List of United States Supreme Court patent case law: Difference between revisions
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This is an incomplete list of Supreme Court of the United States cases in the area of patent law.
Case | Citation | Year | Vote | Classification | Subject Matter | Opinions | Statute Interpreted | Summary |
---|---|---|---|---|---|---|---|---|
Trade-Mark Cases | 100 U.S. 82 | 1879 | 9 - 0 | Constitutional basis for trademark regulation | Majority: Miller (unanimous) |
The Copyright/Patent Clause does not give Congress the power to regulate trademarks. | ||
Besser Mfg. v. United States | ___ U.S. ____ | 1952 | Compulsory licensing remedy in patent antitrust case | |||||
Sanford v. Kepner | ___ U.S. ____ | 1952 |
List format, Chronological
- Tyler v. Tuel - Supreme Court, 1810. Held that an assignee of a geographically limited patent right could not bring an action in the assignee's own name. Now obsolete.
- Hotchkiss v. Greenwood - Supreme Court, 1850. Introduced the concept of non-obviousness as patentability requirement in U.S. patent law.
- O'Reilly v. Morse - Supreme Court, 1853. Influential decision in the development of the law of patent-eligibility (Invalidating method claims for "abstract idea", where steps of method not tied to particular machine).
- City of Elizabeth v. American Nicholson Pavement Co. - Supreme Court, 1878. "Prior use" does not include experimental use.
- Egbert v. Lippmann - Supreme Court, 1881. Held that public use of an invention bars the patenting of it.
- Schillinger v. United States - Supreme Court, 1894. Patent infringement against the United States.
- Mast, Foos & Co. v. Stover Manufacturing Company. - Supreme Court, 1900.
- Carnegie Steel Company v. Cambria Iron Company - Supreme Court, 1902.
- Continental Paper Bag Co. v. Eastern Paper Bag Co. - Supreme Court, 1908. Established the principle that patent holders have no obligation to use their patent.
- Leeds And Catlin Company v. Victor Talking Machine Company. - Supreme Court, 1909.
- Expanded Metal Company v. Bradford General Fireproofing Company v. Expanded Metal Company. - Supreme Court, 1909.
- Diamond Rubber Company of New York v. Consolidated Rubber Tire Company - Supreme Court, 1911.
- Henry v. AB Dick Co. - Supreme Court, 1912. The Court found contributory infringement for the sale of the defendant's ink with patent owners machine.
- Westinghouse Electric and Manufacturing Company v. Wagner Electric and Manufacturing Company. - Supreme Court, 1912.
- Bauer & Cie. v. O'Donnell - Supreme Court, 1913. Patent licensing terms do not include dictating the price of the product.
- The Fair v. Kohler Die and Specialty Company - Supreme Court, 1913.
- Dowagiac Manufacturing Company v. Minnesota Moline Plow Company & Dowagiac Manufacturing Company v. Smith - Supreme Court, 1915.
- Minerals Separation v. Hyde - Supreme Court, 1916. Holding valid claims directed to critical proportions of oil to ore in a concentrating ore.
- American Well Works Co. v. Layne and Bowler Co. - Supreme Court, 1916.
- United States v. General Electric Co. - Supreme Court, 1926. 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.
- General Talking Pictures Corp. v. Western Electric Co. - U.S. Supreme Court, 1938; upholding enforceability of field-of-use limitations in a patent license
- Altvater v. Freeman - Supreme Court, 1943. Although a licensee had maintained payments of royalties, a claim of invalidity of the licensed patent still presented a justiciable case or controversy.
- Sinclair & Carrol Co. v. Interchemical Corporation - Supreme Court, 1945. Selection of a chemical from a catalog based on predetermined qualifications is obvious.
- Funk Brothers Seed Co. v. Kalo Inoculant Co. - Supreme Court, 1948. A 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. - Supreme Court, 1950. Only 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. - Supreme Court, 1950. Introduced the doctrine of equivalents.
- Aro Mfg. Co. v. Convertible Top Replacement Co. - Supreme Court, 1961. Redefined the doctrine of repair and reconstruction
- Wilbur-Ellis Co. v. Kuther - Supreme Court, 1964. Extended the repair-reconstruction doctrine of Aro Mfg. Co. v. Convertible Top Replacement Co.
- Compco Corp. v. Day-Brite Lighting, Inc. - Supreme Court, 1964. Held that state law that, in effect, duplicated the protections of the US patent laws was preempted by federal law.
- Sears, Roebuck & Co. v. Stiffel Co. - Supreme Court, 1964. Companion to Compco Corp. v. Day-Brite Lighting, Inc..
- United States v. Adams - Supreme Court, 1965. Wet battery including a combination of known elements not obvious because the operating characteristics were unexpected and improved over then-existing wet batteries.
- Graham v. John Deere Co. - Supreme Court, 1966. Clarified the requirement of nonobviousness.
- Anderson’s-Black Rock, Inc. v. Pavement Salvage Co. - Supreme Court, 1969. Related to obviousness.
- Lear, Inc. v. Adkins - Supreme Court, 1969. Overturned the doctrine of licensee estoppel.
- Gottschalk v. Benson - Supreme Court, 1972. Held that an algorithm is not patentable if the claim would preempt all uses of the algorithm.
- Honeywell v. Sperry Rand - 1973. Invalidated the 1964 patent for the ENIAC, the world's first general-purpose electronic digital computer, thus putting the invention of the electronic digital computer into the public domain.
- United States v. Glaxo Group Ltd. - Supreme Court, 1973. Relation between patent law and antitrust law.
- Dann v. Johnston - Supreme Court, 1976. Patentability of a claim for a business method patent (but the decision turns on obviousness rather than patent-eligibility).
- Sakraida v. Ag Pro - Supreme Court, 1976. Arranging old elements with each performing the same function it had been known to perform fell under the head of "work of the skillful mechanic, not of that of the inventor".
- Parker v. Flook - Supreme Court, 1978. Ruled that a mathematical algorithm is not patentable if its application itself is not novel.
- Diamond v. Chakrabarty - Supreme Court, 1980. Ruled that a genetically modified micro-organisms can be patented.
- Diamond v. Diehr - Supreme Court, 1981. Ruled that the execution of a process, controlled by running a computer program was patentable.
- MedImmune, Inc. v. Genentech, Inc. - Supreme Court, 1983 onwards. Involving a fundamental technology required for the artificial synthesis of antibody molecules.
- Bonito Boats, Inc. v. Thunder Craft Boats, Inc. - Supreme Court, 1989. State law partially duplicating and therefore interfering with federal patent law.
- Eli Lilly & Co. v. Medtronic, Inc. - Supreme Court, 1990. Held that premarketing activity conducted to gain approval of a device under the Federal Food, Drug, and Cosmetic Act is exempted from a finding of infringement.
- Cardinal Chemical v. Morton (1993)
- Asgrow v. Winterboer (1995) - PVPA
- Markman v. Westview Instruments, Inc. - Supreme Court, 1996. Held 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. - Supreme Court, 1997. Updated the doctrine of equivalents.
- Pfaff v. Wells Electronics, Inc. - Supreme Court, 1998. Determined what constituted being "on sale" for the purposes of barring the grant of a patent for an invention.
- Dickinson v. Zurko (1999) - PTO fact-finding gets "substantial evidence" standard on review
- Florida Prepaid v. College Savings Bank (1999) - Unconstitutional for Congress to eliminate 11th Amendment sovereign immunity for states against patent infringements.
- J.E.M. v. Pioneer Hi-Bred (2001) - Plant breeds are patentable subject matter
- Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. (2002). In the doctrine of equivalents, prosecution history estoppel creates only a rebuttable presumption against infringement
- Holmes Group v. Vornado (2002) - Patent issues raised in counterclaim do not give rise to Federal Circuit jurisdiction
- Merck KGaA v. Integra Lifesciences I, Ltd. - Supreme Court, 2005. Related to Research exemption.
- EBay Inc. v. MercExchange, L.L.C. - Supreme Court, 2006. Ruled that an injunction should not automatically issue based on a finding of patent infringement.
- Illinois Tool Works Inc. v. Independent Ink, Inc. - Supreme Court, 2006. Related to "tying" arrangements of patented products.
- LapCorp v. Metabolite - Supreme Court, 2006
- MedImmune v. Genentech - Supreme Court, 2007.
- KSR v. Teleflex - Supreme Court, 2007. Concerning the issue of obviousness as applied to patent claims.
- Microsoft v. AT&T - Supreme Court, 2007. Related to international enforceability of U.S. software patents.
- Quanta v. LG Electronics - Supreme Court, 2008. Patent exhaustion and its applicability to certain types of method patents.
- Bilski v. Kappos - Supreme Court, 2010. Re-focused subject-matter eligibility test on the three judicial exclusions “laws of nature, physical phenomena, and abstract ideas.”
- Global-Tech v. SEB (2011)
- Stanford v. Roche (2011) - Bayh-Dole
- Microsoft Corp. v. i4i Ltd. Partnership - Supreme Court, 2011. Invalidity must be shown by clear and convincing evidence.
- Mayo Collaborative Services v. Prometheus Laboratories, Inc. - Supreme Court, 2012. Invalidated attempt to patent natural law.
- Caraco v. Novo (2012)
- Kappos v. Hyatt (2012)
- Bowman v. Monsanto - Supreme Court, 2012. Patent exhaustion does not permit a farmer to reproduce patented seeds through planting and harvesting without the patent holder's permission.
- Gunn v. Minton (2013)
- Association for Molecular Pathology v. Myriad Genetics - Supreme Court, 2013. Invalidated patents on naturally occurring DNA segments, but not on cDNA.
- FTC v. Actavis (2013) - Pay-for-delay is subject to antitrust analysis
- Alice Corp. v. CLS Bank International - Supreme Court, 2014. Invalidated patent based on abstract idea.
- Medtronic v. Boston Scientific (2014) - Burden of persuasion on infringement in declaratory judgment cases
- Octane Fitness v. Icon Health & Fitness (2014) - Fee-shifting
- Highmark v. Allcare (2014) - Feeshifting
- Limelight v. Akamai (2014) - Inducement liability with no direct infringement
- Nautilus v. Biosig (2014) - PHOSITA requirement
- Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. - Supreme Court, 2015. Claim interpretation in patent, standard of review by the Federal Circuit.
- Commil v. Cisco (2015) - Good-faith belief in invalidity is not a defense
- Kimble v. Marvel (2015) - Pending; should court overrule Brulotte?
References
- Lisa Larrimore Ouellette, "Supreme Court Patent Cases", Written Description
See also
- List of United States Supreme Court copyright case law
- List of United States Supreme Court trademark case law