“Top 10” Patent Cases of All Time

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.

159 thoughts on ““Top 10” Patent Cases of All Time

  1. 32

    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.

  2. 31

    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.

    1. 31.1

      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.

      1. 31.1.1

        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.

  3. 30

    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.

  4. 29

    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.

    1. 29.1

      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.

      1. 29.1.1

        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.

      2. 29.1.2

        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.

    2. 29.2

      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.

  5. 28

    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.

  6. 27

    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).

  7. 26

    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.

    1. 26.1

      It is important. Also invariably discussed whenever Markman is discussed so probably not necessary to have both cases on the list.

      1. 26.1.1

        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.

  8. 25

    Florida Prepaid vs. College Savings BankI had thought this case would start a boom in state-sponsored patent infringement.

  9. 23

    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.

  10. 22

    Question for all: If I have a patented machine made according to my specs, do I directly infringe or do I induce infringement?

    1. 22.1

      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.

      1. 22.1.1

        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).


            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.)

                1. Was within the protection – thus no final step was necessary.It is frankly amazing that you do not get that.

                2. 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?

                3. 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.

                4. 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.

                5. 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).

                6. 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.

                7. 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.

      2. 22.1.2

        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.

      3. 22.1.3

        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?


                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.

                1. 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.

                2. “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?

                3. 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.

                4. 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.

                5. 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.

                6. 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.

  11. 21

    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.

    1. 21.1

      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.


          Ned,I have explained to you before that you over-read Pennock. Congress gets to set the rules of the race, remember?


              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.

                1. I have already explained the fallacy in counting term under patent protection of a legal realm not under patent protection.The limited time afforded by patent protection is still preserved. New to you is still new.Welcome to the world of the AIA.

                2. We can only give our views on this. The question has never been squarely decided as Pennock layered onto “use” the concepts of on sale to bar a subsequent application. Congress did not create that bar.

                3. But Congress did set the rule in the AIA.Which branch of the government is given authority to set the patent rules again?

                4. Not at all Ned. The ability of Congress to set the rules of the patent game IS one of Congress’s enumerated powers (add: that is one of the problems I have with the Supreme Court twisting the 101 nose of wax – the Supremes themselves are violating the constitution with their not-really-that-implicit writings).That is rather the whole point that I am trying to get across to you.(and again, Trade Secret time is not a part of Patent time – Trade Secret law is state law, not federal patent law)

                5. Is it your position, then, that congress can grant trade patents regardless of whether there is an inventor or an invention?

                6. I don’t understand why you are diving into the weeds with this question. Why the off topic tangent?As I pointed out to you, Congress has never allowed an unlimited patent term.Even with the AIA, the patent term is still limited. That you have other protection under law that is not patent law is of no real impact with patent law – else, the unlimited times of Trade Secrets themselves would need to be constrained as such would violate the constitution – under your read.

                7. Prediction: The SC will construe the statute to avoid a constitutional problem. That means, they will construe on sale to be consistent with Pennock. It will be a personal bar, not prior art.

                8. You are merely announcing a conclusion based on reasoning that is under debate.Sorry Ned – not accepted.As I point out, my reasoning involves no constitutional crisis. Can you comment on the fact that Trade Secret law is state law and not federal patent law?add: personal bars were removed from 102 – see the expressly new title and the congressional record. – your prediction in fact would cause a constitutional crises as you would have the Supreme’s directly rewriting what Congress has done.Not even Stevens was successful in his attempts to eliminate business method patents in Bilski with such direct rewriting of what Congress has done.

  12. 20

    Good list. Bowman v. Monsanto is an absolute must because I’m still not sure how one “makes” a new soybean by dropping an old soybean on the ground and sprinkling some water on it. eBay v. MercExchange was a pretty big deal. Prometheus has to be included

    1. 20.1

      Hans, may I suggest that the court did not hold that simply dropping a seed on the ground was an infringement. That was Lourie. The holding was limited to the circumstances of the case where Bowman was replanting, spraying, retaining seed and selling in excess of the seed he first bought.

      1. 20.1.1

        Yeah, I know. And the holding was wrong. Pure policy decision. The holding attributes to the farmer the reproduction rather than to the soybean.


          But Hans, the person who has the product made is equally an infringer as the maker. Gibson v. Brand, 4 Man. & Gr. 179, 196 (1842)


          Slip opinion at 10:”Our holding today is limited—addressing the situation before us. … In the case at hand, Bowman planted Monsanto’s patented soybeans solely to make and market replicas of them, thus depriving the company of the reward patent law provides for the sale of each article. Patent exhaustion provides no haven for that conduct. We accordingly affirm the judgment of the Court of Appeals for the Federal Circuit.”Planting for any other purpose was not necessarily an infringement.


            Thanks but not correct. Remember, the seeds he was using were not bought at all from Monsanto, thus “in excess” captures even a single seed.


              The case made it clear that it made no difference how Bowman got the seed. From Monsanto or the grain elevators.

                1. They also did not address the fact that grain elevators can now be considered to be patent violators. They do sell further generation seed that Bowman makes…

                2. anon, no. The grain elevators do not plant the seeds for the purpose of making and selling replicas. Nor do they contribute to that. Nor do they induce that.

                3. Ned – selling is patent infringement, when Monsanto is not involved in the making.You miss the point that the infringing seeds that Bowman was guilty of making were (in part) sold back to the graineries. That sale back to the graineries did not exhaust Monsanto’s rights, and thus when the graneries sell Bowman-made seeds (the 4th+ gen seeds), they are guilty of infringement.add: how is our patented voracious fish project coming along? We need to set that baby loose into the oceans so that it eats all other fish and we then control the world’s salt water fish market.

                4. I didn’t see that as part of the case. But I agree that with respect to Bowman’s excess seed sold back to the elevators, they were infringing.

                5. As I mentioned at the time of the Bowman decision, that was not made a part of the Bowman case – but it is a direct (and unavoidable) consequence.

  13. 19

    Hotchkiss v. Greenwood. Why not just go back to the beginning of the ordinary workman requirement? It animates so much of patent law. And it is a completely comprehensible technology.

    1. 19.1

      I was thinking about this. KSR cited Hotchkiss for its “functional approach.” Hotchkiss concluded that using clay in a doorknob without any new functional relationship to the structure of the doorknob was not the work of an inventor. KSR elaborated by citing A & P for “‘uniting old elements with no change in their respective functions …obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men’ … is a principle reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.””Following these principles may be more difficult in other cases than it is here because the claimed subject matter may involve more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement.”

      1. 19.1.1

        The mythical ordinary workman is not limited to obviousness. He is the North Star for so much analysis. He is used to measure inventiveness, then he is used to measure obviousness. He is used to interpret claims. He is used to provide missing matter for anticipation. Any student of patent law is going to be seeing a lot of this guy.


          Erik, “Measure?” I think you have it backwards. The Supreme Court did not determine what would be obvious to one of ordinary skill in Hotchkiss or its progeny such as the quoted A & P case, they determined whether there was a functional change in the combination. If there was none, they said that was the work of the person of ordinary skill.This is why I think there is a fundamental conflict between Hotchkiss and KSR, and the test based on what would be obvious to one of ordinary skill in the art when considering combinations. The one test is objective. The other subjective.

    2. 19.2

      I agree this is a great case. We read it in my patent law class and I use it as a hypothetical to introduce the concept of obviousness in the Intro class. The facts are simple enough that they can be provided in the context of a hypo. Ultimately, though, Graham tends to be the case that is cited more often.


            But, State Street actually holds that a computer programmed to compute the improved price is an eligible machine.

                1. No, Ned it is not. Alappat stands correct all on its own.Why are you always trying to force feed me State Street?

                2. Sure it is, but Alappat carefully restricted its holding to the use of the hypothetical programmed computer to the use recited in the preamble. Everything else is dicta.

                3. Not really. It is the view of the case that Rich himself gives in State Street Bank. I have quoted it to you many times.

                4. Ned, again trying to force feed State Street while not paying attention to the actual holding in Alappat. You are simply confounding your errors in our discussion.

                5. anon, you might want to debate Rich on what he wrote in Alappat. I leave that debate to the fair reader of State Street Bank as to whether you or Rich are right.

                6. Ned,For the umpteenth time, I do not need State Street to understand the holding in Alappat.Alappat stands on its own feet, thank you very much.

                7. it does, but your interpretation is not consistent with Rich’s. That is why one needs to read State Street Bank.

                8. Sorry – that is not so. Your view destroys Alappat standing on its own two feet – which it does. Thus, you cannot be right.

                9. You are not arguing with me, but with Rich in State Street Bank. Why don’t you simply embrace that decision as it does in fact hold that programmed computer that calculate price are eligible.

                10. No Ned – I am arguing with you. I am not touching State Street at all – no matter how hard you try to force feed that case into my mouth.

                11. But [State Street] is necessary for the reason you cite Alappat.Because they’re both buried next to each other?

                12. “cute” has nothing to do with it.Try looking at my previous comment in that Alappat was confirmed by the CAFC in the very first decision after Bilski and the direction given to the CAFC by the Supreme Court to reconsider their 101 jurisprudence.Please, IANAE, provide some substantive legal rational for your views. These Calvinball face spikes you are taking are leaving some serious damage.add:”What case is any theory to the contrary based on?”The case of wishful thinking.

                13. “Alappat is still the law, IANAE.”As far as I know, that’s exactly right. What case is any theory to the contrary based on?

  14. 16

    I might take out Therasense. That’s really a case about the limits of a particular inequitable conduct defense that, even before Therasense, wasn’t particularly successful and important in real patent cases. Having litigated patent cases for more than 15 years, I can tell you that inequitable conduct was frequently pleaded, but rarely pursued with any degree of seriousness. The “sky is falling” and “plague” rationale in Therasense was overdone and hyperbole. The bigger case that affected patent litigation was actually In re Seagate (Fed. Cir. 2007) (en banc), since it dealt with yet another often-pleaded yet rarely-proven issue, willful infringement. But I think both should come out since they’re really about sub-issues of patent law.For the same reason, I’d consider ditching Global-Tech — it’s again a sub-issue of induced infringement. Not all that important if you’re trying to introduce people to the subject area. Same with cases like Akamai, Muniauction, etc — big impact on practitioners but not particularly good as introductory materials.On the core of patent law issues, I might consider Ariad (en banc), since it’s a good introduction of the written description and enablement issues that are central to patent law. Not sure how advanced your class is, but Ariad is really important for understanding how an “invention” translates into a patent.I might also consider dumping Bilski; it’s incomprehensible drivel, and the whole 101 issue is just a big confusing mess. On Bonito Boats, might consider adding the Sears/Compco cases written by Justice Black in the 1960s. Really excellent introduction on federal vs. state law protection of intellectual property and a nice-cross over on federal preemption.

    1. 16.1

      Thanks Lode_Runner, your thoughts are helpful. My inclination at this point is to take out Therasense and Bilski; replacing Bilski with O’Reilly v. Morse and the other with Graver Tank. On Global-Tech, I need a seminal case on indirect infringement of intellectual property, and the alternative would be MGM v. Grokster. But that may ultimately be a better case to use for this topic.

      1. 16.1.1

        Jason, I think indirect infringement (inducement) may first have come up in the context of having the invention made by someone else. “Have made.”

      2. 16.1.2

        Have made or have practiced, the agent directly infringed, but the inducer did as well. Whether this is direct or inducement infringement is really the question.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.

      3. 16.1.3

        Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961).Dawson Chemical Co. v. Rohm & Haas Co., 448 U.S. 176, 100 S. Ct. 2601, 65 L. Ed. 2d 696 (1980).

  15. 15

    I don’t think any list would be complete without the epic struggle evinced in Anon v. Malcolm Mooney.

  16. 12

    Good list. I think Graver Tank should be added. Perhaps In re Seagate?Also, claim construction has become the battleground. Markman v. Westview as a companion to Philips.Exhaustion. Monstanto, Quanta and Univis Lens as companion cases.

  17. 11

    hornbook — “In children’s education, in the years before modern educational materials were used, [the term] referred to a leaf or page displaying the alphabet, religious materials, etc., covered with a transparent sheet of horn (or mica) and attached to a frame provided with a handle”http://en.wikipedia.org/wiki/H…What patent law hornbook are you going to use, Jason?

    1. 11.1

      I’m thinking more of this definition: “In United States legal education, hornbooks are one-volume legal treatises, written primarily for law students on subjects typically covered by law school courses.”http://en.wikipedia.org/wiki/Hornbook_%28law%29I’m using Gary Myers’ Principles of Intellectual Property Law. It’s a clear, concise summary of the basics of intellectual property law and includes chapters on both trade secret misappropriation and misappropriation of ideas generally, which I think is an important topic to cover in a survey course. It’s also been updated to include the AIA.

  18. 10

    O’Reilly v. Morse, covers field patents and the natural limits of an idea. Might be more suitable as a note for a more modern case, but the idea is pretty easy to grasp, as well as the problem of all the tech that has come after in the field that Morse didn’t exactly disclose.


          Both. The case tell us two things: 1. Patents are for practical applications of abstract principles. (101) 2. One cannot claim an invention so broadly as to be substantially divorced from the means or processes actually invented. (112)

  19. 9

    Graham is a farm equipment case too, so it may resonate. I would add, if you could: Cardinal Chemical v. Morton that allowed invalidity counterclaims to survive even after non-infringement; and maybe tie that in with Blonder Tongue. They are non-sexy procedural cases, but hugely important. They also implicate civil procedure so that will build on another class.

  20. 8

    On inventive step, I would take as a key and irreducible reading list:Great Atlantic and Pacific Tea (1950)Graham v John Deere (1966)US v Adams (1966) Anderson’s Black Rock (1969)Sakraida v Ag Pro (1976)Stratoflex v Aeroquip (1983)KSR v TeleflexRolls-Royce v United Technologies (CAFC, 2010)It is extremely important in my submission to include cases where the patent was upheld as well as cases where the claimed subject matter was held to be obvious.

  21. 7

    Wasn’t Egbert all but abrogated by the AIA? Also I agree that Graham v. John Deere should be on there, and probably also O’Reilly v. Morse. Maybe take out Bilski because its unclear even to judges and patent attorneys what the opinion says. Also agree with removing Gobal-Tech.

    1. 7.1

      Maybe take out Bilski because its unclear even to judges and patent attorneys what the opinion says. Also agree with removing Gobal-Tech.Agreed. Get rid of Therasense and replace those cases with Markman, Graver Tank, and Prometheus.

      1. 7.1.1

        Prometheus is 10x worse than Bilski – as no one has ever been able (even with mastery of English as a first language) to square that decision with the precedents most on point (and for which the Prometheus decision says it is not changing).Bilski at least recaps the trilogy of Benson/Flook/Diehr (and indicates that Diehr cabins both Benson and Flook).It also serves to show how a Supreme Court Justice can lose his majority position when he tries to go too far and rewrite the explicit words of Congress.


          no one has ever been able (even with mastery of English as a first language) to square that decision with the precedents most on point (and for which the Prometheus decision says it is not changing).Lots of people have been able to square Prometheus with the precedents most on point, myself included. You just don’t want to listen to them because you want everything to be eligible for patenting.And before you object with your usual head-exploding rant, please give everyone one example of a class of processes you believe should be ineligible for patenting, and tell everyone why that class of processes should be ineligible for patenting. Thanks, man.


            “Lots of people have been able to square Prometheus with the precedents most on point, myself included.”I meant in this world, this reality – not your dream state and your mass of sockpuppets at PatentDocs.Here, the last (and first) time you attempted, all you did was build a bonfire and toss your pet ‘theory’ onto it.

    2. 7.2

      Yes and no. There are two possible interpretations of Egbert, only one of which (non-informing uses of an invention in public are public uses) is arguably superceded by statute. (Which itself is a worthwhile discussion to have about statutory interpretation). However, I have yet to see a good argument that the other interpretation of Egbert (that releasing control of the invention to one who is not bound by any obligation of secrecy to the inventor) is affected by the AIA. This second interpretation of Egbert also seems to be one that the Federal Circuit is following. See Dey v. Sunovion.

      1. 7.2.1

        As to the first interpretation, it will be hard to overcome statements in the congressional record like “The present definition thus abrogatesthe rule announced in Egbert” and “vindication has finally come to [dissenting] Justice Miller, albeit 130 years late.” 157 Cong. Rec. S1371 (statement of Sen. Kyl).As to the second interpretation, your point is well taken. The multi-factor test used in Dey seems a reasonable way to determine if “an invention is in the public domain” (which is how Sen. Kyl describes the intent of the new §102). I will say Dey may be more informative on the issue, but then again students are more likely to remember the case about the corset…

  22. 6

    I actually think Monsanto is an important case. But i may be biased, too. Additionally, either Myriad or Prometheus would go well in that list between Bilski and Chakrabarty

  23. 5

    How about non-case law….?Perhaps dealing with the mention of allocation of power to make patent law in the constitution, the original abdication of that power by Congress in the first patent act (allowing the Judiciary to create a common law of “invention”), and the subsequent removal of that power from the Judiciary in the 1952 Act with the introduction (and replacement with) obviousness.

    1. 5.1

      The students will be reading statutes and the relevant portions of the Constitution in addition to these cases. It might also be worth assigning a few excerpts from classic commentaries. Ultimately, though, there’s a trade-off between the amount of material assigned and the amount of material that students comprehend and internalize.

      1. 5.1.1

        Not sure you can do patent law enough justice by limiting yourself to a top ten.A top ten per facet perhaps. 101 by itself may rightfully hog more than half your list.

  24. 4

    If you are trying to spark students’ interest in patent law, I would probably avoid Global-Tech. It’s somewhat convoluted, and it seems like induced infringement would be difficult and unnecessary to teach in a survey/intro course.

    1. 4.1

      Good point on Global-Tech’s complexity. I like it because it also contains a discussion of contributory infringement, and I think it’s important to spend some time on indirect infringement (which I teach in a separate unit that covers the concept in the context of patents, copyrights, and trademarks). I might go with MGM v. Grokster instead.

  25. 3

    I think Graham v. John Deere should be on the list, since it was a key moment for patent law and still impacts a lot of what patent practitioners do. Plus, I think KSR makes more sense if you’ve already read Graham.Edit: Graham also adds somelocal flavor, similar to Bowman.

  26. 2

    Interesting list. As an attorney who has always been in private practice, I would be interested in hearing thoughts on which cases had the most practical effect on the most clients. e.g., Underwater Devices led to more than 20 years of necessary opinion work for our clients. Inequitable conduct cases had a similar effect; i.e., every single client had to deal with–pay for–these issues in almost every situation

      1. 2.1.1

        If you’re going to include Therasense, you should include Seagate since they both deal with “plague” issues in patent litigation. But I am not sure any of that merits discussion in an introductory course.

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