Door
Seating Plan
EVERYBODY ELSE
Law Students (11)
PO
(Glass
wall)
Grad Students
who submitted a patent
AND did the Boston Scientific
assignment
AND the comment^2 (9)
AI
(White
Board
Wall)
Screen
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
1
Today’s Agenda
• Leftovers
• Olcott 1: Who is a PHOSITA
• Olcott 2: (remind me)
• Chang: 5, 6 and 7-digit patent numbers
• KSR – for law students (deferred)
• Law students teach patent law (deferred)
• Field Trip
• The Grad Students’ Patented Objects and
Their Patents
• Tutorial on Patent Law:
Using Boston Scientific to learn ...
EVERYTHING?
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
2
Today’s Agenda
• Leftovers
•
•
•
•
•
KSR – for law students (deferred)
Law students teach patent law (deferred)
Chang: 5, 6 and 7-digit patent numbers
Olcott 1: Who is an ordinary artisan?
Olcott 2: (remind me)
• Housekeeping: Field Trip
• The Grad Students’ Patented Objects and Their
Patents
Person having /of
• Tutorial on Patent Law:
[ordinary] skill in
Using Boston Scientific to learn ... the art
35 USC 103, 112
EVERYTHING?
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
3
Trip to SF
Best bet for PO’s expert (probably):
next Thursday morning, 10/11
Court is in session 8:30 to 3:30
We should arrive by 8:15 at the latest.
Getting there from here
Alt1: Caltrain 7:05 baby bullet + Muni Bus 47
Alt 2: Blueshuttle (if he can do it) (Not to be confused with
Supershuttle)
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
4
Grad Students’ Patented Objects
Janelle AYRES
Catherine CHANG
4,996,151 Process - EagI Restriction Endonuclease
3,617,859 Bandgap voltage reference patent
D304975 Experimental Electronics Trainer
Nick CONLEY
--Sara GAMBLE
5,025,926 Flouroware semiconductor wafer box
John GARCIA
4,781,487 Vortex mixer
Russell HU
5,457,105 Drugs useful for neoplastic diseases
Ioulia KACHIRSKAIA 5,872,261 Method to synthesize a protein crosslinker
Tiara KAWAHARA
5,722,553 SnapStrip PCR Tubes
Gwen LIU
6,001,233 Invitrogen XCell SureLock Mini-Cell
Manny LOPEZ
4,981,797 Process of producing highly transformable cells*
Peter OLCOTT
6,196,681 UVEX Genesis Safety Glasses
Dmitry PUSHKAREV 3.681.709 Laser resonator, Diffraction coupled
Color Code
In litigation
NOT “MARKED”
Design Patent
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
5
Patent Selection for SIMULATIONS
The patent should be
• in commercial use
– The number should be MARKED on something you
can buy.
• a UTILITY patent
– Not a DESIGN patent (6 digits)
– But could be a REISSUE patent (5 digits) [Why?]
• NOT in litigation [Why not?]
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
6
PROSECUTION HISTORY
• What is it?
• How do you know it will be interesting
just by looking at the patent?
– Interesting:
• How?
• Why?
– Looking at WHAT?
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
7
AN “INTERESTING”
PROSECUTION HISTORY
Clues in the patent itself:
- Length of time in prosecution
- Existence of parent applications
- Differences between CLAIM 1
and the Abstract or Summary of
Invention - 1st paragraph [Why?]
- Other?
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
8
CLAIMS
Claims
- define the legal effect of the patent
- are those numbered horribles at the end of the specification
- can be independEnt or dependEnt
- are evaluated INDIVIDUALLY for validity, and for infringement
- rise and fall together if there was INEQUITABLE CONDUCT during
prosecution
And last week you learned, or heard again, the verb phrase
READ ON
If a claim READS ON the prior art,
the claim is INVALID “over” or “in light of” the prior art
If a claim READS ON an accused device,
the device INFRINGES the claim
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
9
Boston Scientific – Forman Claim 1
A process for forming
a fluid tight seal between
a polymeric body and
a polymeric dilation member
surrounding the body,
comprising the steps of:
- positioning
a dilation member
of polymeric material
along and
in surrounding relation to
a body of polymeric material,
-- with
the dilation member and
body
aligned to place
a first surface portion
of the dilation member and
a second surface portion
of the body
in a contiguous and confronting relation,
--- wherein the polymeric materials
forming
the body and
the dilation member
have non-uniform
energy absorption spectra
that include
high absorptivity wavelength bands,
and
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
--- wherein
at least one of
the high absorptivity
wavelength bands
of the polymeric material
forming the body
and
at least one of
the high absorptivity
wavelength bands
of the polymeric material
forming the
dilation member
overlap one another
in at least one
range of overlapping wavelengths;
- selecting a monochromatic energy wavelength
that is contained within
at least one of
the overlapping wavelength ranges;
- generating substantially monochromatic energy
at said selected monochromatic energy wavelength;
- controllably directing the monochromatic energy
onto the body and the dilation member
to concentrate the monochromatic energy
in a narrow bond site
-- circumscribing the body and
-- running along the interface
of the first and second surface portions,
thus to melt the polymeric materials
along said bond site and
the immediate region thereof; and
- allowing the previously melted polymeric material
to
cool and
solidify
to form a fusion bond
between the body and dilation member.
10
Boston Scientific – Terms of Art - 1
Summary Judgment; summary adjudication
Preferred Embodiment
Boilerplate; black letter law
“no genuine issue of material fact” / “triable issue”
Credibility
Hearsay
Clear and convincing evidence
contrast ‘preponderance of the evidence’
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
11
Boston Scientific – Terms of Art - 2
Limitation
Construe – construing - construction
Literal Infringement
Doctrine of Equivalents
Question of fact/question of law
Possession (of the invention)
TSM test [teaching, suggestion or motivation to
combine]
Secondary Considerations
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
12
Boston Scientific – Terms of Art - 3
Critical Date
“teaching away” [not just omission, but a real
NEGATIVE: ‘away’ means AWAY]
Patent Exhaustion
=====
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
13
Boston Scientific – Your questions -1
Differing SCOPE of specification and claims
Presumption of Validity (35 USC 282) and
DEFERENCE
Goals (better: “OBJECTS of the Invention”)
“Preferred Embodiment(s)” v. BEST MODE
Interaction of MARKMAN HEARING and
dispositive (pre-trial) motions
- The killer ‘reading IN’ != reading on
- Strategic issues in bringing the SJ motion
- NDCal’s local rules
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
14
Boston Scientific – Your questions - 2
Comprising/consisting/consisting essentially of ~~ open
/ closed /mostly closed
Filing dates / priority dates 35 USC 119 and 120 [and the
problem of CONTINUATION I N PART child
applications]
PROSECUTION HISTORY: for claim interpretation
AND “prosecution history estoppel”
REFERENCES CITED: #, origin, meaning
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
15
Kastenhoffer Family Tree
COLOR KEY
parent
continuation
divisional
PATENT
08/309,234
09/20/94
08/657,004
05/28/96
08/937,110
09/24/97
5,843,032
12/01/98
08/936,352
09/24/97
09/053,969
04/02/98
09/317,293
05/24/99
6,027,477
2/22/00
time
(not to
scale)
Sci.Ev. 2007-rjm
NO C-I-Ps
5,961,765
10/05/99
6,471,673
10/29/02
Week 4 - 10/03/07
16
Next Week
Law students teach patent law?
(Grad students only?) look at one of the
patents and the file histories that the
students used last year?
Everyone: NDCal Local Rules and more prep
for Boston Scientific?
Sci.Ev. 2007-rjm
Week 4 - 10/03/07
17