List of United States Supreme Court patent case law

Last updated

This is an incomplete list of Supreme Court of the United States cases in the area of patent law.

Contents

19th century

CaseCitationYearVoteClassificationSubject MatterOpinionsStatute InterpretedSummary
19th century
Tyler v. Tuel 10 U.S. 3241810Patent Act of 1793Assignee of geographically-limited patent right could not bring action in their own name.
Evans v. Jordan 13 U.S. 1991815Patent Act of 1800, An Act for the Relief of Oliver Evans
Evans v. Eaton 16 U.S. 4541818Patent Act of 1793, An Act for the Relief of Oliver Evans
Evans v. Eaton 20 U.S. 356March 20, 1822Patent Act of 1793, An Act for the Relief of Oliver EvansA patent on an improved machine must clearly describe how the machine differs from the prior art.
Evans v. Hettich 20 U.S. 4531822Patent Act of 1793, An Act for the Relief of Oliver Evans
Pennock v. Dialogue 27 U.S. (2 Pet.) 11829Commercial exploitation of invention for long period forfeits right to patent.
Grant v. Raymond 31 U.S. (6 Pet.) 2181832improved machine for making hatsChief Justice MarshallPatent Act of 1800Effect of a reissued patent having a corrected specification
Hogg v. Emerson 47 U.S. (6 How.) 4371848improved machine – steam engineJustice WoodburyPatent Act of 1836, Section 17
Gayler v. Wilder 51 U.S. 4771850Novelty means knowledge or use accessible to the public.
Hotchkiss v. Greenwood 52 U.S. 2481850Introduced the concept of non-obviousness as a patentability requirement in U.S. patent law.
Le Roy v. Tatham 55 U.S. 1561852
O'Reilly v. Morse 56 U.S. 621853Patent-eligibility: patent-eligibility (Invalidating method claims for "abstract idea", where steps of method not tied to particular machine). Undue patent claim breadth: Patent holder can only hold a patent on the steps taken, not on every means to the result.
Corning v. Burden 56 U.S. 2521853
Winans v. Denmead 56 U.S. 3301853Established doctrine of equivalents: Even if not literally within the claims, a device infringes if it arrives at the same result in the same way.
Godfrey v. Eames 68 U.S. 3171863Continuing application.
Burr v. Duryee 68 U.S. 5311863
Seymour v. Osborne 78 U.S. 5161870Prior art must enable a person having ordinary skill in the art (PHOSITA) to make and use the invention.
Coffin v. Ogden 85 U.S. 1201873Patent Act of 1836Anticipating invention or discovery must be complete and capable of working to invalidate a patent for lack of novelty, but the prior knowledge or use does not need to be public. The words "by others" only require that the invention be known or used by someone other than the applicant.
Rubber-Tip Pencil Co. v. Howard 87 U.S. 4981874
Cochrane v. Deener 94 U.S. 7801876 (March 19, 1877)Patentability.
City of Elizabeth v. American Nicholson Pavement Co. 97 U.S. 1261878"Prior use" does not include experimental use.
Trade-Mark Cases 100 U.S. 82 18799–0Constitutional basis for trademark regulationMajority:
Miller (unanimous)
The Copyright/Patent Clause does not give Congress the power to regulate trademarks.
Tilghman v. Proctor 102 U.S. 7071880
Sharp v. Dover Stamping Co. 103 U.S. 2501880
Egbert v. Lippmann 104 U.S. 3331881Public use of an invention bars patent.
Atlantic Works v. Brady 107 U.S. 1921883
Hollister v. Benedict & Burnham Mfg. Co. 113 U.S. 591885
Rowell v. Lindsay 113 U.S. 971885
Consolidated Safety-Valve Co. v. Crosby Steam Gauge & Valve Co. 113 U.S. 1571885
Voss v. Fisher 113 U.S. 2131885
White v. Dunbar 119 U.S. 471886
Andrews and others v. Hovey (The Driven-Well Cases)123 U.S. 2671887Improved method of constructing wellsPatent Act of 1839, Section 7
The Telephone Cases 126 U.S. 11888
McClain v. Ortmayer 141 U.S. 4191891
Schillinger v. United States 155 U.S. 1631894Patent infringement claim against the United States cannot be asserted.
Black Diamond Coal Mining Company v. Excelsior Coal Company 156 U.S. 6111895
Consolidated Electric Light Co v. McKeesport Light Co 159 U.S. 4651895
Risdon Iron & Locomotive Works v. Medart 158 U.S. 681895
Boyden Power-Brake Co. v. Westinghouse 170 U.S. 5371898

1900–1920

CaseCitationYearVoteClassificationSubject MatterOpinionsStatute InterpretedSummary
1900–1920
Mast, Foos & Co. v. Stover Mfg. Co. 177 U.S. 4851900
Carnegie Steel Co. v. Cambria Iron Co. 185 U.S. 4031902
Busch v. Jones 184 U.S. 5981902
Continental Paper Bag Co. v. Eastern Paper Bag Co. 210 U.S. 4051908Established the principle that patent holders have no obligation to use their patent.
Leeds and Catlin Co. v. Victor Talking Machine Co. 29 U.S. 495 & 213 U.S. 3251909
Expanded Metal Co. v. Bradford General Fireproofing Co. v. Expanded Metal Co. 214 U.S. 3661909
Diamond Rubber Co. v. Consolidated Rubber Tire Co. 220 U.S. 4281911Inventor not obliged to know scientific theory underlying invention; can be pure empiricist
Henry v. A.B. Dick Co. 224 U.S. 11912The Court found contributory infringement for the sale of the defendant's ink with patent owner's machine (inherency doctrine).
Westinghouse Elec. & Mfg. Co, v. Wagner Elec. & Mfg. Co. 225 U.S. 6041912
Bauer & Cie. v. O'Donnell 229 U.S. 11913Patent right does not include right to dictate the price of the product.
The Fair v. Kohler Die and Specialty Co. 228 U.S. 221913
Dowagiac Mfg. Co. v. Minnesota Moline Plow Co. & Dowagiac Mfg. Company v. Smith 235 U.S. 6411915
Minerals Separation v. Hyde 242 U.S. 2611916Holding valid claims directed to critical proportions of oil to ore in a concentrating ore.
American Well Works Co. v. Layne and Bowler Co. 241 U.S. 2571916
Motion Picture Patents Co. v. Universal Film Mfg. Co. 243 U.S. 5021917Holding 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

1921–1959

CaseCitationYearVoteClassificationSubject MatterOpinionsStatute InterpretedSummary
1921–1959
Eibel Process Co. v. Minnesota & Ontario Paper Co. 261 U.S. 451923
United States v. General Electric Co. 272 U.S. 4761926A patentee who has granted a single license to a competitor to manufacture the patented product may lawfully fix the price at which the licensee may sell the product.
American Fruit Growers v. Brogdex Co. 283 U.S. 11931
Carbice Corp. v. Patents Development Corp. 283 U.S. 271931
Carbice Corp. v. American Patents Dev. Co. 283 U.S. 4201931
U.S. v. Dubilier Condenser Corporation 289 U.S. 1781933
Smith v. Snow 294 U.S. 11935
Waxham v. Smith 294 U.S. 201935
Keystone Driller Co. v. Northwest Engineering Corp. 294 U.S. 421935
General Talking Pictures Corp. v. Western Electric Co. 304 U.S. 1751938Upholding enforceability of field-of-use limitations in a patent license
Kellogg Co. v. National Biscuit Co. 305 U.S. 1111938Once a patent has expired, the benefits of the invention are to be enjoyed by the public and may not be extended by trademark.
Mackay Radio & Telegraph Co. v. Radio Corporation of America 306 U.S. 6181939
Morton Salt Co. v. G.S. Suppiger Co. 314 U.S. 4881942Patent misuse.
United States v. Univis Lens Co. 316 U.S. 2411942Explaining the exhaustion doctrine and applying it to find an antitrust violation because Univis' ownership of patents did not exclude its restrictive practices from the antitrust laws.
Altvater v. Freeman 319 U.S. 3591943Although a licensee had maintained payments of royalties, a claim of invalidity of the licensed patent still presented a justiciable case or controversy.
Universal Oil Products Co. v. Globe Oil & Refining Co. 322 U.S. 4711944
Special Equipment Co. v. Coe 324 U.S. 3701945
Sinclair & Carrol Co. v. Interchemical Corporation 325 U.S. 3271945Selection of a chemical from a catalog based on predetermined qualifications is obvious.
Transparent-Wrap Mach. Corp. v. Stokes & Smith Co. 329 U.S. 637Feb. 3, 1947
Funk Brothers Seed Co. v. Kalo Inoculant Co. 333 U.S. 1271948A facially trivial implementation of a natural principle or phenomenon of nature is not eligible for a patent.
Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp. 340 U.S. 1471950Only when the whole in some way exceeds the sum of its parts is a combination of old elements patentable.
Graver Tank & Manufacturing Co. v. Linde Air Products Co. 339 U.S. 6051950Introduced the doctrine of equivalents.
Kerotest Mfg. Co. v. C-O-Two Fire Eqpt. Co. 342 U.S. 1801952
Besser Mfg. v. United States 343 U.S. 4441952Compulsory licensing remedy in patent antitrust case; joint agreement not to license (veto)
Sanford v. Kepner 344 U.S. 131952
U.S. Gypsum v. National Gypsum 352 U.S. 4571957 https://www.oyez.org/cases/1956/11
Fourco Glass Co. v. Transmirra Products Corp. 353 U.S. 222 1957

1960–1969

CaseCitationYearVoteClassificationSubject MatterOpinionsStatute InterpretedSummary
1960–1969
Aro Mfg. Co. v. Convertible Top Replacement Co. (Aro I)365 U.S. 336Feb. 27, 1961Redefined the doctrine of repair and reconstruction
Schnell v. Eckrich & Sons 365 U.S. 2601961
Glidden v. Zdanok 370 U.S. 5301962CPPA court
White Motor v. U.S. 83 U.S. 2531963antitrust, tying
Sperry v. Florida 373 U.S. 3791963patent practice
U.S. v. Singer Mfg. Co. 374 U.S. 1741963 Sherman Act
Wilbur-Ellis Co. v. Kuther 377 U.S. 4221964Extended the repair-reconstruction doctrine of Aro Mfg. Co. v. Convertible Top Replacement Co.
Sears, Roebuck & Co. v. Stiffel Co. 376 U.S. 2251964Companion to Compco Corp. v. Day-Brite Lighting, Inc.. State unfair competition law.
Compco Corp. v. Day-Brite Lighting, Inc. 376 U.S. 2341964Held that state law that, in effect, duplicated the protections of the US patent laws was preempted by federal law.
Aro Mfg. Co. v. Convertible Top Replacement Co. (Aro II)377 U.S. 4761964
Brulotte v. Thys Co. 379 U.S. 291964Royalties after expiration of patent non-enforceable
Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp. 382 U.S. 1721965antitrust
Hazeltine Research, Inc. v. Brenner 382 U.S. 2521965prior art
Graham v. John Deere Co. 383 U.S. 1Feb. 21, 1966Clarified the requirement of nonobviousness.
United States v. Adams 383 U.S. 39Feb. 21, 1965Wet battery including a combination of known elements not obvious because the operating characteristics were unexpected and improved over then-existing wet batteries.
Brenner v. Manson 383 U.S. 519March 21, 1966
Zenith Radio Corp. v. Hazeltine Research, Inc. (Zenith I)395 U.S. 1001969
Lear, Inc. v. Adkins 395 U.S. 6531969Overturned the doctrine of licensee estoppel.
Anderson's-Black Rock, Inc. v. Pavement Salvage Co. 396 U.S. 571969Related to obviousness.

1970–1979

CaseCitationYearVoteClassificationSubject MatterOpinionsStatute InterpretedSummary
1970–1979
Zenith Radio Corp. v. Hazeltine Research, Inc. (Zenith II)401 U.S. 3211971 Patent misuse.
Blonder-Tongue v. University of Illinois 402 U.S. 3131971 Collateral estoppel.
Deepsouth Packing Co. v. Laitram Corp. 406 U.S. 5181972
Brunette Mach. Works, Limited v. Kockum Industries, Inc. 406 U.S. 7061972
Gottschalk v. Benson 409 U.S. 631972Held that an algorithm is not patentable if the claim would preempt all uses of the algorithm.
United States v. Glaxo Group Ltd. 410 U.S. 521973Relation between patent law and antitrust law.
Kewanee Oil v. Bicron 416 U.S. 470 1974State trade secret law not preempted by patent law.
Dann v. Johnston 425 U.S. 2191976Patentability of a claim for a business method patent (but the decision turns on obviousness rather than patent-eligibility).
Sakraida v. Ag Pro 425 U.S. 2731976An invention that arranges old elements with each performing the same function it had been known to perform fell under the heading of "work of the skillful mechanic, not of that of the inventor". See Non-obviousness in United States patent law.
Parker v. Flook 437 U.S. 5841978Ruled that a mathematical algorithm is not patentable if its application itself is not novel.
Aronson v. Quick Point Pencil 440 U.S. 2571979When a patent is not issued (or found invalid after issuance) a licensee is not required to pay for using the invention, even though the license terms mandate otherwise under a State Law. [1]

1980–1989

CaseCitationYearVoteClassificationSubject MatterOpinionsStatute InterpretedSummary
1980–1989
Diamond v. Chakrabarty 447 U.S. 3031980Patentable subject matter: A genetically-modified micro-organism is patentable.
Dawson Chemical Co. v. Rohm and Haas Co. 444 U.S. 10121980 Patent misuse.
Diamond v. Diehr 450 U.S. 1751981The execution of a process controlled by running a computer program was patentable.
General Motors Corp. v. Devex Corp. 461 U.S. 6481983
Dennison Mfg. Co. v. Panduit Corp. 475 U.S. 8091986Nonobviousness standard of review [2]
Christianson v. Colt Industries Operating Corp. 486 U.S. 8001988Federal Circuit jurisdiction.
Bonito Boats, Inc. v. Thunder Craft Boats, Inc. 489 U.S. 1411989State law partially duplicating and therefore interfering with federal patent law. Reaffirmed Stiffel .

1990–1999

CaseCitationYearVoteClassificationSubject MatterOpinionsStatute InterpretedSummary
1990–1999
Eli Lilly & Co. v. Medtronic, Inc. 496 U.S. 6611990Held 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.
Cardinal Chemical Co. v. Morton Intern., Inc. 508 U.S. 831993
Asgrow Seed Co. v. Winterboer 513 U.S. 1791995 PVPA
Markman v. Westview Instruments, Inc. 517 U.S. 3701996Held that an issue [of claims interpretation/construction] designated as a matter of law is resolved by the judge [and subject to de novo review by appellate court], and an issue construed as a question of fact is determined by the jury.
Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co. 520 U.S. 171997.Updated the doctrine of equivalents.
Pfaff v. Wells Electronics, Inc. 525 U.S. 551998Determined what constitutes being "on sale" for the purposes of barring the grant of a patent for an invention.
Dickinson v. Zurko 527 U.S. 1501999APA standards of review; PTO fact-finding gets "substantial evidence" standard on review
Florida Prepaid v. College Savings Bank 527 U.S. 6271999Unconstitutional for Congress to eliminate states' 11th Amendment sovereign immunity against patent infringements.

2000–2009

CaseCitationYearVoteClassificationSubject MatterOpinionsStatute InterpretedSummary
2000–2009
Nelson v. Adams 529 U.S. 4602000Procedure.
J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc. 534 U.S. 1242001Utility patents & plant patents. Plant breeds are patentable subject matter.
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. 535 U.S. 7222002In the doctrine of equivalents, prosecution history estoppel creates only a rebuttable presumption against infringement.
Holmes Group v. Vornado 535 U.S. 8262002Patent issues raised in counterclaim do not give rise to Federal Circuit jurisdiction
Merck KGaA v. Integra Lifesciences I, Ltd. 545 U.S. 1932005Related to Research exemption.
EBay Inc. v. MercExchange, L.L.C. 547 U.S. 3882006Ruled that an injunction should not automatically issue based on a finding of patent infringement.
Illinois Tool Works Inc. v. Independent Ink, Inc. 547 U.S. 282006Related to "tying" arrangements of patented products.
LabCorp v. Metabolite, Inc. 548 U.S. 124June 22, 2006Dismissed as improvidently granted. Breyer dissented from the DIG, with Stevens & Souter joining.
MedImmune, Inc. v. Genentech, Inc. 549 U.S. 11820078-1Standing of a Paying Licensee to Challenge Validity of Licensed PatentActual Controversy RequirementMedImmune was not required to break its contract before suing, because "The rule that a plaintiff must [...] risk treble damages and the loss of 80 percent of its business[] before seeking a declaration of its actively contested legal rights finds no support in Article III." The Declaratory Judgment Act only requires that disputes be non-hypothetical and non-abstract. The mere fact that royalties were still being paid, the Court ruled, was not sufficient to remove the courts' jurisdiction under Article III.28 USC 2201Declaratory judgment jurisdiction is available to patent licensees who continue to pay royalty and have not breached the licensing agreement.
KSR v. Teleflex 550 U.S. 3982007Concerning the issue of obviousness as applied to patent claims.
Microsoft v. AT&T 550 U.S. 4372007Related to international enforceability of U.S. software patents.
Quanta v. LG Electronics 553 U.S. 6172008 Patent exhaustion and its applicability to certain types of method patents.

2010–2019

CaseCitationYearVoteClassificationSubject MatterOpinionsStatute InterpretedSummary
2010–2019
Bilski v. Kappos 561 U.S. 5932010Refocused subject matter eligibility test on the three judicial exclusions "laws of nature, physical phenomena, and abstract ideas."
Global-Tech Appliances, Inc. v. SEB S.A. 563 U.S. 7542011
Stanford v. Roche 563 U.S. 7762011 Bayh-Dole
Microsoft Corp. v. i4i Ltd. Partnership 564 U.S. 912011Invalidity must be shown by clear and convincing evidence.
Mayo Collaborative Services v. Prometheus Laboratories, Inc. 566 U.S. 6620129-0Patent EligibilityMedical TreatmentThe patent claims say nothing significantly more than apply the law, i.e., apply the natural laws that they describe and that simple additional instruction, by itself, is insufficient to transform an otherwise unpatentable claim into a patentable one.35 U.S.C. 101Invalidated attempt to patent natural law.
Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S 566 U.S. 399, 132 S.Ct. 1670April 17, 2012
Kappos v. Hyatt 566 U.S. 4312012
Bowman v. Monsanto 569 U.S. 2782013Patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder's permission.
Gunn v. Minton 568 U.S. 2512013
Association for Molecular Pathology v. Myriad Genetics 569 U.S. 57620139-0Patent EligibilityIsolation of Genetic MaterialsMyriad's claims are not saved by the fact that isolating DNA from the human genome severs the chemical bonds that bind gene molecules together. The claims are not expressed in terms of chemical composition nor do they rely on the chemical changes resulting from the isolation of a particular DNA section. Consequently Myriad's patent on BRCA gene—on the BRCA gene, are invalid. But because cDNA is not naturally occurring but is instead the product of human ingenuity, we conclude that cDNA is distinguishable from not-patentable products of nature.35 U.S.C. 101Invalidated patents on naturally occurring DNA segments, but not on cDNA.
FTC v. Actavis, Inc. 570 U.S. 1362013Pay-for-delay is subject to antitrust analysis
Alice Corp. v. CLS Bank International 573 U.S. 20820149-0Patent EligibilityBusiness Transaction and HedgingUnder Section 101 precedence and instruction to apply an abstract idea using a generic computer is not enough to transform that abstract idea into a patent-eligible invention. Petitioner's system and media claims are patent-ineligible, too, because they add nothing of substance to the underlying idea.35 USC 101Invalidated patent based on abstract idea.
Medtronic v. Boston Scientific 571 U.S. 191, 134 S. Ct. 8432014Declaratory Judgment ActBurden of persuasion on infringement in declaratory judgment cases
Octane Fitness v. Icon Health & Fitness 572 U.S. 54520149-0DamagesAttorney FeesAn "exceptional" case is simply one that stands out from others because of its frivolous nature relating to the legal arguments or merits of the claim. District courts may determine exceptionalness by considering the totality of the circumstances on a case-by-case basis. The Court rejected the appellate court's "clear and convincing evidence" standard that successful patent litigants would have to establish in order to receive fees. Instead, the Court held that a simple discretionary inquiry would serve to determine whether granting attorney fees is appropriate.35 U.S.C. 285The 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.
Highmark v. Allcare 572 U.S. 5592014Fee-shifting.
Limelight Networks v. Akamai Technologies 572 U.S. 91520149-0Patent InfringementInduced InfringementA defendant cannot be liable for inducing infringement of a patent unless some party directly infringes the patentee's legal rights. Direct infringement of a method patent in turn can only occur where all steps of the method are performed because the patentee has a legally protected interest only in the claim's set of steps as a whole. A method patent steps have not all been performed as claims by the patent unless they are all attributable to the same party.35 U.S.C. §271(a) and (b)Induced Infringement liability requires direct infringement. The en banc federal circuit court of appeal held that even assuming that Limelight did not directly infringe the patent, the evidence could nevertheless support a finding of inducement of infringement because the defendant who performs some steps of the patent and encourages others to perform the remaining steps may be liable for inducement even if all the steps are not attributable to the defendant. SCOTUS reverses this position.
Nautilus, Inc. v. Biosig Instruments, Inc. 572 U.S. 89820149-0Patentability RequirementClaim DefinitenessDetermining whether a patent claim is sufficiently definite must be done by evaluating the patent with the perspective of an individual learned in the relevant field, a standard that accepts a certain amount of ambiguity in the patent claim. However, because patents serve a public service function, patent claims must be definite enough to appraise the public at large as to what has or has not been patented yet. In attempting to balance these interests, the Court held that a patent is sufficiently definite when the patent taken as a whole, which includes the patent application, the U.S. Patent and Trademark Office's response, and any amendments made by the applicant, informs those learned in the relevant field of the scope of the invention with reasonable certainty.35 U.S.C. §112SCOTUS rejected the Court of Appeals' indefiniteness test of whether a patent claim is "amenable to construction of insolubly ambiguous" because such standard is insufficiently exacting. The asserted test is that if its claims read in light of the patent's specification and prosecution history failed to inform those skilled in the art about the scope of the invention with reasonable certainty, then a patent is invalid for indefiniteness. A definite claim takes into account the inherent limitations of languages and is meant to be understood by a PHOSITA.
Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. 574 U.S. 31820157-2Standard of ReviewClaim ConstructionA federal appellate court could only overturn a district court's finding of fact if those findings were determined to be "clearly erroneous." Federal Rule of Civil Procedure 52(a)(6) established this standard without any exceptions, and there was no reason to create one in this case. Because the construction of a patent claim is essentially a factual determination, it should be governed by this well-established standard. Therefore, while an appellate court may still review a lower court's construction of a claim de novo, to overturn the lower court's ruling, the appellate court must find that the lower court has made a clear error with respect to the findings of fact.Common LawClaim interpretation in patent, standard of review by the Federal Circuit.
Commil USA, LLC v. Cisco Systems, Inc. 575 U.S. 63220156-2Defense to Indirect InfringementStandard of Induced InfringementA defendant's good-faith belief that a patent is invalid is not a defense to a claim of induced infringement.Case LawAfter a trial court awarded damages to Commil, Cisco appealed and argued that the trial court erroneously instructed the jury that the standard for inducement was negligence and precluded the submission of evidence of Cisco's good-faith belief that Commil's patent was invalid. The U.S. Court of Appeals for the Federal Circuit reversed and held that the standard for induced infringement is actual knowledge or willful blindness, and therefore that a good-faith belief of patent invalidity was a defense to claims of induced infringement. SCOTUS reversed.
Kimble v. Marvel Entertainment, LLC 576 U.S. 446, 135 S. Ct. 240120156-3Defense Based on Patent MisuseRoyalty Payments Beyond Patent TermThe precedent established in Brulotte v. Thys Co.—that a patentee cannot receive royalty payments after the patent has expired—should be upheld because there was no sufficient reason to overturn it.Case Law[Patent misuse] doctrine is governed by patent policy, not antitrust policy; not necessary to show anticompetive impact in misuse case
Halo Electronics, Inc. v. Pulse Electronics, Inc. 579 U.S. 9320169-0DamagesWillful Infringement DeterminationThe plain language of Section 284 simply stated that courts "may increase the damages up to three times the amount found or assessed." There is no language that creates the kind of test (referring to the two-part test in In re Seagate.) that the U.S. Court of Appeals for the Federal Circuit applied and precedent had established that the word "may" connotes judicial discretion. Enhanced damages serve as a sanction for egregious infringement behavior (e.g., willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or acting like a pirate).35 U.S.C. §284The Seagate two-part test that required both objective and subjective bases is overruled. This case reviewed both Halo Electronics, Inc. v. Pulse Electronics, Inc. and Stryker Corp. v. Zimmer, Inc., both of which used the Seagate two-part test to determine willful infringement as the basis for deciding enhanced damages per Section 284. SCOTUS held the test overly rigid and could insulate some of worst patent infringers from liability for enhanced damages. Courts should take into account all related factors in applying Section 284.
Samsung Electronics Co. v. Apple Inc. 580 U.S. 5320168-0DamagesDesign Patent DamagesFor the purpose of calculating damages in a patent infringement action, the infringing "article of manufacture" may be defined as either an end product sold to a consumer or as a component of that product.35 U.S.C. §289The relevant text of the Patent Act encompasses both an end product sold to a consumer as well as a component of that product. The fact that a component may be incorporated into the larger end product does not place it outside the category of an "article of manufacture." Therefore, the U.S. Court of Appeals for the Federal Circuit erred in interpreting that phrase too narrowly to only refer to the end product. Under the proper reading of the phrase, an infringer will sometimes be liable for the total profit from the component of the end product, but the Court declined to determine whether that is the case.
Oil States Energy Services, LLC v. Greene's Energy Group, LLC 138 S.Ct. 13652018
SAS Institute Inc. v. Iancu 138 S.Ct. 13482018
WesternGeco LLC v. ION Geophysical Corp. 138 S.Ct. 21292018
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc. 139 S.Ct. 6282019
Return Mail Inc. v. United States Postal Service 139 S.Ct. 18532019
Peter v. NantKwest, Inc. 589 U.S. __, 140 S.Ct. 36520199-0DamagesAttorney feesUSPTO cannot recover the salaries of its legal personnel under section 145 of the Patent Act.35 U.S.C § 145Patent applicants who are unhappy with the final decision of the USPTO's Patent Trial and Appeal Board have two options to appeal: they can appeal to the Federal Circuit (which conducts a limited review of the Patent Trial and Appeal Board's decision) or sue the USPTO Director in the Eastern District of Virginia (which can consider new evidence not presented to the Patent Trial and Appeal Board). Because the second option is more expensive, litigants who choose it must pay all of the government's expenses regardless of whether they win or lose. The Supreme Court held that "all expenses" did not include the government's attorney fees.

2020–2029

CaseCitationYearVoteClassificationSubject MatterOpinionsStatute InterpretedSummary
2020–present
Thryv, Inc. v. Click-To-Call Technologies, LP 140 S.Ct. 13672020
United States v. Arthrex, Inc. 141 S.Ct. 19702021
Minerva Surgical, Inc. v. Hologic, Inc. 141 S.Ct. 22982021
Amgen Inc. v. Sanofi 598 U.S. 5942023


See also

Related Research Articles

Diamond v. Chakrabarty, 447 U.S. 303 (1980), was a United States Supreme Court case dealing with whether living organisms can be patented. Writing for a five-justice majority, Chief Justice Warren E. Burger held that human-made bacteria could be patented under the patent laws of the United States because such an invention constituted a "manufacture" or "composition of matter". Justice William J. Brennan Jr., along with Justices Byron White, Thurgood Marshall, and Lewis F. Powell Jr., dissented from the Court's ruling, arguing that because Congress had not expressly authorized the patenting of biological organisms, the Court should not extend patent law to cover them.

Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605 (1950), was an important United States Supreme Court decision in the area of patent law, establishing the propriety of the doctrine of equivalents, and explaining how and when it was to be used.

Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), was a United States Supreme Court decision in the area of patent law, affirming the continued vitality of the doctrine of equivalents while making some important refinements to the doctrine.

Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), was a United States Supreme Court decision in the area of patent law that examined the relationship between the doctrine of equivalents and the doctrine of prosecution history estoppel.

Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405 (1908), was a case in which the Supreme Court of the United States established the principle that patent holders have no obligation to use their patent.

Graham v. John Deere Co., 383 U.S. 1 (1966), was a case in which the United States Supreme Court clarified the nonobviousness requirement in United States patent law, set forth 14 years earlier in Patent Act of 1952 and codified as 35 U.S.C. § 103.

Eli Lilly and Company v. Medtronic, Inc., 496 U.S. 661 (1990), is a United States Supreme Court case related to patent infringement in the medical device industry. It held that 35 U.S.C. § 271(e)(1) of United States patent law exempted premarketing activity conducted to gain approval of a device under the Federal Food, Drug, and Cosmetic Act from a finding of infringement.

Gottschalk v. Benson, 409 U.S. 63 (1972), was a United States Supreme Court case in which the Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because "the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." That would be tantamount to allowing a patent on an abstract idea, contrary to precedent dating back to the middle of the 19th century. The ruling stated "Direct attempts to patent programs have been rejected [and] indirect attempts to obtain patents and avoid the rejection ... have confused the issue further and should not be permitted." The case was argued on October 16, 1972, and was decided November 20, 1972.

Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007), was a United States Supreme Court case in which the Supreme Court reversed a previous decision by the Federal Circuit and ruled in favor of Microsoft, holding that Microsoft was not liable for infringement on AT&T's patent under 35 U.S.C. § 271(f).

MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), was a decision by the Supreme Court of the United States involving patent law. It arose from a lawsuit filed by MedImmune which challenged one of the Cabilly patents issued to Genentech. One of the central issues was whether a licensee retained the right to challenge a licensed patent, or whether this right was forfeited upon signing of the license agreement. The case related indirectly to past debate over whether the US should change to a first to file patent system - in 2011, President Obama signed the Leahy-Smith America Invents Act, which shifted the United States to a first-inventor-to-file patent system.

Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964), was a United States Supreme Court case that limited state law on unfair competition when it prevents the copying of an item that is not covered by a patent.

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989), is a decision of the United States Supreme Court holding a state anti-plug molding law preempted because it partially duplicated and therefore interfered with the balance Congress had struck by federal patent law. The decision reaffirmed the Supreme Court's earlier decision in Sears, Roebuck & Co. v. Stiffel Co. (1964), which held a state unfair competition law preempted on the same ground.

United States v. Univis Lens Co., 316 U.S. 241 (1942), is a decision of the United States Supreme Court explaining the exhaustion doctrine and applying it to find an antitrust violation because Univis's ownership of patents did not exclude its restrictive practices from the antitrust laws. The Univis case stands for the proposition that when an article sold by a patent holder or one whom it has authorized to sell it embodies the essential features of a patented invention, the effect of the sale is to terminate any right of the patent holder under patent law to control the purchaser's further disposition or use of the article itself and of articles into which it is incorporated as a component or precursor.

United States v. General Electric Co., 272 U.S. 476 (1926), is a decision of the United States Supreme Court holding that a patentee who has granted a single license to a competitor to manufacture the patented product may lawfully fix the price at which the licensee may sell the product.

References

  1. "Aronson v. Quick Point Pencil Co., 440 U.S. 257 (1979)".
  2. "Dennison MFG. Co. V. Panduit Corp., 475 U.S. 809 (1986)".

Sources