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2020 Summer/Fall Supplement for Merges & Duffy: Patent Law And

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2020 Summer/Fall Supplement for Merges & Duffy: Patent Law And Copyright © 2020 Carolina Academic Press, LLC. All rights reserved. 2020 Summer/Fall Supplement for Merges & Duffy: Patent Law and Policy (7th ed. 2017) Copyright © 2020 Carolina Academic Press, LLC. All rights reserved. Copyright © 2020 Carolina Academic Press, LLC All Rights Reserved Carolina Academic Press 700 Kent Street Durham, North Carolina 27701 Telephone (919) 489-7486 Fax (919) 493-5668 E-mail: [email protected] www.cap-press.com Copyright © 2020 Carolina Academic Press, LLC. All rights reserved. Table of Contents Chapter 1: Introduction ................................................................................................................. 1 A. Historical Overview of Patent Law ...................................................................................... 1 Update on Supreme Court Patent Cases .............................................................................. 1 D. Overview of Patent Rights and Patent Process ................................................................... 3 Revised Figure on the Legal Process of the U.S. Patent System ......................................... 3 3. Post-Issuance Administrative Processes .......................................................................... 4 Note on the Constitutionality of Post-Issuance Administrative Processes .......................... 4 Chapter 2: Patentable Subject Matter .......................................................................................... 5 B. Natural Law and Natural Principles .................................................................................... 5 Athena Diagnostics, Inc. v. Mayo Collaborative Services .................................................. 5 Notes on Athena and Natural Law in § 101 Doctrine ........................................................ 13 Notes on American Axle and New Patentable Subject Matter Issues ................................ 16 D. Abstract Ideas ....................................................................................................................... 17 McRO, Inc. v. Bandai Namco Games Am. Inc. .................................................................. 18 Berkheimer v. HP Inc......................................................................................................... 28 Aatrix Software, Inc. v. Green Shades Software, Inc. ........................................................ 31 Notes on Recent Developments In § 101 Doctrine............................................................ 32 Chapter 3: Utility .......................................................................................................................... 36 C. Substantial, Practical, and Specific Utility ........................................................................ 36 Note on the Demise of Canada’s “Promise” Doctrine in Utility Law ............................... 36 Chapter 5: Novelty under the AIA .............................................................................................. 37 A. Prior Art under AIA § 102(a) ............................................................................................. 37 1. One-Time-Period Prior Art in § 102(a)(1) ..................................................................... 37 c. “In Public Use” ................................................................................................. 37 d. “On Sale” .......................................................................................................... 37 Helsinn Healthcare v. Teva Pharma. ...................................................... 38 Notes on Helsinn. .................................................................................... 41 e. “Otherwise Available to the Public” ................................................................. 45 i Copyright © 2020 Carolina Academic Press, LLC. All rights reserved. Chapter 7: Nonobviousness .......................................................................................................... 46 C.2 Obviousness at the Federal Circuit after KSR .................................................................. 46 Samsung v. Apple—Future Supreme Court Review on Obviousness? ............................. 46 Chapter 8: Infringement .............................................................................................................. 49 B. Interpreting Claims ................................................................................................................ 49 4. Joint and Divided Infringement ....................................................................................... 49 Multiple Parties and System Claims ..................................................................... 49 H. Infringement and Foreign Activity ...................................................................................... 49 § 271(f) and Single Components ............................................................................................. 49 § 271(f) and Damages: The Court’s WesternGeco Ruling ...................................................... 50 Chapter 9: Remedies..................................................................................................................... 51 C. Lost Profits........................................................................................................................... 51 4. Obtaining the Infringer’s Profits under Design Patent Law ......................................... 51 Samsung Electronics Co. v. Apple Inc. (S.Ct. 2016) ............................................ 53 Notes on Samsung v. Apple .................................................................................. 55 5. Obtaining Lost Profits from Overseas Activities .......................................................... 55 WesterGeco LLC v. ION Geophysical Corp. (S.Ct. 2018) ................................... 55 Notes on WesternGeco ......................................................................................... 60 Chapter 10: The Legal Process of the Patent System ................................................................ 61 A.5 The Jurisdictional Structure of the Federal Courts .................................................... 61 Notes on Venue in Patent Infringement Cases .................................................................. 61 C.1. Adversarial Administrative Review ............................................................................. 68 Notes on New Developments in Inter Partes Review ....................................................... 68 Addition to the existing “Note on Post-Grant Review” ..................................................... 78 E.2. Laches .............................................................................................................................. 78 SCA Hygiene Prods. v. First Quality Baby Prods., LLC (S.Ct. 2017) .............................. 78 Chapter 12: Antitrust and Patent Misuse ................................................................................... 80 C. Exhaustion and the “First Sale” Doctrine ........................................................................ 80 Impression Products v. Lexmark (S.Ct. 2017) ................................................................... 80 Notes on Impression Products v. Lexmark ........................................................................ 89 ii Copyright © 2020 Carolina Academic Press, LLC. All rights reserved. Chapter 1: Introduction Chap. 1.A. Historical Overview of Patent Law Update on Supreme Court Patent Cases On pages 15-16, replace the charts set forth in the text with these new updated charts: S.Ct. Patent Cases Per Year: Five Term Running Average (1950-2019 Terms) 4.5 4 3.5 3 2.5 2 1.5 1 0.5 0 Figure 1-1. Average Number of Supreme Court Cases per Term, 1950 – 2019 1 Copyright © 2020 Carolina Academic Press, LLC. All rights reserved. S.Ct. Patent Cases Per Year: Five Term Running Average (1810-2019 Terms) 18 16 14 12 10 8 6 4 2 0 Figure 1-2. Average Number of Supreme Court Cases per Term, 1810 - 2019 As the updated charts show, the Supreme Court’s interest in patent law continues at near record levels for any time in the past half century. In its 2016 Term, the Supreme Court decided six cases on patent law, many of which are discussed in this casebook supplement. For the 2017 Term, the Court decided three cases, each of which has significant if not earth-shaking implications. Two of those cases—Oil States Energy Servs., LLC v. Greene’s Energy Grp., 138 S. Ct. 1365 (2018), and SAS v. Iancu, 138 S. Ct. 1348 (2018)—involve the propriety of the new inter partes review procedures that the PTO began to administer after the 2011 America Invents Act (AIA). Both of those cases are covered in Chapter 10 of this update. A third case— WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct. 2129 (2018)—represents an important development in the damages available for patent infringement. It is covered in Chapter 9 of this update. In its 2018 Term, the Court decided two patent cases. The case of Helsinn v. Teva, 139 S.Ct. 628 (2019), is the first case in which the Court has interpreted the new first-to-file system of priority in the AIA. It is covered in the update to Chapter 5. The other case—Return Mail v. U.S. Postal Service, 139 S.Ct. 1853 (2019)—held that the U.S. Government and its agencies cannot challenge patents under the AIA’s inter partes review procedures. In its 2019 Term, the Court decided two more cases. The first, Peter v. NantKwest, Inc., 140 S.
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