By Jason Rantanen
I teach the Introduction to Intellectual Property course each spring here at Iowa. Because this is a survey course that covers multiple areas of law that themselves each can be covered in an intermediate-level course, I always find it a fascinating challenge to balance breadth and depth in a way that maximizes students' ability to learn and apply the law.
This coming semester I'm trying something new: rather than use a regular casebook, I'm taking a "top 40" cases approach combined with a hornbook. The idea here is to use the hornbook together with lectures to cover the breadth of intellectual property while using discussion of the cases to dig more deeply into particularly significant or interesting moments in patents, copyrights, trademarks, trade secrets, and associated areas of law. (For those of you not familiar with conventional casebooks, they're typically structured so that preparing for a single class involves reading 2-4 opinions plus associated casenotes.)
My current "top 10" list of patent cases is:
Bowman v. Monsanto, 133 S.Ct. 1761 (2012)
Diamond v. Chakrabarty, 447 U.S. 303 (1980)
Bilski v. Kappos, 561 U.S. __ (2010)
Egbert v. Lippmann, 104 U.S. 333 (1881); City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1878) (taught together; yes, this technically makes it 11 cases)
KSR v. Teleflex, 550 U.S. 398 (2007)
The Incandescent Lamp Patent case, 159 U.S. 465 (1895)
Phillips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005) (en banc)
Therasense v. Becton Dickinson, 649 F.3d 1276 (Fed. Cir. 2011) (en banc)
Global-Tech Appliances v. SEB, 563 U.S. __ (2011)
Bonito Boats v. Thunder Craft Boats, 489 U.S. 141 (1989)
These cases track the subject matter I cover in the classroom, so while there are more great cases in each area, I've limited it to just the top case or cases in each. Also, I recognize that Bowman v. Monsanto is probably not on most folks' top 10 lists; however, I think it's a great way to introduce students to patent law and is particularly relevant here in the midwest.
Are there other cases that you think are even more important or interesting? Keep in mind that adding cases also requires removing an equivalent number of cases from the list.
In re Morris, the BRI, or broadest unreasonable interpretation, case
Since this is an Intro to Patent Law course, I would hope a little time would be spent on the history of patents, starting with the English grants from the King. And how patents were first granted in the US.link to en.wikipedia.org…I think the real meat of current patent law starts with Cuno Engineering which resulted in the 1952 Patent Act. And students should be introduced to Federico’s Commentary on the 1952 Act.Graham v. Deere is must reading. The rest of the intro course is teacher’s choice. But I would hope the teacher would note that patents are “permitted”, but not “required”, by the Constitution. Thus, the bulk of the statute changes since 1952, including the AIA and the proposed “anti-troll” legislation, were driven by various patent constituencies.One more thing: if I could tell your students one thing, I would tell them that each claim is a separate invention. If you don’t accept that, then 35 USC 101 et seq. becomes a grammatical nightmare. I would also tell that to every law clerk at the Supreme Court.
Well, it is hard to compare on those grounds. Hotchkiss was asking if invention was present. Functional change was the measure of invention. Ordinary workmen don’t make functional change. Lacking the measure of invention, the product was within the ability of the workman of ordinary skill. Obviousness asks whether the ordinary workman can provide a difference. If he can, then the invention is obvious. Or, you can view it as proving a negative, that there is no invention. In either case, the ordinary workman is the baseline in obviousness analysis because of the Hotchkiss v. Greenwood case, even though it uses a totally different reasoning.
Actually, I think 103 changed the law from an objective test to a subjective test. The SC tries to harmonize the statute and its cases. But ultimately, it HAS fallen back on its own cases when it flatly rejected TSM as the test in KSR in favor of a functional approach.
To be fair to the KSR court, the Graham court did the harmonization for it. To back out of the harmonization would have been to break with precedent. KSR did go a bit farther to looking like pre-1952 reasoning, but is still far from it. In any event, the Court is not enforcing KSR.
Erik, do you have any idea why the patent bar wanted to junk an objective test in favor of a subjective test of invention? Seriously, while we always have to determine the level of skill of the POSITA, no one ever pays attention to that. Experts testify that the POSITA would view this or that obvious, but in point of fact, they are testifying as to their own opinion. Their opinion then is tested by cross. In the end, the expert must rely on functional differences, synergy, in order to carry the day.So, 103 is followed only in lip service except when there is a genuine teaching away. True functional differences are what the courts and juries look to, IMHO.
That is indeed the routine handling. It is interesting to see those few cases that detail the skills of the person of ordinary skill in the art, and how they bear on the problem addressed by the claimed invention. This is seen in the optimization of a known parameter line of cases.The functional differences are actually a secondary consideration, one that dominates certain types of cases, chemical ones in particular. The “unexpected results” cases. If you have ever engaged in mock trials, juries consider all sorts of things. In my experience public policy dominates over functionality. One can only guess at what judges truly consider.
Alas, the only one that comes to mind is the rather pedestrian Tafas v. Doll. That is good to teach students the sort of hairs they should learn to split.
LOL – “rather pedestrian” …?That’s a rather odd way of looking at the case.
Bah, all this recency bias. Where did even basic patent law come from? The answer in the 19th century was often not Congress. In Grant v. Raymond 31 U.S. (6 Pet.) 218 (1832), the Commissioner reissued a patent with no statutory authority, and the Supreme Court backed him up on it. And if you think the Supreme Court does not look to the USPTO on patent issues, you should read some of the oral arguments in patent cases. What the Patent Office thinks is often very much on the minds of the Court. And nobody tells them, or even tells them that it should not matter.
Sometimes, the phrase “the times have changed” is a good thing.For example, in direct reply to Erik, the modern appreciation for the rule of law is indeed a good thing. (note too, that it was only after the 1952 Act that the Supreme Court had to, um, get creative – read that as make up ‘implicit readings’ when they wanted to write patent law – no doubt in part due to the excesses of the Court in being anti-patent, and Congress removing the common law ability to define “invention” through case law that was a part of the original patent act).Erik, ever here of the case called “Taffas?” (btw, another fine case that should be on the list for curtailment of the fourth branch of government excesses)add:The more I think of this, the more Taffas should be added to the list. The Patent Office presages the dawn of the FDR semi-socialist fourth branch of the government, and the intersection of Agency empowerment principles of general federal government and patent law provides a nice lesson.
I think that is right anon. You have to understand administrative law and the interplay between federal common law and statutes.
Maybe for a course on the rise of the administrative state, but I don’t think Tafas is particularly useful for an intellectual property survey course.
I don’t know LB. One reason that patent law is so hard to understand and so weird is the interplay of the PTO, district courts, the Federal Circuit, and the SCOTUS.I think it is hard to understand the ridiculous state of patent law without understanding the interplay among the actors.
One might refer one to Stern v. Marshall. There are limits to the administrative state.
Administrative law was quite a different beast back in 1832. We always had administrative agencies, but the Administrative Procedures Act along with a larger practice of delegation led to a more powerful regulatory state. Interestingly, the Patent Office became progressively weaker as other agencies became progressively stronger because the USPTO’s organic statute delegated quite little to the USPTO. Tafas is far less important in the APA issue than Dickinson v. Zurko, 527 U.S. 150 (1999), which is remarkable only for the Federal Circuit’s inability to follow straightforward law. That is true of so many other recent Supreme Court cases: blindingly inevitable reiterations of past Supreme Court decisions to correct or reinforce the Federal Circuit on points that law school students should get right. Yes, there are stunners like eBay. But they are rare. The recent Supreme Court decisions are remarkably incremental.
Bah, all this recency bias.The most recent Supreme Court cases addressing a given issue are typically the most authoritative and reliable, as they take into account facts that weren’t available to the authors of opinions that were written in earlier times, e.g., before light bulbs or before women were allowed to vote.
Drawing a blank this morning, but which case was it that went through hindsight? Hindsight and obviousness are at the very core of whether or not to grant a patent. 101 is side show that is policy driven by bozos.
I like a certain 1908 Supreme Court case that established that there is no “use” requirement for patents.The exclusive right necessarily includes the right to exclude merely because the patent owner wants to – and reinforces what the Quid Pro Quo is about. Such is especially pertinent in today’s rhetoric filled world and the attempts to extract more out of that deal with post-grant restrictions on the alienability of property and the focus of who owns property (rather than what the property is).
I certainly don’t think it was a “great” case (and I’m more than a little biased), but Cybor Corp. v. FAS Techs. should rank very high in any list of most important U.S. patent cases. Its effect on patent litigation was profound. It shifted so much power from the trial courts to the Federal Circuit.
It is important. Also invariably discussed whenever Markman is discussed so probably not necessary to have both cases on the list.
It’s important to distinguish the two Markmans. Cybor was essentially a repeat of Markman I (Federal Circuit en banc). The Cybor majority claimed that the Supreme Court (Markman II) fully agreed with its opinion in Markman I. I agree with the Cybor dissenters that there is no reason to see anything in Markman II about de novo review of claim construction. The Supreme Court was addressing only whether the 7th Am. applies to claim construction.
There’s no doubt about the “importance” of Cybor, Andew. But for the reasons you provided (at least), it remains the kid brother of Markman (II). That’s all I was saying.Thanfully, because it’s just a silly “Top Ten” list we’re discusing, we can both have our cake and eat it, too! Pretty funny that someone gave my previous comment a down vote but it’s probably the same stooge that downvotes most comments here.
Hmmm. Not sure about the kid brother part. I think establishing de novo review of claim construction was more impactful than making it the province of trial judges rather than juries.
Florida Prepaid vs. College Savings BankI had thought this case would start a boom in state-sponsored patent infringement.
Stern v. Marshall, a case that renders reexaminations, and PGRs in all forms unconstitutional.
To me, Myriad was a surprising case. Isolated DNA is a product of man even if it has the same structure as wild DNA. The ramifications of this case are going to be profound.
Question for all: If I have a patented machine made according to my specs, do I directly infringe or do I induce infringement?
You induce, the manufacturer directly infringes. (Once you use or sell the machine, of course, you directly infringe.) If the manufacturer’s legal department is any good, the contract has you indemnify the manufacturer, since you specified the machine.
OK. What if you have all the inventive elements made by another and then finish the assembly yourself, let us say, by polishing the lens blanks that embody the invention as in Univis Lens (as explained in Quanta).
or you are the one who plugged the machine in or put gas into it???
I think, as in Univis Lens, that you are the one who does the final step in the claimed process.
Ned,That final step thing is not a holding in Univis Lens.It cannot be – again, unless you think something can infringe after the patent right is exhausted.
Anon, I have quoted you the language from the case many times that the reason exhaustion occurred was that the sale of the lens blanks was within the protection of the patent. IN OTHER WORDS, an infringement of the patent if the lens blanks were sold by anyone else than the patentee or his licensee.I frankly find it amazing that you do not get this.(The patent was a process patent. The last steps were performed by finishers on lens blanks made according to prior steps.)
Was within the protection – thus no final step was necessary.It is frankly amazing that you do not get that.
But anon, but you have to recall that this is the issue on the table with Akamai. If there is no direct infringement because no one is liable for direct infringement, how can there be contributory infringement?
Not the same point at all Ned.Once again – was within the protection, thus no final step was necessary.You seem to have difficulty with letting go of things that are found to be unnecessary.
anon, but the court held that the sale of the lens blanks was contributory, not direct, infringement if conducted by other than the patentee or his licensee. One still has to prove direct infringement under all case law.
Not so, Ned – again – the item was exhausted.You keep on wanting to have an exhausted item capable of being infringed.(contributory, direct or otherwise – the Court said no).
I see you do not read my posts.
Oh I have read your posts – you simply are not following the simple logic I provide in my posts – and you are still trying to make an exhausted item capable of infringement (remember: final step not necessary).Cannot happen.Add: a possible ‘compromise’ Ned: how would you feel about modifying your position to one of “a final step to the point where the item is deemed to capture the patent claim.” ? Such would then accord with Univis Lens as I have sought to teach you and cover your ‘last step’ ideology. ‘Last step’ becomes ‘last meaningful step necessary’ and further steps – including those that are common and not determinative in regards to the patent claim (like the last step in Univis) are not determinative in liability for infringement.
Your position is reasonable but not the law. One must demonstrate that all steps are performed. If the party you accuse did not do them all they may be liable if the other steps are done at their behest by contract. If not, then the party you accuse is, at best, a contributory infringer.
Consider Gibson v. Brand, 4 Man. & Gr. 179, 196 (1842): The direct? infringer asked that a product be made by another using the patented process — the details of which were given to the one who used the process to make the product. That was deemed an infringement by agency. (The case is discussed in Curtis, Treatise (Little, Brown, Boston 1867) at page 302, fn. 1, Section 302.
That’s one I haven’t read, Ned. I probably won’t, either.That one came out a few years before the present statutes, didn’t it?
LB, as I said, the law has been consistent for 150 years that contracting out the manufacture of a product or the practice of a process makes one an infringer, particularly where one actually does some of the process. The drafters of the inducement statute never intended to change that law and no one has ever said they did. I really do not believe that inducement has anything to do with making a product for, and I emphasize “for,” the contracting party.
LB, doesn’t privity of contract convert inducement into direct infringement? Cf. the holding of Gibson v. Brand to that effect.
“doesn’t privity of contract convert inducement into direct infringement”No, I don’t think so. It’s certainly possible to have a contractual relationship that makes you my agent, but not all contractual relationships do that. I don’t think a purchase agreement, even if the purchaser provides the specs, makes the manufacturer the agent of the buyer.
There was a recent case to the opposite of that effect Leopold.Something about critical timing, and the fact that the supplier’s actions placed the purchaser beyond the purchaser’s desired timing of events.Add: link to patentlyo.com…Upon reflection – the case may augment your position: if agency were to have been found, then the sale might have been considered an internal and non-defeating event (I think the dissenting view was resonating in my mind).
Apparently there was one to the opposite effect 170 years ago, as well, but the one you describe doesn’t ring any bells. Do you remember the name of the case?
Thanks for the link, anon. That’s an interesting case, and it’s interesting that you associate the issue there with the agency issue in direct infringement. I don’t think Reyna’s argument regarding experimental use relied on an agency theory, but I could be wrong. It seems to me the real question there was the purpose of the transaction, which fed into the question of whether the invention was “ready for patenting.” An invention can’t be the subject of an offer for sale if it’s not ready for patenting, even if it’s sold…
That’s just it Leopold, the ‘ready for patenting’ argument most likely leads to an opposite conclusion of that case and the fact that agency (or perhaps better put: mastermind control) was not found led to the sale bar (remember, the sale was from the supplier to the patentee). The facts of the case indicate that at the time of the sale as held by the court, the actual item still needed some work and was not in fact ready. That did not seem to matter.
LB, but there are a lot of case to the same effect that a person is guilty of infringement by making when he contracts with another to make the invention in whole or in part, particularly when they supply the spec. How many case do I have to cite?
Well, we could start with one. Preferably one that is less than 100 years old.
Akamai cites Cross Medical Products, Inc. v. Medtronic Sofamor Danek, 424 F. 3d 1293 (Fed. Cir. 2005) at 1312 for the proposition that one who performs the last step makes the product.Also read Roberts, Odin B. “Contributory Infringement of Patent Rights.” Harvard Law Review 12.1 (1898): 35-44. link to jstor.org…distinguishing between joint (direct) infringement and contributory. The contributory infringer becomes a joint infringer and there a direct infringer and someone who has no participation in the infringement.
After reading the Harvard Law Review article, the doctrinal analysis is made quite a bit simpler. Contributory infringement applies when one is not a direct infringer, and one is a direct infringer if he participates.
“Akamai cites Cross Medical Products, Inc. v. Medtronic Sofamor Danek, 424 F. 3d 1293 (Fed. Cir. 2005) at 1312 for the proposition that one who performs the last step makes the product.”That’s quite a different situation than the have-made scenario you put forth above, Ned. How about if we stick to one topic at a time?
LB, it struck me that part of the problem we have with the Federal Circuit is that it only began looking at infringement cases in the early 80s. We know that it has a penchant for only looking at its own cases or the cases of the C.C.P.A. But almost all the authority for “have made” was developed long long ago in other courts. And as we know, the Federal Circuit does not feel bound by the authority from other courts. At times, it even appears that it feels is not bound by the authority of the Supreme Court.
So what you’re saying is that you can’t cite a relevant case from the last 100 years?
LB, perhaps not a Fed. Cir. case.Consider,“It is obvious that one may infringe a patent if he employ an agent for that purpose or have the offending articles manufactured for him by an independent contractor. We do not agree that it is necessary that appellant himself be a manufacturer of the alleged infringing devices or that he have machinery or manufacturing facilities or employees to make them or a written or an oral contract for supplies for such manufacture.†Crowell v. Baker Oil Tools, 143 F.2d 1003, 1004 (9th Cir. 1944). This case and cases like are cited and discussed in M.A. Lemley, Divided Infringement Claims, AIPLQ quarterly journal, V. 33, No. 3,255, at 259.They are view as example of infringement by agency.
Interesting. So is that good law, Ned?
We have the SC in Aro I, n.8, saying that 271(a) was not intended to change existing law on direct infringement. When one participates in the infringement, one directly infringes. “Have made” is a form of direct infringement — agency, even if the contracting party is an independent contractor, because the product is not just sold to a buyer, it is made for a customer at his request. This applies to practicing a process to product at the behest of the purchaser. Then we have cases that say that the person who performs the last step in making a product is a direct infringer. We have Univis Lens that says the same about the person who performs the last step in a process.The cases have not gone so far as I can tell to cover two truly independent actors doing something that combines to infringe. But where a system has one party using the system and where the system uses the services of others, I think uses are not independent at all. The customer is a direct infringer. Ditto the service provider because they and coordinate. All the steps are performed.
Ned,Akami mis-cites then. Cross Medical at 1312 does not support the proposition that one who performs the last step makes the product – especially in the tenor of the discussion at hand.
Since this is introductory to basic concepts, perhaps Pennock v. Dialogue, the case that fully discussed that a use had to be available to the public to be prior art and that one could not exploit an invention prior to filing a patent application without losing his right to a patent. The case (written by Story) discusses the constitutional policies behind its holding — allowing one to keep secret how to make the patented product indefinitely extends the period of exclusivity in violation of both the constitution and statutes. This case is the reason “public use” and “on sale” are in the statute.This case is also extremely important for considering whether one can keep an invention secret, i.e., a process, a machine used to make a product, a chemical or other secret ingredient, and still later obtain a patent on that secret process, etc., when others are getting close to discovering the secret. (Think, the Coke formula.) Trust me, this is going to come up the first time someone litigates an on sale bar for subject matter that was commercially exploited but not publicly available. Because the constitution is implicated, this case is important in construing the new 102(a) which seemingly authorizes extended trade secret exploitation with creating a bar to obtaining a patent.
Pennock is arguably overthrown by the AIA.Further, the ‘logic’ of how limited times was calculated is suspect – I’ve covered this in past discussions, but briefly, the fact that Trade Secret time is not time protected by patent law means that you cannot count Trade Secret time under the umbrella of ‘limited times’ of patent protection. Another item that has been arguably ‘corrected’ by the AIA.
Yes. Then it really becomes important to determine whether congress has the power to do that.
Ned,I have explained to you before that you over-read Pennock. Congress gets to set the rules of the race, remember?
anon, I beg to differ. Pennock relied on the constitution for its decision.
Ned, As I have explained, you over read that part – the Court bows to the authority of Congress to set the rules – Shall I have you read the Golan v Holder again as well?
You overread Golan. Congress cannot grant patents in excess of its authority. One of the things that it cannot do is provide indefinite term.