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Patent
Wayne State University Law School
White, Katherine E.

Wayne State University Law School
Patent Law – Fall 2009
Professor Katherine White
Cases & Materials on Patent Law (3rd Edition) By Adelman, Rader, Thomas, and Wegner
I. Introduction
A. Purpose of Patent Law
1. The Patent Clause – Article I, § 8, cl. 8
· Congress has the (plenary) power – “[t]o 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”
· Congress may, but does NOT have to provide a patent system
2. Ownership Rights
· Exclusive right to patent holder (excluding others from selling, offering to sell, making, importing)
· Whoever invents it first gets property right
· In US, first person to invent gets right (not filing date)
· Rest of world goes by filing date
· Patents are granted by countries individually – US can only grant patent rights in US
· patent law are federal
· Patents must be filed and must be granted patent to have rights
3. FIRST-TO-FILE VERSUS FIRST-TO-INVENT – List of pros and cons
Cons:
· Lower quality – rush to patent office
· Clog in patent office
· Reduction in full disclosure
· No incentive for US on its own
· At some point, want something at international treaty and can trade it (negotiation)
Pros:
· Everyone else on first to file system
· Encourage early filing
· Decrease complexity, length and expense associated with current USPTO interference procedures
· Fixed priority of invention
Doesn’t really matter anyway because first to file usually wins interference
More than 99.9% of the US patent applications now being filed raise no dispute as to the identity of the first inventor
4. Patent Enforcement (Infringement)– already own patent an suing someone over rights; infringement is factual question

B. Court of Appeals for the Federal Circuit
· Gets its subject matter jurisdiction based on statute –all cases on appeal that involve patents some capacity go to this court

Exclusive appellate jurisdiction in patent cases (instead of the regional circuits)
Fed. Cir. has national jurisdiction
Located in Washington, DC
12 active judges
Adopts predecessor court’s cases as precedent (CCPA and Ct. of Cl)

· Federal Circuit adopted CCPA cases as own precedent, to overrule, must take en banc
· If there are conflicting CCPA cases, use most recent one as precedent (CCPA always sat en banc)
· Federal Circuit cases are different, aren’t supposed to overrule each other
1. Patent Prosecution (Acquisition)- written dialogue between applicant and patent office
· Usually say no the first time
· High application fees
· If they say no, appeal to BPAI (patent judges) à if they say no, can either go to district court of DC or federal circuit
o District court of DC is trial type and allows evidence
C. Key patent statutes:
· § 101: Patent Eligibility
· § 102: Novelty – this defines what is prior art
· § 103: Nonobviousness – even if not in prior art, if obvious, not patentable
· § 112: Specification Requirements – defining rules for what must be in specification, disclose the invention to enable one skilled in the art to make the invention and set forth best mode to make the invention
· § 154: Patent Term and Rights
1. Patentability: Invention must be novel, have utility, and be non-obvious
D. Types of Patents:

Utility Patents

Pertain generally to technological products and processes

Design patents

Term is 14 years
No claims

Plant patents

Excluded: turberpropagated plants or plants found in an uncultivated state [p. 25] See also “Patent-like plant variety protection on p. 26”

Why would you want a utility patent on a plant when you have the PVPA?

there’s are exemptions in the PVPA (research exemption, saving seed exemption) that don’t exist with a patent
you can’t get PVPA protection on hybrids

II. Patent Eligibility – §101
A. Statute
“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 therefore, subject to the conditions and requirements of this title.”
1. Eligible: processes, machines, manufactures, and compositions of matter
2. Ineligible: natural laws, phenomena of nature, abstract principles
Notes:
· Article of manufacture – one piece that has function
· Composition of matter – can be living
· Whether a claim is directed to statutory subject matter is a question of law!
· In textbook exercises White emphasizes the “a repeatable industrial technique” requirement
B. §101 Patent Eligibility Cases
1. Biotechnology and Products of Nature
· Generally, patents are not available for products of nature; a scientist could therefore not obtain a patent on a previously unknown plant that she discovered in the wild
· A patent may be obtained once a significant artificial changes are made to that natural substance
o Many patents from biotechnology include isolated or purified in their claims
a. Diamond, Commissioner of Patents and Trademarks v. Chakrabarty (S.Ct. 1980 – p. 59)
· Facts: Dr. created an oil-eating bacteria, and directed a patent claim to “a bacterium…”. USPTO rejected claim (b/c it’s a product of nature), the CCPA reversed, and the Supreme Court eventually affirmed.
· Rule: Living organisms are patentable.
· Reasoning: The bacteria was a nonnaturally occurring manufacture or composition of matter – a product of human ingenuity. His discovery is not nature’s handiwork, but his own… The Court didn’t seemed phased like this (as they did in cases like Benson)
b. Lab. Corp. of America Holdings v. Metabolite Labs. (S. Ct. 2006 – p. 69)
· Facts: Plaintiff held method patent directing a party simply to correlate test results
· Issue: Whether such a patent can validly claim a monopoly over a basic scientific relationship such that any doctor necessarily infringes the patent merely by thinking about the relationship after looking at the test result
· Policy Considerations:
o Why not patent? – Allow everyone the opportunity to have this treatment – help with this heart condition
o Why allow this to be patented? (still patented, court didn’t overturn it)
§ Known relationship, not kept as trade secret
§ May never have known how the technology worked
· Rule: The relevant principle of law excludes from patent protection laws of nature, natural phenomena, and abstract ideas.
· Reasoning: There can be little doubt that the correlation between homocysteine and vitamin deficiency set forth in claim 13 is a natural phenomenon. At most, respondents have simply described the natural law at issue in the abstract patent language of a “process.”
· Why Not Sue Doctor? 35 USC Section 287(c) – deprives patentees of remedies against medical practitioners engaged in infringing “medical activity.” (can sue-but no remedy)
2. Computer-Related Inventions and Methods of Doing Business
Process Definition: process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or method.
· More difficult to define than other three categories
Computer software, in general terms, is a set of machine-readable instructions capable of performing a particular task.
a. Gottschalk v. Benson (Supreme Court 1972 – p. 77)
· Facts: This was basically an application for converting binary to decimal numbers. Claim 8 was for a computer, but claim 13 could be done by hand.
· Rule: A mathematical formula, having no substantial practical application except in connection with a digital computer cannot be patented. (OR a mathematical formula in the abstract is not accorded the protection or our patent laws.)
· Reasoning: The court emphasized the lack of transformation, comparing an algorithm to a law of nature (which is unpatentable). The Supreme Court has never overruled Benson, it maintains that it is consistent with the other cases.
b. Diamond v. Diehr (Supreme Court, 1981 – p. 80)
· Background: Issue was whether a process for curing synthetic rubber which includes in several of its steps the use of a mathematical formula and a programmed digital computer is patentable subject matter under 35 U.S.C. §101.
· Rule: If you’re just patenting an algorithm, it’s UN-patentable, but patentable claims do not become invalid because they include mathematical formulas.
· Reasoning: “Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation.”
o Drew a distinction between those claims that “seek to pre-empt (prevent) the use of” a fundamental principle, on the one hand, and claims that seek to foreclose (exclude) others from using a particular “application” of that fundamental principle, on the other.
o SCT – should not be patent eligible if foreclosing every use of fundamental principle
c. In re Bilski (Fed. Cir., 2008 – p. 88)
(Note: In re – appeal came out of Board of Patent Appeals, case now Bilski vs. Director, formally called Commissioner)
· Invention: business method, specifically – method of hedging (minimizing) risk in the field of commodities trading
· Issue: Whether Applicants’ claim recites a fundamental principle, and, if so, whether it would pre-empt (prevent) substantially all uses of that fundamental principle if allowed.
· Test: Machine-or-Transformation Test – A claimed process is surely patent-eligible under Sect. 101 if:
1. It is tied to a particular apparatus, or
2. It transforms a particular article into a different state or thing
· Rule: Manipulations of business risks cannot meet this test because they are not physical objects or substances and they are not representative of physical objects or substances
· Holding: While the claimed process contains physical steps (initiating, identifying), it does not involve transforming an article into a different state or thing. Therefore, Applicants’ claim is not drawn to patent-eligible subject matter under section 101. The decision of the Board is affirmed.
· Newman – Dissent: Imposed a new and far-reaching restriction on the kinds of inventions that are eligible to participate in the patent system
o Processes that are not going to meet this transformation test that have long been patentable
· Rader – Dissent: The court should simply have said that Bilski attempts to patent an abstract idea
III. Utility – §101
A. Overview:

§101 talks about subject matter and also mentions that it applies to “useful” inventions
The utility requirement was previously used to prevent issuing patents on “immoral” things like gambling

· Patent utility differs from patent eligibility because patent utility is a question of fact rather than law
· The phrase “useful invention” under section 101 means the invention must be different and beneficial to society better than the prior art
· Useful – Patent office now requires a specific and substantial utility (bc just about anything can kill bugs)
B. §101 Utility Cases
1. General Principles
a. Lowell v. Lewis (Cir. Court 1817 – p. 124)
· Rule: “All that the law requires is that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. The word ‘useful,’ therefore, is incorporated into the act in contradistinction to mischievous or immoral.”
· Notes: This is a “utility” case written by Joseph Story. Gist: basically an invention just has to be different, not necessarily better
b. Juicy Whip, Inc. v. Orange Bang, Inc. (Fed. Cir. 1999 – p. 126)
· Background: Invention was directed to a beverage dispenser that made it look like you were getting a pre-mix beverage when you were really getting a post-mix beverage (separate carbonation and syrup). District court held patent was invalid because of lack of utility.
· Rule: The statutory requirement of utility is satisfied if one product can be altered to make it look like another because that in and of itself is a benefit. An invention does NOT lack utility for patent purposes simply because it can fool the public, through imitation, in a manner that is designed to increase product sales.
· Notes: Court uses other examples (leather, cubic zirconium, gold leaf, synthetic fabrics, etc.) that are designed to look like more expensive products. “The fact that customers may believe they are receiving fluid directly from the display tank does not deprive the invention of utility.” It’s not the USPTO’s job to deal with deceptive practices – that job belongs to Congress, the FDA, the FTC, etc. The most pioneering inventions could get stopped at subject-matter point.
2. The Utility Requirement in Chemistry and Biotechnology
In vivo: “within the living” – refers to experimentation using a whole, living organism as opposed to a partial or dead organism, examples include clinical trials and animal testing
In vitro: “within the glass” – refers to the technique of performing a given procedure in a controlled environment outside of a living organism, example includes Petri dish
a. Brenner, Commissioner of Patents v. Manson (Supreme Court, 1966 – p. 132)
· Facts: Manson invented a process for making steroids, and wanted to declare an interference to antedate another application. The examiner and PTO board said there was no utility. The CCPA reversed, and the Supreme Court granted cert.
· Issue: What constitutes utility in chemical process claims.
· Rule: A process or a product which has no known use or is useful only in the sense that it may be the object of scientific research is NOT patentable because it is not “useful.” (Do want to lock up research tools that would prohibit others from carrying out research – a patent is NOT a hunting lic

foreign patent was granted

102(e)(1)

Another

Before invention

described in published application

in the U.S.A. or *

102(e)(2)

Another

Before invention

described in patent

in the U.S.A. or *

* = A PCT published in English
that designates the U.S.

102(f)

another

(Another inventor of the claimed subject matter should have been named)

102(g)(1)

another

Before invention

“made” and not A/S/C/

in U.S.A.

102(g)(2)

Before invention

“claimed”

in a U.S. application

· 102(c) “§102(c) does not refer to the relinquishment of the invention itself; it instead refers to the surrender of an invention to the public.”
· 102(g) – abandon, suppress, conceal
· Nobody knows about abandonment, no one may have known about the invention
· One occurrence of abandoning a patent application is not 102(c) or 102(g)

102(d) first patented AND more than 12 months, then prior art

REALLY EASY THING TO TEST!!!
Always look for year when you see 102(b) references

“Patented” and “Printed Publication” in§§ 102 (b) and (d)
l Why are the terms “patented” and “printed publication” used?
l Word patented tied to when rights issue
l In US, patenting and publishing happen at the same time – rights assess at that time

B. Critical Date Defined
• One year prior to the filing date of a patent application
• Any patent-defeating activity under § 102(b) occurring before critical date is a statutory bar to patentability
• Holidays and weekends not available for filing, next business day o.k.
• Cannot swear behind 102(b) activity – only care when filed in 102(b), not when invented
C. Other Patent-Defeating Events
• § 102 (c) Abandonment
• Public abandonment, invention essentially abandoned to the public domain
• Not going to use it anymore so public can have it, some suggestion in older cases that if you get patent claims on something and mention in specs but didn’t claim then, abandoned
• § 102 (f) Derivation
• Applicant is not the inventor but has derived invention from another
D. Is it a “Public use” under §102(b): Yes/No answer the question whether or not public use

Actor

Informing Use

Non-Informing Use

Secret Use

Applicant

YES – Pennock v. Dialogue

YES – Egbert v. Lippman

YES – Metallizing Eng’g

Third Party

YES – Elec. Stor. Battery

YES – Abbot Labs

NO – Gore v. Garlock

E. Experimental Use = Negation to public use
· Experimental use is NOT public use
· We have this because we don’t want people filing inventions that do not work!
F. Burden of proof
· Burden of production – burden to come/go forward with evidence to refute what’s been put forth against you
o Example: K. White sues Eric for malpractice. She has burden of coming forth with evidence of malpractice. He doesn’t have to do anything until she has enough evidence.
o Basically putting forth a prima facie case
· Burden of persuasion
o There’s one of three – preponderance of the evidence, clear and convincing evidence, beyond a reasonable doubt
o If the court makes you explain experimental use, then the burden has shifted
· *** The burden of showing “public use” is on challenger of the patent – and the burden of persuasion standard is “clear and convincing evidence” ***
G. Public Use Policy Arguments for On-sale Bar / Public Use Bar

Once the public gets their hands on your invention, we don’t want to let an inventor recapture and obtain a monopoly
We also don’t want an inventor to extend a patent period by waiting

If you want perpetual protection keep i