Intellectual Property for Engineers: ESTEEM Reading Course, Spring 2010
ALPHABETICAL LISTING OF CASES
- A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147 (1950)
- Alza Corp. v. Mylan Laboratories, 464 F.3d 1286, (2006)
- Anderson's Black Rock, Inc. v. Pavement Co., 396 U.S. 57 (1969)
- Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961)
- Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)
- Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1994)
- Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)
- Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)
- Bonito Boats. v. Thunder Craft, 489 U.S. 141 (1989)
- Chester v. Miller, 906 F.2d 1574 (1990)
- Diamond v. Diehr, 450 U.S. 175 (1981)
- Egbert v. Lippmann, 104 U.S. 333 (1881))
- Elizabeth v. American Nicholson Pavement Company, 97 U.S. 126 (1877)
- Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)
- Gottschalk v. Benson, 409 U.S. 63 (1972)
- Gould v. Hellwarth, 472 F2d 1383 (1973)
- Graham v. John Deere, 383 U.S. 1 (1966)
- Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)
- Hotchkiss v. Greenwood, 52 U.S. 11 (1850)
- Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)
- In Re Rouffet
- In Re Bilski
- In re Brana, 51 F.3d 1560 (1995)
- In re Hall (full text)
- J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124 (2001)
- Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)
- KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)
- Laboratory Corporation of America vs. Metabolite Laboratories, 548 U.S. 124 (2005)
- Lyon v. Bausch & Lomb, 224 F.2d 530 (1955)
- Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)
- Metallizing Engineering Co., Inc. v. Kenyon Bearing & Auto Parts Co., Inc., 153 F.2d 516 (1946)
- Microsoft Corp v. At&T Corp.
- Monsanto v. Good F.Supp.2d, WL 1664013 (D.N.J.) (2003)
- Perkin-Elmer Corporation v. Computervision Corporation (full text)
- Pfaff v. Wells Electronics: full text
- Pfaff vs. Wells Electronics
- Philips Electric Co. v. Thermal Industries, Inc. (full text)
- Quanta Computers Inc v. LG Electronics (full text)
- Reiner v. I. Leon Co. (full text)
- South Corp. v. US
- South Corp. v. US (full text)
- South Corp. v. US 690 F.2d 1368 (1982)
- State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)
- Traffix Devices, Inc. vs. Marketing Displays, Inc.
- US v. Adams, 383 U.S. 39 (1966)
- US v. Adams (full text)
- U.S. v. Univis Lens Co., 316 U.S. 241 (1942)
- Universal Athletic Sales Co. v. American Gym Recreational & Athletic Equipment Corporation, Inc. (full text)
- Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)
- Winner International Royalty Co. v. Wang, 202 F.3d 1340 (2000)
This is a summary. Click on the title for the full chapter: INTRODUCTION
- 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 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
- trademarks; and,
- trade secrets.
This is a summary. Click on the title for the full chapter: NONOBVIOUSNESS
- 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.
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
- 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.
This is a summary. Click on the title for the full chapter: NOVELTY
- 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
- Events prior to invention
- The applicant must be the inventor (not the employer)
- Literal Infringement
- The Doctrine of Equivalents
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:
- 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
- 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
- The Disclosure
- The Claims
- Other Sections
- New Matter
- The Examination Process
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)
This is a summary. Click on the title for the full chapter: ANTICIPATION
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
Justice clipart, copyright FCIT.