Patent Law
- Patentable Subject Matter
- Utility
- Describing and Enabling the Invention
- Novelty and Statutory Bars
- Nonobviousness
In re Bilski, _ F.3d _, 88 U.S.P.Q.2d 1385 (2008)
Professors Robert Merges and John Duffy discuss the Bilski decision extensively in this podcast with Professor Doug Lichtman. They argue that, rather than putting forward a complete and consistent theory of patentable subject matter, the majority laid down a bright-line rule derived partly from the Supreme Court subject-matter trilogy of Gottschalk v. Benson, Parker v. Flook and Diamond v. Diehr. The opinion repeatedly refers to language from these cases without elaboration, presumably in order to signal that they are taking the Supreme Court precedents seriously.
Two things seem clear from the decision: the "useful, concrete and tangible result" test from State Street is rejected, but the case-by-case approach to patentable subject matter announced in that decision is reaffirmed, in that the majority declines to find any broad subject areas unpatentable. Indeed, the court specifically states that the two most controversial subject areas, business methods and software, are not excluded from patentability.
[On Page 142, insert at the end of Note 2]
For more on recent developments in § 101 patentability, see Chapter XX at pp. 1065 et seq.
[On Page 237, insert after Note 3]
4. There are strong indications that KSR is having an immediate impact on workaday § 103 cases. See, e.g., Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed.Cir. 2007) ("Accommodating a prior art ... device ... to modern electronics would have been reasonably obvious to one of ordinary skill in [the art]" because "[a]pplying modern electronics to older ... devices has been commonplace in recent years."). See also USPTO, Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc., 72 Fed. Reg. 57526 (Oct. 10, 2007) (examination guidelines instructing examiners on how to apply KSR's approach to specific problems).
- Claim Construction
- Literal Infringement
- Doctrine of Equivalents
- "Reverse" Doctrine of Equivalents
- Equivalents for Means-Plus-Function Claims
- Contributory Infringement
- Infringement Involving Foreign Activities
In Bayer AG v. Housey Pharmaceuticals, Inc., 2003 U.S. App. Lexis 17453 (Fed. Cir. Aug. 22, 2003), the federal circuit affirmed a lower court’s holding that infringement under 35 U.S.C. § 271(g) is limited to physical goods manufactured by a patented process, and does not extend to information derived by such a patented process. Housey is the assignee of U.S. method patents which disclose a process for identifying whether a particular agent can activate or inhibit a target protein. Housey alleged that Bayer would infringe Housey’s patents on two theories: 1) by importing into the United States information derived from using its patented method; and 2) by selling in the United States a drug containing an activator or inhibitor of a target protein identified using Housey’s method patents.
In support of its first theory, Housey contended that information generated by using Housey’s patents was itself a product made by a patented process and therefore fell within the rubric of § 271(g). Bayer, however, argued that the word “made” in the statute means “manufactured” and since information is not a manufactured product, the statute is limited to physical goods. Finding the statutory meaning of the term “made” ambiguous, the court began its analysis by examining the other provisions of the Act which added § 271(g). The court determined that while the other sections of the Act indicate that “made” means “manufactured,” the use of the term “manufacture” in § 101 does not mean that Congress specifies “manufacture” when it so desires. Turning next to legislative history, the court concluded that nothing in the legislative history suggested an expansive interpretation to include intangible information. The court noted that § 271(g) was added to provide new remedies available under 19 U.S.C. § 1331 and § 1331 consistently refers to “articles” and that every reference to the provision that became § 271(g) described the provision as directed to manufacturing. Finally, the court commented that under Housey’s interpretation, a person could infringe a process patent by merely entering the United States with information derived from the process—a result that is both illogical and difficult to enforce.
As for Housey’s second theory that a product made through the use of a patented process qualifies as a product made by the patented process, the court summarily rejected it stating, “the process must be used directly in the manufacture of the product, and not merely as a predicate process to identify the product to be manufactured.”
> Defenses
- The "Experimental Use" Defense
- Inequitable Conduct
- Patent Misuse
- Procedural Rules
- Substantive Harmonization and GATT-TRIPs
> Remedies
- Injunctions
- Damages: Reasonable Royalty and Lost Profits
- Willful Infringement
eBay Inc. v. MercExchange, L.L.C.
[On Page 364, replace the Knorr-Bremse case with:]
In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007)
Might the prospect of treble damages—naturally an appealing prospect to litigators—lead to a lot of rent exhaustion as parties expend resources to capture or avoid the damages? Does the decision in Seagate make this problem worse or better?
On the other hand, does this decision, combined with eBay's higher bar against injunctions, encourage potential infringers to take a lackadaisical attitude toward patents, secure in the knowledge that the courts will effectively negotiate a license for them if they are found to be infringing?
- Design Patents
- Plant Patents
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