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
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.
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
- 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
- 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.
- 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)