Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology

1. Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology Week 11 Dr. Tal Lavian (408) 209-9112 Tlavian@berkeley.edu 321 Haviland Mondays 4:00-6:00 Week 11: Review

2. REVIEW What is it all about? • Teleflex sues KSR • Claims KSR infringed on their patent of connecting a sensor to a pedal to control throttle in a car • KSR argued that it is not patentable because it is obvious Week 11: Review

3. REVIEW The Final Ruling • Supreme Court ruled in favor of KSR unanimously • Justice Kennedy: “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” • Motivation could be found implicitly when it is obvious to try with the conditions listed in previous slide • Electrical sensors are becoming a norm over mechanical connections in everything, so market pressure dictated that KSR putting a sensor on the pedal is obvious as sensors are widely known to be more reliable and cheaper Week 11: Review

4. REVIEW KSR Summary • reaffirmed the four-prong analysis for obviousness set forth in Graham; • stressed that a reasoned analysis must be provided to support any conclusion of obviousness; • recognized the continued viability of the "teaching, suggestion, or motivation" (TSM) approach when properly applied; Week 11: Review

5. REVIEW KSR Summary • explained that TSM is not to be employed in a rigid or formalistic manner; • clarified that TSM is not the exclusive test whereby obviousness may be determined; and • explained that a broader range of rationales may be employed to support an obviousness rejection. Week 11: Review

6. PatentLawSummary • Patentable Subject Matter: when the first person extracts a product and makes it available for use, the product becomes a new thing commercially and therapeutically and is therefore patentable (Parke-Davis & Co. v. HK Mulford Co.) • Utility: A process whose only demonstrable utility is to aid in research is not patentable (Brenner v. Manson) • The Nature of Novelty: An invention is not patentable if it was known or used by others in this country before the patentee’s invention (Rosaire v. Nation Lead Co. Credit given to Merges, Menell, and Lemley’s Intellectual Property in the New Technological Age for much of the information Week 11: Review

7. PatentLawSummary(Cont’d) • Statutory Bars (Publications): Once an invention is in the public domain, it is no longer patentable (In Re Hall) • Statutory Bars (Public Use): If an inventor, having made his device, gives or sells it to another, to be used by the donee or vendee, without limitation or restriction, or injunction of secrecy, and it so used, such use is public, even though the use and knowledge of the use may be confined to one person (Egbert v. Lippmann) • The Experimental Use Exception: The experimental use of an invention by the inventor himself, or by any person under his direction has never been regarded as a public use (City of Elizabeth v. Pavement Co.) Credit given to Merges, Menell, and Lemley’s Intellectual Property in the New Technological Age for much of the information Week 11: Review

8. Patent Law Summary (Cont’d) • Priority Rules and the First to Invent: When evaluating excuses for inactivity in reduction to practice, courts may consider the reasonable everyday problems and limitations encountered by an inventor (Griffith v. Kanamaru) • Nonobviousness: A device which is an obvious extension of the state of the art for that type of device is not patentable (Graham v. John Deere Co.) • Combining References: Prior art must explicitly suggest the substitution that is the difference between a claimed invention and the prior art to those of ordinary skill in the art in order for the claimed subject matter to be rejected as obvious under 35 USC Sec. 103 (In re Vaeck) Credit given to Merges, Menell, and Lemley’s Intellectual Property in the New Technological Age for much of the information Week 11: Review

9. Patent Law Summary (Cont’d) • Combining References: The obviousness standard must demonstrate actual evidence, which must be clear and particular, in order to be applied. (In re Dembiczak) • Describing and Enabling the Invention: A patent must state with specificity the composition of the materials to be mixed together to produce the result intended to be obtained if they are not capable of such exact description, then the inventor is not entitled to a patent. (The Incandescent Lamp Patent). • Describing and Enabling the Invention: Patent claims may be no broader than the supporting disclosure, and thus, a narrow disclosure will limit claim breadth. (The Gentry Gallery Inc. v. The Berkline Corp.) Credit given to Merges, Menell, and Lemley’s Intellectual Property in the New Technological Age for much of the information Week 11: Review

10. Patent Law Summary (Cont’d) • Literal Infringement: Literal infringement of a patent cannot be proved if the accused product is missing even a single element of the claim (Larami Corp. v. Amron) • Injunctions: In matters involving patent rights, irreparable harm may be presumed when a clear showing has been made of patent validity and infringment (HH Robertson Co. v. United Steel Deck Inc.) • The Doctrine of Equivalents: Narrowing a claim to obtain a patent does not cause the patentee to surrender all equivalents to the amended claim element. (Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. Ltd.) • Subject Matter “Disclosed but Not Claimed”: In a patent specification, under the doctrine of equivalents, there is no access to any subject matter that is disclosed but not claimed. (Johnson & Johnson Associates v. RE Service Co.) Credit given to Merges, Menell, and Lemley’s Intellectual Property in the New Technological Age for much of the information Week 11: Review

11. Patent Law Summary (Cont’d) • Contributory Infringement: A person induces infringement under 35 USC Sec. 271 by actively and knowingly aiding and abetting another’s direct infringement (CR Bard Inc. v. Advanced Cardiovascular Systems Inc.) • Inequitable Conduct: Inequitable conduct in a patent application resides in failure to disclose material information or submission of false material information with an intent to deceive (Kingsdown Medical Consultants Ltd. V. Hollister Inc.) • Patent Misuse: The exclusive right granted in every patent must be limited to the invention described in the claims of the patent and it is not competent for the owner to extend the scope of its patent monopology by restricting the use of it to materials necessary in its operation that are not part of the patented invention. (Motion Pictures Patents Company v. Universal Film Manufacturing Company et al.) Credit given to Merges, Menell, and Lemley’s Intellectual Property in the New Technological Age for much of the information Week 11: Review

12. SILLY PATENTS!!!! Week 11: Review

13. GODLY POWERSUS 2007/0035812 A1 Vivian Tang IEOR 190G Patent Engineering Silly Patents Presentation March 30, 2009

14. WHO, WHAT, and WHEN…

15. Just a Few of the Crazy Claims… WHAT IS CLAIMED IS: 1. Godly powers are being used on planet Earth. For example, technology (i.e. Electronic and Medical) is being assisted by godly powers throughout the planet. • Godly powers could be used prior, during, and after godly product/procedure. For example; • Before—in the making of a device, like a micro-processor chip. • During—in the operation of a device, like an inkjet printer cartridge. • Afterwards—like gradual scar removal from breast implant surgery. A magician might perform magic before, during, and after, for any given trick (“illusion”). 2. There is a plan governing our existence and actions—God's plan. 3. Christopher Anthony Roller is the godly entity powering Earth with godly powers as stated in claim 1. 4. From claim 2, God's plan (or Game of Life) puts restrictions on what can currently be done with godly powers, or even if/when.

16. Hurricane HouseUS Patent Issued 1999 Don’t let thunderstorms, tornadoes and hurricanes devastate your home. Commercial airliners are designed to withstand winds in excess of 500 miles per hour. Rip out the seats and fill retired planes with suitable home furnishings.  With the plane mounted on a rotating base this house rotates into the wind as if it were flying at 30,000 feet. Flooding? The seatback cushions may be used as flotation devices.  You are now free to move about your home.  Credit Given to Jeffrey R. Kurin, Esq. Of Fliesler Meyer LLP Jeffrey R. Kurin, Esq.Fliesler Meyer LLP

17. Alarm ForkUS Patent5,421,089 Issued 1995 Less food, less weight gain. And we're here to help, with the amazing Alarm Fork. You can only eat when your fork gives you the green light. That's right, once you’ve shoveled some food into your mouth, the fork sensors cue the fork to emit a red light. And you know what that means, STOP! Now wait, tick, tick, tick, tick… ding! Green light, take a bite. Credit Given to Jeffrey R. Kurin, Esq. Of Fliesler Meyer LLP Fliesler Meyer LLP

18. Pet PetterUS Patent  4,872,422 Issued 1989 Hey!  We can't have you and Benji breaking up for lack of affection. Don’t neglect Benji. Now, when Benji needs a little extra affection, he can step right up to his new Pet Petter!  An electric eye spots Benji and the swinging arm starts petting. Guess what? It can be also be used for human infants.  Credit Given to Jeffrey R. Kurin, Esq. Of Fliesler Meyer LLP Fliesler Meyer LLP

19. Happy Camper US Patent Issued 1985 Sven is a happy camper.  Why? Because it's cold outside and his new Happy Camper sleeping bag allows him to unzip some zippers and poke his arms and legs out and walk around to answer Mother Nature's call. Credit Given to Jeffrey R. Kurin, Esq. Of Fliesler Meyer LLP Fliesler Meyer LLP

20. Squabble Shield US Patent Issued 2001 Johnny and Tommy always squabbling and poking each other in the backseat? No problem! Install a shatterproof, clear plexi glass Squabble Shield between them and you will enjoy a peaceful ride. Credit Given to Jeffrey R. Kurin, Esq. Of Fliesler Meyer LLP Fliesler Meyer LLP

21. Pantyhose 3x US Patent 5,713,081 Issued 1997 Ladies, an untimely snag in your pantyhose at that important business meeting? An unsightly run while you’re out and you don’t have a spare? With Pantyhose 3x, you don’t have to carry a spare. With this ingenious design you simply (and discretely) rotate your leg into the new, unblemished pantyhose appendage. The damaged hosiery leg is then tucked into a pocket in the crotch of the pantyhose. Comfortable? You be the judge. Credit Given to Jeffrey R. Kurin, Esq. Of Fliesler Meyer LLP Fliesler Meyer LLP

22. Beerbrella US Patent 6,637,447 Issued 2003 Two of America's favorite pastimes are baseball and beer.  Sitting in the hot sun, slaking your thirst with an ice cold beverage... our kind of day. But there's also the hot sun. Now, there’s the Beerbrella! The Beerbrella conveniently clips onto your bottle, providing cooling shade as it creates your own personal beverage oasis.  Credit Given to Jeffrey R. Kurin, Esq. Of Fliesler Meyer LLP Fliesler Meyer LLP

23. Apparatus for Facilitating the Birth of a Child by Centrifugal Force • Patent #3216423 • Filed January 1963 • Independent patent; not part of a company • George and Charlotte Blonsky • 1999 IG Nobel Prize • Parody of Nobel Prizes for things that make people laugh

24. Drawings

25. Drawings

26. Important Claims • “Child delivery apparatus comprising a centrifuge, means for supporting said centrifuge for rotational movement about a vertical axis, means for holding the patient’s body against dislodgement by the centrifugal forces created in such rotational movement…” • Child bearing apparatus such as defined in claim 1, in which said means for supporting the patient’s limbs, include means engaging and supporting the thighs of the patient, and means for holding the feet in place. • Goes on for 14 total claims.

27. Why this is a stupid patent • Most women in labor will not have the physical strength to go through centrifuge • Extreme danger to child due to high g’s experienced • Lots more floor space and costs required for hospitals • Too much risk for something to go wrong

28. Laser + Cat = Patent? Laser Cats!!! By Holland Smith Cats

29. US patent #5443036:Method for Exercising a Cat • Filed: November 2nd, 1993 • Granted: August 22nd, 1995 • The problem? “Cats are not characteristically disposed toward voluntary aerobic exercise. It becomes the burden of the cat owner to create situations of sufficient interest to the feline to induce even short-lived and modest exertion for the health and well-being of the pet. • The solution…

30. “A method for inducing cats to exercise consists of directing a beam of invisible light produced by a hand-held laser apparatus onto the floor or wall or other opaque surface in the vicinity of the cat, then moving the laser so as to cause the bright pattern of light to move in an irregular way fascinating to cats, and to any other animal with a chase instinct.”

31. The Drawings

32. Someone, somewhere, drew this. Think about that.

33. 1993’s vision of the future…

34. What is claimed is: • 1. A method of inducing aerobic exercise in an unrestrained cat comprising the steps of: • (a) directing an intense coherent beam of invisible light produced by a hand-held laser apparatus to produce a bright highly-focused pattern of light at the intersection of the beam and an opaque surface, said pattern being of visual interest to a cat; and • (b) selectively redirecting said beam out of the cat's immediate reach to induce said cat to run and chase said beam and pattern of light around an exercise area.

35. 2. The method of claim 1, wherein said bright pattern of light is small in area relative to a paw of the cat. • 3. The method of claim I wherein said beam remains invisible between said laser and said opaque surface until impinging on said opaque surface. • 4. The method of claim 1 wherin step (b) includes sweeping said beam at an angular speed to cause said pattern to move along said opaque surface at a speed in the range of five to twenty-five feet per second.