McCormack, Patent Law, Fall 2013
Patent Law and Policy: Cases and Materials, Merges and Duffy, 6th ed.
The Apology
1. Why did the gods think Socrates was the wisest man?
a. Because he was conscious that he was not wise
2. What did Socrates think of himself?
a. That he was very intelligent but was not wise
3. What did Socrates think of himself in relation to others?
a. That he was more intelligent than many of them, and wiser because he recognized his faults and failures
4. Did Socrates anger people when he asked them questions?
a. Yes
The Circuit Courts
1. Boston (ME, NH, RI)
2. New York City (NY, VT, CT)
3. Philadelphia (PA, NJ, DE)
4. Richmond (VA, WV, MD, DE, Fed)
5. New Orleans (LA, TX, MS)
6. Cincinnati (OH, KY, TN, MI)
7. Chicago (IL, WI, IN)
8. St. Louis, (MN, IA, MO, AR, ND, SD, NE)
9. San Francisco (CA, OR, WA, ID, MT, NV, AZ, AK, HI)
10. Denver (CO, WY, UT, NM, KS, OK)
11. Atlanta (GA, AL, FL)
Federal Circuit: Washington, DC
Supreme Court: Washington, DC
Chapter 1: Introduction to Patent Law
1. US Constitution – Article 1, §8, cl. 8
a. “The Congress shall have power ….to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”
2. Patent Act
a. From the constitution: New, useful, non-obvious; created by inventors/patents only awarded to inventors
i. Inventors don’t have to be citizens – want foreigners to sell their products in the US, permitting them patents encourages this
3. Policy Rationales for Patenting
a. Obviousness
i. No reason to give someone a monopoly over a product unless they’ve found some use for it – quid pro quo of giving someone exclusive right of use
ii. It encourages full disclosure in specification, encourages full experimentation on inventions
4. Client Procedure
a. Client walks into your office….
i. Ask:
1. Is this your idea? How many other inventors were there? Who paid for the development?
2. Tell me about the invention – how does it work, where did you get the idea, why do you make this
3. Did you have any inspiration? Did you copy anyone? Have you ever seen anything like this? What’s the field, what’s similar?
4. ALWAYS ASK ABOUT THE INVENTION
ii. Look:
1. Professional search – possibly in other countries depending on your client’s financial situation
b. Client gets sued for infringement….
i. First Choice: challenge the validity of the infringed-upon patent
1. Raise issues of novelty, prior art not available to patent office, non-obviousness, utility, fraud
2. i.e. argue the patent should’ve never been granted
ii. Second Choice: challenge the claim of infringement
1. Take it before the jury – I’m not infringing, its close but not the same
Chapter 2: Patentable Subject Matter – §100
1. Introduction to the Patent Act
a. Threshold Test – only four patentable subject matters: processes, machines, manufacture, compositions of matter (§101)
i. Court Precedent Exceptions: laws of nature, physical phenomena, abstract ideas (as typified in Bilski)
b. Diamond v. Chakraberty, Sup Ct, 1980, p.70
i. This case started the biotech industry – it is also an example of how the Sup Ct has broadened patentability
ii. Facts: Patent rejected – defendant’s bacteria (with man-made plasmids inserted) were found to be a product of nature and thus unpatentable
iii. Reasoning/Holding – Patent granted, there is patentable subject matter here
iv. Rule – products of human ingenuity are patentable even when the raw materials came from nature and even when the product is “living” – ie you can patent bacteria
1. This is an extremely broad rule – narrowed by other patentability factors
c. Bilski v. Kappos
i. This case limited the defensibility of business method patents (they’re still alive but we don’t know their enforceability)
ii. Facts:
1. Bilski’s application for a business method was rejected by court using machine or transformation test
a. Machine or transformation test = a process must be tied to a particular machine or apparatus, or it must transform an article into a different state in order to be patentable
iii. Reasoning/Holding:
1. This business method patent is not patentable – essentially too vague, hard to enforce, enforcement of it could stymie a lot of business
2. Machine or transformation test is important but not the sole standard!
iv. Rule:
1. In general business method patents are hard to obtain –but provided they pass §101 (whatever that looks like) they are viable
2. Bars to Patenting – Laws of Nature, Physical Phenomena, Abstract Ideas
a. Rules Against Patenting Natural Laws
b. Abstract Ideas and Software
i. Gottschalk v. Benson, USPQ, 1972, p.123
1. Facts: Benson claimed algorithm for any general use computed which could convert numbers to binary, wasn’t limited to any particular art, tech, machine, apparatus, end use à claim rejected
2. Reasoning/Holding: One cannot patent an algorithm – law of nature – must be something specific + algorithm
3. Rule:
ii. Flook – next logical step after Benson
1. Patent whose only new element was an algorithm
Whip v. Orange Bang, Inc. Fed. Cir, 1999, p.216
i. Issue: patent denied for intentional artifice and misdirection– juice dispenser set-up that contained fake bowl of juice
ii. Holding: Patent is valid, no basis for finding lack of utility because the patent has some capacity to fool members of the public
1. Relied on two cases…
a. Rickard v. DuBon – patent to treat tobacco leaves to make them look prettier was invalid because the invention did not promote or improve quality – its only effect was deceit
b. Artisto Hosiery – patent to make fake seams on stockings invalid because the patent was only for purpose of artifice to make a product more salable
2. THUS: as long as there is something more than artifice in the patent, then the artifice is ok
3. Brenner v. Manson, USPQ, 1966, p.224
a. This case set the utility requirement for chemistry/biotech patents – must be some utility to obtain a patent
i. Frequently scientists discover molecules, etc. without knowing a use – this isn’t sufficient for patent grant
b. Facts: Manson attempted to show he had found both the procedure and utility for a claimed process to make a steroid earlier than another patent application filing date of a granted patent for same process
c. Issue: Is the practical utility of a compound produced via chemical process an essentially component in establishing the patentability of the process
i. Further, is a compound produced via chemical process useful because (1) it works OR because (2) the compound belongs to a class of compounds under scientific investigation?
d. Reasoning/Holding: Manson’s application did not demonstrate substantial utility
e. Rule:
i. All chemical process applications must show the utility of the specific product that results from the claimed process
1. Utility of a process/product must be embodied within the patent specification, there must be substantial practical utility
2. If you use evidence of homologue utility to convey claimed product utility you must show evidence of sufficient likelihood of conveyed utility!!!
3. The process claim must be related to the production of a single, useful product – no broad claims on entire categories of processes
a. Patent isn’t a hunting license it’s a reward for successful conclusion to a search!!!
