AME 40590 Homeworks, Spring 2011

Due Friday, January 21, 2011

• Read Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)
  • There certainly will be plenty of confusing stuff in this case since you don't know any patent law or much judicial procedure yet. The main point of reading the case is that it is a good explanation of the constitutional basis for patent law, some relevant sections of the US Code, the history of patent law, etc. Whoever the unlucky person is that is called on to discuss this will sort of be on the spot, that's the way it goes...
  • If you don't like the formatting in the wiki, you can get a better formatted version through Westlaw. There is a "find a document by citation" search box on the left side of the page. This should lead to the case as well.

Due Monday, January 24, 2011

• Find and read a US patent that was issued between January 1, 1980 and January 1, 1990. It should involve a technical subject area in which you have some competence and interest. This patent will serve as the basis for many of your assignments, so spend a little time to pick one that you sort of like and think is complicated enough to be interesting, yet simple enough that you will be able to add or remove features from it. An example of the type of homework you will have to do will be to describe another invention that would have made this one clearly not patentable, or an invention in a related field that would not bar its patentability, etc.
• On your wiki page (log in and click on your name along the top) edit your page to add a description, in plain English, of what the invention is. Format it in a reasonable manner. The wiki stuff is easy to modify and re-organize, but it may be worth giving some thought to how you will organize it, e.g., links to each different homework, related things on a single page, etc.

Due Wednesday, January 26, 2011

Read:

• Hotchkiss v. Greenwood, 52 U.S. 11 (1850)
• A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)

Due Friday, January 28, 2011

• Read Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)
• Using your patent from the homework due on Monday, obtain some (2 or 3 if they are of normal length) of the References Cited, preferably other patents. Using those references, would the patent you chose be patentable under the analysis of Hotchkiss or A&P? Would it satisfy the nonobviousness requirement of 35 USC 103 under Lyon? If the answer is different, which I suspect would be the normal case, what evolution of the standards of nonobviousness (referred to in the old cases as inventivness or something similar) lead to the change? As a rule of thumb, I would say the analysis for each case would take about page, with perhaps a common page or two description of what the references disclose.
  • Note, it may be the case that the patent you chose doesn't really work for this homework. In that case, if you use google patents, one feature is that you can find the later patents that cite your patent. It is allowable to do the analysis described above relating to the patentability of the later patent that cites your patent.
  • If that still doesn't work, then just find a completely different one and start from there. If you are totally stuck with what to do, then contact me.

Due Monday, January 31, 2011

We won't be threading our way through so many cases in such great detail in all the other areas of patent law, but the evolution of non-obviousness and the idea of what's an invention is 1) interesting and 2) good for you to read the cases to build up all the ancillary sort of knowledge to be able to read cases in the rest of this class efficiently. Graham is long, but the other two are progressively shorter. If you can reconcile the third case with the first two, I would be very interested in hearing your take on it. The next homework will have one or two final cases and hopefully more patent analysis on your part.

• Graham v. John Deere, 383 U.S. 1 (1966)
• US v. Adams, 383 U.S. 39 (1966)

Later in the course we will consider what can be patented under section 101. I would observe that the class of things that can be patented is growing quite a bit, and not surprisingly, a counter-revolution is afoot. It seems the standards under Graham, despite Anderson, is still the law, but I wouldn't be surprised if sometime in the near future (the next few decades) there is a substantial change in patentability requirements, including the interpretation of section 103, that makes it harder to obtain a patent. Knowing the trajectory of the law in this regard, and all the factors that support decisions either way, is important.

Due Wednesday, February 2, 2011

• Read
  • Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)
  • KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)
• Review the prior art in the Graham (for AME students) or Adams (for CBE students) case from Monday
  • Read the patent that was litigated
  • Read two of the patents referred to in the prior art
    • for Graham these would be the '811 patent as well as either "the Glencoe clamp" if you can find it, or the Pfiefer patent listed in the references in the Graham patent
    • for Adams these would be two of 1) the "Wood patent" 2) the "Wensky patent" or the 3) the "Skrivanoff patent" mentioned in the USCT case.

Due Friday, February 4, 2011

Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigates is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.

Due Monday, February 7, 2011

We are starting the topic of patentable subject matter. 35 USC 101 says "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." Where are the boundarys of "process, machine, manufacture, or composition of matter"? Read:

• Gottschalk v. Benson, 409 U.S. 63 (1972)
• Diamond v. Diehr, 450 U.S. 175 (1981)

Due Wednesday, February 9, 2011

Make a copy of the NONOBVIOUSNESS page and edit your copy. Make a substantial contribution to improving or completing it. Examples of substantial contributions would be filling in some of the missing sections or, frankly this would be more preferable, edit or add an appropriate section that synthesizes and develops a cohesive and concise exposition of the issues from the multiple cases we have read and the topics that have been discussed in class. If you want a target "length" I would say 3-5 pages. Actually getting all of this together should be a lot of work and in recognition of that the homework for the next few days after this will just be reading assignments.

Due Friday, February 11, 2011

• Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)
• State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)

Due Monday, February 14, 2011

• Bilski v. Kappos, 130 S.Ct. 3218 (2010)
• Find this case on Westlaw. At the bottom of the case is a list and links to all the many briefs filed in the case. You must select and read one of the appellate briefs. Here is a list of the briefs stored on this server. Edit that list (not this page!) and remove the name of the brief you selected and replace it with your login name. You must choose a brief that no one has selected yet and it is first-come-first serve. You should be prepared to summarize the arguments in the brief in class.

Due Friday, February 18, 2011

We are going to start on 'statutory bars' which is section 102. Both of these cases pre-date the 1952 patent statute, but elucidate the principles embodied therein. Read:

• 35 USC 102
• Egbert v. Lippmann, 104 U.S. 333 (1881)
• Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)

Due Monday, February 21, 2011

We are continuing with statutory bars. Read:

• D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144 (1983)
• Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)
• Lough v. Brunswick Corp., 86 F.3d 1113 (1996)

Due Wednesday, February 23, 2011

• UMC Electronics Co. v. U.S., 816 F.2d 647 (1987)
• Pfaff vs. Wells Electronics, 525 U.S. 55 (1998)

Due Friday, February 25, 2011

Read one of the two following patents. Figure out how the best embodiment works and also what is claimed. Pretend your boss gave them to you and wants to know how they work and what is claimed so that your company's product can be evaluated in terms of patentability.

• 3,323,372
• 3,643,513

Due Monday, February 28, 2011

Write a six page paper on non-obviousness with the following approximate page break-down:

• The first page should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether an invention is non-obvious.
• The second and third pages should outline all the policy considerations that arise and provide the foundation for the requirement for non-obviousness, and how they played a role in each of the decisions we read, if applicable.
• The fourth and fifth pages should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
• The sixth page should be a description of what you would propose for the standard for non-obviousness and why it is the best standard.

Due Wednesday, March 2, 2011

• Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939)
• Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315 (1999)

Due Friday, March 4, 2011

• Look up the Electric Storage Battery Co case, 307 US 5, on Westlaw. There are 4 briefs listed at the end of the case and you must read one of them according to the following system. On this page, you will find a list of the briefs. You must add your name to the brief that has the fewest names at the time you add your name. If you don't like your choice, then wait.
• Lorenz v. Colgate-Palmolive-Peet Co., 167 F.2d 423 (1948)

Due Monday, March 7, 2011

• W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (1983)

Due Friday, March 11, 2011

Write a paper on patentable subject matter with the following approximate break-down:

• The first section should be a "handbook" summary, that is, something you would give to your engineering boss that provides guidelines to determine whether a process is patentable. Your boss needs guidance, not only facts.
• The second section should outline all the policy considerations that arise and provide the foundation for the limitations on patentable processes, and how they played a role in each of the decisions we read, if applicable.
• The third section should provide the history of the subject, starting with the US Constitution, or earlier if appropriate and include the holdings of all the cases we read.
• The fourth section should be a description of what you would propose for the standard for patentable processes and why it is the best standard.

The target length should be 6-8 pages.

Your paper should be limited to the cases we read.

I don't want a huge, long detailed paper. What I really want is content that is application, analysis, evaluation, synthesis, etc., based upon the opinions we read.

Due Monday, March 21, 2011

• In re Carlson, 983 F.2d 1032 (1992)
• In re Hall, 781 F.2d 897 (1986)

Due Wednesday, March 23, 2011

Use Westlaw to look up In re Hall. You must log in through the ND Library web page to have proper access permission. At the top of the case you will see "KeyCite Citing References for this Headnote" which is a system developed by West Publishing to catalog legal issues. You will see the second one is Patents -> Patentability -> Anticipation -> Prior Description in Printed Publication -> k. Requisites of Publication.

You can click on those links to find other cases that deal with issues related to that category. Use the West KeyCite system to find another case dealing with a different type of "Printed Publication" such as advertisements, computer manuals, etc. Try to find one that is different and interesting, i.e., not the first one that comes up on the list.

I think you don't want to use the "k. Requisites of Publication" necessarily, but probably the one right above it. Create a wiki page with a one-paragraph description of the facts of the case and the holding. Be sure to include which court it was.

Due Friday, March 25, 2011

We are starting on the issue of infringement.

• CCS Fitness, Inc. v. Brunswick Corporation, 288 F.3d 1359 (2002)
• Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)

Due Monday, March 28, 2011

• Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)
• If your last name starts with a letter between and including A through L, read Warner-Jenkinson v. Hilton Davis Petitioner Brief
• If your last name starts with a letter between and including M through Z, read Warner-Jenkinson v. Hilton Davis Respondent Brief

Due Wednesday, March 30, 2011

We will do the debate based on the two briefs from Monday.

Also, having gone through it myself I can sympathize with the point of view that everything probably seems vague and problematic. At this point you would probably read a claim and be pretty hard pressed to describe the extent of the claims since the doctrine of equivalents would make the bounds for it very unclear. To help with this, your additional assignment for Wednesday is to go to Westlaw and look up Warner-Jenkinson. Find the headnote(s) dealing with the doctrine of equivalents and try to find a case with a pretty clear holding. In other words, even though the trial happened and the result was appealed, the outcome wasn't too debatable. Finding a critical mass of cases that have "clear" outcomes in terms of which side of the equivalents line they fall will probably help clarify this. Pick your case and read it. Be ready to discuss it on Wednesday.

Due Monday, April 4, 2011

• Go to the Doctrine of Equivalents Case List page and add a one paragraph summary of the case you read for last class. Be sure to start it with the title and the citation like the example I gave. Be sure to keep my example at the top.
• Read Honeywell Intern., Inc. v. Hamilton Sundstrand Corp. 523 F.3d 1304, 2008 on Westlaw. Also read the patent at issue.
• If you are an AME student and your last name starts with A-L, then you represent Honeywell. If your last name starts with M-Z, then you represent Hamilton-Sunstrand.
• If you are not an AME student, then you are a Supreme Court Justice.
• If you are an AME student, then write a one-page brief (less than 1000 words) that presents an argument why the Supreme Court should decide the case in your favor. Post it to the course wiki and also submit a printed version on Wednesday.
  • Normally the Supreme Court would not even consider the actual facts of the equivalents holding since that is a matter of fact and the lower courts and juries are given wide discretion in their findings. However, today you can pretend that the Supreme Court will consider it, so you can argue the facts of why or why not it is equivalent. If you do this, be sure to point out how your argument relates to the prior Supreme Court cases we read on the Doctrine of Equivalents.
  • You may alternatively have your brief focus on a legal issue such as the estoppel issues.
  • I want you to write this from scratch based on your engineering knowledge and the cases we have read so far. Of course the briefs are available on Westlaw, including the briefs for writ of certiorari, which was denied, to the Supreme Court. Any submitted briefs that just summarize those will not be given much credit.
• On Monday in class split into the two sides and take 15 minutes to elect a head lawyer and get your arguments summarized and in order. After that each side gets 5 minutes, alternating back and forth until class is over. The loser in the CAFC gets to go first. If you are a judge, your job is to make the right decision, meaning it should do things like
  • be consistent with precedent, of if not, then there must be a good reason for deviating from it,
  • be clear,
  • be fair,
    • the patentee got to draft the claims, there should be a burden of doing it right for them
    • but we don't want lazy, unscrupulous cheaters to get away with trivial modifications that basically don't deviate from the essence of the inventive aspect of the patent
  • be easy to apply,
  • promote the progress of science and the useful arts,
  • be logical, i.e., amending claims to avoid prior art should definitely be a bar to a future expansion of the claim into that same area,
  • etc.
• The Supreme Court Justices can interrupt any arguments and ask any questions they want. The point of asking questions isn't to put the lawyers on the spot, but to simply help the Supreme Court make the right decision. Getting each side to respond to the arguments made by the other side will help them make a good decision. The Justices should probably sit in the very front row or stand in front of the class. The Justices should be familiar with the case, so of course they need to read the case and patent too.
• The Supreme Court Justices must each indvidually submit a one-page (1000-word) decision on Wednesday. In class on Wednesday, they will have to explain their decision.
• Professor Batill has agreed to get class started and make sure things are working ok. He shouldn't have to do much other than maybe keep time (but of course he can be a justice or take a side if he wants to).

Due Monday, April 11, 2011

• Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555 (1991)
• TurboCare Div. of Demag Delaval Turbomachinery Corp. v. General Elec. Co., 264 F.3d 1111 (2001)

Due Wednesday, April 20, 2011

• i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (2010)

Due Wednesday, April 27, 2011

• H.H. Robertson, Co. v. United Steel Deck, Inc., 820 F.2d 384 (1987)
• Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (1978)

Due Friday, April 29, 2011

• Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008)

Also, find this case on Westlaw and read one of the briefs. Write a one or two page summary (bulleted list is fine) of the arguments of the brief. Post it on this wiki somewhere. Link to the summary you wrote here in list of arguments in Quanta. Put your name or other identifying information next to the link so I can grade it.

Due Monday, May 2, 2011

• Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)
• In re Brana, 51 F.3d 1560 (1995)

Final Exam

The exam is due at 4:30pm, Thursday, May 5, 2011.

Find the case that is assigned to you here. You may not consult any other people other than me. You may consult reference materials, but anything you consult other than the material supplied in this course, must be listed along with your final.

You may trade with others as long as both of you agree and notify me.

There are about 10 cases hanging off the end of the list. If you want to swap with one of those email me. Those will go on a first-come first-serve basis. Wait until you receive confirmation from me if you want to trade before you start working.

For the case assigned to you must write two quizzes (and provide the answers).

The first should basically test whether the quiz taker has read and comprehended the exam and be multiple-choice and two or three questions. It must be fair in that it does not require a very deep understanding of the case, but it also should not be completely superficial. Also it must not involve facts from the case that can be obtained by easy web shortcuts, particularly Wikipedia summaries of the case. This part of the quiz should essentially be like what I've given over the past several weeks.

The second quiz should substantively test whether the taker understood the case. There should be five questions and each question should be from one level of Bloom's taxonomy, except for the first level, which is what the first quiz basically tests. Number those questions 2 through 6 to indicate to what level each question corresponds. I'm not going to get overly picky on something belonging specifically to level 4 instead of level 5, but as you work your way up the levels the questions must generally reflect a corresponding increase in depth of understanding of the case.

The quiz should be able to be completed in 15 minutes, approximately three minutes for each question, so it each be a question that can be answered in a couple sentences. A question may test understanding of the case in relationship to others with the following important limitation: it can only ask about the relationship to earlier cases in the same area. For example, a question on State Street may ask about the relationship to Arrhythmia but not to Bilski.

In order to be answerable in three minutes, questions testing the higher-levels probably have to be leading in nature. For example, "What was the basic principle that was underlying the opinion in Bilski?" is too much. However, "Did the opinion in Bilski rest upon the same basic reasoning as State Street?" would be good. Alternatively multiple-choice would work as well. For example

"The fundamental basis for the decision in Bilski was:

a) it was totally based on precedent with no real reasoning other than that

b) it was based on a rather deep analysis of whether it promoted science an the useful arts

c) it was based on principles or statutory interpretation

d) b) and c)

etc."