981)]]
*[[Egbert v. Lippmann, 104 U.S. 333 (1881)]]
*[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]]
*[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]]
*[[Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)]]
*[[Gottschalk v. Benson, 409 U.S. 63 (1972)]]
*[[Gould v. Hellwarth, 472 F2d 1383 (1973)]]
*[[Graham v. John Deere, 383 U.S. 1 (1966)]]
*[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)]]
*[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850) ]]
*[[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)]]
*[[In Re Bilski]]
**[[In Re Bilski, Dky concurring opinion]]
**[[In Re Bilski, Newman dissenting opinion]]
**[[In Re Bilski, Mayer dissenting opinion]]
**[[In Re Bilski, Rader dissenting opinion]]
*[[In re Brana, 51 F.3d 1560 (1995)]]
*[[In re Carlson, 983 F.2d 1032 (1992)]]
*[[In re Hall, 781 F.2d 897 (1986)]]
*[[In re Kahn, CAFC 04-1616 (2006)]]
*[[In Re Rouffet]]
*[[J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)]]
*[[Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)]]
*[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]]
*[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]
*[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)]]
*[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]]
*[[Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)]]
*[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]]
*[[Microsoft Corp v. At&T Corp.]]
*[[Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)]]
*[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]
*[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)]]
*[[Philips Electric Co. v. Thermal Industries, Inc. (full text)]]
*[[Quanta Computers Inc v. LG Electronics (full text)]]
*[[Reiner v. I. Leon Co. (full text)]]
*[[South Corp. v. US]]
*[[South Corp. v. US (full text)]]
*[[South Corp. v. US 690 F.2d 1368 (1982)]]
*[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)]]
*[[Traffix Devices, Inc. vs. Marketing Displays, Inc.]]
*[[US v. Adams, 383 U.S. 39 (1966)]]
*[[US v. Adams (full text)]]
*[[U.S. v. Univis Lens Co., 316 U.S. 241 (1942)]]
*[[Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc. (full text)]]
*[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)]]
**[[Warner-Jenkinson v. Hilton Davis Petitioner Brief]]
**[[Warner-Jenkinson v. Hilton Davis Respondent Brief]]
*[[Winner International Royalty Co. v. Wang, 202 F.3d 1340 (2000)]]
*[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)]]

=[[INTRODUCTION]]=
This is a summary. Click on the title for the full chapter: [[INTRODUCTION]]

Outline:
*The main purpose for obtaining a patent is ''economic''.
*It grants the exclusive right to ''make, use or sell'' the invention for a limited period of time.
*The governing law is Title 35 of the United States Code (35 USC).
*The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
*The law is federal, so patent cases are resolved in the federal court system:
**district courts;
**circuit courts;
**the Court of Appeals for the Federal Circuit (CAFC), a special appeals court for patent cases; and,
**the Supreme Court.
*The US Patent and Trademark Office (PTO) processes patent applications.
*Patents last for 20 years from the date the application is filed with the PTO.
*Patents have the attributes of personal property.
*The foundation of the federal government's authority to create a patent system is in the Constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
*Other forms of intellectual property
**copyright;
**trademarks; and,
**trade secrets.

=[[NONOBVIOUSNESS]]=
This is a summary. Click on the title for the full chapter: [[NONOBVIOUSNESS]]

Outline:

*This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
*There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
*To determine this, there are three fundamental lines of inquiry:
**the scope and content of the prior art;
**the differences between the prior art and claims at issue; and,
**the level of ordinary skill in the art.
*Secondary considerations include:
**a long-felt but unsatisfied need met by the invention;
**appreciation by those versed in the art that the need existed;
**substantial attempts to meet this need;
**commercial success of the invention;
**replacement in the industry by the claimed invention;
**acquiescence by the industry;
**''teaching away'' by those skilled in the art;
**unexpectedness of the results; and,
**disbelief or incredulity on the part of industry with respect to the new invention.

=[[INFRINGEMENT]]=
This is a summary. Click on the title for the full chapter: [[INFRINGEMENT]]

=[[THE PATENT DOCUMENT]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT DOCUMENT]]

Outline:
*A patent has several parts:
**specification: describes the invention;
**claims: delineates the ownership rights;
**drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
**other miscellaneous parts.
*Interpreting claims: claims are said to ''read on'' another device.
*The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
*The date of the invention
**''reduction to practice'';
**''diligence'' requirement.
*The ''file wrapper''.

=[[NOVELTY]]=
This is a summary. Click on the title for the full chapter: [[NOVELTY]]

Outline:
*Specified in 35 USC 102.
*Fundamentally: an invention must be ''new''.
*Section 102 basically defines in a technical way what it means to not be new:
**Events prior to invention
***known or used by others in the US
***patented or in a printed publication in another country
**Events one year before filing the patent application
***patented or in a printed publication anywhere (''in this or a foreign country'')
***in public use or on sale in the US
**Other bars
*The applicant must be the inventor (not the employer)

Outline:
*Literal Infringement
*The Doctrine of Equivalents

=[[UTILITY]]=
This is a summary. Click on the title for the full chapter: [[UTILITY]]

=[[PATENTABLE SUBJECT MATTER]]=
This is a summary. Click on the title for the full chapter: [[PATENTABLE SUBJECT MATTER]]

Can computer programs, algorithms, laws of nature, life forms, plants, ''etc.'' be patented. In particular, are the following patentable:

* Plants
* Algorithms and Computer Programs
* Scientific Facts?

In a recent case
* State Street (1998)
the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

=[[FOREIGN AND DOMESTIC PRIORITY]]=
This is a summary. Click on the title for the full chapter: [[FOREIGN AND DOMESTIC PRIORITY]]

Outline:
*Priority in general
*Foreign priority
*International applications
*Domestic priority
*Provisional applications

=[[THE PATENT APPLICATION]]=
This is a summary. Click on the title for the full chapter: [[THE PATENT APPLICATION]]

Outline:
*The Disclosure
*The Claims
*Other Sections
*New Matter
*The Examination Process

=[[INVENTOR ELIGIBILITY]]=
This is a summary. Click on the title for the full chapter: [[INVENTOR ELIGIBILITY]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)]]

[[Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)]]

[[METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)]]

=[[ANTICIPATION]]=
This is a summary. Click on the title for the full chapter: [[ANTICIPATION]]

=[[PRIOR ART]]=
This is a summary. Click on the title for the full chapter: [[PRIOR ART]]

[[Pfaff v. Wells Electronics: full text]]

[[Perkin-Elmer Corporation v. Computervision Corporation (full text)]]

[[Perkin-Elmer Corporation v. Computervision Corporation]]

In re Carlson, 983 F.2d 1032 (1992)

2011-03-21T15:04:51Z

Bill Goodwine:

United States Court of Appeals,

Federal Circuit.

In re Bradley C. CARLSON.

No. 92-1248.

Dec. 16, 1992.

As Revised on Petition for Rehearing Feb. 1, 1993.

Malcolm L. Moore, Moore & Hansen, of Minneapolis, Minn., argued for appellant. With him on the brief was Chad A. Klingbeil.

Jameson Lee, Associate Sol., Office of the Sol., of Arlington, Va., argued for appellee. With him on the brief was Fred E. McKelvey, Sol. Of counsel were John W. Dewhirst, Richard E. Schafer, Albin F. Drost and Lee E. Barrett.

Before NIES, Chief Judge, LOURIE and CLEVENGER, Circuit Judges.

CLEVENGER, Circuit Judge.

Bradley C. Carlson appeals from the January 9, 1992 decision of the U.S. Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board), Appeal No. 91-2823, affirming the examiner's rejection in reexamination proceeding No. 90/001,935 of the claim of U.S. Design Patent No. 289,855 (Des. 289,855) as unpatentable under 35 U.S.C. § 103 (1988). We affirm.

I

The two issues raised in this appeal are whether the design protected by a German Geschmacksmuster constitutes an “invention ... patented ... in ... a foreign country” within the meaning of 35 U.S.C. § 102(a) (1988) and thus may be considered prior art, and whether Des. 289,855 is unpatentable under 35 U.S.C. § 103 (1988) as obvious in light of the pertinent prior art.

The application that culminated in issuance of Des. 289,855 on May 19, 1987 was filed with the PTO by Carlson on November 19, 1984. The claim of Des. 289,855 covers the ornamental design for a dual compartment bottle as depicted in the six figures included in the design patent.

On April 6, 1990, the PTO granted a request for reexamination of Des. 289, 855 filed by Revlon, Inc. and Smiletote, Inc., whom Carlson had accused of infringing Des. 289,855. During the reexamination, several references were considered which had not been before the examiner during prosecution of the initial application. The new references were (i) German Geschmacksmuster No. 4244, issued to Firma Frankenwald-Presserei Horst Rebhan on May 9, 1984; (ii) U.S. Design Patent No. 86,749, issued to Salvatore Scuito on April 12, 1932, and entitled “Design for a Combined Flask and Drinking Glass Holder” (Scuito); and (iii) a magazine article entitled “News in Packaging,” Drug & Cosmetic Industry (July 1978) (Redken article), illustrating the type of bottle cap used in Des. 289,855.

A Geschmacksmuster is a design registration obtained by an applicant from the German government after performing certain registration procedures. Professor Chisum, in a nutshell, thus describes the registration process in effect in 1984:

[A] person may register an industrial design or model by depositing with a local office an application with a drawing, photograph or sample of the article. Registration is effective on deposit, and lists of registered designs are published a short time after registration.<ref>Donald S. Chisum, Patents § 3.06[2], at 3-107 (1992) (footnote omitted).</ref> The local office of deposit of a Geschmacksmuster in a city is the Amtsgericht, which is the local courthouse or seat of government of that city. The published list, which discloses certain particulars of each registration, is contained within the Bundesanzeiger, or Federal Gazette. The information typically disclosed in the Bundesanzeiger, with respect to a registered design, consists of a general description of the deposited design and the class of articles deposited, identifying numbers of the deposited designs, the name and location of the registrant, the date and time of registration, and the term of protection. In addition, the city location of the deposited design is also known because the published list is organized under city headings.

Certified copies of Geschmacksmuster are available from the Amtsgericht in which the registered designs are deposited. Such copies typically include the same information regarding the Geschmacksmuster as provided in the Bundesanzeiger, supra, including the city of deposit, and a copy of the drawing or photograph deposited. In the case of deposited sample articles, certified copies of Geschmacksmuster contain photographs of the sample articles.

The Geschmacksmuster in this case embraces three different bottle designs, Nos. 3168-3170. Only Model No. 3168 is pertinent to the design claimed in Des. 289,855. That model is a bottle design consisting of two attached container portions divided by a striking, asymmetrical zig-zag line of demarcation. Each container portion has an externally threaded neck with an associated screw-on cap. As translated, both the Bundesanzeiger publication referring to the Geschmacksmuster and the certified copy of the Geschmacksmuster state, in relevant part: “An open package with plastic or synthetic bottles with stoppers.... Model for plastic products.” The description as “open” signifies that the deposited materials are available for public inspection. In addition, the certified copy of the Geschmacksmuster, which was supplied to the examiner as relevant prior art, includes a series of photographs of the three deposited designs taken from various orientations. The Bundesanzeiger identifies the German city of Coburg, Bavaria as the location of the registered design.

Scuito depicts an ornamental design for a combined flask and drinking glass holder. The flask and drinking glass are adjacent to one another and within a smooth-walled holder with a flat, oval base and smooth, plain walls equal in height to the body portions of the flask and glass. Both designs incorporate threaded portions on the receptacles' extremities, presumably to facilitate capping. The overall design disclosed by Scuito, however, is asymmetrical in that the necks of the adjacent receptacles are of different heights.

The final reference in the prior art, the Redken article, illustrates the type of bottle cap used by Carlson in his bottle design, and demonstrates the cap's existence in the art prior to the date of Carlson's invention.

II

Upon reexamination, the examiner rejected Carlson's argument that the Geschmacksmuster should not qualify as prior art under section 102(a), and found that the design protected by Des. 289,855 would have been obvious under section 103. Because the Geschmacksmuster was issued less than twelve months prior to the date of Carlson's application, 35 U.S.C. § 102(b) (1988) is inapplicable.

On appeal, the Board cited as its guide and authority In re Talbott, 443 F.2d 1397, 170 USPQ 281, 58 C.C.P.A. 1374 (1971) (German Geschmacksmuster constitutes a “foreign patent” for purposes of 35 U.S.C. § 102(d) (1988)), and In re Monks, 588 F.2d 308, 200 USPQ 129 (CCPA 1978) (no reason to distinguish between sections 102(a) and 102(d) in determining what constitutes a “foreign patent”). Based on those cases, the Board concluded that a Geschmacksmuster constitutes a patent for purposes of section 102(a). Consequently, the Board held that the Geschmacksmuster was pertinent prior art, and affirmed the examiner's conclusion that Des. 289,855 would have been obvious over the Geschmacksmuster in light of Scuito and the Redken article. Carlson timely appealed the Board's decision to this court.

III

Interpretation of statutory terms is a question of law which this court reviews de novo. Midwest Plastic Fabricators, Inc. v. Underwriters Labs. Inc., 906 F.2d 1568, 1572, 15 USPQ2d 1359, 1362 (Fed.Cir.1990); Chaparral Steel Co. v. United States, 901 F.2d 1097, 1100 (Fed.Cir.1990).

Assuming no other bar to patentability, a person is entitled to a patent under U.S. law unless the same invention was patented by another person in a foreign country prior to the invention thereof by the U.S. applicant. 35 U.S.C. § 102(a) (1988). The potential bar thus created by the existence of a patent issued in a foreign country gives rise to the availability of such a foreign patent as a prior art reference for the purpose of determining the validity of the claims in a U.S. patent or pending patent application. See Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 695, 218 USPQ 865, 867 (Fed.Cir.1983), cert. denied, 464 U.S. 1043, 104 S.Ct. 709, 79 L.Ed.2d 173, 224 USPQ 520 (1984); In re Zimmer, 387 F.2d 990, 991, 156 USPQ 252, 253, 55 C.C.P.A. 817 (1968).

A further bar to patentability arises if an applicant for a U.S. patent has been granted a patent in a foreign country on the same invention more than twelve months prior to the date the patent application is filed in the United States. 35 U.S.C. § 102(d) (1988).

The precise words of section 102 read, in pertinent part:

A person shall be entitled to a patent unless-

(a) the invention was ... patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

. . . . .

(d) the invention was first patented ... by the applicant ... in a foreign country prior to the date of the application for patent in this country on an application for patent ... filed more than twelve months before the filing of the application in the United States....

35 U.S.C. § 102 (1988). With respect to design patents, however, Congress has provided that the time bar in section 102(d) is six months. 35 U.S.C. § 172 (1988).

In In re Talbott, our predecessor court decided, as a matter of first impression, that a design protected by a Geschmacksmuster qualifies under section 102(d) as an invention patented in a foreign country for purposes of applying the statutory time bar against an application for a U.S. design patent covering the same subject matter. 443 F.2d at 1398-99, 170 USPQ at 282. The court rejected the argument that a Geschmacksmuster should not be deemed to fall within section 102(d) because the copyright nature of the rights protected by the Geschmacksmuster is substantially different from the rights inherent in a U.S. design patent. Id., 443 F.2d at 1398-99, 170 USPQ at 281-82. This rejection was based on reasoning adopted in the case by the Board, which in turn relied upon the opinion of Examiner-in-Chief P.J. Federico in Ex Parte Weiss, 159 USPQ 122 (Pat.Off.Bd.App.1967). With regard to construing “patented ... in a foreign country” under section 102(d), Federico concluded that the rights and privileges attaching to the protection granted by foreign governments need not be coextensive with the exclusive rights granted under U.S. law, so long as the foreign rights granted are both substantial and exclusive in nature. Id. at 123-24. Cf. In re Howarth, 654 F.2d 103, 105 n. 3, 210 USPQ 689, 690 n. 3 (CCPA 1981) (“Not every foreign document labelled a ‘patent’ is a patent within the meaning of 35 U.S.C. § 102(a) or (b).” (citing In re Ekenstam, 256 F.2d 321, 323, 118 USPQ 349, 351, 45 C.C.P.A. 1022 (1958))). Because a Geschmacksmuster conveys substantial and exclusive rights in the design, the Board in Weiss held that a Geschmacksmuster qualifies as prior art under section 102(d). 159 USPQ at 124. The court in Talbott expressly “adopt[ed] as our own, the reasoning set out so completely in [ Weiss ].” 443 F.2d at 1399, 170 USPQ at 282.

Our predecessor court also had occasion to consider whether the phrase “patented ... in ... a foreign country,” as used in section 102(a), should have a different meaning from the same language used in section 102(d). The issue arose in In re Monks, a case concerned with the bar to patentability under section 102(d). The Solicitor contended that the date upon which an invention is patented in a foreign country should differ for the purposes of section 102(a) versus section 102(d). At stake was whether the British patent date should be the date the patent finally issued, or an earlier date when the contents of the patent were initially published. 588 F.2d at 309, 200 USPQ at 130. Emphasizing that section 102(d) relates to foreign patents of the U.S. applicant (of which the U.S. applicant must necessarily be aware), whereas section 102(a) relates to foreign patents of others, the Solicitor argued that the foreign patent date under section 102(d) could properly precede the like date under section 102(a). The court refused to draw such a distinction:

First, there is no basis in the [Patent] Act or its legislative history for making such a distinction. The statute uses the identical phrase, “patented ... in a foreign country,” in each of these sections. Nowhere in the legislative history is there the slightest suggestion that these same phrases be interpreted differently.

Id. at 310, 200 USPQ at 131. Although this observation was made with respect to the date on which a foreign patent becomes “patented” within the meaning of section 102(d), the language applies equally as well to the present issue of whether a distinction should be drawn between subsections (a) and (d) of section 102 when considering whether a Geschmacksmuster is a foreign patent citable as prior art in a section 103 analysis.

IV

Whether a Geschmacksmuster is a foreign patent under section 102(a) is a question of first impression. That a Geschmacksmuster qualifies as a patent for section 102(d) purposes is settled law, embraced by the Solicitor, unchallenged by Carlson, and a proposition with which we do not disagree.

Notwithstanding the holding in Talbott and the strong conclusion in Monks that the test for determining what constitutes a foreign patent should not differ between subsections (a) and (d) of section 102, Carlson invites this court to deny Geschmacksmuster the status of patents under section 102(a).

Carlson first points to language in Talbott that recognizes the different situations addressed by subsections (a) and (d) of section 102 and states that the policy considerations underlying the different subsections, “while overlapping to some extent, are not necessarily identical.” 443 F.2d at 1399, 170 USPQ at 282. Carlson claims to base his argument on this premise.

We do not dispute that section 102(a), relating to potential prior art in the form of patents issued in a foreign country and held by persons other than the U.S. patent applicant, serves a purpose akin to, but different from, section 102(d), which specifies the time within which the owner of a foreign patent must apply for a U.S. patent on the same invention. That distinction, however, does not suggest that a Geschmacksmuster lacks the necessary credentials to qualify as a patent under section 102(a).

Nevertheless, Carlson asserts that the correct interpretation of section 102(a) requires that a foreign patent only serve as prior art if it discloses its invention in a readily-accessible fashion. In essence, Carlson argues that the embodiment of foreign protection must take a form that fully discloses the nature of the protected design in a medium of communication capable of being widely disseminated. Because this requirement is clearly not satisfied by depositing a model in a city courthouse in a foreign land, the embodiment cannot constitute an invention patented in a foreign country for purposes of section 102(a) because it is incapable of providing detailed instruction to a large enough number of persons remote from the location of deposit. Moreover, Carlson argues, since the Bundesanzeiger entry does not explicitly refer to dual-compartment containers, it cannot provide notice of the existence of the pertinent model of the Geschmacksmuster to a designer of such containers.

Carlson correctly surmises that section 102(a) contains a requirement that a foreign patent be disclosed in order to qualify as prior art under section 102(a). The requirement, however, is only that the patent be “available to the public.” In re Ekenstam, 256 F.2d 321, 324, 325, 118 USPQ 349, 351, 353, 45 C.C.P.A. 1022 (1958) (citing Brooks v. Norcross, 4 F.Cas. 294, 296 (C.C.D.Mass.1851) (inventions protected by secret/“private” patents do not qualify as “patented abroad” under U.S. law)).

Because the description of the Geschmacksmuster in the Bundesanzeiger does not specifically refer to a multicompartment container, Carlson would have us deem the designs incorporated therein outside of the relevant field of prior art. His argument, however, represents an overly narrow view of the prior art germane to his invention. See, e.g., In re Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed.Cir.1986) (reference must be “within the field of the inventor's endeavor,” or if not, “reasonably pertinent to the particular problem with which the inventor was involved.” (quoting In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979))).

The Bundesanzeiger entry regarding the Geschmacksmuster at issue in this appeal clearly refers to a single package incorporating multiple plastic bottles, thereby alerting the public to potentially relevant designs, and directs the notified reader to proceed to Coburg to obtain the actual design. Once in Coburg, the protected design is completely “available to the public” through the certified copy of the Geschmacksmuster.

We recognize that Geschmacksmuster on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which was registered and protected under German law. Such a burden, however, is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all the contents of the relevant prior art. Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1454, 223 USPQ 603, 614 (Fed.Cir.1984); see also In re Hall, 781 F.2d 897, 899-900, 228 USPQ 453, 456 (Fed.Cir.1986) (doctoral dissertation, catalogued and available at Freiburg University, Germany, provides sufficient “public accessibility” for a printed publication under section 102(b)).

Moreover, actual knowledge of the Geschmacksmuster is not required for the disclosure to be considered prior art. To determine patentability, a hypothetical person is presumed to know all the pertinent prior art, whether or not the applicant is actually aware of its existence. In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed.Cir.1988); see also In re Howarth, 654 F.2d 103, 106, 210 USPQ 689, 692 (CCPA 1981) (“Section 102 has as one objective that only the first inventor obtain a patent.... Foreign ‘patents' and foreign ‘printed publications' preclude the grant of a patent whether or not the information is commonly known. Under [section] 102 a conclusive presumption of knowledge of such prior art is, in effect, a statutorily required fiction.”).

In conclusion, we hold that because the Geschmacksmuster fully discloses the design upon which German law conferred the exclusive rights attendant to the registration, the Geschmacksmuster qualifies as a foreign patent for purposes of section 102(a), and therefore constitutes prior art for use in the obviousness analysis under section 103. In re Zimmer, 387 F.2d 990, 991, 156 USPQ 252, 253, 55 C.C.P.A. 817 (1968). Cf. In re Mulder, 716 F.2d 1542, 1545, 219 USPQ 189, 193 (Fed.Cir.1983) (“[P]rinted publication ... is prior art under [section] 102(a), ..., and thus also ‘prior art’ under [section] 103.”).

V

Whether an invention would have been obvious is a conclusion of law based upon the factual underpinnings stated in Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 693-694, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1966). Thus, this court reviews an obviousness determination by the Board de novo, while reviewing the factual findings underlying the obviousness determination for clear error. In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1935 (Fed.Cir.1990).

Carlson argues that even if the Geschmacksmuster is considered as prior art, Des. 289,855 would nevertheless not have been obvious in light of the Geschmacksmuster, Scuito, and the Redken article. Carlson relies on the fact that the Geschmacksmuster and Scuito, the only references pertinent to the design of a dual compartment bottle, emphasize asymmetry, whereas his dual-compartment bottle design is symmetrical around a plane vertically bisecting the bottle midway between the bottle caps. Citing In re Cho, 813 F.2d 378, 1 USPQ2d 1662 (Fed.Cir.1987), Carlson concludes that since none of the references teach a symmetrical design for a dual compartment bottle, Des. 289,855 must have been nonobvious. We disagree.

In re Cho, concerned with the ornamental design of a bottle cap, contains a succinct statement of when a design patent application should be rejected under section 103:

To support [such] a rejection ..., the teachings of references must be such as to have suggested the overall appearance of the claimed design.... Thus, if the combined teachings suggest only components of the claimed design but not its overall appearance, a rejection under section 103 is inappropriate.

Id. at 382, 1 USPQ2d at 1663-64 (citations omitted). This language describes the situation where each individual element of the design is disclosed in the pertinent prior art, but those elements have not been combined. In the present case, however, a person of ordinary skill in the art, or stated otherwise, “a designer of ordinary capability who designs articles of the type presented,” Id., at 382, 1 USPQ2d at 1663 (citing In re Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782, 784 (CCPA 1981)), need not necessarily study the prior art in order to understand the potential use of a symmetrical design.

In a field of art such as this, where products are deliberately designed as asymmetrical in order to create distinctive, memorable images, it would have been obvious to one of ordinary skill in the art to create a “normal” or symmetrical orientation for a design. Cf. In re Wilson, 345 F.2d 1018, 1020, 145 USPQ 558, 559, 52 C.C.P.A. 1394 (1965) (pleasing symmetry is not nonobvious where it represents no more than obvious symmetry with convenience in mind). Indeed, knowledge of symmetry is one reason why more complex designs are developed-the expected design configuration is one of symmetry.

In any event, Scuito and the Geschmacksmuster manifest “the overall appearance of the claimed design,” since it would have been obvious to bury the Geschmacksmuster's line of demarcation between the vessels and create the smooth, uniform surface found in Scuito. The difference in the design of a smooth-walled dual compartment container and one with a visible line of demarcation is not a difference such as would establish the nonobviousness of the design as a whole under In re Cho.

Because the relevant prior art renders Carlson's design obvious under section 103, the judgment of the Board is

AFFIRMED.

===Footnotes===
<references />

In re Hall, 781 F.2d 897 (1986)

2011-03-21T14:49:33Z

Bill Goodwine:

United States Court of Appeals,

Federal Circuit.

In re Leo M. HALL.

Appeal No. 85-2338.

Jan. 16, 1986.

John F. Faro, American Hosp. Supply Corp., Miami, Fla., argued, for appellant. With him on brief was Boris Haskell, Arlington, Va.

Fred E. McKelvey, Deputy Sol., U.S. Patent and Trademark Office, Arlington, Va., argued, for appellee. With him on brief were Joseph F. Nakamura, Sol. and Michael L. Gellner, Asst. Sol.

Before BALDWIN, Circuit Judge, NICHOLS, Senior Circuit Judge, and KASHIWA, Circuit Judge.

* Circuit Judge Kashiwa retired on January 7, 1986. Prior to his retirement, he participated in the consideration and decision of this case, and joined in this opinion.

BALDWIN, Circuit Judge.

This is an appeal from the decision of the U.S. Patent and Trademark Office's (PTO) former Board of Appeals, adhered to on reconsideration by the Board of Patent Appeals and Interferences (board), sustaining the final rejection of claims 1-25 of reissue Application No. 343,922, filed January 29, 1982, based principally on a “printed publication” bar under 35 U.S.C. §§ 102(b). The reference is a doctoral thesis. Because appellant concedes that his claims are unpatentable if the thesis is available as a “printed publication” more than one year prior to the application's effective filing date of February 27, 1979, the only issue is whether the thesis is available as such a printed publication. On the record before us, we affirm the board's decision.

Background

A protest was filed during prosecution of appellant's reissue application which included in an appendix a copy of the dissertation “1,4- a-Glucanglukohydrolase ein amylotylisches Enzym ...” by Peter Foldi (Foldi thesis or dissertation). The record indicates that in September 1977, Foldi submitted his dissertation to the Department of Chemistry and Pharmacy at Freiburg University in the Federal Republic of Germany, and that Foldi was awarded a doctorate degree on November 2, 1977.

Certain affidavits from Dr. Erich Will, who is the director and manager of the Loan Department of the Library of Freiburg University, have been relied upon by the examiner and the board in reaching their decisions. One document, styled a “Declaration” and signed by Dr. Will, states that:

[I]n November 1977 copies of the dissertation FOLDI ... were received in the library of Freiburg University, and in ... December 1977 copies of the said dissertation were freely made available to the faculty and student body of Freiburg University as well as to the general public.

In an August 28, 1981 letter responding to an inquiry from a German corporation, Dr. Will said that the Freiburg University library was able to make the Foldi dissertation “available to our readers as early as 1977.”

The examiner made a final rejection of the application claims. He said: “On the basis of the instant record it is reasonable to assume that the Foldi thesis was available (accessible) prior to February 27, 1979.” He also pointed out that there was no evidence to the contrary and asked the appellant to state his “knowledge of any inquiry which may have been made regarding ‘availability’ beyond that presently referred to in the record.” Appellant did not respond.

By letter, the PTO's Scientific Library asked Dr. Will whether the Foldi dissertation was made available to the public by being cataloged and placed in the main collection. Dr. Will replied in an October 20, 1983 letter, as translated:

Our dissertations, thus also the Foldi dissertation, are indexed in a special dissertations catalogue, which is part of the general users' catalogue. In the stacks they are likewise set apart in a special dissertation section, which is part of the general stacks.

In response to a further inquiry by the PTO's Scientific Library requesting (1) the exact date of indexing and cataloging of the Foldi dissertation or (2) “the time such procedures normally take,” Dr. Will replied in a June 18, 1984 letter:

The Library copies of the Foldi dissertation were sent to us by the faculty on November 4, 1977. Accordingly, the dissertation most probably was available for general use toward the beginning of the month of December, 1977.

The board held that the unrebutted evidence of record was sufficient to conclude that the Foldi dissertation had an effective date as prior art more than one year prior to the filing date of the appellant's initial application. In rejecting appellant's argument that the evidence was not sufficient to establish a specific date when the dissertation became publicly available, the board said:

We rely on the librarian's affidavit of express facts regarding the specific dissertation of interest and his description of the routine treatment of dissertations in general, in the ordinary course of business in his library.

On appeal, appellant raises two arguments: (1) the § 102(b) “printed publication” bar requires that the publication be accessible to the interested public, but there is no evidence that the dissertation was properly indexed in the library catalog prior to the critical date; and (2) even if the Foldi thesis were cataloged prior to the critical date, the presence of a single cataloged thesis in one university library does not constitute sufficient accessibility of the publication's teachings to those interested in the art exercising reasonable diligence.

OPINION

The “printed publication” bar is found in 35 U.S.C. § 102:

A person shall be entitled to a patent unless-

* * *

(b) the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for patent in the United States....

The bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone. In re Bayer, 568 F.2d 1357, 1361, 196 USPQ 670, 675 (CCPA 1978).

The statutory phrase “printed publication” has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination. In re Wyer, 655 F.2d 221, 226, 210 USPQ 790, 794 (CCPA 1981). Because there are many ways in which a reference may be disseminated to the interested public, “public accessibility” has been called the touchstone in determining whether a reference constitutes a “printed publication” bar under 35 U.S.C. § 102(b). See, e.g., In re Bayer, 568 F.2d at 1359, 196 USPQ at 673; In re Wyer, 655 F.2d at 224, 210 USPQ at 792. The § 102 publication bar is a legal determination based on underlying fact issues, and therefore must be approached on a case-by-case basis. See id. at 227, 210 USPQ at 795. The proponent of the publication bar must show that prior to the critical date the reference was sufficiently accessible, at least to the public interested in the art, so that such a one by examining the reference could make the claimed invention without further research or experimentation. See In re Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed.Cir.1985); In re Bayer, 568 F.2d at 1361, 196 USPQ at 674; In re Wyer, 655 F.2d at 226-27, 210 USPQ at 794-95.

Relying on In re Bayer, appellant argues that the Foldi thesis was not shown to be accessible because Dr. Will's affidavits do not say when the thesis was indexed in the library catalog and do not chronicle the procedures for receiving and processing a thesis in the library.

As the board pointed out in its decision, the facts in Bayer differ from those here. Bayer, who was himself the author of the dissertation relied upon by the PTO, submitted a declaration from the university librarian which detailed the library's procedures for receiving, cataloging, and shelving of theses and attested to the relevant dates that Bayer's thesis was processed. The evidence showed that cataloging and shelving thesis copies routinely took many months from the time they were first received from the faculty and that during the interim the theses were accumulated in a private library office accessible only to library employees. In particular, processing of Bayer's thesis was shown to have been completed after the critical date.

On those facts the CCPA held that Bayer's thesis was not sufficiently accessible and could not give rise to the § 102(b) publication bar. But the court did not hold, as appellant would have it, that accessibility can only be shown by evidence establishing a specific date of cataloging and shelving before the critical date. While such evidence would be desirable, in lending greater certainty to the accessibility determination, the realities of routine business practice counsel against requiring such evidence. The probative value of routine business practice to show the performance of a specific act has long been recognized. See, e.g., 1 Wigmore, Evidence § 92 (1940); rule 406, Fed.R.Evid.; 2 Weinstein, Evidence §§ 406[01], 406[03] (1981). Therefore, we conclude that competent evidence of the general library practice may be relied upon to establish an approximate time when a thesis became accessible.

In the present case, Dr. Will's affidavits give a rather general library procedure as to indexing, cataloging, and shelving of theses. Although no specific dates are cited (except that the thesis was received on November 4, 1977), Dr. Will's affidavits consistently maintain that inasmuch as the Foldi dissertation was received by the library in early November 1977, the dissertation “most probably was available for general use toward the beginning of the month of December, 1977.” The only reasonable interpretation of the affidavits is that Dr. Will was relying on his library's general practice for indexing, cataloging, and shelving theses in estimating the time it would have taken to make the dissertation available to the interested public. Dr. Will's affidavits are competent evidence, and in these circumstances, persuasive evidence that the Foldi dissertation was accessible prior to the critical date. Reliance on an approximation found in the affidavits such as “toward the beginning of the month of December, 1977” works no injustice here because the critical date, February 27, 1978, is some two and one half months later. Moreover, it is undisputed that appellant proffered no rebuttal evidence.

Based on what we have already said concerning “public accessibility,” and noting that the determination rests on the facts of each case, we reject appellant's legal argument that a single cataloged thesis in one university library does not constitute sufficient accessibility to those interested in the art exercising reasonable diligence.

We agree with the board that the evidence of record consisting of Dr. Will's affidavits establishes a prima facie case for unpatentability of the claims under the § 102(b) publication bar. It is a case which stands unrebutted.

Accordingly, the board's decision sustaining the rejection of appellant's claims is affirmed.

AFFIRMED

In re Hall, 781 F.2d 897 (1986)

2011-03-21T10:19:16Z

Bill Goodwine:

United States Court of Appeals,

Federal Circuit.

In re Leo M. HALL.

Appeal No. 85-2338.

Jan. 16, 1986.

John F. Faro, American Hosp. Supply Corp., Miami, Fla., argued, for appellant. With him on brief was Boris Haskell, Arlington, Va.

Fred E. McKelvey, Deputy Sol., U.S. Patent and Trademark Office, Arlington, Va., argued, for appellee. With him on brief were Joseph F. Nakamura, Sol. and Michael L. Gellner, Asst. Sol.

Before BALDWIN, Circuit Judge, NICHOLS, Senior Circuit Judge, and KASHIWA, Circuit Judge.

* Circuit Judge Kashiwa retired on January 7, 1986. Prior to his retirement, he participated in the consideration and decision of this case, and joined in this opinion.

BALDWIN, Circuit Judge.

This is an appeal from the decision of the U.S. Patent and Trademark Office's (PTO) former Board of Appeals, adhered to on reconsideration by the Board of Patent Appeals and Interferences (board), sustaining the final rejection of claims 1-25 of reissue Application No. 343,922, filed January 29, 1982, based principally on a “printed publication” bar under 35 U.S.C. §§ 102(b). The reference is a doctoral thesis. Because appellant concedes that his claims are unpatentable if the thesis is available as a “printed publication” more than one year prior to the application's effective filing date of February 27, 1979, the only issue is whether the thesis is available as such a printed publication. On the record before us, we affirm the board's decision.

Background
A protest was filed during prosecution of appellant's reissue application which included in an appendix a copy of the dissertation “1,4- a-Glucanglukohydrolase ein amylotylisches Enzym ...” by Peter Foldi (Foldi thesis or dissertation). The record indicates that in September 1977, Foldi submitted his dissertation to the Department of Chemistry and Pharmacy at Freiburg University in the Federal Republic of Germany, and that Foldi was awarded a doctorate degree on November 2, 1977.

Certain affidavits from Dr. Erich Will, who is the director and manager of the Loan Department of the Library of Freiburg University, have been relied upon by the examiner and the board in reaching their decisions. One document, styled a “Declaration” and signed by Dr. Will, states that:

[I]n November 1977 copies of the dissertation FOLDI ... were received in the library of Freiburg University, and in ... December 1977 copies of the said dissertation were freely made available to the faculty and student body of Freiburg University as well as to the general public.

In an August 28, 1981 letter responding to an inquiry from a German corporation, Dr. Will said that the Freiburg University library was able to make the Foldi dissertation “available to our readers as early as 1977.”

The examiner made a final rejection of the application claims. He said: “On the basis of the instant record it is reasonable to assume that the Foldi thesis was available (accessible) prior to February 27, 1979.” He also pointed out that there was no evidence to the contrary and asked the appellant to state his “knowledge of any inquiry which may have been made regarding ‘availability’ beyond that presently referred to in the record.” Appellant did not respond.

By letter, the PTO's Scientific Library asked Dr. Will whether the Foldi dissertation was made available to the public by being cataloged and placed in the main collection. Dr. Will replied in an October 20, 1983 letter, as translated:

Our dissertations, thus also the Foldi dissertation, are indexed in a special dissertations catalogue, which is part of the general users' catalogue. In the stacks they are likewise set apart in a special dissertation section, which is part of the general stacks.

In response to a further inquiry by the PTO's Scientific Library requesting (1) the exact date of indexing and cataloging of the Foldi dissertation or (2) “the time such procedures normally take,” Dr. Will replied in a June 18, 1984 letter:

The Library copies of the Foldi dissertation were sent to us by the faculty on November 4, 1977. Accordingly, the dissertation most probably was available for general use toward the beginning of the month of December, 1977.

The board held that the unrebutted evidence of record was sufficient to conclude that the Foldi dissertation had an effective date as prior art more than one year prior to the filing date of the appellant's initial application. In rejecting appellant's argument that the evidence was not sufficient to establish a specific date when the dissertation became publicly available, the board said:

We rely on the librarian's affidavit of express facts regarding the specific dissertation of interest and his description of the routine treatment of dissertations in general, in the ordinary course of business in his library.

On appeal, appellant raises two arguments: (1) the § 102(b) “printed publication” bar requires that the publication be accessible to the interested public, but there is no evidence that the dissertation was properly indexed in the library catalog prior to the critical date; and (2) even if the Foldi thesis were cataloged prior to the critical date, the presence of a single cataloged thesis in one university library does not constitute sufficient accessibility of the publication's teachings to those interested in the art exercising reasonable diligence.

OPINION
The “printed publication” bar is found in 35 U.S.C. § 102:

A person shall be entitled to a patent unless-

* * *

(b) the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for patent in the United States....

The bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone. In re Bayer, 568 F.2d 1357, 1361, 196 USPQ 670, 675 (CCPA 1978).

The statutory phrase “printed publication” has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination. In re Wyer, 655 F.2d 221, 226, 210 USPQ 790, 794 (CCPA 1981). Because there are many ways in which a reference may be disseminated to the interested public, “public accessibility” has been called the touchstone in determining whether a reference constitutes a “printed publication” bar under 35 U.S.C. § 102(b). See, e.g., In re Bayer, 568 F.2d at 1359, 196 USPQ at 673; In re Wyer, 655 F.2d at 224, 210 USPQ at 792. The § 102 publication bar is a legal determination based on underlying fact issues, and therefore must be approached on a case-by-case basis. See id. at 227, 210 USPQ at 795. The proponent of the publication bar must show that prior to the critical date the reference was sufficiently accessible, at least to the public interested in the art, so that such a one by examining the reference could make the claimed invention without further research or experimentation. See In re Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed.Cir.1985); In re Bayer, 568 F.2d at 1361, 196 USPQ at 674; In re Wyer, 655 F.2d at 226-27, 210 USPQ at 794-95.

Relying on In re Bayer, appellant argues that the Foldi thesis was not shown to be accessible because Dr. Will's affidavits do not say when the thesis was indexed in the library catalog and do not chronicle the procedures for receiving and processing a thesis in the library.

As the board pointed out in its decision, the facts in Bayer differ from those here. Bayer, who was himself the author of the dissertation relied upon by the PTO, submitted a declaration from the university librarian which detailed the library's procedures for receiving, cataloging, and shelving of theses and attested to the relevant dates that Bayer's thesis was processed. The evidence showed that cataloging and shelving thesis copies routinely took many months from the time they were first received from the faculty and that during the interim the theses were accumulated in a private library office accessible only to library employees. In particular, processing of Bayer's thesis was shown to have been completed after the critical date.

On those facts the CCPA held that Bayer's thesis was not sufficiently accessible and could not give rise to the § 102(b) publication bar. But the court did not hold, as appellant would have it, that accessibility can only be shown by evidence establishing a specific date of cataloging and shelving before the critical date. While such evidence would be desirable, in lending greater certainty to the accessibility determination, the realities of routine business practice counsel against requiring such evidence. The probative value of routine business practice to show the performance of a specific act has long been recognized. See, e.g., 1 Wigmore, Evidence § 92 (1940); rule 406, Fed.R.Evid.; 2 Weinstein, Evidence §§ 406[01], 406[03] (1981). Therefore, we conclude that competent evidence of the general library practice may be relied upon to establish an approximate time when a thesis became accessible.

In the present case, Dr. Will's affidavits give a rather general library procedure as to indexing, cataloging, and shelving of theses. Although no specific dates are cited (except that the thesis was received on November 4, 1977), Dr. Will's affidavits consistently maintain that inasmuch as the Foldi dissertation was received by the library in early November 1977, the dissertation “most probably was available for general use toward the beginning of the month of December, 1977.” The only reasonable interpretation of the affidavits is that Dr. Will was relying on his library's general practice for indexing, cataloging, and shelving theses in estimating the time it would have taken to make the dissertation available to the interested public. Dr. Will's affidavits are competent evidence, and in these circumstances, persuasive evidence that the Foldi dissertation was accessible prior to the critical date. Reliance on an approximation found in the affidavits such as “toward the beginning of the month of December, 1977” works no injustice here because the critical date, February 27, 1978, is some two and one half months later. Moreover, it is undisputed that appellant proffered no rebuttal evidence.

Based on what we have already said concerning “public accessibility,” and noting that the determination rests on the facts of each case, we reject appellant's legal argument that a single cataloged thesis in one university library does not constitute sufficient accessibility to those interested in the art exercising reasonable diligence.

We agree with the board that the evidence of record consisting of Dr. Will's affidavits establishes a prima facie case for unpatentability of the claims under the § 102(b) publication bar. It is a case which stands unrebutted.

Accordingly, the board's decision sustaining the rejection of appellant's claims is affirmed.

AFFIRMED

In re Hall, 781 F.2d 897 (1986)

2011-03-21T10:19:01Z

Bill Goodwine:

United States Court of Appeals,

Federal Circuit.

In re Leo M. HALL.

Appeal No. 85-2338.

Jan. 16, 1986.

John F. Faro, American Hosp. Supply Corp., Miami, Fla., argued, for appellant. With him on brief was Boris Haskell, Arlington, Va.

Fred E. McKelvey, Deputy Sol., U.S. Patent and Trademark Office, Arlington, Va., argued, for appellee. With him on brief were Joseph F. Nakamura, Sol. and Michael L. Gellner, Asst. Sol.

Before BALDWIN, Circuit Judge, NICHOLS, Senior Circuit Judge, and KASHIWA, Circuit Judge.

* Circuit Judge Kashiwa retired on January 7, 1986. Prior to his retirement, he participated in the consideration and decision of this case, and joined in this opinion.

BALDWIN, Circuit Judge.

This is an appeal from the decision of the U.S. Patent and Trademark Office's (PTO) former Board of Appeals, adhered to on reconsideration by the Board of Patent Appeals and Interferences (board), sustaining the final rejection of claims 1-25 of reissue Application No. 343,922, filed January 29, 1982, based principally on a “printed publication” bar under 35 U.S.C. §§ 102(b). The reference is a doctoral thesis. Because appellant concedes that his claims are unpatentable if the thesis is available as a “printed publication” more than one year prior to the application's effective filing date of February 27, 1979, the only issue is whether the thesis is available as such a printed publication. On the record before us, we affirm the board's decision.

Background
A protest was filed during prosecution of appellant's reissue application which included in an appendix a copy of the dissertation “1,4- a-Glucanglukohydrolase ein amylotylisches Enzym ...” by Peter Foldi (Foldi thesis or dissertation). The record indicates that in September 1977, Foldi submitted his dissertation to the Department of Chemistry and Pharmacy at Freiburg University in the Federal Republic of Germany, and that Foldi was awarded a doctorate degree on November 2, 1977.

Certain affidavits from Dr. Erich Will, who is the director and manager of the Loan Department of the Library of Freiburg University, have been relied upon by the examiner and the board in reaching their decisions. One document, styled a “Declaration” and signed by Dr. Will, states that:

[I]n November 1977 copies of the dissertation FOLDI ... were received in the library of Freiburg University, and in ... December 1977 copies of the said dissertation were freely made available to the faculty and student body of Freiburg University as well as to the general public.

In an August 28, 1981 letter responding to an inquiry from a German corporation, Dr. Will said that the Freiburg University library was able to make the Foldi dissertation “available to our readers as early as 1977.”

The examiner made a final rejection of the application claims. He said: “On the basis of the instant record it is reasonable to assume that the Foldi thesis was available (accessible) prior to February 27, 1979.” He also pointed out that there was no evidence to the contrary and asked the appellant to state his “knowledge of any inquiry which may have been made regarding ‘availability’ beyond that presently referred to in the record.” Appellant did not respond.

By letter, the PTO's Scientific Library asked Dr. Will whether the Foldi dissertation was made available to the public by being cataloged and placed in the main collection. Dr. Will replied in an October 20, 1983 letter, as translated:

Our dissertations, thus also the Foldi dissertation, are indexed in a special dissertations catalogue, which is part of the general users' catalogue. In the stacks they are likewise set apart in a special dissertation section, which is part of the general stacks.

In response to a further inquiry by the PTO's Scientific Library requesting (1) the exact date of indexing and cataloging of the Foldi dissertation or (2) “the time such procedures normally take,” Dr. Will replied in a June 18, 1984 letter:

The Library copies of the Foldi dissertation were sent to us by the faculty on November 4, 1977. Accordingly, the dissertation most probably was available for general use toward the beginning of the month of December, 1977.

The board held that the unrebutted evidence of record was sufficient to conclude that the Foldi dissertation had an effective date as prior art more than one year prior to the filing date of the appellant's initial application. In rejecting appellant's argument that the evidence was not sufficient to establish a specific date when the dissertation became publicly available, the board said:

We rely on the librarian's affidavit of express facts regarding the specific dissertation of interest and his description of the routine treatment of dissertations in general, in the ordinary course of business in his library.

On appeal, appellant raises two arguments: (1) the § 102(b) “printed publication” bar requires that the publication be accessible to the interested public, but there is no evidence that the dissertation was properly indexed in the library catalog prior to the critical date; and (2) even if the Foldi thesis were cataloged prior to the critical date, the presence of a single cataloged thesis in one university library does not constitute sufficient accessibility of the publication's teachings to those interested in the art exercising reasonable diligence.

OPINION
The “printed publication” bar is found in 35 U.S.C. § 102:

A person shall be entitled to a patent unless-

* * *

(b) the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for patent in the United States....

The bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone. In re Bayer, 568 F.2d 1357, 1361, 196 USPQ 670, 675 (CCPA 1978).

The statutory phrase “printed publication” has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination. In re Wyer, 655 F.2d 221, 226, 210 USPQ 790, 794 (CCPA 1981). Because there are many ways in which a reference may be disseminated to the interested public, “public accessibility” has been called the touchstone in determining whether a reference constitutes a “printed publication” bar under 35 U.S.C. § 102(b). See, e.g., In re Bayer, 568 F.2d at 1359, 196 USPQ at 673; In re Wyer, 655 F.2d at 224, 210 USPQ at 792. The § 102 publication bar is a legal determination based on underlying fact issues, and therefore must be approached on a case-by-case basis. See id. at 227, 210 USPQ at 795. The proponent of the publication bar must show that prior to the critical date the reference was sufficiently accessible, at least to the public interested in the art, so that such a one by examining the reference could make the claimed invention without further research or experimentation. See In re Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed.Cir.1985); In re Bayer, 568 F.2d at 1361, 196 USPQ at 674; In re Wyer, 655 F.2d at 226-27, 210 USPQ at 794-95.

Relying on In re Bayer, appellant argues that the Foldi thesis was not shown to be accessible because Dr. Will's affidavits do not say when the thesis was indexed in the library catalog and do not chronicle the procedures for receiving and processing a thesis in the library.

As the board pointed out in its decision, the facts in Bayer differ from those here. Bayer, who was himself the author of the dissertation relied upon by the PTO, submitted a declaration from the university librarian which detailed the library's procedures for receiving, cataloging, and shelving of theses and attested to the relevant dates that Bayer's thesis was processed. The evidence showed that cataloging and shelving thesis copies routinely took many months from the time they were first received from the faculty and that during the interim the theses were accumulated in a private library office accessible only to library employees. In particular, processing of Bayer's thesis was shown to have been completed after the critical date.

On those facts the CCPA held that Bayer's thesis was not sufficiently accessible and could not give rise to the § 102(b) publication bar. But the court did not hold, as appellant would have it, that accessibility can only be shown by evidence establishing a specific date of cataloging and shelving before the critical date. While such evidence would be desirable, in lending greater certainty to the accessibility determination, the realities of routine business practice counsel against requiring such evidence. The probative value of routine business practice to show the performance of a specific act has long been recognized. See, e.g., 1 Wigmore, Evidence § 92 (1940); rule 406, Fed.R.Evid.; 2 Weinstein, Evidence §§ 406[01], 406[03] (1981). Therefore, we conclude that competent evidence of the general library practice may be relied upon to establish an approximate time when a thesis became accessible.

In the present case, Dr. Will's affidavits give a rather general library procedure as to indexing, cataloging, and shelving of theses. Although no specific dates are cited (except that the thesis was received on November 4, 1977), Dr. Will's affidavits consistently maintain that inasmuch as the Foldi dissertation was received by the library in early November 1977, the dissertation “most probably was available for general use toward the beginning of the month of December, 1977.” The only reasonable interpretation of the affidavits is that Dr. Will was relying on his library's general practice for indexing, cataloging, and shelving theses in estimating the time it would have taken to make the dissertation available to the interested public. Dr. Will's affidavits are competent evidence, and in these circumstances, persuasive evidence that the Foldi dissertation was accessible prior to the critical date. Reliance on an approximation found in the affidavits such as “toward the beginning of the month of December, 1977” works no injustice here because the critical date, February 27, 1978, is some two and one half months later. Moreover, it is undisputed that appellant proffered no rebuttal evidence.

Based on what we have already said concerning “public accessibility,” and noting that the determination rests on the facts of each case, we reject appellant's legal argument that a single cataloged thesis in one university library does not constitute sufficient accessibility to those interested in the art exercising reasonable diligence.

We agree with the board that the evidence of record consisting of Dr. Will's affidavits establishes a prima facie case for unpatentability of the claims under the § 102(b) publication bar. It is a case which stands unrebutted.

Accordingly, the board's decision sustaining the rejection of appellant's claims is affirmed.

AFFIRMED