Greg R. Vetter

Patent Law, Spring 2015

(Texas A&M University School of Law)

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.

Class Schedule and Other Information

Name: Patent Law
Course # / Section #: LAW-7900-603 / CRN 26330
Place: Room 216
Time:

Tuesday & Thursday, 1:30 p.m. to 2:45 p.m. (2 class sessions per week, 3 credit hours)
Professor: Greg R. Vetter; gvetter@uh.edu; cell: 713-213-0360; http://www.law.uh.edu/faculty/gvetter
Office Hours at Texas A&M School of Law:
Tues. and Thurs.: 10:30 a.m. to 1:00 p.m. while classes are in session; or by appointment.
 
Required Text:

Craig Allen Nard, The Law of Patents (3d ed. 2014) (Aspen)
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 based on an open-materials final exam given at the time and date as scheduled by the School of Law.
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: Attendance will be taken via a roll sheet passed throughout the class each session.
Attendance policy is as stated in the Spring 2015 Registration Procedures, Course Listings, and Final Exam Schedule, Revised 11-25-14, page 7-8.
Law School Disability Policy: Texas A&M School of Law adheres to a disability policy that is in keeping with relevant federal law. The law school will provide reasonable accommodations as determined by the Assistant Dean of Student Affairs, Rosalind Jeffers, in consultation with the University’s disability services. Students must notify Dean Jeffers of any permanent or temporary disabilities and must provide documentation regarding those disabilities prior to the granting of an accommodation. Due to the law school’s policy of testing anonymity, students should not discuss their disabilities with professors. For assistance, students should consult with Dean Jeffers.
 
Final Exam Date/Time: Wednesday, May 13, 2015; 9:00 a.m. CST { room forthcoming }
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.
 
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 chance that your contributions to class discussion, whether voluntary or while on call, may be included in the audio 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.
Cancellation Day(s)

Thursday, February 26, 2015 (professor schedule); Weather: 2/24/15; 3/5/15
Makeup(s) for Cancelled Day(s):

Monday, 3/16/2015, noon, same room (makeup for weather for class missed on 2/24/2015)

Monday, 4/6/2015, noon, room 216 (makeup for professor's schedule for class missed on 2/26/2015)

Monday, 4/13/2015, noon, room 206 (makeup for weather for class missed on 3/5/2015)
Texas A&M Honor System:

http://aggiehonor.tamu.edu/RulesAndProcedures/HonorSystemRules.aspx

Aggie Honor Code: "An Aggie does not lie, cheat or steal, or tolerate those who do."
Statement on Professionalism: “What is professionalism? ‘Professionalism is conduct consistent with the tenets of the legal profession as demonstrated by a lawyer's civility, honesty, integrity, character, fairness, competence, ethical conduct, public service, and respect for the rule of law, the courts, clients, persons who work within the legal profession, witnesses, and unrepresented parties.’”

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

  • United States Patent and Trademark Office (PTO) Patent Page
  • Selected patent law sections from preAIA 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) {Chap. 1}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
History
1-38
Jan. 13
All
The Patent Document
39-58
prosecution history timeline
Jan. 15
All
MORE on the Patent Document
39-58
prosecution history timeline
Jan. 20
L
Module B: Claiming and Disclosing (slides rev 2) {Chap. 2}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
Introduction
59-61
Jan. 22
L
Claim Interpretation - Phillips v. AWH (Fed. Cir. 2005) (en banc)
61-78
Claim Interpretation - Teva v. Sandoz, __ U.S. __ (Jan. 2015)
link
blog post by Vetter about Teva just after the oral argument:
Jan. 27
R
Unique Concepts v. Brown (Fed. Cir. 1991)
78-90
Enablement
91
O'Reilly v. Morse (1854)
92-96
The Incandescent Lamp Case (1895)
96-113
Jan. 29
R
Undue Experimentation - Cedarapids v. Nordberg (Fed. Cir. 1997)
113-116
Feb. 3
L
Automotive Tech. Intl. v. BMW (Fed. Cir. 2007)
116-125
Written Description - Ariad v. Eli Lilly (Fed. Cir. 2010) (en banc)
125-137
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)
Gentry Gallery v. Berkline (Fed. Cir. 1998)
137-142
Definiteness under the new standard - Nautilus Inc. v. Biosig Instruments Inc. 134 S. Ct. 2120 (Sup Ct. June 2014)
link
Feb. 5
L
Definiteness under the old standard - Datamize v. Plumtree Software (Fed. Cir. 2005)
142-147
Star Scientific v. R.J. Reynolds Tobacco (Fed. Cir. 2008)
147-156
Feb. 10
R
Best Mode
157
Module C: Eligible Subject Matter and Utility (slides) {Chap. 3}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
Diamond v. Chakrabarty (1980)
165-175
AIA impact - human organisms (US PTO memo)
Mayo v. Prometheus (2012)
175-188
Assn. for Molecular Pathology v. Myriad (2013)
188-202
Myriad '282 patent
Feb. 12
R
Process claims - Bilski v. Kappos (2010)
215-240
AIA impact - tax strategies (US PTO memo)
Feb. 17
L
Alice Corp. Pty. Ltd. v. CLS Bank Intl, 134 S. Ct. 2347 (2014)
link
PTO Interim Guidance on Patent Subject Matter Eligibility
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)
240-243
Brenner v. Manson (1966)
243-248
In re Fisher (Fed. Cir. 2005)
248-260
Feb. 19
L
Design Patents Note
260-262
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)
263-273
Known or Used in § 102(a) - Gayler v. Wilder (1850)
273-276
Mar. 3
R
Rosaire v. Baroid (5th. 1955)
276-281
NOTE: pages 281 to 286 will be specifically assigned as part of Module F, but it might be helpful to read it for the first time here.
Disclosures in Patents - § 102(e) - Alexander Milburn Co. v. Davis-Bournonvill Co. (1926)
286-291
Inventive Activity under § 102(g)(2) - Thomson, S.A. v. Quixote Corp. (Fed. Cir. 1999)
291-299
Foreign activity (read the intro to the Hilmer case)
300
"Printed Publication" - In re Klopfenstein (Fed. Cir. 2004)
310-322
This is a makeup class on a Monday, in the same room as a regular class, but held from noon to 1:15 p.m., making up the class missed on 2/24/15 (weather)
Mar. 16
R
Priority
323-324

 
 
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)
437-444
Mar. 17
L
Comments
447-449
Plumtree Software v. Datamize (Fed. Cir. 2006)
449-457
Public Use Bar - Egbert v. Lippmann (1882)
458-460
Motionless Keyboard v. Microsoft (Fed. Cir. 2007)
460-467
NOTE: pages 468 to 470 will be specifically assigned as part of Module F, but it might be helpful to read it for the first time here.
Experimental Use - City of Elizabeth v. American Nicholson Pavement Co. (1878)
482-485
Mar. 19
L
Electromotive Div. of GM v. Transportation Div. of GE (Fed. Cir. 2005)
485-494
Comments
496-499
Third Party Activity - Evans Cooling Sys. v. General Motors (Fed. Cir. 1997)
473-481
Module F: postAIA Novelty (slides)
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
AIA Novelty
281-286
post on IP Watchdog
Mar. 24
R
AIA Novelty
289-290
AIA Novelty
468-470
Janicke & Dolak, Prior Art Problems Under [the] AIA and Proposed Solutions (paper handout given in class on 3/19/2015)
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 . . .")
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
AIA Prior User Rights
297-299
Mar. 26
R
Module G: Nonobviousness (slides) {Chap. 5}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
Introduction / History - Hotchkiss v. Greenwood (1851)
347-353
Mar. 31
L
Graham v. John Deere Co. (1966)
353-359
U.S. v. Adams (1966)
360-372
KSR Intl. v. Teleflex, Inc. (2007)
373-385
Perfect Web Tech., Inc. v. InfoUSA, Inc. (Fed. Cir. 2009)
385-396
Apr. 2
L
Proctor & Gamble Co. v. Teva Pharm., Inc. (Fed. Cir. 2009)
396-408
The PHOSITA - Daiichi Sankyo Co., Ltd. v. Apotex, Inc. (Fed. Cir. 2007)
408-412
In re Klein (Fed. Cir. 2011)
416-426
Analogous Art - In re Icon Health & Fitness, Inc. (Fed. Cir. 2007)
413-416
This is a makeup class on a Monday, in room 216 as a regular class, but held from noon to 1:15 p.m., making up the class missed on 2/26/15 (professor's schedule)
Apr. 6
R
Secondary Considerations - Transocean v. Maersk Drilling (Fed. Cir. 2012)
426-436
Module H: Enforcing Patent Rights (slides) {Chap. 7}
Assignment Start Page Comment/Notes
{resv.}
Date
Call Group
Introduction / Claim Interpretation Procedure
501-509
Markman v. Westview (1996)
509-517
Patent Case Management Judicial Guide (2d ed draft)
Literal Infringement - Larami Corp. v. Amron (E.D. Pa. 1993)
517-523
Doctrine of Equivalents (DOE)
523-525
Apr. 7
R
DOE notes
530-531
Warner Jenkinson v. Hilton Davis (1997)
531-547
PHE - Festo v. Shoketsu . . . ( 2002)
548-562
Apr. 9
R
Dedication - Johnson & Johnston v. RES (Fed. Cir. 2002)
562-570
Monday, 4/13/2015, noon, room 206 (makeup for weather for class missed on 3/5/2015)
Apr. 13
L
Vitiation:All-Elements/Limititations:SpecificExclusion - Scimed v. Advanced Cardiovascular (Fed. Cir. 2001)
570-581
Prior Art / Ensnarement - Wilson Sporting Goods v. David Goeffrey & Assoc. (Fed. Cir. 1990)
581-587
Apr. 14
L
Means plus Function - Odetics v. Storage Tech. Corp. (Fed. Cir. 1999)
622-630
Apr. 16
L
Geographic Scope - NTP v. RIM (Fed. Cir. 2005)
630-641
Apr. 21
R
Microsoft v. AT&T (2007)
641-655
Eli Lilly v. American Cyanamid (Fed. Cir. 1996)
655-661
Secondary Liability - Lucent Tech. v. Gateway, Inc. (Fed. Cir. 2009)
603-608
Apr. 23
R
Global-Tech v. SEB S.A. (2011)
608-612
Akamai v. Limelight (2014)
link (read pages 3-13)
Secondary liability notes
620-621
{ 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 16, 2015, by Greg R. Vetter