Bill Goodwine's Wiki - User contributions [en]

Quanta Brief - Craig Krzyskowski

2011-05-02T16:51:09Z

Craigkrzyskowski: Created page with "Brief WL 4340885 (U.S.) in support of LG Electronics - When a patentee makes an unconditional sale of a patented invention, the law presumes that the patentee has bargained for ..."

Brief WL 4340885 (U.S.) in support of LG Electronics

- When a patentee makes an unconditional sale of a patented invention, the law presumes that the patentee has bargained for and received the full value of the patented invention, which exhausts the patentee’s rights under patent law

- Nothing in the patent laws requires a patentee to make an unconditional sale that enables it to recoup the value of its patent rights in a single transaction.

- Intel did not bargain for or receive an unconditional right to use the patented systems and methods; nor did it pay respondent for such an unconditional right.

- The doctrine of patent exhaustion rests on the rule that a patentee is “entitled to but one royalty for a patented machine, and consequently when a patentee has himself constructed the machine and sold it… and the consideration has been paid to him for the right, he has then to that extent parted with his monopoly, and ceased to have any interest whatever in the machine
- nothing in the patent laws repeals freedom of contract
- “any conditions which are not in their very nature illegal with regard to this kind of property, imposed by the patentee and agreed to by the licensee for the right to manufacture or use or sell the [patented] article, will be upheld by the courts

- upon the sale of a patented item, the compensation that the patentee had received represented the full value of its patent monopoly, and the resale price agreements were an improper effort to inhibit competition in the wholesale and retail markets

- Basic principles of property law make plain that a purchaser who has obtained only a limited right to practice a patented invention free from infringement claims cannot convey to its purchasers any greater right, whether or not title has passed to the purchaser

- licensing rather than the unconditional sale of intellectual property frequently has procompetitive effects: field-of-use, territorial, and other limitations on intellectual property licenses may serve procompetitive ends by allowing the licensor to exploit its property as efficiently and effectively as possible. These various forms of exclusivity can be used to give a licensee an incentive to invest in the commercialization and distribution of products embodying the licensed intellectual property

- for someone unable to pay for full patent rights, the most efficient result for licensing can be achieved if the parties are able to negotiate a limited license that permits the licensee to practice the patent in the fashion that is of the greatest value to it

- Intel did not negotiate an appropriate license with respondent; instead the petitioners enjoyed an unearned windfall by buying an unlimited right and treating it as an unlimited right

Here in list of arguments in Quanta

2011-05-02T16:50:47Z

Craigkrzyskowski:

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

[[Quanta Brief Summary 901330223]]

[[901349446 Quanta Brief]]

[[Quanta Brief Summary 901471466]]

[[Quanta Brief Summary 901422128]]

[[Quanta Brief Summary Jacob Marmolejo]]

[[Homework 8 (due Friday 28)~jnosal | Quanta Brief Summary 901438174]]

[[Mitros: Quanta Brief]]

[[Zahm Homework 31: Quanta Brief]]

[[901419437 Quanta v. LGE Brief Summary]]

[[Quanta Brief 901437068]]

[[901281608: Quanta Brief]]

[[901444263: Quanta v. LGE Reply Brief of Petitioners]]

[[901479977: Quanta for Petitioners]]

[[Apr. 29th: Brief Summary (2007 WL 3440937) - Andrew McBride]]

[[Reply Brief of Petitioners (Quanta) - Adam Mahood]]

[[Quanta Brief Summary 901360293]]

[[Quanta Brief Summary 901431048]]

[[Quanta Brief Brobins]]

[[Quanta Brief hwong1]]

[[Quanta Brief: Tennant]]

[[Quanta Brief - Snooki]]

[[Quanta Brief (John Gallagher)]]

[[Quanta brief - 901338276]]

[[Brief of Amici Curiae for Respondent - Eric Leis]]

[[Quanta Brief - Kschlax]]

[[Quanta Brief - Christine Roetzel]]

[[Quanta Brief: In support of Federal Circuit Ruling (eguilbea)]]

[[Quanta Brief: 901424607]]

[[Quanta Brief - 901425018]]

[[Quanta Brief- Xiao Dong]]

[[Quanta Brief - Ackroyd]]

[[Quanta Brief - Karch]]

[[Quanta_Brief_Carter]]

[[Quanta Brief - ewolz]]

[[Quanta Brief - Andrew Chipouras]]

[[Quanta Brief - Kristen Kemnetz]]

[[Quanta Brief - Craig Krzyskowski]]

Homework 6: Due Monday April 4

2011-04-04T15:25:07Z

Craigkrzyskowski: Created page with "==Brief in Support of Honeywell== The Doctrine of Equivalents states, “a product or process that does not literally infringe upon the express terms of a patent claim may nonet..."

==Brief in Support of Honeywell==

The Doctrine of Equivalents states, “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.” In this case, we are attempting to rebut the doctrine of prosecution history estoppel, which prevents a patent applicant from going back to the original patent filed and attempting to restructure claims to cover subject matter that was not used when initially filing for the patent, in order to claim infringement under the doctrine of equivalents. Under the doctrine of prosecution history estoppel, the applicant is not allowed to claim subject matter that could be considered to be equivalent and thus infringe the patent under the doctrine of equivalents.

The CAFC determined that the “rewriting of dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel.” The key to proving whether prosecution history estoppel is properly applied is examining why the claims in Honeywell’s original patent needed to be resubmitted. According to the case literature, the original patent claims were rejected due to obviousness in light of the prior art. Prosecution history estoppel may be applied when the reason for a change in the claim literature is in regards to patentability. Clearly, obviousness is related to patentability, so it cannot be argued whether it is appropriate to apply prosecution history estoppel. However, the amended claims did not narrow the equivalent element in question. “The district court had recognized that the element for which equivalency was charged – the inlet guide vanes used to adjust a set point to avoid surge – had not been narrowed.”

Why is it that the prosecution history estoppel is applied in a situation where the equivalence in question actually is not related to the claim that was narrowed? The subject matter surrendered in the claim revisions is most important in deciding whether the presumption of surrender is rebutted. If the “technological equivalent is embraced by subject matter that was relinquished during prosecution of the patent,” then the presumption has not been rebutted. To reiterate the earlier point, it was explicitly stated that equivalent art had nothing to do with subject matter surrendered from narrowing claims during the initial patent prosecution.

As stated in the dissent, it is very interesting that the district court declined to give a reasoning for the why the equivalence was both foreseeable and more than merely tangential in relation to the Honeywell patent. They were able to make this ruling without providing reason while also receiving testimony from expert witnesses that the technology used in the Sundstrand invention was not known at the time of the Honeywell invention. The Festo case is commonly referred to in regards to foreseeability. It is stated that foreseeability is a term used for “readily known equivalents” at the time of patent application. There is no evidence that Sundstrand’s equivalent, invented nearly a decade later, was readily known. Foreseeability does not include inventions that were unknown at the time. The majority ruling in the CAFC decided that if Honeywell knew about the Sundstrand problem, they probably could have figured out how to solve the problem in the same manner that Sundstrand did. This is a very subjective way to make a ruling. The majority is essentially saying that they are relying on a hypothetical situation to decide if an equivalent is infringing an original patent instead of just checking facts.

In concluding, we will state again that there is not enough fact in the case to determine that the Sundstrand did not infringe upon the Honeywell patent. It is undeniable that Honeywell narrowed a claim during the prosecution of the patent application in order to make it non-obvious and therefore, patentable in the eyes of the examiner. However, it is also unquestionable that the equivalent element question was not surrendered when the claims were narrowed. It cannot be stated more clearly that if a claim element is not the subject of an amendment, the presumption of history prosecution estoppel should not be made. The dissenting judge states, “Cancelling an independent claim is not an estoppel generating act as to elements whose scope was not amended or otherwise restricted during prosecution.” From the Warner v. Jenkinson case, we learned that equivalency should be determined element by element. Unfortunately, the majority ruling in this case against Honeywell does not follow the previous precedent. Just because an independent claim was cancelled, forcing Honeywell to make a dependent claim an independent claim does not mean that all dependent claims under the independent claim are surrendered subject matter.

Homework Assignments

2011-04-04T15:24:20Z

Craigkrzyskowski:

;[[Homework 1: Due Monday January 24]]
;[[Homework 2: Due Friday January 28]]
;[[Homework 3: Due Friday February 4]]
;[[Homework 4: Due Wednesday February 9]]
;[[Homework 5: Due Wednesday March 23]]
;[[Homework 6: Due Monday April 4]]

Homework 5: Due Wednesday March 23

2011-03-23T16:42:32Z

Craigkrzyskowski:

==Abbott Laboratories (Plaintiff, Illinois corporation) v. Diamedix Corporation (Defendant, Florida corporation)==
This case was held in the United States District Court, N.D. Illinois, Eastern Division
This case involved the patenting of "sandwich"-type enzyme immunoassys (EIAs) that are used to detect the presence of antigens in a body fluid sample, such as a blood sample. Diamedix owned the patents and licensed them exclusively to Abbott. Abbott filed suit seeking that the patents were invalid and the licensing agreements are void. Abbott believed that the Japanese patent application number 46/16535 by S. Mukojima anticipates both of Diamedix patents under 35 USC 102(b). Abbott also believed that the Japanese patent also renders the Diamedix patents obvious under 35 USC 103. This was a unique case because it involved a ruling on summary judgment. Abbott wanted summary judgment, but it was denied by the court because Abbott has not fulfilled its burden to prove obviousness.
The publication in question is the Mukojima Japanese patent application. Diamedix admits that this patent application was open for public inspection more than one year before the Diamedix patent applications were filed, but it is still in question in the court whether or not a foreign patent application that is open to public inspection is considered a "printed publication." The Mukojima patent application is considered to be relevant information in regards to the prior art, but Diamedix contends that it does not specifically list the same claims that the Diamedix patents have. The district court held that such decisions regarding obviousness and anticipation will be determined at trial since summary judgment was denied. Abbott cannot pick and choose among individual elements from several different sources to recreate the invention in question unless they can show that these references also mention something about the particular combination.

Homework 5: Due Wednesday March 23

2011-03-23T16:42:12Z

Craigkrzyskowski: Created page with "==Abbott Laboratories (Plaintiff, Illinois corporation) v. Diamedix Corporation (Defendant, Florida corporation)== This case was held in the United States District Court, N.D. I..."

Homework Assignments

2011-03-23T04:07:55Z

Craigkrzyskowski:

;[[Homework 1: Due Monday January 24]]
;[[Homework 2: Due Friday January 28]]
;[[Homework 3: Due Friday February 4]]
;[[Homework 4: Due Wednesday February 9]]
;[[Homework 5: Due Wednesday March 23]]

ESB Briefs

2011-03-04T14:43:10Z

Craigkrzyskowski:

Here is a list of briefs for the Electric Storage Battery Co v. Shimadzu case. Add your name next to the list for the one with the fewest names and read that one.
* Reply Brief for Respondents. (Feb. 27, 1939)
#Michael Madden
#Hwong1
#croetzel
#kroshak
#Adam Mahood
#Michael Ackroyd
#Sam Karch
#Kyle Tennant
#Steve Bonomo
#Kurt Riester
#Charles Bernhard
* Reply Brief for Petitioner. (Feb. 7, 1939)
#Cmadiga1
#90144463
#901422128
#jpotter2
#ewolz
#E W Hitchler
#Davin Sakamoto
#Kevin Godshall
#901479977
#Adam Letcher
#Bobby Powers
#Kristen Kemnetz
* Brief for Respondents (Jan. 28, 1939)
#LMiller
#Josh Bradley
#Brobins
#Ebingle
#kyergler
#BCastel1
#Eric Leis
#Eddie Guilbeau
#Andrew McBride
#gallsup
#pfleury
* Brief for Petitioner. (Jan. 1939)
#Kschlax
#Andy Stulc
#Mzahm
#Rabot
#Peter Mitros
#Jacob Marmolejo
#Greg Torrisi
#Kevin Dacey
#Fernando Rodriguez
#Anthony Schlehuber
#Craig Krzyskowski

Bilski brief list

2011-02-11T02:00:33Z

Craigkrzyskowski:

Choose one of the briefs from this list. Delete it and replace it with your login name. Please be careful editing this page. If you mess up all the formatting it will create work for your colleagues.

#Reply Brief for Petitioners (Oct. 26, 2009)
#jpotter2
#Brief of Eleven Law Professors and AARP as Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Craigkrzyskowski
#Brief of Amicus Curiae William Mitchell College of Law Intellectual Property Institute in Support of Respondent (Oct. 2, 2009)
#ebingle
#Brief of Amici Curiae American Medical Association, the American College of Medical Genetics, the American Society of Human Genetics, the Association of Professors of Human and Medical Genetics, and Mayo Clinic in Support of Respondents (Oct. 2, 2009)
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Brief of Amici Curiae American Insurance Association, the Hartford Financial Services, Jackson National Life Insurance Company, Pacific Life Insurance Company, Sun Life Assurance Company Of Canada (U.S.), and Transamerica Life Insurance Company in Support of Respondent (Oct. 2, 2009)
#Brief For Amicus Curiae Computer & Communications Industry Association in Support of Respondent (Oct. 2, 2009)
#Brief of Software & Information Industry Association (SIIA) as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief of Amici Curiae Foundation for a Free Information Infrastructure, IP Justice, and Four Global Software Professionals and Business Leaders in Support of Respondent (Oct. 2, 2009)
#Brief for Free Software Foundation as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief for Bank of America Corporation, Barclays Capital Inc., The Clearing House Association L.L.C., The Financial Services Roundtable, Google Inc., MetLife, Inc., and Morgan Stanley as Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Brief Amici Curiae of Professors Peter S. Menell and Michael J. Meurer In Support of Respondent (Oct. 2, 2009)
#Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent (Oct. 2, 2009)
#Amicus Curiae Brief in Support of the Respondent, Submitted on Behalf of Adamas Pharmaceuticals, Inc. and Tethys Bioscience, Inc. (Oct. 2, 2009)
#Brief of American Bar Association as Amicus Curiae in Support of Respondent (Oct. 2, 2009)
#Brief of Amicus Curiae Knowledge Ecology International in Support of Respondent (Oct. 2, 2009)
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Amicus Curiae Brief of Center for Advanced Study and Research in Intellectual Property (CASRIP) of the University of Washington School of Law, and of CASRIP Research Affiliate Scholars, in Support of Affirmance of the Judgment in Favor of Respondent (Oct. 1, 2009)
#Brief Amicus Curiae of Red Hat, Inc. in Support of Affirmance (Oct. 1, 2009)
#Amici Curiae Brief of Internet Retailers in Support of Respondent (Oct. 1, 2009)
#Brief for the Respondent (Sep. 25, 2009)
#Brief of the Intellectual Property Section of the Nevada State Bar, as Amicus Curiae in Support of Respondent (Sep. 25, 2009)
#Brief of Professor Lee A. Hollaar and IEEE-USA as Amici Curiae in Support of Affirmance (Sep. 1, 2009)
#Brief of Amicus Curiae Austin Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Entrepreneurial Software Companies in Support of Petitioner (Aug. 6, 2009)
#Brief of Amicus Curiae Yahoo! Inc. in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Biotechnology Industry Organization, Advanced Medical Technology Association, Wisconsin Alumni Research Foundation & The Regents of the University of California in Support of Neither Party (Aug. 6, 2009)
#Brief Amicus Curiae of International Business Machines Corporation in Support of Neither Party (Aug. 6, 2009)
#Brief of Pharmaceutical Research and Manufacturers of America as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Medtronic, Inc. in Support of Neither Party (Aug. 6, 2009)
#Brief of F%21ed%21eration Internationale Des Conseils En Propri%21et%21e Industrielle as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Law Professor Kevin Emerson Collins in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Legal OnRamp in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae John Sutton in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae Novartis Corporation Supporting Petitioners (Aug. 6, 2009)
#Brief Amicus Curiae of The Federal Circuit Bar Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Regulatory Datacorp, Inc, American Express Company, Palm Inc., Rockwell Automation, Inc., and SAP America, Inc. as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Double Rock Corporation, Island Intellectual Property LLC, LIDs Capital LLC, Intrasweep LLC, Access Control Advantage, Inc., Ecomp Consultants, Pipeline Trading Systems LLC, Rearden Capital Corporation, Craig Mowry and PCT Capital LLC as Ami ci Curiae in Support of Petitioners (Aug. 6, 2009)
#Brief Amici Curiae of 20 Law and Business Professors in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae The Houston Intellectual Property Law Association in Support of Petitioners (Aug. 6, 2009)
#Brief of Franklin Pierce Law Center as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae Eagle Forum Education & Legal Defense In Support of Petitioners (Aug. 6, 2009)
#Brief of TELES AG as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae San Diego Intellectual Property Law Association in Support of Neither Party on the Merits (Aug. 6, 2009)
#Brief of Robert R. Sachs and Daniel R. Brownstone as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae the University of South Florida in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae AwakenIP, LLC in Support of Petitioners (Aug. 6, 2009)
#Brief of Amici Curiae Dolby Laboratories, Inc., DTS, Inc., and SRS Labs, Inc., in Support of Neither Party (Aug. 6, 2009)
#Brief of Dr. Ananda Chakrabarty as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#Brief of Georgia Biomedical Partnership, Inc. as Amicus Curiae in Support of Petitioners (Aug. 5, 2009)
#Brief for Prometheus Laboratories Inc. as Amicus Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Intellectual Property Owners Association in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Aug. 5, 2009)
#Brief for the Business Software Alliance as Amicus Curiae in Support of Affirmance (Aug. 5, 2009)
#Brief of Amicus Curiae Washington State Patent Law Association in Support of Petitioner (Aug. 5, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Aug. 5, 2009)
#Brief of Amici Curiae Association Internationale Pour la Protection de la Propriete Intellectuelle and International Association For The Protection Of Intellectual Property (U.S.) in Support of Reversal (Aug. 5, 2009)
#Brief of Amicus Curiae Caris Diagnostics, Inc. in Support of Petitioners (Aug. 5, 2009)
#Brief of the Intellectual Property Law Association of Chicago as Amicus Curiae Supporting Neither Party (Aug. 5, 2009)
#Brief of Monogram Biosciences, Inc. and Genomic Health, Inc. as Amici Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Raymond C. Meiers in Support of Neither Party (Aug. 5, 2009)
#Brief of On Time Systems, Inc. as Amicus Curiae in Support of Neither Party (Aug. 4, 2009)
#Brief of Amicus Curiae Conejo Valley Bar Association in Support of Neither Party (Aug. 3, 2009)
#Brief For Petitioners (Jul. 30, 2009)
#Brief of Amicus Curiae Telecommunication Systems, Inc. in Support of Neither Party and for Purely Prospective Application of Any Adoption of the New Legal Test Applied Below (Jul. 24, 2009)
#Brief for the State of Oregon as Amicus Curiae in Support of Neither Party (Jul. 24, 2009)
#Brief of Amicus Curiae Timothy F. McDonough, Ph.D. in Support of Petitioners (Jul. 22, 2009)
#Petitioners' Reply Brief (May 8, 2009)
#Brief for the Respondent in Opposition (May 1, 2009)
#Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Mar. 2, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief Amicus Curiae of Franklin Pierce Law Center in Support of Certiorari (Mar. 2, 2009)
#Brief of Amica Curiae Anne E. Barschall, Pro Se in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of the Petition for a Writ of Certiorari (Mar. 2, 2009)
#Brief of Amicus Curiae Medistem Inc. in Support of the Petition for a Writ of Certiorari (Feb. 27, 2009) )
#Brief of John P. Sutton Amicus Curiae Supporting Petitioners (Feb. 25, 2009)

Homework 4: Due Wednesday February 9

2011-02-09T02:48:52Z

Craigkrzyskowski: /* Hotchkiss v. Greenwood (1850) */

=Nonobviousness Edit (Krzyskowski)=
==Historical Development==
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

===Combinations Due to Hotchkiss v. Greenwood===
This case is one of the first to bring up a very interesting question in regards to non-obviousness and the combination of previously patented things: What are the grounds for a patentable combination?
Some answers include:
*1. '''The new whole must be greater than the sum of its old parts.''' This means that a collection of already patented parts cannot be combined and patented just because they are put together. They must combine to complete a certain job, function, or process that is of particular value to the advancement of the sciences and/or arts. This new combination must also be determined to not be something a person with ordinary skill in the art would easily invent. In other words, this collection of parts should not just be considered to be the next obvious step in the progression of a particular art, science, skill, or project.
*2. '''This combination could be a success with something that other people have already tried.''' This is a key part of the subject of non-obviousness. A realistic scenario involves different people attempting to invent something that would improve upon a specific process or invention that already exists. It is known that people are trying to make this improvement because they have documented their research and findings in some manner (i.e. word of mouth, published writings, news, etc.). For whatever reason though, no one has succeeded in making a product that makes the intended improvement. If someone who is already aware of what people have been trying to invent but was not the first to start working on the solution, is able to invent a new product that finally completes what people have been trying to do, their product is still patentable despite the obviousness of the idea needed to solve the problem. This new invention would be patentable under the non-obviousness clause because it would be clear that a person with average competence in the art was not able to manipulate a particular combination of parts to work in the attempted manner.
*3. '''Something totally new can be done.''' This is arguably the most obvious answer to what makes a non-obvious patentable combination. If a new combination of already patented items is able to complete a new task, function, or process it is patentable under section 103. A brand new task, function, or process that no one has ever thought of before is certainly non-obvious. It is important to remember that it must be new as well as something that a person with ordinary skill in the particular art would not automatically think to invent.

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and prohibits a patent in a case where
:the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4

===Graham v. John Deere (1966)===

In [[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
* scope and content of the prior art;
* differences between the prior art and the claims at issue;
* level of ordinary skill in the pertinent art; and,
* secondary considerations, including:
** commercial success of the invention;
** long-felt but unsolved needs;
** failure of others to find a solution, etc.

===U.S. v. Adams (1966)===

* 1966: [[US v. Adams, 383 U.S. 39 (1966)]] All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

===Anderson's Black Rock v. Pavement Salvage (1969)===
Things seem relatively clear at this point, but the Supreme Court seemingly basically messed it all up again in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.

==Suggestion to Combine==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375]].
*A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
*The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
*This case also considers the concept of ''enablement'' which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

==The Inventive Step==
The Inventive Step is the European equivalent to the United States’ non-obviousness term. Germany, the United Kingdom and the European Patent Office are the places where “inventive step” is mostly used. The most interesting part of the “inventive step” is that it is applied in different ways, albeit slightly different, depending upon the governing body studying the patent. The EPO and United Kingdom will be examined on this page.
===The European Patent Office===
By definition under the European Patent Convention Article 56, an invention considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.
The EPO is known for applying the Problem-Solution Approach when they are trying to determine whether an invention contains an inventive step. The steps of the approach are as follows:
*a. Identify the particular previous art that has the closest relationship with this invention.
*b. Given the most relevant previous art, identify the exact technical problem that the invention claims to have successfully solved.
*c. Given the current state of affairs in this most relevant previous art, determine whether or not the solution to this technical problem is obvious or not for a person of skill in this art.
The EPO’s main goal for this process is to take all necessary steps to make sure there is nothing in the most relevant previous art (including all information in the art, including how the art is taught) that could have provoked or encouraged a person of skill to create the invention. The issue is not whether a person of skill could have thought of this invention. This is because if an invention to solve a particular technical problem in an art is up for debate, it was most likely invented by someone with skill in the art.
=== The United Kingdom===
The United Kingdom uses a process different from that of the European Patent Office. The Court of Appeal initially used the process in a 1985 case. Since then, it was reworked in 2007 case. The United Kingdom’s test for an inventive step is as follows:
*a. Determine guidelines for knowledge that a skilled person in the particular art must meet to hold the title “skilled” as well as guidelines for other basic common knowledge.
*b. Identify the supposed “inventive step” of the invention.
*c. Identify differences between the previous state of the problem that the invention claimed to have solved and the claimed “inventive step” of the invention.
*d. Decide if there is enough of a difference between what previously existed and the new invention to be able to declare the invention non-obvious.

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==

[[Reiner v. I. Leon Co. (full text)]]

[[Reiner v. I. Leon Co.]]

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

Homework 4: Due Wednesday February 9

2011-02-09T02:46:52Z

Craigkrzyskowski: /* The Inventive Step */

=Nonobviousness Edit (Krzyskowski)=
==Historical Development==
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and prohibits a patent in a case where
:the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4

===Graham v. John Deere (1966)===

In [[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
* scope and content of the prior art;
* differences between the prior art and the claims at issue;
* level of ordinary skill in the pertinent art; and,
* secondary considerations, including:
** commercial success of the invention;
** long-felt but unsolved needs;
** failure of others to find a solution, etc.

===U.S. v. Adams (1966)===

* 1966: [[US v. Adams, 383 U.S. 39 (1966)]] All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

===Anderson's Black Rock v. Pavement Salvage (1969)===
Things seem relatively clear at this point, but the Supreme Court seemingly basically messed it all up again in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.

==Suggestion to Combine==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375]].
*A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
*The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
*This case also considers the concept of ''enablement'' which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

==The Inventive Step==
The Inventive Step is the European equivalent to the United States’ non-obviousness term. Germany, the United Kingdom and the European Patent Office are the places where “inventive step” is mostly used. The most interesting part of the “inventive step” is that it is applied in different ways, albeit slightly different, depending upon the governing body studying the patent. The EPO and United Kingdom will be examined on this page.
===The European Patent Office===
By definition under the European Patent Convention Article 56, an invention considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.
The EPO is known for applying the Problem-Solution Approach when they are trying to determine whether an invention contains an inventive step. The steps of the approach are as follows:
*a. Identify the particular previous art that has the closest relationship with this invention.
*b. Given the most relevant previous art, identify the exact technical problem that the invention claims to have successfully solved.
*c. Given the current state of affairs in this most relevant previous art, determine whether or not the solution to this technical problem is obvious or not for a person of skill in this art.
The EPO’s main goal for this process is to take all necessary steps to make sure there is nothing in the most relevant previous art (including all information in the art, including how the art is taught) that could have provoked or encouraged a person of skill to create the invention. The issue is not whether a person of skill could have thought of this invention. This is because if an invention to solve a particular technical problem in an art is up for debate, it was most likely invented by someone with skill in the art.
=== The United Kingdom===
The United Kingdom uses a process different from that of the European Patent Office. The Court of Appeal initially used the process in a 1985 case. Since then, it was reworked in 2007 case. The United Kingdom’s test for an inventive step is as follows:
*a. Determine guidelines for knowledge that a skilled person in the particular art must meet to hold the title “skilled” as well as guidelines for other basic common knowledge.
*b. Identify the supposed “inventive step” of the invention.
*c. Identify differences between the previous state of the problem that the invention claimed to have solved and the claimed “inventive step” of the invention.
*d. Decide if there is enough of a difference between what previously existed and the new invention to be able to declare the invention non-obvious.

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==

[[Reiner v. I. Leon Co. (full text)]]

[[Reiner v. I. Leon Co.]]

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

Homework 4: Due Wednesday February 9

2011-02-08T04:09:58Z

Craigkrzyskowski:

Homework 4: Due Wednesday February 9

2011-02-08T04:09:34Z

Craigkrzyskowski: Created page with "=Nonobviousness Edit (Krzyskowski) ==Historical Development== The following are some cases through history that trace the evolution of what is currently the nonobviousness standa..."

=Nonobviousness Edit (Krzyskowski)
==Historical Development==
The following are some cases through history that trace the evolution of what is currently the nonobviousness standard.

===Hotchkiss v. Greenwood (1850)===

Prior to [[Hotchkiss v. Greenwood]] an invention only had to be novel. This case basically established the notion that there had to me more to it, some sort of threshold for inventivness, which ultimately became the idea of ''nonobviousness''.

:...the novelty consisted in the substitution of the clay knob in the place of one made of metal or wood, as the case might be. And in order to appreciate still more clearly the extent of the novelty claimed, it is proper to add, that this knob of potter's clay is not new, and therefore constitutes no part of the discovery. If it was, a very different question would arise, as it might very well be urged, and successfully urged, that a knob of a new composition of matter, to which this old contrivance had been applied, and which resulted in a new and useful article, was the proper subject of a patent.

:The novelty would consist in the new composition made practically useful for the purposes of life, by the means and contrivances mentioned. It would be a new manufacture, and nonetheless so, within the meaning of the patent law, because the means employed to adapt the new composition to a useful purpose was old, or well known.

:But in the case before us, the knob is not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank is securely fastened therein. All these were well known, and in common use, and the only thing new is the substitution of a knob of a different material from that heretofore used in connection with this arrangement.

:Now it may very well be, that, by connecting the clay or porcelain knob with the metallic shank in this well known mode, an article is produced better and cheaper than in the case of the metallic or wood knob; but this does not result from any new mechanical device or contrivance, but from the fact, that the material of which the knob is composed happens to be better adapted to the purpose for which it is made. The improvement consists in the superiority of the material, and which is not new, over that previously employed in making the knob.

:But this of itself can never be the subject of a patent. No one will pretend that a machine, made, in whole or in part, of materials better adapted to the purpose for which it is used than the materials of which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, or, in the sense of the patent law, can entitle the manufacturer to a patent.

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.

===A&P Tea v. Supermarket Equipment (1950)===

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===35 USC 103 (1952)===
This section of the code was adopted in 1952 and prohibits a patent in a case where
:the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

===Lyon v. Bausch & Lomb (1955)===

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4

===Graham v. John Deere (1966)===

In [[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
* scope and content of the prior art;
* differences between the prior art and the claims at issue;
* level of ordinary skill in the pertinent art; and,
* secondary considerations, including:
** commercial success of the invention;
** long-felt but unsolved needs;
** failure of others to find a solution, etc.

===U.S. v. Adams (1966)===

* 1966: [[US v. Adams, 383 U.S. 39 (1966)]] All the evidence must be considered. Even small changes can have large consequences, which is relevant to a determination of nonobviousness.

===Anderson's Black Rock v. Pavement Salvage (1969)===
Things seem relatively clear at this point, but the Supreme Court seemingly basically messed it all up again in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.

==Suggestion to Combine==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements. The cases above all pre-dated the 1952 statute and the 1966 Supreme Court cases.

:"When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references."
:"[T]he suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner.

==Objective Tests==
Two important considerations were the focus of [[Hybritech v. Monoclonal Antiboties, 802 F.2d 1375]].
*A lot of the evidences hinges on laboratory notebooks. The CAFC held that even though the lab notebooks were not witnessed until months or about a year after did not preclude them of being of credible evidentiary value.
*The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
*This case also considers the concept of ''enablement'' which means that that patent specification must be complete enough so that someone with ordinary skill in the art would be able to make the invention. Enablement is set out in 35 USC 112.

==The Inventive Step==

==Relationship with Novelty==
==Nonobviousness vs. Invention==
==Secondary Considerations==
==Ordinary Skill in the Art==

[[Reiner v. I. Leon Co. (full text)]]

[[Reiner v. I. Leon Co.]]

[[South Corp. v. US (full text)]]

[[South Corp. v. US]]

Homework Assignments

2011-02-08T04:09:04Z

Craigkrzyskowski:

;[[Homework 1: Due Monday January 24]]
;[[Homework 2: Due Friday January 28]]
;[[Homework 3: Due Friday February 4]]
;[[Homework 4: Due Wednesday February 9]]

Homework 3: Due Friday February 4

2011-02-04T15:23:49Z

Craigkrzyskowski:

==Section 103 of the U.S. Code==
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

==2 Key Features==
As mentioned in the Graham v. John Deere case, there are 2 parts of patent '798 that are different from patent '811 that preceded it:
*1) "the stirrup and the bolted connection of the shank to the hinge plate"
*2) "the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. The shank is held in place by the spring rod which is hooked against the bottom of the hinge plate passing through a slot in the shank"

==Arguing a Conclusion for Non-Obviousness==
In arguing for a conclusion for non-obviousness, it is important to cite the fact that there was a glaring need to fix the problems that the shanks fishtailed and wobbled and that there was excessive wear on the upper plate because the hinge plate was below the shank. It can be argued that reversing the position of the shank was not an obvious invention for the plow because of the significant impact that this change had on the effectiveness of the plow. Graham first and foremost claimed that this change significantly reduced the amount of wear and tear on the plow. An added bonus that Graham did not originally claim was that the shank was now capable of flexing under stress, which reduced the fishtail and wobbling. This added bonus is the key to non-obviousness. Never before had a plow been made with shanks capable of flexing in order to deal with impact forces. The reversed position of the shank was not only a new idea that was not obvious, it also had consequences that would not have been particularly obvious to someone with ordinary skill in the art.

Patent '798 can also be argued to be a valid patent because of the stirrup and bolted connection of the shank. It may have been obvious that the shank needed to attached to hinge plate, but attaching it with the stirrup and the bolted connection so that wear was reduced was not obvious. Graham cites Pfiefer's bolted connection for its similarities to the connection on the plow. The similarities are insignificant when discussing why this particular connection helps to declare this invention as non-obvious. The idea that the wear on the upper plate would be significantly decreased by placing this particular connection on the plow. The connection itself does not make the invention patentable. The benefits of placing that specific connection in that specific area of the plow is what makes the invention patentable and non-obvious.

==Supporting a Conclusion of Invalidity==
With only the two features being named as differences by the examiner of the patent, it must now be stated why these two differences are not enough for patent '798 to be considered valid under section 103. It should first be noted that Graham's initial patent application for '798 was rejected because the 12 claims were all deemed to be to similar to those claims made in patent '811. Graham's second try at patent '798 was to put explicitly make the two claims that are now in question as stated in Graham v. John Deere. It does not make sense for a person's patent to be rejected one time, but then accepted on the next application because different claims were made despite the fact that the invention remained the same.
The reversed position of the shank is really the most glaring point of discussion in declaring patent '798 invalid due to lack of non-obviousness. In patent '811, the arrangement of Graham's shank permitted fishtailing or wobbling. While patent '811, was a valid patent, it was clearly not perfect because of this wobbling or fishtailing. Naturally, Graham attempted to solve this problem by reversing the position of the shank and patent this improved version of the plow. This improvement does not make the patent valid because it is an obvious improvement. Anyone with ordinary skill in this particular art would know that a potential solution to this problem would be to reverse the position of the shank. The examiners argue that the only other logical place for the shank to go, besides where it is in the faulty design of patent '811, would be in the reversed position. Therefore, patent '798 is invalid due to obviousness
The Pfiefer patent of 1933 also makes patent '798 invalid due to lack of non-obviousness. Graham's new bolted connection of the shank is first and foremost not really an invention due to lack of novelty. Pfiefer's bolt connection was original and deserving of that patent. Just because Graham used a connection, similar to Pfiefer's but not exactly the same, to connect his shank and hinge plate does not mean that he is deserving of a patent. An examiner would have to believe that anyone looking for a strong connection for a plow in this case, would think of a stirrup and bolt connection like the one cited in patent '798. It should be assumed that anyone with average skill in the art of making plows would think of a connection like the one Graham used, especially since he cited Pfiefer's connection from 1933. The technology existed to promote obvious new ideas.

Homework 3: Due Friday February 4

2011-02-04T15:15:49Z

Craigkrzyskowski:

==Section 103 of the U.S. Code==
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

==2 Key Features==
As mentioned in the Graham v. John Deere case, there are 2 parts of patent '798 that are different from patent '811 that preceded it:
*1) "the stirrup and the bolted connection of the shank to the hinge plate do not appear"
*2) "the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. The shank is held in place by the spring rod which is hooked against the bottom of the hinge plate passing through a slot in the shank"

==Arguing a Conclusion for Non-Obviousness==
In arguing for a conclusion for non-obviousness, it is important to cite the fact that there was a glaring need to fix the problems that the shanks fishtailed and wobbled and that there was excessive wear on the upper plate because the hinge plate was below the shank. It can be argued that reversing the position of the shank was not an obvious invention for the plow because of the significant impact that this change had on the effectiveness of the plow. Graham first and foremost claimed that this change significantly reduced the amount of wear and tear on the plow. An added bonus that Graham did not originally claim was that the shank was now capable of flexing under stress, which reduced the fishtail and wobbling. This added bonus is the key to non-obviousness. Never before had a plow been made with shanks capable of flexing in order to deal with impact forces. The reversed position of the shank was not only a new idea that was not obvious, it also had consequences that would not have been particularly obvious to someone with ordinary skill in the art.

==Supporting a Conclusion of Invalidity==
With only the two features being named as differences by the examiner of the patent, it must now be stated why these two differences are not enough for patent '798 to be considered valid under section 103. It should first be noted that Graham's initial patent application for '798 was rejected because the 12 claims were all deemed to be to similar to those claims made in patent '811. Graham's second try at patent '798 was to put explicitly make the two claims that are now in question as stated in Graham v. John Deere. It does not make sense for a person's patent to be rejected one time, but then accepted on the next application because different claims were made despite the fact that the invention remained the same.
The reversed position of the shank is really the most glaring point of discussion in declaring patent '798 invalid due to lack of non-obviousness. In patent '811, the arrangement of Graham's shank permitted fishtailing or wobbling. While patent '811, was a valid patent, it was clearly not perfect because of this wobbling or fishtailing. Naturally, Graham attempted to solve this problem by reversing the position of the shank and patent this improved version of the plow. This improvement does not make the patent valid because it is an obvious improvement. Anyone with ordinary skill in this particular art would know that a potential solution to this problem would be to reverse the position of the shank. The examiners argue that the only other logical place for the shank to go, besides where it is in the faulty design of patent '811, would be in the reversed position. Therefore, patent '798 is invalid due to obviousness
The Pfiefer patent of 1933 also makes patent '798 invalid due to lack of non-obviousness. Graham's new bolted connection of the shank is first and foremost not really an invention due to lack of novelty. Pfiefer's bolt connection was original and deserving of that patent. Just because Graham used a connection, similar to Pfiefer's but not exactly the same, to connect his shank and hinge plate does not mean that he is deserving of a patent. An examiner would have to believe that anyone looking for a strong connection for a plow in this case, would think of a stirrup and bolt connection like the one cited in patent '798. It should be assumed that anyone with average skill in the art of making plows would think of a connection like the one Graham used, especially since he cited Pfiefer's connection from 1933. The technology existed to promote obvious new ideas.

Homework 3: Due Friday February 4

2011-02-04T14:55:55Z

Craigkrzyskowski:

Homework 3: Due Friday February 4

2011-02-04T14:54:35Z

Craigkrzyskowski:

Homework 3: Due Friday February 4

2011-02-04T14:54:03Z

Craigkrzyskowski:

Homework 3: Due Friday February 4

2011-02-04T14:53:38Z

Craigkrzyskowski:

Homework 3: Due Friday February 4

2011-02-04T14:04:19Z

Craigkrzyskowski: Created page with "==Arguing a Conclusion for Non-Obviousness== ==Supporting a Conclusion of Invalidity== As mentioned in the Graham v. John Deere case, there are 2 parts of patent '798 that are d..."

==Arguing a Conclusion for Non-Obviousness==

==Supporting a Conclusion of Invalidity==
As mentioned in the Graham v. John Deere case, there are 2 parts of patent '798 that are different from patent '811 that preceded it:
*1) "the stirrup and the bolted connection of the shank to the hinge plate do not appear"
*2) "the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. The shank is held in place by the spring rod which is hooked against the bottom of the hinge plate passing through a slot in the shank"

Homework Assignments

2011-02-04T13:38:28Z

Craigkrzyskowski:

;[[Homework 1: Due Monday January 24]]
;[[Homework 2: Due Friday January 28]]
;[[Homework 3: Due Friday February 4]]

Homework 2: Due Friday January 28

2011-01-31T16:18:49Z

Craigkrzyskowski: /* Lyon v. Bausch & Lomb Analysis */

==Overview of Original Patent and Cited Patents==
*The invention I selected (from 1985) is a set of golf clubs that is more unified compared to other previous sets of golf clubs. According to the patent, the lofts, length of the clubs, and face progression (the change in shape of the club) are correlated and coordinated to be more user friendly. The main features of these clubs are that the center of gravity for each club is lower to the ground and more centered on the club face and the club heads for all clubs, including irons, are wider. The wider club heads make all the clubs look similar to woods. Woods are traditionally the easier clubs to hit for the average amateur player. The goal for this invention is to make the game easier and more enjoyable for the average player with a more unified set of clubs. [http://www.google.com/patents?id=N1szAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]

*The first cited patent, from 1924, also describes a set of clubs that was invented to make the game of golf easier for the average player. The intent with this invention was to create a more uniform set of clubs for the average player to use. Before this invention, the inventor states that a set of clubs could be comprised a very different mix of clubs. It would take an extensive amount of time to properly train to master the use of all of the different clubs. Therefore, it is nearly impossible for the average amateur player to play very well because there is not enough time in the day to devote to properly training with each club. This invention was a unified set of clubs that focused on the physical properties of the set. The term the inventor used was the length-weight balance. LW=C, where L=length of the club, W=weight of club, and C=constant. Longer clubs will weigh less, while shorter clubs will weigh more. The idea is that this equation will provide some kind of uniformity to the set of clubs. There is also a relationship defined for a proportional balance point throughout the entire set of clubs. [http://www.google.com/patents?id=ENo_AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]

*The second cited patent, issued in 1975, describes another set of golf clubs invented to make the game easier for players. This time, the set of golf clubs became more uniform based on the characteristic of flexural rigidity. It was previously believed that it was necessary to have the longer clubs, like woods and low number irons to have more rigidity in the shaft than the shorter, higher-numbered irons. The inventor claims that he received better results actually making the longer clubs less rigid than the shorter clubs. He also said that the rigidity could be the same for all clubs. To account for uniform rigidity in spite of clubs that differ in weight and length, the inventor altered the thickness of the hollow shafts as well as layering the shafts throughout the club (i.e. the shafts were not of a uniform width throughout an entire club. It was common for the top of the shaft to be thicker than the bottom of the shaft by the clubhead. [http://www.google.com/patents?id=ahg6AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]

==Analysis of Hotchkiss and A&P==
In the Hotchkiss vs. Greenwood case, the new invention in question is a door knob that was merely made in a different material. While the new door knob could be created more cheaply than the previous door knobs on the market, it lacked non-obviousness. As cited in the case, "The knob was not new, nor the metallic shank and spindle, nor the dovetail form of the cavity in the knob, nor the means by which the metallic shank was securely fastened therein. Knobs had also been used made of clay" (Hotchkiss v. Greenwood). While there was a dissenting opinion arguing for a patent, the end result is that this "invention" was not patentable because it lacked non-obviousness. Someone with average working knowledge in the industry would be able to come up with this idea because nothing new was actually invented.

Comparing the patent from 1985 above with the other two cited patents from 1975 and 1924, the patent from 1985 is still valid under the ruling in Hotchkiss and Greenwood. While all three patents contain similar ideas, i.e. make the game simpler for amateur players by making a set of more uniformed golf clubs, they achieve their goals with very different ideas. The patent from 1975 tries to make the set of clubs more uniform by revolutionizing how club shafts were weighted and flexed. The patent from 1924, simply tried to make a set of clubs more uniform by using a mathematical relationship to weight the clubs proportionally to their length. In each case, golfers would benefit from feeling like each club in a set was extremely different from the next club. The 1985 patent created a uniform set of clubs by trying to make all of the clubheads look and feel similar. The other two patents did not involve creating the club head. For many years, it was accepted that woods and irons needed to look different to serve their different functions on the golf course, so it was not necessarily obvious that irons could be made to look more like woods so that they would be easier to hit. The exact shape of the new irons was unique so as not to look exactly like a wood.

In the A&P Tea Co. vs. Supermarket Corp, the invention in question is simply an addition to the original check-out counters used in supermarkets. The Supreme Court ruled that it did not meet the requirements for non-obviousness because it did not advance science. All this "invention" did was benefit the business by improving the check-out process by adding counter space to an original invention.

While the 1985 patent is not the creation of the golf club, it is the creation of a unique idea. The patent is for the club heads which are added on to a shaft. This patent is still valid under the ruling in the A&P case because this is an advancement in the science of golf clubs. Referencing the other two patents, no one before had attempted to make a golf iron with such a low center of gravity like a wood. This invention was not merely an addition to existing technology. It was a brand new concept to the world of golf.

==Lyon v. Bausch & Lomb Analysis==
35 USC 103 states: "A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made."

The ruling in the Lyon case stated that even though there were many attempts by people to create an effective non-reflective coating, the patent for this particular coating was valid because of the need in this field of study for this coating. The methods were very simple, but experts in the field had tried and failed to create an effective coating. Because there was a specific need for the coating and because those even having extraordinary skill in the field were unable to invent the coating, the final ruling was that this was a non-obvious invention.

Under 35 USC 103, I believe that the patent for a more uniform set of golf clubs by creating irons to have properties similar to woods is still valid. None of the references cited ever mentioned anything about altering the clubheads of golf clubs in order to make the set of clubs more uniform and thus easier to use for the golfer of average skill. While there was not necessarily a need for this type of technology, due to the fact that many people were able to play the game just fine with the industry "standard" technology, it was nonetheless revolutionary technology. I believe that the fact that there wasn't a pressing need for this kind of technology also makes it a non-obvious invention. Strictly examining the referenced patents, it does not appear that there was a race to alter the clubheads of irons to make them more user-friendly. It appears that it took someone with more than average skill in the art of clubmaking to create a golf club like this based on how old the game of golf is and when this invention was patented.

Homework 2: Due Friday January 28

2011-01-31T15:51:35Z

Craigkrzyskowski:

Homework 2: Due Friday January 28

2011-01-31T15:07:07Z

Craigkrzyskowski: /* Overview of Original Patent and Cited Patents */

==Overview of Original Patent and Cited Patents==
*The invention I selected is a set of golf clubs that is more unified compared to other previous sets of golf clubs. According to the patent, the lofts, length of the clubs, and face progression (the change in shape of the club) are correlated and coordinated to be more user friendly. The main features of these clubs are that the center of gravity for each club is lower to the ground and more centered on the club face and the club heads for all clubs, including irons, are wider. The wider club heads make all the clubs look similar to woods. Woods are traditionally the easier clubs to hit for the average amateur player. The goal for this invention is to make the game easier and more enjoyable for the average player with a more unified set of clubs. [http://www.google.com/patents?id=N1szAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]

*The first cited patent, from 1922, also describes a set of clubs that was invented to make the game of golf easier for the average player. The intent with this invention was to create a more uniform set of clubs for the average player to use. Before this invention, the inventor states that a set of clubs could be comprised a very different mix of clubs. It would take an extensive amount of time to properly train to master the use of all of the different clubs. Therefore, it is nearly impossible for the average amateur player to play very well because there is not enough time in the day to devote to properly training with each club. This invention was a unified set of clubs that focused on the physical properties of the set. The term the inventor used was the length-weight balance. LW=C, where L=length of the club, W=weight of club, and C=constant. Longer clubs will weigh less, while shorter clubs will weigh more. The idea is that this equation will provide some kind of uniformity to the set of clubs. There is also a relationship defined for a proportional balance point throughout the entire set of clubs. [http://www.google.com/patents?id=ENo_AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]

*The second cited patent, issued in 1975, describes another set of golf clubs invented to make the game easier for players. This time, the set of golf clubs became more uniform based on the characteristic of flexural rigidity. It was previously believed that it was necessary to have the longer clubs, like woods and low number irons to have more rigidity in the shaft than the shorter, higher-numbered irons. The inventor claims that he received better results actually making the longer clubs less rigid than the shorter clubs. He also said that the rigidity could be the same for all clubs. To account for uniform rigidity in spite of clubs that differ in weight and length, the inventor altered the thickness of the hollow shafts as well as layering the shafts throughout the club (i.e. the shafts were not of a uniform width throughout an entire club. It was common for the top of the shaft to be thicker than the bottom of the shaft by the clubhead. [http://www.google.com/patents?id=ahg6AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]

Homework 2: Due Friday January 28

2011-01-31T14:26:11Z

Craigkrzyskowski: /* Overview of Original Patent and Cited Patents */

Homework 2: Due Friday January 28

2011-01-31T14:17:33Z

Craigkrzyskowski:

Homework 2: Due Friday January 28

2011-01-31T14:10:10Z

Craigkrzyskowski: /* My Patent Overview */

Homework 2: Due Friday January 28

2011-01-31T13:57:54Z

Craigkrzyskowski: Created page with "==My Patent Overview=="

==My Patent Overview==

Homework Assignments

2011-01-31T13:56:58Z

Craigkrzyskowski:

;[[Homework 1: Due Monday January 24]]
;[[Homework 2: Due Friday January 28]]

Homework Assignments

2011-01-31T13:55:22Z

Craigkrzyskowski:

[[Homework 1: Due Monday January 24]]
[[Homework 2: Due Friday January 28]]

User:Craigkrzyskowski

2011-01-24T07:10:09Z

Craigkrzyskowski: Replaced content with "Homework Assignments"

[[Homework Assignments]]

Homework 1: Due Monday January 24

2011-01-24T07:09:37Z

Craigkrzyskowski: Created page with "* Patent 4762322: Set of Golf Clubs ** Date issued: August 9, 1988 * The idea behind this invention was to create a set of golf clubs that would be easier for players to play wit..."

* Patent 4762322: Set of Golf Clubs
** Date issued: August 9, 1988
* The idea behind this invention was to create a set of golf clubs that would be easier for players to play with. A set of golf clubs is comprised of two types of clubs: woods and irons. Woods typically have a much wider club head from front to back and also have a lower center of gravity. Irons are much narrower and have a higher center of gravity. Because of the differences between these clubs, players often need to change their swings in order to effectively use the clubs. This makes striking good shots much more difficult for the average player. This new set of clubs is supposed to limit the differences in swings by creating a more uniform lower center of gravity in all clubs as well as a wider club head from front to back from the driver all the way down to the wedges. I chose this because I am an avid golfer in my free time and definitely understand the different swings necessary to hit all clubs. I found this patent on Google Patents [[http://www.google.com/patents/about?id=N1szAAAAEBAJ&dq=golf+club]]

Homework Assignments

2011-01-24T07:08:59Z

Craigkrzyskowski: Created page with "Homework 1: Due Monday January 24"

[[Homework 1: Due Monday January 24]]

User:Craigkrzyskowski

2011-01-24T07:08:04Z

Craigkrzyskowski:

[[Homework Assignments]]
* Patent 4762322: Set of Golf Clubs
** Date issued: August 9, 1988
* The idea behind this invention was to create a set of golf clubs that would be easier for players to play with. A set of golf clubs is comprised of two types of clubs: woods and irons. Woods typically have a much wider club head from front to back and also have a lower center of gravity. Irons are much narrower and have a higher center of gravity. Because of the differences between these clubs, players often need to change their swings in order to effectively use the clubs. This makes striking good shots much more difficult for the average player. This new set of clubs is supposed to limit the differences in swings by creating a more uniform lower center of gravity in all clubs as well as a wider club head from front to back from the driver all the way down to the wedges. I chose this because I am an avid golfer in my free time and definitely understand the different swings necessary to hit all clubs. I found this patent on Google Patents [[http://www.google.com/patents/about?id=N1szAAAAEBAJ&dq=golf+club]]

User:Craigkrzyskowski

2011-01-24T07:06:52Z

Craigkrzyskowski:

[[Homeworks]]
* Patent 4762322: Set of Golf Clubs
** Date issued: August 9, 1988
* The idea behind this invention was to create a set of golf clubs that would be easier for players to play with. A set of golf clubs is comprised of two types of clubs: woods and irons. Woods typically have a much wider club head from front to back and also have a lower center of gravity. Irons are much narrower and have a higher center of gravity. Because of the differences between these clubs, players often need to change their swings in order to effectively use the clubs. This makes striking good shots much more difficult for the average player. This new set of clubs is supposed to limit the differences in swings by creating a more uniform lower center of gravity in all clubs as well as a wider club head from front to back from the driver all the way down to the wedges. I chose this because I am an avid golfer in my free time and definitely understand the different swings necessary to hit all clubs. I found this patent on Google Patents [[http://www.google.com/patents/about?id=N1szAAAAEBAJ&dq=golf+club]]

User:Craigkrzyskowski

2011-01-24T02:26:19Z