DIFFERENT
from last week
Seating Plan
Screen
Grad Students and Law Students
who submitted a comment^2 (4 + 10)
PO
(White
Board
Wall)
Grad Students
who submitted an object
and a patent this week; Law
Student who submitted slides
(6 + 1)
AI
(Glass
Wall)
EVERYBODY ELSE
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
Door
1
Today’s Agenda
• Field Trip
• The Grad Students Lecture on Patent Law
• and invoke their Patented Objects and
their Patents as concrete examples
• More discussion of Boston Scientific to
learn ... EVERYTHING?
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
2
G
G
G
G
G
G
G
G
G
G
G
G
G
G
L
L
L
L
L
L
L
L
L
L
L
N
N
P
Ayres,
Chang,
Conley,
Dai,
Gamble,
Ganesan,
Garcia,
Hu,
Kachirskaia,
Kawahara,
Liu,
Lopez,
Olcott,
Pushkarev,
Craven,
Faulkner,
Freed,
Marshall,
Pan,
Peng,
Petrova,
Reeslund,
Reyes,
Van Niekerk,
Wahlstrand,
Lavian,
Soffer,
Morris,
Sci.Ev. 2007-rjm
Janelle
Catherine
Nick
Lixin
Sara
Prasad
John
RUSSELL Qicong
Ioulia
Tiara
Gwen
Manny
Peter
Dmitry
Sarah
Joelle
JAKE John
Sean
Lillian
Heyue
JENNY Evgeniya
Marcus
Juan
RALPH Roy
Julie
Tal
Stuart
Roberta
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
(
janelle1 )
ling84 )
nrconley )
cosimo )
sjgamble )
pganesan )
johngarc )
qiconghu )
iouliak )
tiarak )
gwenliu )
mel3 )
pdo )
umka )
scraven )
joellef )
jfreed1 )
seanm22 )
ljpan )
heyuep )
epetrova )
marcusr )
jfreyes )
ralphvn )
juliebw )
NO_SUNet )
soffer )
rjmorris )
Week 5 - 10/10/07
Field Trip
going, but not with us
going, but leaving early
going
doesn’t know yet
NOT going
italics: based on earlier
poll answer
10 passengers can meet at
Tresidder at 7 am and go
in the Blue Shuttle
(actually white with blue
letters ) Van.
3
#47 stops at this intersection, traveling on Van Ness.
TO courthouse it’s going up the page,
FROM courthouse it’s going down the page; stopping, if
memory serves, betewen McAllister and Grove.
COURTHOUSE
X
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
4
Field Trip –
What to Bring
Pad and paper.
MAYBE bring the opinion.
MAYBE bring a copy of a patent (the Kastenhofer ancestor, if I
had to choose one; or arrange with friends for each of you to
bring one of the 5 patents BELIEVED STILL TO BE in suit.
Money that the bus (or train? Jake?) will accept. The fare is
$1.50. I’ll reimburse you, but probably won’t have enough
change or singles tomorrow.
If you’re returning to campus with me, you won’t need to buy
a CalTrain ticket because I’ll put them all on my credit card.
If you’re going by yourself, the one-way fare is $5.75. R/T
$11.50 MP, PA and Calif Ave are in zone 3. Redwood City is
in zone 2 ($4 & $8 respectively)/
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
5
Law Student Lecturers
1.
2.
Claim Chart – van Niekerk
Prior Art - Faulkner
There are TWO different definitions of prior
3.
4.
CLAIM V. Specification - Peng
Statutory Bar (102(b) - Marshall
5.
6.
7.
8.
9.
10.
11.
12.
Anticipation (!= Obviousness) - Pan
Obviousness - Petrova
Enablement – Craven
Best Mode - Reeslund
Duty of Candor
Literal Infringement - Freed
Doctrine of Equivalents - Wahlstrand
US v. THE WORLD (patent-wise) - Reyes
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
6
102 – the different definitions of PRIOR
PRIOR is defined in 35 USC 102 as being
EITHER
before THE INVENTION BY THE
APPLICANT/PATENTEE. 102 a e and g
OR
MORE THAN ONE YEAR (aka 12MONTHS)
before the US application filed by the
applicant/patentee. 102 b and d
the CRITICAL DATE =
Month of appl – day of appl – YEAR OF APPL MINUS ONE
Why do I write
“applicant/patentee”?
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
7
102 – the different definitions of PRIOR
Confirmation from the statute, in pertinent part
35 USC 102. A person shall be entitled to a patent unless (a) the invention was …before the invention thereof …,
or
(b) the invention was … more than one year prior to the
date of the application for patent in the United
States, or
(c) he has abandoned the invention, or
(d) the invention was … more than twelve months before
the filing of the application in the United States, or
(e) the invention was described in –
(1) an application … before the invention by the
applicant …
(2) a patent … before the invention by the applicant
…, or
(f) he did not himself invent the subject matter sought to
be patented, or
(g)
(1) another inventor … before such person's invention
thereof ..., or
(2) before such person's invention thereof ….
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
8
102 – the different definitions of PRIOR
35 USC 102. A person shall be entitled to a patent unless (a) the invention was known or used by others in this country, or patented or described in
a printed publication in this or a foreign country, before the invention thereof by
the applicant for patent, or
(b) the invention was patented or described in a printed publication in this or a foreign
country or in public use or on sale in this country, more than one year prior to the
date of the application for patent in the United States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented, or was the subject of an
inventor's certificate, by the applicant or his legal representatives or assigns in a foreign
country prior to the date of the application for patent in this country on an application
for patent or inventor's certificate filed more than twelve months before the
filing of the application in the United States, or
(e) the invention was described in –
All the words – if you
need them (1 of 2)
(1) an application for patent, published under section 122(b), by another filed in the United
States before the invention by the applicant for patent or
(2) (2) a patent granted on an application for patent by another filed in the United States
before the invention by the applicant for patent, except that an international
application filed under the treaty defined in section 351(a) shall have the effects
for the purposes of this subsection of an application filed in the United States
only if the international application designated the United States and was
published under Article 21(2) of such treaty in the English language; or
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
9
102 – the different definitions of PRIOR
All the words – if you
need them (2 of 2)
35 USC 102. A person shall be entitled to a patent unless (f) he did not himself invent the subject matter sought to be patented, or
(g)
(1) during the course of an interference conducted under section 135 or section
291, another inventor involved therein establishes, to the extent permitted in
section 104, that before such person's invention thereof the invention was
made by such other inventor and not abandoned, suppressed, or concealed, or
(2) before such person's invention thereof, the invention was made in this
country by another inventor who had not abandoned, suppressed, or concealed
it. In determining priority of invention under this subsection, there shall be
considered not only the respective dates of conception and reduction to
practice of the invention, but also the reasonable diligence of one who was
first to conceive and last to reduce to practice, from a time prior to conception
by the other.
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
10
102 a v. 102 b (handout)
(a) the invention was
(b) the invention was
patented or
described in a printed publication
in this or a foreign country or
known or
used by others
in public use or
on sale
in this country, or
in this country,
patented or
described in a printed publication
in this or a foreign country,
Sci.Ev. 2007-rjm
before
more than one year prior to
the invention thereof by the applicant for patent[.]
the date of the application for patent in the United
States[.]
Week 5 - 10/10/07
11
102 a and b
For our purposes,
we will assume that
nobody
can prove an invention date
earlier than the application date.
That means that ONLY 102 b matters.
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
12
COMPARE 102 a and b
§ 102. Conditions for patentability; novelty and loss of right to patent.
A person … unless …
(a)... before the invention thereof
(b)...more than one year prior
by the applicant for patent,
to the date of the
application for patent in
critical the United States,
appl
TWO POSSIBLE
CHRONOLOGIES
date
date
102a period ends later than critical date
INV
102b-BAR PERIOD
102a period
ends before
critical date
Sci.Ev. 2007-rjm
INV
2004 Patent Law CP
35A.1
Week 5 - 10/10/07
13
Grad Students’ Patented Objects – Round 1
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 5 - 10/10/07
14
Grad Students’ Patented Objects – Round 2
Janelle AYRES
5,836,618
Nick CONLEY
Sara GAMBLE
5,406,073
6,657,823
Prasad GANESAN
6,884,628
John GARCIA
Russell HU
Gwen LIU
Manny LOPEZ
5,503,741
7,105,130
5,442,241
6,818438
“
Peter OLCOTT
7,045,675
6,908,605
Dmitry PUSHKAREV
“
3,834,507
various-old
Labels for Cryogenic Vial (?Marked? Or mfr-based db
search?)
Movable Entity Detector
Perpendicular Disk Drive (searched patent db for hard
drive technology)
Polymer (not marked, but assigned to mfr of
material he uses under a confidentiality agreement)
Dialysis Cassette
Adjustable Pipette
miRNA Detection Kit
Culture Flask (not marked, but assigned to mfr of lab
flask)
Genes for NPC disease (gene he works on)
Non-invasive in vivo imaging (unlitigated relative of
marked patent)
Printing Apparatus
Textronics Oscilloscope
Color Code
“MARKED”
NOT marked
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
15
Good Patent, Bad Patent
Does the patent use your expertise?
It probably needs to be fairly recent.
Is the patent really commercialized? If you did NOT
find it because of MARKING, check that at least
one claim READS ON something in your lab.
Did the patent sail through the PTO or not? Does it
have parent applications or not?
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
16
Looking at File Histories- Looking
for WHAT?
See Marcus’s 10/10 comment on Boston Scientific.
Was claim 1 amended?
What language was ADDED?
What was ARGUED about the language that was there
already? About the additional language?
Did the Examiner say “I’d allow claim 2 if it was rewritten in
independent form” and then claim 2 became claim 1?
What language was replaced with a variant on the sane
theme?
Make a CLAIM CHART showing the claim language before
and after. This can be EXTREMELY revealing and
inspirational.
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
17
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 5 - 10/10/07
--- 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.
18
Kastenhofer 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 5 - 10/10/07
19
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 5 - 10/10/07
20
Boston Scientific – Terms of Art - 2
Limitation
Construe – construing - construction
Literal Infringement
Doctrine of Equivalents START HERE?
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 5 - 10/10/07
21
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 5 - 10/10/07
22
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 5 - 10/10/07
23
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 5 - 10/10/07
24
Next Week
Look at one of the patents and its file history [coursework link] that the
students used last year for their simulations
EITHER
Bilayers [my website link] for biotech application
OR
Magnetic separation [my website link] device
FYI: Here’s the schedule of the simulations from 2006
NOTE: To use the links on my sciev.06 webpage, you must manually
change ‘sciev’ in the URL to ‘sciev.06’ or you will get PAGE NOT
FOUND.
The links above all work but links you follow from the parent page
itself will not until you fix them. Some day I’ll update the whole page.
I promise.
Sci.Ev. 2007-rjm
Week 5 - 10/10/07
25