Case Summaries on Patent Law

CASE SUMMARIES ON PATENT LAW

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Table of Contents Patentable Subject Matter ...................................................................6 Diamond v. Chakrabarty, 447 U.S. 303 (1980) [68]................................. 6 O’Reilly v. Morse, 56 U.S. 62 (1854) [79]..................................................6 The Telephone Cases, 126 U.S. 1 (1888) [92]...........................................7 Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) [113]........................................................................................................7 Parke-Davis & Co. v. H.K. Mulford & Co., 189 F.95 (S.D.N.Y. 1911) [106]........................................................................................................8 Lab Corp. of America v. Metabolite Labs, Inc., 126 S.Ct. 2921 (2006) [98]..........................................................................................................8 Gottschalk v. Benson, 409 U.S. 63 (1972) [131].......................................8 Diamond v. Diehr, 450 U.S. 175 (1981) [141]........................................... 8 State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998) [156]...........................................................9 Utility......................................................................................................... 9 Lowell v. Lewis, 15 Fed. Cas. 1018 (C.C D. Mass. 1817) [212]................9 Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364 (Fed. Cir. 1999) [214]........................................................................................................9 Brenner v. Manson, 383 U.S. 519 (1966) [222].......................................10 In re Brana, 51 F.3d 1560 (Fed. Cir. 1995) [230]...................................10 In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005) [240]................................. 10 Disclosure and Enablement .............................................................. 11 The Incandescent Lamp Patent, 159 U.S. 465 (1895) [261]..................11 In re Wands, 858 F.2d 731 (Fed. Cir. 1988) [275]..................................11 In re Strahilevitz, 668 F.2d 1229 (Fed. Cir. 1982) [286]........................11 The Gentry Gallery, Inc. v. The Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998) [303]....................................................................................12 University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916 (Fed. Cir. 2003) [314]....................................................................................12 LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) [321]....................................................................................13 LizardTech, Inc. v. Earth Resource Mapping, Inc., 433 F.3d 1373 (Fed. Cir. 2006) (on petition for en banc rehearing) [325].........................13 Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565 (Fed.

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Cir. 1986) [328]....................................................................................13 Standard Oil Co. v. American Cyanamid Co., 585 F.Supp 1481 (E.D.La. 1984), aff’d, 774 F.2d 448 (Fed. Cir. 1985) [332]............................... 14 Randomex, Inc. v. Scopus Corp., 849 F.2d 585 (Fed. Cir. 1988) [340]. .14 Chemcast v. Arco Industries, 913 F.2d 923 (Fed. Cir. 1990) [348].......15 Novelty.....................................................................................................15 In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) [361].............................15 In re Seaborg, 328 F.2d 996 (C.C.P.A. 1964) [370].................................16 Schering Corp. v. Geneva Pharmaceuticals, Inc., 339 F.3d 1373 (Fed. Cir. 2003) [374]....................................................................................16 In re Hafner, 410 F.2d 1403 (C.C.P.A. 1969) [381]................................16 National Tractor Pullers Association v. Watkins, 250 U.S.P.Q. (BNA) 892 (N.D.Ill. 1980) [394]..................................................................... 17 Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928) [403]............................17 In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) [405]...................... 17 Reeves Brothers v. United States Laminating Corp., 282 F.Supp. 118 (E.D.N.Y. 1966), aff’d, 417 F.2d 869 (2d Cir. 1969) [413].................18 Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926) [421]......................................................................................................18 Campbell v. Spectrum Automation Co., 513 F.2d 932 (6th Cir. 1975) [431]......................................................................................................18 Brown v. Barbacid, 276 F.3d 1327 (Fed. Cir. 2002) [441]......................18 Peeler v. Miller, 535 F.2d 647 (C.C.P.A. 1976) [456].............................18 Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed. Cir. 2001) [468]........................................................................................... 19 In re Moore, 444 F.2d 572 (Fed. Cir. 1987) [483]...................................19 Westinghouse Machine Co. v. General Electric Co., 207 F. 75 (2d Cir. 1913) [496]........................................................................................... 20 Statutory Bars....................................................................................... 20 Pennock v. Dialogue, 27 U.S. 1 (1829) [511]...........................................20 Egbert v. Lippmann, 104 U.S. 333 (1881) [522].....................................21 Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir. 1986) [528]......................................................................................................21 Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2d Cir. 1946) [533]..............................................................22 Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998) [536].......................22 Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (Fed. Cir. 1999) [551].......................................................................... 22

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City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1877) [555].......................................................................................... 23 Lough v. Brunswick Corp., 86 F.3d 1113 (Fed. Cir. 1996) [562]...........23 Baxter International v. COBE Laboratories, Inc., 88 F.3d 1054 (Fed. Cir. 1996) [570]....................................................................................24 W. L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983) [579]........................................................................................... 24 Abandonment.........................................................................................25 Macbeth-Evans Glass Co. v. General Electric Co., 246 F. 695 (6th Cir. 1917) [593]........................................................................................... 25 In re Kathawala, 9 F.3d 942 (Fed. Cir. 1993) [603]...............................25 Non-Obviousness...................................................................................26 Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851) [617]...............26 Graham v. John Deere Co., 383 U.S. 1 (1966) [631]..............................26 United States v. Adams, 383 U.S. 39 (1966) [653].................................27 KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) [665]........27 Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 353 (Fed. Cir. 1997) [685]........................................................................................... 28 In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009) [S89].................................28 Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir. 1986) [703]........................................................................................... 29 In re Winslow, 365 F.2d 1017 (C.C.P.A. 1966) [724]..............................29 Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965) [731]...........30 In re Bass, 474 F.2d 1276 (C.C.P.A. 1973) [734]....................................30 OddzOn Products, Inc. v. Just Toys, Inc., 12 F.3d 1396 (Fed. Cir. 1997) [745]......................................................................................................30 In re Foster, 343 F.2d 980 (C.C.P.A. 1965) [751]...................................30 In re Clay, 966 F.2d 656 (Fed. Cir. 1992) [765]...................................... 31 Merrill v. Yeomans, 94 U.S. 568 (1877) [782].........................................31 Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) [788, 845].......................................................................................................31 Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) [829]...32 Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc) [839]..................................................................................... 32 BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) [S105]......................................................................................... 33 The Doctrine of Equivalents.............................................................. 33

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Winans v. Denmead, 56 U.S. 330 (1854) [849].......................................33 Warner-Jenkinson v. Hilton Davis Chemical Co., 520 U.S. 17 (1997) [856]......................................................................................................33 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002) [867]................................................................................... 34 Indirect Infringement..........................................................................35 Aro Manufacturing Co. v. Convertible Top Co., 377 U.S. 476 (1964) (Aro II) [909]........................................................................................ 35 C.R. Bard, Inc. v. Advanced Cardiovascular Systems, 911 F.2d 670 (Fed. Cir. 1990) [916].......................................................................... 35 Brown v. Duchesne, 60 U.S. 183 (1856) [923]........................................35 Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) [926]...................36 SEB v. Montgomery Ward, 594 F.3d 1360 (Fed. Cir. 2010) [assigned separately]........................................................................................... 36 Willful Infringement............................................................................ 36 Panduit Corp. v. Stahlin Brothers Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978) [969]............................................................................ 36 Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995) (en banc) [985]......................................................................................................37 Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) (en banc) [1029]......................................37 Soverain Software L.L.C. v. Amazon.com, Inc., 383 F.Supp.2d 904 (E.D.Tex. 2005) [1040]........................................................................ 38 Administrative Correction and Reissue.........................................38 Superior Fireplace Co. v. Majestic Products Co., 270 F.3d 1358 (Fed. Cir. 2001) [1075]..................................................................................38 Mentor Corp. v. Coloplast Inc., 998 F.2d 992 (Fed. Cir. 1993) [1079]. .38 Seattle Box Co. v. Industrial Crating & Packing, Inc., 756 F.2d 1475 (Fed. Cir. 1985) [1086]........................................................................ 38 Quantum Corp. v. Rodime, PLC, 65 F.3d 1577 (Fed. Cir. 1995) [1094] .............................................................................................................. 39 J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553 (Fed. Cir. 1984) [1106]................................................................................................... 39 Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253 (Fed. Cir. 1997) [1111]........................................................................ 40 Kinsgdown Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988) [1121]........................................................................ 40

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Antitrust and Patent Misuse..............................................................40 Brulotte v. Thys Co., 379 U.S. 29 (1964) [1262].....................................40 Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172 (1965) [1275]..................................................................41 Lear, Inc. v. Adkins, 395 U.S. 653 (1969) [1284]....................................41 MedImmune, Inc. v. Genentech Inc., 127 S.Ct. 764 (2006) [1291]........41 Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) [S111]......................................................................................... 41

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Patentable Subject Matter Diamond v. Chakrabarty, 447 U.S. 303 (1980) [68] The Supreme Court held that microorganisms could fall within the definition of patentable subject matter set forth in § 101. Chakrabarty applied for a patent on a type of bacterium that could metabolize hydrocarbons. The biochemical pathways responsible for this metabolism did not exist naturally. Rather, they had been artifically introduced to the bacteria. Seizing on the artificiality of the pathway, the Court characterized the bacteria as a “nonnaturally occuring manufacture or compposition of matter” and a “product of human ingenuity.” In reaching its conclusion, the Court distinguished Chakrabarty’s bacteria from those claimed in Funk Brothers Seed Co. v. Kalo Inoculant Co. 1 The bacteria in Funk Brothers, said the Court, were not patentable subject matter because they did not exhibit any property that did not already exist in nature. The majority and the dissent disagreed as to the significance of the Plant Patent Act (PPA) and the Plant Variety Protection Act (PVPA). The majority believed that neither Act implied that living materials fell outside the definition of patentable subject matter. For the majority, the Acts were simply a way to resolve the difficulties of providing written descriptions of plants. The dissent, however, argued that the existence of separate Acts covering plants meant that Congress did not intend living materials to fall within the ordinary scope of § 101. Therefore, said the dissent, the Court should await direction from Congress before upholding patents on living material. O’Reilly v. Morse, 56 U.S. 62 (1854) [79] The Supreme Court clarified the limits on the breadth of a claim. Morse applied for a patent on his recently invented telegraph. One of the claims in the patent attempted to cover “the use of the motive power of the electric or galvanice current . . . however developed for marking or printing intelligible characters, signs, or letter, at any distances . . . .” The Court disallowed the claim on the ground that it was “impossible to understand [its] extent.” In the Court’s view, the claim represented an attempt to obtain a monopoly over the electromagnetic force itself rather than any device which made use of the force. 1 333 U.S. 127 (1948)

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The dissent criticized the majority for insisting that every claim had to be tied to a machine. The Telephone Cases, 126 U.S. 1 (1888) [92] The Supreme Court clarified the line dividing permissible claims from those that were too broad under the Morse rule. Alexander Graham Bell applied for a patent on the telephone. One claim covered “[t]he method of, and apparatus for, transmitting vocal or other sounds telegraphically . . . by causing electrical undulations similar in form to the vibrations of the air accompanying the said vocal or other sounds . . . .” Bell’s claim, said the Court, differed from Morse’s claim because Bell claimed only the use of electric current for transmitting the human voice. The Court noted that “[i]t may be that electricity cannot be used at all for the transmission of speech except in the way Bell has discovered.” Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) [113] The Supreme Court clarified the requirements that a microorganism must meet in order to fall within the definition of patentable subject matter under § 101. Kalo sought to enforce a patent on an inoculum containing multiple strains of nitrogen-fixing bacteria. In perfecting its inoculum, Kalo had overcome an obstacle which had been impeding the production of multiple-strain inocula. Previous inocula could contain only a single strain of bacteria because different strains of bacteria tended to have an inhibitive effect one each other when placed in the same inoculum. Kalo solved this problem by identifying combinations of strains that suffered from no such inhibitory effect. The Court, however, invaliated the claim on the ground that Kalo had merely discovered a natural phenomenon. The Court observed that “[t]he combination of species produces no new bacteria, no change in the six species of bacteria, and no enlargement in their utility” and that “[e]ach species had the same effect it always had.” The concurrence stated that a multiple-strain inoculum might be patentable, but only if the particular combination of strains resulted in some useful property that did not exist in each strain individually.

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Parke-Davis & Co. v. H.K. Mulford & Co., 189 F.95 (S.D.N.Y. 1911) [106] The court established the “purification doctrine.” Takamine (an employee of Parke-Davis) obtained a patent on purified adrenaline that was “practically free from inert and associated gland tissue.” Taking a pragmatic view of Takamine’s achievement, the court upheld the claim on the ground that Takamine’s purified adrenaline was suitable for certain therapeutic uses whereas previous forms of adrenaline were not. Lab Corp. of America v. Metabolite Labs, Inc., 126 S.Ct. 2921 (2006) [98] The Supreme Court stated that a medical test consisting solely of a series of abstract steps may not be patentable subject matter. Metabolite held a patent on a test for deficiencies in folate and cobalamin. As stated in the claim, the test consisted of “assaying a body fluid for an elevated level of homocysteine” and “correlating an elevated level of total homocystein in said body fluid with a deficiency of cobalamin or folate.” Although the Court dismissed certiorari as improvidently granted, the dissent argued that the claim was invalid. The test, said the dissent, consisted of “obtain[ing] test results” and “think[ing] about [the results].” The dissent further observed that the correlation between elevated homocysteine levels and deficiencies in cobalamin or folate was itself a unpatentable natural phenomenon. Gottschalk v. Benson, 409 U.S. 63 (1972) [131] The Supreme Court held that one may not patent an entirely abstract idea. Benson applied for a patent on a method of converting decimal numbers to binary numbers. In particular, Benson’s claim covered a series of steps for converting numbers represented using the binary-coded decimal (BCD) system to pure binary representations. The Court disallowed the claim on the ground that the claim attempted to cover an idea. Diamond v. Diehr, 450 U.S. 175 (1981) [141] The Supreme Court held that claims should be evaluated in light of the whole invention and that courts should not “dissect the claims into old and new elements.” Diehr sought to patent a computer-controlled pro-

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cess for curing rubber. Previous methods for curing rubber used a mathematical relationship (the Arrhenius equation) to determine ex ante the curing time for a particular rubber product. The older methods, however, over- or underestimated the curing time in a substantial fraction of cases. By contrast, Diehr’s method provided a computer with constantly updated measurements of the temperature inside the curing mold. Using the Arrhenius equation, the computer then adjusted the remaining curing time as the curing process progressed. The Court allowed the claim on the ground that the Arrhenius equation was but one part of a larger process. Diehr’s process, said the Court, therefore differed from an attempt to claim a bare mathematical relationship or natural phenomenon. The dissent argued that the majority’s position would invite a flood of software patents. State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998) [156] The Federal Circuit held that an algorithm can qualify as patentable subject matter as long as it produces a “useful, concrete, and tangible result.” State Street held a patent on a system (the “Hub and Spoke” system) for allocating money among mutual funds. Although the claim set forth an essentially abstract series of steps for dividing the funds, the court upheld the claim on the ground that it produced a useful result.

Utility Lowell v. Lewis, 15 Fed. Cas. 1018 (C.C D. Mass. 1817) [212] “Usefulness” for the purposes of patent eligibility requires only that the claimed invention performs some non-trivial function. The claimed invention need not be so superior as to replace generally all preceding devices performing the same function. Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364 (Fed. Cir. 1999) [214] “The fact that one product can be altered to make it look like another is in itself a specific benefit sufficient to satisfy the statutory requirement of utility.” In evaluating patent claims, courts should confine them-

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selves to the technical definition of usefulness. Courts should not use patent law to enforce policies against deceptive trade practices. Brenner v. Manson, 383 U.S. 519 (1966) [222] The Supreme Court clarified the conditions under which a new chemical compound could pass the test for utility. Manson sought to patent a steroid, advancing claims covering the steroid itself and processes for producing it. To show that the steroid was useful, Manson pointed to scientific literature showing that analogous compounds had tumor-inhibiting effects in mice. The Court disallowed the claims for both the product and the process. It was not enough, said the Court, to show that compounds similar to the claimed product had a useful physiological effect. Rather, the inventor had to show some use arising from the claimed compound itself. The Court emphasized that a patent “is not a reward for the search [for a use], but compensation for its successful conclusion.” In re Brana, 51 F.3d 1560 (Fed. Cir. 1995) [230] The Supreme Court modified the standard of utility established in Manson. Any chemical compound that produces a pharmacological effect in vitro is now considered useful. Brana sought a patent on a family of compounds sharing the same core structure. According to Brana, the presence of certain functional groups on the core structure enhance the anti-tumor properties of the claimed compounds. To demonstrate the utility of the compounds, Brana pointed to research (the Paull research) showing that one of the compounds within the family (NSC 308847) had enhanced anti-tumor effects against cells from tumor-derived cell lines. The Court held that Brana’s showing sufficed to establish utility. “[P]harmaceutical inventions,” said the Court, “necessarily include[ ] the expectation of further research and development,” so the threshold for utility should not be too high. In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005) [240] The Federal Circuit clarified the doctrine of “substantial utility” 2 in the context of research intermediates. Fisher sought a patent on several expressed sequence tags (ESTs), which were artificial DNA fragments capable of base-pairing with particular genes within an organism’s ge2 See, e.g., Fujikawa v. Wattanasin, 93 F.3d 1559 (Fed. Cir. 1996)

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nomic DNA. The court disallowed Brana’s claims on the ground that Brana did not know the functions of the genes targeted by the claimed ESTs. A patent on Brana’s ESTs, said the court, would amount to a “hunting license.” The dissent criticized the majority for adopting an overly demanding standard of utility. In the dissent’s view, Brana could demonstrate utility simply by showing that the ESTs were effective in identifying particular genes.

Disclosure and Enablement The Incandescent Lamp Patent, 159 U.S. 465 (1895) [261] The court invalidated a claim that purported to cover all use of “fibrous or textile” material as filaments for incandescent bulbs. The court found that the claimants, despite having found particular varieties of plant fibers that could serve as filaments, could not use their findings to support a claim over the use of all plant materials for similar uses. In re Wands, 858 F.2d 731 (Fed. Cir. 1988) [275] The Federal Circuit clarified the extent to which a patent claim can include experimentation before running afoul of the “undue experimentation” standard. Wands sought to patent an immunoassay that made use of high-affinity monoclonal IgM antibodies. The process for making the antibodies consisted of fusing a large number of lymphocytes with myeloma cells. Each of the resulting hybridomas produced a particular antibody. Additional screening was necessary to isolate the few hybridomas that produced IgM antibodies with sufficient affinity. As a result, the disclosed method for producing hybridomas had a success rate of 2.8%. The court allowed the claim on the ground that the screening was a matter of routine. In re Strahilevitz, 668 F.2d 1229 (Fed. Cir. 1982) [286] Working examples of an invention are not always necessary to support a claim for that invention. Strahilevitz applied for a patent on a device for removing haptens (small molecules that exhibit antigenic properties upon binding to a protein) from the bloodstream. The device used hapten-binding antibodies to “fish” haptens from the bloodstream. Although Strahilevitz provided no concrete example of the device, the

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Federal Circuit found that existing research on the subsidiary techniques necessary to construct the device provided enough information to enable a person skilled in the art to build the device. The Gentry Gallery, Inc. v. The Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998) [303] The Federal Circuit clarified the extent to which the written description can limit the scope of a claim. The Gentry Gallery sought to enforce a patent on a sofa that featured adjacent and parallel reclining sections. Gentry’s sofa represented a significant advance over previous reclining sofas, whose reclining sections could be placed only at the ends because of constraints arising from the lever needed to operate the reclining mechanism. Gentry’s solution was to place the reclining mechanism in a “console,” so that parallel sections on either side of the console could be reclined using controls located on the console. Gentry’s patent claims were very particular in setting forth the console as an essential component of the invention. When Berkline invented a similar sofa that had no consoles, the Federal Circuit held that Berkline’s sofa fell outside Gentry’s claims. University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916 (Fed. Cir. 2003) [314] The Federal Circuit clarified the bounds of constructive reduction to practice. Researchers at the University of Rochester deduced that COX-2 inhibitors would make better painkillers than existing drugs, which inhibited the COX-1 enzyme in addition to COX-2 and thereby caused side effects. The University sought to patent this discovery through a claim encompassing “[a] method for selectively inhibiting [COX-2] activity in a human host, comprising administering a nonsteroidal compond that selectively inhibits activity of the PGHS-2 [COX-2] gene product . . . .” The Federal Circuit held the claim to be invalid because it failed to provide a written description of any specific compound exhibiting the described inhibitory effect on COX-2. “Even with the three-dimensional structures of . . . COX-1 and COX-2 in hand,” said the court, “it may even now not be within the ordinary skill in the art to predict what compounds might bind to and inhibit them.”

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LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005) [321] The Federal Circuit elaborated the standard of enablement in the context of image-processing algorithms. Researchers at the University of California developed and patented an improved way to apply an imagecompression algorithm known as “discrete wave transform” (DWT). DWT gave rise to compression artifacts, which resulted from the algorithm’s method for handling the edges of images. Because existing implementations of DWT divided images into “tiles” which were processed by DWT individually, the edges of each tile gave rise to artifacts that contributed to the overall degradation of the original image. The researchers solved the tiling problem by modifying DWT to process not only the contents of each tile but also the contents of adjacent tiles. The patent contained two claims relating to the improved algorithm. The first (claim 1) explicitly referred to solving the tiling problem through “maintain[ing] updated sums” calculated from the neighbors of each tile. The second claim (claim 21), however, did not specify any method of implementing the improvement. The court invalidated claim 21 on the ground that it failed to describe an independent method for producing a “seamless” DWT-compressed image. “After reading the patent,” said the court, “a person of skill in the art would not un derstand how to make a seamless DWT . . . except by ‘maintaining updating sums of DWT coefficients [as disclosed in claim 1].’ ” LizardTech, Inc. v. Earth Resource Mapping, Inc., 433 F.3d 1373 (Fed. Cir. 2006) (on petition for en banc rehearing) [325] The Federal Circuit declined to rehear LizardTech. The dissent observed that confusion surrounded the “written description” requirement. The dissent compared LizardTech to JVW Enterprises, Inc. v. Interact Accessories3 and noted that the two cases had opposite outcomes despite having similar facts. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565 (Fed. Cir. 1986) [328] The Federal Circuit clarified the extent to which an inventor may describe an invention using general terms. Orthokinetics held the patent for a pediatric wheelchair that could be easily loaded onto the backseat 3 424 F.3d 1324 (Fed. Cir. 2005)

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of a car. The wheelchair featured (1) a front wheel that could be braced against the interior of the car and (2) a set of retractable rear wheels. The relevant portion of the claim stated that “the front leg portion is so dimensioned as to be insertable through the space between the doorframe of an automobile and one of the seats thereof.” The court held that the “so dimensioned” portion of the claim was sufficiently descriptive of the wheelchair to validate the claim. “As long as those of ordinary skill in the art realized that the dimension could be easily obtained,” said the court, “[section 112 ¶ 2] requires nothing more.” Standard Oil Co. v. American Cyanamid Co., 585 F.Supp 1481 (E.D.La. 1984), aff’d, 774 F.2d 448 (Fed. Cir. 1985) [332] Failure to define special terms may prevent a written description from supporting a claim. A chemist invented a patented method for synthesizing acrylamide. The claim for the method stated that the reaction required copper ions that were “partially soluble” in water. Crucially, the chemist failed to define the meaning of “partially soluble” in the context of the claim. Despite that “partially soluble” seemed to have been derived from the established term “slightly soluble,” the court found the meaning of “partially soluble” too vague to support the claim. Randomex, Inc. v. Scopus Corp., 849 F.2d 585 (Fed. Cir. 1988) [340] The Federal Circuit clarified the extent to which a best-mode disclosure must provide specific information. Randomex developed and patented a portable hard-drive cleaner. The relevant claim covered not only the cleaning device itself but also the cleaning solution to be used in conjunction with the device. The claim stated that “[t]he cleaning solution employed should be of a type adequate to clean grease and oil from disc surfaces, such as a 91 percent alcohol solution or a nonresidue detergent solution such as Randomex Cleaner No. 50281.” The court found the claim to be valid even though Randomex’s claim did not identify which cleaner was the “best.” The dissent noted that Randomex had intentionally refrained from identifying the best cleaning solution despite having identified the best candidate through experimentation.

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Chemcast v. Arco Industries, 913 F.2d 923 (Fed. Cir. 1990) [348] The Federal Circuit established the standard for determining the adequacy of a best-mode disclosure. “[A] proper best mode analysis has two components,” said the court. “The first is whether, at the time of inventor filed his application, he knew of a mode of practicing his claimed invention that he considered to be better than any other. . . . If the inventor in fact contemplated such a preferred mode, the second part of the analysis compares what he knew with what he disclosed—is the disclosure adequate to enable one skilled in the art to practice the best mode or [ ] has the inventor ‘concealed’ his preferred mode from the ‘public’ ”? Chemcast sought to enforce a patent on a grommet designed to act as a sealer. The relevant claim stated that one portion of the grommet should have a hardness of less than 60 Shore A while a different portion should have a hardness of greater than 70 Shore A. The court invalidated the claim on the ground that Chemcast had failed to disclose the substance to be used in the harder portion of the grommet. At the time, Chemcast purchased that substance from a single supplier (Reynosol). Further, the composition of that substance was Reynosol’s trade secret. “The question,” said the court, “is not whether those skilled in the art could make or use [Chemcast’s] grommet without knowledge of [the Reynosol compound]; it is whether they could practice [the] contemplated best mode which . . . included specifically the Reynosol compound.”

Novelty In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) [361] The Federal Circuit sharply limited the use of “inherency” in showing that an existing product anticipates an invention. Robertson sought a patent on a diaper which had a fastener dedicated to keeping the diaper rolled up for disposal. A similar diaper (the Wilson diaper) was similar to Robertson’s diaper in most respects but lacked a dedicated fastener for disposal. Reversing the Board of Patent Appeals and Interferences, the court allowed Robertson’s claim on the ground that Wilson’s design contemplated no special fastener for use during disposal. The court criticized the Board for concluding that Robertson’s design was “inherent” because the existing fasteners on Wilson’s di-

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aper could be used to keep a diaper rolled up. “Inherency,” said the court, “may not be established by probabilities or possibilities. The mere fact that a cetain thing may result from a given set of circumstances is not sufficient.” The dissent argued that alternative uses for the fasteners on the Wilson diaper were sufficiently apparent that Robertson’s diaper constituted no real advance in diaper design. In re Seaborg, 328 F.2d 996 (C.C.P.A. 1964) [370] The accidental production of a substance generally does not anticipate any later patent on that substance. Seaborg sought a patent on the element americium. The Patent Office rejected his application on the ground that an existing nuclear reactor (disclosed in the Fermi patent) produced minute amounts of americium during normal operation. Reversing the Patent Office, the court allowed Seaborg’s claims on the ground that the nuclear reactor simply was not a realistic way to obtain useful quantities of americium. Schering Corp. v. Geneva Pharmaceuticals, Inc., 339 F.3d 1373 (Fed. Cir. 2003) [374] The Federal Circuit clarified the standard for anticipation in the context of pharmaceutical products. Schering held a patent on loratidine, a non-drowsy antihistamine. As the loratidine patent neared expiration, Schering applied for a patent on a derivative of loratidine (DCL), which had the same anti-allergy effect as loratidine. Loratidine was converted to DCL in vivo. The court disallowed the DCL patent on the ground that loratidine anticipated DCL. “Anticipation,” said the court, “does not require the actual creation or reduction to practice of the prior art subject matter; anticipation requires only an enabling disclosure.” The court found the loratidine patent to disclose a method for creating DCL since the ingestion of loratidine invariably causes the in vivo formation of DCL. In re Hafner, 410 F.2d 1403 (C.C.P.A. 1969) [381] A foreign patent application may anticipate an invention during a subsequent application for an American patent. Hafner applied for two German patents on chemical compounds.

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National Tractor Pullers Association v. Watkins, 250 U.S.P.Q. (BNA) 892 (N.D.Ill. 1980) [394] Only publicly disclosed knowledge may serve as prior art. Watkins sought to defend his patent on a tractor pulling sled (a device used to measure the pulling strength of tractors) against a challenge by the National Tractor Pullers Association. The Association contended that a device designed by three other inventors (the Huls device) anticipated Watkins’s sled. The Association alleged that the Huls device was outlined in a diagram drawn on a tablecloth, but it could not produce the tablecloth itself. The court upheld Watkins’s patent because the tablecloth did not constitute public disclosure of the Huls device. “The [now-lost] tableclothing drawings, “said the court, “were never available to the public. They were drawn on the underside of the tablecloth and remained in the kitchen of Mr. Huls mother’s home and were never printed nor otherwise published before being destroyed.” Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928) [403] The Second Circuit held that a printed publication need not have wide circulation in order to act as prior art. Jockmus sought to enforce a design patent on a lightbulb holder. Leviton (the defendant) argued that Jockmus’s invention was anticipated by an existing lightbulb holder. Leviton pointed to a German catalog from some years before (the Gogarten & Schmidt catalog), which contained a picture of a similar lightbulb holder. Finding the catalog to constitute prior art, the court invaliated Jockmus’s patent. In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) [405] The Federal Circuit held that prior art does not always need to be disseminated through formal publication. Klopfenstein sought a patent on double-extruded soy cotyledon fiber (SCF). Compared to existing single-extruded SCF, Klopfenstein’s SCF exhibited a stronger tendency to reduce cholesterol in mammals that ingested it. Two years before applying for the patent, Klopfenstein and colleagues reported the properties of the double-extruded SCF at two academic conferences. At each conference, they displayed their results on poster boards. The court disallowed Klopfenstein’s patent on the ground that the poster boards constituted a printed publication disclosing the invention. Neither distribution nor indexation, said the court, was necessary to turn information into prior art. For the purposes of § 102(b), a printed

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publication could consist of any material that was “sufficiently accessible to the public interested in the art.” Reeves Brothers v. United States Laminating Corp., 282 F.Supp. 118 (E.D.N.Y. 1966), aff’d, 417 F.2d 869 (2d Cir. 1969) [413] The claims of a foreign patent are prior art. Reeves Brothers sought to enforce a patent on a process for laminating polyurethane foam and a machine for performing the lamination. Before applying for the American patent, Reeves Brothers had already obtained a gebrauchsmuster (GM) (a sort of patent) from the German patent office. The court held that the claims stated within the GM were prior art. Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926) [421] The Supreme Court held that valid patents are treated as if they entered the prior art on the day of filing. Campbell v. Spectrum Automation Co., 513 F.2d 932 (6th Cir. 1975) [431] The Sixth Circuit held that “clear and convincing” evidence was required to demonstrate the invalidity of a patent. Campbell sought to enforce a patent on a flexible feed track (apparently a sort of conveyor belt used in manufacturing). A vital component of the feed track was a spring with a rectangular cross-section. Campbell claimed that Zimmerman (the founder of Spectrum) had learned of the rectangular spring while working for him. Zimmerman, however, claimed that he conceived the spring after noticing that his father wore a belt with a similar rectangular spring. Zimmerman corroborated his claim with a photo of his father wearing the belt. Finding Zimmerman’s testimony and photograph persuasive, the court invalidated Campbell’s patent. Brown v. Barbacid, 276 F.3d 1327 (Fed. Cir. 2002) [441]

Peeler v. Miller, 535 F.2d 647 (C.C.P.A. 1976) [456] The court established guidelines on how long an inventor may delay patenting an invention before the invention is considered to have been

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suppressed. Miller (working for Monsanto) developed a new type of hydraulic fluid. Miller’s hydraulic fluid mitigated problems with cavitation (the formation of air bubbles within the fluid), which affected existing fluids. Miller submitted his invention to Monsanto’s legal department to initiate a patent application, but Monsanto (apparently through bureaucratic ineptitude) did not actually file the application until four years later. In the meantime, Peeler had obtained a patent covering Miller’s hydraulic fluid. The court found that Monsanto’s delay in filing constituted suppression of the invention, so that Peeler’s patent remained valid. Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed. Cir. 2001) [468] An existing product may act as prior art even if the inventor of that product did not realize that it constituted a patentable invention. Astor-Valcour (AVI) manufactured plastic foam products. Although chlorofluorocarbons (CFCs) had traditionally been used as the “blowing agents” for inflating the foam, environmental concerns motivated AVI to find alternatives. AVI learned that a Japanese company used isobutane (a non-CFC gas) to turn polystyrene into styrofoam. After finding that isobutane could be adapted for producing plastic foam, AVI obtained a license to use the isobutane-based inflation process. Dow subsequently obtained a patent covering the sort of foam that AVI was producing. When Dow sought to enforce its patent against AVI, the court invalidated Dow’s patent because the claimed invention was already being practiced by AVI when Dow applied for the patent. “Whether AVI understood that it had produced a legally patentable invention,” said the court, “is immaterial for [the] purposes of § 102(g)(2). It is enough that the AVI employees appreciated the fact of their invention.” In re Moore, 444 F.2d 572 (Fed. Cir. 1987) [483] A Rule 131 affidavit need not establish any use for an invention to overcome a presumption of non-novelty under § 102(a). Moore sought a patent on a chemical compound that had been disclosed in a British publication, submitting a Rule 131 affidavit stating that he had produced the compound before the effective date of the British publication. The publication did not specify a use for the compound. The court allowed the patent. “[T]he determination of a practical utility [of the in-

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vention],” said the court, “need not have been acomplished prior to the date of a reference unless the reference also teaches how to use the compound it describes.” Westinghouse Machine Co. v. General Electric Co., 207 F. 75 (2d Cir. 1913) [496] The mere practice of an invention in a foreign country does not bar that invention from being patented in the United States. Unless the invention has been patented in its own country or disclosed in a publication, an American inventor can obtain an American patent for the same product. General Electric (GE) held a patent on a system for controlling electric railroad cars. De Kando (working for Westinghouse) challenged GE’s patent on the ground that he had perfected the technology in Italy before Westinghouse filed for the patent. To support his claim, De Kando produced facts showing that an American engineer (Waterman) had introduced De Kando’s technology to the United States prior to Westinghouse’s filing date. The court upheld GE’s patent. “[R]eduction to practice in a foreign country,” said the court, “can never operate to destroy a patent applied for here, however widely known such reduction to practice may be . . . unless the invention be patented or described in a printed publication.”

Statutory Bars Pennock v. Dialogue, 27 U.S. 1 (1829) [511] An inventor may not patent a product that has already entered widespread public use. Pennock had invented a new kind of hose, which was less prone to leaking than existing types of hoses. Instead of applying for a patent right away, Pennock practiced the invention as a trade secret for seven years. During that period, Pennock sold more than 13,000 feet of his hose and permitted a thid party (Jenkins) to produce the hose. Although Pennock ultimately obtained a patent on the hose, the Court invalidated the patent on the ground that the invention was already widely available to the public when the patent was filed. “If an inventor should be permitted to hold back . . . the secrets of his invention,” said the Court, “[until] the danger of competition should force him to secure the exclusive right [of a patent], . . . [such a rule] would materially retard the progress of science and the useful arts.”

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Egbert v. Lippmann, 104 U.S. 333 (1881) [522] For the purposes of the statutory bar, the public use of an invention may consist of unrestricted use by a single member of the public. The patentee (Barnes) sought to enforce a patent on corset steels (structural supports for corsets). Before applying for the patent, Barnes had allowed a woman to use his corset springs in her own corset. The woman apparently showed the corset to at least one other person. By the time Barnes applied for the patent eleven years later, his corset springs had already entered widespread use. The court invalidated Barnes’s patent, citing his initial disclosure of the invention to the friend. “[T]o constitute the public use of an invention,” said the Court, “it is not necessary that more than one of the patented articles should be public used.” Further, the Court held that “if [the] inventor . . . allows [his invention] to be used without restriction of any kind, [such] use is a public one” even if the invention is “only capable of being used where [it] cannot be seen or observed by the public eye.” Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir. 1986) [528] Public use does not exist if the inventor has maintained overall control over the disclosure of the invention. Nichols had invented a 2 x 2 x 2 while attending graduate school, explaining the workings of the cube to several fellow students. Upon joining Moleculon as a research scientist, Nichols explained the workings of the cube to a supervisor. Moleculon then tried to license the design to “between fifty and sixty” toy companies but received no interest. About a year after first soliciting a deal with a toy maker, Nichols (acting on behalf of Moleculon) applied for a patent on the cube, obtaining the patent two years later. CBS (a maker of Rubik’s Cube puzzles) sought to invalidate the patent on the ground that Nichols’s explanations of the cube constituted public use or sales under § 102(b). Finding that Nichols had not actually relinquished or sold his invention to the public, the court upheld the patent. “Based on [Nichols’s] personal relationships and surrounding circumstanes,” said the court, “. . . Nichols at all times retained control over the puzzle’s use and the distribution of information concerning it.” As to CBS’s argument that Nichols had sold the cube to the public, the court said that “an assignment or sale of rights in the invention . . . is not a sale . . . within the meaning of section 102(b).”

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Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2d Cir. 1946) [533] The commercial use of a process may trigger a statutory bar against patentability. Meduna (working for Metallizing) had developed a process for conditioning metal surfaces to make them more prepared for a restorative process known as “metallizing.” Metallizing then practiced Meduna’s process commercially for more than a year before applying for (and ultimately receiving) a patent. The court invalidated the patent on the ground that an inventor may not practice an invention for commercial advantage and then seek a patent. “[I]f [the inventor] goes beyond [the] period of probation [of one year following invention],” said the court, “he forfeits his right regardless of how little the public may have learned about the invention.” Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998) [536] The active marketing of a product may trigger the “on sale” bar of § 102(b) even if the invention has not been reduced to practice. Pfaff (working for Texas Instruments) had developed a new type of computer-chip socket. Although he had not produced a working prototype of the socket, Texas Instrument solicited and received advance purchases of the socket. The first working socket was produced some months later, and Pfaff eventually filed for a patent on the socket. By that time, more than one year had elapsed between the date of the orders (April 8, 1981) and the date of filing (April 19, 1982). The Court invalidated the patent, finding the socket to have been “on sale” more than one year before the filing date. If a product has been “the subject of a commercial offer for sale” and was “ready for patenting” on the offer date, said the Court, then § 102(b) bars the inventor from obtaining a patent on that product. Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (Fed. Cir. 1999) [551] An existing product may act as prior art even if the seller of that product fails to recognize it as such. Abbott Laboratories held a patent on four anhydrous forms of a particular chemical compound (terazosin hydrochloride), which it sold for therapeutic uses. In challenging Abbott’s patent, Geneva showed that an unrelated company (Byron Chemical Company) had sold terazosin hydrochloride to several buyers more than one year before Abbott applied for the patent. At the time,

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the parties to the Byron sales did not know which crystalline form of the compound they had purchased. Only subsequent testing (carried out by Abbott and Geneav during litigation) showed that the Byron product fell within the scope of Abbott’s patent claims. The court invalidated the patent, finding Abbott’s product to have run afoul of the § 102(b) statutory bar. “If a product [ ] offered for sale inherently possesses each of the limitations of the claims,” said the court, “then the invention is on sale, whether or not the parties to the transaction recognize that the product possessed the claimed characteristics.” City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1877) [555] Experimental use, even if carried out in public, does not trigger the “public use” bar of § 102(b). Nicholson developed a new kind of wooden pavement. Prior to applying for a patent on the pavement, Nicholson tested the tested the pavement by laying seventy-five feet of the pavement in front of a tollhouse. During the test, Nicholson diligently noted how the pavement held up under the wear and tear of traffic. Although the test lasted more than two years, the Court upheld Nicholson’s patent on the ground that any use of the pavement had been experimental. Nicholson, the Court emphasized, retained control of the pavement at all times; any benefit the public derived from using the pavement was purely incidental. Lough v. Brunswick Corp., 86 F.3d 1113 (Fed. Cir. 1996) [562] The Federal Circuit set forth guidelines for determining what uses are experimental. Lough sought to enforce a patent on a seal assembly used in boat motors. Unlike existing seal assemblies, Lough’s product was less prone to corrosion. More than a year before applying for the patent, Lough tested the seals by installing them on the boats of several friends and one customer of a boat dealership. Eventually, these prototypes found their way into other hands through subsequent transactions. The court invalidated Lough’s patent, finding the prototypes to have entered public use. “Lough’s failure to monitor the use of his prototypes by his acquaintances,” said the court, “[and] the lack of records or reports from those acquaintances concerning the operability of the devices, comel the conclusion that . . . he did not engage in experimental use.”

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Baxter International v. COBE Laboratories, Inc., 88 F.3d 1054 (Fed. Cir. 1996) [570] An existing product may act as prior art even if the inventor of that product did not recognize it as such. Baxter sought to enforce a patent on a “sealless centrifuge” for separating the components of blood. Unbeknownst to Baxter, Dr. Yoichiro Ito, a scientist at NIH, had developed a similar centrifuge more than one year prior to the critical date. Reiterating the standard that public use is any use of the claimed invention by a person who is under no limitation, restriction or obligation of secrecy to the inventor, the court determined that Ito’s colleagues had in fact seen the centrifuge in operation before the critical date. Although some adjustments were necessary to make Ito’s centrifuge work properly with blood, the court found that such adjustments did not lower Ito’s use of the centrifuge to an experimental use. The court compared the adjustments to the tuning of a car engine, stating that the adjustments were not experimentation because they did not go to the core of the invention’s function. The dissent characterized Ito’s use of the centrifuge as “private laboratory research use.” The dissent noted that “[t]his new category of internal laboratory use is immune to the most painstaking documentary search” and that any “secret prior art” should be handled under § 102(e). W. L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983) [579] The secret use of a machine to carry out a patented process is not a public use of that process. Gore sought to enforce a patent on a process for stretching Teflon into fibers. Garlock attempted to invalidate the patent by arguing that the process had been in public use. Garlock pointed to a machine built by an inventor named Cropper as evidence of such public use. Finding that the evidence not to establish public use, the court observed that Cropper’s did not make use of the machine in any way that amounted to public use. Although Cropper sold the machine to a company called Budd, which in fact used the machine to produce Teflon fibers through the processed claimed by Gore. Crucially, however, Budd had taken steps to protect the workings of the machine as a trade secret. Budd employees were required to sign confidentiality agreements. The court also found mere viewing of the ma-

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chine by non-Budd individuals to be insufficient to establish public use. While Budd had allowed some employees of DuPont to try to increase the machine’s production speed, there was no evidence to show that the DuPont employees could discern the workings of the machine based on what they could observe. The court noted that “looking at the machine in operation does not reveal whether it is stretching [Teflon into fibers], and if so, at what speed.” Finally, the court found that selling Teflon tape made by the machine was not a public use of the underlying manufacturing process, noting that “no evidence [showed] that the public could learn the claimed process by examining the tape.”

Abandonment Macbeth-Evans Glass Co. v. General Electric Co., 246 F. 695 (6th Cir. 1917) [593] Keeping an invention secret for an extended period may constitute abandonment of the right to patent that invention under § 102(c). Macbeth-Evans had perfect a process for making glass for “illuminating purposes such as in electric and other shades and globes.” Macbeth-Evans practiced the process in secret for more than nine years. After a former Macbeth-Evans employee leaked the secret process to a competitor, Macbeth-Evans successfully patented the process. When the patent was challenged by General Electric, the court found that Macbeth-Evans’s practicing of the process in secret constituted an abandonment of patent rights to that process. According to the court, allowing the practitioner of a secret process to obtain a patent for that process would present inventors with conflicting incentives. On the one hand, an inventor would want to avoid disclosing the secret through a patent application. On the other hand, the inventor might prefer the explicit protection of patent law to the less certain protection inherent in a trade secret. The court reasoned that Macbeth-Evans, having opted to make a trade secret of its process, could not then change its mind and obtain a patent instead. In re Kathawala, 9 F.3d 942 (Fed. Cir. 1993) [603] A foreign patent on an invention may act as prior art barring that invention from being patented in the United States. Kathawala applied for an American patent on a group of compounds found to inhibit a key enzyme in cholesterol synthesis. One year later and while the applica-

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tion to the PTO was still pending, Kathawala applied for Greek and Spanish patents on the compounds, expanding the subject matter to include ester derivatives of the compounds as well as process claims. Kathawala received a Greek patent covering the compounds themselves, methods of use, and processing for making the compounds. The Spanish patent covered only the process claims. The American patent application was still pending when the two foreign patents issued. When Kathawala filed with the PTO a continuation-in-part which expanded his original claims to include the ester derivatives and certain methods of use, the PTO rejected the application on the ground that the foreign applications constituted abandonment of United States patent rights under § 102(d). Affirming the PTO’s rejection, the court held that the issuance of any foreign patent containing claims “directed to the same invention as that [in a] U.S. application” precluded that invention from being patented in the United States. According to the court, requiring a review of whether particular claims were granted by foreign governments would unnecessarily embroil the PTO in the details of foreign law. Finally, the court found that the issuance date of foreign patents is the date on which patent rights became effective in those countries.

Non-Obviousness Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851) [617] The mere substitution of one material for another does not constitute a non-obvious invention. Hotchkiss applied for a patent on a doorknob made of clay or porcelain. Upholding the rejection of the application, the Court found that Hotchkiss’s idea consisted solely of using a new material. The court noted that porcelain knobs had been made before and that no new method was required to mount the porcelain knobs on doors. The dissent, taking a more pragmatic approach, found that the porcelain knob might have been patentable had it been cheaper or otherwise better than existing knobs. Graham v. John Deere Co., 383 U.S. 1 (1966) [631] The Court invalidated two patents for claiming inventions that were obvious under § 103.

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Graham applied for a patent on a plow whose blade was designed to flex in response to collisions against rocks and other hard objects in the soil. The patent, however, merely claimed an improvement on an existing plow also designed by Graham. The improvement consisted of a change in the attachment of the blade to the flexing mechanism. Whereas the old plow had a blade that was mounted on the upper face of a “hinge plate,” the new plow’s blade was mounted the underside of the plate. According to Graham, the new mounting increased the blade’s flexing ability of the blade. Although the new arrangement of components did not exist in prior art, the Court found that the improvement would have been obvious to one skilled in making plows. Cook Chemical Company held the patent on a single-use “overcap” that sealed pump-based dispensing containers. Cook, however, based it claim on the very particular way in which the overcap formed a seal against the rest of the container. After reviewing several patents on similar caps, the Court found Cook’s invention to be obvious. United States v. Adams, 383 U.S. 39 (1966) [653] Disclosures that teach away from an invention do not render that invention obvious. Adams held a patent on a wet-cell battery. Unlike previous wet-cell batteries, Adams’s battery used magnesium and cuprous chloride as the materials for the respective electrodes. The battery also used water as the electrolyte as opposed to the acid used in existing batteries. As a result, the battery could be shipped to users without the electrolyte and could be activated upon the addition of water. After reviewing the prior, the Court upheld the patent. No existing patent on a battery disclosed the use of water as an electrolyte or Adams’s particular combination of electrodes. Although some prior patent applications had mentioned the use of magnesium or cuprous ions (as opposed to cuprous chloride) in electrodes, those substances appeared only in lists of potential electrode substances. The Court pointed out that the Army’s initial rejection of Adams’s claims as to the performance of the battery supplied additional proof of non-obviousness. KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) [665] Teleflex held a patent on a gas pedal with an attached electronic sensor. The disputed claims stated that the electronic sensor was to be attached to a stationary support and was to sense the rotation of the

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pedal around its pivot. When KSR upgraded its own mechanical pedals with modular electronic sensors attached in more or less the same way, Teleflex sued for patent infringement. After reviewing the prior art, the Court found that several existing patents made Teleflex’s pedal obvious. One patent (the Asano patent) disclosed a fixed-pivot pedal similar to Teleflex’s pedal except for the presence of an electronic sensor. Existing literature disclosed that any electronic sensor would have to be mounted on a stationary portion of the pedal in order to avoid chafing the wires connected to the sensor. According to the Court, these two pieces of knowledge made it obvious that any electronic sensor would have to be implemented in the way used by Teleflex. Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 353 (Fed. Cir. 1997) [685] Refences that teach away from the invention indicate that the invention is non-obvious. Gene Larew invented a fishing lure which was made of plastisol (a plastic-like material) and which was impregnated with salt to attract fish. Although the prior art established that fish tended to like salty-tasting lures, there was no evidence that a lure like Larew’s had ever been produced. To the contrary, the prior art warned that mixing salt with plastisol could cause an explosion and that such a combination, even if successful, would tend to degrade the smooth texture of the lure and make it less attractive to fish. Existing methods of attracting fish included the use of perishable salty baits (such as pork rinds) and the use of organic attractants (which were not salty). After reviewing the prior art, the court found the district court to have erred in concluding that Larew’s lure was obvious on the basis that the separate components of the lure were known in the prior art. The court found that obviousness exists only where it would been obvious to combine those separate components “in light of all the relevant factors” in the art at the time of invention. The dissent disagreed, pointing to abundant evidence that salty lures tended to attract fish. The dissent found the recognized danger of adding salt to plastisol insufficient to defeat obviousness. In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009) [S89] Kubin applied for a patent on the DNA sequence for a protein known as the Natural Killer Cell Activation Inducing Ligand (NAIL). The rel-

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evant claim covered “[a]n isolated nucleic acid molecule comprising a polynucleotide encoding a polypeptide at least 80% identical to [the sequence of NAIL].” Kubin’s application was rejected on the ground that a previous patent (the Valiante patent) disclosed the same protein and thereby rendered Kubin’s claim obvious. The Valiante patent reported the existence of NAIL, though it called the protein “p38.” The Valiante patent further disclosed a “five-step cloning protocol for ‘isolating and identifying the p38 receptor.’ ” After reviewing the history of the “obvious to try” doctrine, the court found that Kubin’s application did not present a situation in which significant further experimentation was necessary to proceed from the prior art to the claimed invention. Rather, Kubin was only following steps that had already been detailed in a previous patent. Kubin’s claim was therefore obvious. Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir. 1986) [703] [Deal with this later.] In re Winslow, 365 F.2d 1017 (C.C.P.A. 1966) [724] In performing the obviousness analysis, courts should “picture the inventor as working in his shop with the prior art references . . . hanging on the walls around him.” Winslow had invented a machine that placed items inside plastic bags. The machine held each plastic bag by a series of rods passing through holes punched through one edge of each bag. The machine delivered a blast of air to open each bag. Re viewing three patents for similar devices, the court found Winslow’s machine to be obvious. One patent (the Rhoades patent) disclosed a machine that held bags using rods, though the bags were hung vertically in the Rhoades machine. Another patent (the Gerbe patent) disclosed a machine that opened bags with an air-blast mechanism, though that machine did not hold bags by means of rods. The court concluded that Winslow’s combination of features was an obvious step in light of the prior art. The dissent argued that Winslow had solved significant technical challenges which affected the Gerbe machine. The dissent noted in particular that the Gerbe machine tended to suffer from bag-against-bag friction, which made it difficult to open only one bag at a time.

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Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965) [731] Pending patent applications are prior art for the purposes of § 103. Robert Regis applied for a patent on an improvement to a microwave switch. The PTO rejected his application on the ground that another patent (the Wallace patent) made Regis’s invention obvious. The Wallace patent was pending when Regis filed his application and was granted forty-three days later. Even though Regis had no access to Wallace’s patent when he filed his own application, the Court nonetheless found Regis’s invention to be obvious. The Court found that the opposite holding might allow an inventor to profit from delays in the PTO’s examination process. In re Bass, 474 F.2d 1276 (C.C.P.A. 1973) [734] [Deal with this later] OddzOn Products, Inc. v. Just Toys, Inc., 12 F.3d 1396 (Fed. Cir. 1997) [745] An invention may be obvious under § 103 if the inventor derived the idea for the invention within the meaning of § 102(f). OddzOn held a patent on a football modified with tail fins. Just Toys, which sold a similar product, argued that OddzOn’s football was obvious because OddzOn’s inventor had gotten the idea for the football from a confidential communication with another inventor. Reviewing the language of § 103(c)(1), the court found that Congress, in curtailing the applicability of § 102 under limited circumstances, implicitly intended § 102 prior art to establish obviousness in all other cases. In re Foster, 343 F.2d 980 (C.C.P.A. 1965) [751] An inventor may lose the right to patent his invention if the patent application is filed more than one year after a publication within the meaning of § 102(b) renders the invention obvious. Foster filed for a patent on synthetic rubber compounds on August 21, 1956. He was able to show that the date of invention was prior to December 26, 1952 —some four years earlier. The PTO rejected the application on the ground that an August 1954 article made Foster’s invention obvious. After reviewing the history of obviousness in relation to the § 102(b) statutory bar, the court found that it would be anomalous to grant a patent where an inventor has “slept on his rights” and failed to apply

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for a patent even after a publication made his invention obvious. The dissent argued that there was no basis for believing that Congress intended to allow §§ 102(b) and 103 to be applied in conjunction, so that an invention can become obvious on the basis of a printed publication. In re Clay, 966 F.2d 656 (Fed. Cir. 1992) [765] Only prior art from an analogous field of work may support a finding of obviousness. Storage tanks for petroleum generally have a “dead volume,” which is the portion of the tank located below the outlet. The dead volume is problematic because its contents cannot be drained from the tank. Clay solved the dead-volume problem by filling the dead volume with a gel-like substance. The PTO rejected Clay’s application for a patent on his technique on the ground that another patent (the Sydansk patent) disclosed a similar use of gel. The Sydansk patent, however, disclosed the use of gel to fill in geological irregularities in order to facilitate the extraction of petroleum from the ground. Finding the Sydansk patent to solve a completely different problem from that in Clay’s application, the court upheld Clay’s claims. Merrill v. Yeomans, 94 U.S. 568 (1877) [782] The Court resolved a problem in construing the scope of a patent claim. The plaintiff held a claim to a “new manufacture of [ ] deodorized heavy hydrocarbon oils.” In the infringement dispute, the plaintiff argued that “manufacture” referred to the product itself while the defendant argued that the term referred only to the process for making that product. After reviewing the patent in detail, the Court found that “manufactured” meant “process.” Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) [788, 845] Claims are to be interpreted in the context of the specification. Phillips held a patent on modular wall panels. The panels, which were made of steel, could be welded together to form barriers that were resistant to physical damage and relatively soundproof. A key feature of the panels was the presence of “baffles,” internal structures that could deflect bullets and impede the flow of materials used to reinforce the completed walls. The district court found the claim to be limited to the

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particular arrangement of baffles within Phillips’s design. The Federal Circuit held this construction to be too narrow and reversed the district court’s finding of non-infringement. The dissent sharply criticized what it perceived to be the majority’s blind insistence on treating claim construction as an issue of law. The dissent argued that forcing the courts to construe claims only added to the confusion of patent litigation. Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) [829] The scope of a disputed claim is a question of law. Markman held a patent on an inventory-tracking system for dry-cleaning establishments. Markman’s system used a computer to generate and track barcoded tags, which remained attached to individual articles of clothing as they progressed through the dry-cleaning process. The infringement dispute centered on whether “inventory,” in the sense used by Markman, necessitated the ability to track the locations of individual pieces of clothing. Markman wanted the question to be settled by a jury while Westview wanted it to be settled by the court. Reviewing the history of infringement suits, the Court found no pattern indicating that the construction of claims devolved upon the jury. The Court therefore upheld the lower court’s understanding of the term “inventory.” Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc) [839] In accordance with its status as an issue of law, claim construction is to be reviewed de novo on appeal. The court rejected the view that claim construction was a “mongrel practice” which entailed some deference to the factual findings of the trial court. Dismissing this language as a mere “prefatory comment,” the court held that appellate courts had full discretion to review constructions of claims provided by lower courts. Concurrence remarked that “with respect to certain aspects of the task [of claim construction], the distict court may be better situated than we [appellate courts] are . . . .” The dissent criticized previous cases for setting up a hair-splitting distinction between a trial judge’s “understanding” of disputed claims and

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the judge’s “interpretation” of those claims. According to the dissent, the practical effect of treating claim construction as an issue of law was to defer decision-making to the Federal Circuit even though trial judges have better access to the facts. BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) [S105] Direct liability for infringement does not arise unless the infringer performs every step required to produce the patented process.

The Doctrine of Equivalents Winans v. Denmead, 56 U.S. 330 (1854) [849] A product that contains essentially the same limitations as a patented invention may infringe that patent despite falling outside the patent’s literal terms. Winans sought to enforce a patent on a railroad car for transporting coal. Unlike existing coal hoppers, Winan’s coal hopper was shaped like a cone. The shape of the coal hopper increased its load-bearing capacity and facilitated the unloading of the coal. Denmead produced a similar coal hopper that had an octagonal cross-section rather than a circular one. Applying the doctrine of equivalents, the Court found Denmead’s hopper to infringe Winan’s patent. “[T]o copy the principle or mode of operation described [in the patent],” said the Court, “is an infringement, although such copy should be totally unlike the original in form or proportions.” Warner-Jenkinson v. Hilton Davis Chemical Co., 520 U.S. 17 (1997) [856] The prosecution history of a patent affects the enforcement of its claims through the doctrine of equivalents. Where the PTO has limited the scope of an amended claim for a clear reason, then the patentee may not use the doctrine of equivalents to enlarge the scope of the claim. Where the PTO has not provided a clear reason for the limits of an amended claim, the patentee bears the burden of supplying a reason that comports with its interpretation of the claim. Hilton Davis sought to enforce a patent on a filtration process (ultrafiltration) for removing impurities from dyes. The relevant claim stated that the filtration process was to be carried out at a pH range of

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6.0 to 9.0. Hilton Davis apparently specified no limits on the pH when it first advanced the claim, adding the pH range only upon the insistence of the PTO. The reason for adding the upper limit of the range was clear—the addition was necessary to distinguish Hilton Davis’s process from a filtration process disclosed in another patent (the Booth patent). The reasons for adding the lower range, however, were unclear. Finding that the lower courts did not adequately consider the prosecution history and all factors relevant to the interpretation of Hilton Davis’s claims, the Court remanded the case for further proceedings. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002) [867] Amending any claim for the purpose of bringing that claim into compliance with a statutory requirement for patentability may place that claim within the reach of prosecution history estoppel. At the same time, prosecution history estoppel does not invariably bar the patentee from invoking the doctrine of equivalents against all equivalents whatsoever. Festo sought to enforce a patent on a magnetic rodless cylinder (a piston-like device used in a wide variety of machinery). Shoketsu (called “SMC” throughout the opinion) made a similar device that differed from Festo’s design in several respects, so that Festo relied on the doctrine of equivalents to support its claim of infringement. SMC argued that Festo could not invoke the doctrine of equivalents because Festo had amended the relevant claims to comply with § 112. Broadening the rule of Hilton Davis, the Court held that prosecution history estoppel applies to any claim amended to comply with requirements of patentability. “Estoppel arises,” said the Court, “when an amendment is made to secure the patent and the amendment narrows the patent’s scope. . . . [I]f a § 112 amendment is necessary and narrows the patent’s scope . . . estoppel may apply.” The Court, however, qualified the new rule by stating that “[t]here is no reason why a narrowing amendment should be deemed to relinquish equivalents unforeseeable at the time of the amendment and beyond a fair interpretation of what was surrendered.”

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Indirect Infringement Aro Manufacturing Co. v. Convertible Top Co., 377 U.S. 476 (1964) (Aro II) [909] Contributory infringement exists where a party knowingly distributes a product desigend to repair a patented invention. Aro manufactured and sold fabric fabric tailored to replace the convertible tops of certain Ford cars. The design of the Ford tops, however, infringed a patent held by Convertible Top. Upon learning that Aro was manufacturing such replacement tops, Convertible notified Aro that Ford had no license to use Convertible’s design. The Court found that any Aro tops manufactured after the notification date gave rise to contributory infringement. C.R. Bard, Inc. v. Advanced Cardiovascular Systems, 911 F.2d 670 (Fed. Cir. 1990) [916] A party may contribute to the infringement of a method patent by producing a device that allows users to practice the patented method. Advanced Cardiovascular Systems (ACS) sought to enforce a method patent on a technique for performing a coronary angioplasty. ACS argued that Bard’s perfusion catheter contributed to the infringement of the patent by allowing physicians to practice the patented technique. After analyzing the catheter’s design, the court found that the catheter did not invariably facilitate the practice of ACS’s patented method. Brown v. Duchesne, 60 U.S. 183 (1856) [923] A patent does not prohibit a foreign national from practicing the patented invention. Brown sought to enforce a patent on a gaff (a structure for supporting the sails on a boat). Brown argued that Duchesne (a French national) had infringed the patent by installing a similar gaff on a French vessel. The Court declined to find infringement on the ground that American patent law could not restrict the practice of a patent outside the United States. “The power [ ] granted [by patent law] is domestic in its character,” said the Court. “It confers no power on Congress to regulate commerce, or the vehicles of commerce, which belong to a foreign nation, and occasionally visit our ports in their commercial pursuits.”

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Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) [926] Only software associated with a medium for distribution constitutes a “component” under § 271(f). AT&T sought to enforce a patent on software for compressing recorded speech. Because the Windows operating system made use of the patented software, AT&T argued that Micorsoft had infringed the patent by allowing Windows to be installed on computers in Europe. Microsoft, however, did not provide those copies of Windows itself. Rather, it shipped only a single master copy to a European computer-maker, which then made its own copies of Windows. The Court held that Microsoft did not supply any component of a patented invention within the meaning of § 271(f). “[A] copy of Windows, not Windows in the abstract,” said the Court, “qualifies as a ‘component’ under § 271(f).” SEB v. Montgomery Ward, 594 F.3d 1360 (Fed. Cir. 2010) [assigned separately] Deal with this later.

Willful Infringement Panduit Corp. v. Stahlin Brothers Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978) [969] The court found that a “reasonable royalty” awarded as compensation for infringement must necessarily be higher than that attained in an actual negotiation between the patentee and licensee. Panduit obtained a patent on a covering duct into which wires could be snapped easily. Stahlin began to manufacture a competing duct of similar design. After years of litigation, Panduit obtained damages equal to a royalty of 2.5% on Stahlin’s sales of the infringing duct. Finding the award too low, the Sixth Circuit emphasized that any award of “reasonable royalties” must be sufficiently costly to the infringer to deter that infringer from appropriating a patented invention and sorting out the legal ramifications later. If damages were not high enough, said the court, an infringer would actually profit from its infringement since the worst result from litigation would be an order to pay the royalties that would have resulted from ordinary negotiations. The result would allow a substantial fraction of infringers to escape the payment of royalties altogether.

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Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995) (en banc) [985] In infringing a patent, the infringer may become liable for damages arising from lost sales of products not covered by the patent. Rite-Hite made two types of hooks designed to hold vehicles against loading docks. The first type, the MDL-55, was covered by the infringed patent. The second type, the ADL-100, was not covered by the patent. Kelley manufactured similar hooks, which infringed the MDL-55 patent but which also ate away Rite-Hite’s sales of the ADL-100 hook. In upholding damages to compensate Rite-Hite for lost sales of the ADL100, the court applied a standard of proximate causation in determining which damages were appropriate. Because Rite-Hite had shown that Kelley’s infringing product was the only substitute for the ADL100, one could reasonably conclude that Rite-Hite would have sold additional ADL-100 hooks in the absence of Kelley’s infringement. The dissent criticized the majority for taking an overly broad view of the damages authorized by the patent statute. Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) (en banc) [1029] Failure to consult counsel on the possibility of patent infringement and the refusal to disclose counsel’s opinions as to infringement are not grounds for imposing treble damages. Knorr-Bremse held a patent on a braking system for heavy trucks. Dana, collaborating with the Swedish company Haldex, produced a similar braking system. KnorrBremse notified Haldex that it believed Haldex was infringing its patent, and Haldex forwarded this information to Dana. Haldex consulted counsel as to the issue of infringement but ultimately refused to disclose its counsel’s opinion as to whether infringement had actually taken place. Dana did not consult counsel, apparently relying on the conclusion Haldex had drawn from its own consultations. Remanding the case for a redetermination of damages, the court found that a defendant may not be held liable merely for failing to consult counsel or for refusing to disclose its counsel’s opinion as to infringement. The opposite rule, said the court, would inhibit communication between counsel and client.

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Soverain Software L.L.C. v. Amazon.com, Inc., 383 F.Supp.2d 904 (E.D.Tex. 2005) [1040] A website can be marked for the purposes of the marking statute.

Administrative Correction and Reissue Superior Fireplace Co. v. Majestic Products Co., 270 F.3d 1358 (Fed. Cir. 2001) [1075] The Federal Circuit clarified the conditions that a patentee must meet in order to correct an error in an issued patent. Superior obtained a patent on a gas fireplace, one of whose claims stated that the firebox was to have rear walls as opposed to a rear wall. Superior apparently did not notice the typographical error until it sued another company for infringing the patent. Both parties to the suit agreed that no infringement would exist if the misspelled phrase were interpreted as-is. In disallowing Superior’s correction, the court noted that § 255 is designed to protect the public against typographical corrections that broaden the scope of claims. Because wall would allow Superior to sustain the suit for infringement whereas walls would not, Superior could not apply for the correction. Mentor Corp. v. Coloplast Inc., 998 F.2d 992 (Fed. Cir. 1993) [1079] A patentee may not seek to add new substantive claims to a reissue patent. Mentor held a patent on a condom catheter. As originally issued, the patent contained four claims directed to an adhesive that could be transferred from the outer surface of the catheter to the inner surface via rolling and unrolling of the sheath. In seeking the reissuance of the patent, Mentor sought to add four additional claims that did not address the adhesive. The court disallowed the reissue patent. A reissue patent, said the court, cannot give the patentee the power to prosecute the original patent de novo. Seattle Box Co. v. Industrial Crating & Packing, Inc., 756 F.2d 1475 (Fed. Cir. 1985) [1086] The Federal Circuit clarified the circumstances under which a reissue patent may “recapture” an invention from the public domain. Seattle Box originally obtained a patent on a packaging structure for oil pipes.

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The relevant claims stated that the “spacer blocks” separating each layer of pipes from the layer above were to be higher than the diameter of the pipes. Industrial Crating and Packing designed around this limitation by making its own spacer blocks 1/16 of an inch shorter than the diameter of the pipes. Seattle Box subsequently obtained a reissue patent, which altered the height requirement to state that the spacer blocks need only be “substantially equal” in height to the diameter of the pipes. Applying the doctrine of the personal intervening right, the court allowed Industrial to continue producing the spacer blocks that did not fall under Seattle Box’s original patent. The dissent characterized Industrial’s activities as bad-faith infringement and concluded that Industrial should not be entitled to equitable relief. Quantum Corp. v. Rodime, PLC, 65 F.3d 1577 (Fed. Cir. 1995) [1094] A patentee may not broaden the scope of a claim during reexamination. Rodime held a patent on a hard drive. As originally issued, the relevant claim covered “[a hard drive] having at least 600 concentric tracks per inch.” During reexamination, Rodime changed the claim to read “at least approximately 600 [tracks per inch].” The court invalidated the patent, finding the insertion of the word “approximately” to have broadened the claim in violation of § 305. “The addition,” said the court, “eliminates the precise lower limit of [the] range . . . [and] extends the scope of the range.” J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553 (Fed. Cir. 1984) [1106] [Inequitable conduct] can be established by any of four tests: (1) objective “but for”; (2) subjective “but for”; (3) “but it may have been”; and (4) PTO rule 1.56(a), i.e., whether there is a substantial likelihood that a reasonable examiner would have considered the omitted reference or false information important in deciding whether to allow the application to issue as a patent. The PTO standard is the appropriate starting point . . . . “Inequitable conduct” also requires proof of a threshold intent. . . . Once the thresholds of materiality and intent are established, the court must balacne them and determine . . .

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Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253 (Fed. Cir. 1997) [1111] The failure to disclose the pertinent claims in an existing patent may amount to inequitable conduct. Critikon held several patents covering the various features a safety catheter. During prosecution, Critikon failed to disclose an existing patent (the McDonald patent), which disclosed a catheter with features similar to those claimed by Critikon. Finding intent and materiality, the court held that Critikon’s failure to mention the McDonald patent amounted to inequitable conduct. “Critikon was intimately familiar with McDonald patent,” said the court. “[T]he record indicates that Critikon’s counsel was repeatedly confronted with the McDonald patent . . . which substantially overlapped the [patents held by Critikon].” Kinsgdown Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988) [1121] Symbol Technologies, Inc. v. Lemelson Medical, 227 F.3d 1361 (Fed. Cir. 2002) [1130]

Antitrust and Patent Misuse Brulotte v. Thys Co., 379 U.S. 29 (1964) [1262] A patentee may not charge royalties for the practice of an expired patent. Thys held several patents on an agricultural machine. Although the patents had expired, Thys continued to charge farmers a royalty for the use of the machine. The Court disallowed Thys’s licensing arrangements, finding them to violate the policy underlying patent law. “[The] rights [granted by a patent],” said the Court, “become public property once the [patent] expires.” The dissent argued that the expiration of the patent eliminated only Thys’s right to exclude others from making similar machines, not from charging fees for the use of the particular machines already in existence.

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Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172 (1965) [1275] Attempting to enforce a patent obtained by fraud may violate § 2 of the Sherman Act and give rise to treble damages under § 4 of the Clayton Act. Lear, Inc. v. Adkins, 395 U.S. 653 (1969) [1284] A licensee may not challenge the validity of patent if the terms of the license permitted the licensee obtain access to patent-related information that was not publicly available. MedImmune, Inc. v. Genentech Inc., 127 S.Ct. 764 (2006) [1291] Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220 (Fed. Cir. 1988) [1299] Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) [S111] After finding Microsoft to have infringed a patent issued to Lucent, the Federal Circuit discussed at length the method for calculating damages.