Patent Law

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Patent Law
I. Some Basics   A. The inventors bargain
with society     B. Subject matterwhat kinds
of stuff can be patented? C. Note that the
line is between discovery invention
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PatentsPrior Art

II. Prior art? To understand what prior art
is, keep in mind that the different types of
prior art consist of different kinds of
evidence that . . . (a) .... (b) . or (c)
..
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PatentsPrior Art

• III. Types of prior art
• A. A prior patent anywhere in the world that
  reveals all the functional elements of this
  invention
• B. A prior printed publication anywhere in
  the world that reveals all the functional
  elements of this invention
• C. Evidence that an invention with the same
  functional elements was put into public
  (nonconfidential) use within the U.S.
• D. Evidence that an invention with the same
  functional elements was placed on-sale within the
  U.S. (either an actual sale, a contract of sale,
  or an offer to sell).

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PatentsPrior Art
IV. WHO brought the prior art into existence,
WHEN (that is, prior to some critical date)?
A. By someone else before the time of
invention (novelty) 1. OK, what does
invention really mean? B. By either
someone else OR this inventor more than one year
before application filing date C. The
patent statute doesnt say so, but when the prior
art is brought into existence by someone else,
this inventors application filing date can
actually be the critical date.
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PatentsNoveltyPrior Public Use
V. The Requirement of Novelty (no identical
invention revealed in a single piece of prior
art) A. ExampleOil exploration in East
Texas
Teplitz (Gulf) 1935
1939
Other oil exploration companies
Rosaire (1936)
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PatentsNoveltyPrior Public Use
B. Novelty, ExampleSmarts v. Avesta
Salesman from Cisco
Morgan Stanley-IT
Smarts
Avesta
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PatentsFiling Too Late After Public Use
Experimental Use Exception

VI. Inventor filing his patent application too
late after public use (plus experimental use
exception). A. Lough v. Brunswick, p. 223 1.
Another case involving a public use, but this
time it was a public use by the inventor
himself.   2. What did he do that
amounted to a public use? When was his FIRST
public use?
Friends,etc
Lough
Brunswick
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PatentsLough case, cont.
3. What is the Experimental Use Exception and
what effect does it have? 4. Does
experimentation, testing, etc. always raise an
issue about the experimental use exception? 5.
Why was Lough not able to prove the Experimental
Use Exception?     6. If this had been
legitimate experimentation, for HOW LONG would it
have postponed the start of the one-year
clock? 7. One other thing At some point
after Loughs invention was installed in someone
elses boat, the boat was SOLD. What IF all of
the 5 people to whom it had been given had signed
confidentiality agreements?
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PatentsA Printed Publication as Prior Art

• (Like other types of prior artby someone else
  before this invention or by either this inventor
  or someone else lt 1 yr. bef. invention.)
• VII. In re Hall, US Ct. of App., Fed. Cir., 1983
• On Feb. 28, 1979, Hall filed for a patent on a
  new chemical composition he had invented. The
  PTO discovered that a Ph.D. student at Freiburg
  University in Germany, Daniel Foldi, had invented
  the same new chemical compound in his research,
  had completed his dissertation, submitted to his
  the Chemistry faculty at Freiburg for approval,
  and received approval, and that his dissertation
  had been sent to the university library and
  catalogued sometime in late 1977 or early 1978
  (possibly lt 1 yr. before Hall filed his patent
  app. in the U.S.) The PTO exchanged several
  items of correspondence with Dr. Will, head of
  the dissertations collection at Freiburgs
  library. Dr. Will did not, of course, remember
  the exact date that this particular dissertation
  was shelved catalogued, but was able to state
  when the chemistry faculty approved the Foldi
  dissertation, and that it was sent through
  regular procedures to the library. From this,
  Dr. Will was able to state that the dissertation
  should have been shelved, catalogued, and
  accessible by early Dec. 1977.
• Was this a printed publication that would prevent
  Hall from getting a patent, or that could be used
  to invalidate his patent if it were issued?

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PatentsPutting the Invention On SaleA Type of
Prior Art

• VIII. Pfaff v. Wells Electronics, U.S. Sup. Ct.,
  1999
• Apr. 8, 1981Apr. 19, 1981---July 1981---Apr. 19,
  1982
• In early 1981, Tex. Instruments (TI) asked Wayne
  Pfaff, and independent inventor, if he could
  design a new carrier for a semiconductor chip.
  Apparently, TI had done business with him before
  because they seemed to put a lot of trust in his
  ability. They both agreed that, if Pfaff
  produced a description drawings of a carrier
  that TI was satisfied with, TI would buy 30,100
  of the carriers from Pfaff for over 90,000.
  Pfaff did so, TI was satisfied, and TI sent Pfaff
  a purchase order that Pfaff received on 4-8-81.
  (This was obviously more that just a purchase
  order.) They agreed that Pfaff would have a 3rd
  party manufacturer them and deliver them to TI,
  which happened in July 1981. Pfaff filed a
  patent application on the carrier on 4-19-82.
  Later, Pfaff sued Wells for infringement, Wells
  argued that Pfaff had put his invention on sale
  more than 1 yr. before he filed, and that his
  patent was thus invalid.
• Conclusion rationale? The key here is when was
  there an invention?

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PatentsThe Requirement of Nonobviousness

• IX. The Requirement of Nonobviousness
• A. Novelty means different, nonobviousness
  means different enough
• B. The question arises when there is no
  single piece of prior art that reveals all of the
  functional elements of the invention in question,
  but one or more pieces combined reveal all or
  most of the functional elements of this
  invention. The prior art must be in the same or
  a closely related field.
• C. The test for determining
  nonobviousnesshypothetical OSPITA at time of
  invention.

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PatentsNonobviousness

• D. Panduit v. Dennison Mfg. Co., U.S. Ct. of
  App., Fed. Cir., 1987
• After about 9 yrs. several million on
  research, Jack Caveny, found of Panduit,
  developed a new cable tie. The problem
  w/previous ones was that, in order for it to be
  difficult to disengage, it had to be very
  difficult to insert in the first place. Cavenys
  new tie combined 3 functional ideas to achieve a
  cable tie with a very low ratio between insertion
  disengagement force (1160). His tie was a
  one-piece molded tie that combined the idea of
  multiple teeth, with a 90 degree angle ledge
  between each tooth, and a flexible hinge. The
  invention looked very simple after the fact.
• Dennison, a competitor, had also spent quite a
  few yrs. and several million trying to solve
  the same problem, but had been unsuccessful. The
  company dropped its research effort and copied
  Panduits cable tie. Panduit sued for patent
  infringement. The district court found that
  Panduits invention was merely an obvious advance
  over the prior cumulative art.

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PatentsNonobviousness-Panduit Case, cont.

• The Fed. Cir. App. Ct. reversed. What the Fed.
  Cir. found wrong with the district ct.s
  decision
• 1. How the court compared the prior art with
  Cavenys cable tie
• 2. Burden of proof
• 3. Hindsight
• 4. Unanticipated result
• 5. Pulling general engineering principles and
  common experience from thin air
• 6. Secondary considerationsevidence from
  marketplace

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PatentsNonobviousness, cont.

• X. Lockwood v. American Airlines, U.S. Ct. of
  App., Fed. Cir., 1999
• Lockwood had several patents on customer-operated
  terminals that allowed customers to see
  audio-visual presentations of various goods and
  services and travel sites. The customer could
  also make reservations and order goods
  services. The only thing invention was
  softwarethe code that executed algorithms to
  perform all of these functions. Lockwood sued
  American Airlines, claiming that AAs SaberVision
  computerized reservation system infringed on 3 of
  Lockwoods patentsthe so-called 115, 355, and
  359 patents (last 3 digits of a 7-digit patent
  number).
• The court concluded that AAs current system did
  not infringe on these 3 patents because the AA
  SabreVision system did not have the
  customer-operated or audio-visual functions that
  Lockwoods patented inventions had.
• The court then concluded that the latter 2 of
  Lockwoods patents (355 359) were invalid
  because they were obvious in light of 2 pieces
  of prior art that the court combined
• 1.
• 2.
• Why did the court combine these two pieces of
  prior art, when the court held in the Panduit
  case that the multiple pieces of prior art should
  not have been combined for this purpose?

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PatentsIf time permits, how to prove infringement

• Patent owner sues for infringement for one or
  more claims in her patent. The invention is
  described with linguistic precision in a claim.
• Court compares the defendants product, process,
  technique, composition of matter, etc. with the
  invention in a claim plaintiffs patent, on an
  element-by-element basis.
• Each functional element in a claim in plaintiffs
  patent must be found in the defendants product,
  process, etc. Each element must be either
  identical or very, very similar each element
  must perform substantially the same function in
  substantially the same way to achieve
  substantially the same result as the
  corresponding functional element in a claim in
  plaintiffs patent.
• Prevents others from getting away with
  infringement by making insignificant changes in
  one or more elements, such as substituting a
  different but identically functional chemical
  element. (One case involved substituting
  magnesium for manganese, or vice-versa, which did
  the same thing in the composition. Another case
  involve substituting one identically functioning
  amino acid for another in a biotechnology
  invention.
• More if theres time.