Patents Outline

Topic
Walkthrough
Check dates of prior art under 102
Was it prior art at time of invention?
Statutory presumption of validity?
Patentable Subject Matter ( 101)
"Whoever invents/discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor. Right to
exclude all others from any purpose, including purposes the inventor did not herself discover or invent"
Types of Inventions Patent Act, 35 U.S.C. 101
(1) Machines (Utility): instrument that consists of parts or elements that are organized to cooperate, when set in motion to produce a definite, predetermined result
(2) Compositions of matter (Utility): all compositions of 2+ substances & all composite articles (chemical union or mechanical mixture)
Common Biotech Patents
(1) Isolated or Purified Substance - Adrenaline or DNA (Parke-Davis):
Only needs to have utility that it lacks in nature
(2) Method of Use: How to use compound in practical application. Ex: A method to use a natural occurring plant to cure something. Not always practical.
(3) Method of Making: How to make product from raw materials
(4) Living Organisms
Any non-naturally occurring non-human multi-cellular organism is patentable. battle lines at chimeras.
May patent entirely new bacterium, new plants and new animals (Diamond v. Chakrabarty)
Must change physical qualities for patent - The more the better
(3) Processes (Utility): Is there a transformation and reduction of an article "to a different state or thing"
Bilski: Business method is surely patentable subject matter if..
(1) it is tied to a particular machine or apparatus, or
(2) it transforms a particular article into a different state or thing.
That tanning hides, smelting ores, and vulcanizing rubber were all instances of transforming articles.
Processes - 2 flavors - Process art or method and includes a new use of a known process, machine, manufacture, composition of matter, or material. 100.
a. Method of using something: how to use an item.
1. If you discover a new use for a patented product, you can patent the new use, but are blocked by the patent holder of the product.
Holder of patented product is blocked from your patented use.
2. No permission needed from original patent holder to develop the new use.
Surgical techniques are patentable, but...
the patent is not enforceable against the medical profession
b. Method of making the item.
Result of process does NOT have to be new, useful, or non-obvious
(c) New Use of old invention - It is a new invention to use an old machine for a new purpose
Under 100b, new use patents are process patents.
Discoverer of a new use cannot obtain a patent on the old substance, only on the new use, even if no use was previously known.
(4) Articles of Manufacture (Utility): production of articles for use from raw/prepared materials by giving those
materials new forms, qualities, etc. (Catchall for any useful technology not encompassed by other areas.)
(5) Plant (Asexual)
ii. JEM Ag Supply (2001): Newly developed plant breeds fall within the subject matter of 101, and neither the PPA nor the PVPA limits the scope of 101s coverage.
(6) Design Patents 171
Elements
New,
Original and
Ornamental design for an article of manufacture - Non-Functional
(8) Categories Not Eligible
(1) Natural Phenomena: if it exists in nature, it is already in the public domain
*Economic Transformation - Creates Value for PON*
Adrenaline vs tungsten case. lemley doesnt know if these can be distinguished
a. adreline: hand finds economic transformation
b. tungsten case: this is product of nature you just picked it up out of ground
(2) Natural Laws: scientific truths/mathematical representations
A person who discovers such a law isn't creating anything.
Mathematical Formulas
Gottschalk v. Benson: A mathematical formula, having no substantial practical application except in connection with a digital computer, cannot be patented.
Diamond v. Diehr: Mathematical formulas not absolutely fatal where transformative of substance*
(3) Abstract Ideas: doesn't have enough of a tangible application to limit the scope
An idea is not patentable but a new device by which it may be made practically useful is.
(4) Skills: the "two-handed" backhand, medical methods*
(5) Printed Matters (Forms)
(6) Mental Steps doctrine
Old idea that invention about human interpretation or decision making is not patentable because such "invention" takes place in your mind. Too abstract.
a. Maybe invention was incomplete. Inventor hasn't told us in detail how it is the human does that, what they should weigh during the process.
b. People tried to tie invention to something physical. With software, people said I can tie software to a computer to get around mental steps doctrine.
Problem: Adding a computer doesn't seem to add anything meaningful to invention.
Utility ( 101) - Inventions must be useful for patent
Minimum Utility If people will buy it is probably a minimal showing of utility
A process or product must have known use outside being the object of scientific research
Process must be useful; but not necessarily product
One effective use is enough; if effective in mice and a PHOSITA thinks that is a good indicator for human effectiveness, then thats enough.
Three Categories of Utility
(1) General Utility: Invention must actually do something? Chemists with strange compounds have this problem
(2)(a) Specific and (b) Substantial Utility:
(a) Specific: Must not be so vague to be meaningless(In re fisher - ESTs)
(b) Substantial: Significant and presently available benefit to the public (In re fisher - ESTs)
(3) Moral/Beneficial Utility: Whether intended purpose of invention has some minimum social benefit or at least is not completely harmful or deleterious.
Must not be frivolous or injurious to the well-being, good policy, and sound morals of society. Does not look at the degree of usefulness.
ie devices for gambling, or facilitating assassination.

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(3) Moral/Beneficial Utility: Whether intended purpose of invention has some minimum social benefit or at least is not completely harmful or deleterious.
Must not be frivolous or injurious to the well-being, good policy, and sound morals of society. Does not look at the degree of usefulness.
ie devices for gambling, or facilitating assassination.
Deceptive inventions: (Juicy Whip v. Orange Bang)
Illegal inventions
Ex. Better process for refining cocaine
Trend if its not illegal, then its ok: Even radar detectors
Immoral/Frivolous Inventions:
Novelty is keyed to the time of invention ( 102(a),(e),(g))
Identity Requirement
A single reference must contain all elements, either expressly or inherently, sufficient to enable a POSA in the art to recreate invention. (Structural Rubber Products 5).
Inherency Concern?
A reference must identity all elements in challenging patent, unless POSA would recognize missing element as necessary.
In Re Robertson (Fastners), Schreiber(Challenging patent may be of different use))
Enablement Requirement:
Prior art must disclose adequate directions for the practice of the patent 112 (Hafner)
102(a) Novelty: No patent if before invention it was...
(1) "Publicly" known or used by others in US before you invented it; or
"Known...by others" Reasonably accessible to the public (Not Secret). National Tractor Pullers Ass'n
Fully disclosed: must be reduced to practice
(i) actual: building an operable prototype etc.
(ii) constructive: creating and filing an application for a patent describe w/specificity
"Used by others"Publicly and in way intended
Rosaire Rule: It is sufficient public use to prevent a subsequent inventor from gaining a patent where...
(1)A successful field trial of an invention
(2) openly performed in the field under ordinary conditions,
(3) in the ordinary course of activities,
(4) w/out any deliberate attempts to conceal the invention or
(5) exclude the public and
(6) w/out any instructions of secrecy to employees performing the work is
(2) Patented in US or a foreign country before you invented it; or
Patent becomes prior reference on issue date, only if...
Patent contents are at least minimally made available to the public
Foreign Patents - Where no "patent" a "meaningful exclusive rights" will count.
Reference good only for what is claimed not in specification (Reeves Bros v. US Laminating Corp.)
Prior reference on issue or publication date
If published then handle as "printed publication"
(3) Printed publication in US or a foreign country before you invented it
Printed Publication Requirements
(1) Printed publication must have set forth;
(a) sufficient information about the invention...
Figures/Designs are adequate anticipation of mechanical inventions, even if incomplete (Jockmus v. Leviton - Lightbulb candle in catalog)
(b) to enable POSA to make it...
(c) W/O undue experimentation.
(2) Must have been accessible to the public
TEST: Was the reference sufficiently accessible to the public interested in the art?: Klopfenstein)
Factors
1. length of time exhibited,
2. expertise of target audience,
3. existence of reasonable expectations that the material wouldnt be copied, and
4. the ease of copying the material.
EX:
i. A thesis filed and indexed at a university counts as printed publication(In re Hall)
ii. Paper delivered orally to 500 POSAs, and distributed amongst them. (MIT v. AB Fortia)
iii.Public Billboard targeted at POSA displaying limitations of invention is "published"
iv. Powerpoint presentation to audiences with expertise who could take notes counts
v. Trade catalogue (Jockmus)
vi. Presentation to 4 faculty members does not count.(Cronyn)
(3) Must be Printed
Interpreted broadly including microfilms and photocopies
(4)Effective date is actual date of publication
Which is upon first receipt of target audience, not publisher
EX: publication of a scientific article
Same inventive entity cannot be their own 102(a) prior art
1.131 Affidavit: Antedating Prior Art - Only 102(a) and not other pending patent
When the applicant files for a patent, she does not specify the date of conception, RTP, etc.
If PTO finds prior art that occurred before filing date, it will reject saying that it found 102(a) prior art.
Applicant then bears the burden of showing conception precedes the date of the prior art.
Conception - You know all the elements and how they work.
Only the relevant piece of the prior art
Doesn't require utility.
Should supply evidence.
Supporting facts, notebooks, etc. and:
102(e) Previously-filed applications* p. 421
Described in a U.S. patent, published U.S. patent application, or WIPO PCT document (which meets requirements),
by another,
filed before applicants date of invention.
A U.S. patent disclosing an invention dates from the date of filing of the application for
the purpose of anticipating a subsequent invention. (Alexander Milburn Co. v. Davis-Bournonville )
102(g) Interference: Bars patent if someone who filed 2d nevertheless was the 1st to invent (as long as not
abandoned, suppressed or concealed) and shown diligence

First to Invent Test: Person who is first to invent the invention is entitled to the patent.
(a) work backwards from when each person filed their application

102(g) Interference: Bars patent if someone who filed 2d nevertheless was the 1st to invent (as long as not
abandoned, suppressed or concealed) and shown diligence

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First to Invent Test: Person who is first to invent the invention is entitled to the patent.
(a) work backwards from when each person filed their application
(i) initial assumption: whoever filed first is the inventor the burden is on the person that filed later to prove that she invented first
(b) look to see who reduced to practice first
Reduction to practice: when did you either
Constructive filing a patent application
In enough detail that anyone with ordinary skill in the art who wanted to, could build it and use it.
Actual building and testing a physical embodiment of invention
1. Not required to be perfect or ready for commercial purposes as long as one skilled in the art can use it in its operative form (Scott v. Finney) just show can use beyond possibility of failure
2. It must successfully perform its intended function to be an actual reduction to practice - Show by testing or actual use
Will work beyond probability of failure use rsblness standard
1. Simple devices need no testing to show reduction to practice
i. mere construction or synthesis of subject matter may be sufficient to show that it will operate satisfactorily
2. Complex devices need ample testing that shows correlation b/w testing conditions and actual use conditions
If first to conceive and reduce to practice, do not need to prove diligence
a. SO *inventor who is first to conceive and first to reduce wins priority contest w/o having to prove any diligence
RULE: reduction to practice does not require that the invention be in a commercially satisfactory stage of development; only need show utility beyond a probability of failure. Scott
v. Finney
(c) look to see who conceived of the idea first
Conception: formation in the mind of an inventor of the complete and entire invention
Requires
"Perceives a specific result and a particular means of accomplishing that result so that no more than ordinary skill in the art is needed to build or carry out the invention"
Rule: in the case of a tie, the senior party wins the tie - Oka v. Youssefyeh
Rule of Conception:
Inventor must present proof showing possession or knowledge of each feature of the count and
Communicated to a corroborating witness in sufficient detail to enable one of skill in the art to replicate the invention
Corroborate Evidence - Conception, RTP, and Diligence - Need supporting witnesses and proof see factors below
Uncorroborated oral testimony by interested parties concerning long-past events does not provide the clear and convincing evidence required to invalidate a patent
on the grounds of prior knowledge and use.(Woodland Trust v. Flowertree Nursery, Inc.,)
Rule of Reason Analysis look at all evidence and determine whether it is credible
Factors to show whether evidence is credible or not:
a. Delay between event and trial
b. Interest of corroborating witnesses
c. Contradiction or impeachment
d. Corroboration
e. Corroborating witnesses familiarity w/ details of alleged prior structure
f. Improbability of prior use considering state of the art
g Impact of invention on industry
h. Relationship b/w witness and alleged prior user
RULE: Oral testimony by interested people is not clear and convincing evidence sufficient to invalidate a patent - Woodland Trust v. Flowertree
(d) Section 102(g)(2) if you were the first to conceive, but the last to reduce to practice then you will be the inventor IF:
Diligence Test: if have an inventor who is first to conceive but second to reduce to practice must show reasonable diligence prior to second inventors reduction to practice (filing date)
The inventor who is first to conceive and first to reduce to practice wins the priority contest w/o having to show diligence at all
(i) you worked on the invention diligently if you slacked off, didnt put much effort into it, etc., then too bad
2. if delay in reducing to practice b/c of commercial reasons (including waiting for grant money) NOT OK
3. if delay b/c of personal reasons (have day job / work at night, poverty and illness, ) then OK
continuous course of activity
a. Carried on without significant interruption and
a. Accomplished in reasonably prompt manner
b. Must account for entire period
c. Must show exactly what you did and when you did it
Rule: the party chargeable with diligence must account for the entire period during which diligence is required. need definite times & particular evidence correlating efforts with work on
invention - Gould v. Schawlow
And did not Abandon/Suppression/Concealment
(1) Inventor actively suppresses or conceals his invention from the public
(2) Legal inference of suppression or concealment based upon an unreasonable delay in filing a patent application (this is Apotex case)
Resumption of activity: if the first inventor abandoned etc. but resumed activity to bring it to the public before the second inventor invented then can rely on the date of resumption for the date of
her invention
Foreign Activities: Must abandon in every country
Foreign Filing dates is an effective US filing date only for purposes of claiming priority of the claimed invention(In Re Hilmer)
Individual inventor's prior art does not constitute prior art for themselves
Statutory bars are keyed to the time of filing ( 102(b),(c),(d))
102(b) Statutory Bars: If the invention was...
(1) Patented in US or a foreign country more than one year prior to the date of the patent filing in U.S. or
(2) Printed publication in US or a foreign country more than one year prior to the date of the patent filing in U.S. or
See 102(a)(3)
(3) In public use in the US more than one year prior to the date of the patent filing in U.S. or
Private Use
The inventor can make private, personal use of the invention w/o triggering 102(b).(Egbert)(Baxter)
Public Use
Rule: Otherwise use by...
(a) persons other than the inventor
Ex: Friends, # irrelevant
(b) use patent-ready invention
Concealed within a device(Egbert) or from use (Metallizing); still use
Use of many may create more proof, but one well-defined example is just as effective.
(c) in the way the invention was intended to be used and
(d) under no limitation, restriction or obligation to keep the invention secret,
Consider Agreement of Confidentiality
(e) triggers one year grace period until patent rights are lost
Commercial Use (Metallizing Engineering Co: )
(a)Inventor's
(b) non-public(Gore) or public

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Commercial Use (Metallizing Engineering Co: )

(a)Inventor's
(b) non-public(Gore) or public
(1) Gore If invention is used to manufacture products for public sale.
Even though examination of the products may not reveal the nature of the process or the machine.
Rule: Counts as public use triggering the one-year statutory period. (Gore)
(c) commercial use of a
Even if only once.
(d) patent-ready invention,
(e) in the U.S.
No bar for foreign use
(e) will trigger grace period:
3rd party Unrelated Secret Use of the Invention
(A) Prior to A's invention: 102(a) problem for "known or used by others"
(B) After A's invention: No statutory bar under Gore.
Experimental Use Exception - Is inventor still developing the product? Experimental use will not trigger 1yr statute of limitations.
Rule: The use of an invention by the inventor or those under his control solely in order to test its qualities, remedy its defects, and bring it to perfection is not a public use (City of Elizabeth - Wooden
Pavement)
Intent controls.
Must formally request feedback (Lough v. Brunswick Corp - Boat mechanism)
Evaluation periods
Reasonable where unsure if the invention will serve its intended purpose (Seal-Flex, Inc. v. Athletic Track & Court Constr)
102(b) bar does not start to accrue while such determination is being made.
Experimental Use Factors(One not absolutely determinative over others):
(a) whether the experimentation was for the benefit of the inventor or of the user
if for the user then probably commercial, not experimental
Okay if public gains benefit
(b) Level of control over third parties use of the invention
Impose confidentiality limitations, systematically collecting results etc.
(c) Necessity of actual 3rd party use of invention
(d) How far along the invention was in the developmental process
(e) How many prototypes?
(f) How long did testing go on?
(g) How good of records were kept on testing? Data?
(h) Where there confidentiality agreements?
(i) Where was experimentation performed
Ok if in public, but needs strict control
No need for staying in shop
Market Testing Exclusion (In re Smith)
Air freshener market test asked housewives commercialization questions (packaging, odor) that didnt relate to the functionality, so created a bar.
b. Watch for Testing the Market Factors (the difference between testing the invention and testing the market for the response of the invention):
1. Experimentation on unclaimed features
2. Experimentation for commercial refinement
3. experimentation of testing the market
(4) On sale in the US more than one year prior to the date of the patent filing in U.S.
On sale if offered for sale regardless of actual sale or delivery
An invention is on sale if there has been a... (Pfaff, Abbott)
(1) Single sale or definitive offer to sell, in secret or not, and
*Different types of sales
(A) Invent, specific offer for sale, performance: Bar at time of offer
(B) Invent, general offer for sale, performance: Bar at time of performance
Since invention was not relied upon for sale. No profiting off of it and easier to administer.
(C) General offer for sale, invent, performance: No good answer.
(1) Pfaff: Moment of invention raises bar, that item is now subject of a commercial offer.
(2) However, a general offer for sale might not be fairly read as a "commercial offer for sale" since the inventor isn't selling the exact invention. Thus maybe it
should be at performance.
(D) Specific offer for sale, invent, performance: Pfaff, bar raised at time of offer.
(2) invention must be ready for patenting Either
(i) Proof of reduction to practice before the critical date; or
(ii) Proof that prior to critical date inventor had prepared drawings or other descriptions of invention that were sufficiently specific to enable a POSA to practice the invention
Ex: Abbott "If a product for sale inherently possesses each of the limitations of the claims, then the invention is on
sale, whether or not the parties recognize that it contains those claimed characteristics.
Third party sale will preclude patent, even if stolen
Invention cannot be "on sale in this country, more than one year prior to date of application."
Allowed to sell a concept w/o hitting the bar but can't sell the embodiment. (Moleculon - Rubik's Cube)
An inventors display of a cube puzzle (Rubiks) to colleagues prior to one year before filing of patent application was not a public use rendering the patent invalid.
Inventors discussions with assignee and assignees contact with a toy manufacturer did not establish public use, where the discussions did not disclose the workings of the puzzle.
102(c) Abandonment of intention to get a patent, not of the invention itselfmoves the invention to the public
domain
Requires
Deliberate, though not necessarily express, surrender of any rights to a patent.
To abandon the invention the inventor must intend a dedication to the public.
Such dedication may be either express or implied, by actions or inaction's of the inventor.
Delay alone is not sufficient to infer the requisite intent to abandon.
Not a problem where:
a. The inventor keeps the invention secret and uses it for his own non-commercial purposes.
b. The inventor files an application and then abandons the application before it is published. Later the applicant refiles and begins prosecution again.
RULE: Secret Commercial Use for more than a year destroys your patent rights (Macbeth)
Counts as Use and Abandonment of interest in obtaining a patent
102(d) Impact of Prior Foreign Filing
Statutory bar if US application has not been filed within a year of foreign application on same invention that ultimately ripened into a foreign patent
Ex: US court doesnt have to look at foreign patent validity before deciding on a 102d challenge - (In re Kathawala (pg 635))
102(f) Derivation: if you did not yourself invent it, not entitled to patent
Campbell v. Spectrum Automation

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102(f) Derivation: if you did not yourself invent it, not entitled to patent
Campbell v. Spectrum Automation
Only the true inventor apply for the patent
Elements of derivation entails:
a. The invention was fully conceived by another person before it was conceived by the purported inventor
b. The conception of the invention was communicated to the purported inventor
c. The information communicated must have been an enabling disclosure of the invention and not merely information that could have made the invention obvious
102(f) mandates that no one is entitled to a patent if it is derived from someone elses work, that work may be public, private, written or oral, domestic or foreign
XV. Where alleged ground of invalidity is derivation, fed. cir. also requires corroboration for witness testimony in order to invalidate a patent. Campbell (picture of dad wearing belt and the belt itself
used to corroborate oral testimony that employer had derived its invention from employees idea)
a. Standard of proof in derivation actions:
b. Issued patents are typically protected by presumption of validity under 282 thus clear and convincing evidence standard invoked.
c. In interference action, neither is entitled to presumption, thus party alleging derivation must prove by a preponderance of the evidence only.
d. Was the invention derived with the assistance of another party/person?
i. typically valuable suggestions from employees or others (essential to the completion of the patented invention) can only be used to establish defeat a patent when the suggestions would have
enabled an ordinary mechanic, without exercise of any ingenuity and special skill on his part, to construct and put the improvement in successful operation. Agawam Co.
e. The Agawam test is consistent with standard for anticipation: The suggestion does not constitute derivation unless:
i. 1. It possesses all elements of the invention
ii. 2. It is fully enabling
f. Shop rights
i. WHO OWNS THE PATENT?
a. Absent a duty to transfer the rights, a patent is the property of the inventor
b. Duty to transfer rights to Employer
1. Express contract specifically lays out who owns what
2. Hired to invent rule absent an express written contract, if person was hired only to invent, and invention turns into a patent, we will assume that the inventor transferred rights
3. Shop Right: a general employee, not someone hired to invent, used employers resources to create an invention the employer has a shop right in the patent
a. = A royalty free, nonexclusive, and irrevocable license to use the invention in the employers business
ii. Policy rationales for these rules:
a. If no express contract why do we care about rules 2 and 3?
b. The underlying principal is that the inventor owns the patent
c. As a matter of equity and fairness employer should get the right b/c its only fair if I provide the resources and hire you employer should get something
d. Otherwise there would be no incentive to provide resources and innovation
Non-obviousness ( 103)
Key to obviousness:
Whether the prior art would have suggested to those of ordinary skill in the art that they should make the claimed composition or device, or carry out the claimed process;
Whether the prior art would also have revealed that in so making or carrying out, those of ordinary skill would have a reasonable expectation of success
Pumpkin Trash Bag Case Rationale: court found lack of motivation to combine the references.
103(a)(b)Biotech processes are automatically non-obvious(c)
Graham Test for Obviousness:
1 - Basic Factual Inquiries
(1) Identify the scope and content of prior art
(A) Any 102 Prior Art can count, but...
(B) Is prior art pertinent? Analogous Art Test
(1) Is the prior art relevant or analogous art(within same field) OR
(2) Is the prior art reasonably related to the particular problem from which the inventor was trying to solve.
(2) Difference between the prior art and claims at issue?
If small and non-techinical differences are apparent from prior art then no patent (Cook Chemical)
(3) Level of ordinary skill in the pertinent art.
Would a PHOSITA immediately see that the thing to do was X? (Graham)
Person skilled in art: Depends on what ordinary skill is in the art.
Would a person having ordinary skill in the art have made this leap?
Ex: Layman - Less likely to be obvious
Consider average education level of person
Obviousness at time of invention
PHOSITA expected to have knowledge of all prior art
(4) Consider Secondary Considerations
Only consider where prima facie case of obviousness stands
Causal Nexus Requirement:
there has to be a nexus (connection) between the secondary consideration and the merits of the claimed invention (rather than some other factor).
Commercial success cannot be the result of the marketing
a) does prior art teach away (Adams)? increase nonobviousness
b) commercial success? increase nonobviousness
c) long felt but unsolved need? increase nonobviousness
d) failure of others? increase nonobviousness
2 - In light of factual inquiries determine whether invention as a whole was obvious a time of invention to PHOSITA
Requirements
(1) As a whole...
Although each element may be prior art, it is the combination that makes it a unique invention.
103 Obviousness can be found through a series of patents unlike 102
(2) Presumption that inventor knows, as has in mind, all the reasonably pertinent prior art. (Winslow)
Teaching, Suggestion and Motivation(TSM) Test for Combination Patents
(1) Test seeks concrete evidence of motivation or suggestion to modify or combine prior art elements
(2) Three forms of evidence for a teaching, suggestion or motivation
(1) Nature of the problem may suggest a combination(Ruiz)
(2) Teachings of the pertinent references may suggest a combination(In re Rouffet)
(3) Customary knowledge of PHOSITA's may suggest a combination (Nat'l Steel car)
(3) KSR Additions/Clarifications
Looser version of TSM
Inventor's have "Common sense" and "Ordinary Creativity"
Broadening of customary knowledge
Obvious to Try Test
If selection pool was of 3 possible configurations then obvious

(3) KSR Additions/Clarifications

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Obvious to Try Test

If selection pool was of 3 possible configurations then obvious
If Pool was of 5000, then not obvious
Invention must be fully disclosed Must contain: ( 112)
C laimin g R eq u iremen t: A patent mus t include one or more claims w hich clearly and dis tinctly des cribe the invention, s etting forth its cons tituent elements .
Definiteness of Claims Test ((Orthokinetics, Inc. )
(1) have you defined the claim as well as it can be inlight of the technology(specification)?
(2) is it sufficiently detailed for POSA to determine what you claimed?
(3) Claims must not be "inherently ambiguous" (Standard Oil )
En ab lemen t R eq u iremen t:
Application must (Elements for Make & Use):

If you have to do a little work to turn the written description into the invention that's ok, but...
(1) When filed
(2) Must contain disclosure sufficiently clear and complete
(3) To enable POSA to make & use
(4) The invention as claimed
(5) Without undue Experimentation
Would disclosure require undue experimentation? (Wands Factors):
May require expert testimony
(a) Quantity of experimentation necessary;
(b) Amount of direction or guidance presented;
(c) Presence or absence of working examples;
(d) Nature of invention;
(e) State of prior art;
(f) Relative skill of those in art;
(g) Predictability of the art;
(h) Breadth of claims (Undue Breadth Doctrine)
CASE: Incandescent Lamp Patent (1895)
Claimants stipulate that Edison infringed upon their patent by employing `material that very broadly fell within the family of incandescing conductors of carbonized fibrous material. Edisons
position is that not any material that fell into this category was suitable and that the patent was so broad as to be non-descriptive or inadequately descriptive.
Issue: Is complainant entitled to monopoly on all fibrous and textile materials for incandescent conductors?
Held: No. Not enabled. All plant matter works the same (some better than others). Edison entitled to patent.
SM cannot be entitled to a monopoly over all textiles for incandescent conductors. If SM had tested all or most of the textiles and determined which were good etc., then the claim wouldnt be
too broad but they didnt
Bes t Mod e R eq u iremen t:
Applicant must set forth the best mode that she contemplates of carrying out her invention as of the filing date.
Best Mode Test (Must show both)(Chemcast Corp):
(1)Subjective: At the time of filed, did inventor know of a better method than the one disclosed
We only care what inventor thinks best mode is. If there isn't one...then there isn't one
If the inventor did know of a better mode and the specification does not direct practitioners to it, the best mode has been concealed, and the claim is invalid.
(2)Objective: Did he disclose it adequately to enable one skilled in the art to practice it.
Clarity of Best Mode: Must be clear what sentence does this, can't sneak it in.
Balancing: If best mode is totally economically infeasible, you have to balance the factors and give what you think to be, so if you think cheaper less effective way is best, you have to give it.
No need to Update: As of date of filing, if you file today and you improve claims over next few months and discover better mode, don't have to update. One-time req.
Written d es crip tion req u iremen t
The patent specification must clearly allow persons of ordinary skill in the art to recognize that you were in possession of the invention.Gentry Gallery
Claims must be supported by specification, cannot forget claims in specification (Lizardtech)
Must be inventor to patent
Infringement
A. 271(a): ...whoever without authority makes, uses, offers to sell, or sells any patented invention, within the
United States (or imports into the US) any patented invention during the term of the patent therefore, infringes the
patent.
1. "makes, uses, offers to sell or who imports the patented invention into the US"a: This is very broad, can you use a patented invention you buy? What about experimenting and repairing?
Importing, selling, offering to sell, or using a product made abroad through a process protected by a US patent
Manufacturing or selling certain components of a patented invention to be assembled abroad
Intent doesn't matter w/patents.
One principle of infringement: adding things does not avoid infringingment (but could get an improvement patent!). Not having something in the patent does avoid infringement.
First sale doctrine: Allows for resale.
Repair/Reconstruction: You change bag on vacuum cleaner, one of the patented elements.
Cases where people buy used patented goods, swap out all elements sell them as refurbished.
2. "patented invention": What is it? Claim interpretation, how do courts understand the scope?
3. (b), (c) look at 3rd party liability issues.
An infringement analysis entails two steps:
(1) Determining the meaning & scope of the patent claims asserted to be infringed, and
Mark man Hearin gs : I n terp retation /con s tru ction of p aten t claims is a matter of law exclu s ively for th e ju d ge.
D e N ovo R eview : C ou rt gets to con s tru e claims review ed d e n ovo, s o fed cir d oes n 't h ave to refer to w h at d is trict cou rt d id .
What's left for the jury?
a. Juries still get to match construed claim to accused device.
b. Non-obviousness analysis left to jury
Paten t ow n ers righ t to exclu d e oth ers from mak in g, u s in g or s ellin g th e p aten ted in ven tion is d efin ed an d limited b y th e lan gu age in th at p aten ts claims .
D ifficu lt to w rite claims . Mu s t b e n arrow en ou gh to avoid p rior art, b road en ou gh to get righ ts to th in gs you d on 't k n ow yet, p lu s racin g as p ect.
I n terp retation
Terms must have consistent meanings across claims
General rule: Look at express language of claim, but interpret in light of a lot of things.
Intrinsic evidence:
Drawings,
Specification
Precedent
Statutes
Prosecution History:
Applicant sometimes makes statements during prosecution that limit the meaning of the claim terms
To distinguish claims from prior art (this is x, prior art is y what you say this is may shed light on what claim terms mean);

Topic

Prosecution History:
Applicant sometimes makes statements during prosecution that limit the meaning of the claim terms
To distinguish claims from prior art (this is x, prior art is y what you say this is may shed light on what claim terms mean);
Amending claims (fact of change may shed some light); etc
Extrinsic evidence: Courts sometimes say cant use this, unless none of the canons do the job
Articles in the field
Expert testimony can sometimes be used
Dictionaries
Treaties
Only used to help the court come to the proper understanding of the claims, not to vary or contradict the claim language
Interpretive canons: what general rules of interpretation courts apply in interpreting claims
Where Intrinsic evidence unambiguously delineates scope, it controls.
1) Claims
2) specification and
3) prosecution history.
1. Claim language - Heavy Presumption in favor - Plain meaning to people in the field rule:
We start with the assumption that the plain meaning is right.
May consult General and technical dictionary
2. Claim-specification relationship
a. one may not read a limitation into a claim from the written description, but
b. one may look to the written description to define a term already in a claim limitation, for a claim must be read in view of the specification of which it is part
c. Claim must explicitly recite a term in need of definition before a definition may enter the claim from the written description. So if want to use statements in written description to affect patents
scope must at least point to a term or terms in claim with which to draw those statements
Specification: Courts refer to it do define words and phrases used in claims, but limitations may not be "read into" the claims from the specification. Fuzzy line, see Unique Concepts
3. Patentee as lexicographer: 2 situations where a sufficient reason exists to require the entry of a definition of a claim term other than its ordinary and accustomed meaning.
a. If applicant provides explicit definition in specification for a claim term. This definition controls. and
b. where term or terms chosen by patentee so deprive claim of clarity that there is no means by which scope of claim may be ascertained from language used.
4. Claim differentiation
a. law rejects superfluous, contradictory, and incongruous things
b. construction of a claim that would render another claim in the patent redundant is to be avoided
i. I.E. dont construe 1 claim so as to import other claims in the patent into it.
5. Presumptive breach:
a. claim should be interpreted so as to preserve its validity (over prior art). Does not let court engage in wholesale re-write of claims.
b. if a claim is subject to two viable alternative interpretations, the narrower one should apply
Canon V: A Claim, if possible, should be construed to encompass a disclosed embodiment of the invention. But which embodiment and why not other embodiments? Generally not
limited unless you limit yourself in the specification.
Canon VI: Claims should be construed to uphold validity, but not when clear language in claims leads to a construction which renders the claim invalid. But claim interpretation and
validity have different standards of proof? Impossible and cumbersome to examine validity to determine claim meaning.
Canon VII: Where a claim is susceptible to both a broad and a narrow construction, the narrow should be adopted.
Canon VIII: Presumption of claim differentiation may be overcome by the intrinsic evidence and any relevant extrinsic evidence. Problem claims have different scope but which
controls
Canon IX: Extrinsic expert testimony may not contradict intrinsic evidence. Hard to determine one of ordinaryskill in the art at the time of invention
Interpretive procedures*:
When in the course of patent litigation a trial court should issue a definitive ruling regarding the meaning of claim terms, and what rules apply to appeals regarding these rulings.
1.
Markman v. Westview Instruments: court established
a. judges are to interpret claims of patent not jury
b. infringement cases today must be tried to a jury, but the construction of claims are for judges
c. claims have become highly technical
d. need to have a uniform standard for evaluating claims so that inventors will have notice no emotional reactions from jury etc
e. Parties may seek to obtain trial courts legal interpretation of claims and then ask court to certify that finding for appeal to fed circuit
f. We now have Markman hearings w/ their own evidentiary and provedural rules making them mini-trials that set terms for rest of litigation. Few
interlocutory appeals have happened however
i. Markman: fed circuit reviews it de novo giving no deference to trial courts construction of the claims
2.
Hilton Case: fed circuit upheld power of a jury to resolve questions of infringement under the doctrine of equivalents even though it was argued this doctrine is an equitable
issues
3.
(one for the court to decide). Fed circuit emphasized factual questions present in such cases.
1996 - US Sup. Ct. claim construction is a matter of law that much be resolved by judge before you get to trial on legal issue - not a matter of fact. Now we sometimes have Markman
hearings before trial (after this case) to determine meaning of claims. Claim construction is much like interpreting a statute.
D raftin g a C laim: C laims aren 't ab ou t d is clos u re as mu ch as d efin in g th e p rop erty righ t in ven tor w ill get. Paten t ap p lication as w h ole is ab ou t d is clos u re. A s k
if you are coverin g too mu ch or too little.
Claims should be interpreted as to preserve their validity.
1. Lots of discretion
a. Can coin new terms
b. Constrained by 112. Must be 1 sentence.
c. PTO "manual of patent examination procedure" gives details of little nuances.
d. In general, there are conventions but not firm rules on language of patent.
2. Elements of a claim
Two Claim constraints
a. Cant claim anything within publicly available information (prior art)
b. Cant claim anything beyond the actual discoveries of the inventor (Morse)
a. Preamble: "A writing tool", "A composition of matter", "A method of..." Provides a general introduction to invention. Is not limiting on the rights of the inventory,
Unless it breathes "life and meaning" into your claim.
(A) Not limiting: "A diagnostic medical imaging system"
(B) Possibly limiting: "A diagnostic medical imaging ultrasound system capable of being housed on a portable support
Example: A device for attaching pages together
b. Transition: 3 common ones
(A) "Comprising": Broad. If elements of patent are A B and C, and someone does A B C & D, there is infringement.
(B) "Consisting Essentially of": Intermediate. If an invention consists essentially of elements A, B, and C, the claim would cover a variant having the additional element D only if D did not
make the variant essentially different from the claimed invention.
(C) "Consisting of": Narrow. Case where what is cool about invention is you did it in only X elements.
c. Body: Introduce specific limiting elements, i.e., what makes up your invention.
(A) Usually want each element introduced in a new clause; a single sentence
(B) Must be clear what the relationship is between elements.
(i)Internal references must be clear

c. Body: Introduce specific limiting elements, i.e., what makes up your invention.
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(B) Must be clear what the relationship is between elements.

(i)Internal references must be clear
(C) Broader claims cover more but expose you to litigation more.
(D) Narrower get you less but are more isolative
3. Claim Formats: 2 formats, independent and dependent
Requirement for antecedent basis: A claim is indefinite when it contains words or phrases whose meaning is unclear.
a. The lack of clarity could arise where a claim refers to "said lever" or "the lever," where the claim contains no earlier recitation or limitation of a lever and where it would be unclear as to what
element the limitation was making reference.
Independent & Dependent claims: Independent claims do not refer to any other claim(s). Dependent claims do.
(A) Subsequent claims narrows the scope of the patent as set out in the first claim.
Ex. A windmill according to claim 1, wherein the wind-catching device is a set of rigid blades.
(B) Advantage of dependent: Form of insurance. If patent office grants a broad claim and in later litigation the broad claim is declared invalid, no recourse. Narrower dependent claims protect
against invalidation. Validity of dependent claims is separately assessed and may be upheld even if the claim it is dependent on is struck.
b. "Means for" Functional Claims: Allows for equivalents to be covered for a function*
(A) Ex. A hammer comprising a head, a handle, and a means for attaching the handle. Covers the means described in specification and equivalents.
(B) Have to be careful, court may not agree on what "equivalent" is. For example glue wouldn't be equivalent for a nail.
Product by Process: Something you created that you don't know how to describe but you can describe the process by which you yield it.
(A) Limited protection: Used to be you got rights to product regardless of process. Now, fed cir says all you get is product as created by your process. If someone comes up with another way,
that's fine.
(B) Ex. An insulating material prepared by a process comprising the steps of...
d. Jepson Claim: Specifically for claiming an improvement to an existing technology. "An improved X, the improvement of which is Y.
(A) Case where preamble is limiting by design, conceding away X.
(B) Makes PTO's job easy claim concedes away a lot of the prior art.
(C) Some countries require or strongly favor it, so you might want to do this claim everywhere. PTO may push you to.
4. Strategy for Scope: Only time you need something narrower is if your broad claim as whole gets preempted
by prior art. Ex. softwood device vs. cedar device.
5. Pencil Example
a. Reference to outside non-marking substance you hold
b. Thing that does marking
c. Eraser
d. Means for connecting eraser to pencil: could do means for connecting eraser to wood. Separate element needed.
(2) Comparing the properly construed claims to the device accused of infringing.
Direct Infringement
(1) Literal Infringement: or
Accused product/process must include each & every limitation of the patent to literally infringe (any deviation from claim no literal infringement).
(2) Doctrine of Equivalents
The Question:
If there is not an equivalent for each element there is no infringement. Question is whether the accused product
or process contains elements identical or equivalent to each claimed element of the invention in the patent. Claim
language may expressly negate a theory of equivalents.
Ideas in Determining Equivalents:
(1) Things equal to the same thing may not be equal to each other;
(2) Things different for most purposes may be equivalents;
(3) Look to the purpose of the ingredient, the qualities and the function;
(4) Important factor is if a person of skill would have seen interchangeability
Ex:
(A) Claim for fork: (1) Fork comprising handle with (2) 4 tines attached.
(B) Suppose drafted as 5 elements: comprising handle, tine one, tine 2, ...
(C) Shrimp fork: 3 tines, is equiv to fork claim?
(1) First claim handle and 4 tines so equivalent.
(2) Second claim: Not enough elements to match up with all 4 tines, only 3, so not equivalent.
New technology can be equivalent.
Ex:
Another case found a patented method for laying pipe caling for a beam of light to allign pipe segments infringed
by the use of later developed laser beam technology.
Fed. Circuit held that major improvemnets in all the essential elements of hand-eld calculators rendered the
improved devices non-infringing.
4 limitations where Doctrine of equivalents will not apply
1) Prosecution History Estoppel: Requires that the claims of a patent be interpreted in the light of the proceedings
in the PTO during the application process. - Festo
Under the doctrine, any surrender of subject matter during patent prosecution precludes recapturing any part of
that subject matter, unless the patent-holder demonstrates that an amendment required during prosecution had a
purpose unrelated to patentability.
To submit an amended claim is a concession that the invention as patented does not reach as far as the original
claim.
The patentee is thus surrendering certain subject matter as a condition of receiving a patent.
A narrowing amendment made to satisfy any requirement of the Patent Act may give rise to an estoppel.
Presumption that all amendments are for the sake patentability
Patentee bears the burden to rebut PHE:
Ultimately: Patentee must show a POSA could not be expected to have drafted a claim that would literally encompass the equivalent.
(1) Equivalent was unforeseen at time of application: Patentee must claim foreseeable ways to practice invention.
(2) Rationale underlying amendment bears no more than a tangential relation to the equivalent in question: If purpose for amendment was different from the equivalent every amendment
you might make is for different purpose
(3) Some other reason suggests that patentee could not reasonably be expected to have described the insubstantial substitute in question.
If an amendment just concerns the form of the application and not the subject matter of the invention, then it would not narrow the patent's scope or raise an estoppel.
Only excludes for that one claim, still can get DOE for rest of invention
EX Curved v. straight bar if in file wrapper the inventors says my bar is curved and never straight. Or in
original the application was for straight and curved bars, but then took out the straight bar b/c prefer curved.
Cannot later claim straight is equivalent to curved b/c already told patent office it is not
2) Always restricted by prior art: if equivalent is in prior art, cant claim it
(d) Prior Art Issues
1. You cant expand your patent claim under the doctrine of equivalents so far that it covers the prior art
2. b/c if you would have gone to the PTO and claimed this, you would not have gotten it anyway since it was covered by the prior art
3. to test for this construct a hypothetical claim that they are trying to get if it encompasses the prior art then are not entitled to own it

2) Always restricted by prior art: if equivalent is in prior art, cant claim it

(d) Prior Art Issues
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2. b/c if you would have gone to the PTO and claimed this, you would not have gotten it anyway since it was covered by the prior art
3. to test for this construct a hypothetical claim that they are trying to get if it encompasses the prior art then are not entitled to own it
3) Public Dedication Doctrine: if information in patent that is disclosed in the specification, but not expressly
claimed, we will assume that it was deliberately disclaimed and dedicated to the public as background information
4) All Element Rule: every element in that claim is important; in order to find doctrine of equivalence infringement,
must look at every element of the claim and find equivalence

DOE
1. I s th ere eq u ivalen cy?
2. D oes a D OE limit p reclu d e in frin gemen t
Limits
D O E s urvived the 1952 A ct
LI MI T" A ll Elemen ts R u le" D octrine. confined to finding that each and every element of a
claim, or its functional equivalent, is found in the alleged infringement
Th e n u mb er of eq u ivalen ts is irrelevan t. 1-A ll can b e eq u ivalen t
D ETER MI N I N G EQU I V A LEN C E Intent plays no role to infringement
D ETER MI N I N G EQU I V A LEN C E P roper time for determining "know n interchangeability"
is time infringement
D ETERM IN IN G EQ U IV A LEN CE P articular linguis tic formulation les s important than
w hether a tes t probative of the es s ential inquiry is us ed
I f a n arrow in g amen d men t w as made during pros ecution, court s hould pres ume amendment
w as made for a s ubs tantial reas on related to patentability
Bu rd en on p aten t ow n er
Notice
Mark in g
Paten t N u mb er R eq u ired on an y p rod u ct th at h as a p aten t to receive d amages
I n frin ger w ill on ly b e liab le for d amages after th e in frin ger received actu al n otice of th e p aten t
Mark in g removes th e n eed to s en d letters to in frin gers
Inequitable conduct:
Must disclose to the patent office whatever you know you cannot
Make affirmative misrepresentations or
Misleading silences, but are under no obligation to search for prior art.
thus, the less you know the better off you are. So if you lie to patent office or omit (fail to disclose) things
Requirements to Prove: by clear and convincing evidence
1. materiality of patent reference nondisclosed or false information. info must be material to PTO, not in the sense that it would change the outcome.
If patent examiner would have considered it important even if they would have decided in your favor, you have to disclose it. AND
Gross negligence does not itself justify an inference of intent to deceive - the involved conduct, viewed in light of all the evidence, including evidence indicative of good faith, must indicate sufficient
culpability to require a finding of intent to deceive.
C ou rt rejects evid en ce th at on ly s h ow s on ly gros s n egligen ce. Mu s t b e ab le to fin d
d eceitfu l in ten t.
2. intent by patent applicant to deceive the PTO. Conduct designed to deceive. Ideally shown by direct evidence but more commonly by indirect evidence of circumstances.
Examples
Burying reference:
Disclosing something damaging somewhere in list of 200 references in hopes they might not actually look at all of them.
Do this deliberetely can be inequitable conduct. You are trying to mislead the patent office.
Results:
(a) unenforceability of the patent as a whole doesnt matter if it affected only one of the claims the whole patent is unenforceable
(b) is infectuous if you have filed other patent applications that stem then those can be rendered unenforceable as well
(c) can possibly get the patent back if you can prove that you are no longer acting badly and that the effects of your previous conduct have dissipated
Remedies
Damages 284: Basic Principles
The question is: had the infringer not infringed, what would the patentee have made?
For Lost sales...
DAMP: To obtain damages for lost profits, a patentee must prove:
1) D emand for the patented product
2) A bs ence of acceptable non-infringing s ubs titutes
3) M anufacturing and marketing capability to exploit the demand; and
4) P rofit amount he w ould have made
A s s umes that but forinfringement, patentee w ould have made all s ales that infringer made at
patentees price infringers price to determine.
If Lost Sales cannot be proven...
Reasonable Royalties:
A mou n t p ers on d es irin g to mak e & s ell p rod u ct w ou ld b e w illin g to p ay as a royalty &
b e ab le to mak e a p rofi t.
Royalties cou ld exceed los t pr ofi ts d u e to:
E l a s ti ci ty of d eman d (ro ya l ti es l arge i f d eman d el as ti c s mal l p ri ce " l ea d s to l a rg e q u an ti ty "),
I n fri n ger cos ts (p res en ce o f cos t ad van tages ).

Factors to comp u te reas on ab le royalty:

(i ) L ack o f a ccep tab l e n on -i n fri n gi n g s u b s ti tu tes ,
(i i ) Ps p ol i cy o f l i cen s i n g th e p aten t,
(i i i ) Fu tu re b u s i n es s an d p rofi t # wou l d ex p ect to l os e l i cen s i n g,
(i v) Wh eth er th e i n fri n g ed p aten t gi ves th e en ti re mark et to P

Treble damages
Willful infringement
K now ing of the patent and the patent ow ners rights and dis regarding them
Attorneys fees- available in exceptional cases- 285
What is exceptional?
U s u ally I n eq u itab le con d u ct
Willfu l in frin gemen t
Injunctions 283
Preliminary Injunctions - Fed Cir:
(1) Reasonable likelihood of success on the Merits
Deci d ed on th e fi l i n g s (may b e a h eari n g). L o ok at val i d i ty & i n fri n g emen t. V al i di t y: p retty h i g h b a r
i f p aten tee can mak e cred i b l e s h owi n g. S T RAT E G Y: s u e weak g u y fi rs t, get h i m to con ced e v al i d i ty
(n ot d i s p os i ti ve, b u t p res u mp ti ve). I n fr i n gem en t : reas on ab l e p ro b a b i l i ty s td

(2) Irreparable harm to the patentee if the injunction isnt issued

Injunctions 283
Preliminary Injunctions - Fed Cir:
(1) Reasonable likelihood of success on the Merits
Topic

Deci d ed on th e fi l i n g s (may b e a h eari n g). L o ok at val i d i ty & i n fri n g emen t. V al i di t y: p retty h i g h b a r

i f p aten tee can mak e cred i b l e s h owi n g. S T RAT E G Y: s u e weak g u y fi rs t, get h i m to con ced e v al i d i ty
(n ot d i s p os i ti ve, b u t p res u mp ti ve). I n fr i n gem en t : reas on ab l e p ro b a b i l i ty s td

(2) Irreparable harm to the patentee if the injunction isnt issued

Pres u med u p on s h owi n g of val i d i ty/ i n fri n gemen t. Mark etp l ace h a rm (rep u tati on / s al es ). O n l y h a ve
2 0 yrs erod i n g w/ each p as s i n g d ay. L ack of commerci al u s e b y p aten tee wi l l h u rt th i s p ron g .

(3) Balance of Hardships between plaintiff and defendant favors seeking party
B u rd en on mova n t for i n ju cti on (p aten tee). S h u tti n g d own an i n fri n gi n g b u s i n es s I S NO T A
H ARDS H I P. W ou l d s i mp l e n egoti ati on s ettl e th e i s s u e? H ard s h i p s b ey on d th e i n fri n ger (i . e. s everi n g
wi n d ows / i n tern et l i n k )

(4) Public interest: Not in public's interest allow the infringement to continue
(en vi ro catas trop h e, i n fri n ger on l y on e mak i n g a l i fes avi n g med i ca l d evi ce)
Fai l i n g to meet on e of th e p ron gs i s u s u al l y fatal to getti n g a p rel i m i n ju n cti o n (b u t q u es ti on a b l e b /
c th ere s eems to b e a p an el s p l i t)

Permanent Injunctions
Uses same standard as that for preliminary injunctions
Protects against future infringement that may never be fully compensated in monetary damages, e.g. harm to
reputation due to confusion.
Not automatic: lies with discretion of court.
Normally only withheld in extreme situations, e.g. threat to public health.
Looks more at balancing of hardships than likelihood of success.
Arvhice
M etallizing v. G ore
G enus /S pecies Cas es *
if banana is claimed, you can't claim fruits
where large genus then species could be anticipated
If claims species within the same genus: must show claimed species has unexpected, improved or distinct (or
inconsistent) characteristics over members of prior art genus

CASE: Titanium Metals. If the claim covers several compositions, the claim is anticipated if one of them is in the prior art.
Claim can be redrafted to excise the single data point and there is no anticipation
N otes 3456 - 102(e)
Exam Q ues tions on N otes - p345 and p353