CitationIn re Hilmer, 359 F.2d 859, 53 C.C.P.A. 1288, 1966 CCPA LEXIS 420, 149 U.S.P.Q. (BNA) 480 (C.C.P.A. Apr. 28, 1966) Brief Fact Summary. The decision to affirm a rejection of Hilmer’s patent claims involved a determination that a United States patent used as a prior art reference is considered effective as of its foreign “convention” filing date rather than the date that the United States patent application was filed. Synopsis of Rule of Law. The effective date of a United States patent used as a prior art reference is the date the application was filed in the United ...
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In re Gosteli
CitationIn re Gosteli, 872 F.2d 1008, 1989 U.S. App. LEXIS 5375, 10 U.S.P.Q.2D (BNA) 1614 (Fed. Cir. Apr. 24, 1989) Brief Fact Summary. Gosteli tried to predate his U.S. patent filing date to the filing of his Luxembourg patent. Synopsis of Rule of Law. Claims are entitled to the benefit of their foreign priority date under 35 U.S.C. § 119 only if properly supported by the foreign priority application as required by § 112. ...
In re Foster
CitationIn re Foster, 343 F.2d 980, 52 C.C.P.A. 1808, 1965 CCPA LEXIS 434, 145 U.S.P.Q. (BNA) 166 (C.C.P.A. Apr. 15, 1965) Brief Fact Summary. A prior art reference cited in rejecting Foster’s patent claims had an effective date after the date of Foster’s invention but more than one year before the date on which he finally filed his patent application. Synopsis of Rule of Law. Under Rule 131, a patent must be denied if the applicant commits to swear back a reference having an effective date more than a year before his filing date if the reference contains enough disclosure to ma ...
In re Fisher
CitationIn re Fisher, 421 F.3d 1365, 2005 U.S. App. LEXIS 19259, 76 U.S.P.Q.2D (BNA) 1225 (Fed. Cir. Sept. 7, 2005) Brief Fact Summary. Fisher (Plaintiff) stated that his claimed invention, relating to five purified nucleic acid sequences (genes), also known as expressed sequence tags (ESTs), that encoded proteins and protein fragments in maize plants, had a specific and substantial utility and that his patent application made it possible for someone of ordinary skill in the art to use the invention. Synopsis of Rule of Law. A patent application that reveals general generic uses of a claim ...
In Re Dillon
CitationIn re Dillon, 919 F.2d 688, 1990 U.S. App. LEXIS 19768, 16 U.S.P.Q.2D (BNA) 1897 (Fed. Cir. Nov. 9, 1990) Brief Fact Summary. Dillon (Plaintiff) applied for a patent for an additive to reduce soot emissions. Prior art had disclosed a fuel additive similar in structure that was used as a dewatering agent, but did not suggest or disclose the fuel additive’s use to reduce soot emissions. Synopsis of Rule of Law. A prima facie case of obviousness does not require both structural similarity and a suggestion in or expectation from the prior art that the claimed compound ...
In re Deuel
CitationIn re Deuel, 51 F.3d 1552, 1995 U.S. App. LEXIS 6200, 34 U.S.P.Q.2D (BNA) 1210 (Fed. Cir. Mar. 28, 1995) Brief Fact Summary. Deuel’s discovery of the sequences of similar tissue growing proteins in human and bovine cells was determined obvious by the Patent Board. Synopsis of Rule of Law.  A prima facie case of obviousness regarding a chemical entity that is structurally new requires that the teachings of a prior art suggest the claimed compounds to a person of ordinary skill in the art. ...
In re Clay
CitationIn re Clay, 23 U.S.P.Q.2D (BNA) 1058, 966 F.2d 656, 1992 U.S. App. LEXIS 13091 (Fed. Cir. June 10, 1992) Brief Fact Summary. Clay’s invention displaced the dead volume at the bottom of a tank with a gel and he argued that the area was technical and too remote from a patented invention involving a similar gel and was therefore not prior art. Synopsis of Rule of Law. Prior art is similar if it is the same area of undertaking or if it is still reasonably significant to the particular problem the inventor is involved in. ...
In re Berty
CitationIn re Bergy, 596 F.2d 952, 1979 CCPA LEXIS 277, 201 U.S.P.Q. (BNA) 352 (C.C.P.A. Mar. 29, 1979) Brief Fact Summary. Article I, § 8, clauses 8 and 18, of the Constitution are analyzed. Synopsis of Rule of Law. The purpose of granting patent rights to inventors for their discoveries is to promote progress in the useful arts or technological arts, rather than in science or knowledge in general. ...
Hotchkiss v. Greenwood
CitationHotchkiss v. Greenwood, 52 U.S. 248, 13 L. Ed. 683, 1850 U.S. LEXIS 1507, 11 HOW 248 (U.S. Feb. 19, 1851) Brief Fact Summary. Hotchkiss (Plaintiff) claimed that Greenwood (Defendant) had infringed upon his patented design for knobs made of clay or porcelain. Synopsis of Rule of Law. If a patent only improves an old device by substituting materials better suited to the purpose of the device, it will not be held valid. ...
Great A. & P. Tea Co. v. Supermarket Equipment Corp.
CitationGreat Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S. Ct. 127, 95 L. Ed. 162, 1950 U.S. LEXIS 2604, 87 U.S.P.Q. (BNA) 303 (U.S. Dec. 4, 1950) Brief Fact Summary. Great A. & P. (Plaintiff) brought suit against Supermarket (Defendant) claiming infringement of its patent on a rack to move groceries along a grocery store counter to the casher. Synopsis of Rule of Law. Portions of prior art that are merely brought together by a patentee, without any change in their particular functions, do not make a valid patent. ...
Graver Tank v. Linde Air Products Co
CitationGraver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 70 S. Ct. 854, 94 L. Ed. 1097, 1950 U.S. LEXIS 2608, 85 U.S.P.Q. (BNA) 328 (U.S. May 29, 1950) Brief Fact Summary. Linde (Plaintiff) brought suit against Graver (Defendant) for patent infringement even though Defendant substituted a chemical that was equivalent to the one described in the patent. Synopsis of Rule of Law. The doctrine of equivalents is applied to chemical equivalents in compositions or to mechanical equivalents in devices. ...
Graham v. John Deere Co.
CitationGraham v. John Deere Co., 383 U.S. 1, 86 S. Ct. 684, 15 L. Ed. 2d 545, 1966 U.S. LEXIS 2908, 148 U.S.P.Q. (BNA) 459 (U.S. Feb. 21, 1966) Brief Fact Summary. John Deere (Defendant) defended an infringement action on grounds of obviousness. Synopsis of Rule of Law. A case-by-case analysis of the scope and content of the prior art, the differences between the prior art and the claims at issue, as well as the level of ordinary skill in the applicable art, are required to determine the non-obviousness of a claimed invention as to a prior art. ...
Gould v. Schawlow
CitationGould v. Townes, 363 F.2d 908, 53 C.C.P.A. 1403, 1966 CCPA LEXIS 327, 150 U.S.P.Q. (BNA) 634 (C.C.P.A. Aug. 4, 1966) Brief Fact Summary. Gould (Plaintiff) conceived of a laser, but did not have the resources to reduce it to practice before Schawlow (Defendant). Synopsis of Rule of Law. A party chargeable with diligence must account for the entire period during which diligence is required and prove reasonable diligence during that time. ...
Gould v. Hellwarth
CitationGould v. Hellwarth, 472 F.2d 1383, 1973 CCPA LEXIS 426, 176 U.S.P.Q. (BNA) 515 (C.C.P.A. Feb. 15, 1973) Brief Fact Summary. Gould (Plaintiff) applied for a patent on a Q-switch for a laser even though lasers themselves were still theoretical. Synopsis of Rule of Law. A patent application must have enough disclosure to enable one skilled in the art to make a device that is operable. ...
Gottschalk v. Benson
CitationGottschalk v. Benson, 409 U.S. 63, 93 S. Ct. 253, 34 L. Ed. 2d 273, 1972 U.S. LEXIS 129, 175 U.S.P.Q. (BNA) 673 (U.S. Nov. 20, 1972) Brief Fact Summary. Gottschalk (Defendant), the Acting Commissioner of Patents, appealed the reversal of his rejection of patent claims relating to the programmed conversion of numerical information. Synopsis of Rule of Law. A mathematical formula with no substantial practical application exception in connection with a digital computer cannot be patented. ...
Gillman v. Stern
CitationGillman v. Stern, 114 F.2d 28, 1940 U.S. App. LEXIS 3062, 46 U.S.P.Q. (BNA) 430 (2d Cir. N.Y. Aug. 5, 1940) Brief Fact Summary. Stern (Defendant) claimed that Gillman’s (Plaintiff) patent was invalid since Haas had secretly invented a similar “puffing machine” years earlier. Synopsis of Rule of Law. An inventor who strictly keeps the operation and structure of his machine secret while operating it commercially is not the first inventor if another made the first public use. ...
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.
CitationFesto Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 122 S. Ct. 1831, 152 L. Ed. 2d 944, 2002 U.S. LEXIS 3818, 62 U.S.P.Q.2D (BNA) 1705, 70 U.S.L.W. 4458, 2002 Cal. Daily Op. Service 4539, 2002 Daily Journal DAR 5803, 15 Fla. L. Weekly Fed. S 320 (U.S. May 28, 2002) Brief Fact Summary. Festo (Plaintiff) claimed patent infringement against Shoketsu (Defendant). Defendant argued that by narrowing claims to obtain its patents, Plaintiff surrendered all equivalents to the amended claims. Synopsis of Rule of Law. The narrowing of an amendment to satisfy any req ...
Ethicon, Inc. v. United States Surgical Corp.
CitationEthicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1998 U.S. App. LEXIS 1445, 45 U.S.P.Q.2D (BNA) 1545, 48 Fed. R. Evid. Serv. (Callaghan) 1226 (Fed. Cir. Feb. 3, 1998) Brief Fact Summary. Ethicon (Plaintiff) brought suit against Surgical (Defendant) claiming patent infringement. Defendant argued by claiming a co-inventor of the invention had provided them with a license to use the patent. Synopsis of Rule of Law. (1) Testimony supported by sketches is adequate to show co-invention clearly and convincingly. (2) Regarding even a single claim, a jo ...
eBay, Inc. v. MercExchange, L.L.C.
CitationeBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 126 S. Ct. 1837, 164 L. Ed. 2d 641, 2006 U.S. LEXIS 3872, 78 U.S.P.Q.2D (BNA) 1577, 74 U.S.L.W. 4248, 27 A.L.R. Fed. 2d 685, 19 Fla. L. Weekly Fed. S 197 (U.S. May 15, 2006) Brief Fact Summary. eBay (Defendant) and MercExchange (Plaintiff) could not agree on a license for Plaintiff’s patent. When Defendant proceeded with its website, Plaintiff brought suit for patent infringement and won damages due to Defendant’s liability. Plaintiff also sought a permanent injunction. Synopsis of Rule of Law. T ...
E.I. DuPont deNemours & Co. v. Christopher
CitationE. I. du Pont deNemours & Co. v. Christopher, 431 F.2d 1012, 1970 U.S. App. LEXIS 8091, 167 U.S.P.Q. (BNA) 1, 166 U.S.P.Q. (BNA) 421 (5th Cir. Tex. July 20, 1970) Brief Fact Summary. A third party hired photographer Christopher (Defendant) to take aerial photographs of a DuPont (Plaintiff) plant under construction to uncover trade secrets. Synopsis of Rule of Law. The holder of a trade secret can sue another for obtaining knowledge of the trade secret without having spent the time or money to discover it on their own, unless the holder discloses the trade secret voluntarily, or if the ...
Diamond v. Diehr
CitationDiamond v. Diehr, 450 U.S. 175, 101 S. Ct. 1048, 67 L. Ed. 2d 155, 1981 U.S. LEXIS 73, 209 U.S.P.Q. (BNA) 1, 49 U.S.L.W. 4194 (U.S. Mar. 3, 1981) Brief Fact Summary. In Diehr’s (Plaintiff) suit against Diamond (Defendant), the patent examiner, for rejection of Plaintiff’s patent on a process for curing synthetic rubber, Defendant argued that the steps in Plaintiff’s claims that were carried out by a computer under control of a stored program were nonstatutory subject matter under 35 U.S.C. § 101. Synopsis of Rule of Law. Patentable claims ...
Datamize, LLC v. Plumtree Software, Inc.
CitationDatamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 2005 U.S. App. LEXIS 16176, 75 U.S.P.Q.2D (BNA) 1801 (Fed. Cir. Aug. 5, 2005) Brief Fact Summary. Datamize’s (Plaintiff) only independent claim in its ‘137 patent, requires the patented interface software to produce interface screens that are “aesthetically pleasing.” The district court granted summary judgment to Plumtree (Defendant) determining the claims were invalid for indefiniteness because Plaintiff failed to define “aesthetically pleasing” in its claims. Synopsis of Rule ...
Cybor Corp. v. FAS Technologies, Inc
CitationCybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1998 U.S. App. LEXIS 5908, 46 U.S.P.Q.2D (BNA) 1169 (Fed. Cir. Mar. 25, 1998) Brief Fact Summary. FAS (Plaintiff) filed suit against Cybor (Defendant) for infringing its patent. On appeal, Defendant argued the district court went wrong in claim construction. Synopsis of Rule of Law. Claim construction is a question of law only, subject to de novo review. ...