Patent Law Background; ST: Invention Disclosures Randy Canis CLASS 2 Patent Law Background; Novelty pt. 1; ST: Invention Disclosures

Patent Law Background

Introduction Essence of the Patent System Disclosure of a technological advance in exchange for the right to exclude others from employing it Also: Improve society through technological change

Nature and Function of Patent System Incentive to invest in research to make new inventions. Patent system promotes disclosure of new inventions and thereby enlarges the public storehouse of knowledge. Does the patent system succeed in achieving the aforementioned goals?

Incentive to Invest Pros Cons Too easy to appropriate Problem with free riders No return on research and development Cons Restrict output Monopoly restricts use Distorts economic activity Hinders progress

Incentive to Disclose Pros Cons Absence of protection – inventors would keep invention secret Secrecy prevents public from full benefits Cons Secrecy is not always practical Is the public disclosure enough?

Federal Preemption The displacement of a state law due to the existence of a federal law Why do we care about federal preemption? Patent law is federal law. What if: A state law was enacted prior to the federal law? A state law was enacted after the federal law? The state law governs laws not covered under federal law? State law provides additional rights/benefits beyond federal law? State law restricts benefits/rights granted under federal law?

Novelty pt. 1

A. Introduction to Novelty Under the 1952 Act and the AIA of 2011

102 As of 2013, the U.S. patent system operates under two parallel novelty standards 1952 Act – Novelty defined from the date of invention AIA – Novelty measured as of the date a patent is first filed

1952 Act Breakdown of 102 Statutory Bar – 102(b), (c) and (d) Novelty – 102(a), (e), (g) Derivation – 102(f)

Section §102 §102. Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless-- (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

Section §102 §102. Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless— (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

Section §102 §102. Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless— (c) he has abandoned the invention, or

Section §102 §102. Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless— (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or

Section §102 §102. Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless— (e) The invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effect under this subsection of a national application published under section 122(b) only if the international application designating the United States was published under Article 21(2)(a) of such treaty in the English language; or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a); or

Section §102 §102. Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless— (f) he did not himself invent the subject matter sought to be patented, or

Section §102 §102. Conditions for patentability; novelty and loss of right to patent A person shall be entitled to a patent unless— (g) (1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. …

Breaking Down 35 U.S.C. 102 An inventor must invent something new to become eligible for patent protection. 102 Novelty: time inventor completed invention – (a), (e) & (g) Statutory Bar: time inventor filed the patent application – (b) & (d) “First to Invent” - Only the first to invent can obtain patent protection, not the first to file. [Under ‘52 Act102] Critical date – one year prior to the filing of the patent application Determining the current state of the art at the time of the invention What is a reference? What is “prior art”?

Definitions Reference – qualification of a publication or patent filing as prior art under one of 102 sections Effective date – time when the reference is considered to be prior art

B. Standard for Anticipation

Anticipation An invention must be new at conception by an original inventor to be patentable. An invention is anticipated if someone else has already invented the invention.

Strict Identity “If the claimed invention can be found within the ambit of a single prior art reference, then the invention has been anticipated. References may not be combined during this inquiry, nor may elements that are analogous to the disclosure of a reference be considered.”

In re Robertson Case History BPAI rules that claim 76 is anticipated and obvious in view of 4,895,569 Panel Fed. Cir. of Newman, Friedman, and Rader Reversed Rader filed a concurance

In re Robertson Invention Fastening and disposal system for diapers

In re Robertson Claim 76 [A] mechanical fastening system for forming side closures ... comprising a closure member ... comprising a first mechanical fastening means for forming a closure, said first mechanical fastening means comprising a first fastening element; a landing member ... comprising a second mechanical fastening means for forming a closure with said first mechanical fastening means, said second mechanical fastening means comprising a second fastening element mechanically engageable with said first element; and disposal means for allowing the absorbent article to be secured in a disposal configuration after use, said disposal means comprising a third mechanical fastening means for securing the absorbent article in the disposal configuration, said third mechanical fastening means comprising a third fastening element mechanically engageable with said first fastening element ...

In re Robertson “Anticipation under 35 U.S.C. § 102(e) requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”

In re Robertson Does the Wilson patent include a third fastening means?

In re Robertson “If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is ‘inherent’ in its disclosure. To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.’”

In re Robertson Failure of the Board “The Board made no attempt to show that the fastening mechanisms of Wilson that were used to attach the diaper to the wearer also “necessarily” disclosed the third separate fastening mechanism of claim 76 used to close the diaper for disposal, or that an artisan of ordinary skill would so recognize.”

Accidental and Unknown Anticipations

Accidental Anticipation “No doctrine of the patent law is better established than that a prior patent or other publication to be an anticipation must bear within its four corners adequate directions for the practice of the patent invalidated. If the earlier disclosure offers no more than a starting point for further experiments, if its teaching will sometimes succeed and sometimes fail, if it does not inform the art without more how to practice the new invention, it has not correspondingly enriched the store of common knowledge, and it is not an anticipation… .” In re Seaborg, 328 F.2d 996 (C.C.P.A. 1964)

Continental Can Co. v. Monsanto Co. Issue: When an earlier reference intrinsically, rather than explicitly, discloses a subsequently claimed invention, should it still it be considered prior art? Inherency

Continental Can Co. v. Monsanto Co. Inherency dicta “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. … If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.”

Continental Can Co. v. Monsanto Co. Holding “To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.”

Schering Corp. v. Geneva Pharmaceuticals, Inc. Case History D.C.N.J. Claims 1 and 3 of 4,659,716 are invalid because 4,282,233 inherently anticipates Panel Fed. Cir. of Rader, Plager and Bryson Affirmed

Schering Corp. v. Geneva Pharmaceuticals, Inc. Invention Antihistamines ‘233 prior art patent covers antihistamine loratadine (Claritin) Current patent covers metabolite of loratadine

Schering Corp. v. Geneva Pharmaceuticals, Inc. Background Numerous companies sough to market generic version of loratadine once the ‘233 patent expired ANDA filed seeking regulatory approval from the FDA to market the generic

Schering Corp. v. Geneva Pharmaceuticals, Inc. Claims of ‘716 1. A compound of the formula ##STR17## or a pharmaceutically acceptable salt thereof, wherein X represents Cl or F. 3. A compound having the structural formula ##STR18## or a pharmaceutically acceptable salt thereof.

Schering Corp. v. Geneva Pharmaceuticals, Inc. “A patent is invalid for anticipation if a single prior art reference discloses each and every limitation of the claimed invention. … Moreover, a prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.”

Schering Corp. v. Geneva Pharmaceuticals, Inc. “At the outset, this court rejects the contention that inherent anticipation requires recognition in the prior art. [This court has] held that inherent anticipation does not require that a person of ordinary skill in the art at the time would have recognized the inherent disclosure.”

Schering Corp. v. Geneva Pharmaceuticals, Inc. Accidental Anticipation? “DCL is not formed accidentally or under unusual conditions when loratadine is ingested. The record shows that DCL necessarily and inevitably forms from loratadine under normal conditions. DCL is a necessary consequence of administering loratadine to patients. The record also shows that DCL provides a useful result, because it serves as an active non-drowsy antihistamine. In sum, this court's precedent does not require a skilled artisan to recognize the inherent characteristic in the prior art that anticipates the claimed invention.”

Schering Corp. v. Geneva Pharmaceuticals, Inc. Typical inherency cases “In this court's prior inherency cases, a single prior art reference generally contained an incomplete description of the anticipatory subject matter, i.e., a partial description missing certain aspects. Inherency supplied the missing aspect of the description. Upon proof that the missing description is inherent in the prior art, that single prior art reference placed the claimed subject matter in the public domain.”

Schering Corp. v. Geneva Pharmaceuticals, Inc. Should the court find anticipation when the entire structure of the claimed subject matter is inherent in the prior art? “This court has recognized that a person may infringe a claim to a metabolite if the person ingests a compound that metabolizes to form the metabolite.”

Schering Corp. v. Geneva Pharmaceuticals, Inc. “[A]nticipation requires only an enabling disclosure.” “A reference may enable one of skill in the art to make and use a compound even if the author or inventor did not actually make or reduce to practice that subject matter.”

Schering Corp. v. Geneva Pharmaceuticals, Inc. According to the court, how should the invention be claimed?

Anti-Backsliding Principle “Parties cannot obtain patent rights encompassing practices that already exist in the public domain (or that would enter the public domain prior to the expiration of the patent at issue).”

Inherency Recognition Must a person of ordinary skill in the art recognize that the missing element is inherently there?

The “Enablement Standard” for Anticipation

Reference Must be Enabling “Patented inventions cannot be superseded [i.e., anticipated] … unless the description and drawings [of the reference] contain and exhibit a substantial representation of the patented improvement in such full, clear and exact terms as to enable any person skilled in the art or science to which it appertains to make, construct and practice the invention to the same practical extent as they would be enabled to do if the information was derived from a prior patent. Mere vague and general representations will not support such a defense.”

Titanium Metals Corp. of America v. Banner “Congress has not seen fit to permit the patenting of an old alloy, known to others through a printed publication, by one who has discovered its corrosion resistance or other useful properties, or has found out to what extent one can modify the composition of the alloy without losing such properties.”

Noninforming Products “[W]here the anticipatory reference is a product actually in public use, some case law suggests that no enablement standard applies: The product constitutes prior art even if the knowledge needed to produce the product is not publicly available. The issue generally arises in cases of so-called “noninforming” products — products or systems that are publicly available but that do not inform the public (i.e., do not reveal information) about how the product was created or how it works.”

New Use for an Old Product A new use of an old product is not patentable, but the new use may be patentable as a process

Location of the Disclosure Does the single reference just have to include the disclosure somewhere in the reference, or does it need to be disclosed in a particular way?

Arranged in the Claim “[T]he prior art reference in order to anticipate under 35 U.S.C. § 102 must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed.Cir.1983).

Four Corners “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net Moneyin, Inc. v. Verisign, Inc., Fed. Cir. 2008

C. References Under Section 102(a)

102(a) under the AIA 102(a): Novelty [1] No patent if, before date of invention, the invention was [A] known or [B] used [C] by others [D] in this country or [2] if, before date of invention, the invention was [A] patented or [B] described in a printed publication [C] anywhere

“Known … by others”

National Tractor Pullers Ass’n v. Watkins Case History N.D.IL

National Tractor Pullers Ass’n v. Watkins Invention Tractor pulling sleds

National Tractor Pullers Ass’n v. Watkins Background NTPA brought a declaratory action of invalidity and nonfringement

National Tractor Pullers Ass’n v. Watkins Claim 1. A device for indicating the relative pulling force exerted by a power source comprising a sled adapted to be connected to and moved by said power source, and a weight transfer apparatus having a front portion supported by said sled and a rear portion supported by means which allow relatively friction free movement of said apparatus, a relatively movable mass, and means to move said mass in the direction of said front portion a distance proportional to the distance through which the device is pulled, whereby the distance through which the device has been moved provides an indication of the relative force exerted by said power source.

National Tractor Pullers Ass’n v. Watkins “In order to qualify as prior art under 35 U.S.C. § 102, the art must be art which was known before the invention by the patentee. Prior knowledge as set forth in 35 U.S.C. § 102(a) must be prior public knowledge, that is knowledge which is reasonably accessible to the public.”

National Tractor Pullers Ass’n v. Watkins “The knowledge required by § 102(a) involves some type of public disclosure and is not satisfied by knowledge of a single person, or a few persons working together.”

Corroboration Rule “Because uncorroborated oral testimony, particularly that of interested persons recalling long-past events, does not, of itself, provide clear and convincing evidence required to invalidate a patent on this ground, the judgment is reversed.” Woodland Trust v. Flowertree Nursery, Inc., 143 U.S. 275 (1891)

“Used by others”

Public Use “Public use is use by the inventor, or by a person who is not under any limitation, restriction, or obligation of secrecy to the inventor.” Patents and the Federal Circuit, 7th Edition

LEVI STRAUSS & CO. v GOLDEN TRADE “[S]ec 102(a) . . .only requires that the prior invention be ‘known or used.’ [T]he challenger must show public knowledge or use, where the ‘public’ means those skilled in the art. This does not require actual knowledge or use, just that the prior invention was publicly accessible. . . .” Is a modern summary of this principle.

The AIA and Changes to the Categories of Prior Art Types of references that qualify Geographic limitations New and general (possible limiting?) category

Printed Publications

Knowledge of Publications “… [A patent reference] on display for public view in remote cities in a far-away land may create a burden of discovery for one without the time, desire, or resources to journey there in person or by agent to observe that which is registered and protected under [foreign] law. Such a burden, however is by law imposed upon the hypothetical person of ordinary skill in the art who is charged with knowledge of all the contents of the relevant prior art.” Does actual knowledge matter?

In re Hall “[P]ublic accessibility” has been called the touchstone in determining whether a reference constitutes a “printed publication” bar under 35 U.S.C. §102(b) … The proponent of the publication bar must show that prior to the critical date the reference was sufficiently accessible … so that such a one by examining the reference could make the claimed invention without further research or experimentation.”

Printed Publications What qualifies as a printed publication on the Internet?

Voter Verified v. Premier Election Solutions Case History D.C. for M.D. of Florida Claims 1-93 not infringed Claims 49 and 94 invalidated Claims 1-48, 50-84, and 86-92 are not invalid Panel Fed. Cir. of Lourie, Reyna, and Wallach Affirmed

Voter Verified v. Premier Election Solutions Invention “automated systems and methods for voting in an election, featuring a self-verification procedure by which ‘machine and human error may be detected and corrected before the ballot is submitted by the voter for tabulation.’”

Voter Verified v. Premier Election Solutions Claim 49 A method of voting providing for self verification of a ballot comprising the steps of: (a) voting by a voter using a computer voting station programmed to present an election ballot, accept input of votes from the voter according to the election ballot, temporarily store the votes of the voter; (b) printing of the votes of the voter from the votes temporarily stored in the computer for the voting station; (c) comparison by the voter of the printed votes with the votes temporarily stored in the computer for the voting station; (d) decision by the voter as to whether a printed ballot is acceptable or unacceptable; (e) inputting of information as to the acceptability of a printed ballot by the voter; and (f) submission of an acceptable printed ballot for tabulation.

Voter Verified v. Premier Election Solutions Issue – is the Benson article prior art?

Voter Verified v. Premier Election Solutions Voter Verified’s position “[A] web-based reference like the Benson article must be ‘searchable by pertinent terms over the internet’ to qualify as a prior art ‘printed publication’ as defined by 35 U.S.C. § 102(b)” “Defendants ‘provided no evidence of any indexing on any database’ that would have allowed the interested public to locate the Risks Digest website, much less the Benson article contained therein”

Voter Verified v. Premier Election Solutions Defendant’s position “[T]he Benson article qualifies as prior art because it was posted on a public website well known to those interested in the art of voting technologies—the Risks Digest—and could be retrieved from that website by searching based on subject matter.”

Voter Verified v. Premier Election Solutions “When considering whether a given reference qualifies as a prior art ‘printed publication,’ the key inquiry is whether the reference was made ‘sufficiently accessible to the public interested in the art’ before the critical date.”

Voter Verified v. Premier Election Solutions “Whether a reference is publicly accessible is determined on a case-by-case basis based on the ‘facts and circumstances surrounding the reference’s disclosure to members of the public.’”

Voter Verified v. Premier Election Solutions “[I]ndexing is a relevant factor in determining accessibility of potential prior art, particularly library-based references.” “But indexing is not ‘a necessary condition for a reference to be publicly accessible’; it is but one among many factors that may bear on public accessibility.”

Voter Verified v. Premier Election Solutions “[T]he ultimate question is whether the reference was ‘available to the extent that persons interested and ordinarily skilled in the subject matter or art[,] exercising reasonable diligence, can locate it.’” “[W]hile often relevant to public accessibility, evidence of indexing is not an absolute prerequisite to establishing online references like the Benson article as printed publications within the prior art.”

Voter Verified v. Premier Election Solutions The Risks Digest website was undisputedly open to any internet user by the critical date. Whether or not the website itself had been indexed by 1999 (through search engines or otherwise), the uncontested evidence indicates that a person of ordinary skill interested in electronic voting would have been independently aware of the Risks Digest as a prominent forum for discussing such technologies. And upon accessing the Risks Digest website, such an interested researcher would have found the Benson article using that website’s own search functions and applying reasonable diligence.

“Patent” Not all foreign patent rights are equivalent to US patent rights

Invention Disclosures

In Practice What do you do with an invention disclosure form?

Approval Process Ordinarily, once the invention disclosure is completed and approved by the patent committee, the inventor(s) will meet or have a teleconference with the attorney to discuss the invention

Approval Factors What factors may be consider by in-house counsel and/or a patent committee when determining whether to file? Company total patent budget Competitors in the area Ease of infringement detection

Inventor Interview The attorney will attempt to obtain sufficient information from the inventor(s) to be able to draft the patent application

Purpose of the Meeting Understand the invention Understand how the invention ties into the company’s business Be able to write claims based on the invention disclosure meeting Claim drafting during the meeting Educate inventors on general patent process and company’s internal patent process

Questions Asked Questions that are typically asked by an attorney when interviewing the inventor: Has the invention been used publicly? When will the invention be publicly used or launched?

Invention Disclosure What is an invention disclosure form? What are the benefits of using an invention disclosure form? How do you prepare an invention disclosure form?

Program Completed All course materials - Copyright 2002-13 Randy L. Canis, Esq.