Patents Supreme Court Cases

The power to issue patents arises from Article I, Section 8 of the Constitution, which authorizes Congress “to promote the progress of science and useful arts” by giving inventors exclusive rights to their discoveries for a limited time. Once a patent has been issued, its holder can prevent others from making, using, or selling the invention. The U.S. Patent & Trademark Office reviews patent applications and grants three types of patents: utility patents (by far the most common), design patents, and plant patents.

There are four main requirements for an invention to receive a patent:

  • Statutory subject matter: the invention falls within the scope of the Patent Act, which covers areas such as processes, machines, manufactured articles, and compositions of matter, but not abstract ideas or laws of nature
  • Novelty: the invention is new and cannot be found in the “prior art” in the field
  • Non-obviousness: the invention would not be obvious to the typical person in the field
  • Utility: the invention has a real, present use, rather than a speculative use or a possible future use

Patent owners often sue competitors and others for alleged infringement. Sometimes a device or process literally infringes every limitation of the claim for a patented invention, but infringement also may be found under the doctrine of equivalents when a device or process has only insignificant differences from the patented invention.

Gayler v. Wilder (1850)

Prior invention and use did not preclude a subsequent inventor from taking out a patent when a person had made and used an article similar to the patented invention but did not make their discovery public and did not test it to discover its usefulness, after which it was forgotten or abandoned.

Adams v. Burke (1873)

When the patentee, or the person having their rights, sells a machine or instrument whose sole value is in its use, they receive the consideration for its use and part with the right to restrict that use.

Coffin v. Ogden (1873)

The defense of a prior invention was established when the defendant proved that the instrument that he alleged was invented by him was complete and capable of working, it was known to at least five people and probably others, and it was put in use, tested, and successful.

City of Elizabeth v. American Nicholson Pavement Co. (1878)

The use of an invention by the inventor or people under their direction, if made in good faith solely to test its qualities, remedy its defects, and bring it to perfection, is not a public use that precludes a patent even if others thereby derive a knowledge of it.

Egbert v. Lippmann (1881)

To constitute the public use of an invention, it is not necessary that more than one of the patented articles should be publicly used. Also, whether the use is public or private does not necessarily depend on the number of persons to whom its use is known. Finally, if an inventor sells a machine of which their invention forms a part, and they allow it to be used without restriction of any kind, the use is public.

Telephone Cases (1888)

To procure a patent for a process, the inventor must describe their invention with sufficient clearness and precision to enable those skilled in the matter to understand what their process is, and they must point out some practicable way of putting it into operation, but they are not required to bring the art to the highest degree of perfection.

Westinghouse v. Boyden Power Brake Co. (1898)

Even if the patentee brings the defendant within the letter of their claims, infringement should not be found if the defendant has so far changed the principle of the device that the claims of the patent, literally construed, have ceased to represent their actual invention.

U.S. v. General Electric Co. (1926)

In licensing another person to make, use, and sell their invention, a patentee may impose the condition that sales by the licensee must be at prices fixed by the licensor.

Special Equipment Co. v. Coe (1945)

A subcombination patent may be used to prevent appropriation by others of a combination invention that the claimant is using when there is no purpose to enlarge the patent monopoly of either invention.

Funk Bros. Seed Co. v. Kalo Inoculant Co. (1948)

Patents cannot issue for the discovery of the phenomena of nature. If there is to be an invention from such a discovery, it must come from the application of the law of nature to a new and useful end.

Graver Tank & Mfg. Co. v. Linde Air Products Co. (1950)

In determining equivalents in a patent infringement case, consideration must be given to the purpose for which an ingredient is used in a patent, the qualities that it has when combined with other ingredients, the functions that it is intended to perform, and whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.

Great Atlantic Pacific & Tea Co. v. Supermarket Equipment Corp. (1950)

The mere combination of a number of old parts or elements that, in combination, perform or produce no new or different function or operation than that previously performed or produced by them is not a patentable invention.

Sears, Roebuck & Co. v. Stiffel Co. (1964)

When design and mechanical patents are invalid for want of invention, a state unfair competition law cannot be used to get an injunction against copying the product or an award of damages for such copying.

Graham v. John Deere Co. (1966)

The determination of non-obviousness is made after establishing the scope and content of prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art.

Brenner v. Manson (1966)

One may patent only that which is useful, and the requirement that a chemical process be useful is not satisfied by a showing that the compound yielded belongs to a class of compounds that scientists are screening for possible uses.

Gottschalk v. Benson (1972)

The discovery of a novel and useful mathematical formula may not be patented.

Kewanee Oil Co. v. Bicron Corp. (1974)

The federal patent policy of encouraging invention is not disturbed by the existence of another form of incentive to invention, such as trade secret protection, and the two systems are not in conflict in this respect.

Dann v. Johnston (1976)

The mere existence of differences between the prior art and an invention does not establish the invention’s non-obviousness.

Sakraida v. Ag Pro, Inc. (1976)

Producing a desired result in a cheaper and faster way does not qualify for a combination patent without producing a new or different function.

Parker v. Flook (1978)

The identification of a limited category of useful but conventional post-solution applications of a mathematical formula does not make a method eligible for patent protection.

Diamond v. Chakrabarty (1980)

A live, human-made micro-organism is patentable subject matter.

Diamond v. Diehr (1981)

A patent claim drawn to subject matter otherwise statutory does not become non-statutory simply because it uses a mathematical formula, computer program, or digital computer.

Bonito Boats, Inc. v. Thunder Craft Boats, Inc. (1989)

By offering patent-like protection for ideas deemed unprotected under the federal patent scheme, a state law conflicted with the strong federal policy favoring free competition in ideas that do not merit patent protection.

Lilly & Co. v. Medtronic, Inc. (1990)

The use of patented inventions reasonably related to the development and submission of information needed to obtain marketing approval of medical devices under the FDCA is exempt from infringement.

Markman v. Westview Instruments, Inc. (1996)

The construction of a patent, including terms of art within its claim, is exclusively within the province of the court.

Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co. (1997)

The doctrine of equivalents must be applied to individual elements of the claim, rather than the invention as a whole. The essential inquiry is whether the accused product or process contains elements that are identical or equivalent to each claimed element of the patented invention.

Pfaff v. Wells Electronics, Inc. (1998)

The on-sale bar to patents applies when two conditions are satisfied before the critical date: the product is the subject of a commercial offer for sale, and the invention is ready for patenting.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. (2002)

The patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence when the equivalent was unforeseeable at the time of the application, the rationale underlying the amendment bears no more than a tangential relation to the equivalent in question, or there is another reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question.

eBay, Inc. v. MercExchange, LLC (2006)

The traditional four-factor test for deciding whether to award permanent injunctive relief applies to patent disputes.

KSR Int’l Co. v. Teleflex, Inc. (2007)

In determining whether a combination patent is appropriate, or whether it fails for obviousness, a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

Quanta Computer, Inc. v. LG Electronics, Inc. (2008)

The patent exhaustion doctrine provides that a patented item’s initial authorized sale terminates all patent rights to that item. This doctrine applies to method patents.

Bilski v. Kappos (2010)

Although the machine-or-transformation test may be a useful and important clue or investigative tool, it is not the sole test for deciding whether an invention is a patent-eligible process under Section 101.

Global-Tech Appliances, Inc. v. SEB S.A. (2011)

Induced infringement of a patent requires knowledge that the induced acts constitute patent infringement. Deliberate indifference to a known risk that a patent exists does not satisfy the knowledge required.

Microsoft Corp. v. i4i Limited Partnership (2011)

An alleged infringer must prove a patent invalidity defense by clear and convincing evidence.

Bowman v. Monsanto Co. (2013)

Patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder’s permission.

Ass'n for Molecular Pathology v. Myriad Genetics, Inc. (2013)

A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but cDNA is patent eligible because it is not naturally occurring.

Nautilus, Inc. v. Biosig Instruments, Inc. (2014)

A patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

Alice Corp. v. CLS Bank Int’l (2014)

When claims are drawn to the abstract idea of intermediated settlement, merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.

Commil USA, LLC v. Cisco Systems, Inc. (2015)

A defendant’s belief regarding patent validity is not a defense to an induced infringement claim.

Halo Elecs., Inc. v. Pulse Elecs., Inc. (2016)

Enhanced damages under the Patent Act are not to be meted out in a typical infringement case but are instead designed as a “punitive” or “vindictive” sanction for egregious infringement behavior.

Samsung Electronics Co. v. Apple, Inc. (2016)

In the case of a multicomponent product, the relevant “article of manufacture” for arriving at a damages award in a patent infringement case need not be the end product sold to the consumer but may be only a component of that product.

Impression Products, Inc. v. Lexmark International, Inc. (2017)

A patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions that the patentee purports to impose.

Oil States Energy Services, LLC v. Greene’s Energy Group, LLC (2018)

It is not unconstitutional for the USPTO to engage in inter partes review, in which it is authorized to reconsider and cancel an issued patent claim in limited circumstances.

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. (2019)

A commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” for patent purposes.

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