Forty-eight of the fifty states and the federal district are contiguous and located in North America between Canada and Mexico. The state of Alaska is in the northwest corner of North America, bordered by Canada to the east, the state of Hawaii is an archipelago in the mid-Pacific Ocean. The U. S. territories are scattered about the Pacific Ocean, the geography, climate and wildlife of the country are extremely diverse. At 3.8 million square miles and with over 324 million people, the United States is the worlds third- or fourth-largest country by area, third-largest by land area. It is one of the worlds most ethnically diverse and multicultural nations, paleo-Indians migrated from Asia to the North American mainland at least 15,000 years ago. European colonization began in the 16th century, the United States emerged from 13 British colonies along the East Coast. Numerous disputes between Great Britain and the following the Seven Years War led to the American Revolution. On July 4,1776, during the course of the American Revolutionary War, the war ended in 1783 with recognition of the independence of the United States by Great Britain, representing the first successful war of independence against a European power. The current constitution was adopted in 1788, after the Articles of Confederation, the first ten amendments, collectively named the Bill of Rights, were ratified in 1791 and designed to guarantee many fundamental civil liberties. During the second half of the 19th century, the American Civil War led to the end of slavery in the country. By the end of century, the United States extended into the Pacific Ocean. The Spanish–American War and World War I confirmed the status as a global military power. The end of the Cold War and the dissolution of the Soviet Union in 1991 left the United States as the sole superpower. The U. S. is a member of the United Nations, World Bank, International Monetary Fund, Organization of American States. The United States is a developed country, with the worlds largest economy by nominal GDP. It ranks highly in several measures of performance, including average wage, human development, per capita GDP. While the U. S. economy is considered post-industrial, characterized by the dominance of services and knowledge economy, the United States is a prominent political and cultural force internationally, and a leader in scientific research and technological innovations. In 1507, the German cartographer Martin Waldseemüller produced a map on which he named the lands of the Western Hemisphere America after the Italian explorer and cartographer Amerigo Vespucci
Case law is the set of existing rulings which made new interpretations of law and, therefore, can be cited as precedents. In other countries, such as most European countries, the term is applied to any set of rulings on law which is guided by previous rulings, for example, patent office case law. Trials and hearings which are not selected as courts of first impression do not have rulings that become law, therefore. The legal systems of the Nordic countries are included among the civil law systems, but as a separate branch. In Sweden, for instance, case law plays a more important role than in some of the Continental civil law systems. The two highest courts, the Supreme Court and the Supreme Administrative Court, have the right to set precedent which is in practice binding on all future application of the law. Courts of appeal, both courts and administrative courts may also issue decisions that act as guides for the application of the law. In the common law tradition, courts decide the law applicable to a case by interpreting statutes and applying precedents which record how, normally, the burden rests with litigants to appeal rulings to the higher courts. If a judge acts against precedent and the case is not appealed, the decision will stand. A lower court may not rule against a binding precedent, even if it feels that it is unjust and this may happen several times as the case works its way through successive appeals. High Trees House Ltd K. B.130, the different roles of case law in civil and common law traditions create differences in the way that courts render decisions. By contrast, decisions in civil law jurisdictions are generally very short, some pluralist systems, such as Scots law in Scotland and so-called civil law jurisdictions in Quebec and Louisiana, do not precisely fit into the dual common-civil law system classifications. Such systems may have heavily influenced by the Anglo-American common law tradition, however. Because of their position between the two systems of law, these types of legal systems are sometimes referred to as mixed systems of law. Law professors in common law traditions play a smaller role in developing case law than professors in civil law traditions. Historically, common law courts relied little on legal scholarship, thus, at the turn of the twentieth century, thus common law systems are adopting one of the approaches long common in civil law jurisdictions. Judges may refer to types of persuasive authority to reach a decision in a case. Widely cited non-binding sources include legal encyclopedias such as Corpus Juris Secundum and Halsburys Laws of England, some bodies are given statutory powers to issue Guidance with persuasive authority or similar statutory effect, such as the Highway Code
A patent is a set of exclusive rights granted by a sovereign state to an inventor or assignee for a limited period of time in exchange for detailed public disclosure of an invention. An invention is a solution to a technological problem and is a product or a process. Patents are a form of intellectual property, the procedure for granting patents, requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a patent application must include one or more claims that define the invention. A patent may include many claims, each of which defines a specific property right and these claims must meet relevant patentability requirements, such as novelty, usefulness, and non-obviousness. Nevertheless, there are variations on what is patentable subject matter from country to country, the word patent originates from the Latin patere, which means to lay open. More directly, it is a version of the term letters patent. Similar grants included land patents, which were land grants by early state governments in the USA, and printing patents, a precursor of modern copyright. In modern usage, the term patent usually refers to the granted to anyone who invents any new, useful. The additional qualification utility patent is used to distinguish the primary meaning from these other types of patents. Particular species of patents for inventions include biological patents, business method patents, chemical patents, the period of protection was 10 years. These were mostly in the field of glass making, as Venetians emigrated, they sought similar patent protection in their new homes. This led to the diffusion of patent systems to other countries, by the 16th century, the English Crown would habitually abuse the granting of letters patent for monopolies. After public outcry, King James I of England was forced to revoke all existing monopolies, the Statute became the foundation for later developments in patent law in England and elsewhere. Important developments in patent law emerged during the 18th century through a process of judicial interpretation of the law. During the reign of Queen Anne, patent applications were required to supply a complete specification of the principles of operation of the invention for public access. Influenced by the philosophy of John Locke, the granting of patents began to be viewed as a form of property right. The English legal system became the foundation for patent law in countries with a common law heritage, including the United States, New Zealand, in the Thirteen Colonies, inventors could obtain patents through petition to a given colonys legislature
Alice Corp. v. CLS Bank International
Alice Corp. v. CLS Bank International,573 U. S. __,134 S. Ct.2347, was a 2014 decision of the United States Supreme Court about patentable subject matter. Although the Alice opinion did not mention software as such, the case was considered as a decision on software patents or patents on software for business methods. Alice alleged that CLS Bank International and CLS Services Ltd. began to use technology in 2002. Alice countersued CLS Bank for infringement of the patents and it declared each of Alices patents invalid because the claims concerned abstract ideas, which are not eligible for patent protection under 35 U. S. C. In so holding, the court relied on Bilski v. Alice appealed the decision to the United States Court of Appeals for the Federal Circuit. A panel of the court decided by 2-1 in July 2012 to reverse the lower courts decision. But the members of the Federal Circuit vacated that decision and set the case for reargument en banc, a very fractured panel of ten judges of the Federal Circuit issued seven different opinions, with no single opinion supported by a majority on all points. Seven of the ten judges upheld the courts decision that Alices method claims and computer-readable-medium claims were not patent-eligible. Five of the ten judges upheld the courts decision that Alices computer-systems claims were not patent eligible. The panel as a whole did not agree on a standard to determine whether a computer-implemented invention is a patent-ineligible abstract idea. In the Supreme Courts opinion in the case, the analysis was generally similar, the Supreme Court adopted a similar principle in its opinion. Chief Judge Rader and Circuit Judges Linn, Moore, and OMalley filed an opinion concurring in part and their patent-eligibility analysis focused on whether the claim, as a whole, was limited to an application of an abstract idea, or was merely a recitation of the abstract idea. They would have held Alices system claims patent eligible because they were limited to a computer-implemented application, referencing Einstein, he stated that even gravity is not a natural law. Judge Newman concurred in part and dissented in part, calling for the Federal Circuit to clarify the interpretation of §101 and she would have held all of Alices claims patent eligible. Judges Linn and OMalley dissented, arguing that all claims were patent eligible, and the USPTO itself for the United States. Nearly all such briefs argued that the patents should be invalidated and they disagreed, however, as to the proper reasoning. Microsoft, Adobe and Hewlett-Packard argued it was nothing more than a business method. Free Software Foundation and others argued that no software should be patented unless it passes machine-or-transformation test, IBM disagreed with the abstract ideas reasoning and argued that the patent should instead be struck down for being too obvious
Altvater v. Freeman
List of United States Supreme Court cases, volume 319 MedImmune, Inc. v. Genentech, Inc.549 U. S.118 Maines, Ruanne Neighbour. Declaratory Judgments, Patent Litigation, Justiciable Controversy, california Law Review, Vol.37, No.3
American Well Works Co. v. Layne & Bowler Co.
American Well Works Co. v. Layne & Bowler Co.241 U. S.257, was a United States Supreme Court case governing the scope of federal question jurisdiction. Plaintiff American Well Works Co. manufactured, sold, and held the patent to a type of pump. Layne & Bowler had also filed lawsuits against others who used plaintiffs pump, American Well Works filed suit in the Arkansas state court, claiming actual damages of $50,000 as well as punitive damages. Layne & Bowler removed the suit to the United States District Court for the Eastern District of Arkansas on the grounds that the courts have exclusive jurisdiction over matters of patent law. The district court dismissed the action. Plaintiff appealed directly to the United States Supreme Court, did the district court properly dismiss the matter, i. e. was federal question jurisdiction present here. In a brief opinion, Justice Holmes wrote that claim was based upon the allegedly defamatory actions and statements of the defendant. The plaintiff alleged that defendants conduct had damaged its business, and was not bringing suit to prove who had title to the patent. Whether or not defendants statements about the patent were true was simply a piece of evidence to be examine by the trial court. Thus, under the rule stated by this case, whether a suit arises under state or federal law determines whether or not federal question jurisdiction exists. It is therefore consistent with the well-pleaded complaint rule set forth in Louisville & Nashville Railroad Company v. Mottley,211 U. S.149, just eight years earlier. Justice McKenna dissented without opinion, on the grounds that he felt the case involved a direct and substantial controversy under the patent laws
Apple Inc. litigation
The multinational technology corporation Apple Inc. In particular, Apple is known for and promotes itself as actively and aggressively enforcing its intellectual property interests, from the 1980s to the present, Apple has been plaintiff or defendant in civil actions in the United States and other countries. Some of these actions have determined significant case law for the technology industry and many have captured the attention of the public. Steve Jobs alone was an inventor on over 300 design. Between January 2008 and May 2010, Apple Inc. filed more than 350 cases with the U. S, the case In re Apple iPod iTunes Antitrust Litigation was filed as a class action in 2005 claiming Apple violated the U. S. In October 2007, Paul Holman and Lucy Rivello filed a class action lawsuit in the Northern District of California, C 07-05662 RMW, adding complaints related to ringtones, and Kliegerman v. Apple, Inc. C 08-948, bringing in allegations under the federal Magnuson–Moss Warranty Act, the combined case title was changed to In Re Apple & AT&TM Anti-Trust Litigation. The court appointed lead counsel from the plaintiffs lawyers. The new case is essentially the same but is filed only against Apple, in late 2013, the various parts of the case were dismissed by the district court. The parts relating to SIM locking were rejected because AT&T was not a party, in 2008, Apple agreed to cut the price UK consumers pay to download music for their iPods after a formal complaint to the European Commission from the UK consumer group Which. Demonstrated higher prices in UK for the same songs sold elsewhere in the European Union. Apple clearly understood that its participation in this scheme would result in higher prices to consumers, in such an agency-model, publishers set prices rather than sellers. Fifteen states and Puerto Rico also filed a federal case in Austin, Texas, against Apple, Penguin, Simon & Schuster. As of July 2012, the case was still in the stage of litigation. On July 10,2013, District Court Judge Denise Cote in Manhattan found Apple Inc, in 2014, Apple settled out of court both an antitrust lawsuit and a related class-action suit regarding cold calling employees of other companies. An appeal followed the California courts approval of the settlement but the court upheld the settlement in December 2005. Apple agreed to pay all costs of the litigation, including payments to the class members and the plaintiffs attorney fees. In 2006 Apple Canada, Inc. also settled several similar Canadian class action suits alleging misrepresentations by Apple regarding iPod battery life
Apple Inc. v. Samsung Electronics Co.
In the spring of 2011, Apple began litigating against Samsung in patent infringement suits, while Apple and Motorola Mobility were already engaged in a patent war on several fronts. By August 2011, Apple and Samsung were litigating 19 ongoing cases in nine countries, by October, by July 2012, the two companies were still embroiled in more than 50 lawsuits around the globe, with billions of dollars in damages claimed between them. While Apple won a ruling in its favor in the U. S. Samsung won rulings in South Korea, Japan, and the UK. On January 4,2007,4 days before the iPhone was introduced to the world and these were followed up in June of that year with a massive filing of a color design patent covering 193 screen shots of various iPhone graphical user interfaces. It is from these filings along with Apples utility patents, registered trademarks and trade dress rights, Apples evidence submitted to the court included side-by-side image comparisons of iPhone 3GS and i9000 Galaxy S to illustrate the alleged similarities in packaging and icons for apps. C. In Seoul, Samsung filed its lawsuit in April 2011 in the Central District Court citing five patent infringements. The court ruled that Samsung violated one of Apple’s utility patents, over the so-called bounce-back effect in iOS, Apple’s claims that Samsung copied the designs of the iPhone and iPad were deemed invalid. The court also ruled there was no possibility that consumers would confuse the smartphones of the two brands, and that Samsungs smartphone icons did not infringe upon Apples patents. Samsungs complaint in Japans Tokyo District Court cited two infringements, Apple has filed other patent suits in Japan against Samsung, most notably one for the bounce-back feature. Samsung has also sued Apple, claiming the iPhone and iPad infringe on Samsung patents, the three-judge panel in Japan also awarded legal costs to be reimbursed to Samsung. Presiding Judge Tamotsu Shoji said, The defendants products do not seem like they used the technology as the plaintiffs products so we turn down the complaints made by. An unnamed spokesperson for Samsung said, continue to offer innovative products to consumers. After Samsungs allegations of evidence tampering were heard, the court rescinded the EU-wide injunction and granted Apple a lesser injunction that only applied to the German market. Samsung also pulled the Galaxy Tab 7.7 from Berlins IFA electronics fair due to the ruling preventing marketing of the device, according to an estimate by Strategy Analytics, the impact on Samsung, in Germany, could have cost up to half a million unit sales. On September 9,2011, the German court ruled in favor of Apple, the court found that Samsung had infringed Apples patents. Presiding judge Johanna Brueckner-Hofmann said there was an impression of similarity. In March 2012, the Mannheim state court dismissed both the Apple and Samsung cases involving ownership of the slide-to-unlock feature used on their respective smartphones. The New York Times reported the German courts were at the center of patent fights among technology company rivals, on September 21, Mannheim Regional Court ruled in favour of Samsung in that it did not violate Apple’s patented features in regards to touch-screen technology
AT&T Corp. v. Excel Communications, Inc.
AT&T Corp. v. Excel Communications, Inc.172 F. and decided that AT&T Corp. had failed to claim statutory subject matter with U. S. Patent No.5,333,184 under 35 U. S. C, the United States Court of Appeals for the Federal Circuit remanded the case for further proceedings. This company is a subsidiary of AT&T Inc. and its subsidiary AT&T Communications still provides long distance service across the United States, Excel Communications was founded in 1988 by Dallas entrepreneur Kenny Troutt as a long distance reseller in the US telecom sector at the birth of telecom deregulation. It started its business by selling franchises through the model of network marketing or multi-level marketing. In 1992, the 184 patent was filed and in 1994, on March 27,1998, the District Court of Delaware concluded that the invention was not patentable subject matter because the claims implicitly recite a mathematical algorithm. The trial court, on summary judgment, held all of the claims at issue invalid for failure to qualify as statutory subject matter. On April 14,1999, the U. S. Court of Appeals for the Federal Circuit found that the subject matter was properly within the statutory scope of 35 U. S. C. §101, and reversed the courts judgment of invalidity on this ground. This data is called Primary interexchange carrier indicator, if the caller belongs to the carriers family the value of the PIC is 1. If the call recipient also belongs to the AT&T family, its PIC is 1, in the billing process, the logical product of the two PICs is taken—this process is also known as ANDing. Since the time of George Boole it has well known that if p =1 and q =1, then their logical product p q =1. Under this patent, when the product of the PICs is 1, the call is billed at a discounted rate, if the product is 0. Therefore, if and only if the caller and called person belong to the carriers family, in a direct-dialed long distance call, a call-related data and message record, named automatic message account, was generated. It includes further information, such as the originating and terminating telephone numbers, in their analysis, the Federal Court first refers to the definition of patentable invention in the language of 35 U. S. C. §101, and found that AT&Ts business method fell in the process category and the patent claims fell within the judicially created mathematical algorithm exception to statutory subject matter. Process is defined in 35 U. S. C. §100 as, a process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or any new and useful improvement thereof. However, the courts consider the scope of 35 U. S. C. §101 to be the same regardless of the form – machine or process - in which a claim is drafted. In response, the Court explained that physical transformation can be considered as long as it results in a useful, concrete, the court relied on the Supreme Courts opinion in Diamond v
Bauer & Cie. v. O'Donnell
Bauer & Cie. v. ODonnell,229 U. S. A divided Court held that it was not, Bauer & Cie, a German company, was the assignee of U. S. 601,995, covering Sanatogen, a drug product, advertised as the King of Tonics. Bauer sold the product in the United States through its exclusive sales agent. Sanatogen was sold with this notice on each bag, Notice to the Retailer and this size package of Sanatogen is licensed by us for sale and use at a price not less than one dollar. Any sale in violation of this condition, or use when so sold,601,995, under which Sanatogen is manufactured, and all persons so selling or using packages or contents will be liable to injunction and damages. A purchase is an acceptance of this condition, all rights revert to the undersigned in the event of violation. ODonnell, a retail druggist in Washington, DC, purchased Sanatogen at wholesale and he persisted in doing this and was cut off, but he managed to continue to purchase the product from jobbers in DC and avers that he will continue such sales. This led to the present patent infringement suit, justice William R. Day delivered the majority opinion, joined by Justices White, Hughes, Lamar, Pitney. Justices McKenna, Holmes, Lurton, and Van Devanter dissented without opinion, the patentee argued that the purpose of the restrictive notice was to prevent ruinous competition by the cutting of prices in sales of the patented article. Day responded, however, that absent a patent the Court had held resale price fixing unlawful in Dr. Miles Medical Co. v. John D. Park & Sons Co. And Congress could, if it had wanted to, have conferred on patentees the right to such restrictions. He then asked, Has it done so, the question has not been determined in any previous case in this Court, so far as we are aware. It was dealt with under the statute, however, in the case of Bobbs-Merrill Co. v. Straus. The Court recognized that there are differences between the copyright statute and the patent statute, and the purpose to decide the question now before us was expressly disclaimed in Bobbs–Merrill. Nonetheless, it is apparent that, in the involved in the present inquiry. Both statutes grant a right to vend. The sale of an article is not essentially different from the sale of a book
Bilski v. Kappos
The Court affirmed the judgment of the Federal Circuit in In re Bilski, the case below. However, it rejected the machine-or-transformation test as a sole test of patentability based on an interpretation of the language of §101. The Court rejected the Federal Circuits statutory interpretation regarding the word process, section 100 defines process as a process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material. The Court looked to Gottschalk v. Benson and Parker v. Flook,35 U. S. C. §273 also provides as a defense to patent infringement prior use of a method of conducting or doing business. By acknowledging the defense, the statute also acknowledged the possibility of business method patents, regarding Bilskis claimed subject matter, the Court found that his method of optimizing a fixed bill system for energy markets was an unpatentable abstract idea. The holding of the Court was unanimous, but there were two concurring opinions, and no single opinion commanded a majority of the Court as to all parts. Justice Stevens concurrence, joined by Justices Breyer, Ginsburg, and Sotomayor, Stevens rejected the majoritys reliance on the mention of the word method in 35 U. S. C. He would categorically exclude business methods from patentability, as they have not traditionally been patentable in the U. S. despite significant innovations in business methods and it was the final opinion in Stevens 35-year career on the Supreme Court. His retirement became effective the next day, Justice Breyers concurrence began by agreeing with Justice Stevens that a general method of engaging in business transactions is not a patentable process. While the machine-or-transformation test has always been a useful and important clue, although the machine-or-transformation test is not the only test for patentability, this by no means indicates that anything which produces a useful, concrete, and tangible result, is patentable. He outcome from the decision might be best stated as business as usual, the two claims related to medical diagnostics, and the claims in Prometheus were found patentable under the machine-or-transformation test while the claims in Classen were not. In December 2010, the Federal Circuit applied the broad eligibility of Bilski in Research Corp, technologies v. Microsoft Corp. which upheld the patent eligibility of a process for digital image halftoning. However, we are pleased that the Court maintained the patentability of business methods. In re Bilski Stanford v. Roche CyberSource Corp. v. Retail Decisions, list of United States Supreme Court cases, volume 561 Lemley, Mark A. Risch, Michael, Sichelman, Ted M. Wagner, R. Polk. Text of the Slip Opinion from supremecourt. gov Transcript of oral arguments of Bilski v. Kappos Links to Briefs, incl. amici, petition and merits in Bilski v. Kappos. Application of Bilski in Research Corp
Blake v. City and County of San Francisco
Blake v. City and County of San Francisco,113 U. S. Bailey. The original patent was dated February 9,1864, and the reissue September 18,1877 and they were for a new and improved valve for water cylinders of steam fire engines and other pump cylinders. The reissued patent contains two claims, the second of which only is found in the original and they were as follows, The combination, with a pump cylinder and hose of a fire engine, of an automatic relief valve arranged relatively thereto substantially as specified. The appellant did not contend that the appellees infringe the first claim of the reissued patent and he based his demand for relief on the alleged infringement of the second claim only. The evidence showed that Bailey was not the first to conceive the idea of a device for opening or closing rigidly an automatic valve, the same thing had been done by means of wedges and screws and other devices. He cannot therefore cover by his patent all the devices for producing this result, the claim must be confined to the specific device described in the specification and claim—namely a pinhole and pin. Appellants counsel therefore disclaimed any right to the use of an automatic safety valve. Justice Horace Gray speaking for the court, It is settled by many decisions of this Court and this qualification therefore will not affect the present case, because no new result in character is accomplished by the supposed invention of the plaintiff. Besides, it appears from the evidence that before Baileys patent was applied for, relief valves were in common use and they were commonly used on the steam feed pumps of steamships. These pumps were fitted with nozzles for the attachment of hose, so that the feed pump could, in case of need. It is therefore plain that in state of the art. It is no answer to this to assert that the application of a valve to a portable steam fire engine is the invention of a new combination. The combination was already in use on steamships. The application of the valve to a use on land was not a new combination or a new invention. The decree of the court was affirmed. List of United States Supreme Court cases, volume 113113679 Justia. com
Bonito Boats, Inc. v. Thunder Craft Boats, Inc.
Bonito Boats, Inc. v. Thunder Craft Boats, Inc.489 U. S. The decision reaffirmed the Supreme Court’s earlier decision in Sears, Roebuck & Co. v. Stiffel Co. which held a state unfair competition law preempted on the same ground, Bonito Boats developed a hull design for a fiberglass recreational boat and marketed it as the Bonito 5VBR. The manufacturing process involved creating a model that was then sprayed with fiberglass to create a mold. The mold then served to produce the finished fiberglass boats for sale, no patent application was filed to protect the utilitarian or design aspects of the hull or the manufacturing process by which the finished boats were produced. Bonito Boats sought damages, injunctive relief, and an award of attorneys fees under the Florida law, the Florida Court of Appeals and the Florida Supreme Court affirmed. The Federal Circuit had reached a result in Interpart Corp. v. Italia. The Supreme Court granted certiorari to resolve the conflict and these novelty and nonobviousness requirements of patentability embody a congressional understanding. That free exploitation of ideas will be the rule, to which the protection of a patent is the exception. Accordingly, the patent laws must determine not only what is protected. And, Where it is clear how the patent laws strike that balance in a particular circumstance, the Court found this reasoning defective. First, Appending the conclusionary label unscrupulous to such competitive behavior merely endorses a policy judgment which the patent laws do not leave the States free to make. Those cases require that copying of the article itself that is unprotected by the federal patent, the States are simply not free in this regard to offer equivalent protections to ideas which Congress has determined should belong to all. It thus enters a field of regulation which the patent laws have reserved to Congress and it is for Congress to determine if the present system of design and utility patents is ineffectual in promoting the useful arts in the context of industrial design. We therefore agree with the majority of the Florida Supreme Court that the Florida statute is preempted by the Supremacy Clause, and this law creates ten years of copyright-like protection for boat hull designs. The VHDPA was too late for Bonito Boats, however, according to the U. S. Coast Guard, Bonito Boats went out of business on July 16,1991
Bowers v. Baystate Technologies, Inc.
This case is notable for establishing that license agreements can preempt fair use rights as well as expand the rights of copyright holders beyond those codified in US federal law. Baystate Technologies, Inc and HLB Technology were competing companies which created add-ons that interacted with a computer aided design program known as CADKEY, Bowers was the patent holder of a system called Cadjet that simplified interfacing with CAD software, which he began to license commercially in 1989. Bowers initial software offering was later combined with a product called Geodraft that was produced by George W. Ford III that inserted tolerances compliant with ANSI for features in a CAD design, together, these products were marketed as Designers Toolkit. The Designers Toolkit was sold with a shrink wrap license that prohibited reverse engineering, Baystate sold competing CADKEY tools including Draft-Pak version 1 and 2. In 1991, Baystate sued Bowers seeking declaratory judgement that 1) Baystates products do not infringe on Bowers patent 2) the patent is invalid, Bowers filed counter claims for copyright infringement, patent infringement, and breach of contract, contending that Baystate had reverse engineered Designers Toolkit. Baystate appealed the courts decision. Specifically, the court stated that beyond mere copying, that state law claim required proof of a trade secret. These additional terms result in a requirement that is not covered by copyright law. As contracts affect only the parties, no new exclusive rights are created for the copyright holder. Although Atari v. Nintendo established reverse engineering was a fair use exception to copyright infringement, in the federal courts own interpretation, while Vault v. Quaid found that state law was preempted by copyright law, this does not apply to private contractual agreement. A dissenting opinion was entered by Judge Dyk agreeing with all decisions except the decision that a law does not preempt a state contract. Dyk formed his argument using patent and copyright law cases, Cases establishing the rights of patent law were viewed as applicable toward copyright law, bonito Boats v. Thunder Craft Boats defined that state law does not preempt patent rights. Data General v. Grumman and ProCD v. Zeidenberg both focused on “extra elements” added by state law which were not covered by copyright law. Atari v. Nintendo demonstrates the importance of the fair use defense in copyright law ensuring that copyright law did not inhibit understanding of an idea, process, Vault v. Quaid established that state law could not be used to preempt copyright law. Dyk created an analogy of a law where software disallowing reverse engineering must have a black dot on the packaging. This analogy demonstrated a law that would give broader protections than normally given in law which impedes publicly given rights. By allowing preemption of copyright law, Dyk questions other limitations that could be applied to federal law and he also warned that this could undermine the protections originally given in the Copyright Act. Critics further argued this precedent is unrealistic for the software industry, Reverse engineering is not only considered necessary to keep up with feature wars, which Bowers v. Baystate is an example of, but is essential for interoperability and security purposes
Bowman v. Monsanto Co.
Bowman v. Monsanto Co.569 U. S. The case arose after Vernon Hugh Bowman, an Indiana farmer, the farmers sold their soybean crops to the local grain elevator, from which Bowman then bought them. After Bowman replanted the crop seeds for his second harvest, Monsanto filed a lawsuit claiming that he infringed on their patents by replanting soybeans without a license. The Court held that, when a farmer plants a harvested and saved seed, thereby growing another soybean crop, Monsanto developed patents for genetically modified soybeans that were resistant to glyphosate-based herbicides. When farmers sprayed the modified soybeans with the glyphosate herbicide Roundup, in 1999, Indiana farmer Vernon Hugh Bowman bought soybean crop seeds from a local grain elevator for his second crop of the season. He then saved seeds from his crop to replant additional crops in later years. He tested the new seeds, and found that, as he had expected, some were transgenic and he replanted seeds from the original second harvest in subsequent years for his second seasonal planting, supplementing them with more soybeans he bought at the elevator. He informed Monsanto of his activities, in 2007, Monsanto sued Bowman for patent infringement in the United States District Court for the Southern District of Indiana. After filing suit, Monsanto moved for summary judgment, in response, Bowman argued that if Monsanto was allowed to continue its license past exhaustion, it would be able to dominate the market. The court held that since the farmers could not use the later generation seeds without a license, they could not make an unrestricted sale. The court entered judgment for Monsanto in the amount of $84,456.30, Bowman then appealed the decision to the United States Court of Appeals for the Federal Circuit. Monsanto argued that the agreement specifically prohibited the use of second-generation seeds for planting. The Federal Circuit upheld the courts decision in favor of Monsanto. Bowman sought review in the United States Supreme Court, Bowman argued that the Federal Circuits decision conflicted with existing Supreme Court precedent on patent exhaustion. Bowman said that United States v. Univis Lens Co. showed that patent exhaustion applied even when the patent holder created post-sale restrictions and he claimed that the Federal Circuit had created a judicial exception to patent exhaustion for Monsanto, allowing it to dominate the soybean seed market. Finally, Bowman argued that he was not making infringing new seeds merely by planting and reaping crops, Monsanto argued that the Federal Circuits decision was correct because Bowman had created a new product that infringed on their patent. They further argued that this was not a case to hear. The Supreme Court requested the United States to brief the Court, the United States asked the Court to deny certiorari
Brenner v. Manson
Practical or specific utility, so that a specific benefit exists in currently available form is thus the requirement for a claimed invention to qualify for a patent. The case is known for the statement a patent is not a hunting license, the Manson case is the first in which the Court granted a writ of certiorari in an appeal of a patent office rejection of a patent application. In Lurk v. United States, however, the Court held that judges of the CCPA were Article III judges, in the Manson case the Court expressly held, unanimously, that certiorari was available to review CCPA decisions. This paved the way for the US Government to seek review in the Supreme Court of judgments of the CCPA reversing denials of patent applications, which it did beginning with Manson. Justice Abe Fortas delivered the opinion of the Court on the jurisdictional issue in this case. Justice John Marshall Harlan II, joined by Justice William O. Douglas, the substantive patent law issue in the case was the degree of specific utility a claimed invention must have in order to qualify for patenting. Andrew Manson applied for a patent on a process for making a form of dihydrotestosterone. A specific use for the product was not known or disclosed by Manson, other steroids of similar chemical structure were known to inhibit tumors in mice. The Patent Office refused to allow Manson to proceed, the Office then sought review in the Supreme Court. Nor was the fact that the invention was not harmful to society sufficient, there are, after all, many things in this world which may not be considered useful but which, nevertheless are totally without a capacity for harm. Manson argued that such claims as his would encourage disclosure, discourage secrecy. Until the process claim has been reduced to production of a product shown to be useful and it may engross a vast, unknown, and perhaps unknowable area. Such a patent may confer power to block off areas of scientific development. The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility. Chemistry is a highly interrelated field, and a benefit for society may be the outcome of a number of different discoveries. Oyez, Brenner v. Manson 383 U. S.519 - link to recording of oral argument Brenner v. Manson -383 U. S.519
British Telecommunications plc v. Prodigy
On summary judgment, McMahon held that there were substantial differences between British Telecommunications patent and the method of operation of the Internet. The decision limited patent protection for Internet service providers use of hyperlinks, British Telecommunications plc developed technology related to computer networking. BT was granted the Sargent Patent by the United States Patent, the patent application had been filed 12 years prior, in July 1977, and underwent many changes during the ensuing years. The patent described a system in which users, each located at a remote terminal. A user at a terminal would be able to access information stored in a central computer via telephone network. In June 2000, BT sent letters to Prodigy Communications Corporation and 16 other Internet service providers, asking them to pay licensing fee for BTs hyperlink patent, BT sued Prodigy, the oldest ISP in the U. S. for patent infringement on December 13,2000. In suing, BT claimed that the Sargent patent covered hyperlink technology, BT argued that not only had Prodigy directly infringed the Sargent patent, but that it was also liable for inducing its users to infringe BTs patent. To resolve this case, the US District court conducted through analysis on terms specified in claims of the Sargent patent and analyzed if the patent covered the hyperlink technology. The court ruled that central computer means a central computer fixed in one location in every available piece of information accessible to users at a remote terminal is stored. Additionally, the meaning of the blocks of information was clarified. The court ruled that each block was required to contain a first portion and a portion which are stored together, stored next to one another in memory. The court held that Prodigy had not infringed the Sargent patent, the Sargent patent required that all information requested by users be stored in a single hub called the central computer and sent from the central computer to a remote terminal. However, the Internet is a system in which different computers are linked together so that one terminal can locate desired information from any of the other computers it is connected to. According to the court, the Internet functions in a manner which is antithetical to that of an information storage system having a central computer. The Sargent patent describes the addresses of other pages as being stored in a second sub-block attached to the content for display. The court found no evidence that the Internet functions like this, for example, it analysed the following example of HTML code, <A href=http, //www. msnbc. com/modules/exports/ct_prodigy. asp. /news/736921. asp target=_top>Yahoo. Once more, the court judged in favor of Prodigy, saying that Prodigy internet service did not include the address of a piece of information. The Uniform Resource Locator standard that uniquely names the location of resources requires additional information, in the form of a TCP/IP protocol, thus, the way internet finds the location of requested information is not complete as specified in the Sargent patent
Brulotte v. Thys Co.
Brulotte v. Thys Co.379 U. S. The decision was widely subjected to criticism but the Supreme Court has rejected that criticism. Thys owned patents on hop-picking machinery, the license had no termination date. Of the seven patents covering the machine, the last expired by 1957, Brulotte failed to pay the royalties and Thys sued him for breach of contract in Washington State court. The trial court rendered judgment for Thys and the Supreme Court of Washington affirmed, 2d, at 291,382 P. 2d, at 275. The Supreme Court reversed in a written for the Court by Justice William O. Douglas. Justice John Marshall Harlan II dissented, Justice Douglas began the majority opinion by citing precedents holding that patent rights become public property once the 17-year period expires. He then quoted Chief Justice Stone, speaking for the Court in Scott Paper Co. v. Marcalus Co, the Court rejected the claim that the contract merely spread the payment for using the patent over a longer period. Thys was using the licenses to project its monopoly beyond the patent period, the Court therefore ruled, n light of those considerations, we conclude that a patentees use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se. If that device were available to patentees, the free market visualized for the period would be subject to monopoly influences that have no proper place there. A patent empowers the owner to exact royalties as high as he can negotiate with the leverage of that monopoly, Justice Harlan disagreed, I think that more discriminating analysis than the Court has seen fit to give this case produces a different result. In his analysis, what Thys did was no more objectionable than restrictions on the rather than the patented idea that it embodied. In fact Thys sells both a machine and the use of an idea, the company should be free to restrict the use of its machine. Despite criticism of Brulotte, the Supreme Court reaffirmed the decision in Kimble v. Marvel in 2015, the decision was widely criticized by academics and economic theorists. Other criticism of Brulotte includes the following, Harold See and Frank M. Caprio, The Trouble with Brulotte, The Patent Royalty Term, note, Patents, Supreme Court Holds Post-Expiration Royalty Agreements Unlawful Per Se,1965 Duke L. J.836,841. Paul Goldstein, Federal System Ordering of the Copyright Interest,69 Colum, transaction Costs and Antitrust Concerns in the Licensing of Intellectual Property,4 J. Marshall Rev. Intell. Other commentators, however, have rejected adoption of an antitrust lens for analysis of patent misuse, Robin C. Feldman, The Insufficiency of Antitrust Analysis for Patent Misuse,55 Hastings L. J.399,422, id. at 448 Marshall Leaffer, Patent Misuse and Innovation,10 J
California Artificial Stone Paving Co. v. Molitor
The patent was for an improvement in concrete pavement was originally issued July 19,1870, and reissued May 2,1871. The case of Wilson v. Barnum was especially worthy of note in this connection, the question certified in that case was whether, upon the evidence given, the defendant infringed the complainants patent. Chief Justice Taney, delivering the opinion of the Court, said, The question thus certified is one of fact and it is a question as to the substantial identity of the two machines. In the multitude of questions which have been certified, this Court has never taken jurisdiction of a question of fact, and in a question of law it requires the precise point to be stated -- otherwise the case is remanded without an answer. The case was remanded for want of jurisdiction and it seems to us that the certificate in the present case is obnoxious to the objections presented in the cases cited. The new controversy raised by the construction of the pavement in Redwood City is substantially a new suit on the patent. We are asked to say whether a pavement constructed in such and such a manner is an infringement of the patent as the court has construed the patent. And this is a question of fact and law. By the final decree in the case, made in 1881, how those pavements were constructed we are not informed, and therefore we do not know what was the precise construction given by the court to the patent. It is a question which the court must decide for itself in the ordinary was. If the judges disagree there can be no judgment of contempt, the complainant may then either seek a review of that decision in this Court, or bring a new suit against the defendant for the alleged infringement. The latter method is by far the most appropriate one where it is really a question whether the new process adopted is an infringement or not. Process of contempt is a remedy, and should not be resorted to where there is fair ground of doubt as to the wrongfulness of the defendants conduct. The case was dismissed, with directions to the court to proceed therein according to law. List of United States Supreme Court cases, volume 113113609 Justia. com
Compco Corp. v. Day-Brite Lighting, Inc.
Compco Corp. v. Day-Brite Lighting, Inc.376 U. S.234, is a United States Supreme Court decision that was a companion case to Sears v. Stiffel, which the Court decided on the same day. Like Sears, Compco held that law that, in effect. Day-Brite obtained a patent on a lighting fixture, a cross-ribbed reflector for fluorescent light tubes. Compco’s predecessor copied the fixture and sold it in competition against Day-Brite, Day-Brite then sued for infringement of the design patent and unfair competition under Illinois state law, in the United States District Court for the Northern District of Illinois. The district court held the patent invalid but ruled in Day-Brite’s favor on the unfair competition claim. Accordingly, the court ordered Compco to pay damages and enjoined its further sale of the fixture, the United States Court of Appeals for the Seventh Circuit affirmed the judgment. There was evidence that Compco clearly labeled its fixtures and their containers with Compco’s name. ”In a unanimous ruling, the Court reversed. The Court reiterated its holding in the Stiffel case that, hen an article is unprotected by a patent or a copyright, to forbid copying would interfere with the federal policy, found in Art. 8, of the Constitution and in the federal statutes, of allowing free access to copy whatever the federal patent. But if the design is not entitled to a patent or other federal statutory protection. Day-Brite is still in the fluorescent lighting fixture business, as a division of Philips, see, for example, Bonito Boats, Inc. v. Thunder Craft Boats, Inc. Where it is clear how the patent laws strike that balance in a particular circumstance, list of United States Supreme Court cases, volume 376
Continental Paper Bag Co. v. Eastern Paper Bag Co.
Eastern Paper Bag brought an action to prevent its competitor Continental Paper Bag from using its patent for a self-opening paper bag. Continental Paper Bag alleged that Eastern Paper Bag was not using its patent, the Supreme Court rejected this argument by Continental Paper Bag, holding that it was the essence of the patent to exclude others without question of motive. List of United States Supreme Court cases, volume 210 Hartford-Empire Co. v. United States,323 U. S.386 Chin, unilateral Technology Suppression, Appropriate Antitrust and Patent Law Remedies. Hovenkamp, Herbert, Janis, Mark D. Lemley, Mark A, unilateral Refusals to License in the U. S. Working Paper No. 303, Stanford Law School John M. Olin Program in Law, ^210 U. S.405 Full text of the opinion courtesy of Findlaw. com
Coon v. Wilson
Coon v. Wilson,113 U. S.268, was a suit regarding the infringement of reissued letters patent No. 8,169, granted to the plaintiff, Washington Wilson, as inventor, April 9,1878, on an application therefor filed March 11,1878, for an improvement in collars,197,807, having been granted to him December 4,1877. The final decree in this case was entered July 28,1881, the decisions of the Court in Miller v. Brass Co.104 U. S.350, and James v. Campbell,104 U. S.356, were made January 9,1882. Under those decisions and many made by this Court since. As the rule is expressed in the recent case of Mahn v. Harwood,112 U. S, but a clear mistake, inadvertently committed, in the wording of the claim, is necessary, without reference to the length of time. In the present case, there was no mistake in the wording of the claim of the original patent, the description warranted no other claim. It did not warrant any claim covering bands not short or sectional, the description had to be changed in the reissue to warrant the new claims in the reissue. The original patent industriously excluded from its scope a continuous band, the decree of the circuit court was reversed, and the case was remanded to that court, with a direction to dismiss the bill, with costs. List of United States Supreme Court cases, volume 113113268 Justia. com
CyberSource Corp. v. Retail Decisions, Inc.
CyberSource Corp. v. Retail Decisions, Inc. Essentially, the patent is divided into a method and a system part, the method aspect is described in Claim 3, and the system part is described is Claim 2. Claim 2 generally mentions a computer readable medium containing program instructions, the disputing point was whether Claim 3 and Claim 2 are patent-eligible. Moreover, the noted that both claims were directed as an unpatentable mental process. The decision was made with reference to Bilskis case, as the Bilski case was appealed to the Supreme Court while this case was proceeding, history of these cases are documented in the timeline below. CyberSource sued Retail Decisions Inc. for patent infringement on August 11,2004, Retail Decisions initiated an ex parte reexamination of the ‘154 patent to the U. S. District court suspended proceedings until the patent is reissued, patent certificate reissued with amended claims on August 5,2008. Federal Circuit decided In re Bilski on October 30,2008, district court dismissed the claims of CyberSource. CyberSource appealed to Federal circuit court in April 2009, the court suspended proceedings until the decision of Bilski. Supreme Court of the United States made the decision of Bilski v. Kappos on June 1,2009, the proceeding started again on October 28,2010. The federal circuit court affirmed the court decision, that both Claim 3 and Claim 2 are not patent-eligible, because they attempted to capture unpatentable mental processes. Moreover, they were invalid under 35 U. S. C section 101 and this court also referenced unpatentability from In re Bilski. The court also took into consideration three specific exceptions under 35 U. S. C section 101, which are laws of nature, physical phenomena, and abstract ideas. First, the court argued that the Claim 3 did not pass the machine-or-transformation test because the internet cannot perform the fraud detection steps by itself. Further, the court mentioned that the collection and organization of data regarding credit card numbers. Second, the court examined the claim outside the scope of the machine-or-transformation test like in the Bilski v. Kappos case. Interpreting the Supreme Courts decision and rationale, the court likened the claim to something which can be performed mentally by a human, demonstrating that it is not patent-eligible. Because no algorithms of any kind and each of the steps in Claim 3 are conceivably doable in the mind, they are represented by basic tools of scientific
Dann v. Johnston
Dann v. Johnston,425 U. S.219, is a decision of the United States Supreme Court on the patentability of a claim for a business method patent. The business method at issue in Johnston was claimed as a system for automatic record-keeping of bank checks. However, the claims were written in the form of a series of means for performing the steps of the method, accordingly, the claimed subject matter could be argued to be a machine. The Patent Office did not accept that argument and rejected the patent application and it said that Johnston wanted the Office to grant a monopoly. On a method of conducting the banking business, Johnston then appealed the rejection to the United States Court of Customs and Patent Appeals. The CCPA reversed the ruling of the Patent Office, the majority said that Johnston was claiming a machine, not a process, so that there would be no monopoly on the banking business if other banks used a different machine. The majority also held the Supreme Courts decision in Gottschalk v. Benson inapplicable because that case involved a process patent while this case involved a machine, another dissenting judge found the claimed invention obvious. The Court granted certiorari on both questions, the great majority of the governments brief discussed reasons why the claimed invention was not patent eligible. A small portion addressed the obviousness issue, justice Thurgood Marshall delivered the unanimous opinion of the seven-member Court. The Court took notice of the prevalence, indeed ubiquity, of computers in the banking industry and that made computerization an obvious approach to the banking activities involved here. More important, the Dirks patent was too close in concept to Johnstons system, the Court explained, he mere existence of differences between the prior art and an invention does not establish the inventions nonobviousness. The gap between the art and respondents system is simply not so great as to render the system nonobvious to one reasonably skilled in the art. Until Bilski v. Kappos and Alice v. CLS Bank about four decades later, but the decision turns on obviousness rather than patent eligibility. Text of Dann v. Johnston is available from, Findlaw Justia
DDR Holdings v. Hotels.com
Both Alice and DDR Holdings are legal decisions relevant to the debate about whether software and business methods are patentable subject matter under Title 35 of the United States Code §101. The Federal Circuit applied the framework articulated in Alice to uphold the validity of the patents on display technology at issue in DDR Holdings. According to the Supreme Court, in order to be patent eligible, the implementation of the idea must be something beyond the routine, conventional or generic. In DDR Holdings, the Federal Circuit, applying the Alice analytical framework, DDR Holdings, LLC was formed by inventors Daniel D. Ross and D. Delano Ross, Jr. following the asset sale of their dot-com company, Nexchange. DDR filed a lawsuit against twelve entities including Hotels. com, National Leisure Group, World Travel Holdings, Digital River, Expedia, Travelocity. com, and Orbitz Worldwide for patent infringement. DDR settled with all but three of these prior to an October 2012 jury trial in the United States District Court for the Eastern District of Texas. Following the verdict, the court denied defendants’ motions for Judgment as a matter of law and entered final judgment in favor of DDR. Defendants appealed, however, by the time of oral argument, DDR settled with Digital River, DDR is the assignee of U. S. Patent Nos.7,818,399 and 6,993,572, the court’s §101 analysis focused on the 399 patent, entitled Methods of expanding commercial opportunities for internet websites through coordinated offsite marketing. Once a visitor clicks on an ad and enters an online store. A fundamental drawback of the affiliate programs--the loss of the visitor to the vendor, some Internet affiliate sales vendors have begun placing return to referring website links on their order confirmation screens, an approach that is largely ineffective. This limitation of an affiliate program restricts participation to less trafficked websites that are unconcerned about losing visitors, search engines and directories continue to increase in their usefulness and popularity, while banner ads and old-style links continue their rapid loss of effectiveness and popular usage. For example, the generated web page may combine the logo, background color. A case note states that one way to accomplish the function would be with an <iframe> tag and this is the effect that the invention accomplishes, Representative claim 19 of the 399 patent recites,19. In Alice, the Supreme Court clarified its two-prong framework, originally set forth in Mayo Collaborative Servs. v. Prometheus Labs. Inc. for evaluating the patent-eligibility of a claim under §101. First one must determine whether the claim is directed to a law of nature, natural phenomenon. If so, then one determines whether any additional claim elements transform the claim into an application that amounts to significantly more than the ineligible concept itself. This embodiment must be something more than typical operations performed on a generic computer, following the Alice decision, several cases invalidated patents covering computer-implemented inventions as ineligible abstract ideas, including Ultramercial
Diamond v. Chakrabarty
Diamond v. Chakrabarty,447 U. S.303, was a United States Supreme Court case dealing with whether genetically modified organisms can be patented. Genetic engineer Ananda Mohan Chakrabarty, working for General Electric, had developed a capable of breaking down crude oil. Sidney A. Diamond, Commissioner of Patents and Trademarks, appealed to the Supreme Court, the Supreme Court case was argued on March 17,1980 and decided on June 16,1980. The patent was granted by the USPTO on Mar 31,1981, in 1972, Ananda Chakrabarty filed a patent for a genetically modified bacterium that was capable of breaking down multiple components of crude oil. The multiple plasmids would allow bacteria to break down oil from oil spills at a quicker rate. The first two claims were accepted, but the claim on the bacteria was rejected, under the grounds that the bacteria are naturally occurring, the Supreme Court heard the case because it represented a new, useful composition of matter. This case clearly represented an improvement on a composition of matter, naturally, this invention is useful in the cleanup of oil spills and in the water purification process. Seeing as the patent holder created the bacteria described in the proposed patent, the argument against granting the patent was one of precedence. In response, Sydney Diamond, Commissioner of Patents and Trademarks, Diamond had two arguments which were not well received by the court. Based on this, the patent law was accepted to be given a wide scope, in a 5–4 ruling, the court ruled in favor of Chakrabarty, holding that, A live, human-made micro-organism is patentable subject matter under 35 U. S. C. Respondents micro-organism constitutes a manufacture or composition of matter within that statute, burger wrote the decision, and was joined by Potter Stewart, Harry Blackmun, William Rehnquist, and John Paul Stevens. Burger wrote that the question before the court was a narrow interpretation of 35 U. S. C. He wrote, We have cautioned that courts should not read into the patent laws limitations and conditions which the legislature has not expressed, United States v. Dubilier Condenser Corp,289 U. S.178. To a non-naturally occurring manufacture or composition of matter—a product of human ingenuity, the dissenting opinion was written by William J. Brennan, who was joined by Byron White, Thurgood Marshall, and Lewis Franklin Powell. Brennans dissent focused on the argument that evidence in the record indicates the United States Congress did not intend living organisms to be patented. We must be careful to extend patent protection no further than Congress has provided, if newly developed living organisms not naturally occurring had been patentable under 101, the plants included in the scope of the 1930 and 1970 Acts could have been patented without new legislation. And with regard to the specifics of the 1970 act, Congress specifically excluded bacteria from the coverage of the 1970 Act. The fact is that Congress, assuming that animate objects as to which it had not specifically legislated could not be patented, excluded bacteria from the set of patentable organisms, the legal implications are both potentially positive and negative
Diamond v. Diehr
Diamond v. Diehr,450 U. S. Diehr was the third member of a trilogy of Supreme Court decisions on the patent-eligibility of computer software related inventions. The inventors, respondents, filed a patent application for a for molding raw, the process of curing synthetic rubber depends on a number of factors including time, temperature and thickness of the mold. Using the Arrhenius equation k = A e − E a / R T which may be restated as ln = CZ + x it is possible to calculate when to open the press and to remove the cured, molded rubber. The problem was there was, at the time the invention was made. The invention solved this problem by using embedded thermocouples to constantly check the temperature, the computer then used the Arrhenius equation to calculate when sufficient energy had been absorbed so that the molding machine should open the press. Independent claim 1 of the patent is representative. The patent examiner rejected this invention as unpatentable subject matter under 35 U. S. C and he argued that the steps performed by the computer were unpatentable as a computer program under Gottschalk v. Benson,409 U. S.63. The Board of Patent Appeals and Interferences of the USPTO affirmed the rejection, the U. S. Supreme Court granted the petition for certiorari by the Commissioner of Patents and Trademarks to resolve this question. The Court repeated its earlier holding that mathematical formulas in the abstract are not eligible for patent protection. But it also held that a machine or process which makes use of a mathematical algorithm is different from an invention which claims the algorithm, as such. The CCPAs reversal of the patent rejection was affirmed, but the Court carefully avoided overruling Benson or Flook. It did criticize the analytic methodology of Flook, however, by challenging its use of analytic dissection, the Diehr Court said, without citation of any supporting authority, that under section 101 the invention had to be considered as a whole. The patent that issued after the decision was U. S. Pat,4,344,142, Direct digital control of rubber molding presses. The patent includes 11 method claims, three of which are independent, all method claims relate to molding of physical articles. The only diagrams in the patent are flowcharts, there are no diagrams of machinery. For many years, it was believed that Diehr effectively overruled Flook, in 2012, in Mayo v. Prometheus, the unanimous opinion of the Supreme Court interpreted Diehr so as to harmonize it with Flook. The Court found the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole. The Court nowhere suggested that all steps, or at least the combination of those steps, were in context obvious, already in use