Greg R. Vetter

Patent Law, Spring 2013

Course Description

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 / 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):
http://www.legalpub.com/product-the-new-united-states-patent-law.html

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)

Contact Information and Office Hours

These are 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

  • United States Patent and Trademark Office (PTO) Patent Page
  • Selected patent law sections from 35 U.S.C. xxx extracted from the U.S. PTO consolidated laws
  • Patent Case Management Judicial Guide - Federal Judicial Center (.pdf file)
  • AIA (as signed) document
  • Matt Rainey, AIA Presentation slides

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 are part of Module B slides) {Chap. 1}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
History
1-36
Jan. 15
All
The Patent Document
36-55
prosecution history timeline
Jan. 17
All
MORE on the Patent Document
36-55
prosecution history timeline
Jan. 22
L
Module B: Claiming and Disclosing (slides) {Chap. 2}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
Introduction
57-59
Jan. 24
L
Claim Interpretation - Phillips v. AWH (Fed. Cir. 2005) (en banc)
59-75
Unique Concepts v. Brown (Fed. Cir. 1991)
76-86
Jan. 29
R
Enablement
87
Jan. 31
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
Feb. 1
R
Automotive Tech. Intl. v. BMW (Fed. Cir. 2007)
111-119
Atlantic Research v. Troy (Fed. Cir. 2011)
read all material in the linked document except the lines crossed out on the first and last page
US Pat. Nos. RE39,465 and 6,499,245
Feb. 5
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)
Feb. 7
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
Feb. 12
R
Module C: Eligible Subject Matter and Utility (slides) {Chap. 3}
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)
Feb. 14
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
Feb. 15
R
In re Fisher (Fed. Cir. 2005)
215-227
Module D: preAIA Novelty & Priority (slides) {Chap. 4}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
Anticipation and Inherency - Atlas Powder v. Ireco (Fed. Cir. 1999)
231-240
Feb. 19
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
Feb. 21
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
Feb. 26
R
Priority
284
 
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)
377-384
Comments
387-388
Plumtree Software v. Datamize (Fed. Cir. 2006)
388-396
Public Use Bar - Egbert v. Lippmann (1882)
396-398
Feb. 28
R
Motionless Keyboard v. Microsoft (Fed. Cir. 2007)
398-404
Experimental Use - City of Elizabeth v. American Nicholson Pavement Co. (1878)
407-410
Mar. 5
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
Module F: postAIA Novelty (slides)
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
Please study postAIA section 102 closely
post on IP Watchdog
Mar. 7
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
Mar. 19
R
Module G: Nonobviousness (slides) {Chap. 5}
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
Mar. 21
R
KSR Intl. v. Teleflex, Inc. (2007)
329-342
Perfect Web Tech., Inc. v. InfoUSA, Inc. (Fed. Cir. 2009)
342-350
Mar. 22
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
Mar. 26
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
Module H: Enforcing Patent Rights (slides) {Chap. 7}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
Introduction / Claim Interpretation Procedure
437-444
Markman v. Westview (1996)
445-452
Reconsidering de novo review of claim construction: PatentlyO posting; Federal Circuit order; petition
Literal Infringement - Larami Corp. v. Amron (E.D. Pa. 1993)
453-458
Mar. 28
L
Doctrine of Equivalents (DOE)
458-459
DOE notes
464-466
Warner Jenkinson v. Hilton Davis (1997)
466-480
Apr. 2
R
PHE - Festo v. Shoketsu . . . ( 2002)
480-494
Dedication - Johnson & Johnston v. RES (Fed. Cir. 2002)
495-502
Apr. 4
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
Apr. 9
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
Apr. 11
L
Eli Lilly v. American Cyanamid (Fed. Cir. 1996)
576-583
Secondary Liability - Lucent Tech. v. Gateway, Inc. (Fed. Cir. 2009)
536-543
Apr. 25
L
Akamai v. Limelight (Fed. Cir. 2012) (en banc)
{ end of assignments }
Module I: Defenses (slides) {Chap. 8}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
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 April 7, 2013, by Greg R. Vetter