Schering Corp. v.
Geneva Schering owned two patents Inherency is not necessarily
Pharmaceuticals, Inc. (loratadine and the DCL
metabolite in that
loratadine). Upon the
expiration of the loratadine
patent, companies sought to
make a generic version. But
Schering claimed the validity
of the DCL metabolite patent.
The court ruled that the
metabolite patent was
invalid since it was naturally
inherent and anticipated by
the loratadine patent.
Human consumption of
loratadine necessarily results
in the natural production in
the human body of the DCL
metabolite.
In re Wands The patent board argued that
the data presented by Wands
showed that the production
of high-affinity antibodies
unpredictable and unreliable,
so that it would require
undue experimentation for
one skilled in the art to make
the antibodies.
The court ruled that
enablement is not precluded
by the necessity for some
experimentation such as
routine screening. However,
experimentation
needed to practice the
invention must not be undue
experimentation.
Aguas v. De Leon A patent for a new and useful
improvement in the process
of making mosaic pre-cast
tiles was granted to de Leon.
Aguas claimed that the
coterminous with the
knowledge of those of
ordinary skill in the art. The
knowledge that the human
body naturally produces the
metabolic DCL upon the
ingestion of loratadine was
only known in 1984 or at a
time later than the grant of
the patent.
1. quantity of
experimentation
necessary,
2. amount of direction or
guidance presented,
3. presence or absence of
working examples,
4. nature of the invention,
5. state of the prior art,
6. relative skill of those in
the art,
7. predictability or
unpredictability of the
art, and
8. breadth of the claims.
If an inventor is able to
invent something which is a
product or process which
goes beyond mechanical skill
or ordinary competence,
 process was not new, useful, then such product of process
nor inventive. overcomes the test of
obviousness.
The Court ruled that Aguas’
improvement is indeed
inventive and goes beyond
the exercise of mechanical
skill. He has introduced a
new kind of tile for a new
purpose. He has improved
the old method of making
tiles and pre-cast articles
which made the tiles more
durable.
Hotchkiss v. Greenwood Hotchkiss was granted a Justice Woodbury dissented.
patent for inventing an He wrote that innovation
improved method of making alone cannot be the exclusive
knobs. The improvement issue to be
consists in making the knobs considered in the
of clay or porcelain. determination of
Hotchkiss sued Greenwood patentability. If the pure and
for infringement. original rationale of the
protection of intellectual
The SCOTUS ruled that property were to be strictly
Hotchkiss’ use of a new followed, then factors such
material was no more than a as public benefit, technology-
superficial substitution. It sharing, and improvements
was merely formal and in everyday livelihood must
destitute of ingenuity or be of equal importance as
invention. well.
Graham v. John Deere Co. The subject patents related
to a spring clamp which
permits plow shanks to be
pushed upward when they
hit obstructions in the soil,
and a plastic finger sprayer
with a hold-down lid used as
a built-in dispenser for
containers.