OBVIOUSNESS
CLAIM CONSTRUCTION
INFRINGEMENT & ENFORCEMENT
DESIGN PATENTS
REMEDIES
200
The Supreme Court in Graham v. John Deere described these objective ways to establish non-obviousness under § 103.
What are secondary factors?
200
Evidence used in claim construction that comes from the patent itself (claims, specification, prosecution history).
What is intrinsic evidence?
200
Infringement doctrine that can expand the scope of claims to cover infringements not literally covered by the claims.
What is the doctrine of equivalents?
200
Requirement for design-patent protection: the claimed design must not be exclusively functional.
200
The test that must be met, after the eBay v. MercExchange decision, for a successful patentee to obtain an injunction against an infringer.
What is the traditional four-factor equitable test?
400
Evidence of non-obviousness: the invention enjoyed rapid marketplace acceptance.
What is commercial success?
400
The claim construction evidence that is formed by the back-and-forth between the applicant and the PTO during examination.
What is prosecution history?
400
Type of claim where patentability rests on the uniqueness of product itself, but the claim describes the product via the steps used to make it.
What is product by process?
400
The hypothetical person whose perception controls design patent anticipation and non-obviousness analysis.
Who is the designer of ordinary skill?
400
The name used for the four factors that the patentee must usually prove to obtain lost-profits damages: demand for the patented product, absence of acceptable non-infringing substitutes, manufacturing/marketing capability, and amount of profit.
What are the Panduit factors?
600
Evidence of non-obviousness: the invention exhibited properties a POSITA would not have foreseen.
What are unexpected results?
600
Evidence outside the patent and its file history such as dictionaries, treatises, expert testimony, etc., which may be used in claim construction.
600
The infringement liability that arises under 35 U.S.C § 271(b) when a defendant takes active steps to encourage another to infringe.
What is inducement of infringement?
600
The hypothetical person who evaluates resemblance for the purpose of design-patent infringement under the holding of the Egyptian Goddess case.
Who is the ordinary observer?
600
When the patentee is a non-practicing entity (or when lost profits cannot be proven), damages are limited to this type of damages under 35 U.S.C. § 284.
What is a reasonable royalty? (or What are reasonable-royalty damages?)
800
Evidence of non-obviousness: many skilled people were unable to solve the same problem.
What is failure by others?
800
The hearing in which a federal district judge construes the patent claims as a matter of law by determining their ordinary meaning to a POSITA.
What is Markman hearing?
800
Situation described in the Akamai case where multiple parties collectively perform all steps of a method claim but direct infringement may only be found if there is common control.
What is divided infringement?
800
Technique used in design-patent drawings to filter out unclaimed environmental elements.
What are dotted lines / environmental lines?
800
The 15 factors used by the Federal Circuit and experts to determine a reasonable royalty in virtually every U.S. patent damages case.
What is are the hypothetical negotiation / Georgia-Pacific factors?
1000
Prior art that is not usable in validity evaluation because it is neither in the same field nor reasonably pertinent to the problem the inventor faced.
What is non-analogous art?
1000
This doctrine prevents a patentee from arguing for a claim scope that would recapture subject matter surrendered by argument or amendment during prosecution.
What is prosecution history estoppel?
1000
Intentional deception of the Patent Office by withholding or falsifying material information, which renders the entire patent unenforceable.
What is inequitable conduct?
1000
Section 289 defines this alternative measure for the liability the infringer of a design patent has to the design patent's owner.
What is total profit from the article of manufacture to which the design was applied (disgorgement)?
1000
The standard used by the District Court and the Federal Circuit in evaluating the evidence supporting a jury's damage award.
What is "Substantial Evidence"?