Greg R. Vetter
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.
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.
| Name: | Patent Law |
| Course # / Section #: | 5332 / 12983 |
| Place: | 209 BLB |
| Time: | Tuesday & Thursday, 10:30 a.m. to 11:45 a.m. (2 class sessions per week, 3 credit hours) |
| UHLC Listing: | http://www.law.uh.edu/schedule/class_information.asp?cid=11451 |
| Required Text(s): | Craig Allen Nard, The Law of Patents (2d ed. 2010) (Aspen) The New United States Patent Law (Black Line Edition): |
| 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. |
| Other Resources - first instance: | This link goes to a document that is about 200 pages. These pages are forthcoming patent law chapters authored by me for an IP Survey case book. To open this link, you will need a password for the file, which I will distribute in class. If any pages from this document are specifically assigned, they will be separated from it and given as assigned reading links in the syllabus table below. |
| Other Resources - second instance: | This commercially available treatise is excellent and incorporates the changes in the patent law from the AIA: Janice M. Mueller, Patent Law (4th ed. 2013) (Aspen Student Treatise Series) {link at Aspen} |
| Prerequisites: | None. |
| Grading: | The course grade will be primarily based on an open-materials
final exam. "Primarily" means that at least 95% of the course grade will be based on the final exam. Probably 100% of the course grade will be based on the final exam, but I want to have given notice of the possibility of a small percentage of the grade coming from other sources, most likely one or more small exercises. Notwithstanding the above, 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 two 1.5 credit-hour blocks each week. The coverage goal is approximately twenty-five to thirty pages per block. Assignments will be detailed in the table below as the semester progresses. |
| Absences Limit: | Assuming two class meetings a week, six or less absences
constitutes attendance meeting the eighty percent requirement. More
than six absences means that the eighty percent requirement is not met. Attendance will be taken via a roll sheet passed throughout the class each session. |
| "Pick your seat" seating chart date: | Thursday, January 17, 2013 |
| Final Exam Date/Time: | Thursday, May 9, 2013; 9:00 a.m. to noon; 111 TUII |
| Final Exam Information: | click here for the Final Exam page |
| First day/week's assignment: | Read this course web page, the linked Generally Applicable Syllabus Information, and the assignments detailed in the table below for the first day/week of class. |
| {reserved} | {reserved} |
| Audio Recording of Class Sessions | I will audio tape the class sessions using a portable recorder attached to my person and post links to the audio 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 audio tracks created will be deleted and destroyed shortly after the final exam for the class. Since I call on students, there is a slight chance that your contributions to class discussion, whether voluntary or while on call, may be included in the audio recording. The chance is slight because the recording technology I use does a poor job of picking up any voices other than my own. 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. |
| Cancellation Day(s) | These three class days: April 16, 18, and 23. |
| Makeup(s) for Cancelled Day(s): | Friday, February 1, 2013 (same time; new room: 240 BLB) Friday, February 15, 2013 (same time; new room: 240 BLB) Friday, March 22, 2013 (same time; new room: 240 BLB) |
These are posted on my home page at:
The links below are for general reference and may be used for some class assignments.
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.
| Assignment | Start Page | Comment/Notes | {resv.} |
Date |
Call Group |
|---|---|---|---|---|---|
History |
1-36 |
All |
|||
The Patent Document |
36-55 |
prosecution history timeline |
All |
||
MORE on the Patent Document |
36-55 |
prosecution history timeline |
L |
||
| Assignment | Start Page | Comment/Notes | {resv.} |
Date |
Call Group |
|---|---|---|---|---|---|
Introduction |
57-59 |
L |
|||
Claim Interpretation - Phillips v. AWH (Fed. Cir. 2005) (en banc) |
59-75 |
||||
Unique Concepts v. Brown
(Fed. Cir. 1991) |
76-86 |
R |
|||
Enablement |
87 |
R |
|||
O'Reilly v. Morse
(1854) |
88-91 |
||||
The Incandescent Lamp Case
(1895) |
91-108 |
||||
Undue Experimentation - Cedarapids v. Nordberg (Fed. Cir. 1997) |
108-110 |
R |
|||
Automotive Tech. Intl. v. BMW
(Fed. Cir. 2007) |
111-119 |
||||
Atlantic Research v. Troy
(Fed. Cir. 2011) |
L |
||||
Written Description - Ariad v. Eli Lilly (Fed. Cir. 2010) (en banc) |
120-130 |
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) |
L |
||
notes 1 and 2 |
134-135 |
||||
notes 1 and 2 |
139-140 |
||||
Definiteness - Datamize v. Plumtree Software (Fed. Cir. 2005) |
141-146 |
||||
Star Scientific v. R.J. Reynolds Tobacco
(Fed. Cir. 2008) |
146-156 |
R |
|||
| Assignment | Start Page | Comment/Notes | {resv.} |
Date |
Call Group |
|---|---|---|---|---|---|
Diamond v. Chakrabarty
(1980) |
157-173 |
AIA impact - human organisms (US PTO memo) |
|||
note 3, page 170; plus additional materials in the link to the right |
|||||
Process claims - Bilski v. Kappos (2010) |
185-207 |
AIA impact - tax strategies (US PTO memo) |
R |
||
Juicy Whip v.
Orange Bang (Fed. Cir. 1999) |
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) |
207-209 |
||||
Brenner v. Manson
(1966) |
210-215 |
R |
|||
In re Fisher (Fed.
Cir. 2005) |
215-227 |
||||
| Assignment | Start Page | Comment/Notes | {resv.} |
Date |
Call Group |
|---|---|---|---|---|---|
Anticipation and Inherency - Atlas Powder v. Ireco (Fed. Cir. 1999) |
231-240 |
L |
|||
Known or Used in § 102(a) - Gayler v. Wilder (1850) |
241-243 |
||||
Rosaire v. Baroid (5th. 1955) |
244-249 |
||||
Disclosures in Patents - § 102(e) - Alexander Milburn Co. v. Davis-Bournonvill Co. (1926) |
249-252 |
L |
|||
Inventive Activity under § 102(g)(2) - Thomson, S.A. v. Quixote Corp. (Fed. Cir. 1999) |
252-260 |
||||
"Printed Publication" - In re Klopfenstein (Fed. Cir. 2004) |
271-279 |
R |
|||
Priority |
284 |
||||
| Assignment | Start Page | Comment/Notes | {resv.} |
Date |
Call Group |
|---|---|---|---|---|---|
On Sale Bar - Pfaff v. Wells Elec. (1998) |
377-384 |
||||
Comments |
387-388 |
||||
Plumtree Software v. Datamize (Fed. Cir. 2006) |
388-396 |
||||
Public Use Bar - Egbert v. Lippmann (1882) |
396-398 |
R |
|||
Motionless Keyboard v. Microsoft (Fed. Cir. 2007) |
398-404 |
||||
Experimental Use - City of Elizabeth v. American Nicholson Pavement Co. (1878) |
407-410 |
L |
|||
Electromotive Div. of GM v. Transportation Div. of GE (Fed. Cir. 2005) |
410-419 |
||||
Comments |
422-425 |
||||
Third Party Activity - Evans Cooling Sys. v. General Motors (Fed. Cir. 1997) |
428-435 |
||||
| Assignment | Start Page | Comment/Notes | {resv.} |
Date |
Call Group |
|---|---|---|---|---|---|
Please study postAIA section 102 closely |
post on IP Watchdog |
L |
|||
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 . . .") |
|||||
Please study postAIA section 102 closely (10-15 minute short review on this material) |
New item as of 3/20/2013: An introductory video by the PTO that familiarizes the examiners with the AIA First Inventor to File (FITF) statute and highlights some of the major changes |
R |
|||
| Assignment | Start Page | Comment/Notes | {resv.} |
Date |
Call Group |
|---|---|---|---|---|---|
Introduction / History - Hotchkiss v. Greenwood (1851) |
305-311 |
||||
Graham v. John Deere Co. (1966) |
311-317 |
||||
U.S. v. Adams (1966) |
318-328 |
R |
|||
KSR Intl. v. Teleflex, Inc. (2007) |
329-342 |
||||
Perfect Web Tech., Inc. v. InfoUSA, Inc. (Fed. Cir. 2009) |
342-350 |
R |
|||
Proctor & Gamble Co. v. Teva Pharm., Inc. (Fed. Cir. 2009) |
350-362 |
||||
The PHOSITA - Daiichi Sankyo Co., Ltd. v. Apotex, Inc. (Fed. Cir. 2007) |
362-366 |
L |
|||
Analogous Art - In re Icon Health & Fitness, Inc. (Fed. Cir. 2007) |
366-371 |
||||
Secondary Considerations - Iron Grip Barbell Co. v. USA Sports, Inc. (Fed. Cir. 2004) |
372-375 |
||||
| Assignment | Start Page | Comment/Notes | {resv.} |
Date |
Call Group |
|---|---|---|---|---|---|
Introduction / Claim Interpretation Procedure |
437-444 |
||||
Markman v. Westview (1996) |
445-452 |
||||
Literal Infringement - Larami Corp. v. Amron (E.D. Pa. 1993)
|
453-458 |
L |
|||
Doctrine of Equivalents (DOE) |
458-459 |
||||
DOE notes |
464-466 |
||||
Warner Jenkinson v. Hilton Davis (1997) |
466-480 |
R |
|||
PHE - Festo v. Shoketsu . . . ( 2002) |
480-494 |
||||
Dedication - Johnson & Johnston v. RES (Fed. Cir. 2002) |
495-502 |
R |
|||
Vitiation:All-Elements/Limititations:SpecificExclusion - Scimed v. Advanced Cardiovascular (Fed. Cir. 2001) |
503-513 |
||||
Prior Art / Ensnarement - Wilson Sporting Goods v. David Goeffrey & Assoc. (Fed. Cir. 1990) |
513-520 |
L |
|||
Means plus Function - Odetics v. Storage Tech. Corp. (Fed. Cir. 1999) |
543-551 |
||||
Geographic Scope - NTP v. RIM (Fed. Cir. 2005) |
551-563 |
||||
Microsoft v. AT&T (2007) |
563-576 |
L |
|||
Eli Lilly v. American Cyanamid (Fed. Cir. 1996) |
576-583 |
||||
Secondary Liability - Lucent Tech. v. Gateway, Inc. (Fed. Cir. 2009) |
536-543 |
L |
|||
Akamai v. Limelight (Fed. Cir. 2012) (en banc) |
|||||
{ end of assignments } |
| Assignment | Start Page | Comment/Notes | {resv.} |
Date |
Call Group |
|---|---|---|---|---|---|
| Assignment | Start Page | Comment/Notes | {resv.} |
Date |
Call Group |
|---|---|---|---|---|---|
| Assignment | Start Page | Comment/Notes | {resv.} |
Date |
Call Group |
|---|---|---|---|---|---|
{ forthcoming } |
|||||
Last modified on April 7, 2013, by Greg R. Vetter
