Patently-O Bits and Bytes

If you are a law professor teaching a general course on intellectual property, you might consider a cheap text-book alternative:

  • Franklin Pierce Professor Tom Field freely gives-away PDF versions of his 470 page book titled Fundamentals of Intellectual Property.
  • Lewis & Clark Professors Joe Miller and Lydia Loren have started their own publishing company and offer their book titled Intellectual Property Cases and Materials for a suggested fee of $30.
  • Students who want a bound-book can take the document to Kinkos with a $20 bill.
  • [This semester, I am teaching Patent Law and have assigned the casebook by Merges & Duffy. Although not cheap, that book has the lowest cost per pound of any on the market.]

Recent Patent Law Jobs:

Some Recent Patent Lawsuits:

  • Allure Home Creation Co. Inc. v. Maytex Mills Inc. (D.Del.) — Patent covers a shower-curtain hook.
  • Simonian v. Mitchell-Vance Labs (E.D.Ill.) — False marking action against maker of “ScarAway” whose product packaging lists an expired patent.
  • AGA Medical Corp. v. W.L. Gore & Associates (D.Minn) – Patent covers a device that can be inserted via a catheter for blocking leakage of an internal body organ.
  • De Beers UK Limited v. Kohls & Adwar Casting (W.D.Mo.) – Design patents cover jewelry.

32 thoughts on “Patently-O Bits and Bytes

  1. 29

    Does it seem like catheter patents occupy an inordinate amount of litigation

    They’re better than the patents that cover the other series of tubes.

  2. 28

    Does it seem like catheter patents occupy an inordinate amount of litigation (especially important litigation)?

  3. 26

    I give you the recent en banc Ariad case. It does well illustrate the point I was trying to make. Not only did the Federal Circuit look at the various forms of the statute over the years, but they also looked at the the Supreme Court cases interpreting the statutes.

    The way you guys seem to think is that when Congress passes a statute that is a revision or an update on the prior statute that we can totally ignore prior case law and prior statutes in interpreting the new statute. I beg to differ.

    For example, section 288 was “amended” in 1952. (Section 288 had an analog in the prior statutory framework. It was not a sui generis statute.) Prof. Hricik has argued that the way the statute was amended is important to understand what Congress intended. Prof. Hricik is an expert on statutory construction. I assume his approach is authorized by Supreme Court case law.

    In another recent case, Judge Rader looked at the Supreme Court cases to decide whether a provisional application had a section 102(e) effect. And the beat goes on.

    In 1952, Congress enacted what we now know that as section 112, paragraph 6. That statute for the very first time use the word “equivalents.” The purpose of section 112, paragraph 6 was to restore the law regarding functional claiming to its date prior to Halliburton. In interpreting the meaning of “equivalents” in the statute, should we or should we not understand what the courts meant by the word “equivalents” prior to Halliburton?

    So, if we should – is there any case law, anywhere or at any time prior to Halliburton, that interpreted equivalents to be limited to known equivalents? I doubted it, which must mean that the Federal Circuit interpretation of section 112, paragraph 6 equivalents is wrong.

  4. 25

    >>”WHO” do you think owns it! Doesn’t all this >>answer the question that begs an answer?

    The mad hatter?

  5. 24

    Even though it’s aimed at law students, I’ve used Tom Field’s PLFIP successfully in the general law course I teach to engineering and computer science students (mostly undergraduate) at Syracuse University.

  6. 23

    Hypothetical Question here
    If a Design Patent is not covered by a Trademark.
    And Someone goes to court to abandon a Trademark that is irrelevant to the Design Patent,
    And the Design Patent is abandoned. And the Atty. in question won’t let go……
    But there is another Trademark, and Copyrights, and a question as to who really owns the Patent Application…. “WHO” do you think owns it! Doesn’t all this answer the question that begs an answer?

  7. 22

    Paul,

    Ya might want to tell certain practicioners with reg nums starting with 2 and 3 about that “is precisely why those old cases are history

  8. 21

    Furthermore, the above excellent point that so many current patent statutory provisions are the result of old cases [on issues not covered in old statutes] is precisely why those old cases are history while their responsive statutory provisions [and newer cases interpreting them] are the controlling law. The latter is what law students need to learn most.

  9. 20

    Give me a break. I was specifically referring to the kind of common simple day to day questions from inventors, like statutory bars, [obviously not disputed litigation issues], I did not suggest not teaching case law, merely to add the subject statutory language, and BTW even those old Sup. Ct. cases were operating under and interpreting old patent statutes.

  10. 19

    But, I think it is also true that the various patent acts tried as best as possible to enact or codify Supreme Court case law.

    Judge Rich wrote a brief on this Ned – it’s referenced in Stevens Bilski dissent.

  11. 18

    Paul Morgan: “most IP questions are not debatable”

    I haven’t had such a good laugh in a long time!

    OOH, how I hope you will be opposing counsel some day…

  12. 17

    Paul, agreed.

    I found I did not have a very good grasp of the fundamentals of patent law until I actually read and understood as best as possible the leading Supreme Court cases that form the basis of our patent law. Paul Morgan, I believes, incorrectly I think, that because our patent law is statutory, that we simply have to read the statutes. But, I think it is also true that the various patent acts tried as best as possible to enact or codify Supreme Court case law. Very few statutes were intended to fundamentally alter the landscape. The only two or three that I can think of presently were in 1836 when Congress required claims and an examination; and in 1952 when it enacted 271(c) and (d) to overturn Mercoid; and 112, p. 6 (at the time, paragraph 3) to “overturn” Halliburton and allow MPF claims that were functional at their point of novelty.

    Can you think of any other statute that was intended to fundamentally alter the landscape defined by Supreme Court decisions?

    (Exclusive, that is, to such “procedural” statutes as provisional applications, term, PCT and the like.)

  13. 16

    Regrettably, I do not think you can learn the law out of a text-book or even a case-book.

    But reading a few Supreme Court decisions, and then the patents involved so that you kow the factual background, could come in very handy.

    There is NO substitute for reading the case law in the original and trying to understand it.

    Also these cases are often interesting technology and interesting history.

  14. 14

    That should be “whether the prior art is closer to the claimed design than it is to the prior art”.

    When I deliberately say something nonsensical, I really should review it more closely than “oh, that makes no sense, it must be correct”.

  15. 13

    It avoids the prior art primarily by not actually being a knot.

    I suppose that makes the claim of the ‘913 “patent” indefinite.

    And isn’t the test whether an ordinary jeweler would consider them to be substantially identical or something like that?

    We-ell, the test for infringement is whether the accused article is closer to the claim than to the prior art, so I guess the test for invalidity is whether the prior art is closer to the accused article than it is to the prior art.

  16. 12

    Compare to this cited reference:

    link to google.com

    Right. And isn’t the test whether an ordinary jeweler would consider them to be substantially identical or something like that?

  17. 11

    given the history of jewelry

    Ya mena, given the recorded history of jewelry, dontcha?

    Iza sure that the actual history is much more extensive than the recorded history.

    Nonetheless, the horrors of examination for the poor examiner that has to go through all that prior art.

    Wait, these aren’t real patents after all, are they?

    (wink wink)

  18. 10

    There are actually several design patents at issue in the suit, all covering variations on a theme (i.e., a ring, bracelets, earrings)

    D601,913 is exemplary of the design. D602,799 is a bracelet version.

    link to google.com
    link to google.com

    It avoids the prior art primarily by not actually being a knot. If it were made of a non-rigid material it would pull apart easily. Compare to this cited reference:

    link to google.com

  19. 9

    Design patents cover jewelry.

    I’m trying to imagine how incredibly narrow that patent must be, given the history of jewelry.

  20. 8

    Dear Professor Crouch,
    So little time, so many pages. Thank you for providing the casebook links and info. While these might not meet your price/weight threshold, I suggest (applying sort of a “useful & readily digestible information per page” metric) Prof. Mueller’s paperback Patent Law, 3rd Ed. as a handy reference for students … and Hawes’s Patent Application Practice for newly minted practitioners.

  21. 7

    It appears even the notion of IP being debatable is debatable.

    If you mean IP law itself, then in general probably not.

    However, analyses under IP Law are extremely fact intensive. Many, if not a gross majority, of IP questions that I encounter are very fact specific.

  22. 6

    Also, a misleading impression that most IP questions are debatable

    I would be interested to see some data to support this contention.

    It appears even the notion of IP being debatable is debatable.

  23. 5

    Also, a misleading impression that most IP questions are debatable

    I would be interested to see some data to support this contention.

    Although I somewhat agree with the entire post, I am not sure I would go so far as to support this statement.

  24. 4

    Just a comment on IP law student casebooks in general:
    IP law is primarily statutory, and most of the important case law is really about statutory intepretation. A bare collection of cases gives students a misleading impression to the contrary. Also, a misleading impression that most IP questions are debatable, when a high percentage of typical client questions are clearly answerable from the respective statutes.
    Would it not make sense to simply insert the then and now subject statutory provisions at each chapter heading or before each such abstracted case?

  25. 3

    Although not cheap, that book has the lowest cost per pound of any on the market.

    I am unsure whether Dennis is aiming for definition #1 or #2 below:

    link to urbandictionary.com

    Perhaps this is what schools mean by providing “a well rounded education.”

  26. 2

    Although not cheap, that book has the lowest cost per pound of any on the market.

    Who says academics aren’t pragmatic?

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