Advanced Patent Law Seminar, Fall 2005, Prof. Morris

Last Modified 12/2/05, 2:55 p.m. -rjm
Click here to jump to the schedule for the upcoming week.
Click here for presentation due dates and critique assignments.
Click here for How the Seminar Will Work.
Click here for Creating Your Packet.
Click here for a cover sheet template based on Alicia Frostick's packet.

POWERPOINT: To view powerpoints, go to the subdirectory PPT and click on the name in the index.
My lecture slides are called XX.PPT where XX is the week number.
(The first week's class, 9/6, is 01, so it's URL is ).
My handout slides are called HO_[whatever].ppt so that they are all grouped in the PPT directory listing.
Student slides are called studentlastname.ppt.

SAMPLE PACKETS For a few sample packets from the last advanced patent seminar (fall 2003), check out the following: There are also .pdf versions of the Durham and Goodson packets in the same directory . (Just change the last 3 characters of the URL to pdf.)

Documents from the Start of the Term:
Click here for the questionnaire. Students completed it and hit the SEND button by August 29 at 10 am.
Click here for the class list, including email addresses.

Schedule (Subject to Change)

Click here to go back to the top.
Date Leader Subject Readings
09/06 Morris Introducing Ourselves Questionnaire; How the Seminar Will Work
Hot OLD Case: Winans v. Denmead Winans v. Denmead; Winans' Patent   (link to USPTO site and click on "images" - if you have installed TIFF or (link to pdf file on the course website); Patent Act of 1836
09/13 Morris More Early History of the DOE Sarnoff , JPTOS article, concerning the years 1790-1870
More History concerning Judicial Generosity to Inventors: Another Hot OLD Case, also from 1853 O'Reilly v. Morse ; and the Morse reissue patent in suit, along with the original Morse patent patent
09/20 Iseki
Prof. of Law
Employee/Employer Rights in the US and Japan Link to Prof. Iseki's Readings
John Posa
Gifford, Krass
Ann Arbor
LED technology in Japan, pre-Nakamura; patent prosecution tips; etc.
Morris Other Issues for US Employee/Consultant-Inventors(s) A case with a variety of unusual issues: Regents of U of NM v. Knight
09/27 Morris Constitutional Law (and Federal Courts and Jurisdiction) meet Patent Law Eleventh Amendment: Regents v. UNM
Seventh Amendment: Tech. License
Whose Precedent: Regents (again) and Lab Corp. v. Chiron
Writs of Mandamus v. Appeal: Tech. License, again, and Lab Corp. v. Chiron, again
NO CLASS (Law School follows Monday schedule)
10/11 Kendra Mattison '01
Finnegan, Henderson, DC
Biotechnology Patenting Finnegan Henderson's Biotechnology Innovation Report :
Trends in patenting (pp. 4-7 = pdf pages 8 and 9); Trends in ownership (pp.20-25 = pdf pages 16-18); Brief overview of the CREATE Act (pp. 31-33 = pdf pages 21-22); Trends in litigation (pp.50-53 = pdf pages 31-32, and 66-87 = pdf pages 39-47, and skim the tables at pdf pages 48-49).
Summary of Merck v. Integra
Ted Olds and Tony Cho '92
Carlson, Gaskey & Olds
Birmingham, MI
Markman Hearings, in the District Court and on Appeal Research Plastics v. Federal Packaging: Opinion; Patent Figures
Frostick Patenting Plants: The Peculiar Rules for Novelty and Enablement Frostick Packet (includes original cover sheet) and viewable replacement cover sheet:
The Plant Patent Act, In re Le Grice and Elsner
Morris Patent Statistics You Can Create Using RISC Architecture RJMorris, May 2001 IP Today article, Some Data about Patents in Class 705 [final proof copy] ; (Also: what I mean by RISC Architecture.)
The WTO (although not TRIPS) Hear not read: attend the Thursday talk in Room 120 at 4:00 concerning the WTO. Click here for more information from the law school's Docket.
Cohen Policing Obvious Patents - Motivation to Combine versus Synergy Cohen Packet:
Sakraida (Sup. Ct. 1976), Shaffer (CCPA 1956), Oetiker (Fed.Cir. 1992), The FTC Report, and the regional and federal circuits in the years right after Sakraida
Murshak Is it Worth Patenting, and Where? Murshak Packet
Kolb Federal Circuit Jurisdiction: Has the Supreme Court made a mess of Congress' plan? Kolb Packet:
Vornado , its predecessors, Christianson v. Colt and Aerojet and its aftermath in the state courts and regional circuits Green v. Hendricks in Indiana and Telecom and Schinzing in the 11th and 8th Circuits respectively.
Shui Patent Disclosure Requirements in Statndard Setting Organizations ("SSO"'s) Shui Packet: in MSWord and in pdf ; also handy table for understanding Rambus litigation history
The JEDEC Manual, Rambus v. Infineon(2003) and Prof. Lemley on IPRs v. SSOs (2002).
Cleary Enhanced Damages: Willful Infringement and the Role of Opinions of Counsel Cleary Packet
Knorr-Bremse (The famous one, and the remand)
Union Carbide10/3/05

Handouts from Prof. Morris:
Heller Patent Law Reform in the US: The First-to-File Debate Heller Cover Sheet and Packet
HR 2795 (introduced 6/8/05)
Testimony before Congress, Summer 2005
Other Earlier Opinions
Yates Enabling, and Avoiding Anticipation of, Genus Claims Yates Cover Sheet and Packet
Tronzo v. Biomet, LizardTech, PTO's Revised Interim Guidelines for Written Description (2000)

Handouts from Prof. Morris
Olin Bewildered, Befuddled, and Bemused: Should Juries Decide Patent Cases? Olin Packet
Ross v. Bernhard's n.10; Circuit Court opinions dealing with complexity, including SRI v. Matsushita; Articles by Miron and Signore
Handout from Prof. Morris: Law-Fact-Equity List
Hawkins Reexamination: A Powerful Tool For Accused Infringers Or Just Too Risky? Hawkins Packet:
Patlex v. Mossinghoff, Ethicon v. Quigg, Middleton v. 3M (SD Iowa 2004)
35 USC Sections 301-307 (ex parte reexamination), and 311-318 (inter partes examination)

From Prof. Morris:
Ko Awarding Lost Profits For "Unpatented" Products: Rite-Hite and Other Cases Ko Packet:
The DAMMP Test from Panduit; Rite-Hite, King Instruments, Juicy Whip
Edsenga Proposed Patent Legislation: Remedies [Permanent Injunctions and Willfulness] Edsenga Cover Sheet and Packet:
35 USC 283 and 284, HR 2795, Smith v. Hughes Tool, MercExchange v. HalfCom, and Selected Testimony before Congress
Pearson Construing Claims Before And After Phillips: What's Old Is New Again Pearson Packet: in MSWord and in pdf:
Vitronics; Texas Digital; Phillips: Timeline, Certified Questions, Selected Amicus Briefs and Patent Figures, En banc decision; Aspex (SDNY 9/9/05).
12/6 Morris 101 in the Supreme Court (again; alas?):
Lab Corp. v. Metabolite
Fed.Cir. Opinion and (first) Petition for Cert.
Link to Metabolite patent
Opposition, Reply and SG Briefs
Debriefing/Party - Second hour of class to be held Pizza House