cstr

General ideas:
(1) Do not mention rules; just apply rules
(2) Players: inventors, people around inventors, patentees, infringers
(3) Tech. information: before invention; before effective filing date; before filing date; before issuance; time of amendment; time of infringement.
(4) Behavior: communication; business activites

1. Claim Interpretation (Identify the features of an accused product; identify product or process claims; identify possible disputed limitations; be careful of “means-plus-function”)
1.1 Interpretation 1: Claim only
1.2 Interpretation 2: Written Description involved
1.3 Interpretation 3: Prosecution History Record involved (Where patentee said something during prosecution)
1.4 Interpretation 4: Extrinsic evidences involved

2. Literal Infringement (after claim interpretation, attack an accused product)
- Element by element

3. Infringement under the DOE (time of infringement)
3.1 Disputed Limitation
3.2 Public Dedication
- not claimed
3.3 Prosecution History Estoppel
- amending claim
- P: unforeseeable element (at the time of amendment); tangential relationship to equivalents; poor words to cover all equivalents
3.4 Prior Art Equivalent

4. Other Types of Infringement
4.1 Active Inducement 271(b)
- direct infringement
- actual intent to cause acts constitute infringement
4.2 Contributory Infringement 271(c) (accused product is part of claimed invention)
- direct infringement
- know its act will cause infringement
- D: substantial non-infringing use
- P: farfetched, illusory, impractical, experimental.
4.3 Foreign activity 271(f) (exportation)
- substantial portion
- actively induce
- intend combination, but no real combination is required
4.4 Process Patent 271(g)
- D: materially changed; or trivial and nonessential part
- P: not materially changed

5. 102 or Qualified Prior Arts
(When it is concerned with “conception,” attack corroboration by the rule of reason analysis”
5.1 Critical Dates
- Invention date: when reduction to practice is; when inventor conceived
- Effective filing date
- Real filing date
5.2 Prior art, 102(a), known or used by others in the US before invention
- Public accessibility
5.3 Prior art, 102(b), in public use in the US more than one year before effective filing date
- D: public use; commercial use
- P: private use; experimental use
5.4 Prior art, 102(b), on sale in the US more than one year before effective filing date
- commercial offer for sale; ready for patenting
- Not applied to process patents
- P: experimentation defense
5.5 Prior art, 102(c), abandoned
5.6 Prior art, 102(f), derivation
- prior conception of the invention by another
- communication to patentee
5.7 Prior art, 102(g)(2), inventive activity in the US before invention
- P: abandoned, suppressed or concealed, such as letting public know the invention
5.8 Prior art, 102(a), printed publication before invention
- P: not a tangible form; impossible dissemination;
- P: not sufficiently accessible
5.9 Prior art, 102(b), printed publication one year before effective filing date
5.10 Prior art, 102(d), first patented in foreign country
- 12 months before actual filing date
5.11 Prior art, 102(e), US patent/application filed before effective filing date
5.12 102(g)(2), First to Invent:
- First to reduce to practice; first to conceive; reasonable diligence
- corroboration
- foreign inventive activity
- P: abandoned, suppressed or concealed
5.13 Anticipation (each and every limitation must be in a single prior art)

6. 103
6.1 Analogous Prior Art
- P: not within the field of invention; different purpose or different problem
- P: level of skilled in the art
6.2 103(c)(1): subject matter owned by patentee at the time when invention was made
6.3 Combination of Prior Arts
- P: no teaching, suggestion, or motivation to combine prior arts
- P: in view of KSR, no need and problem in the field; no market demand; not obvious to try.
- P: no reasonable expectation of success; teach away
6.4 Secondary Consideration
- P: nexus between patent and success.

7. 101: Mathematical Algorithm
- calculation of numbers
- P: useful, concrete and tangible result

8. 112
8.1 Enablement (make and use)
8.2 Best Mode (subjective contemplation of the inventor and objectively adequate disclosure)
8.3 Written Description (whether claim is supported by written description
8.4 Indefiniteness (claim language)

9. Inequitable Conducts (during prosecution)
- failure to disclose material information related to patentability
- P: not intentional, not material
10. Prosecution Laches (during prosecution)
- unreasonable and unexplained delay
- P: delay because of PTO’s faults

11. Misuse (enforcing the rights)
- anti-competition
- P: competition exists; exceptions of 271(d)

12. First Sale
- consumers have rights to use or sell
- P: sales contract to restrain the rights

13. Implied License (a sale of non-patented goods used to practice patented invention)
- non-infringing use; desired grant of license

14. Repair or Reconstruction (parts change)
- consumers have rights to repair
- replacement: spent part, different function
- P: competition; patented part; the same function.

15. Inventorship
15.1 Contribution
- relevant issues: derivation, first to invent
- contribute to part of conception of claim
- P: assist actual inventor; provide well-known principles
15.2 Ownership
- inventor has ownership
- all owners must stand together to sue
- P: implied or express assignment of rights; shop right; unilateral right to sue or other’s waivers of right to refuse to join a suit.

16. Experimental Use (FDA)

17. Remedies
17.1 Monetary Damages
17.1.1 Lost Profits
- entire market value: apportionment or complementary

17.1.2 Market Share
- do not want to recover 100 lost profit

17.1.3 Reasonable Royalty

17.1.4 Interest
- not for punitive damages

17.1.5 Limitations
- reasonable, objective foreseeability
- six years or Laches
- label or actual notice of D

17.2 Preliminary Injunction

17.3 Permanent Injunction

17.4 Treble Damages

17.5 Attorney’s fee