Advanced Patent Law Seminar – Fall 2005
Some Cover Sheets – Student Final; My Super-Final
Prof. Morris
9/20/05
COVER SHEETS
The cover sheet is the single most important thing you will work
on for your packet and talk. It culminates and summarizes all
your work and all your thought. If it does less than it could,
you have done less than you should.
I have therefore prepared some cover sheet templates. They are
based on the first two packets from the 2002 seminar. I show
them as the students did them: the BEFORE version, with big X
across the page, and the AFTER version, with my commentary.
(Messrs. Plochinski and Lycans were the guinea pigs in that
seminar, and both their packets were excellent. The fact that I
could find things to change in their cover sheets does not mean
that their work was faulty, only that they went first. Their
packets are also longer than yours should be.
Please, if you do not understand why I made a particular change,
and would prefer to do what the student did, let me know.
Font sizes, especially for the disclaimer, have been changed to
make the page fit. On a real coversheet, you would not have the
extra pageheader for the current Fall 2005 seminar and the
pagefooter for the current page number and printing date.
Please use the largest font you can, consistent with a good
appearance and the one-side-of-one-sheet-only requirement.
ALSO – before you declare yourself done when you make your
packet, PLEASE FIRST exit msword, and then open your document
again and eyeball every page. Even print it out. That way you
can make sure you have saved what you think you saved.
THANKS.
RJM
CONTENTS
The COVER SHEETS of
Plochinski – BEFORE (KEP VERSION)
AFTER (RJM VERSION)
Lycans – BEFORE (APL VERSION)
AFTER (RJM VERSION)
page 2
page 3
page 4
page 5
This document is posted on the course website.
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2/17/2016 10:55:00 AM
Advanced Patent Law Seminar – Fall 2005
Some Cover Sheets – Student Final; My Super-Final
Advanced Patent Law - Fall 2002
Professor Roberta Morris
Prof. Morris
9/20/05
Presentation by Ken Plochinski
October 22, 2002
Some Judicial Consequences of Settlements
Section
Contents
Introduction
Editor's comments (Ken Plochinski)
KEP-2
Preclusive effects
of a settlement
when the court has
not made a final
judgment on
validity.
Foster v. Hallco (Fed. Cir. 1991, Nies, Skelton and Rader)
The court determines whether a clause in a consent decree asserting
the validity of a patent is enforceable against a party to the decree,
barring a later challenge to the validity of the patent.
KEP-3
Augustine Medical v. Progressive Dynamics (Fed. Cir. 1999, Mayer, Rader
and Gajarsa)
The court determines whether a settlement agreement from one suit
discharging all of the plaintiff's claims bars a later suit by the plaintiff
for continuing patent infringement by the defendant, even though
there were no patent infringement claims in the original lawsuit.
KEP-6
Interdigital v. OKI (E.D. Penn. 1994)
The court determines whether a dismissal with prejudice of all claims
against a direct infringer precludes proving the necessary direct
infringement in a later case against an indirect infringer whose acts
were linked to the prior defendant?
KEP-9
U.S. Bancorp v. Bonner Mall (1994, Scalia)
The Court determines whether courts should vacate judgments under
appellate review when a settlement moots the case.
KEP-11
Aqua Marine v. AIM Machining (Fed. Cir. 2001, Lourie, Rader and Dyk)
The court applies the doctrine expressed in U.S. Bancorp to a
judgment of patent invalidity in a case that settled prior to the filing of
a notice of appeal.
KEP-15
Patent misuse in
licenses arising
from settlements.
In re Clausen (Bank. D. N.J. 1988)
The court examines one way in which the terms of a settlement
agreement might lead to the unenforceability of a patent.
KEP-17
Hypothetical
"A True Story"
How might a settlement agreement in a suit against one competitor
hurt you in a suit against a second?
KEP-19
The effect of a
settlement on a
prior judgment of
invalidity.
Page
Note: The cases have been extensively edited and reformatted. Some citations and footnotes have been
removed without notice. Other deletions are indicated by ellipses. All bold emphasis is my own, italic
emphasis is in the original. {My comments are in Arial font, in brackets. -KEP}
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2/17/2016 10:55:00 AM
Advanced Patent Law Seminar – Fall 2005
Some Cover Sheets – Student Final; My Super-Final
Advanced Patent Law - Fall 2002
Professor Roberta Morris
Prof. Morris
9/20/05
Presentation by Ken Plochinski
October 22, 2002
Some Judicial Consequences of Settlements
Section
Contents
Page
The Perils of
Drafting a
Settlement
Agreement
VALUE ADDED (Plochinski's Intro was not written in a way that
showcases the value added. It is more of a (slightly amplified) annotated
table of contents, thus duplicating this cover sheet. If it DID have value
added, this would be the place on the cover sheet to summarize that
content.) (Ken Plochinski)
Rule 60(b) Fed. R. Civ. P.
VALIDITY:
Preclusive effects
of a settlement
when the court
itself has not
evaluated and ruled
on validity.
KEP-2
KEP-2
Foster v. Hallco (Fed. Cir. 1991, Nies, Skelton and Rader)
Does a clause in a consent decree confirming patent validity
bar a consenting party from later challenging validity?
Augustine Medical v. Progressive Dynamics (Fed. Cir. 1999, Mayer, Rader
and Gajarsa)
If the original suit did not charge patent infringement, what happens if the
settlement includes broad language of discharge and THEN the
infringement begins?
Interdigital v. OKI (E.D. Penn. 1994)
Does a dismissal with prejudice against the direct infringer preclude the
patent owner from proving contributory infringement by using the
dismissed party's direct infringement?
KEP-3
KEP-6
KEP-9
VACATUR:
What happens
when opposing
parties BOTH want
a prior court
determination
VACATED, as part
of the settlement
U.S. Bancorp v. Bonner Mall (Sup. Ct. 1994 , Scalia)
A Supreme Court decision about bankruptcy (no patent issues).
If both parties want a lower court judgment vacated when they settle, and
one of them has a pending appeal at the time, can the appellant ask the
higher court to vacate?
Patent misuse by
settlement license
In re Clausen (Bankruptcy D. N.J. 1988)
A settlement agreement renders a patent unenforceable for misuse? Note
court and date.
KEP-17
Hypothetical
DRAFTING EXERCISE ("A TRUE STORY")
How might a settlement agreement in a suit against one competitor hurt you in
a suit against a second?
KEP-19
Aqua Marine v. AIM Machining (Fed. Cir. 2001, Lourie, Rader and Dyk)
U.S. Bancorp applied to patents: invalidity judgment that District Court
refuses to vacate
KEP-11
KEP-15
Note: The cases have been extensively edited and reformatted. Some citations and footnotes have been removed
without notice. Other deletions are indicated by ellipses. All bold emphasis is my own, italic emphasis is in the
original. {My comments are in Arial font, in brackets. - KEP}
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2/17/2016 10:55:00 AM
Advanced Patent Law Seminar – Fall 2005
Some Cover Sheets – Student Final; My Super-Final
Prof. Morris
9/20/05
Advanced Patent Law
DNA Sequences
Andy Lycans
October 22, 2002
Obviousness, Utility and Patenting DNA Sequences
Section
Contents
Page
International Conflicts Over Patenting Human DNA Sequences in the United
States and the European Union, NYU Law Review (2001), Donna Gitter,
Professor at Fordham. [hereinafter Conflicts Over Patenting Human DNA]
The basic biology background you need to get started. I use this article in
several places, but you won't find any of the international law here.
APL-2
Biology background and
history of DNA
sequences in relation to
patentable subject matter.
35 U.S.C. § 101 (last amended 1952) Patentable Subject Matter
APL-2
Editor’s History- Andrew P. Lycans
APL-2
Summary of two Supreme Court cases applying a patentable subject matter
analysis to living matter (Funk Brothers- suggestion of unpatenatability and
Chakrabarty- held patentable).
The utility
requirement in
relation to DNA
sequences.
The evolution of the
current test for
obviousness of DNA
sequences from circa
1990 through 1995.
Brenner v. Manson (U.S. 1966, Fortas)
This case involved chemicals useful in preparing other useful products.
The court holds the chemical itself must be useful for something, and
emphasizes patentability requires a known use.
Conflicts Over Patenting Human DNA
A summary of the CAFC's utility requirements for DNA sequences, including
the categorization of homologs as useful based on theoretical usefulness.
APL-5
APL-8
35 U.S.C. § 103 (as amended 1999)
APL-11
Genetics and the Law: Patenting the Human Genome, Emory Law Journal
(1990), Rebecca Eisenberg, Professor UMich (Thrower Symposium April '90)
This is a pre-Amgen/Deuel analysis of when DNA sequences should be
considered obvious. The author concludes that it will grow increasingly
difficult to patent DNA sequences.
APL-11
Amgen v. Chugai (Fed. Cir. 1991, Lourie, Markey and Clevenger)
In a case involving an obviousness challenge to a DNA patent, the court
holds that the process used was nonobvious, based on the process used.
In re Deuel (Fed. Cir. 1995, Lourie, Archer and Nies)
In a case similar to Amgen, the court maintains the process used does not
matter, and instead holds the obviousness of DNA patents should be judged
under the same test applied to chemical patents.
Conflicts Over Patenting Human DNA
A post-Amgen/Deuel presentation of the arguments on both sides of the
obviousness debate.
APL-14
APL-17
APL-23
{The materials in this packet have been substantially edited. I have deleted passages that contain
information that I do not believe to be relevant to our discussion. I have also corrected typos and inserted
editorial comments. Cases and statutes have been edited. Text has been reformatted and emphasis in
the original is indicated by italics sans braces. I have added the emphasis where the word is in bold.–
APL}
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2/17/2016 10:55:00 AM
Advanced Patent Law Seminar – Fall 2005
Some Cover Sheets – Student Final; My Super-Final
Advanced Patent Law – Fall 2002
Prof. Morris
Prof. Morris
9/20/05
Presentation by Andy Lycans
October 22, 2002
Obviousness, Utility and Patenting DNA Sequences
Section
DNA Sequences:
Biology
background and
the "patentable
subject matter"
controversy
The utility
requirement for
DNA sequences
Obviousness of
DNA sequences:
How the law
evolved between
1990 through
1995,
and what people
think it all means
now.
Contents
Page
Donna Gitter, International Conflicts Over Patenting Human DNA Sequences in
the United States and the European Union (NYU Law Review (2001)) –part 1
Prof. Gitter has taught patent law at Fordham since ____.
I use excerpts from this article in several places [referenced as Gitter,
Patenting Human DNA (2001)], not for its discussion of international law,
but because it provides a good introduction to the basic biology.
APL-2
35 U.S.C. § 101 (last amended 1952) Patentable Subject Matter
APL-2
Patentable Subject Matter v. Life - Andrew P. Lycans
Summary of two Supreme Court considering whether living matter can be
patentable subject matter (Funk Brothers- suggestion of unpatentability and
Chakrabarty - held patentable).
APL-2
Brenner v. Manson (U.S. 1966, Fortas)
The problem of chemicals useful in preparing other useful products, but not
themselves useful.
APL-5
Gitter, Patenting Human DNA (2001) – part 2
A summary of the CAFC's utility requirements for DNA sequences, including
the categorization of homologs as useful based on theoretical usefulness.
APL-8
35 U.S.C. § 103 (as amended 1999)
APL-11
Rebecca Eisenberg, Genetics and the Law: Patenting the Human Genome,
Emory Law Journal (Emory Law J. 1990) (Thrower Symposium April 1990)
Professor Eisenberg has taught Patent Law at the University of Michigan Law
School since the mid 1980s, and has long specialized in biotechnology law.
This paper, given in April 1990 at something called the Thrower
Symposium (a gathering of ______ interested in ______ and held at ______)
considers the law of obviousness for DNA sequences.
Note the date: it was written before the appeal in the Amgen case (next
item), but after the District Court had ruled there.
APL-11
Amgen v. Chugai (Fed. Cir. 1991, Lourie, Markey and Clevenger)
If the process used to obtain a DNA sequence is non-obvious, can a claim to
the sequence itself survive an obviousness challenge?
APL-14
In re Deuel (Fed. Cir. 1995, Lourie, Archer and Nies)
Or should the obviousness of DNA sequences instead be judged under the
Brenner v. Manson test for chemical compositions?
APL-17
Gitter, Patenting Human DNA (2001) – part 3
A post-Amgen/Deuel presentation of the arguments on both sides of the
obviousness debate.
APL-23
{The materials in this packet have been substantially edited. I have deleted passages that contain information that I
do not believe to be relevant to our discussion. I have also corrected typos and inserted editorial comments. Cases
and statutes have been edited. Text has been reformatted and emphasis in the original is indicated by italics sans
braces. I have added the emphasis where the word is in bold.–APL}
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2/17/2016 10:55:00 AM