Bill Goodwine's Wiki - User contributions [en]

Quanta Brief: 901424607

2011-04-29T16:21:03Z

Sbonomo: Created page with "Brief of Dell Inc., Hewlett-Packard, Co., Cisco Systems, Inc., and Ebay Inc. as Amici Curiae in Support of Petitioners *This brief notes alternative technology and computer man..."

Brief of Dell Inc., Hewlett-Packard, Co., Cisco Systems, Inc., and Ebay Inc. as Amici Curiae in Support of Petitioners

*This brief notes alternative technology and computer manufacturers that typically incorporate Intel computer components into their products, along with numerous other components from a wide variety of sources. Thus it is shown that the actions of Quanta Computer, Inc. in using Intel microprocessors and other parts in combination with non-Intel components is not outside the reasonable and expected method of manufacturing in the art. In essence, they were not doing anything that would be considered immoral or unjust given precedents of standard practice in the field.

*Another argument is that if the Courts were to revise the doctrine of patent exhaustion as seen fit by the Federal Circuit Court, the result would be unjust in that manufacturers could claim multiple royalties on the same patent. The computer systems discussed here are very complex and the manufacturing processes involve multiple uses of the same products at many different stages. If the lower court's ruling were to stand, a patent owner could claim royalties at every individual step that involved the product in question, and this adds unnecessary costs to the manufacturing process, and harms both the manufacturers and the public who is to benefit from these machines. Thus, this hinders the goals of the patent system.

*It is argued that the Federal Circuit Court's revision of the patent exhaustion doctrine to not apply to method patents is against the principles of the patent system. The stated purpose of the patent system is to promote the progress of the useful arts by granting a monopoly incentive to inventors of new and useful things. The owner of a patent is granted the monopoly on the patented subject matter as an economic reward. However, if the patent owner chooses to sell his or her invention and receive an economic reward accordingly, then it is not just to the public that he or she should be able to continue to hold a monopoly on that subject material. This argument demonstrates that there should be limitations to the amount of rewards available to a patent owner.

Here in list of arguments in Quanta

2011-04-29T15:57:52Z

Sbonomo:

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]]

Notes on Readings

2011-04-13T15:47:13Z

Sbonomo:

'''Novelty, Nonobviousness'''

Fri, 1-21

[[ Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989) Notes]]

Weds, 1-26

[[ Hotchkiss v. Greenwood, 52 U.S. 11 (1850) Notes]]

[[ A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950) Notes]]

Fri, 1-28

[[ Lyon v. Bausch & Lomb, 224 F.2d 530 (1955) Notes]]

Mon, 1-31

[[ Graham v. John Deere, 383 U.S. 1 (1966) Notes]]

[[ US v. Adams, 383 U.S. 39 (1966) Notes]]

Weds, 2-2

[[ Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969) Notes]]

[[ KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007) Notes]]

'''Patentable Subject Matter'''

Mon, 2-7

[[Gottschalk v. Benson, 409 U.S. 63 (1972) Notes]]

[[Diamond v. Diehr, 450 U.S. 175 (1981) Notes]]

Fri, 2-11

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992) Notes]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998) Notes]]

Mon, 2-14

[[Bilski v. Kappos, 130 S.Ct. 3218 (2010) Notes]]

'''Statutory Bars'''

Fri, 2-18

[[Egbert v. Lippmann, 104 U.S. 333 (1881) Notes]]

[[Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946) Notes]]

Mon, 2-21

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

[[Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877) Notes]]

[[Lough v. Brunswick Corp., 86 F.3d 1113 (1996) Notes]]

Weds, 2-23

[[UMC Electronics Co. v. U.S., 816 F.2d 647 (1987) Notes]]

[[Pfaff vs. Wells Electronics, 525 U.S. 55 (1998) Notes]]

Weds, 3-2

[[Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939) Notes]]

[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999) Notes]]

Fri, 3-4

[[Respondents Brief for Electric Storage Battery Co. Notes]]

[[Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948) Notes]]

Mon, 3-7

[[W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983) Notes]]

Mon, 3-21

[[In re Carlson, 983 F.2d 1032 (1992) Notes]]

[[In re Hall, 781 F.2d 897 (1986) Notes]]

'''Infringement'''

Fri, 3-25

[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002) Notes]]

[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950) Notes]]

Mon, 3.28

[[Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997) Notes]]

[[Warner-Jenkinson v. Hilton Davis Petitioner Brief Notes]]

Mon, 4-4

[[Honeywell Brief notes]]

Weds, 4-6

[[Patent Prosecution Process Notes]]

MOn, 4-9

[[Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991) Notes]]

[[TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111 (2001) Notes]]

Patent Prosecution Process Notes

2011-04-06T16:29:13Z

Sbonomo:

Patent Prosecution Process - filing app, responding to office, etc

Several Parts

1. Application

2. Examined by PTO

3. Office Action - response saying if rejected, time to get back

4. Response to Office action

5. Subsequent office actions

6. Final rejection or allowance

7. Issues - start of monopoly

CFR - code of federal regulations
*promulgated by PTO dept. of commerce
*37 CFR - patents, TM, (c)

Application needs

1. specification including claims (35 USC 112)

2. Drawings

3. Oath (37 CFR 1.63, 1.68)

4.

Examination by PTO:

*Initial Screening
**figure out which group of examiners examine it

Examiner:

1. Examines applications in order filed, with exceptions
*a. age of inventor
*b. national priorities
*c. reissues
*d. app ready to issue or final rejection
*e. etc

2. Preliminary Examination for Informalities

Is the app ready to be substantively examined?
*eg. appropriate terminology, etc

3. examiner does prior art search (37 CFR 1.104)

Patent Prosecution Process Notes

2011-04-06T16:27:54Z

Sbonomo:

Patent Prosecution Process Notes

2011-04-06T16:17:26Z

Sbonomo: Created page with "Patent Prosecution Process - filing app, responding to office, etc Several Parts 1. Application 2. Examined by PTO 3. Office Action - response saying if rejected, time to get..."

Notes on Readings

2011-04-06T15:50:18Z

Sbonomo:

Due Monday, April 4, 2011

2011-04-04T17:37:25Z

Sbonomo:

Honeywell Brief - 901424607

The court ruled that Honeywell’s act of “rewriting the dependent claims into independent form coupled with the cancellation of the original independent claims,” created a presumption of prosecution history estoppel, meaning that, unless the presumption could be rebutted, Honeywell could not reclaim subject matter from the original claims after the amendment. This presumption can be rebutted if the claims amendments were not done for statutory reasons. It is admitted that the amendments made to the Honeywell patent claims were made to avoid infringement on the prior art at the time of the patent application, and thus for statutory reasons. However, the scope of the subject matter that Sundstrand argues could not be reclaimed from the original dependent claims, should not include the information regarding the use of the IGVs, which is critical to Honeywell’s claim of infringement by Sundstrand.

When Honeywell’s original claims were rejected by the patent office, it changed its dependent claims to independent claims and cancelled the old independent claims per standard procedure of patent revision. Nothing regarding the use of the IGVs in the patent claims was significantly changed when the amendments were made to the claims. Therefore it is wrong for the court to throw out all of the dependent claims associated with the cancelled original independent claims, which include those in relation to the IGVs. Nothing was revised about the IGVs and yet the procedure affirmed by the court in effect causes the Honeywell patent to lose the claimed material relating to it, just because it was associated with the cancelled independent claims. The court should not be able to completely get rid of everything associated with these cancelled claims.

In Warner-Jenkinson the court clearly established that such matters should be evaluated on an element-by-element basis, as opposed to the entire patent claim as a whole. The court has failed to follow this precedent by assuming that all claims associated with the cancelled independent claims should be grouped and thrown out together. If the court were to take the approach dictated by the Supreme Court in Warner-Jenkinson, it would realize that the IGV claims remained unaltered by the amendments and therefore are not subject to the appliation of prosecution history estoppel.

As a result, the application of the prosecution history estoppel should be irrelevant in determining whether the Honeywell patent was infringed by Sundstrand. The estoppel only bars the application of the doctrine of equivalents for subject matter that was narrowed by the amendments made to the claims of a patent. Since the claims involving the IGVs were not narrowed by the amendments, they do not pertain to this matter of discussion. Thus, the prosecution history estoppel may apply to some claims of the amended patent, but not to the ones that are in question in terms of the application of the doctrine of equivalents to show infringement on the part of Sundstrand.

Due Monday, April 4, 2011

2011-04-04T17:37:18Z

Sbonomo:

Honeywell Brief-901424607

The court ruled that Honeywell’s act of “rewriting the dependent claims into independent form coupled with the cancellation of the original independent claims,” created a presumption of prosecution history estoppel, meaning that, unless the presumption could be rebutted, Honeywell could not reclaim subject matter from the original claims after the amendment. This presumption can be rebutted if the claims amendments were not done for statutory reasons. It is admitted that the amendments made to the Honeywell patent claims were made to avoid infringement on the prior art at the time of the patent application, and thus for statutory reasons. However, the scope of the subject matter that Sundstrand argues could not be reclaimed from the original dependent claims, should not include the information regarding the use of the IGVs, which is critical to Honeywell’s claim of infringement by Sundstrand.

When Honeywell’s original claims were rejected by the patent office, it changed its dependent claims to independent claims and cancelled the old independent claims per standard procedure of patent revision. Nothing regarding the use of the IGVs in the patent claims was significantly changed when the amendments were made to the claims. Therefore it is wrong for the court to throw out all of the dependent claims associated with the cancelled original independent claims, which include those in relation to the IGVs. Nothing was revised about the IGVs and yet the procedure affirmed by the court in effect causes the Honeywell patent to lose the claimed material relating to it, just because it was associated with the cancelled independent claims. The court should not be able to completely get rid of everything associated with these cancelled claims.

In Warner-Jenkinson the court clearly established that such matters should be evaluated on an element-by-element basis, as opposed to the entire patent claim as a whole. The court has failed to follow this precedent by assuming that all claims associated with the cancelled independent claims should be grouped and thrown out together. If the court were to take the approach dictated by the Supreme Court in Warner-Jenkinson, it would realize that the IGV claims remained unaltered by the amendments and therefore are not subject to the appliation of prosecution history estoppel.

As a result, the application of the prosecution history estoppel should be irrelevant in determining whether the Honeywell patent was infringed by Sundstrand. The estoppel only bars the application of the doctrine of equivalents for subject matter that was narrowed by the amendments made to the claims of a patent. Since the claims involving the IGVs were not narrowed by the amendments, they do not pertain to this matter of discussion. Thus, the prosecution history estoppel may apply to some claims of the amended patent, but not to the ones that are in question in terms of the application of the doctrine of equivalents to show infringement on the part of Sundstrand.

Due Monday, April 4, 2011

2011-04-04T17:37:06Z

Sbonomo:

Honeywell Brief

The court ruled that Honeywell’s act of “rewriting the dependent claims into independent form coupled with the cancellation of the original independent claims,” created a presumption of prosecution history estoppel, meaning that, unless the presumption could be rebutted, Honeywell could not reclaim subject matter from the original claims after the amendment. This presumption can be rebutted if the claims amendments were not done for statutory reasons. It is admitted that the amendments made to the Honeywell patent claims were made to avoid infringement on the prior art at the time of the patent application, and thus for statutory reasons. However, the scope of the subject matter that Sundstrand argues could not be reclaimed from the original dependent claims, should not include the information regarding the use of the IGVs, which is critical to Honeywell’s claim of infringement by Sundstrand.

When Honeywell’s original claims were rejected by the patent office, it changed its dependent claims to independent claims and cancelled the old independent claims per standard procedure of patent revision. Nothing regarding the use of the IGVs in the patent claims was significantly changed when the amendments were made to the claims. Therefore it is wrong for the court to throw out all of the dependent claims associated with the cancelled original independent claims, which include those in relation to the IGVs. Nothing was revised about the IGVs and yet the procedure affirmed by the court in effect causes the Honeywell patent to lose the claimed material relating to it, just because it was associated with the cancelled independent claims. The court should not be able to completely get rid of everything associated with these cancelled claims.

In Warner-Jenkinson the court clearly established that such matters should be evaluated on an element-by-element basis, as opposed to the entire patent claim as a whole. The court has failed to follow this precedent by assuming that all claims associated with the cancelled independent claims should be grouped and thrown out together. If the court were to take the approach dictated by the Supreme Court in Warner-Jenkinson, it would realize that the IGV claims remained unaltered by the amendments and therefore are not subject to the appliation of prosecution history estoppel.

As a result, the application of the prosecution history estoppel should be irrelevant in determining whether the Honeywell patent was infringed by Sundstrand. The estoppel only bars the application of the doctrine of equivalents for subject matter that was narrowed by the amendments made to the claims of a patent. Since the claims involving the IGVs were not narrowed by the amendments, they do not pertain to this matter of discussion. Thus, the prosecution history estoppel may apply to some claims of the amended patent, but not to the ones that are in question in terms of the application of the doctrine of equivalents to show infringement on the part of Sundstrand.

Due Monday, April 4, 2011

2011-04-04T17:36:58Z

Sbonomo:

Honeywell Brief
The court ruled that Honeywell’s act of “rewriting the dependent claims into independent form coupled with the cancellation of the original independent claims,” created a presumption of prosecution history estoppel, meaning that, unless the presumption could be rebutted, Honeywell could not reclaim subject matter from the original claims after the amendment. This presumption can be rebutted if the claims amendments were not done for statutory reasons. It is admitted that the amendments made to the Honeywell patent claims were made to avoid infringement on the prior art at the time of the patent application, and thus for statutory reasons. However, the scope of the subject matter that Sundstrand argues could not be reclaimed from the original dependent claims, should not include the information regarding the use of the IGVs, which is critical to Honeywell’s claim of infringement by Sundstrand.

When Honeywell’s original claims were rejected by the patent office, it changed its dependent claims to independent claims and cancelled the old independent claims per standard procedure of patent revision. Nothing regarding the use of the IGVs in the patent claims was significantly changed when the amendments were made to the claims. Therefore it is wrong for the court to throw out all of the dependent claims associated with the cancelled original independent claims, which include those in relation to the IGVs. Nothing was revised about the IGVs and yet the procedure affirmed by the court in effect causes the Honeywell patent to lose the claimed material relating to it, just because it was associated with the cancelled independent claims. The court should not be able to completely get rid of everything associated with these cancelled claims.

In Warner-Jenkinson the court clearly established that such matters should be evaluated on an element-by-element basis, as opposed to the entire patent claim as a whole. The court has failed to follow this precedent by assuming that all claims associated with the cancelled independent claims should be grouped and thrown out together. If the court were to take the approach dictated by the Supreme Court in Warner-Jenkinson, it would realize that the IGV claims remained unaltered by the amendments and therefore are not subject to the appliation of prosecution history estoppel.

As a result, the application of the prosecution history estoppel should be irrelevant in determining whether the Honeywell patent was infringed by Sundstrand. The estoppel only bars the application of the doctrine of equivalents for subject matter that was narrowed by the amendments made to the claims of a patent. Since the claims involving the IGVs were not narrowed by the amendments, they do not pertain to this matter of discussion. Thus, the prosecution history estoppel may apply to some claims of the amended patent, but not to the ones that are in question in terms of the application of the doctrine of equivalents to show infringement on the part of Sundstrand.

Honeywell Brief notes

2011-04-04T17:36:30Z

Sbonomo: Created page with "Honeywell brief Doctrine of equivalents should be asserted, resulting in an infringement of the patents in question by Hamilton Sunstrand. Honeywell amended his claims for stat..."

Honeywell brief

Doctrine of equivalents should be asserted, resulting in an infringement of the patents in question by Hamilton Sunstrand.

Honeywell amended his claims for statutory reasons (112), therefore prosecution history estoppel applies. this says that he can't recapture subject matter from the original claims after having amended them and thus narrowed their scope. as a result of this doctrine, he cannot claim infringement based on doctrine of equivalents.

Honeywell can dodge this (prosecution history estoppel) by showing, only using prosecution history evidence, that the amendment was not done for a reason related to patentability. basically show that it was just done for the sake of doing, not to get around any statutory bars.

typically narrowing an amendment surrenders everything between original claim and amended claim. patentee can overcome this if they can show that at the time of amendment, one reasonably skilled in the art could not have come up with the alleged equivalent.

Notes on Readings

2011-04-04T17:36:24Z

Sbonomo:

Due Monday, April 4, 2011

2011-04-04T15:44:06Z

Homework Assignments Due

2011-04-04T15:28:12Z

Sbonomo:

[[Due Friday, January 28, 2011]]

[[Due Friday, February 4, 2011]]

[[Due Wednesday, February 8, 2011]]

[[Due Wednesday, March 23, 2011]]

[[Due Monday, April 4, 2011]]

Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997) Notes

2011-03-28T16:29:23Z

Sbonomo:

Supreme Court of the United States

doctrine of equivalents upheld

*dye purification
*one makes process at pH 6-9, other at pH 5, same thing

(c) The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. The Court is concerned that the doctrine, as it has come to be broadly applied since Graver Tank, conflicts with the Court's numerous holdings that a patent may not be enlarged beyond the scope of its claims. The way to reconcile the two lines of authority is to apply the doctrine to each of the individual elements of a claim, rather than to the accused product or process as a whole. Doing so will preserve some meaning for each of a claim's elements, all of which are deemed material to defining the invention's scope. So long as the doctrine does not encroach beyond these limits, or beyond related limits discussed in the Court's opinion, infra, at 1049-1051, 1053-1054, n. 8, and 1054, it will not vitiate the central functions of patent claims to define the invention and to notify the public of the patent's scope. Pp. 1048-1049.

(e) The Court rejects petitioner's argument that Graver Tank requires judicial exploration of the intent of the alleged infringer or a case's other equities before allowing application of the doctrine of equivalents. Although Graver Tank certainly leaves room for the inclusion of intent-based elements in the doctrine, the Court does not read the case as requiring proof of intent. The better view, and the one consistent with Graver Tank's predecessors, see, e.g., Winans v. Denmead, 15 How. 330, 343, 14 L.Ed. 717, and the objective approach to infringement, is that intent plays no role in the doctrine's application. Pp. 1051-1052.

why was first patent (6-9) not found equivalent?

HD sues WJ for infringement.

“What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case.

Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.

Petitioner's primary argument in this Court is that the doctrine of equivalents, as set out in Graver Tank in 1950, did not survive the 1952 revision of the Patent Act, 35 U.S.C. § 100 et seq., because it is inconsistent with several aspects of that Act

The various policy arguments now made by both sides are thus best addressed to Congress, not this Court.

We concur with this apt reconciliation of our two lines of precedent. Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole.

we think the better rule is to place the burden on the patent holder to establish the reason for an amendment required during patent prosecution. The court then would decide whether that reason is sufficient to overcome prosecution history estoppel as a bar to application of the doctrine of equivalents to the element added by that amendment.

goes back to trial ct, have to prove ph 6 was not important to show that 5 was basically equivalent

Warner-Jenkinson v. Hilton Davis Petitioner Brief Notes

2011-03-28T14:27:49Z

Sbonomo:

WARNER-JENKINSON COMPANY, INC., Petitioner,

Our position is that the invention protected by the federal patent monopoly cannot go beyond what the patentee has told the PTO (and hence the public) its invention is.

The Federal Circuit, in fundamental disagreement, held that the scope of the protected “invention” is not determined by interpreting the patentee's own statement of its invention. After such interpretation is exhausted, the inquiry-then proceeds to an independent assessment of the scientific facts to determine what changes from the patentee's asserted invention would make a “substantial difference.”

lower ph levels would cause ”tremendous foaming problems in the plant.”

Limiting non-literal infringement to what is disclosed by the patentee serves fundamental patent policies.

so that other inventors need not conduct independent experiments even to figure out the scope of the patentee's monopoly. Here, without such experiments, no one could have known whether, when industrial volumes of dye were used (cf. Resp. Br. 5 n. 5, 34 n. 24), the filtering process would function equivalently with a ph of less than approximately 6.0

patentee may not recapture through the doctrine of equivalents what it provably dropped from its asserted coverage by narrowing amendments made at the insistence of the PTO, because such amendments constitute a surrender of coverage that makes clear what was not part of the asserted (and approved) invention.

The inescapable addition of substantial systemic uncertainty as to patent boundaries (cf. Chiron Br. 19-20 (noting claim construction not perfectly precise)) is not the only problem with Hilton Davis's policy argument for departing from the meaning of the patent disclosure, which rests ultimately on an appeal to fairness and the basic patent-law policy of providing an adequate reward for the patentee's contribution to knowledge.

harm to public if scope not adequately defined because waste time, resources experimenting, etc just to find out what actual scope is.

Warner-Jenkinson v. Hilton Davis Petitioner Brief Notes

2011-03-28T14:27:26Z

Sbonomo: Created page with "WARNER-JENKINSON COMPANY, INC., Petitioner, Our position is that the invention protected by the federal patent monopoly cannot go beyond what the patentee has told the PTO (and..."

Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997) Notes

2011-03-28T14:12:38Z

Sbonomo:

Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997) Notes

2011-03-28T14:02:53Z

Sbonomo: Created page with "Supreme Court of the United States doctrine of equivalents upheld *dye purification *one makes process at pH 6-9, other at pH 5, same thing (c) The determination of equivalenc..."

Notes on Readings

2011-03-28T13:27:46Z

Sbonomo:

Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950) Summary sbonomo

2011-03-25T15:44:01Z

Sbonomo: Created page with "This was a Supreme Court case dealing with an electric welding process. The court relied upon the doctrine of equivalents to expand a patent monopoly to cover processes involvin..."

This was a Supreme Court case dealing with an electric welding process. The court relied upon the doctrine of equivalents to expand a patent monopoly to cover processes involving non-alkaline earth metals, even though the claims of the patent specifically were limited to such metals. This case exemplifies the fine line that is drawn between preventing harm to the public as a result of granting patents for minute differences, and withholding knowledge from being used by the public that is not directly claimed in a patent.

Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950) Notes

2011-03-25T15:41:20Z

Sbonomo:

Supreme Court

DC says infringed, CCPA says invalid claims valid, SC says what DC said goes

infringement:
*must first look at words of claim
*if falls within claim, thats it

applies doctrine of equivalents, but probably not aplicable. specifically the claim said alkaline earth metals,other guy didnt use alkaline earth metals, but patent monopoly extended to include such things because it was so near to the invention.

CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002) Notes

2011-03-25T15:22:26Z

Sbonomo:

elliptical fitness device, appeals court

District court said CCS didnt specify reciprocating "member" as having more than one straight component. thus Life Fitness did not infringe on patent.

said not mentioned in claims, and drawings only show single member

CCS says the word member covers curved thing that Life was using, Life says term is too vague, can't claim curved member

infringement

*2-step analysis
**1. determine scope of disputed term
**2. compare claim to accused device

to interpret claim:
*intrinsic, extrinsic evidence

word can lose its ordinary meaning if
*patentee makes own definition stated
*embodiment distinguishes term
*patentees term deprives claimof clarity

appeals court says DC misinterpreted the term reciprocating member.

it can contain the curved member based on dictionary definition, intrinsic evidence

Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950) Notes

2011-03-25T15:21:58Z

Sbonomo: Created page with "Supreme Court DC says infringed, CCPA says invalid claims valid, SC says what DC said goes infringement: *must first look at words of claim *if falls within claim, thats it"

Supreme Court

DC says infringed, CCPA says invalid claims valid, SC says what DC said goes

infringement:
*must first look at words of claim
*if falls within claim, thats it

CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002) Summary sbonomo

2011-03-25T15:11:58Z

Sbonomo: Created page with "This was a US Court of Appeals case, addressing a decision made by the US District Court for the District of Colorado. The case involved an elliptical fitness machine, specifica..."

This was a US Court of Appeals case, addressing a decision made by the US District Court for the District of Colorado. The case involved an elliptical fitness machine, specifically the "reciprocating member" of the machine that was claimed by CCS Fitness in its '333 patent. CCS accused Brunswick (Life Fitness) of infringing upon its claim. Life Fitness argued that CCS never specifically stated what all was meant by "member" in its claims, and that the drawings in the patent application only suggested a single straight member as comprising the reciprocating component. Since theirs was curved and contained multiple components, Life argued, it did not infringe upon the patent. The District Court agreed and ruled for summary judgment. Upon appeal, the Court of Appeals reversed the decision in part, based on the District Court's error in constructing the term "reciprocating member." The Court of Appeals relied on dictionary definitions and intrinsic evidence for its construction of the term, and determined that nothing restricted the term member from comprising of multiple components or being of a different shape. It also said that the drawings in the patent merely represented a particular embodiment of what was being patented, and thus the invention was not limited to what was illustrated.

Quiz Summaries

2011-03-25T15:03:29Z

Sbonomo: Created page with "CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002) Summary sbonomo Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950) Summary sbonomo"

[[CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002) Summary sbonomo]]

[[Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950) Summary sbonomo]]

User:Sbonomo

2011-03-25T15:02:44Z

Sbonomo:

[[ Notes on Readings ]]

[[ Latin Terms ]]

[[ Football Throwing Machine: U.S. Pat. No. 4,596,230, issued Jun. 24, 1986 ]]

[[ Homework Assignments Due ]]

[[Quiz Summaries]]

CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002) Notes

2011-03-25T15:02:18Z

Sbonomo: Created page with "elliptical fitness device, appeals court District court said CCS didnt specify reciprocating "member" as having more than one straight component. thus Life Fitness did not infri..."

elliptical fitness device, appeals court

District court said CCS didnt specify reciprocating "member" as having more than one straight component. thus Life Fitness did not infringe on patent.

said not mentioned in claims, and drawings only show single member

CCS says the word member covers curved thing that Life was using, Life says term is too vague, can't claim curved member

infringement

*2-step analysis
**1. determine scope of disputed term
**2. compare claim to actual device

to interpret claim:
*intrinsic, extrinsic evidence

word can lose its ordinary meaning if
*patentee makes own definition stated
*embodiment distinguishes term
*patentees term deprives claimof clarity

appeals court says DC misinterpreted the term reciprocating member.

it can contain the curved member based on dictionary definition, intrinsic evidence

Notes on Readings

2011-03-25T14:36:47Z

Sbonomo:

Due Wednesday, March 23, 2011

2011-03-23T04:58:13Z

Sbonomo:

The case I investigated was Fernanda MISANI v. ORTHO PHARMACEUTICAL CORP. It was decided in the Superior Court of New Jersey, Appellate Division on March 11, 1964. A patent on a chemical compound, used in an anti-convulsant for treating epilepsy, was found to be invalid because it was described in a printed publication in Germany more than one year prior to the date of the U.S. patent application. Misani had worked for Ortho Pharmaceutical, which was owned by Johnson & Johnson, and claimed to have invented the compound, but was not given credit for it, and a different person was designated the inventor in the patent application. The compound itself had been published in a German chemical encyclopedia, but in it no reference was made to any reduction to practice of the compound; it merely described the formula. The original ruling which is being appealed in the present case contained failures by the trial court in terms of properly instructing the jury on relevant law as it pertained to the general subject matter under question. Therefore, the ruling stated that the case should be remanded for a new trial. Regardless, the interesting point from the case is the contention by the plaintiff that, even though the compound was published more than a year prior to the date of the patent application, it did not invalidate the patent because it was merely a description of the compound formula and contained no information regarding the process of creating it or potential uses of the compound.

Due Wednesday, March 23, 2011

2011-03-23T04:13:29Z

Sbonomo: Created page with "Due Wednesday, March 23, 2011 Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you wil..."

Due Wednesday, March 23, 2011

Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.
You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.
I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

Homework Assignments Due

2011-03-23T04:13:11Z

Sbonomo:

[[Due Friday, January 28, 2011]]

[[Due Friday, February 4, 2011]]

[[Due Wednesday, February 8, 2011]]

[[Due Wednesday, March 23, 2011]]

In re Carlson, 983 F.2d 1032 (1992) Notes

2011-03-21T15:06:10Z

Sbonomo:

United States Court of Appeals Federal Circuit.

PTO examiner, and PTO Appeals Board, said unpatentable under 103 (nonobviousness)

Affirmed by this US court of Appeals

Geschmacksmuster - German IP, industrial design rights (shape, pattern, color for non-utilitarian purposes) [http://en.wikipedia.org/wiki/Geschmacksmuster]

2 issues:
*Gmaster a foreign invention under 102a and therefore prior art?
*this patent obvious given prior art under 103?

Patent: [http://www.google.com/patents?id=VPebAAAAEBAJ&printsec=abstract&zoom=4&source=gbs_overview_r&cad=0#v=onepage&q&f=false]

*fluid hydration system, stores water, replacement reservoir

Carlson accused Revlon, Smiletote of infringing

Gmuster - design registration:
*bring it to local courthouse
*Federal gazette publishes list with general description, name and location of registrant, city location
*copies available

after reexamination, find Gmuster is prior art under 102a, thus his patent is obvious
*patent issued <12 mos. b4 patent app, 102b not applicable

Board affirmed, now appeals to this court

a person is entitled to a patent under U.S. law unless the same invention was patented by another person in a foreign country prior to the invention thereof by the U.S. applicant. 35 U.S.C. § 102(a)

A further bar to patentability arises if an applicant for a U.S. patent has been granted a patent in a foreign country on the same invention more than twelve months prior to the date the patent application is filed in the United States. 35 U.S.C. § 102(d)

With respect to design patents, however, Congress has provided that the time bar in section 102(d) is six months.

Predecessor Court:

With regard to construing “patented ... in a foreign country” under section 102(d), Federico concluded that the rights and privileges attaching to the protection granted by foreign governments need not be coextensive with the exclusive rights granted under U.S. law, so long as the foreign rights granted are both substantial and exclusive in nature.

Because a Geschmacksmuster conveys substantial and exclusive rights in the design, the Board in Weiss held that a Geschmacksmuster qualifies as prior art under section 102(d).

Carlson wants Gmuster to not be considered patent under 102a but it is
*has to fully discolse invention to be considered a patent, Gmuster doesnt do that

**but...gazette refers reader to Coburg, where they can get all the details if they want
**thus available to public

obviousness:

person of ordinary skill need not necessarily study the prior art in order to understand the potential use of a symmetrical design.

In re Carlson, 983 F.2d 1032 (1992) Notes

2011-03-21T14:34:55Z

Sbonomo: Created page with "United States Court of Appeals Federal Circuit. PTO examiner, and PTO Appeals Board, said unpatentable under 103 (nonobviousness) Affirmed by this US court of Appeals Geschma..."

Latin Terms

2011-03-21T14:22:56Z

Sbonomo:

amici curiae - someone, not a party to a case, who volunteers to offer information to assist a court in deciding a matter before it. [http://en.wikipedia.org/wiki/Amicus_curiae]

certiorari - a type of writ seeking judicial review. [http://en.wikipedia.org/wiki/Certiorari]

in re - used to indicate that a judicial proceeding may not have formally designated adverse parties or is otherwise uncontested. [http://en.wikipedia.org/wiki/In_re]

Notes on Readings

2011-03-21T14:21:09Z

Sbonomo:

Notes on Readings

2011-03-21T14:19:00Z

Sbonomo:

W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983) Notes

2011-03-07T17:17:08Z

Sbonomo:

Appeal of District Ct

Gore makes this magical Teflon-like material by discovered method of stretching really fast

called magical, etc

Garlock was asked to make a knock-off brand by a customer, and Garlock advertised it as a new form of PTFE

11/2/79 - Gore sues Garlock over processes patent (566)

12/18/79 - Garlock claims invalid, no infringement, etc

2/7/80 - Gore's 2nd suit on product patent (390)

District Ct says

(on processes 566 patent):

*102(a) - claim 1 anticipated by 401 machine and Budd's Cropper machine
*102(b) - all invalid bc on sale for more than 1 yr by Bud
*103 - obviousness of some claims wrt various pairings of old patents
*112(?) - all invalid as indefinite

(on product 390 patent):
*many invalid under 102, 103
*all invalid under 112

- no fraud

-Garlock doesnt get attourney fees

-don't touch infringement issue

CCPA says:

legal errors:
*invention not considered as a whole
*102(b) shouldn't have been applied
*didn't assess references entirely
*inherency
*.....

1. invalidity

a. 566 patent

i. 102(a)

*true as DC says, claim 1 invalid bc all it claims is >10%/sec and >35 degC, which were both done by his dad's 401 machine which had already been made]

ii. 102(b) on sale by Budd a yr b4

*it wasn't even public use, it was kept private by Bud. Plus, didnt consider claims independently and didnt prove inventions as a whole were practiced by Budd b4 critical date.
*Budd sold tape, not the process, which is what the patent is for

iii. 103

*applies to some claims
*CCPA says Teflon different from other polymers, so couldnt have been predicted - unexpected results
*also went against teaching at the time of stretching slower
*17 still invalid (double length, which was already done), others nonobvious
*leaves 3, 19

b. 390 patent

*pretty much same reasoning as for first patent, CCPA holds all claims valid

c. how 112 pertains to both

*112 - disclosure

2. Fraud

3. lawyer fees

W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983) Notes

2011-03-07T16:42:35Z

Sbonomo:

Appeal of District Ct

Gore makes this magical Teflon-like material by discovered method of stretching really fast

called magical, etc

Garlock was asked to make a knock-off brand by a customer, and Garlock advertised it as a new form of PTFE

11/2/79 - Gore sues Garlock over processes patent (566)

12/18/79 - Garlock claims invalid, no infringement, etc

2/7/80 - Gore's 2nd suit on product patent (390)

District Ct says

(on processes 566 patent):

*102(a) - claim 1 anticipated by 401 machine and Budd's Cropper machine
*102(b) - all invalid bc on sale for more than 1 yr by Bud
*103 - obviousness of some claims wrt various pairings of old patents
*112(?) - all invalid as indefinite

(on product 390 patent):
*many invalid under 102, 103
*all invalid under 112

- no fraud

-Garlock doesnt get attourney fees

-don't touch infringement issue

CCPA says:

legal errors:
*invention not considered as a whole
*102(b) shouldn't have been applied
*didn't assess references entirely
*inherency
*.....

1. invalidity

a. 566 patent

i. 102(a)

*true as DC says, claim 1 invalid bc all it claims is >10%/sec and >35 degC, which were both done by his dad's 401 machine which had already been made]

ii. 102(b) on sale by Budd a yr b4

*it wasn't even public use, it was kept private by Bud. Plus, didnt consider claims independently and didnt prove inventions as a whole were practiced by Budd b4 critical date.
*Budd sold tape, not the process, which is what the patent is for

iii. 103

b. 390 patent

c. how 112 pertains to both

2. Fraud

3. lawyer fees

W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983) Notes

2011-03-07T16:33:13Z

Sbonomo:

W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983) Notes

2011-03-07T16:00:17Z

Sbonomo: Created page with "Appeal of District Ct Gore makes this magical Teflon-like material by discovered method of stretching really fast called magical, etc Garlock was asked to make a knock-off bra..."

Notes on Readings

2011-03-07T15:41:59Z

Sbonomo:

Notes on Readings

2011-03-06T02:39:42Z

Sbonomo:

Notes on Readings

2011-03-06T02:39:14Z

Sbonomo:

Notes on Readings

2011-03-04T16:28:28Z

Sbonomo:

Notes on Readings

2011-03-04T15:45:50Z

Sbonomo:

ESB Briefs

2011-03-04T05:03:02Z

Sbonomo:

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

UMC Electronics Co. v. U.S., 816 F.2d 647 (1987) Notes

2011-02-23T17:34:19Z

Sbonomo:

contract w navy to supply accelerometer to determine if plane needs to be serviced

trying to improve technology

*late 66- UMC-A contract -
*early 67 - UMC-A doesnt work, start work on UMC-B
*4 or 5 /67- prototype built for UMC-B, of a subcomponent
*6/27/67- 1st proposal?
*8/2/67- submitted more detailed proposal for UMC-B
*8/9/67 - UMC gives demo of B
*early 68 - navy says screw it
*7/68 - new request from navy, leads to contract with other guys
*8/68-filed

*6/80 - UMC files action against US

Claims Ct says valid patent, not infringed by ACA that the govt used
*UMC mad they said not infringed
*US mad patent not held invalid

Now CAFC says patent invalid, not concerned with infringement ruling

Why did Claims Ct say valid?
*bc it wasn't "on sale"

end of the story: don't need physical embodiment for on sale bar to apply
*yea it was just a prototype being tested before but it had all the parts

DISSENT
*wants physical model to show its working in order to be considered testing/on sale
**probably more often carries actual dates with it
*mad that other guys went against precedent

inventions done when youve got it all figured out, not when you make a final working model.

UMC Electronics Co. v. U.S., 816 F.2d 647 (1987) Notes

2011-02-23T17:34:09Z

Sbonomo: Created page with " contract w navy to supply accelerometer to determine if plane needs to be serviced trying to improve technology *late 66- UMC-A contract - *early 67 - UMC-A doesnt work, st..."

contract w navy to supply accelerometer to determine if plane needs to be serviced

trying to improve technology

*late 66- UMC-A contract -
*early 67 - UMC-A doesnt work, start work on UMC-B
*4 or 5 /67- prototype built for UMC-B, of a subcomponent
*6/27/67- 1st proposal?
8/2/67- submitted more detailed proposal for UMC-B
*8/9/67 - UMC gives demo of B
*early 68 - navy says screw it
*7/68 - new request from navy, leads to contract with other guys
*8/68-filed

*6/80 - UMC files action against US

Claims Ct says valid patent, not infringed by ACA that the govt used
*UMC mad they said not infringed
*US mad patent not held invalid

Now CAFC says patent invalid, not concerned with infringement ruling

Why did Claims Ct say valid?
*bc it wasn't "on sale"

end of the story: don't need physical embodiment for on sale bar to apply
*yea it was just a prototype being tested before but it had all the parts

DISSENT
*wants physical model to show its working in order to be considered testing/on sale
**probably more often carries actual dates with it
*mad that other guys went against precedent

inventions done when youve got it all figured out, not when you make a final working model.