By Stephen B. Schott
What are the 10 most important patent cases? University of Iowa professor Jason Rantanen of Patently-O answered this question with his list of the top 10 patent cases. My Christmas gift to you: A short summary of each case.
Phillips v. AWH, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Once upon a time, there was a case called Texas Digital Systems, Inc. v. Telegenix, Inc. The author of this article worked on that case, was on the trial team that tried it in Dallas over 4 boiling weeks in August, and won the federal appeal from that trial. For 3 years, Texas Digital Systemswas the most cited patent case in the United States. ThenPhillips came along, overruled just one part of Texas Digital Systems, and ended my 15 minutes of patent fame. You could say that Phillips messed with Texas.
Phillips is the primary reference case when deciding how to interpret the meaning of a word or phrase in a claim. Specifically, courts must look at, in order of importance:
- A claim term’s plain and ordinary meaning in view of the patent’s use of the term;
- The meaning of the term as informed by the patent’s prosecution history, that is, the back and forth correspondence between the inventor and the US Patent and Trademark Office; and
- The meaning of the term in extrinsic sources like scholarly journals, expert witness testimony, and perhaps dictionaries, although dictionaries can inform the plain and ordinary meaning in (1).
Bowman v. Monsanto, 133 S.Ct. 1761 (2012). You can’t copy a patented article and reuse it. This holding may seem obvious but in this case, the article was Monsanto’s patented soybean seed, and the reuse was a later planting using seeds produced from the first planting.
O’Reilly v. Morse (also known as The Telegraph Patent Case), 56 U.S. 62 (1853). Samuel Morse is just off the Mount Rushmore of famous inventors. Not only does he have an unmatchable appearance, but at least in this case, he tried to protect not only his invention, but just about every improvement that would come subsequent to it, using the language in a patent claim, “I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims….” The Supreme Court found that this language went beyond the scope of patentable protection and was not enabled. Later cases expanded the O’Reilly holding to preclude inventors from claiming mere abstract ideas.
Diamond v. Chakrabarty, 447 U.S. 303 (1980). General Electric’s inventor Chakrabarty created a bacterium capable of breaking down crude oil, a useful life form for cleaning up oil spills. The Supreme Court considered whether creation of this living organism was within the scope of patentable subject matter and decided that a live, man-made organism was an article of manufacture, and thus protectable under patent law.
Egbert v. Lippmann, 104 U.S. 333 (1881) and City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (1878). These two cases consider the limitations of the public use and the on sale bar that prohibit an inventor from securing a patent when the invention is publicly used or sold more than a year before the date of the application for patent. In Egbert, the inventor of a steel corset-spring gave his inventive corset to his then-girlfriend in 1855, showed the corset to someone in 1863, applied for a patent in 1866, and later sued for patent infringement. The Supreme Court found the corset-spring patent invalid both for being used in public—even though such use was modestly unseen—for 11 years before the application for patent, and because the corset-spring gift was given without restriction to keeping it secret. City of Elizabeth considered just the public use question. In City of Elizabeth, the inventor Nicholson experimented with his inventive pavement for years before his application for patent. He performed his experiments using his pavement in publicly trafficked areas. After 6 years of such experiments and having identified which pavements were the most advantageous, Nicholson applied for a patent. In ruling that the patent was not invalid due to public use, the Supreme Court created an exception to the public use bar for experimental uses.
Graham v. John Deere, 383 U.S. 1 (1966); KSR v. Teleflex, 550 U.S. 398 (2007). These two cases describe the tests for determining whether a patent claim is invalid as obvious. InGraham, the Supreme Court held that in considering whether a patent claim is obvious, courts must consider the following factors: (1) The scope and content of the prior art; (2) the differences between the claimed invention and the prior art; and (3) the level of ordinary skill in the prior art.
The Supreme Court went on to suggest “secondary considerations” that could serve as evidence of nonobviousness including: (1) The invention’s commercial success; (2) long felt but unsolved needs; and (3) failure of others. From 1966 to 2007, obviousness law was in a state of flux until a string of cases in 2004-2007 resulted in an obviousness test that Justice Scalia described as “gobbledygook.” Seeking to de-gobbledygook obviousness, the Supreme Court in KSR held that there is no rigid test for obviousness and that a patent claim is invalid as obvious if a person of ordinary skill in the art would have found it obvious to try the claimed solution when choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.
The Incandescent Lamp Patent Case, 159 U.S. 465 (1895). The inventors in this case sought to accuse none other than Thomas Edison and his bamboo filament bulb, of infringing their patent. On reviewing the patent in question, however, the Supreme Court found that the patent’s description was so vague and uncertain that the public could not tell, except by independent experiments, how to construct the patented device, and thus found the patent invalid.
Graver Tank v. Linde Air Products, 339 U.S. 605 (1950). Graver Tank took up the issue of whether a product infringes a patent claim when the claim does not quite read on the product. In deciding that a product can infringe a claim if the product is equivalent to, but not literally within, the claim, the Supreme Court formulated a test for equivalents. An accused product is equivalent if it performs substantially the same function as claimed, in substantially the same way as claimed, to yield substantially the same result as claimed. This function-way-result test remains a valid equivalents test and the cornerstone of the Doctrine of Equivalents
Gorham v. White, 81 U.S 511 (1871). Gorham involved forks and in particular the test for infringement of a specific type of patent on a fork called a design patent. A design patent’s scope is limited to the ornamental appearance of its drawings. Compare the accused and found-to-be-infringing designs on Christopher V. Carani’s webpage. The test for infringement of a design patent is “If in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such to deceive such an observer, inducing him (or her) to purchase one supposing it to be the other, the first one patented is infringed by the other.” This is the “ordinary observer” test.
If you want a more in depth discussion of the cases, please take Jason’s Introduction to Intellectual Property class. Otherwise, give yourself an A and I’ll see you after Christmas.
If you have questions, contact me.
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