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What were the facts in the case In re Seaborg?

In re Seaborg (C5P23): Patent for element 95 (Am). (A)    Previous patent held by Fermi, discloses several nuclear reactors that create small amounts of Am. Patent doesn’t explicitly mention this, just scientific fact. Thus, must do inherent anticipation analysis, not regular anticipation. (B)    Enablement (1)    Fermi didn’t stress Am at all, we value the second patent. Doesn’t appear to enable it given Am in Fermi reaction is hard to detect, surrounded by junk from reactor. (2)    However, new patent does point to Fermi’s reactor as other way to produce it, partially resting on fact that Fermi didn’t point this out. (C)    Infringement/Anticipation Symmetry (1)    Since Fermi patent did not anticipate, Fermi won’t be infringing on  Seaborg’s patent if he continues using his reactor.

What were the facts in the case In re Seaborg?

In re Seaborg (C5P23): Patent for element 95 (Am). (A)    Previous patent held by Fermi, discloses several nuclear reactors that create small amounts of Am. Patent doesn’t explicitly mention this, just scientific fact. Thus, must do inherent anticipation analysis, not regular anticipation. (B)    Enablement (1)    Fermi didn’t stress Am at all, we value the second patent. Doesn’t appear to enable it given Am in Fermi reaction is hard to detect, surrounded by junk from reactor. (2)    However, new patent does point to Fermi’s reactor as other way to produce it, partially resting on fact that Fermi didn’t point this out. (C)    Infringement/Anticipation Symmetry (1)    Since Fermi patent did not anticipate, Fermi won’t be infringing on  Seaborg’s patent if he continues using his reactor.

What was the holding in the case In re Schreiber?

In re Schreiber (C5P21): Previous Swiss patent for funnel that dispenses oil. New patent for dispensing a few popped kernels at a time. (A)    Why inherent anticipation analysis? Not anticipation because prior patent doesn’t say size of funnel is size ? X numbers of kernels get through. In the new patent, one element has a limitation. (B)    Patent not granted because the shape of the top was inherently the size of the limitation laid out in second patent.

What do you mean by Logistics?

Logistics (A)    Use by 3rd party. A files for patent, gets it. B could file for reexamination, say A shouldn’t get the patent because 3rd party C invented first and didn’t abandon, etc thus creating prior art. (B)    Use by another inventor who thinks she was first: Suppose C is first to conceive, but hasn’t reduced to practice yet (but has been diligent). A files for a patent. C now has one year to file and can get an interference declared. (C)    Burden of Proof: C5P98

What are the Justifications for breaking diligence?

Justifications for breaking diligence: (a)    Legitimate justifications: Poverty and illness, regular employment, overworked patent attorney. Treat these cases as though lapse in diligence never occurred. - Seybold: Poverty is a circumstance the court will consider but not a blanket excuse. (C5P107). (b)    Not legitimate: Doubts about value or feasibility or work on other inventions. Griffith: (ch5p145) Stopped working on invention while waiting for particular grad student to matriculate and attempting to get outside funding as a validation step. Court does not see this as a valid reason for stopping work, Cornell took its chances by not funding the endeavor. - Rule: An unexplained break in activity of merely 3 months is sufficient to destroy diligence. (c)    If after resuming you are second to reduce to practice, can’t backdate your priority to date of conception or even the date you resumed work. You lose, unless you have a legitimate reason in which case date of conception is preserved.

What is meant by Reasonable diligence in reducing to practice?

Reasonable diligence in reducing to practice (1)    RTP = Inventor must have a constructed embodiment for performed process including the recited elements. (C5P153). (2)    If A and B are after the same patent, and A RTP first, regardless of whether B files first, A has a presumption of priority by virtue of an earlier RTP. B, being last to RTP, gets the patent only if: (a)    B can show she conceived first  and - Must corroborate this, ideally a notarized lab notebook. (C5P100) (b)    B can show that her continuous diligence precedes A’s date of conception. - If B has a break in diligence, date of resumption must precede A’s date of conception. Seybold (C5P107). (3)    Thus: (a)    If A conceives first and RTP first, A gets patent regardless of diligence. (b)    If A conceives first, but RTP second, A gets the patent only if she was diligent in RTP from a date prior to B’s conception. The effect is as though conception was when diligence was resumed when its prior to B’s date of conception. (c)    If A conceives second and RTP second, A gets nothing, regardless of diligence. (d)    If A conceives first, A and B both have a lapse in diligence, and B RTP first, then B gets the patent unless A can show that she resumed diligence prior to B (and prove that she conceived first). (e)    If A and B conceive simultaneously but A is first to RTP, A gets the patent regardless of diligence. (f)    A and B RTP on the same day. First to conceive wins, regardless of diligence (C5P109) i.    Idea is that only the party last to RTP can be punished for lack of diligence. ii.    Last part of 102(g) states to consider both dates of conception and RTP. If date of RTP is same, makes sense we looked to conception. (4)    Justifications for breaking diligence: (a)    Legitimate justifications: Poverty and illness, regular employment, overworked patent attorney. Treat these cases as though lapse in diligence never occurred. - Seybold: Poverty is a circumstance the court will consider but not a blanket excuse. (C5P107). (b)    Not legitimate: Doubts about value or feasibility or work on other inventions. Griffith: (ch5p145) Stopped working on invention while waiting for particular grad student to matriculate and attempting to get outside funding as a validation step. Court does not see this as a valid reason for stopping work, Cornell took its chances by not funding the endeavor. - Rule: An unexplained break in activity of merely 3 months is sufficient to destroy diligence. (c)    If after resuming you are second to reduce to practice, can’t backdate your priority to date of conception or even the date you resumed work. You lose, unless you have a legitimate reason in which case date of conception is preserved.