Intro to Novelty Patent Law Sept. 14, 2004. Newsflash!!

Intro to Novelty

Patent Law

Sept. 14, 2004

Newsflash!!

News FlashKnorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp.,

__ F.3d __ (Fed. Cir. September 13, 2004)(Newman, J.)

"[d]etermination of willfulness is made on consideration of the totality of the circumstances[.]“

The court also unanimously overruled earlier precedent to "hold that that no adverse inference that an opinion of counsel was or would have been unfavorable flows from an alleged infringer's failure to obtain or produce an exculpatory opinion of counsel."

It unanimously said "no" to the question: "When the attorney-client privilege and/or work-product privilege is invoked by a defendant in an infringement suit, is it appropriate for the trier of fact to draw an adverse inference with respect to willful infringement?"

Novelty § 102

A person is not entitled to a patentif the invention was:

• in the prior art (as defined by § 102 (a), (e), (g))

• barred under § 102 (b), (c), (d)

Base, with passageway

U-shaped bar

Cutting element attached to bar

Rotating handle at end of barCLAIM 1:ELEMENTS

Cheese Industry TodayNew Trends in Slicers

by J. Smith

Sample Publication

________________ New innovations _______________________________

______________various round, and____ .

______________ _______ Exciting : stainless steel

blades, , ___________ ________ ____________________

. The wire slides into a convenient

For tightened wire designs,

cutting bar shapes: U-shaped,

new cutting elements

tightened wire

attached to the bar passageway in the base.

tightening can be achieved by rotating the handle.

Cheese Industry TodayNew Trends in Slicers

by J. Smith

________________ New innovations _______________________________

______________various round, and____ .

______________ _______ Exciting : stainless steel

blades, , ___________ ________ ____________________

. The wire slides into a convenient

For tightened wire designs,

cutting bar shapes: U-shaped,

new cutting elements

tightened wire

attached to the bar passageway in the base.

tightening can be achieved by rotating the handle.

Rotating handle at end of bar

Cutting element attached to bar

Base, with passageway

U-shaped bar

Rotating handle at end of bar

Cutting element attached to bar

Base, with passageway

U-shaped bar

NOVELTY REQUIREMENTNOT MET:NO PATENTGRANTED

Claim Elements Claim Elements in Publication

Cheese Industry TodayNew Trends in Slicers

by J. Smith

Sample Publication: Revised

________________ New innovations _______________________________

______________various round, and____ .

______________ _______ Exciting : stainless steel

blades, , ___________ ________ ____________________

. The wire slides into a convenient

cutting bar shapes: U-shaped,

new cutting elements

tightened wire

attached to the bar passageway in the base.

Invention Compared with Prior Art

Rotating handle at end of bar

Cutting elementattached to bar

Base, withpassageway

U-shapedbar

SmithArticle

JonesPatent

AdamsSlicer

X X

X X

X X

INVENTIONNOT ANTICIPATEDNOVELTY REQT MET:

PATENT GRANTED

X

Novelty (Anticipation) [§ 102(a)] Versus Statutory Bars [§ 102(b)]

• Novelty/Anticipation concerned with NEWNESS – is it original to the patent applicant/patentee?

• Statutory Bars concerned with TIMELINESS – did the inventor file soon enough?

Critical Concept: the “Critical Date”

The Invention Date

Critical Concept: the “Critical Date”

The Invention Date

The Prior Art

Earlier Invention, Earlier “Critical Date,” LESS PRIOR ART

The Invention Date

The Prior Art

Conception: Summer 1886

Reduction to practice:

7/12/1886

Novelty Critical Date Example

Filed: 6/7/1889

Unpacking the “invention date”

4/8/81

The “Critical Date” for the

Patent Application

Texas Instruments places P.O. for 30,100 new chip carriers

Pfaff Files PatentApplication

7/81

Order Filled

Statutory Bar Example

4/19/824/19/81

4/8/81

The “Critical Date” for the

Patent Application

Texas Instruments places P.O. for 30,100 new chip carriers

Pfaff Files PatentApplication

7/81

Order Filled

Statutory Bar

4/19/824/19/81

“More than one year before” filing

In re Robertson

• Page 365

• Held: Claim 76 not anticipated

• United States Patent 5,279,604 Robertson ,   et al. January 18, 1994

Mechanical fastening systems with disposal means for disposable absorbent articles

• Abstract• A disposable absorbent article with a mechanical fastening system

having an additional fastening element so as to provide convenient disposal of the absorbent article. The mechanical fastening system preferably comprises a tape tab having a first fastening element, a landing member comprising a second fastening element engageable with the first fastening element, and an additional fastening element for allowing the absorbent article to be secured in a configuration that provides convenient disposal of the absorbent article. The additional fastening element preferably comprises a second fastening element affixed to the backing surface of at least one of the tape tabs

• Inventors: Robertson; Anthony J. (Blue Ash, OH); Scripps; Charles L. (Brookfield, WI) Assignee: The Procter & Gamble Company (Cincinnati, OH) Appl. No.: 918156 Filed: July 20, 1992

United States Patent 4,895,569 Wilson ,   et al. * January 23, 1990 Fastening system for a disposable absorbent garment having a tailored seam

The Invention Date: Robertson application filed

United States Patent 4,895,569 Wilson ,   et al. * January 23, 1990 Fastening system for a disposable absorbent garment having a tailored seam Filed: July 20, 1992

Wilson Patent Issued before the “Critical Date”

The Robertson Invention Date

The Prior Art

Wilson Patent is IN THE PRIOR ART

The Robertson Invention Date

The Prior Art

Securing Tab

Alternative Embodiment: No separate securing tab

In re Robertson

• Claim 76:“A mechanical fastening system for forming side

closures comprising[1] a closure member … comprising [a] a first mechanical fastening means, said [means]

comprising[i] a first fastening element . . .

[b] a landing member, comprising . . .[c] disposal means, comprising . . .

• Wilson reference– Closure member– Landing member– Disposal means with . . .

• 3rd fastening element?

• Wilson specification: “fasten rear pair of mating fastening members to one another . . .” p 368

• United States Patent 4,895,569 Wilson ,   et al. * January 23, 1990 Fastening system for a disposable absorbent garment having a tailored seam

• Abstract• A disposable absorbent garment (10) of the type having

opposed engageable waistband portions (14) separated by an intermediate portion (16), comprises a breathable elastomeric nonwoven fabric outer cover (12) and a superposable absorbent structure (32),

• Inventors: Wilson; John C. (Neenah, WI); Rajala; Gregory J. (Neenah, WI); Boland; Leona G. (Neenah, WI); Zehner; Georgia L. (Larsen, WI) Assignee: Kimberly-Clark Corporation (Neenah, WI) [*] Notice: The portion of the term of this patent subsequent to October 20, 2004 has been disclaimed.Appl. No.: 089647

• Filed: August 25, 1987