PROFESSOR SICHELMAN
PATENT LAW
FALL 2010
Introduction to Paten Law / Module 1…………………………………………………………………………………………………. 2
Patent Eligibility / Module 2…………………………………………………………………………………………………………………. 2
Utility / Module 3…………………………………………………………………………………………………………………………………… 4
Anticipation, Statutory Bars, and Novelty / Module 4…………………………………………………………………………. 5
Nonobviousness / Module 5………………………………………………………………………………………………………………… 10
Specification – Objective Disclosure and Best Mode / Module 6………………………………………………………. 15
Claims / Module 7………………………………………………………………………………………………………………………………… 18
Prosecution and Post-Grant Procedures / Module 8…………………………………………………………………………. 19
Infringement / Module 9…………………………………………………………………………………………………………………….. 22
Additional Defenses / Module 10……………………………………………………………………………………………………….. 27
Remedies / Module 11………………………………………………………………………………………………………………………… 29
Introduction to Paten Law / Module 1
1. Bonito Boats, Inc. v. Thunder Craft Boats Inc.
a. Exclusive patents are a public embarrassment. Only the few things are worth this to society.
b. Balance between
i. The need to promote innovation; and
ii. The recognition that imitation and refinement through imitation are both necessary to invention itself and the very lifeblood of a competitive economy
c. State law protection for techniques and designs already sold in the market “may conflict with the very purpose of the patent laws by decreasing the range of ideas available as the building blocks of further innovation”
d. Federal IP protection “would be rendered meaningless in a world where substantially similar state law protections were readily available”
e. “To a limited extent, the federal patent laws must determine not only what is protected, but also what is free for all to use.”
i. See Trade Secret law. Not so.
Patent Eligibility / Module 2
1. 35 U.S.C. 101
a. 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.
i. “Useful” adds utility requirement
ii. “New” means very little. In re Nuijten
2. Patentable Subject Matter – must fit in one of these FOUR categories.
a. Processes – a series of act which are performed upon subject matter to produce a given result
b. Article of manufacture – any useful technology (broad)
c. Machines – any apparatus
d. Compositions of Matter – synthesized chemical compounds and composite articles
3. Three Traditional per-se ineligibilities to Patent Eligibility
a. Abstract ideas
b. Laws of nature
c. Natural phenomena
i. however, if isolated and purified then it may be patent eligible
4. Patent Eligibility Analysis
a. Determine whether the claim is “within” the meaning of one of the four statutory terms
i. Meaning of the words
ii. Inferences from the provisions or structural characteristics of the statute or other related statutes (same words used in other places in the statute, significance of selection, divisions, cross-references).
iii. Legislative History
iv. Policy and/or historical arguments
b. Even if the analysis from the first step seems to indicate that the claim is within one of the terms, evaluate whether the claim fits into one of the three remaining exceptions to patent eligibility
i. Abstract ideas
ii. Laws of nature
iii. Natural phenomena (non-isolated/purified)
c. Evaluate claim as a whole. Diamond v. Diehr.
5. Chakrabarty
a. Patent application for genetically engineering bacteria
b. District Court – Micro-organism is a product of nature; living things are not patentable subject matter under § 101.
i. This may be a new exception or close to the natural phenomenon exception.
c. Supreme Court
i. Legislative History analysis
1. Statute is close to Jefferson’s anything under the sun statement
2. Ingenuity should receive liberal encouragement
ii. Exception – Physical phenomena analysis
1. Funk – Applicant just mixed bacteria together that performed its natural function and led to a result. Bacteria perform the same way though
2. Here, Chakrabarty’s bacteria has different characteristics than those in nature because he transformed the bacteria into something else
d. Commissioner Counterargument 1
i. Plant statutes indicate Congress does not include living things in patentable subject matter
ii. But statutes were passed for other reasons
1. Inventor’s “aid of nature” was patentable
2. Not living/non-living distinction
3. Products of nature/human-made invention distinction
e. Commissioner Counterargument 2
i. Congress should authorize this
ii. See Marbury; this is the court’s job.
f. Several briefs regarding consequences
i. Environment
ii. Ethical
6. Labcorp v. Metabolite
a. Dismissed as improvidently granted but three justices dissent
b. Patent application is for a process to diagnose vitamin deficiencies
c. Relationship that the patent identifies is a natural law or natural phenomenon
d. If a law of nature were patentable, Progress of the useful Arts would be impeded
e. Preemption Test
i. Although doctors have performed this mental step before, the court isn’t addressing a novelty issue. Court addresses it as a subject matter issue.
1. There is no points of novelty test for patentable subject matter
ii. If claim wholly preempts use of a natural phenomena, then the claim is invalid
1. Avoid focus on novelty
2. Shift focus to “progress of the useful arts.”
7. Software and Business methods
a. § 35 USC 273(b)
i. Statute regarding business methods
ii. Therefore, Congress has approved business methods
b. Process: process, art, or method and includes a new use of a known process machine, manufacture, composition of matter, or material
i. Today, computer soft
ii. Use case law when discussing patent eligibility in court.
j. Prometheus v. Mayo (SDCA 2009)
i. Methods of monitoring a disorder and administering appropriate dosage
Utility / Module 3
1. 35 U.S.C. 101
a. 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.
i. “Useful” adds utility requirement
2. Levels of Usefulness
a. Operable – utility should always prevent inventions that do not work as claimed
b. Useful in some practical purpose
c. Superior to known technologies
d. May lead to future inventions – potential
3. Lowell v. Lewis
a. All that is required is that invention not be frivolous or injurious to the well-being, good policy, or sound morals of society.
b. Penalty to a non-useful invention is that it will have no market success
i. But won’t this have an affect of everyone else to some extent
ii. Future uses will prevent others from innovating
4. Juicy Whip v. Orange Bang
a. Patentee claimed machine that appeared to mix drink but actually didn’t
b. Initially held invalid because invention was designed to increase sales based off of deception – SCOTUS REVERSES
c. Utility threshold: Merely need some identifiable benefit, useful result, or beneficial end
i. Product is made to look like another product
d. Deceptive practice need to be moderated by someone other than the PTO
5. Morality and Legality in Patent Law
a. Ideally, no; practically, it does to some extent
b. PTO won’t allow patenting of human chimeras
c. PTO probably won’t allow patenting of something grossly illegal
6. Chemistry and Biotechnology
a. Utility is an interesting issue when new compounds are created with uncertain use
7. Brenner v. Mason
a. Claim is to a process that produces a new composition of matter (steroid)
b. CCPA: The process is useful even though the result may not be useful.
c. Majority:
i. Patent is not a hunting license. Commerce not philosophy
ii. Rejects homologue argument as unpredictable
iii. Rejects research tool argument because benefit is too indirect. Not like a microscope.
iv. Process claim must be reduced to a production of a product shown to be useful
d. Harlan dissent
i. Agrees with CCPA
ii. Majority analysis is encroaching scope and claim interpretation (e.g. notice argument)
e. Implication
i. Useful versus known to be useful
8. In re Fisher
