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Patents: Case Law Summary

    This is a representative list of patent law cases. Refer to Other Cyberlaw Resources for sites that provide additional coverage. While the practice of patent law is indeed a specialty, the interested reader can attain a sufficient understanding of the doctrine necessary to meet most business objectives. You need not become an expert in order to make more informed business decisions. Better business decisions is the goal of all our tutorials and it is well within reach in even the most complex of intellectual property topics, patents.

    Requirements

    Case: City of Elizabeth v. Pavement Company (USSC 1877)
    Summary: If an invention is used under the surveillance of the inventor, for the purposes of testing the machine, it is experimental use and not public use.  [full text]

    Case: The Incandescent Lamp Patent (USSC 1895)
    Summary: If the description be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void.  [full text]

    Case: Parke-Davis v. H.K. Mulford (S.D.N.Y. 1911)
    Summary: Patents on purified naturally occurring substances are valid.  []

    Case: Rosaire v. National Lead Co.(5th Cir. 1955) 
    Summary: With regard to public use, no affirmative act is required to bring the work to public attention where it is done in the open and public knowledge need not be shown.  [full text]

    Case: Graham v. John Deere Co. (USSC 1966)
    Summary: The test for obviousness is whether the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.  [full text]

    Case: Brenner v. Manson (USSC 1966)
    Summary: A patent is not a hunting license. Process (e.g. chemical) claims must be reduced to a useful product before the utility requirement is met.  [full text]

    Case: Diamond v. Chakrabarty (USSC 1980)
    Summary: Patents on man made microorganisms are valid. [full text]

    Case: Diamond v. Diehr (USSC 1981)
    Summary: Processes embedded within software that produce a useful result are patentable. [full text]

    Case: In re Hall (Fed. Cir. 1986)
    Summary: A “printed publication” is one to which the public has access. [ ]

    Case: In re Vaeck (Fed. Cir. 1991)
    Summary:A basic inquiry into non-obviousness is whether a inventor who is aware of the prior art would think to create the claimed invention and have a reasonable likelihood of success in doing so. [ ]

    Case: The Gentry Gallery v. The Berkline Corp. (Fed. Cir. 1998)
    Summary: A patent's claims can be no broader than the supporting disclosure. [full text]

    Case: In re Dembiczak (Fed. Cir. 1999)
    Summary: There must be some motivation in the prior art that would suggest a combination of references. [full text]

    Case: In re Fisher (Fed. Cir. 2005)
    Summary: The underlying function of a gene must be identified before the utility requirement is met. [full text PDF ]

    Infringement

    Case: Larami Corp. v. Amron (E.D. Pa. 1993) 
    Summary: There is no literal infringement if one element of the claim is missing and no infringement by equivalents unless the defendant's invention includes every limitation or element of the patended claim. [ ]

    Case: C.R.Bard v. Advanced Cardiovascular Systems (Fed. Cir. 1990) 
    Summary: If there is sufficient evidence of non-infringing uses than summary judgment is not appropriate in contributory infringement action. [full text]

    Case: Warner-Jenkinson Co. v. Hilton Davis Chemical Co. (USSC 1997) 
    Summary: The doctrine of equivalents does not rest solely on a linguistic framework but rather the essential inquiry is whether the accused product contains elements identical or equivalent to each claimed element of the patented invention. [full text]

    Case: Festo Corp. v. Shoketsu (USSC 2002) 
    Summary: The amendment of a patent application by the inventor concedes that the patent does not extend as far as the original claim, therefore the holder bears the burden of showing that the amendment does not surrender the equivalent in question. [full text]

    Case: Johnson & Johnston v. R.E. Service (Fed. Cir. 2002) 
    Summary: Any subject matter that is disclosed but not claimed enters into public domain. [full text]

    Case: Phillips v. AWH Corporation (Fed. Cir. 2005)
    Summary:  The patent's specification and claims should be reviewed for meaning/context before looking to dictionaries. [full text]

    Case: Eolas Technologies v. Microsoft (Fed. Cir. 2005)
    Summary:  Software made in the U.S. and exported abroad is a "component of a patented invention." [full text PDF]

    Defenses

    Case: Whittemore v. Cutter (C.C.D. Mass. 1813)  
    Summary:  Infringement does not lie where a machine is constructed merely for philosophical experiments, or for the purpose of ascertaining the sufficiency of the machine to produce its described effects. []

    Case: Motion Picture Patents Company v. Universal Film Manufacturing Company (USSC 1917)  
    Summary: A patent holder cannot extend the patent monopoly by mandating the use of non-patented supplies with the patent. [full text]

    Case: In Re Roche Products v. Bolar Pharmaceuticals (Fed. Cir.1984) 
    Summary: The experimental use defense is not warranted where the ultimate objective is commercial gain. []

    Case: Kingsdown Medical Consultants v. Hollister (Fed. Cir. 1988) 
    Summary: Gross negligence, in and of itself, is not enough for a finding "intent to deceive" during the patent prosecution process. []

    Case: Madley v. Duke University (Fed. Cir. 2002) 
    Summary: Any furtherance of an institution's legitimate business, though not commercial in nature, may preclude the experimental use defense. []


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