Bill Goodwine's Wiki - User contributions [en]

Quanta Brief Hockett

2011-05-05T19:21:16Z

Shockett:

'''Brief of the Licensing Executives Society (U.S.A. & Canada), Inc. As Amicus Curiae in Support of Neither Party'''

*This case highlights the tension between the doctrine of patent exhaustion on one had, and the limitations of that doctrine on the other.
**The Court previously held that a knowing purchaser of products from a latent licensee who is violating the terms of a restricted patent license could be found to be a patent infringer, notwithstanding the patent exhaustion doctrine.
**The Court also held that the patent exhaustion doctrine applies to a purchaser who knowingly buys an article from a patent licensee under a restricted license which disclaimed downstream purchaser license rights.
**Gives conflicting rulings on whether a patentee may limit the doctrine of patent exhaustion by imposing conditions on sales of patented products by licensees.

*Both patent licensees and licensors have an interest in knowing with certainty the consequences to downstream purchasers of products sold pursuant to a license agreement that authorizes the practice of something less than the full bundle of rights conferred by the patent.

*A patent holder can grant restrictions on the use of the licensee of that patent, but once the licensee sells an object the licensee cannot be held liable for the use of that object by the consumer.
**This indicates that exhaustion restricts the patentee's power to control a patented article after a first sale.

*"The authorized sale of an article which is capable of use only in practicing the patent is a relinquishment of the patent monopoly with respect to the article sold."

*Confusion as to whether the patent exhaustion doctrine is a species of implied license or a limitation of the patent grant itself.
**Holdings that indicate the sale of nonpatented equipment to practice patented inventions results in implied license.
**Holdings that say an authorized sale of a patented product places the product beyond the reach of the patent.

*Boils down to whether the patent exhaustion doctrine is a limitation of the patent grant itself, or is a principle that can be overcome through policy considerations or simply notice to the buyer of patented goods.

*The Licensing Executives Society requests that the Court's ruling in this case provide the certainty desired by licensees and licensors in the area of patent exhaustion doctrine.

User:Shockett

2011-05-05T19:18:39Z

Shockett: /* Homeworks */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

[[Mar. 23: Prior Description in Printed Publication SKH]]

[[Apr. 4: Equivalence Decision SKH]]

Apr. 29: [[Quanta Brief Hockett]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

[[Egbert v. Lippmann SKH]]

[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. SKH]]

[[D.L. Auld Co. v. Chroma Graphics Corp. SKH]]

[[Elizabeth v. American Nicholson Pavement Company SKH]]

[[Lough v. Brunswick Corp. SKH]]

[[UMC Electronics Co. v. U.S. SKH]]

[[Pfaff vs. Wells Electronics SKH]]

[[Electric Storage Battery Co. v. Shimadzu SKH]]

[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. SKH]]

[[W.L. Gore & Associates, Inc. v. Garlock, Inc. SKH]]

User:Shockett

2011-05-05T19:18:30Z

Shockett: /* Homeworks */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

[[Mar. 23: Prior Description in Printed Publication SKH]]

[[Apr. 4: Equivalence Decision SKH]]

Apr. 29 [[Quanta Brief Hockett]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

[[Egbert v. Lippmann SKH]]

[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. SKH]]

[[D.L. Auld Co. v. Chroma Graphics Corp. SKH]]

[[Elizabeth v. American Nicholson Pavement Company SKH]]

[[Lough v. Brunswick Corp. SKH]]

[[UMC Electronics Co. v. U.S. SKH]]

[[Pfaff vs. Wells Electronics SKH]]

[[Electric Storage Battery Co. v. Shimadzu SKH]]

[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. SKH]]

[[W.L. Gore & Associates, Inc. v. Garlock, Inc. SKH]]

Quanta Brief Hockett

2011-05-05T19:17:19Z

Shockett:

'''Brief of the Licensing Executives Society (U.S.A. & Canada), Inc. As Amicus Curiae in Support of Neither Party'''

*This case highlights the tension between the doctrine of patent exhaustion on one had, and the limitations of that doctrine on the other.
**The Court previously held that a knowing purchaser of products from a latent licensee who is violating the terms of a restricted patent license could be found to be a patent infringer, notwithstanding the patent exhaustion doctrine.
**The Court also held that the patent exhaustion doctrine applies to a purchaser who knowingly buys an article from a patent licensee under a restricted license which disclaimed downstream purchaser license rights.
**Gives conflicting rulings on whether a patentee may limit the doctrine of patent exhaustion by imposing conditions on sales of patented products by licensees.

*Both patent licensees and licensors have an interest in knowing with certainty the consequences to downstream purchasers of products sold pursuant to a license agreement that authorizes the practice of something less than the full bundle of rights conferred by the patent.

*A patent holder can grant restrictions on the use of the licensee of that patent, but once the licensee sells an object the licensee cannot be held liable for the use of that object by the consumer.
**This indicates that exhaustion restricts the patentee's power to control a patented article after a first sale.

*"The authorized sale of an article which is capable of use only in practicing the patent is a relinquishment of the patent monopoly with respect to the article sold."

*Confusion as to whether the patent exhaustion doctrine is a species of implied license or a limitation of the patent grant itself.
**Holdings that indicate the sale of nonpatented equipment to practice patented inventions results in implied license
**Holdings that say an authorized sale of a patented product places the product beyond the reach of the patent

*The Licensing Executives Society requests that the Court's ruling in this case provide the certainty desired by licensees and licensors in the area of patent exhaustion doctrine.

Quanta Brief Hockett

2011-05-05T19:15:20Z

Shockett:

'''Brief of the Licensing Executives Society (U.S.A. & Canada), Inc. As Amicus Curiae in Support of Neither Party'''

*This case highlights the tension between the doctrine of patent exhaustion on one had, and the limitations of that doctrine on the other.
**The Court previously held that a knowing purchaser of products from a latent licensee who is violating the terms of a restricted patent license could be found to be a patent infringer, notwithstanding the patent exhaustion doctrine.
**The Court also held that the patent exhaustion doctrine applies to a purchaser who knowingly buys an article from a patent licensee under a restricted license which disclaimed downstream purchaser license rights.
**Gives conflicting rulings on whether a patentee may limit the doctrine of patent exhaustion by imposing conditions on sales of patented products by licensees.

*Both patent licensees and licensors have an interest in knowing with certainty the consequences to downstream purchasers of products sold pursuant to a license agreement that authorizes the practice of something less than the full bundle of rights conferred by the patent.

*A patent holder can grant restrictions on the use of the licensee of that patent, but once the licensee sells an object the licensee cannot be held liable for the use of that object by the consumer.
**This indicates that exhaustion restricts the patentee's power to control a patented article after a first sale.

*"The authorized sale of an article which is capable of use only in practicing the patent is a relinquishment of the patent monopoly with respect to the article sold."

*Confusion as to whether the patent exhaustion doctrine is a species of implied license or a limitation of the patent grant itself.

*The Licensing Executives Society requests that the Court's ruling in this case provide the certainty desired by licensees and licensors in the area of patent exhaustion doctrine.

Quanta Brief Hockett

2011-05-05T19:10:42Z

Shockett: Created page with "'''Brief of the Licensing Executives Society (U.S.A. & Canada), Inc. As Amicus Curiae in Support of Neither Party''' *This case highlights the tension between the doctrine of pa..."

Here in list of arguments in Quanta

2011-05-05T18:54:12Z

Shockett:

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]]

[[Reply Brief of Petitioners (Quanta) - Adam Mahood]]

[[Quanta Brief Summary 901360293]]

[[Quanta Brief Summary 901431048]]

[[Quanta Brief Brobins]]

[[Quanta Brief hwong1]]

[[Quanta Brief: Tennant]]

[[Quanta Brief - Snooki]]

[[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]]

[[Quanta_Brief_Carter]]

[[Quanta Brief - ewolz]]

[[Quanta Brief - Andrew Chipouras]]

[[Quanta Brief - Kristen Kemnetz]]

[[Quanta Brief - Craig Krzyskowski]]

[[CM BriefQuanta| CMadiga1 Brief]]

[[Quanta Brief Hockett]]

Here in list of arguments in Quanta

2011-05-05T18:54:02Z

Shockett:

Doctrine of Equivalents Case List

2011-04-04T14:38:16Z

Shockett:

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

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

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

901431048

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

Brobins

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

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

901444263

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

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

901471466

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

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

901479977

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

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

901338276

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

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

901417119 - Bcastel1

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

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

901330223

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

901316153

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

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

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

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

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

Eric Paul

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

Peter Mitros (901461727)

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

Gillian Allsup

901281608

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

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

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

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

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

Snooki

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

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

901422128

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

901 41 7852

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

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

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

901419437

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

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

Erich Wolz

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

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

Christine Roetzel - 901425022

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

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

901439143

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

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

Julia Potter (jpotter2)

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

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

901437068

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

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

901438174

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

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

cmadiga1

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

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

Andy Stulc

Doctrine of Equivalents Case List

2011-04-04T14:37:15Z

Shockett:

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 (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

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

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

901431048

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

Brobins

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

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

901444263

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

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

901471466

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

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

901479977

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

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

901338276

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

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

901417119 - Bcastel1

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

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

901330223

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

901316153

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

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

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

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

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

Eric Paul

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

Peter Mitros (901461727)

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

Gillian Allsup

901281608

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

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

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

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

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

Snooki

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

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

901422128

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

901 41 7852

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

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

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

901419437

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

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

Erich Wolz

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

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

Christine Roetzel - 901425022

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

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

901439143

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

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

Julia Potter (jpotter2)

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

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

901437068

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

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

901438174

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

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

cmadiga1

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

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

Andy Stulc

Apr. 4: Equivalence Decision SKH

2011-03-30T16:02:22Z

Shockett:

'''Union Paper-Bag Mach. Co. v. Murphy 97 U.S. 120 (1877)'''

Apr. 4: Equivalence Decision SKH

2011-03-30T16:02:12Z

Shockett: Created page with "''Union Paper-Bag Mach. Co. v. Murphy 97 U.S. 120 (1877)''"

''Union Paper-Bag Mach. Co. v. Murphy 97 U.S. 120 (1877)''

User:Shockett

2011-03-30T15:59:41Z

Shockett: /* Homeworks */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

[[Mar. 23: Prior Description in Printed Publication SKH]]

[[Apr. 4: Equivalence Decision SKH]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

[[Egbert v. Lippmann SKH]]

[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. SKH]]

[[D.L. Auld Co. v. Chroma Graphics Corp. SKH]]

[[Elizabeth v. American Nicholson Pavement Company SKH]]

[[Lough v. Brunswick Corp. SKH]]

[[UMC Electronics Co. v. U.S. SKH]]

[[Pfaff vs. Wells Electronics SKH]]

[[Electric Storage Battery Co. v. Shimadzu SKH]]

[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. SKH]]

[[W.L. Gore & Associates, Inc. v. Garlock, Inc. SKH]]

Mar. 23: Prior Description in Printed Publication SKH

2011-03-22T22:18:55Z

Shockett:

'''Mickowski v. Visi-Trak Corporation'''

36 F.Supp.2d 171 (1999)

*"A prior art reference may serve as an anticipation of the patented invention even where the reference is silent about a particular characteristic of the invention, if extrinsic evidence establishes that the characteristic is inherent in the reference; however, the extrinsic evidence must clearly establish that the missing characteristic is necessarily present in the reference and that a person of ordinary skill in the art would recognize the characteristic as inherent in the reference."

Mickowski alleges that defendants infringed upon claim 1 of US Patent 4,504,920 relating to the technology for monitoring die casting or injection molding processes in which machine operators depend upon data from equipment sensors to alert them to product defects and to ensure uniformity. Visi-Trak manufactures a computer monitoring and analysis system for the die casting industry. The sales literature and software manual demonstrate how the system may be used to practice the monitoring methods taught by Mickowski's patent claims, in addition to others.

Visi-Trak claimed the patent as invalid because of an earlier similar system developed by Hewlett Packard. HP kept a lab notebook and a record of what was attempted and what was ultimately developed. No one at HP attempted to plot pressure as a function of position and pressure as a function of time for the same shot of a die casting machine, nor is there any evidence that anyone at HP attempted to perform a substantially simultaneous display of these plots and no one recognized the value of doing so. The defendants argue that the manual for this HP product shows all of the elements of the claim, but the court finds that the manual does not in any way suggest which parameters should be monitored or how to monitor them.

Thus, the subject matter of the claims was not known in the prior art and the HP systems was insufficient to place the subject matter in the possession of one of ordinary skill in the art.

Mar. 23: Prior Description in Printed Publication SKH

2011-03-22T21:28:28Z

Shockett:

'''Mickowski v. Visi-Track Corporation'''

36 F.Supp.2d 171 (1999)

Mar. 23: Prior Description in Printed Publication SKH

2011-03-22T21:28:17Z

Shockett:

--Mickowski v. Visi-Track Corporation--

36 F.Supp.2d 171 (1999)

Mar. 23: Prior Description in Printed Publication SKH

2011-03-22T21:28:07Z

Shockett: Created page with "---Mickowski v. Visi-Track Corporation--- 36 F.Supp.2d 171 (1999)"

---Mickowski v. Visi-Track Corporation---

36 F.Supp.2d 171 (1999)

User:Shockett

2011-03-22T21:26:59Z

Shockett: /* Homeworks */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

[[Mar. 23: Prior Description in Printed Publication SKH]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

[[Egbert v. Lippmann SKH]]

[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. SKH]]

[[D.L. Auld Co. v. Chroma Graphics Corp. SKH]]

[[Elizabeth v. American Nicholson Pavement Company SKH]]

[[Lough v. Brunswick Corp. SKH]]

[[UMC Electronics Co. v. U.S. SKH]]

[[Pfaff vs. Wells Electronics SKH]]

[[Electric Storage Battery Co. v. Shimadzu SKH]]

[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. SKH]]

[[W.L. Gore & Associates, Inc. v. Garlock, Inc. SKH]]

ESB Briefs

2011-03-10T21:26:26Z

Shockett:

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
#Kurt Riester
#Charles Bernhard
#John Gallagher
* Reply Brief for Petitioner. (Feb. 7, 1939)
#Cmadiga1
#90144463
#901422128
#jpotter2
#ewolz
#E W Hitchler
#Davin Sakamoto
#Kevin Godshall
#901479977
#Kiel Hockett
#Adam Letcher
#Bobby Powers
#Kristen Kemnetz
* Brief for Respondents (Jan. 28, 1939)
#LMiller
#Josh Bradley
#Brobins
#Ebingle
#kyergler
#BCastel1
#Eric Leis
#Eddie Guilbeau
#Andrew McBride
#gallsup
#pfleury
#Dongxiao
* Brief for Petitioner. (Jan. 1939)
#Kschlax
#Andy Stulc
#Mzahm
#Rabot
#Peter Mitros
#Jacob Marmolejo
#Greg Torrisi
#Kevin Dacey
#Fernando Rodriguez
#Anthony Schlehuber
#Craig Krzyskowski
#Ryan Calkin

User:Shockett

2011-03-07T16:26:42Z

Shockett: /* Readings */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

[[Egbert v. Lippmann SKH]]

[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. SKH]]

[[D.L. Auld Co. v. Chroma Graphics Corp. SKH]]

[[Elizabeth v. American Nicholson Pavement Company SKH]]

[[Lough v. Brunswick Corp. SKH]]

[[UMC Electronics Co. v. U.S. SKH]]

[[Pfaff vs. Wells Electronics SKH]]

[[Electric Storage Battery Co. v. Shimadzu SKH]]

[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. SKH]]

[[W.L. Gore & Associates, Inc. v. Garlock, Inc. SKH]]

Abbott Laboratories v. Geneva Pharmaceuticals, Inc. SKH

2011-03-02T05:07:27Z

Shockett: Created page with "*Patentee brought action against proposed competitors that had filed Abbreviated New Drug Applications (ANDAs), alleging infringement of patent covering anhydrous crystalline for..."

*Patentee brought action against proposed competitors that had filed Abbreviated New Drug Applications (ANDAs), alleging infringement of patent covering anhydrous crystalline form of terazosin hydrochloride. The United States District Court for the Northern District of Illinois, Joan B. Gottschall, J., 1998 WL 566884, held one claim of patent invalid under statutory on-sale bar, and patentee appealed. The Court of Appeals, Lourie, Circuit Judge, held that third party's sales of claimed anhydrous crystalline form of terazosin hydrochloride prior to critical date rendered patent invalid under statutory on-sale bar, even if parties to those sales did not know that they were dealing with particular form claimed in patent.
*Affirmed.
*The ultimate determination whether an invention was on sale within the meaning of the statutory on-sale bar is a question of law which Court of Appeals reviews de novo.
*Parties challenging validity of a presumptively valid patent under statutory on-sale bar bore burden of proving existence of on-sale bar by clear and convincing evidence.
*Third party's sales of anhydrous crystalline form of terazosin hydrochloride prior to critical date rendered patent covering particular anhydrous crystalline form of terazosin hydrochloride invalid under statutory on-sale bar, even if parties to those sales did not know that they were dealing with particular form claimed in patent rather than with another anhydrous terazosin hydrochloride crystalline form.
*To be invalid under statutory on-sale bar, the invention must both be the subject of a commercial sale or offer for sale and be ready for patenting before the critical date, and invention may be shown to be ready for patenting, inter alia, by proof of reduction to practice before the critical date.
*Statutory on-sale bar, which may render patent invalid, is not subject to exceptions for sales made by third parties either innocently or fraudulently.
*Fact that material claimed in patent was sold under circumstances in which no question existed that it was useful meant that invention was reduced to practice, for purpose of statutory on-sale bar, and no proof of conception was required.
*There is no requirement that a sales offer specifically identify all the characteristics of an invention offered for sale or that the parties recognize the significance of all of these characteristics at the time of the offer, under statutory on-sale bar; if a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics.
*One of the primary purposes of the statutory on-sale bar is to prohibit the withdrawal of inventions that have been placed into the public domain through commercialization.

User:Shockett

2011-03-02T05:06:03Z

Shockett: /* Readings */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

[[Egbert v. Lippmann SKH]]

[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. SKH]]

[[D.L. Auld Co. v. Chroma Graphics Corp. SKH]]

[[Elizabeth v. American Nicholson Pavement Company SKH]]

[[Lough v. Brunswick Corp. SKH]]

[[UMC Electronics Co. v. U.S. SKH]]

[[Pfaff vs. Wells Electronics SKH]]

[[Electric Storage Battery Co. v. Shimadzu SKH]]

[[Abbott Laboratories v. Geneva Pharmaceuticals, Inc. SKH]]

Electric Storage Battery Co. v. Shimadzu SKH

2011-03-02T05:04:51Z

Shockett: Created page with "*Patent infringement suit by Genzo Shimadzu and another against the Electric Storage Battery Company. To review a decree of the Circuit Court of Appeals, 98 F.2d 831, affirming a..."

*Patent infringement suit by Genzo Shimadzu and another against the Electric Storage Battery Company. To review a decree of the Circuit Court of Appeals, 98 F.2d 831, affirming a decree of the District Court holding valid and infringed certain claims of the patent involved, the defendant brings certiorari.
*Decree of Circuit Court of Appeals reversed and cause remanded with directions.
*On certiorari to review decree of Circuit Court of Appeals affirming decree of District Court holding valid and infringed claims of patents involved in patent infringement suit, petitioner was required to accept concurrent fact findings of Circuit Court of Appeals and District Court.
*On certiorari to review decree of Circuit Court of Appeals affirming decree of District Court holding valid and infringed, claims of patent involved in patent infringement suit, respondents who failed to cross petition could not, in Supreme Court, attack findings that interference relied on by respondent had no bearing on controversy, since such findings involved fact questions.
*Under statute making patentable invention not known or used by others in this country and not patented or described in any printed publication in this or any foreign country before invention or discovery thereof, criterion of novelty is the same whether the invention was conceived abroad or in this country, the test being whether the invention was known or used by others in this country before applicant's invention or discovery thereof.
*The elements which preclude patentability under statute are a patent or a description in a printed publication in this or any foreign country, which antedates the invention or discovery of the applicant.
*To justify the denial of a patent for want of novelty the statute fixes the actual date of the inventive act as the date prior to which the invention must have been known or used.
*The omission from statute which grants right to patent of any limitation as to place of invention or discovery precludes ruling imposing such limitation especially where prior act expressly limited the area of prior knowledge or use to this country.
*The provisions of statute granting right to patent which affects question whether one who has made invention abroad is limited to date of application in this country as date of invention are not modified by provisions of succeeding provision providing for granting of patent on invention previously patented abroad.
*The purpose of the statute providing for granting of patent on invention previously patented abroad is to permit the filing of an application for the same invention in foreign countries and in the United States.
*The section of the statute providing for the granting of patents on inventions previously patented abroad does not preclude proof of facts respecting actual date of invention in foreign country to overcome the prior knowledge or use bar of preceding section which provides for granting of patents generally.
*Under statute providing that, if patentee at time of application believes himself original or first inventor, patent shall not be refused or avoided by reason of invention having been known or used in foreign country before his invention or discovery if it had not been patented or described in a printed publication, in interference between two applicants for United States patent or in an infringement suit where alleged infringer relies on United States patent, the application and patent for domestic invention is entitled to priority despite earlier foreign knowledge and use not evidenced by prior patent or description in printed publication.
*The statute providing that if patentee at time of application believes himself original or first inventor, patent shall not be refused or avoided by reason of invention having been known or used in foreign country before his invention or discovery if it had not been patented or described in printed publication, is without application where litigation is between patentee of foreign invention or his assignee and an alleged infringer who defends only in virtue of prior knowledge or use not covered by patent.
*The Supreme Court cannot rewrite a statute by reading into the law words which are plainly missing in order to redress disadvantage arising because of discrimination resulting from application of statute as written.
*Where statutes providing for granting of patent generally and for invention previously patented abroad had repeatedly been amended and other portions of patent act had been revised and amended from time to time after judicial decisions that section providing for granting of patent generally did not prevent foreign inventor from carrying back his date of invention beyond date of application, without amendment of statute in such respect, court was required to assume that Congress was satisfied with and adopted construction given to statute by the courts.
*In suit for infringement of patent granted citizen and resident of Japan, date of patentee's invention was properly not limited to date of application and patentee was properly allowed to show earlier actual date of invention.
*A patent is not validly issued if the invention is proved to have been abandoned.
*“Abandonment” of an invention may be evidenced by the express and voluntary declaration of the inventor or inferred from negligence or unexplained delay in making application for patent or 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 statute.
*The question whether an invention has been abandoned is one of fact.
*Under statute, abandonment of an invention is an affirmative defense which must be pleaded and proved in patent infringement suit.
*In patent infringement suit, failure to plead defense of abandonment was not excused by showing of belief of defendant when he filed answer, that foreign patent issued to plaintiff covered invention and invalidated patent because application was not made in this country within one year of grant of foreign patent, so that refusal to sustain defense and assignment of date of invention took defendant by surprise and question of concealment of invention up to date of applications in United States did not emerge until decision of District Court was rendered.
*In patent infringement suit alternative and inconsistent defenses may be pleaded.
*In suit for infringement of patents issued on applications presented January 30, 1922, July 14, 1923 and April 27, 1926, finding that plaintiff had confined foreign patent issued May 10, 1922, to single step involving patent in suit and withheld really essential step of invention for later patenting and that plaintiff's inventions were conceived and reduced to practice in August, 1919, did not constitute findings that plaintiff with intent concealed his invention and delayed making application for purpose of unduly extending life of patent, where defense was not pleaded so as to afford plaintiff opportunity to meet it by proof.
*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 day of filing of application.
*In patent infringement suit, public use for more than two years prior to filing of application is an affirmative defense to be pleaded and proved.
*In patent infringement suit, allegation of answer that claims of patent were invalid because subject matter was, prior to alleged invention by plaintiff and for more than two years prior to his application, made known to and used by the defendant was sufficient as pleading that invention had been in public use in this country for more than two years prior to filing of application.
*In suit for infringement of patent issued on application filed January 30, 1922, July 14, 1923, and April 27, 1926, wherein defendant pleaded “public use” in this country for more than two years prior to filing of application, finding that “commercial production” in this country involved use of patent and that June, 1921, should be fixed as date when that began was sufficient finding of prior “public use” as against contention that finding of “commercial production” was not equivalent of finding of “public use”.
*The provision of statute that no patent shall be held to be invalid except on proof of prior use for more than two years prior to application renders prior public use a bar whether the use was with or without the consent of the patentee.
*A mere experimental use is not the “public use” defined by statute providing that no patent shall be held to be invalid except on proof of prior use for more than two years prior to application for patent, but a single use for profit not purposely hidden is such.
*The ordinary use of a machine or the practice of a process in a factory in the usual course of producing articles for commercial purposes is a “public use” within statute providing that no patent shall be held to be invalid except on proof of prior use for more than two years prior to application.
*Shimadzu patent No. 1,584,150, claims 1-4, 6, 8-13, for process for production of lead oxide powder used in manufacture of plates for storage battery and product of process, were invalid where alleged infringing machine and process had been used for more than two years before application for patent in manufacture of plates for storage batteries which had been sold in quantity, in absence of finding that machine, process and products were not well known to employees in plant in which they were used or that efforts were made to conceal them from any one who had legitimate interest in understanding them.
*Shimadzu patent No. 1,896,020 for an apparatus for continuous production of lead oxide in form of dry fine powder useful in manufacture of plates for storage batteries held invalid as respects claims in suit where apparatus had been used for production of lead oxide powder in manufacture of plates for storage batteries sold in quantity for more than two years in this country before application for patent, in absence of finding that process was not well known to employees in plant in this country in which it was used or that efforts were made to conceal it from any one who had legitimate interest in understanding it.
*On certiorari to review decree of Circuit Court of Appeals holding valid and infringed certain claims of three related patents, where Supreme Court determined that two patents, as respects claims in suit, were invalid for prior use, defendant was entitled to re-examination, in District Court, of questions of validity and infringement of third patent, in view of District Court's holding that validity of third patent was not affected by question whether it was for same process as one of patents the claims of which in suit were held invalid by the Supreme Court.

User:Shockett

2011-03-02T04:58:55Z

Shockett: /* Readings */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

[[Egbert v. Lippmann SKH]]

[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. SKH]]

[[D.L. Auld Co. v. Chroma Graphics Corp. SKH]]

[[Elizabeth v. American Nicholson Pavement Company SKH]]

[[Lough v. Brunswick Corp. SKH]]

[[UMC Electronics Co. v. U.S. SKH]]

[[Pfaff vs. Wells Electronics SKH]]

[[Electric Storage Battery Co. v. Shimadzu SKH]]

Feb. 9: Non-obviousness SKH

2011-02-25T08:07:53Z

Shockett: /* Hotchkiss v. Greenwood (1850) */

==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 be 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.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===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==

==Nonobviousness==

Nonobviousness is judged not from the perspective of a random individual, but from the perspective of one having ordinary skill in the art in question. This hypothetical person of ordinary skill is the basic measure to judge the degree of innovation present in an invention or process. For an invention or process to receive patent protection, it must display a nonobvious advance over this base skill. This standard, however, remains open to interpretation. Those making the judgment are not skilled in the necessary art, but instead are (hopefully) skilled in patent law. Thus, there is a problem with asking ordinary people to judge the advance from the point of view of another ordinarily skilled in the art. These judgments are skewed by hindsight and by the very fact that people are required to make a judgment from the point of view of a more highly skilled and educated person of ordinary skill.

The major requirement for obtaining patent protection for an invention is that the invention was not obvious at the time it was created. An inventor does not and cannot receive a patent for something that is merely new and useful, but only for something that is a significant advancement over existing technology or prior art. The nonobviousness standard protects society against the unwanted costs of denying a deserving patent and of granting an undeserving monopoly. The court declared in [http://controls.ame.nd.edu/mediawiki/index.php/Bonito_Boats_v._Thunder_Craft,_489_U.S._141_%281989%29 ''Bonito Boats v. Thunder Craft''] that the standard provides "a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy."

Section 103 of the Patent Act establishes the nonobviousness requirement and states that patent protection may not be given to an invention:
<blockquote>if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.</blockquote>
Thus, several parameters need to be considered when judging whether a new invention warrants patent protections. One must first determine what a person of ordinary skill in the art would know. This then present a mark against which nonobviousness is measured. An idea of how much achievement beyond this base knowledge represent a nonobvious invention is also required. Finally, the advance of the invention seeking patent protection must be compared to the aforementioned achievement necessary beyond the baseline to determine whether or not the new invention satisfies the standard in §103.

===Nonobviousness Standard===
[http://controls.ame.nd.edu/mediawiki/index.php/Graham_v._John_Deere,_383_U.S._1_%281966%29 ''Graham v. John Deere''] (and ''Calmar v. Cook Chemical'' and ''Colgate-Palmolive v. Cook Chemical'' argued alongside it) represents the Supreme Courts first interpretation of the nonobviousness requirement since Congress enacted the 1952 Patent Act. The issue in these cases was to determine the amount of inventiveness or creativity needed to satisfy §103's nonobviousness requirement. The Court determined that the case was "what effect the 1952 Act had upon traditional statutory and judicial tests of patentability and what definitive tests are now required." The Court ruled that the §103 standard "was intended to codify judicial precedents embracing the principle long ago announced by this Court in [http://controls.ame.nd.edu/mediawiki/index.php/Hotchkiss_v._Greenwood,_52_U.S._11_%281850%29 ''Hotchkiss v. Greenwood''], and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Yet Congress enacted the 1952 Patent Act in order to strengthen the level of innovation necessary to receive patent protection. The definition of "invention" had been so vague and nebulous up to this point that Congress sought a way of actively specifying what could henceforth be determined an "invention." The Court made note in [http://controls.ame.nd.edu/mediawiki/index.php/A._%26_P._Tea_Co._v._Supermarket_Corp.,_340_U.S._147_%281950%29 ''A.&P. Tea v. Supermarket Corp.''], and quoted again in ''Graham,'' that
<blockquote>[t]he truth is the word [`invention'] cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not.</blockquote>

Congress expressly enacted §103 in order to "have a stabilizing effect and minimize great departures which have appeared in some cases" in the definition of what is an invention and what is worthy of a monopoly. The ''Graham'' Court identifies the method for determining this nonobvious:
<blockquote>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.</blockquote>
The scope and content of the prior art, differences between the prior art and the invention, and the level of ordinary skill in the art are all questions that must be answered when determining obviousness.

The Court does not attempt to explain how to evaluate the ultimate question of obviousness other than to say it depends on the factors listed above. There is no actual method of determining how much inventiveness is needed to determine the nonobviousness threshold. The Court admits as much, saying, "This is not to say, however, that there will not be difficulties in applying the nonobviousness test. What is obvious is not a question upon which there is likely to be uniformity of thought in every given factual context."

''KSR''
''Blackrock''

===Level of Ordinary Skill in the Art===
In ''Graham'', the Court entertained a lengthy analysis of the relevant prior art in plow shanks and the differences between the prior art and the claims in the Graham patent. But the Court did not explain how to go about determining what the baseline "ordinary skill in the art" would be. The Court seems to have merely concluded that it was obvious to have changed the plow hinge and came to the conclusion that "Certainly a person having ordinary skill in the prior art, given the fact that the flex in the shank could be utilized more effectively if allowed to run the entire length of the shank, would immediately see that the thing to do was what Graham did." The Court substituted its own judgment for that of a person of ordinary skill and, as a result, has muddied the waters in determining nonobviousness.

The level of ordinary skill in the art is the baseline against which the nonobviousness of a particular advance must be measured. Patent law presumes that the person of ordinary skill in the art knows everything that exists in the prior art, but it does not identify what level of skill exists. Knowledge of information is '''very''' different than skill, and without a skill baseline it is next to impossible to measure the level of innovation an invention presents and thus impossible to know whether it is nonobvious. In ''Graham'', the Court does not tell us if the person of ordinary skill is a farmer using the plow shank, or if that person is an engineer working for Graham or John Deere and actively developing new plows and shanks, or if the person is some sort of average of the two.

The definition has also changed following [http://controls.ame.nd.edu/mediawiki/index.php/KSR_International_Co._v._Teleflex,_Inc.,_550_U.S._398_%282007%29 ''KSR v. Teleflex'']. The Court in this case has determined "a person of ordinary skill is also a person of ordinary creativity, not an automaton." But this new definition does not tell us if the person of ordinary skill is a lab researcher or an avid user of the product. The creativity of one is likely to be higher than the other.

I feel that only in [http://controls.ame.nd.edu/mediawiki/index.php/US_v._Adams,_383_U.S._39_%281966%29 ''US v. Adams''] can it be proven that the invention was nonobvious to someone with "ordinary skill in the art" because it can be proven that others were actively trying to find a solution to the problem at hand and the innovative solution used previously failures and dead ends to create a unique solution. The ''Adams'' Court concluded:
<blockquote>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.</blockquote>
If it is not possible to prove that others had failed where the inventor succeeded, then the Court must make a judgment call about the level of skill necessary for the invention as compared to the level of 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]]

Pfaff vs. Wells Electronics SKH

2011-02-24T20:55:48Z

Shockett:

*Patentee brought action against competitor, alleging infringement of patent for computer chip socket. The United States District Court for the Northern District of Texas, Barefoot Sanders, Chief Judge, entered summary judgment of noninfringement, and patentee appealed. The United States Court of Appeals for the Federal Circuit, 5 F.3d 514, reversed and remanded for trial. On remand, the District Court, Sanders, Senior District Judge, held that two claims of patent were invalid but other claims were infringed, and appeal was taken. After reinstating appeal, the Court of Appeals, 124 F.3d 1429, reversed, finding all claims at issue invalid. Patentee's petition for certiorari was granted. The Supreme Court, Justice Stevens, held that commercial marketing of invention triggered on-sale period even though invention was not yet reduced to practice, so patent was invalid under statutory on-sale bar.
*Affirmed.

*Process is reduced to practice, for patent purposes, when it is successfully performed.
*Machine is reduced to practice, for patent purposes, when it is assembled, adjusted, and used.
*Manufacture is reduced to practice, for patent purposes, when it is completely manufactured.
*Composition of matter is reduced to practice, for patent purposes, when it is completely composed.
*Primary meaning of the word “invention” in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea.
*Assuming diligence on the part of the patent applicant, it is normally the first inventor to conceive, rather than the first to reduce to practice, who establishes the right to the patent.
*Invention may be patented before it is reduced to practice.
*Inventor's acceptance of purchase order for inventor's computer chip socket established that socket was on sale at that time, which was more than one year before inventor filed patent application for socket, and patent was thus invalid under statutory on-sale bar, even though invention was not reduced to practice until after critical date; sale was commercial, not experimental in nature, and invention was ready for patenting since drawings which inventor sent to purchaser before critical date fully disclosed invention.
*Patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time.
*Section of Patent Act listing conditions for patentability serves as a limiting provision, both excluding ideas that are in the public domain from patent protection and confining the duration of the monopoly to the statutory term.
*Inventor who seeks to perfect his discovery may conduct extensive testing without losing his right to obtain a patent for his invention, even if such testing occurs in the public eye.
*Word “invention,” in patent context, must refer to a concept that is complete, rather than merely one that is substantially complete.
*'''Reduction to practice ordinarily provides the best evidence that an invention is complete, but just because reduction to practice is sufficient evidence of completion, it does not follow that proof of reduction to practice is necessary in every case; rather, one can prove that an invention is complete and ready for patenting before it has actually been reduced to practice.'''
*Statutory on-sale bar applies when two conditions are satisfied before the critical date: first, the product must be the subject of a commercial offer for sale, and, second, the invention must be ready for patenting.
*Requirement of statutory on-sale bar that invention was ready for patenting at time of alleged event triggering on-sale bar may be satisfied in at least two ways: by proof of reduction to practice before the critical date, or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.
*Invalid.

Pfaff vs. Wells Electronics SKH

2011-02-24T20:54:38Z

Shockett:

*Patentee brought action against competitor, alleging infringement of patent for computer chip socket. The United States District Court for the Northern District of Texas, Barefoot Sanders, Chief Judge, entered summary judgment of noninfringement, and patentee appealed. The United States Court of Appeals for the Federal Circuit, 5 F.3d 514, reversed and remanded for trial. On remand, the District Court, Sanders, Senior District Judge, held that two claims of patent were invalid but other claims were infringed, and appeal was taken. After reinstating appeal, the Court of Appeals, 124 F.3d 1429, reversed, finding all claims at issue invalid. Patentee's petition for certiorari was granted. The Supreme Court, Justice Stevens, held that commercial marketing of invention triggered on-sale period even though invention was not yet reduced to practice, so patent was invalid under statutory on-sale bar.
*Affirmed.

*Process is reduced to practice, for patent purposes, when it is successfully performed.
*Machine is reduced to practice, for patent purposes, when it is assembled, adjusted, and used.
*Manufacture is reduced to practice, for patent purposes, when it is completely manufactured.
*Composition of matter is reduced to practice, for patent purposes, when it is completely composed.
*Primary meaning of the word “invention” in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea.
*Assuming diligence on the part of the patent applicant, it is normally the first inventor to conceive, rather than the first to reduce to practice, who establishes the right to the patent.
*Invention may be patented before it is reduced to practice.
*Inventor's acceptance of purchase order for inventor's computer chip socket established that socket was on sale at that time, which was more than one year before inventor filed patent application for socket, and patent was thus invalid under statutory on-sale bar, even though invention was not reduced to practice until after critical date; sale was commercial, not experimental in nature, and invention was ready for patenting since drawings which inventor sent to purchaser before critical date fully disclosed invention.
*Patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time.
*Section of Patent Act listing conditions for patentability serves as a limiting provision, both excluding ideas that are in the public domain from patent protection and confining the duration of the monopoly to the statutory term.
*Inventor who seeks to perfect his discovery may conduct extensive testing without losing his right to obtain a patent for his invention, even if such testing occurs in the public eye.
*Word “invention,” in patent context, must refer to a concept that is complete, rather than merely one that is substantially complete.
*[b]Reduction to practice ordinarily provides the best evidence that an invention is complete, but just because reduction to practice is sufficient evidence of completion, it does not follow that proof of reduction to practice is necessary in every case; rather, one can prove that an invention is complete and ready for patenting before it has actually been reduced to practice.[/b]
*Statutory on-sale bar applies when two conditions are satisfied before the critical date: first, the product must be the subject of a commercial offer for sale, and, second, the invention must be ready for patenting.
*Requirement of statutory on-sale bar that invention was ready for patenting at time of alleged event triggering on-sale bar may be satisfied in at least two ways: by proof of reduction to practice before the critical date, or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.
*Invalid.

UMC Electronics Co. v. U.S. SKH

2011-02-22T20:57:03Z

Shockett: Created page with "*Assignee of patent brought infringement action against United States. The Claims Court, Margolis, 8 Cl.Ct. 604, held that patent was valid and not infringed. The assignee appeal..."

*Assignee of patent brought infringement action against United States. The Claims Court, Margolis, 8 Cl.Ct. 604, held that patent was valid and not infringed. The assignee appealed. The Court of Appeals, Nies, Circuit Judge, held that patent was invalid as having been on sale more than one year prior to date of application for patent.
*Affirmed on different grounds and vacated in part.
*Edward S. Smith, Circuit Judge, filed a dissenting opinion.

*There cannot be reduction to practice of an invention, for purposes of on-sale bar to patentability, without physical embodiment which includes all limitations of claim.
*Claims Court erred in holding that there had been reduction to practice of invention, for purposes of on-sale bar to patentability, where both court found and parties did not dispute that there was no physical embodiment containing all limitations of claimed invention before the critical date.
*An offer to sell later-claimed invention may be sufficient to invoke on-sale bar to patentability whether offer is accepted or rejected.
*Reduction to practice of claimed invention is not an absolute requirement of on-sale bar to patentability.
*On-sale bar to patentability does not necessarily turn on whether there was or was not a reduction to practice of claimed invention; rather, all of circumstances surrounding sale or offer to sell, including state of development of invention and nature of invention, must be considered and weighed against policies underlying on-sale bar.
*Challenger of patent on basis of on-sale bar has burden of proving that there was a definite sale or offer to sell more than one year before application for patent, and that subject matter of sale or offer to sell fully anticipated claimed invention or would have rendered claimed invention obvious by its addition to the prior art, and if those facts are established, patent owner is called upon to come forward with explanation of circumstances surrounding what would otherwise appear to be commercialization outside grace period.
*A sale of claimed invention made because purchaser was participating in experimental testing creates no on-sale bar to patentability.
*Issue of whether invention is on sale, for purposes of on-sale bar to patentability, is a question of law.
*Patent for aviation counting accelerometer, devised for sensing and recording number of times aircraft has been subjected to predetermined levels of acceleration, was invalid as having been on sale more than one year prior to date of application for patent whereas owner made definite offer to sell later patented invention to United States more than one year prior to date of patent application, offer was made for profit, not to conduct experiments, and there was substantial embodiment of invention and testing which was sufficient to satisfy inventor that later claimed invention would work.
*Invalid.

Pfaff vs. Wells Electronics SKH

2011-02-22T20:55:01Z

Shockett: Created page with "*Patentee brought action against competitor, alleging infringement of patent for computer chip socket. The United States District Court for the Northern District of Texas, Barefo..."

*Patentee brought action against competitor, alleging infringement of patent for computer chip socket. The United States District Court for the Northern District of Texas, Barefoot Sanders, Chief Judge, entered summary judgment of noninfringement, and patentee appealed. The United States Court of Appeals for the Federal Circuit, 5 F.3d 514, reversed and remanded for trial. On remand, the District Court, Sanders, Senior District Judge, held that two claims of patent were invalid but other claims were infringed, and appeal was taken. After reinstating appeal, the Court of Appeals, 124 F.3d 1429, reversed, finding all claims at issue invalid. Patentee's petition for certiorari was granted. The Supreme Court, Justice Stevens, held that commercial marketing of invention triggered on-sale period even though invention was not yet reduced to practice, so patent was invalid under statutory on-sale bar.
*Affirmed.

*Process is reduced to practice, for patent purposes, when it is successfully performed.
*Machine is reduced to practice, for patent purposes, when it is assembled, adjusted, and used.
*Manufacture is reduced to practice, for patent purposes, when it is completely manufactured.
*Composition of matter is reduced to practice, for patent purposes, when it is completely composed.
*Primary meaning of the word “invention” in the Patent Act unquestionably refers to the inventor's conception rather than to a physical embodiment of that idea.
*Assuming diligence on the part of the patent applicant, it is normally the first inventor to conceive, rather than the first to reduce to practice, who establishes the right to the patent.
*Invention may be patented before it is reduced to practice.
*Inventor's acceptance of purchase order for inventor's computer chip socket established that socket was on sale at that time, which was more than one year before inventor filed patent application for socket, and patent was thus invalid under statutory on-sale bar, even though invention was not reduced to practice until after critical date; sale was commercial, not experimental in nature, and invention was ready for patenting since drawings which inventor sent to purchaser before critical date fully disclosed invention.
*Patent system represents a carefully crafted bargain that encourages both the creation and the public disclosure of new and useful advances in technology, in return for an exclusive monopoly for a limited period of time.
*Section of Patent Act listing conditions for patentability serves as a limiting provision, both excluding ideas that are in the public domain from patent protection and confining the duration of the monopoly to the statutory term.
*Inventor who seeks to perfect his discovery may conduct extensive testing without losing his right to obtain a patent for his invention, even if such testing occurs in the public eye.
*Word “invention,” in patent context, must refer to a concept that is complete, rather than merely one that is substantially complete.
*Reduction to practice ordinarily provides the best evidence that an invention is complete, but just because reduction to practice is sufficient evidence of completion, it does not follow that proof of reduction to practice is necessary in every case; rather, one can prove that an invention is complete and ready for patenting before it has actually been reduced to practice.
*Statutory on-sale bar applies when two conditions are satisfied before the critical date: first, the product must be the subject of a commercial offer for sale, and, second, the invention must be ready for patenting.
*Requirement of statutory on-sale bar that invention was ready for patenting at time of alleged event triggering on-sale bar may be satisfied in at least two ways: by proof of reduction to practice before the critical date, or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.
*Invalid.

User:Shockett

2011-02-22T20:32:54Z

Shockett: /* Readings */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

[[Egbert v. Lippmann SKH]]

[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. SKH]]

[[D.L. Auld Co. v. Chroma Graphics Corp. SKH]]

[[Elizabeth v. American Nicholson Pavement Company SKH]]

[[Lough v. Brunswick Corp. SKH]]

[[UMC Electronics Co. v. U.S. SKH]]

[[Pfaff vs. Wells Electronics SKH]]

Lough v. Brunswick Corp. SKH

2011-02-19T19:17:46Z

Shockett: Created page with "*Holder of patent for seal assembly in stern drives for boats sued alleged infringer. The United States District Court for the Middle District of Florida, Ralph W. Nimmons, Jr., ..."

*Holder of patent for seal assembly in stern drives for boats sued alleged infringer. The United States District Court for the Middle District of Florida, Ralph W. Nimmons, Jr., J., entered judgment on jury verdict in favor of holder, and alleged infringer appealed. The Court of Appeals, Lourie, Circuit Judge, held that patent was invalid under public use bar.
*Reversed in part, vacated in part.
*When a party moves for judgment as a matter of law (JMOL) in a case tried to a jury, Court of Appeals reviews de novo the district court's decision by reapplying the standard governing judgment as a matter of law.
*When a party moves for judgment as a matter of law (JMOL) in a case tried to a jury, Court of Appeals reviews legal standards that jury applied in reaching its verdict to determine whether they were correct as a matter of law.
*On review of a motion for judgment as a matter of law (JMOL), when a legal issue is submitted to jury without objection, Court of Appeals treats jury's verdict on the legal issue as a resolution of all genuinely disputed underlying factual issues in favor of verdict winner.
*When a party moves for judgment as a matter of law (JMOL), Court of Appeals reviews jury's resolution of all factual disputes for substantial evidence.
*An evaluation of a question of public use of an invention depends on how totality of circumstances of case comports with policies underlying public use bar; those policies include discouraging removal from public domain of inventions that public reasonably has come to believe are freely available, favoring prompt and widespread disclosure of inventions, allowing inventor a reasonable amount of time following sales activity to determine potential economic value of a patent, and prohibiting inventor from commercially exploiting invention for a period greater than statutorily prescribed time.
*A patentee may negate a showing of public use by coming forward with evidence that its use of invention was experimental.
*Whether an invention was in public use prior to the critical date for purposes of public use bar is a question of law.
*To determine whether a use of an invention is experimental for purposes of public use bar, totality of circumstances must be considered, including various objective indicia of experimentation surrounding use, such as number of prototypes and duration of testing, whether records or progress reports were made concerning testing, existence of a secrecy agreement between patentee and party performing testing, whether patentee received compensation for use of invention, and extent of control inventor maintained over testing.
*Inventor's alleged experiments with regard to seal assembly for stern drives in boats were not experimental for purposes of public use bar, and thus patent for assembly was invalid; inventor installed first prototype in his own boat two years before applying for patent, inventor then provided other prototypes to friends and acquaintances, inventor neither asked for nor received any comments concerning operability of prototypes, inventor maintained no supervision or control over prototypes during alleged testing, and inventor kept no records during alleged testing.
*For purposes of public use bar, expression by an inventor of his subjective intent to experiment, particularly after institution of litigation, is generally of minimal value.
*Each claim of patent must be considered individually when evaluating a public use bar.
*Statutory provision pertaining to public use bar may create a bar to patentability either alone, if device used in public is an anticipation of later claimed invention or, in conjunction with provision pertaining to obviousness, if differences between claimed invention and device used would have been obvious to one skilled in the art.
*4,848,775. Invalid.

User:Shockett

2011-02-19T19:15:02Z

Shockett: /* Readings */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

[[Egbert v. Lippmann SKH]]

[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. SKH]]

[[D.L. Auld Co. v. Chroma Graphics Corp. SKH]]

[[Elizabeth v. American Nicholson Pavement Company SKH]]

[[Lough v. Brunswick Corp. SKH]]

Elizabeth v. American Nicholson Pavement Company SKH

2011-02-19T19:14:32Z

Shockett: Created page with "*In 1847 the inventor of a new and useful improvement in wooden pavements filed in the patent office a caveat of his invention, and in 1848 put down at his own expense, by way of..."

*In 1847 the inventor of a new and useful improvement in wooden pavements filed in the patent office a caveat of his invention, and in 1848 put down at his own expense, by way of experiment, pavement on a thoroughfare leading out of Boston, and used as a public road, but owned by a corporation of which he was a stockholder and treasurer, where it was exposed to public view and traveled over for several years; it proving successful, he obtained letters patent therefor, August 7, 1854. Held, that they were not avoided by English letters patent for the same invention, enrolled in 1850.
*A foreign patent or other foreign publication describing an invention is no defense to a suit upon a patent of the United States, unless published anterior to the making of the invention secured by the latter; and it is not enough that the foreign patent was issued or enrolled prior to the issue of the patent by the United States.
*In 1847 the inventor of a new and useful improvement in wooden pavements filed in the patent office a caveat of his invention, and in 1848 put down at his own expense, by way of experiment, pavement on a thoroughfare leading out of Boston and used as a public road, but owned by a corporation of which he was a stockholder and treasurer, where it was exposed to public view and traveled over for several years, and, it proving successful, he, August 7, 1854, obtained letters patent therefor. Held that, there having been no public use or sale of the invention, he was entitled to such letters patent.
*The use of an invention by the inventor himself or of any other person under his direction by way of experiment and in order to bring the invention to perfection does not constitute a “public use.”
*Any attempt of an inventor to use invention for profit and not by way of experiment for a longer period than two years before the application deprives the inventor of his right to a patent.
*If the public use of an invention is experimental, to ascertain the utility, value, or success of the thing invented by practice, it will not be fatal to the patent.
*Permitting machine to be used by other persons generally either with or without compensation or placing machine on sale for such use with inventor's consent will constitute “public use” and “public sale,” as respects determination of whether invention has been abandoned.
*Abandonment of an invention to the public does not necessarily follow from invention being in use or on sale with inventor's consent and allowance at any time within two years before the application, but 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.
*An abandonment of an invention to the public may be evinced by the conduct of the inventor at any time even within two years before the application.
*The presumption, arising from the oath of the applicant, required by law, that he believes himself to be the first inventor or discoverer of the thing for which he seeks letters patent, remains until the contrary is proved.
*A device is none the less an infringement because it contains an improvement upon the patented invention.
*Contractors laid a pavement for a city which infringed the patent of one A., and the city paid them as much therefor as it would have had to pay A. had he done the work; thus realizing no profits from the infringement. Held that, in a suit in equity to recover profits against the city and the contractors, notwithstanding they answered jointly, the latter alone were responsible, although the former might have been enjoined before the completion of the work, and would undoubtedly have been liable in an action for damages.
*Where a contract was made in the name of an agent in behalf and for the benefit of a corporation, the fulfillment of which involved the infringement of a patent belonging to a third person, held, that the corporation alone was liable in a suit in equity to recover profits resulting from the infringement.
*The burden is on an infringer to show that a portion of his profits is due to the use of something other than the patented article.
*No stipulation between a patentee and his assignee as to royalty to be charged can prevent the latter from recovering from an infringer, in a suit in equity, the whole profits realized by reason of the infringement, though it might have some bearing on the measure of damages in an action at law.
*Before Act July 8, 1870, 16 Stat. 198, 35 U.S.C.A. §§ 1, 3, courts of equity could not allow damages in addition to profits.
*When the entire profit of a business or undertaking results from the use of an invention, the patentee will be entitled to recover the entire profit, if he elects that remedy.
*When profits are made by an infringer by the use of an article patented as an entirety or product, he is responsible to the patentee for them, unless he can show that a portion of them is the result of some other thing used by him.
*When the entire profit of a business or undertaking results from the use of an invention, the patentee will be entitled to recover the entire profit, if he elects that remedy; and in such case the defendant will not be allowed to diminish the show of profits by putting in unconscionable claims for personal services or other inequitable deductions.

User:Shockett

2011-02-19T19:10:50Z

Shockett: /* Readings */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

[[Egbert v. Lippmann SKH]]

[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. SKH]]

[[D.L. Auld Co. v. Chroma Graphics Corp. SKH]]

[[Elizabeth v. American Nicholson Pavement Company SKH]]

D.L. Auld Co. v. Chroma Graphics Corp. SKH

2011-02-19T19:06:23Z

Shockett: Created page with "*Summary judgment may not issue when material issues of fact requiring trial to resolve are present. *On motion for summary judgment, evidence and inferences must be viewed and d..."

*Summary judgment may not issue when material issues of fact requiring trial to resolve are present.
*On motion for summary judgment, evidence and inferences must be viewed and drawn in a light most favorable to nonmoving party.
*Party moving for summary judgment bears burden of showing the absence of material fact issue and doubt will be resolved against that party.
*Summary judgment is an important means of conserving judicial and other resources, but it must be carefully employed in appropriate cases, for an improvident grant may deny a party a chance to prove a worthy case and improvident denial may force upon a party and the court an unnecessary trial.
*Presumption of patent validity is a procedural device, not a substantive rule, and submission of evidence by a patent challenger may raise a need for a patentee to go forward with countering evidence, but the burden-assigning effect of the presumption is never lost.
*Once evidence is presented that an invention was on sale or that the product of a method invention was on sale more than a year before party's application filing date, countervailing evidence establishing an experimental purpose must necessarily come from the patentee to avoid the forfeiture of a right to the grant of a valid patent; to defeat a motion for summary judgment, patentee need not prove an experimental purpose, but must submit facts indicating an ability to come forward with evidence that such proof is possible.
*Where claimed method of forming foil-backed inserts in the form of cast decorative emblems was employed in preparing a number of sample emblems and assignee of patent attempted to profit from the use of that method by offering some of those samples for sale more than one year before assignee's application filing date, and there was no possibility that performance by hand of the method in producing some of the samples was itself in any manner experimental, patent No. 4,100,010 relating to the method of forming foil-backed inserts in the form of cast decorative emblems was void.
*Failure of magistrate to follow local rule providing for oral hearing on request on motions determinative of the case on the merits did not require reversal of summary judgment entered against assignee of patent, because assignee had already obtained a hearing, albeit in connection with its motion to vacate, and there was no way that a remand could provide the hearing before judgment on the motion for summary judgment as envisaged by the letter of the local rule.
*Where noncompliance with local procedural rule which provided for oral hearing on request on motions determinative of the case on the merits was inadvertent and all steps open to the decision maker in rectification had been taken, there being no denial of a constitutional right to due process, it did not serve the ends of justice to assign controlling weight to the grant of a hearing after, rather than before, initial judgment.

User:Shockett

2011-02-19T19:04:19Z

Shockett: /* Readings */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

[[Egbert v. Lippmann SKH]]

[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. SKH]]

[[D.L. Auld Co. v. Chroma Graphics Corp. SKH]]

Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. SKH

2011-02-17T03:20:41Z

Shockett: Created page with "*Reissue Patent No. 22,397, on process of conditioning a metal surface for bonding thereto applied spray metal, is invalid for too long competitive exploitation before applicatio..."

*Reissue Patent No. 22,397, on process of conditioning a metal surface for bonding thereto applied spray metal, is invalid for too long competitive exploitation before application for patent.
*Inventor's competitive exploitation of his machine or process for more than one year prior to application for patent operates as a forfeiture of right to patent regardless of how little public may have learned about the invention.
*Forfeiture of inventor's right to patent invention because of competitive exploitation prior to application is not the equivalent of an “abandonment” which presupposes a deliberate, though not necessarily an express, surrender of any right to a patent.
*Under the patent law, it is a part of the consideration for a patent that the public shall, as soon as possible, begin to enjoy the disclosure.
*The rule that an inventor may not competitively exploit his machine or process for more than a year before applying for a patent thereon does not apply to an inventor who continues for more than a year to practice his invention for his private purposes or his own enjoyment and who does not thereby extend the period of his commercial monopoly, although such an inventor, by too long a concealment, will also lose right to a patent.

User:Shockett

2011-02-17T03:18:25Z

Shockett: /* Readings */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

[[Egbert v. Lippmann SKH]]

[[Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. SKH]]

Egbert v. Lippmann SKH

2011-02-17T03:08:39Z

Shockett: Created page with "*Where an 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. *To constitute “public..."

*Where an 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.
*To constitute “public use” of an invention, it is unnecessary 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 on the number of persons to whom its use is known.
*A use necessarily open to public view, if made in good faith solely to test the qualities of an invention, and for the purpose of experiment, is not a public use within Act July 4, 1836, c. 357, 5 Stat. 117, rendering letters-patent invalid if invention was in public use with consent and allowance of inventor for more than two years prior to his application.
*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” notwithstanding the use and knowledge of the use may be confined to one person.
*An abandonment of an invention to public does not necessarily follow from invention being in public use or on sale, with inventor's consent and allowance, at any time within two years before application, but if invention is in public use or on sale prior to that time it will be conclusive evidence of abandonment, and patent will be void.
*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 prior to application.
*Re-issue patent No. 5216 for improvement in corset-springs held invalid on ground of public use of invention for two years by consent and allowance of inventor before application for patent.

User:Shockett

2011-02-17T03:05:51Z

Shockett: /* Readings */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

[[Egbert v. Lippmann SKH]]

Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH

2011-02-14T13:18:27Z

Shockett: Created page with "*A “process” under § 101 of the Patent Act has historically been limited to technological processes *Congress did not intend for all processes to be patentable under § 101 ..."

*A “process” under § 101 of the Patent Act has historically been limited to technological processes
*Congress did not intend for all processes to be patentable under § 101 - only those that advance technological progress
*A technological process advances the development, understanding, or application of a machine, manufacture, or composition of matter
*By their nature, non-technological business and service innovators do not need patent incentives because they have less intensive R&D costs than technological innovators
*Non-technological innovations in business and service disciplines are often more diffuse and collaborative and thus fall outside of the classic patent “reward” paradigm
*Extending patent protection to non-technological methods in business and services would disrupt settled expectations and impose substantial additional costs on innovators and investors
*Small businesses, individual entrepreneurs, and start-up companies would face new and potentially insurmountable barriers to entry if non-technological methods were patentable
*Follow-on innovators would likely have to divert current R&D funding into defensive patenting
*Reinforcing the long-standing technological limit on § 101 processes would improve judicial and administrative efficiency
*Strong § 101 limitations allow the PTO to efficiently reject non-technological patent applications
*Meaningful § 101 limitations allow courts to efficiently dismiss non-technological patent litigation

User:Shockett

2011-02-14T13:15:38Z

Shockett: /* Homeworks */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

[[Feb. 14: Brief of Entrepreneurial and Consumer Advocates Amici Curiae in Support of Respondent SKH]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

Bilski v. Kappos SKH

2011-02-14T13:15:21Z

Shockett: Created page with "*The Patent Act specifies four independent categories of inventions or discoveries that are eligible for protection: processes, machines, manufactures, and compositions of matter..."

*The Patent Act specifies four independent categories of inventions or discoveries that are eligible for protection: processes, machines, manufactures, and compositions of matter.
*In choosing the Patent Act's expansive terms for specifying the four independent categories of inventions or discoveries that are eligible for protection, namely processes, machines, manufactures, and compositions of matter, modified by the comprehensive “any,” Congress plainly contemplated that the patent laws would be given wide scope.
*Congress took a permissive approach to patent eligibility to ensure that ingenuity should receive a liberal encouragement.
*There are three specific exceptions to the Patent Act's broad patent-eligibility principles, namely laws of nature, physical phenomena, and abstract ideas; while these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be new and useful, and the concepts covered by these exceptions are part of the storehouse of knowledge of all men, free to all men, and reserved exclusively to none.
*The patent-eligibility inquiry into whether a claimed invention is a process, machine, manufacture, or composition of matter is only a threshold test for patent protection.
*Even if an invention qualifies as a process, machine, manufacture, or composition of matter, in order to receive the Patent Act's protection the claimed invention must also be novel, nonobvious, and fully and particularly described.
*In patent law, as in all statutory construction, unless otherwise defined, words will be interpreted as taking their ordinary, contemporary, common meaning.
*The “machine-or-transformation test,” which provides a claimed invention is not patentable if it is not tied to a machine and does not transform an article, is not the sole test for determining the patent eligibility of a process; the test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are patent-eligible processes.
*Under the doctrine of “noscitur a sociis,” an ambiguous term may be given more precise content by the neighboring words with which it is associated.
*Patent Act provision defining the subject matter that may be patented is dynamic and designed to encompass new and unforeseen inventions.
*A categorical rule denying patent protection for inventions in areas not contemplated by Congress would frustrate the purposes of the Patent Act.
*A patent-eligible “process” may include at least some methods of doing business.
*The canon against interpreting any statutory provision in a manner that would render another provision superfluous applies to interpreting any two provisions in the United States Code, even when Congress enacted the provisions at different times; the canon cannot be overcome by judicial speculation as to the subjective intent of various legislators in enacting the subsequent provision.
*The requirements for receiving patent protection, that any claimed invention must be novel, nonobvious, and fully and particularly described, serve a critical role in adjusting the tension, ever present in patent law, between stimulating innovation by protecting inventors and impeding progress by granting patents when not justified by the statutory design.
*Claimed invention that explained how buyers and sellers of commodities in the energy market could protect, or hedge, against the risk of price changes and that reduced this concept of hedging to a mathematical formula was an “abstract idea,” and thus was not a patentable “process.”
*Limiting an abstract idea to one field of use or adding token postsolution components do not make the concept patentable.

Bilski brief list

2011-02-14T13:09:40Z

Shockett:

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
#Amicus Curiae Brief in Support of the Respondent, Submitted on Behalf of Adamas Pharmaceuticals, Inc. and Tethys Bioscience, Inc. (Oct. 2, 2009)
#KyleR
#Andy Stulc
#Brief for Amicus Curiae Mark Landesmann in Support of Affirmance (Oct. 2, 2009)
#Amicus Curiae Brief of Center for Advanced Study and Research in Intellectual Property (CASRIP) of the University of Washington School of Law, and of CASRIP Research Affiliate Scholars, in Support of Affirmance of the Judgment in Favor of Respondent (Oct. 1, 2009)
#Kevin Godshall
#Amici Curiae Brief of Internet Retailers in Support of Respondent (Oct. 1, 2009)
#Brief for the Respondent (Sep. 25, 2009)
#Kriester
#Brobins
#Josh Bradley
#Brief of Amici Curiae Entrepreneurial Software Companies in Support of Petitioner (Aug. 6, 2009)
#E W Hitchler
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Amici Curiae Biotechnology Industry Organization, Advanced Medical Technology Association, Wisconsin Alumni Research Foundation & The Regents of the University of California in Support of Neither Party (Aug. 6, 2009)
#Mzahm
#Brief of Pharmaceutical Research and Manufacturers of America as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Hamburgler
#Brief of F%21ed%21eration Internationale Des Conseils En Propri%21et%21e Industrielle as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Law Professor Kevin Emerson Collins in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae Legal OnRamp in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae John Sutton in Support of Petitioners (Aug. 6, 2009)
#Brief of Amicus Curiae Novartis Corporation Supporting Petitioners (Aug. 6, 2009)
#Brief Amicus Curiae of The Federal Circuit Bar Association in Support of Neither Party (Aug. 6, 2009)
#Brief of Regulatory Datacorp, Inc, American Express Company, Palm Inc., Rockwell Automation, Inc., and SAP America, Inc. as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Double Rock Corporation, Island Intellectual Property LLC, LIDs Capital LLC, Intrasweep LLC, Access Control Advantage, Inc., Ecomp Consultants, Pipeline Trading Systems LLC, Rearden Capital Corporation, Craig Mowry and PCT Capital LLC as Ami ci Curiae in Support of Petitioners (Aug. 6, 2009)
#901422128
#Brief of Amicus Curiae The Houston Intellectual Property Law Association in Support of Petitioners (Aug. 6, 2009)
#Brief of Franklin Pierce Law Center as Amicus Curiae in Support of Petitioners (Aug. 6, 2009)
#LMiller
#Brief of TELES AG as Amicus Curiae in Support of Neither Party (Aug. 6, 2009)
#Brief of Amicus Curiae San Diego Intellectual Property Law Association in Support of Neither Party on the Merits (Aug. 6, 2009)
#Brief of Robert R. Sachs and Daniel R. Brownstone as Amici Curiae in Support of Neither Party (Aug. 6, 2009)
#CRoetzel
#Brief of Amicus Curiae AwakenIP, LLC in Support of Petitioners (Aug. 6, 2009)
#Pmitros
#pfleury
#901479977
#Brief for Prometheus Laboratories Inc. as Amicus Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Intellectual Property Owners Association in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Aug. 5, 2009)
#Brief for the Business Software Alliance as Amicus Curiae in Support of Affirmance (Aug. 5, 2009)
#Brief of Amicus Curiae Washington State Patent Law Association in Support of Petitioner (Aug. 5, 2009)
#Bobby Powers
#Brief of Amici Curiae Association Internationale Pour la Protection de la Propriete Intellectuelle and International Association For The Protection Of Intellectual Property (U.S.) in Support of Reversal (Aug. 5, 2009)
#Brief of Amicus Curiae Caris Diagnostics, Inc. in Support of Petitioners (Aug. 5, 2009)
#Brief of the Intellectual Property Law Association of Chicago as Amicus Curiae Supporting Neither Party (Aug. 5, 2009)
#Brief of Monogram Biosciences, Inc. and Genomic Health, Inc. as Amici Curiae in Support of Neither Party (Aug. 5, 2009)
#Brief of Amicus Curiae Raymond C. Meiers in Support of Neither Party (Aug. 5, 2009)
#Xiao Dong
#Brief of Amicus Curiae Conejo Valley Bar Association in Support of Neither Party (Aug. 3, 2009)
#Brief For Petitioners (Jul. 30, 2009)
#Brief of Amicus Curiae Telecommunication Systems, Inc. in Support of Neither Party and for Purely Prospective Application of Any Adoption of the New Legal Test Applied Below (Jul. 24, 2009)
#Brief for the State of Oregon as Amicus Curiae in Support of Neither Party (Jul. 24, 2009)
#ewolz
#kristen kemnetz
#Brief for the Respondent in Opposition (May 1, 2009)
#Brief of Koninklijke Philips Electronics N.V. as Amicus Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae Boston Patent Law Association in Support of Petitioners (Mar. 2, 2009)
#Brief of Accenture and Pitney Bowes Inc. as Amici Curiae in Support of Petitioners (Mar. 2, 2009)
#Brief Amicus Curiae of Franklin Pierce Law Center in Support of Certiorari (Mar. 2, 2009)
#Brief of Amica Curiae Anne E. Barschall, Pro Se in Support of Petitioners (Mar. 2, 2009)
#Brief of Amicus Curiae American Intellectual Property Law Association in Support of the Petition for a Writ of Certiorari (Mar. 2, 2009)
#Jmarmole
#Gtorrisi

User:Shockett

2011-02-14T12:57:55Z

Shockett: /* Readings */

== Homeworks ==

[[ Jan. 24: Patent SKH ]]

[[ Jan. 28: Patent Patentability SKH ]]

[[ Feb. 4: Corporate Council SKH ]]

[[ Feb. 9: Non-obviousness SKH ]]

== Readings ==

[[ Hotchkiss v. Greenwood SKH ]]

[[ A. & P. Tea Co. v. Supermarket Corp. SKH ]]

[[ Lyon v. Bausch & Lomb SKH ]]

[[ Graham v. John Deere SKH ]]

[[US v. Adams SKH]]

[[Anderson's Black Rock, Inc. v. Pavement Co. SKH]]

[[KSR International Co. v. Teleflex, Inc. SKH]]

[[Gottschalk v. Benson SKH ]]

[[Diamond v. Diehr SKH]]

[[Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH]]

[[State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH]]

[[Bilski v. Kappos SKH]]

State Street Bank & Trust Co. v. Signature Financial Group, Inc. SKH

2011-02-11T16:49:33Z

Shockett: Created page with "*On appeal, Court of Appeals is not bound to give deference to the district court's grant of summary judgment, but must make an independent determination that the standards for s..."

*On appeal, Court of Appeals is not bound to give deference to the district court's grant of summary judgment, but must make an independent determination that the standards for summary judgment have been met.
*Court of Appeals reviews patent claim construction de novo including any allegedly fact-based questions relating to claim construction.
*Court of Appeals reviews statutory construction de novo.
*“Machine” claims having means-plus-function clauses may only be reasonably viewed as process claims if there is no supporting structure in the written description that corresponds to the claimed “means” elements.
*Patent claiming data processing system for managing a financial services configuration of a portfolio established as a partnership, which machine was made up of, at the very least, specific structures disclosed in written description and corresponding to means-plus-function elements recited in claim, was directed to machine, not process.
*It is improper to read limitations into statute generally setting forth patentable subject matter where the legislative history indicates that Congress clearly did not intend such limitations.
*Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not “useful”; to be patentable an algorithm must be applied in a “useful” way.
*Transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, for purpose of managing mutual fund investment structure, was practical application of a mathematical algorithm, formula, or calculation, because it produced useful, concrete and tangible result, and claimed machine thus was not unpatentable under mathematical algorithm exception to patentability.
*Dispositive inquiry in determining patentability of invention notwithstanding its inclusion of mathematical algorithm is whether the claim as a whole is directed to statutory subject matter; it is irrelevant that a claim may contain, as part of the whole, subject matter which would not be patentable by itself, and claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program or digital computer.
*The question of whether a patent claim encompasses statutory subject matter should not focus on which of the four categories of subject matter a claim is directed to, namely, process, machine, manufacture, or composition of matter, but rather on the essential characteristics of the subject matter, in particular, its practical utility.
*Business methods are subject to same legal requirements for patentability as applied to any other process or method, and thus there is no “business method” exception to patentability.

*The appealed decision is reversed and the case is remanded to the district court for further proceedings consistent with this opinion.

User:Shockett

2011-02-11T16:46:17Z

Shockett: /* Readings */

Arrhythmia Research Technology, Inc. v. Corazonix Corp. SKH

2011-02-11T16:45:48Z

Shockett: Created page with "*Laws of nature, physical phenomena, and abstract ideas are not patentable. *Claims directed solely to an abstract mathematical formula or equation, including the mathematical ex..."

*Laws of nature, physical phenomena, and abstract ideas are not patentable.
*Claims directed solely to an abstract mathematical formula or equation, including the mathematical expression of scientific truth or law of nature, whether directly or indirectly stated, are nonstatutory; whereas claims to a specific process or apparatus that is implemented in accordance with a mathematical algorithm will generally satisfy patent statute.
*Under test for statutory subject matter when invention is described in terms of mathematical procedures, it is first determined whether mathematical algorithm is recited directly or indirectly in the claim; if so, it is next determined whether claimed invention as a whole is no more than the algorithm itself; this is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps; such claims are nonstatutory; however, when mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, requirements of patent statute are met.
*Use of mathematical formulae or relationships to describe electronic structure and operation of an apparatus does not make it nonstatutory; when mathematical formulae are the standard way of expressing certain functions or apparatus, it is appropriate that mathematical terms be used.
*Process and apparatus claims for invention directed to analysis of electrocardiographic signals in order to determine certain characteristics of heart function satisfied criteria for statutory subject matter.

*We conclude that the claimed subject matter is statutory in terms of section 101. The judgment of invalidity on this ground is reversed.

User:Shockett

2011-02-11T16:44:39Z

Shockett: /* Readings */

Feb. 9: Non-obviousness SKH

2011-02-09T05:59:44Z

Shockett: /* Nonobviousness */

==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.

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

While it pre-dates the language of section 103, [[A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)]] discussed some of the more difficult issues related to the level of invention.
*First the "level of invention" was partly evidenced by "long felt but unsatisfied need" which is a standard used today for nonobviousness.
*Second, it expressed a bias toward patent protection at the frontier of science or engineering, but not for more mundane things like plows, etc.
*Third, it dealt with the issue of the fact that any invention is basically a combination of old elements.

===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==

==Nonobviousness==

Nonobviousness is judged not from the perspective of a random individual, but from the perspective of one having ordinary skill in the art in question. This hypothetical person of ordinary skill is the basic measure to judge the degree of innovation present in an invention or process. For an invention or process to receive patent protection, it must display a nonobvious advance over this base skill. This standard, however, remains open to interpretation. Those making the judgment are not skilled in the necessary art, but instead are (hopefully) skilled in patent law. Thus, there is a problem with asking ordinary people to judge the advance from the point of view of another ordinarily skilled in the art. These judgments are skewed by hindsight and by the very fact that people are required to make a judgment from the point of view of a more highly skilled and educated person of ordinary skill.

The major requirement for obtaining patent protection for an invention is that the invention was not obvious at the time it was created. An inventor does not and cannot receive a patent for something that is merely new and useful, but only for something that is a significant advancement over existing technology or prior art. The nonobviousness standard protects society against the unwanted costs of denying a deserving patent and of granting an undeserving monopoly. The court declared in [http://controls.ame.nd.edu/mediawiki/index.php/Bonito_Boats_v._Thunder_Craft,_489_U.S._141_%281989%29 ''Bonito Boats v. Thunder Craft''] that the standard provides "a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy."

Section 103 of the Patent Act establishes the nonobviousness requirement and states that patent protection may not be given to an invention:
<blockquote>if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.</blockquote>
Thus, several parameters need to be considered when judging whether a new invention warrants patent protections. One must first determine what a person of ordinary skill in the art would know. This then present a mark against which nonobviousness is measured. An idea of how much achievement beyond this base knowledge represent a nonobvious invention is also required. Finally, the advance of the invention seeking patent protection must be compared to the aforementioned achievement necessary beyond the baseline to determine whether or not the new invention satisfies the standard in §103.

===Nonobviousness Standard===
[http://controls.ame.nd.edu/mediawiki/index.php/Graham_v._John_Deere,_383_U.S._1_%281966%29 ''Graham v. John Deere''] (and ''Calmar v. Cook Chemical'' and ''Colgate-Palmolive v. Cook Chemical'' argued alongside it) represents the Supreme Courts first interpretation of the nonobviousness requirement since Congress enacted the 1952 Patent Act. The issue in these cases was to determine the amount of inventiveness or creativity needed to satisfy §103's nonobviousness requirement. The Court determined that the case was "what effect the 1952 Act had upon traditional statutory and judicial tests of patentability and what definitive tests are now required." The Court ruled that the §103 standard "was intended to codify judicial precedents embracing the principle long ago announced by this Court in [http://controls.ame.nd.edu/mediawiki/index.php/Hotchkiss_v._Greenwood,_52_U.S._11_%281850%29 ''Hotchkiss v. Greenwood''], and that, while the clear language of 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

Yet Congress enacted the 1952 Patent Act in order to strengthen the level of innovation necessary to receive patent protection. The definition of "invention" had been so vague and nebulous up to this point that Congress sought a way of actively specifying what could henceforth be determined an "invention." The Court made note in [http://controls.ame.nd.edu/mediawiki/index.php/A._%26_P._Tea_Co._v._Supermarket_Corp.,_340_U.S._147_%281950%29 ''A.&P. Tea v. Supermarket Corp.''], and quoted again in ''Graham,'' that
<blockquote>[t]he truth is the word [`invention'] cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not.</blockquote>

Congress expressly enacted §103 in order to "have a stabilizing effect and minimize great departures which have appeared in some cases" in the definition of what is an invention and what is worthy of a monopoly. The ''Graham'' Court identifies the method for determining this nonobvious:
<blockquote>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.</blockquote>
The scope and content of the prior art, differences between the prior art and the invention, and the level of ordinary skill in the art are all questions that must be answered when determining obviousness.

The Court does not attempt to explain how to evaluate the ultimate question of obviousness other than to say it depends on the factors listed above. There is no actual method of determining how much inventiveness is needed to determine the nonobviousness threshold. The Court admits as much, saying, "This is not to say, however, that there will not be difficulties in applying the nonobviousness test. What is obvious is not a question upon which there is likely to be uniformity of thought in every given factual context."

''KSR''
''Blackrock''

===Level of Ordinary Skill in the Art===
In ''Graham'', the Court entertained a lengthy analysis of the relevant prior art in plow shanks and the differences between the prior art and the claims in the Graham patent. But the Court did not explain how to go about determining what the baseline "ordinary skill in the art" would be. The Court seems to have merely concluded that it was obvious to have changed the plow hinge and came to the conclusion that "Certainly a person having ordinary skill in the prior art, given the fact that the flex in the shank could be utilized more effectively if allowed to run the entire length of the shank, would immediately see that the thing to do was what Graham did." The Court substituted its own judgment for that of a person of ordinary skill and, as a result, has muddied the waters in determining nonobviousness.

The level of ordinary skill in the art is the baseline against which the nonobviousness of a particular advance must be measured. Patent law presumes that the person of ordinary skill in the art knows everything that exists in the prior art, but it does not identify what level of skill exists. Knowledge of information is '''very''' different than skill, and without a skill baseline it is next to impossible to measure the level of innovation an invention presents and thus impossible to know whether it is nonobvious. In ''Graham'', the Court does not tell us if the person of ordinary skill is a farmer using the plow shank, or if that person is an engineer working for Graham or John Deere and actively developing new plows and shanks, or if the person is some sort of average of the two.

The definition has also changed following [http://controls.ame.nd.edu/mediawiki/index.php/KSR_International_Co._v._Teleflex,_Inc.,_550_U.S._398_%282007%29 ''KSR v. Teleflex'']. The Court in this case has determined "a person of ordinary skill is also a person of ordinary creativity, not an automaton." But this new definition does not tell us if the person of ordinary skill is a lab researcher or an avid user of the product. The creativity of one is likely to be higher than the other.

I feel that only in [http://controls.ame.nd.edu/mediawiki/index.php/US_v._Adams,_383_U.S._39_%281966%29 ''US v. Adams''] can it be proven that the invention was nonobvious to someone with "ordinary skill in the art" because it can be proven that others were actively trying to find a solution to the problem at hand and the innovative solution used previously failures and dead ends to create a unique solution. The ''Adams'' Court concluded:
<blockquote>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.</blockquote>
If it is not possible to prove that others had failed where the inventor succeeded, then the Court must make a judgment call about the level of skill necessary for the invention as compared to the level of ordinary skill in the art.

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

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

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

[[South Corp. v. US]]