Bill Goodwine's Wiki - User contributions [en]

Quanta Brief Summary 901360293

2011-04-29T09:11:45Z

Dsakamot:

== Brief of Amici Curiae Interdigital Communications LLC and Tessera, Inc. in Support of Respondent ==
This brief is presented by InnerDigital Communications, LLC, a company that develops technology for the wireless communications industry and Tessera, Inc. a provider of miniaturization technologies of the industry. The thrust of their argument is that the viability of high technology industries similar to those depends on the ability to use flexible licensing strategies for components, systems, and methods at different levels of the manufacturing, distribution, and retail level to use patented inventions to their fullest potential. They set about arguing this point in two ways.
== I.Separate Licensing of Components, Systems and Methods at Multiple Levels Is Consistent With the Patent Act and This Court’s Precedents and is Essential to the Economic Health of the High Technology Industry ==
*LG Electronics have been able to successfully show that separate licensing of component and system patents at the multiple levels of manufacturing, distribution, and retail is consistent with Patent Act, 35 U.S.C.
*Quanta falsely argues that its position makes rational sense economically stating that a patentee would not make more by negotiating separately with the manufacturer, distributor, retailer, and consumer than by charging the entire amount to one party and having them pass along the cost
*Quanta ignores the value that is added by each innovation at each level to capture the full economic value of the contribution of the various patents
*Licensors and licensees should also have the freedom to do business best suited to their interests based on the scenarios that may be present
*Companies like InterDigital, and Tessera are businesses which use a multi-level manufacturing and distribution chain and rely significantly on revenues as a result of their licensing of their technologies to manufacturers and assembly houses
*To fully protect the innovations they come up with, it is necessary to differentiate between component, systems, and method patents
*Quanta is too simplistic in its analysis of profitability, missing the point that a set of patents covering a component doesn’t have the same value as a set of different patents that cover a system-level invention
*Real world conditions dictate that companies like InterDigital and Tessera need flexibility because the clients they deal with all have different ways and priorities in conducting their business
*Patent exhaustion cases relied on by Quanta involve sales of patented items coupled with attempted restrictions on the sale of items that don’t fit the mold of what they’re doing
*The court should not usurp the freedom and flexibility that has been established and not extend old precedents to modern business practices that sustain the economy
== II.Modern Licensing in the High Tech Industry Often Uses Technology Transfer Agreements That Differ Substantially From Patent Licenses and Should Not be Seen as Raising Any Patent Exhaustion Issues, Regardless of the Decision in This Case ==
*Licensing agreements are not always like the ones seen in this case
*Intellectual property for companies like InterDigital consists only partly in patents as it can also include things like trade secrets or copyright
*To enable manufacturers of different components to build their devices, they have to expose and transfer a wide scope of their intellectual property
*This dispersal of intellectual property involving the transfer of technology involves a technology transfer fee and not a patent license fee
*Technology transfer agreements have not been debated before the Court and because they are explicitly defined as not being patent licenses, they don’t fall under the jurisdiction of the Court’s precedents on patents
*Because of this, Court should not make a decision that will implicate these technology transfer agreements

Quanta Brief Summary 901360293

2011-04-29T08:22:42Z

Dsakamot: Created page with "== Brief of Amici Curiae Interdigital Communications LLC and Tessera, Inc. in Support of Respondent == This brief is presented by InnerDigital Communications, LLC, a company that..."

Here in list of arguments in Quanta

2011-04-29T07:38:13Z

Dsakamot:

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]]

[[Quanta Brief Summary 901360293]]

Dsakamot 4/6/11 homework

2011-04-05T06:59:57Z

Dsakamot: Hamilton Sundstrand Corporation Brief

I write this brief to the Supreme Court with the intent to dissuade you from granting the plaintiff’s request to reverse the District Court and the Court of Appeals decision to bar Honeywell from invoking the doctrine of equivalents in proving that their patent was infringed. In doing so, this brief will use the facts of this case, engineering insight, and precedence of other cases that deal with the doctrine of equivalents.

Without a doubt, Honeywell will try to invoke the doctrine of the equivalents which states that 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. Honeywell charges that our APS 3200 somehow infringes upon the claims of their ‘893 and ‘194 patents, stating that each element of their claims can be found in our invention.

While we agree that the Court has established that the doctrine of equivalents, we dispute plaintiff’s use of the doctrine of equivalents based on prosecution history estoppel. The doctrine of prosecution history estoppel prevents a patent owner from recapturing with the doctrine of equivalents subject matter that was surrendered to acquire the patent. In the original application of the ‘893 patent, the United States Patent and Trademark Office rejected the original claims in light of the prior art and only allowed them after the dependent claims of the application were rewritten into the independent claims and its original independent claims were cancelled. This reclassification of claims shows a clear reduction of scope and thus the prosecution history estoppel applies. This goes in accordance with the spirit of patents in that once an owner stakes the claim of their limited monopoly; they shouldn’t be able to extend it over everything that they think should cover.

Of course, Honeywell seek to overturn this prosecution history estoppel by proving that the equivalent was unforeseeable at the time of the narrowing amendment or that the rational that was underlying the narrow amendment bore no more than a tangential relationship. We assert that the plaintiffs will prove neither sufficiently enough to over the issue of estoppel.
The forseeability criterion established by this Supreme Court states that something is unforeseeable if a person of ordinary skill in the art would not been able to foresee it. This is fair for both parties as it ensures claims continue to define the patent scope in all foreseeable circumstances while protecting patent owner from trivial changes in unforeseeable circumstances. To determine whether an alleged equivalent is unforeseeable, expert testimony and other factual evidence was considered in trial court. Honeywell claims that the narrow equivalent is the technology to control airflow surge in auxiliary power units (APUs), using inlet guide vanes (IGV) to control airflow and solve so-called “double solution” problem.

There are a couple of reasons why this technology was foreseeable. One was that it was known that the control of surge was important and that systems had been developed for that purpose. It was known that inlet guide vanes were routinely used in these surge control systems and that they affected the air flow rate.

We cite US Patent No. 4,164,035 (“the Glennon patent”) issued in 1979 which claims a surge control system and teaches that IGV position affects flow rate. Also, Honeywell’s expert’s Mr. Muller testified that going back in the 1970’s Honeywell understood that to efficiently control surge, IGV angle needed to be taken into account and be inputted into a surge control system.

The second reason is that there was no technological barrier to use IGV position to determine air flow. This assertion is corroborated both by Honeywell’s corporate representative James Clark and our own expert D. Japiksi. Based on the definition of forseeability, it is clear that one of ordinary skill in the art would have been able to reasonably foresee it.

It should be noted that plaintiffs might try to dissuade the Court from taken into account this forseeability by claiming judicial estoppel in which a it prevents a party from taking a later position that is inconsistent with a former position in the same dispute, on which the party has been successful and has been successful and prevailed based on the former position. While we do agree that we have taken a previous position of calling our use of IGV to control airflow and solving a double solution of the problem unique, we feel that it had no bearing in the jury’s decision of awarding damages and should not be considered.

Moving on to tangentiality, a patentee must demonstrate that narrowing the amendment bore no more than a tangential relation to the equivalent in question (i.e. not directly related). Interestingly enough, Honeywell did not dispute on the record the reason for narrowing their claims in the first place meaning that the presumption of prosecution history estoppels is not rebutted.

In addition, the alleged equivalent bore a direct relation to their amendment. When the original application was rejected, the original dependent claims that were rewritten to be independent claims included IGV limitation which Honeywell based as their alleged equivalent. By doing so, Honeywell effectively added IGV limitation to their invention causing a direct relation to the equivalent. This shows that Honeywell should not be able to use tangentiality to disprove prosecution history estoppel.

Based on the events of the case below this Court and this brief, we humbly ask that you affirm the judgments of the lower courts.

User:Dsakamot

2011-04-05T06:56:04Z

Dsakamot:

Doctrine of Equivalents Case List

2011-04-04T14:52:24Z

Dsakamot:

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

Patrick Lane (901431645)
* Union Paper-Bag Machine Company v. Murphy 97 U.S. 120 (1877)
In this case, the patents in question were machines used to make paper bags. The machines are loaded with large rolls of paper and then stamp out the bag pattern, or "blanks," which are then folded and pasted to make a paper bag. Union Paper was granted a patent in 1859 for this type of machine which used a long, straight knife which would move up and down to punch the pattern out of the paper. In 1874, Murphy was granted a patent for a similar device that used a serrated knife which cut the paper from below as the rolls moved over it. Union is suing Murphy for infringement, claiming the devices which cut the paper in each machine are substantially equivalent, and therefore are under protection by Union's 1859 patent. Murphy argued that the serrated knife is an improvement over the straight knife, and that the method of cutting was different enough to constitute patent protection. However, the expert witness explained that the paper is essentially being cut in the same way in each device: a fast moving, sharp edge is slicing through the paper. Even though one knife was serrated, the cutting occurs in the same mechanical fashion, and therefore is equivalent. The court found in favor of Union, stating that the two methods of cutting the blanks were substantially equal because they performed the same function in the same way.
* I had also read this case. The above is a good summary, though perhaps also worth noting is the fact that the court made specific mention of the fact that changing the name of the invention had no bearing on its nonequivalence (though this seems pretty obvious). - Kurt Riester 901425018
* I read this case as well. The decision can be best summed: "Nor can it make any difference that the cutter is made to cut the paper by its own gravity, while the knife is made to cut by the fall of a device which performs no other function than to fall upon the paper at the proper moment, and cause the stationary knife to cut for the same purpose." Because the cutter and the knife accomplish the same purpose in substantially similar ways, they are equivalent. - 901239065
* I also chose to read this case. The summary stated above accurately states what this case is about. My addition to what has already been previously said would be that this case establishes the doctrine of equivalents in saying 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." - 901360293

hwong1
* Absolute Software Inc. v. Stealth Signal Inc.
The patents in question deal with security apparatus’ that are used to retrieve lost or stolen electronic devices. Absolute accused Stealth of infringing on their patent, and in effect Stealth filed a counterclaim stating that Absolute infringed on another prior art. Both companies filed for summary judgment stating that neither infringed on any patent. The doctrine of equivalence was used to determine if either company infringed on other patents. Absolute proves that It does not infringe on the prior art because the transmission message to the central site is not done at a semi-random rate. Absolute did not literally infringe, but the doctrine of equivalence was needed to verify. The courts found that since Absolute’s product makes the call to the central site every 24.5 hours, it is not ‘random’ by any means but rather ‘uniformly randomly distributed’. Thus, Absolute does not infringe on its prior art. Stealth was analyzed on in infringing on Absolute by the use of an XTool agent. Doctrine of Equivalence is again applied, finding that Stealth’s invention differed in providing a step at the end of the communication that Absolute does not have. Absolute has written in their claims on their Xtool agent “without signaling the visual or audible user interface.” Therefore, when Stealth created an audible user interface, it made its invention nonequivalent to Absolutes. Thus, Stealth is found to be non-infringing with their patent.

* Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)
This case was discussed in class and presented by another student, but I read it as well. This case concerned a patent for a gyroscope owned by Adkins, the inventor of an improved gyroscope, and Lear, the company that sells gyroscopes. Lear and Adkins had a written agreement that allowed Lear to sell Adkin’s patented invention, where Adkins received a small percentage of the net sales price as royalties. In 1957, Lear refused to pay royalties to Adkins with the claim that they were selling gyroscopes that differed from Adkin’s invention. However, the “new” gyroscopes differed only in “size, form, and shape,” but “contain[ed] the same elements.” The essential elements were the same between Adkin’s patent and Lear’s other steel gyroscopes, but the scale and exact assembly was different. Since those did not constitute a substantial difference, the jury of the Supreme Court of California held Adkins in favor and required Lear to pay royalties to Adkins for the sales price of the other gyroscopes sold. This case is an example of clear infringement.

901431048

* Adkins v. Lear, Inc. (1968)(67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)
I am the other student^^^(see case above). Other items of note in the case, aside from the summary above, include that the court ruled that infringing the doctrine of equivalence is a matter of fact and that the jury should be the one to establish it. This brings up an interesting qualification, as it seems almost every other case considered with respect to the doctrine of equivalence was decided by judges, not juries.

Brobins

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

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

901444263

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

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

901471466

*Unitronics Ltd. v. Gharb, 318 Fed.Appx. 902 C.A.Fed. (Dist.Col.) (1989)

This case involved a patent for programmable logic controllers with Global System for Mobile communications. The main issue was infringement based on the capabilities of the programmable logic controllers (PLCs). The court held that alleged infringers PLCs did not contain a “digital recording device having at least one emergency message” or an equivalent. The alleged infringers PLCs also did not have the “data set for transmission to the mobile telephone including alarm information.” The court also ruled that they did not have anything equivalent to either of these claims. Based on the ruling in Warner-Jenkinson the device is not infringing unless it “contains each limitation of the claim, either literally or by an equivalent.” The alleged infringing PLCs did not have a similarity to all of the limitations to the claim and were thus allowed to continue selling their device. [[http://campus.westlaw.com.proxy.library.nd.edu/result/default.wl?mt=CampusLaw&db=ALLFEDS%2cALLSTATES%2cSCT&rlt=CLID_QRYRLT3654057332134&origin=Search&sp=003654480-2000&method=WIN&cfid=1&rp=%2fWelcome%2fCampusLaw%2fdefault.wl&eq=Welcome%2fCampusLaw&rltdb=CLID_DB3890056332134&srch=TRUE&query=unitronics+gharb&vr=2.0&fmqv=s&action=Search&fn=_top&service=Search&sv=Split&rs=WLW11.01]]

901479977

*Wilson Sporting Goods Co. v. David Geoffrey & Associates (1990)

Wilson is suing DGA/Dunlop for infringement under the doctrine of equivalents of its patented design for a golf ball. Wilson's patent is for a golf ball modeled as an icosahedron with dimples placed in such a way as to have 6 "great circles" of symmetry instead of the typical 1. The patent specifies where dimples should be placed on the ball and requires that no dimples be placed on the great circles. The accused DGA balls use the same "great circles" design, but with dimples placed on the great circles. DGA's defense is that there is "no principled difference" between its design and a design of the prior art (prior to Wilson's patent). Therefore, allowing Wilson to utilize the doctrine of equivalents would extend protection of claims already in the prior art to Wilson's patent. The CAFC decided that Wilson can only utilize the doctrine of equivalents if it can make a hypothetical claim that literally covers Dunlop's design (in this case, claim a ball with dimples placed on the great circles) and is also nonobvious considering the prior art. Wilson is unable to make such a nonobvious hypothetical claim and therefore no infringement was found.

901338276

* Wilson Sporting Goods Co. v. David Geoffrey & Associates (1990) 904 F.2d 677

I see that someone else and I did the same case, but I'll summarize in my own words here. This case involved the design of a golf ball, and the placement of the dimples on a golf ball. There are aerodynamic benefits as to where the dimples are placed and how the dimples themselves are shaped. The Wilson golf ball had a design where the face of the golf ball is divided using 6 great circles, creating an equal number of equally sized triangles. Then the midpoints of each leg of the resulting triangles are joined, creating 4 triangles inside each larger triangle. See the patent document as it is better shown than explained. This way of dividing the golf ball is not the novel idea, but rather the placement of the dimples relating to the previously mentioned division is. The Wilson ball left all 6 great circles untouched by dimples. They deemed this an aerodynamic advantage. At the time of the application filing, the prior art had already taught of the great circles, just not leaving them completely intact. The accused infringing ball from Dunlop had the same 6 great circles, but they did not make an effort to leave them uncovered, and rather had a significant number of dimples covering them. The court held that the Dunlop ball could not be considered equivalent to the Wilson ball because the prior art limited Wilson's claims in the first place, and those claims could not now be expanded to enclose the Dunlop ball. The court laid out a framework for deciding doctrine of equivalents cases: First, take the claim that is proposed to enclose the accused infringer, and reword it to literally enclose the infringer. Next, see if that claim would pass in light of the prior art. If yes, then the doctrine of equivalents can be used, if no, then it cannot. In this case, the hypothetical claim would not have passed in light of the prior art, so the doctrine of equivalents could not be used.

901417119 - Bcastel1

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

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

901330223

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

901316153

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

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

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

*William Bradshaw and Robert Shepherd v. Igloo Products Corp. 1997 WL 543109 (US District Court, N.D.Ill.)

William Bradshaw sued Igloo Products for infringement of a wheeled cooler. Bradshaw’s patent was for a cooler with a pulling handle and two lifting handles, one of which was connected on the same axle as the pulling handle. The Igloo products in question were the Rolling Kool Locker which had a rotatable lifting hand that can also be used to pull the cooler and the Cool Roller which had separate lifting and pulling handles coupled to separate axles. The court decided that the prior art for the Cool Roller was a different patent, the Mason patent. This patent was for a wheeled cooler with separate lifting and pulling handles. The Mason patent was granted before Bradshaw’s patent. The court ruled that the Cool Roller fell under the Mason patent. Therefore, if Bradshaw’s patent were to be expanded to include the Cool Roller’s handles, it would be an invalid patent as a result of the prior art, the Mason patent. This leads to a method of deciding infringement. If the product in question mimics prior art, then it cannot infringe the patent otherwise that patent would be invalid. In deciding infringement for the Rolling Kool Locker, the court decided that it was up to a jury to decide whether the Kool Lockers handles were equivalent to Bradshaw’s patent, since there was no other glaring evidence.

Eric Paul

* Dr. Raymond G. Tronzo v. Biomet Inc. 1998 156 F.3d 1154 (United States Court of Appeals, Federal Circuit)
In this case Biomet was accused of infringement of an artificial hip prosthesis patented by Dr. Tronzo (patent 4,743,262). The alleged infringement revolved around the shape of the artificial hip socket and the hinge that was inserted into the socket. Patent ‘262 claimed a “generally conical” shape of the hip socket. Biomet’s design contained a strictly hemispherical shape. The court heard evidence in which it was claimed that even though the shapes would have at first glance performed in the same manner, the forces generated on the surface of each implant would be different depending on the shape. Additionally, after hearing expert testimony that suggested any shape would have been equivalent to the conical limitations of the patent claims, the court said that such a ruling would have been impermissible under the all-elements rule of Warner Jenkinson because it would write the “generally conical” shape limitation out of the claims. Therefore, the court held that the accused design did not infringe upon the patent claims under the doctrine of equivalence.

Peter Mitros (901461727)

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

Gillian Allsup

901281608

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

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

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

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

*Adams Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283 C.A.Fed. (Mich.), 2010
Adams Respiratory Therapeutics patented an extended release formulation of expectorant. The patent was for Mucinex and was new in that it allowed the expectorant (an aspect to medicine which promotes the discharge of phlegm or other fluid from the respiratory tract). Adams brought suit, alleging that generic manufacturer's (Perrigo's) proposed production and marketing of generic version of the product would infringe its patent. The United States District Court for the Western District of Michigan, Gordon J. Quist, J., 2010 WL 565195, granted defendant summary judgment of non-infringement. Plaintiff appealed. Within the patent Adams specified an amount of expectorant in the drug using the words "at least." The court found that "at least" did not prevent the use of the doctrine of equivalents and that the doctrine may apply to patents with specific number ranges. Adams patent stated that it would have at least 3500 hr*ng/mL, while Perrigo was using 3494.38 hr*ng/mL (only a 0.189% difference). Adams argued that this number was not substantially different and thus should represent infringement. Perrigo argued that because the claim does not use words of approximation, Adams cannot expand this element to ensnare Perrigo's product. The court found that the fact that the claim does not contain words of approximation does not affect the analysis-“terms like ‘approximately’ serve only to expand the scope of literal infringement, not to enable application of the doctrine of equivalents.” The proper inquiry is whether the accused value is insubstantially different from the claimed value. Because the court found that there was not a substantial difference between the numbers the doctrine of equivalents applied, the order of the district court was vacated and the case was remanded.

Snooki

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

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

901422128

*Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326 (2001)
Kustom Signals held a patent for a multimode traffic radar system which will show either the fastest speed or the strongest signal. Three of the claims used the word "or" in their wording. Kustom claimed that the "or" was a logical operator meaning one, the other, or both. Applied Concepts had designed a radar system which returned both the fastest speed and the strongest signal. The Court held that the word "or" was to hold its traditional, customary meaning as being exclusive, not inclusive, of the two statements.

901 41 7852

*Sage Products, Inc. v. Devon Industries, Inc., 126 F. 3d 1420 (1997)

Sage Products sued Devon Industries for infringement of several patents relating to containers for disposing of hazardous medical waste (needles etc.). Devon counter-sued for infringement of one of its similar patents. The district court held (on summary judgment) that there was no infringement by either party literally or equivalently. The appellate court affirmed.

Devon’s first alleged infringement was of Sage’s container claiming an elongated slot "at the top" of the apparatus for which to deposit waste, and a "barrier over the slot" to prevent contamination. Devon's patent involved a type of elongated slot that was embedded within the container and a hinged element at the opening. The court ruled no literal infringement because the Devon patent did not include the "at the top" and "over" features of the Sage claim. Even though the devices perform the same function the court ruled no equivalent infringement because the hinged element did not "substantially constrict access" to the container, and the slot was not "substantially at the top" of the container. The court was adamant that equivalent function could not negate the “at the top” and “over” limitations of the patent, stating that such power would reduce patent claims to "functional abstracts" devoid of meaningful structure limitations for the public to reference. A second infringement involved in this case resulted in the court ruling that if patent claims specify a function and recite its importance the patentee cannot later accuse an invention devoid of the specified function of infringement.

901419437

*Siemens Medical Solutions USA, INC. v. Saint-Gobain Ceramics & Plastics., F.3d, 2011 WL 651790 (2011)

Siemens developed, manufactured, and sold PET scanners which made use of scintillator crystals consisting of cerium-doped lutetium oxyorthosilicate (LSO). Saint-Gobain manufactures and sells scintillator crystals for use in PET scanners which consisted of cerium-doped lutetium-yttrium orthosilicate (LYSO). This is chemically different from LSO in that some of the lutetium is substituted for by yttrium. In Saint-Gobain's crystals, 10% of the lutetium atoms are substituted for by yttrium atoms (crystals are 10% Y LYSO). In April of 2007, Siemens sued Saint-Gobain for infringement of claims 1 and 2 of Siemens '080 patent for LSO scintillator crystals and photodetectors. Saint-Gobain aregued that its LYSO crystals are not equivalent to those claimed in the '080 patent because their crystals are separately claimed by their '420 patent. A jury trial found Saint-Gobain infringing upon the claims held by Siemens. Saint-Gobains appeals, and claims that the district court erred in jury instructions, claiming that in cases where an alleged equivalent is separately patented, a higher burden of evidence is required. Their reasoning was that the jury's finding of infringement effectively invalidated their '420 patent for LYSO crystals as the ruling of equivalence implied a conclusion of obviousness. The Court of Appeals disagrees, stating that it is well established that separate patentability does not avoid equivalency as a matter of law. The Court of Appeals also disagrees that the jury's finding of infringement invalidates the '420 patent; it only finds the level of LYSO used in practice (10%) is equivalent to Siemen's LSO crystals. Other compositions of LYSO could well be non-equivalent. Using the function-way-result test which asks whether an element of the an accused product performs substantially the same function in substantially the same way, the Court of Appeals affirms the juries finding of infringement.

Erich Wolz

*Sunbeam Products Inc. v. Homedics Products Inc. , US Court of Appeals, District Court of Wisconsin (2010)
This case involved a clear example of non-equivalence relating to the doctrine of equivalence. The patent holder Sunbeam Products brought action against competitor Homedics, alleging infringement of its patent for force-transmitting bearings for a platform scale. This case was decided under the district court of Wisconsin. Sunbeam Products had created platform bearings which translated purely horizontally along a platform which transferred all platform loads into purely vertical loads supported by the bearings. A previous patent, ‘326 patent, encompassed bearings which rocked and pivoted. HoMedics's accused scales all include bearings similar to the bearing disclosed in the ′326 patent. Each of the HoMedics bearings is machined with a nose-like protrusion that fits into a corresponding dimple on the underside of the platform. The trial court noted that the accused bearings all rock and pivot within their corresponding dimples in the underside of the platform. Sunbeam did not dispute that the HoMedics bearings rock and pivot in that manner. Sunbeam's argument was that in addition to rocking and pivoting, the HoMedics bearings were capable of some horizontal movement and therefore infringe the ′420 patent.
In light of its claim construction and the undisputed evidence regarding the operation of the bearings in the accused HoMedics products, the district court granted summary judgment of noninfringement. The court determined that no reasonable juror could find that bearings that rock and pivot remain parallel to the underside of the platform; accordingly, it held that the pivoting bearings in all of the accused products do not literally infringe the ′420 patent.

The most important distinction that was made in this case was the following statement. “The doctrine of equivalents is not a license to rewrite the claims to encompass what a patentee believes to be an equivalent structure. That is especially true in a case such as this one, where the accused product is not later-developed technology that is insubstantially different from the claimed invention, but instead embodies disavowed prior art. Thus, the district court correctly held that the accused bearings do not infringe the ′420 patent under the doctrine of equivalents.”

Christine Roetzel - 901425022

*Hughes Aircraft Co. v. U.S. 717 F.2d 1351

NASA and Department of Defense, were trying to build a satellite that would orbit the earth. However, they were unable to do so they had problems with the attitude control. Williams, a man who was working for Hughes Co. was able to figure out the problem. He was able to have lab model on 4/2/60 and it was called "dynamic wheel." Williams presented it to NASA and then Hughes Co and NASA entered an agreement to build the satellite. Williams filed for a patent on 4/18/60 and that became known as "Williams patent."
However, the govt started to build these spacecrafts that used the same systems from the satellite and did not give compensation to Williams. It went to court and the govt said that Williams patent was invalid because it infringed McLean's telescope. Williams rewrote his claims and stated “McLean's infrared telescope does not indicate the instantaneous spin angle position of his body with reference to a fixed external coordinate system, and it does not indicate the orientation of the axis with reference to a fixed external coordinate system." The court found Williams patent valid.
Then, the court looked at the spacecraft and compared it to Williams satellite. They found the following similarites: "(1) each is spin-stabilized; (2) each contains a jet on the periphery, connected by a valve to a tank containing fluid for expulsion substantially parallel to the spin axis; (3) each employs sun sensors to sense ISA position; (4) each requires knowledge of orientation relative to a fixed external coordinate system; (5) each contains radio equipment for communicating with the ground; (6) each transmits spin rate and sun angle information to a ground crew; and (7) in each, jet firing is synchronized with ISA position to effect controlled precession and thus to achieve a desired orientation."
Needless to say the court ruled that govt infringed Williams patent.

901439143

* Sage Products, Inc. v. Devon Industries, Inc. 126 F.3d. 1420 (1997)

In this case, Sage Products sued Devon Industries for infringement of two of its patents and Devon countersued Sage for infringement of one of its own patents, all of which relate to the disposal of medical waste products such as needles. In trial and on appeal, the courts held that there was no literal infringement nor infringement by the doctrine of equivalents by any party. Sage claimed that Devon's '251 for a "tortuous path" disposal container infringed on both its '728 patent for a sharps disposal container and its '849 patent for the removal and storage of syringe needles. Devon claimed that Sage's '728 patent infringed on its '592 patent for a disposal container.
** The '728 patent consists of an opening with a curved arc extending above it and another below it (inside the container) with a rotatable L-shaped flap such that waste can be deposited without exposing it again.
** The '849 patent covers a container with notches for removing needles and a "moveable closure" that allows the container to be closed and reopened as needed.
** The '251 patent covers a disposal container with a slotted opening at the top and 2 overlapping but displaced obstructions within the container to prevent accessing material that has been disposed of. It also has a closure that permanently locks once closed.
** The 592 patent covers a container that has a slotted opening and another "baffle" within the container that has another slotted opening horizontally displaced from the first
The courts held that the '251 patent did not infringe on the '728 patent because the patent explicitly described a precise configuration of an opening at the "top of the container" with one obstruction "over said slot" and another below, and that '251 configuration was different. They also held that the '251 patent did not infringe on the '849 patent because there was an important difference between permanent closure and closure that can be reopened. Finally, the '728 patent did not infringe on the '592 patents for similar reasons as the first: the configurations were very different. The '592 patent emphasized a horizontal displacement, which was not part of the '728 patent. The courts held that the use of precise language in patents limited the claims and because disposal containers were reasonably simple and straightforward, different configurations could not be equated.

Julia Potter (jpotter2)

* Kudlacek v. DBC, Inc. 115 F. Supp. 2d 996 (2000)

Owner of Patent No. 5,611,325 for an archery bow stabilizer, Donald Kudlacek, brought an infringement suit against competitor DBC, Inc. DBC counterclaimed, stating that its patent for a peep sight targeting system was being infringed. The claim in question was a "threading" limitation on the stabilizer describing how it is adjusted and secured. The District Court decided that neither Kudlacek's stabilizer nor DBC's peep sight target system were infringed. This was because the accused device, the "Super Stix," was found to not be equivalent to the patented device because it did not infringe all the elements of claim 1. Though the accused device performs, basically, the same function, it does so in a substantially different way; therefore the Doctrine of Equivalents does not apply. Note that the invalidity issue was not settled by finding that the patent was not infringed.

901437068

* Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)

Adkins v. Lear discussed the assembly and sale of a certain type of gyroscope. The gyroscope design had originally been borrowed by Lear, from Adkins under the terms that Lear would pay a small percentage of their profits to Adkins since Lear was not the original inventor of the gyroscope mechanical design. Conflicts arose when Lear refused to pay Adkins under the claim that their new gyroscope was a unique design that differed from the original design contracted from Adkins. The judges determined that since the new design was similar to the original in all the necessary inner working components and only differed in the external aesthetic features, the new design infringed on the old since it did not provide any new or useful feature. Based on this judgment Lear was required to pay Adkins for any sales of the new gyroscope.

901438174

* Adkins v. Lear, Inc. (1968), (67 Cal.2d 882, 435 P.2d 321, 64 Cal.Rptr. 545)

I hate to be repetitive, but I read the same case. I will reiterate, it is a case about a dispute over profit sharing. Adkins invented the gyroscope and required Lear to share profits if he used the design. The dispute arose when Lear made an improvement upon the designed and refused to pay profits on this "new and improved" design. This design was really just the innards reworked into a new shape without altering the size or scale. This was ruled to be equivalent to the original design, reinforcing the underlying ideas of the doctrine of equivalents.

cmadiga1

Lemelson v. Mattel (1992), (968 F.2d 1202)

Lemelson sued Mattel, saying that their hotwheels toys infringed on his patent for a flexible track for toy cars. In the original case, Hotwheels was ruled to have infringed on Lemelson's patent. The history of the patents in the toy race car tracks was important in this case. Before Lemelson received his patent, Giardiol had a patent for a flexible car track with an internal support. Mattel's track was very similar in all aspects of the Giardiol patent, but did not have an internal frame. Lemelson's patent was originally denied as being completely anticipated by Giardiol. However by adding claims to the vertical supports which define the track and keep the car on the track Lemelson was able to distinguish his product and obtain a patent. Therefore, these were ruled as the defining characteristics of Lemelson's patent. In the original case, the jury found that Hotwheels product did not contain these characteristics. Therefore, the Court of Appeals reversed the previous ruling saying that the jury had made a logical error.

Andy Stulc

*American Piledriving Equipment, Inc. v. Geoquip, Inc., 696 F.Supp.2d 582 (2010)

In this case, American Piledriving Equipment(APE) sued Geopquip over a pile driving device which they claimed infringed upon their patent. In APE's patent, they mentioned as part of the claims that there is, "a cylindrical gear portion and an eccentric weight portion integral with said cylindrical gear portion,” and an “eccentric weight portion having at least one insert-receiving area formed therein.” The purpose of these items was to create a vertica force for pile-driving while balancing each other out in the horizontal direction. The court found that the wording of APE's claims were such that the component was described in terms of structure and function so simply showing that the same function was performed would be insufficient to claim infringement. The portion of Geoquip's device that accomplished this function however, was created of two parts, one being bolted onto the other. Furthermore, APE's specifications state that the metal in the insert receiving area have a melting temperature greater than 328 degrees Celsius. Geoquip's item does contain tungsten (with a melting temperature greater than 328), but not located in what might be the insert area of the eccentric portion. The court decided that APE's claims made a, "clear and unmistakable disavowel," which limited the term "integral" to one-piece counterweights. They were thus not able to now attempt to expand their claims in order to cover the accused infringing device.

gtorrisi

Dsakamot 3/23/11 homework

2011-03-23T08:22:38Z

Dsakamot: Created page with "The case that I chose is MEHL/Biophile International Corp. v. Milgraum. This case was held in the United States Court of Appeals for the Federal Circuit and decided on Sept. 30, ..."

The case that I chose is MEHL/Biophile International Corp. v. Milgraum. This case was held in the United States Court of Appeals for the Federal Circuit and decided on Sept. 30, 1999. MEHL/Biophile Corp. brought an action of infringement against Dr. Sandy Milgraum for a a patent claiming method of hair removal using a laser. Milgraum moved for a summary judgment of invalidity stating that the patent claims were anticipated both by an instruction manual that uses a laser to remove tattoos and an article by the Dr. Luigi Polla which documents the use of laser irradition in guinea pig skin. The United States District Court for the District of New Jersey considered both of the references and granted a summary judgment of invalidity on the manual.

In its decision the USCAFC held that patent was not anticipated by the instruction manual but was anticipated by the Polla article. In its decision, the Court cites that "To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently." The court concluded that the manual couldn't anticipate because it didn't teach all the limitations of the claimed invention and did not give any inherent teaching of the laser alignment over the hair follicles. The Polla article, however, would undoubtedly be able to followed by a person of ordinary skill to follow the teachings of alligning the laser light over a hair follicle. In the article, laser lights were shown to have follicle damage when applied vertically over it. While the article does not specifically mention hair loss, the results of the article would clearly show that its application could be used for hair loss.

User:Dsakamot

2011-03-23T07:57:48Z

Dsakamot:

ESB Briefs

2011-03-04T02:39:30Z

Dsakamot:

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
#
#
#
* Reply Brief for Petitioner. (Feb. 7, 1939)
#Cmadiga1
#90144463
#901422128
#jpotter2
#ewolz
#E W Hitchler
#Davin Sakamoto
#
#
#
* Brief for Respondents (Jan. 28, 1939)
#LMiller
#Josh Bradley
#Brobins
#Ebingle
#kyergler
#BCastel1
#
#
#
#
* Brief for Petitioner. (Jan. 1939)
#Kschlax
#Andy Stulc
#Mzahm
#Rabot
#Peter Mitros
#Jacob Marmolejo
#
#
#
#

Bilski brief list

2011-02-14T11:26:29Z

Dsakamot:

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
#Adam T. Letcher
#Craigkrzyskowski
#dcarter2
#ebingle
#Rabot
#Eric Paul
#cnorton
#kschlax
#Jnosal
#Mackroyd
#dsakamot
#eguilbea
#901444263
#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)
#KyleR
#Andy Stulc
#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)
#Kevin Godshall
#Amici Curiae Brief of Internet Retailers in Support of Respondent (Oct. 1, 2009)
#Brief for the Respondent (Sep. 25, 2009)
#Kriester
#Brobins
#Josh Bradley
#Brief of Amici Curiae Entrepreneurial Software Companies in Support of Petitioner (Aug. 6, 2009)
#E W Hitchler
#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)
#Mzahm
#Brief of Pharmaceutical Research and Manufacturers of America as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Hamburgler
#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)
#901422128
#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)
#LMiller
#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)
#CRoetzel
#Brief of Amicus Curiae AwakenIP, LLC in Support of Petitioners (Aug. 6, 2009)
#Pmitros
#pfleury
#901479977
#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)
#Bobby Powers
#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)
#Xiao Dong
#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)
#ewolz
#kristen kemnetz
#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)
#Jmarmole
#Gtorrisi

Dsakamot nonobviousness

2011-02-11T11:41:16Z

Dsakamot:

==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]], the standard for patentability was that an invention only had to be novel. This case establishes the notion that there had to me more to it, some sort of threshold for inventiveness, 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)===

The case of [[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 "consideration of the need for some such device" and “commercial success” both of which is a standard used today for nonobviousness. While the Supreme Court in this case ultimately rejected these reasons that the Court of Appeals gave, they served as a precursor for the secondary considerations of what nonobviousness is.
*Second, it expressed an emphasis toward patent protection for inventions that would fulfill Article I, s 8 in the Constitution which is “To promote Progress of Science and useful Arts”. It served a chastisement of patents that would grant monopolies for trifling devices that don’t contribute to the real advancement of arts.
*Third, it gave a precise and comprehensive definition of the validity of combination patents. If an invention uses elements that are known to prior art, their use must exceed the sum of its parts for it to fall under patent protection. If the combination of these old elements does not produce a new change in its function, it doesn’t fulfill the function of a patent which is to add to the sum of useful knowledge.

===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)]] Circuit Judge Learned Hand, 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 [on lenses]; 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

In short, Judge Learned Hand established the standard of a “long felt but unsatisfied need”. This standard applies in situations where a significant time has passed before the invention was implemented and thereafter was then widely adopted across the field. It comes as a change from previous court decisions which did not take these factors into consideration.

===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;
:This issue deals with the extent and specifics of what are contained in prior inventions. Patentability depends on how far and how exactly previous inventions factored in.
* differences between the prior art and the claims at issue;
:This issue looks at the differences between the current invention and previously patented inventions. An invention can only be patentable only if its claims are substantially new and useful from what other inventions have already patented.
* level of ordinary skill in the pertinent art;
:This issue examines how obvious the patent’s claims would be to a person of ordinary skill in the relevant field. If the claims are obvious to a person of ordinary skill, it does not qualify for patent protection.
* 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. In this particular case, Adams developed a wet battery that produced significant improvements over previous wet batteries such as greatly increasing current capacity, producing constant voltage, performance under extreme circumstances (i.e. temperature), etc.

* The Supreme Court concluded that while his invention contained relatively small changes, Adams’ battery was ultimately patentable. Some of these reasons arose from the fact that experts in his field were in disbelief that his invention could work and subsequently, patentable improvements were mad on his invention. The Patent Office also stated that that they could not find one reference to cite against Adams’ application. All of these facts are clearly apparent that Adams’ invention was nonobvious.

===Anderson's Black Rock v. Pavement Salvage (1969)===
The Supreme Court in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] puts less emphasis and returns the focus to "inventiveness" by revisiting the old problem of when a combination of old or known elements can become patentable. The Supreme Court rules that while the four prior elements of the patent might prove to be more convenient, it didn’t produce a new or different function and was neither inventive nor nonobvious. While commercial success should be considered, it in itself will not produce an invention. Patentability thereafter becomes invalid.

==Suggestion to Combine==
[[In Re Rouffet]] deals with the issue of a combination of previously-patented elements in an application. 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.”

This case establishes that a new suggestion requirement be added in regards to the issue of patent denial when combining prior elements in an invention. This suggestion requirement is used to protect against claims that use hindsight to make the patentability of inventions invalid. This means that if a patent is to be dismissed for the reason of combining old elements, it must prove that not only would a person of ordinary skill in the particular field find the combination obvious, it must also show that an implication to actually combine those elements existed. Just because a person who is skilled in their field would find the changes obvious, it doesn’t necessarily mean that they would have the initiative to actually apply the combination.

By implementing this suggestion requirement, it will prevent inventions from becoming unpatentable because of a high ordinary skill. The United States Court of Appeals in this decision establishes that inventions are a process of joining together elements of prior art in a manner that is nonobvious.

==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.
:Documenting the process of invention becomes very important. If the procedure of developing an invention is well documented, it is admissible evidence in establishing ownership even if its contents aren’t known for a considerable amount of time after the patent’s filing.
*The secondary considerations, commercial success, are not optional considerations. If evidence is available pertaining to them, they ''must'' be considered by the court.
:This is significant because it marks a change in previous court cases which allowed the judges to choose whether to take economic considerations into account which sometimes led to decisions that contradicted themselves.
*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 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.”

==The Inventive Step==
An inventive step is an integral part of any invention. It is determined by considering the obviousness of the “inventive” step in relation to the most relevant prior art and deciding if a skilled person in the art finds the invention obvious. If it’s not obvious, an inventive step wasn’t taken and the patent is considered invalid. Without an inventive step, there is no achievement in the field, and no patent is warranted.

==Relationship with Novelty==
For an invention to be novel, it must be different from any prior art that came before it. If an invention is to be nonobvious, it is also the case that the invention is novel. Just because an invention is novel, however, doesn’t mean that it’s nonobvious. Nonobviousness requires a higher level of novelty in its standard; a person of ordinary skill would not have been able to make the differences from the prior art.

==Nonobviousness vs. Invention==
Originally the standard for patentability was inventiveness as well as utility and novelty. By the year 1952, inventiveness became more difficult to obtain and nonobviousness as a requirement was stated in the Patent Act of 1952. Nonobviousness offered a better idea of whether an invention was an actual advancement in the field. This differentiation was clear in the Adams case where small nonobvious advancements were patentable although overall inventiveness would probably be considered and thus, the invention would be unpatentable.

==Secondary Considerations==
Secondary considerations were taken into account to determine if inventions were patentable. Although an object can be commercially successful, it doesn’t indicate a patentable invention, it is a strong indicator that the invention is useful and nonobvious. Some cases may have obvious cases of advancement or infringement, but in cases where patentability is in question, it can be useful to see how the field reacted to the invention. If an invention satisfied a number of these considerations, it’s clear that the public has determined that advancements were made. By this logic, an object would be entitled to a patent.

==Ordinary Skill in the Art==
35 USC 103 states that a patentable product must be determined to be nonobvious to a person with ordinary skill in the field. A person of ordinary skill in the art must be an average person who works in the field in question. If this person with ordinary skill in the art either finds the invention trivial or obvious, or has the skills necessary to create the invention, the inventions is not patentable.

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

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

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

[[South Corp. v. US]]

Dsakamot nonobviousness

2011-02-08T21:17:19Z

Dsakamot: Created page with "==Historical Development== The following are some cases through history that trace the evolution of what is currently the nonobviousness standard. ===Hotchkiss v. Greenwood (185..."

User:Dsakamot

2011-02-08T21:07:03Z

Dsakamot:

Dsakamot 2/4/11 homework

2011-02-04T09:39:39Z

Dsakamot: Created page with "The patent that I’m doing this assignment on is Patent no. 2,627,798: Clamp for vibrating shank plows (hereinafter called the ‘798 patent). The inventor was William T. Graha..."

The patent that I’m doing this assignment on is Patent no. 2,627,798: Clamp for vibrating shank plows (hereinafter called the ‘798 patent). The inventor was William T. Graham and the patent was issued on Feb. 10, 1953. The purpose of this invention was to design a device that would absorb shock from the plow shanks if used during rocky soil, helping to prevent damage to the plow. When the chisel encounters an obstruction, it forces the chisel and bottom portion of the shank to move up. The shank also fits loosely into the stirrup which prevents it from recoiling away from the hinge plate and prevents extreme strain near the bolted connection on the shank. The validity of this patent has come under question due to a question of non-obviousness. Based on the two previous patents, Patent no. 2,493,811: Vibrating plow and mounting thereof (hereinafter called the ‘811 patent) and Patent no. 2,014,451: Fastening device (hereinafter called the Pfeifer patent), an analysis will be made arguing for and against the validity of the patent.

== Argument for non-obviousness ==

One of the components that is nonobvious in the ‘798 patent is the innovation in including a stirrup to have the shank be rigidly fixed in the hinge plate not seen in the ‘811 patent. One of the problems that occurred in the ‘811 patent is that the shank will recoil away from the hinge plate whenever it encountered an obstruction. While it will be obvious for someone of ordinary skill to have a bolted connection of the shank to the hinge plate to prevent excessive strain on the near the bolted connection, what is nonobvious is that the stirrups will also gird the shank, preventing it from fishtailing. By stopping the fishtailing, excessive wear will disappear from the plow and will not be recognized by a person of ordinary skill.

The ‘798 patent also fulfilled secondary considerations allowable under Lyon v. Bausch & Lomb (1955). One of these considerations is that the new invention result in something that will be more economically advantageous. The ‘798 patent fulfills this obligation by taking an old model and making it with less materials, resulting in a cheaper product. This simplified and more compact design undoubtedly results in a more viable product to sell and enrich the public.

== Argument for obviousness ==

The ‘798 patent has touted “innovations” which merit protection. When comparing the prior art of this patent, however, it’s clear that these improvements do not fit the criteria set forth in Title 35, Part II, Chapter 10, Section 103 One of the new components that the ‘798 patent claims to have is a fastening device that enhances stability on the horizontal flanges and better distributes the forces acting upon it. This claim, however, is invalid because the fastening device in question is in the Pfeifer patent. This device is still under patent protection because 20 years had not elapsed from 20 years of its filing date. Because the device in question is not in the public domain, it doesn’t belong to Graham and thus results in an invalid patent.

The other obvious difference in the ‘798 patent was that force was reduced on the pivot pin by manufacturing it above the shank rather than below it. One of the problems seen in the ‘811 patent was that having the hinge plate below the shank rather than above it would cause wear on the upper plate, a part that was difficult to fix or replace. This difference in position would cause a change in the flex of the shank reducing stress for its entire length. Based on this observation, it’s apparent that if a person of ordinary skill would be able to utilize this to the entire length of the shank, rendering the patentability of this invention to be invalid. Moreover, this flexing argument wasn’t raised during the Patent Office. It’s also clear that any flexing advantages are not significant in any way to the function of the device according to testimony of experts in the field. In short, this patent in no way fulfills the non-obviousness requirement of the patentability of inventions.

User:Dsakamot

2011-02-04T01:43:27Z

Dsakamot:

User:Dsakamot

2011-02-04T01:43:08Z

Dsakamot:

User:Dsakamot

2011-01-28T11:36:54Z

Dsakamot:

Dsakamot 1/28/11 homework

2011-01-28T11:35:50Z

Dsakamot: Created page with "== Patent References == This patent was based on three main patents. The first patent that is referenced is Patent no. 1335927 [http://www.google.com/patents?id=uXRfAAAAEBAJ&pr..."

== Patent References ==

This patent was based on three main patents. The first patent that is referenced is Patent no. 1335927 [http://www.google.com/patents?id=uXRfAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]: TROITSEBS-SUPPORT issued in Apr. 1920. The second patent that is referenced is Patent no. 4322585 [http://www.google.com/patents?id=af82AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]: Personal electronic listening system with an air and bone transducer mounted on the clothing collar that was issued on Mar. 30, 1982. The last main patent that is referenced is Patent no. 4589134 [http://www.google.com/patents?id=jDI1AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]: Personal sound system issued on May 13, 1986.

Patent 1335927 is a clothing article that improves the support of trousers by combining elements of both suspenders and a belt. In this invention, suspender straps over the shoulders are supported by a belt fastener. This would have a substantial improvement in holding up trousers over a belt or trousers and improve the appearance and comfort of whoever was wearing this invention.

Patent 4322585 is an electronic listening system that uses speakers connected to a portable audio device. In this invention, these speakers have pins that allow them to mount them in a position that is in close range to a person’s ears by attaching itself on the article of clothing the listener will wear. Furthermore, the pins seek to not only allow for mounting but to also provide electrical connection to the device.

Patent 4589314 is a wearable personal sound system. It involves a garment that contains pockets for both the speakers and the portable audio device in another pocket. Wires that are connected to the speakers and device are also relatively easy to attach and detach.

It is these three patents used in combination that served as the basis for the patent that I’ve selected.

== Patent Evaluation Under Hotchkiss and A.&P. ==

If my patent were subjected to the analysis used in Hotchkiss v. Greenwood (1850) and A.&P .Tea Co. v. Supermarket Corp. (1950), it would’ve been rejected on the following reasons.

'''Reason 1: The invention would not have been considered novel'''

In Hotchkiss, another one of the claims of why the patent was invalid was because the plaintiffs couldn’t show the originality of their clay doorknob. This is very similar to the progression of my patent. Referencing the last two patents, the purpose of having a portable sound system with wearable speakers has the same intent of Patent 4764962. Because the later patent is claiming the same thing as the earlier patent, this would be unoriginal and unpatentable.

'''Reason 2: Ingenuity and skills of an ordinary mechanic'''

The key ruling that came from Hotchkiss was that the invention wasn’t patentable because “there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor.” The Supreme Court ruled that simply using clay for the material in a shape designed for a metal knob didn’t constitute patent protection because a mechanic of the field would’ve been able to do the same thing. This holds true for my patent. Using the components of all three patent references, it would be fairly simple of a person with ordinary skill in the field to make that invention thus making it invalid.

'''Reason 3: The whole must be greater than the sum of its parts'''

In A.&P., the Supreme Court ruled that “The conjunction or concert of known elements must contribute something: only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable.” When looking at my patent, it appears that it doesn’t fit these criteria. When looking at those patents individually, suspenders, clips, and pockets for a portable audio device are found. Even after combining the three, it’s apparent that this combination hasn’t made a drastic improvement in the end product; it’s turns out just as expected.

'''Reason 4: It didn’t promote the “Progress of Science and useful Arts'''

In A.&.P., the concurring opinion in the Supreme Court stressed the need for an invention that would fulfill these goals. Some of these quotes include “Patents serve a higher end- the advancement of science.” Also, “It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures.” In other words, the invention needed to have an important purpose in order for it to be granted protection. Based on this definition, it is clear that my patent doesn’t make a distinctive contribution to the knowledge of science and other related fields and wouldn’t be granted patent protection.

== Nonobviousness under Lyon ==

Before the case of Lyon v. Bausch & Lomb (1955), the Patent Act of 1952 was enacted. This piece of legislation sought to clarify some of the language from previous patent laws. More notably, however, it established the requirement of invention. In the Lyon case, Chapter 10, § 103 is cited which lists the conditions for patentability in non-obvious subject matter.

§ 103 reads:

“A patent may not be obtained… 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.”

In other words, an invention is patentable if its improvement is something that wasn’t apparently obvious to an ordinary person in a particular field. This judgment is affirmed in Lyon by stating in its decision that “the change had not been “obvious” to a person having ordinary skill in the art.”

From this case and the Patent Act of 1952, I conclude that my patent would indeed fit the nonobviousness requirement. While there had been many attempts to try and make a portable sound system that was wearable, no one had ever thought to use suspenders to help get the job done. By combining the patents of suspenders/belt, electrical clips and a garment that carried portable sound devices, it resulted in a new and useful creation that no one had previously thought to use of before.

Clearly, there has been a huge change in the standards of nonobviousness. The Supreme Court in the Lyon case even acknowledges the difference in stating that “had the case come up for decision within twenty, or perhaps, twenty-five years, before the Act of 1952…, it is almost certain that the claims would have been held invalid.” The change in nonobviousness comes from a change in language from the Hotchkiss case.

Before, an invention needed to display a difference that was greater than what an ordinary mechanic could display. The last line in the Patent Act of 1952, however, shows a change in this philosophy of thinking: “Patentability shall not be negatived by the manner in which the invention was made.” So long as the idea and change wasn’t obvious to an ordinary person, the skill level of the inventor or the process in which it was done does not matter.

User:Dsakamot

2011-01-28T10:55:03Z

Dsakamot: /* Patent Evaluation Under Hotchkiss and A.&P. */

== My Patent ==

'''Patent 4764692: Stereo speaker system for walkman-type radio and/or cassette player'''

Date issued: Aug. 16, 1988

The idea behind this invention was to create a way to carry stereo speakers in a portable and discrete manner. The invention uses a pair of suspenders which contain a pouch for a Walkman-type radio with speakers positioned over the shoulder straps. I found this patent interesting because I found the design of this invention both intriguing and ingenious. I also think it will be interesting to think up ways in which to improve this product. I found this patent while searching on Google Patents which can be found here :[http://www.google.com/patents?id=8Yo3AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]

== Patent References ==

This patent was based on three main patents. The first patent that is referenced is Patent no. 1335927 [http://www.google.com/patents?id=uXRfAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]: TROITSEBS-SUPPORT issued in Apr. 1920. The second patent that is referenced is Patent no. 4322585 [http://www.google.com/patents?id=af82AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]: Personal electronic listening system with an air and bone transducer mounted on the clothing collar that was issued on Mar. 30, 1982. The last main patent that is referenced is Patent no. 4589134 [http://www.google.com/patents?id=jDI1AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]: Personal sound system issued on May 13, 1986.

Patent 1335927 is a clothing article that improves the support of trousers by combining elements of both suspenders and a belt. In this invention, suspender straps over the shoulders are supported by a belt fastener. This would have a substantial improvement in holding up trousers over a belt or trousers and improve the appearance and comfort of whoever was wearing this invention.

Patent 4322585 is an electronic listening system that uses speakers connected to a portable audio device. In this invention, these speakers have pins that allow them to mount them in a position that is in close range to a person’s ears by attaching itself on the article of clothing the listener will wear. Furthermore, the pins seek to not only allow for mounting but to also provide electrical connection to the device.

Patent 4589314 is a wearable personal sound system. It involves a garment that contains pockets for both the speakers and the portable audio device in another pocket. Wires that are connected to the speakers and device are also relatively easy to attach and detach.

It is these three patents used in combination that served as the basis for the patent that I’ve selected.

== Patent Evaluation Under Hotchkiss and A.&P. ==

If my patent were subjected to the analysis used in Hotchkiss v. Greenwood (1850) and A.&P .Tea Co. v. Supermarket Corp. (1950), it would’ve been rejected on the following reasons.

'''Reason 1: The invention would not have been considered novel'''

In Hotchkiss, another one of the claims of why the patent was invalid was because the plaintiffs couldn’t show the originality of their clay doorknob. This is very similar to the progression of my patent. Referencing the last two patents, the purpose of having a portable sound system with wearable speakers has the same intent of Patent 4764962. Because the later patent is claiming the same thing as the earlier patent, this would be unoriginal and unpatentable.

'''Reason 2: Ingenuity and skills of an ordinary mechanic'''

The key ruling that came from Hotchkiss was that the invention wasn’t patentable because “there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skillful mechanic, not that of the inventor.” The Supreme Court ruled that simply using clay for the material in a shape designed for a metal knob didn’t constitute patent protection because a mechanic of the field would’ve been able to do the same thing. This holds true for my patent. Using the components of all three patent references, it would be fairly simple of a person with ordinary skill in the field to make that invention thus making it invalid.

'''Reason 3: The whole must be greater than the sum of its parts'''

In A.&P., the Supreme Court ruled that “The conjunction or concert of known elements must contribute something: only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable.” When looking at my patent, it appears that it doesn’t fit these criteria. When looking at those patents individually, suspenders, clips, and pockets for a portable audio device are found. Even after combining the three, it’s apparent that this combination hasn’t made a drastic improvement in the end product; it’s turns out just as expected.

'''Reason 4: It didn’t promote the “Progress of Science and useful Arts'''

In A.&.P., the concurring opinion in the Supreme Court stressed the need for an invention that would fulfill these goals. Some of these quotes include “Patents serve a higher end- the advancement of science.” Also, “It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures.” In other words, the invention needed to have an important purpose in order for it to be granted protection. Based on this definition, it is clear that my patent doesn’t make a distinctive contribution to the knowledge of science and other related fields and wouldn’t be granted patent protection.

User:Dsakamot

2011-01-28T10:47:20Z

Dsakamot: /* Patent Evaluation Under Hotchkiss and A.&P. */

User:Dsakamot

2011-01-28T10:25:43Z

Dsakamot:

User:Dsakamot

2011-01-28T09:20:47Z

Dsakamot:

User:Dsakamot

2011-01-28T09:12:53Z

Dsakamot:

User:Dsakamot

2011-01-28T08:01:06Z

Dsakamot:

User:Dsakamot

2011-01-28T01:54:30Z

Dsakamot:

== Patent 4764692: Stereo speaker system for walkman-type radio and/or cassette player ==

Date issued: Aug. 16, 1988
The idea behind this invention was to create a way to carry stereo speakers in a portable and discrete manner. The invention uses a pair of suspenders which contain a pouch for a Walkman-type radio with speakers positioned over the shoulder straps. I found this patent interesting because I found the design of this invention both intriguing and ingenious. I also think it will be interesting to think up ways in which to improve this product. I found this patent while searching on Google Patents which can be found here :[http://www.google.com/patents?id=8Yo3AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]

User:Dsakamot

2011-01-24T04:06:01Z

Dsakamot: My Selected US Patent

Patent 4764692: Stereo speaker system for walkman-type radio and/or cassette player
Date issued: Aug. 16, 1988
The idea behind this invention was to create a way to carry stereo speakers in a portable and discrete manner. The invention uses a pair of suspenders which contain a pouch for a Walkman-type radio with speakers positioned over the shoulder straps. I found this patent interesting because I found the design of this invention both intriguing and ingenious. I also think it will be interesting to think up ways in which to improve this product. I found this patent while searching on Google Patents which can be found here :[http://www.google.com/patents?id=8Yo3AAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]