Survey of IP Outline

A. INTRODUCTION Patents

Patent section layout: Historical origins Overview of elements of patentability Substantive treatment of each of those elements Rules and doctrines concerning patent infringement Remedies in patent cases1. Historical Background P law began within the renaissance first real P system arose in Venice in 15th century Venetian Act lays out all the essential features of a modern P statute. National P system rooted in the Constitution The history of the US P system in the 20th century reflects wrings between greater and lesser protection. In 1982, Congress passed Federal Courts Improvement Act, creating the new Court of Appeals for the Federal Circuit which handles several important types of cases, but from the beginning one of its primary functions has been to hear all appeals involving Ps. Overall, Ps are more likely to be held valid now than in previous decades. It is generally easier to get an injunction against an infringer, although this is subject to pressure now that companies have emerged that specialize in acquiring and asserting Ps against large manufacturers. Overall, the perceived value of Ps has increased since the courts founding. 2. An Overview of the Patent Laws Requirements for Patentability - The Patent and Trademark Office (PTO) reviews each P application to see if it meets 5 requirements listed belowB. THE ELEMENTS OF PATENTABILITY1. Patentable Subject Matter: process, machine, manufacture, or composition of matter2. Novelty 102: no identical prior invention3. Utility 101: specific practical application4. Nonobviousness 103: inventive leap (not a trivial step) forward5. Enablement: description of the invention such that one of skill in the art would be able to practice it

Subject matter that is not patentable: Laws of nature Physical phenomena Abstract ideas

Patent Rights - Rights Conferred by a Patent A patent confers the right to exclude others from making, using, selling, offering for sale, or importing the claimed invention for the term of the patent Pre-1995 patent term is 17 years from the date of issue (generally) Post-1995 patent term is 20 years from the date of filing (generally) The claims determine the scope of the invention (how broad or narrow the coverage) The specification describes the invention, and often describes the prior art and gives examples1. Patentable Subject Matter: What types of inventions will be considered eligible for patent protection? 35 U.S.C. 101 Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

a. Composition of Matter Diamond v. Chakrabarty pg 132 product claim - (The proper distinction is not between living and non-living things, but rather between products of nature and human-made inventions)F: Genetically-engineered bacterium that could break down crude oil, a feature that was not possessed by any naturally occurring bacteria and could have significant value for the treatment of oil spills Legislative history supports a broad construction (anything under the sun made by man) Chakrabartys bacteria plainly qualify as patentable subject matter as a product of human discovery that does not occur in nature With regard to the Boards Plant Act argument: The Board argued that the two Acts addressing the patentability of engineered plants are evidence that living things are not patentable subject matter; plus one of the Acts specifically excludes bacteria as patentable subject matter The Court states that the Acts were enacted to dispel two notions that prevented artificially bred plants from being considered patentable subject matter: (1) even engineered plants were products of nature, and (2) qualities not amenable to written description requirement (color, scent) The Court conceded that the categories of patentable subject matter are left to the legislature; however once they have spoken, it is the courts that interpret that language the current language of 101 is applicable to microorganisms, evidence by the courts understanding and explanation of its decision Congress purposefully made the language of 101 broad because it intended to promote and protect that which is unforeseeable Parke-Davis & Co. v. H.K. Mulford Co.F: Inventor who worked for the plaintiff was granted two patents covering a medication that was superior over the predecessor medications because of its purity There is generally no objection to patent claims covering a process for extracting a natural product, as compared to a claim to the product itself Natural products that have been isolated and/or purified (i.e., modified from their natural state) may be patentable Difference between claims that seek to preempt the use of a fundamental principle and claims that seek only to exclude others from using a particular application of that fundamental principle (the latter is patentable subject matter)

Machine-or-Transformation Test: A claimed process is patentable under 101 IF:1. it is tied to a particular machine or apparatus, OR2. it transforms a particular article into a different state or thing

Two corollaries to the machine-or-transformation test:1. Mere field-of-use limitations are generally insufficient to render an otherwise ineligible process claim patent-eligible2. Insignificant post (extra)-solution activity will not transform an unpatentable principle into a patentable process Association for Molecular Pathology v. U.S. Patent and Trademark Office pg 140 Fed. Cir. 2011 Patent claim by Myriad on BRCA 1 and BRCA 2 which are breast cancer susceptibility genes Issue: Are human genes that have been identified and isolated patentable? Yes Holding: Reversed DC and found that isolated DNA is patentable -Isolated DNA is different than native DNA..isolated DNA contains just a fraction of naturally occurring DNA molecule (no you cannot have a patent on a gene, but you can on a CDNA) Misc: About to be heard in Supreme Court 1 Mayo Collaborative Services v. Prometheus Laboratories, Inc. Facts: Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012), was a case decided by the Supreme Court of the United States that held that claims directed to a method of giving a drug to a patient, measuring metabolites of that drug, and with a known threshold for efficacy in mind, deciding whether to increase or decrease the dosage of the drug, were not patent eligible subject matter.[1] The decision was controversial, with some parties claiming it frees clinical pathologists to practice their medical discipline, and other parties claiming that it destabilizes patent law and will stunt investment in the field of personalized medicine, preventing new products and services from emerging in that field.[2] The case arose in a dispute between Mayo Collaborative Services and Prometheus Laboratories concerning a diagnostic test. Mayo Collaborative Services is a for-profit[3] diagnostic testing lab offering diagnostic services that operates as a subsidiary of Mayo Foundation For Medical Education And Research,[4] which is a nonprofit corporation[5] affiliated with the Mayo Clinic. Mayo Collaborative Services does business as "Mayo Medical Laboratories", has 3,200 employees working in 58 laboratories and offers services worldwide.[6] Prometheus is a specialty pharmaceutical and diagnostics company in the fields of gastroenterology and cancer; it was bought by Nestl in 2011.[7] Prometheus sells diagnostic kits and also offers diagnostic services as a diagnostic testing lab. Holding: Claims directed to a diagnostic method that involved observing a natural correlation were not patent eligible subject matter. The process patent that Prometheus Laboratories had obtained for correlations between blood test results and patient health is not eligible for a patent because it incorporates laws of nature. Reasoning: Mayo again appealed to the Supreme Court, which agreed to take the case. It was argued on December 7, 2011 and the court handed down a unanimous decision on March 20, 2012.[1] The Supreme Court reversed the Federal Circuit and basically reiterated the findings of the District Court.[19][20] The court called the correlation between the naturally-produced metabolites and therapeutic efficacy and toxicity to be an unpatentable "natural law" and found the first two steps to be not genuine applications of those laws[, but] rather ... drafting efforts designed to monopolize the correlations.[1] (condensation of quote from Patently-O[19]) The court said, "Because methods for making such determinations were well known in the art, this step simply tells doctors to engage in well-understood, routine, conventional activity previously engaged in by scientists in the field. Such activity is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law."[1] Patently-O provides a succinct summary: "The conclusion is that (1) a newly discovered law of nature is itself unpatentable and (2) the application of that newly discovered law is also normally unpatentable if the application merely relies upon elements already known in the art."[19] The court seemed to be aware of the impact its decision would have on the diagnostics industry,[20] as it ended its decision by writing, "In consequence, we must hesitate before departing from established general legal rules lest a new protective rule that seems to suit the needs of one field produce unforeseen results in another. And we must recognize the role of Congress in crafting more finely tailored rules where necessary.... We need not determine here whether, from a policy perspective, increased protection for discoveries of diagnostic laws of nature is desirable."[1]b. Abstract Ideas pg 156 While general subject matter limitations are disfavored under section 101 (the products of nature rule being a notable exception), there are a number of judicially developed doctrines that limit the subject matter of patents. Of these, one of the most important is that rule against patenting abstract ideas. This rule appears to derive from the traditional idea that Ps are intended to cover devices or physical things in the useful arts, not more esoteric matters. The case that follows provides guidance from the Supreme Court on what constitutes an unpatentable abstract idea. BILSKI v. KAPPOS pg 158 Facts: Bilski v. Kappos, 561 U.S. ___ (2010), was a case decided by the Supreme Court of the United States holding that the machine-or-transformation test is not the sole test for determining the patent eligibility of a process, but rather "a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under 101."[1] In so doing, the Supreme Court affirmed the rejection of an application for a patent on a method of hedging losses in one segment of the energy industry by making investments in other segments of that industry, on the basis that the abstract investment strategy set forth in the application was simply not patentable subject matter. Procedure: Applicants were denied a patent by the Patent and Trademark Office (PTO) for claims pertaining to a process of managing risk in commodities trading. The PTO examiner deemed the invention not to be of patentable subject matter under 35 U.S.C. Section 101. The Board of Patent Appeals and Interferences affirmed the decision. On appeal, the U.S. Court of Appeals for the Federal Circuit affirmed. The court relied on Supreme Court precedent stating that an invention is patentable if: "1) it is tied to a particular machine or apparatus, or 2) it transforms a particular article into a different state or thing." Reasoning from this, it held that the applicants' invention clearly failed this test (machine-or-transformation test) and therefore did not constitute patentable subject matter. Issues: 1) Did the Federal Circuit err by using the machine-or-transformation test in determining patentable subject matter? 2) Does the machine-or-transformation test prevent patent protection for many business methods and thus contradict congressional intent that patents protect "methods of doing or conducting business." Hold: 1) No. 2) No. The Court held that the invention, in this case, could not be patented. More broadly, however, the Court held that business methods can be patented, even if does not pass the "machine or transformation" test. Reasoning: Legal provision: Patent Act The Supreme Court affirmed the Federal Circuit, holding that the applicants' claimed invention is not patent eligible. With Justice Anthony M. Kennedy writing for the majority, the Court reasoned that the Federal Circuit did not err when it used the "machine-or-transformation test" to determine patentability. However, the Court noted, in contrast to the Federal Circuit, that the machine-or-transformation test is not the sole test for determining patent eligibility. Justice John Paul Stevens, joined by Justices Ruth Bader Ginsburg, Stephen G. Breyer, and Sonia Sotomayor, concurred in the judgment. He disagreed with the majority to the extent it suggested that any series of steps that is not itself an abstract idea or law of nature may constitute a "process" within Section 101. Justice Stephen G. Breyer, joined by Justice Antonin Scalia, also concurred in the judgment. He noted his agreement with Justice Stevens' concurrence and also highlighted the extent to which the Court agreed on many fundamental issues of patent law raised by this case. In re BilskiF: Applicants challenged the denial of a patent application for a method of hedging risk in the field of commodities trading based upon the grounds that the subject matter was not patentable The Supreme Court has held that the meaning of process as used in 101 is narrower than its ordinary meaning A process claim is not patentable if it claims laws of nature natural phenomena abstract ideas The issue presented is whether the claims are directed to a fundamental principle (abstract idea) or a mental process AND, IF SO, whether substantially all uses of that principle would be preempted Purported transformations of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, nor are they representative of physical objects or substances.Mayo/Alice Test: 2 part testi. determine whether the claims at issue are directed to one of those patent-ineligible conceptsii. search for the inventive concept i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself2. UTILITY The P code protects all inventions that are novel, USEFUL, and nonobvious. Chemists often synthesize compounds that they believe might be useful someday for something but for which no particular use is known. When they apply for Ps on these compounds, they sometimes run headlong into the utility requirement, as the following case (Brenner) demonstrates.Utility35 U.S.C. 101Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.USPTO Guidelines for Utility: The asserted utility must be specific, credible and substantial The credibility element avoids the patenting of inventions that are fantastical if an invention is directed towards a certain function, it must be able to perform that function, otherwise it is not useful classic example is perpetual motion machine Examples of insubstantial, throw-away utilities are: complex device to be used as a landfill a costly and painstakingly derived compound to be used in shampoo or fish food

Brenner v. Manson Chemical Compound UtilityF: patent application was denied by the examiner for failure to disclose any utility for the chemical compound produced by the claimed process. The Court identified two questions with regard to utility as it relates to Brenner: Is a chemical process useful just because it works (produces the intended product)? Is a chemical process useful because the compound yielded belongs to a class of compounds that are the subject of serious scientific investigation? Justice Story stated: a useful invention is one that may be applied to a beneficial use in society, in contradistinction to an invention injurious to the morals, health, or good order of society, or frivolous and insignificant. The Court held that unless a process is refined and developed enough such that a specific benefit can be shown, there is insufficient justification to allow the monopoly provided by the grant of a patent Note: Brenner in many ways represents the HIGH-WATER MARK of the utility doctrine. Most applications of the doctrine have been quite limited in the hurdles they place before innovators. Certainly, any number of frivolous ideas are patented, suggesting that the burden of showing utility cannot be all that high. Thus, dont assume that Brenner can readily be extended by analogy In re FisherF: Applicants claims recite 7 uses for ESTs (Expressed Seq. Tags) he identified. The examiner and the Board of Appeals rejected applicants claims for failure to demonstrate a specific and substantial utility Applicant argues: that it does not matter that the function of the gene is not known because the specific usefulness of the invention is how the identified ESTs can be used says that support for his argument is found in the general commercial success of ESTs Government argues: the uses for the ESTs claimed by applicant are applicable to all ESTs and are only a starting point for further research, the end result of which may be patentable The Federal Circuit affirmed the Boards decision The ESTs are research intermediates, i.e., tools used to conduct further research, and the end result of such research may not reveal any useful discovery Note on the Patent Office Utility Guidelines pg 185 Note on Moral Utility pg 187 The fight against immoral inventions was not limited to patents for gambling devices. Another line of cases denied patents for inventions that could be ued only to defraud. These cases are reviewed and rejected in the following case Juicy Whip. Juicy Whip v. Orange Bang: Moral UtilityF: Patent at issue covers a juice dispensing system- glass bowl on top really just circulates an undrinkable liquid- the actual juice is dispensed from tanks hidden below the glass bowl display Rickard invention was a process for treating tobacco leaves so that they appeared spotted; at the time spotted leaves were thought to be superior; the process did not actual improve the quality of the leaves and so the only purpose of the invention was to defraud the consumer Aristo Hosiery patent claimed a seamless stocking with a structure on the back that imitated a seam; at the time, seamed stockings were considered to be of higher quality; the structure did not actually improve the quality of the stocking, resulting in a deception to the consumer Federal Cir. Holding: 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 The fact that consumers believe that they are receiving fluid directly from the display tank, even deceptively so, is not by itself sufficient to render the invention unpatentable for lack of utility

4. Novelty and Statutory Bars: Old Law and New pg 226

1952 Act: 35 U.S.C. 102. Conditions for Patentability; Novelty and Loss of Right to PatentNovelty and Statutory Bar35 U.S.C. 102:A person shall be entitled to a patent unless a. Noveltya. A person shall be entitled to a patent unless a. the invention was known or used by others in this country, ORb. patented or described in this or a foreign country, before the invention thereof by the applicant for patent

b. Statutory Bar A person shall be entitled to a patent unless the invention was patented or described in a printed publication in this or a foreign country, OR in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States [critical date]*An inventors own work can be cited against her.

35 U.S.C. 102(a)a. The Nature of Novelty Rosaire v. National Lead Co.F: Plaintiff held patents relating to methods of prospecting for oil or other hydrocarbons, and sued defendant for infringement. Defendant argued: invention was practiced by Gulf Oil before the date of plaintiffs invention; the patents are therefore invalid under 35 U.S.C. 102(a) (known or used by others in this country) Gulfs work was done openly in the ordinary course of business, with no effort to keep the activities a secret No affirmative act to bring the work to the attention of the public is required by statute Plaintiffs patents are invalid under 102(a)Corroboration Requirement: Supreme Court Guidelines When Determining Prior Use In The U.S. By Testimony Physical record of events Relationship of witnesses to party claiming prior use Length of time between prior use and date of claimed invention Evidence of abandonment

Note on The Inherency Doctrine The issue of inherency arises when one unintentionally and accidentally produces a product, which may anticipate a later invention that intentionally produced the same product Accidental and unwitting production of a product, while in the pursuit of other and different results, without knowing what was being done or how it was being done cannot be anticipatory Inquiry is the invention in the prior art in a way that provides a public benefit?

35 U.S.C. 102(b)b. Statutory Bars: Publications Recall from the introduction to this section that one difference between statutory bars under the 1952 Act (which we cover in this subsection) and novelty is that an inventor can create a statutory bar by her own actions (e.g., publication of an article), whereas she cannot destroy the novelty of her own inventions. In short, an inventorys own work cannot be cited against her (in general) under section 102(a), but it is fair game under section 102(b) Notwithstanding this fact, for many purposes the two provisions are not appreciably different. For example, the definition of publication a term you will recall occurs in both sections 102(a) and (b) is the same for both. Thus, although the following case involves a section 102(b) reference, the reasoning is equally applicable to cases decided under section 102(a) In re Hall pg 237 - dPublicness standard In general, a publication becomes public when it becomes available to at least one member of the general public. F: Patent claims were rejected under 35 U.S.C. 102(b), with the prior publication being a doctoral thesis. Patent filing date was February 27, 1979 critical date is February 27, 1978 Testimonial evidence showed that university policy was to make dissertations available to the public by cataloguing them and placing them in the main library collection after receiving them from the faculty Holding: Rejection of the claims was affirmed The proponent of the publication bar must show that prior to the critical date, the reference was sufficiently accessible at least to the public interested in the art, such that one skilled in the art could make the claimed invention without further research or experimentation by examining the reference Routine business practice to show the performance of a specific act is sufficient evidence to establish a prima facie case

c. Statutory Bars: Public Use Egbert v. Lippman pg 237F: Plaintiff sued defendant for infringement of a patented improvement in corset springs. Gave gf a pair in 1955 and another in 1958 Holding: The inventor allowed another to use the invention for more than the statutorily allowed time, with no restrictions public use The use of one patented article is sufficient for public use Whether or not the invention can be seen by the public eye is not determinative

On-Sale Bar Two conditions must be satisfied before the critical date: 1) the product must be the subject of a commercial offer for sale 2) the invention must be ready for patenting proof of reduction to practice before the critical date, OR proof that prior to the critical date, the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable one skilled in the art to practice the invention

If the invention is being used in a good faith test (experimental use) in the public eye, there is not public use

EXPERIMENTAL USE FACTORS: Necessity for public testing Amount of control retained by the inventor during the experiment The nature of the invention The length of the test period Whether payment was made Whether there was an obligation of secrecy Whether records were kept Who conducted the experiment The degree of commercial exploitation during testing Whether the invention reasonably requires evaluation under actual conditions of use Whether testing was systematically performed Whether there was continual monitoring by the inventor The nature of contacts made with potential customers

d. The Experimental Use Exception City of Elizabeth v. American Nicholson PavementF: Inventor developed a new and improved wooden pavement system, which he installed by a toll house on a portion of a public road. Inventor stated that he chose this location to test the usefulness and durability of his invention because it was a high-traffic area. The inventor checked the system almost daily for six years and asked the toll house keeper questions about it The use of an invention under the control of the inventor for experiment in order to bring the invention to perfection is not a public use of the invention long periods of time may be necessary public experimentation may be necessary improvements are not required to show experimental testing the public may derive an incidental benefit from the testing

e. Priority Rules and the First to Invent Under the 1952 Act pg 248Priority35 U.S.C. 102(g) Prohibits B from obtaining a patent if A made the same invention in the US before B did, and A did not abandon, suppress, or conceal the invention.

Priority General Rules: First to reduce to practice and not abandon gets priority First to conceive and last to reduce to practice gets priority IF continual and reasonable due diligence, which is measured beginning from the time just prior to second conceivers conception date Conception The formation in the mind of the inventor of a definite idea of a complete and operative invention as it is thereafter reduced to practice Requires a certain degree of specificity A person of ordinary skill in the art could reduce to practice without undue experimentation Reduction to practice Get the invention to work for its intended purpose Actual Building a model Making a drawing Constructive Filing an enabling patent application (model not required) where you explain it

Griffith v. Kanamaru pg 249F: Kanamaru holds a patent directed to a chemical compound useful in the treatment of diabetes. Griffith claims that he has priority over Kanamaru for the same invention June 30, 1981 Griffiths conception January 11, 1984 Griffiths reduction to practice June 15-September 13, 1983 lapse in work by Griffith November 17, 1982 Kanamarus filing date Holding: The reasonable diligence standard balances the interest in rewarding and encouraging invention with the publics interest in the earliest possible disclosure of innovation Reasonable excuses for inactivity in reduction to practice are generally those that are everyday problems and limitations encountered by an inventor (person), i.e., hardships Waiting for a student who does not possess a unique skill related to the research is not reasonable when there is otherwise no shortage of staff Waiting for outside funding is not a reasonable excuse

Patent Prosecution: Patent Applications provisional application a placeholder application non-provisional application complete application

Patent Application Parts specification describes (enables) the invention, often discussing the prior art and providing examples and/or drawings of the claimed invention claims set the scope of the invention independent claims broad claims dependent claims narrower claims, which depend from (contain all elements of) their independent claim oath declares that the named inventor(s) actually invented what is claimed

First Year After Filing (application not yet examined) application is assigned to an art unit based upon the technology applicant may file Information Disclosure Statement (prior art references) applicant may file Preliminary Amendment examiner searches the prior art

First Office Action patent may be granted (unlikely) parts of the application are rejected, usually the claims reasons for each rejection must be stated and explained

Applicants First Response accept the rejection delete and/or amend claims argue against (traverse) the rejection argue for the validity/patentability of the claimed invention delete and/or amend claims can also amend the specification, but newly disclosed material will not benefit from filing date

Applicants Response After Final Rejection file an Amendment After Final Rejection file a Continuation continuation application essentially starts everything over again with the benefit of the original filing date continuation-in-part application starts again with newly added material, which does not benefit from the original filing date file an Amendment After Final Rejection and a Continuation appeal to the Board of Patent Appeals and Interferences

Examiner interviews, by phone or in person, may occur throughout prosecution Prosecution generally ends when a patent issues or is abandoned

American Inventors Protection Act of 1999 U.S. patent applications that cover inventions that will be the subject of foreign patent applications are published 18 months after filing The holder of a published application acquires certain provisional rights as of the date of publication when the patent issues, the patentee can recover a reasonable royalty from an infringer IF the infringer had actual notice of the published application AND the claims of the issued patent are substantially identical to that of the published application injunction is not a remedy

Invention Disclosure:Enablement and Written Description35 U.S.C. 112The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Enablement: A disclosure is enabling IF it would allow a person of ordinary skill in the art to practice the invention without undue experimentation. Factors to determine undue experimentation: quantity of experimentation amount of direction or guidance provided presence or absence of working examples nature of the invention state of the prior art relative skill of those in the art predictability of the art breadth of the claims

Written Description: Applicant must show that he was in possession of the invention as of the filing date compare original disclosure to final claims to determine whether the application stated in the disclosure that the specific elements of the claims were important aspects of the invention The written description requirement is more restrictive than the enablement requirement. A disclosure may teach one skilled in the art how to practice the invention, but if it does not describe each element of the claims, the written description requirement will not be satisfied.

Gentry Gallery Inc. v. Berkline GroupF: Plaintiffs patent was directed to a sectional sofa that had two parallel reclining seats separated by a console. Defendant manufactured a sectional sofa that had two parallel reclining seats with a seat in between the two, the back of which could fold down During prosecution, plaintiff distinguished its sofa from a prior art reference, which was directed to a sofa that had two parallel reclining seats with a seat in between that had a tray on its back The court found that defendants sofa was like the prior art and, therefore, did not infringe plaintiffs patent The court stated that an applicant complies with the written description requirement by describing the invention, with all its claimed limitations and plaintiffs disclosure did not describe the option of placing the controls somewhere other than the console

Best Mode: The best mode requirement is designed to prevent a patentee from holding back certain knowledge from the public, effectively maintaining part of the invention as a trade secret while protecting the whole of the invention under patent law Best mode violations are found where there is either: a failure to disclose a preferred embodiment, OR a failure to disclose a preference that materially affects making or using the invention Factors to consider to determine a violation whether the inventor had a best mode at the time of filing whether the disclosure is adequate to enable one of ordinary skill to practice the best mode

5. Nonobviousness pg 257Nonobviousness35 U.S.C. 103A patent cant be obtained if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

Major Difference Between Anticipation (102) and Obviousness (103) For a prior art reference to make a claimed invention unpatentable for lack of novelty (102), the reference must disclose ALL elements of the inventions (anticipation) A single reference need not disclose all elements of a claimed invention for the invention to be found unpatentable under 103 as being obvious To find obviousness, prior art references may be combined; BUT, there must be a reason to combine them Factual inquiries underlying the question of law of obviousness (Graham ): scope and content of prior art differences between prior art and claims at issue obviousness and nonobviousness of the subject matter

Secondary Considerations commercial success long felt but unsolved needs failure of others awards and praise skepticism, teaching away, and unexpected results licensing activity copying advances in collateral technology near simultaneous invention Obvious to try: An invention that was obvious to try is not obvious when: one must vary all parameters (try numerous possible choices) until one possibility arrives at a successful result, and the prior art gives either no indication of which parameters are critical or no direction as to which of the many choices may be successful

Inverse notion: one skilled in the art merely pursues known options from a finite number of identified, predictable solutions

Graham v. John Deere Co.F: The device, which was a combination of old mechanical elements, was designed to absorb shock from plow shanks as they plow. Plaintiff obtained a first patent, and then obtained a second patent based upon an improvement. 5 prior patents indicating the state of the art were cited by the PTO during the prosecution of plaintiffs patent The district court and the court of appeals found that the prior art taken together contained all of the mechanical elements of plaintiffs invention, and one prior-use device alone contained all of the elements Holding: The Supreme Court first focused its analysis on plaintiffs first patent as prior art, agreeing with the patent examiner that the improvement was a matter of design well within the expected skill of the art and devoid of invention With regard to the prior-use device that contained all elements of plaintiffs invention, the Court found that rearranging the elements to produce the same function did not meet the requirements of nonobviousness

a. Combining References pg 269 To anticipate a patent application under section 102, a single prior art reference must disclose every element of what the patentee claims as his invention. If a prior art reference does not disclose all the parts of an invention, it does not anticipate the application. Under section 103, however, a single reference need not disclose the entire invention to bar a patent. Thus, section 103 asks whether a researcher who is aware of all the prior art would think to create the claimed invention. In deciding the question of obviousness, it is sometimes permissible to analyze a combination of ideas from different sources of prior art (known as prior art references). KSR International Co. v. Teleflex Inc.F: Plaintiffs invention is directed to a mechanism for combining an electronic sensor with an adjustable automobile pedal such that the pedals position can be transmitted to a computer that controls the throttle in the vehicles engine A patent composed of several elements is not proved obvious merely by demonstrating that each of the elements was, independently, known in the prior art It is important to identify a reason that would have prompted one of ordinary skill in the art to combine the elements in the way the claimed invention does (away with the TMS (teach, motivate, suggest) test) If a person of ordinary skill can implement a predictable variation, 103 likely bars patentability The court found that, based upon the prior art, it would have been obvious to a pedal designer of ordinary skill to put a sensor on a fixed pivot point of an adjustable pedal assembly

In re KubinF: Applicants invention is directed to the isolation and sequencing of a human gene that encodes a particular part of a protein The court agreed with the Board that one skilled in the art would have recognized the benefits of isolating the protein and determining its sequence because of the important role protein plays in immune function, and this can be done by conventional methods

b. Secondary Considerations

D. INFRINGEMENT

1. Claim InterpretationPatent Infringement35 U.S.C. 271(a)Whoeve makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

Map of Steps Rule Literal infringement Exception Doctrine of equivalents Exception Prosecution history estoppel Exception Equivalent not reasonably foreseen

Literal infringement every element of the claim is present in the accused device Infringement by equivalents (Doctrine of Equivalents) a substantial equivalent of every element of the claim is present in the accused device 2-Step Infringement Analysis1. properly construe the claims2. compare claims to the accused product/process

Types of Evidence1. intrinsic patent and prosecution history claims themselves specification prosecution history2. extrinsic information other than the patent and prosecution history dictionaries, technical texts testimony

Canons of Claim Interpretation Ordinary v. Contextual (Particular) Meaning Presumption that the meaning of a claim term is its ordinary and customary meaning From the perspective of one of ordinary skill in the art At time of the invention (filing date) Despite starting with the ordinary meaning, claim terms are interpreted within the context of the patent Lexicographer Rule- patentees can define claim terms as they wish

Disclaimer of Subject Matter- patentees can affirmatively disclaim a certain meaning of a claim term through language in the specification or statements made during prosecution

Claim Differentiation- contextual meaning from other claims when different terms are used in separate claims, a difference in meaning is presumed still look to intrinsic evidence to determine if the patentee is using the terms interchangeably

Purpose of the Invention- one may look to the purpose of the invention to interpret a claim term such that the meaning of the term promotes the purpose of the invention

Preserving Validity Claims should be construed, if possible, to preserve their validity This doctrine is less often used in light of Markman

Narrow Construction Preferred When there are two plausible meanings for a claim term, the narrower interpretation should be chosen Compare to MPEP 2111.01, which states that during examination, the claims must be interpreted as broadly as their terms reasonably allow

Comprising v. Consisting of Comprising: the named elements are essential to the invention, but other elements may be added and still form a construct within the scope of the claim Consisting of: complete accounting of the elements of the inventionb. Standards for Construing Claims; Sources of Construction pg 298 Phillips v. AWH CorporationF: Plaintiff held a patent directed to modular steel-shell panels that can be welded together to form vandalism-resistant walls The claim term at issue was baffles While the specification discusses positioning the baffles to deflect projectiles, that is just one embodiment of the invention The specification also teaches other purposes for the baffles, such as providing structural support Intrinsic evidence is the best source of information to use when interpreting claims; first the patent (specification and claims) and then the prosecution history Extrinsic evidence can be very useful, but poses the risk that it will be used to change the meaning of the claim terms2. Literal Infringement 35 U.S.C. 271 gives the patentee an infringement cause of action against anyone who makes, uses, sells, offers for sale, or imports the invention described in the claims of the patent. This right runs from the day the patent is issued until the end of the patent terms (formerly 17 years from the day of issue, now 20 years from the day the patent application is filed). Because a patent is defined in terms of its claims, a patent infringement lawsuit is reolved by comparing the claims of the patent to the accused product. Larami Corp. v. AmronF: Amron asserted that Laramis line of SUPER SOAKER water guns infringes its patent Claim 1: toy comprising an elongated housing having a chamber therein for a liquid . . . The court found that the SUPER SOAKER has an external water reservoir/chamber that is detachable from the gun housing and not contained in the housing; therefore, the product does not infringe

3. The Doctrine of Equivalents pg 328 Doctrine of Equivalents: Supreme Court Tests Triple Identity Test: the accused devise performs substantially the same function in substantially the same way to obtain substantially the same result (Graver Tank v. Linde Air Prods. 1950) All Elements Rule: analyze the role played by each element in the claim and inquire whether the substitute element matches the function, way and result of the claimed element or if they are substantially different (Warner-Jenkinson v. Hilton Davis Chemical 1997) Foreseeability Bar: a patentee is barred from seeking doctrine of equivalents protection for any subject matter it should have known it was giving by amending the claims (Festo, 2002)

Doctrine of Equivalents: Considerations The proper time frame for evaluating equivalency is at the time of infringement After-arising technologies (developed after the date of the claimed invention) challenge the definition of an element of the claimed invention Prosecution History Estoppel: The presumption that an element of a claim was narrowed during prosecution of the patent to meet the requirements of patentability and thus that subject matter cannot be recaptured under the doctrine of equivalents, the patentee may rebut this presumption by showing that the amendment was for another purpose The status of this presumption, and the doctrine of prosecution history estoppel generally, was the key issue in the FEST case decided by the SCT. Festo Corp. v. Shoketsu Kinzoku KogyoF: owns two patents directed to piston-driven devices that use magnets to move objects in a conveying system. amended the applications to meet the examiners objections and added prior art references Defendants product uses a single sealing ring with a 2-way lip and the outer shell is made of a nonmagnetizable alloy Plaintiff sued for infringement under the doctrine of equivalents Defendant argues: plaintiff is estopped from applying the doctrine of equivalents to subject matter added during prosecution because the amendments narrowed the invention, surrendering alternatives to the elements Holding: The patentees narrowing amendments were made in order to overcome a 112 rejection and possibly also to avoid the prior art and, therefore, it has not rebutted the presumption that prosecution history estoppel applies Estoppel arises when an amendment is made to secure the patent and the amendment narrows the patents scope A proper analysis requires an examination of the subject matter surrendered during prosecution, and such an inquiry is omitted with a complete bar The purpose of the doctrine of equivalents that language is imperfect and copyists should not be permitted to make insubstantial changes and substitutions that add nothing but take the copied matter outside the scope of the patent is still present even with a narrowing amendment

The patentee bears the burden of proving that the narrowing amendment does not surrender the particular equivalent in question

Instances where the equivalent may not have been surrendered it was unforeseeable at the time of the application (after-arising technologies) the reason for the amendment may bear no more than a tangential relation to the equivalent some other reason why the patentee could not reasonably have described the equivalentc. Subject Matter Disclosed But Not Claimed pg 345 Even before the SCT issued its opinion in FESTO, the Federal Circuit decided another en banc case that could significantly restrict the scope of the doctrine of equivalents: the doctrine of dedication to the public domain. Along with FESTO, the JOHNSON & JOHNSON case represents another important inroad on the doctrine. As you read the case, consider where patentees and infringers are left in the wake of these 2 decisions. Johnson & Johnson Associates v. R.E. Service Co.F: owns a patent relating to the manufacture of circuit boards in a manner that prevents most of the damage caused by manual handling. The claim at issue-an aluminum sheet is used in the invention. manufactured circuit boards using a sheet of steel instead of a sheet of aluminum Defendant argued: the specification of plaintiffs patent disclosed the use of a steel sheet, but the plaintiff did not claim a steel sheet; therefore, the use of a steel sheet was dedicated to the public Precedent holds that when a patentee discloses subject matter, but declines to claim it, he has dedicated the unclaimed matter to the public Application of the doctrine of equivalents to recapture subject matter deliberately left unclaimed would be contrary to the rule that the claims define the scope of the invention and the patentees exclusive rights Additionally, patentees could then narrowly claim an invention to avoid patentability issues and then, after the patent issues, use the doctrine of equivalents to establish infringement based upon the broad disclosure of the specification A patentee who fails to claim disclosed subject matter may still have a remedy within 2 years from the grant of the original patent, a patentee may file a reissue application and attempt to broaden the scope of the original claims to include the disclosed subject matter the patentee may file a continuation application IF all applications in the chain have not yet issued or abandoned

Infringement by Inducement35 U.S.C. 172(b)

Whoever actively induces infringement of a patent shall be liable as an infringer.

** While 271(b) does not provide for a requirement of intent, the judiciary and legislative history have set such a requirement

Contributory Infringement35 U.S.C. 271(c) Have to produce a product that is specifically going to be used in the product/process (knowledge/intent) Sale of a component for use in practicing a patented device or composition or the sale of a component for use in practicing a patented practice Cant be a staple article of commerce capable of substantial non-infringing use

C.R. Bard Inc. v. Advanced CardiovascularF: Plaintiff holds a patent directed to a method for using a catheter during an angioplasty procedure. Defendant markets a catheter for use in angioplasty. Plaintiff sued for infringement Plaintiff argues that a surgeon placing one of defendants catheters into the coronary artery would infringe its patent and thus defendant is liable for contributory infringement Statutory requirements to find contributory infringement in this case: 1) defendant sells a catheter for use in practicing the claimed method 2) the catheter constitutes a material part of the invention 3) defendant had knowledge that the catheter is made or adapted for use in infringing the patent 4) the catheter is not a staple article or commodity of commerce suitable for substantial noninfringing use Three possible fact patterns that may arise while using defendants catheter: Because there are substantial noninfringing uses for defendants catheter, summary judgment in favor of plaintiff was not warranted Plaintiff also asserted that defendant induced infringement by: providing detailed instructions on how to use the catheter in a manner that infringed the patent positioning the side openings in a place on the catheter so as to allow a user of the catheter to infringe the patent Federal Circuit held that because a genuine issue of material fact exists, a grant of summary judgment in favor of plaintiff was not appropriate (remanded)

Infringement Defenses Common Law Experimental Use Defense - Judicially-created defense to infringement, allowing for the unlicensed use of a patented invention for the purpose of pure scientific inquiry Statutory Experimental Use Defense allowing for the use of a patented invention for FDA-related experimentation 35 U.S.C. 271(e)(1) It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs. Inequitable Conduct- Failure to disclose material information OR submission of false material information, with an intent to deceive renders the entire application unenforceable Exhaustion of Patent Rights- The initial authorized sale of a patented item terminates all patent rights to that item When we as consumers, purchase items that are covered by patents and use that product, we cannot be liable for infringement

Kingsdown Medical Consultants v. HollisterF: Plaintiffs patent had a long and complex prosecution, involving 118 claims handled by in-house counsel. In a continuation application, which was filed by outside counsel, it was incorrectly represented to the patent office that claim 43 corresponded to allowed claim 50 of the parent application. Claim 50 had been narrowed during prosecution of the parent application to overcome a 112 rejection. The continuation application was filed with the rejected, not the accepted, version of claim 50 Upon being sued for infringement, defendant asserted that plaintiffs patent was unenforceable due to inequitable conduct The district court found plaintiffs patent unenforceable because of inequitable conduct based upon:1. gross negligence (mistake regarding claim 50)2. acts indicating intent to deceive (plaintiffs attorney saw defendants device prior to filing the continuation application) Federal Circuit Holding:1. Gross negligence does not itself justify an inference of intent to deceive2. There were several undisputed facts showing the relative ease of plaintiffs mistake in the continuation application with regard to claim 503. There is nothing proper, illegal or inequitable in filing or amending a patent application for the purpose of obtaining a right to exclude a known competitors product from the market

Quanta Computer v. LG ElectronicsF: LG licensed to Intel the right to the inventions of certain patents relating to microprocessors. In a separate agreement, Intel agreed to give written notice to its customers that the license does not extend to any product made by the customer that combined the Intel product with another product. Quanta purchased microprocessors from Intel and received this notice. Quanta manufactured computers using the Intel parts in combination with non-Intel parts in ways that practice the LG patents. LG sued Quanta for infringement Does the doctrine of patent exhaustion apply to method claims? The Court held that while it is true a patented method cannot be sold in the same way as an article, methods may be embodied in a product, the sale of which exhausts the patent rights To allow an end-run around exhaustion by following LGs logic would violate the long-standing principal that once a patented item is made and sold, there is no restriction on its use To what extent must a product embody a patent in order to trigger the doctrine of patent exhaustion? The Court found that the microprocessors that made up the Intel products substantially practiced the LG patent claims because everything inventive in each patent is substantially embodied in the Intel products The only thing necessary to practice the patents is the application of common processes or the addition of common parts Was Intels sale to Quanta an authorized sale sufficient to trigger the doctrine of patent exhaustion? The Court found that Intels authority to sell its products embodying the LG patents was not conditioned on the notice or on Quantas decision to abide by that notice the sale constituted an authorized sale, and the doctrine of exhaustion applies

Copyright

THE PURPOSE AND NATURE OF COPYRIGHT LAW: To stimulate the creation and dissemination of as many works of authorship as possible, in order to benefit the public. The law does this by giving creators of works of authorship-limited rights in their works. Copyright never gives rights in the idea being expressed or in facts or other elements of the public domain that the author may have incorporated into the work. 102(a). Copyright protection subsists in original works of authorship fixed in any tangible medium of expression original work of authorship fixation formalities In the modern day, needed to a very limited extent. Not so much limited, not a high hurdle today.Overview: Copyrightable Subject Matter spans a broad range of literary and artistic expression; ideas are not copyrightable, but an authors expression of an idea is copyrightable Threshold for Protection a modicum of originality AND fixture in a tangible medium of expression Authorship and Ownership the author (creator) or owner (transfer of rights) must file for infringement; for works made for hire, the commissioner of the work is the author/owner Duration of Copyright lifetime of the author + 70 years 95 years from publication or 120 years from creation, whichever is first (anonymous works, pseudonymous works, works for hire)

Formalities procedural requirements imposed on authors that are necessary to obtain copyright protection but do not relate to the substance of the copyright (notice, publication, registration, and deposit)

* The Copyright Office functions more like a title registry office. A copyright is protectable at the moment the work is created. Requirements for a Copyright: 17 U.S.C. 102(a) Original works of authorship Originality= Independent Creation Modicum of Creativity Section 101 A compilation is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship Facts are not copyrightable But original compilations are Fixed in any tangible medium of expression, now known or later developed To be afforded federal copyright protection, the work must be embodied in some stable form such that it can be perceived in some way by others An unfixed work of authorship may be subject to protection under state common or statutory law From which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

Works of authorship include the following categories:(1) literary worksa. works other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, films, tapes, disks, or cards, in which they are embodied (17 U.S.C. 101)b. words and short phrases, such as names, titles and slogans, are excluded because they do not meet the minimal requirements of authorship

(2) musical works, including any accompanying wordsa. includes individual musical compositions, sound recordings, musical dramatic works, motion picture sound tracks, audiovisual works such as sound effectsb. owners of musical composition receive the right of public performancec. sound recording receive the right of digital performance, but not public performance

(3) dramatic works, including any accompanying music

(4) pantomimes and choreographic works: portrayal of a story by dialogue or actinga. simple dance steps (choreography) and conventional gestures (pantomime) are excluded

(5) pictorial, graphic, and sculptural worksa. 2- and 3-dimentional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural drawings . . . (17 U.S.C. 101)

(6) motion pictures and other audiovisual worksa. Audiovisual works works that consist of a series of related images that are intended to be shown by the use of devices such as projectors, viewers or electronic equipmentb. Motion pictures works that consist of a series of related images that, when shown in succession, impart an impression of motion (subset of audiovisual works)

(7) sound recordings; anda. includes individual musical compositions, sound recordings, musical dramatic works, motion picture sound tracks, audiovisual works such as sound effectsb. owners of musical composition receive the right of public performancec. sound recording receive the right of digital performance, but not public performance

(8) architectural worksa. 1976 Act architectural works limited by the useful article doctrineb. Post-Berne Convention Architectural Works Copyright Protection Act of 1990 protects the design of a building as embodied in any tangible medium of expression . . . includes the overall form and elements of the design, but not individual standard featuresc. Two-Part Test(1) determine whether original design elements are present(2) determine whether such elements are functionally requiredd. Limitations(1) pictorial representations are permitted IF the work is embodied in a public place(2) modifications and/or destruction is allowed

17 U.S.C. 102(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

Copyright Rights: 17 U.S.C. 106 Reproduction the owner has the exclusive right to make copies, and may sue for infringement even if the copy is in a different form or only part of the whole IF the copying is material and substantial Derivative Works the owner has the exclusive right to prepare works that are based upon the original, but are in a different form or otherwise altered Distribution the owner has the right to control the sale, distribution, and license of the original and all copies and derivative works ; this right ends with the first sale Performance and Display the owner has the right to control public performance and display of her works Anticircumvention generally, circumvention of technological protection measures designed to safeguard digitally encoded works is prohibited Moral Rights visual artists possess an attribution right in their works (credit the author of a work which appears in another work), as well as rights to prevent intentional destruction, distortion, mutilation, or other modification of their work

Philosophical Perspectives Natural Right rewarding the author for his work Utilitarian encourage creation and promote the arts and sciences, which enhances society Copyright protection is limited in time and scope so as to not unduly burden other creators or free expressionB. Requirements1. Original Works of Authorship pg 438 17 U.S.C. 102. Subject Matter of Copyright: In General (a) A more difficult problem arises when an author creates a work in a mechanical or functional manner. The SCT examined this set of issues through a constitutional lens in the following case - Feist Feist Publications v. Rural Telephone Service F: Rural may have been the 1st to discover and report names, towns, and telephone #s of its subscribers, but this data does not owe its origin to Rural To qualify for a copyright, work must be original to the author Rurals pages are typical Copyrights extend to original works that possess at least some minimal degree of creativity The choices with regard to the selection and arrangement of the complied facts may be sufficiently original, so as to warrant copyright protection, IF they are made independently by the compiler AND entail a minimal degree of creativity **Copyright protection is subject to an important limitation not every element of a copyrighted work is necessarily protected Notwithstanding a valid copyright, a competing compiler of facts may use the facts contained in anothers work to aid in preparing his own work, so long as the competing work does not feature the same selection and arrangement of the copyrighted work

To show infringement, must prove: ownership of a valid copyright copying of elements of the work that are original

Berne Convention For The Protection of Literary and Artistic Works The U.S. joined the Berne Convention to expand protection of U.S. copyrighted works throughout the world (March 1, 1989) The Berne Convention requires the copyrighted of works of authors from other Berne Union countries to be protected in the same manner as that of the copyrights of its own nationals U.S. copyright statutes were amended to bring them into compliance with at least the minimum standards set forth in the Berne Convention2. Fixation in a Tangible Medium of Express pg 449 H.R. Rep. No. 94-1476 pg 449 Fixation Requirement As a basic condition Writings Construed to mean any physical rendering of the fruits of intellectual activity Doesnt matter method of fixation 101. (TWEN) A work is fixed in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the AUTHOR, is SUFFICIENTLY STABLE to permit it to be perceived, reproduced, or otherwise communicated for a period of (ON TWEN) Not fixed no CR protection Videogame Cases3. Copyright Formalities: Copyright formalities are procedural requirements iposed on authors by the government that are necessary to obtain copyright protection but do not relate to the substance of the copyright. The US has traditionally had 4 such formal requirements: Notice of copyright; Publication of the work; Registration of the work with the Copyright Office; and Deposit of a copy of the work with the Library of Congress. Copyright formalities have continuing relevance to the practice of copyright law, particularly for works created prior to January 1, 1978, the effective date of the 1976 Act.

1: Notice 1909 Act protection begins upon publication and appropriate form of notice was required for protection (year of first publication, copyright symbol, name of owner) 1976 Act protection begins upon creation, not publication, and reasonable placement of notice was required Post-Berne Convention notice requirement is eliminated prospectively; voluntary notice is encouraged (alleged infringers are precluded from claiming innocence if reasonable notice) In 1993 and 1994, the U.S. restored foreign copyrighted works under the North American Free Trade Agreement Act (NAFTA), and the Trade-Related Aspects of IP Rights (TRIPs) and General Agreement on Tariffs and Trade (GATT), respectively

2: Publication 1909 Act actual or constructive (registration with Copyright Office) publication triggered protection 1976 Act publication really just goes to notice Post-Berne Convention deposit at Library of Congress is mandatory only for published works published works of foreign authors must meet certain statutory requirements for protection publication dictates the duration of protection in some instances certain reproduction, transfer, and performance rights depend on publication prima facie case evidence of valid copyright where registration occurs within 5 years after publication damages damages and attorney fees may be awarded for published works where registration precedes infringement and registration is within 3 months after publication

3: Registration 1909 Act registration required by the 28th year to renew copyright 1976 Act registration is optional, but encouraged by incentives prima facie evidence of copyright validity registration required before filing for infringement statutory damages and fees for infringements occurring after registration or after publication if registered within 3 months Post-Berne Convention registration is required for U.S. and non-Berne nations prior to filing for infringement

4: Deposit 2 copies of each work published in the U.S. for which copyright is claimed must be deposited with the Library of Congress within 3 months of publication 1909 Act failure to deposit could result in forfeiture of copyright 1976 Act deposit is still mandatory; failure results in a fine and delay in completing registration, but does not affect the validity of the copyright Post-Berne Convention no change from 1976

Derivative Works and Compilations protection extends only to original material Derivative work a work based upon one or more preexisting works Compilation a work formed by the collection and assembling of preexisting materials or data that are selected, coordinated, or arranged in such a way that the resulting work, taken as a whole, constitutes an original work or authorship Section 103 Compiling doesnt give you any rights in the underlying works Just the selections, arrangement, and organization of the works

Electronic Compilations Removing an electronic version of a work from its context as part of the collective work and placing it into a searchable database does not fall within the scope of the copyright protection of the collective work Putting a collective work into electronic form, but maintaining the context of the work is covered by the copyright of the collective workC. COPYRIGHTABLE SUBJECT MATTER pg 4611. Limitations on Copyrightability: Distinguishing Function and Expression This section considers the fundamental doctrines that operate to channel protection for works between the patent and copyright regimes.

a. The Idea-Expression Dichotomy The most significant doctrine limiting the copyrightability of works is the idea-expression dichotomy, which is partially codified in section 102(b): 102. Subject Matter of Copyright: In General.. (b) This is the idea expression dichotomy codified The division between protectable expression and unprotectable ideas was developed in the seminal case of Baker v. Selden. Baker v Selden Not copyrightable because the bookkeeping methods are standard The book itself is copyrightable Copyrighting recipes: Cant copyright recipes b/c they describe a procedure BUT a collection of recipes put together as a cookbook is copyrightable Selden wrote a how-to book that described a new, exciting method of bookkeeping, including example ledgers for better ways to keep track of revenues and expenses. Baker wrote a book on bookkeeping also. It used ledgers that were pretty much the same as the ones Selden proposed. Selden sued for copyright infringement. Selden argued that Baker had stolen his method. Baker argued that you can't copyright a method, only an expression of that method. Because his book didn't slavishly copy Selden's, it was not a violation of Selden's copyright. Baker didn't copy any of the text from Selden's book, he just used the same bookkeeping system. The Trial Court found for Selden. Baker appealed. The Trial Court found that Baker's books were "in large and material part identical with and infringements of the books of Selden system." The US Supreme Court reversed. The US Supreme Court found that a copyright did not give an author the right to prevent others from using the same method. "The copyright of a book on bookkeeping cannot secure the exclusive right to make, sell, and use account books prepared upon the plan set forth in such a book." The Court found that Selden couldn't copyright the forms because the forms are necessary to the use of the bookkeeping system (aka merger). The concept of merger is that if an idea can only be expressed in one way or a few ways, granting a copyright on that expression would effectively lock up anybody from using the idea. Therefore, since you can't copyright ideas, you can't copyright those limited ways to express the idea because the idea behind the work merges with its expression. The Court found that the forms are functional and not expressive, so Selden couldn't copyright the forms for that reason either. The Court found that what Selden was really trying to protect was a patent on his method, but he didn't have a patent. He only had a copyright. Patents are used to protect ideas and methods (aka "useful arts"). Copyrights can only be used to protect expressions. "The description of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art itself." At the time, Selden's method would probably not have been eligible for patent protection, but he could probably patent it now under 35 U.S.C. 101. The decision in this case has now been codified in 17 U.S.C. 102(b). See also 37 C.F.R. 201.1, which says that blank forms are not copyrightable. Lotus Development v. Borland Intl. pg 467F: Lotus has a spreadsheet program with a specific command menu If its not protected under the copyright law, youre free to copy it This work was not copyrightable Its just a method Lotus command menu compared to buttons on a VCR both are necessary means for operation

Morrissy v. Procter & Gamble pg 480F: Copyright for a set of rules for a sales promotion contest sued defendant for copying its first rule of the contest Limited number of ways to ask for identifying information Would mean other parties, completing a mere handful of forms, could exhaust ALL possibilities of future use of the substance Contains no creative authorship Comments and Questions The Merger Doctrine pg 48: The Mirrissey case applies what has come to be known as the merger doctrine: when there is only one or but a few ways of expressing an idea, then courts will find that the idea behind the work MERGES with its expression and the work is not copyrightable. The doctrine is an extension of the basic rationale of Baker v. Selden.

Limiting Doctrines: Merger Doctrine: When theres only one or a few ways of expressing an idea, the idea behind the work merges with its expression and the work isnt copyrightable To provide otherwise might enable a person to obtain a de facto monopoly in the subject matter, or idea, by obtaining a copyright in all the alternative forms of expressing it. Design of Useful Articles pg 482 Useful article one that has an intrinsic function - - useful practical thing There are times when the expressful elements of useful articles can get copyrighted 101: In order to get copyright: Must be identified separately from; and capable of existing independently of the utilitarian aspects of the article

1. Idea-Expression Dichotomy Merger doctrine Baker v. Selden Lotus v. Borland Morrissey v. Procter & Gamble2. Useful Article Doctrine Brandir v. Cascade Pacific Government Works - copyright protection is not available for any work of the U.S. government, but the government is not precluded from obtaining copyrights by transfer

Brandir Intl. v. Cascade Pacific Lumber Co. pg 484F: Ribbon Rack is NOT copyrightable the form of the rack is influenced in significant measure by utilitarian concerns and so any aesthetic elements cannot be said to be conceptually separable conceptual separability is destroyed when you take original art and change it to meet requirements Denicola Test if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements if design elements can be identified as reflecting the designers artistic judgment exercised independently of functional influences, conceptual separability exists

D. OWNERSHIP AND DURATION pg 506 Copyrights today are in many ways like other forms of property interests. As we will see in section E, a copyright includes numerous distinct rights Once a CR is acquired, the entire bundle of rights may be assigned to others. Alternatively, the owner may divide and transfer particular rights. Nonetheless, there are significant differences between the ownership rules governing CRs and those governing other property interests. The most important difference is that CRs have limited duration. As required by the US Constitution, CRs enter the public domain after a statutorily determined limited time. Furthermore, Congress has differentiated the ownership, transfer, and termination of these rights in other ways as well.

1. Initial Ownership of Copyrights pg 506 As noted earlier, CR law since the 1700s has vested CR in authors and artists who create works satisfying the requirements of CR law. Under current law, an individual who writes, composes, or paints an original work of authorship on her or his own acquires the CR upon the works creation. 201(a). Since many works in our modern and increasingly interconnected economy, however, are produced in the employment context, commissioned by a production company or publisher, and/or result fro collaborations among numerous authors, we begin our exploration of initial ownership with doctrines governing works made for hire and jointly created works.

a. Works made for hire pg 507 201(b) If a work is made for hire within the meaning of the Copyright Act, the employer or other person who ordered and financed the work is deemed the author for copyright purposes and is the initial owner of the copyright.

Under 101 there are 2 ways for a work to be work for hire:(1) if it was prepared by an employee within the scope of her employment (2) works created by independent contractors if (1) the work fits into one of the 9 enumerated categories of works; and (2) the parties have expressly agreed in a written, signed instrument that the work will be considered a work made for hire. a. a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

Possible Test to see if they are for hire: Right to control Actual control Common law of agency (In Reid employee is to be defined under the common law of agency) Formal, salaried, employee

2 ways to have Either an employee Or through a contract

Factors to consider in determining whether one is an employee: hiring partys right to control skills required source of the tools location of the work duration of the relationship whether other projects can be assigned discretion over when to work and who does the work method of payment whether the work is part of the commissioners regular business; whether commissioner is a business at all benefits and tax treatment

Community for Creative Non-Violence v. Reid pg 507F: is a non-profit organization to help the homeless, which commissioned a sculpture to display in the Christmastime Pageant. was to construct the figures and plaintiff As a general rule under the Copyright Act, the party who creates the work is the author For works made for hire the commissioner of the work is the author, unless there is a written agreement stating otherwise Restatement 2d of Agency An employees work is deemed within the scope of employment IF: it is within the kind he is employed to perform; it occurs substantially within the authorized time and space limits; AND It is actuated, at least in part, by a purpose to serve the master. Holding: wasnt an employee of Defendant was not an employee of plaintiff defendant is a skilled worker and used his own tools he worked in his own studio in a different state than plaintiff; thus, while plaintiff maintained sufficient control to ensure that the work was to its specifications, daily supervision was not possible duration of working relationship was short 2 months plaintiff had no right to assign additional work defendant worked when he wanted within the time frame payment was for the project as a whole defendant had control over all assistants plaintiffs regular business was not sculpting defendant received no benefits, nor were taxes paid by plaintiffFACTORSEMPLOYEEINDEPENDENT CONTRACTOR

Hiring partys right to control the manner and means by which the project is accomplishedEmployer has right to controlNo right to control

Higher the skill level, more likely ICLittle skillGreat skill

Source of instrumentalities and toolsHiring partyHired party

Location of the workHiring partys placeHired partys place

The duration of the relationship b/w parties Long Short

Extent of the hired partys discretion over when and how long to workYesNo

Method of paymentPaycheckResponse to Invoice

Hired partys role in hiring and paying assistantsLittleHired party controls

Whether the work is part of the regular business of the hiring partyYesNo

Whether the hiring party is in businessYesNo

Provision of employee benefitsYesNo

Tax treatment of hired partyPayroll tax deductedNo Payroll taxes

b. Joint Works: 101: a joint work is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole Requirements: Copyrightable work 2 or more authors Intent: joint if they collaborated, knowing and intending that their work would be merged with others to become part of a unitary whole

Aalmuhammed v. Lee pg 515F: Warner Brothers contracted with Spike Lee to make the movie Malcom X, starring Denzel Washington Plaintiff did the following: directed actors and did voiceovers created at least 2 new scenes with new characters translated Arabic into English selected proper prayers and religious practices edited parts of the move during post-production met with Islamic organizations to persuade them the move was accurate wanted to be listed as a co-writer for the film- which didnt happen, so he applied for a copyright office said conflicting w/ previous application from Warner Bros. How to determine authorship in absence of a contract: Control objective manifestation of a shared intent to be co-authors the appeal of the work turns on both contributions

Joint Works Are Tenancies-In-CommonWhen an agreement doesnt state otherwise: Co-owners have an equal, undivided ownership in the entire work, even where their respective contributions are not equal Upon the death of each joint owner, the decedents share passes to his heirs Each co-owner may use the work and license it to others, but a written agreement is required to transfer the copyright or give an exclusive license

c. Collective Work: 17 U.S.C. 101 pg 522 Compilation made up of copyrighted material (periodical issue, anthology, or encyclopedia) Ownership of copyright in collective works: in the absence of an express assignment of copyright, the author of each separate contribution in a collective work retains copyright in the contribution. The author of the collection own copyright in the expression he or she contributed usually the selection and arrangement of the individually copyrightable contributions Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. Copyright Act 201(c) provides that, in the absence of a writing to the contrary, the author of the collective work will have separate privileges with regard to the individual works he has collected

3. Duration and Renewal pg 526

4. Division, Transfer, and Reclaiming of Copyrights pg 531a. Division and Transfer of Copyright Interests Under the 1909 Act pg 532b. Division and Transfer of Copyright Interests Under the 1976 Act pg 533c. Reclaiming Copyrights pg 533

Copyright Infringement for Copying (1) Whether the work has actually been copied (a) the copying doesnt have to be exact (b) substantially similar is sufficient (2) Whether the copying appropriated sufficient protected material to violate owners copyright rights

Copying- evidence may consist: (1) copied s work (a) defendants admission that he copied or (b) circumstantial evidence usually evidence of access from which the trier of facts may reasonably infer copying (2) The copying was to the extent that it constituted improper appropriation

If there is evidence of access and similarities between the works exist, then it must be determined whether the similarities are sufficient to prove copying technical analysis expert testimony sometimes referred to as probative similarity objective measure of similarity

If there is no evidence of access, the similarities must be so striking so as to preclude the possibility that plaintiff and defendant independently arrived at the same result If copying is established, the standard for determining whether unlawful appropriation has occurred is that of the ordinary lay hearer Dont need expert testimony Ask what is pleasing to the ears of lay listeners subjective measure of similarity Where the similarities between the works are so extensive and striking, it is possible, without more, to justify an inference of copying and prove improper appropriation

E. TRADITIONAL RIGHTS OF COPYRIGHT OWNERS pg 5361. The Right to Make Copies The right to reproduce is the most fundamental of the rights granted to the CR owner. It includes all rights to fix a work in a tangible medium of expression, including the right to make phonorecords. The right to reproduce granted by section 106(1) is not limited to exact reproduction such as copying a disk or making a photocopy. Rather, it is a broad grant of the right to prevent others from making exact or substantially similar reproductions by any means now known or later developed, and fro which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device, 101 (definition of copies). Phonorecords includes not only disks that may be played on record player the technology that existed at the time of the 1976 Act but all material objects in which sounds, other than those accompanying a motion picture or other audiovisual works, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. 101.a. CopyingArnstein v. Porter pg 538F: Arnstein sued Porter alleging Porter plagiarized from several of his songs; while some of the songs were fairly well known, some of his account of how Porter might have had access was fairly fantastical Holding: the court found that while similarities were present, they were not sufficient to permit the inference that defendant copied, but not so insignificant as to warrant SJ

b. Improper Appropriation The second problem that arises in assessing infringement is determining whether the has copied sufficient protected expression to violate the s CR interests. Judge Learned Hands opinion in NICHOLS v. UNIVERSAL, decided more than 80 years ago, remains the seminal case framing this inquiry. As you study this opinion, pay close attention to the manner in which the court distinguishes protected and unprotected expression and how it determines whether the has improperly appropriated the s work. Objective Test: analytically dissects the objective manifestations of creativity (plots, themes, dialogue, mood, setting, pace, sequence, characters) in the plaintiffs work in order to determine the elements that are protectable under copyright law. Subjective Test: trier of fact determines whether the defendants work improperly appropriates the plaintiffs protected expression. Fact finders reaction Must pertain to copyrightable material Must lay out specifically to jury what material they are concerned about Nichols v. Universal Pictures Corp. pg 545F: Both and wrote plays involving feuding Irish and Jewish families, where the child of one family falls in love and marries the child of the other family and then have children, and in the end the families reconcileHolding: It was only part of her idea, not infringement No infringing b/c what was copied was non-copyrightable. What little was copied does not amount to substantial similarity

Rule: 1. The less developed an authors characters, the less likely they can be copyrighted2. Abstractions come to a point where they are no longer protected because it could prevent the use of his ideas which is not protected under copyright.3. Toss/filtering out: facts, ideas, ideas merged, scenes a faire, process of system Then compare what is left to see if substantial similarity Close limitation, not literal copying, can still be infringement b/c substantially similar

Limitations on the Exclusive Right to Copy: Archival Copies for Public Libraries one copy preservation and replacement of existing works if replacement cannot be obtained at a fair price non-commercial users libraries are not liable for copyright violations by their patrons so long as they provide notice of copyright laws Ephemeral Copies by Broadcasters broadcasters are allowed to make ancillary copies during the course of broadcasting, such as when recording a program for replay Cover License allows the recording of anothers musical composition under a license does not allow changes to the basic melody or fundamental character of the work Non-Commercial Copies of Musical Compositions and Sound Recordings allows consumers to make copies for non-commercial use Running Computer Software allows a consumer to copy a computer program for archival purposes or as necessary as an essential step in the utilization of the program in conjunction with a machine Maintaining Computer Software allows consumers to make copies of programs on a machine if necessary during maintenance of the machine Fair Use defense for many instances of copying

Computer Software Computer Associates International v. Altai, Inc pg 556 CA wrote a computer program that would allow their scheduling software to run on different kinds of computers. Altai sold a similar kind of scheduling software, so they asked their programmers (who were kept segregated from CA's program), to write a program with the same functionality, which they did. CA sued Altai for copyright infringement. The Trial Court found for Altai. CA appealed. The Appellate Court affirmed. The Appellate Court looked to Baker v. Selden (101 U.S. 99 (1879)), and noted that an idea cannot be copyrighted, only the expression of that idea can be copyrighted. The Court applied the Abstraction - Filtration - Comparison test. In Abstraction the court breaks up the program into different levels, from very general to very specific. E.g. Main purpose, program structure, modules, algorithms, data structures, source code. In Filtration, the court decides what components are absolutely essential to fulfilling the abstrac