Greg R. Vetter

Patent Law, Fall 2017

Course Objectives and Learning Outcomes

This course covers the substantive U.S. law of patents including eligible subject matter, utility, novelty and nonobviousness requirements, requirements of the patent specification, scope of claims, and modern infringement law.

Generally Applicable Syllabus Information

Please read carefully my Generally Applicable Syllabus Information. This document sets forth course policy for attendance, preparation and participation, use of computers, examination and grading, and other items. A complete understanding of this document is necessary to take full meaning from the Class Schedule and Other Information set forth immediately below.

Class Schedule and Other Information

Name: Patent Law
Course # / Section #: 5332 / 19207
Place: 213 BLB
Time:

Monday & Wednesday, 5:30 p.m. to 7:00 p.m. (2 class sessions per week, 3 credit hours; 90 minutes per class session)
(3 credit hours is 2,100 minutes of class time at 50 minutes per credit hour across 14 semester weeks)
Class will meet 24 times for 2,160 minutes. For the first three weeks of the semester the class will only meet on Wednesday evenings.
UHLC Listing: http://www.law.uh.edu/schedule/class_information.asp?cid=14956
Professor: Greg R. Vetter; gvetter@uh.edu; cell: 713-213-0360; http://www.law.uh.edu/faculty/gvetter
Office Hours:
Mon. and Wed.: 4:30 p.m. to 5:30 p.m. while classes are in session; or by in-person or phone/video appointment.
 
Required Text:

Craig Allen Nard, The Law of Patents (4th ed. 2016) (publisher link)
Companion Web Site for Casebook: http://law.case.edu/lawofpatents
Supplement?: There is no requirement to purchase a statutory supplement.

Certain documents may be assigned from time to time from sources other than the casebook. These documents will be provided via links in the class assignment table below or in a separate page of class links. Paper copies of these documents will typically not be provided in class, so students should plan to print them or review them electronically.
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Other Resources:

This commercially available treatise is excellent and incorporates the changes in the patent law from the AIA:

Janice M. Mueller, Patent Law (5th ed. 2016) (publisher link)
Prerequisites: None.
Grading: The course grade will be based on an open-materials final exam given at the time and date as scheduled by the Law Center.
My assessment of your in-class participation performance will not be a component of your grade.
Brief Description of Coverage: This class will meet in twice each week. The coverage goal is approximately thirty to forty pages per session. Assignments will be detailed in the table below as the semester progresses.
 
Absences Limit: Assuming two class meetings per week, five or less absences constitutes attendance meeting the eighty percent requirement. More than five absences means that the eighty percent requirement is not met.
Attendance will be taken via a roll sheet passed out during each class session.
"Pick your seat" seating chart date: The second class session:
- Wednesday, August 30, 2017
Remote Presence: Students will have five times during the semester where they can attend class remotely via the Zoom internet video conferencing software. I will mark you as "Remote" on the roll sheet for these days. Remote days do not count as an absence.
To do this, there are several requirements: (i) your computer must have a working video camera and quality audio capability, joining by audio-only will be treated as an absence (you may need an external mic or headset for sufficient audio quality); (ii) you must identify yourself with your class roll name in the Zoom videoconferencing software; (iii) you must present your face and upper body area professionally in the video stream; (iv) you must be able to fulfill your responsibilities if called on to discuss a case or course materials; and (v) you must manage the mute "button" when remote to keep a professional demeanor.
Lawyers increasingly work through internet video conferencing. No student is required to use this capability, but one reason to offer it is that it affords a chance to experience it before using it in a real job setting. The other reason I offer this is that it reduces absence-taking for reasons related to illness, life events, or travel difficulty in Houston.
Finally, when remote, hearing students speak in the class room may not be optimal.
Remote Presence Zoom Link: https://uhlc.zoom.us/j/165201415
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Final Exam Date/Time: Dec. 4, 2017, 6 p.m. to 9 p.m.
Final Exam Information: click here for the Final Exam page
First day/week's assignment: Read this course web page and the assignments detailed in the table below for the first day/week of class.
 
Recording of Class Sessions I will tape the class sessions using a recorder and post links to the tracks on the class web site for the sole and limited educational purpose of allowing students to stream the recorded sessions to review or to enable students who missed a class to hear the class presentation. Any recordings created will be deleted and destroyed shortly after the final exam for the class. Since I call on students, there is a chance that your contributions to class discussion, whether voluntary or while on call, may be included in the recording. Your continued registration in this class indicates your acquiescence to any such incidental recording for the purposes described above unless, if you have concerns about this, you come speak with me as soon as possible but in no event later than the first day of the second week of class.
Mediasite video recordings of class

http://uh.mediasite.com/mediasite/Catalog/catalogs/law-patentlaw-vetter (requires cougarnet login)
Guest Speaker Wednesday, Oct. 4; see details below.
Class Evaluation Day { forthcoming }
Cancellation Day(s)

Monday, August 21, 2017
Monday, August 28, 2017
Makeup(s) for Cancelled Day(s):

None needed. All course time provided during the 24 class sessions.
Last Class Session:

Monday, November 20, 2017

Contact Information and Office Hours

These are also posted on my home page at:

www.law.uh.edu/faculty/gvetter/

Course Materials Links by Category

The links below are for general reference and may be used for some class assignments.

Patent Law

Course Coverage Table

The table linked below provides the detailed assignments for this course. It also may provide links to materials for each class and other items related to the course. In order to allow flexibility in the class, assignments beyond those posted for the next week are subject to change; therefore, students who may wish to read ahead are urged to contact the professor before doing so. The rate of progress through the modules depends on the class dynamics.

Class presentation slides are provided as links below in association with each module title. I will generally have the slides available about a week before we start a new module. If students want hardcopy of the slides for use during class, please download and print the linked slides file.

After each class session, the class date will become a hyperlink to the audio for that class.

Case names are listed in the table below as assignments. Sometimes there are several paragraphs of introduction before the case when the case is the lead case in a new subheading in the book. These introductory paragraphs are part of the assignment and should be read along with the case.

The call group assignment list will be posted here for downloading as a .pdf file, with a password required to open the file. That password will be given out in class.

In the table each casebook assignment is given a page range to go with the assignment title. Unless the "Comment/Note" column indicates otherwise, read the entire assignment, encompassed on the indicated pages, including any notes or associated problems.

 

Module A: The Patent System (slides) {Chap. 1}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
History
1-40
Aug. 23
All
The Patent Document
Pages 54-60 give the '626 patent to Hall for a pizza box; however, the casebook version of the '626 patent is missing figure 2. Therefore, please read the patent from this link, which is from the PTO image database of patents.

In addition to studying the pizza box patent carefully, read as follows:
READ CLOSELY: Prosecution History parts C, D and E
SKIM: Prosecution History parts A, B and F
The Prosecution History of the pizza box patent is given in six .pdf files (parts A through F) at this link:
http://law.case.edu/Faculty/Craig-Nard/Law-of-Patents/chap/1
The prosecution history timeline image to the right may be of help in reviewing the Prosecution History.
40-53
prosecution history timeline
Sept. 6
All
Module B: Claiming and Disclosing (slides) {Chap. 2}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
Introduction
61-62
Sept. 11
L
Claim Interpretation - Phillips v. AWH (Fed. Cir. 2005) (en banc)
63-78
Unique Concepts v. Brown (Fed. Cir. 1991)
78-90
When is a preamble phrase limiting? - an expansion on slide 25: Pacing Tech. v. Garmin (Fed. Cir. 2015); Patently-O post on the case.
Sept13: please use the mediasite recording for this day; the audio recording did not work
L
Enablement
91-92
Sept. 18
R
O'Reilly v. Morse (1854)
92-96
The Incandescent Lamp Case (1895)
96-114
Undue Experimentation - Cedarapids v. Nordberg (Fed. Cir. 1997)
114-116
Automotive Tech. Intl. v. BMW (Fed. Cir. 2007)
116-126
Written Description - Ariad v. Eli Lilly (Fed. Cir. 2010) (en banc)
126-139
For some help with understanding gene technology, see pages 11-17 of the opinion in: Association for Molecular Pathology v. US PTO, 689 F.3d 1303 (Fed Cir. 2012)
Sept20: please use the mediasite recording for this day; the audio recording did not work
R
Gentry Gallery v. Berkline (Fed. Cir. 1998)
139-144
Sept. 25
L
Nautilus Inc. v. Biosig Instruments Inc. 134 S. Ct. 2120 (Sup Ct. June 2014)
144-153
Best Mode
153-154
Module C: Eligible Subject Matter and Utility (slides) {Chap. 3}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
REMOVED: 161-172, Diamond v. Chakrabarty (1980)
Sept. 27
L
Intro Reading
161-162
Assn. for Molecular Pathology v. Myriad (2013)
186-201
Myriad '282 patent
AIA impact - human organisms (US PTO memo)
Mayo v. Prometheus (2012)
172-186
Alice Corp. Pty. Ltd. v. CLS Bank Intl, 134 S. Ct. 2347 (2014)
213-232
AIA impact - tax strategies (US PTO memo)
Gene Quinn, How to Patent Software in a Post Alice Era
Patentable Subject Matter after Alice: Best Practices for Responding to 35 U.S.C. § 101 Rejections
Interim Guidance Quick Reference Sheet
link
PTO "Interim Guidance" on Patent Subject Matter Eligibility
Oct. 2
R
Utility - Juicy Whip v. Orange Bang (Fed. Cir. 1999)
link
read all material in the linked document except the lines crossed out on the first and last page
US Pat. No. 5,574,405
Utility - In re Swartz (Fed. Cir. 2000)
233-236
REMOVED: 236-241, Brenner v. Manson (1966)
n/a
REMOVED: In re Fisher (Fed. Cir. 2005)
This case will be covered by the professor based on the course overheads
Design Patents Note
241-243
Module D: preAIA Novelty & Priority (slides) {Chap. 4}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
Guest speaker: Hon. Scott R. Boalick
Organizational structure of the PTAB
Biography for Judge Boalick
Oct. 4
n/a
Anticipation and Inherency - Atlas Powder v. Ireco (Fed. Cir. 1999)
245-256
Oct. 9
L
Known or Used in § 102(a) - Gayler v. Wilder (1850)
256-258
Rosaire v. Baroid (5th. 1955)
258-263
Disclosures in Patents - § 102(e) - Alexander Milburn Co. v. Davis-Bournonvill Co. (1926)
268-271
"Printed Publication" - In re Klopfenstein (Fed. Cir. 2004)
292-300
Oct. 11
L
Inventive Activity under § 102(g)(2) - Thomson, S.A. v. Quixote Corp. (Fed. Cir. 1999)
272-279
Foreign activity (read the intro to the Hilmer cases; read the notes afterwards)
281-282
290-291
Oct. 16
R
Priority
305-306
310-313
325-326
Module E: preAIA Statutory Bars (slides) {Chap. 6}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
On Sale Bar - Pfaff v. Wells Elec. (1998)
425-432
Comments
435-437
Plumtree Software v. Datamize (Fed. Cir. 2006)
437-445
Public Use Bar - Egbert v. Lippmann (1882)
446-448
Oct. 18
R
Motionless Keyboard v. Microsoft (Fed. Cir. 2007)
448-455
Third Party Activity - Evans Cooling Sys. v. General Motors (Fed. Cir. 1997)
460-468
Experimental Use - City of Elizabeth v. American Nicholson Pavement Co. (1878)
472-475
Electromotive Div. of GM v. Transportation Div. of GE (Fed. Cir. 2005)
476-484
Oct. 23
L
Comments
486-489
Module F: postAIA Novelty (slides)
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
AIA Novelty
264-267
post on IP Watchdog
AIA Novelty
271-272
AIA Novelty
292
AIA Novelty
469-472
Janicke & Dolak, Prior Art Problems Under [the] AIA and Proposed Solutions (paper handout given in class)
PTO Examination Guidelines for First-to-File (the most relevant material is from page 11070 starting with "I. Overview . . ." through 11080 before heading "D. Use of Affidavits . . .")
A page of introductory videos by the PTO that summarizes the AIA First Inventor to File (FITF) statute and highlights some of the major changes
Helsinn v. Teva (Fed Cir 2017)
link
omit pages marked by red "X"
Transition applications post
Oct. 25
L
AIA Prior User Rights
279-281
Module G: Nonobviousness (slides) {Chap. 5}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
Introduction / History - Hotchkiss v. Greenwood (1851)
329-335
Graham v. John Deere Co. (1966)
335-342
U.S. v. Adams (1966)
342-354
Oct. 30
R
KSR Intl. v. Teleflex, Inc. (2007)
355-367
Perfect Web Tech., Inc. v. InfoUSA, Inc. (Fed. Cir. 2009)
367-379
Proctor & Gamble Co. v. Teva Pharm., Inc. (Fed. Cir. 2009)
380-389
Nov. 1
R
The PHOSITA - Daiichi Sankyo Co., Ltd. v. Apotex, Inc. (Fed. Cir. 2007)
392-397
Analogous Art - In re Icon Health & Fitness, Inc. (Fed. Cir. 2007)
401-403
In re Klein (Fed. Cir. 2011)
403-413
Secondary Considerations - Transocean v. Maersk Drilling (Fed. Cir. 2012)
414-424
Module H: Enforcing Patent Rights (slides) {Chap. 7}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
Introduction / Claim Interpretation Procedure
491-500
Nov. 6
L
Markman v. Westview (1996)
500-503
Claim Interpretation - Teva v. Sandoz (Jan. 2015)
503-517
Literal Infringement - Larami Corp. v. Amron (E.D. Pa. 1993)
517-523
Doctrine of Equivalents (DOE)
523-525
DOE notes
530-531
Nov. 8
L
Warner Jenkinson v. Hilton Davis (1997)
531-547
PHE - Festo v. Shoketsu . . . ( 2002)
548-562
Dedication - Johnson & Johnston v. RES (Fed. Cir. 2002)
563-571
Nov. 13
R
Vitiation:All-Elements/Limititations:SpecificExclusion - Scimed v. Advanced Cardiovascular (Fed. Cir. 2001)
571-582
Prior Art / Ensnarement - Wilson Sporting Goods v. David Goeffrey & Assoc. (Fed. Cir. 1990)
583-589
Means plus Function - Williamson v. Citrix Online (Fed. Cir. 2015) (en banc)
622-630
6,155,840 patent
Nov. 15
R
Odetics v. Storage Tech. Corp. (Fed. Cir. 1999)
630-638
Geographic Scope - NTP v. RIM (Fed. Cir. 2005)
638-649
Microsoft v. AT&T (2007)
649-662
Eli Lilly v. American Cyanamid (Fed. Cir. 1996)
663-669
Nov. 20
L
Secondary Liability - Lucent Tech. v. Gateway, Inc. (Fed. Cir. 2009)
604-607
Global-Tech v. SEB S.A. (2011)
607-617
Akamai v. Limelight (2014)
link (read pages 3-13)
Akamai v. Limelight (Fed. Cir. 2015)
617-622
{end}
Module I: Defenses (slides) {Chap. 8}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
{ more assignments forthcoming if necessary }
Module J: Remedies (slides) {Chap. 9}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
Module X: { forthcoming } (slides)
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
{ forthcoming }

Last modified on November 15, 2017, by Greg R. Vetter