Supreme Court of the United States Patent Case Law

SCOTUS Patent Judgements

Supreme Court of the United States has decided following cases under Patent Law (Authorized by the U.S. Constitution, Title 35 of the United States Code) since its establishment on September 24, 1789 pursuant to Article III of the United States Constitution 1787.
CitationCase Title &
Transcript
Issue/s Involved Held by SCOTUS
581 U. S. 2017
15-1189
May 30, 2017
Impression Products, Inc. V. Lexmark International, Inc.This case presents two questions about the scope of the patent exhaustion doctrine: First, whether a patentee that sells an item under an express restriction on the purchaser’s right to reuse or resell the product may enforce that restriction through an infringement lawsuit. And second, whether a patentee exhausts its patent rights by selling its product outside the United States, where American patent laws do not apply."We conclude that a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale.
A United States patent entitles the patent holder (the “patentee”), for a period of 20 years, to “exclude others from making, using, offering for sale, or selling [its] invention throughout the United States or importing the invention into the United States.” 35 U. S. C. §154(a). Whoever engages in one of these acts “without authority” from the patentee may face liability for patent infringement. §271(a). When a patentee sells one of its products, however, the patentee can no longer control that item through the patent laws—its patent rights are said to “exhaust.” The purchaser and all subsequent owners are free to use or resell the product just like any other item of personal property, without fear of an infringement lawsuit."
580 U. S. 2016
No. 15–777. December 6, 2016
Samsung Electronics Co. V. Apple Inc.This case involves the infringement of designs for smartphones. The United States Court of Appeals for the Federal Circuit identified the entire smartphone as the only permissible “article of manufacture” for the purpose of calculating §289 damages because consumers could not separately purchase components of the smartphones. The question before us is whether that reading is consistent with §289.“We hold that it is not.”
“Section 289 of the Patent Act makes it unlawful to manufacture or sell an “article of manufacture” to which a patented design or a colorable imitation thereof has been applied and makes an infringer liable tothe patent holder “to the extent of his total profit.” 35 U. S. C. §289. As relevant here, a jury found that various smartphones manufactured by petitioners (collectively, Samsung) infringed design patents owned by respondent Apple Inc. that covered a rectangular front face with rounded edges and a grid of colorful icons on a black screen. Apple was awarded $399 million in damages—Samsung’s entire profit from the sale of its infringing smartphones. The Federal Circuit affirmed the damages award, rejecting Samsung’s argument that damages should be limited because the relevant articles of manufacture were the front face or screen rather than the entire smartphone. The court reasoned that such a limit was not required because the components of Samsung’s smartphones were not sold separately to ordinary consumers and thus were not distinct articles of manufacture. Held: In the case of a multicomponent product, the relevant “article of manufacture” for arriving at a §289 damages award need not be the end product sold to the consumer but may be only a component of that product.”
579 U. S. _ (2016)
Nos. 14–1513 and 14–1520
June 13, 2016
Halo Electronics V. Pulse Electronics Inc.Section 284 of the Patent Act provides that, in a case of infringement, courts “may increase the damages up to three times the amount found or assessed.” 35 U. S. C. §284. In In re Seagate Technology, LLC, 497 F. 3d 1360 (2007) (en banc), the United States Court of Appeals for the Federal Circuit adopted a two-part test for determining when a district court may increase damages pursuant to §284.
The question before us is whether this test is consistent with §284.
We hold that it is not.
The Court holds that awards of enhanced damages should be reviewed for an abuse of discretion. .. But ..in applying that standard, the Federal Circuit may take advantage of its own experience and expertise in patent law. Whether, for example, an infringer truly had “no doubts about validity” of a patent may require an assessment of the reasonableness of a defense that may be apparent from the face of that patent. See ante, at 9. And any error on such a question would be an abuse of discretion.
“Section 284 gives district courts the discretion to award enhanced damages against those guilty of patent infringement. In applying this discretion, district courts are “to be guided by [the] sound legal principles” developed over nearly two centuries of application and interpretation of the Patent Act. Martin, 546 U. S., at 139 (internal quotation marks omitted). Those principles channel the exercise of discretion, limiting the award of enhanced damages to egregious cases of misconduct beyond typical infringement. The Seagate test, in contrast, unduly confines the ability of district courts to exercise the discretion conferred on them. Because both cases before us were decided under the Seagate framework, we vacate the judgments of the Federal Circuit and remand the cases for proceedings consistent with this opinion”
576 U.S. 135 S. Ct. 2401
No. 13–720
June 22, 2015
Kimble V. Marvel Entertainment, LLCRespondent Marvel Entertainment’s corporate predecessor agreed to purchase petitioner Stephen Kimble’s patent for a Spider-Man toy in exchange for a lump sum plus a 3% royalty on future sales. The agreement set no end date for royalties. As the patent neared theend of its statutory 20-year term, Marvel discovered Brulotte v. Thys Co., 379 U. S. 29, in which this Court held that a patentee cannot continue to receive royalties for sales made after his patent expires. Marvel then sought a declaratory judgment in federal district court confirming that it could stop paying Kimble royalties. The district court granted relief, and the Ninth Circuit affirmed. Kimble now asks this Court to overrule Brulotte.Stare decisis requires this Court to adhere to Brulotte. A patent typically expires 20 years from its application date. At that point, the unrestricted right to make or use the article passes to the public. Brulotte applied that principle to a patent licensing agreement that provided for the payment of royalties accruing after the patent’s expiration. The Court held that the post-patent royalty provision was “unlawful per se,” because it continued “the patent monopoly beyond the [patent] period,” Contending that such alternatives are not enough, Kimble asks this Court to abandon Brulotte’s bright-line rule in favor of a case-by-case approach based on antitrust law’s “rule of reason.” The doctrine of stare decisis provides that today’s Court should stand by yesterday’s decisions. Application of that doctrine, though “not an inexorable command,” is the “preferred course.” Payne v. Tennessee, 501 U. S. 808, 828, 827. Overruling a case always requires “special justification”—over and above the belief “that the precedent was wrongly decided.” Halliburton Co. v. Erica P. John Fund, Inc., 573 U. S. In Brulotte v. Thys Co., 379 U. S. 29 (1964), this Court held that a patent holder cannot charge royalties for the use of his invention after its patent term has expired. The sole question presented here is whether we should overrule Brulotte. Adhering to principles of stare decisis, we decline to do so. Critics of the Brulotte rule must seek relief not from this Court but from Congress.
575 U.S. 2015
No. 13–896
May 26, 2015
Commil V. CiscoWhether knowledge of, or belief in, a patent’s validity is required for induced infringement under §271(b).A defendant’s belief regarding patent validity is not a defense to an induced infringement claim.
574 U.S. 2015
No. 13–854
January 20, 2015
Teva Pharmaceuticals USA, Inc. V. Sandoz, Inc.Whether claim construction involves findings of fact.1 Because it does not, Rule 52(a)(6) does not apply, and the Court of Appeals properly applied a de novo standard of review.“When reviewing a district court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim, the Federal Circuit must apply a “clear error,” not a de novo, standard of review.”
134 S.Ct. 2120 (2014)
No. 13-369
June 2, 2014
Nautilus, Inc. V. Biosig Instruments, Inc.Patent Claims“Patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention”
572 U.S. 2014
No. 12–786
June 2, 2014
Limelight Networks V. Akamai TechnologiesWhether a defendant may be liable for inducing infringement of a patent under 35 U. S. C. §271(b) when no one has directly infringed thepatent under §271(a) or any other statutory provision.A defendant is not liable for inducing infringement under §271(b)when no one has directly infringed under §271(a) or any other statutory provision.
572 U. S. 2014
No. 12–1163
April 29, 2014
Highmark V. AllcareWhether an appellate court should accord deference to a district court’s determination that litigation is objectively baseless“An appellate court should review all aspects of a district court’s §285determination for abuse of discretion.”
572 U.S. 2014
No. 12–1184
April 29, 2014
Octane Fitness V. Icon Health & FitnessWhether the Brooks Furniture framework is consistent with the statutory textWe hold that it is not.
The lower appellate court construed the attorney fees statute in a manner that was unduly rigid. Restricting the grant of reasonable attorney fees to the prevailing party in all but two exceptions would render the statute meaningless and would contradict patent litigation norms. The appellate court’s interpretation of the statute would also impermissibly encumber the district court’s discretionary power to award such fees.
571 U.S. 2014
No. 12–1128
January 22, 2014
Medtronic V. Boston ScientificWhether the burden of proof shifts when the patentee is a defendant in a declaratory judgment action, and the plaintiff (the potential infringer) seeks a judgment that he does not infringe the patent.We hold that, when a licensee seeks a declaratory judgment against a patentee to establish that there is no infringement, the burden of proving infringement remainswith the patentee. We reverse the Federal Circuit’s determination to the contrary.
573 U.S. 2014Alice Corp. V. CLS Bank InternationalThe patents at issue in this case disclose a computer implemented scheme for mitigating “settlement risk” (i.e., the risk that only one party to a financial transaction will pay what it owes) by using a third-party intermediary. The question presented is whether these claims are patent eligible under 35 U. S. C. §101, or are instead drawn to a patent-ineligible abstract idea.We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.
570 U.S 2013
No. 12–416
June 17, 2013
FTC V. Actavis, Inc.Whether such an agreement can sometimes unreasonably diminish competition in violation of the antitrust laws. See, e.g., 15 U. S. C. §1 (Sherman Act prohibition of “restraint[s] of trade or commerce”). Cf. Palmer v. BRG of Ga., Inc., 498 U. S. 46 (1990) (per curiam) (invalidating agreement not to compete).The Eleventh Circuit erred in affirming the dismissal of the FTC’s complaint. Pp. 8–21. (a) Although the anticompetitive effects of the reverse settlement agreement might fall within the scope of the exclusionary potential of Solvay’s patent, this does not immunize the agreement from antitrust attack. For one thing, to refer simply to what the holder of a valid patent could do does not by itself answer the antitrust question. Here, the paragraph IV litigation put the patent’s validity and preclusive scope at issue, and the parties’ settlement—in which, the FTC alleges, the plaintiff agreed to pay the defendants millions to stay out of its market, even though the defendants had no monetary claim against the plaintiff—ended that litigation.
569 U.S. 2013
No. 12–398
June 13, 2013
Association for Molecular Pathology V. Myriad GeneticsWhether a naturally occurring segment of deoxyribonucleic acid (DNA) is patent eligible under 35 U. S. C. §101 by virtue of its isolation from the rest of the human genome.
Whether the patent eligibility of synthetically created DNA known as complementary DNA (cDNA), which contains the same protein-coding information found in a segment of natural DNA but omits portions within the DNA segment that do not code for proteins.
We hold that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but that cDNA is patent eligible because it is not naturally occurring. The Patent Act permits patents to be issued to “whoever invents or discovers any new and useful . . . composition of matter,” §101, but “laws of nature, natural phenomena, and abstract ideas”“ ‘are basic tools of scientific and technological work’ ” that lie beyond the domain of patent protection, Mayo, supra, at ___. The rule against patents on naturally occurring things has limits, however. Patent protection strikes a delicate balance between creating “incentives that lead to creation, invention, and discovery” and “imped[ing]the flow of information that might permit, indeed spur, invention.” Id., at ___. This standard is used to determine whether Myriad’s patents claim a “new and useful . . . composition of matter,” §101, or claim naturally occurring phenomena
568 U.S. 2013
No. 11–1118
February 20, 2013
Gunn V. MintonWhether a state law claim alleging legal malpractice in the handling of a patent case must be brought in federal court.Section §1338(a) does not deprive the state courts of subject matter jurisdiction over Minton’s malpractice claim…. Federal courts have exclusive jurisdiction over cases arising under any Act of Congress relating to patents.
569 U.S.2013
No. 11–796
May 13, 2013
Bowman V. MonsantoWhether a farmer who buys patented seeds may reproduce them through planting and harvesting without thepatent holder’s permission.We hold that he may not. Under the doctrine of patent exhaustion, the authorized sale of a patented article gives the purchaser, or any subsequent owner, a right to use or resell that article. Such a sale, however, does not allow the purchaser to make new copies of the patented invention.
566 U.S. 2012
No. 10–1219
April 18, 2012
Kappos V. HyattWhether there are any limitations on the applicant’s ability to introduce new evidence before the district court; What standard of review the district court should apply when considering new evidence. There are no evidentiary restrictions beyond those already imposed by the Federal Rules of Evidence and the Federal Rules of Civil Procedure. Tthe district court must make a de novo finding when new evidence is presented on a disputed question of fact.
566 U.S. 2012
No. 10–844
April 17, 2012
Caraco V. NovoWhether Congress has authorized a generic company to challenge a use code’s accuracy by bringing a counterclaim against the brand manufac turer in a patent infringement suit. The relevant statute provides that a generic company “may assert a counterclaim seeking an order requiring the [brand manufac turer] to correct or delete the patent information [it] submitted . . . under [two statutory subsections] on the ground that the patent does not claim . . . an approved method of using the drug.”We hold that a generic manufacturer may employ this provision to force correction of a use code that inaccurately describes the brand’s patent as covering a particular method of using the drug in question.
The counterclaim thus enables a generic competitor toobtain a judgment directing a brand to “correct or delete” certain patent information that is blocking the FDA’sapproval of a generic product.
566 U.S. 2012
No. 10–1150
March 20, 2012
Mayo Collaborative Services V. Prometheus Laboratories, Inc.Whether the claimed processes have transformed these unpatentable natural laws into patent eligible applications of those laws.Section 101 of the Patent Act defines patentable subject matter. It says: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title. …This provision contains an important implicit exception. “Laws of nature, natural phenomena, and abstract ideas” are not patentable. Diamond v. Diehr, 450 U. S. 175, 185 (1981); see also Bilski v. Kappos, v. Chakrabarty…. thus, the Court has written that “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are ‘manifestations of . . . nature, free to all men and reserved exclusively to none.’” Chakrabarty, supra. Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U. S. 63, 67 (1972). And monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.
564 U.S. 2011
No. 10–290
June 9, 2011
Microsoft Corp.V. i4i Ltd. PartnershipWhether §282 requires an invalidity defense to be proved by clear and convincing evidence.Under §282 of the Patent Act of 1952, “ a patent shall be presumed valid” and “[t]he burden of establishing in-validity of a patent or any claim thereof shall rest on the party asserting such invalidity.” 35 U. S. C. §282. We consider whether §282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.
563 U.S. 2011
No. 09–1159
June 6, 2011
Stanford V. RocheWhether the University and Small Business Patent Procedures Act of 1980—commonly referred to as the Bayh-Dole Act—displaces that norm and automatically vests title to federally funded inventions in federal contractors.The Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.
563 U.S. 2011
No. 10–6
May 31, 2011
Global-Tech V. SEBWhether a party who “actively induces infringement of a patent” under 35 U. S. C. §271(b) must know that the induced acts constitute patent infringement.Induced infringement under §271(b) requires knowledge that the induced acts constitute patent infringement.
561 U.S. 593
No. 08–964
June 28, 2010
Bilski V. KapposWhether a patent can be issued for a claimed invention designed for the business world.The application was not patent eligible. This Court’s precedents provide three specific exceptions to §101’s broad principles: “laws of nature, physical phenomena, and abstract ideas.” Id., at 309. While not required by the statutory text, these exceptions are consistent with the notion that a patentable process must be “new and useful.”
553 U.S. 617
No. 06–937
June 9, 2008
Quanta V. LG ElectronicsWhether patent exhaustion applies to the sale of components of a patented system that must be combined with additional components in order to practice the patented methods.The exhaustion doctrine applies to method patents, and because the license authorizes the sale of components that substantially embody the patents in suit, the sale exhausted the patents.
550 U.S. 437
No. 05–1056
April 30, 2007
Microsoft V. AT&TDoes Microsoft’s liability extend to computers made in another country when loaded with Windows software copied abroad from a master disk or electronic transmission dispatched by Microsoft from the United States?Our answer is “No.”
The master disk or electronic transmission Microsoft sends from the United States is never installed on any of the foreign-made computers in question. Instead, copies made abroad are used for installation. Because Microsoft does not export from the United States the copies actually installed, it does not “supply . . . from the United States” “components” of the relevant computers, and therefore is not liable under §271(f) as currently written.
550 U.S. 398
No. 04–1350
April 30, 2007
KSR V. TeleflexObviousness as applied to patent claims.
Whether a patent claiming the combination of elements of prior art is obvious.
When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Sakraida and Anderson’s-Black Rock are illustrative—a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.
The Federal Circuit addressed the obviousness question in a narrow, rigid manner that is inconsistent with §103 and this Court’s precedents. KSR provided convincing evidence that mounting and available sensor on a fixed pivot point of the Asano pedal was a de-sign step well within the grasp of a person of ordinary skill in the relevant art and that the benefit of doing so would be obvious.
549 U.S. 118
127 S.Ct. 764 2007
No. 05-608.
January 9, 2007
MedImmune, Inc. V. Genentech, Inc.Whether Article III's limitation of federal courts' jurisdiction to "Cases" and "Controversies," reflected in the "actual controversy" requirement of the Declaratory Judgment Act, 28 U.S.C. § 2201(a), requires a patent licensee, to terminate or be in breach of its license agreement before it can seek a declaratory judgment that the underlying patent is invalid, unenforceable, or not infringed.
548 U.S. 2006
No. 04–607
June 22, 2006
LabCorp V. MetaboliteWhether the patent claim is invalid on the ground that it improperly seeks to “claim a monopoly over a basic scientific relationship,” Pet. for Cert. i, namely, the relationship between homocysteine and vitamin deficiency.The relevant principle of law “[e]xclude[s] from . . .patent protection . . . laws of nature, natural phenomena, and abstract ideas.” Diamond v. Diehr, 450 U. S. 175, 185 (1981)… The principle means that Einstein could not have “patent[ed] his celebrated law that E=mc2; nor could Newton have patented the law of gravity… Neither can one patent “a novel and useful mathematical formula.. “patent law[’s] exclu[sion of] fundamental scientific (including mathematical) and technological principles,” (like copyright’s exclusion of “ideas”) is a rule of the latter variety. Thus, the Court has recognized that “[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts are . . . the basic tools of scientific and technological work.
547 U.S. 28 2006
No. 04-1329
March 1, 2006
Illinois Tool Works Inc. V. Independent Ink, Inc.Whether the presumption of market power in a patented product should survive as a matter of antitrust law despite its demise in patent law.We conclude that the mere fact that a tying product is patented does not support such a presumption.
547 U.S. 388 2006
No. 05-130
May 15, 2006
EBay Inc. V. MercExchange, L.L.C.Whether to grant or deny injunctive relief rests within the equitable discretion of the district courts, and that such discretion must be exercised consistent with traditional principles of equity, in patent disputes no less than in other cases governed by such standards.Ruled that an injunction should not automatically issue based on a finding of patent infringement.
Ordinarily, a federal court considering whether to award permanent injunctive relief to a prevailing plaintiff applies the four-factor test historically employed by courts of equity. Petitioners eBay Inc. and Half.com, Inc., argue that this traditional test applies to disputes arising under the Patent Act. We agree and, accordingly, vacate the judgment of the Court of Appeals.
545 U.S. 193 2005
No. 03-1237
June 13, 2005
Merck KGaA V. Integra Lifesciences I, Ltd.Whether uses of patented inventions in preclinical research, the results of which are not ultimately included in a submission to the Food and Drug Administration (FDA), are exempted from infringement by 35 U. S. C. § 271(e)(1).It is generally an act of patent infringement to "make, use, offer to sell, or sell any patented invention . . . during the term of the patent therefor." §271(a). In 1984, Congress enacted an exemption to this general rule, see Drug Price Competition and Patent Term Restoration Act of 1984, § 202, 98 Stat. 1585, as amended, 35 U. S. C. §271(e)(1), which provides: "It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention (other than a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Act of March 4, 1913) . . .) solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs . . .
535 U.S. 826
No. 01-408
June 3, 2002
Holmes Group V. VornadoWhether the Court of Appeals for the Federal Circuit has appellate jurisdiction over a case in which the complaint does not allege a claim arising under federal patent law, but the answer contains a patent-law counterclaim."Not all cases involving a patent-law claim fall within the Federal Circuit's jurisdiction. By limiting the Federal Circuit's jurisdiction to cases in which district courts would have jurisdiction under § 1338,Congress referred to a well established body of law that requires courts to consider whether a patent law claim appears on the face of the plaintiff's well-pleaded complaint. Because petitioner's complaint did not include any claim based on patent law, we vacate the judgment of the Federal Circuit and remand the case with instructions to transfer the case to the Court of Appeals for the Tenth Circuit"
535 U.S. 722
No. 00-1543
May 28, 2002
Festo Corp. V. Shoketsu Kinzoku Kogyo Kabushiki Co.The relation between two patent law concepts, the
doctrine of equivalents and the rule of prosecution history estoppel.
In the doctrine of equivalents, prosecution history estoppel creates only a rebuttable presumption against infringement.
534 U.S. 124 (2001)
No. 99-1996
December 10, 2001
J.E.M. V. Pioneer Hi-BredWhether utility patents may be issued for plants under 35 U. S. C. § 101 (1994 ed.), or whether the Plant Variety Protection Act, 84 Stat. 1542, as amended, 7 U. S. C. § 2321 et seq., and the Plant Patent Act of 1930, 35 U. S. C. §§ 161-164 (1994 ed. and Supp. V), are the exclusive means of obtaining a federal statutory right to exclude others from reproducing, selling, or using plants or plant varieties.We hold that utility patents may be issued for plants.
529 U.S. 460
(2000)
No. 99-502.
April 25, 2000
Nelson V. AdamsPatent infringementJudicial predictions about the outcome of hypothesized litigation cannot substitute for the actual opportunity to defend that due process affords every party against whom a claim is stated.
527 U.S. 627 (1999)
No. 98-531
June 23, 1999
Florida Prepaid V. College Savings Bank"first, whether Congress has `unequivocally expressed its intent to abrogate the immunity,' . . . and second, whether Congress has acted `pursuant to a valid exercise of power.'We hold that, under City of Boerne v. Flores, 521 U. S. 507 (1997), the statute cannot be sustained as legislation enacted to enforce the guarantees of the Fourteenth Amendment's Due Process Clause, and accordingly reverse the decision of the Court of Appeals.
527 U.S. 150 (1999)
No. 98-377
June 10, 1999
Dickinson V. ZurkoWhether § 706 applies when the Federal Circuit reviews findings of fact made by the Patent and Trademark Office (PTO). APA standards of review; PTO fact-finding gets "substantial evidence" standard on review.
We conclude that it does apply, and the Federal Circuit must use the framework set forth in that section.
525 U.S. 55 (1998)
No. 97-1130
November 10, 1998
Pfaff V. Wells Electronics, Inc.Whether the commercial marketing of a newly invented product may mark the beginning of the 1-year period even though the invention has not yet been reduced to practice.We conclude, therefore, that the on-sale bar applies when two conditions are satisfied before the critical date. First, the product must be the subject of a commercial offer for sale. Second, the invention must be ready for patenting. That condition may be satisfied in at least two ways: by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.
520 U.S. 17
No. 13
December 6, 1965
Warner-Jenkinson Company, Inc. V. Hilton Davis Chemical Co.Petitioner, in answer to respondent's suit for patent infringement, denied the infringement and counterclaimed for a declaratory judgment holding the patent invalid. After discovery proceedings, respondent moved to dismiss its complaint because the patent had expired.The enforcement of a patent procured by fraud on the Patent Office may violate 2 of the Sherman Act, provided all other elements to establish a 2 monopolization charge are proved, in which event the treble-damage provisions of 4 of the Clayton Act would be available to the injured party.
517 U.S. 370 (1996)
No. 95-26.
April 23, 1996
Markman V. Westview Instruments, Inc.Whether the maintenance and enforcement of a patent obtained by fraud on the
Patent Office may be the basis of an action under 2 of the Sherman Act, 1 and therefore subject to a treble
damage claim by an injured party under 4 of the Clayton Act
Under the decisions of this Court a person sued for infringement may challenge the validity of the patent on various grounds, including fraudulent procurement..In fact, one need not await the filing of a threatened suit by the patentee; the validity of the patent may be tested under the Declaratory Judgment Act. ..A patent by its very nature is affected with a public interest. . . . [It] is an exception to the general rule against monopolies and to the right to access to a free and open market. The far-reaching social and economic consequences of a patent, therefore, give the public a paramount interest in seeing that patent monopolies spring from backgrounds free from fraud or other inequitable conduct and that such monopolies are kept within their legitimate scope."
513 U.S. 179 (1995)
No. 92-2038
January 18, 1995
Asgrow V. WinterboerThe Plant Variety Protection Act of 1970, 7 U. S. C. § 2321 et seq., protects owners of novel seed varieties against unauthorized sales of their seed for replanting purposes. An exemption, however, allows farmers to make some sales of protected variety seed to other farmers. This case raises the question whether there is a limit to the quantity of protected seed that a farmer can sell under this exemption.The statute as a whole—and as interpreted by the Court of Appeals—indicates that Congress intended to preserve the farmer's right to engage in so-called "brown-bag sales" of seed to neighboring farmers. Congress limited that right by the express requirement that such sales may not constitute the "primary farming occupation" of either the buyer or the seller. Moreover, § 2541(a)(3) makes it abundantly clear that the unauthorized participation in "marketing" of protected varieties is taboo. If one interprets "marketing" to refer to a subcategory of selling activities, namely, merchandising through farm cooperatives, wholesalers, retailers, or other commercial distributors, the entire statute seems to make sense.
508 U.S. 83 (1993)
No. 92-114
May 17, 1993
Cardinal Chemical V. MortonWhether the affirmance by the Court of Appeals for the Federal Circuit of a finding that a patent has not been infringed is a sufficient reason for vacating a declaratory judgment holding the patent invalid.Factors in an unusual case might justify that court's refusal to reach the merits of a validity determination—a determination which it might therefore be appropriate to vacate. A finding of noninfringment alone, however, does not justify such a result. Nor does anything else in the record of this case. The two patents at issue here have been the subject of three separate lawsuits, and both parties have 103*103 urged the Federal Circuit to resolve their ongoing dispute over the issue of validity; it would be an abuse of discretion not to decide that question in this case.
496 U.S. 661 (1990)
No. 89-243.
June 18, 1990
Eli Lilly & Co. V. Medtronic, Inc.whether 35 U. S. C. § 271(e)(1) (1982 ed., Supp II) renders activities that would otherwise constitute patent infringement noninfringing if they are undertaken for the purpose of developing and submitting to the Food and Drug Administration (FDA) information necessary to obtain marketing approval for a medical device under § 515 of the Federal Food, Drug, and Cosmetic Act (FDCA)Held that premarketing activity conducted to gain approval of a device under the Federal Food, Drug, and Cosmetic Act is exempted from a finding of infringement.
489 U.S. 141 (1989)
No. 87-1346.
February 21, 1989
Bonito Boats, Inc. V. Thunder Craft Boats, Inc.Florida Legislature enacted a statute that prohibits the use of a direct molding process to duplicate unpatented boat hulls, and forbids the knowing sale of hulls so duplicated.The trial court granted respondent's motion to dismiss the complaint on the ground that the statute conflicted with federal patent law, and was therefore invalid under the Supremacy Clause of the Federal Constitution. The Florida Court of Appeals and the Florida Supreme Court affirmed. We therefore agree with the majority of the Florida Supreme Court that the Florida statute is preempted by the Supremacy Clause, and the judgment of that court is hereby affirmed.
486 U.S. 800
No. 87-499
June 17, 1988
Christianson V. Coltthe Court of Appeals for the Federal Circuit held that it lacked jurisdiction, and transferred the appeal to the Court of Appeals for the Seventh Circuit. The Seventh Circuit, however, raising the jurisdictional issue sua sponte, concluded that the Federal Circuit was "clearly wrong," and transferred the case back. The Federal Circuit, although concluding that the Seventh Circuit's jurisdictional decision was "clearly wrong," addressed the merits in the "interest of justice," and reversed the District Court.The Court of Appeals for the Federal Circuit would not have jurisdiction of the appeal of a final judgment in this case under 28 U.S.C. § 1295(a)(1), since the action is not one"arising under" the patent statutes for purposes of § 1338(a) (a) In order to demonstrate that a case is one "arising under" federal patent law, the plaintiff must set up some right, title, or interest under the patent laws, or at least make it appear that some right or privilege will be defeated by one construction, or sustained by the opposite construction, of those laws. Section 1338 jurisdiction extends only to those cases in which a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff's right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims. A case raising a federal patent law defense does not, for that reason alone, "arise under" patent law, even if the defense is anticipated in the complaint, and even if both parties admit that the defense is the only question truly at issue in the case.
The Federal Circuit, after concluding that it lacked jurisdiction, erred in deciding to reach the merits anyway "in the interest of justice." Courts created by statute only have such jurisdiction as the statute confers. Upon concluding that it lacked jurisdiction, the Federal Circuit had authority, under 28 U.S.C. § 1631, to make a single decision --whether to dismiss the case or, "in the interest of justice," to transfer it to a court of
appeals that has jurisdiction. The rule that a court may not in any case, even in the interest of justice, extend its jurisdiction where none exists has always worked injustice in particular cases.
475 U.S. 809 (1986)
No. 85-1150
April 21, 1986
Dennison Manufacturing V. PanduitThe trial judge examined the prior art, identified the differences between the prior art and each of the three patents at issue, and concluded that all of the improvements made by the three patents over the prior art would have been obvious to one skilled in that art.
the judge found that respondent's patents were invalid for obviousness.
The Court of Appeals for the Federal Circuit reversed
Petitioner contends that the Federal Circuit ignored Federal Rule of Civil Procedure 52(a) in substituting its view of factual issues for that of the District Court.
This description of the obviousness inquiry makes it clear that whether or not the ultimate question of obviousness is a question of fact subject to Rule 52(a), the subsidiary determinations of the District Court, at the least, ought to be subject to the Rule.
We grant the petition for certiorari, vacate the judgment, and remand the case to the Court of Appeals for further consideration in light of Rule 52(a).
461 U.S. 648 (103 S.Ct. 2058, 76 L.Ed.2d 211)
No. 81-1661
May 24, 1983
General Motors V. DevexAfter determining what the annual royalty payments would have been, the court calculated prejudgment interest on each payment from the time it would have become due.The award of prejudgment interest was proper in this case. § 284 gives a court general authority to fix interest, and this authority, on the face of § 284, is not restricted to exceptional circumstances.
450 U.S. 175
No. 79-1112
March 3, 1981
Diamond V. DiehrThe patent examiner rejected Trademark Office Board of Appeals agreed, but the Court of Customs and Patent Appeals reversed.Respondents' claims recited subject matter that was eligible for patent protection under 101.
448 U.S. 176 (1980)
No. 79-669
June 27, 1980
Dawson Chem.V. Rohm & HaasPatent misuse; attempt to monopolize patentRespondent has not engaged in patent misuse, either by its method of selling propanil, or by its refusal to license others to sell that commodity.
447 U.S. 303
No. 79-136
June 16, 1980
Diamond V. ChakrabartyA patent examiner's rejection of the patent was affirmed by the Patent Office Board of Appeals. The Court of Customs and Patent Appeals reversed.A live, human-made micro-organism is patentable subject matter under 101
440 U.S. 257
No. 77-1413
February 28, 1979
Aronson V. Quick Point PencilThe District Court upheld the contract, but the Court of Appeals reversed, holding that the contract became unenforceable once petitioner failed to obtain a patent within the stipulated 5-year period and that a continuing obligation to pay royalties would be contrary to "the strong federal policy in favor of the full and free use of ideas in the public domain.Federal patent law does not pre-empt state contract law so as to preclude enforcement of the contract. Enforcement of the contract is not inconsistent with the purposes of the federal patent system (1) to foster and reward invention; (2) to promote disclosure of inventions, stimulate further innovation, and permit the public to practice the invention once the patent expires; and (3) to assure that ideas in the public domain remain there for the free use of the public.
437 U.S. 584
No. 77-642
June 22, 1978
Parker V. FlookThe patent examiner rejected the application. The Board of Appeals of the Patent and Trademark Office sustained the examiner's rejection The Court of Customs and Patent Appeals reversed. The judgment of the Court of Customs and Patent Appeals is Reversed.
425 U.S. 273
No. 75-110
April 20, 1976
Sakraida V. Ag ProThe District Court therefore held that Dairy Establishment "may be relevant to commercial success, but not to invention," because the combination "was reasonably obvious to one with ordinary skill in the art." The Court of Appeals disagreed with the District Court's conclusion on the crucial issue of obviousness.We disagree and hold that the Court of Appeals erroneously set aside the District Court's findings. "A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. The ultimate test of patent validity is one of law. But resolution of the obviousness issue necessarily entails several basic factual inquiries, "Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved."
425 U.S. 219
No. 74-1033
March 31, 1976
Dann V. JohnstonExaminer and Board Rejected. CCPA reversed and approved Patent.Unpatentable on grounds of obviousness.
416 U.S. 470
No. 73—187.
May 13, 1974
Kewanee Oil V. BicronWhether state trade secret protection is pre-empted by operation of the federal patent law. 1 In the instant case the Court of Appeals for the Sixth Circuit held that there was pre-emption. 2 The Courts of Appeals for the Second, Fourth, Fifth and Ninth Circuits have reached the opposite conclusion. State trade secret law not preempted by patent law. We hold that Ohio's law of trade secrets is not preempted by the patent lawsof the United States, and, accordingly, we reverse. Trade secret may consist of any formula, pattern, device or compilation of information which is used in one's business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it. It may be a formula for a chemical compound, a process of manufacturing, treating or preserving materials, a pattern for a machine or other device, or a list of customers.' The subject of a trade secret must be secret, and must not be of public knowledge or of a general knowledge in the trade or business.
410 U.S. 52
No. 71-666
January 22, 1973
United States V. Glaxo Group Ltd.Whether the Government may challenge the validity of patents involved in illegal restraints of trade, when the defendants do not rely upon the patents in defense of their conduct, and whether the District Court erred in refusing certain relief requested by the Government.Where patents are directly involved in antitrust violations and the Government presents a substantial
case for relief in the form of restrictions on the patents, the Government may challenge the validity of the patents regardless of whether the owner relies on the patents in defending the antitrust action.
409 U.S. 63
No. 71-485
November 20, 1972
Gottschalk V. BensonPatentabilityHeld that an algorithm is not patentable if the claim would preempt all uses of the algorithm.
406 U.S. 706 (1972)
No. 70-314
June 7, 1972
Brunette V. KockumThe District Court dismissed the complaint on the ground of improper venue, accepting Brunette's contention that § 1400 (b) is the exclusive provision governing venue in patent infringement litigation, and that its requirements were not satisfied here.[2] The Court of Appeals reversed, holding that § 1391 (d) applies to patent infringement suits as to all others, and hence that Brunette is subject to suit as an alien in any district. 442 F. 2d 420 (1971)That rule, which has prevailed throughout the history of the federal courts, controls this case. Since respondent Brunette is an alien corporation, it cannot rely on 1400 (b) as a shield against suit in the District of Oregon. The judgment of the Court of Appeals is Affirmed.
406 U.S. 518
No. 71-315
May 30, 1972
Deepsouth V. LaitramIs Deepsouth, barred from the American market by Laitram's patents, also foreclosed by the patent laws from exporting its deveiners, in less than fully assembled form, for use abroad?We disagree with the Court of Appeals for the Fifth Circuit. Under the common law the inventor had no right to exclude others from making and using his invention. If Laitram has a right to suppress Deepsouth's export trade it must be derived from its patent grant, and thus from the patent statue. We find that 35 U. S. C. § 271, the provision of the patent laws on which Laitram relies, does not support its claim.
402 U.S. 313 (1971)
No. 338
May 3, 1971
Blonder-Tongue V. University of IllinoisThe patent has been much litigated since it was granted. Whether it is any longer tenable to afford a litigant more than one full and fair opportunity for judicial resolution of the same issueRes judicata and collateral estoppel are affirmative defenses that must be pleaded. Fed. Rule Civ. Proc. 8 (c). The purpose of such pleading is to give the opposing party notice of the plea of estoppel and a chance to argue, if he can, why the imposition of an estoppel would be inappropriate
401 U.S. 321
No. 80.
February 24, 1971
Zenith Radio Corp. V. Hazeltine Research, Inc. (Zenith II)Whether it is consistent with the controlling limitations statute, 15 U. S. C. § 15b, to permit Zenith to recover all of the damages it suffered during the years 1959-1963 even though some undetermined portion of those damages was the proximate result of conduct occurring more than four years prior to the filing of the counterclaim."HRI contends, and the Court of Appeals held, that the statute permits the recovery only of those damages caused by overt acts committed during the four-year period. We do not agree. We therefore hold that Zenith, although suing HRI, which was named neither as a party nor as a coconspirator in the Government suit, is not barred from obtaining the benefits of the tolling statute, since it is undisputed that the conspiracy in which HRI participated was at least in part the same conspiracy as was the object of the Government's suit. From this it follows that the only issue still remaining upon HRI's limitations claim is whether Zenith can recover in its 1963 suit for damages suffered after June 1, 1959, as the consequence of pre-1954 conspiratorial conduct.."
396 U.S. 57
No. 45
December 8, 1969
Anderson’s-Black Rock, Inc. V. Pavement Salvage Co.Patentability Invalid and obvious. "Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved."
395 U.S. 653
No.56
June 16, 1969
Lear, Inc. V. Adkinswhether Adkins will receive compensation for Lear's use of those improvements which the inventor has subsequently patented.Overturned the doctrine of licensee estoppel. Overriding federal policies would be significantly frustrated if licensees could be required to continue to pay royalties while challenging patent validity in the courts, and in this case Lear must be permitted to avoid payment of all royalties accruing after the issuance of the patent if Lear can prove that the patent is invalid.
395 U.S. 100
No. 49
May 19, 1969
Zenith Radio V. Hazeltine (Zenith I)Whether the Court of Appeals properly discharged its appellate function under Rule 52 (a) of the Federal Rules of Civil Procedure, which specifies that the findings of fact made by a District Court sitting without a jury are not to be set aside unless "clearly erroneous."One is not bound by a judgment in personam resulting from litigation in which he is not designated as a party or to which he has not been made a party by service of process.
383 U.S. 519
No. 58
March 21, 1966
Brenner V. MansonWhat constitutes "utility" in chemical process claims, as well as to answer the question concerning our certiorari jurisdiction."This is not to say that we mean to disparage the importance of contributions to the fund of scientific information short of the invention of something "useful," or that we are blind to the prospect that what now seems without "use" may tomorrow command the grateful attention of the public. But a patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion. "A patent system must be related to the world of commerce rather than to the realm of philosophy."
383 U.S. 39
No. 55
February 21, 1966
United States V. AdamsPatent ValidityWet battery including a combination of known elements not obvious because the operating characteristics were unexpected and improved over then-existing wet batteries.
383 U.S. 1
No. 11.
February 21, 1966
Graham V. John Deere Co.Whether "the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.We have been urged to find in § 103 a relaxed standard, supposedly a congressional reaction to the "increased standard" applied by this Court in its decisions over the last 20 or 30 years. The standard has remained invariable in this Court. Technology, however, has advanced—and with remarkable rapidity in the last 50 years. He who seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office.
382 U.S. 252 (1965)
No. 57
December 8, 1965
Hazeltine V. BrennerWhether an application for patent pending in the Patent Office at the time a second application is filed constitutes part of the "prior art" as that term is used in 35 U. S. C. § 103We see no reason to read into § 103 a restricted definition of "prior art" which would lower standards of patentability to such an extent that there might exist two patents where the Congress has plainly directed that there should be only one.
382 U.S. 172 (1965)
No. 13.
December 6, 1965
Walker Process V. Food Mach. & Chem.Whether the maintenance and enforcement of a patent obtained by fraud on the Patent Office may be the basis of an action under § 2 of the Sherman Act, and therefore subject to a treble damage claim by an injured party under § 4 of the Clayton Act. The trial court dismissed its suit not because Walker failed to allege the relevant market, the dominance of the patented device therein, and the injurious consequences to Walker of the patent's enforcement, but rather on the ground that the United States alone may "annul or set aside" a patent for fraud in procurement. The trial court has not analyzed any economic data. Indeed, no such proof has yet been offered because of the disposition below. In view of these considerations, as well as the novelty of the claim asserted and the paucity of guidelines available in the decided cases, this deficiency cannot be deemed crucial. Fairness requires that on remand Walker have the opportunity to make its § 2 claims more specific, to prove the alleged fraud, and to establish the necessary elements of the asserted § 2 violation.
379 U.S. 29
No. 20.
November 16, 1964
Brulotte V. ThysPetitioners refused to make royalty payments accruing both before and after the expiration of the patents.We conclude that the judgment below must be reversed insofar as it allows royalties to be collected which accrued after the last of the patents incorporated into the machines had expired.
377 U.S. 422
No. 109.
June 8, 1964
Wilbur-Ellis Co. et al. V. KutherWhether what was done to these machines, the original manufacture and sale of which had been licensed by the patentee, amounted to "repair," in which event there was no infringement, or "reconstruction," The idea of "reconstruction" in this context has the special connotation of those acts which would impinge on the patentee's right "to exclude others from making," 35 U. S. C. § 154, the article.We are asked in substance to treat the case as if petitioners had a license for use of the machines on "1-pound" cans only. But the sales here were outright, without restriction. Adams v. Burke, 17 Wall. 453, 456, therefore controls: . . when the patentee, or the person having his rights, sells a machine or instrument whose sole value is in its use, he receives the consideration for its use and he parts with the right to restrict that use." And see United States v. Univis Lens Co., 316 U. S. 241, 250. Reversed.
377 U.S. 476
No. 21
February 27, 1961
Aro Mfg. Co. V. Convertible Top Replacement Co. (Aro II)Whether replacing the fabric amounts to the "making" of a new top and thus a direct infringement of the patent.Petitioners were not guilty of either direct or contributory infringement of the patent.
376 U.S. 234
No. 106.
March 9, 1964
Compco Corp. V. Day-Brite Lighting, Inc.Whether the use of a state unfair competition law to give relief against the copying of an unpatented industrial design conflicts with the federal patent laws.Held that state law that, in effect, duplicated the protections of the US patent laws was preempted by federal law.
376 U.S. 225
No. 108
March 9, 1964
Sears, Roebuck & Co. V. Stiffel Co.Whether a State's unfair competition law can, consistently with the federal
patent laws, impose liability for or prohibit the copying of an article which is protected by neither a federal patent nor a copyright.
But because of the federal patent laws a State may not, when the article is unpatented and uncopyrighted, prohibit the copying of the article itself or award damages for such copying. The judgment below did both and in so doing gave Stiffel the equivalent of a patent monopoly on its unpatented lamp. That was error, and Sears is entitled to a judgment in its favor.
377 U.S. 422
No. 109
June 8, 1964
Wilbur-Ellis Co. V. KutherSuit for infringementWhen the patentee, or the person having his rights, sells a machine or
instrument whose sole value is in its use, he receives the consideration for
its use and he parts with the right to restrict that use.
374 U.S. 174 (1963)
No. 438
June 17, 1963
US V. SingerWhether the District Court applied the proper standard to essentially undisputed facts." United States v. Parke, Davis & Co., 362 U.S. 29, 44 (1960). There in a discussion of a like problem we held that "the inference of an agreement in violation of the Sherman Act" is not "merely limited to particular fact complexes,"It is well settled that beyond the limited monopoly which is granted, the arrangements by which the patent is utilized are subject to the general law," United States v. Masonite Corp., supra, at 277, and it "is equally well settled that the possession of a valid patent or patents does not give the patentee any exemption from the provisions of the Sherman Act beyond the limits of the patent monopoly. By aggregating patents in one control, the holder of the patents cannot escape the prohibitions of the Sherman Act. That Act imposes strict limitations on the concerted activities in which patent owners may lawfully engage and those limitations have been exceeded in this case.
373 U.S. 379 (1963)
No. 322
May 27, 1963
Sperry V. FloridaWhether or not anyone except a regularly admitted attorney at law should be excluded from practicing before the Patent Office.A federal statute, 35 U.S.C. 31, expressly permits the Commissioner of Patents to authorize practice before the Patent Office by nonlawyers; the Commissioner has explicitly granted such authority; and Florida may not deny to those failing to meet its own qualifications the right to perform acts within the scope of the federal authority.
372 U.S. 253
No. 54
March 4, 1963
White Motor V. USThe District Court granted summary judgment for the Government. Appellant appealed directly to SC from all but the price-fixing aspects of the judgment.We conclude that the summary judgment, apart from the price-fixing phase of the case, was improperly employed in this suit. Apart from price fixing, we do not intimate any view on the merits. We only hold that the legality of the territorial and customer limitations should be determined only after a trial.
370 U.S. 530
No. 242
June 25, 1962
Glidden V. ZdanokArticle III judges status Judges of the Court of Claims and the Court of Customs and Patent Appeals were judges created under Article III of the Constitution (also known as Article III judges). As such, it was permissible for the Chief Justice of the United States under 28 U.S.C. § 293(a) to designate judges from the Court of Claims and the Court of Customs and Patent Appeals to serve on district courts and courts of appeals.
365 U.S. 260
No. 219
February 20, 1961
Schnell V. Eckrich & SonsCourt jurisdiction."Any civil action for patent infringement may be brought in the judicial district where the
defendant resides, or where the defendant has committed acts of infringement and has
a regular and established place of business."
365 U.S. 336
No. 21
February 27, 1961
Aro Mfg. Co. V. Convertible Top Replacement Co. (Aro IThe doctrine of repair and reconstructionIn order to call the monopoly, conferred by the patent grant, into play for a second time, it must, indeed, be a second creation of the patented entity, as, for example, in Cotton-Tie Co. v. Simmons, supra. Mere replacement of individual unpatented parts, one at a time, whether of the same part repeatedly or different parts successively, is no more than the lawful right of the owner to repair his property. Measured by this test, the replacement of the fabric involved in this case must be characterized as permissible "repair," not "reconstruction
353 U.S. 222
No. 310
April 29, 1957
Fourco Glass Co. V. Transmirra Products Corp.Whether 28 U. S. C. § 1400 (b) is the sole and exclusive provision governing venue in patent infringement actions, or whether that section is supplemented by 28 U. S. C. § 1391 (c)We hold that 28 U. S. C. § 1400 (b) is the sole and exclusive provision controlling venue in patent infringement actions, and that it is not to be supplemented by the provisions of 28 U. S. C. § 1391 (c). The judgment of the Court of Appeals must therefore be reversed and the cause remanded for that court to pass upon the District Court's ruling that there had been no showing of acts of infringement in the district of suit.
352 U.S. 457
No. 11
February 25, 1957
U.S. Gypsum V. National GypsumAppellant sued appellees for the use of its patents during that period. It asserted three alternative grounds for recovery: (a) the royalty provisions of the old licensing agreements, (b) the reasonable value of the use of its patents, and (c) damages for patent infringement.By virtue of its reservation of jurisdiction in its antitrust decree to make such "directions" and "modifications" as may be appropriate to the "carrying out" and "enforcement" of that decree, the District Court had jurisdiction to grant relief. Pp.352 U. S. 463-464.
2. The enjoining of appellant's suits for royalties under the outlawed licensing agreements was proper, and, upon remand, the District Court, by appropriate modification of its decree in the antitrust case or otherwise, may require appellant to dismiss those claims. Pp. 352 U. S. 464-465, 352 U. S. 476.
3. The enjoining of appellant's suits for compensation on a quantum meruit basis and for damages for patent infringement was not justified upon the record.
No. 46
November 10, 1952
Sanford v. Kepner the duty of district courts to consider and adjudicate questions of invention and patentability when parties urge them This Court has said, "It necessarily follows that no adjudication can be made in favor of the applicant, unless the alleged invention for which a patent is sought is a patentable invention." Hill v. Wooster, 132 U.S. 693, 698. The principle of the Hill case is that
the court must decide whether claims show patentable inventions before authorizing the Commissioner to issue a patent. No part of its holding or wording nor of that in Hoover Co. v. Coe, 325 U.S. 79 , requires us to say R. S. 4915 compels a district court to adjudicate patentability at the instance of one whose claim is found to be groundless. Sanford's claim was found to be groundless.
343 U.S. 444
No. 230
May 26, 1952
Besser Mfg. V. United StatesThe United States brought this civil action under § 4 of the Sherman Act charging appellants and others with conspiring to restrain and monopolize interstate commerce in concrete block-making machinery in violation of §§ 1 and 2 of the Act, and charging appellants with monopolizing and attempting to monopolize the same industry in violation of § 2 of the Act.The United States District Court for the Eastern District of Michigan found the Government's charges clearly proved, and entered a judgment intended to correct the Sherman Act violations found to exist. The judgment below is
Affirmed. It was always within the power of the trial judge to establish the royalty rates, and, in voting as he did, he did just that.
342 U.S. 180
No. 180
January 2, 1952
Kerotest Mfg. Co. V. C-O-Two Fire Eqpt. Co.Validity of a PatentA manufacturer who is charged with infringing a patent cannot stretch the Federal Declaratory Judgments Act to give him a paramount right to choose the forum for trying out questions of infringement and validity.
36 U.S. 271
Nos. 184 and 185 February 28, 1949
Graver Tank & Manufacturing Co. V. Linde Air Products Co.Contentions are made that the patent has been abused through efforts to broaden the patent monopoly by requiring the purchase of unpatentable material for use in connection with it.The court recognized that an appearance of such freedom is not conclusive if it conceals a subterfuge and that there is a real, although informal, restraint. But examining the conduct of the plaintiff, it found no such obstacle to the maintenance of an action for infringement on that part of the patent which was valid. The Court of Appeals affirmed, and we accept the conclusion of the two courts below on this branch of the case.
340 U.S. 147
No. 32
December 4, 1950
Great Atlantic & Pacific Tea Co. V. Supermarket Equipment Corp.Patentability Only when the whole in some way exceeds the sum of its parts is a combination of old elements patentable.
333 U.S. 127
No. 280
February 16, 1948
Funk Brothers Seed Co. V. Kalo Inoculant Co.Patentability A facially trivial implementation of a natural principle or phenomenon aroof nature is not eligible for a patent.
329 U.S. 637
No. 208
February 3, 1947
Transparent-Wrap Mach. Corp. V. Stokes & Smith CoPatent License Terms and Conditions We only hold that the inclusion in the license of the condition requiring the licensee to assign improvement patents is not per se illegal and unenforceable.
325 U.S. 327
No. 656
May 21, 1945
Sinclair & Carrol Co. V. Interchemical CorporationThe District Court held Gessler's patent invalid because anticipated by the prior art, and held that the petitioner's inks did not infringe The Circuit Court reversed, holding the patent valid and infringed. Even assuming that if Gessler had discovered the compound he would be entitled to a patent, he did not discover it. Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle. It is not invention. The judgment below is Reversed.
319 U.S. 359
No. 696
May 24, 1943
Altvater V. FreemanThat the two reissue patents obtained on the surrender of the original patent were invalid; while a party had made payments of royalties under the reissue patents, they did so in protest and that those payments did not substitute the reissue patents for the original patent under the license agreementAlthough a licensee had maintained payments of royalties, a claim of invalidity of the licensed patent still presented a justiciable case or controversy.
316 U.S. 241
No. 855
May 11, 1942
United States V. Univis Lens Co.One licensee was authorized to make the blanks and sell them to other licensees, who in turn were authorized to buy them from the maker at prices fixed and to finish them as lenses according to the patent and to sell the lenses to other licensees, who were authorized to sell them to the public -- the prices in all cases being those fixed by the patent owner.(1)With the sale of the lens blanks for use in manufacturing lenses, the patent owner conferred on the buyer the right to practice the patent with respect to the blanks, and parted with the right to assert its patent monopoly with respect to them, and could no longer control the price at which they might be sold in their unfinished, or their finished, forms. (2) The stipulations for maintenance of prices derived no support from the patent, and must stand on the same footing under the Sherman Act as like stipulations with respect to unpatented commodities.
314 U.S. 488
No. 49
January 5, 1942
Morton Salt Co. V. G.S. Suppiger Co.Whether a court of equity will lend its aid to protect the patent monopoly when respondent is using it as the effective means of restraining competition with its sale of an unpatented article.The trial court, without passing on the issues of validity and infringement, granted summary judgment dismissing the complaint. It took the ground that respondent was making use of the patent to restrain the sale of salt tablets in competition with its own sale of unpatented tablets, by requiring licensees to use with the patented machines only tablets sold by respondent. Affirmed.
305 U.S. 111
Nos. 2 and 56
November 14, 1938
Kellogg Co. V. National Biscuit Co.Expired Patent Usage The term "shredded wheat" is generic, and no exclusive right to its use may beacquired. P. 305 U. S. 116. … Moreover, "shredded wheat" was the general designation of the product made under the product and process patents issued to Perky, upon the expiration whereof there passed to the public not only the right to make the article as it was made during the patent period, but also the right to apply thereto the name by which it had become known. … The right of a competitor, upon expiration of the patents, to make the patented product and call it by its generic name could not be lost by delay, even though the earlier manufacturer, in the period between the expiration of the patents and the time when the competitor became a factor, had spent large sums in advertising the product. The only obligation of the competitor was to identify its own product lest it be mistaken for that of the earlier producer.
304 U.S. 175
No. 357
May 2, 1938
General Talking Pictures Corp. V. Western Electric CoCan an inventor who has filed an application for patent, showing and describing but not claiming certain inventions, obtain a valid patent for said inventions by voluntarily filing a 'divisional' or 'continuation' application for said unclaimed inventions more than two years subsequent to public use of the said unclaimed inventions by him or his assignee or licensee?''Divisional' or 'continuation' applications unauthorizedby any statute- are permitted to give priority from the date of original applications, in effect barring all other inventions from that date and nullifying the statute of two years' public use.
283 U.S. 420
No. 54
May 18, 1931
Carbice Corp. V. American Patents Dev. Co.Patentability Held void for want of novelty and invention.
283 U.S. 27
No. 54
March 9, 1931
Carbice Corp. V. Patents Development Corp.The defendant denied both the validity of the patent and the alleged infringement.Held the patent invalid and no infringement
272 U.S. 476
No. 113
November 23, 1926
United States V. General Electric Co.The sales were to be at prices fixed by the companyThe dealers were genuine agents, not purchasers in disguise, and that the plan was not a device to fix prices after sale and to restrain trade and exercise monopoly in the lamps in violation of the Anti-Trust Act.
243 U.S. 502
No. 715
April 9, 1917
Motion Picture Patents Co. V. Universal Film Mfg. Co.Misuse of patentHolding unenforceable a restriction that a user of a patented film projector must use it to screen only such films as the patentee authorized; tie-in is patent misuse
241 U.S. 257
No. 376
May 22, 1916
American Well Works Co. V. Layne and Bowler Co.Scope of federal question jurisdictionWhether a suit arises under state or federal law determines whether or not federal question jurisdiction exists.
242 U.S. 261
No. 46
December 11, 1916
Minerals Separation V. HydeValidity of a patentHolding valid claims directed to critical proportions of oil to ore in a concentrating ore
235 U.S. 641
Nos. 6, 7
January 11, 1915
Dowagiac Mfg.Co.V. Minnesota Moline Plow Co. & Dowagiac Mfg. Company V. SmithPatent infringementThe facts, which involve the construction and application of certain provisions of the
patent laws of the United States in regard to liability for infringement, are stated in the
opinion.
228 U.S. 22
No. 169
March 24, 1913
The Fair V. Kohler Die and Specialty Co.Jurisdiction Where plaintiff relies upon infringement of his patent and nothing else, the cause, whether good or bad, is one under the laws of he United States, and the Circuit Court has jurisdiction, and jurisdiction cannot be defeated by matter set up in the answer.
229 U.S. 1
No. 951
May 26, 1913
Bauer & Cie. V. O'DonnellPatent rights, royalties and prices.When the patentee, or the person having his rights, sells a machine or instrument whose sole value is in its use, he receives the consideration for its use and he parts with the right to restrict that use. The article, in the language of the court, passes without the limit of the monopoly. That is to say, the patentee or his assignee having in the act of sale received all the royalty or consideration which he claims for the use of his invention in that particular machine or instrument, it is open to the use of the purchaser without further restriction on account of the monopoly of the patentees
225 U.S. 604
No. 179
June 7, 1912
Westinghouse Elec. & Mfg. Co, V. Wagner Elec. & Mfg. Co.Patent infringement and patentee’s rights Where the infringer has sold or used a patented article, the patentee is entitled to recover all of the profits. Where a patent, though using old elements, gives the entire value to the combination, the patentee is entitled to recover from an infringer all the profits. Where profits are made by using an article patented as an entirety, the infringer is liable for all the profits unless he can show, and the burden is on him, that the profits are partly the result of some other things used by him. Where the patent admittedly creates only a part of the profits, the patentee is only entitled to that part, and he must apportion the infringer's profits and show by reliable and satisfactory evidence either what part of the profits are attributable to his patent or that the entire value of the infringing article is attributable to his patent.
224 U.S. 1
No. 20
March 11, 1912
Henry V. A.B. Dick Co.Patent infringement The property right to a patented machine may pass to a purchaser with no right of use, or with only the right to use in a specified way, or at a specified place, or for a specified purpose. The unlimited right of exclusive use which is possessed by and guaranteed to the patentee will be granted if the sale be unconditional. But if the right of use be confined by specific restriction, the use not permitted is necessarily reserved to the patentee. If that reserved control of use of the machine be violated, the patent is thereby invaded. This right to sever ownership and use is deducible from the nature of a patent monopoly and is recognized in the cases.
220 U.S. 428
No. 36
April 10, 1911
Diamond Rubber Co. V. Consolidated Rubber Tire Co.Jurisdiction That the license agreement constitutes a contract not to use the machine in a prohibited manner is plain. That defendants might be sued upon the broken contract, or for its enforcement, or for the forfeiture of
the license, is likewise plain. But if, by the use of the machine in a prohibited way, Miss Skou infringed the patent, then she is also liable to an action under the patent law for infringement.
214 U.S. 366, 367
No. 66
June 1, 1909
Expanded Metal Co. v. Bradford General Fireproofing Co. V. Expanded Metal Co.Expanded Metal Co. v. Bradford General Fireproofing Co. V. Expanded Metal Co.Validity of a patent and infringement An invention or discovery of a process or method involving mechanical operations, and producing a new and useful result, may be within the protection of the Federal statute, and entitle the inventor to a patent for his discovery.
213 U.S. 301, 302
No. 80
April 19, 1909
Leeds and Catlin Co. V. Victor Talking Machine Co.It is alleged that before the invention was patented in the United States the same was patented, or caused to be patented, by Emil Berliner, in foreign countries, and that by reason whereof, under 4887 of the Revised Statutes of the United States (U. S. Comp. Stat. 1901, p. 3382), the letters patent in suit were limited to expire at the same time with said foreign patents and each of them'the statute manifestly assumes that the patent previously granted in a foreign country is one granted for a definite term; and its meaning is that the United States patent shall be so limited as to expire at the same time with such term of the foreign patent.' And it is further said that the duration of the United States patent is not 'limited by any lapsing or forfeiture of any portion of the term of such foreign patent by means of the operation of a condition subsequent, according to the foreign patent.' From these views it follows that there was no abuse of discretion in granting the preliminary injunction, and the decree is affirmed.
210 U.S. 405
No. 202
June 1, 1908
Continental Paper Bag Co. V. Eastern Paper Bag Co.Patent useEstablished the principle that patent holders have no obligation to use their patent.
185 U.S. 403
No. 17
May 5, 1902
Carnegie Steel Co. V. Cambria Iron Co.Patentability Patent held valid
177 U.S. 485
No. 149
April 23, 1900
Mast, Foos & Co.V. Stover Mfg. Co.Comity and Prior ArtsComity is not a rule of law, but one of practice, convenience and expediency. It is something more than mere courtesy, which implies only deference to the opinion of others, since it has a substantial value in securing uniformity of decision, and discouraging repeated litigation of the same question. But its obligation is not imperative. If it were, the indiscreet action of one court might become a precedent, increasing in weight with each successive adjudication, until the whole country was tied down to an unsound principle. Comity persuades; but it does not command. It declares not how a case shall be decided, but how it may with propriety be decided. It recognizes the fact that the primary duty of every court is to dispose of cases according to the law and the facts; in a word, to decide them right. In doing so, the judge is bound to determine them according to his own convictions. If he be clear in those convictions, he should follow them. ……… in determining the question of invention, we must presume the patentee was fully informed of everything which preceded him, whether such were the actual fact or not. There is no doubt the patent laws sometimes fail to do justice to an individual who may, with the light he had before him, have exhibited inventive talent of a high order, and yet be denied a patent by reason of antecedent devices which actually existed, but not to his knowledge, and are only revealed after a careful search in the Patent Office. But the statute (sec. 4886) is inexorable. It denies the patent, if the device were known or used by others in this country before his invention.
155 U.S. 163
No. 4
November 19, 1894
Schillinger V. United StatesPatent use by the governmentWhen the government, by its agent, knowingly uses or permits to be used for its benefit a valid [155 U.S. 163, 179] patented invention, it is liable to suit in the court of claims for the value of such use, and that its liability arises out of contract based upon the constitutional requirement that private property shall not be taken for public use without just compensation.
113 U.S. 213
January 26, 1885
Voss V. FisherValidity of a Patent If the patent is so construed it must be held void, for the evidence in the record is conclusive to show that such a device was made, sold, and used by many persons years before the date of the appellee's patent.
113 U.S. 157
January 19, 1885
Consolidated Safety-Valve Co. V. Crosby Steam Gauge & Valve Co.Validity of a PatentSafety Valve patent held valid.
113 U.S. 97
January 5, 1885
Rowell V. LindsayPatent infringement The patent being for a combination, there can be no infringement unless the combination is infringed. In Prouty v. Ruggles, 16 Pet. 336, 341, it was said: "This combination, composed of all the parts mentioned in the specification, and arranged with reference to each other, and to other parts of the plough in the manner therein described, is stated to be the improvement and is the thing patented. The use of any two of these parts only, or of two combined with a third which is substantially different, in form or in the manner of its arrangement and connection with the others, is, therefore, not the thing patented. It is not the same combination if it substantially differs from it in any of its parts.
113 U.S. 59
January 5, 1885
Hollister V. Benedict & Burnham Mfg. Co.Validity of Patent It is but the display of the expected skill of the calling, and involves only the exercise of the ordinary faculties of reasoning upon the materials supplied by a special knowledge, and the facility of manipulation which results from its habitual and intelligent practice; and is in no sense the creative work of that inventive faculty which it is the purpose of the Constitution and the patent laws to encourage and reward.
104 U.S. 333
1881
Egbert V. LippmannWhether the defense that the patented invention had, with the consent of the inventor, been publicly used for more than two years prior to his application for the original letters is sustained by the testimony in the record.According to the testimony of the complainant, the invention was completed and put into use in 1855. The inventor slept on his rights for eleven years. Letters patent were not applied for till March, 1866. In the meantime, the invention had found its way into general and almost universal use. A great part of the record is taken up with the testimony of the manufacturers and venders of corset steels showing that before he applied for letters, the principle of his device was almost universally used in the manufacture of corset steels. It is fair to presume that, having learned from this general use that there was some value in his invention, he attempted to resume, by his application, what by his acts he had clearly dedicated to the public."An abandonment of an invention to the public may be evinced by the conduct of the inventor at any time, even within the two years named in the law.
100 U.S. 82
1879
Trade-Mark CasesStatutes The Copyright/Patent Clause does not give Congress the power to regulate trademarks.
97 U.S. 126
1878
City of Elizabeth V. American Nicholson Pavement CoDisclosed Patent The use of an invention by the inventor or by persons under his direction, if made in good faith, solely in order to test its qualities, remedy its defects, and bring it to perfection, is not, although others thereby derive a knowledge of it, a public use of it within the meaning of the patent law, and does not preclude him from obtaining letter patent therefor.
94 U.S. 780
March 19, 1877
Cochrane V. DeenerPatentability A process may be patentable irrespective of the particular form of the instrumentalities used. If one of the steps of a process be that a certain substance is to be reduced to a powder, it may not be at all material what instrument or machinery is used to effect that object, whether a hammer, a pestle and mortar, or a mill. Either may be pointed out, but if the patent is not confined to that particular tool or machine, the use of the other would be an infringement, the general process being the same. ... A process is a mode of treatment of certain materials to produce a given result. It is not an act or series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as a piece of machinery. In the language of the patent law, it is an art.
78 U.S. 516
No. 72
December 1, 1870
Seymour V. OsbornePatentabilityImprovements for which a patent may be granted must [78 U.S. 516, 549] be new and useful, within the meaning of the patent law, or the patent will be void, but the requirement of the patent act in that respect is satisfied if the combination is new and the machine is capable of being beneficially used for the purpose for which it was designed, as the law does not require that it should be of such general utility as to supersede all other inventions in practice to accomplish the same object.
68 U.S. 317
1863
Godfrey V. EamesContinuity of the application"no patent shall be held to be invalid by reason of such purchase, sale, or use, prior to the application for a patent as aforesaid except on proof of abandonment of such invention to the public or that such purchase, sale, or prior use has been for more than two years prior to such application for a patent."
56 U.S. 330
1853
Winans v. DenmeadOn such a trial, two questions arise. The first is, what is the thing patented; the second, has that thing been constructed, used, or sold by the defendants. The first is a question of law, to be determined by the court, construing the letters-patent, and the description of the invention and specification of claim annexed to them. The second is a question of fact, to be submitted to a jury.it must be so near to a true circle as substantially to embody the patentee's mode of operation, and thereby attain the same kind of result as was reached by his invention. It is not necessary that the defendant's cars should employ the plaintiff's invention to as good advantage as he employed it, or that the result should be precisely the same in degree. It must be the same in kind, and effected by the employment of his mode of operation in substance. Whether in point of fact the defendant's cars did copy the plaintiff's invention in the sense above explained is a question for the jury, and the court below erred in not leaving that question to them upon the evidence in the case, which tended to prove the affirmative.
56 U.S. 62
1853
O'Reilly V. MorsePatent-eligibilityAn abstract idea, apart from its implementation, is not patent-eligible.
52 U.S. 248
1850
Hotchkiss V. GreenwoodInfringement of a patent for a new and useful improvementIntroduced the concept of non-obviousness as patentability requirement in U.S. patent law.
A combination, if simple and obvious, yet if entirely new, is patentable.
51 U.S. 477
1850
Gayler V. WilderPatent rights The inventor of a new and useful improvement certainly has no exclusive right to it, until he obtains a patent. This right is created by the patent, and no suit can be maintained by the inventor against any one for using it before the patent is issued.
For there was no existing and living knowledge of this improvement, or of its former use, at the time he made the discovery. And whatever benefit any individual may derive from it in the safety of his papers, he owes entirely to the genius and exertions.
27 U.S. 2 Pet. 1
January 1, 1829
Pennock V. DialogueVoluntary abandonment, or negligence, or unreasonable delay in obtaining letters patent, to destroy the right of the patentee'We are clearly of opinion that if an inventor makes his discovery public, looks on and permits others freely to use it, without objection or assertion of claim to the invention, of which the public might take notice; he abandons the inchoate right to the exclusive use of the invention, to which a patent would have entitled him, had it been applied for before such use. ….It is possible that the inventor may not have intended to give the benefit of his discovery to the public; and may have supposed that by giving permission to a particular individual to construct for others the thing patented, he could not be presumed to have done so. But it is not a question of intention, which is involved in the principle which we have laid down; but of legal inference, resulting from the conduct of the inventor, and affecting the interests of the public. It is for the jury to say, whether the evidence brings this case within the principle which has been stated. If it does, the court is of opinion that the plaintiffs are not entitled to a verdict.'
20 U.S. 453
March 20, 1822
Evans V. HettichAcquiescence and consent Because it having been once introduced with the acquiescence and consent of the plaintiff, he could not afterwards avail himself of the objection.
20 U.S. 356
March 20, 1822
Evans V. EatonPlaintiff was not the original inventor of, but that the same was in use prior to the plaintiff's patent.A party cannot entitle himself to a patent for more than his own, invention, and if the patent be for the whole of a machine, he can maintain a title to it only by establishing that it is substantially new in its structure and mode of operation.
16 U.S. 454
1818
Evans V. EatonWhether, under the general patent law, improvements on different machines can be comprehended in the same patent so as to give a right to the exclusive use of several machines separately as well as a right to the exclusive use of those machines in combination.A patent may be for a new and useful art, but it must be practical, it must be applicable and referable to something by which it may be proved to be useful; a mere abstract principle cannot be appropriated by patent. The discovery must not only be useful, but new; it must not have been known or used before in any part of the world.
13 U.S. 199
March 4, 1815
Evans V. JordanSubstantive patent lawRuling on law of evidence.
10 U.S. 324
1810
Tyler V. TuelAssignee’s rights to sue.Assignee of geographically limited patent right could not bring action in their own name.

 

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