HOFSTRA-FALL 2014-PATENT LAW 2921-PROF. JOSEPH RICHETTI (phone:
212-541-1092; e mail: joe.richetti@bryancave.com)
(Tuesday, 8:10 am to 10 am) ROOM: KOPPL 0014
TEXT:
PATENT LAW AND POLICY: CASES AND MATERIALS SIXTH
EDITION
ASSIGNMENTS
#1 8/26/14
GENERAL DISCUSSION OF INTELLECTUAL PROPERTY
WHAT IS A PATENT
General Overview - Read pp. 13-16, 24-26, 49-55, 59-64
Sample Patent - pp. 17-23
#2 9/2/14
STATUTORY SUBJECT MATTER
Read pp. 69-78, 81-103, 123-128, 133-142, 180-182, including the following
cases: Diamond, Bilski, Gottschalk, Diehr
Handouts:
1. Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
http://www.supremecourt.gov/opinions/11pdf/10-1150.pdf;
2. CLS Bank Int'l v. Alice Corp.,
http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1301.Opinion.58-2013.1.PDF;
3. Association for Molecular Pathology, et al. v. Myriad Genetics,
4. http://www.supremecourt.gov/opinions/12pdf/12-398_1b7d.pdf;
5. Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 2014 U.S. App.
LEXIS 13149
INVENTORSHIP
Read pp. 1081-1089, 1095-1111, including the following cases: Burroughs
Wellcome, Ethicon, Inc.
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UTILITY
Read pp. 216-219, 232-241, including the following cases: Juicy Whip, and In
re Brana.
#3 9/9/14
DISCLOSURE - Enablement/Written Description
Read pp. 262-264, 271-277 including the following cases: The Incandescent
Lamp Patent.
Read pp. 289-298, 298-316 including the following cases: Gentry Gallery, Inc,
Ariad (en banc).
DISCLOSURE - Definiteness/Best Mode
Read pp. 316-327, including the following cases: Orthokinetics, Inc., Standard
Oil.
Handout: Nautilus, Inc. v. Biosig Instruments
http://www.supremecourt.gov/opinions/13pdf/13-369_1idf.pdf
#4 9/16/14
NOVELTY
Read pp. 344-354, 358-365, 377-396, including the following cases: In re
Robertson, Schering Corp., National Tractor Pullers Ass’n, Rosaire, and In re
Klopfenstein.
#5 9/23/14
NOVELTY
Read pp. 414-427, 427-432, 441-442, 454-460, 467-473, including the following
cases: Campbell, Brown, Dow Chemical, and In re Moore.
#6 09/30/14
NOVELTY
Read pp. 493-513, 522-529, 540-549, 550-558, 558-566, 567-572, 597-604,
including the following cases: Pennock, Egbert, Pfaff, City of Elizabeth, Lough,
Baxter International, and, W.L. Gore.
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#7 10/7/14
NONOBVIOUSNESS
Read pp. 624-645, 653-670, 708-715, 739-747, including the following cases:
Graham, KSR, In re Winslow, Hazeltine, and In re Clay.
#8 10/14/14
INFRINGEMENT - Claim Interpretation/Literal Infringement
Read pp. 749-750, 756-779, 795-806, including the following cases: Phillips,
Markman, and Cybor.
Handouts:
1. Akamai v. Limelight http://www.supremecourt.gov/opinions/13pdf/12786_664d.pdf;
2. Lighting Ballast Control LLC v. Philips Electronics N.A. Corp. (En banc)
http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1014.Opinion.218-2014.1.PDF
#9 10/21/14
INFRINGEMENT - DOCTRINE OF EQUIVALENTS
Read pp. 807-830, including the following cases: Winans, Festo Corp.
Warner-Jenkinson Co.,,, Johnson and Johnston (en banc)
#10 10/28/14
INDIRECT AND JOINT INFRINGEMENT/WILLFUL INFRINGEMENT
Read pp. 858-888, 973-982 including the following cases: Aro Manufacturing,
C.R. Bard, Inc., Global-Tech, Brown, Microsoft, In re Seagate.
Handouts:
1. DSU Medical, http://www.cafc.uscourts.gov/images/stories/opinions-orders/041620.pdf;
2. ACCO v. ABA Locks and Belkin,
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3. Commil USA, LLC v. Cisco Sys., Inc. (good-faith belief of invalidity can be
evidence of no inducement)
http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1042.Opinion.621-2013.1.PDF.
#11 11/4/14
INEQUITABLE CONDUCT
Read pp. 1056-1070, including the following cases: Therasense, Inc. v. Becton,
Dickinson & Co.
LACHES/EQUITABLE ESTOPPEL
Read pp. 1070-1079, including Symbol
EXHAUSTION/FIRST SALE DOCTRINE
Read pp. 1198-1208, including Quanta
Handout: Monsanto Co. v. Bowman (patent exhaustion and sale)
http://www.supremecourt.gov/opinions/12pdf/11-796_c07d.pdf
#12 11/11/14
REMEDIES - Money Damages/Injunction
Read pp. 889-904, 915-933, 933-944, 948-955, 963-967, including the following
cases: Ebay Inc., Lucent, Panduit Corp., Rite-Hite Corp., Grain Processing Corp., and
State Industries.
PATENT MARKING
Read pp. 982-984.
#13 11/18/14
POST GRANT PROCEDURES INCLUDING REEXAMINATION
REISSUE, POST GRANT REVIEW, AND INTER PARTES REVIEW
Read pp. 1039-1053, including Rodime.
#14 11/25/14
LAST CLASS - REVIEW FOR FINAL AND HOT TOPICS
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Attendance & Lateness
You are expected to arrive on time and prepared for each class.
Moreover, the rules of the New York State Court of Appeals and the American Bar
Association require law students to be in good and regular attendance in the courses for
which they are registered. To comply with these rules, you must attend at least 85% of
the regularly-scheduled classes in this course. Thus, you may miss no more than two
classes in this two-credit class.
I will provide dated sign-in sheets for each regularly-scheduled class. Your signature (or
lack thereof) on these sheets shall presumptively determine your attendance at (or
absence from) any given class. Each student is individually responsible for signing the
attendance sheet in. Falsification of sign-in sheets (by, for example, signing another
student’s name) is a violation of the Code of Academic Conduct.
If you exceed the permitted absences by not attending class, or by failing to sign in, you
will be administratively withdrawn from the course. Any such withdrawal may have
serious ramifications for your financial aid, academic standing, and date of graduation. If
you are excessively absent from several classes, you may face additional sanctions,
including but not limited to denial of certification of good and regular attendance to the
New York State Board of Law Examiners, or other state bar examiners.
The Office of Student Affairs has authority to excuse class absences for religious reasons
and in cases of truly compelling hardship. If you wish to claim a particular absence as
excused, and thus not counted against your maximum number of allowable absences, you
must take that issue up with the Office of Student Affairs.
Grading
Your final grade shall be based upon a final examination. The final examination will be
closed-note and closed-book, however, you will be provided with portions of selected
patent statutes. The exam will consist of several essay questions totaling 100 points. It
will be graded anonymously.
You will earn a letter grade for the course (from “A” to “F”) that corresponds to your
score on the final exam given the parameters set by the Law School’s mandatory grading
curve. I reserve the right to increase your letter grade by one increment (e.g., from a “B”
to a “B+”) on account of your in-class performance throughout the semester.
Email and Office Hours
If you have any questions or concerns, please contact me using my phone and email
provided above. If you would like to meet to discuss anything in person, please let me
know and we can arrange to meet before, or after class.
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