Case Summaries On Patent Law

CASE SUMMARIES ON PATENT LAW 1
Table of Contents
Patentable Subject Matter ...................................................................6
Diamond v. Chakrabarty, 447 U.S. 303 (1980) [68]................................. 6
O’Reilly v. Morse, 56 U.S. 62 (1854) [79]..................................................6
The Telephone Cases, 126 U.S. 1 (1888) [92]...........................................7
Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948)
[113]........................................................................................................7
Parke-Davis & Co. v. H.K. Mulford & Co., 189 F.95 (S.D.N.Y. 1911)
[106]........................................................................................................8
Lab Corp. of America v. Metabolite Labs, Inc., 126 S.Ct. 2921 (2006)
[98]..........................................................................................................8
Gottschalk v. Benson, 409 U.S. 63 (1972) [131].......................................8
Diamond v. Diehr, 450 U.S. 175 (1981) [141]........................................... 8
State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149
F.3d 1368 (Fed. Cir. 1998) [156]...........................................................9
Utility......................................................................................................... 9
Lowell v. Lewis, 15 Fed. Cas. 1018 (C.C D. Mass. 1817) [212]................9
Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364 (Fed. Cir. 1999)
[214]........................................................................................................9
Brenner v. Manson, 383 U.S. 519 (1966) [222].......................................10
In re Brana, 51 F.3d 1560 (Fed. Cir. 1995) [230]...................................10
In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005) [240]................................. 10
Disclosure and Enablement .............................................................. 11
The Incandescent Lamp Patent, 159 U.S. 465 (1895) [261]..................11
In re Wands, 858 F.2d 731 (Fed. Cir. 1988) [275]..................................11
In re Strahilevitz, 668 F.2d 1229 (Fed. Cir. 1982) [286]........................11
The Gentry Gallery, Inc. v. The Berkline Corp., 134 F.3d 1473 (Fed.
Cir. 1998) [303]....................................................................................12
University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916 (Fed.
Cir. 2003) [314]....................................................................................12
LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336 (Fed.
Cir. 2005) [321]....................................................................................13
LizardTech, Inc. v. Earth Resource Mapping, Inc., 433 F.3d 1373 (Fed.
Cir. 2006) (on petition for en banc rehearing) [325].........................13
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565 (Fed.
2 CASE SUMMARIES ON PATENT LAW
Cir. 1986) [328]....................................................................................13

Standard Oil Co. v. American Cyanamid Co., 585 F.Supp 1481 (E.D.La.
1984), aff’d, 774 F.2d 448 (Fed. Cir. 1985) [332]............................... 14
Randomex, Inc. v. Scopus Corp., 849 F.2d 585 (Fed. Cir. 1988) [340]. .14
Chemcast v. Arco Industries, 913 F.2d 923 (Fed. Cir. 1990) [348].......15
Novelty.....................................................................................................15
In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) [361].............................15
In re Seaborg, 328 F.2d 996 (C.C.P.A. 1964) [370].................................16
Schering Corp. v. Geneva Pharmaceuticals, Inc., 339 F.3d 1373 (Fed.
Cir. 2003) [374]....................................................................................16
In re Hafner, 410 F.2d 1403 (C.C.P.A. 1969) [381]................................16
National Tractor Pullers Association v. Watkins, 250 U.S.P.Q. (BNA)
892 (N.D.Ill. 1980) [394]..................................................................... 17
Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928) [403]............................17
In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) [405]...................... 17
Reeves Brothers v. United States Laminating Corp., 282 F.Supp. 118
(E.D.N.Y. 1966), aff’d, 417 F.2d 869 (2d Cir. 1969) [413].................18
Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 (1926)
[421]......................................................................................................18
Campbell v. Spectrum Automation Co., 513 F.2d 932 (6th Cir. 1975)
[431]......................................................................................................18
Brown v. Barbacid, 276 F.3d 1327 (Fed. Cir. 2002) [441]......................18
Peeler v. Miller, 535 F.2d 647 (C.C.P.A. 1976) [456].............................18
Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed. Cir.
2001) [468]........................................................................................... 19
In re Moore, 444 F.2d 572 (Fed. Cir. 1987) [483]...................................19
Westinghouse Machine Co. v. General Electric Co., 207 F. 75 (2d Cir.
1913) [496]........................................................................................... 20
Statutory Bars....................................................................................... 20
Pennock v. Dialogue, 27 U.S. 1 (1829) [511]...........................................20
Egbert v. Lippmann, 104 U.S. 333 (1881) [522].....................................21
Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir. 1986)
[528]......................................................................................................21
Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., 153
F.2d 516 (2d Cir. 1946) [533]..............................................................22
Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998) [536].......................22
Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d 1315
(Fed. Cir. 1999) [551].......................................................................... 22
City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126

(1877) [555].......................................................................................... 23
Lough v. Brunswick Corp., 86 F.3d 1113 (Fed. Cir. 1996) [562]...........23
Baxter International v. COBE Laboratories, Inc., 88 F.3d 1054 (Fed.
Cir. 1996) [570]....................................................................................24
W. L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir.
1983) [579]........................................................................................... 24
Abandonment.........................................................................................25
Macbeth-Evans Glass Co. v. General Electric Co., 246 F. 695 (6th Cir.
1917) [593]........................................................................................... 25
In re Kathawala, 9 F.3d 942 (Fed. Cir. 1993) [603]...............................25
Non-Obviousness...................................................................................26
Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851) [617]...............26
Graham v. John Deere Co., 383 U.S. 1 (1966) [631]..............................26
United States v. Adams, 383 U.S. 39 (1966) [653].................................27
KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) [665]........27
Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 353 (Fed. Cir.
1997) [685]........................................................................................... 28
In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009) [S89].................................28
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367 (Fed. Cir.
1986) [703]........................................................................................... 29
In re Winslow, 365 F.2d 1017 (C.C.P.A. 1966) [724]..............................29
Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965) [731]...........30
In re Bass, 474 F.2d 1276 (C.C.P.A. 1973) [734]....................................30
OddzOn Products, Inc. v. Just Toys, Inc., 12 F.3d 1396 (Fed. Cir. 1997)
[745]......................................................................................................30
In re Foster, 343 F.2d 980 (C.C.P.A. 1965) [751]...................................30
In re Clay, 966 F.2d 656 (Fed. Cir. 1992) [765]...................................... 31
Merrill v. Yeomans, 94 U.S. 568 (1877) [782].........................................31
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) [788,
845].......................................................................................................31
Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) [829]...32
Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998)
(en banc) [839]..................................................................................... 32
BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir.
2007) [S105]......................................................................................... 33
The Doctrine of Equivalents.............................................................. 33
Winans v. Denmead, 56 U.S. 330 (1854) [849].......................................33

Warner-Jenkinson v. Hilton Davis Chemical Co., 520 U.S. 17 (1997)
[856]......................................................................................................33
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S.
722 (2002) [867]................................................................................... 34
Indirect Infringement..........................................................................35
Aro Manufacturing Co. v. Convertible Top Co., 377 U.S. 476 (1964)
(Aro II) [909]........................................................................................ 35
C.R. Bard, Inc. v. Advanced Cardiovascular Systems, 911 F.2d 670
(Fed. Cir. 1990) [916].......................................................................... 35
Brown v. Duchesne, 60 U.S. 183 (1856) [923]........................................35
Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) [926]...................36
SEB v. Montgomery Ward, 594 F.3d 1360 (Fed. Cir. 2010) [assigned
separately]........................................................................................... 36
Willful Infringement............................................................................ 36
Panduit Corp. v. Stahlin Brothers Fibre Works, Inc., 575 F.2d 1152
(6th Cir. 1978) [969]............................................................................ 36
Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995) (en banc)
[985]......................................................................................................37
Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383
F.3d 1337 (Fed. Cir. 2004) (en banc) [1029]......................................37
Soverain Software L.L.C. v. Amazon.com, Inc., 383 F.Supp.2d 904
(E.D.Tex. 2005) [1040]........................................................................ 38
Administrative Correction and Reissue.........................................38
Superior Fireplace Co. v. Majestic Products Co., 270 F.3d 1358 (Fed.
Cir. 2001) [1075]..................................................................................38
Mentor Corp. v. Coloplast Inc., 998 F.2d 992 (Fed. Cir. 1993) [1079]. .38
Seattle Box Co. v. Industrial Crating & Packing, Inc., 756 F.2d 1475
(Fed. Cir. 1985) [1086]........................................................................ 38
Quantum Corp. v. Rodime, PLC, 65 F.3d 1577 (Fed. Cir. 1995) [1094]
.............................................................................................................. 39
J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553 (Fed. Cir. 1984)
[1106]................................................................................................... 39
Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253
(Fed. Cir. 1997) [1111]........................................................................ 40
Kinsgdown Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867
(Fed. Cir. 1988) [1121]........................................................................ 40
Antitrust and Patent Misuse..............................................................40

Brulotte v. Thys Co., 379 U.S. 29 (1964) [1262].....................................40
Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp.,
382 U.S. 172 (1965) [1275]..................................................................41
Lear, Inc. v. Adkins, 395 U.S. 653 (1969) [1284]....................................41
MedImmune, Inc. v. Genentech Inc., 127 S.Ct. 764 (2006) [1291]........41
Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir.
2009) [S111]......................................................................................... 41
Patentable Subject Matter

Diamond v. Chakrabarty, 447 U.S. 303 (1980) [68]
The Supreme Court held that microorganisms could fall within the
definition of patentable subject matter set forth in § 101. Chakrabarty
applied for a patent on a type of bacterium that could metabolize hy-
drocarbons. The biochemical pathways responsible for this metabolism
did not exist naturally. Rather, they had been artifically introduced to
the bacteria. Seizing on the artificiality of the pathway, the Court
characterized the bacteria as a “nonnaturally occuring manufacture or
compposition of matter” and a “product of human ingenuity.” In reach-
ing its conclusion, the Court distinguished Chakrabarty’s bacteria from
those claimed in Funk Brothers Seed Co. v. Kalo Inoculant Co. 1 The
bacteria in Funk Brothers, said the Court, were not patentable subject
matter because they did not exhibit any property that did not already
exist in nature.
The majority and the dissent disagreed as to the significance of the
Plant Patent Act (PPA) and the Plant Variety Protection Act (PVPA).
The majority believed that neither Act implied that living materials
fell outside the definition of patentable subject matter. For the major-
ity, the Acts were simply a way to resolve the difficulties of providing
written descriptions of plants. The dissent, however, argued that the
existence of separate Acts covering plants meant that Congress did not
intend living materials to fall within the ordinary scope of § 101.
Therefore, said the dissent, the Court should await direction from Con-
gress before upholding patents on living material.
O’Reilly v. Morse, 56 U.S. 62 (1854) [79]

The Supreme Court clarified the limits on the breadth of a claim.
Morse applied for a patent on his recently invented telegraph. One of
the claims in the patent attempted to cover “the use of the motive
power of the electric or galvanice current . . . however developed for
marking or printing intelligible characters, signs, or letter, at any dis-
tances . . . .” The Court disallowed the claim on the ground that it was
“impossible to understand [its] extent.” In the Court’s view, the claim
represented an attempt to obtain a monopoly over the electromagnetic
force itself rather than any device which made use of the force.
1 333 U.S. 127 (1948)
The dissent criticized the majority for insisting that every claim had to
be tied to a machine.
The Telephone Cases, 126 U.S. 1 (1888) [92]

The Supreme Court clarified the line dividing permissible claims from
those that were too broad under the Morse rule. Alexander Graham
Bell applied for a patent on the telephone. One claim covered “[t]he
method of, and apparatus for, transmitting vocal or other sounds tele-
graphically . . . by causing electrical undulations similar in form to the
vibrations of the air accompanying the said vocal or other sounds . . . .”
Bell’s claim, said the Court, differed from Morse’s claim because Bell
claimed only the use of electric current for transmitting the human
voice. The Court noted that “[i]t may be that electricity cannot be used
at all for the transmission of speech except in the way Bell has dis-
covered.”
Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127
(1948) [113]
The Supreme Court clarified the requirements that a microorganism
must meet in order to fall within the definition of patentable subject
matter under § 101. Kalo sought to enforce a patent on an inoculum
containing multiple strains of nitrogen-fixing bacteria. In perfecting
its inoculum, Kalo had overcome an obstacle which had been impeding
the production of multiple-strain inocula. Previous inocula could con-
tain only a single strain of bacteria because different strains of bac-
teria tended to have an inhibitive effect one each other when placed in
the same inoculum. Kalo solved this problem by identifying combina-
tions of strains that suffered from no such inhibitory effect. The Court,
however, invaliated the claim on the ground that Kalo had merely dis-
covered a natural phenomenon. The Court observed that “[t]he com-
bination of species produces no new bacteria, no change in the six spe-
cies of bacteria, and no enlargement in their utility” and that “[e]ach
species had the same effect it always had.”
The concurrence stated that a multiple-strain inoculum might be pat-
entable, but only if the particular combination of strains resulted in
some useful property that did not exist in each strain individually.
Parke-Davis & Co. v. H.K. Mulford & Co., 189 F.95 (S.D.N.Y.
1911) [106]
The court established the “purification doctrine.” Takamine (an em-
ployee of Parke-Davis) obtained a patent on purified adrenaline that
was “practically free from inert and associated gland tissue.” Taking a
pragmatic view of Takamine’s achievement, the court upheld the claim
on the ground that Takamine’s purified adrenaline was suitable for
certain therapeutic uses whereas previous forms of adrenaline were
not.
Lab Corp. of America v. Metabolite Labs, Inc., 126 S.Ct. 2921

(2006) [98]
The Supreme Court stated that a medical test consisting solely of a
series of abstract steps may not be patentable subject matter. Meta-
bolite held a patent on a test for deficiencies in folate and cobalamin.
As stated in the claim, the test consisted of “assaying a body fluid for
an elevated level of homocysteine” and “correlating an elevated level of
total homocystein in said body fluid with a deficiency of cobalamin or
folate.” Although the Court dismissed certiorari as improvidently
granted, the dissent argued that the claim was invalid. The test, said
the dissent, consisted of “obtain[ing] test results” and “think[ing] about
[the results].” The dissent further observed that the correlation
between elevated homocysteine levels and deficiencies in cobalamin or
folate was itself a unpatentable natural phenomenon.
Gottschalk v. Benson, 409 U.S. 63 (1972) [131]

The Supreme Court held that one may not patent an entirely abstract
idea. Benson applied for a patent on a method of converting decimal
numbers to binary numbers. In particular, Benson’s claim covered a
series of steps for converting numbers represented using the bin-
ary-coded decimal (BCD) system to pure binary representations. The
Court disallowed the claim on the ground that the claim attempted to
cover an idea.
Diamond v. Diehr, 450 U.S. 175 (1981) [141]

The Supreme Court held that claims should be evaluated in light of the
whole invention and that courts should not “dissect the claims into old
and new elements.” Diehr sought to patent a computer-controlled pro-
cess for curing rubber. Previous methods for curing rubber used a
mathematical relationship (the Arrhenius equation) to determine ex
ante the curing time for a particular rubber product. The older meth-
ods, however, over- or underestimated the curing time in a substantial
fraction of cases. By contrast, Diehr’s method provided a computer
with constantly updated measurements of the temperature inside the
curing mold. Using the Arrhenius equation, the computer then adjus-
ted the remaining curing time as the curing process progressed. The
Court allowed the claim on the ground that the Arrhenius equation
was but one part of a larger process. Diehr’s process, said the Court,
therefore differed from an attempt to claim a bare mathematical rela-
tionship or natural phenomenon.
The dissent argued that the majority’s position would invite a flood of
software patents.
State Street Bank & Trust Co. v. Signature Financial Group,

Inc., 149 F.3d 1368 (Fed. Cir. 1998) [156]
The Federal Circuit held that an algorithm can qualify as patentable
subject matter as long as it produces a “useful, concrete, and tangible
result.” State Street held a patent on a system (the “Hub and Spoke”
system) for allocating money among mutual funds. Although the claim
set forth an essentially abstract series of steps for dividing the funds,
the court upheld the claim on the ground that it produced a useful res-
ult.
Utility
Lowell v. Lewis, 15 Fed. Cas. 1018 (C.C D. Mass. 1817) [212]
“Usefulness” for the purposes of patent eligibility requires only that
the claimed invention performs some non-trivial function. The claimed
invention need not be so superior as to replace generally all preceding
devices performing the same function.
Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364 (Fed. Cir.
1999) [214]
“The fact that one product can be altered to make it look like another is
in itself a specific benefit sufficient to satisfy the statutory requirement
of utility.” In evaluating patent claims, courts should confine them-
selves to the technical definition of usefulness. Courts should not use

patent law to enforce policies against deceptive trade practices.
Brenner v. Manson, 383 U.S. 519 (1966) [222]

The Supreme Court clarified the conditions under which a new chemic-
al compound could pass the test for utility. Manson sought to patent a
steroid, advancing claims covering the steroid itself and processes for
producing it. To show that the steroid was useful, Manson pointed to
scientific literature showing that analogous compounds had tumor-in-
hibiting effects in mice. The Court disallowed the claims for both the
product and the process. It was not enough, said the Court, to show
that compounds similar to the claimed product had a useful physiolo-
gical effect. Rather, the inventor had to show some use arising from
the claimed compound itself. The Court emphasized that a patent “is
not a reward for the search [for a use], but compensation for its suc-
cessful conclusion.”
In re Brana, 51 F.3d 1560 (Fed. Cir. 1995) [230]

The Supreme Court modified the standard of utility established in
Manson. Any chemical compound that produces a pharmacological ef-
fect in vitro is now considered useful. Brana sought a patent on a fam-
ily of compounds sharing the same core structure. According to Brana,
the presence of certain functional groups on the core structure enhance
the anti-tumor properties of the claimed compounds. To demonstrate
the utility of the compounds, Brana pointed to research (the Paull re-
search) showing that one of the compounds within the family (NSC
308847) had enhanced anti-tumor effects against cells from tumor-de-
rived cell lines. The Court held that Brana’s showing sufficed to estab-
lish utility. “[P]harmaceutical inventions,” said the Court, “necessarily
include[ ] the expectation of further research and development,” so the
threshold for utility should not be too high.
In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005) [240]

The Federal Circuit clarified the doctrine of “substantial utility” 2 in the
context of research intermediates. Fisher sought a patent on several
expressed sequence tags (ESTs), which were artificial DNA fragments
capable of base-pairing with particular genes within an organism’s ge-
2 See, e.g., Fujikawa v. Wattanasin, 93 F.3d 1559 (Fed. Cir. 1996)

nomic DNA. The court disallowed Brana’s claims on the ground that
Brana did not know the functions of the genes targeted by the claimed
ESTs. A patent on Brana’s ESTs, said the court, would amount to a
“hunting license.”
The dissent criticized the majority for adopting an overly demanding
standard of utility. In the dissent’s view, Brana could demonstrate
utility simply by showing that the ESTs were effective in identifying
particular genes.
Disclosure and Enablement

The Incandescent Lamp Patent, 159 U.S. 465 (1895) [261]
The court invalidated a claim that purported to cover all use of “fibrous
or textile” material as filaments for incandescent bulbs. The court
found that the claimants, despite having found particular varieties of
plant fibers that could serve as filaments, could not use their findings
to support a claim over the use of all plant materials for similar uses.
In re Wands, 858 F.2d 731 (Fed. Cir. 1988) [275]

The Federal Circuit clarified the extent to which a patent claim can in-
clude experimentation before running afoul of the “undue experimenta-
tion” standard. Wands sought to patent an immunoassay that made
use of high-affinity monoclonal IgM antibodies. The process for mak-
ing the antibodies consisted of fusing a large number of lymphocytes
with myeloma cells. Each of the resulting hybridomas produced a par-
ticular antibody. Additional screening was necessary to isolate the few
hybridomas that produced IgM antibodies with sufficient affinity. As a
result, the disclosed method for producing hybridomas had a success
rate of 2.8%. The court allowed the claim on the ground that the
screening was a matter of routine.
In re Strahilevitz, 668 F.2d 1229 (Fed. Cir. 1982) [286]

Working examples of an invention are not always necessary to support
a claim for that invention. Strahilevitz applied for a patent on a device
for removing haptens (small molecules that exhibit antigenic proper-
ties upon binding to a protein) from the bloodstream. The device used
hapten-binding antibodies to “fish” haptens from the bloodstream. Al-
though Strahilevitz provided no concrete example of the device, the
Federal Circuit found that existing research on the subsidiary tech-

niques necessary to construct the device provided enough information
to enable a person skilled in the art to build the device.
The Gentry Gallery, Inc. v. The Berkline Corp., 134 F.3d 1473
(Fed. Cir. 1998) [303]
The Federal Circuit clarified the extent to which the written descrip-
tion can limit the scope of a claim. The Gentry Gallery sought to en-
force a patent on a sofa that featured adjacent and parallel reclining
sections. Gentry’s sofa represented a significant advance over previous
reclining sofas, whose reclining sections could be placed only at the
ends because of constraints arising from the lever needed to operate
the reclining mechanism. Gentry’s solution was to place the reclining
mechanism in a “console,” so that parallel sections on either side of the
console could be reclined using controls located on the console.
Gentry’s patent claims were very particular in setting forth the console
as an essential component of the invention. When Berkline invented a
similar sofa that had no consoles, the Federal Circuit held that
Berkline’s sofa fell outside Gentry’s claims.
University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916
(Fed. Cir. 2003) [314]
The Federal Circuit clarified the bounds of constructive reduction to
practice. Researchers at the University of Rochester deduced that
COX-2 inhibitors would make better painkillers than existing drugs,
which inhibited the COX-1 enzyme in addition to COX-2 and thereby
caused side effects. The University sought to patent this discovery
through a claim encompassing “[a] method for selectively inhibiting
[COX-2] activity in a human host, comprising administering a non-
steroidal compond that selectively inhibits activity of the PGHS-2
[COX-2] gene product . . . .” The Federal Circuit held the claim to be
invalid because it failed to provide a written description of any specific
compound exhibiting the described inhibitory effect on COX-2. “Even
with the three-dimensional structures of . . . COX-1 and COX-2 in
hand,” said the court, “it may even now not be within the ordinary skill
in the art to predict what compounds might bind to and inhibit them.”
LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336

(Fed. Cir. 2005) [321]
The Federal Circuit elaborated the standard of enablement in the con-
text of image-processing algorithms. Researchers at the University of
California developed and patented an improved way to apply an image-
compression algorithm known as “discrete wave transform” (DWT).
DWT gave rise to compression artifacts, which resulted from the al-
gorithm’s method for handling the edges of images. Because existing
implementations of DWT divided images into “tiles” which were pro-
cessed by DWT individually, the edges of each tile gave rise to artifacts
that contributed to the overall degradation of the original image. The
researchers solved the tiling problem by modifying DWT to process not
only the contents of each tile but also the contents of adjacent tiles.
The patent contained two claims relating to the improved algorithm.
The first (claim 1) explicitly referred to solving the tiling problem
through “maintain[ing] updated sums” calculated from the neighbors
of each tile. The second claim (claim 21), however, did not specify any
method of implementing the improvement. The court invalidated
claim 21 on the ground that it failed to describe an independent meth-
od for producing a “seamless” DWT-compressed image. “After reading
the patent,” said the court, “a person of skill in the art would not un -
derstand how to make a seamless DWT . . . except by ‘maintaining up-
dating sums of DWT coefficients [as disclosed in claim 1].’ ”
LizardTech, Inc. v. Earth Resource Mapping, Inc., 433 F.3d 1373

(Fed. Cir. 2006) (on petition for en banc rehearing) [325]
The Federal Circuit declined to rehear LizardTech. The dissent ob-
served that confusion surrounded the “written description” require-
ment. The dissent compared LizardTech to JVW Enterprises, Inc. v.
Interact Accessories3 and noted that the two cases had opposite out-
comes despite having similar facts.
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565

(Fed. Cir. 1986) [328]
The Federal Circuit clarified the extent to which an inventor may de-
scribe an invention using general terms. Orthokinetics held the patent
for a pediatric wheelchair that could be easily loaded onto the backseat
3 424 F.3d 1324 (Fed. Cir. 2005)

of a car. The wheelchair featured (1) a front wheel that could be

braced against the interior of the car and (2) a set of retractable rear
wheels. The relevant portion of the claim stated that “the front leg
portion is so dimensioned as to be insertable through the space
between the doorframe of an automobile and one of the seats thereof.”
The court held that the “so dimensioned” portion of the claim was suffi-
ciently descriptive of the wheelchair to validate the claim. “As long as
those of ordinary skill in the art realized that the dimension could be
easily obtained,” said the court, “[section 112 ¶ 2] requires nothing
more.”
Standard Oil Co. v. American Cyanamid Co., 585 F.Supp 1481

(E.D.La. 1984), aff’d, 774 F.2d 448 (Fed. Cir. 1985) [332]
Failure to define special terms may prevent a written description from
supporting a claim. A chemist invented a patented method for syn-
thesizing acrylamide. The claim for the method stated that the reac-
tion required copper ions that were “partially soluble” in water. Cru-
cially, the chemist failed to define the meaning of “partially soluble” in
the context of the claim. Despite that “partially soluble” seemed to
have been derived from the established term “slightly soluble,” the
court found the meaning of “partially soluble” too vague to support the
claim.
Randomex, Inc. v. Scopus Corp., 849 F.2d 585 (Fed. Cir. 1988)
[340]
The Federal Circuit clarified the extent to which a best-mode disclos-
ure must provide specific information. Randomex developed and pat-
ented a portable hard-drive cleaner. The relevant claim covered not
only the cleaning device itself but also the cleaning solution to be used
in conjunction with the device. The claim stated that “[t]he cleaning
solution employed should be of a type adequate to clean grease and oil
from disc surfaces, such as a 91 percent alcohol solution or a non-
residue detergent solution such as Randomex Cleaner No. 50281.” The
court found the claim to be valid even though Randomex’s claim did
not identify which cleaner was the “best.”
The dissent noted that Randomex had intentionally refrained from
identifying the best cleaning solution despite having identified the best
candidate through experimentation.
Chemcast v. Arco Industries, 913 F.2d 923 (Fed. Cir. 1990) [348]
The Federal Circuit established the standard for determining the ad-
equacy of a best-mode disclosure. “[A] proper best mode analysis has
two components,” said the court. “The first is whether, at the time of
inventor filed his application, he knew of a mode of practicing his
claimed invention that he considered to be better than any other. . . .
If the inventor in fact contemplated such a preferred mode, the second
part of the analysis compares what he knew with what he disclosed—is
the disclosure adequate to enable one skilled in the art to practice the
best mode or [ ] has the inventor ‘concealed’ his preferred mode from
the ‘public’ ”?
Chemcast sought to enforce a patent on a grommet designed to act as a
sealer. The relevant claim stated that one portion of the grommet
should have a hardness of less than 60 Shore A while a different por-
tion should have a hardness of greater than 70 Shore A. The court in-
validated the claim on the ground that Chemcast had failed to disclose
the substance to be used in the harder portion of the grommet. At the
time, Chemcast purchased that substance from a single supplier
(Reynosol). Further, the composition of that substance was Reynosol’s
trade secret. “The question,” said the court, “is not whether those
skilled in the art could make or use [Chemcast’s] grommet without
knowledge of [the Reynosol compound]; it is whether they could prac-
tice [the] contemplated best mode which . . . included specifically the
Reynosol compound.”
Novelty
In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) [361]
The Federal Circuit sharply limited the use of “inherency” in showing
that an existing product anticipates an invention. Robertson sought a
patent on a diaper which had a fastener dedicated to keeping the di-
aper rolled up for disposal. A similar diaper (the Wilson diaper) was
similar to Robertson’s diaper in most respects but lacked a dedicated
fastener for disposal. Reversing the Board of Patent Appeals and In-
terferences, the court allowed Robertson’s claim on the ground that
Wilson’s design contemplated no special fastener for use during dispos-
al. The court criticized the Board for concluding that Robertson’s
design was “inherent” because the existing fasteners on Wilson’s di-
aper could be used to keep a diaper rolled up. “Inherency,” said the
court, “may not be established by probabilities or possibilities. The
mere fact that a cetain thing may result from a given set of circum-
stances is not sufficient.”
The dissent argued that alternative uses for the fasteners on the
Wilson diaper were sufficiently apparent that Robertson’s diaper con-
stituted no real advance in diaper design.
In re Seaborg, 328 F.2d 996 (C.C.P.A. 1964) [370]

The accidental production of a substance generally does not anticipate
any later patent on that substance. Seaborg sought a patent on the
element americium. The Patent Office rejected his application on the
ground that an existing nuclear reactor (disclosed in the Fermi patent)
produced minute amounts of americium during normal operation. Re-
versing the Patent Office, the court allowed Seaborg’s claims on the
ground that the nuclear reactor simply was not a realistic way to ob-
tain useful quantities of americium.
Schering Corp. v. Geneva Pharmaceuticals, Inc., 339 F.3d 1373

(Fed. Cir. 2003) [374]
The Federal Circuit clarified the standard for anticipation in the con-
text of pharmaceutical products. Schering held a patent on loratidine,
a non-drowsy antihistamine. As the loratidine patent neared expira-
tion, Schering applied for a patent on a derivative of loratidine (DCL),
which had the same anti-allergy effect as loratidine. Loratidine was
converted to DCL in vivo. The court disallowed the DCL patent on the
ground that loratidine anticipated DCL. “Anticipation,” said the court,
“does not require the actual creation or reduction to practice of the pri-
or art subject matter; anticipation requires only an enabling disclos-
ure.” The court found the loratidine patent to disclose a method for
creating DCL since the ingestion of loratidine invariably causes the in
vivo formation of DCL.
In re Hafner, 410 F.2d 1403 (C.C.P.A. 1969) [381]

A foreign patent application may anticipate an invention during a sub-
sequent application for an American patent. Hafner applied for two
German patents on chemical compounds.
National Tractor Pullers Association v. Watkins, 250 U.S.P.Q.

(BNA) 892 (N.D.Ill. 1980) [394]
Only publicly disclosed knowledge may serve as prior art. Watkins
sought to defend his patent on a tractor pulling sled (a device used to
measure the pulling strength of tractors) against a challenge by the
National Tractor Pullers Association. The Association contended that
a device designed by three other inventors (the Huls device) anticip-
ated Watkins’s sled. The Association alleged that the Huls device was
outlined in a diagram drawn on a tablecloth, but it could not produce
the tablecloth itself. The court upheld Watkins’s patent because the
tablecloth did not constitute public disclosure of the Huls device. “The
[now-lost] tableclothing drawings, “said the court, “were never avail-
able to the public. They were drawn on the underside of the tablecloth
and remained in the kitchen of Mr. Huls mother’s home and were nev-
er printed nor otherwise published before being destroyed.”
Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928) [403]

The Second Circuit held that a printed publication need not have wide
circulation in order to act as prior art. Jockmus sought to enforce a
design patent on a lightbulb holder. Leviton (the defendant) argued
that Jockmus’s invention was anticipated by an existing lightbulb
holder. Leviton pointed to a German catalog from some years before
(the Gogarten & Schmidt catalog), which contained a picture of a simil-
ar lightbulb holder. Finding the catalog to constitute prior art, the
court invaliated Jockmus’s patent.
In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) [405]

The Federal Circuit held that prior art does not always need to be dis-
seminated through formal publication. Klopfenstein sought a patent
on double-extruded soy cotyledon fiber (SCF). Compared to existing
single-extruded SCF, Klopfenstein’s SCF exhibited a stronger tendency
to reduce cholesterol in mammals that ingested it. Two years before
applying for the patent, Klopfenstein and colleagues reported the prop-
erties of the double-extruded SCF at two academic conferences. At
each conference, they displayed their results on poster boards. The
court disallowed Klopfenstein’s patent on the ground that the poster
boards constituted a printed publication disclosing the invention.
Neither distribution nor indexation, said the court, was necessary to
turn information into prior art. For the purposes of § 102(b), a printed
publication could consist of any material that was “sufficiently access-

ible to the public interested in the art.”
Reeves Brothers v. United States Laminating Corp., 282

F.Supp. 118 (E.D.N.Y. 1966), aff’d, 417 F.2d 869 (2d Cir. 1969)
[413]
The claims of a foreign patent are prior art. Reeves Brothers sought to
enforce a patent on a process for laminating polyurethane foam and a
machine for performing the lamination. Before applying for the Amer-
ican patent, Reeves Brothers had already obtained a gebrauchsmuster
(GM) (a sort of patent) from the German patent office. The court held
that the claims stated within the GM were prior art.
Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390

(1926) [421]
The Supreme Court held that valid patents are treated as if they
entered the prior art on the day of filing.
Campbell v. Spectrum Automation Co., 513 F.2d 932 (6th Cir.

1975) [431]
The Sixth Circuit held that “clear and convincing” evidence was re-
quired to demonstrate the invalidity of a patent. Campbell sought to
enforce a patent on a flexible feed track (apparently a sort of conveyor
belt used in manufacturing). A vital component of the feed track was a
spring with a rectangular cross-section. Campbell claimed that Zim-
merman (the founder of Spectrum) had learned of the rectangular
spring while working for him. Zimmerman, however, claimed that he
conceived the spring after noticing that his father wore a belt with a
similar rectangular spring. Zimmerman corroborated his claim with a
photo of his father wearing the belt. Finding Zimmerman’s testimony
and photograph persuasive, the court invalidated Campbell’s patent.
Brown v. Barbacid, 276 F.3d 1327 (Fed. Cir. 2002) [441]
Peeler v. Miller, 535 F.2d 647 (C.C.P.A. 1976) [456]

The court established guidelines on how long an inventor may delay
patenting an invention before the invention is considered to have been
suppressed. Miller (working for Monsanto) developed a new type of hy-

draulic fluid. Miller’s hydraulic fluid mitigated problems with cavita-
tion (the formation of air bubbles within the fluid), which affected ex-
isting fluids. Miller submitted his invention to Monsanto’s legal de-
partment to initiate a patent application, but Monsanto (apparently
through bureaucratic ineptitude) did not actually file the application
until four years later. In the meantime, Peeler had obtained a patent
covering Miller’s hydraulic fluid. The court found that Monsanto’s
delay in filing constituted suppression of the invention, so that Peeler’s
patent remained valid.
Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed.

Cir. 2001) [468]
An existing product may act as prior art even if the inventor of that
product did not realize that it constituted a patentable invention. As-
tor-Valcour (AVI) manufactured plastic foam products. Although chlo-
rofluorocarbons (CFCs) had traditionally been used as the “blowing
agents” for inflating the foam, environmental concerns motivated AVI
to find alternatives. AVI learned that a Japanese company used isobu-
tane (a non-CFC gas) to turn polystyrene into styrofoam. After finding
that isobutane could be adapted for producing plastic foam, AVI ob-
tained a license to use the isobutane-based inflation process. Dow sub-
sequently obtained a patent covering the sort of foam that AVI was
producing. When Dow sought to enforce its patent against AVI, the
court invalidated Dow’s patent because the claimed invention was
already being practiced by AVI when Dow applied for the patent.
“Whether AVI understood that it had produced a legally patentable in-
vention,” said the court, “is immaterial for [the] purposes of § 102(g)(2).
It is enough that the AVI employees appreciated the fact of their in-
vention.”
In re Moore, 444 F.2d 572 (Fed. Cir. 1987) [483]

A Rule 131 affidavit need not establish any use for an invention to
overcome a presumption of non-novelty under § 102(a). Moore sought
a patent on a chemical compound that had been disclosed in a British
publication, submitting a Rule 131 affidavit stating that he had pro-
duced the compound before the effective date of the British publication.
The publication did not specify a use for the compound. The court al-
lowed the patent. “[T]he determination of a practical utility [of the in-
vention],” said the court, “need not have been acomplished prior to the
date of a reference unless the reference also teaches how to use the
compound it describes.”
Westinghouse Machine Co. v. General Electric Co., 207 F. 75 (2d

Cir. 1913) [496]
The mere practice of an invention in a foreign country does not bar
that invention from being patented in the United States. Unless the
invention has been patented in its own country or disclosed in a public-
ation, an American inventor can obtain an American patent for the
same product. General Electric (GE) held a patent on a system for con-
trolling electric railroad cars. De Kando (working for Westinghouse)
challenged GE’s patent on the ground that he had perfected the tech-
nology in Italy before Westinghouse filed for the patent. To support his
claim, De Kando produced facts showing that an American engineer
(Waterman) had introduced De Kando’s technology to the United
States prior to Westinghouse’s filing date. The court upheld GE’s pat-
ent. “[R]eduction to practice in a foreign country,” said the court, “can
never operate to destroy a patent applied for here, however widely
known such reduction to practice may be . . . unless the invention be
patented or described in a printed publication.”
Statutory Bars
Pennock v. Dialogue, 27 U.S. 1 (1829) [511]
An inventor may not patent a product that has already entered wide-
spread public use. Pennock had invented a new kind of hose, which
was less prone to leaking than existing types of hoses. Instead of ap-
plying for a patent right away, Pennock practiced the invention as a
trade secret for seven years. During that period, Pennock sold more
than 13,000 feet of his hose and permitted a thid party (Jenkins) to
produce the hose. Although Pennock ultimately obtained a patent on
the hose, the Court invalidated the patent on the ground that the in-
vention was already widely available to the public when the patent
was filed. “If an inventor should be permitted to hold back . . . the
secrets of his invention,” said the Court, “[until] the danger of competi-
tion should force him to secure the exclusive right [of a patent], . . .
[such a rule] would materially retard the progress of science and the
useful arts.”
Egbert v. Lippmann, 104 U.S. 333 (1881) [522]

For the purposes of the statutory bar, the public use of an invention
may consist of unrestricted use by a single member of the public. The
patentee (Barnes) sought to enforce a patent on corset steels (structur-
al supports for corsets). Before applying for the patent, Barnes had al-
lowed a woman to use his corset springs in her own corset. The woman
apparently showed the corset to at least one other person. By the time
Barnes applied for the patent eleven years later, his corset springs had
already entered widespread use. The court invalidated Barnes’s pat-
ent, citing his initial disclosure of the invention to the friend. “[T]o
constitute the public use of an invention,” said the Court, “it is not ne-
cessary that more than one of the patented articles should be public
used.” Further, the Court held that “if [the] inventor . . . allows [his in-
vention] to be used without restriction of any kind, [such] use is a pub-
lic one” even if the invention is “only capable of being used where [it]
cannot be seen or observed by the public eye.”
Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir.
1986) [528]
Public use does not exist if the inventor has maintained overall control
over the disclosure of the invention. Nichols had invented a 2 x 2 x 2
while attending graduate school, explaining the workings of the cube
to several fellow students. Upon joining Moleculon as a research sci-
entist, Nichols explained the workings of the cube to a supervisor. Mo-
leculon then tried to license the design to “between fifty and sixty” toy
companies but received no interest. About a year after first soliciting a
deal with a toy maker, Nichols (acting on behalf of Moleculon) applied
for a patent on the cube, obtaining the patent two years later. CBS (a
maker of Rubik’s Cube puzzles) sought to invalidate the patent on the
ground that Nichols’s explanations of the cube constituted public use
or sales under § 102(b). Finding that Nichols had not actually relin-
quished or sold his invention to the public, the court upheld the patent.
“Based on [Nichols’s] personal relationships and surrounding circum-
stanes,” said the court, “. . . Nichols at all times retained control over
the puzzle’s use and the distribution of information concerning it.” As
to CBS’s argument that Nichols had sold the cube to the public, the
court said that “an assignment or sale of rights in the invention . . . is
not a sale . . . within the meaning of section 102(b).”
Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts

Co., 153 F.2d 516 (2d Cir. 1946) [533]
The commercial use of a process may trigger a statutory bar against
patentability. Meduna (working for Metallizing) had developed a pro-
cess for conditioning metal surfaces to make them more prepared for a
restorative process known as “metallizing.” Metallizing then practiced
Meduna’s process commercially for more than a year before applying
for (and ultimately receiving) a patent. The court invalidated the pat-
ent on the ground that an inventor may not practice an invention for
commercial advantage and then seek a patent. “[I]f [the inventor] goes
beyond [the] period of probation [of one year following invention],” said
the court, “he forfeits his right regardless of how little the public may
have learned about the invention.”
Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998) [536]

The active marketing of a product may trigger the “on sale” bar of §
102(b) even if the invention has not been reduced to practice. Pfaff
(working for Texas Instruments) had developed a new type of com-
puter-chip socket. Although he had not produced a working prototype
of the socket, Texas Instrument solicited and received advance pur-
chases of the socket. The first working socket was produced some
months later, and Pfaff eventually filed for a patent on the socket. By
that time, more than one year had elapsed between the date of the or-
ders (April 8, 1981) and the date of filing (April 19, 1982). The Court
invalidated the patent, finding the socket to have been “on sale” more
than one year before the filing date. If a product has been “the subject
of a commercial offer for sale” and was “ready for patenting” on the of-
fer date, said the Court, then § 102(b) bars the inventor from obtaining
a patent on that product.
Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d

1315 (Fed. Cir. 1999) [551]
An existing product may act as prior art even if the seller of that
product fails to recognize it as such. Abbott Laboratories held a patent
on four anhydrous forms of a particular chemical compound (terazosin
hydrochloride), which it sold for therapeutic uses. In challenging Ab-
bott’s patent, Geneva showed that an unrelated company (Byron
Chemical Company) had sold terazosin hydrochloride to several buyers
more than one year before Abbott applied for the patent. At the time,
the parties to the Byron sales did not know which crystalline form of
the compound they had purchased. Only subsequent testing (carried
out by Abbott and Geneav during litigation) showed that the Byron
product fell within the scope of Abbott’s patent claims. The court in-
validated the patent, finding Abbott’s product to have run afoul of the §
102(b) statutory bar. “If a product [ ] offered for sale inherently pos-
sesses each of the limitations of the claims,” said the court, “then the
invention is on sale, whether or not the parties to the transaction re-
cognize that the product possessed the claimed characteristics.”
City of Elizabeth v. American Nicholson Pavement Co., 97 U.S.

126 (1877) [555]
Experimental use, even if carried out in public, does not trigger the
“public use” bar of § 102(b). Nicholson developed a new kind of wooden
pavement. Prior to applying for a patent on the pavement, Nicholson
tested the tested the pavement by laying seventy-five feet of the pave-
ment in front of a tollhouse. During the test, Nicholson diligently
noted how the pavement held up under the wear and tear of traffic.
Although the test lasted more than two years, the Court upheld Nich-
olson’s patent on the ground that any use of the pavement had been ex-
perimental. Nicholson, the Court emphasized, retained control of the
pavement at all times; any benefit the public derived from using the
pavement was purely incidental.
Lough v. Brunswick Corp., 86 F.3d 1113 (Fed. Cir. 1996) [562]

The Federal Circuit set forth guidelines for determining what uses are
experimental. Lough sought to enforce a patent on a seal assembly
used in boat motors. Unlike existing seal assemblies, Lough’s product
was less prone to corrosion. More than a year before applying for the
patent, Lough tested the seals by installing them on the boats of sever-
al friends and one customer of a boat dealership. Eventually, these
prototypes found their way into other hands through subsequent trans-
actions. The court invalidated Lough’s patent, finding the prototypes
to have entered public use. “Lough’s failure to monitor the use of his
prototypes by his acquaintances,” said the court, “[and] the lack of re-
cords or reports from those acquaintances concerning the operability of
the devices, comel the conclusion that . . . he did not engage in experi-
mental use.”
Baxter International v. COBE Laboratories, Inc., 88 F.3d 1054

(Fed. Cir. 1996) [570]
An existing product may act as prior art even if the inventor of that
product did not recognize it as such. Baxter sought to enforce a patent
on a “sealless centrifuge” for separating the components of blood. Un-
beknownst to Baxter, Dr. Yoichiro Ito, a scientist at NIH, had de-
veloped a similar centrifuge more than one year prior to the critical
date. Reiterating the standard that public use is any use of the
claimed invention by a person who is under no limitation, restriction or
obligation of secrecy to the inventor, the court determined that Ito’s
colleagues had in fact seen the centrifuge in operation before the critic-
al date. Although some adjustments were necessary to make Ito’s
centrifuge work properly with blood, the court found that such adjust-
ments did not lower Ito’s use of the centrifuge to an experimental use.
The court compared the adjustments to the tuning of a car engine,
stating that the adjustments were not experimentation because they
did not go to the core of the invention’s function.
The dissent characterized Ito’s use of the centrifuge as “private labor-
atory research use.” The dissent noted that “[t]his new category of in-
ternal laboratory use is immune to the most painstaking documentary
search” and that any “secret prior art” should be handled under §
102(e).
W. L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540

(Fed. Cir. 1983) [579]
The secret use of a machine to carry out a patented process is not a
public use of that process. Gore sought to enforce a patent on a process
for stretching Teflon into fibers. Garlock attempted to invalidate the
patent by arguing that the process had been in public use. Garlock
pointed to a machine built by an inventor named Cropper as evidence
of such public use. Finding that the evidence not to establish public
use, the court observed that Cropper’s did not make use of the machine
in any way that amounted to public use. Although Cropper sold the
machine to a company called Budd, which in fact used the machine to
produce Teflon fibers through the processed claimed by Gore. Cru-
cially, however, Budd had taken steps to protect the workings of the
machine as a trade secret. Budd employees were required to sign con-
fidentiality agreements. The court also found mere viewing of the ma-
chine by non-Budd individuals to be insufficient to establish public use.

While Budd had allowed some employees of DuPont to try to increase
the machine’s production speed, there was no evidence to show that
the DuPont employees could discern the workings of the machine
based on what they could observe. The court noted that “looking at the
machine in operation does not reveal whether it is stretching [Teflon
into fibers], and if so, at what speed.” Finally, the court found that
selling Teflon tape made by the machine was not a public use of the
underlying manufacturing process, noting that “no evidence [showed]
that the public could learn the claimed process by examining the tape.”
Abandonment
Macbeth-Evans Glass Co. v. General Electric Co., 246 F. 695 (6th
Cir. 1917) [593]
Keeping an invention secret for an extended period may constitute
abandonment of the right to patent that invention under § 102(c).
Macbeth-Evans had perfect a process for making glass for “illuminat-
ing purposes such as in electric and other shades and globes.”
Macbeth-Evans practiced the process in secret for more than nine
years. After a former Macbeth-Evans employee leaked the secret pro-
cess to a competitor, Macbeth-Evans successfully patented the process.
When the patent was challenged by General Electric, the court found
that Macbeth-Evans’s practicing of the process in secret constituted an
abandonment of patent rights to that process. According to the court,
allowing the practitioner of a secret process to obtain a patent for that
process would present inventors with conflicting incentives. On the
one hand, an inventor would want to avoid disclosing the secret
through a patent application. On the other hand, the inventor might
prefer the explicit protection of patent law to the less certain protection
inherent in a trade secret. The court reasoned that Macbeth-Evans,
having opted to make a trade secret of its process, could not then
change its mind and obtain a patent instead.
In re Kathawala, 9 F.3d 942 (Fed. Cir. 1993) [603]

A foreign patent on an invention may act as prior art barring that in-
vention from being patented in the United States. Kathawala applied
for an American patent on a group of compounds found to inhibit a key
enzyme in cholesterol synthesis. One year later and while the applica-
tion to the PTO was still pending, Kathawala applied for Greek and
Spanish patents on the compounds, expanding the subject matter to in-
clude ester derivatives of the compounds as well as process claims.
Kathawala received a Greek patent covering the compounds them-
selves, methods of use, and processing for making the compounds. The
Spanish patent covered only the process claims. The American patent
application was still pending when the two foreign patents issued.
When Kathawala filed with the PTO a continuation-in-part which ex-
panded his original claims to include the ester derivatives and certain
methods of use, the PTO rejected the application on the ground that
the foreign applications constituted abandonment of United States pat-
ent rights under § 102(d). Affirming the PTO’s rejection, the court held
that the issuance of any foreign patent containing claims “directed to
the same invention as that [in a] U.S. application” precluded that in-
vention from being patented in the United States. According to the
court, requiring a review of whether particular claims were granted by
foreign governments would unnecessarily embroil the PTO in the de-
tails of foreign law. Finally, the court found that the issuance date of
foreign patents is the date on which patent rights became effective in
those countries.
Non-Obviousness
Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851) [617]
The mere substitution of one material for another does not constitute a
non-obvious invention. Hotchkiss applied for a patent on a doorknob
made of clay or porcelain. Upholding the rejection of the application,
the Court found that Hotchkiss’s idea consisted solely of using a new
material. The court noted that porcelain knobs had been made before
and that no new method was required to mount the porcelain knobs on
doors.
The dissent, taking a more pragmatic approach, found that the porcel-
ain knob might have been patentable had it been cheaper or otherwise
better than existing knobs.
Graham v. John Deere Co., 383 U.S. 1 (1966) [631]

The Court invalidated two patents for claiming inventions that were
obvious under § 103.
Graham applied for a patent on a plow whose blade was designed to

flex in response to collisions against rocks and other hard objects in the
soil. The patent, however, merely claimed an improvement on an ex-
isting plow also designed by Graham. The improvement consisted of a
change in the attachment of the blade to the flexing mechanism.
Whereas the old plow had a blade that was mounted on the upper face
of a “hinge plate,” the new plow’s blade was mounted the underside of
the plate. According to Graham, the new mounting increased the
blade’s flexing ability of the blade. Although the new arrangement of
components did not exist in prior art, the Court found that the im-
provement would have been obvious to one skilled in making plows.
Cook Chemical Company held the patent on a single-use “overcap” that
sealed pump-based dispensing containers. Cook, however, based it
claim on the very particular way in which the overcap formed a seal
against the rest of the container. After reviewing several patents on
similar caps, the Court found Cook’s invention to be obvious.
United States v. Adams, 383 U.S. 39 (1966) [653]

Disclosures that teach away from an invention do not render that in-
vention obvious. Adams held a patent on a wet-cell battery. Unlike
previous wet-cell batteries, Adams’s battery used magnesium and
cuprous chloride as the materials for the respective electrodes. The
battery also used water as the electrolyte as opposed to the acid used
in existing batteries. As a result, the battery could be shipped to users
without the electrolyte and could be activated upon the addition of wa-
ter. After reviewing the prior, the Court upheld the patent. No exist-
ing patent on a battery disclosed the use of water as an electrolyte or
Adams’s particular combination of electrodes. Although some prior
patent applications had mentioned the use of magnesium or cuprous
ions (as opposed to cuprous chloride) in electrodes, those substances
appeared only in lists of potential electrode substances. The Court
pointed out that the Army’s initial rejection of Adams’s claims as to the
performance of the battery supplied additional proof of non-obvious-
ness.
KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) [665]
Teleflex held a patent on a gas pedal with an attached electronic
sensor. The disputed claims stated that the electronic sensor was to be
attached to a stationary support and was to sense the rotation of the
pedal around its pivot. When KSR upgraded its own mechanical ped-
als with modular electronic sensors attached in more or less the same
way, Teleflex sued for patent infringement. After reviewing the prior
art, the Court found that several existing patents made Teleflex’s ped-
al obvious. One patent (the Asano patent) disclosed a fixed-pivot pedal
similar to Teleflex’s pedal except for the presence of an electronic
sensor. Existing literature disclosed that any electronic sensor would
have to be mounted on a stationary portion of the pedal in order to
avoid chafing the wires connected to the sensor. According to the
Court, these two pieces of knowledge made it obvious that any elec-
tronic sensor would have to be implemented in the way used by Tele-
flex.
Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 353 (Fed.
Cir. 1997) [685]
Refences that teach away from the invention indicate that the inven-
tion is non-obvious. Gene Larew invented a fishing lure which was
made of plastisol (a plastic-like material) and which was impregnated
with salt to attract fish. Although the prior art established that fish
tended to like salty-tasting lures, there was no evidence that a lure like
Larew’s had ever been produced. To the contrary, the prior art warned
that mixing salt with plastisol could cause an explosion and that such
a combination, even if successful, would tend to degrade the smooth
texture of the lure and make it less attractive to fish. Existing meth-
ods of attracting fish included the use of perishable salty baits (such as
pork rinds) and the use of organic attractants (which were not salty).
After reviewing the prior art, the court found the district court to have
erred in concluding that Larew’s lure was obvious on the basis that the
separate components of the lure were known in the prior art. The
court found that obviousness exists only where it would been obvious
to combine those separate components “in light of all the relevant
factors” in the art at the time of invention.
The dissent disagreed, pointing to abundant evidence that salty lures
tended to attract fish. The dissent found the recognized danger of
adding salt to plastisol insufficient to defeat obviousness.
In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009) [S89]

Kubin applied for a patent on the DNA sequence for a protein known
as the Natural Killer Cell Activation Inducing Ligand (NAIL). The rel-
evant claim covered “[a]n isolated nucleic acid molecule comprising a

polynucleotide encoding a polypeptide at least 80% identical to [the se-
quence of NAIL].” Kubin’s application was rejected on the ground that
a previous patent (the Valiante patent) disclosed the same protein and
thereby rendered Kubin’s claim obvious. The Valiante patent reported
the existence of NAIL, though it called the protein “p38.” The Valiante
patent further disclosed a “five-step cloning protocol for ‘isolating and
identifying the p38 receptor.’ ” After reviewing the history of the “obvi-
ous to try” doctrine, the court found that Kubin’s application did not
present a situation in which significant further experimentation was
necessary to proceed from the prior art to the claimed invention.
Rather, Kubin was only following steps that had already been detailed
in a previous patent. Kubin’s claim was therefore obvious.
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367

(Fed. Cir. 1986) [703]
[Deal with this later.]
In re Winslow, 365 F.2d 1017 (C.C.P.A. 1966) [724]

In performing the obviousness analysis, courts should “picture the in-
ventor as working in his shop with the prior art references . . . hanging
on the walls around him.” Winslow had invented a machine that
placed items inside plastic bags. The machine held each plastic bag by
a series of rods passing through holes punched through one edge of
each bag. The machine delivered a blast of air to open each bag. Re -
viewing three patents for similar devices, the court found Winslow’s
machine to be obvious. One patent (the Rhoades patent) disclosed a
machine that held bags using rods, though the bags were hung vertic-
ally in the Rhoades machine. Another patent (the Gerbe patent) dis-
closed a machine that opened bags with an air-blast mechanism,
though that machine did not hold bags by means of rods. The court
concluded that Winslow’s combination of features was an obvious step
in light of the prior art.
The dissent argued that Winslow had solved significant technical chal-
lenges which affected the Gerbe machine. The dissent noted in partic-
ular that the Gerbe machine tended to suffer from bag-against-bag
friction, which made it difficult to open only one bag at a time.
Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965) [731]

Pending patent applications are prior art for the purposes of § 103.
Robert Regis applied for a patent on an improvement to a microwave
switch. The PTO rejected his application on the ground that another
patent (the Wallace patent) made Regis’s invention obvious. The Wal-
lace patent was pending when Regis filed his application and was
granted forty-three days later. Even though Regis had no access to
Wallace’s patent when he filed his own application, the Court nonethe-
less found Regis’s invention to be obvious. The Court found that the
opposite holding might allow an inventor to profit from delays in the
PTO’s examination process.
In re Bass, 474 F.2d 1276 (C.C.P.A. 1973) [734]

[Deal with this later]
OddzOn Products, Inc. v. Just Toys, Inc., 12 F.3d 1396 (Fed. Cir.
1997) [745]
An invention may be obvious under § 103 if the inventor derived the
idea for the invention within the meaning of § 102(f). OddzOn held a
patent on a football modified with tail fins. Just Toys, which sold a
similar product, argued that OddzOn’s football was obvious because
OddzOn’s inventor had gotten the idea for the football from a confiden-
tial communication with another inventor. Reviewing the language of
§ 103(c)(1), the court found that Congress, in curtailing the applicabil-
ity of § 102 under limited circumstances, implicitly intended § 102 pri-
or art to establish obviousness in all other cases.
In re Foster, 343 F.2d 980 (C.C.P.A. 1965) [751]

An inventor may lose the right to patent his invention if the patent ap-
plication is filed more than one year after a publication within the
meaning of § 102(b) renders the invention obvious. Foster filed for a
patent on synthetic rubber compounds on August 21, 1956. He was
able to show that the date of invention was prior to December 26, 1952
—some four years earlier. The PTO rejected the application on the
ground that an August 1954 article made Foster’s invention obvious.
After reviewing the history of obviousness in relation to the § 102(b)
statutory bar, the court found that it would be anomalous to grant a
patent where an inventor has “slept on his rights” and failed to apply
for a patent even after a publication made his invention obvious.

The dissent argued that there was no basis for believing that Congress
intended to allow §§ 102(b) and 103 to be applied in conjunction, so
that an invention can become obvious on the basis of a printed publica-
tion.
In re Clay, 966 F.2d 656 (Fed. Cir. 1992) [765]

Only prior art from an analogous field of work may support a finding of
obviousness. Storage tanks for petroleum generally have a “dead
volume,” which is the portion of the tank located below the outlet. The
dead volume is problematic because its contents cannot be drained
from the tank. Clay solved the dead-volume problem by filling the
dead volume with a gel-like substance. The PTO rejected Clay’s applic-
ation for a patent on his technique on the ground that another patent
(the Sydansk patent) disclosed a similar use of gel. The Sydansk pat-
ent, however, disclosed the use of gel to fill in geological irregularities
in order to facilitate the extraction of petroleum from the ground.
Finding the Sydansk patent to solve a completely different problem
from that in Clay’s application, the court upheld Clay’s claims.
Merrill v. Yeomans, 94 U.S. 568 (1877) [782]

The Court resolved a problem in construing the scope of a patent claim.
The plaintiff held a claim to a “new manufacture of [ ] deodorized
heavy hydrocarbon oils.” In the infringement dispute, the plaintiff ar-
gued that “manufacture” referred to the product itself while the de-
fendant argued that the term referred only to the process for making
that product. After reviewing the patent in detail, the Court found
that “manufactured” meant “process.”
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)
[788, 845]
Claims are to be interpreted in the context of the specification. Phil-
lips held a patent on modular wall panels. The panels, which were
made of steel, could be welded together to form barriers that were res-
istant to physical damage and relatively soundproof. A key feature of
the panels was the presence of “baffles,” internal structures that could
deflect bullets and impede the flow of materials used to reinforce the
completed walls. The district court found the claim to be limited to the
particular arrangement of baffles within Phillips’s design. The Federal

Circuit held this construction to be too narrow and reversed the district
court’s finding of non-infringement.
The dissent sharply criticized what it perceived to be the majority’s
blind insistence on treating claim construction as an issue of law. The
dissent argued that forcing the courts to construe claims only added to
the confusion of patent litigation.
Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)

[829]
The scope of a disputed claim is a question of law. Markman held a
patent on an inventory-tracking system for dry-cleaning establish-
ments. Markman’s system used a computer to generate and track bar-
coded tags, which remained attached to individual articles of clothing
as they progressed through the dry-cleaning process. The infringe-
ment dispute centered on whether “inventory,” in the sense used by
Markman, necessitated the ability to track the locations of individual
pieces of clothing. Markman wanted the question to be settled by a
jury while Westview wanted it to be settled by the court. Reviewing
the history of infringement suits, the Court found no pattern indicating
that the construction of claims devolved upon the jury. The Court
therefore upheld the lower court’s understanding of the term “invent-
ory.”
Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir.
1998) (en banc) [839]
In accordance with its status as an issue of law, claim construction is
to be reviewed de novo on appeal. The court rejected the view that
claim construction was a “mongrel practice” which entailed some defer-
ence to the factual findings of the trial court. Dismissing this language
as a mere “prefatory comment,” the court held that appellate courts
had full discretion to review constructions of claims provided by lower
courts.
Concurrence remarked that “with respect to certain aspects of the task
[of claim construction], the distict court may be better situated than we
[appellate courts] are . . . .”
The dissent criticized previous cases for setting up a hair-splitting dis-
tinction between a trial judge’s “understanding” of disputed claims and
the judge’s “interpretation” of those claims. According to the dissent,

the practical effect of treating claim construction as an issue of law was
to defer decision-making to the Federal Circuit even though trial
judges have better access to the facts.
BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed.

Cir. 2007) [S105]
Direct liability for infringement does not arise unless the infringer per-
forms every step required to produce the patented process.
The Doctrine of Equivalents

Winans v. Denmead, 56 U.S. 330 (1854) [849]
A product that contains essentially the same limitations as a patented
invention may infringe that patent despite falling outside the patent’s
literal terms. Winans sought to enforce a patent on a railroad car for
transporting coal. Unlike existing coal hoppers, Winan’s coal hopper
was shaped like a cone. The shape of the coal hopper increased its
load-bearing capacity and facilitated the unloading of the coal. Den-
mead produced a similar coal hopper that had an octagonal cross-sec-
tion rather than a circular one. Applying the doctrine of equivalents,
the Court found Denmead’s hopper to infringe Winan’s patent. “[T]o
copy the principle or mode of operation described [in the patent],” said
the Court, “is an infringement, although such copy should be totally
unlike the original in form or proportions.”
Warner-Jenkinson v. Hilton Davis Chemical Co., 520 U.S. 17

(1997) [856]
The prosecution history of a patent affects the enforcement of its
claims through the doctrine of equivalents. Where the PTO has lim-
ited the scope of an amended claim for a clear reason, then the pat-
entee may not use the doctrine of equivalents to enlarge the scope of
the claim. Where the PTO has not provided a clear reason for the lim-
its of an amended claim, the patentee bears the burden of supplying a
reason that comports with its interpretation of the claim.
Hilton Davis sought to enforce a patent on a filtration process (ultra-
filtration) for removing impurities from dyes. The relevant claim
stated that the filtration process was to be carried out at a pH range of
6.0 to 9.0. Hilton Davis apparently specified no limits on the pH when

it first advanced the claim, adding the pH range only upon the insist-
ence of the PTO. The reason for adding the upper limit of the range
was clear—the addition was necessary to distinguish Hilton Davis’s
process from a filtration process disclosed in another patent (the Booth
patent). The reasons for adding the lower range, however, were un-
clear. Finding that the lower courts did not adequately consider the
prosecution history and all factors relevant to the interpretation of
Hilton Davis’s claims, the Court remanded the case for further pro-
ceedings.
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535

U.S. 722 (2002) [867]
Amending any claim for the purpose of bringing that claim into compli-
ance with a statutory requirement for patentability may place that
claim within the reach of prosecution history estoppel. At the same
time, prosecution history estoppel does not invariably bar the patentee
from invoking the doctrine of equivalents against all equivalents what-
soever. Festo sought to enforce a patent on a magnetic rodless cylinder
(a piston-like device used in a wide variety of machinery). Shoketsu
(called “SMC” throughout the opinion) made a similar device that
differed from Festo’s design in several respects, so that Festo relied on
the doctrine of equivalents to support its claim of infringement. SMC
argued that Festo could not invoke the doctrine of equivalents because
Festo had amended the relevant claims to comply with § 112. Broad-
ening the rule of Hilton Davis, the Court held that prosecution history
estoppel applies to any claim amended to comply with requirements of
patentability. “Estoppel arises,” said the Court, “when an amendment
is made to secure the patent and the amendment narrows the patent’s
scope. . . . [I]f a § 112 amendment is necessary and narrows the pat-
ent’s scope . . . estoppel may apply.” The Court, however, qualified the
new rule by stating that “[t]here is no reason why a narrowing amend-
ment should be deemed to relinquish equivalents unforeseeable at the
time of the amendment and beyond a fair interpretation of what was
surrendered.”
Indirect Infringement
Aro Manufacturing Co. v. Convertible Top Co., 377 U.S. 476
(1964) (Aro II) [909]
Contributory infringement exists where a party knowingly distributes
a product desigend to repair a patented invention. Aro manufactured
and sold fabric fabric tailored to replace the convertible tops of certain
Ford cars. The design of the Ford tops, however, infringed a patent
held by Convertible Top. Upon learning that Aro was manufacturing
such replacement tops, Convertible notified Aro that Ford had no li-
cense to use Convertible’s design. The Court found that any Aro tops
manufactured after the notification date gave rise to contributory in-
fringement.
C.R. Bard, Inc. v. Advanced Cardiovascular Systems, 911 F.2d

670 (Fed. Cir. 1990) [916]
A party may contribute to the infringement of a method patent by pro-
ducing a device that allows users to practice the patented method. Ad-
vanced Cardiovascular Systems (ACS) sought to enforce a method pat-
ent on a technique for performing a coronary angioplasty. ACS argued
that Bard’s perfusion catheter contributed to the infringement of the
patent by allowing physicians to practice the patented technique.
After analyzing the catheter’s design, the court found that the catheter
did not invariably facilitate the practice of ACS’s patented method.
Brown v. Duchesne, 60 U.S. 183 (1856) [923]

A patent does not prohibit a foreign national from practicing the paten-
ted invention. Brown sought to enforce a patent on a gaff (a structure
for supporting the sails on a boat). Brown argued that Duchesne (a
French national) had infringed the patent by installing a similar gaff
on a French vessel. The Court declined to find infringement on the
ground that American patent law could not restrict the practice of a
patent outside the United States. “The power [ ] granted [by patent
law] is domestic in its character,” said the Court. “It confers no power
on Congress to regulate commerce, or the vehicles of commerce, which
belong to a foreign nation, and occasionally visit our ports in their com-
mercial pursuits.”
Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) [926]

Only software associated with a medium for distribution constitutes a
“component” under § 271(f). AT&T sought to enforce a patent on soft-
ware for compressing recorded speech. Because the Windows operat-
ing system made use of the patented software, AT&T argued that Mi-
corsoft had infringed the patent by allowing Windows to be installed on
computers in Europe. Microsoft, however, did not provide those copies
of Windows itself. Rather, it shipped only a single master copy to a
European computer-maker, which then made its own copies of Win-
dows. The Court held that Microsoft did not supply any component of
a patented invention within the meaning of § 271(f). “[A] copy of Win-
dows, not Windows in the abstract,” said the Court, “qualifies as a
‘component’ under § 271(f).”
SEB v. Montgomery Ward, 594 F.3d 1360 (Fed. Cir. 2010)

[assigned separately]
Deal with this later.
Willful Infringement
Panduit Corp. v. Stahlin Brothers Fibre Works, Inc., 575 F.2d
1152 (6th Cir. 1978) [969]
The court found that a “reasonable royalty” awarded as compensation
for infringement must necessarily be higher than that attained in an
actual negotiation between the patentee and licensee. Panduit ob-
tained a patent on a covering duct into which wires could be snapped
easily. Stahlin began to manufacture a competing duct of similar
design. After years of litigation, Panduit obtained damages equal to a
royalty of 2.5% on Stahlin’s sales of the infringing duct. Finding the
award too low, the Sixth Circuit emphasized that any award of “reas-
onable royalties” must be sufficiently costly to the infringer to deter
that infringer from appropriating a patented invention and sorting out
the legal ramifications later. If damages were not high enough, said
the court, an infringer would actually profit from its infringement since
the worst result from litigation would be an order to pay the royalties
that would have resulted from ordinary negotiations. The result would
allow a substantial fraction of infringers to escape the payment of roy-
alties altogether.
Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995) (en
banc) [985]
In infringing a patent, the infringer may become liable for damages
arising from lost sales of products not covered by the patent. Rite-Hite
made two types of hooks designed to hold vehicles against loading
docks. The first type, the MDL-55, was covered by the infringed pat-
ent. The second type, the ADL-100, was not covered by the patent.
Kelley manufactured similar hooks, which infringed the MDL-55 pat-
ent but which also ate away Rite-Hite’s sales of the ADL-100 hook. In
upholding damages to compensate Rite-Hite for lost sales of the ADL-
100, the court applied a standard of proximate causation in determin-
ing which damages were appropriate. Because Rite-Hite had shown
that Kelley’s infringing product was the only substitute for the ADL-
100, one could reasonably conclude that Rite-Hite would have sold ad-
ditional ADL-100 hooks in the absence of Kelley’s infringement.
The dissent criticized the majority for taking an overly broad view of
the damages authorized by the patent statute.
Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana

Corp., 383 F.3d 1337 (Fed. Cir. 2004) (en banc) [1029]
Failure to consult counsel on the possibility of patent infringement and
the refusal to disclose counsel’s opinions as to infringement are not
grounds for imposing treble damages. Knorr-Bremse held a patent on
a braking system for heavy trucks. Dana, collaborating with the
Swedish company Haldex, produced a similar braking system. Knorr-
Bremse notified Haldex that it believed Haldex was infringing its pat-
ent, and Haldex forwarded this information to Dana. Haldex consulted
counsel as to the issue of infringement but ultimately refused to dis-
close its counsel’s opinion as to whether infringement had actually
taken place. Dana did not consult counsel, apparently relying on the
conclusion Haldex had drawn from its own consultations. Remanding
the case for a redetermination of damages, the court found that a de-
fendant may not be held liable merely for failing to consult counsel or
for refusing to disclose its counsel’s opinion as to infringement. The
opposite rule, said the court, would inhibit communication between
counsel and client.
Soverain Software L.L.C. v. Amazon.com, Inc., 383 F.Supp.2d

904 (E.D.Tex. 2005) [1040]
A website can be marked for the purposes of the marking statute.
Administrative Correction and Reissue

Superior Fireplace Co. v. Majestic Products Co., 270 F.3d 1358
(Fed. Cir. 2001) [1075]
The Federal Circuit clarified the conditions that a patentee must meet
in order to correct an error in an issued patent. Superior obtained a
patent on a gas fireplace, one of whose claims stated that the firebox
was to have rear walls as opposed to a rear wall. Superior apparently
did not notice the typographical error until it sued another company
for infringing the patent. Both parties to the suit agreed that no in-
fringement would exist if the misspelled phrase were interpreted as-is.
In disallowing Superior’s correction, the court noted that § 255 is de-
signed to protect the public against typographical corrections that
broaden the scope of claims. Because wall would allow Superior to sus-
tain the suit for infringement whereas walls would not, Superior could
not apply for the correction.
Mentor Corp. v. Coloplast Inc., 998 F.2d 992 (Fed. Cir. 1993)
[1079]
A patentee may not seek to add new substantive claims to a reissue
patent. Mentor held a patent on a condom catheter. As originally is-
sued, the patent contained four claims directed to an adhesive that
could be transferred from the outer surface of the catheter to the inner
surface via rolling and unrolling of the sheath. In seeking the reissu-
ance of the patent, Mentor sought to add four additional claims that
did not address the adhesive. The court disallowed the reissue patent.
A reissue patent, said the court, cannot give the patentee the power to
prosecute the original patent de novo.
Seattle Box Co. v. Industrial Crating & Packing, Inc., 756 F.2d
1475 (Fed. Cir. 1985) [1086]
The Federal Circuit clarified the circumstances under which a reissue
patent may “recapture” an invention from the public domain. Seattle
Box originally obtained a patent on a packaging structure for oil pipes.
The relevant claims stated that the “spacer blocks” separating each
layer of pipes from the layer above were to be higher than the diameter
of the pipes. Industrial Crating and Packing designed around this lim-
itation by making its own spacer blocks 1/16 of an inch shorter than
the diameter of the pipes. Seattle Box subsequently obtained a reissue
patent, which altered the height requirement to state that the spacer
blocks need only be “substantially equal” in height to the diameter of
the pipes. Applying the doctrine of the personal intervening right, the
court allowed Industrial to continue producing the spacer blocks that
did not fall under Seattle Box’s original patent.
The dissent characterized Industrial’s activities as bad-faith infringe-
ment and concluded that Industrial should not be entitled to equitable
relief.
Quantum Corp. v. Rodime, PLC, 65 F.3d 1577 (Fed. Cir. 1995)

[1094]
A patentee may not broaden the scope of a claim during reexamina-
tion. Rodime held a patent on a hard drive. As originally issued, the
relevant claim covered “[a hard drive] having at least 600 concentric
tracks per inch.” During reexamination, Rodime changed the claim to
read “at least approximately 600 [tracks per inch].” The court invalid-
ated the patent, finding the insertion of the word “approximately” to
have broadened the claim in violation of § 305. “The addition,” said the
court, “eliminates the precise lower limit of [the] range . . . [and] ex-
tends the scope of the range.”
J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553 (Fed. Cir. 1984)
[1106]
[Inequitable conduct] can be established by any of four
tests: (1) objective “but for”; (2) subjective “but for”; (3)
“but it may have been”; and (4) PTO rule 1.56(a), i.e.,
whether there is a substantial likelihood that a reason-
able examiner would have considered the omitted refer-
ence or false information important in deciding whether
to allow the application to issue as a patent. The PTO
standard is the appropriate starting point . . . . “Inequit-
able conduct” also requires proof of a threshold intent. . . .
Once the thresholds of materiality and intent are estab-
lished, the court must balacne them and determine . . .
whether the scales tilt to a conclusion that inequitable

conduct occurred.
Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120

F.3d 1253 (Fed. Cir. 1997) [1111]
The failure to disclose the pertinent claims in an existing patent may
amount to inequitable conduct. Critikon held several patents covering
the various features a safety catheter. During prosecution, Critikon
failed to disclose an existing patent (the McDonald patent), which dis-
closed a catheter with features similar to those claimed by Critikon.
Finding intent and materiality, the court held that Critikon’s failure to
mention the McDonald patent amounted to inequitable conduct.
“Critikon was intimately familiar with McDonald patent,” said the
court. “[T]he record indicates that Critikon’s counsel was repeatedly
confronted with the McDonald patent . . . which substantially over-
lapped the [patents held by Critikon].”
Kinsgdown Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d

867 (Fed. Cir. 1988) [1121]
Symbol Technologies, Inc. v. Lemelson Medical, 227 F.3d 1361 (Fed.

Cir. 2002) [1130]
Antitrust and Patent Misuse

Brulotte v. Thys Co., 379 U.S. 29 (1964) [1262]
A patentee may not charge royalties for the practice of an expired pat-
ent. Thys held several patents on an agricultural machine. Although
the patents had expired, Thys continued to charge farmers a royalty
for the use of the machine. The Court disallowed Thys’s licensing ar-
rangements, finding them to violate the policy underlying patent law.
“[The] rights [granted by a patent],” said the Court, “become public
property once the [patent] expires.”
The dissent argued that the expiration of the patent eliminated only
Thys’s right to exclude others from making similar machines, not from
charging fees for the use of the particular machines already in exist-
ence.
Walker Process Equipment, Inc. v. Food Machinery & Chemical

Corp., 382 U.S. 172 (1965) [1275]
Attempting to enforce a patent obtained by fraud may violate § 2 of the
Sherman Act and give rise to treble damages under § 4 of the Clayton
Act.
Lear, Inc. v. Adkins, 395 U.S. 653 (1969) [1284]

A licensee may not challenge the validity of patent if the terms of the
license permitted the licensee obtain access to patent-related informa-
tion that was not publicly available.
MedImmune, Inc. v. Genentech Inc., 127 S.Ct. 764 (2006) [1291]
Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220 (Fed. Cir. 1988)
[1299]
Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed.

Cir. 2009) [S111]
After finding Microsoft to have infringed a patent issued to Lucent, the
Federal Circuit discussed at length the method for calculating dam-
ages.

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CASE SUMMARIES ON PATENT LAW 1

Cir. 1986) [328]....................................................................................13

City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126

Winans v. Denmead, 56 U.S. 330 (1854) [849].......................................33

Antitrust and Patent Misuse..............................................................40

Patentable Subject Matter

O’Reilly v. Morse, 56 U.S. 62 (1854) [79]

The Telephone Cases, 126 U.S. 1 (1888) [92]

Lab Corp. of America v. Metabolite Labs, Inc., 126 S.Ct. 2921

Gottschalk v. Benson, 409 U.S. 63 (1972) [131]

Diamond v. Diehr, 450 U.S. 175 (1981) [141]

State Street Bank & Trust Co. v. Signature Financial Group,

selves to the technical definition of usefulness. Courts should not use

Brenner v. Manson, 383 U.S. 519 (1966) [222]

In re Brana, 51 F.3d 1560 (Fed. Cir. 1995) [230]

In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005) [240]

2 See, e.g., Fujikawa v. Wattanasin, 93 F.3d 1559 (Fed. Cir. 1996)

Disclosure and Enablement

In re Wands, 858 F.2d 731 (Fed. Cir. 1988) [275]

In re Strahilevitz, 668 F.2d 1229 (Fed. Cir. 1982) [286]

Federal Circuit found that existing research on the subsidiary tech-

LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336

LizardTech, Inc. v. Earth Resource Mapping, Inc., 433 F.3d 1373

Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565

3 424 F.3d 1324 (Fed. Cir. 2005)

of a car. The wheelchair featured (1) a front wheel that could be

Standard Oil Co. v. American Cyanamid Co., 585 F.Supp 1481

In re Seaborg, 328 F.2d 996 (C.C.P.A. 1964) [370]

Schering Corp. v. Geneva Pharmaceuticals, Inc., 339 F.3d 1373

In re Hafner, 410 F.2d 1403 (C.C.P.A. 1969) [381]

National Tractor Pullers Association v. Watkins, 250 U.S.P.Q.

Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928) [403]

In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) [405]

publication could consist of any material that was “sufficiently access-

Reeves Brothers v. United States Laminating Corp., 282

Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390

Campbell v. Spectrum Automation Co., 513 F.2d 932 (6th Cir.

Brown v. Barbacid, 276 F.3d 1327 (Fed. Cir. 2002) [441]

Peeler v. Miller, 535 F.2d 647 (C.C.P.A. 1976) [456]

suppressed. Miller (working for Monsanto) developed a new type of hy-

Dow Chemical Co. v. Astro-Valcour, Inc., 267 F.3d 1334 (Fed.

In re Moore, 444 F.2d 572 (Fed. Cir. 1987) [483]

Westinghouse Machine Co. v. General Electric Co., 207 F. 75 (2d

Egbert v. Lippmann, 104 U.S. 333 (1881) [522]

Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts

Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998) [536]

Abbott Laboratories v. Geneva Pharmaceuticals, Inc., 182 F.3d

City of Elizabeth v. American Nicholson Pavement Co., 97 U.S.

Lough v. Brunswick Corp., 86 F.3d 1113 (Fed. Cir. 1996) [562]

Baxter International v. COBE Laboratories, Inc., 88 F.3d 1054

W. L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540

chine by non-Budd individuals to be insufficient to establish public use.

In re Kathawala, 9 F.3d 942 (Fed. Cir. 1993) [603]

Graham v. John Deere Co., 383 U.S. 1 (1966) [631]

Graham applied for a patent on a plow whose blade was designed to

United States v. Adams, 383 U.S. 39 (1966) [653]

In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009) [S89]

evant claim covered “[a]n isolated nucleic acid molecule comprising a

Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367

In re Winslow, 365 F.2d 1017 (C.C.P.A. 1966) [724]

Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965) [731]

In re Bass, 474 F.2d 1276 (C.C.P.A. 1973) [734]

In re Foster, 343 F.2d 980 (C.C.P.A. 1965) [751]