Cases by Issue - Patents

Merck KGaA v. Integra Lifesciences I, Ltd.

Mon, 05 Jan 2009 17:47:25 +0000

Case Basics

Docket No.

03-1237

Petitioner

Merck KGaA

Petitioner Type

Petitioner

Respondent

Integra Lifesciences I, Ltd., et al.

Respondent Type

Respondent

Heard By

Rehnquist Court (1994-2005)

Decided By

Rehnquist Court (1994-2005)

Opinion

545 U.S. ___ (2005)

Granted

Friday, January 7, 2005

Argued

Wednesday, April 20, 2005

Decided

Monday, June 13, 2005

Advocates

E. Joshua Rosenkranz (argued the cause for Petitioner)

Daryl Joseffer (argued the cause for Petitioner)

Mauricio A. Flores (argued the cause for Respondents)

Facts of the Case

Integra Lifesciences sued Merck for supplying an Integra patented compound to other drug companies for use in preclinical research. In response, Merck claimed its actions were allowed under the federal law that said it was not an act of patent infringement to use or import a patented invention into the United States, if the invention was used only in ways related to the development and submission of information under a federal drug law (such as the law governing submission of data to the FDA). The district court ruled against Merck and awarded Integra damages. The Federal Circuit affirmed the judgment but ordered a modification of damages.

Question

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?

Conclusion

Decision: 9 votes for Merck KGaA, 0 vote(s) against
Legal provision: 35 U.S.C. 271

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.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

Mon, 05 Jan 2009 17:46:29 +0000

Case Basics

Docket No.

00-1543

Petitioner

Festo Corp.

Petitioner Type

Petitioner

Respondent

Shoketsu Kinzoku Kogyo Kabushiki Co.

Respondent Type

Respondent

Heard By

Rehnquist Court (1994-2005)

Decided By

Rehnquist Court (1994-2005)

Opinion

535 U.S. 722 (2002)

Argued

Tuesday, January 8, 2002

Decided

Tuesday, May 28, 2002

Advocates

Robert H. Bork (Argued the cause for the petitioner)

Arthur I. Neustadt (Argued the cause for the respondents)

Lawrence G. Wallace (Argued the cause for the United States, as amicus curiae, supporting vacatur and remand)

Facts of the Case

Festo Corporation owns two patents for an improved magnetic rodless cylinder, a piston-driven device that relies on magnets to move objects in a conveying system. When the patent examiner rejected the initial application for the first patent because of defects in description, the application was amended to add the new limitations that the device would contain a pair of one-way sealing rings and that its outer sleeve would be made of a magnetizable material. The second patent was also amended during a reexamination proceeding to add the sealing rings limitation. After Festo began selling its device, SMC entered the market with a similar device that uses one two-way sealing ring and a nonmagnetizable sleeve. Festo filed suit, claiming that SMC's device is so similar that it infringes Festo's patents under the doctrine of equivalents. Rejecting SMC's argument that the prosecution history, or the public record of the patent proceedings, estopped Festo from saying that SMC's device was similar, the District Court ruled in Festo's favor. Ultimately, the en banc Court of Appeals held that the prosecution history estoppel applied, ruling that estoppel arises from any amendment that narrows a claim to comply with the Patent Act. The Court of Appeals also held that, when estoppel applies, it bars any claim of equivalence for the element that was amended.

Question

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

Conclusion

Decision: 9 votes for Shoketsu Kinzoku Kogyo Kabushiki Co., 0 vote(s) against
Legal provision: 35 U.S.C. 112

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.

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

Mon, 05 Jan 2009 17:46:42 +0000

Case Basics

Docket No.

99-1996

Petitioner

J.E.M. Supply

Petitioner Type

Petitioner

Respondent

Pioneer Hi-Bred International

Respondent Type

Respondent

Heard By

Rehnquist Court (1994-2005)

Decided By

Rehnquist Court (1994-2005)

Opinion

534 U.S. 124 (2001)

Argued

Wednesday, October 3, 2001

Decided

Monday, December 10, 2001

Advocates

Edmund J. Sease (Argued the cause for the respondent)

Bruce E. Johnson (Argued the cause for the petitioners)

Lawrence G. Wallace (Department of Justice, on behalf of the United States, as amicus curiae, in support of the respondent)

Facts of the Case

Pioneer Hi-Bred International, Inc. holds 17 utility patents issued under 35 USC section 101 that cover the manufacture, use, sale, and offer for sale of its hybrid corn seed products. Pioneer sells its patented hybrid seeds under a limited label license that allows only the production of grain and/or forage. J. E. M. Ag Supply, Inc., doing business as Farm Advantage, Inc., bought patented seeds from Pioneer in bags bearing the license agreement and then resold the bags. Subsequently, Pioneer filed a patent infringement suit. In response, Farm Advantage filed a patent invalidity counterclaim, arguing that sexually reproducing plants, such as Pioneer's corn plants, are not patentable subject matter within section 101. Farm Advantage maintained that the Plant Patent Act of 1930 (PPA) and the Plant Variety Protection Act (PVPA) set forth the exclusive statutory means for protecting plant life. The District Court granted Pioneer summary judgment. The court held that section 101 clearly covers plant life and that in enacting the PPA and the PVPA, Congress neither expressly nor implicitly removed plants from section 101's subject matter. The Court of Appeals affirmed.

Question

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

Conclusion

Decision: 6 votes for Pioneer Hi-Bred International, 2 vote(s) against
Legal provision: 35 U.S.C. 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.

Pfaff v. Wells Electronics, Inc.

Mon, 05 Jan 2009 16:24:59 +0000

Case Basics

Docket No.

97-1130

Petitioner

Pfaff

Petitioner Type

Petitioner

Respondent

Wells Electronics, Inc.

Respondent Type

Respondent

Heard By

Rehnquist Court (1994-2005)

Decided By

Rehnquist Court (1994-2005)

Opinion

525 U.S. 55 (1998)

Argued

Tuesday, October 6, 1998

Decided

Tuesday, November 10, 1998

Advocates

C. Randall Bain (Argued the cause for the respondent)

Jeffrey P. Minear (On behalf of the United States, as amicus curiae, supporting the respondent)

Jerry R. Selinger (Argued the cause for the petitioner)

Facts of the Case

In 1980, Wayne K. Pfaff developed a new type of computer chip socket for Texas Instruments (TI). In early April 1981, TI confirmed they would order and use Pfaff's socket. No actual socket was made until July 1981. Pfaff applied for a patent in April 1982. A patent was not granted on Pfaff's socket until 1985. After the patent was issued, Pfaff sued Wells Electronics, who had developed a competing socket, for patent infringement. Pfaff claimed that Wells' socket infringed upon six of his patent's claims. The District Court held that Wells' socket violated three of Pfaff's patent claims. In reversing, the Court of Appeals held Pfaff had sold the socket to TI more than a year before he applied for a patent. Thus, Wells' socket did not infringe on Pfaff's under the Patent Act of 1952, which states that no one can patent an invention that has been on sale for more than one year before filing a patent application.

Question

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?

Conclusion

Decision: 9 votes for Wells Electronics, Inc., 0 vote(s) against
Legal provision: 35 U.S.C. 102

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.

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

Mon, 05 Jan 2009 16:15:58 +0000

Case Basics

Docket No.

95-728

Petitioner

Warner Jenkinson Co., Inc.

Petitioner Type

Petitioner

Respondent

Hilton Davis Chemical Co.

Respondent Type

Respondent

Heard By

Rehnquist Court (1994-2005)

Decided By

Rehnquist Court (1994-2005)

Opinion

520 U.S. 17 (1997)

Argued

Tuesday, October 15, 1996

Decided

Monday, March 3, 1997

Advocates

Richard G. Taranto (Argued the cause for the petitioner)

David E. Schmit (Argued the cause for the respondent)

Lawrence G. Wallace (On behalf of the United States, as amicus curiae)

Facts of the Case

Warner Jenkinson Co. and Hilton Davis Chemical Co. both manufacture dyes from which impurities must be removed. Davis's "'746 patent," which was issued in 1985, discloses an improved purification process involving the "ultrafiltration" of dye through a porous membrane at pH levels between 6.0 and 9.0. In 1986, Jenkinson developed its own ultrafiltration process, which operated at a pH level of 5.0. Davis sued for infringement of the '746 patent. Davis's suit relied solely on the "doctrine of equivalents," under which a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is an "equivalence" between the elements of the accused product or process and the claimed elements of the patented invention. Jenkinson argued that the Patent Act of 1952 had supplanted the doctrine. Ultimately, the District Court entered a permanent injunction against Jenkinson after a jury had found that Jenkinson had infringed upon the '746 patent. The en banc Court of Appeals held that the doctrine of equivalents continues to exist and that the jury had substantial evidence from which to conclude that petitioner's process was not substantially different from the process disclosed in the '746 patent.

Question

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?

Conclusion

Decision: 9 votes for Warner Jenkinson Co., Inc., 0 vote(s) against
Legal provision:

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.

Asgrow Seed Co. v. Winterboer, Dba Deebees

Mon, 05 Jan 2009 16:15:18 +0000

Case Basics

Docket No.

92-2038

Petitioner

Asgrow Seed Co.

Petitioner Type

Petitioner

Respondent

Winterboer et al., Dba Deebees

Respondent Type

Respondent

Heard By

Rehnquist Court (1994-2005)

Decided By

Rehnquist Court (1994-2005)

Opinion

513 U.S. 179 (1995)

Argued

Monday, November 7, 1994

Decided

Wednesday, January 18, 1995

Advocates

William H. Bode (on behalf of the Respondents)

Richard H. Seamon (on behalf of the United States, as amicus curiae)

Richard L. Stanley (on behalf of the Petitioner)

Facts of the Case

Asgrow Seed Company (Asgrow) held two Plant Variety Protection Act (PVPA) certificates protecting different varieties of soybean seed. These PVPA certificates act like patents in order to promote research on new varieties of plants and to protect the owners of seed varieties from unauthorized sales. However, there is an exemption for farmers who sell seed to other farmers whose primary occupation is growing crops for sale. In 1990, Winterboer planted and harvested 265 acres of land with two Asgrow soybean varieties. He then sold enough to plant 10,000 acres to other farmers for use as seed. Asgrow claimed that the PVPA prohibits anyone from selling for seed more than would be needed to replant his own fields - an amount greatly exceeded by Winterboer's sales. Winterboer argued that the exemptions in the statute protect sales of unlimited amounts of seed as long as both seller and buyer grow crops primarily for "other than reproductive purposes." The District Court ruled in favor of Asgrow, but the United States Court of Appeals for the Federal Circuit reversed and denied Asgrow's petition for rehearing.

Question

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?

Conclusion

Decision: 8 votes for Asgrow Seed Co., 1 vote(s) against
Legal provision: 7 U.S.C. 2543

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.

Eli Lilly & Co. v. Medtronic, Inc.

Mon, 05 Jan 2009 17:30:09 +0000

Case Basics

Docket No.

89-243

Petitioner

Eli Lilly & Co.

Petitioner Type

Petitioner

Respondent

Medtronic, Inc.

Respondent Type

Respondent

Heard By

Rehnquist Court (1988-1990)

Decided By

Rehnquist Court (1988-1990)

Opinion

496 U.S. 661 (1990)

Argued

Monday, February 26, 1990

Decided

Monday, June 18, 1990

Advocates

Timothy J. Malloy (on behalf of the Petitioner)

Arthur R. Miller (on behalf of the Respondent)

Facts of the Case

None

Question

None

Conclusion

Decision: 6 votes for Medtronic, Inc., 2 vote(s) against
Legal provision: 35 U.S.C. 271

None

General Motors Corp. v. Devex Corp.

Mon, 05 Jan 2009 17:32:48 +0000

Case Basics

Docket No.

81-1661

Petitioner

General Motors Corp.

Petitioner Type

Petitioner

Respondent

Devex Corp.

Respondent Type

Respondent

Heard By

Burger Court (1981-1986)

Decided By

Burger Court (1981-1986)

Opinion

461 U.S. 648 (1983)

Argued

Tuesday, December 7, 1982

Decided

Tuesday, May 24, 1983

Advocates

Sidney Bender (on behalf of the Respondents)

George E. Frost (on behalf of the Petitioner)

Facts of the Case

None

Question

None

Conclusion

Decision: 9 votes for Devex Corp., 0 vote(s) against
Legal provision: 35 U.S.C. 284

None

Dawson Chemical Co. v. Rohm & Haas Co.

Mon, 05 Jan 2009 17:11:08 +0000

Case Basics

Docket No.

79-669

Petitioner

Dawson Chemical Co.

Petitioner Type

Petitioner

Respondent

Rohm & Haas Co.

Respondent Type

Respondent

Heard By

Burger Court (1975-1981)

Decided By

Burger Court (1975-1981)

Opinion

448 U.S. 176 (1980)

Argued

Monday, April 21, 1980

Decided

Friday, June 27, 1980

Advocates

Ned L. Conley (on behalf of the Petitioners)

Eugene L. Bernard (as amici curiae)

Rudolf E. Hutz (on behalf of the Respondent)

Facts of the Case

None

Question

None

Conclusion

Decision: 5 votes for Rohm & Haas Co., 4 vote(s) against
Legal provision: 35 U.S.C. 271

None

Diamond v. Chakrabarty

Mon, 05 Jan 2009 17:10:52 +0000

Case Basics

Docket No.

79-136

Petitioner

Diamond

Petitioner Type

Petitioner

Respondent

Chakrabarty

Respondent Type

Respondent

Heard By

Burger Court (1975-1981)

Decided By

Burger Court (1975-1981)

Opinion

447 U.S. 303 (1980)

Argued

Monday, March 17, 1980

Decided

Monday, June 16, 1980

Advocates

Edward F. McKie, Jr. (Argued the cause for the respondent)

Lawrence G. Wallace (Argued the cause for the petitioner)

Facts of the Case

After genetically engineering a bacterium capable of breaking down crude oil, Ananda Chakrabarty sought to patent his creation under Title 35 U.S.C. Section 101, providing patents for people who invent or discover "any" new and useful "manufacture" or "composition of matter." On appeal from an application rejection by a patent examiner the Patent Office Board of Appeals affirmed, stating that living things are not patentable under Section 101. When this decision was reversed by the Court of Customs and Patent Appeals, Diamond appealed and the Supreme Court granted certiorari.

Question

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

Conclusion

Decision: 5 votes for Chakrabarty, 4 vote(s) against
Legal provision: 35 U.S.C. 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.

Sakraida v. Ag Pro, Inc.

Mon, 05 Jan 2009 17:12:10 +0000

Case Basics

Docket No.

75-110

Petitioner

Sakraida

Petitioner Type

Petitioner

Respondent

Ag Pro, Inc.

Respondent Type

Respondent

Heard By

Burger Court (1975-1981)

Decided By

Burger Court (1975-1981)

Opinion

425 U.S. 273 (1976)

Argued

Wednesday, March 3, 1976

Decided

Friday, April 2, 1976

Facts of the Case

None

Question

None

Conclusion

Decision: 9 votes for Sakraida, 0 vote(s) against
Legal provision: 35 U.S.C. 103

None

Kewanee Oil Co. v. Bicron Corp.

Mon, 05 Jan 2009 16:34:28 +0000

Case Basics

Docket No.

73-187

Petitioner

Kewanee Oil Co.

Petitioner Type

Petitioner

Respondent

Bicron Corp.

Respondent Type

Respondent

Heard By

Burger Court (1972-1975)

Decided By

Burger Court (1972-1975)

Opinion

416 U.S. 470 (1974)

Argued

Wednesday, January 9, 1974

Decided

Monday, May 13, 1974

Facts of the Case

None

Question

None

Conclusion

Decision: 6 votes for Kewanee Oil Co., 2 vote(s) against
Legal provision: 35 U.S.C. 101

None

Deepsouth Packing Co. v. Laitram Corp.

Mon, 05 Jan 2009 16:30:49 +0000

Case Basics

Docket No.

71-315

Petitioner

Deepsouth Packing Co.

Petitioner Type

Petitioner

Respondent

Laitram Corp.

Respondent Type

Respondent

Heard By

Burger Court (1972-1975)

Decided By

Burger Court (1972-1975)

Opinion

406 U.S. 518 (1972)

Argued

Tuesday, April 11, 1972

Decided

Tuesday, May 30, 1972

Facts of the Case

None

Question

None

Conclusion

Decision: 5 votes for Deepsouth Packing Co., 4 vote(s) against
Legal provision: 35 U.S.C. 271

None

Brunette Machine Wks. v. Kockum Industries

Mon, 05 Jan 2009 16:30:54 +0000

Case Basics

Docket No.

70-314

Petitioner

Brunette Machine Wks.

Petitioner Type

Petitioner

Respondent

Kockum Industries

Respondent Type

Respondent

Heard By

Burger Court (1972-1975)

Decided By

Burger Court (1972-1975)

Opinion

406 U.S. 706 (1972)

Argued

Thursday, March 23, 1972

Decided

Wednesday, June 7, 1972

Facts of the Case

None

Question

None

Conclusion

Decision: 9 votes for Kockum Industries, 0 vote(s) against
Legal provision: 28 U.S.C. 1391

None

Blonder-Tongue v. University Foundation

Mon, 05 Jan 2009 17:19:02 +0000

Case Basics

Docket No.

338

Petitioner

Blonder-Tongue

Petitioner Type

Petitioner

Respondent

University Foundation

Respondent Type

Respondent

Heard By

Burger Court (1970-1971)

Decided By

Burger Court (1970-1971)

Opinion

402 U.S. 313 (1971)

Argued

Thursday, January 14, 1971

Decided

Monday, May 3, 1971

Facts of the Case

None

Question

None

Conclusion

Decision: 9 votes for Blonder-Tongue, 0 vote(s) against
Legal provision: Estoppel

None

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

Mon, 05 Jan 2009 17:38:53 +0000

Case Basics

Docket No.

445

Petitioner

Standard Industries, Inc.

Petitioner Type

Petitioner

Respondent

Tigrett Industries, Inc.

Respondent Type

Respondent

Heard By

Burger Court (1969-1970)

Decided By

Burger Court (1969-1970)

Opinion

397 U.S. 586 (1970)

Argued

Monday, March 2, 1970

Decided

Monday, April 20, 1970

Advocates

Lawrence G. Wallace (argued for the United States, as amicus curiae, by special leave of Court)

Facts of the Case

None

Question

None

Conclusion

Decision: 4 votes for Tigrett Industries, Inc., 4 vote(s) against
Legal provision:

None

Anderson's-Black Rock v. Pavement Co.

Mon, 05 Jan 2009 17:39:14 +0000

Case Basics

Docket No.

Petitioner

Anderson's-Black Rock

Petitioner Type

Petitioner

Respondent

Pavement Co.

Respondent Type

Respondent

Heard By

Burger Court (1969-1970)

Decided By

Burger Court (1969-1970)

Opinion

396 U.S. 57 (1969)

Argued

Monday, November 10, 1969

Decided

Monday, December 8, 1969

Facts of the Case

None

Question

None

Conclusion

Decision: 7 votes for Anderson's-Black Rock, 0 vote(s) against
Legal provision: 35 U.S.C. 103

None

Zenith Corp. v. Hazeltine

Mon, 05 Jan 2009 17:41:01 +0000

Case Basics

Docket No.

Petitioner

Zenith Corp.

Petitioner Type

Petitioner

Respondent

Hazeltine

Respondent Type

Respondent

Heard By

Warren Court (1967-1969)

Decided By

Warren Court (1967-1969)

Opinion

395 U.S. 100 (1969)

Argued

Wednesday, January 22, 1969

Decided

Monday, May 19, 1969

Facts of the Case

None

Question

None

Conclusion

Decision: 7 votes for Zenith Corp., 1 vote(s) against
Legal provision: Sherman

None

Lear, Inc. v. Adkins

Mon, 05 Jan 2009 17:40:44 +0000

Case Basics

Docket No.

Petitioner

Lear, Inc.

Respondent

Adkins

Heard By

Warren Court (1967-1969)

Decided By

Warren Court (1967-1969)

Opinion

395 U.S. 653 (1969)

Argued

November 20-21, 1968

Decided

Monday, June 16, 1969

Advocates

Lawrence G. Wallace (argued the cause for the United States as amicus curiae urging reversal)

Facts of the Case

None

Question

None

Conclusion

Decision: 5 votes for Lear, Inc., 3 vote(s) against
Legal provision: Estoppel

None

Brenner v. Manson

Mon, 05 Jan 2009 17:42:44 +0000

Case Basics

Docket No.

Petitioner

Brenner

Petitioner Type

Petitioner

Respondent

Manson

Respondent Type

Respondent

Heard By

Warren Court (1965-1967)

Decided By

Warren Court (1965-1967)

Opinion

383 U.S. 519 (1966)

Argued

Wednesday, November 17, 1965

Decided

Monday, March 21, 1966

Facts of the Case

None

Question

None

Conclusion

Decision: 7 votes for Brenner, 2 vote(s) against
Legal provision: 35 U.S.C. 101

None

Hazeltine Research, Inc. v. Brenner

Mon, 05 Jan 2009 17:42:52 +0000

Case Basics

Docket No.

Petitioner

Hazeltine Research, Inc.

Petitioner Type

Petitioner

Respondent

Brenner

Respondent Type

Respondent

Heard By

Warren Court (1965-1967)

Decided By

Warren Court (1965-1967)

Opinion

382 U.S. 252 (1965)

Argued

Wednesday, November 17, 1965

Decided

Wednesday, December 8, 1965

Facts of the Case

None

Question

None

Conclusion

Decision: 9 votes for Brenner, 0 vote(s) against
Legal provision: 35 U.S.C. 103

None

United States v. Adams

Mon, 05 Jan 2009 17:44:01 +0000

Case Basics

Docket No.

Petitioner

United States

Petitioner Type

Petitioner

Respondent

Adams

Respondent Type

Respondent

Heard By

Warren Court (1965-1967)

Decided By

Warren Court (1965-1967)

Opinion

383 U.S. 39 (1966)

Argued

Thursday, October 14, 1965

Decided

Monday, February 21, 1966

Facts of the Case

None

Question

None

Conclusion

Decision: 7 votes for Adams, 1 vote(s) against
Legal provision:

None

Graham v. John Deere Co.

Mon, 05 Jan 2009 17:42:41 +0000

Case Basics

Docket No.

Petitioner

Graham

Respondent

John Deere Co.

Consolidation

No. 37

No. 43

Heard By

Warren Court (1965-1967)

Decided By

Warren Court (1965-1967)

Opinion

383 U.S. 1 (1966)

Argued

Thursday, October 14, 1965

Decided

Monday, February 21, 1966

Advocates

S. Tom Morris (Argued the cause for respondents in No. 11)

Gordon D. Schmidt (Argued the cause for respondent in Nos. 37 and 43)

Orville O. Gold (Argued the cause for petitioners in No. 11)

Dennis G. Lyons (Argued the cause for petitioners in Nos. 37 and 43)

Facts of the Case

Graham v. John Deere Co. was a suit for the infringement of a patent that consisted of a combination of old mechanical elements for a device designed to absorb shock from plow shanks in rocky soil in order to prevent damage to the plow. In 1955, the Fifth Circuit held the patent valid, ruling that a combination is patentable when it produces an "old result in a cheaper and otherwise more advantageous way." Subsequently, the Eighth Circuit held that, since there was no new result in the combination, the patent was invalid. The parties in Calmar, Inc. v. Cook Chemical Co. (No. 37) and Colgate-Palmolive Co. v. Cook Chemical Co. (No. 43) sought a declaration of invalidity and noninfringement of a patent on finger-operated sprayers with a "hold-down" cap issued to Cook Chemical. The District Court and the Court of Appeals sustained the patent.

Question

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?

Conclusion

Decision: 7 votes for John Deere Co., 0 vote(s) against
Legal provision: 35 U.S.C. 103

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.

Brulotte v. Thys Co.

Mon, 05 Jan 2009 17:34:31 +0000

Case Basics

Docket No.

Petitioner

Brulotte

Petitioner Type

Petitioner

Respondent

Thys Co.

Respondent Type

Respondent

Heard By

Warren Court (1962-1965)

Decided By

Warren Court (1962-1965)

Opinion

379 U.S. 29 (1964)

Argued

Tuesday, October 20, 1964

Decided

Monday, November 16, 1964

Facts of the Case

None

Question

None

Conclusion

Decision: 8 votes for Brulotte, 1 vote(s) against
Legal provision: 35 U.S.C. 154

None

Wilbur-Ellis Co. v. Kuther

Mon, 05 Jan 2009 17:37:35 +0000

Case Basics

Docket No.

109

Petitioner

Wilbur-Ellis Co.

Petitioner Type

Petitioner

Respondent

Kuther

Respondent Type

Respondent

Heard By

Warren Court (1962-1965)

Decided By

Warren Court (1962-1965)

Opinion

377 U.S. 422 (1964)

Argued

Thursday, February 20, 1964

Decided

Monday, June 8, 1964

Facts of the Case

None

Question

None

Conclusion

Decision: 8 votes for Wilbur-Ellis Co., 1 vote(s) against
Legal provision:

None

Aro Mfg. Co. v. Convertible Top Co.

Mon, 05 Jan 2009 17:37:23 +0000

Case Basics

Docket No.

Petitioner

Aro Mfg. Co.

Petitioner Type

Petitioner

Respondent

Convertible Top Co.

Respondent Type

Respondent

Heard By

Warren Court (1962-1965)

Decided By

Warren Court (1962-1965)

Opinion

377 U.S. 476 (1964)

Argued

Monday, February 17, 1964

Decided

Monday, June 8, 1964

Facts of the Case

None

Question

None

Conclusion

Decision: 5 votes for Aro Mfg. Co., 4 vote(s) against
Legal provision: 35 U.S.C. 271

None

Sears, Roebuck & Co. v. Stiffel Co.

Mon, 05 Jan 2009 17:37:21 +0000

Case Basics

Docket No.

108

Petitioner

Sears, Roebuck & Co.

Petitioner Type

Petitioner

Respondent

Stiffel Co.

Respondent Type

Respondent

Heard By

Warren Court (1962-1965)

Decided By

Warren Court (1962-1965)

Opinion

376 U.S. 225 (1964)

Argued

Thursday, January 16, 1964

Decided

Monday, March 9, 1964

Facts of the Case

None

Question

None

Conclusion

Decision: 9 votes for Sears, Roebuck & Co., 0 vote(s) against
Legal provision: Article 6, Section 2: Supremacy Clause

None

Compco Corp. v. Day-Brite Lighting

Mon, 05 Jan 2009 17:37:30 +0000

Case Basics

Docket No.

106

Petitioner

Compco Corp.

Petitioner Type

Petitioner

Respondent

Day-Brite Lighting

Respondent Type

Respondent

Heard By

Warren Court (1962-1965)

Decided By

Warren Court (1962-1965)

Opinion

376 U.S. 234 (1964)

Argued

Thursday, January 16, 1964

Decided

Monday, March 9, 1964

Facts of the Case

None

Question

None

Conclusion

Decision: 9 votes for Compco Corp., 0 vote(s) against
Legal provision: Article 6, Section 2: Supremacy Clause

None

Aro Mfg. Co. v. Convertible Top Co.

Mon, 05 Jan 2009 17:38:02 +0000

Case Basics

Docket No.

Petitioner

Aro Mfg. Co.

Respondent

Convertible Top Co.

Heard By

Warren Court (1958-1962)

Decided By

Warren Court (1958-1962)

Opinion

365 U.S. 336 (1961)

Argued

Thursday, October 13, 1960, Monday, October 17, 1960

Decided

Monday, February 27, 1961

Advocates

David Wolf (for the petitioners)

Elliott I. Pollock (for the respondent)

Ralph S. Spritzer (argued the cause for the United States, as amicus curiae, urging reversal)

Facts of the Case

None

Question

None

Conclusion

Decision: 6 votes for Aro Mfg. Co., 3 vote(s) against
Legal provision: 35 U.S.C. 271

None