Bill Goodwine's Wiki - User contributions [en]

User:Kyle Tennant

2011-04-29T14:41:45Z

Kyle Tennant: /* Homeworks */

== Case Reading Summaries ==
====The Purpose of Patents====
[[Case 1: Bonito Boats v. Thunder Craft, Inc. (1989)]] 
====Novelty and Nonobviousness====
[[Case 2: Hotchkiss v. Greenwood (1850)]] [[Case 3: A. & P. Tea Co. v. Supermarket Corp. (1950)]] [[Case 4: Lyon v. Bausch & Lomb Optical Co. (1955)]] [[Case 5: Graham v. John Deere (1966)]] [[Case 6: US v. Adams (1966)]] [[Case 7: Anderson's Black Rock, Inc. v. Pavement Co. (1969)]] [[Case 8: KSR International Co. v. Teleflex, Inc. (2007)]] 
====Patentable Subject Matter====
[[Case 9: Gottschalk v. Benson (1972)]] [[Case 10: Diamond v. Diehr (1981)]] [[Case 11: Arrhythmia Research Technology, Inc. v. Corazonix Corp. (1992)]] [[Case 12: State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998)]] [[Case 13: Bilski v. Kappos (2010)]]
====Statutory Bars====
[[Case 14: Egbert v. Lippmann (1881)]] [[Case 15: Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc. (1946)]] [[Case 16: D.L. Auld Co. v. Chroma Graphics Corp. (1983)]] [[Case 17: Elizabeth v. American Nicholson Pavement Company (1877)]] [[Case 18: Lough v. Brunswick Corp. (1996)]] [[Case 19: UMC Electronics Co. v. U.S. (1987)]] [[Case 20: Pfaff vs. Wells Electronics (1998)]] [[Case 21: Electric Storage Battery Co. v. Shimadzu (1939)]] [[Case 22: Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (1999)]] [[Case 23: Lorenz v. Colgate-Palmolive-Peet Co. (1948)]] [[Case 24: W.L. Gore & Associates, Inc. v. Garlock, Inc. (1983)]] [[Case 25: In re Carlson (1992)]] [[Case 26: In re Hall (1986)]]
====Infringement====
[[Case 27: CCS Fitness, Inc. v. Brunswick Corporation (2002)]] [[Case 28: Graver Tank & Mfg. Co. v. Linde Air Products Co. (1950)]] [[Case 29: Warner-Jenkinson Company v. Hilton Davis Chemical Co. (1997)]] [[Case 30: Vas-Cath Inc. v. Mahurkar (1991)]] [[Case 31: TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co. (2001)]] [[Case 32: i4i Ltd. Partnership v. Microsoft Corp. (2010)]] [[Case 33: H.H. Robertson, Co. v. United Steel Deck, Inc. (1987)]] [[Case 34: Panduit Corp. v. Stahlin Bros. Fibre Works, Inc. (1978)]]

====Class Notes====
[[Notes from 3/9/2011]] 
[[Notes from 3/11/2011]]

== Homeworks ==
[[Homework 1: Clutch And Brake Assembly and Production Method]] [[Homework 2: Supplementary Patents and a Discussion of Patentability]] [[Homework 3: Examining Nonobviousness]] [[Homework 4: Defining Nonobviousness]] [[Homework 5: Nonobviousness Paper]] [[Homework 6: Patentable Subject Matter Paper]] [[Homework 7: In re Hall Supplementary Case]] [[Homework 8: Clear Example of Doctrine of Equivalents]] [[Homework 9: In-Class Case Study]] Homework 10: [[Quanta Brief: Tennant]]

Quanta Brief: Tennant

2011-04-29T14:41:01Z

Kyle Tennant:

Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners

2007 WL 3440936

*Motorola supports the petitioners (Quanta).
*Court precedent establishes that the licensed sale of microprocessors and chipsets exhausted LGE's patent rights.
*There are other agreements similar to, yet distinct from, licensing. The Court's ruling here should only apply to license agreements, not other agreements such as covenant not to sue.
*US v. Univis sets the right precedent.
*Court ruling in Mitchell v. Hawley was based on a lack of authority to sell patented machines, not language limiting their use.
*Similarly, in Adams v. Burke, "when [machines] are once lawfully made and sold, there is no restriction on their use to be implied for the benefit of the patentee or his assignees or licensees."
*Patent law achieves its purpose when the patentee receives his reward for the use of his invention through commercial sale. Once this purpose is achieved, patent law does not provide any further restriction on its use.
*LGE's attempts to gain damages from Quanta is an unlawful attempt to gain a second reward from the patent law practice.
*The Court shouldn't decide what patent exhaustion effect the release has on products Intel sold before the release was formalized.
*There isn't enough information available about the pre-license sales to make a decision about how LGE's release affects those sales.

Quanta Brief: Tennant

2011-04-29T14:33:44Z

Kyle Tennant: Created page with "Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners 2007 WL 3440936 *Motorola supports the petitioners (Quanta). *Court precedent establishes that the licensed sale..."

Here in list of arguments in Quanta

2011-04-29T14:15:39Z

Kyle Tennant:

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]]

[[Quanta Brief Summary 901431048]]

[[Quanta Brief Brobins]]

[[Quanta Brief hwong1]]

[[Quanta Brief: Tennant]]

User:Kyle Tennant

2011-04-27T15:42:02Z

Kyle Tennant: /* Infringement */

Case 32: i4i Ltd. Partnership v. Microsoft Corp. (2010)

2011-04-20T15:32:25Z

Kyle Tennant: Created page with "i4i creates custom software for other businesses. They hold a patent for an XML editor; Microsoft has included XML editing features in its Office suite (specifically Word) since ..."

i4i creates custom software for other businesses. They hold a patent for an XML editor; Microsoft has included XML editing features in its Office suite (specifically Word) since 2003. i4i claimed that the Microsoft products infringed on their patent, which the District Court upheld. Microsoft claimed i4i's patent was invalid.

The CAFC had to decide what the precise meaning of the word "distinct" was. In the claim, "distinct" means that the metacode map and the mapped data are stored in "distinct storage means." In addition, the document content is stored via “mapped content distinct storage means.” Microsoft argued that distinct implied
# the metacode map and mapped content were stored in separate files, not just separate sections of the computer's memory; and
# the document's content and metacode map could be accessed and edited independently of each other.

The CAFC upheld the district court's decision. It said that a claim is not limited to the claims described unless there is a clear intent on the part of the patentee to restrict its scope. As for the infringement claims, there are three kinds present: direct, contributory, and induced. Because the '449 patent was a method, the sale of Word does not infringe on the patent per se. However, a reasonable jury could conclude that at least one person used Word in the method described. This is the question of contributory infringement: did Microsoft willingly sell a means for a person to perform a patented process? In order to be so, the means must include the apparatus for performing the infringing act, have no other substantial noninfringing uses, and be known by the party to be used primarily for a method patented by another. While some users saved their files in noninfringing formats, the differences were trivial, and it is perfectly reasonable that Microsoft knew about the '449 patent and that its software infringed. Finally, for induced infringement, the patentee must prove both that there was direct infringement and that said infringement was the encouraged by the infringing party, i.e., Microsoft. It is clear that Microsoft induced infringement as evidenced by its examples of users performing the patented method in its own advertorial examples.

User:Kyle Tennant

2011-04-20T15:07:59Z

Kyle Tennant: /* Infringement */

== Case Reading Summaries ==
====The Purpose of Patents====
[[Case 1: Bonito Boats v. Thunder Craft, Inc. (1989)]] 
====Novelty and Nonobviousness====
[[Case 2: Hotchkiss v. Greenwood (1850)]] [[Case 3: A. & P. Tea Co. v. Supermarket Corp. (1950)]] [[Case 4: Lyon v. Bausch & Lomb Optical Co. (1955)]] [[Case 5: Graham v. John Deere (1966)]] [[Case 6: US v. Adams (1966)]] [[Case 7: Anderson's Black Rock, Inc. v. Pavement Co. (1969)]] [[Case 8: KSR International Co. v. Teleflex, Inc. (2007)]] 
====Patentable Subject Matter====
[[Case 9: Gottschalk v. Benson (1972)]] [[Case 10: Diamond v. Diehr (1981)]] [[Case 11: Arrhythmia Research Technology, Inc. v. Corazonix Corp. (1992)]] [[Case 12: State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998)]] [[Case 13: Bilski v. Kappos (2010)]]
====Statutory Bars====
[[Case 14: Egbert v. Lippmann (1881)]] [[Case 15: Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc. (1946)]] [[Case 16: D.L. Auld Co. v. Chroma Graphics Corp. (1983)]] [[Case 17: Elizabeth v. American Nicholson Pavement Company (1877)]] [[Case 18: Lough v. Brunswick Corp. (1996)]] [[Case 19: UMC Electronics Co. v. U.S. (1987)]] [[Case 20: Pfaff vs. Wells Electronics (1998)]] [[Case 21: Electric Storage Battery Co. v. Shimadzu (1939)]] [[Case 22: Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (1999)]] [[Case 23: Lorenz v. Colgate-Palmolive-Peet Co. (1948)]] [[Case 24: W.L. Gore & Associates, Inc. v. Garlock, Inc. (1983)]] [[Case 25: In re Carlson (1992)]] [[Case 26: In re Hall (1986)]]
====Infringement====
[[Case 27: CCS Fitness, Inc. v. Brunswick Corporation (2002)]] [[Case 28: Graver Tank & Mfg. Co. v. Linde Air Products Co. (1950)]] [[Case 29: Warner-Jenkinson Company v. Hilton Davis Chemical Co. (1997)]] [[Case 30: Vas-Cath Inc. v. Mahurkar (1991)]] [[Case 31: TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co. (2001)]] [[Case 32: i4i Ltd. Partnership v. Microsoft Corp. (2010)]]

====Class Notes====
[[Notes from 3/9/2011]] 
[[Notes from 3/11/2011]]

== Homeworks ==
[[Homework 1: Clutch And Brake Assembly and Production Method]] [[Homework 2: Supplementary Patents and a Discussion of Patentability]] [[Homework 3: Examining Nonobviousness]] [[Homework 4: Defining Nonobviousness]] [[Homework 5: Nonobviousness Paper]] [[Homework 6: Patentable Subject Matter Paper]] [[Homework 7: In re Hall Supplementary Case]] [[Homework 8: Clear Example of Doctrine of Equivalents]] [[Homework 9: In-Class Case Study]]

Case 31: TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co. (2001)

2011-04-11T14:02:58Z

Kyle Tennant: Created page with "TurboCare holds a patent for a shaft sealing system for fluid turbines. The District Court held one claim invalid and that GE did not infringe on the design. The CAFC upheld the ..."

TurboCare holds a patent for a shaft sealing system for fluid turbines. The District Court held one claim invalid and that GE did not infringe on the design. The CAFC upheld the invalidation, affirmed and vacated parts of the infringement ruling, and remanded the case for further consideration, especially into the validation of other claims in light of its discussion. In prosecution, TurboCare amended one of its claims, and the District Court held the new claim invalid as new matter, not a modification of the old matter. The wording of the claims is not broad enough to cover all possible ways of achieving their functions, thus, the doctrine of equivalents does not apply.

Case 30: Vas-Cath Inc. v. Mahurkar (1991)

2011-04-11T13:55:33Z

Kyle Tennant: Created page with "In this CAFC case, Mahurkar filed a design application for a double-lumen catheter. He also submitted for a Canadian Industrial Design using the same images and some additional t..."

In this CAFC case, Mahurkar filed a design application for a double-lumen catheter. He also submitted for a Canadian Industrial Design using the same images and some additional text as his original patent application. In October 1984, Mahurkar filed for the first of two utility application using the same drawings as before, and the second utility application soon followed as a continuation of the first. Vas-Cath sued Mahurkar claiming that its products did not infringe on Mahurkar's design. They claimed that the utility patents Mahurkar secured relied on images only, and there was insufficent verbal description of the product.

This case concerns the requirement of "written description" and what satisfies this requirement. This language stems from early patent laws which require written descriptions for two reasons: (1) to allow others to create the invention themselves and understand how it works, and (2) to put into common knowledge all the aspects of the invention to help determine if any part of the invention was previously known and thus unpatentable. The CAFC determined from prior rulings that drawings do satisfy the written description requirement and that the question the District Court asked concerning what exactly was the invention is moot. Claims don't cover single aspects of an invention, but rather the entire combination of features in concert within the invention. The CAFC held that the summary judgment granted was invalid because the design patent stands, and the case was remanded for further consideration.

User:Kyle Tennant

2011-04-11T12:55:32Z

Kyle Tennant: /* Infringement */

== Case Reading Summaries ==
====The Purpose of Patents====
[[Case 1: Bonito Boats v. Thunder Craft, Inc. (1989)]] 
====Novelty and Nonobviousness====
[[Case 2: Hotchkiss v. Greenwood (1850)]] [[Case 3: A. & P. Tea Co. v. Supermarket Corp. (1950)]] [[Case 4: Lyon v. Bausch & Lomb Optical Co. (1955)]] [[Case 5: Graham v. John Deere (1966)]] [[Case 6: US v. Adams (1966)]] [[Case 7: Anderson's Black Rock, Inc. v. Pavement Co. (1969)]] [[Case 8: KSR International Co. v. Teleflex, Inc. (2007)]] 
====Patentable Subject Matter====
[[Case 9: Gottschalk v. Benson (1972)]] [[Case 10: Diamond v. Diehr (1981)]] [[Case 11: Arrhythmia Research Technology, Inc. v. Corazonix Corp. (1992)]] [[Case 12: State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998)]] [[Case 13: Bilski v. Kappos (2010)]]
====Statutory Bars====
[[Case 14: Egbert v. Lippmann (1881)]] [[Case 15: Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc. (1946)]] [[Case 16: D.L. Auld Co. v. Chroma Graphics Corp. (1983)]] [[Case 17: Elizabeth v. American Nicholson Pavement Company (1877)]] [[Case 18: Lough v. Brunswick Corp. (1996)]] [[Case 19: UMC Electronics Co. v. U.S. (1987)]] [[Case 20: Pfaff vs. Wells Electronics (1998)]] [[Case 21: Electric Storage Battery Co. v. Shimadzu (1939)]] [[Case 22: Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (1999)]] [[Case 23: Lorenz v. Colgate-Palmolive-Peet Co. (1948)]] [[Case 24: W.L. Gore & Associates, Inc. v. Garlock, Inc. (1983)]] [[Case 25: In re Carlson (1992)]] [[Case 26: In re Hall (1986)]]
====Infringement====
[[Case 27: CCS Fitness, Inc. v. Brunswick Corporation (2002)]] [[Case 28: Graver Tank & Mfg. Co. v. Linde Air Products Co. (1950)]] [[Case 29: Warner-Jenkinson Company v. Hilton Davis Chemical Co. (1997)]] [[Case 30: Vas-Cath Inc. v. Mahurkar (1991)]] [[Case 31: TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co. (2001)]] 

====Class Notes====
[[Notes from 3/9/2011]] 
[[Notes from 3/11/2011]]

== Homeworks ==
[[Homework 1: Clutch And Brake Assembly and Production Method]] [[Homework 2: Supplementary Patents and a Discussion of Patentability]] [[Homework 3: Examining Nonobviousness]] [[Homework 4: Defining Nonobviousness]] [[Homework 5: Nonobviousness Paper]] [[Homework 6: Patentable Subject Matter Paper]] [[Homework 7: In re Hall Supplementary Case]] [[Homework 8: Clear Example of Doctrine of Equivalents]] [[Homework 9: In-Class Case Study]]

User:Kyle Tennant

2011-04-11T12:55:07Z

Kyle Tennant: /* Infringement */

== Case Reading Summaries ==
====The Purpose of Patents====
[[Case 1: Bonito Boats v. Thunder Craft, Inc. (1989)]] 
====Novelty and Nonobviousness====
[[Case 2: Hotchkiss v. Greenwood (1850)]] [[Case 3: A. & P. Tea Co. v. Supermarket Corp. (1950)]] [[Case 4: Lyon v. Bausch & Lomb Optical Co. (1955)]] [[Case 5: Graham v. John Deere (1966)]] [[Case 6: US v. Adams (1966)]] [[Case 7: Anderson's Black Rock, Inc. v. Pavement Co. (1969)]] [[Case 8: KSR International Co. v. Teleflex, Inc. (2007)]] 
====Patentable Subject Matter====
[[Case 9: Gottschalk v. Benson (1972)]] [[Case 10: Diamond v. Diehr (1981)]] [[Case 11: Arrhythmia Research Technology, Inc. v. Corazonix Corp. (1992)]] [[Case 12: State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998)]] [[Case 13: Bilski v. Kappos (2010)]]
====Statutory Bars====
[[Case 14: Egbert v. Lippmann (1881)]] [[Case 15: Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc. (1946)]] [[Case 16: D.L. Auld Co. v. Chroma Graphics Corp. (1983)]] [[Case 17: Elizabeth v. American Nicholson Pavement Company (1877)]] [[Case 18: Lough v. Brunswick Corp. (1996)]] [[Case 19: UMC Electronics Co. v. U.S. (1987)]] [[Case 20: Pfaff vs. Wells Electronics (1998)]] [[Case 21: Electric Storage Battery Co. v. Shimadzu (1939)]] [[Case 22: Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (1999)]] [[Case 23: Lorenz v. Colgate-Palmolive-Peet Co. (1948)]] [[Case 24: W.L. Gore & Associates, Inc. v. Garlock, Inc. (1983)]] [[Case 25: In re Carlson (1992)]] [[Case 26: In re Hall (1986)]]
====Infringement====
[[Case 27: CCS Fitness, Inc. v. Brunswick Corporation (2002)]] [[Case 28: Graver Tank & Mfg. Co. v. Linde Air Products Co. (1950)]] [[Case 29: Warner-Jenkinson Company v. Hilton Davis Chemical Co. (1997)]] [[Case 30: Vas-Cath Inc. v. Mahurkar (1991)]] [[TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co. (2001)]] 

====Class Notes====
[[Notes from 3/9/2011]] 
[[Notes from 3/11/2011]]

== Homeworks ==
[[Homework 1: Clutch And Brake Assembly and Production Method]] [[Homework 2: Supplementary Patents and a Discussion of Patentability]] [[Homework 3: Examining Nonobviousness]] [[Homework 4: Defining Nonobviousness]] [[Homework 5: Nonobviousness Paper]] [[Homework 6: Patentable Subject Matter Paper]] [[Homework 7: In re Hall Supplementary Case]] [[Homework 8: Clear Example of Doctrine of Equivalents]] [[Homework 9: In-Class Case Study]]

Homework 9: In-Class Case Study

2011-04-04T14:41:18Z

Kyle Tennant:

The patent holder claims that we, Hamilton Sundstrand Corp., infringed upon two of their patent designs, both for compressor bleed air control apparatuses and methods. One patent, ‘893, claims:
* A control system that provides a constant minimum flow rate by use of adjustable inlet guide vanes;
* The electronics that operate the control system.
The ‘194 patent claimed a compressor for a gas turbine engine that powered a device with variable inlet air flow by using adjustable inlet guide vanes.

Honeywell argued that our patent violated theirs under the doctrine of equivalents. In order to prevent surge, Honeywell utilizes a method in which a controller tracks the difference between the air flow parameter at the exhaust and the desired air flow represented by the set point, which is a function of inlet guide vane position. They claim that our device, which protects against surge by monitoring IGV positioning, infringes on their method. However, in order to prove that it did so, they had to prove that the equivalent we demonstrate was unforeseen at the time of the patent application; if it was foreseen, then the obligation to protect themselves from infringement rested on them to include the equivalent in their claims. In addition, Honeywell amended some of their claims to narrow their scope because, Honeywell claimed, they wanted to avoid some issues with prior art. However, if that was their intent, then they failed because their invention and the prior art rely on the same measurements and the same underlying logic to perform their functions.

Honeywell claims that our method is equivalent because it uses essentially the same methods to accomplish essentially the same thing: static pressure differential in combination with the position of the inlet guide vanes is used to determine whether the compressor is in surge or not. While our system was developed some 10 years after the amendments, this does not mean the method was unforeseeable. We could not have developed our IGV system so quickly after we discovered the double-V problem if the system was not known in the art. Honeywell could have certainly used IGV positioning to solve the double-V problem in 1982; it is most reasonable to assume a person with ordinary skill in the art could have used this method at that time. Thus, the solution is foreseeable, and Honeywell has no ground to allege infringement on our part.

When Honeywell split the claims into device and method, they were essentially addressing the IGV positioning solution offered by our method. Thus, they vacated their right to proving doctrine of equivalents by prosecution history estoppel. Our device does not infringe on theirs because of this, and we should not be found liable for any damages to Honeywell.

Homework 9: In-Class Case Study

2011-04-04T14:41:00Z

Kyle Tennant: Created page with "The patent holder claims that we, Hamilton Sundstrand Corp., infringed upon two of their patent designs, both for compressor bleed air control apparatuses and methods. One patent..."

User:Kyle Tennant

2011-04-04T14:40:51Z

Kyle Tennant: /* Homeworks */

== Case Reading Summaries ==
====The Purpose of Patents====
[[Case 1: Bonito Boats v. Thunder Craft, Inc. (1989)]] 
====Novelty and Nonobviousness====
[[Case 2: Hotchkiss v. Greenwood (1850)]] [[Case 3: A. & P. Tea Co. v. Supermarket Corp. (1950)]] [[Case 4: Lyon v. Bausch & Lomb Optical Co. (1955)]] [[Case 5: Graham v. John Deere (1966)]] [[Case 6: US v. Adams (1966)]] [[Case 7: Anderson's Black Rock, Inc. v. Pavement Co. (1969)]] [[Case 8: KSR International Co. v. Teleflex, Inc. (2007)]] 
====Patentable Subject Matter====
[[Case 9: Gottschalk v. Benson (1972)]] [[Case 10: Diamond v. Diehr (1981)]] [[Case 11: Arrhythmia Research Technology, Inc. v. Corazonix Corp. (1992)]] [[Case 12: State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998)]] [[Case 13: Bilski v. Kappos (2010)]]
====Statutory Bars====
[[Case 14: Egbert v. Lippmann (1881)]] [[Case 15: Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc. (1946)]] [[Case 16: D.L. Auld Co. v. Chroma Graphics Corp. (1983)]] [[Case 17: Elizabeth v. American Nicholson Pavement Company (1877)]] [[Case 18: Lough v. Brunswick Corp. (1996)]] [[Case 19: UMC Electronics Co. v. U.S. (1987)]] [[Case 20: Pfaff vs. Wells Electronics (1998)]] [[Case 21: Electric Storage Battery Co. v. Shimadzu (1939)]] [[Case 22: Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (1999)]] [[Case 23: Lorenz v. Colgate-Palmolive-Peet Co. (1948)]] [[Case 24: W.L. Gore & Associates, Inc. v. Garlock, Inc. (1983)]] [[Case 25: In re Carlson (1992)]] [[Case 26: In re Hall (1986)]]
====Infringement====
[[Case 27: CCS Fitness, Inc. v. Brunswick Corporation (2002)]] [[Case 28: Graver Tank & Mfg. Co. v. Linde Air Products Co. (1950)]] 
====Class Notes====
[[Notes from 3/9/2011]] 
[[Notes from 3/11/2011]]

== Homeworks ==
[[Homework 1: Clutch And Brake Assembly and Production Method]] [[Homework 2: Supplementary Patents and a Discussion of Patentability]] [[Homework 3: Examining Nonobviousness]] [[Homework 4: Defining Nonobviousness]] [[Homework 5: Nonobviousness Paper]] [[Homework 6: Patentable Subject Matter Paper]] [[Homework 7: In re Hall Supplementary Case]] [[Homework 8: Clear Example of Doctrine of Equivalents]] [[Homework 9: In-Class Case Study]]

Doctrine of Equivalents Case List

2011-04-03T17:02:09Z

Kyle Tennant:

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

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

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

Bill Goodwine

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

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

901444263

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

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

901471466

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

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

901330223

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

901316153

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

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

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

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

Gillian Allsup

901281608

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

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

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

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

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

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

901422128

*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

*

Homework 8: Clear Example of Doctrine of Equivalents

2011-03-31T19:10:50Z

Kyle Tennant: Created page with "Kustom Signals, Inc. v. Applied Concepts, Inc. 264 F.3d 1326 CAFC, Kansas (2001) Kustom Signals held a patent for a multimode traffic radar system which will show eit..."

Kustom Signals, Inc. v. Applied Concepts, Inc. 
264 F.3d 1326 
CAFC, Kansas (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.

User:Kyle Tennant

2011-03-31T18:51:38Z

Kyle Tennant: /* Homeworks */

== Case Reading Summaries ==
====The Purpose of Patents====
[[Case 1: Bonito Boats v. Thunder Craft, Inc. (1989)]] 
====Novelty and Nonobviousness====
[[Case 2: Hotchkiss v. Greenwood (1850)]] [[Case 3: A. & P. Tea Co. v. Supermarket Corp. (1950)]] [[Case 4: Lyon v. Bausch & Lomb Optical Co. (1955)]] [[Case 5: Graham v. John Deere (1966)]] [[Case 6: US v. Adams (1966)]] [[Case 7: Anderson's Black Rock, Inc. v. Pavement Co. (1969)]] [[Case 8: KSR International Co. v. Teleflex, Inc. (2007)]] 
====Patentable Subject Matter====
[[Case 9: Gottschalk v. Benson (1972)]] [[Case 10: Diamond v. Diehr (1981)]] [[Case 11: Arrhythmia Research Technology, Inc. v. Corazonix Corp. (1992)]] [[Case 12: State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998)]] [[Case 13: Bilski v. Kappos (2010)]]
====Statutory Bars====
[[Case 14: Egbert v. Lippmann (1881)]] [[Case 15: Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc. (1946)]] [[Case 16: D.L. Auld Co. v. Chroma Graphics Corp. (1983)]] [[Case 17: Elizabeth v. American Nicholson Pavement Company (1877)]] [[Case 18: Lough v. Brunswick Corp. (1996)]] [[Case 19: UMC Electronics Co. v. U.S. (1987)]] [[Case 20: Pfaff vs. Wells Electronics (1998)]] [[Case 21: Electric Storage Battery Co. v. Shimadzu (1939)]] [[Case 22: Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (1999)]] [[Case 23: Lorenz v. Colgate-Palmolive-Peet Co. (1948)]] [[Case 24: W.L. Gore & Associates, Inc. v. Garlock, Inc. (1983)]] [[Case 25: In re Carlson (1992)]] [[Case 26: In re Hall (1986)]]
====Infringement====
[[Case 27: CCS Fitness, Inc. v. Brunswick Corporation (2002)]] [[Case 28: Graver Tank & Mfg. Co. v. Linde Air Products Co. (1950)]] 
====Class Notes====
[[Notes from 3/9/2011]] 
[[Notes from 3/11/2011]]

== Homeworks ==
[[Homework 1: Clutch And Brake Assembly and Production Method]] [[Homework 2: Supplementary Patents and a Discussion of Patentability]] [[Homework 3: Examining Nonobviousness]] [[Homework 4: Defining Nonobviousness]] [[Homework 5: Nonobviousness Paper]] [[Homework 6: Patentable Subject Matter Paper]] [[Homework 7: In re Hall Supplementary Case]] [[Homework 8: Clear Example of Doctrine of Equivalents]]

Case 28: Graver Tank & Mfg. Co. v. Linde Air Products Co. (1950)

2011-03-25T15:35:19Z

Kyle Tennant: Created page with "Linde Air accused Graver of infringing their patent for electric welding processes and the flux used in them. The District Court held some claims invalid and others valid and inf..."

Linde Air accused Graver of infringing their patent for electric welding processes and the flux used in them. The District Court held some claims invalid and others valid and infringed; the CAFC ruled the invalid claims were valid, but this decision was overruled by the Supreme Court and the original decision of the District Court was reinstated. The Supreme Court's sole decision was whether the four flux claims were valid and infringed.

If the accused matter is clearly contained within the claims, then it infringes. But if patents only cover their literal definitions, then copyists could make minor, insignificant changes and avoid infringement. This form of piracy is most common; outright infringement is dull and useless. To combat this, the courts instituted the doctrine of equivalents. This doctrine means that a feature of an accused device infringes a claim "if it performs substantially the same function in substantially the same way to obtain the same result."

Case 27: CCS Fitness, Inc. v. Brunswick Corporation (2002)

2011-03-25T15:02:31Z

Kyle Tennant: Created page with "The CAFC heard a case in which Life Fitness, a division of Brunswick, was accused of infringing a patent held by CCS Fitness for an elliptical trainer. The CCS patent claimed a "..."

The CAFC heard a case in which Life Fitness, a division of Brunswick, was accused of infringing a patent held by CCS Fitness for an elliptical trainer. The CCS patent claimed a "reciprocating member," which the District Court in Colorado held applied only to a straight, unibody arm. Life Fitness' design incorporated a multiple-component, curved bar, which warranted summary judgment of noninfringement. Because the term "member" does not in itself exclude the use of a multi-component curved bar, and the patent claims do nothing to narrow the definition of the term, the CAFC overruled the District's ruling and remanded the case for further judgment. The District Court concluded that while the patent didn't specifically claim a straight bar only, it also did not specifically include curved, multibody arms, either; in fact, the patent illustrations depict a straight bar. However, the CAFC concluded that the connecting arms were essentially the same under the doctrine of equivalents. The reciprocating member in both machines performs the same function; thus, they are intrinsically the same feature. The CAFC says that infringement is a two-step process:
# The correct meaning and scope of the disputed term is determined by the court;
# The claims are compared to the accused device to determine whether the device exhibits all of the limitations of the claimed invention, whether literal or by equivalents.

Because Life Fitness could not prove that "member" was ambiguous enough not to include its component, the ruling is reversed. The ruling that "reciprocating member" did not pertain to the doctrine of equivalents is vacated, and the case remanded to determine infringement.

User:Kyle Tennant

2011-03-25T13:46:50Z

Kyle Tennant: /* Case Reading Summaries */

== Case Reading Summaries ==
====The Purpose of Patents====
[[Case 1: Bonito Boats v. Thunder Craft, Inc. (1989)]] 
====Novelty and Nonobviousness====
[[Case 2: Hotchkiss v. Greenwood (1850)]] [[Case 3: A. & P. Tea Co. v. Supermarket Corp. (1950)]] [[Case 4: Lyon v. Bausch & Lomb Optical Co. (1955)]] [[Case 5: Graham v. John Deere (1966)]] [[Case 6: US v. Adams (1966)]] [[Case 7: Anderson's Black Rock, Inc. v. Pavement Co. (1969)]] [[Case 8: KSR International Co. v. Teleflex, Inc. (2007)]] 
====Patentable Subject Matter====
[[Case 9: Gottschalk v. Benson (1972)]] [[Case 10: Diamond v. Diehr (1981)]] [[Case 11: Arrhythmia Research Technology, Inc. v. Corazonix Corp. (1992)]] [[Case 12: State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998)]] [[Case 13: Bilski v. Kappos (2010)]]
====Statutory Bars====
[[Case 14: Egbert v. Lippmann (1881)]] [[Case 15: Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc. (1946)]] [[Case 16: D.L. Auld Co. v. Chroma Graphics Corp. (1983)]] [[Case 17: Elizabeth v. American Nicholson Pavement Company (1877)]] [[Case 18: Lough v. Brunswick Corp. (1996)]] [[Case 19: UMC Electronics Co. v. U.S. (1987)]] [[Case 20: Pfaff vs. Wells Electronics (1998)]] [[Case 21: Electric Storage Battery Co. v. Shimadzu (1939)]] [[Case 22: Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (1999)]] [[Case 23: Lorenz v. Colgate-Palmolive-Peet Co. (1948)]] [[Case 24: W.L. Gore & Associates, Inc. v. Garlock, Inc. (1983)]] [[Case 25: In re Carlson (1992)]] [[Case 26: In re Hall (1986)]]
====Infringement====
[[Case 27: CCS Fitness, Inc. v. Brunswick Corporation (2002)]] [[Case 28: Graver Tank & Mfg. Co. v. Linde Air Products Co. (1950)]] 
====Class Notes====
[[Notes from 3/9/2011]] 
[[Notes from 3/11/2011]]

== Homeworks ==
[[Homework 1: Clutch And Brake Assembly and Production Method]] [[Homework 2: Supplementary Patents and a Discussion of Patentability]] [[Homework 3: Examining Nonobviousness]] [[Homework 4: Defining Nonobviousness]] [[Homework 5: Nonobviousness Paper]] [[Homework 6: Patentable Subject Matter Paper]] [[Homework 7: In re Hall Supplementary Case]]

Homework 7: In re Hall Supplementary Case

2011-03-23T03:57:16Z

Kyle Tennant: Created page with "In 1989, the District Court heard American Standard Inc. v. Pfizer Inc. American Standard held the patent for a bone implant coating that induced bone ingrowth by virtue of its p..."

In 1989, the District Court heard American Standard Inc. v. Pfizer Inc. American Standard held the patent for a bone implant coating that induced bone ingrowth by virtue of its porosity. They sued Pfizer for their line of PCA products which utilized the same principles. Because the patent was initially awarded, it is up to the defendants (Pfizer) to prove that it is invalid. A doctoral thesis was published June 14, 1968 detailing the same process; American Standard argued that the thesis, though written, wasn't published before the date of conception (May 24, 1968). The defense argued that the doctors who published the thesis conceived of the invention in 1967; the Court ruled that they did not sufficiently prove this. However, for other reasons (mainly prior discussions of porosity and other bodies of prior art), the patent was found invalid under obviousness.

User:Kyle Tennant

2011-03-23T00:45:24Z

Kyle Tennant: /* Homeworks */

== Case Reading Summaries ==
====The Purpose of Patents====
[[Case 1: Bonito Boats v. Thunder Craft, Inc. (1989)]] 
====Novelty and Nonobviousness====
[[Case 2: Hotchkiss v. Greenwood (1850)]] [[Case 3: A. & P. Tea Co. v. Supermarket Corp. (1950)]] [[Case 4: Lyon v. Bausch & Lomb Optical Co. (1955)]] [[Case 5: Graham v. John Deere (1966)]] [[Case 6: US v. Adams (1966)]] [[Case 7: Anderson's Black Rock, Inc. v. Pavement Co. (1969)]] [[Case 8: KSR International Co. v. Teleflex, Inc. (2007)]] 

====Patentable Subject Matter====
[[Case 9: Gottschalk v. Benson (1972)]] [[Case 10: Diamond v. Diehr (1981)]] [[Case 11: Arrhythmia Research Technology, Inc. v. Corazonix Corp. (1992)]] [[Case 12: State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998)]] [[Case 13: Bilski v. Kappos (2010)]]
====Statutory Bars====
[[Case 14: Egbert v. Lippmann (1881)]] [[Case 15: Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc. (1946)]] [[Case 16: D.L. Auld Co. v. Chroma Graphics Corp. (1983)]] [[Case 17: Elizabeth v. American Nicholson Pavement Company (1877)]] [[Case 18: Lough v. Brunswick Corp. (1996)]] [[Case 19: UMC Electronics Co. v. U.S. (1987)]] [[Case 20: Pfaff vs. Wells Electronics (1998)]] [[Case 21: Electric Storage Battery Co. v. Shimadzu (1939)]] [[Case 22: Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (1999)]] [[Case 23: Lorenz v. Colgate-Palmolive-Peet Co. (1948)]] [[Case 24: W.L. Gore & Associates, Inc. v. Garlock, Inc. (1983)]] [[Case 25: In re Carlson (1992)]] [[Case 26: In re Hall (1986)]] 

====Class Notes====
[[Notes from 3/9/2011]] 
[[Notes from 3/11/2011]]

== Homeworks ==
[[Homework 1: Clutch And Brake Assembly and Production Method]] [[Homework 2: Supplementary Patents and a Discussion of Patentability]] [[Homework 3: Examining Nonobviousness]] [[Homework 4: Defining Nonobviousness]] [[Homework 5: Nonobviousness Paper]] [[Homework 6: Patentable Subject Matter Paper]] [[Homework 7: In re Hall Supplementary Case]]

Case 26: In re Hall (1986)

2011-03-21T15:22:03Z

Kyle Tennant: Created page with "In this case, Foldi, a German scientist, wrote a thesis and submitted it to Freiburg University in Germany concerning subject matter pertinent to a patent application. The thesis..."

In this case, Foldi, a German scientist, wrote a thesis and submitted it to Freiburg University in Germany concerning subject matter pertinent to a patent application. The thesis was submitted in late 1977, and was available in the catalog to the general population of the university. The patent was rejected because the invention was available before February 27, 1979. The appellant claimed that by virtue of hazy bookkeeping records, the library could not prove that the thesis was available to the public before the critical date; in addition, he argued that one thesis available in one university in Germany does not constitute

Case 25: In re Carlson (1992)

2011-03-21T14:37:58Z

Kyle Tennant: Created page with "The CAFC here ruled on whether an invention made in a foreign country constituted prior art and thus rendered a design by Carlson for a dual-compartment bottle obvious in light o..."

The CAFC here ruled on whether an invention made in a foreign country constituted prior art and thus rendered a design by Carlson for a dual-compartment bottle obvious in light of prior art. When Carlson sued Revlon and Smiletote for infringement, they presented three pieces of information not available to the patent examiner:
# a copyright issued in Germany before Carlson applied for a patent;
# a design patent issued to an Italian for a dual-compartment bottle; and
# a magazine article which provides a description of the cap used in the design at issue.

The court held that the copyright issued in Germany still counts as a patent under 102 and is included in the body of prior art. Carlson argued that there is a slight distinction between sections (a) and (d) of 102 that would render a German copyright inapplicable as prior art to American patent applications. He also said that the copyright was not fully disclosed since the copyright existed in a foreign country only. The Court ruled that the copyright didn't have to be well-known in order to be available to the public. In addition, the court asserted that a hypothetical person is assumed to know all of the prior art in determining patentability; whether the applicant knows the prior art or not is immaterial. Finally, just because his design was symmetrical where the prior art described assymetrical components does not render his design nonobvious; anybody who designs such things could have seen the potential for symmetry in the prior art.

User:Kyle Tennant

2011-03-21T13:48:39Z

Kyle Tennant: /* Statutory Bars */

== Case Reading Summaries ==
====The Purpose of Patents====
[[Case 1: Bonito Boats v. Thunder Craft, Inc. (1989)]] 
====Novelty and Nonobviousness====
[[Case 2: Hotchkiss v. Greenwood (1850)]] [[Case 3: A. & P. Tea Co. v. Supermarket Corp. (1950)]] [[Case 4: Lyon v. Bausch & Lomb Optical Co. (1955)]] [[Case 5: Graham v. John Deere (1966)]] [[Case 6: US v. Adams (1966)]] [[Case 7: Anderson's Black Rock, Inc. v. Pavement Co. (1969)]] [[Case 8: KSR International Co. v. Teleflex, Inc. (2007)]] 

====Patentable Subject Matter====
[[Case 9: Gottschalk v. Benson (1972)]] [[Case 10: Diamond v. Diehr (1981)]] [[Case 11: Arrhythmia Research Technology, Inc. v. Corazonix Corp. (1992)]] [[Case 12: State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998)]] [[Case 13: Bilski v. Kappos (2010)]]
====Statutory Bars====
[[Case 14: Egbert v. Lippmann (1881)]] [[Case 15: Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc. (1946)]] [[Case 16: D.L. Auld Co. v. Chroma Graphics Corp. (1983)]] [[Case 17: Elizabeth v. American Nicholson Pavement Company (1877)]] [[Case 18: Lough v. Brunswick Corp. (1996)]] [[Case 19: UMC Electronics Co. v. U.S. (1987)]] [[Case 20: Pfaff vs. Wells Electronics (1998)]] [[Case 21: Electric Storage Battery Co. v. Shimadzu (1939)]] [[Case 22: Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (1999)]] [[Case 23: Lorenz v. Colgate-Palmolive-Peet Co. (1948)]] [[Case 24: W.L. Gore & Associates, Inc. v. Garlock, Inc. (1983)]] [[Case 25: In re Carlson (1992)]] [[Case 26: In re Hall (1986)]] 

====Class Notes====
[[Notes from 3/9/2011]] 
[[Notes from 3/11/2011]]

== Homeworks ==
[[Homework 1: Clutch And Brake Assembly and Production Method]] [[Homework 2: Supplementary Patents and a Discussion of Patentability]] [[Homework 3: Examining Nonobviousness]] [[Homework 4: Defining Nonobviousness]] [[Homework 5: Nonobviousness Paper]] [[Homework 6: Patentable Subject Matter Paper]]

User:Kyle Tennant

2011-03-21T13:48:23Z

Kyle Tennant: /* Statutory Bars */

== Case Reading Summaries ==
====The Purpose of Patents====
[[Case 1: Bonito Boats v. Thunder Craft, Inc. (1989)]] 
====Novelty and Nonobviousness====
[[Case 2: Hotchkiss v. Greenwood (1850)]] [[Case 3: A. & P. Tea Co. v. Supermarket Corp. (1950)]] [[Case 4: Lyon v. Bausch & Lomb Optical Co. (1955)]] [[Case 5: Graham v. John Deere (1966)]] [[Case 6: US v. Adams (1966)]] [[Case 7: Anderson's Black Rock, Inc. v. Pavement Co. (1969)]] [[Case 8: KSR International Co. v. Teleflex, Inc. (2007)]] 

====Patentable Subject Matter====
[[Case 9: Gottschalk v. Benson (1972)]] [[Case 10: Diamond v. Diehr (1981)]] [[Case 11: Arrhythmia Research Technology, Inc. v. Corazonix Corp. (1992)]] [[Case 12: State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998)]] [[Case 13: Bilski v. Kappos (2010)]]
====Statutory Bars====
[[Case 14: Egbert v. Lippmann (1881)]] [[Case 15: Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc. (1946)]] [[Case 16: D.L. Auld Co. v. Chroma Graphics Corp. (1983)]] [[Case 17: Elizabeth v. American Nicholson Pavement Company (1877)]] [[Case 18: Lough v. Brunswick Corp. (1996)]] [[Case 19: UMC Electronics Co. v. U.S. (1987)]] [[Case 20: Pfaff vs. Wells Electronics (1998)]] [[Case 21: Electric Storage Battery Co. v. Shimadzu (1939)]] [[Case 22: Abbott Laboratories v. Geneva Pharmaceuticals, Inc. (1999)]] [[Case 23: Lorenz v. Colgate-Palmolive-Peet Co. (1948)]] [[Case 24: W.L. Gore & Associates, Inc. v. Garlock, Inc. (1983)]] [[Case 25: In re Carlson (1992)]] [[In re Hall (1986)]] 

====Class Notes====
[[Notes from 3/9/2011]] 
[[Notes from 3/11/2011]]

== Homeworks ==
[[Homework 1: Clutch And Brake Assembly and Production Method]] [[Homework 2: Supplementary Patents and a Discussion of Patentability]] [[Homework 3: Examining Nonobviousness]] [[Homework 4: Defining Nonobviousness]] [[Homework 5: Nonobviousness Paper]] [[Homework 6: Patentable Subject Matter Paper]]

Homework 6: Patentable Subject Matter Paper

2011-03-21T13:44:31Z

Kyle Tennant: Created page with "In order to determine the patentability of a process, let’s first turn to the formal definition of a process offered in Section 100(b) of the U.S. Code under Title 35: “a ‘..."

In order to determine the patentability of a process, let’s first turn to the formal definition of a process offered in Section 100(b) of the U.S. Code under Title 35: “a ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” In Cochrane, as cited by Diehr, a process was further described as “an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.” Note that these definitions are not descriptive of any process, but only those which are patentable. 

Now, how does one determine whether a process is indeed a “process” under patent law? The first step is to consider what the claims of the patent application are. In several cases, the applicants attempted to claim inventions which were by definition unpatentable. The court system has understood the U.S. Code to exclude three categories from being patented: laws of nature, physical phenomena, and abstract ideas. These exceptions, though not included in the written text, are in keeping with the spirit of novelty and utility found in the code. Thus, if an application amounts to claiming one of these principles by itself, then the claim is unpatentable. 

This is not to say that any patent containing a mathematical formula or other fundamental principle is unpatentable. If the mathematical formula is part of a larger process and the applicant(s) seek(s) the entire process as an invention, then the process may indeed be patentable provided it complies with the other standards of patentability - novelty, nonobviousness, etc. This is the second step: if a mathematical formula or other law of nature is present, are there other substantial steps claimed in conjunction with it? One must be careful here, however, because if the application claims any use of the formula for any purpose, or if the other steps in the process are trivial and meant solely to frame the formula, then the invention is not patentable. 

Special consideration must also be given to business practices and computer programs. While neither article is expressly forbidden by legislature (indeed, business methods are specifically mentioned in Section 273), it is much harder to prove patentability for these two types of work. Business methods generally do not produce a transformation of material or a function as in a machine, and computer programs often are simply mathematical algorithms, which amount to fundamental laws of nature. Patentability for computer programs is shown in the manipulation of data to produce some new result. In general, as stated in State Street, business methods should not be approved or barred for being “business methods,” but rather should be judged like any other process.
In general, it is not advisable to categorize an invention as one of a type of works, be it process, machine, or otherwise. Instead, care should be taken to ascertain its practical utility; this utility is proved in many cases by the production of a “useful, concrete, and tangible result.” 

In summary, a process is patentable if (1) it claims a series of actions which produce a real, tangible, and useful product, action, or piece of information; (2) it is tied to a particular machine; (3) it transforms something into something else; and/or (4) if claiming a formula or computer program, it does so in conjunction with other steps that together meet the criteria for a process. Note that a patentable process does not have to satisfy all 4 criteria; part of the difficulty the courts have had in this area stems from their rigid misapplication of one standard which narrowly defines a “process.” The verbiage of the code is quite broad so as to encourage a wide range of patentable subject matter. 

The policy dictating patentable subject matter has been shaped by a number of factors. First, consider the exclusion of laws of nature, physical phenomena, and abstract ideas. These principles amount to general knowledge that better serve as such than as the exclusive right of one person; they are fundamental “first things” upon which discovery and innovation are based. The point of patents is to promote science and the useful arts; if mathematical formulae, basic laws of nature, natural scientific discoveries, or abstract ideas (like, for instance, hedging risk) were patentable, then such patents would be diametrically opposed to this goal. The progress of science would be retarded by the fact that one person had the rights to something so fundamental. In Gottschalk, the inventors sought to patent a method for converting BCD numbers to pure binary; this amounted to attempting to patent a mathematical formula which should by nature belong to the public. This type of knowledge by necessity must belong to no one so that it can belong to everyone. 

Secondly, it is inappropriate to consider aspects of a patent that utilizes these principles apart from the rest of the claims. In Diehr, the function of the computer was separated from the traditional methods of creating molded rubber pieces. This ruling was confirmed in Arrythmia Research, in which a process for detecting v-tach in heart attack victims was patented. In both cases, the use of a computer program was claimed only in conjunction with the rest of the steps. One cannot separate a claim into old and new parts and ignore the old stuff when trying to determine patentability. Indeed, this method would preclude large numbers of patentable processes where the individual parts are well known and not new. However, questions of novelty are a separate matter from questions of patentable subject matter. 

Thirdly, policy has been shaped by changes both in the realm of scientific progress and in the speed with which it occurs. The 1952 Patent Act did not foresee the rise of computers, nor the rapid pace with which they are improved today. Other fields like business have also seen a paradigm shift: many businesses today, such as Accenture and Price Waterhouse Cooper, almost exclusively market business processes or financial methods instead of a tangible product like a plow or coated glass. As innovation drives technology and business forward, it becomes necessary to redefine patentability and processes to reflect modern interpretations of such terms. Outdated language could well have precluded all computer programs from being patentable; however, updates necessarily move the law to keep up with the state of the art. This is why the court system has stressed that the words in the law be interpreted in their “ordinary, contemporary, common meaning.” [cf. Diehr, Bilski] The perennial challenge of patent law becomes more difficult: the Information Age has enabled more and more individuals to innovate and seek compensation for their efforts. Thus, the problem arises once again: where should the line be drawn between encouraging innovation and discouraging monopolies? 

This line has been sketched by a number of cases since the 1970s. Benson et al. filed for a patent for converting binary coded decimal numbers into pure binary numbers in a method not specific to a certain application or apparatus. They attempted to claim any use of their system in a general-purpose digital computer. The Supreme Courted granted certiorari to determine whether or not the claim constituted a "process" under U.S. patent law. The claims in question are algorithms, or procedures by which a computer may solve a mathematical problem. In this case, the algorithm converts numbers from one form to the other. 

The Court did not say that a process is never patentable if it either does not transform an article or is not tied to a particular machine. Nor did it say that no process can be patented for a computer. Nor was the Court meaning to freeze patents and ignore the advent of new electronic technology. Rather, the Court ruled that the formula used in this patent has no application outside of its connection to a computer. It is not a transformation of material, nor is the algorithm a new or useful application, nor is the method separable from its mathematical formula. Thus, if the Court granted this patent, it would for all intents and purposes be patenting a scientific law. 

Ten years later, the Court heard a case in which Diamond and his crew filed a petition for a patent that would mold raw rubber into precise shapes. This process had been difficult in the past because of the uncertainty surrounding the proper curing time. This uncertainty stemmed from the fact that determining the temperature inside the molding press was problematic. The cure time is related to the temperature by a known mathematical formula; the respondents developed a system by which the temperature inside the press was continuously fed into a computer program that would automatically open the press at the right time. They were at first denied, but the court later held that they were in fact entitled to a patent. 

The examiner initially denied the patent because he believed the use of a computer negated patentability. However, just because a computer is involved does not mean the subject isn't patentable. Furthermore, the respondents were not looking to patent a mathematical formula; rather, they sought to use a mathematical formula in conjunction with other steps to solve a problem which had existed in the process of making rubber; they were using the formula as a tool to improve an existing method. In Benson, the mathematical formula was solely for use in a digital computer, and the Court treated it as a fundamental law of nature. Likewise in Flook, the claim was not for a greater process of determining values or gathering data, but solely for a mathematical formula for an "alarm limit." Thus, that claim was not patentable. In the current case, the patent is not only for the mathematical formula, but for all the other steps taken in the process. Patentability, at least for computer programs, lies in the contribution of the program to a larger process. 

A similar conclusion was reached in 1992. Arrhythmia Research filed a plea to invalidate a patent belonging to Michael Simson. The case was heard in the CAFC. Simson's invention charted the electrical signals of the human heart to certain functions by use of electrocardiographs. Heart attack victims are vulnerable to an arrhythmia know as ventricular tachycardia, which may be detected by the use of an EKG. Simson, a cardiologist, patented a way by which a person's vulnerability to such an arrhythmia could be determined.
The issue of patentability arose from the fact that a computer model calculated several of the values used in the patent, utilizing a number of natural laws and algorithms. The District Court held that this patent was invalid due to a lack of statutory subject matter. The Appeals Court found that the Simson material was analogous to the Diehr material in that the Simson patent did not seek the exclusive rights to the formula itself, but rather the formula in conjunction with all the other steps which helped identify high-risk patients. The Appellate Court sent the case back to the District Court so that matter of infringement could be determined. 

In 1998, the CAFC decided a case in which Signature Financial Group appealed the decision that their patent for a financial services program was invalid due to non-statutory subject matter. The patent was for a data processing system which provided mutual fund account support for Signature's clients. The system, termed Hub and Spoke, pooled mutual funds, or spokes, together into a single portfolio, or hub, in a partnership. State Street and Signature had been negotiating terms for the use of Hub and Spoke; State Street, upon the dissolution of negotiations, filed a declaratory judgment action stating that the patent was invalid. The Appellate Court had to determine whether the District Court was correct in issuing a summary judgment on the case; that is, whether there were any questions of the facts which would require a trial to determine the material fact of the case. They found that State Street was not entitled to summary judgment because the patent was, in fact, valid and directed to statutory subject matter. 

As before, the patent was filed not for the mathematical formulae, but for the entire system which utilized the formulae, specifically the computer which was designed to perform these functions. Since the patent was filed for the machine, it is therefore valid since it pertains to statutory subject matter. In this case, it is not the formula but the machine or application which is protected by the patent. In addition, the District Court cited the broadness of the patent as a means of rendering it unpatentable. However, this decision falls under the regulation of sections 102, 103, and 112, not 101. Broadness does not preclude patentability. 

Finally, in 2010, the Supreme Court found in Bilski that hedging risk, a business practice, and a method for doing so in the energy market were unpatentable. They agreed with the CAFC, but disapproved of the method in which it determined this ruling. In determining whether a process is patentable, the "machine or transformation" test is not the only method. Doing so errs in two ways: it allows the court to put limits and conditions on the laws not actually disclosed in the legislation, and it does not interpret the meaning of the legislation in an ordinary, contemporary way. Saying that a process must be related to a machine or transformation of an article does not assign a normal, common meaning to the word "process." In addition, the use of the word "process" in 101 does not exclude all business methods from this protection. In fact, some of the verbiage implies that business methods may be patented: for instance, the permissible defense of prior use to argue against infringement implies that business methods may be patented. However, another section (273) explicitly states that business methods are included in the general definition of "method."
Be that as it may, the claims at issue remained unpatentable. One claim is for hedging risk, and the other is for doing so in the energy market. According to historical precedent, neither claim is patentable. Some of the claims describe abstract ideas and the mathematical formulae that quantify them; the rest indicate meager attempts to add to the abstract idea by explaining hedging and how certain pertinent information may be determined. This required no new rulings or interpretations on the Court's part: the prior rulings and the wording of 101 serve to effectively preclude the claims in this case. Though the machine-or-transformation test has been shown not to be a definitive test, the Court does not take issue with the Federal Court attempting to define a test so long as it does not contradict the laws or prior rulings. 

While the courts have struggled to define what is patentable and what is not, it is clear that the matter at hand is blurred by the evolution of technology, business practice, and invention itself. As we enter a modern, digital age, wording like “tangible results” takes on a different meaning. Rather than being a physical object we touch, processes often produce information, recommendations, or guidelines for actions, decisions, and so on. We are in the midst of an Information Age in which new products and inventions are increasingly found in a digital, mental, or otherwise intangible realm. In my view, the court system, while acting within the letter of the law, has been largely unfair to business methods and technological innovations. While I agree that some cases, such as Benson, were ruled correctly, I fear that the precedent which has been set is too narrow to properly accommodate, or indeed even acknowledge, the progress which has been made in these fields. Business itself is now a business, and computers are revolutionizing the way we interact, learn, play, and conduct our daily lives. 

Perhaps, however, it is necessary for business methods and technological advances to be held to a higher standard. Apple’s iPad, for instance, was on market for 14 months before the release today of the iPad 2.0, and it was barely three years ago that the business world realized its excessive, irresponsible method of conducting finances was akin to building castles in the sky. If Apple had sole rights to MultiTouch technology, then tablets like Motorola’s Xoom (arguably the result of reverse engineering the iPad 1.0) wouldn’t push the art forward. Yet, if Apple was able to patent MultiTouch technology, it would be compelled to fully disclose its method, which would add to the source of knowledge available to other companies. Decisions, decisions. 

My proposal is this. Processes are patentable as long as they provide a transformation of matter, are connected in a significant way to a machine, or develop new information which is not the sole output of a law of nature. Business methods should not be subject to alternative tests because they are business-related; this is actually the current standard found in Bilski. However, computer programs should be patentable not just in conjunction with a process (technological in Arrhythmia, manufacturing in Diehr, and business in State Street), but also if the program provides a new function for the device in which it operates (like MultiTouch) or offers a demonstrable advantage over previous computer methods of achieving the same result (e.g., updated operating systems). Many computer programs can’t and shouldn’t be oversimplified as merely digital expressions of an algorithm. They should be treated more like manufacturing processes: if it does the same thing better, more quickly, or more efficiently, then it’s patentable.

Homework 5: Nonobviousness Paper

2011-03-21T13:42:50Z

Kyle Tennant:

The U.S. Code sets forth a series of qualifications concerning patents, patentability, and all that these terms imply in a series of sections under Title 35. The guidelines for nonobviousness may be found under Section 103, which states that:
[a] patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 

There are several guidelines to determine what is obvious and what is not. Primary consideration must be given to determining the prior art. This means researching the previous inventions which led to the ability to create the current one and assessing how they differ from the new creation. One must also consider the ordinary level of skill in the art; this is necessary to apply the standard outlined in 103 effectively. 

Once these fundamental considerations have been determined, there are other ways to further establish nonobviousness. If the invention enjoys commercial popularity, then it is likely a new invention which the public has not seen before and in which they find a useful improvement over prior art. Furthermore, if the invention satisfies a longstanding, as-yet-unmet need, then its composition is likely such that it is not evident to someone with ordinary skill in the art. In the same vein, if many others have striven to create the same device or process and have been unsuccessful, then the way in which the functionality of such an invention is achieved is enough to justify the issue of a patent. 

In short, here are a series of questions which can be used to determine patentability under consideration of nonobviousness. What is actually different about the invention, or, how exactly does it differ from the prior art? Is this (are these) difference(s) within the scope of prior art? Is the invention more than a simple combination of previous inventions, which would be obvious to a person with normal skill in the art? Has the invention sold well? Is there a demonstrated history of individuals attempting to create this invention, yet failing? If the answer to all of these questions is yes, then the invention is likely nonobvious. 

The purpose of patents is to reward inventors who make significant contributions and advancements to science and the useful arts while at the same time ensuring that these inventions and knowledge may be effectively disseminated to the wider skilled community. In this way, inventors are provided with an incentive to create new works, and the progress of science and other useful arts is encouraged. 

Nonobviousness is applied largely to mitigate the number of patents issued to trivial inventions. In the case of A. & P. Tea Co. v. Supermarket Corp., the Supreme Court proclaimed that simple combinations of old inventions are gadgets, not new inventions. Patents are meant to be granted to those who deserve them, who have contributed to the advancement of human living. The opinion of the court said as much. “The invention, to justify a patent, had to serve the ends of science - to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge.”2 If care is taken to grant patents only to those who deserve it, then Congress is fulfilling its constitutional obligation more nearly and under the restrictions placed on it by that document. 

In order for this requirement to become part of the Code inspired by the Constitution, Congress passed the Patent Act of 1952. Yet this legislation added nothing new to the law or its application: rather, “[t]he Act describes itself as a codification of existing law, as it certainly is in the sense that the structure of the system remains unchanged.”3 Thus, the spirit of the original law as defined by the Supreme Court in earlier cases is preserved within the written code itself. 

Graham v. John Deere demonstrates a delicate line between rewarding inventors and simultaneously holding them to a high standard. Technology progresses, often rapidly, and it is counterproductive to deliberate and rely on judiciary avenues to determine the obviousness of individual applications. However, if the standard is too high, then nothing will be considered an invention, since nearly all inventions are combinations of prior art. If the standard is too low, then patents become trivial and divert from their original purpose. Because of this, nonobviousness must be clearly defined to assist the patent office in its decisions; “strict observance of the requirements laid down here will result in that uniformity and definiteness which Congress called for in the 1952 Act.”4 

It is important to remember the primacy of some methods of determining nonobviousness. The scope of prior art, the differences between prior art and the invention, and the ordinary skill are paramount to the obviousness of the invention. The secondary considerations listed above are just that: secondary. A “combination [that has] filled a long felt want and has enjoyed commercial success... without invention will not [merit] patentability.”5 

The U.S. Constitution gives to Congress the ability “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”6 Soon after this document was written, in 1790, the Patent Act granted the power to issue patents to the Secretaries of State and War, as well as the Attorney General. In some of his post-Constitutional writings, Thomas Jefferson transitions from a staunch opponent of monopolies to an advocate of limited monopolies for inventors, artists, and writers. He ultimately viewed patents as a way to encourage inventors and ingenuity. 

The concept of nonobviousness first appeared in some form in 1850, in the case Hotchkiss v. Greenwood. Called the “flash of genius” standard, this model necessitated a demonstrable inventive step in order for a combination of previously existing materials (in this case, a doorknob and latching mechanism) to be considered new. In this case, the court held that the Hotchkiss product was not an invention. The improvement takes no ingenuity or invention, but rather is an adaptation of an existing process which makes it almost entirely the same as before. Instead of inventing a new doorknob, he rather had mechanically altered an existing one. 

100 years later, in A. & P. Tea Co. v. Supermarket Corp., the concept of nonobviousness was further elaborated. Although the United States had awarded patents to new combinations of old parts before, it had failed to really define what criteria should be assigned to such combinations in order to ascertain their patentability. The Court proposed the following test: combinations of old things may only be patentable when the whole is in some way greater than the sum of its parts. In the case of the counter extension and accompanying features, the Court ruled that neither lower court had discovered a new function derived as a result of the combination of other inventions. Because the patent did not contribute any new knowledge, it was invalid. The Court emphasized that Congress does not have, in its power, the ability to grant patents as freely as it wishes. The power to grant patents is qualified by restricting the award of patents only to those inventions which promotes the progress of science and the useful arts. 

In 1952, Congress passed an amendment to the original Patent Act. This alteration, among other things, introduced the verbiage of nonobviousness, thus officially embedding this concept into the U.S. Code. 

In 1955, the courts again visited the concept in Lyon v. Bausch & Lomb. The ruling in this case further improved on the Hotchkiss v. Greenwood decision by saying that improvements must demonstrate more ingenuity than an average mechanic with an average knowledge of the subject; in other words, the combination must be nonobvious to someone well versed in the art. However, the ruling stressed that legislatures, who had been criticized in earlier statements such as the Supermarket Corp. ruling as being too willing to grant patents, must be free to follow the fundamental rules of the law without the waters getting muddied by subsequent court decisions. 

Eleven years later, in the landmark Graham v. John Deere, the Court found that the petitioners' arguments were unfounded and that there were no aspects of the patent, an improved plow mechanism, which were nonobvious. The aspects of the patent which were considered to be inventions were in fact part of the body of prior art and thus were not new. The features which the petitioners claim as new do not in fact result in an advancement of the art; thus, the design is not an invention. 

In the same year, in U.S. v. Adams, the government presented 24 pieces of evidence aimed at proving the Adams battery patent was invalid due to lack of novelty and nonobviousness. These articles strove to show that the materials comprising the anode and cathode of the battery were not new and had been used in batteries before. However, the battery patent claimed novelty in the use of water as the electrolyte. The arguments presented by the government were inapplicable to the matter of the patentability of the battery. The battery was determined to be both new and nonobvious.
The ruling in Anderson's Black Rock, Inc. v. Pavement Co. further emphasized the importance of the inventive step. The addition of the heater on the side of the vehicle is the main point of contention. The owner of the patent claims that prior heaters were used primarily for patchwork, whereas this heater is to be used for continuous heating of the previous strip so as to prevent cold joints. The District Court found that the new design was not an invention, citing that the chassis was merely a combination of prior art. The Court of Appeals ruled that it was, in fact, an invention. The Supreme Court reversed this ruling, citing that the patent was invalid due to the fact that it was obvious. 

Finally, in KSR International Co. v. Teleflex, Inc., the court built upon the decisions made in Adams. The Adams ruling showed that just because the parts used in a combination were known in prior art is not enough to prove obviousness. Indeed, if this were enough, the bar for determining patentability would be set impossibly high. The “teaching, showing, or motivating” method of judgment, which states that an object is obvious if the prior art points to its development as a natural progression, is not in itself inconsistent with the Graham recommendations. However, when it is used as a hard-and-fast rule instead of an insight or suggestion, it in fact detracts from the purpose of patents. One claim was found to be obvious, but the rest of the claims were undecided. The case was sent back to the CAFC for further judgment.
 
The difficulty in determining nonobviousness derives from the fact that both its definition and the current methods of evaluation are completely arbitrary and subjective. What is a mechanic with ordinary skill in the art? When does the inventive step occur? How can one quantify a whole greater than the sum of its parts? 

It seems clear that the difficulty arising from nonobviousness since its introduction 60 years ago stems from its vague, imprecise definition. Perhaps a better definition which does not refer to a chimeric “mechanic with ordinary skill” would provide a better platform upon which to place the standard. It could read: “nonobviousness is a quality exhibited by a device, process, practice, digital work, or composition of matter characterized by a new method, structure, production, or intended function developed in whole or in part by utilizing an innovative design; the combination of previous inventions must demonstrate some quality not found in the previous inventions individually.” 

This definition is more useful for a number of reasons. First of all, it covers several different inventive creations, from new machines to new business practices to new computer programming. It also encompasses a variety of ways in which a previous invention or set of inventions may be modified into a new, patentable product. In the Lyon case, heating the lens and coating throughout the application process was the nonobvious step. In Adams, it was not new to try a different liquid as an electrolyte, but it was new and nonobvious to use water to essentially activate a battery. In both these cases, the combination exhibits a new feature or behavior not found in its constituent parts. 

The definition also screens out all the cases treated above. Hotchkiss’ doorknob was a new structure with new material, but it was not innovative. The same goes for the counter widget from the A. & P. case. Graham’s developments, though “new,” were not demonstrative of a new function not achieved by the individual parts which formed his plow; the same goes for the heater in the Anderson case. Thus, this definition fully embodies all that the Courts have ruled in regards to nonobviousness.

Homework 5: Nonobviousness Paper

2011-03-21T13:41:32Z

Kyle Tennant: Created page with "The U.S. Code sets forth a series of qualifications concerning patents, patentability, and all that these terms imply in a series of sections under Title 35. The guidelines for n..."

The U.S. Code sets forth a series of qualifications concerning patents, patentability, and all that these terms imply in a series of sections under Title 35. The guidelines for nonobviousness may be found under Section 103, which states that:
[a] patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 
There are several guidelines to determine what is obvious and what is not. Primary consideration must be given to determining the prior art. This means researching the previous inventions which led to the ability to create the current one and assessing how they differ from the new creation. One must also consider the ordinary level of skill in the art; this is necessary to apply the standard outlined in 103 effectively.
Once these fundamental considerations have been determined, there are other ways to further establish nonobviousness. If the invention enjoys commercial popularity, then it is likely a new invention which the public has not seen before and in which they find a useful improvement over prior art. Furthermore, if the invention satisfies a longstanding, as-yet-unmet need, then its composition is likely such that it is not evident to someone with ordinary skill in the art. In the same vein, if many others have striven to create the same device or process and have been unsuccessful, then the way in which the functionality of such an invention is achieved is enough to justify the issue of a patent.
In short, here are a series of questions which can be used to determine patentability under consideration of nonobviousness. What is actually different about the invention, or, how exactly does it differ from the prior art? Is this (are these) difference(s) within the scope of prior art? Is the invention more than a simple combination of previous inventions, which would be obvious to a person with normal skill in the art? Has the invention sold well? Is there a demonstrated history of individuals attempting to create this invention, yet failing? If the answer to all of these questions is yes, then the invention is likely nonobvious. 
The purpose of patents is to reward inventors who make significant contributions and advancements to science and the useful arts while at the same time ensuring that these inventions and knowledge may be effectively disseminated to the wider skilled community. In this way, inventors are provided with an incentive to create new works, and the progress of science and other useful arts is encouraged. 
Nonobviousness is applied largely to mitigate the number of patents issued to trivial inventions. In the case of A. & P. Tea Co. v. Supermarket Corp., the Supreme Court proclaimed that simple combinations of old inventions are gadgets, not new inventions. Patents are meant to be granted to those who deserve them, who have contributed to the advancement of human living. The opinion of the court said as much. “The invention, to justify a patent, had to serve the ends of science - to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge.”2 If care is taken to grant patents only to those who deserve it, then Congress is fulfilling its constitutional obligation more nearly and under the restrictions placed on it by that document. 
In order for this requirement to become part of the Code inspired by the Constitution, Congress passed the Patent Act of 1952. Yet this legislation added nothing new to the law or its application: rather, “[t]he Act describes itself as a codification of existing law, as it certainly is in the sense that the structure of the system remains unchanged.”3 Thus, the spirit of the original law as defined by the Supreme Court in earlier cases is preserved within the written code itself. 
Graham v. John Deere demonstrates a delicate line between rewarding inventors and simultaneously holding them to a high standard. Technology progresses, often rapidly, and it is counterproductive to deliberate and rely on judiciary avenues to determine the obviousness of individual applications. However, if the standard is too high, then nothing will be considered an invention, since nearly all inventions are combinations of prior art. If the standard is too low, then patents become trivial and divert from their original purpose. Because of this, nonobviousness must be clearly defined to assist the patent office in its decisions; “strict observance of the requirements laid down here will result in that uniformity and definiteness which Congress called for in the 1952 Act.”4 
It is important to remember the primacy of some methods of determining nonobviousness. The scope of prior art, the differences between prior art and the invention, and the ordinary skill are paramount to the obviousness of the invention. The secondary considerations listed above are just that: secondary. A “combination [that has] filled a long felt want and has enjoyed commercial success... without invention will not [merit] patentability.”5 
The U.S. Constitution gives to Congress the ability “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”6 Soon after this document was written, in 1790, the Patent Act granted the power to issue patents to the Secretaries of State and War, as well as the Attorney General. In some of his post-Constitutional writings, Thomas Jefferson transitions from a staunch opponent of monopolies to an advocate of limited monopolies for inventors, artists, and writers. He ultimately viewed patents as a way to encourage inventors and ingenuity. 
The concept of nonobviousness first appeared in some form in 1850, in the case Hotchkiss v. Greenwood. Called the “flash of genius” standard, this model necessitated a demonstrable inventive step in order for a combination of previously existing materials (in this case, a doorknob and latching mechanism) to be considered new. In this case, the court held that the Hotchkiss product was not an invention. The improvement takes no ingenuity or invention, but rather is an adaptation of an existing process which makes it almost entirely the same as before. Instead of inventing a new doorknob, he rather had mechanically altered an existing one. 
100 years later, in A. & P. Tea Co. v. Supermarket Corp., the concept of nonobviousness was further elaborated. Although the United States had awarded patents to new combinations of old parts before, it had failed to really define what criteria should be assigned to such combinations in order to ascertain their patentability. The Court proposed the following test: combinations of old things may only be patentable when the whole is in some way greater than the sum of its parts. In the case of the counter extension and accompanying features, the Court ruled that neither lower court had discovered a new function derived as a result of the combination of other inventions. Because the patent did not contribute any new knowledge, it was invalid. The Court emphasized that Congress does not have, in its power, the ability to grant patents as freely as it wishes. The power to grant patents is qualified by restricting the award of patents only to those inventions which promotes the progress of science and the useful arts. 
In 1952, Congress passed an amendment to the original Patent Act. This alteration, among other things, introduced the verbiage of nonobviousness, thus officially embedding this concept into the U.S. Code. 
In 1955, the courts again visited the concept in Lyon v. Bausch & Lomb. The ruling in this case further improved on the Hotchkiss v. Greenwood decision by saying that improvements must demonstrate more ingenuity than an average mechanic with an average knowledge of the subject; in other words, the combination must be nonobvious to someone well versed in the art. However, the ruling stressed that legislatures, who had been criticized in earlier statements such as the Supermarket Corp. ruling as being too willing to grant patents, must be free to follow the fundamental rules of the law without the waters getting muddied by subsequent court decisions. 
Eleven years later, in the landmark Graham v. John Deere, the Court found that the petitioners' arguments were unfounded and that there were no aspects of the patent, an improved plow mechanism, which were nonobvious. The aspects of the patent which were considered to be inventions were in fact part of the body of prior art and thus were not new. The features which the petitioners claim as new do not in fact result in an advancement of the art; thus, the design is not an invention. 
In the same year, in U.S. v. Adams, the government presented 24 pieces of evidence aimed at proving the Adams battery patent was invalid due to lack of novelty and nonobviousness. These articles strove to show that the materials comprising the anode and cathode of the battery were not new and had been used in batteries before. However, the battery patent claimed novelty in the use of water as the electrolyte. The arguments presented by the government were inapplicable to the matter of the patentability of the battery. The battery was determined to be both new and nonobvious.
The ruling in Anderson's Black Rock, Inc. v. Pavement Co. further emphasized the importance of the inventive step. The addition of the heater on the side of the vehicle is the main point of contention. The owner of the patent claims that prior heaters were used primarily for patchwork, whereas this heater is to be used for continuous heating of the previous strip so as to prevent cold joints. The District Court found that the new design was not an invention, citing that the chassis was merely a combination of prior art. The Court of Appeals ruled that it was, in fact, an invention. The Supreme Court reversed this ruling, citing that the patent was invalid due to the fact that it was obvious. 
Finally, in KSR International Co. v. Teleflex, Inc., the court built upon the decisions made in Adams. The Adams ruling showed that just because the parts used in a combination were known in prior art is not enough to prove obviousness. Indeed, if this were enough, the bar for determining patentability would be set impossibly high. The “teaching, showing, or motivating” method of judgment, which states that an object is obvious if the prior art points to its development as a natural progression, is not in itself inconsistent with the Graham recommendations. However, when it is used as a hard-and-fast rule instead of an insight or suggestion, it in fact detracts from the purpose of patents. One claim was found to be obvious, but the rest of the claims were undecided. The case was sent back to the CAFC for further judgment.
 
The difficulty in determining nonobviousness derives from the fact that both its definition and the current methods of evaluation are completely arbitrary and subjective. What is a mechanic with ordinary skill in the art? When does the inventive step occur? How can one quantify a whole greater than the sum of its parts?
It seems clear that the difficulty arising from nonobviousness since its introduction 60 years ago stems from its vague, imprecise definition. Perhaps a better definition which does not refer to a chimeric “mechanic with ordinary skill” would provide a better platform upon which to place the standard. It could read: “nonobviousness is a quality exhibited by a device, process, practice, digital work, or composition of matter characterized by a new method, structure, production, or intended function developed in whole or in part by utilizing an innovative design; the combination of previous inventions must demonstrate some quality not found in the previous inventions individually.” 
This definition is more useful for a number of reasons. First of all, it covers several different inventive creations, from new machines to new business practices to new computer programming. It also encompasses a variety of ways in which a previous invention or set of inventions may be modified into a new, patentable product. In the Lyon case, heating the lens and coating throughout the application process was the nonobvious step. In Adams, it was not new to try a different liquid as an electrolyte, but it was new and nonobvious to use water to essentially activate a battery. In both these cases, the combination exhibits a new feature or behavior not found in its constituent parts. 
The definition also screens out all the cases treated above. Hotchkiss’ doorknob was a new structure with new material, but it was not innovative. The same goes for the counter widget from the A. & P. case. Graham’s developments, though “new,” were not demonstrative of a new function not achieved by the individual parts which formed his plow; the same goes for the heater in the Anderson case. Thus, this definition fully embodies all that the Courts have ruled in regards to nonobviousness.

User:Kyle Tennant

2011-03-21T13:38:43Z

Kyle Tennant: /* Homeworks */

Notes from 3/11/2011

2011-03-11T17:23:02Z

Kyle Tennant:

Claims:
*most important part of a patent
*define boundaries of property right 
Interpreting the claims for 2 reasons
#with respect to the prior art to determine validity
#with respect to some possibly infringing thing
Term used, does the claim "read on" the prior art or possibly infringing device? 
A claim reads on something if everything (elements and relationship among them) appears in that thing. It does not matter if other things are present in the other thing.
=====Example 1=====
I claim a chair comprising
*a seat
*a back attached to the seat
*legs attached to the seat.
Infringing:
*chair that has a seat, a back, legs, plus armrests
*chair with seat, back, and legs where the seat is removable
Comprising: something is made up of a list of things, but could include other things 
Consisting: exactly the list of things and no more
Not infringing:
*a stool with legs and a seat, but no back
=====Example 2=====
I claim a stool comprising
*seat
*legs attached to the seat
All chairs infringe on the stool patent. 
No stools infringe the chair patent. 
If the stool were patented first, the improved stool with back (which is a chair) would be patentable. The chair patent owner could not make, use, or sell chairs without the permission (license) of the stool patent owner. 
Correspondingly
*the stool patent owner can not add backs to the stools without the permission of the chair patent holder
*limited testing by each side is allowed
*result: incentive to (cross-)license
In order to patent a stool when a chair already exists, then one would have to add to the list:
*no back
This makes stool patentable even with chairs in prior art. However, claims with "no" are problematic.

Notes from 3/11/2011

2011-03-11T17:22:39Z

Kyle Tennant:

Notes from 3/11/2011

2011-03-11T17:22:04Z

Kyle Tennant: Created page with "Claims: *most important part of a patent *define boundaries of property right Interpreting the claims for 2 reasons #with respect to the prior art to determine validity #..."

Claims:
*most important part of a patent
*define boundaries of property right 
Interpreting the claims for 2 reasons
#with respect to the prior art to determine validity
#with respect to some possibly infringing thing
Term used, does the claim "read on" the prior art or possibly infringing device? 
A claim reads on something if everything (elements and relationship among them) appears in that thing. It does not matter if other things are present in the other thing.
=====Example 1=====
I claim a chair comprising
*a seat
*a back attached to the seat
*legs attached to the seat.
Infringing:
*chair that has a seat, a back, legs, plus armrests
*chair with seat, back, and legs where the seat is removable
Comprising: something is made up of a list of things, but could include other things
Consisting: exactly the list of things and no more
Not infringing:
*a stool with legs and a seat, but no back
=====Example 2=====
I claim a stool comprising
*seat
*legs attached to the seat
All chairs infringe on the stool patent. 
No stools infringe the chair patent. 
If the stool were patented first, the improved stool with back (which is a chair) would be patentable. The chair patent owner could not make, use, or sell chairs without the permission (license) of the stool patent owner. 
Correspondingly
*the stool patent owner can not add backs to the stools without the permission of the chair patent holder
*limited testing by each side is allowed
*result: incentive to (cross-)license
In order to patent a stool when a chair already exists, then one would have to add to the list:
*no back
This makes stool patentable even with chairs in prior art. However, claims with no are problematic.

User:Kyle Tennant

2011-03-11T17:15:27Z

Kyle Tennant: /* Class Notes */

Notes form 3/11/2011

2011-03-11T17:14:53Z

Kyle Tennant:

Claims:
*most important part of a patent
*define boundaries of property right 
Interpreting the claims for 2 reasons
#with respect to the prior art to determine validity
#with respect to some possibly infringing thing
Term used, does the claim "read on" the prior art or possibly infringing device? 
A claim reads on something if everything (elements and relationship among them) appears in that thing. It does not matter if other things are present in the other thing.
=====Example 1=====
I claim a chair comprising
*a seat
*a back attached to the seat
*legs attached to the seat.
Infringing:
*chair that has a seat, a back, legs, plus armrests
*chair with seat, back, and legs where the seat is removable
Comprising: something is made up of a list of things, but could include other things
Not infringing:
*a stool with legs and a seat, but no back
=====Example 2=====
I claim a stool comprising
*seat
*legs attached to the seat
All chairs infringe on the stool patent. 
No stools infringe the chair patent. 
If the stool were patented first, the improved stool with back (which is a chair) would be patentable. The chair patent owner could not make, use, or sell chairs without the permission (license) of the stool patent owner. 
Correspondingly
*the stool patent owner can not add backs to the stools without the permission of the chair patent holder
*limited testing by each side is allowed
*result: incentive to (cross-)license

Notes form 3/11/2011

2011-03-11T16:57:59Z

User:Kyle Tennant

2011-03-11T16:52:05Z

Kyle Tennant: /* Statutory Bars */

Case 13: Bilski v. Kappos (2010)

2011-03-11T03:33:23Z

Kyle Tennant: Created page with "The point of the wording of patent laws is to provide a wide scope under which patentable inventions can fall. The Court has designated three exceptions to these principles: laws..."

The point of the wording of patent laws is to provide a wide scope under which patentable inventions can fall. The Court has designated three exceptions to these principles: laws of nature, physical phenomena, and abstract ideas. Even if a claim is patentable, it still must be new, nonobvious, and fully disclosed. In determining whether a process is patentable, the "machine or transformation" test is not the only method. Doing so errs in two ways: it allows the court to put limits and conditions on the laws not actually disclosed in the legislation, and it does not interpret the meaning of the legislation in an ordinary, contemporary way. Saying that a process must be related to a machine or transformation of an article does not assign a normal, common meaning to the word "process." In addition, the use of the word "process" in 101 does not exclude all business methods from this protection. In fact, some of the verbiage implies that business methods may be patented: for instance, the permissible defense of prior use to argue against infringement implies that business methods may be patented. However, another section (273) explicitly states that business methods are included in the general definition of "method."

The claims at issue are simply not patentable. One claim is for hedging risk, and the other is for doing so in the energy market. Under many cases, neither claim is patentable. Some of the claims describe abstract ideas and the mathematical formulae that describe them; the rest indicate meager attempts to add to the abstract idea by explaining hedging and how certain pertinent information may be determined. This required no new rulings or interpretations on the Court's part: the prior rulings and the wording of 101 serve to effectively preclude the claims in this case. Though the machine-or-transformation test has been shown not to be a definitive test, the Court does not take issue with the Federal Court attempting to define a test so long as it does not contradict the laws or prior rulings.

The CAFC ruled that the invention was unpatentable because it was not tied to a machine and produced no tangible change or result. Three judges dissented, offering different opinions as to why the matter was unpatentable. One said that the patent was for a method of conducting business and called for a new technological standard. Another would have ruled that the claims were abstract ideas. The third disagreed that the patent was outside the scope of 101, but did not say the process was patentable; she recommended more proceedings to determine its patentability given other restrictions.

As innovation drives technology and business forward, it becomes necessary to redefine patentability and processes to reflect modern interpretations of such terms. Outdated language could well have precluded all computer programs from being patentable; however, updates necessarily move the law to keep up with the state of the art. The perennial challenge of patent law becomes more difficult: the Information Age has enabled more and more individuals to innovate and seek compensation for their efforts. Thus, the problem arises once again: where should the line be drawn between encouraging innovation and discouraging monopolies?

Case 10: Diamond v. Diehr (1981)

2011-03-10T23:05:12Z

Kyle Tennant:

Diamond and his crew filed a petition for a patent which would mold raw rubber into precise shapes. This process had been difficult in the past because of the uncertainty surrounding the proper curing time. This uncertainty stemmed from the fact that determining the temperature inside the molding press was problematic. The cure time is related to the temperature by a known mathematical formula; the respondents developed a system by which the temperature inside the press was continuously fed into a computer program that would automatically open the press at the right time. They were at first denied a patent, but the court later held that they were in fact entitled to a patent.

This case cited the Cochrane case, which defined a process as "an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery .... The machinery pointed out as suitable to perform the process may or may not be new or patentable." In this case, the respondents claimed that the constant monitoring of the temperature, the continuous recalculation of the cure time, and the signaling of the opening device were all new. The patent examiner deemed the application unpatentable due to its use of a mathematical formula. The process includes installing rubber in the press and closing the press, both of which were necessary aspects of the art. This leaves only the computer formula and the electronic signal. The examiner believed that this part of the process was nonstatutory subject matter and could not be patented.

This assessment is incorrect. Just because a computer is involved does not mean the subject isn't patentable. Furthermore, the respondents were not looking to patent a mathematical formula; rather, they sought to use a mathematical formula in conjunction with other steps to solve a problem which had existed in the process of making rubber; they were using the formula as a tool to improve an existing method. In Benson, the mathematical formula was solely for use in a digital computer, and the Court treated it as a fundamental law of nature. Likewise in Parker, the claim was not for a greater process of determining values or gathering data, but solely for a mathematical formula for an "alarm limit." Thus, this claim was not patentable. In the current case, the patent is not only for the mathematical formula, but for all the other steps taken in the process.

The thrust of this ruling is that the components of a patent must be considered as a whole. One cannot separate into old and new parts and ignore the old stuff. Indeed, this method would preclude large numbers of patentable processes where the individual parts are well known and not new. However, questions of novelty are a separate matter from questions of patentable subject matter. Under 101, the claims above are patentable. In other cases, a mathematical formula may not be patented, whether it is a general formula or specified to a particular technological function. In addition, the presence of meaningless steps after the use of the formula does not make it patentable.

Case 10: Diamond v. Diehr (1981)

2011-03-10T21:18:17Z

Kyle Tennant: Created page with "Diamond and his crew filed a petition for a patent which would mold raw rubber into precise shapes. This process had been difficult in the past because of the uncertainty surroun..."

Case 9: Gottschalk v. Benson (1972)

2011-03-10T20:56:39Z

Kyle Tennant:

Benson et al. filed for a patent for converting binary coded decimal numbers into pure binary numbers in a method not specific to a certain application or apparatus. They attempted to claim for any use of their system in a general-purpose digital computer. The Supreme Courted granted certiorari to determine whether or not the claim constituted a "process" under U.S. patent law. The claims in question are algorithms, or procedures by which a computer may solve a mathematical problem. In this case, the algorithm converts numbers from one form to the other. New programs may be written based on this basic function of the computer.

The new system converts BCD numbers into pure binary numbers. This means that instead of creating a string of four ones or zeros to represent each individual place in a number, one string of several ones or zeros are used to signify a single, aggregate number. These calculations do not require any new technology or systems; old computers long in use may be used, as well as no computers at all.

Mackay stated that while neither scientific principles nor mathematical formulas may be patented, a new and useful structure developed from the knowledge of such a truth may be. This ruling was another expression of Rubber-Tip Pencil Co., which said in effect that scientific principles are fundamental truths and should not be the sole property of any one person or entity. Other concepts which fall under this category are "phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts." In Funk Bros. Seed Co., the Court stated that only new and useful applications of scientific principles may be patented. Though this patent deals with a "process" and the previous descriptions a "product," the Court applied the same standard.

The claim of a process to convert BCD to pure binary is a sweeping one. Anything from train operation to drivers' license verification can be performed using this process. In this way, the claim of the patent oversteps the boundaries of patent law. In a prior ruling, the Court held that such sweeping generalizations cannot be made because the same result of the application (i.e., the conversion of information) may someday be achieved by a differing process than the one described. The effect must be patented in regard to a particular process: you can't patent a function apart from the functioning product.

A process, however, may be patented regardless of the instruments used; if a process calls for grinding rock into a fine dust, then it doesn't matter how the rock is pulverized. In Cochrane, the court said that "a process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing." The patentability of a process stems from its claims for transforming and reducing an article "to a different state or being" without calling for specific machinery.

The Court did not say that a process is never patentable if it either does not transform an article or is not tied to a particular machine. Nor did it say that no process can be patented for a computer. Nor is the Court meaning to freeze patents and ignore the new advent of electronic technology. Rather, the Court ruled that the formula used in this patent has no application outside of its connection to a computer. It is not a transformation of material, nor is the algorithm a new or useful application, nor is the method separable from its mathematical formula. Thus, if the Court granted this patent, it would for all intents and purposes be patenting a scientific law. While programs have not been patentable, there has still been progress made in this field. In addition, copyrights are available for these programs.

Case 9: Gottschalk v. Benson (1972)

2011-03-10T18:52:39Z

Kyle Tennant:

Case 9: Gottschalk v. Benson (1972)

2011-03-10T06:01:25Z

Kyle Tennant:

Case 9: Gottschalk v. Benson (1972)

2011-03-10T04:55:28Z

Kyle Tennant: Created page with "Benson et al. filed for a patent for converting binary coded decimal numbers into pure binary numbers in a method not specific to a certain application or apparatus. They attempt..."

Case 19: Pfaff vs. Wells Electronics (1998)

2011-03-10T03:17:12Z

Kyle Tennant: moved Case 19: Pfaff vs. Wells Electronics (1998) to Case 20: Pfaff vs. Wells Electronics (1998)

#REDIRECT [[Case 20: Pfaff vs. Wells Electronics (1998)]]

Case 20: Pfaff vs. Wells Electronics (1998)

2011-03-10T03:17:12Z

Kyle Tennant: moved Case 19: Pfaff vs. Wells Electronics (1998) to Case 20: Pfaff vs. Wells Electronics (1998)

Pfaff created a design for a microchip socket. He offered the design to Texas Instruments before building or testing a prototype, as was his normal practice, before April 8, 1981. He filled the order in July of 1981, indicating a reduction to practice at that time. He filed for a patent on April 19, 1982; thus, the critical date for on-sale bar considerations was April 19, 1981. Pfaff sued Wells for infringement: in a series of decisions, the District Court said the patent was infringed because the patent on sale from the date of reduction to practice, and the Appellate Court overturned by saying the one-year period starts from the initial sale offering.

The Supreme Court concurred with the Appellate Court. They ruled that "invention" in the Code undoubtedly means the inventor's mental conception and not the physical product. The phrase "reduction to practice" is a judicial rather than a legislative term, and the requirement does not appear in the Code. Pfaff clearly could have filed for a patent when he offered the design to Texas Instruments, since the drawings were clear and detailed enough for a professional to produce the product. In addition, proof of reduction to practice is not required for an invention to be regarded as an invention; thus, the one-year grace period starts from the sale offering, not the reduction to practice. Finally, there are two conditions for the on-sale bar to apply. First, the product must be offered for sale. Second, the invention must be complete enough to be eligible for a patent. This requirement may be completed by either evidence of reduction to practice before the critical date, or evidence of detailed drawings and conceptions which were sufficient for a person with ordinary skill in the art to realize the invention. It is clear that both are satisfied in this case.

Case 18: UMC Electronics Co. v. U.S. (1987)

2011-03-10T03:16:55Z

Kyle Tennant: moved Case 18: UMC Electronics Co. v. U.S. (1987) to Case 19: UMC Electronics Co. v. U.S. (1987)

#REDIRECT [[Case 19: UMC Electronics Co. v. U.S. (1987)]]

Case 19: UMC Electronics Co. v. U.S. (1987)

2011-03-10T03:16:55Z

Kyle Tennant: moved Case 18: UMC Electronics Co. v. U.S. (1987) to Case 19: UMC Electronics Co. v. U.S. (1987)

The invention under scrutiny is an aviation counting accelerometer (ACA), a device which counts how many times an aircraft has been subject to a set acceleration (filed 1968). The Navy had been using ACAs from Maxson Electronics Company and Giannini Controls Corporation, which were unreliable and troublesome to use. It contacted UMC employee Weaver and informed him that they were looking for a better ACA. He developed a model (UMC-A) and UMC was awarded a contract in late 1966. In 1967, UMC determined that its ACA would behave much like the Maxson and Giannini units, that is, badly. The inherent frequency of the mass-spring system within the transducer was the cause of the problems; this system was unable o distinguish between actual acceleration of the aircraft in maneuvers and other accelerations such as wind gusts. Weaver set to work developing an analog transducer that utilizes a varying electric signal. This signal could be filtered to distinguish actual acceleration from other noise; UMC was unsuccessful in negotiating terms to a new contract with the new transducer.

In 1967, the Navy reworked its specifications and requested proposals from contractors. UMC responded with a number of its UMC-B ACAs. In August of that year, UMC demonstrated its product to the Navy; however, the Navy went forward with another company, Systron-Donner. UMC filed an action suit against the Navy seeking compensation because, in their view, Systron-Donner used their ACAs in their design. The court upheld the patent as valid, but ruled the Systron-Donner ACAs did not fall under the scope of the patent's claims. Both parties appealed, the Navy that the UMC patent is invalid and UMC that the ruling of no infringement be reversed.

The patent must hold up to three criteria: (1) the complete invention must be obvious or apparent in the thing offered for sale; (2) the invention must have been tested sufficiently; and (3) the sale must be primarily for profit, rather than experimental purposes. If the invention satisfied all three, then it was unpatentable under 102. The court found that (2) and (3) were both met, but (1) was not because the inventor had not assembled a complete working model before the critical date. Furthermore, because the model was never produced and UMC didn't profit from it, it was never really on sale under 102.

The case deals a lot with reduction to practice. It is not enough to say there was reduction to practice if Weaver only built and tested part of the new claimed invention. It is a contradiction for the District Court to say there was a reduction to practice, yet the on-sale bar doesn't hold because it wasn't a completed product for sale. The Appellate Court said that the ACA was not reduced to practice, but it was on sale. Thus, the ACA is no longer patentable and the patent rights are vacated.

Case 17: Lough v. Brunswick Corp. (1996)

2011-03-10T03:16:30Z

Kyle Tennant: moved Case 17: Lough v. Brunswick Corp. (1996) to Case 18: Lough v. Brunswick Corp. (1996)

#REDIRECT [[Case 18: Lough v. Brunswick Corp. (1996)]]

Case 18: Lough v. Brunswick Corp. (1996)

2011-03-10T03:16:30Z

Kyle Tennant: moved Case 17: Lough v. Brunswick Corp. (1996) to Case 18: Lough v. Brunswick Corp. (1996)

Lough filed for a patent for a seal to the stern drive assembly for boats. Brunswick, accused of infringement, moved for a judgment as a matter of law, stating that Lough could not prove that its use of the assembly prior to the patent application was purely experimental in nature. Brunswick charges that Lough did not control the use of his prototypes, did not keep good records of the process, and did not swear the third parties to any form of secrecy. Lough defends his methods, saying that the use of the prototypes was necessary to test the product, he did not receive compensation for the prototypes, and he did not place the seal on the public market until after he filed for the patent. He claims that mechanics of varying degrees of skill and in various conditions were necessary to thoroughly examine his product's behavior. The court disagrees.

"Public use" is defined as any use which is under no restriction, obligation, or limitation imposed by the inventor. An inventor may skirt this requirement by showing that the public use was purely experimental in nature. Now, Lough had admitted the use of his invention before the critical date. Thus, the question is whether such use was experimental in nature. Generally, experimentation may be proved by documentation which refers to the typical procedures and methods found in an experiment: duration, number of prototypes, progress reports, secrecy, etc. The expectations of rigorous experimental bookkeeping can be lowered reasonably in the case of individuals or small entities. However, care must always be taken to ensure that the product remains in an experimental state only. Lough did not take the necessary measures to avoid the dissemination of his invention, and consequently, his seal was placed on a boat which was sold. Although this was unknown to him, Lough still did not keep fastidious records demonstrating the experimental nature of his efforts; he had given the seal to some friends to try, and he did not ask them for their comments afterwards. Had he provided this documentation showing results and opinions, his patent may have been upheld. The court reversed the decision of the Appellate Court, and Brunswick's motion for JMOL was granted.

Four Policies: (1) discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available; (2) favoring the prompt and widespread disclosure of inventions; (3) allowing the inventor a reasonable amount of time following sales activity to determine the potential economic value of a patent; (4) prohibiting the inventor from commercially exploiting the invention for a period greater than the statutorily prescribed time.