Patent Law & Policy

1) How important is it to know the historical development of patent law we initially discussed (e.g. the Statute of Anne etc.)?

It is fair game for the exam.

2) I'm a little bit uncertain as to how to weigh the enablement standard on a multiple choice question. I realize the specification is sufficient if it enables a PHOSITA to make and use the claimed invention without undue experimentation. However, what assumptions are we going to be provided as to what a PHOSITA could do given a particular disclosure? For instance, on one of the commensurability hypos, you said that a claim for a "light signaling apparatus with lights" may be too broad given a disclosure of a "light signaling apparatus with red, yellow, green lights." Wouldn't a PHOSITA be able to make or use the claimed invention in this instance potentially based upon the disclosure? I think in class you mentioned that this might not meet the commensurability requirement. Is this hypo somewhat akin to the Gentry Gallery case?

I'm not following this question. Obviously on a multiple choice exam, I can't directly ask you whether a PHOSITA would or would not find a disclosure suitable. I can ask other things, like whether certain facts would make it more or less likely that a PHOSITA would find enablement, or what the standard for enablement is, etc.

3) How important is it to know the distinction between 102(a) and 102(b) that is in effect up until the AIA takes over? I don't recall spending much time discussing the difference between the two.

We didn't cover the current 102(b) very much at all, though I believe it was mentioned in some of the reading and was discussed in passing. I would expect a commensurate level of focus on it for the exam.

4) Is my understanding correct that KSR is the controlling test for all cases of obviousness? The test seems to focus largely upon combination patents so I was wondering whether it should be read only to cover combination patents. Perhaps in a way, it can just be assumed that in nearly all cases of obviousness it will just simply involve whether combinations of prior art are obvious anyways? Also, does the approach taken in Graham still guide the steps one should take in the obviousness analysis?

KSR is the current controlling law, though it doesn't have very clear rules. And you are right that we generally assume in a 103 context that all inventions are "combinations" of prior art concepts.

5) How important might it be on the exam to know the effects of the use of "comprising of" v. "consisting of" v. "consisting essentially of" in claim language?

We covered that. It is fair game.

6) Do I understand properly that with respect to the doctrine of equivalence in 112, par. 6 claims, traditional judge made equivalence applies to the function whereas equivalents as to the structure is distinct based upon the language in 112? What exactly is the distinction between the two types of equivalence?

They are the same basic analysis. Under 112/6 statutory equivalents, the function (in the claim) must be identical, while the structure (in the specification) must be equivalent. Under the traditional DOE equivalents, the function (and the structure) must be equivalent.

7) Regarding equitable intervening rights (pertaining reissue patents), I think you mentioned that at some point there may be a time those equitable rights may expire. How would one determine this when they expire? For instance (probably an unrealistic example), if a company poured millions of dollars into a production factory relying upon not infringing a patent prior to reissue, at what point would rights expire if the reissue covered what the factory was built to produce?

Well it is equitable, so it would be a case-by-case analysis. I would think that once the investment that was made prior to the reissue was recouped (plus perhaps some profits), then the intervening rights would expire.

8) In the lost profits analysis, I'm a little bit unclear on how the non-infringing substitutes fits in.

To show how much profit you would have made, you need to consider the impact of non-infringing substitutes. Eg, you can't say you would have charged $1000 per item if there was a non-infringing substitute available for $100.

9) What is the standard of evidence for a plaintiff to prove infringement for a patentee in a standard case, preponderance or clear and convincing?

Preponderance. Proving a patent invalid requires clear and convincing evidence.