The Oyez Project: Economic Activity Issues - Patents Decisions

Anderson's-Black Rock v. Pavement Co.

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Aro Mfg. Co. v. Convertible Top Co.

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Aro Mfg. Co. v. Convertible Top Co.

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Asgrow Seed Co. v. Winterboer, Dba Deebees

Is the quantity of protected seed that a farmer can sell under the exemptions in the Plant Variety Protection Act limited to the amount of seed the seller would need to replant his own fields?

Yes. In an 8-1 decision authored by Justice Antonin Scalia, the Court held that a farmer may sell for reproductive purposes only such seed as he has saved for the purpose of replanting his own fields. While the statute allows farmers to save seed to replant and then sell that saved seed to other farmers for planting, the statute prohibits growing protected seed as a "step in marketing" it as seed for planting. The Court held that because Winterboer's planting and harvesting were conducted solely to market (that is, to sell) Asgrow's protected seed varieties, he forfeited eligibility for the PVPA exemption and infringed on Asgrow's protective certificates.

Blonder-Tongue v. University Foundation

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Brenner v. Manson

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Brulotte v. Thys Co.

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Brunette Machine Wks. v. Kockum Industries

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Compco Corp. v. Day-Brite Lighting

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Dawson Chemical Co. v. Rohm & Haas Co.

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Deepsouth Packing Co. v. Laitram Corp.

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Diamond v. Chakrabarty

Is the creation of a live, human-made organism patentable under Title 35 U.S.C. Section 101?

Yes. In a 5-to-4 decision, the Court explained that while natural laws, physical phenomena, abstract ideas, or newly discovered minerals are not patentable, a live artificially-engineered microorganism is. The creation of a bacterium that is not found anywhere in nature, constitutes a patentable "manufacture" or "composition of matter" under Section 101. Moreover, the bacterium's man-made ability to break down crude oil makes it very useful.

Eli Lilly & Co. v. Medtronic, Inc.

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Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

Does a patentee, by narrowing a claim to obtain a patent, surrender all equivalents to the amended claim element?

No. In a unanimous opinion delivered by Justice Anthony M. Kennedy, the Court held that prosecution history estoppel may apply to any claim amendment made to satisfy the Patent Act's requirements, not just to amendments made to avoid the prior art, but that estoppel need not bar suit against every equivalent to the amended claim element. Noting that by amending an application the inventor is deemed to concede that the patent does not extend as far as the original claim, the Court reasoned that the patentee should bear the burden of showing that the amendment does not surrender the equivalent in question. Justice Kennedy wrote that, in cases where an equivalent was unforeseeable at the time of the application, the patentee could rebut the presumption that prosecution history estoppel barred a finding of equivalence by showing that at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent.

General Motors Corp. v. Devex Corp.

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Graham v. John Deere Co.

Did the Patent Act of 1952 codify the judicial test of obviousness, adding it to the statutory requirements of novelty and utility for the patentability of an invention? Did the Act change the general level required for the patentability of an invention?

Yes and no. In an opinion delivered by Justice Tom C. Clark, the Court held that the Patent Act of 1952 did not lower the standards required for the patentability of an invention by adding an inquiry into obviousness to the statutory requirements of novelty and utility. The Court found that section 103 of the 1952 Patent Act Congress added the statutory nonobvious subject matter requirement, the determination of which 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. The Court concluded that the patents do not meet the test of the "nonobvious" nature of the "subject matter sought to be patented" to a person having ordinary skill in the pertinent art and were therefore invalid. This affirmed the decision in Graham v. John Deere Co. and reversed the other two.

Hazeltine Research, Inc. v. Brenner

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J.E.M. Supply v. Pioneer Hi-Bred International

May utility patents be issued for plants under 35 USC section 101?

Yes. In a 6-2 opinion delivered by Justice Clarence Thomas, the Court held that utility patents may be issued for plants. The Court reasoned that the PPA and the PVPA were not the exclusive means of obtaining a federal statutory right to exclude others from reproducing, selling, or using plants or plant varieties, as nothing in the controlling PPA and PVPA's texts indicated that the PPA's protection for asexually-reproduced plants was intended to be exclusive. "Denying patent protection under section 101 simply because such coverage was thought technologically infeasible in 1930, however, would be inconsistent with the forward-looking perspective of the utility patent statute," wrote Justice Thomas. Joined by Justice John Paul Stevens, Justice Stephen G. Breyer dissented. Justice Sandra Day O'Connor took no part in the consideration or decision of the case.

Kewanee Oil Co. v. Bicron Corp.

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Lear, Inc. v. Adkins

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Merck KGaA v. Integra Lifesciences I, Ltd.

Did federal law allow the use of patented inventions in preclinical research, the results of which were not ultimately included in a submission to the FDA?

Yes. Justice Antonin Scalia delivered the Court's unanimous opinion that federal law allowed the use of patented compounds in preclinical studies, as long as there was a reasonable basis to believe the compound could be the subject of an FDA submission. The Court reasoned that federal law provided "a wide berth for the use of patented drugs in activities related to the federal regulatiory process" and that "this necessarily included preclinical studies." Because federal law required only a "reasonable relation" to FDA submission, information gathered on the patented invention (a compound in this case) did not necessarily need to be submitted to the FDA to be exempt from patent protection.

Pfaff v. Wells Electronics, Inc.

Does the confirmation of a commercial sale mark the beginning of the one year period inventors have to file for a patent, despite the fact the invention has not been produced?

Yes. In a unanimous decision, announced by Justice John Paul Stevens, the Court ruled federal patent law does not permit patents to be granted if an invention has been on sale for more than one year in this country before the patent application is filed. Moreover, a patent is on sale when a commercial sale offer has been made and when the inventor has made the invention, prepared drawings, or described the invention enough to be produced.

Sakraida v. Ag Pro, Inc.

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Sears, Roebuck & Co. v. Stiffel Co.

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Standard Industries, Inc. v. Tigrett Industries, Inc.

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United States v. Adams

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Warner Jenkinson Co., Inc. v. Hilton Davis Chemical Co.

Is the "doctrine of equivalents" a legitimate test for determining how similar a new invention must be to an existing patent to be deemed an illegal infringement?

Yes. In a decision authored by Justice Clarence Thomas, the Court ruled that it adheres to the "doctrine of equivalents," which is not superseded by the Patent Act of 1952. However, the Court held that the Court of Appeals had not considered all of the requirements of the doctrine of equivalents as described by the Court in this case on which the case was reversed and remanded.

Wilbur-Ellis Co. v. Kuther

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Zenith Corp. v. Hazeltine

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