IP Law Survey

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IP Law Survey

• Patent Law Lesson Three
• Fall 2009

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Where weve been

• Reviewed a patent document,
• Discussed the basics of the right to exclude,
• Identified the duration of that right
• Focused in on the claims of a patent
• Claims define the metes and bounds of the right
  to exclude
• Construed by the court in Markman hearings
• Claim construction hearings reviewed on appeal de
  novo
• Claim construction focuses on the meaning of the
  terms to a phosita in the context of the patent
• Introduced the tools for claim interpretation and
  their application
• Intrinsic and extrinsic evidence

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Where we are headed

• Requirements to obtain a patent
• Formal disclosure requirements (today)
• Patentable subject matter and utility (Tuesday
  9/22)
• Novelty and statutory bars (Thursday 9/24)
• Non-obviousness (Tuesday 9/29)
• Infringement Remedies

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Obtaining a patent

• AIPLA economic survey data 2009

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Formal Disclosure Requirements

• Basic Bargain
• You tell us your invention, we protect you
• Tension
• Overbroad protection shorts public knowledge
• Underbroad protection shorts the inventor

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Written disclosure requirements

• 35 U.S.C. 112 ( 1, 2)
• The specification shall contain a written
  description of the invention, and of the manner
  and process of making and using it, in such full,
  clear, concise, and exact terms as to enable any
  person skilled in the art to which it pertains,
  or with which it is most nearly connected, to
  make and use the same, and shall set forth the
  best mode contemplated by the inventor of
  carrying out his invention.
• The specification shall conclude with one or more
  claims particularly pointing out and distinctly
  claiming the subject matter which the applicant
  regards as his invention.
• Requirements
• Claim definiteness
• Enablement
• Written description
• Best mode

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Exxon Research v. U.S.(Fed. Cir. 2001)

• Improvement to reaction equipment
• Pretreating a catalyst used in a bubble column
• Claim limitations
• treating the catalyst for a period of time
  sufficient to increase substantially the initial
  catalyst productivity
• Is the claim fatally indefinite?
• Why have this requirement?
• Whats the legal standard?
• Definite if one skilled in the art would
  understand the bounds of the claim when read in
  light of the specification.
• Definite if amenable to construction
• Indefinite if insolubly ambiguous

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Exxon contd

• to increase substantially
• Spec defines it as at least about 30
• What is the ambiguity, and can we solve it?
• for a period sufficient
• What is the ambiguity, and can we solve it?
• No numerical quantity is stated
• Do we have a lower boundary?
• Guidance about time period?

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Enabling the claimed invention

• 35 U.S.C. 112, 1
• a written description so as to enable any
  person skilled in the art to make and use it
• 1836 Act, 6
• a written description so as to enable any
  person skilled in the art to make, construct,
  compound, and use the same

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National Recovery (Fed Cir 1999)

• The scope of the claims must be less than or
  equal to the scope of the enablement. The scope
  of enablement, in turn, is that which is
  disclosed in the specification plus the scope of
  what would be known to one of ordinary skill in
  the art without undue experimentation.

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WRITTEN DISCLOSURE
Enabled
INVALID
Claimed
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In re Wands (Fed Cir 1988)

• Test for presence of hep B surface antigen
• Relies on antibody-antigen relationship

Affinity strength of bond
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Wands contd

• Antigen Key Antibody Lock
• Rejected Claim 1 An immunoassay method
  utilizing a Lock to assay for a Key which
  comprises the steps of contacting a test sample
  containing said Key with said Lock and
  determining the presence of said Key in said
  sample wherein said Lock is a high-affinity
  LOCK!

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Wands contd

• LOCK! a monoclonal high affinity IgM antibody
  having a binding affinity constant for HBsAg of
  at least 109 M-1.
• How did we get to the CAFC?
• Does Wands enable the LOCK! ?
• Wands deposited some 1F8 cells with ATCC
• Why doesnt the deposit enable Claim 1?
• Claim is broader than just what the 1F8 cells
  enable

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Wands contd

• Applicant argues
• Made with readily available starting materials.
• Made by well-known methods.
• Why did Patent Office object?
• Undue experimentation
• What type of end-user experimentation can a
  patentee generally rely on ?
• Multi-factor test

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• put them in a logical order
• Nature of the invention breadth of the claims
• Skill of those in the art state of the prior
  art
• Predictability, working examples, and guidance
• Amount of experimentation

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Wands contd
?
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National Recovery (Fed Cir 1999)

• The scope of the claims must be less than or
  equal to the scope of the enablement. The scope
  of enablement, in turn, is that which is
  disclosed in the specification plus the scope of
  what would be known to one of ordinary skill in
  the art without undue experimentation.

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Sitrick v. Dreamworks(Fed. Cir. 2008)

• How did we get to the CAFC?
• Invalidity asserted as a defense to infringement
• Presumption of validity burden on challenger to
  demonstrate invalidity by clear and convincing
  evidence
• Claimed invention?
• Process for integrating users video or audio
  into game or movie
• Intercept Adapter Interface System
• Games ? Swaps user data for game character data
• Movies . . .
• Does the disclosure teach us how?
• How can we tell who should we consult?

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Sitricks strategic reason for arguing that
claims cover not just games, but movies?
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INVALID
Claimed (as construed!)
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Claimed (as construed!)