US Supreme Court


IPPT20170619, USSC, Matal v Tam

The disparagement clause violates the First Amendment’s Free Speech Clause: the disparagement clause reaches any trademark that disparages any person, group, or institution, goes much further than necessary and is far too broad. The commercial market is well stocked with merchandise that disparages prominent figures and the line between commercial and non-commercial speech is not always clear.



IPPT20140619, USSC, Alice v CLS Bank International

Patent-ineligible abstract ideas: implicit exception for ‘“[l]aws of nature, natural phenomena, and abstract ideas.’ ” In applying the §101 exception, this Court must distinguish patents that claim the “‘buildin[g] block[s]’” of human ingenuity, which are ineligible for patent protection, from those that integrate the building blocks into something more. Using this framework, the Court must first determine whether the claims at issue are directed to a patent-ineligible concept. If so, the Court then asks whether the claim’s elements, considered both individually and “as an ordered combination,” “transform the nature of the claim” into a patent-eligible application. The claims at issue are directed to a patent-ineligible concept: the abstract idea of intermediated settlement. 




IPPT20130613, USSC, AMP v Myriad
cDNA is patent eligible, separated DNA is not. Separating a gene from its surrounding genetic material is not an act of invention; no creation or alteration of genetic information encoded in genes. Nor are Myriad’s claims saved by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a non-naturally occurring molecule. cDNA is patent eligible as a molecule that is not naturally occurring: the lab technician unquestionably creates something new when cDNA is made. cDNA retains the naturally occurring exons of DNA, but it is distinct from the DNA from which it was derived. Not implicated by this decision: Method claims, new applications of knowledge about genes and the patentability of DNA in which the order of the naturally occurring nucleotides has been altered.




IPPT20120320, USSC, Mayo v Prometheus
Unpatentable process claims: We find that the process claims at issue here do not satisfy these conditions. In particular, the steps in the claimed processes (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field. At the same time, upholding the patents would risk disproportionately tying up the use of the underlying natural laws, inhibiting their use in the making of further discoveries.The process that each claim recites tells doctors interested in the subject about the correlations that the researchers discovered. In doing so, it recites an “administering” step, a “determining” step, and a “wherein” step. These additional steps are not themselves natural laws but neither are they sufficient to transform the nature of the claim.




IPPT20110606, USSC, Stanford v Roche

Title to patent: The Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.




IPPT20100628, USSC, Bilski v Kappos

The machine-or-transformation test is not the sole test for patent eligibility under §101. Business methods not categorically excluded from “process”. Abstract ideas are not patentable processes. Three exceptions to broad principles of patentability: “laws of nature, physical phenomena, and abstract ideas.” No further definition of patentable process required.




IPPT20030115, USSC, Eldred v Ashcroft
Copyright Term Extension Act (“CTEA”) The CTEA’s extension of existing copyrights does not exceed Congress' power under the Copyright Clause. Guided by text, history, and precedent, this Court cannot agree with petitioners that extending the duration of existing copyrights is categorically beyond Congress' Copyright Clause authority. In placing existing and future copyrights in parity in the CTEA, Congress acted within its authority.




IPPT19970303, USSC, Warner Jenkinson v Hilton Davis
Doctrine of equivalence. Determination of equivalence should be applied as an objective inquiry on an element by element basis. Doctrine of equivalence does not supersede “prosecution history estoppel”; not any surrender establishes a bright line beyond which no equivalents may be claimed. Not limited to disclosed equivalents.Undecided whether application of the doctrine is for the judge or the jury. Essential inquiry: Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention?; different linguistic frameworks available




IPPT19910327, USSC, Feist v Rural

Originality necessitates independent creation and a modicum of creativity.
Originality compilation of facts: Although a compilation of facts may possess the requisite originality because the author typically chooses which facts to include, in what order to place them, and how to arrange the data so that readers may use them effectively, copyright protec-tion extends only to those components of the work that are original to the author, not to the facts them-selves. This fact/expression dichotomy severely limits the scope of protection in fact-based works. Originality not “sweat of the brow” is the touch-stone of copyright protection




IPPT19810303, USSC, Diamond v Diehr
Patentable process claim: when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is per-forming a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of 101.



IPPT19800616, USSC, Diamond v Chakrabarty
Wide scope of term “manufacture”: In choosing such expansive terms as "manufacture" and "composition of matter," modified by the comprehensive "any," Congress plainly contemplated that the patent laws would be given wide scope. The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to "include anything under the sun that is made by man."  Micro-organism qualifies as patentable subject matter.





IPPT19780622, USSC, Parker v Flook
method in which the only novel feature is a mathematical formula not patentable




IPPT19721120, USSC, Gottschalk v Benson
Method consisting of  merely a series of mathemati-cal calculations or mental steps not patentable: It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself. 




IPPT19540308, USSC, Mazer v Stein
Statuettes copyrightable. Idea-expression dichotomy: Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea - not the idea itself.Utilitarian-nonutilitarian dichotomy: Regulation 202.8, supra, makes clear that artistic articles are protected in "form but not their mechanical or utilitarian aspects."


IPPT19500529, USSC, Graver Tank v Linde Air
Doctrine of equivalence: To prohibit no other would place the inventor at the mercy of verbalism, and would be subordinating substance to form. Equivalence is not the prisoner of a formula and an absolute to be considered in a vacuum. Triple identity test: function-way-result: a patentee may invoke this doctrine to proceed against the producer of a device "if it performs substantially the same function in substantially the same way to obtain the same result. Insubstantial difference; changes which avoid infringement are colorable only




IPPT19480216, USSC, Funk v Kalo
Unpatentable qualities that are the work of nature. The qualities of these bacteria, like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved exclusively to none. He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end. Discovery of the fact that certain strains of each species of these bacteria can be mixed without harmful effect to the properties of either is a discovery of their qualities of non-inhibition. It is no more than the discovery of some of the handiwork of nature and hence is not patentable.




IPPT19181223, USSC, International News Service v Associated Press

Misappropriation of news for commercial use: Defendant […] is taking material that has been acquired by complainant as the result of organiza-tion and the expenditure of labor, skill, and money, and which is salable by complainant for money, and that defendant in appropriating it and selling it as its own is endeavoring to reap where it has not sown, and by disposing of it to newspapers that are competitors of complainant's members is appropri-ating to itself the harvest of those who have sown.