INTELLECTUAL PROPERTY

Law 388 Professor Eric Goldman

COURSE SUPPLEMENT Fall 2011

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NONDISCLOSURE AGREEMENT (ONE-WAY) In connection with the disclosure of certain confidential and proprietary information of Client (Client), you agree to the following: Confidential Information means all information disclosed by Client to you that Client deems confidential. Confidential Information shall not include information that is or becomes generally known through no action or failure to act by you, or that you know at the time you receive such information. You shall not disclose Confidential Information to any third party, and you shall use Confidential Information only to the extent required to accomplish the purposes of disclosure. All Confidential Information shall remain Clients property and shall be returned (or, at Clients option, destroyed) upon Clients written request. Except as expressly set forth herein, Client is not granting you any right or license to any Client intellectual property rights under this Agreement. The parties acknowledge that monetary damages may not adequately remedy an unauthorized use or disclosure of Confidential Information, and that Client is entitled, without waiving any other rights or remedies and without posting a bond, to such injunctive or equitable relief as may be deemed proper by a court of competent jurisdiction. This Agreement is governed by California law excluding its conflicts of laws principles. This Agreement is the entire agreement, and supersedes all prior or contemporaneous oral or written agreements and understandings, between the parties regarding the subject matter hereof. The Agreement may be changed only in by a writing signed by both parties. If any provision of this Agreement is held unenforceable, that provision shall be severed and the remainder of this Agreement will continue in full force and effect. By: Name: Company: Title: Date:

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MUTUAL NONDISCLOSURE AGREEMENT This MUTUAL NONDISCLOSURE AGREEMENT (the Agreement) is made effective as of _____________, 201__ between X and Y.
1. DEFINITIONS. Confidential Information is all (a) written information disclosed by one party (the Disclosing Party) to the other (the Receiving Party) marked confidential or with a similar legend, or (b) oral information identified as confidential when disclosed to the Receiving Party and thereafter summarized in a writing marked confidential sent to the Receiving Party within 10 days of disclosure. The disclosure Purpose is ___________________________. If the foregoing is blank, the disclosure Purpose is to evaluate the desirability of a business development relationship between the parties. 2. RESTRICTIONS/OBLIGATIONS. For 3 years from the applicable date of disclosure, the Receiving Party shall: (a) disclose the other partys Confidential Information only to employees who need to know; (b) not disclose the other partys Confidential Information to any third party, except that the Receiving Party may disclose Confidential Information as compelled by law if the Disclosing Party is given written notice prior to such disclosure; (c) use the other partys Confidential Information only for the Purpose; (d) not reproduce the other partys Confidential Information; (e) not reverse engineer, decompile, or disassemble any software included in the other partys Confidential Information; and (f) not directly or indirectly export the other partys Confidential Information in violation of the law. 3. EXCLUSIONS. Sections 2(a)-(d) do not apply to Confidential Information which: (a) is or becomes generally known through no action or failure to act by the Receiving Party; (b) the Receiving Party knows at the time of disclosure; (c) a third party legitimately discloses to the Receiving Party; or (d) the Receiving Party independently develops without using the other partys Confidential Information. 4. OWNERSHIP. All Confidential Information shall remain the Disclosing Partys property and shall be returned (or, at the Disclosing Partys option, destroyed) upon the Disclosing Partys written request. A Disclosing Party does not grant any license (expressly, by implication, by estoppel or otherwise) to its trademarks, copyrights or patents pursuant to this Agreement. 5. EQUITABLE REMEDIES. The parties acknowledge that monetary damages may not adequately remedy an unauthorized use or disclosure of Confidential Information, and each party may, without waiving any other rights or remedies, seek injunctive or equitable relief to remedy such a breach. 6. GENERAL. This Agreement is governed by California law excluding its conflicts of laws principles. This Agreement is the entire agreement, and supersedes all prior or contemporaneous oral or written agreements and understandings, between the parties regarding the subject matter hereof. The Agreement may be changed only by a writing signed by both parties. If any provision of this Agreement is held unenforceable, that provision shall be severed and the remainder of this Agreement will continue in full force and effect.

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Bilski v. Kappos, 561 U.S. __ (2010) Justice Kennedy delivered the opinion of the Court, except as to Parts II-B-2 and II-C-2.* The question in this case turns on whether a patent can be issued for a claimed invention designed for the business world. The patent application claims a procedure for instructing buyers and sellers how to protect against the risk of price fluctuations in a discrete section of the economy. Three arguments are advanced for the proposition that the claimed invention is outside the scope of patent law: (1) it is not tied to a machine and does not transform an article; (2) it involves a method of conducting business; and (3) it is merely an abstract idea. The Court of Appeals ruled that the first mentioned of these, the so-called machine-or-transformation test, was the sole test to be used for determining the patentability of a process under the Patent Act, 35 U. S. C. 101. I Petitioners application seeks patent protection for a claimed invention that explains how buyers and sellers of commodities in the energy market can protect, or hedge, against the risk of price changes. The key claims are claims 1 and 4. Claim 1 describes a series of steps instructing how to hedge risk. Claim 4 puts the concept articulated in claim 1 into a simple mathematical formula. Claim 1 consists of the following steps: (a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumers; (b) identifying market participants for said commodity having a counter-risk position to said consumers; and (c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions. The remaining claims explain how claims 1 and 4 can be applied to allow energy suppliers and consumers to minimize the risks resulting from fluctuations in market demand for energy. For example, claim 2 claims [t]he method of claim 1 wherein said commodity is energy and said market participants are transmission distributors. Some of these claims also suggest familiar statistical approaches to determine the inputs to use in claim 4s equation. For example, claim 7 advises using well-known random analysis techniques to determine how much a seller will gain from each transaction under each historical weather pattern. The patent examiner rejected petitioners application, explaining that it is not implemented on a specific apparatus and merely manipulates [an] abstract idea and solves a purely mathematical problem without any limitation to a practical application, therefore, the invention is not directed
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JUSTICE SCALIA does not join Parts IIB2 and IIC2.

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to the technological arts. The Board of Patent Appeals and Interferences affirmed, concluding that the application involved only mental steps that do not transform physical matter and was directed to an abstract idea. The United States Court of Appeals for the Federal Circuit heard the case en banc and affirmed. II A Section 101 defines the subject matter that may be patented under the Patent Act: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Section 101 thus specifies four independent categories of inventions or discoveries that are eligible for protection: processes, machines, manufactures, and compositions of matter. In choosing such expansive terms . . . modified by the comprehensive any, Congress plainly contemplated that the patent laws would be given wide scope. Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980). Congress took this permissive approach to patent eligibility to ensure that ingenuity should receive a liberal encouragement. The Courts precedents provide three specific exceptions to 101s broad patent-eligibility principles: laws of nature, physical phenomena, and abstract ideas. While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be new and useful. And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years. The concepts covered by these exceptions are part of the storehouse of knowledge of all men . . . free to all men and reserved exclusively to none. The 101 patent-eligibility inquiry is only a threshold test. Even if an invention qualifies as a process, machine, manufacture, or composition of matter, in order to receive the Patent Acts protection the claimed invention must also satisfy the conditions and requirements of this title. 101. Those requirements include that the invention be novel, see 102, nonobvious, see 103, and fully and particularly described, see 112. The present case involves an invention that is claimed to be a process under 101. Section 100(b) defines process as: process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

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The Court first considers two proposed categorical limitations on process patents under 101 that would, if adopted, bar petitioners application in the present case: the machine-ortransformation test and the categorical exclusion of business method patents. B 1 Under the Court of Appeals formulation, an invention is a process only if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. This Court has more than once cautioned that courts should not read into the patent laws limitations and conditions which the legislature has not expressed. In patent law, as in all statutory construction, [u]nless otherwise defined, words will be interpreted as taking their ordinary, contemporary, common meaning. The Court has read the 101 term manufacture in accordance with dictionary definitions and approved a construction of the term composition of matter consistent with common usage. Any suggestion in this Courts case law that the Patent Acts terms deviate from their ordinary meaning has only been an explanation for the exceptions for laws of nature, physical phenomena, and abstract ideas. See Parker v. Flook, 437 U. S. 584, 588-589 (1978). This Court has not indicated that the existence of these well-established exceptions gives the Judiciary carte blanche to impose other limitations that are inconsistent with the text and the statutes purpose and design. Concerns about attempts to call any form of human activity a process can be met by making sure the claim meets the requirements of 101. Adopting the machine-or-transformation test as the sole test for what constitutes a process (as opposed to just an important and useful clue) violates these statutory interpretation principles. Section 100(b) provides that [t]he term process means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. The Court is unaware of any ordinary, contemporary, common meaning of the definitional terms process, art or method that would require these terms to be tied to a machine or to transform an article. Respondent urges the Court to look to the other patentable categories in 101machines, manufactures, and compositions of matterto confine the meaning of process to a machine or transformation, under the doctrine of noscitur a sociis. Under this canon, an ambiguous term may be given more precise content by the neighboring words with which it is associated. This canon is inapplicable here, for 100(b) already explicitly defines the term process. The Court of Appeals incorrectly concluded that this Court has endorsed the machine-ortransformation test as the exclusive test. It is true that Cochrane v. Deener, 94 U. S. 780, 788 (1877), explained that a process is an act, or a series of acts, performed upon the subjectmatter to be transformed and reduced to a different state or thing. More recent cases, however, have rejected the broad implications of this dictum; and, in all events, later authority shows that it was not intended to be an exhaustive or exclusive test. Gottschalk v. Benson, 409 U. S. 63, 70 (1972), noted that [t]ransformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines. At the same time, it explicitly declined to hold that no process patent could ever qualify if it did not meet [machine or transformation] requirements. Flook took a similar approach, assum[ing]

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that a valid process patent may issue even if it does not meet [the machine-or-transformation test]. This Courts precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under 101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible process. 2 It is true that patents for inventions that did not satisfy the machine-or-transformation test were rarely granted in earlier eras, especially in the Industrial Age. But times change. Technology and other innovations progress in unexpected ways. For example, it was once forcefully argued that until recent times, well-established principles of patent law probably would have prevented the issuance of a valid patent on almost any conceivable computer program. But this fact does not mean that unforeseen innovations such as computer programs are always unpatentable. Section 101 is a dynamic provision designed to encompass new and unforeseen inventions. A categorical rule denying patent protection for inventions in areas not contemplated by Congress . . . would frustrate the purposes of the patent law. The machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Agefor example, inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age. As numerous amicus briefs argue, the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals. In the course of applying the machine-or-transformation test to emerging technologies, courts may pose questions of such intricacy and refinement that they risk obscuring the larger object of securing patents for valuable inventions without transgressing the public domain.As a result, in deciding whether previously unforeseen inventions qualify as patentable process[es], it may not make sense to require courts to confine themselves to asking the questions posed by the machine-or-transformation test. Section 101s terms suggest that new technologies may call for new inquiries. It is important to emphasize that the Court today is not commenting on the patentability of any particular invention, let alone holding that any of the above-mentioned technologies from the Information Age should or should not receive patent protection. This Age puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law. With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.

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C 1 Section 101 similarly precludes the broad contention that the term process categorically excludes business methods. The term method, which is within 100(b)s definition of process, at least as a textual matter and before consulting other limitations in the Patent Act and this Courts precedents, may include at least some methods of doing business. See, e.g., Websters New International Dictionary 1548 (2d ed. 1954) (defining method as [a]n orderly procedure or process . . . regular way or manner of doing anything; hence, a set form of procedure adopted in investigation or instruction). The Court is unaware of any argument that the ordinary, contemporary, common meaning of method excludes business methods. Nor is it clear how far a prohibition on business method patents would reach, and whether it would exclude technologies for conducting a business more efficiently. The argument that business methods are categorically outside of 101s scope is further undermined by the fact that federal law explicitly contemplates the existence of at least some business method patents. Under 35 U. S. C. 273(b)(1), if a patent-holder claims infringement based on a method in [a] patent, the alleged infringer can assert a defense of prior use. For purposes of this defense alone, method is defined as a method of doing or conducting business. In other words, by allowing this defense the statute itself acknowledges that there may be business method patents. Section 273s definition of method, to be sure, cannot change the meaning of a prior-enacted statute. But what 273 does is clarify the understanding that a business method is simply one kind of method that is, at least in some circumstances, eligible for patenting under 101. A conclusion that business methods are not patentable in any circumstances would render 273 meaningless. This would violate the canon against interpreting any statutory provision in a manner that would render another provision superfluous. This principle, of course, applies to interpreting any two provisions in the U. S. Code, even when Congress enacted the provisions at different times. This established rule of statutory interpretation cannot be overcome by judicial speculation as to the subjective intent of various legislators in enacting the subsequent provision. Finally, while 273 appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions. 2 Interpreting 101 to exclude all business methods simply because business method patents were rarely issued until modern times revives many of the previously discussed difficulties. At the same time, some business method patents raise special problems in terms of vagueness and suspect validity. The Information Age empowers people with new capacities to perform statistical analyses and mathematical calculations with a speed and sophistication that enable the design of protocols for more efficient performance of a vast number of business tasks. If a high enough bar is not set when considering patent applications of this sort, patent examiners and courts could be flooded with claims that would put a chill on creative endeavor and dynamic change.

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In searching for a limiting principle, this Courts precedents on the unpatentability of abstract ideas provide useful tools. Indeed, if the Court of Appeals were to succeed in defining a narrower category or class of patent applications that claim to instruct how business should be conducted, and then rule that the category is unpatentable because, for instance, it represents an attempt to patent abstract ideas, this conclusion might well be in accord with controlling precedent. But beyond this or some other limitation consistent with the statutory text, the Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under 101. Finally, even if a particular business method fits into the statutory definition of a process, that does not mean that the application claiming that method should be granted. In order to receive patent protection, any claimed invention must be novel, 102, nonobvious, 103, and fully and particularly described, 112. These limitations serve a critical role in adjusting the tension, ever present in patent law, between stimulating innovation by protecting inventors and impeding progress by granting patents when not justified by the statutory design. III Even though petitioners application is not categorically outside of 101 under the two broad and atextual approaches the Court rejects today, that does not mean it is a process under 101. Petitioners seek to patent both the concept of hedging risk and the application of that concept to energy markets. Rather than adopting categorical rules that might have wide-ranging and unforeseen impacts, the Court resolves this case narrowly on the basis of this Courts decisions in Benson, Flook, and Diehr, which show that petitioners claims are not patentable processes because they are attempts to patent abstract ideas. Indeed, all members of the Court agree that the patent application at issue here falls outside of 101 because it claims an abstract idea. In Benson, the Court considered whether a patent application for an algorithm to convert binarycoded decimal numerals into pure binary code was a process under 101. The Court first explained that [a] principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. The Court then held the application at issue was not a process, but an unpatentable abstract idea. It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting . . . numerals to pure binary numerals were patented in this case. A contrary holding would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself. In Flook, the Court considered the next logical step after Benson. The applicant there attempted to patent a procedure for monitoring the conditions during the catalytic conversion process in the petrochemical and oil-refining industries. The applications only innovation was reliance on a mathematical algorithm. Flook held the invention was not a patentable process. The Court conceded the invention at issue, unlike the algorithm in Benson, had been limited so that it could still be freely used outside the petrochemical and oil-refining industries. Nevertheless, Flook rejected [t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process. The Court concluded that the process at issue there was unpatentable under 101, not because it contain[ed] a mathematical

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algorithm as one component, but because once that algorithm [wa]s assumed to be within the prior art, the application, considered as a whole, contain[ed] no patentable invention. As the Court later explained, Flook stands for the proposition that the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant postsolution activity. Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook. The application in Diehr claimed a previously unknown method for molding raw, uncured synthetic rubber into cured precision products, using a mathematical formula to complete some of its several steps by way of a computer. Diehr explained that while an abstract idea, law of nature, or mathematical formula could not be patented, an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. Diehr emphasized the need to consider the invention as a whole, rather than dissect[ing] the claims into old and new elements and then . . . ignor[ing] the presence of the old elements in the analysis. Finally, the Court concluded that because the claim was not an attempt to patent a mathematical formula, but rather [was] an industrial process for the molding of rubber products, it fell within 101s patentable subject matter. In light of these precedents, it is clear that petitioners application is not a patentable process. Claims 1 and 4 in petitioners application explain the basic concept of hedging, or protecting against risk: Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class. The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea. Petitioners remaining claims are broad examples of how hedging can be used in commodities and energy markets. Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable. That is exactly what the remaining claims in petitioners application do. These claims attempt to patent the use of the abstract idea of hedging risk in the energy market and then instruct the use of well-known random analysis techniques to help establish some of the inputs into the equation. Indeed, these claims add even less to the underlying abstract principle than the invention in Flook did, for the Flook invention was at least directed to the narrower domain of signaling dangers in operating a catalytic converter. *** Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Acts text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable process, beyond pointing to the definition of that term provided in 100(b) and looking to the guideposts in Benson, Flook, and Diehr.

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And nothing in todays opinion should be read as endorsing interpretations of 101 that the Court of Appeals for the Federal Circuit has used in the past. It may be that the Court of Appeals thought it needed to make the machine-or-transformation test exclusive precisely because its case law had not adequately identified less extreme means of restricting business method patents, including (but not limited to) application of our opinions in Benson, Flook, and Diehr. In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuits development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text. The judgment of the Court of Appeals is affirmed. [Stevens and Breyers concurrences in the judgment omitted]

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Therasense, Inc. v. Becton, Dickinson and Co., 2011 WL 2028255 (Fed. Cir. 2011). Rader, Chief Judge. Inequitable conduct is an equitable defense to patent infringement that, if proved, bars enforcement of a patent. This judge-made doctrine evolved from a trio of Supreme Court cases that applied the doctrine of unclean hands to dismiss patent cases involving egregious misconduct. This court embraced these reduced standards for intent and materiality to foster full disclosure to the PTO. This new focus on encouraging disclosure has had numerous unforeseen and unintended consequences. Most prominently, inequitable conduct has become a significant litigation strategy. A charge of inequitable conduct conveniently expands discovery into corporate practices before patent filing and disqualifies the prosecuting attorney from the patentee's litigation team. Moreover, inequitable conduct charges cast a dark cloud over the patent's validity and paint the patentee as a bad actor. Because the doctrine focuses on the moral turpitude of the patentee with ruinous consequences for the reputation of his patent attorney, it discourages settlement and deflects attention from the merits of validity and infringement issues. Inequitable conduct disputes also increas[e] the complexity, duration and cost of patent infringement litigation that is already notorious for its complexity and high cost. Perhaps most importantly, the remedy for inequitable conduct is the atomic bomb of patent law. Unlike validity defenses, which are claim specific, inequitable conduct regarding any single claim renders the entire patent unenforceable. Moreover, the taint of a finding of inequitable conduct can spread from a single patent to render unenforceable other related patents and applications in the same technology family. Thus, a finding of inequitable conduct may endanger a substantial portion of a company's patent portfolio. A finding of inequitable conduct may also spawn antitrust and unfair competition claims. Further, prevailing on a claim of inequitable conduct often makes a case exceptional, leading potentially to an award of attorneys' fees under 35 U.S.C. 285. A finding of inequitable conduct may also prove the crime or fraud exception to the attorney-client privilege. With these far-reaching consequences, it is no wonder that charging inequitable conduct has become a common litigation tactic. One study estimated that eighty percent of patent infringement cases included allegations of inequitable conduct. Left unfettered, the inequitable conduct doctrine has plagued not only the courts but also the entire patent system. Because allegations of inequitable conduct are routinely brought on the slenderest grounds, patent prosecutors constantly confront the specter of inequitable conduct charges. With inequitable conduct casting the shadow of a hangman's noose, it is unsurprising that patent prosecutors regularly bury PTO examiners with a deluge of prior art references, most of which have marginal value. Applicants disclose too much prior art for the PTO to meaningfully consider, and do not explain its significance, all out of fear that to do otherwise risks a claim of inequitable conduct. This tidal wave of disclosure makes identifying the most relevant prior art more difficult. This flood of information strains the agency's examining resources and directly contributes to the backlog.

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To prevail on a claim of inequitable conduct, the accused infringer must prove that the patentee acted with the specific intent to deceive the PTO. A finding that the misrepresentation or omission amounts to gross negligence or negligence under a should have known standard does not satisfy this intent requirement. In a case involving nondisclosure of information, clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference. In other words, the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it. Intent and materiality are separate requirements. A district court should not use a sliding scale, where a weak showing of intent may be found sufficient based on a strong showing of materiality, and vice versa. Moreover, a district court may not infer intent solely from materiality. Instead, a court must weigh the evidence of intent to deceive independent of its analysis of materiality. Proving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive. Because direct evidence of deceptive intent is rare, a district court may infer intent from indirect and circumstantial evidence. However, to meet the clear and convincing evidence standard, the specific intent to deceive must be the single most reasonable inference able to be drawn from the evidence. Indeed, the evidence must be sufficient to require a finding of deceitful intent in the light of all the circumstances. Hence, when there are multiple reasonable inferences that may be drawn, intent to deceive cannot be found. This court holds that, as a general matter, the materiality required to establish inequitable conduct is but-for materiality. When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art. Hence, in assessing the materiality of a withheld reference, the court must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference. Because inequitable conduct renders an entire patent (or even a patent family) unenforceable, as a general rule, this doctrine should only be applied in instances where the patentee's misconduct resulted in the unfair benefit of receiving an unwarranted claim. After all, the patentee obtains no advantage from misconduct if the patent would have issued anyway. Moreover, enforcement of an otherwise valid patent does not injure the public merely because of misconduct, lurking somewhere in patent prosecution, that was immaterial to the patent's issuance. Although but-for materiality generally must be proved to satisfy the materiality prong of inequitable conduct, this court recognizes an exception in cases of affirmative egregious misconduct. This exception to the general rule requiring but-for proof incorporates elements of the early unclean hands cases before the Supreme Court, which dealt with deliberately planned and carefully executed scheme[s] to defraud the PTO and the courts.

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Fair Use Doctrine Cheat Sheet First Factor (Nature of Use) Spectrum of commercial to educational uses, where commercial uses are less fair and educational uses are more fair. Some courts treat commercial uses as presumptively unfair (Sony), but Campbell rejected this presumption. Courts will also consider if the use is transformative or just redistributive. Transformative uses add something new, with a further purpose or different character, altering the first with new expression, meaning or message (Campbell). Rarely, courts do not require adding something new if the use has a different purpose (Kelly v. Arriba, but compare Texaco). Transformative uses are more likely to be fair use, and the other three factors are less important (Campbell). Second Factor (Nature of Work). Spectrum of fact to fiction, where taking factual works is more fair and taking fiction is less fair. Some courts deem taking unpublished works presumptively unfair (Harper & Row), but 107 was amended to supersede this presumption. Some courts treat fact/fiction and published/unpublished as two separate sub-factors. Third Factor (Amount/Substantiality of Portion Taken). Some courts say that taking the entire work is presumptively unfair. Taking the heart of the work, even if a small amount, usually isnt fair. Fourth Factor (Market Effect). The fourth factor is routinely characterized as the most important factor (Harper & Row). The factor evaluates (1) whether unrestricted and widespread conduct like the defendants would substantively and adversely impact the market, and (2) the harm to the market for derivative works when these derivative markets are traditional, reasonable, or likely to be developed markets (Texaco), but some courts give the copyright owner the option not to pursue a market (Castle Rock). Increasing demand for the underlying work doesnt mitigate harm to a derivative market (Harper & Row; Napster).

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The Pillsbury Company v. Milky Way Productions, Inc. 215 U.S.P.Q. 124 (N.D. Ga. Dec. 24, 1981) In its December 19, 1977 issue of Screw magazine, the defendant Milky Way Productions, Inc. [Milky Way] published a picture of figures resembling the plaintiffs trade characters Poppin Fresh and Poppie Fresh engaged in sexual intercourse and fellatio. This picture also featured the plaintiffs barrelhead trademark and its jingle, the refrain of a two stanza song entitled The Pillsbury Baking Song. The same picture was published in the February 20, 1978 issue of Al Goldsteins Screw. Contending that the manner in which Milky Way presented this picture suggested that the plaintiff placed or sponsored it as an advertisement in Screw magazine, the Pillsbury Company [Pillsbury] instituted this action. In its original complaint, the plaintiff alleged several counts of copyright infringement, federal statutory and common law trademark infringement, violations of the Georgia Uniform Deceptive Trade Practices Act and of the Georgia anti-dilution statute, and several counts of tortious tarnishment of its marks, trade characters, and jingle. The plaintiff alleges that in violation of Ga. Code Ann. 106-115, Milky Ways unauthorized use of its barrelhead trademark, the words Poppin Fresh, its trade characters, and its jingle creates a likelihood of injury to its commercial reputation and of dilution of the distinctive quality of its trademarks, trade symbols, or advertising. The plaintiff contends that Milky Way has tarnished the reputation, and thereby impaired the effectiveness, of its advertising agents by placing them in a depraved context. Milky Way rests its defense against this claim upon an erroneous conception of the anti-dilution statute, namely that the plaintiff must prove a likelihood of confusion to prevail on this count. The court previously has concluded that the plaintiff has failed to show a likelihood of confusion, but as the statute plainly states, actionable dilution occurs when by subsequent unauthorized use of the plaintiffs marks, the uniqueness of the plaintiffs marks as the designation for its products is diminished by the defendants unauthorized use of these marks, notwithstanding the absence of competition between the parties or of confusion as to the source of goods or services. Ga. Code Ann. 106-115. The basis for this cause of action is the belief that the owner of these marks should not have to stand by and watch the dimunition in their value as a result of unauthorized uses by others. All the plaintiff need show to prevail is that the contested use is likely to injure its commercial reputation or dilute the distinctive quality of its marks. The court concludes that, despite the lack of actual damages, there is a likelihood that the defendants presentation could injure the business reputation of the plaintiff or dilute the distinctive quality of its trademarks. Consequently, the court concludes that the plaintiff has prevailed on this claim and is entitled to injunctive relief provided in section 106-115 of the Georgia Code.

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