Patent Law & Policy

I've received some questions via email, so I'll answer them here:

1) What is the rule for the written description requirement? Is it Johnson Worldwide which limited Gentry's holding to finding a failure of WD only when it is clear that a particular narrow understanding is an 'essential element' of the invention?

No. I think the most recent authoritative statement of the rule is from Ariad v. Eli Lilly, as quoted in the slides -- e.g., the "possession" test.

2) Regarding the exceptions to the new USC 102, in USC102(b)(1)(A) does "disclosures" refer to patents and printed publications only? (102(a)(1) also lists public use, sale, etc.)

No. I think "disclosure" refers to the items listed in 102(a), so it includes public use, sale, etc. This is the subject of some debate, however. (I actually looked at the legislative history and it is clear that Congress intended it to be as I suggested.)

3) Regarding the exceptions to the new USC 102, does USC102(b)(1)(B) mean the inventor can publically disclose their invention at any time and when they decide to file for a patent any prior art within a year of their effective filing date will not be considered prior art (even if the public disclosure happened years ago?).

No. If the inventor makes 102(a)(1) disclosures (patented, described in a printed publication, public use, on sale, etc) more than one year before their filing date, then those disclosures are good prior art, as 102(b)(1) would not apply. However, within one year, an earlier publication by the inventor will negate others' publications under 102(b)(1)(B).

4) Regarding the exceptions to the new USC 102, does USC(b)(2) apply to all disclosures, not just those made within a year of the effective filing date? So technically even if a disclosure was printed 3 years before the effective filing date, as long as the inventor can prove that the subject matter was derived from him the disclosure will not qualify as prior art?

Remember that 102(b)(2) is an exception to (a)(2), not to (a)(1). So the disclosures excepted here will have to be those in US patents and published applications. Given that, you are correct in that there is no time limit for this exception.

5) [Two students asked versions of this question] In analyzing the knowledge requirement for inducement and contributory infringement, is there really no distinction between the two anymore since after SEB the knowledge requirement for inducement was lowered to include "willful blindness" and they also seemed to have added a knowledge requirement (knowledge of the patent and capability of infringement) to contributory infringement?

I think that SEB collapsed the two concepts. The mental state for inducement was lowered, and the specific knowledge requirement for contributory infringement was raised. In some ways I think that inducement is now easier to prove than contributory, as you don't have to show the absence of acceptable non-infringing substitutes. I think it is hard to envision a case where there would be contributory infringement and not inducement as well.

6) Could you give an example of how a patentee could show "some other reason" why they couldn't have described the equivalent in question to overcome the PHE presumptive bar?

Nobody really knows. Perhaps that a word was not available? Maybe the technology that is now equivalent did not exist? (Though that would fall under the 'unforeseeable' prong.)

7) Can you explain when we have to go through the "but for" analysis under Panduit and when we would use the Rite-Hite forseeability test? Are they two separate tests so a patentee can prove either to receive lost profits? Or are the two tests complementary?

They are complementary. You have to prove that 'but for' the infringement you would have made X in profits. You can make that showing for all foreseeable consequences of the infringement.

8) What is the black letter law for §101 subject matter for ideas/business models/software? Is it the machine or transformation test held by Gottshalk and Diehr (altho Bilski clarified that it is not the sole test to determine if subject matter is met)? The Fed Cir holdings seem to be all over the map with extremely permissive holdings in Alappat, State, and AT&T, but then extremely restrictive after the dissent in Labcorp. Bilski didn't seem to add much to the rule except to note that business methods are not categorically excluded from patentability and that the MOT is not the "exclusive test".

What, you think that the Supreme Court would actually, you know, give some actual rules? No. The best I can give you is what Bilski said: "Rather than adopting categorical rules that might have wide-ranging and unforeseen impacts, the Court resolves this case narrowly on the basis of this Court's decisions in Benson, Flook, and Diehr, which show that petitioners' claims are not patentable processes because they are attempts to patent abstract ideas." That is a punt. It is clear that the FedCir pre-Bilski cases are of limited use. But the SCOTUS didn't say anything definitive, other than what you suggested -- that MOT is not the sole test, that business methods are not categorically excluded.

9) Are the short answers questions also fact-pattern associated or more of a general issue/policy kind?

Both. And also claim analysis.

10) You recommend to keep track of the fact pattern. Is there a chance, that after moving to a new/different fact pattern (assuming that we answer the questions in the order they are printed), we encounter Qs that are related to a previous Hypo?

No. The questions related to the fact patter appear together, and immediately after the fact pattern.

11) I know it is subjective and one can allot the time as he prefers, but in your opinion how could a general-default break-up of the time be described? (i.e. 2h 20 min for multiple choice and 40min for short answer)?

It depends on how long it will take you to complete the short answer. Your breakdown sounds reasonable, but I think everyone will have different ideas.