Bill Goodwine's Wiki - User contributions [en]

Quanta Brief - Karch

2011-04-29T18:01:42Z

Sam Karch:

'''Sam Karch'''

'''Summary of Brief'''

Quanta Brief - Karch

2011-04-29T18:00:39Z

Sam Karch: Created page with "'''Sam Karch Summary of Brief'''"

'''Sam Karch

Summary of Brief'''

Here in list of arguments in Quanta

2011-04-29T17:59:47Z

Sam Karch:

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]]

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

[[Quanta Brief - Kschlax]]

[[Quanta Brief - Christine Roetzel]]

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

[[Quanta Brief: 901424607]]

[[Quanta Brief - 901425018]]

[[Quanta Brief- Xiao Dong]]

[[Quanta Brief - Ackroyd]]

[[Quanta Brief - Karch]]

Homework 7: April 4 Karch

2011-04-06T16:35:11Z

Sam Karch: Created page with " == BRIEF: In favor of Honeywell == The patent under discussion was obtained by Honeywell in 1982 for a technology that controls airflow surges in an auxillary power unit (APU) ..."

== BRIEF: In favor of Honeywell ==

The patent under discussion was obtained by Honeywell in 1982 for a technology that controls airflow surges in an auxillary power unit (APU) using inlet guide vanes (IGV). It has been determined in the courts that Sundstrand did not not infringe on Honeywell’s patent for two main reasons:

#At the time of application for patent, Honeywell revised and narrowed its claims in order to be valid relative to prior art. This action concedes the use of the Doctrine of Equivalents, as if the Doctrine cannot be used to determine Honeywell’s patent invalid, Honeywell cannot use the Doctrine of Equivalents to determine that Sundstrand infringed.
#Sundstrand used the IGV technology for an additional purpose to what Honeywell’s claims lay out. Due to the speed in which Sundstrand implemented this additional purpose from the time Sundstrand first started using the technology, this use was foreseeable, and should have been included in Honeywell’s patent in order to determine infringement.

Both of these points should be found to be faulty. The concept of history estoppel is to prevent parties from using conflicting arguments in court at different times relating to the same thing. While Honeywell did surrender some equivalents through the action of revising and narrowing its claims, this does not mean Honeywell surrendered any and all uses of the Doctrine of Equivalents. Both versions of the Honeywell patent included the IGV use to control surge, which is the central issue as far as infringement by Sundstrand, and this claim was not ammended or restricted at any time. Honeywell should not be able to use the Doctrine of Equivalents for every claim, as some of them were changed from the original patent, but for the claim at issue, the Doctrine is still valid, and should not be blocked by estoppel.

Sundstrand claims their additional use of IGVs to be foreseeable in nature, but this use did not occur until nearly a decade after the Honeywell patent was issued. If this use was foreseeable, this substantial amount of time would not have passed before Sundstrand or anyone else used IGVs in this fashion. Sundstrand used much the same system to accomplish a substantially similar goal in a substantially similar way, with an added step to what the Honeywell patent lays out, making Sundstrand’s invention dependent on the Honeywell patent, meaning Sundstrand infringed. Additionally, Sundstrand previously contended that their invention was unique, which would imply unforseeability.

Because of the above issues, we contend that Sundstrand did infringe on the Honeywell patent.

User:Sam Karch

2011-04-06T16:34:43Z

Sam Karch: /* Homeworks */

== Homeworks ==
[[Homework 1: Jan 24 Karch]]
 
[[Homework 2: Jan 28 Karch]]
 
[[Homework 3: Feb 4 Karch]]
 
[[Homework 4: Feb 9 Karch]]
 
[[Homework 5: Feb 14 Karch]]
 
[[Homework 6: Mar 23 Karch]]
 
[[Homework 7: Mar 30 Karch]]
 
[[Homework 7: April 4 Karch]]

== Notes ==
[[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]] [[Bonito Karch]]
 
[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]] [[Hotchkiss Karch]]
 
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] [[A. & P. Tea Co. Karch]]
 
[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] [[Lyon Karch]]
 
[[Graham v. John Deere, 383 U.S. 1 (1966)]] [[Graham v. John Deere Karch]]
 
[[US v. Adams, 383 U.S. 39 (1966)]] [[US v Adams Karch]]
 
[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] [[Anderson's Karch]]
 
[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]] [[KSR Karch]]
 
[[Egbert v. Lippmann, 104 U.S. 333 (1881)]] [[Egbert v Lippmann Karch]]
 
[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]] [[Metallizing Engineering v Kenyon Karch]]
 
[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]] [[D.L. Auld v. Chroma Graphics Karch]]
 
[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]] [[Elizabeth v. American Pavement Karch]]
 
[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]] [[Lough v. Brunswick Karch]]
 
[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]] [[Battery v. Shimadzu Karch]]
 
[[Miscellaneous]]

Doctrine of Equivalents Case List

2011-04-04T15:51:46Z

Sam Karch:

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

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

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

Bill Goodwine

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

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

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

901431048

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

Brobins

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

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

901444263

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

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

901471466

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

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

901479977

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

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

901338276

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

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

901417119 - Bcastel1

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

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

901330223

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

901316153

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

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

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

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

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

Eric Paul

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

Anthony Schlehuber 901477539
*Lemelson v. Mattel (1992) 968 F.2d 1202
Lemelson sued Mattel on the grounds that the Hot Wheels car track infringed on his patented track design. In the circuit court Mattel was found to have infringed on Lemelson’s track design. However, in the CAFC, this decision was overturned due to limitations added to the Lemelson patent during the application process to prevent it from infringing on the prior art. Lemelson’s patent claimed a system of vertical track supports to differentiate it from earlier works. Since these claims were needed for Lemelson’s patent to be valid and Mattel’s track did not contain these supports, it was ruled that Mattel had not infringed.
Peter Mitros (901461727)

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

Gillian Allsup

901281608

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

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

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

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

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

Snooki

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

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

901422128

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

901 41 7852

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

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

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

901419437

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

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

Erich Wolz

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

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

Christine Roetzel - 901425022

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

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

901439143

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

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

Julia Potter (jpotter2)

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

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

901437068

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

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

901438174

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

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

cmadiga1

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

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

Andy Stulc

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

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

gtorrisi

*Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., Smc v. Festo Corp. (1997)

Holder of two patents for magnetically coupled rodless cylinders sued infringer who was selling an aluminum alloy cylinder of same purpose. District court found infringement due to doctrine of equivalence and awarded summary judgement in favor of patent holder. Appeal was denied because the court of appeals judge ruled (1) substantial evidence supported the jury’s finding of infringement (2) the holder should not be hindered to argue equivalency and (3) the patent holders lost profits due to infringement provided appropriate assessment of damages.

Andrew Chipouras

*SUNBEAM PRODUCTS, INC., (doing business as Jarden Consumer Solutions), Plaintiff-Appellant, v. HOMEDICS, INC., Defendant-Appellee.

The patentee, Sunbeam, brought action against its competitor alleging infrigment for a patent for force-transmitting bearings for a platform scale. Sunbeam’s bearings were attached to the platform by loose tabs which allowed some horizontal displacement and also ensured that the force was transmitted in the vertical direction. Whereas, Homedics’ bearings attached by dimples on the under side of the scale, which allowed some moment forces to occur from the load. Consequently, it was understood that Sunbeam had improved on the prior art by creating a scale that exerted a pure downward force, and this was claimed in their patent. Thus, the Court of Appeals held that Sunbeam’s patent did not cover the rocking and pivoting bearings that were disclosed in prior art. It held that that Homedics’ scale did not infringe under doctrine of equivalents, and that district court could sua sponte grant summary judgement in favor of Homedics.

Bobby Powers (901349446)

Sam Karch

*Lemelson v. General Mills, Inc. 968 F.2d 1202 June 30, 1992

Lemelson obtained a patent on "a flexible track upon which toy cars run." He then sued General Mills for patent infringement for their incredibly popular "Hot Wheels" product. The District Court ruled in favor of Lemelson, and General Mills appealed. There was prior art that is referred to as "Gardiol" with extremely similar qualities to the Lemelson patent. The Court of Appeals reversed the Circuit Court's decision, saying "The evidence at trial demonstrated that the Hot Wheels track is basically the same as Gardiol, but without the internal support. Hot Wheels uses external attachments, as does Lemelson, to define the shape of the track for any particular configuration. However, there is no evidence of any other significant difference between Hot Wheels and Gardiol. The evidence at bar pointed to nothing in the Hot Wheels track which is not found in Gardiol. Gardiol differs only in having an extra element-the internal core for structural support... Lemelson failed to demonstrate that the Hot Wheels track included each claim limitation or its equivalent... We therefore conclude that no reasonable jury could read reissue claim 3 both to be valid in view of Gardiol AND infringed by Hot Wheels. When properly placed in the context of the prosecution history and the demonstrated meaning of the several clauses of the claim, these are inherently inconsistent conclusions." Basically, there is no way that Lemelson could be viewed as different than Gardiol under the doctrine of equivalents, and therefore a valid patent, while saying that the "Hot Wheels" product was equivalent to the Lemelson patent. Either "Hot Wheels" infringed, but the patent was invalid due to prior art, or the patent was valid, but "Hot Wheels" did not infringe.

Homework 7: Mar 30 Karch

2011-03-30T15:08:12Z

Sam Karch: Created page with "== Lemelson v. General Mills, Inc. == 968 F.2d 1202 June 30, 1992 Rehearing Denied Aug. 11, 1992. Suggestion for Rehearing In Banc Declined Sept. 11, 1992..."

== Lemelson v. General Mills, Inc. ==
968 F.2d 1202
 
June 30, 1992
 
Rehearing Denied Aug. 11, 1992.
 
Suggestion for Rehearing In Banc
 
Declined Sept. 11, 1992.

Patent infringement suit was filed against toy company alleging that its “Hot Wheels” toy car track infringed plaintiff's toy track. The United States District Court for the Northern District of Illinois, Charles P. Kocoras, J., entered judgment on jury verdict in favor of plaintiff and denied defendant's motion for judgment notwithstanding verdict or for new trial. Defendant appealed. The Court of Appeals, Plager, Circuit Judge, held that Mattel's “Hot Wheels” toy car track could not be found to meet all limitations contained in allegedly infringed patent either literally or by equivalents absent sufficient evidence that track was distinguishable from prior art.

===Background===
The claimed invention involved in this case relates to a flexible track upon which toy cars run. Mattel's ‘Hot Wheels,’ the first major commercialization of such a toy, became one of the most commercially successful toys in history.

emelson's original patent application for a “Toy Track” was filed in the U.S. Patent and Trademark Office (PTO) on May 14, 1967, with one independent claim and eight dependent claims. That original independent claim, reproduced below, consisted of what would later become the first five of the seven clauses in claim 3 of the reissue patent

[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.

At one point Lemelson told Mattel that he was considering legal action for patent infringement. He also told Mattel that he was “extremely busy” in other patent litigations and in his business activities “relating to patent licensing,” but that he would “eventually” get around to suing Mattel.

===Opinion===
The evidence at trial demonstrated that the Hot Wheels track is basically the same as Gardiol, but without the internal support. Hot Wheels uses external attachments, as does Lemelson, to define the shape of the track for any particular configuration. However, there is no evidence of any other significant difference between Hot Wheels and Gardiol. Both have an upper surface for supporting a movable object. Both are capable of undergoing three-dimensional deformation. Both have longitudinal sides which limit the lateral movement of the movable object. The evidence at bar pointed to nothing in the Hot Wheels track which is not found in Gardiol. Gardiol differs only in having an extra element-the internal core for structural support.

In arguing at trial that the claims of his patent ‘read on’ the accused device, Lemelson failed to demonstrate that the Hot Wheels track included each claim limitation or its equivalent. The testimony on the point contributed nothing of substance to the language of the claims, e.g., Lemelson testified that clause [f] “adds something to the earlier phrases of the claim and that is that the guide means includes a pair of spaced apart runner portions for defining the pathway of a vehicle moving over the track,” and that clause [g] “adds some language to the preceding phrases of the claim by saying that the ‘spaced apart runner portions include upwardly extending rails.’ ”

But there is no substantive evidence to distinguish Hot Wheels from Gardiol; Lemelson identified no elements in the Hot Wheels track that correspond to limitations [f] and [g]. Absent sufficient evidence in the record to support the conclusion that Hot Wheels is distinguishable from Gardiol, it follows that Hot Wheels could not be found to meet all of the limitations contained in the Lemelson patent, either literally or by equivalents.

We therefore conclude that no reasonable jury could read reissue claim 3 both to be valid in view of Gardiol AND infringed by Hot Wheels. When properly placed in the context of the prosecution history and the demonstrated meaning of the several clauses of the claim, these are inherently inconsistent conclusions. To the extent the jury so concluded, there was error, and the trial court should have granted the motion for JNOV as to the finding of infringement.

Each party is to bear its own costs.

REVERSED.

User:Sam Karch

2011-03-30T14:46:43Z

Sam Karch: /* Homeworks */

== Homeworks ==
[[Homework 1: Jan 24 Karch]]
 
[[Homework 2: Jan 28 Karch]]
 
[[Homework 3: Feb 4 Karch]]
 
[[Homework 4: Feb 9 Karch]]
 
[[Homework 5: Feb 14 Karch]]
 
[[Homework 6: Mar 23 Karch]]
 
[[Homework 7: Mar 30 Karch]]

== Notes ==
[[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]] [[Bonito Karch]]
 
[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]] [[Hotchkiss Karch]]
 
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] [[A. & P. Tea Co. Karch]]
 
[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] [[Lyon Karch]]
 
[[Graham v. John Deere, 383 U.S. 1 (1966)]] [[Graham v. John Deere Karch]]
 
[[US v. Adams, 383 U.S. 39 (1966)]] [[US v Adams Karch]]
 
[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] [[Anderson's Karch]]
 
[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]] [[KSR Karch]]
 
[[Egbert v. Lippmann, 104 U.S. 333 (1881)]] [[Egbert v Lippmann Karch]]
 
[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]] [[Metallizing Engineering v Kenyon Karch]]
 
[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]] [[D.L. Auld v. Chroma Graphics Karch]]
 
[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]] [[Elizabeth v. American Pavement Karch]]
 
[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]] [[Lough v. Brunswick Karch]]
 
[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]] [[Battery v. Shimadzu Karch]]
 
[[Miscellaneous]]

Homework 6: Mar 23 Karch

2011-03-28T14:11:34Z

Sam Karch: /* MEHL/Biophile Intern. Corp. v. Milgraum */

==Prior Description in Printed Publication==
===MEHL/Biophile Intern. Corp. v. Milgraum===
United States Court of Appeals, Federal Circuit.

Sept. 30, 1999. Rehearing Denied Oct. 27, 1999.

===Summary===

Patentee brought action for infringement of patent claiming method of hair removal using laser. The United States District Court for the District of New Jersey, Alfred M. Wolin, J., 8 F.Supp.2d 434, granted summary judgment of invalidity, and patentee appealed. The Court of Appeals, Rader, Circuit Judge, held that: (1) patent was not anticipated by instruction manual for laser used to remove tattoos, but (2) patent was anticipated by prior art article.

Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the limitations claimed in a patent, it anticipates. Inherency of patent claim's limitations in a prior art reference, for anticipation purposes, is not necessarily coterminous with the knowledge of those of ordinary skill in the art; artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art. Patented method of removing hair by using a laser was not anticipated by instruction manual for laser used to remove tattoos, since manual did not include limitation of aligning laser over a hair follicle opening, and such alignment was not inherent in manual's disclosure, notwithstanding possibility of such alignment. However, patented method of removing hair by using a laser was anticipated by prior art article documenting study of tissue damage induced by laser pulses on epilated backs of guinea pigs, which showed that natural result flowing from the operation as taught would result in alignment of the laser light over a hair follicle, as claimed in the patent, notwithstanding fact that study involved guinea pigs or that article failed to mention hair depilation as a goal.

Dr. Zaias recognized that the same principles that govern laser absorption in skin pigmented by a tattoo would also focus laser absorption on the natural skin pigment found in the papilla. More specifically, the papilla contains granules (called melanosomes) of a dark pigment (called melanin). A Q-switched ruby laser aimed at the hair follicle will penetrate the skin and reach the papillary melanin. At a particular wavelength, the laser will heat up and destroy the papilla without damaging surrounding tissue.

Homework 6: Mar 23 Karch

2011-03-28T14:11:20Z

Sam Karch: /* MEHL/Biophile Intern. Corp. v. Milgraum */

==Prior Description in Printed Publication==
===MEHL/Biophile Intern. Corp. v. Milgraum===
 
United States Court of Appeals, Federal Circuit.

Sept. 30, 1999. Rehearing Denied Oct. 27, 1999.

===Summary===

Patentee brought action for infringement of patent claiming method of hair removal using laser. The United States District Court for the District of New Jersey, Alfred M. Wolin, J., 8 F.Supp.2d 434, granted summary judgment of invalidity, and patentee appealed. The Court of Appeals, Rader, Circuit Judge, held that: (1) patent was not anticipated by instruction manual for laser used to remove tattoos, but (2) patent was anticipated by prior art article.

Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the limitations claimed in a patent, it anticipates. Inherency of patent claim's limitations in a prior art reference, for anticipation purposes, is not necessarily coterminous with the knowledge of those of ordinary skill in the art; artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art. Patented method of removing hair by using a laser was not anticipated by instruction manual for laser used to remove tattoos, since manual did not include limitation of aligning laser over a hair follicle opening, and such alignment was not inherent in manual's disclosure, notwithstanding possibility of such alignment. However, patented method of removing hair by using a laser was anticipated by prior art article documenting study of tissue damage induced by laser pulses on epilated backs of guinea pigs, which showed that natural result flowing from the operation as taught would result in alignment of the laser light over a hair follicle, as claimed in the patent, notwithstanding fact that study involved guinea pigs or that article failed to mention hair depilation as a goal.

Dr. Zaias recognized that the same principles that govern laser absorption in skin pigmented by a tattoo would also focus laser absorption on the natural skin pigment found in the papilla. More specifically, the papilla contains granules (called melanosomes) of a dark pigment (called melanin). A Q-switched ruby laser aimed at the hair follicle will penetrate the skin and reach the papillary melanin. At a particular wavelength, the laser will heat up and destroy the papilla without damaging surrounding tissue.

Homework 6: Mar 23 Karch

2011-03-28T14:10:53Z

Sam Karch: /* Prior Description in Printed Publication */

==Prior Description in Printed Publication==
==MEHL/Biophile Intern. Corp. v. Milgraum==
 
United States Court of Appeals, Federal Circuit.

Sept. 30, 1999. Rehearing Denied Oct. 27, 1999.

===Summary===

Patentee brought action for infringement of patent claiming method of hair removal using laser. The United States District Court for the District of New Jersey, Alfred M. Wolin, J., 8 F.Supp.2d 434, granted summary judgment of invalidity, and patentee appealed. The Court of Appeals, Rader, Circuit Judge, held that: (1) patent was not anticipated by instruction manual for laser used to remove tattoos, but (2) patent was anticipated by prior art article.

Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the limitations claimed in a patent, it anticipates. Inherency of patent claim's limitations in a prior art reference, for anticipation purposes, is not necessarily coterminous with the knowledge of those of ordinary skill in the art; artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art. Patented method of removing hair by using a laser was not anticipated by instruction manual for laser used to remove tattoos, since manual did not include limitation of aligning laser over a hair follicle opening, and such alignment was not inherent in manual's disclosure, notwithstanding possibility of such alignment. However, patented method of removing hair by using a laser was anticipated by prior art article documenting study of tissue damage induced by laser pulses on epilated backs of guinea pigs, which showed that natural result flowing from the operation as taught would result in alignment of the laser light over a hair follicle, as claimed in the patent, notwithstanding fact that study involved guinea pigs or that article failed to mention hair depilation as a goal.

Dr. Zaias recognized that the same principles that govern laser absorption in skin pigmented by a tattoo would also focus laser absorption on the natural skin pigment found in the papilla. More specifically, the papilla contains granules (called melanosomes) of a dark pigment (called melanin). A Q-switched ruby laser aimed at the hair follicle will penetrate the skin and reach the papillary melanin. At a particular wavelength, the laser will heat up and destroy the papilla without damaging surrounding tissue.

Homework 6: Mar 23 Karch

2011-03-28T14:10:29Z

Sam Karch: /* Prior Description in Printed Publication */

==Prior Description in Printed Publication==
MEHL/Biophile Intern. Corp. v. Milgraum
 
United States Court of Appeals, Federal Circuit.

Sept. 30, 1999. Rehearing Denied Oct. 27, 1999.

===Summary===

Patentee brought action for infringement of patent claiming method of hair removal using laser. The United States District Court for the District of New Jersey, Alfred M. Wolin, J., 8 F.Supp.2d 434, granted summary judgment of invalidity, and patentee appealed. The Court of Appeals, Rader, Circuit Judge, held that: (1) patent was not anticipated by instruction manual for laser used to remove tattoos, but (2) patent was anticipated by prior art article.

Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the limitations claimed in a patent, it anticipates. Inherency of patent claim's limitations in a prior art reference, for anticipation purposes, is not necessarily coterminous with the knowledge of those of ordinary skill in the art; artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art. Patented method of removing hair by using a laser was not anticipated by instruction manual for laser used to remove tattoos, since manual did not include limitation of aligning laser over a hair follicle opening, and such alignment was not inherent in manual's disclosure, notwithstanding possibility of such alignment. However, patented method of removing hair by using a laser was anticipated by prior art article documenting study of tissue damage induced by laser pulses on epilated backs of guinea pigs, which showed that natural result flowing from the operation as taught would result in alignment of the laser light over a hair follicle, as claimed in the patent, notwithstanding fact that study involved guinea pigs or that article failed to mention hair depilation as a goal.

Dr. Zaias recognized that the same principles that govern laser absorption in skin pigmented by a tattoo would also focus laser absorption on the natural skin pigment found in the papilla. More specifically, the papilla contains granules (called melanosomes) of a dark pigment (called melanin). A Q-switched ruby laser aimed at the hair follicle will penetrate the skin and reach the papillary melanin. At a particular wavelength, the laser will heat up and destroy the papilla without damaging surrounding tissue.

Homework 6: Mar 23 Karch

2011-03-25T13:58:22Z

Sam Karch: Created page with "==Prior Description in Printed Publication=="

==Prior Description in Printed Publication==

User:Sam Karch

2011-03-23T04:20:33Z

Sam Karch: /* Homeworks */

== Homeworks ==
[[Homework 1: Jan 24 Karch]]
 
[[Homework 2: Jan 28 Karch]]
 
[[Homework 3: Feb 4 Karch]]
 
[[Homework 4: Feb 9 Karch]]
 
[[Homework 5: Feb 14 Karch]]
 
[[Homework 6: Mar 23 Karch]]

== Notes ==
[[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]] [[Bonito Karch]]
 
[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]] [[Hotchkiss Karch]]
 
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] [[A. & P. Tea Co. Karch]]
 
[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] [[Lyon Karch]]
 
[[Graham v. John Deere, 383 U.S. 1 (1966)]] [[Graham v. John Deere Karch]]
 
[[US v. Adams, 383 U.S. 39 (1966)]] [[US v Adams Karch]]
 
[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] [[Anderson's Karch]]
 
[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]] [[KSR Karch]]
 
[[Egbert v. Lippmann, 104 U.S. 333 (1881)]] [[Egbert v Lippmann Karch]]
 
[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]] [[Metallizing Engineering v Kenyon Karch]]
 
[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]] [[D.L. Auld v. Chroma Graphics Karch]]
 
[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]] [[Elizabeth v. American Pavement Karch]]
 
[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]] [[Lough v. Brunswick Karch]]
 
[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]] [[Battery v. Shimadzu Karch]]
 
[[Miscellaneous]]

ESB Briefs

2011-03-04T02:07:04Z

Sam Karch:

Here is a list of briefs for the Electric Storage Battery Co v. Shimadzu case. Add your name next to the list for the one with the fewest names and read that one.
* Reply Brief for Respondents. (Feb. 27, 1939)
#Michael Madden
#Hwong1
#croetzel
#kroshak
#Adam Mahood
#Michael Ackroyd
#Sam Karch
#
#
#
* Reply Brief for Petitioner. (Feb. 7, 1939)
#Cmadiga1
#90144463
#901422128
#jpotter2
#ewolz
#E W Hitchler
#
#
#
#
* Brief for Respondents (Jan. 28, 1939)
#LMiller
#Josh Bradley
#Brobins
#Ebingle
#kyergler
#BCastel1
#
#
#
#
* Brief for Petitioner. (Jan. 1939)
#Kschlax
#Andy Stulc
#Mzahm
#Rabot
#Peter Mitros
#Jacob Marmolejo
#
#
#
#

Battery v. Shimadzu Karch

2011-03-02T05:16:22Z

Sam Karch: Created page with "==Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)== On Writ of Certiorari to the United States Circuit Court of Appeals for the Third Circuit. This patent is theref..."

==Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)==

On Writ of Certiorari to the United States Circuit Court of Appeals for the Third Circuit.

This patent is therefore held valid and infringed.

The decree of the Circuit Court of Appeals must be reversed and the cause remanded to the District Court with directions to dismiss the bill as to Nos. 1,584,150 and 1,896,020, and to proceed, in the light of the dismissal as to those patents, to determine whether 1,584,149 is valid and infringed.

===Background===

patents granted to Genzo Shimadzu
#The earliest is for a method of forming a finely divided and, consequently, more chemically reactive, lead powder.
#The second is for a method or process of manufacturing a fine powder composed of lead suboxide and metallic lead and for the product of the process.
#The third is for an apparatus for the continuous production of lead oxides in the form of a dry fine powder. Such powder is useful in the manufacture of plates for storage batteries.

'''Questions'''
#In an infringement suit by the owner of a patent for an invention, made but not patented or published abroad, to restrain an innocent use, the inception of which antedates the application for patent, may the plaintiff prove that his actual date of invention was earlier than the commencement of the asserted infringing use?
#Is the delay of the patentee in this case in applying for patent a bar to relief for alleged infringement?
#Does commercial use of the patented process and apparatus in the alleged infringer's plant for more than two years prior to the application for patent preclude redress?

*The inventions which are the basis of the patents were conceived by Shimadzu and reduced to practise in Japan not later than August 1919.
*He did not disclose the inventions to anyone in the United States before he applied for United States patents.
*Application was presented for No. 1,584,149 on January 30, 1922; for No. 1,584,150 on July 14, 1923; and for No. 1,896,020 on April 27, 1926. The inventions were not patented or described in a printed publication in this or any foreign country prior to the filing of the applications.
*by the introduction of contemporaneous drawings and note books, to carry the date of invention back to August 1919, and the courts below fixed that as the date of invention and reduction to practise in Japan

*The petitioner, without knowledge of Shimadzu's inventions, began the use of a machine, which involved both the method and the apparatus of the patents, at Philadelphia, Pennsylvania, early in 1921 and attained commercial production in June 1921.

'''R.S. s 4886:''' ''Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, not known or used by others (in this country), (before his invention or discovery thereof), and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, (or more than two years prior to his application), and not in public use or on sale (in this country) for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law, and other due proceeding had, obtain a patent therefor.''

'''First'''
*The petitioner asserts that R.S. ss 4886, 4887, and 4923,[5] considered together, require one who has made an invention abroad to take as his date of invention the date of his application in the United States unless, prior thereto, the invention has been communicated and described to someone in this country, or has been patented abroad.
*The respondents insist that the sections have no such force. They say that where the alleged infringer is not acting under the supposed protection of a prior patent, but is using an unpatented process or device, the holder of a patent for a foreign invention, like the holder of one for an invention made here, may show novelty by proving that his invention antedated his application and the infringing use.

*lower federal courts have held that s 4886 does not limit the plaintiff to the date of application in this country but that he may prove the invention was in fact made at an earlier date, as could the owner of an invention made in the United States
*We are of opinion that the courts below were right in not limiting Shimadzu's date of invention to the date of his application but allowing him to show an earlier actual date.

'''Second'''
*A patent is not validly issued if the invention ‘is proved to have been abandoned.'[19] Abandonment may be evidenced by the express and voluntary declaration of the inventor;[20] it may be inferred from negligence or unexplained delay in making application for patent;[21] it may be declared as a consequence of the inventor's concealing his invention and delaying application for patent in an endeavor to extend the term of the patent protection beyond the period fixed by the statute.[22] In any case, the question whether the invention has been abandoned is one of fact.[23]
*In the circumstances we think we are not justified in assigning to the findings below the force of a finding that Shimadzu, with intent, concealed his invention and delayed making applications for the purpose of unduly extending the life of his patents,-a defense not pleaded.

'''Third'''
*If a valid patent is to issue, the invention must not have been in public use in this country for more than two years prior to the filing of the application.
*The District Court found ‘commercial production by the Hardinge mill with its forced air draft undoubtedly involved the use of the plaintiff's patent, and June, 1921, may be fixed as the date when that began.’ The respondents insist that this does not amount to a finding of prior public use, distinguishing between the court's phrase ‘commercial production’ and the designation ‘public use’ found in the statute. We think the position is untenable.
*A mere experimental use is not the public use defined by the Act,[33] but a single use for profit, not purposely hidden, is such.

* the evidence is that the petitioner, since June 1921, has continuously employed the alleged infringing machine and process for the production of lead oxide powder used in the manufacture of plates for storage batteries which have been sold in quantity. There is no finding, and we think none would have been justified, to the effect that the machine, process, and product were not well known to the employes in the plant, or that efforts were made to conceal them from anyone who had a legitimate interest in understanding them.[36] This use, begun more than two years before Shimadzu applied for patents 1,584,150 and 1,896,020, invalidated the claims in suit.

'''Fourth'''
*The defense of prior public use is not made out against patent 1,584,149, for which application was filed January 30, 1922. The defendant's commercial production commenced about six months earlier. The District Court held the patent valid and infringed
*Its claims cover merely a process for the production of a finely divided chemically reactive lead powder by introducing relatively large masses of lead into a rotatable vessel, rotating the vessel at a relatively low speed, forming the powder by attrition resulting from the rubbing of the masses against each other, and blowing the powder from the vessel by a current of air.

*Whether or not ‘149 is for the same process as U.S. patent ‘150 is immaterial, so far as the question of validity of either is concerned. There is no double patenting involved. The two patents issued on the same day. They both expired on the same day. There can be no extension of the monopoly and one is not prior art against the other.
*the defendant's process infringes the somewhat more precise, if not narrower, claims of ‘150.
'This patent is therefore held valid and infringed.'

the defendant's process infringes the somewhat more precise, if not narrower, claims of ‘150.
'This patent is therefore held valid and infringed.'
In view of our decision as to 1,584,150 and of the basis of the decision below respecting 1,584,149, we think the petitioner is entitled to a reexamination of the questions of the validity and infringement of the latter.

[[User: Sam Karch]]

User:Sam Karch

2011-03-02T01:49:42Z

Sam Karch: /* Notes */

== Homeworks ==
[[Homework 1: Jan 24 Karch]]
 
[[Homework 2: Jan 28 Karch]]
 
[[Homework 3: Feb 4 Karch]]
 
[[Homework 4: Feb 9 Karch]]
 
[[Homework 5: Feb 14 Karch]]

== Notes ==
[[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]] [[Bonito Karch]]
 
[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]] [[Hotchkiss Karch]]
 
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] [[A. & P. Tea Co. Karch]]
 
[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] [[Lyon Karch]]
 
[[Graham v. John Deere, 383 U.S. 1 (1966)]] [[Graham v. John Deere Karch]]
 
[[US v. Adams, 383 U.S. 39 (1966)]] [[US v Adams Karch]]
 
[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] [[Anderson's Karch]]
 
[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]] [[KSR Karch]]
 
[[Egbert v. Lippmann, 104 U.S. 333 (1881)]] [[Egbert v Lippmann Karch]]
 
[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]] [[Metallizing Engineering v Kenyon Karch]]
 
[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]] [[D.L. Auld v. Chroma Graphics Karch]]
 
[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]] [[Elizabeth v. American Pavement Karch]]
 
[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]] [[Lough v. Brunswick Karch]]
 
[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)]] [[Battery v. Shimadzu Karch]]
 
[[Miscellaneous]]

Lough v. Brunswick Karch

2011-02-21T17:32:08Z

Sam Karch: Created page with "===Lough v. Brunswick Corp., 86 F.3d 1113 (1996)=== C.A.Fed. (Fla.),1996 June 12, 1996 ====Background==== In 1986, Steven G. Lough worked as a repairman for a boat dealership..."

===Lough v. Brunswick Corp., 86 F.3d 1113 (1996)===

C.A.Fed. (Fla.),1996

June 12, 1996

====Background====

In 1986, Steven G. Lough worked as a repairman for a boat dealership in Sarasota, Florida. While repairing Brunswick inboard/outboard boats, he noticed that the upper seal assembly in the stern drives often failed due to corrosion.

After some trial and error with his grandfather's metal lathe, he made six usable prototypes in the spring of 1986.
#He installed one prototype in his own boat at home.
#three months later, he gave a second prototype to a friend who installed it in his boat.
#He also installed prototypes in the boat of the owner of the marina where he worked and in the boat of a marina customer.
#He gave the remaining prototypes to longtime friends who were employees at another marina in Sarasota.

Lough '''did not charge anyone for the prototypes.''' For over a year following the installation of these prototypes, Lough '''neither asked for nor received any comments about the operability of the prototypes'''. During this time, Lough '''did not attempt to sell any seal assemblies.'''

June 6, 1988, Lough filed a patent application entitled “Liquid Seal for Marine Stern Drive Gear Shift Shafts,” which issued as the '775 patent on July 18, 1989.

Lough sued Brunswick on June 12, 1993, alleging infringement of the '775 patent. Brunswick counterclaimed for a declaratory judgment of patent noninfringement, invalidity, and/or unenforceability. A jury found that Brunswick failed to prove that Lough's invention was in public use before the critical date on June 6, 1987, one year prior to the filing date of the '775 patent. The jury also found that Brunswick infringed claims 1-4 of the '775 patent, both literally and under the doctrine of equivalents. Based on its infringement finding, the jury awarded Lough $1,500,000 in lost profits.

====Argument====
'''Not experiment'''
#no documentation
#no progress reports
#number not justified as experimental
#no secrecy

'''Experiment'''
#one person, not a company, so casual experimentation is reasonable

====Policy====
#public exception of free use
#quick disclosure
#reasonable time to judge value (market testing)
#can't game the system

Elizabeth v. American Pavement Karch

2011-02-21T17:13:24Z

Sam Karch: Created page with "===Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)=== ====History==== 1848 - original construction of Mill-dam Avenue in Boston 1852 - applied for patent ..."

===Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)===

====History====
1848 - original construction of Mill-dam Avenue in Boston

1852 - applied for patent

1854 - original patent issued

1867 - patent re-issued

====Claims====

I claim as an improvement in the art of constructing pavements:

#'1. Placing a continuous foundation or support, as above described, directly upon the roadway; then arranging thereon a series of blocks, having parallel sides, endwise, in rows, so as to leave a continuous narrow groove or channel-way between each row, and then filling said grooves or channel- ways with broken stone, gravel, and tar, or other like materials.
#'2. I claim the formation of a pavement by laying a foundation directly upon the roadway, substantially as described, and then employing two sets of blocks: one a principal set of blocks, that shall form the wooden surface of the pavement when completed, and an auxiliary set of blocks or strips of board, which shall form no part of the surface of the pavement, but determine the width of the groove between the principal blocks, and also the filling of said groove, when so formed between the principal blocks, with broken stone, gravel, and tar, or other like material.'

====Argument====
Exception to US 35 S 102(b):

Testing to ensure invention works: must be evidence of experimentation
#keep records
#no profit
#confidentiality
#control
#observation every day
#cost
#no other reasonable way to test the invention
#amount of time required for testing

User:Sam Karch

2011-02-21T16:52:11Z

Sam Karch: /* Notes */

== Homeworks ==
[[Homework 1: Jan 24 Karch]]
 
[[Homework 2: Jan 28 Karch]]
 
[[Homework 3: Feb 4 Karch]]
 
[[Homework 4: Feb 9 Karch]]
 
[[Homework 5: Feb 14 Karch]]

== Notes ==
[[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]] [[Bonito Karch]]
 
[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]] [[Hotchkiss Karch]]
 
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] [[A. & P. Tea Co. Karch]]
 
[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] [[Lyon Karch]]
 
[[Graham v. John Deere, 383 U.S. 1 (1966)]] [[Graham v. John Deere Karch]]
 
[[US v. Adams, 383 U.S. 39 (1966)]] [[US v Adams Karch]]
 
[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] [[Anderson's Karch]]
 
[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]] [[KSR Karch]]
 
[[Egbert v. Lippmann, 104 U.S. 333 (1881)]] [[Egbert v Lippmann Karch]]
 
[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]] [[Metallizing Engineering v Kenyon Karch]]
 
[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]] [[D.L. Auld v. Chroma Graphics Karch]]
 
[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)]] [[Elizabeth v. American Pavement Karch]]
 
[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996)]] [[Lough v. Brunswick Karch]]
 
[[Miscellaneous]]

D.L. Auld v. Chroma Graphics Karch

2011-02-21T04:56:00Z

Sam Karch: Created page with "'''D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)''' Patent 4100010 Waugh ruled invalid '''Background a method of forming foil-backed inserts in the form of ca..."

'''D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)'''

Patent 4100010

Waugh

ruled invalid

'''Background

a method of forming foil-backed inserts in the form of cast decorative emblems.

October 15, 1981, the D.L. Auld Company (Auld) sued Chroma Graphics Corp. (Chroma) in the Eastern District of Tennessee for infringement of Patent No. 4,100,010 (the Waugh patent) issued on a continuing application filed July 2, 1976 of an original application filed June 12, 1974.

Chroma moved for summary judgment on the ground that the invention had been “on sale” for more than one year before June 12, 1974

The involved emblems include a layer of clear plastic having a curved outer surface formed on a decoration-bearing base. Since 1965, Auld sold that type of emblem to the auto industry. The early emblems were made by the “Vitrolux” method, in which the base is a shallow cavity designed to receive a measured amount of liquid plastic, while the base was held horizontal. The quantity of plastic was greater than that required to fill the cavity, producing a curved upper surface. The plastic did not overflow the cavity walls because of its surface tension.

'''Invention'''

The involved emblems include a layer of clear plastic having a curved outer surface formed on a decoration-bearing base. Since 1965, Auld sold that type of emblem to the auto industry. The early emblems were made by the “Vitrolux” method, in which the base is a shallow cavity designed to receive a measured amount of liquid plastic, while the base was held horizontal. The quantity of plastic was greater than that required to fill the cavity, producing a curved upper surface. The plastic did not overflow the cavity walls because of its surface tension.

'''35 U.S.C. § 102(b)'''

"A person shall be entitled to a patent unless—the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or"

'''Argument'''

sales representatives, not the Research and Development people, carried these samples around in their briefcases and showed them to customers. Prices and delivery times were discussed. Mr. Waugh's deposition makes it abundantly clear that, over a period of about four years, the D.L. Auld Company attempted to obtain orders for emblems made according to the patented process. This is precisely the activity that Section 102(b) attempts to limit to one year.

Even the most indulgent reading of The D.L. Auld Company's business records and the deposition testimony of its Vice-President for Research and Development Robert E. Waugh precludes any other finding but that at least some sample products were made in the laboratory according to the Waugh patent and were offered for sale well outside of the statutorily protected year.

35 U.S.C. § 102(b), the intent of which is to preclude attempts by the inventor or his assignee to profit from commercial use of an invention for more than a year before an application for patent is filed.

the magistrate correctly applied the concept explicated in Metallizing, i.e. that a party's placing of the product of a method invention on sale more than a year before that party's application filing date must act as a forfeiture of any right to the grant of a valid patent on the method to that party if circumvention of the policy animating § 102(b) is to be avoided in respect of patents on method inventions.

'''Testimony'''

Waugh testified that sample emblems submitted to prospective customers before the critical date were made in the laboratory following each of the steps set forth in Claim 1 of the patent in suit. He further said that the claimed method was not followed on some samples and a “postforming” operation was required on those particular emblems because they curled.

Waugh testified that of the samples submitted before June 1973 by the Auld sales department to International Crest, to interest them in the product for the National Football and Hockey Leagues, some were not made by the claimed method, but that others were. Auld quoted pricing and delivery dates in writing, for an order of more than 150,000 emblems, to International Crest.

'''Defense of Auld'''

#those emblems were made by a “laboratory” method; that a material issue exists on whether the offers fell within the “experimental” exception to the “on sale” bar of 35 U.S.C. § 102(b);
#that whether the offers were for experimental purposes is a matter of Auld's intent and thus ill-suited to resolution by summary judgment;
#that the magistrate improperly shifted the burden of proof by requiring Auld to show that the offer for sale was for experimental purposes;
#that no sale was made to International Crest;
#that some samples were not made by the claimed method;
#that it was error to grant summary judgment without receiving the proffered testimony of Auld salesmen;
#that the claimed method was for a manufacturing process involving a series of emblems, while in the “laboratory” method emblems were made one by one and that method was not demonstrated to be practical or readily reproducible;
#that affidavits of Waugh, Tanner, and David Auld, filed to correct and clarify “ambiguities and inconsistencies” in Waugh's deposition, raise a material issue on whether the claimed method had been reduced to practice before June, 1973;
#that those affidavits show that emblems provided Chrysler were not made by the patented method because they were not made in a manufacturing process involving a series of emblems, were not held flat, and had to be postformed.

Waugh's testimony establishes unequivocally that the “laboratory” method involved each step of the claimed method, and that each such step was performed in producing some early samples for International Crest.

the only asserted differences between the patented method and the “laboratory” method are the use of adhesive and holding the foil shapes flat. Waugh's testimony was unequivocal that those very steps were employed in making some samples by the “laboratory” method, and nothing in the affidavits contradicts that testimony.

Auld's attempt to establish a material issue of fact respecting the “experimental” exception to 35 U.S.C. § 102(b) is misdirected.

#First, each of Auld's citations to evidence in the record relates to later experimentation on mass production by machine for commercialization in quantity, not to any experimentation on the earlier performed method itself. Land v. Regan, 342 F.2d 92, 52 CCPA 1048, 144 USPQ 661 (1965).
#Second, Auld's reliance on the labeling of the sample emblems as “lab samples” submitted to customers for “evaluation” is irrelevant. '''The claim is for a method, not a product.''' That the method would produce the product was known. Submission of the emblems for sale if the customer liked them is not experimentation on the method.

The record establishes that the claimed method was successfully performed, albeit by hand, that it produced an emblem, and that the emblem was offered for sale.

''if a mere allegation of experimental intent were sufficient, there would rarely if ever be room for summary judgment based on a true “on sale” defense under 35 U.S.C. § 102(b).''

'''Nor did the magistrate effectively shift the burden to Auld on the experimentation issue.'''

#Once evidence that an invention was on sale or, as here, that the product of a method invention was on sale, is presented, countervailing evidence establishing an experimental purpose must necessarily come from the patentee. To defeat a motion for summary judgment, a patentee need not prove an experimental purpose, but must submit facts indicating an ability to come forward with evidence that such proof is possible. See De Long Corp. v. Raymond International, Inc., 622 F.2d 1135, 206 USPQ 97 (3rd Cir.1980). The court in De Long pointed out that “the duty to come forward with possible contradiction of proof is the essence of Federal Rule of Procedure 56,”
#That no sale was actually made to International Crest is irrelevant. An offer to sell is sufficient under the policy animating the statute, which proscribes not a sale, but a placing “on sale.” 35 U.S.C. § 102(b). General Electric Co. v. U.S., 654 F.2d 55, 211 USPQ 867 (Ct.Cl.1981).

'''Auld nitpicking'''

(2) Necessity For Oral Hearing

The magistrate apparently failed to note the last sentence in Auld's brief in opposition to the motion for summary judgment, in which sentence Auld requested an oral hearing, for the motion was granted without a hearing. That action, though doubtless inadvertent, was not in accord with the letter of Local Rule 12(c) of the District Court which provides for oral hearing on request on motions determinative of the case on the merits.

Auld, on receipt of the magistrate's decision, filed a motion to vacate the judgment and grant a hearing. The magistrate, saying he did so to preserve Auld's right to appeal, treated the motion as one filed under Rule 59(e), held a hearing, and denied the motion to vacate his judgment, issuing with his order a Memorandum.

User:Sam Karch

2011-02-21T02:00:40Z

Sam Karch: /* Notes */

== Homeworks ==
[[Homework 1: Jan 24 Karch]]
 
[[Homework 2: Jan 28 Karch]]
 
[[Homework 3: Feb 4 Karch]]
 
[[Homework 4: Feb 9 Karch]]
 
[[Homework 5: Feb 14 Karch]]

== Notes ==
[[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]] [[Bonito Karch]]
 
[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]] [[Hotchkiss Karch]]
 
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] [[A. & P. Tea Co. Karch]]
 
[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] [[Lyon Karch]]
 
[[Graham v. John Deere, 383 U.S. 1 (1966)]] [[Graham v. John Deere Karch]]
 
[[US v. Adams, 383 U.S. 39 (1966)]] [[US v Adams Karch]]
 
[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] [[Anderson's Karch]]
 
[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]] [[KSR Karch]]
 
[[Egbert v. Lippmann, 104 U.S. 333 (1881)]] [[Egbert v Lippmann Karch]]
 
[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]] [[Metallizing Engineering v Kenyon Karch]]
 
[[D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)]] [[D.L. Auld v. Chroma Graphics Karch]]
 
[[Miscellaneous]]

Metallizing Engineering v Kenyon Karch

2011-02-18T18:48:06Z

Sam Karch: Created page with " User: Sam Karch"

[[User: Sam Karch]]

User:Sam Karch

2011-02-18T17:13:35Z

Sam Karch: /* Notes */

== Homeworks ==
[[Homework 1: Jan 24 Karch]]
 
[[Homework 2: Jan 28 Karch]]
 
[[Homework 3: Feb 4 Karch]]
 
[[Homework 4: Feb 9 Karch]]
 
[[Homework 5: Feb 14 Karch]]

== Notes ==
[[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]] [[Bonito Karch]]
 
[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]] [[Hotchkiss Karch]]
 
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] [[A. & P. Tea Co. Karch]]
 
[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] [[Lyon Karch]]
 
[[Graham v. John Deere, 383 U.S. 1 (1966)]] [[Graham v. John Deere Karch]]
 
[[US v. Adams, 383 U.S. 39 (1966)]] [[US v Adams Karch]]
 
[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] [[Anderson's Karch]]
 
[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]] [[KSR Karch]]
 
[[Egbert v. Lippmann, 104 U.S. 333 (1881)]] [[Egbert v Lippmann Karch]]
 
[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)]] [[Metallizing Engineering v Kenyon Karch]]
 
[[Miscellaneous]]

Egbert v Lippmann Karch

2011-02-18T16:39:33Z

Sam Karch: Created page with "APPEAL from the Circuit Court of the United States for the Southern District of New York. This suit was brought for an alleged infringement of the complainant's reissued letters..."

APPEAL from the Circuit Court of the United States for the Southern District of New York.

This suit was brought for an alleged infringement of the complainant's reissued letters-patent, No. 5216, dated Jan. 7, 1873, for an improvement in corset-springs.
 
issued to Samuel H. Barnes.

'''Claims'''

#"This invention consists in forming the springs of corsets of two or more metallic plates, placed one upon another, and so connected as to prevent them from sliding off each other laterally or edgewise, and at the same time admit of their playing or sliding upon each other, in the direction of their length or longitudinally, whereby their flexibility and elasticity are greatly increased, while at the same time much strength is obtained."
#"A pair of corset-springs, each member of the pair being composed or two or more metallic plates, placed on on another, and fastened together at their centres, and so connected at or near each end that they can move or play on each other in the direction of their length."

'''Argument'''

the public use of an invention for more than two years before such application, even without his consent and allowance, renders the letters-patent therefor void.

It is unnecessary in this case to decide this question, for the alleged use of the invention covered by the letters-patent to Barnes is conceded to have been with his express consent.

Barnes "made and gave to her two pairs of corset- steels, constructed according to his device, one in 1855 and one in 1858."

According to the testimony of the complainant, the invention was completed and put into use in 1855. The inventor slept on his rights for eleven years. Letters-patent were not applied for till March, 1866.

#to constitute the public use of an invention it is not necessary that more than one of the patented articles should be publicly used.
#whether the use of an invention is public or private does not necessarily depend upon the number of persons to whom its use is known. If an inventor, having made his device, gives or sells it to another, to be used by the donee or vendee, without limitation or restriction, or injunction of secrecy, and it is so used, such use is public, even though the use and knowledge of the use may be confined to one person.
#some inventions are by their very character only capable of being used where they cannot be seen or observed by the public eye. An invention may consist of a lever or spring, hidden in the running gear of a watch, or of a rachet, shaft, or cog-wheel covered from view in the recesses of a machine for spinning or weaving. Nevertheless, if its inventor sells a machine of which his invention forms a part, and allows it to be used without restriction of any kind, the use is a public one.

A great part of the record is taken up with the testimony of the manufacturers and venders of corset-steels, showing that before he applied for letters the principle of his device was almost universally used in the manufacture of corset-steels. It is fair to presume that having learned from this general use that there was some value in his invention, he attempted to resume, by his application, what by his acts he had clearly dedicated to the public.

"An abandonment of an invention to the public may be evinced by the conduct of the inventor at any time, even within the two years named in the law. The effect of the law is that no such consequence will necessarily follow from the invention being in public use or on sale, with the inventor's consent and allowance, at any time within the two years before his application; but that, if the invention is in public use or on sale prior to that time, it will be conclusive evidence of abandonment, and the patent will be void."

'''MR. JUSTICE MILLER dissenting.'''

A private use with consent, which could lead to no copy or reproduction of the machine, which taught the nature of the invention to no one but the party to whom such consent was given, which left the public at large as ignorant of this as it was before the author's discovery, was no abandonment to the public, and did not defeat his claim for a patent.

If the little steep spring inserted in a single pair of corsets, and used by only one woman, covered by her outer-clothing, and in a position always withheld from public observation, is a public use of that piece of steel, I am at a loss to know the line between a private and a public use.

I cannot on such reasoning as this eliminate from the statute the word public, and disregard its obvious importance in connection with the remainder of the act, for the purpose of defeating a patent otherwise meritorious.

[[User: Sam Karch]]

User:Sam Karch

2011-02-18T16:01:06Z

Sam Karch: /* Notes */

== Homeworks ==
[[Homework 1: Jan 24 Karch]]
 
[[Homework 2: Jan 28 Karch]]
 
[[Homework 3: Feb 4 Karch]]
 
[[Homework 4: Feb 9 Karch]]
 
[[Homework 5: Feb 14 Karch]]

== Notes ==
[[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]] [[Bonito Karch]]
 
[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]] [[Hotchkiss Karch]]
 
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] [[A. & P. Tea Co. Karch]]
 
[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] [[Lyon Karch]]
 
[[Graham v. John Deere, 383 U.S. 1 (1966)]] [[Graham v. John Deere Karch]]
 
[[US v. Adams, 383 U.S. 39 (1966)]] [[US v Adams Karch]]
 
[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] [[Anderson's Karch]]
 
[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]] [[KSR Karch]]
 
[[Egbert v. Lippmann, 104 U.S. 333 (1881)]] [[Egbert v Lippmann Karch]]
 
[[Miscellaneous]]

Miscellaneous

2011-02-16T17:32:56Z

Sam Karch:

[http://code.google.com/p/support/wiki/WikiSyntax#Lists Guide] to formatting Wiki pages.

Grading: Bloom's Taxonomy

[http://www.uspto.gov/web/offices/pac/mpep/documents/2100.htm Patentability]

[[User: Sam Karch]]

Miscellaneous

2011-02-16T17:10:42Z

Sam Karch:

[http://code.google.com/p/support/wiki/WikiSyntax#Lists Guide] to formatting Wiki pages.

Grading: Bloom's Taxonomy

[[User: Sam Karch]]

Homework 5: Feb 14 Karch

2011-02-14T17:20:47Z

Sam Karch:

===[[Brief]] of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009)===

Arguing to grant certiorari to review decision of the court of appeals

Patent rights are defining assets for high technology businesses and the monetary values of patents are often used as important gating metrics for strategic investment decisions. The Court of Appeals decision abruptly upsets decades of established patent law precedents and thus undermines business valuations that were and are currently being made in reliance upon the established law.

These factors will likely chill and delay planned investments in new research and in start-up ventures which are essential to American economic recovery.

'''Koninklijke Philips Electronics'''

Koninklijke Philips Electronics N.V. (aka Royal Philips Electronics N.V.) is the parent corporation of a worldwide family of companies (“Philips”). Philips has been inventing and manufacturing electronic and electrical products for over 115 years and is one of the largest users of the patent system in the United States.

Philips is a technology company. Very few of our patented inventions involve methods of doing or conducting business in the sense exemplified by the petitioners' hedging transactions. But the decision below also affects the patentability of technologies and it is already being applied as precedent by the Patent Office to reject patent applications for technological innovations in our traditional product lines. Thus we have grave concerns that a mandatory machine-or-transformation test for patentable subject matter will severely limit our ability to obtain effective patent protection for our concrete and tangible technical innovation.

====Summary of the Argument====
'''I'''

#The Court of Appeals decision works an unnecessary sea change in deep-rooted principles of patent law that will necessitate a massive revaluation of technology assets and will delay new investments that are essential to economic recovery.
#The Court of Appeals has now discarded over thirty five years of post- Benson case law in favor of a mandatory, two-pronged machine-or-transformation test for patentable subject matter. Without the first prong, the new test is, in substance, simply a return to the stale physical transformation tests for patentability, which were already discredited and rejected at the end of the nineteenth century.
# Uncertainty about the value of the patents introduces uncertainty in determining the value of the patent owner's business. American R&D executives said that 60 percent of the projects that ultimately produced new discoveries would never have happened without patent protection.
#Today some two-thirds of the value of large American businesses can be traced to intangible assets that embody ideas, especially the intellectual property of patents and trademarks.

'''II'''

#Broad process claims are commercially necessary and they contribute significant added value to patented inventions in the new economy. The four categories of patentable subject matter that Congress specified in § 101 “process, machine, manufacture or composition of matter” are not mutually exclusive.

[[User: Sam Karch]]

Homework 4: Feb 9 Karch

2011-02-14T16:38:40Z

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

==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.

It can be seen in this pronouncement of the court opinion by Justice Nelson, that the original requirement of novelty is not satisfactory, as the knob designed by Hotchkiss is a new product. Although the term "nonobviousness" will not be developed for some time, the court's decision hinges on the fact that the mere substitution of better suited materials is too obvious a development to warrant a patent. The fundamental premise of nonobviousness is presented a few paragraphs later, as Justice Nelson states,

:"....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 ingeunity 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, it is made clear that an invention must not only be novel, but must require a level of ingenuity that exceeds that of an individual with ordinary skill in the related field.

===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. In particular, this case dealt with three significant issues related to the process of determining patentability:

*First, that the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.

The importance of a "long felt but unsatisfied need" in the determination of nonobviousness is that it is difficult to claim that an invention is obvious if there has been a demand for a certain product and no one has been able to fulfill that need. However, it is important to note that there are two requirements that must be met here. There must be a need for the product and the need must have existed for a long time. If the need is relatively new, then it is difficult to claim that a person with ordinary skill in the field would have not developed such a design had he been aware of demand for such a device. On the other hand, if the market related to a certain field has provided no sign that there is a need for such an improvement, then it can be argued that the design would have been obvious had anyone expressed interest in the proposed device.

*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.

In Graham v. John Deere, the history of the patent process is discussed, particularly Thomas Jefferson's outlook on the purpose of providing a patent. Jefferson made it clear that patents were only to be granted for inventions that furthered human knowledge and were new and useful. The granting of patents for small details, obvious improvements, or frivolous devices was neither worthwhile nor helpful. In A&P v. Supermarket Corp., Jefferson's sentiment is echoed, except the focus of the court is narrowed further to the important frontier of science and engineering. As Justice Douglas states, "the purpose is to promote the Progress of Science and Useful Arts," and the two disciplines most associated with progress at that time (and still currently) are science and engineering. Even later, the court states, "patents serve a higher end-the advancement of science," which make this point very clear.

*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

The court's outlook on the evaluation of patents in regard to the combination of prior elements is best summarized in the following explanation. "The mere aggregation of a number of old parts or elements which, in the aggregation, peform or produce no new or different function or operation than that theretofore performed or produced by them is not patentable invention....only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable."

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

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

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

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

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

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

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

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

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

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

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

==The Inventive Step==

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

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

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

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

[[South Corp. v. US]]

Homework 5: Feb 14 Karch

2011-02-14T16:24:25Z

Sam Karch: /* Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009) */

===[[Brief]] of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009)===

[[User: Sam Karch]]

Brief

2011-02-14T16:23:56Z

Sam Karch:

2009 WL 559338 (U.S.) (Appellate Petition, Motion and Filing)
For opinion see 130 S.Ct. 3218, 129 S.Ct. 2735

Briefs and Other Related Documents
Oral Argument Transcripts with Streaming Media

Supreme Court of the United States.
Bernard L. BILSKI and Rand A. Warsaw, Petitioners,
v.
John J. DOLL, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office, Respondent.
No. 08-964.
March 2, 2009.

On Petition for a Writ of Certiorari to the United States Court of Appeals for the Federal Circuit

Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners

Jack E. Haken, Counsel of Record.

Kevin C. Ecker, Laurie Gathman, Todd Holmbo, Philips Intellectual Property & Standards, 345 Scarborough Road, Briarcliff Manor, NY 10510, (914) 945-6000, Counsel for Amicus Curiae Koninklijke Philips Electronics N.V.

*i QUESTION PRESENTED
Whether the Court of Appeals erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101.

*ii TABLE OF CONTENTS

QUESTION PRESENTED ... i

TABLE OF CONTENTS ... ii

TABLE OF CITED AUTHORITIES ... v

INTEREST OF AMICI CURIAE ... 1

SUMMARY OF THE ARGUMENT ... 3

ARGUMENT ... 5

I. The Court of Appeals decision works an unnecessary sea change in deep-rooted principles of patent law that will necessitate a massive revaluation of technology assets and will delay new investments that are essential to economic recovery ... 5

II. Broad process claims are commercially necessary and they contribute significant added value to patented inventions in the new economy ... 8

III. The Bilski decision will spur existing patent holders to file a flurry of applications to make formal corrections of valid issued patents that will divert scarce human and economic resources, both in high technology industries and in the Patent Office ... 11

*iii IV. A mandatory machine-or-transformation test for process patent subject matter is legally unsound ... 14

A. The Court of Appeals disregarded this Court's instructions that § 101 must be broadly construed and ignored the plain language of § 100(b) ... 14

B. The principle that patentable subject matter broadly includes all of the technological arts was already firmly established in American law by the late 19th century ... 15

C. The Court of Appeals holding inherently discriminates against inventions in the computer, information science, content delivery and information science technologies ... 17

D. The mandatory machine-or-transformation test excludes a range of processes that were well recognized as being patentable under pre-1952 law and which Congress intended to include within the scope of the 1952 Patent Act ... 19

*iv E. The new patentability test disrupts the delicate strategic balance between patent and trade secret protection ... 21

CONCLUSION ... 22

*v TABLE OF CITED AUTHORITIES

Cases

Bandag, Inc. v. Al Bolster's Tire Stores, Inc., 750 E2d 903 (Fed. Cir. 1984) ... 9

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989) ... 21

Diamond v. Chakrabarty, 447 U.S. 303 (1980) ... 14, 15

Diamond v. Diehr, 450 U.S. 175 (1981) ... 14

Ex parte Gupta, Appeal 2008-2000 (B. P. A. I., January 15, 2009) ... 19

Gottschalk v. Benson, 409 U.S. 63 (1972) ... 6, 11

J. E. M. AG Supply, Inc. v. Pioneer Hi-Bred Int'l. Inc., 534 U.S. 124 (2001) ... 14

Lab. Corp of Am. Holdings v. Metabolite Labs., Inc., 548 U.S. 124 (2006) ... 21

Parker v. Flook, 437 U.S. 584 (1978) ... 11

State Street Bank & Trust Co. v. Signature Financial Group, Inc., 525 U.S. 1093 (1999) ... 14

*vi Statutes

35 U.S.C. § 251 ... 10

35 U.S.C. § 302 ... 10

35 U.S.C. § 100(b) ... 15

Other Authorities

Agreement on Trade-Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods, Apr. 15, 1994, Art. 27, in Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 33 I. L. M. 1197 (1994) ... 17

Clarisa Long, Patent Signals, 69 U. Chi. L. Rev. 625 (2002) ... 5

ICC, Current and Emerging Intellectual Property Issues for Business: A Roadmap for Business and Policymakers (Ninth Ed. 2008) ... 6, 10

Robert J. Shapiro and Nam D. Pham, Intellectual Property Intensive Manufacturing in the United States (2007) ... 7

*vii Robert J. Shapiro, Remarks to the CSIS Forum on Intellectual Property Rights: Implications for Economic Development (2007) ... 7

Scott Shane, The Likely Adverse Effects Of An Apportionment-Centric System Of Patent Damages. Manufacturing Alliance On Patent Policy (2009) ... 8

United States Patent and Trademark Office: Performance and Accountability Report Fiscal Year 2008 ... 11

W. Landes and R. Posner, The Economic Structure of Intellectual Property Law (2003) ... 21, 22

William C. Robinson, The Law of Patents for Useful Inventions, § 163-166 (1890) ... 16

*1 INTEREST OF AMICI CURIAE[FN1]

FN1. No counsel for a party authored this brief in whole or in part, and no such counsel or party made a monetary contribution intended to fund the preparation or submission of this brief. No person other than the amicus curiae, or its counsel made a monetary contribution intended to fund its preparation or submission.

Patent rights are defining assets for high technology businesses and the monetary values of patents are often used as important gating metrics for strategic investment decisions. The Court of Appeals decision abruptly upsets decades of established patent law precedents and thus undermines business valuations that were and are currently being made in reliance upon the established law. The new test for patentable subject matter which is mandated by the decision is radical, uncertain and raises many new and unanswered questions. These factors will likely chill and delay planned investments in new research and in start-up ventures which are essential to American economic recovery. This fundamental redefinition of the law is properly the province of Congress, particularly when the economic and social impact of the change will have very immediate and uncertain consequences.

Amici curiae Koninklijke Philips Electronics N.V. (aka Royal Philips Electronics N.V.) is the parent corporation of a worldwide family of companies (“Philips”). Philips has been inventing and manufacturing electronic and electrical products for over 115 years and is one of the largest users of the patent system in the United States.

*2 Philips began operations as a 19th century electric lamp manufacturer and our company history is rooted in the classic patent battles of the industrial age. We are thus able to offer a unique perspective of the commercial importance of this case and its potential negative impact on the American research, manufacturing and service industries.

Last year Philips filed U.S. patent applications for more than 1,000 inventions. Scientists and engineers at our American laboratories have made pioneering advances in the fields of high efficiency lighting, medical diagnosis and imaging, high definition television, optical CD and DVD recording, and digital rights management. Philips' annual income from patent licensing activities is in excess of five hundred million dollars. In our experience, meaningful patent protection in the United States and other jurisdictions can best be achieved when the patent system provides a broad spectrum of alternative patent claim categories to assure that all unauthorized users of our inventions can be charged with acts of direct patent infringement.

Like many established companies, Philips needs to assure that our products and services will remain relevant and profitable as software and intelligent systems replace traditional electronic hardware components. Thus, Philips has recently divested much of its semiconductor and consumer electronics product lines and is investing billions of dollars to acquire promising start-up companies and technologies to build our businesses in the medical diagnostics, patient monitoring and energy-efficient lighting sectors. We are *3 keenly interested in assuring that the U.S. patent system will provide protection with enough claim scope to deter trans-national infringers and with economic incentives for continued research in these fields.

Philips is a technology company. Very few of our patented inventions involve methods of doing or conducting business in the sense exemplified by the petitioners' hedging transactions. But the decision below also affects the patentability of technologies and it is already being applied as precedent by the Patent Office to reject patent applications for technological innovations in our traditional product lines. Thus we have grave concerns that a mandatory machine-or-transformation test for patentable subject matter will severely limit our ability to obtain effective patent protection for our concrete and tangible technical innovation.

SUMMARY OF THE ARGUMENT

The new statutory construction and restated legal principles that underlie the Court of Appeals' decision raise a host of issues and unanswered questions which will delay new investments in essential research and technologies. The decision is overreaching, works an unnecessary sea change in deep-rooted principles of patent law, and will necessitate a massive revaluation of America's intangible technology assets. This Court needs to act swiftly to review the decision and to redirect the Court of Appeals for the Federal Circuit before this unwise new course disrupts our research and business environment.

*4 The scope and fallout of the Bilski decision are not limited to methods of doing business. The new test that is mandated for patentable process subject matter affects the claim language used in tens of thousands of granted patents for commercially important technology inventions. Patent owners will now need to evaluate and correct potential defects in technology process claims before they can assert, license and/or enforce their previously granted rights against infringers. The projected costs of reevaluating and correcting these unanticipated defects in existing patent portfolios are enormous and the work will take years to complete. Many patent holders will seek to reissue their patents in proceedings that will divert scarce Patent Office resources away from the already backlogged examination of new inventions.

The newly mandated machine-or-transformation test is unsound jurisprudence and contrary to long established precedents of this Court and Federal Circuit law. Statutory processes are a broad collective category that includes many more inventions than simple manufacturing methods. The principle that patentable subject matter broadly includes all of the technological arts was already firmly established in American law by the late 19th century. Processes claims are often seen as the only means to achieve effective patent protection for important inventions in the medical diagnostics, environmental control, and information science technologies. The holding below thus inherently discriminates against industry sectors. The patent statutes should be construed in an even-handed manner which is free of bias that disfavors any particular technology or industry segment. The holding also disrupts the delicate strategic balance between patent and trade secret protection which has been carefully crafted by Congress and this Court's precedents.

*5 ARGUMENT

I. The Court of Appeals decision works an unnecessary sea change in deep-rooted principles of patent law that will necessitate a massive revaluation of technology assets and will delay new investments that are essential to economic recovery.
Circuit Judge Newman aptly reminded us that: “Stable law on which industry can rely, is a foundation of commercial advance into new products and processes. In re Bilski, 545 F.3d 943, 992 (Newman, J., dissenting) (Fed. Cir. 2008). An important benefit of the patent system is to establish a body of rules which apply to the exploitation of technical innovations and more particularly to the financial valuation of technology. Published patents serve as an important, often critical vehicle through which firms can credibly convey information about their inventions to observers. See Clarisa Long, Patent Signals, 69 U.Chi. L. Rev. 625 (2002). The International Chamber of Commerce (the “ICC”) reports that:

“businesses and the financial community are becoming increasingly sophisticated about the importance of evaluating intellectual property rights as a component of pre-investment due diligence, not only from a financial perspective but also from a legal perspective, concerning issues such as validity, enforceability, scope of intellectual property rights, potential revenue from infringement by others, and any potential liability from *6 infringing the rights of others. As a result, such studies provide more reliable information about the financial value of intellectual property as well as information useful in setting business direction and strategy.”

ICC, Current and Emerging Intellectual Property Issues for Business: A Roadmap for Business and Policymakers (Ninth Ed. 2008) at 55 http:// www.iccwbo.org/uploadedFiles/ICC/intellectual_property/pages/IP_roadmap-2005(1).

The Court of Appeals for the Federal Circuit has now abruptly recast and reversed decades of well-established patent law. The decision below is a capricious, ill-conceived, admittedly incomplete and improper extension of judicial authority into the heart of legislative economic and industrial policy. This Court first addressed the patentability of processes under the 1952 Patent Act in Gottschalk v. Benson, 409 U.S. 63 (1972). The Court of Appeals has now discarded over thirty five years of post- Benson case law in favor of a mandatory, two-pronged machine-or-transformation test for patentable subject matter. But the first (“machine”) prong of the Federal Circuit's new test is illusory, Bilski, 545 F.3d at 962 (stating “… issues specific to the machine implementation part of the test are not before us today. We leave to future cases the elaboration of the precise contours of the machine implementation…”). Without the first prong, the new test is, in substance, simply a return to the stale physical transformation tests for patentability, which were already discredited and rejected at the end of the nineteenth century.

*7 The Court of Appeals recognized that this Court “may ultimately decide to alter or perhaps even set aside … [the machine-or-transformation] test to accommodate emerging technologies.” Id. at 956. Furthermore, the Court of Appeals did not “rule out the possibility that … [the Court of Appeals itself] may in the future refine or augment the test or how it is applied”. Id. The Federal Circuit has thus chosen to reject its own established system of precedents in favor of a massive, open-ended redirection of patent principles put forth by a slim majority who candidly admit a lack conviction in their own reasoning. Companies cannot tolerate additional uncertainty regarding what is patentable.[FN2] Patents play a key role in determining the values of innovation. In a recent survey, American R&D executives said that 60 percent of the projects that ultimately produced new discoveries would never have happened without patent protection.[FN3] Uncertainty about the value of the patents introduces uncertainty in determining the value of the patent owner's business.[FN4] *8 The projected costs of reevaluating existing United States patent portfolios in light of the Bilski decision are staggering and the work will take years to complete. Investors will undoubtedly shy-away from investments in research and development and acquisitions until these issues are clarified, but the American economy cannot afford to wait. This Court should grant certiorari to remove an unnecessary and untimely roadblock to American economic recovery and should promptly redirect the Court of Appeals before the uncertain expectations surrounding the effects of these new, judicially created patent policies can stall high technology investment.

FN2. Today some two-thirds of the value of large American businesses can be traced to intangible assets that embody ideas, especially the intellectual property of patents and trademarks. See Robert J. Shapiro and Nam D. Pham, Intellectual Property Intensive Manufacturing in the United States (July 2007) available at http://www.the-value-of-ip.org/ip_ report.pdf

FN3. Robert J. Shapiro, Remarks to the CSIS Forum on Intellectual Property Rights: Implications for Economic Development (2007) available at http:// www.csis.org/media/csis/event/070404_shapiroremarks.pdf

FN4. Using a very conservative estimate, patents now contribute between $77.3 billion - $98.4 billion to the value of U.S. public companies. See Scott Shane, The Likely Adverse Effects Of An Apportionment-Centric System Of Patent Damages. Manufacturing Alliance On Patent Policy, (2009) available at http://www.mfgpatentpolicy.org/images/Apportionment_of_ Damages_Adverse_Effects_Jan14_09.pdf.

II. Broad process claims are commercially necessary and they contribute significant added value to patented inventions in the new economy.
The four categories of patentable subject matter that Congress specified in § 101 “process, machine, manufacture or composition of matter” are not mutually exclusive. A patentable invention may fall into multiple categories. Thus, while each patent must be directed to a unitary invention, it is commonplace that claims which define the bounds of the very same invention can, by competent draftsmanship, be directed to a process, machine, or an article of manufacture. The inventor of *9 such an invention has the option as to the form that the claims in his patent will assume and there is nothing wrong with this practice. Bandag, Inc. v. Al Bolster's Tire Stores, Inc., 750 F.2d 903, 922 (Fed. Cir. 1984).

Most modern patents in the electronic, computer and information processing arts include several independent claims, which together define the same invention from the viewpoints of both a process and a machine (i.e., a system). This is not just a formalism or semantics - an inventor or patent owner will receive less substantive protection from infringement if she is limited to claiming her invention as just a machine or a manufacture and is denied a right to protect the same invention with process claims.

The practice of using multiple independent claims that capture separate § 101 categories is dictated by the law of patent infringement and by the economic realities of modern, globally-distributed and networked technology. Today, goods and services are often produced by groups of technicians and service firms who collaborate and/or serially add their contributions to the finished product. However, with a few minor exceptions, a patent holder can only establish infringement by showing that a single party has practiced every element of a patent claim within the United States. Conventional machine and manufacture claims often will not reach to patent infringement in network environments where, for example, some parts of a machine which implement steps of a process may not be located within the geographic boundaries of the United States. Likewise *10 novel and unobvious process steps that are performed within our borders may only affect articles that are overseas, in earth orbit, or beyond.[FN5]

FN5. The International Chamber of Commerce warns that “infringers are resourceful and have tried to structure their services in such a way to make it more difficult for rightsholders to enforce their rights, for example by using remote servers to avoid jurisdiction.” ICC, Current and Emerging Intellectual Property Issues for Business, supra at 55.

The process claims which the Patent Office has heretofore allowed in the body of issued United States patents were all drafted to describe patentable inventions and relied upon the statutory construction and legal precedents that were in effect at the time that the patent rights were granted. Many of those process claims will likely fail the new, mandatory machine-or-transformation test for formal reasons: for example, because the claims' language does not expressly recite links between the process steps and a specific machines or apparatus. The patent law already provides procedures that patent owners can apply to correct formal defects by reissuing a defective patent, 35 U.S.C. § 251 or through reexamination 35 U.S.C. § 302. We expect that many owners will turn to reissue as a means to verify and assure that their claims can pass muster under the new test's mandatory criteria, before they seek to extract value from their rights by licensing or assert their patents in litigation against infringers. This Court needs to decide whether the new turn of Federal Circuit law is correct before industry embarks on this potentially wasteful undertaking.

*11 III. The Bilski decision will spur existing patent holders to file a flurry of applications to make formal corrections of valid issued patents that will divert scarce human and economic resources, both in high technology industries and in the Patent Office.
The Court of Appeals' decision injects uncertainty into millions of issued patents that were properly granted under the former case law.[FN6] The very limited scope of patentable processes which the Federal Circuit's new statutory construction now affords to § 101 under this Court's decisions in Benson and Parker v. Flook, 437 U.S. 584 (1978) will force technology companies, including Philips, to undertake a comprehensive legal review of their patent portfolios. The Patent Office already takes an average of 32 months to examine and issue patent applications.[FN7] Patent validity studies and corrective action are time consuming and must be started years before the affected process claims can be asserted against infringers.

FN6. A query of the Patent Office on-line database indicates more than 1,235,000 of the United States patents granted during the seventeen year period from February 18, 1992 claimed processes. This is about 46% of the total utility patents granted. See: http:// patft.uspto.gov/netahtml/PTO/search-adv.htm.

FN7. Pendency time of an average patent application - between filing and issuance of utility, plant and reissue applications. See: United States Patent and Trademark Office: Performance and Accountability Report Fiscal Year 2008 available at: www.uspto.goc/web/offices/com/annual/2OO8/0ai_05_ wlt_04.html.

*12 The unexpected financial impact of the new mandatory test for process claims on patent-centric companies like Philips will be severe. Counsel will need to 1) review entire portfolios of active issued patents; 2) determine the number of patents that contain claims for processes; 3) identify those patents that may not satisfy the new test and whether the claim defects are amenable to correction via reissue or reexamination; 4) select patents which appear likely to have commercial importance sufficient to justify the expense of a reissue patent application; 5) prepare and file requests for reissue; and 6) prosecute the reissue applications through the Patent Office examination process. Each of these steps is time consuming and fraught with uncertainty. Philips estimates that it will require in the neighborhood of twenty five thousand attorney-hours to review our portfolio of issued patents and take corrective actions to reissue process claims which are potentially defective under the new Federal Circuit test.[FN8] It is difficult to fund any unexpected expenses in today's economic climate, yet technology-based industry must expend this money to ensure the strength of their patent portfolios. In practical effect, monies expended to insure that an existing portfolio meets the new and as yet un-affirmed process patentability criteria will be diverted from investments that would otherwise flow *13 into new businesses and for the development of new technologies.

FN8. During the 10 year period prior to Bilski, Philips and its related entities were granted more than 9200 U.S. patents and we estimate that 5500 of those patents have process claims that now need to be reviewed. We anticipate that we would select between 20 and 30 percent of the most commercially important patents for correction. The fixed Patent Office reissue application, examination and issue fees alone will cost almost five million dollars at 2009 rates.

Beyond the naked cost, there is another unanticipated problem with a mass filing of patent reissue applications. Even if only twenty percent of the issued Philips' patents with process claims have potential defects that warrant Patent Office review, we will need to prepare and file over one thousand applications for reissue. The number of applications, from our company alone, would then already exceed the maximum annual number of reissue filings that have ever been made in the United States Patent Office. When other, similarly situated companies also seek reissue patents, the average pendency of patent applications, already at a commercially unacceptable level of 32 months, will skyrocket.

In light of the expected burden on the Patent Office and associated delays in processing the onslaught of reissue applications proceedings, the unexpected and potentially unwarranted costs to patent holders and the delays imposed upon assertions of patent infringement, we urge this Court to hear this case, promptly clarify the definition of a patentable process under § 101, and inject certainty back into the patent system.

*14 IV. A mandatory machine-or-transformation test for process patent subject matter is legally unsound.
A. The Court of Appeals disregarded this Court's instructions that § 101 must be broadly construed and ignored the plain language of § 100(b).
The legislative history surrounding patentable subject matter supports a broad construction. This Court has unequivocally cautioned against reading limitations and conditions into § 101 which the legislature has not expressed. Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980); Diamond v. Diehr, 450 U.S. 175, 182 (1981). This Court has also declined constructions that would narrow the scope of patentable subject matter. J.E.M. AG Supply, Inc. d/b/a Farm Advantage Inc. v. Pioneer Hi-Bred Int'l. Inc., 534 U.S. 124, 145-146 (2001) (Affirming that new plant varieties are patentable subject matter and noting “in the face of [highly visible decisions supporting a broad interpretation of § 101],… Congress … failed to pass legislation indicating that it disagrees … As in Chakrabarty, we decline to narrow the reach of § 101 where Congress has given us no indication that it intends this result.”). Moreover, this Court also chose not to reconsider the Federal Circuit's State Street Bank decision (confirming that business methods are patentable subject matter). State Street Bank & Trust Co. v. Signature Financial Group, Inc., 525 U.S. 1093 (1999) (denying petition for certiorari).

Statutory construction must begin with the language of the statute and courts are forbidden from *15 disregarding clear expressions of Congressional intent. Chakrabarty, 447 U.S. at 308. The word “process” is expressly defined by Congress in the 1952 Patent Act 35 U.S.C. § 100(b): “The term process means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter or material.” The Court of Appeals, however, did not give any weight to this definition in its opinion and summarily dismissed the statute as “unhelpful.” Bilski, 545 F.3d at 951, n.3. In blatantly rejecting the definition that was expressly provided by Congress, the Court of Appeals disregarded Congress' intent that patentable subject matter under § 101 be interpreted as broadly as possible within the limits established by pre-1952 precedent.

B. The principle that patentable subject matter broadly includes all of the technological arts was already firmly established in American law by the late 19th century.
The Court of Appeals' disregard of the express statutory definition is sophistry in its purest form. The 1952 Patent Act, and more particularly the definition of a patentable “process” in § 100(b), was intended to codify the then-existing body of American patent law. The issues discussed by the Court of Appeals majority are neither new nor unique to this case and the relationship between patentable technological arts and industrial process is well documented in the classical 19th century treatises. Yet, the Court used tunnel vision to effectively bypass more than a century of well-established precedent and the concurrence even found it necessary *16 to fall-back to pre-industrial English theories of monopoly which were already discredited by the industrial-age legal scholars.

The patentability of an art has always been recognized in the United States. Contrary to the Court of Appeals' pronouncement, the term “art” was not fully synonymous with an industrial method or series of process steps. By 1890, the patentable classification of an art was considered the “most comprehensive” of categories of patentable subject matter, which “embraced all of those [patentable inventions] which cannot embraced under one or more groups of instruments enumerated in the statutes, its outer limits are less easily discernable than any other class of operative means. See William C. Robinson, The Law of Patents for Useful Inventions, § 163-166 (Little, Brown and Company, 1890).[FN9]

FN9. Late 19th century law recognized that the category of [an Art] includes (1) the application of a known force to a new object, … (2) the application of a new force to a new object … and (3) the application of a known force to known objects through known instruments used in a new manner. - An Art may be either a “Force Applied” a “Mode of Application” or the “Specific Treatment of a Specific Object”. Id. § 164 - 165. Arts were considered patentable subject matter as long as they produced physical effects, that is: affected the character or condition of physical objects. There was no requirement that the objects had to be physically transformed. Id. at § 166

*17 C. The Court of Appeals holding inherently discriminates against inventions in the computer, information science, content delivery and information science technologies.
The TRIPS Agreement provides that:

“… patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application … patents shall be available and patent rights enjoyable without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced.”

Agreement on Trade-Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods, Apr. 15, 1994, Art. 27, in Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 33 I. L. M. 1197, 1208 (1994).

Yet a mandatory machine-or-transformation test inherently denies valuable process patent protection to service industries and manufacturers whose products are not traditional physical articles.

In 1990 almost all consumer electronic devices were implemented in separate specialized sets as combinations of hardware circuit elements. For example, televisions, VCR's and telephone answering machines were produced and marketed in separate boxes and *18 often via different selling channels. Today those same product functions are usually implemented in software and we are moving toward a small number of common multiuse hardware platforms. Personal computers and PDA's now provide audio and video recorder functionality. Cameras, music players and television receivers are furnished as embedded features in cellular telephones. In this context, the boundary between hardware and software ( i.e. articles and processes) becomes fuzzy. Software and firmware code effectively reconfigures hardware circuits to perform particular player or display functions that were formerly achieved in fixed circuitry. Processes that were once linked to specific, dedicated machines are now implemented on these general purpose devices.

The Patent Office is struggling with an expanding backlog of unexamined patent applications which is particularly severe for inventions in the electronics, information technology and biotechnology arts. Short product life cycles make the consumer electronics and computer industries especially vulnerable to patent processing delays: first and most obviously because many products are already obsolete before effective patent protection becomes available, but also because long application processing delays create an unfair impression that patents are being granted for well-known ideas.[FN10] The new Court of Appeals test thus *19 discriminates in favor of users of hardware technology and against users of software technology.

FN10. Petitioner's argument mentions several cases in which the Patent Office Board of Appeals and Interferences (the “B. P. A. I.”) has already expanded the Court of Appeals decision as a basis for rejecting article of manufacture claims for information processing systems and networks. Even more recently, the B. P. A. I. further relied on expanded Federal Circuit Bilski precedents to hold that an invention of a computerized method used by a television set-top box or video recorder (for example a Tivo(R) brand DVR) to display lists of recommended programs on a television set screen is unpatentable, because claimed data processing apparatus is said to be non-specific and the television programs are not “physical and tangible objects”. Ex parte Gupta, Appeal 2008-2000, Application 10/014,202, (B. P. A. I., January 15, 2009). There is thus every indication the Patent Office will use the Bilski opinion as a broad-brush tool to push-back its problematic patent examination backlog onto the Court of Appeals docket at the very time when issuing patents for new inventions could act as a stimulus for our economy.

D. The mandatory machine-or-transformation test excludes a range of processes that were well recognized as being patentable under pre-1952 law and which Congress intended to include within the scope of the 1952 Patent Act.
Any sound test for patentability must recognize that § 101 processes are a broad category which includes all of the subject matter that was referred to as “the arts” in pre-1952 case law. Patentable processes thus should include methods (e.g., methods of testing and medical diagnosis, signal processing, energy management and control and electrical filtering, authentication and verification) which have historically been regarded as patentable arts, but do not involve manufacturing *20 processes, or inherently produce any physical transformations of raw materials or commodities.

Methods for non-destructive testing and diagnosis are a classic example of traditionally patentable, useful arts which strive to measure and characterize the physical properties of materials and commodities without producing any physical transformation that would impair the test article. Quality assurance processes in the electronics and aerospace industries typically stress components with forces and environmental conditions beyond their expected working limits and only accept articles whose physical properties remain unchanged after the stress. Process patent claims should be available to protect these inventions against all unauthorized users without regard to the pass-fail outcome of the tests. For example, the patentability of medical diagnostic methods should not be unduly restricted to exclude instances where only patients who suffer from a rare abnormal condition manifest some physical transformation of an analytical reagent.

Methods for energy management and system control provide another relevant example of traditionally patentable arts whose intended purpose is often to maintain the physical properties of articles and materials in an unchanged, stable state by means of predictive filtering, application of negative feedback or other similar modern process technologies in the face of a potentially hostile external environment.

The Court should promptly review the decision and clarify these important issues before the Patent Office *21 can use them as precedents to further cripple intellectual property protection for industrial and technical arts which are true backbones of the United States economy.

E. The new patentability test disrupts the delicate strategic balance between patent and trade secret protection.
The patentable subject matter precedents of this Court are designed to navigate the “opposing and risky shoals” between patent overprotection and underprotection. Lab. Corp of Am. Holdings v. Metabolite Labs., Inc., 548 U.S. 124, 127 (2006) (Stevens, J., dissenting). In contrast, the Court of Appeals' new and regressive tests for patentable methods will undermine the economic rationales for the patent system because they will deny inventors their ability to recoup fixed costs of research and development and will encourage them to keep inventions secret. See W. Landes and R. Posner, The Economic Structure of Intellectual Property Law 294 (2003).

As this Court has noted, “the federal patent system … embodies a carefully crafted bargain for encouraging creation and disclosure of new, useful, and non-obvious advances in technology in return for the exclusive right to practice the invention for a period of years”. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150-51 (1989). If the Court of Appeals' new requirements are left to stand, innovators are less likely to spend research and development resources on methods for information processing, medical diagnosis, non-destructive testing and environmental control. If they *22 do invent such technologies, they likely will keep their inventions secret. American industry will “invest more resources in maintaining trade secrecy … and inventive activity [will] be inefficiently biased toward inventions that can be kept secret.” Landis and Posner supra at 328. The end result will be to “reduc[e] the stock of knowledge available to society as a whole. Id. at 294.

CONCLUSION

The petition for certiorari should be granted. The Court should review and reverse the decision of the Court of Appeals.

Bilski v. Doll
2009 WL 559338 (U.S.) (Appellate Petition, Motion and Filing)

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• 2009 WL 2418482 (Appellate Brief) Brief of Amicus Curiae Intellectual Property Owners Association in Support of Neither Party (Aug. 5, 2009) Original Image of this Document (PDF)
• 2009 WL 2418484 (Appellate Brief) Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Aug. 5, 2009) Original Image of this Document (PDF)
• 2009 WL 2418485 (Appellate Brief) Brief for the Business Software Alliance as Amicus Curiae in Support of Affirmance (Aug. 5, 2009) Original Image of this Document (PDF)
• 2009 WL 2418486 (Appellate Brief) Brief of Amicus Curiae Washington State Patent Law Association in Support of Petitioner (Aug. 5, 2009) Original Image of this Document (PDF)
• 2009 WL 2418487 (Appellate Brief) Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Aug. 5, 2009) Original Image of this Document (PDF)
• 2009 WL 2418488 (Appellate Brief) Brief of Amici Curiae Association Internationale Pour la Protection de la Propriete Intellectuelle and International Association For The Protection Of Intellectual Property (U.S.) in Support of Reversal (Aug. 5, 2009) Original Image of this Document (PDF)
• 2009 WL 2418489 (Appellate Brief) Brief of Amicus Curiae Caris Diagnostics, Inc. in Support of Petitioners (Aug. 5, 2009) Original Image of this Document (PDF)
• 2009 WL 2418490 (Appellate Brief) Brief of the Intellectual Property Law Association of Chicago as Amicus Curiae Supporting Neither Party (Aug. 5, 2009) Original Image of this Document (PDF)
• 2009 WL 2418491 (Appellate Brief) Brief of Monogram Biosciences, Inc. and Genomic Health, Inc. as Amici Curiae in Support of Neither Party (Aug. 5, 2009) Original Image of this Document (PDF)
• 2009 WL 2441065 (Appellate Brief) Brief of Amicus Curiae Raymond C. Meiers in Support of Neither Party (Aug. 5, 2009) Original Image of this Document (PDF)
• 2009 WL 2418476 (Appellate Brief) Brief of On Time Systems, Inc. as Amicus Curiae in Support of Neither Party (Aug. 4, 2009) Original Image of this Document (PDF)
• 2009 WL 2406379 (Appellate Brief) Brief of Amicus Curiae Conejo Valley Bar Association in Support of Neither Party (Aug. 3, 2009) Original Image of this Document (PDF)
• 2009 WL 2372921 (Appellate Brief) Brief For Petitioners (Jul. 30, 2009) Original Image of this Document (PDF)
• 2009 WL 2373016 (Joint Appendix) Joint Appendix (Jul. 30, 2009) Original Image of this Document (PDF)
• 2009 WL 2247132 (Appellate Brief) Brief of Amicus Curiae Telecommunication Systems, Inc. in Support of Neither Party and for Purely Prospective Application of Any Adoption of the New Legal Test Applied Below (Jul. 24, 2009) Original Image of this Document (PDF)
• 2009 WL 2247133 (Appellate Brief) Brief for the State of Oregon as Amicus Curiae in Support of Neither Party (Jul. 24, 2009) Original Image of this Document (PDF)
• 2009 WL 2219306 (Appellate Brief) Brief of Amicus Curiae Timothy F. McDonough, Ph.D. in Support of Petitioners (Jul. 22, 2009) Original Image of this Document (PDF)
• 2009 WL 1317892 (Appellate Petition, Motion and Filing) Petitioners' Reply Brief (May 8, 2009) Original Image of this Document (PDF)
• 2009 WL 1179332 (Appellate Petition, Motion and Filing) Brief for the Respondent in Opposition (May 1, 2009) Original Image of this Document (PDF)
• 2009 WL 559339 (Appellate Petition, Motion and Filing) Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Mar. 2, 2009) Original Image of this Document (PDF)
• 2009 WL 559340 (Appellate Petition, Motion and Filing) Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Mar. 2, 2009) Original Image of this Document (PDF)
• 2009 WL 559341 (Appellate Petition, Motion and Filing) Brief Amicus Curiae of Franklin Pierce Law Center in Support of Certiorari (Mar. 2, 2009) Original Image of this Document (PDF)
• 2009 WL 559342 (Appellate Petition, Motion and Filing) Brief of Amica Curiae Anne E. Barschall, Pro Se in Support of Petitioners (Mar. 2, 2009) Original Image of this Document (PDF)
• 2009 WL 564647 (Appellate Petition, Motion and Filing) Brief of Amicus Curiae American Intellectual Property Law Association in Support of the Petition for a Writ of Certiorari (Mar. 2, 2009) Original Image of this Document (PDF)
• 2009 WL 585758 (Appellate Petition, Motion and Filing) Brief of Amicus Curiae Borland Software Corporation in Support of Petitioner (Mar. 2, 2009) Original Image of this Document (PDF)
• 2009 WL 564646 (Appellate Petition, Motion and Filing) Brief of Amicus Curiae Medistem Inc. in Support of the Petition for a Writ of Certiorari (Feb. 27, 2009) Original Image of this Document (PDF)
• 2009 WL 507782 (Appellate Petition, Motion and Filing) Brief of John P. Sutton Amicus Curiae Supporting Petitioners (Feb. 25, 2009) Original Image of this Document (PDF)
• 08-964 (Docket) (Jan. 30, 2009)
• 2009 WL 226501 (Appellate Petition, Motion and Filing) Petition for a Writ of Certiorari (Jan. 28, 2009) Original Image of this Document (PDF)

Oral Argument Transcripts with Streaming Media (Back to top)

• 2009 WL 3750776 (Oral Argument) Oral Argument (Nov. 9, 2009) Original Image of this Document with Appendix (PDF)
END OF DOCUMENT

(c) 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.

[[Homework 5: Feb 14 Karch]]

Brief

2011-02-14T16:22:00Z

Sam Karch: Created page with "2009 WL 559338 (U.S.) (Appellate Petition, Motion and Filing) For opinion see 130 S.Ct. 3218, 129 S.Ct. 2735 Briefs and Other Related Documents Oral Argument Transcripts with S..."

Homework 5: Feb 14 Karch

2011-02-14T16:21:51Z

Sam Karch: Created page with "==Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009)=="

==[[Brief]] of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009)==

User:Sam Karch

2011-02-14T16:18:48Z

Sam Karch: /* Homeworks */

== Homeworks ==
[[Homework 1: Jan 24 Karch]]
 
[[Homework 2: Jan 28 Karch]]
 
[[Homework 3: Feb 4 Karch]]
 
[[Homework 4: Feb 9 Karch]]
 
[[Homework 5: Feb 14 Karch]]

== Notes ==
[[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]] [[Bonito Karch]]
 
[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]] [[Hotchkiss Karch]]
 
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] [[A. & P. Tea Co. Karch]]
 
[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] [[Lyon Karch]]
 
[[Graham v. John Deere, 383 U.S. 1 (1966)]] [[Graham v. John Deere Karch]]
 
[[US v. Adams, 383 U.S. 39 (1966)]] [[US v Adams Karch]]
 
[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] [[Anderson's Karch]]
 
[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]] [[KSR Karch]]
 
[[Miscellaneous]]

Bilski brief list

2011-02-14T16:17:17Z

Sam Karch:

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

#Reply Brief for Petitioners (Oct. 26, 2009)
#jpotter2
#Adam T. Letcher
#Craigkrzyskowski
#dcarter2
#ebingle
#Rabot
#Eric Paul
#cnorton
#kschlax
#Jnosal
#Mackroyd
#dsakamot
#eguilbea
#901444263
#shockett
#gallsup
#KyleR
#Andy Stulc
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Aschlehube
#Kevin Godshall
#sbonomo
#Brief for the Respondent (Sep. 25, 2009)
#Kriester
#Brobins
#Josh Bradley
#Chuck Talley
#E W Hitchler
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Biotechnology Industry Organization, Advanced Medical Technology Association, Wisconsin Alumni Research Foundation & The Regents of the University of California in Support of Neither Party (Aug. 6, 2009)
#Mzahm
#Adam Mahood
#Hamburgler
#Brief of F%21ed%21eration Internationale Des Conseils En Propri%21et%21e Industrielle as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Law Professor Kevin Emerson Collins in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Legal OnRamp in Support of Neither Party (Aug. 6, 2009)
#cmadiga1
#Brief of Amicus Curiae Novartis Corporation Supporting Petitioners (Aug. 6, 2009)
#Brief Amicus Curiae of The Federal Circuit Bar Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Regulatory Datacorp, Inc, American Express Company, Palm Inc., Rockwell Automation, Inc., and SAP America, Inc. as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Double Rock Corporation, Island Intellectual Property LLC, LIDs Capital LLC, Intrasweep LLC, Access Control Advantage, Inc., Ecomp Consultants, Pipeline Trading Systems LLC, Rearden Capital Corporation, Craig Mowry and PCT Capital LLC as Ami ci Curiae in Support of Petitioners (Aug. 6, 2009)
#901422128
#Brief of Amicus Curiae The Houston Intellectual Property Law Association in Support of Petitioners (Aug. 6, 2009)
#Brief of Franklin Pierce Law Center as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#LMiller
#Brief of TELES AG as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae San Diego Intellectual Property Law Association in Support of Neither Party on the Merits (Aug. 6, 2009)
#Brief of Robert R. Sachs and Daniel R. Brownstone as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#CRoetzel
#Brief of Amicus Curiae AwakenIP, LLC in Support of Petitioners (Aug. 6, 2009)
#Pmitros
#pfleury
#901479977
#Brief for Prometheus Laboratories Inc. as Amicus Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Intellectual Property Owners Association in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Aug. 5, 2009)
#Brief for the Business Software Alliance as Amicus Curiae in Support of Affirmance (Aug. 5, 2009)
#Brief of Amicus Curiae Washington State Patent Law Association in Support of Petitioner (Aug. 5, 2009)
#Bobby Powers
#Brief of Amici Curiae Association Internationale Pour la Protection de la Propriete Intellectuelle and International Association For The Protection Of Intellectual Property (U.S.) in Support of Reversal (Aug. 5, 2009)
#Brief of Amicus Curiae Caris Diagnostics, Inc. in Support of Petitioners (Aug. 5, 2009)
#Brief of the Intellectual Property Law Association of Chicago as Amicus Curiae Supporting Neither Party (Aug. 5, 2009)
#Brief of Monogram Biosciences, Inc. and Genomic Health, Inc. as Amici Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Raymond C. Meiers in Support of Neither Party (Aug. 5, 2009)
#Xiao Dong
#Brief of Amicus Curiae Conejo Valley Bar Association in Support of Neither Party (Aug. 3, 2009)
#Brief For Petitioners (Jul. 30, 2009)
#Brief of Amicus Curiae Telecommunication Systems, Inc. in Support of Neither Party and for Purely Prospective Application of Any Adoption of the New Legal Test Applied Below (Jul. 24, 2009)
#Brief for the State of Oregon as Amicus Curiae in Support of Neither Party (Jul. 24, 2009)
#ewolz
#kristen kemnetz
#John Gallagher
#Sam Karch
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Mar. 2, 2009)
#Kyle Tennant
#Brief Amicus Curiae of Franklin Pierce Law Center in Support of Certiorari (Mar. 2, 2009)
#Brief of Amica Curiae Anne E. Barschall, Pro Se in Support of Petitioners (Mar. 2, 2009)
#bcastel1
#Jmarmole
#Gtorrisi

Homework 3: Feb 4 Karch

2011-02-07T17:34:34Z

Sam Karch: /* Argument for the Invalidity of Patent 2627798 */

===Overview===

The Patent under question is #[http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 2627798]
 
Filed: 1951 by Graham

Two other patents will be analyzed as "prior art" in order to determine whether the '798 patent satisfies the non-obviousness requirement as set by Title 35 Sec 103.
 
[http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 2493811] Filed 1947 by Graham
 
[http://www.google.com/patents?id=rkVKAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 2014451] Filed 1933 by Pfeifer

===Argument for the Validity of Patent 2627798===
The opposition argues that the '798 patent is obvious as the changes from the '811 patent are small and inconsequential. Although our client Graham admits that the changes from the '811 patent are, in fact, small, we maintain that the changes, though small, have far reaching and important effects that improve the design substantially.

The '811 patent allowed the plow to vibrate and fishtail in a way that created much friction on the hinge plate, resulting in much wear and damage to the mechanism. The reversed position of the shank with the hinge plate provided for a difference in flex that more effectively absorbs the "tremendous forces of the shock of obstructions whereas prior art arrangements failed." Though the improvement did not require extensive changes to the design, Title 35 Sec 103 says: "Patentability shall not be negatived by the manner in which the invention was made." This invention solved a need where others had failed, and whether the change is small or not is immaterial. Though the invention addressed in the '798 patent was a combination of components of previous inventions, the combination and arrangement of these components was not obvious, and so the '798 patent is therefore valid.

===Argument for the Invalidity of Patent 2627798===
Our client John Deere maintains that they did not violate the '798 patent due to the fact that the '798 patent is invalid via Title 35 sec 103 requiring that an invention be "non-obvious" in order to be patentable. The '798 patent is different from the '811 patent in only two ways:
 
"(1) the stirrup and the bolted connection of the shank to the hinge plate do not appear in '811; and
 
(2) the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. The shank is held in place by the spring rod which is hooked against the bottom of the hinge plate passing through a slot in the shank."

These changes from the '811 patent, although providing improvement of the function of the product, are not non-obvious. In order to satisfy verify the non-obviousness of an invention, the following tests may be applied:
 
'''Primary tests of non-obviousness'''
 
1. Scope and content of prior art
 
2. Differences between prior art and current claims
 
3. Level of ordinary skill in the matter
 
'''Secondary tests of non-obviousness'''
 
1. Commercial success
 
2. Long existing unresolved needs
 
3. Failure of other attempts

The change from the prior art ('811) to the current invention ('798) has already been shown to be small, therefore the '798 patent does not satisfy either 1. or 2. As for 3., the invention must be something not obvious to someone with an ordinary level of skill in the field, there is evidence to the contrary. Graham filed the '811 patent just 4 years before filing the '798 patent. This does not show any "long existing unresolved needs", and instead implies the ineffectiveness of the original '811 patent. Anyone with ordinary skill in the field who used the plow described in the '811 patent would notice the problems associated with the friction and wear of the hinge plate. Were these problems deemed problematic enough to require improvement, it is only logical to change the construction of the parts of the invention that cause the problem. In this case, the orientation of the hinge plate and shank in the '811 patent could be seen to be causing the damage from use. The changing of the orientation of these parts does not represent inventiveness or a substantial discovery, but instead represents the logical conclusion from the evidence at hand. Therefore, the '798 patent is invalid.

[[User: Sam Karch]]

Homework 3: Feb 4 Karch

2011-02-07T17:34:22Z

Sam Karch: /* Argument for the Validity of Patent 2627798 */

===Overview===

The Patent under question is #[http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 2627798]
 
Filed: 1951 by Graham

Two other patents will be analyzed as "prior art" in order to determine whether the '798 patent satisfies the non-obviousness requirement as set by Title 35 Sec 103.
 
[http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 2493811] Filed 1947 by Graham
 
[http://www.google.com/patents?id=rkVKAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 2014451] Filed 1933 by Pfeifer

===Argument for the Validity of Patent 2627798===
The opposition argues that the '798 patent is obvious as the changes from the '811 patent are small and inconsequential. Although our client Graham admits that the changes from the '811 patent are, in fact, small, we maintain that the changes, though small, have far reaching and important effects that improve the design substantially.

The '811 patent allowed the plow to vibrate and fishtail in a way that created much friction on the hinge plate, resulting in much wear and damage to the mechanism. The reversed position of the shank with the hinge plate provided for a difference in flex that more effectively absorbs the "tremendous forces of the shock of obstructions whereas prior art arrangements failed." Though the improvement did not require extensive changes to the design, Title 35 Sec 103 says: "Patentability shall not be negatived by the manner in which the invention was made." This invention solved a need where others had failed, and whether the change is small or not is immaterial. Though the invention addressed in the '798 patent was a combination of components of previous inventions, the combination and arrangement of these components was not obvious, and so the '798 patent is therefore valid.

===Argument for the Invalidity of Patent 2627798===
 
Our client John Deere maintains that they did not violate the '798 patent due to the fact that the '798 patent is invalid via Title 35 sec 103 requiring that an invention be "non-obvious" in order to be patentable. The '798 patent is different from the '811 patent in only two ways:
 
"(1) the stirrup and the bolted connection of the shank to the hinge plate do not appear in '811; and
 
(2) the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. The shank is held in place by the spring rod which is hooked against the bottom of the hinge plate passing through a slot in the shank."

These changes from the '811 patent, although providing improvement of the function of the product, are not non-obvious. In order to satisfy verify the non-obviousness of an invention, the following tests may be applied:
 
'''Primary tests of non-obviousness'''
 
1. Scope and content of prior art
 
2. Differences between prior art and current claims
 
3. Level of ordinary skill in the matter
 
'''Secondary tests of non-obviousness'''
 
1. Commercial success
 
2. Long existing unresolved needs
 
3. Failure of other attempts

The change from the prior art ('811) to the current invention ('798) has already been shown to be small, therefore the '798 patent does not satisfy either 1. or 2. As for 3., the invention must be something not obvious to someone with an ordinary level of skill in the field, there is evidence to the contrary. Graham filed the '811 patent just 4 years before filing the '798 patent. This does not show any "long existing unresolved needs", and instead implies the ineffectiveness of the original '811 patent. Anyone with ordinary skill in the field who used the plow described in the '811 patent would notice the problems associated with the friction and wear of the hinge plate. Were these problems deemed problematic enough to require improvement, it is only logical to change the construction of the parts of the invention that cause the problem. In this case, the orientation of the hinge plate and shank in the '811 patent could be seen to be causing the damage from use. The changing of the orientation of these parts does not represent inventiveness or a substantial discovery, but instead represents the logical conclusion from the evidence at hand. Therefore, the '798 patent is invalid.

[[User: Sam Karch]]

Homework 3: Feb 4 Karch

2011-02-07T17:34:04Z

Sam Karch: Created page with "===Overview=== The Patent under question is #[http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 2627798] <br..."

===Overview===

The Patent under question is #[http://www.google.com/patents?id=2MVtAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 2627798]
 
Filed: 1951 by Graham

Two other patents will be analyzed as "prior art" in order to determine whether the '798 patent satisfies the non-obviousness requirement as set by Title 35 Sec 103.
 
[http://www.google.com/patents?id=0BZqAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 2493811] Filed 1947 by Graham
 
[http://www.google.com/patents?id=rkVKAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false 2014451] Filed 1933 by Pfeifer

===Argument for the Validity of Patent 2627798===
 
The opposition argues that the '798 patent is obvious as the changes from the '811 patent are small and inconsequential. Although our client Graham admits that the changes from the '811 patent are, in fact, small, we maintain that the changes, though small, have far reaching and important effects that improve the design substantially.

The '811 patent allowed the plow to vibrate and fishtail in a way that created much friction on the hinge plate, resulting in much wear and damage to the mechanism. The reversed position of the shank with the hinge plate provided for a difference in flex that more effectively absorbs the "tremendous forces of the shock of obstructions whereas prior art arrangements failed." Though the improvement did not require extensive changes to the design, Title 35 Sec 103 says: "Patentability shall not be negatived by the manner in which the invention was made." This invention solved a need where others had failed, and whether the change is small or not is immaterial. Though the invention addressed in the '798 patent was a combination of components of previous inventions, the combination and arrangement of these components was not obvious, and so the '798 patent is therefore valid.

===Argument for the Invalidity of Patent 2627798===
 
Our client John Deere maintains that they did not violate the '798 patent due to the fact that the '798 patent is invalid via Title 35 sec 103 requiring that an invention be "non-obvious" in order to be patentable. The '798 patent is different from the '811 patent in only two ways:
 
"(1) the stirrup and the bolted connection of the shank to the hinge plate do not appear in '811; and
 
(2) the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. The shank is held in place by the spring rod which is hooked against the bottom of the hinge plate passing through a slot in the shank."

These changes from the '811 patent, although providing improvement of the function of the product, are not non-obvious. In order to satisfy verify the non-obviousness of an invention, the following tests may be applied:
 
'''Primary tests of non-obviousness'''
 
1. Scope and content of prior art
 
2. Differences between prior art and current claims
 
3. Level of ordinary skill in the matter
 
'''Secondary tests of non-obviousness'''
 
1. Commercial success
 
2. Long existing unresolved needs
 
3. Failure of other attempts

The change from the prior art ('811) to the current invention ('798) has already been shown to be small, therefore the '798 patent does not satisfy either 1. or 2. As for 3., the invention must be something not obvious to someone with an ordinary level of skill in the field, there is evidence to the contrary. Graham filed the '811 patent just 4 years before filing the '798 patent. This does not show any "long existing unresolved needs", and instead implies the ineffectiveness of the original '811 patent. Anyone with ordinary skill in the field who used the plow described in the '811 patent would notice the problems associated with the friction and wear of the hinge plate. Were these problems deemed problematic enough to require improvement, it is only logical to change the construction of the parts of the invention that cause the problem. In this case, the orientation of the hinge plate and shank in the '811 patent could be seen to be causing the damage from use. The changing of the orientation of these parts does not represent inventiveness or a substantial discovery, but instead represents the logical conclusion from the evidence at hand. Therefore, the '798 patent is invalid.

[[User: Sam Karch]]

Graham v. John Deere Karch

2011-02-07T16:05:10Z

Sam Karch:

Graham had a patent ([http://www.google.com/patents/about?id=2MVtAAAAEBAJ&dq=2,627,798 2627798]) on shock absorbers on plow shanks
 
Filing date: Aug 27, 1951
 
Issue date: Feb 1953
 
Case decided Feb 1966
===Initial Rulings===

'''Fifth Circuit''': VALID held the patent valid, ruling that a combination is patentable when it produces an "old result in a cheaper and otherwise more advantageous way."

'''Eighth Circuit''': INVALID held that since there was no new result in the combination the patent was invalid.

'''Supreme Court''': INVALID said that both the fifth and the eighth used the wrong reasons, but the eighth came to the right conclusion.
 
First patent case decided by the Supreme Court since the Patent Act of 1952 which added Sec. 103

Jefferson: "having a monopoly on an idea is not a natural right"

Patentability shall not be negatived by the manner in which the invention was made - sec 103

'''Under Sec 103'''
 
"Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy."
 
'''Primary tests of non-obviousness'''
 
1. Scope and content of prior art
 
2. Differences between prior art and current claims
 
3. Level of ordinary skill in the matter
 
'''Secondary tests of non-obviousness'''
 
1. Commercial success
 
2. Long existing unresolved needs
 
3. Failure of other attempts
 
etc.

"We have observed a notorious difference between the standards applied by the Patent Office and by the courts."

"He who seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office."

=== Other relevant patents ===
 
VIBRATING PLOW AND MOUNTING [http://www.google.com/patents/about?id=0BZqAAAAEBAJ&dq=U.S.+No.+2,493,811 2493811]
 
By Graham
 
Filing date: Feb 26, 1947
 
Issue date: Jan 1950

The Graham '811 and '798 patent devices are similar in all elements, save two:
 
(1) the stirrup and the bolted connection of the shank to the hinge plate do not appear in '811; and
 
(2) the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. The shank is held in place by the spring rod which is hooked against the bottom of the hinge plate passing through a slot in the shank.

Graham's '798 patent application contained 12 claims. All were rejected as not distinguished from the Graham '811 patent.

Graham withdrew the original claims and substituted the two new ones which are substantially those in issue here. His contention was that wear was reduced in patent '798 between the shank and the heel or rear of the upper plate.

Petitioners say that this difference in flex, though small, effectively absorbs the tremendous forces of the shock of obstructions whereas prior art arrangements failed.

"all of the elements in the '798 patent are present in the Glencoe structure. Furthermore, even though the position of the shank and hinge plate appears reversed in Glencoe, the mechanical operation is identical. The shank there pivots about the underside of the stirrup, which in Glencoe is above the shank. In other words, the stirrup in Glencoe serves exactly the same function as the heel of the hinge plate in '798. The mere shifting of the wear point to the heel of the '798 hinge plate from the stirrup of Glencoe - itself a part of the hinge plate - presents no operative mechanical distinctions, much less nonobvious differences."

[[User: Sam Karch]]

Graham v. John Deere Karch

2011-02-07T16:02:26Z

Sam Karch:

User:Sam Karch

2011-02-07T14:22:44Z

Sam Karch: /* Homeworks */

== Homeworks ==
[[Homework 1: Jan 24 Karch]]
 
[[Homework 2: Jan 28 Karch]]
 
[[Homework 3: Feb 4 Karch]]

== Notes ==
[[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]] [[Bonito Karch]]
 
[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]] [[Hotchkiss Karch]]
 
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] [[A. & P. Tea Co. Karch]]
 
[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] [[Lyon Karch]]
 
[[Graham v. John Deere, 383 U.S. 1 (1966)]] [[Graham v. John Deere Karch]]
 
[[US v. Adams, 383 U.S. 39 (1966)]] [[US v Adams Karch]]
 
[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] [[Anderson's Karch]]
 
[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]] [[KSR Karch]]
 
[[Miscellaneous]]

KSR Karch

2011-02-04T17:36:44Z

Sam Karch: /* Ruling */

Patent on a pedal apparatus

Claim 4 of the patent, at issue here, describes:
 
“A vehicle control pedal apparatus comprising:
 
a support adapted to be mounted to a vehicle structure;
 
an adjustable pedal assembly having a pedal arm moveable in for[e] and aft directions with respect to said support;
 
a pivot for pivotally supporting said adjustable pedal assembly with respect to said support and defining a pivot axis; and
 
an electronic control attached to said support for controlling a vehicle system;
 
said apparatus characterized by said electronic control being responsive to said pivot for providing a signal that corresponds to pedal arm position as said pedal arm pivots about said pivot axis between rest and applied positions wherein the position of said pivot remains constant while said pedal arm moves in fore and aft directions with respect to said pivot.” Id., col. 6, lines 17-36, Supplemental App. 8 (diagram numbers omitted).

Ruled obvious: failed non-obvious requirement
 
Sensors had been used on pedals for a long time, putting it on the pivot does not make an invention

Prior art or ordinary skill
 
TSM: Teaching, suggesting, motivation - combine to be obvious

CAFC: court of appeals for the federal circuit
 
PTO: Patent trademark office

If A then B means: if -B then -A
 
Does not mean if -A then -B

Throughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here.

-If the combination may be obvious, but the result is unpredictable, the invention is non-obvious

===Ruling===
1. District court ruled patent invalid
 
2. Court of Appeals ruled patent valid
 
3. Supreme court ruled patent invalid - obvious

[[User: Sam Karch]]

KSR Karch

2011-02-04T17:36:20Z

Sam Karch: Created page with "Patent on a pedal apparatus Claim 4 of the patent, at issue here, describes: “A vehicle control pedal apparatus comprising: a support adapted to be mounted to a ..."

Patent on a pedal apparatus

Claim 4 of the patent, at issue here, describes:
 
“A vehicle control pedal apparatus comprising:
 
a support adapted to be mounted to a vehicle structure;
 
an adjustable pedal assembly having a pedal arm moveable in for[e] and aft directions with respect to said support;
 
a pivot for pivotally supporting said adjustable pedal assembly with respect to said support and defining a pivot axis; and
 
an electronic control attached to said support for controlling a vehicle system;
 
said apparatus characterized by said electronic control being responsive to said pivot for providing a signal that corresponds to pedal arm position as said pedal arm pivots about said pivot axis between rest and applied positions wherein the position of said pivot remains constant while said pedal arm moves in fore and aft directions with respect to said pivot.” Id., col. 6, lines 17-36, Supplemental App. 8 (diagram numbers omitted).

Ruled obvious: failed non-obvious requirement
 
Sensors had been used on pedals for a long time, putting it on the pivot does not make an invention

Prior art or ordinary skill
 
TSM: Teaching, suggesting, motivation - combine to be obvious

CAFC: court of appeals for the federal circuit
 
PTO: Patent trademark office

If A then B means: if -B then -A
 
Does not mean if -A then -B

Throughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here.

-If the combination may be obvious, but the result is unpredictable, the invention is non-obvious

===Ruling===
1. District court ruled patent invalid
2. Court of Appeals ruled patent valid
3. Supreme court ruled patent invalid - obvious

[[User: Sam Karch]]

User:Sam Karch

2011-02-04T17:04:33Z

Sam Karch: /* Notes */

== Homeworks ==
[[Homework 1: Jan 24 Karch]]
 
[[Homework 2: Jan 28 Karch]]

== Notes ==
[[Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)]] [[Bonito Karch]]
 
[[Hotchkiss v. Greenwood, 52 U.S. 11 (1850)]] [[Hotchkiss Karch]]
 
[[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] [[A. & P. Tea Co. Karch]]
 
[[Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)]] [[Lyon Karch]]
 
[[Graham v. John Deere, 383 U.S. 1 (1966)]] [[Graham v. John Deere Karch]]
 
[[US v. Adams, 383 U.S. 39 (1966)]] [[US v Adams Karch]]
 
[[Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)]] [[Anderson's Karch]]
 
[[KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)]] [[KSR Karch]]
 
[[Miscellaneous]]

US v Adams Karch

2011-01-31T17:34:36Z

Sam Karch:

"We conclude the Adams battery was also nonobvious. As we have seen, the operating characteristics of the Adams battery have been shown to have been unexpected and to have far surpassed then-existing wet batteries. Despite the fact that each of the elements of the Adams battery was well known in the prior art, to combine them as did Adams required that a person reasonably skilled in the prior art must ignore that (1) batteries which continued to operate on an open circuit and which heated in normal use were not practical; and (2) water-activated batteries were successful only when combined with electrolytes detrimental to the use of magnesium. These long-accepted factors, when taken together, would, we believe, deter any investigation into such a combination as is used by Adams. This is not to say that one who merely finds new uses for old inventions by shutting his eyes to their prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness. 30

Nor are these the only factors bearing on the question of obviousness. We have seen that at the time Adams perfected his invention noted experts expressed disbelief in it. Several of the same experts subsequently recognized the significance of the Adams invention, some even patenting improvements on the same system. Fischbach et al., U.S. Patent No. 2,636,060 (1953). Furthermore, in a crowded art replete with a century and a half of advancement, the Patent Office found not one reference to cite against the Adams application. Against the subsequently issued improvement patents to Fischbach, supra, and to Chubb, U.S. Reissue Patent No. 23,883 (1954), it found but three references prior to Adams—none of which are relied upon by the Government. 31
We conclude that the Adams patent is valid. The judgment of the Court of Claims is affirmed. It is so ordered. 32"

[[User: Sam Karch]]

US v Adams Karch

2011-01-31T17:34:24Z

Sam Karch: Created page with ""We conclude the Adams battery was also nonobvious. As we have seen, the operating characteristics of the Adams battery have been shown to have been unexpected and to have far su..."

Graham v. John Deere Karch

2011-01-31T17:32:56Z

Sam Karch:

Graham had a patent on shock absorbers on plow shanks

Fifth Circuit held the patent valid, ruling that a combination is patentable when it produces an "old result in a cheaper and otherwise more advantageous way."
 
Eighth Circuit held that since there was no new result in the combination the patent was invalid.

Jefferson: "having a monopoly on an idea is not a natural right"

Patentability shall not be negatived by the manner in which the invention was made - sec 103

"Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy."

[[User: Sam Karch]]

Graham v. John Deere Karch

2011-01-31T17:32:36Z

Sam Karch: Created page with "Graham had a patent on shock absorbers on plow shanks Fifth Circuit held the patent valid, ruling that a combination is patentable when it produces an "old result in a cheaper a..."

User:Sam Karch

2011-01-31T16:56:20Z

Sam Karch: /* Notes */