AME 40590 Intellectual Property for Engineers

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Cases to add:

  • Damages:
    • MINTZ V. DIETZ & WATSON, INC. (CAFC, May 2012)
    • Monsanto Co. v. McFarling, 488 F.3d 973, 978-79 (Fed. Cir. 2007)
    • Georgia-Pacific Corp. v. US Plywood Corp., 318 F. Supp. 1116 (SDNY 1970), modified, 446 F. 2d 295 (2d Cir. 1971)
    • The Boeing Company v. The United States, 86 Fed. Cl. 303 (April 2, 2009)
    • Mahurkar v. CR Bard, Inc. 79 F. 3d 1572, 1580 (Fed. Cir. 1996), adopting Panduit Corp. v. Stahlin Bros. Fibre Works, Inc.,575 F.2d 1152 (6th Cir. 1978)
    • Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009)
  • Software patents:
    • In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994).
    • CyberSource Corporation v. Retail Decisions, Inc., Slip Op. at 19 (2011)
    • Ultramercial, LLC v. Hulu, LLC (Fed. Cir. 2011)


ALPHABETICAL LISTING OF CASES

INTRODUCTION

This is a summary. Click on the title for the full chapter: INTRODUCTION

Outline:

  • The main purpose for obtaining a patent is economic.
  • It grants the exclusive right to make, use or sell the invention for a limited period of time.
  • The governing law is Title 35 of the United States Code (35 USC).
  • The governing regulations are from Title 37 of the Code of Federal Regulations (37 CFR).
  • The law is federal, so patent cases are resolved in the federal court system:
    • district courts;
    • circuit courts;
    • the Court of Appeals for the Federal Circuit (CAFC), a special appeals court for patent cases; and,
    • the Supreme Court.
  • The US Patent and Trademark Office (PTO) processes patent applications.
  • Patents last for 20 years from the date the application is filed with the PTO.
  • Patents have the attributes of personal property.
  • The foundation of the federal government's authority to create a patent system is in the Constitution. The purposes is explicitly economic, "to promote the progress of science and useful arts..."
  • Other forms of intellectual property
    • copyright;
    • trademarks; and,
    • trade secrets.

NONOBVIOUSNESS

This is a summary. Click on the title for the full chapter: NONOBVIOUSNESS

Outline:

  • This is perhaps the most difficult factual patent issue. In addition to meeting the novelty requirements of 35 USC 102, 35 USC 103 requires that the claimed invention as a whole must have been nonobvious "at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
  • There is a lot of historical confusion regarding this standard. Basically, it is a notion of something being meeting some type of sufficient inventive standard or nontriviality.
  • To determine this, there are three fundamental lines of inquiry:
    • the scope and content of the prior art;
    • the differences between the prior art and claims at issue; and,
    • the level of ordinary skill in the art.
  • Secondary considerations include:
    • a long-felt but unsatisfied need met by the invention;
    • appreciation by those versed in the art that the need existed;
    • substantial attempts to meet this need;
    • commercial success of the invention;
    • replacement in the industry by the claimed invention;
    • acquiescence by the industry;
    • teaching away by those skilled in the art;
    • unexpectedness of the results; and,
    • disbelief or incredulity on the part of industry with respect to the new invention.

INFRINGEMENT

This is a summary. Click on the title for the full chapter: INFRINGEMENT

THE PATENT DOCUMENT

This is a summary. Click on the title for the full chapter: THE PATENT DOCUMENT

Outline:

  • A patent has several parts:
    • specification: describes the invention;
    • claims: delineates the ownership rights;
    • drawings: not required, but if they are included then any element included in the claims must be shown in the drawings; and,
    • other miscellaneous parts.
  • Interpreting claims: claims are said to read on another device.
  • The doctrine of equivalence, prevents something from being patented that only has minor alterations from the prior art.
  • The date of the invention
    • reduction to practice;
    • diligence requirement.
  • The file wrapper.

NOVELTY

This is a summary. Click on the title for the full chapter: NOVELTY

Outline:

  • Specified in 35 USC 102.
  • Fundamentally: an invention must be new.
  • Section 102 basically defines in a technical way what it means to not be new:
    • Events prior to invention
      • known or used by others in the US
      • patented or in a printed publication in another country
    • Events one year before filing the patent application
      • patented or in a printed publication anywhere (in this or a foreign country)
      • in public use or on sale in the US
    • Other bars
  • The applicant must be the inventor (not the employer)

Outline:

  • Literal Infringement
  • The Doctrine of Equivalents

UTILITY

This is a summary. Click on the title for the full chapter: UTILITY

PATENTABLE SUBJECT MATTER

This is a summary. Click on the title for the full chapter: PATENTABLE SUBJECT MATTER

Can computer programs, algorithms, laws of nature, life forms, plants, etc. be patented. In particular, are the following patentable:

  • Plants
  • Algorithms and Computer Programs
  • Scientific Facts?

In a recent case

  • State Street (1998)

the CAFC substantially broadened the subject matter of section 101 to include such things as methods of doing business, etc.

FOREIGN AND DOMESTIC PRIORITY

This is a summary. Click on the title for the full chapter: FOREIGN AND DOMESTIC PRIORITY

Outline:

  • Priority in general
  • Foreign priority
  • International applications
  • Domestic priority
  • Provisional applications

THE PATENT APPLICATION

This is a summary. Click on the title for the full chapter: THE PATENT APPLICATION

Outline:

  • The Disclosure
  • The Claims
  • Other Sections
  • New Matter
  • The Examination Process

INVENTOR ELIGIBILITY

This is a summary. Click on the title for the full chapter: INVENTOR ELIGIBILITY

GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text

GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)

Diamond v. Diehr, 450 U.S. 175 (1981): (full text)

Diamond v. Diehr, 450 U.S. 175 (1981)

Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005): (full text)

Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)

METABOLITE LABORATORIES, INC. and Competitive Technologies, Inc. v. LABORATORY CORPORATION OF AMERICA HOLDINGS (doing business as LabCorp): the CAFC case (full text)

ANTICIPATION

This is a summary. Click on the title for the full chapter: ANTICIPATION

PRIOR ART

This is a summary. Click on the title for the full chapter: PRIOR ART

Pfaff v. Wells Electronics: full text

Perkin-Elmer Corporation v. Computervision Corporation (full text)

Perkin-Elmer Corporation v. Computervision Corporation