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University of Florida School of Law
Vermut, Richard S.

Patent Law Vermut Fall 2016

08/24 Patent Eligibility

“Person who invents/discovers any new and useful process, machine, manufacture, or any composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title” — §101

Section 101 expresses four categories for patentable subject matter: process, machine, manufacture, any composition of matter, or useful improvement thereof
101 forbids patents on: natural phenomena, laws of nature, and abstract ideas
Process means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material

Diamond v. Chakrabarty:

Issue is whether respondent’s micro-organism constitutes a “manufacture” or “composition of matter” w/in the meaning of the statute
Chakrabarty artificially created an oil-eating bacterium comprised of different species of bacteria that partially did this at different stages so to create one bacterium to consume the oil wholly
Diamond argues that living organisms cannot be patentable
Court held that the created bacterium is patentable
Congress intended statutory subject matter to “include anything under the sun that is made by man” that also satisfies other statutory requirements (including 101 exceptions)
Bacterium qualifies as patentable subject matter because it was “non-naturally occurring manufacture or composition of matter—a product of human ingenuity ‘having a distinctive name, character and use’”

Mayo Collaborative Services v. Prometheus Laboratories:

Issue is whether the claimed processes have transformed these unpatentable natural laws into patent-eligible applications of those laws
The patent claimed processes that help doctors using thiopurine drugs to treat patients w/ autoimmune diseases determine whether a given dosage level is too low or too high; relationships b/t the concentration in the blood of certain thiopurine metabolites

Found a correlation b/t metabolites in the bloodstream and the dosage amount, basically a blood concentration for metabolites to determine the amount of dosage needed for the drug to be successful with the patient

Court held NOT patentable b/c the process of reciting a law of nature is not patentable

The patent recites an “administering” step a “determining” step

CAFC applied “machine or transformation” test to hold the patent patentable subject matter: “transformation of body/blood taken from the body”

Court reversed b/c the Court found that re-stating a law of nature and identifying the audience for it be used by AND telling them to “apply it” is not patentable

Court found test for claims directed to judicial exception: 1) Is the claim directed to a law of nature/natural phenomena/abstract idea? If so, 2) Does the claim amount to significantly more than the abstract idea itself? If so à patentable

An obvious pre- or post- solution activity is not enough to allow for a patent that is directed to a law of nature/abstract idea/natural phenomena
Must analyze each claim element to determine if it is adding anything, and then look at the combination of the claim elements


Patent on the discovery of the precise location and sequence of two human genes, mutations of which can substantially increase the risks of breast and ovarian cancer
Issue of whether a naturally occurring segment of DNA is patent eligible under 101 by virtue of its isolation from the rest of the human genome

Also, the patent eligibility of synthetically created DNA known as complementary DNA, which contains the same protein-coding information found in a segment of natural DNA but omits portions w/in the DNA segment that don’t code for proteins

HELD: naturally occurring DNA segment is a product of nature and patent ineligible because even though its been isolated; but cDNA is patent eligible b/c it is not naturally occurring, the creation of the cDNA sequence from mRNA results in an exons-only molecule that isn’t naturally occurring.

Lab technicians created something new when cDNA is made as it is distinct from the DNA which it was derived from

Patents claimed the isolated DNA coding for polypeptide sequence and the exons in the BRCA1 gene, rather than the full DNA sequence

Also asserted a claim for an isolated DNA having at least 15 nucleotides of the DNA from claim 1.

CAFC found this patentable b/c isolated DNA has been cleaved or synthesized to consist of just a fraction of a naturally occurring DNA molecule

It’s non-naturally occurring and the chemical alteration of the strand of DNA satisfies the machine/transformation test

DNA even when isolated, not patentable

08/31 Patent Eligibility Cont. & Utility

Bilski v. Kappos:

Issue is whether a patent can be issued for a claimed invention designed for the business world
Patent app here claims a procedure for instructing buyers and sellers how to protect against the risk of price fluctuations in a discrete section of the economy (risk hedging)
Arguments that it is NOT patentable:

Not tied to a machine and doesn’t transform an article
Involves a method of conducting business;
Merely an abstract idea

Rejected by examiner b/c the procedure is not implemented on a specific apparatus and merely manipulates an abstract idea and solves a purely mathematical problem w/o any limitation to a practical application

Invention is a “process” if: tied to a particular machine/apparatus OR it transforms a particular article into a different state or thing
The machine-or-transformation test is a useful and important clue for determining whether a claimed invention are processes, but it is NOT the sole test for deciding whether an invention is a patent-eligible “process”

SCOTUS sees the machine-or-transformation test as a useful tool to determine if an invention is a process

They upheld that this method of hedging risk is NOT patentable
Additionally, held that “method” does NOT preclude business methods

Alice Corp. v. CLS Bank International:

Issue is whether the patents disclosing a computer-implemented scheme for mitigating “settlement risk” are patent eligible under 101, or are instead drawn to a patent-eligible abstract idea
Court held that the claims are drawn to the abstract idea and that the mere requirement of a generic computer implementation fails to transform that abstract idea into a patent-eligible invention

Claims do nothing more than simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer
The media claims add nothing of substance to the underlying abstract idea, and are patent ineligible

Sotomayor dissenting wants to get rid of business method claims as process patents
Judicial exceptions for policy reasons:

No patents for inventions related to atomic weapons
Patent applications for inventions that have potential utility related to national security are sent to Department of Energy, NSA, etc. and if they believe that this patent will have security implications, the patent will have a secrecy order and will be “frozen” in the PTO


101 requires an invention to be “useful” to receive patent protection

112 description can be explicit OR inherent

Lowell v. Lewis:

Patent for a pump
D contends that P must prove that his invention is of general utility and that it must supersede pumps in common use (i.e. a better pump than common pumps)
Court held that all the law requires is that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society
To get a patent, it doesn’t have to be better, it just has to work and be different from PA

Juicy Whip v. Orange Bang:

Patent invalidated for lack of utility on the ground that the patented invention was designed to deceive customers by imitating another product AND keep the fluid from bacteria contamination

District Court concluded the invention lacked utility b/c its purpose was to increase sales by deception, “purpose was to create an illusion, whereby customers believe that the fluid contained in the bowl is the actual beverage that they are receiving, when of course it isn’t”

Threshold of utility is not high, rather an invention is useful if it is capable of providing some identifiable benefit

To be 101 violation, the invention must be totally incapable of achieving a useful result

This Court held that the fact that one product can be altered to make it look like another is in itself a specific benefit sufficient to satisfy the statutory requirement of utility

Just b/c its deceptive does NOT mean it lacks utility

Court wants to halt the P

me would NOT have had to recognize or reproduce the inherent feature for the claim to be anticipated
PA reference can be express OR inherent.
If public could NOT practice PA w/o infringing on the new claim, then the new claim is entirely anticipated, here D’s use of PA infringes upon claims 1 and 3 of P’s second patent. Therefore, P’s first patent serves as PA to P’s second patent and claims 1 and 3 of the second patent is anticipated

NOTE: Anticipation does NOT require actual disclosure or creation if one skilled in the PA is able to create based on the express or inherent reference
Discussion: The court was correct to hold no liability for infringement, but the court went further than it was supposed to by finding the patent claims invalid

AIA 102(a)(1)

Egbert v. Lippmann:

Issue of whether the defense that the patented invention had, w/ the consent of the inventor, been publicly used for more than two years prior to his application for the original letters, is sustained by the testimony in the record
Invention was for a corset that had steel springs
Filed for patent 11 years after giving the female friend the corset
TEST: To constitute public use of an invention it is NOT necessary that more than one of the patented articles should be publicly used, rather one well-defined case of such use is just as effectual to annul the patent as many
Public use is categorized as: giving or selling to another or to be used by the done or vendee w/o limitation or restriction or injunction of secrecy, and it is so used, even though the use and knowledge of the use may be confined to one person

Court found that even though the corset was used “privately” and by one person, it was still in public use which invalidated the patent

Had the inventor given her the steel corset w/ a confidentiality agreement, this would’ve been different and helped establish lack of public use
Policy: If inventor has full benefit of invention for years and sits on his rights, and later tries to file for a patent, this doesn’t promote progress of science in useful rights, b/c we want inventors to file immediately and don’t want the public to become accustomed to inventions that they believe to be in public domain when they technically are NOT in the public domain yet.

Metalizing Engineering Co. v. Kenyon Bearing & Auto Parts:

Patent for a process of conditioning a metal surface that the same is, capable of bonding thereto applied spray metal to a higher degree than is normally procurable w/ hitherto known practices (i.e. re-surfacing metals)
Whether the public use of the patent process more than one-year b/f 8-6-42.
Court found that patent was invalidated b/c they concealed their rights
Since the use b/f the critical date was not primarily for the purposes of experiment, the use was NOT excused for that reason.
The use was not public but secret, and for that reason that its predominantly commercial character did prevent it from invalidating the patent
Policy: if an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should make and sell his invention publicly, and thus gather the whole profits, it would materially retard the progress of science and the useful arts
P was commercializing the process but not disclosing the process to its customers

They were selling products made from this process but not the patented process itself

RULE: secret commercial exploitation of an invention by inventor constitutes “public use” under pre-AIA 102(b)