Bill Goodwine's Wiki - User contributions [en]

Quanta brief - 901338276

2011-04-29T15:27:17Z

KyleR:

Quanta Computer, Inc. (petitioners) v. LG Electronics, Inc. (respondent)

Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners
----
*Motorola is submitting a brief because it will be significantly affected by the Court's ruling:
**Motorola, very much like Intel, owns thousands of U.S. patents as well as third-party patents through license agreements.
**Motorola, like Quanta, often purchases components from suppliers and assembles them into its own products.
**For these reasons, Motorola is seeking clarification from the Court regarding the patent exhaustion doctrine and is siding with Quanta in this case.

'''Motorola's arguments in favor of Quanta:'''
*Motorola agrees with Quanta's defense that ''United States v. Univis Lens Co.'' sets the precedent for this case. Since the products Intel licensed from LGE and sold to Quanta have no substantial use except to be combined with other components in a way that infringes LGE's patents, LGE's patents have therefore been exhausted due to its license to Intel.
*Patent law is meant to reward an inventor for the sale and use of his invention. The law makes no effort to restrain the use and enjoyment of the invention once it has been sold. LGE's actions go against this principle because it is trying to gain a second payment for its patents. LGE cannot sell a license to Intel, and then ''also'' have the benefit of limiting the rights of Intel's customers to use those patents.
*Intel sold some of the accused microprocessors and chipsets before entering the license arrangement with LGE. Motorola cites a lack of evidence concerning the subsequent sales of these components to Quanta and argues that the Court cannot sufficiently decide what effect LGE's release to Intel had on Intel's pre-license sales.
*This case only considers licenses as means for transferring patent rights. It does not discuss other types of agreements such as covenants not to sue and releases. Therefore, Motorola asks the Court to not make any decisions regarding the impact these other types of agreements have on patent exhaustion.

'''Back to [[User:KyleR]]'''

Quanta brief - 901338276

2011-04-29T14:51:14Z

KyleR:

Course Notes (KyleR)

2011-04-29T14:38:57Z

KyleR:

''Nonobviousness''
*'''[[Graham v. John Deere (KyleR)]]'''
*'''[[U.S. v. Adams (KyleR)]]'''
*'''[[Anderson's Black Rock, Inc. v. Pavement Co. (KyleR)]]'''
*'''[[KSR International Co. v. Teleflex, Inc. (KyleR)]]'''

''Patentability''
*'''[[Gottschalk v. Benson (KyleR)]]'''
*'''[[Diamond v. Diehr (KyleR)]]'''
*'''[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. (KyleR)]]'''
*'''[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (KyleR)]]'''
*'''[[Bilski v. Kappos (KyleR)]]'''

''Statutory Bars''
*'''[[Elizabeth v. American Nicholson Pavement Company (KyleR)]]'''
*'''[[D.L. Auld Co. v. Chroma Graphics Corp. (KyleR)]]'''
*'''[[Lough v. Brunswick Corp. (KyleR)]]'''

'''Back to [[User:KyleR]]'''

Homework 3/23 - Printed Publication bar (KyleR)

2011-04-29T14:38:34Z

KyleR:

'''SRI International, Inc. v. Internet Security Systems, Inc.'''
----

Jan. 8, 2008
United States Court of Appeals, Federal Circuit

SRI was issued four patents relating to cyber security and intrusion detection on networks. The patent applications were filed on '''November 9, 1998''' and SRI later sued ISS for infringement. ISS claimed the patents were invalid under 35 USC 102(b) because the claims were anticipated in the "Live Traffic Paper" posted on SRI's server. SRI posted the paper on their server on '''August 1, 1997''' and sent the specific FTP address via email to the Internet Society in response to a call for papers.

The district court ruled that the a person of ordinary skill could navigate the folders on the server and find the paper. Therefore, the paper qualified as a printed publication and invalidated the patents. The Court of Appeals, however, ruled that since the paper was not indexed or catalogued in any way on the SRI server there would be no way for an interested person to find it. Therefore, the paper posted on SRI's server did not satisfy the printed publication bar.

'''Back to [[User:KyleR]]'''

Homework 2/9 - Nonobviousness (KyleR)

2011-04-29T14:38:15Z

KyleR:

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

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

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

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

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

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

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

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

:The difference is formal, and destitute of ingenuity or invention. It may afford evidence of judgment and skill in the selection and adaptation of the materials in the manufacture of the instrument for the purposes intended, but nothing more.
:...
:Now if the foregoing view of the improvement claimed in this patent be correct, it is quite apparent that there was no error in the submission of the questions presented at the trial to the jury, for unless more ingenuity and skill in applying the old method of fastening the shank and the knob were required in the application of it to the clay or porcelain knob than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. '''In other words, the improvement is the work of the skillful mechanic, not that of the inventor.''' "

Thus, the Court set the precedent that an invention is only patentable if it requires some sort of ingenuity beyond what an ordinary worker in the field possesses. Up until this case, the prevailing opinion of the time was that an invention only needs to be novel and useful to be patentable, as demonstrated by Justice Woodbury's dissenting opinion. For him, any invention that is cheaper or better than its predecessor is patentable regardless of the skill needed to invent it.

:"Whenever the kind of test adopted below is used otherwise than to see if there has been an infringement or not, it is to ascertain whether the invention is original or not, that is whether it is a trifling change and merely colorable or not. Webster on Sub. Mat. 25; Curtis on Patents, §§ 6, 7; 2 Gallis.C.C. 51; 1 Mason C.C. 182. But it is impossible for an invention to be merely colorable, if, as claimed here, it was better and cheaper, and hence this last criterion should, as requested by the plaintiffs, have been suggested as a guide to the jury.

:Then, if they became convinced that the knob in this case, by its material, or form inside, or combination with the shank, was in truth better and cheaper than what had preceded it for this purpose, it would surely be an improvement. It would be neither frivolous nor useless, and under all the circumstances it is manifest that the skill necessary to construct it, on which both the court below and the Court here rely, is an immaterial inquiry, or it is entirely subordinate to the question whether the invention was not cheaper and better. '''Thus, some valuable discoveries are accidental, rather than the result of much ingenuity, and some happy ones are made without the exercise of great skill, which are still in themselves both novel and useful. Such are entitled to protection by a patent, because they improve or increase the power, convenience, and wealth of the community.'''"

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First, this case recognized the challenges "combination inventions" posed to patent law. No precedent had been set regarding how to analyze the inventiveness of combination inventions. The Court decided to declare this particular patent invalid because the combination of elements did not produce a new result compared to when the elements each performed their function independently. This set a precedent for a more cautious approach to verifying patents.
::"'''Neither court below has made any finding that old elements which made up this device perform any additional or different function in the combination than they perform out of it.''' This counter does what a store counter always has done-it supports merchandise at a convenient height while the customer makes his purchases and the merchant his sales. The three-sided rack will draw or push goods put within it from one place to another-just what any such a rack would do on any smooth surface-and the guide rails keep it from falling or sliding off from the counter, as guide rails have ever done. Two and two have been added together, and still they make only four.

::'''Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements.''' The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. This patentee has added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly."

*Second, this case made another effort to tighten obviousness standards by recalling the original reason that the Constitution authorizes patent monopolies: to "promote the Progress of Science and useful Arts." The case warns that loose patent standards will stifle ingenuity instead of promote it and the concurring opinion urges that for inventions to qualify for patent rights, they must "be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance." Patent protection, therefore, should be biased toward the frontier of science and engineering, rather than more mundane things like plows, gadgets, etc.

*Third, the "level of invention" was partly evidenced by a "long felt but unsatisfied need" and commercial success, which are currently regarded as secondary considerations for nonobviousness. This case, however, limits the weight to be associated with these considerations, saying that "commercial success without invention will not make patentability."

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

*This section also abolishes the "flash of genius" test for determining patentability.

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

In [[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] Learned Hand, in his brilliance, expounded on the new standard thusly:
:"Therefore we at length come to the question whether Lyon's contribution, his added step, was enough to support a patent. It certainly would have done so twenty or thirty years ago; indeed it conforms to the accepted standards of that time. The most competent workers in the field had for at least ten years been seeking a hardy, tenacious coating to prevent reflection; there had been a number of attempts, none satisfactory; meanwhile nothing in the implementary arts had been lacking to put the advance into operation; when it appeared, it supplanted the existing practice and occupied substantially the whole field. We do not see how any combination of evidence could more completely demonstrate that, simple as it was, the change had not been "obvious * * * to a person having ordinary skill in the art" — § 103. On the other hand it must be owned that, had the case come up for decision within twenty, or perhaps, twenty-five, years before the Act of 1952 went into effect on January 1, 1953, it is almost certain that the claims would have been held invalid. The Courts of Appeal have very generally found in the recent opinions of the Supreme Court a disposition to insist upon a stricter test of invention than it used to apply — indefinite it is true, but indubitably stricter than that defined in § 103.4. Indeed, some of the justices themselves have taken the same view.[5] The Act describes itself as a codification of existing law, as it certainly is in the sense that the structure of the system remains unchanged. Moreover those decisions that have passed upon it have uniformly referred to it as a codification, although so far as we have found none of them has held that § 103 did not change the standard of invention.[6] And so the question arises whether we should construe § 103 as restoring the law to what it was when the Court announced the definition of invention, now expressly embodied in § 103, or whether we should assume that no change whatever was intended."

The above excerpt details the quandary justices faced after the Patent Act of 1952 was enacted. Congress stipulated that the Act was merely intended to codify what the opinion of the Court had been all along. However, the opinion of the Court regarding nonobviousness had undergone an evolution beginning with the Hotchkiss case (1850) and leading to the A.&P. decision that significantly restricted patentability. Learned Hand interpreted the new Congressional Act as an attempt to ease the restrictions on patentability regarding nonobviousness.

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

In [[Graham v. John Deere, 383 U.S. 1 (1966)]] indicated a shift away from trying to establish a level of "inventiveness" to the statutory language of "nonobviousness." The criteria to determine nonobviousness include
* scope and content of the prior art;
* differences between the prior art and the claims at issue;
* level of ordinary skill in the pertinent art; and,
* secondary considerations, including:
** commercial success of the invention;
** long-felt but unsolved needs;
** failure of others to find a solution, etc.
The opinion in this case also argues that Section 103 was not intended by Congress to change the general level of patentability but to merely codify judicial precedent set forth in Hotchkiss to require an inquiry into obviousness before granting patentability.

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

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

* Combination inventions can be patentable if the combination embraces some interdependent functional relationship not previously used
* Demonstrates an effective method of examining the prior art:
:"...known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."
*Secondary considerations that contributed to a decision of nonobviousness:
**disbelief from experts;
**recognition of significance by experts;
**subsequent patents to improve the original patent.

===Anderson's Black Rock v. Pavement Salvage (1969)===
Things seem relatively clear at this point, but the Supreme Court seemingly basically messed it all up again in [[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] by returning the focus to "inventiveness" by revisiting the old problem of when a combination of old or know elements can become patentable.
*Court says the combination of paving truck and heater is obvious:
**combination is not greater than the sum of its parts;
**might serve one's convenience, but does not produce a new, patentable function.
*Fulfillment of a long-felt want and enjoyment of commercial success does not constitute patentability "without invention"

===KSR International Co. v. Teleflex, Inc. (2007)===
*A patent is obvious when there exists a "teaching, suggestion, or motivation to combine known elements" (TSM test)
**this case says that the TSM test can be used to confirm obviousness, but cannot be applied in reverse to show nonobviousness

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

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

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

==The Inventive Step==

==Relationship with Novelty==
Novelty and nonobviousness must both be satisfied for patentability.
*Novelty: [http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000102----000-.html Title 35, Section 102 of U.S. Code]
*Nonobviousness: [http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000103----000-.html Title 35, Section 103 of U.S. Code]

==Nonobviousness vs. Invention==
==Secondary Considerations==
The Courts have developed secondary considerations that can be utilized to give light to the circumstances surrounding the obvious/nonobvious nature of an invention. The most common secondary considerations are:
*commercial success of the invention,
*long-felt but unsolved needs that are satisfied by the invention,
*failure of others in developing the invention,
*appreciation of the invention by experts in the field,
*disbelief of the invention by experts in the field,
*unexpected results from the invention, and
*further development by others on the invention (subsequent patents).
These considerations, however, do not prove nonobviousness and have been dismissed in cases such as ''Graham'' and ''Anderson''.

==Ordinary Skill in the Art==

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

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

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

[[South Corp. v. US]]

'''Back to [[User:KyleR]]'''

Homework 2/4 (KyleR)

2011-04-29T14:37:50Z

KyleR:

'''Obviousness analysis of patent 2,627,798: Clamp for vibrating shank plows'''
----
Reasons this patent is invalid because of obviousness:
*The '798 patent yields no new function.
**The object of '798 is to prevent damage to the plow when it is working in rocky ground (column 1, lines 16-27). This issue, however, was already addressed in Graham's '811 patent which claimed to "reduce or eliminate breakage of the ground working devices since they yield automatically under action of the springs when they strike immovable objects such as rocks or other obstructions" (column 6, lines 34-39). Therefore, the '798 patent does not introduce new knowledge and is merely an updated version of the '811 patent.
*The only significant differences between the '798 and '811 patents are 1) the shank is bolted to the hinge plate in '798 and 2) the shank is located below, not above, the hinge plate in '798.
*#The new bolted connection is neither novel nor nonobvious. A similar bolting technique is demonstrated in the Pfeifer patent (#2,014,451).
*#Rearranging the relative locations of the shank and hinge plate does not pose a complicated design issue worthy of patentability. It would be obvious to someone skilled in the art of shank plow construction that locating the shank below the hinge plate so that it is not sandwiched between two components would improve the flexing qualities of the shank.

----
Reasons this patent is nonobvious and therefore valid:
*Patent '798 provides improved shank plow performance compared to the '811 patent.
**The shank is now secured to the hinge plate to improve plow control.
**Modification of the shank placement makes the shank less susceptible to damage when working in rocky terrain.
*A person of ordinary skill in the art would have no reason to rearrange the shank and hinge plate locations.
**Differences in flex qualities are difficult to observe.
***But, a small difference can have a large impact on performance.

'''Back to [[User:KyleR]]'''

Homework 1/28 (KyleR)

2011-04-29T14:37:34Z

KyleR:

*'''[[Description of My Patent (KyleR)]]'''

*'''[[Description of My Patent's References (KyleR)]]'''

*'''[[Discussion of My Patent relating to Hotchkiss/A&P and Lyon (KyleR)]]'''

'''Back to [[User:KyleR]]'''

Homework 1/24 (KyleR)

2011-04-29T14:37:19Z

KyleR:

= '''My Selected Patent''' =

Title: [http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=18&f=G&l=50&co1=AND&d=PTXT&s1=4545286&OS=4545286&RS=4545286 Active Armor]

Patent #: 4,545,286

Issue date: October 8, 1985

== ''Description'' ==
This patent describes a type of armor to protect military vehicles such as tanks. The armor plates are designed to protect personnel against the three most common types of anti-tank rounds: sabot, shaped charge, and HESH charge rounds. Previous types of armor may have been able to withstand one or two of these types of rounds, but not all three.

'''Back to [[User:KyleR]]'''

Quanta brief - 901338276

2011-04-29T14:37:03Z

KyleR:

Here in list of arguments in Quanta

2011-04-29T14:35:36Z

KyleR:

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]]

[[Quanta Brief (John Gallagher)]]

[[Quanta brief - 901338276]]

Here in list of arguments in Quanta

2011-04-29T14:35:06Z

KyleR:

Quanta brief - 901338276

2011-04-29T14:33:51Z

KyleR: Created page with "Quanta Computer, Inc. (petitioners) v. LG Electronics, Inc. (respondent) Brief of Amicus Curiae Motorola, Inc. in Support of Petitioners ---- *Motorola is submitting a brief bec..."

User:KyleR

2011-04-29T14:23:15Z

KyleR:

*'''[[Homework 1/24 (KyleR)]]'''

*'''[[Homework 1/28 (KyleR)]]'''

*'''[[Homework 2/4 (KyleR)]]'''

*'''[[Homework 2/9 - Nonobviousness (KyleR)]]'''

*'''[[Homework 3/23 - Printed Publication bar (KyleR)]]'''

*'''[[Quanta brief - 901338276]]'''

*'''[[Course Notes (KyleR)]]'''

Doctrine of Equivalents Case List

2011-04-04T04:41:04Z

KyleR:

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

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

901431048

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

Brobins

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

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

901444263

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

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

901471466

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

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

901338276

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

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

901330223

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

901316153

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

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

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

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

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

Eric Paul

*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

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

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

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

901419437

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

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

Erich Wolz

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

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

Christine Roetzel - 901425022

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

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

901439143

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

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

Julia Potter (jpotter2)

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

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

901437068

Doctrine of Equivalents Case List

2011-04-04T04:39:59Z

KyleR:

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

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

901431048

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

Brobins

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

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

901444263

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

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

901471466

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

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

901338276

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

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

901330223

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

901316153

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

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

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

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

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

Eric Paul

*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

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

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

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

901419437

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

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

Erich Wolz

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

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

Christine Roetzel - 901425022

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

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

901439143

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

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

Julia Potter (jpotter2)

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

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

901437068

Homework 3/23 - Printed Publication bar (KyleR)

2011-03-23T04:57:48Z

KyleR:

Homework 3/23 - Printed Publication bar (KyleR)

2011-03-23T04:53:31Z

KyleR: Created page with "'''SRI International, Inc. v. Internet Security Systems, Inc.''' ---- Jan. 8, 2008 United States Court of Appeals, Federal Circuit SRI was issued four patents relating to cyber..."

'''SRI International, Inc. v. Internet Security Systems, Inc.'''
----

Jan. 8, 2008
United States Court of Appeals, Federal Circuit

SRI was issued four patents relating to cyber security and intrusion detection on networks. The patent applications were filed on '''November 9, 1998''' and SRI later sued ISS for infringement. ISS claimed the patents were invalid under 35 USC 102(b) because the claims were anticipated in the "Live Traffic Paper" posted on SRI's server. SRI posted the paper on their server on '''August 1, 1997''' and sent the specific FTP address via email to the Internet Society in response to a call for papers.

The district court ruled that the a person of ordinary skill could navigate the folders on the server and find the paper. Therefore, the paper qualified as a printed publication and invalidated the patents. The Court of Appeals ruled that since the paper was not indexed or catalogued in any way on the SRI server there would be no way for an interested person to find it.

User:KyleR

2011-03-23T04:22:34Z

KyleR:

State Street Bank & Trust Co. v. Signature Financial Group, Inc. (KyleR)

2011-03-09T06:50:18Z

KyleR:

*1998
*patent involves data processing where mutual funds pool their assets in an investment portfolio
*Court is hesitant to read limitations into section 101 since the section demonstrates Congress' intent not to place any restrictions on patentable subject matter
*the transformation of data in this case constitutes practical application of an algorithm

Exceptions to patentable subject matter
#mathematical algorithm
#business model

Back to '''[[Course Notes (KyleR)]]'''

State Street Bank & Trust Co. v. Signature Financial Group, Inc. (KyleR)

2011-03-09T06:50:06Z

KyleR: Created page with "*1998 *patent involves data processing where mutual funds pool their assets in an investment portfolio *Court is hesitant to read limitations into section 101 since the section d..."

Arrhythmia Research Technology, Inc. v. Corazonix Corp. (KyleR)

2011-03-09T06:42:19Z

KyleR:

*1992
*patent involves a method of detecting and measuring aspects of an electrocardiograph signal to determine is someone is at risk for ventricular tachycardia
*process is conducted with the aid of a digital computer and corresponding mathematical formulae
*35 USC 101 excludes "laws of nature, physical phenomena, and abstract ideas."
*"claims to a specific process or apparatus that is implemented in accordance with a mathematical algorithm will generally satisfy section 101."

Determination of statutory subject matter:
The Freeman-Walter-Abele test:
#determine whether a mathematical algorithm is recited directly or indirectly in the claim
#determine whether the claimed invention as a whole is no more than the algorithm itself
#*is the algorithm applied to or limited by physical elements or process steps?
*this is not the only test and failure to satisfy this test may not always defeat claim

Decision: claim is held valid.

Concurring opinion:
*the above test is vague

Back to '''[[Course Notes (KyleR)]]'''

Arrhythmia Research Technology, Inc. v. Corazonix Corp. (KyleR)

2011-03-09T06:28:42Z

KyleR: Created page with "*1992 *patent involves a method of detecting and measuring aspects of an electrocardiograph signal to determine is someone is at risk for ventricular tachycardia *process is cond..."

Course Notes (KyleR)

2011-03-09T05:55:55Z

KyleR:

Diamond v. Diehr(KyleR)

2011-03-09T05:55:36Z

KyleR: moved Diamond v. Diehr(KyleR) to Diamond v. Diehr (KyleR)

#REDIRECT [[Diamond v. Diehr (KyleR)]]

Diamond v. Diehr (KyleR)

2011-03-09T05:55:36Z

KyleR: moved Diamond v. Diehr(KyleR) to Diamond v. Diehr (KyleR)

*1981
*involves a patent for "the process of constantly measuring the temperature inside the [rubber] mold and feeding the temperature measurements into a computer that repeatedly recalculates the cure time by use of the mathematical equation and then signals a device to open the press at the proper time."
*Supreme Court decided this to be patentable

*"Industrial processes such as respondents' claims for transforming raw, uncured synthetic rubber into a different state or thing are the types which have historically been eligible to receive patent-law protection."
*While the claim involves a mathematical equation, it is seeking a patent on the process of curing synthetic rubber. The applicants do not seek to pre-empt the use of the equation in other applications.
*A claim containing a mathematical formula is patentable if the formula is implemented or applied in a process that performs a patentable function.

*the involvement of a computer does not necessarily make a claim nonstatutory
*"Congress intended statutory subject matter to 'include anything under the sun that is made by man.'"
*"A process is a mode of treatment of certain materials to produce a given result."

*Dissenting opinion: the question of the patentability of computer programs cannot be addressed by the Court. There is also a concern about the ability of the Patent Office to process the flood of new applications.

Back to '''[[Course Notes (KyleR)]]'''

Diamond v. Diehr (KyleR)

2011-03-09T05:55:17Z

KyleR:

Diamond v. Diehr (KyleR)

2011-03-09T05:55:03Z

KyleR: Created page with "*1981 *involves a patent for "the process of constantly measuring the temperature inside the [rubber] mold and feeding the temperature measurements into a computer that repeatedl..."

Gottschalk v. Benson (KyleR)

2011-03-09T05:15:35Z

KyleR: Created page with "*1972 *"The patent sought is on a method of programming a general-purpose digital computer to convert signals from binary-coded decimal form into pure binary form" **this constit..."

*1972
*"The patent sought is on a method of programming a general-purpose digital computer to convert signals from binary-coded decimal form into pure binary form"
**this constitutes an "algorithm"
*decided that this is not patentable process because it is merely a series of mathematical calculations or mental steps
*"transformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines"
*"It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself."
*If computer programs are patentable, significant problems arise regarding the vast increase in the field of patentablity. Only Congress can manage this change.

Back to '''[[Course Notes (KyleR)]]'''

Course Notes (KyleR)

2011-03-09T04:56:49Z

KyleR:

''Nonobviousness''
*'''[[Graham v. John Deere (KyleR)]]'''
*'''[[U.S. v. Adams (KyleR)]]'''
*'''[[Anderson's Black Rock, Inc. v. Pavement Co. (KyleR)]]'''
*'''[[KSR International Co. v. Teleflex, Inc. (KyleR)]]'''

''Patentability''
*'''[[Gottschalk v. Benson (KyleR)]]'''
*'''[[Diamond v. Diehr(KyleR)]]'''
*'''[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. (KyleR)]]'''
*'''[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (KyleR)]]'''
*'''[[Bilski v. Kappos (KyleR)]]'''

''Statutory Bars''
*'''[[Elizabeth v. American Nicholson Pavement Company (KyleR)]]'''
*'''[[D.L. Auld Co. v. Chroma Graphics Corp. (KyleR)]]'''
*'''[[Lough v. Brunswick Corp. (KyleR)]]'''

Course Notes (KyleR)

2011-03-09T04:56:28Z

KyleR:

''Nonobviousness:''
*'''[[Graham v. John Deere (KyleR)]]'''
*'''[[U.S. v. Adams (KyleR)]]'''
*'''[[Anderson's Black Rock, Inc. v. Pavement Co. (KyleR)]]'''
*'''[[KSR International Co. v. Teleflex, Inc. (KyleR)]]'''

''Patentability:''
*'''[[Gottschalk v. Benson (KyleR)]]'''
*'''[[Diamond v. Diehr(KyleR)]]'''
*'''[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. (KyleR)]]'''
*'''[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. (KyleR)]]'''
*'''[[Bilski v. Kappos (KyleR)]]'''

''Statutory Bars''
*'''[[Elizabeth v. American Nicholson Pavement Company (KyleR)]]'''
*'''[[D.L. Auld Co. v. Chroma Graphics Corp. (KyleR)]]'''
*'''[[Lough v. Brunswick Corp. (KyleR)]]'''

ESB Briefs

2011-03-03T21:29:35Z

KyleR:

Here is a list of briefs for the Electric Storage Battery Co v. Shimadzu case. Add your name next to the list for the one with the fewest names and read that one.
* Reply Brief for Respondents. (Feb. 27, 1939)
#Michael Madden
#Hwong1
#croetzel
#kroshak
#
#
#
#
#
#
* Reply Brief for Petitioner. (Feb. 7, 1939)
#Cmadiga1
#90144463
#901422128
#jpotter2
#
#
#
#
#
#
* Brief for Respondents (Jan. 28, 1939)
#LMiller
#Josh Bradley
#Brobins
#
#
#
#
#
#
#
* Brief for Petitioner. (Jan. 1939)
#Kschlax
#Andy Stulc
#Mzahm
#
#
#
#
#
#
#

D.L. Auld Co. v. Chroma Graphics Corp. (KyleR)

2011-02-21T01:03:04Z

KyleR: Created page with "Overview ---- *decided by U.S. Court of Appeals, Federal Circuit in 1983 *Auld sues Chroma for infringement of Patent No. 4,100,010 (the Waugh patent) Back to '''[[Course N..."

Overview
----
*decided by U.S. Court of Appeals, Federal Circuit in 1983
*Auld sues Chroma for infringement of Patent No. 4,100,010 (the Waugh patent)

Back to '''[[Course Notes (KyleR)]]'''

Course Notes (KyleR)

2011-02-21T01:00:43Z

KyleR:

*'''[[Graham v. John Deere (KyleR)]]'''
*'''[[U.S. v. Adams (KyleR)]]'''
*'''[[Anderson's Black Rock, Inc. v. Pavement Co. (KyleR)]]'''
*'''[[KSR International Co. v. Teleflex, Inc. (KyleR)]]'''

*'''[[Bilski v. Kappos (KyleR)]]'''

*'''[[Elizabeth v. American Nicholson Pavement Company (KyleR)]]'''
*'''[[D.L. Auld Co. v. Chroma Graphics Corp. (KyleR)]]'''
*'''[[Lough v. Brunswick Corp. (KyleR)]]'''

Elizabeth v. American Nicholson Pavement Company (KyleR)

2011-02-21T00:59:08Z

KyleR: Created page with "Overview ---- *decided by District Court of NJ in 1877 *appealed from Circuit Court of U.S. *Samuel Nicholson patented a method of constructing road pavement **first patent issue..."

Overview
----
*decided by District Court of NJ in 1877
*appealed from Circuit Court of U.S.
*Samuel Nicholson patented a method of constructing road pavement
**first patent issued in August 1854
**second patent issued in August 1867
*Nicholson sued the city of Elizabeth, NJ for infringing on his patent
**Elizabeth claims Nicholson's patent is not novel and was in public use 6 years before patent application

History of Patent
----
*Nicholson described invention to Patent Office in August 1847
*Nicholson constructs experimental patch of pavement in June 1848 near Boston
*Hosking's patent is the only one that could challenge Nicholson's novelty
**Hosking patent not published until March 1850 (foreign country)

Issue of Public Use
----
*Nicholson applied pavement to a public toll road belonging to the Boston and Roxbury Mill Corporation of which Nicholson was a stockholder and treasurer
*Nicholson claims the application was an experiment to test the effect of heavily loaded wagons and varied use on the durability of the pavement
**experiments are not considered public use
*this application constitutes an experiment because:
*#Nicholson does not voluntarily allow others to make and use it
*#pavement is not on sale for general use
*#Nicholson kept the invention under his own control
*#Nicholson is only attempting to perfect his invention before selling it
*#the nature of street pavement means it can only be experimented on in public
*"It is not a public knowledge of his invention that precludes the inventor from obtaining a patent for it, but a public use or sale of it."

Back to '''[[Course Notes (KyleR)]]'''

Course Notes (KyleR)

2011-02-21T00:40:07Z

KyleR:

Bilski v. Kappos (KyleR)

2011-02-14T01:19:38Z

KyleR:

'''Bilski v. Kappos'''
*'''[[Brief of American Bar Association (KyleR)]]'''

Overview
----
*patent application at issue:
**how commodities buyers and sellers in the energy market can hedge against risk of price changes
***Claim 1: series of steps for how to hedge risk
***Claim 4: places Claim 1 into a mathematical formula
*patent application denied by patent examiner, Board of Patent Appeals and Interferences agreed, Federal Circuit agreed, Supreme Court agreed
*Federal Circuit says a process is patent eligible if it:
*#is tied to a particular machine or apparatus,
*#transforms an article into a different state or thing
*Supreme Court denies patent eligibility because it constitutes an abstract idea
**Court does not need to define further what constitutes a patentable process

Opinion of Court (Kennedy)
----
*Court precedents provide three exceptions to Section 101's patent-eligibility principles:
**"laws of nature, physical phenomena, and abstract ideas"
*definition of "process" (Section 100(b)):
**a process is a "process, art or method, and included a new use of a known process, machine, manufacture, composition of matter, or material"
*machine-or-transformation test as sole test for what constitutes a process is wrong
**Court is unaware of any "ordinary, contemporary, common meaning" of the work "process" that requires it be linked to a machine or transformation
*Court is unaware of any "ordinary, contemporary, common meaning" of the work "method" that would exclude business methods from patent eligibility
*this particular claim is not patentable subject matter because it is an abstract idea

Concurring opinion (Stevens)
----
*wants to "restore patent law to its historical and constitutional moorings."
*any series of steps that is not an abstract idea should not constitute a "process"
**business methods, for instance
*Court did not provide a satisfactory description of what constitutes an unpatentable abstract idea
*the term "process" has a unique meaning in patent law
**cannot define "process" based on contextual clues because the definition includes the term "process"
**must look to history to define "process"
***history has always held that a method of doing business is not a process

Concurring opinion (Breyer)
----
*agrees with Stevens that business methods are not patentable processes

Back to '''[[Course Notes (KyleR)]]'''

Bilski v. Kappos (KyleR)

2011-02-14T01:19:18Z

KyleR:

*'''[[Brief of American Bar Association (KyleR)]]'''

'''Bilski v. Kappos'''

Overview
----
*patent application at issue:
**how commodities buyers and sellers in the energy market can hedge against risk of price changes
***Claim 1: series of steps for how to hedge risk
***Claim 4: places Claim 1 into a mathematical formula
*patent application denied by patent examiner, Board of Patent Appeals and Interferences agreed, Federal Circuit agreed, Supreme Court agreed
*Federal Circuit says a process is patent eligible if it:
*#is tied to a particular machine or apparatus,
*#transforms an article into a different state or thing
*Supreme Court denies patent eligibility because it constitutes an abstract idea
**Court does not need to define further what constitutes a patentable process

Opinion of Court (Kennedy)
----
*Court precedents provide three exceptions to Section 101's patent-eligibility principles:
**"laws of nature, physical phenomena, and abstract ideas"
*definition of "process" (Section 100(b)):
**a process is a "process, art or method, and included a new use of a known process, machine, manufacture, composition of matter, or material"
*machine-or-transformation test as sole test for what constitutes a process is wrong
**Court is unaware of any "ordinary, contemporary, common meaning" of the work "process" that requires it be linked to a machine or transformation
*Court is unaware of any "ordinary, contemporary, common meaning" of the work "method" that would exclude business methods from patent eligibility
*this particular claim is not patentable subject matter because it is an abstract idea

Concurring opinion (Stevens)
----
*wants to "restore patent law to its historical and constitutional moorings."
*any series of steps that is not an abstract idea should not constitute a "process"
**business methods, for instance
*Court did not provide a satisfactory description of what constitutes an unpatentable abstract idea
*the term "process" has a unique meaning in patent law
**cannot define "process" based on contextual clues because the definition includes the term "process"
**must look to history to define "process"
***history has always held that a method of doing business is not a process

Concurring opinion (Breyer)
----
*agrees with Stevens that business methods are not patentable processes

Back to '''[[Course Notes (KyleR)]]'''

Bilski v. Kappos (KyleR)

2011-02-14T01:19:02Z

KyleR:

Bilski v. Kappos (KyleR)

2011-02-14T01:18:02Z

KyleR:

*'''[[Brief of American Bar Association (KyleR)]]'''

'''Bilski v. Kappos'''

Overview
----
*patent application at issue:
**how commodities buyers and sellers in the energy market can hedge against risk of price changes
***Claim 1: series of steps for how to hedge risk
***Claim 4: places Claim 1 into a mathematical formula
*patent application denied by patent examiner, Board of Patent Appeals and Interferences agreed, Federal Circuit agreed, Supreme Court agreed
*Federal Circuit says a process is patent eligible if it:
*#is tied to a particular machine or apparatus,
*#transforms an article into a different state or thing

Opinion of Court (Kennedy)
----
*Court precedents provide three exceptions to Section 101's patent-eligibility principles:
**"laws of nature, physical phenomena, and abstract ideas"
*definition of "process" (Section 100(b)):
**a process is a "process, art or method, and included a new use of a known process, machine, manufacture, composition of matter, or material"
*machine-or-transformation test as sole test for what constitutes a process is wrong
**Court is unaware of any "ordinary, contemporary, common meaning" of the work "process" that requires it be linked to a machine or transformation
*Court is unaware of any "ordinary, contemporary, common meaning" of the work "method" that would exclude business methods from patent eligibility
*this particular claim is not patentable subject matter because it is an abstract idea

Concurring opinion (Stevens)
----
*wants to "restore patent law to its historical and constitutional moorings."
*any series of steps that is not an abstract idea should not constitute a "process"
**business methods, for instance
*Court did not provide a satisfactory description of what constitutes an unpatentable abstract idea
*the term "process" has a unique meaning in patent law
**cannot define "process" based on contextual clues because the definition includes the term "process"
**must look to history to define "process"
***history has always held that a method of doing business is not a process

Concurring opinion (Breyer)
----
*agrees with Stevens that business methods are not patentable processes

Back to '''[[Course Notes (KyleR)]]'''

Bilski v. Kappos (KyleR)

2011-02-14T01:17:01Z

KyleR:

*'''[[Brief of American Bar Association (KyleR)]]'''

'''Bilski v. Kappos'''

Overview
----
*patent application at issue:
**how commodities buyers and sellers in the energy market can hedge against risk of price changes
***Claim 1: series of steps for how to hedge risk
***Claim 4: places Claim 1 into a mathematical formula
*patent application denied by patent examiner, Board of Patent Appeals and Interferences agreed, Federal Circuit agreed, Supreme Court agreed
*Federal Circuit says a process is patent eligible if it:
*#is tied to a particular machine or apparatus,
*#transforms an article into a different state or thing

Opinion of Court (Kennedy)
----
*Court precedents provide three exceptions to Section 101's patent-eligibility principles:
**"laws of nature, physical phenomena, and abstract ideas"
*definition of "process" (Section 100(b)):
**a process is a "process, art or method, and included a new use of a known process, machine, manufacture, composition of matter, or material"
*machine-or-transformation test as sole test for what constitutes a process is wrong
**Court is unaware of any "ordinary, contemporary, common meaning" of the work "process" that requires it be linked to a machine or transformation
*Court is unaware of any "ordinary, contemporary, common meaning" of the work "method" that would exclude business methods from patent eligibility
*this particular claim is not patentable subject matter because it is an abstract idea

Concurring opinion (Stevens)
----
*wants to "restore patent law to its historical and constitutional moorings."
*any series of steps that is not an abstract idea should not constitute a "process"
**business methods, for instance
*Court did not provide a satisfactory description of what constitutes an unpatentable abstract idea
*the term "process" has a unique meaning in patent law
**cannot define "process" based on contextual clues because the definition includes the term "process"
**must look to history to define "process"
***history has always held that a method of doing business is not a process

Back to '''[[Course Notes (KyleR)]]'''

Brief of American Bar Association (KyleR)

2011-02-14T00:48:01Z

KyleR:

*The ABA attempts to convey the attitude of its vast membership to the Court
*Urges the Court to decide this case "incrementally" by holding the claim does not define a "process" as defined by Section 101 because it is an "abstract idea"
**making a "broad pronouncement of new legal principles" could inadvertently restrict future patent claims
**the "machine-or-transformation" test should be rejected because it is too rigid of a definition

*"The same flexibility is appropriately applied here. History teaches us to anticipate developments in fields that are presently undiscovered or undeveloped - such as in the areas of biotechnology and computer software. Developments in some fields - such as in artificial intelligence and neural networks - will raise questions of patentability that are difficult to anticipate. Those developments will represent vital areas of growth and competition for the American economy, and will likely require the spur of patent protection. By contrast, adopting a single, encompassing standard to govern every process invention arising under Section 101 threatens to be over- or under-inclusive. Such a standard is likely to be poorly adapted to the many diverse types of inventions deserving of patent protection that will arise over the coming decades, and may adversely affect those yet-to-be conceived inventions in emerging or unknown technologies."

*this case can be resolved by saying that the patent claims an abstract idea
**"Patent law should not interfere with the exercise of human intellect by granting a monopoly on processes in which thinking is central."
**human judgment is central to these claims
**Claim 1 of the Bilski patent claims a series of steps. These include “initiating a series of transactions … wherein … consumers purchase [a] commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of [the] consumer.”
***the person using this "process" must decide which transaction to perform, the commodity to be used, the risk, etc...

*it was wrong of the Federal Circuit to declare the "machine-or-transformation" test as conclusive:
**Benson and Flook both said a patentable process does not necessarily need to be tied to a machine or change material to a new state

Back to '''[[Bilski v. Kappos (KyleR)]]'''

Brief of American Bar Association (KyleR)

2011-02-14T00:47:43Z

KyleR:

Brief of American Bar Association (KyleR)

2011-02-14T00:45:19Z

KyleR:

Brief of American Bar Association (KyleR)

2011-02-14T00:44:24Z

KyleR:

*The ABA attempts to convey the attitude of its vast membership to the Court
*Urges the Court to decide this case "incrementally" by holding the claim does not define a "process" as defined by Section 101 because it is an "abstract idea"
**making a "broad pronouncement of new legal principles" could inadvertently restrict future patent claims
**the "machine-or-transformation" test should be rejected because it is too rigid of a definition

*"The same flexibility is appropriately applied here. History teaches us to anticipate developments in fields that are presently undiscovered or undeveloped - such as in the areas of biotechnology and computer software. Developments in some fields - such as in artificial intelligence and neural networks - will raise questions of patentability that are difficult to anticipate. Those developments will represent vital areas of growth and competition for the American economy, and will likely require the spur of patent protection. By contrast, adopting a single, encompassing standard to govern every process invention arising under Section 101 threatens to be over- or under-inclusive. Such a standard is likely to be poorly adapted to the many diverse types of inventions deserving of patent protection that will arise over the coming decades, and may adversely affect those yet-to-be conceived inventions in emerging or unknown technologies."

*this case can be resolved by saying that the patent claims an abstract idea
**"Patent law should not interfere with the exercise of human intellect by granting a monopoly on processes in which thinking is central."
**human judgment is central to these claims

Claim 1 of the Bilski patent claims a series of steps. These include “initiating a series of transactions … wherein … consumers purchase [a] commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of [the] consumer.”
*the person using this "process" must decide which transaction to perform, the commodity to be used, the risk, etc...

Back to '''[[Bilski v. Kappos (KyleR)]]'''

Brief of American Bar Association (KyleR)

2011-02-13T16:53:10Z

KyleR:

User:KyleR

2011-02-13T16:48:13Z

KyleR:

*'''[[Homework 1/24 (KyleR)]]'''

*'''[[Homework 1/28 (KyleR)]]'''

*'''[[Homework 2/4 (KyleR)]]'''

*'''[[Homework 2/9 - Nonobviousness (KyleR)]]'''

*'''[[Course Notes (KyleR)]]'''

Brief of American Bar Association (KyleR)

2011-02-13T16:47:39Z

KyleR: Created page with " Back to '''Bilski v. Kappos (KyleR)'''"

Back to '''[[Bilski v. Kappos (KyleR)]]'''

Bilski v. Kappos (KyleR)

2011-02-13T16:46:57Z

KyleR:

*'''[[Brief of American Bar Association (KyleR)]]'''

Bilski v. Kappos

Back to '''[[Course Notes (KyleR)]]'''

Bilski v. Kappos (KyleR)

2011-02-13T16:46:20Z

KyleR:

*'''[[Brief of American Bar Association (KyleR)]]'''

Bilski v. Kappos

Course Notes (KyleR)

2011-02-13T16:45:43Z

KyleR: